Vito Mitolo & Son Pty Ltd v Mitolo Wines Aust Pty Ltd - [2018] ATMO 26

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Vito Mitolo & Son Pty Ltd to registration of trade mark applications 1789135 MITOLO and 1789821 MITOLO WINES in the name of Mitolo Wines Aust Pty Ltd
-and-
Applications by Vito Mitolo & Son Pty Ltd for extensions of time to file evidence in support

Delegate:	Michael Kirov
Representation:	Opponent: Nicholas Swan of Counsel, instructed by Dimitri Panayotopoulos of Georgiadis Lawyers Applicant: Andrew Williams of Finlaysons Lawyers
Decision:	2018 ATMO 26 Applications under reg 5.15 of the Trade Marks Regulations 1995 for extensions to file evidence in support – not acting promptly and diligently at all times – no exceptional circumstances - extensions refused.

Background

Applications 1789135 MITOLO and 1789821 MITOLO WINES (“the Applications”) were filed by Mitolo Wines Aust Pty Ltd (“the Applicant”) on 11 and 15 August 2016 respectively and are currently being opposed by Vito Mitolo & Son Pty Ltd (“the Opponent”).
This matter concerns formal objections by the Applicant incidental to the oppositions, in particular objections to the Opponent’s request on 14 July 2017 for extensions of time (“EOT”s) of one month, from 18 and 19 July 2017 to 18 and 19 August 2017 respectively, to file evidence in support (“EIS”) of the oppositions (“the Request”). 19 August being a Saturday, the extended deadline sought in the case of opposed application 1789821 is effectively Monday, 21 August 2017.
It was not in dispute that the Request is to be determined under reg 5.15 of the Trade Marks Regulations 1995 (“the TM Regulations”). In this regard reg 5.14 details the initial time limits applicable to the filing of evidence in oppositions (being 3 months in the case of EIS) and reg 5.15 then addresses the question of extensions as follows:

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 reasons given by the Opponent’s attorneys on 14 July for the Request were that:
The Opposition [sic] has made all reasonable efforts to comply with the relevant filing requirements in that it has:
1. Engaged Counsel to assess the evidentiary basis of the Opposition;
2. Discovered a considerable amount of evidence, being the content of telephone conversations, verbal communications and imagery of labels etc; and
3. Prepared and collated that aforementioned evidence into a format which can be disclosed to the Applicant.
Despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, the Opposition [sic] is unable to do so as the relevant witnesses are currently overseas and are unable to swear on oath that the evidence to be filed is true and accurate.
The Opposition [sic] is overseas and has limited contact. The Opposition [sic] is due to return on 28 July 2017 at which time the evidence will be verified and will be filed in a format accepted by IP Australia. The Opposition [sic] further advises that there is still evidence sought which has not yet been located or disclosed. Such evidence is likely to presented [sic] in the format of expert evidence during Federal Court Proceedings SAD 340/2016 [“the Federal Court proceedings”].[1]
It is reasonable in the circumstances to grant the Opposition [sic] an extension of time of one (1) month to allow for the witnesses [sic] return to Australia and their subsequent finalisation of the evidence.
There is no identifiable prejudice to the Applicant in this extension of time being granted.
[1] The Applicant commenced proceedings against the Opponent (and others) in the Federal Court on 21 December 2016 alleging, inter alia, infringement of its 1999 registration 801717 (33) for the trade mark MITOLO. The Opponent filed a cross-claim on 9 February 2017 and the matters are yet to be determined.
A delegate of the Registrar responded as follows on 19 July 2017 indicating IP Australia’s intention to refuse the Request:
I refer to your application received 14 July 2017 for extensions of time of one month to file evidence in support of the opposition[s]. I have given a copy of the application to the other party.
I am not satisfied that the reasons relied upon in your extension application justify granting the extensions.
Reg 5.15(2)(a) requires a party to have made “all reasonable efforts” to comply with relevant filing requirements and to have acted “promptly and diligently” at all times. Consequently, a party making a request to the Registrar for an extension of time should be able to demonstrate a consistent pattern of reasonable effort, promptness and diligence in relation to all their endeavours so far to file their evidence within the statutory timeframe.
It is essential that the party seeking the extension presents sufficient information to justify the extension. Although you have explained what evidence has been prepared and what has prevented the opponent filing its evidence, there is no information about what actions and when actions were taken during the 3 month statutory period.
A timeline outlining the steps taken in the preparation of evidence during the statutory timeframe is required to demonstrate whether the extension applicant has acted promptly and diligently at all times.
I will allow you 14 days from the date of this letter to file further reasons in support of the extension[s] of time OR to request a hearing in the matter of the extension[s] of time. A hearing request must be accompanied by the fee of $400 per trade mark application.
If you do neither, within the time allowed, the extension[s] of time may be refused without further notice.
The current extension of time provisions are discussed at length in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 [“TRED”] and the trade mark decision MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 [“MG Icon”].
A copy of this letter has been sent to the [Applicant] for information.
The delegate separately emailed the Opponent’s attorneys that same day, advising:
I note that the deadline for filing evidence in respect of application 1789135 expired on 18 July 2017. The deadline for application 1789821 is today, 19 July 2017. You may wish to consider filing the unsigned declaration in relation [to] application 1789821.
The Opponent’s attorneys responded on 1 August with the below “timeline” (“the Timeline”), adding:
We submit that the enclosed timeline evidences that we have made prompt, diligent and consistent efforts to file the evidence within the statutory timeframe.
Over the period of three (3) months, we have substantially drafted and redrafted the Declaration[s] of Vito & Anthony Mitolo, collated the necessary evidence which was available to us (including the contents of telephone conversations, SMS messages, Instagram and Facebook posts in snapshot format), have considered the Applicant’s expert report in the Federal Court matter and accordingly have reconsidered our opposition in that light, and have sought the opinion of Counsel to finalise all evidence for filing.
We once again reiterate that the evidence to be filed in support of this opposition is in a format which is almost ready to be filed due to the considerable and consistent endeavours we have made in attempting to comply with the statutory timeframe.
We are, however, still waiting for Counsel to consider the evidence to determine its admissibility and for our client to return from Italy after a one (1) month holiday to confirm his instructions and swear to the Declaration.
It is for those reasons that we have been unable to comply with the statutory timeframe.
With reference to your verbal advice on 19 July 2017 to submit the evidence in its current format to avoid being in breach of the statutory timeframe, we advise that without final approval by Counsel and client we are unable to comply with such a request given the risks of adducing evidence which is incomplete or misleading.
We would instead be grateful if the application for an extension of time was granted to allow us the opportunity to finalise the advice of Counsel and to finalise the Declarations of Vito & Anthony Mitolo pending their return from Italy to ensure all evidence is complete and correct.
We anticipate that an extension of two (2) weeks would be sufficient in allowing us to finalise the evidence in this matter.
If you have any questions, please do not hesitate to contact us to discuss any aspect of the above.

DATE	STEPS UNDERTAKEN
10/03/2017	Opposition to Trademark filed
10/03/2017	Telephone out to Vito Mitolo
15/03/2017	Waveform Label proofs received
23/03/2017	Meeting between Vito Mitolo, Instructing Solicitor and Counsel
01/04/2017	Telephone out to Counsel
04/04/2017-20/05/2017	Draft and further drafting of Declaration of Vito Mitolo, including collation of evidence and proof by Senior Solicitor
15/05/2017	Telephone call with Vito Mitolo
12/05/2017 [sic]	Telephone out to Counsel
15/05/2017	Telephone out to Counsel
29/05/2017	Meeting with Vito Mitolo to take instructions on Declaration
02/06/2017	Further drafting of Declaration of Vito Mitolo and inclusion of evidence annexures
02/06/2017	Solicitor managing this matter leaves employment of Georgiadis Lawyers
20/06/2017	Meeting with Vito Mitolo to take further instructions on Declaration
22/06/2017-03/07/2017	Further drafting of Declaration of Vito Mitolo and expansion of Statement of Grounds of Opposition in light of evidence
28/06/2017	Vito Mitolo and Anthony Mitolo travel to Italy - unable to contact
03/07/2017	Finalisation of Statement of Vito Mitolo and Annexures - Awaiting Counsel’s consideration and sign-off - no response from Counsel
13/07/2017	Application for Extension of Time to file evidence
13/07/2017	Receipt of Report of Professor Lockshin in relation to subject marks
13/07/2017	Assessment of Report of Professor Lockshin in relation to Declaration of Vito Mitolo
13/07/2017	Follow up Counsel in relation to matter - no response
19/07/2017	Further drafting of Declaration of Vito Mitolo in response to Report of Professor Lockshin
19/07/2017	Telephone call in from Blazenka of IP Australia providing advice to file Declaration in current format or to file timeline of work undertaken
20/07/2017	Further email to Counsel to finalise Declaration of Vito Mitolo for filing in light of IP Australia’s recommendation
28/07/2017	Vito Mitolo and Anthony Mitolo return from Italy
31/07/2017	Meeting with Counsel to finalise Declaration for filing – Counsel unavailable at short notice

The Registrar’s delegate responded on 2 August indicating IP Australia’s intention to favourably reconsider the Request, but adding:
However before I make my final decision I am required to give the other party an opportunity to make representations on the extension. The other party has until 17 August 2017 to make representations. They may object by filing written submissions or by requesting a hearing on the matter of the extension.
In the event, the Applicant’s attorneys made written representations dated 14 August 2017, submitting that the Request be refused because the Opponent had neither demonstrated it had acted “promptly and diligently at all times” in filing its evidence, nor had it shown there were any “exceptional circumstances” to excuse the delay. The matters raised in these representations were relied on at the subsequent hearing by the Applicant’s attorney, Andrew Williams, and so I will describe them in more detail when I discuss his hearing submissions below.
A delegate of the Registrar wrote to the parties on 17 August allowing the Opponent 14 days to respond to the Applicant’s attorneys’ representations before a decision to grant or refuse the Request would be made. The delegate separately emailed the Opponent’s attorneys that day, advising:
To preserve your client’s position, you should file the evidence in support by 18 August 2017 (1789135) and 19 August 2017 (1789821) even if the outcome of the extensions is unknown.
The Opponent did seek to file its proposed EIS by the putative extended deadlines of Friday, 18 August for application 1789135 and Saturday, 19 August (effectively Monday, 21 August) for application 1789821. The proposed EIS consists of an affidavit by Vito Mitolo sworn on 17 August 2107 (“VMitolo”), which was uploaded to IP Australia’s Objective Connect database that day and an affidavit sworn by Anthony Mitolo on Monday, 21 August 2017 (“AMitolo”), an unsigned version of which was also uploaded on 17 August, but the final, executed version of which was not uploaded until 21 August. I note that even if the Request is granted, accordingly, AMitolo would not have been filed by the putative 18 August deadline relevant to the opposition to application 1789135.
On 31 August 2017 the Opponent’s attorneys wrote to IP Australia in response to the Applicant’s attorneys representations, submitting the Opponent had complied with reg 5.15(2)(a) and that the Request should therefore be granted. Again, the matters raised in the letter were relied on by the Opponent’s Counsel, Nicholas Swan, at the hearing and I will discuss them below when I deal with his submissions.
After considering both parties’ submissions, a delegate of the Registrar informed the parties on 28 September that the Registrar intended to refuse the Request, explaining:[2]
[2] The dates the delegate mentions relate to application 1789135. I have put the relevant dates for application 1789821 in square brackets.
In the extension application filed on 14 July 2017, the opponent is relying on subregulation 5.15(2)(a) however I note in the rebuttal to the objection dated 31 August 2017 the opponent also makes mention of exceptional circumstances. I am not satisfied that either ground has been made out for the following reasons.
An extension under subregulation 5.15(2)(a) requires a party to have acted “promptly and diligently” at all times within the statutory period and to have made “all reasonable efforts” to comply with relevant filing requirements.
I note the following important points:
Both the notice of intention to oppose (NIO) and statement of grounds and particulars (SGP) were filed on 9 March 2017;
The three month statutory period for filing evidence in support ran from 18 April 2017 [19 April] to 18 July 2017 [19 July];
Vito Mitolo and Anthony Mitolo were in Italy on holiday from 28 June 2017 until 28 July 2017;
The timeline of steps undertaken covers the period from 10 March 2017 to 31 July 2017;
Nowhere in the timeline is there any mention of meetings or telephone conversations with Anthony Mitolo, nor is there any indication of when the drafting of Anthony Mitolo’s Affidavit commenced or how long the drafting took to complete;
On 18 August 2017, the opponent filed a signed Affidavit made by Vito Mitolo on 17 August 2017 and an unsigned Affidavit made by Anthony Mitolo;
On 21 August 2017, the opponent filed the signed Affidavit made by Anthony Mitolo on 21 August 2017, which is outside of the requested extension period.
No information has been provided to indicate that the drafting of Anthony Mitolo’s Affidavit began during the statutory period, and given that Anthony Mitolo was overseas and uncontactable until 10 days after the statutory period expired, I can only assume that Anthony Mitolo’s Affidavit was drafted after the statutory period had expired. I further note that the opponent failed to file the signed Affidavit by Anthony Mitolo until 21 August, some 24 days after returning from Italy and more than one month after the statutory period expired.
As the statutory period expired on 18 July [19 July], the steps listed in the timeline from 19 July to 31 July do not assist the opponent in demonstrating that they were preparing the evidence in a prompt and diligent manner at all times and made all reasonable efforts to comply with the filing requirements within the statutory period.
In addition, “the possibility of settlement negotiations covering the Federal Court proceedings and the Trade Mark applications…” does not constitute exceptional circumstances under subregulation 5.15(2)(b), as has been submitted by the opponent.
Before the extension application is formally refused, you have until Wednesday 11 October 2017 to request a hearing in the matter of the application for extension of time. A hearing request must be accompanied by the fee of $400.
If a hearing is not requested, the extension may be refused without further notice.
On 10 October the Opponent did request a hearing, which I took as a delegate of the Registrar on 20 November 2017 in Canberra. The parties’ representatives both appeared by telephone. The Applicant was represented by Andrew Williams of Finlaysons Lawyers. The Opponent was represented by Nicholas Swan of Counsel, instructed by Dimitri Panayotopoulos of Georgiadis Lawyers. Both parties’ representatives also filed written submissions.

Discussion

As mentioned, it was not in dispute that the matter is to be determined under reg 5.15 of the TM Regulations, which is set out at paragraph 3 above. That said, the Opponent had originally indicated it was relying solely on reg 5.15(2)(a) to justify the Request. At the hearing the Opponent also submitted in the alternative that there were “exceptional circumstances” such that reg 5.15(2)(b) might be relied on. I will accordingly address both submissions in this decision.
I note that reg 5.15 came into force on 15 April 2013, being the same time as significant amendments to the both the Act and the Patents Act 1990 and Patents Regulations 1991 intended, inter alia, to streamline the process of obtaining trade mark and patent registration (“the RTB Amendments”). The Explanatory Statement accompanying the RTB Amendments (“the ES”) states:
A second purpose of the [RTB Amendments] is to amend the Patents Regulations and the [TM Regulations] to reduce delays in the resolution of patent and trade marks applications.
…
Schedule 3 to the [RTB Amendments] amends both the Patent[s] Regulations and [TM] Regulations to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence.[3]
[3] Explanatory Statement, pp 1-2.
As to reg 5.15 of the TM Regulations in particular, the ES says: [4]
New regulation 5.15 narrows the circumstances in which the Registrar will grant an extension of time to provide evidence. Extension of the evidentiary periods is at the discretion of the Registrar and only where the Registrar is satisfied that the party entitled to file evidence in that period has acted promptly and diligently at all times since the opposition proceedings began, but despite that, or because of some other exceptional circumstances, cannot file the evidence in that period. Once the conditions are met the Registrar has the discretion to consider whether or not it is appropriate that an extension of time be granted.
The policy and intended operation of this regulation 5.15 is the same as for the corresponding regulation 5.9 at item 2 for the Patent[s] Regulations above, which sets out the new test for extending evidential periods for patents oppositions.
[4] Explanatory Statement, pp 19-20.

As to the corresponding reg 5.9 of the Patents Regulations, the ES has this to say with respect to onus and the Commissioner’s (or Registrar’s) discretion:[5]
A major cause of protracted opposition proceedings is extensions to the various time periods for extending evidence. The law has developed in such a way as to significantly narrow the Commissioner’s [or Registrar’s] discretion to disallow extensions. As a result, oppositions are normally subject to multiple [EOTs] and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.
New subregulation 5.9(2) [corresponding to reg 5.15(2) of the TM Regulations] addresses this issue by introducing a new test for determining whether an [EOT] for filing evidence is justified. The Commissioner [or Registrar] will not be able to extend time periods unless at least one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner [or Registrar] of this. Once the conditions in subregulation 5.9(2) [TM reg 5.15(2)] are met, the Commissioner [or Registrar] still has the discretion to consider whether the or not it is appropriate that an [EOT] be granted. In applying the test, the Commissioner [or Registrar] will not be required to give a direction to extend a period solely because of delays caused by an agent or legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner [or Registrar] that an extension is justified under the test, the Commissioner [or Registrar] will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time.
[5] Explanatory Statement, p 10.
Finally, the ES says in relation to the “exceptional circumstances” contemplated by the RTB amendments:[6]
New subregulation 5.9(5) [TM reg 5.15(4)] provides an inclusive list of circumstances that may be considered by the Commissioner [or Registrar] as exceptional circumstances for the purposes of subregulation 5.9(2)(b) [TM reg 5.15(2)(b)].
A change in circumstances may not in itself be exceptional. For example, if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, then the sudden loss of the preferred expert is not an exceptional circumstance.
[6] Explanatory Statement, p 10.
As both Mr Swan and Mr Williams acknowledged in their submissions reg 5.15 has now been considered in several decisions of the Registrar.[7] Both parties agreed that the relevant threshold questions the Opponent must answer before the Registrar’s discretion to grant the Request might be invoked are as formulated by the Commissioner’s delegate in TRED at [34]-[35]:
[34] …
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
[35] I can extend the time for filing evidence only if I am satisfied that the answers to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.
[7] See for example Dungbeatle Enterprises (Pty) Ltd and Scarab Australia Pty Ltd v Milir Enterprises Pty Ltd [2015] ATMO 95, Rotary International v Interact Australia (Victoria) Ltd [2015] ATMO 44, Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, Andando Pty Ltd v DDT Liners (Australia) Pty Ltd [2016] ATMO 43 and Yajun Li v Zhou Hei Ya Holdings (Hong Kong) Limited [2017] ATMO 71, all involving refusals to grant extensions to file EIS.
Dealing firstly with questions 1 and 2, Mr Swan submitted that the terms “reasonable efforts” and “acting promptly and diligently at all times” used in reg 5.15(2)(a) should not be read as “requiring any party to put aside all other matters they may be attending to so as to devote themselves entirely to the trademark matter.” He submitted that what constitutes “diligence” in this context should be gauged subjectively in that it:
… must be assessed against what a party could reasonably be expected to perceive was required during the relevant period, that is the period allowed for the filing of the relevant evidence. For example, if a party considered that a statement should be obtained from a particular witness who was not initially available for two weeks because they were overseas but assessed that it would still be possible to obtain a statement from that witness well within time then it could not be said that the party was less than diligent for failing to travel the world in the first two weeks so as to try and obtain evidence from such a witness. What is diligent must be assessed against the circumstances.
It was a relevant circumstance in the present matter, argued Mr Swan, that the principal oppositions to applications 1789135 and 1789821 were based on the Opponent’s claimed reputation in the MITOLO trade mark in relevant classes and its allegation that the applications were filed in bad faith. This was relevant, he said:
…because it explains the need to go into history and, in particular, to ensure that the evidence being provided was finally checked by the relevant witness. Furthermore, there is an extensive history in respect of communication between the parties which required careful analysis as can be seen from an examination of the affidavit material being the affidavits of Vito Mitolo and Anthony Mitolo.
Given that the opponent relies upon a history of communication between the parties involving electronic communications as well as direct discussions, diligence required that the affidavit of each of the Mitolo’s be carefully drafted and that all evidence be carefully gathered. As is clear from the time line this task was carried out with diligence.
Mr Swan also took issue with several of the matters raised in the Applicant’s attorneys’ original objection of 14 August 2017. These mainly related to apparent unexplained gaps in the Timeline (reproduced at paragraph 7 above), with Mr Swan submitting that intervals of a week or two between actions as disclosed in the Timeline did not mean “that the opponent has not acted promptly and diligently in the overall context of the matter.” As regards Vito and Anthony Mitolo’s absence overseas from 28 June to 28 July 2017, Mr Swan said that:
The suggestion of the Applicant in their solicitors’ letter of 14 August 2017 is that this travel was a holiday and was foreseeable and could have been scheduled so that evidence was finalised before departure. The short answer to this is that the Regulations do not require everything possible to be done and for a party’s life to be set to one side whilst the trademark evidence is prepared. The questions remain as to whether efforts were reasonable and whether the action was prompt and diligent.
Finally as far as reg 5.15(2)(a) is concerned, Mr Swan submitted it was relevant that the oppositions were, as he put it, “in the shadow of [the] Federal Court proceedings.” In this regard he relied on the matters set out in the Opponent’s attorneys’ letter of 31 August 2017 which provides some details of the litigation and the efforts the parties made to settle. I do however note these efforts appear rather inconsequential on their face. The Federal Court proceedings were commenced on 21 December 2016 and the parties asked the Court for time to explore a settlement on 4 April 2017. Subsequent email and letter exchanges failed to result in a meeting between the parties or any substantive discussions and on 27 June the Applicant through its attorneys formally declined any future settlement discussion.
As to reg 5.15(2)(b) and any “exceptional circumstances” which might excuse the delay, Mr Swan again pointed to the Federal Court proceedings, submitting:
The fact that the parties were involved in related litigation in the Federal Court, that they were exploring settlement in the way set out in the submissions referred to [earlier] and that those proceedings are continuing is an exceptional circumstance and enables consideration of the respective times involved. In turn, a consideration against that background of the fact that the relevant evidence was filed on 18 and 21 August 2017 is a circumstance which renders it appropriate for there to be an extension to that time.
Before discussing Mr Williams’ response with respect to the reg 5.15(2)(a) ground, it is convenient to address the Opponent’s alternative “exceptional circumstances” claim based on reg 5.15(2)(b). In brief, I do not accept that involvement in related court matters, or negotiations for a possible settlement, or the fact that the relevant evidence was eventually filed, constitutes a special circumstance as contemplated by the relevant regulation. As Mr Williams highlighted, IP Australia’s publicly available Trade Marks Examiners’ Manual (“the Examiners’ Manual”) advises at Part 51, Paragraph 2.2 that:
Exceptional circumstances include (but are not limited to): a circumstance beyond the control of a party; an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement; an order of a court or a direction by the Registrar that the opposition be stayed. Parties should not expect that time needed for the purpose of settlement negotiations will be considered under these provisions. Time needed for that purpose should be applied for under the appropriate suspension or cooling-off provisions.
I note too that whether settlement negotiations might be an exceptional circumstance in terms of reg 5.15(2)(b) was discussed at length and rejected in Rotary International v Interact Australia (Victoria) Ltd [2015] ATMO 44. There the Hearing Officer concerned observed that the EM says of reg 5.16, the regulation which deals with applications for a cooling off period, that:
The removal of grounds for seeking extensions of time for notice of opposition to registration and the new test for extending evidentiary periods will prevent the use of extension provisions to facilitate negotiations.
[Hearing Officer’s emphasis retained]
Likewise the possibility of related litigation constituting an exceptional circumstance under reg 5.15(2)(b) was discussed and rejected by the Hearing Officer in Dungbeatle Enterprises (Pty) Ltd and Scarab Australia Pty Ltd v Milir Enterprises Pty Ltd,[8] who concluded that this was a “circumstance within the responsibility and/or control of the Opponents and [a matter] which may be routinely addressed.” Indeed, in this case it is difficult to disagree with Mr Williams’ submission that:
The Opponent Submissions include a submission that the “extensive history” in respect of communication between the parties necessitated a careful and diligent analysis in the preparation of the affidavits for Anthony Mitolo and Vito Mitolo. Aside from noting that the careful consideration of the history of communications would be a usual part of preparing evidence within the timeframes required by the Regulation, the Applicant further submits that in any event and as a matter of fact, the history of communication between the parties which is set out in the affidavits of each of Anthony Mitolo and Vito Mitolo is largely a replication of the Opponent’s pleadings in the Cross-Action which it filed on 9 February 2017 in the Federal Court proceedings. Accordingly, any work required to consider the history of communications had already been substantially completed by the Opponent for and in the context of those other proceedings.
[8] [2015] ATMO 95 at [8]-[9]. The same conclusion was reached in Monster Energy Company v USA Nutraceuticals Group Inc [2015] ATMO 1 at [33].
I mention that at the hearing Mr Swan urged me to read AVitolo and VVitolo so that I might appreciate their complexity, submitting:
Given that the Opponent relies upon a history of communication between the parties involving electronic communications as well as direct discussions, diligence required that the affidavit of each of the Mitolo’s be carefully drafted and that all evidence be carefully gathered. As is clear from the time line this task was carried out with diligence. The work which lead [sic] to a draft declaration of Vito Mitolo by 20 May 2017 cannot be relevantly criticised given what we can now see in the final affidavit. Furthermore, the subsequent events from 20 May 2017 to 2 June 2017 are all appropriate, prompt and diligent.
Having read AVitolo and VVitolo, my assessment is quite the opposite. The two affidavits are essentially identical, relatively brief (having a small number of short, essentially identical, exhibits) and merely relate the history of the Mitolos’ own business and Anthony and Vito Mitolo’s personal dealings with the Applicant over the preceding three year period. Moreover, as mentioned, Mr Williams pointed out that much of this information “is largely a replication of the Opponent’s pleadings in the Cross-Action which it filed on 9 February 2017 in the Federal Court proceedings.”
As Mr Williams also highlighted:
The [Timeline] includes reference to the receipt and assessment of the report of Professor Lockshin (an expert engaged by the Applicant in the Federal Court proceedings) on and from 13 July 2017. The [T]imeline suggests that further drafting of the affidavit of Vito Mitolo was necessitated in response to that report. The relevance of Professor Lockshin’s evidence to the present opposition proceedings is unclear, particularly as the report is primarily concerned with the behaviour of wine consumers in the context of wine purchases.
Whereas the Examiners’ Manual indicates at Part 51, paragraph 2.2 that, “The nature and the significance of the evidence that is being prepared may be relevant to the reasonableness of the actions of the party,” for the reasons indicated I do not accept the Opponent’s submission that the evidence it relies on in this case is in any way out of the ordinary or otherwise “exceptional.”
In summary, none of the circumstances described by the Opponent appears to me exceptional. I accordingly reject the Opponent’s submission that it is entitled to rely on reg 5.15(2)(b) in the present matter.
As to reliance on reg 5.15(2)(a), as discussed earlier Mr Swan pointed to, inter alia, the same three factors, namely the concurrent Federal Court proceedings, the attempts at settlement and the fact that the evidence being prepared was complex. For essentially the same reasons as discussed in relation to reg 5.15(2)(b), I do not consider that any of these factors justify the Opponent’s claim that it made reasonable efforts to meet its evidence deadlines or acted promptly and diligently at all times in attempting to do so. To the extent that the Opponent relies on the aborted settlement overtures to suggest it suspended or limited the completion of its evidence, I would highlight too the Commissioner’s delegate’s endorsement in TRED (at [6]) of the view that, “Such a circumstance is considered to fall far short of making all reasonable efforts to comply with the filing requirements.”[9]
[9] See also the Commissioner’s delegate’s similar conclusion in Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15 at [21].
Moreover I agree with Mr Williams that the absence of Anthony and Vito Mitolo on holiday in Italy as from 28 June, that is during the last three weeks of the initial statutory evidence periods, would on the face of it have been reasonably foreseeable and that, as he put it in his written submissions:
Other matters aside, there is no suggestion that Anthony Mitolo and Vito Mitolo were not contactable during that travel. In its failing to take steps necessary to prepare and file its evidence taking into account the planned travel of the deponents, the Opponent has not made all reasonable efforts within the meaning of the Regulation in question.
As mentioned earlier, Mr Swan submitted the Applicant’s suggestion that the Vitolos’ three week overseas holiday should have been anticipated and worked around was unreasonable. It was not contrary to the intent of reg 5.15(2)(a) not to have done so, he submitted, since the “the Regulations do not require everything possible to be done and for a party’s life to be set to one side whilst the trademark evidence is prepared.” That may be so of course, particularly when stated in such a bald way, but it fails to acknowledge that several decisions of the Registrar and Commissioner have indicated that business or holiday travel in particular is not considered to be an unforeseen event that ought prevent the preparation of a party’s evidence.[10] If it was thought to be so significant in the present case then I think at the very least further detail as to why would have to be before me before I might agree.
[10] See for example MG Icon or Monster Energy Company v USA Nutraceuticals Group Inc [2015] ATMO 1.
As to the Applicant’s criticism of the apparent absence of action during the period from 2 June (when the solicitor then managing the file left the Opponent’s attorneys’ employ) to 20 June, Mr Swan characterized this as a “counsel of perfection” and reiterated the claim in the Opponent’s attorneys’ letter of 31 August that this “ignores the plain language of [reg 5.15(2)(a)] that the efforts to comply must be ‘reasonable’”. Mr Swan likewise described as a “counsel of perfection” the Applicant’s criticism of the apparent difficulty the Opponent’s attorneys had in contacting their own Counsel during the evidence period (as disclosed on the Timeline).
I accept that an overly literal interpretation of the terms “all reasonable efforts” and “acting promptly and diligently at all times” would be unrealistic, a “counsel of perfection” if you like. However, as the cases show, the Registrar recognizes this and it has not been her practice to read into those terms unreasonable or unrealistic expectations. This is well explained by the Hearing Officer in Fed Square Pty Ltd v Federation IP Pty Ltd, who said: [11]
The current practice of the Trade Marks Office in determining whether a party has acted promptly and diligently at all times is to critically analyse a chronology of events in the relevant period. There is an inherent risk that this approach may paint an artificial picture somewhat at odds with the business realities for parties and legal representatives in trade mark oppositions. Most chronologies are likely to reveal gaps where no (or very little) action has been taken to gather or prepare evidence. However, the presence of these gaps is not necessarily determinative. In the decision of Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd, the delegate of the Commissioner of Patents commented with regard to the identical wording in patent extension of time provisions:
An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.
A bald interpretation of the wording “at all times” in the Regulations may create unrealistic expectations. However, the above comments show the intent of the provisions is to create a more rigorous requirement, not an unattainable one. The answer to the determination lies in a consideration of all the facts and circumstances of a particular case. Acting to ensure the prompt filing of evidence means that the relevant actions should have some connection to the filing of the evidence, but do not necessarily have to be the physical act of gathering and compiling that evidence. It may for example, include discussions between a party and its representative relating to the requirements for the evidence. However, lengthy delays that are unexplained (or are supported by actions which are not designed to ensure the prompt filing of evidence) will not assist.
[Footnotes omitted]
[11] [2015] ATMO 42 at [22].

That said, on the information before me the Opponent has not in any way satisfied me that it is entitled to rely on reg 5.15(2)(a) to justify the Request. Even assuming the apparent gaps in the Timeline were reasonable, the Opponent has not explained to my satisfaction what steps it took (if any) to address the various difficulties that arose during the evidence period, nor when or by whom this was done. Given the Mitolos’ upcoming departure on holidays on 28 June, I would have thought this would be all the more reason for the Opponent to have made more obvious efforts to complete the evidence before then. Why it did not do so has not been adequately explained in my view, either in the Timeline or otherwise. Alternatively, if the need for an EOT was apparent because of the Mitolos’ imminent departure in June, why did the Opponent wait until 14 July (when the Mitolos were overseas) to file the Request?
Further and contrary to the Opponent’s claim, I do not consider the contents of AVitolo or VVitolo particularly complex or unusual. Moreover, as mentioned, the affadavits are essentially identical, albeit the Timeline suggests work on AMitolo did not commence until after Anthony Mitolo returned from holiday on 28 July, that is two weeks after the period for filing EIS had passed. I note again also Mr Williams’ uncontradicted submission quoted in paragraph 30 above that a significant part of the two affadavits “is largely a replication of the Opponent’s pleadings in the Cross-Action which it filed on 9 February 2017 in the Federal Court proceedings.”
For the sake of completeness I would mention one additional matter, albeit it was not raised at the hearing. In paragraph 4 above I quoted the reasons given by the Opponent’s attorneys at the time the Request was originally made on 14 July. One of the reasons given for invoking reg 5.15(2)(a) was that, “The Opposition [sic] further advises that there is still evidence sought which has not yet been located or disclosed”. Whereas I can envisage cases where this might be relevant, the circumstances accounting for the delay in locating evidence would need to be satisfactorily explained. There is no information before me which supports this claim in this case.
To conclude, I reject the Opponent’s submission that it is entitled to rely on reg 5.15(2)(b) for any of the reasons it has put forward to justify the Request.

Decision

None of the reasons put forward by the Opponent have satisfied me that the criteria specified in regs 5.15(2)(a) or (b) have been met. I accordingly refuse the Request.

Michael Kirov
Hearing Officer
Trade Marks Hearings
22 February 2018