Trade Development Authority of Pakistan v The Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India
[2024] ATMO 154
•28 August 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Applications by the Trade Development Authority of Pakistan for extensions of time to file a Notice of Intention to Oppose trade mark no. 1991951– BASMATI with device - in the name of the Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India.
| Delegate: | Bianca Irgang |
| Representation: | Opponent: Shauna Ross of counsel instructed by IP Solved Applicant:Anthony Middleton of counsel instructed by Corrs Chambers Westgarth |
| Decision: | 2024 ATMO 154 Trade Marks Regulations 1995 (Cth) Application under regulation 5.9 for extensions of time to file a Notice of Intention to Oppose. Extensions of time granted. Parties to bear their own costs |
Background
The Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India (‘the applicant’) filed trade mark application number 1991951 on 26 February 2019. The details of the trade mark are as follows:
Trade mark: (the ‘Trade Mark’)
Trade mark application no: 1991951
Lodgement Date: 26 February 2019
Convention Details: 233507
28 August 2018
Sri Lanka
Goods Specification: Class 30: Rice
The Trade Mark was advertised as accepted on 14 September 2023.
On the 14 November 2023 a third party, Ricegrowers Limited, filed a Notice of Intention to Oppose followed by its Statement of Grounds and Particulars. The applicant filed its Notice of Intention to Defend on 2 February 2024. The parties entered into a Cooling Off Period commencing on 6 March 2024.
On 8 March 2024 the Trade Development Authority of Pakistan (‘the opponent’) filed an Extension of Time request (‘EOT’) under reg. 5.9 of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’) requesting a four month EOT until 14 March 2024 in which to file its Notice of Intention to Oppose (‘NIO’).
The opponent fulfilled the requirements for filing the EOT and stated that the request was made on the basis of several errors or omissions. To this end, Timothy David Marshall, provided a statutory declaration outlining the circumstances of the errors or omissions which he asserted prevented the filing of the NIO.
On the 21 March 2024 the Registrar wrote to the opponent indicating that it intended to refuse the opponent’s EOT due to a lack of detail in the statutory declaration of Timothy Marshall and insufficient information to show the causal connection between the alleged error/omissions and the failure to file the NIO on time. It was noted that the NIO had also not been filed by the requested extension date of 14 March 2024.
On 4 April 2024 the opponent applied for an additional one month EOT in which to file its NIO from 14 March 2024 until 14 April 2024. It was accompanied by another statutory declaration prepared by Timothy Marshall, outlining the circumstances of the errors and omissions by the opponent’s agent which was directly responsible for the NIO not being filed on 8 March 2024 along with the opponent’s first EOT to file a NIO.
The opponent also filed another declaration made by Muhammad Ashraf which provided additional information in support of the EOT to file a NIO. The Registrar carefully considered all the information provided in the additional declaration and wrote to the parties on 12 April 2024 advising the parties that as the NIO was filed after the statutory deadline, reg. 5.10(2) applies, whereby the Registrar must not grant the extension unless she is “…satisfied that there is sufficient reason for the delay in making the request.” The delegate then went on to advise the opponent:
The EOT application was received on 8 March 2024. The Ashraf Declaration states that: “On 22 February 2024, I was questioned by a colleague from the Ministry on the matters related to the APEDA’s application for Basmati. I conducted a search of IP Australia’s online records which showed significant changes in the status of the Application. On 4 March 2024, I recorded the status of the Application – see MA-2 and the print-out saved on 4 March 2024.” It is unclear if Mr Ashraf conducted searches on the Australian Trade Mark Search (ATMS) on 22 February 2024; and if not, there is no explanation in the Ashraf Declaration as to why it took Mr Ashraf until 4 March 2024 to conduct a search on the ATMS and also subsequently contact IP Solved that same day. It currently appears, from the documents filed in support of the EOT, that no action was taken, or enquiries made, between 22 February 2024 and 4 March 2024 in relation to the trade mark despite the urgent nature of the matter
Further, the cover letter to Mr Marshall’s first declaration dated 8 March 2024 (First Marshall Declaration) states (with mark-up): “Our client, the Trade Development Authority of Pakistan, has today filed a Notice of Intention to Oppose the above referenced Application”. I require clarification of this statement – on 8 March 2024, who was expected/going to file the NIO – the potential opponent, their agent, or another party? This appears to contradict the Second Marshall Declaration at paragraph 10 where it states: “At this point, I concluded that we had omitted to file the Notice of Intention to Oppose on 8 March 2024 with the other papers we filed on that day, despite it being our clear intention to file the Notice of Intention to Oppose on 8 March 2024 and our client’s clear instructions to do so.”
Accordingly, I am maintaining my intention to refuse the EOT at this stage
On 23 April 2024 the opponent filed its Statement of Grounds and Particulars (‘SGP’) along with an additional declaration by Timothy Marshall and a further declaration made by Muhammad Ashraf. On 2 May 2024 the Registrar advised the parties that she was satisfied that an error occurred by the opponent’s agent in not filing the NIO by the 14 November 2023 deadline and that she intended to grant the EOTs until 4 April 2024 which is when the opponent filed its NIO with the Office.
On 8 May 2024 the applicant duly objected and requested a hearing on the matter of the EOT.
Evidence
The opponent has filed with this Office five declarations to support its request for an EOT. These declarations are as follows:
The declaration of Timothy David Marshall, Attorney at IP Solved (ANZ) Pty Ltd (‘IP Solved’), dated 8 March 2024 accompanied by Exhibits TDM-1 to TDM-3 (‘Marshall 1’);
The declaration of Timothy David Marshall, dated 20 March 2024 accompanied by Exhibit TDM2-1 (‘Marshall 2’);
The declaration of Muhammad Ashraf, Consul General & Trade Commissioner of Pakistan, dated 4 April 2024 accompanied by Exhibits MA-1 and MA-2 including Annex-1 (‘Ashraf 1’);
The declaration of Timothy David Marshall, dated 22 April 2024 accompanied by Exhibit TDM3-1 (‘Marshall 3’); and
The declaration of Muhammad Ashraf, dated 22 April 2024 accompanied by Confidential Exhibit MA2-1 (‘Ashraf 2’).
The applicant and the opponent provided written and oral submissions for consideration by way of their legal representatives.
The Hearing
I heard the EOT application by teleconference as a delegate of the Registrar of Trade Marks on 19 June 2024. The Opponent was represented by Shauna Ross of counsel instructed by IP Solved (ANZ) Pty Ltd. The Applicant was represented by Anthony Middleton of counsel instructed by Corrs Chambers Westgarth.
The Law
Subsection 52(1) of the Act provides that any person may oppose an application to register a trade mark by filing a Notice of Opposition in the manner and form prescribed by the Act and within the prescribed period.
In this case the relevant advertisement was 14 September 2023, which means that the opponent’s NIO was due by 14 November 2023. The opponent filed the NIO on 4 April 2024. As a preliminary matter and for the sake of clarity, I will address the issue of the SGP now. I find that should these EOTs be granted, pursuant to reg 5.7(1) the SGP would therefore have been due on 4 May 2024. I note that it was filed with the Office on 23 April 2024 and therefore would have been filed in time. Thus, should the EOTs be granted, the entire notice of opposition will have been filed, allowing the formal opposition process against registration of the Trade Mark to commence.
As the hearing is about an extension of time in which to file a NIO I turn to regs 5.9 and 5.10 which provide for an extension of that deadline.
Regulation 5.9 states:
5.9 Extension of time for filing—application
(1) A person who intends to oppose an application under subsection 52(1) of the Act may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under subregulation 5.6(1); or
(b) the period for filing a statement of grounds and particulars under subregulation 5.7(1).
(2) A request under paragraph (1)(a) or (b) may be made:
(a) within the period for filing the document in question; or
(b) before the trade mark is entered on the Register under section 69 of the Act.
Note: See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice or the statement of grounds and particulars has ended—the reason why the request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds:
(a) an error or omission by the person, the person’s agent, the Registrar or an employee;
(b) circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
Regulation 5.10 deals with the power to grant the Request, and is set out below:
5.10 Extension of time for filing—grant
(1) The Registrar may grant a request under subregulation 5.9(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.
(2) However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request.
(3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
Regulation 5.10(1) explicitly ties the power to grant the Request back to the grounds in reg 5.9(4). The presence of the word ‘may’ imports all the discretionary considerations that have been expounded by juridical consideration of the general extension of time provisions particularly in patents and trade marks matters. However, most of the general considerations are not of any prominence in relation to these facts. For example, there is a clear purpose to the extension and the Registrar is not functus officio.
Discussion
There has been a lot of correspondence entered into by the parties on this matter. The main contention has always been the reasons why the opponent was delayed in filing the NIO. The sequence of events leading up to the opponent filing its EOT is as follows:
6 September 2022, 21 November 2022, 23 January 2023, 4 and 5 March 2023[1] Ashraf 1 explains Mr Ashraf checked the status of the Trade Mark as part of his duties before obtaining legal representation and advice from IP Solved.[2]
[1] MA-2 accompanying Ashraf 1
[2] According to Ashraf 1, Mr Ashraf’s many duties as the Consul General & Trade Commissioner of Pakistan included the promotion of importation and sale of products from Pakistan in Australia, which included ensuring that products of Pakistan could be sold in Australia under appropriate names, including, in the present instance, that Basmati Rice produced in Pakistan could be sold as bearing the name Basmati Rice in Australia. This also involved reporting back to stakeholders including the Ministry of Commerce and the Trade Development Authority of Pakistan on issues including the Trade Mark which Mr Ashraf was aware of and checking the status of. Mr Ashraf duties also included finding appropriate advice and representation in Australia and instructing service providers such as Lawyers.
22 May 2023, IP Solved provided advice to the opponent to oppose the Trade Mark at the appropriate juncture being ‘if and when the Trade Mark was accepted’. At the time of providing advice the Trade Mark’s status was ‘Deferred’. According to Marshall 1, IP Solved understood that the opponent did not require them to watch the status of the Trade Mark. However, it has come to light that the opponent did want (and understood it was happening) IP Solved to watch the status of the Trade Mark and oppose it at the ‘appropriate juncture’.
14 September 2023, the Trade Mark Application was advertised as accepted.
22 February 2024, Mr Ashraf is asked by Mr Asif Raza from the Ministry of Commerce on matters related to the applicant’s Trade Mark Application No. 1991950 BASMATI which is currently before the Federal Court and which Mr Ashraf had been monitoring.[3]
[3] Ashraf 1.
4 March 2024, while preparing a response to Mr Raza on Trade Mark Application No. 1991950 and during the course of preparing his hand-over notes for the newly appointed Consul General, being Mr Qamar Zaman, Mr Ashraf checked the status of the Trade Mark and discovered significant changes in the status of the Trade Mark and that it had been accepted.[4]
[4] Ashraf 1 and Exhibit MA-2 accompanying Ashraf 1; Ashraf 2.
4 March 2024, Mr Ashraf requested IP Solved call him to discuss the Trade Mark.[5] This call revealed that neither party had been watching the Trade Mark as they understood the other to be doing so and that no NIO had been filed.
[5] Marshall 1 and Exhibit TDM-1.
5 March 2024, Marshall 1 states that written advice was provided to the opponent in relation to opposing the Trade Mark.[6]
[6] Marshall 1 and Exhibit TDM-2.
6 March 2024, Mr Mashall provides advice to the opponent on filing a late EOT to file a NIO.[7]
[7] Exhibit TDM-2 accompanying Marshall 1.
8 March 2024 the opponent filed an EOT to file a NIO the Trade Mark accompanied by Marshall 1. Marshall 1 stated that on 22 May 2023 the law firm IP Solved provided advice to the opponent in relation to the Trade Mark. IP Solved understood that the opponent did not require them to watch the status of the Trade Mark. However, it had come to light that the opponent did want (and understood it was happening) IP Solved to watch the status of the Trade Mark and oppose it at the ‘appropriate juncture’ being once/if it was accepted.
21 March 2024, IP Australian sent a letter to the parties advising that the Registrar intended to refuse the EOT to file the NIO due to insufficient information.
4 April 2024, the opponent applied for an additional one month EOT in which to file its NIO from 14 March 2024 until 14 April 2024 along with Marshall 2 and Ashraf 1. The additional EOT was requested based upon an error or omission of the potential opponent agent as on 20 March 2024 Mr Marshall realised that the filing fee of $250 to file a NIO was not on the opponent’s file. Marshall 2 outlines that a call was made to IP Australia that confirmed that no NIO had been filed with the opponent’s EOT to file a NIO on the 8 March 2024 despite the clear instructions from the opponent to file an NIO.
12 April 2024, the Registrar wrote to the parties advising that as the EOT request had been filed after the statutory period that reg 5.10(2) applies and that the information provided was not sufficient to grant the EOT requests.
23 April 2024, IP Solved provided additional comment along with Marshall 3 and Ashraf 2.
2 May 2024, the Registrar advised the parties that she was satisfied that an error occurred by the opponent’s agent in not filing the NIO by the 14 November 2023 deadline and that she intended to grant the EOTs until the 4 April 2024.
On 8 May 2024, the applicant duly objected and requested a hearing on the matter of the EOT.
Given all of the above information it is clear that the essence of the opponent’s case is that it has always had the intention to oppose the Trade Mark which was frustrated by the misunderstanding of who was going to be watching the Trade Mark on the Trade Mark Register after the opponent had engaged legal representation. This was further compounded by delays in obtaining additional information and instructions both on the opponent’s part and its legal representative.
The applicant has argued that neither extension should be granted as:
None of the circumstances raised in the evidence in relation to the First EOT Request or Second EOT Request reveal a relevant error or omission on behalf of TDAP or its representative, IP Solved (ANZ) Pty Ltd (IP Solved).
Further or alternatively … there has been a failure to fully and frankly explain the reasons behind the First EOT Request and Second EOT Request. There is an inconsistency in the position taken by TDAP (the opponent) as to the asserted error or omission and this is exacerbated by TDAP (the opponent) withholding the relevant communications behind the purported intention of TDAP to oppose the Mark.
Further or alternatively … in relation to the First EOT Request, there has not been a sufficient explanation for the delay in making this request and it must be refused on this basis alone.
Alternatively … the discretion in reg 5.10(1) should not be exercised in favour of TDAP for either the First EOT Request or Second EOT Request, particularly where the granting of either request would fundamentally undermine the processes for publishing the acceptance of a trade mark and the associated period for filing opposition proceedings.
Having regard to the evidence filed, and the submissions made, I am satisfied that the opponent had a serious intention to oppose the Trade Mark at all times. I am also satisfied that through errors and omissions it was frustrated by a number of situations which further compounded each other to the point where the opponent, by way of IP Solved, was required to pay and apply for two EOTs in order to file its NIO. The actions of the opponent in its careful monitoring of the Trade Mark up until the time where legal representation was obtained and instructions to oppose was given, followed by the urgent and multiple calls and emails between the opponent and IP Solved while Mr Ashraf was preparing to hand-over to the newly appointed Consul General, lends strength and credibility to the opponent’s claim that it always intended to oppose the Trade Mark.
Contrary to the applicant’s assertions that full and frank disclosure for the delay in filing the EOTs has not been provided, including the delay between Mr Ashraf being requested to update the Ministry of Commerce on matters related to the applicant’s Trade Mark Application No. 1991950 BASMATI (a delay from 22 February 2024 until 4 March 2024), the evidence indicates that the opponent has continually taken positive steps to obtain information and file the required documents once the initial error was discovered and all during a period of upheaval that was the hand-over for the Consul General. In particular, I note that the delay from 22 February 2024 until 4 March 2024 is not an unreasonable delay given that the request for an update was on a different trade mark and the opponent, at that point, believed that IP Solved was watching the Trade Mark and would advise when the status changed. Additional errors were then made by the opponent’s agent which required the filing of the second EOT to file a NIO when IP Solved realised that in filing the first EOT it had omitted to also file the NIO which had directly been requested by the opponent.
The applicant has argued that opponent made deliberate choices to withhold communications that were behind the intention of the opponent to oppose. The applicant has stated that lack of clarity surrounding the delay in filing the NIO and its EOTs does not justify the Registrar in granting an extension sought under reg 5.10(1). I am not persuaded by this argument.
It is clear that the opponent has always intended to mount a serious opposition against the Trade Mark and that there were errors on the part of both the opponent and its agent which frustrated its intention to file the NIO and required that is apply for EOTs. While some of the communications the applicant referred to, such as Confidential Exhibit MA2-2 which contained portions of the hand over notes for the new Consul General, were withheld on the basis of confidentiality, the Registrar and I have not considered them for the basis of making this decision. I am satisfied that there is sufficient information contained in the five statutory declarations filed by the opponent (excluding the Confidential Exhibit MA2-2) that there was an ‘error or omission by the person, the person’s agent,’ for the purposes of reg. 5.9(4)(a) of the Regulations.
Having found an error or omission on the part of the opponent and their agent, I am given, by the wording of reg 5.10(1), a discretion as to whether or not to allow the extension of time: see, for example, Cynthia Armaro[8]. In deciding how to exercise this discretion, I adopt the principles developed by Hearing Officer Michael Homann in Re Ausorb Pty Limited[9], and consider that the most important factors in coming to a ‘fair and reasonable’ decision in the matter include the relative inconvenience to the parties concerned and the public interest, including the desirability of operating the trade mark system efficiently and without unreasonable delays. See also Re Hall[10] which also adopts those principles.
[8] [2007] ATMO 9 [16].
[9] (1996) 36 IPR 178.
[10] (1998) AIPC 91-425 [37],[393]-[394].
Should the EOTs not be granted the opponent will have lost the opportunity to pursue its opposition against the Trade Mark and test the grounds of opposition under sections 43 and 177 of the Act. As a consequence, subject to any other proceedings on foot before this office or the courts, the applicant could gain unchallenged registration of a Trade Mark that, given the nature of those two grounds of opposition, may cause problems in the marketplace for the opponent. In relation to possible inconvenience to the applicant, as already alluded to, registration of the Trade Mark is already under opposition by another party. As such, commencing a second opposition would do little to inconvenience the applicant, since registration was already being held up by the fact of that earlier-filed opposition. On balance, it seems that the relative inconvenience would be to the opponent if the EOTs were not granted.In InsfinInsurance + Finance Group Pty Ltd v Razor USA LLC[11] Hearing Officer McDonagh considered a similar issue under s 224 and stated:
There is undoubtedly a public interest in the system of registration of trade marks being conducted with regularity and certainty. There is also public interest in registered owners of trade marks who are in fact using their trade marks being able to continue to do so. I take guidance from the High Court:
In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be.
[11] [2008] ATMO 80 (citations omitted).
Therefore, I consider that at this stage the public interest is better served if the substantive opposition is allowed to continue and be resolved before the Registrar rather than the opponent having to bring a separate application to cancel the Trade Mark in court, which it could do on the basis of the same grounds on which the opposition is brought. I am satisfied that I should exercise my discretion to allow the extension of time as requested by the opponent.
Decision
Pursuant to reg. 5.10(1) of the Regulations I extend the time for the opponent to file its NIO.
I order that the parties bear their own costs in relation to this hearing.
Bianca Irgang
Hearing Officer
Trade Marks and Designs Hearings
28 August 2024
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