T.J.P.D. Nominees v Davenport Industries Pty Ltd

This decision concerns opposition proceedings before a delegate of the Registrar of Trade Marks. The parties were T.J.P.D. Nominees Pty Limited ("TJPD") and Davenport Industries Pty Ltd ("Davenport"). The dispute arose from TJPD's applications for extensions of time to serve evidence in support of its opposition to Davenport's trade mark application no. 594171, and in answer to Davenport's opposition to TJPD's trade mark applications nos. 619247 and 619248. These applications were accepted under provisions for honest concurrent use, following a settlement agreement between the parties in the Federal Court in 1993, the breakdown of which precipitated the current proceedings.

The primary legal issues before the delegate were whether TJPD had made out a proper case justifying the requested extensions of time, whether sufficient reasons had been provided for the delays, the relative inconvenience to the parties, and the public interest. Davenport argued that TJPD's reasons, particularly references to ongoing Supreme Court proceedings and the need for consistency of evidence, were irrelevant to trade mark registrability and demonstrated a lack of diligence and prejudice to Davenport. TJPD contended that the intertwined nature of the proceedings, including ongoing negotiations and the potential impact of the Supreme Court case on the trade mark matters, justified the delays, as filing evidence might jeopardise a global settlement.

The delegate considered the reasons provided by TJPD for the extensions, noting they were more than mere assertions of needing more time and attempted some explication of the position, drawing parallels with the reasoning in *Lyons case*. The delegate found that the periods of delay were relatively short, particularly in light of ongoing negotiations, which were considered a factor indicating neither party would suffer significant inconvenience if extensions were granted, as per *Bundy American Corp v Rent-A-Wreck (Vic) Pty Ltd*. While acknowledging Davenport's submission regarding a lack of diligence, the delegate distinguished the present circumstances from cases of "careless oversight" and found that the issues of contract breach and trade mark registrability were inextricably linked due to the terms of the prior settlement agreement. The delegate concluded that TJPD had discharged its onus to justify the extensions, that the inconvenience to Davenport was not sufficiently elaborated to outweigh the inconvenience to TJPD if extensions were refused, and that the public interest favoured allowing full presentation of evidence.

Consequently, the delegate granted TJPD's applications for three-month extensions of time. The final date for serving evidence in support of the opposition to trade mark application no. 594171 was set as 24 August 1996, and the final date for serving evidence in answer to the oppositions in respect of applications nos. 619247 and 619248 was set as 30 July 1996. The delegate noted TJPD's undertaking to serve the evidence within these extended periods and stated that the extensions were for the express purpose of evidence service, urging expeditious resolution. Each party was ordered to bear its own costs, as the hearing was considered to be the result of a breakdown in communication to which both parties contributed.