The Proctor & Gamble Company v Max Mara Fashion Group

The Proctor & Gamble Company (the opponent) opposed the registration of the trade mark MAX & CO filed by Max Mara Fashion Group Srl (Mara). The dispute before the delegate of the Registrar of Trade Marks concerned a preliminary matter: the due date for Mara to serve its evidence in answer to the opposition and the opponent's evidence in support. This arose from the refusal of Mara's request for an extension of time to serve this evidence.

The legal issues before the delegate were whether Mara had provided sufficient grounds to justify a further extension of time for serving its evidence in answer, particularly in light of repeated requests for more compelling reasons and documentation from the Trade Marks Office. The delegate was required to consider the provisions of regulation 5.15 of the Trade Marks Regulations, which govern applications for extensions of time, and to assess the reasons provided by Mara against established legal principles concerning the duration of proceedings, the inconvenience to parties, and the public interest.

The delegate reasoned that while regulation 5.15(3) requires the Registrar to be reasonably satisfied that an extension is appropriate, and that case law permits ongoing settlement negotiations as a valid reason for delay, the prolonged period of nearly two years that had already elapsed since the evidence was due, coupled with Mara's repeated failure to provide detailed or compelling reasons for further delay, weighed against granting the extension. The delegate noted that Mara's submissions, provided late, did offer more detail regarding ongoing settlement negotiations and correspondence, which had not been adequately supplied to the Office earlier. Despite the procedural shortcomings, the delegate considered it in the interests of natural justice to allow Mara additional time to file its evidence, given the evidence of ongoing, albeit irregular, correspondence and settlement efforts.

Consequently, the delegate allowed Mara's application for an extension of time to serve its evidence in answer, setting the final date for service as 2 July 2000. The delegate cautioned that future requests would require more compelling reasons, including clear indications of negotiation progress and evidence gathering timelines, and that unsupported claims of negotiations would not suffice for extended periods.