The Nasdaq Stock Market, Inc v Ozdaq Research Pty Ltd

This decision concerns objections by Ozdaq Research Pty Ltd to applications by The Nasdaq Stock Market, Inc for extensions of time to serve evidence in support of its oppositions to Ozdaq's trade mark applications. Nasdaq opposed five of Ozdaq's trade mark applications, and while notices of opposition were generally filed within the prescribed time, Nasdaq sought multiple extensions to file its supporting evidence. Ozdaq objected to the granting of these extensions, particularly for the third round of requested extensions, leading to a hearing before a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether to grant Nasdaq's third request for a three-month extension of time to serve evidence in support of its oppositions, despite Ozdaq's objections. This required the delegate to consider the criteria for granting such extensions under regulation 5.15 of the *Trade Marks Act and Regulations 1995*. Specifically, the delegate had to be satisfied that the extension was appropriate, that service requirements had been met, and that both parties had been given a reasonable opportunity to make representations.

In determining the appropriateness of the extensions, the delegate applied established criteria, including the amount of time already allowed, the reasons provided for the extension, the seriousness of the opposition, and the relative inconvenience to the parties. While acknowledging Ozdaq's submissions regarding inconvenience and the initial lack of detail in Nasdaq's reasons, the delegate found Nasdaq's explanation for delays, particularly those stemming from the 11 September 2001 terrorist attacks and the subsequent impact on its New York headquarters, to be sufficiently compelling, especially when elaborated upon by counsel. The delegate also considered the public interest in allowing all available evidence to be presented and concluded that refusing the extensions would cause greater inconvenience to Nasdaq by effectively terminating its oppositions.

The delegate granted the requested third extensions of time for Nasdaq to serve its evidence in support of its oppositions. The extensions were granted to 14 December 2001 for trade mark application 812101, and to 24 January 2002 for trade mark applications 812103, 844338, 844339, and 844340. The delegate was satisfied that all procedural requirements under regulation 5.15 had been met.