The Dingoes Refrain Pty Ltd v Cotton on Foundation Limited
[2015] ATMO 79
•31 August 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Dingoes Refrain Pty Ltd to registration of trade mark application 1575898 – RUN logo - in the name of Cotton On Foundation Limited
And
Application by Cotton On Foundation Limited for an extension of time to file evidence in answer
| Delegate: | Deirdre O'Brien |
| Representation: | Opponent: Written submissions by Shaun Creighton of Arete Trade Mark Attorneys Applicant: Christopher Cao of EKM Patent & Trade Mark Attorneys |
| Decision: | 2015 ATMO 79 Regulation 5.15: application for extension of time to file evidence in answer – applicant did not act promptly and diligently at all times – application refused. |
Background
Cotton On Foundation Limited (‘the applicant’) seeks registration under the Trade Marks Act 1995 of the trade mark below:
The Dingoes Refrain Pty Ltd (‘the opponent’) opposes registration. It filed a notice of intention to oppose on 21 March 2014 followed by a statement of grounds and particulars on 23 April 2014. The applicant filed a notice of intention to defend the opposition on 17 June 2014. The opponent filed its evidence in support of the opposition on 3 October 2014 and the applicant was advised by official notice dated 16 October 2014 that it had until 16 January 2015 (‘the due date’) in which to file its evidence in answer to the opposition.
On the due date the applicant filed a declaration made by its legal representative as part of its evidence in answer and applied for an extension of time in which to file the balance of its evidence being a declaration by a representative of the applicant. The extension application was made pursuant to reg 5.15 of the Trade Marks Regulations 1995 (‘the Regulations’) which provides:
Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 5.14.
(2) The Registrar may extend the period only if the Registrar is satisfied that:(a) the party:
(i) has made all reasonable efforts to comply with all relevant filing requirements of this Part; and
(ii) despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or(b) there are exceptional circumstances that justify the extension.
(3) The Registrar:
(a) must decide the length of the extended period having regard to what is reasonable in the circumstances; and
(b) may do so on terms that the Registrar considers appropriate.(4) In this regulation:
"exceptional circumstances" includes the following:(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.The application is for a one month extension of the due date to 16 February 2015. In his declaration supporting the extension Christopher Cao of the applicant’s legal representative stated:
The completion of the Applicant's Declaration has been delayed since there have been a number of RUN events organised by the Applicant. Such events require the Applicant's participation and full attention prior to and during the events.
On 19 October 2014, the Applicant held its RUN BALLARAT and RUN WOLLONGONG events.
On 23 November 2014, the Applicant then held its RUN GEELONG event.
On 30 November 2014, the Applicant held its RUN NEWCASTLE event.
Further, the Applicant and my firm's offices were closed during the holiday period during 24 December 2014 until 5 January 2015.
Whilst the events above did affect the preparation of its Evidence in Answer, the Applicant has nevertheless been active during this period in gathering relevant information and supporting evidence to be included in a Declaration by the Applicant.
On 14 October 2014, a report was sent to the Applicant in relation to the receipt of the Opponent's Evidence in Support and proposed actions for lodgement of the Applicant's Evidence in Answer.
During 3 November and around 7 November, Internet investigations were conducted by my firm.
On Monday 17 November 2014, there was a brief telephone discussion between the Applicant and my firm in relation to the Opposition.
On 18 November 2014, the Applicant confirmed that the Declarant was unable to provide specific information and evidence for the Declaration until the RUN events were held.
On 5 December 2014 until 9 December 2014, my firm received the supporting information and materials from the Applica[nt].
Further evidence was provided by the Applicant on 13 January 2015.
The Declaration is currently in draft format and requires a review from the proposed Declarant, amendments if required, and once finalised execution by the Declarant and for the Declaration to be submitted.
The information contained in the Declaration is important to the Opposition as it provides direct information to the history and use of the Opposed Trade Mark.
The Applicant has acted promptly and diligently at all time and has made all reasonable efforts to complete and file its Evidence in Answer by the due date. In this regard, the Declaration made under my name has already been finalized, signed and timely lodged via eServices, together with supporting evidence, as part of the Applicant's Evidence in Answer.
The Registrar’s delegate advised the applicant that he did not intend to extend the period as he was not satisfied either of reg 5.15(2)(a) or reg 5.15(2)(b) had been made out. Submissions by the applicant did not persuade the delegate and he gave it an opportunity to request a hearing in relation to the intended refusal. The applicant asked to be heard. In the interests of procedural fairness the opponent was given an opportunity to participate in the hearing which it did so by way of written submission.
The matter was heard by Claudia Murray, a delegate of the Registrar, in Canberra on 20 May 2015. Christopher Cao appeared for the applicant by telephone. The opponent relied on written submissions by its attorney. At the hearing Mr Cao advised that the extension is being sought under the provisions of r 5.15(2)(a).
Ms Murray is no longer available to decide the matter. It was subsequently allocated to me, also a delegate of the Registrar, for decision based on the material on the official file and the audio recording of the hearing. In order to grant the extension I must be satisfied that the applicant acted reasonably, promptly and diligently at all times since the commencement of the opposition[1].
[1] See, for example, Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd (2014) 105 IPR 291, 298 [34]; MG Icon LLC v Caprice Australia Pty Ltd (2014) 106 IPR 552, 559 [35]; Innovia Security Pty Ltd v Visual Physics LLC [2014] 106 IPR 568, 571 [18]; Cantarella Bros Pty Ltd v Nestec S.A. (2015) 112 IPR 172, 178 [26] [27]
Discussion
The Regulations governing the grant of an extension to the statutory period allowed to file evidence in a trade mark opposition were changed in 2013. Pursuant to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) the circumstances in which the Registrar may extend that period were limited. According to the accompanying Explanatory Statement the purpose of the change was ‘to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence’.[2]
[2] Explanatory Statement, Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)
Thus the expectation at the date this opposition commenced was that the opponent would file its evidence in support in the statutory three month period allowed therefor[3], following which the applicant would have a period of three months in which to file its evidence in answer[4].
[3] Reg 5.14(3)
[4] Reg 5.14(4)
Also relevant is the change to the Trade Marks Act 1995 brought about by the Intellectual Property Laws Amendment (Raising The Bar) Act 2012 whereby the opponent is required to provide particulars of the grounds on which registration is opposed before the opposition can commence. The related Explanatory Memorandum sets out the reason for this change:
Opponents are currently required to state the grounds on which they intend opposing an application when they file their notice of opposition. However, they are not required to set out the particulars of those grounds. Frequently, this means that the opponent sets out all possible grounds, whether or not they have any intention of relying on them. As a result, the trade mark applicant may be faced with a number of grounds to deal with and no indication of which are key to the opposition until late in the opposition proceedings and sometimes not until the hearing itself.
This makes it difficult for the applicant to prepare their case. It also increases costs as the applicant is obliged to prepare a case in response to all grounds raised in the statement of grounds, including those on which the opponent may no longer rely.
The amendment addresses this problem by allowing for regulations to be made to require the opponent to file a statement of particulars of the grounds on which they intend to oppose. This will help focus oppositions earlier, reducing costs and unnecessary effort for the applicant.[5]
[5] Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 81
In Shelford Services Pty Ltd v Baylor Research Institute a delegate of the Commissioner of Patents held it to be reasonable to expect that an applicant seeking an extension of time to file evidence in answer be able to demonstrate that it had started considering or thinking about how it would defend its case at an earlier stage.[6] In the present matter Mr Cao states that the applicant was aware from the particulars provided by the opponent in this opposition what material it needed to provide in answer to the section 41 and 44 grounds and it started preparing that material almost straight away.[7] However, in relation to the other grounds, the applicant had to wait until the opponent filed its evidence in support before it was able to determine what information it needed to file in answer.
[6] [2014] APO 20 [18]
[7] That material was incorporated into the declaration by Mr Cao which was filed as part evidence in answer on the due date.
In the event the opponent filed its evidence on 3 October 2014 and the period for the applicant to file its evidence commenced on 16 October 2014. Mr Cao states that his firm did not receive instructions directly from the applicant.
During the course of the trade mark application, our firm have been liaising with the legal team of the Cotton On Group (‘the CO legal team’).
…
Our firm reported the Opponent’s Evidence in Support to the CO legal team on 14 October 2014. This communication also included a request for information and evidence from a member of the Applicant in order to allow us to prepare the Evidence in Answer.
The intention was for the CO legal team to discuss the Opposition internally with the Applicant with a view to collating the required evidence.
Mr Cao also states:
The Applicant, Cotton On Foundation is a total non-profit organisation and was established by the Cotton On Group to organise a number of events for charity purposes.
Given that the Applicant is a non-profit organisation, it does comprise of a very small team separate to the Cotton On Group personnel. They do not run like a typical business where there a large number of support/administrative staff that can assist in the preparation of evidence.
According to Mr Cao the CO legal team informed him that the proposed declarant, the applicant’s commercial manager, was unavailable until the last of the charity events organized by the applicant had taken place on 30 November 2014. There was no other person in the employ of the applicant who could provide the information needed for the declaration.
Mr Cao states that the requested information was received by his firm between 5 and 9 December 2014. I now need to decide whether in the five weeks between the provision of that information and the due date the applicant made all reasonable efforts to comply with filing requirements. I note that in order to comply with the filing requirements the applicant needed to take into account any delays caused by the extra layer in communication between itself and its legal representative and the annual closure of the latter’s office between 24 December 2014 and 5 January 2015.
In the circumstances it would be reasonable to expect the applicant to plan to have a draft declaration ready for review by the proposed declarant before 24 December 2014 so that the declarant could review it and inform the legal representative of any changes that needed to be made as soon as the latter’s office reopened.[8] There appears to have been no such plan. According to Mr Cao further information for inclusion in the declaration was provided by the applicant on 13 January 2015 and a draft declaration was ready for consideration by the applicant ‘shortly before’ the due date. He is silent as to what occurred between 9 December 2014 and the provision of the further information on 13 January 2015. He refers to extended leave taken by some members of the CO legal team but does not explain why the information could not have been provided by other members of the team or by the applicant itself at an earlier stage.
[8] Cantarella Bros Pty Ltd v Nestec S.A. (2015) 112 IPR 172, 178 [21]
I accept Mr Cao’s reason for the applicant not being able to provide the information any earlier than the beginning of December 2015. However, in the five weeks following the provision of that information I am not satisfied that the applicant acted promptly and diligently. In particular, its failure to provide all relevant information to its legal representative before the Christmas holiday period indicates that it did not make all reasonable efforts to comply with filing requirements.
The applicant has failed to enliven reg 5.15(2)(a).
Decision
I refuse to extend the period allowed for filing evidence in answer.
Deirdre O'Brien
Hearing Officer
Trade Marks Hearings
31 August 2015
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