Viva Holidays II Limited v Vivaticket SpA

[2022] ATMO 89

TRADE MARKS ACT 1995

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

Re: Application by Vivaticket SpA for an extension of time to file a notice of intention to defend in the opposition to extension of protection of International Registration Designating Australia number 1398063 (Australian trade mark number 1920912) – VIVATICKET (Classes 9, 35, 37, 41, and 42) filed by Viva Holidays II Limited.

Delegate:

Blake Knowles

Representation:

Opponent: Minter Ellison.
Holder: Wadeson IP Pty Ltd.

Decision:

2022 ATMO 89

Trade Marks Regulations 1995 (Cth) – request for an extension of time to file notice of intention to defend under reg 17A.34HA and request for exercise of discretion under reg 17A.34H(4) – request for extension of time refused and discretion not exercised.

Background

1. This decision primarily relates to a request under reg 17A.34HA[1] made by Vivaticket SpA (‘Holder’) for an extension of time to file a notice of intention to defend (‘NID’) in the opposition filed by Viva Holidays II Limited (‘Opponent’) to extension of protection of International Registration Designating Australia number 1398063 (Australian trade mark number 1920912) (‘IRDA’).

   [1] Trade Marks Regulations 1995 (Cth). Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

2. The IRDA was filed on 3 November 2017 for the trade mark VIVATICKET, in respect of goods and services in classes 9, 35, 37, 41, and 42. The IRDA was accepted and advertised for opposition on 9 November 2020. The Opponent filed a notice of intention to oppose (‘NITO’) protection of the IRDA on 11 January 2021, and a statement of grounds and particulars (‘SGP’) on 11 February 2021. On 14 May 2021, the International Bureau was notified, in accordance with reg 17A.32(2), of the filing of the opposition. The Holder was also provided with a copy of the SGP and notified that the deadline for filing the NID was 14 June 2021.

3. On 16 November 2021, the Holder was notified that the deadline for filing the NID had passed, and that the Registrar intended to take the opposition as having been successful and refuse protection of the IRDA under reg 17A.34H(4). The notification also stated that the two-month period for applying for an extension of time to file the NID specified by reg 17A.34HA(2) ended on 15 August 2021.

4. The Holder filed the NID on 18 November 2021 and was informed on the same day that it was not received within the two-month period specified reg 17A.34HA(2). On 30 November 2021, the Holder filed a request for an extension of time to the deadline for filing the NID and concurrently requested a hearing on the matter.

5. In support of the extension of time, the Holder relied on a declaration by its counsel, Ms Belinda Wadeson, made on 1 November 2021 (with Annexures BJW-1 and BJW-2), and a supplemental declaration by Ms Wadeson made on 10 December 2021.

6. The parties were notified that the hearing would take place on 18 February 2022. The Opponent advised that it did not wish to be heard but that it objected to the extension of time.

7. Counsel for the Holder did not attend the hearing on the scheduled date. I advised the Holder on 21 February 2022 that I intended to make a decision based on the materials already filed.  Counsel subsequently advised that the failure to attend the hearing was due to an error on her part, which was exacerbated by personal circumstances. Taking these circumstances into account, I allowed the Holder a brief extension of time to file any written submissions that she wished to rely on, in addition to materials that had already been filed. The Holder filed written submissions on 2 March 2022. A copy of these submissions was provided to the Opponent on 4 March 2022 and the Opponent was given until 21 March 2022 to file any submissions that it wished to rely on. The Opponent filed submissions on 21 March 2022.

   Evidence

8. Ms Wadeson in her declarations outlined the circumstances that were causative of the Holder missing deadlines to file the NID and request an extension of time.

9. Ms Wadeson declares that at the beginning of 2020, her firm consisted of two attorneys, four paralegals, and a bookkeeper. However, during 2020, Ms Wadeson was unable to invest as much time into management of the firm as previously. Further, due to a relationship breakdown, the firm was split in two in March 2021. Since that time, Ms Wadeson has been operating as a single attorney with no secretarial or paralegal assistance.  In addition to professional difficulties, Ms Wadeson contended with significant personal challenges in 2021. These included a relationship breakdown in March 2021, ongoing health issues, and caring responsibilities for three children with special needs. Commencing from March 2020, Ms Wadeson was required to manage long periods of remote learning for her three children. Ms Wadeson estimates that since March 2020, her children have been home for around 75 of 96 weeks. Ms Wadeson states that for her children to participate in remote learning, an adult must be with the child for the duration of the day. Ms Wadeson also details other situations involving her children that illustrate the significant challenges she faced on a regular basis.

10. With regards to the IRDA, Ms Wadeson declares that her staff had docketed receipt of the NITO on 11 January 2021 and had also noted that an SGP was received by IP Australia on 11 February 2021. A reminder was entered to recheck the status of the IRDA on 17 March 2021. On 14 May 2021, IP Australia dispatched to Ms Wadeson the notice enclosing the SGP and advising the deadline for filing the NID. At that time, Ms Wadeson declares that she was focused on an evidence deadline in an unrelated opposition. Ms Wadeson declares she has no record of docketing or making any note regarding the notification of 14 May 2021. Ms Wadeson also states that during late May, she was dealing with the untimely death of a friend’s mother and a Covid lockdown requiring her children to be at home between 28 May 2021 and 10 June 2021. Subsequently, a carer employed by Ms Wadeson resigned on 21 June 2021, and school holidays commenced between 26 June and 14 July 2021. Ms Wadeson and her children were also then required to isolate due to possible Covid exposure until the start of August 2021. Ms Wadeson states that she was unable to do any work during this isolation period, and that a subsequent lockdown also commenced in Melbourne on 5 August 2021 and ended on 22 October 2021. Ms Wadeson declares that her children had finally returned to school by early November 2021, although she was still contending with significant challenges.   

11. Ms Wadeson declares that in November 2021 she commenced a review of her client’s cases. There was a lengthy list of items that required addressing, including the IRDA.

    Discussion

    Regulation 17A.34H and 17.34HA

12. For the purposes of this decision, the relevant provisions of reg 17A.34H and 17A.34HA state:

    17A.34H Filing of notice of intention to defend

    (1)    The IRDA holder must file a notice of intention to defend within one month from the day the Registrar notifies the International Bureau under subregulation 17A.32(2).

    (2)    The holder must file an Australian or New Zealand address for service with the notice.

    (3)    The Registrar must give a copy of the notice to the opponent.

    (4)    If the holder does not file the notice within the period mentioned in subregulation (1) or that period as extended, the Registrar may decide to:

    (a)    take the opposition to have succeeded; and

    (b)    refuse protection to the holder.

    17A.34HA Extension of time for filing – application

    (1)    A person may apply to the Registrar to extend the period for filing a notice of intention to defend.

    (2)    The application must be made before the end of the period of 2 months beginning on the day after the end of the period mentioned in subregulation 17A.34H(1).

    (3)    The application must:

    (a)be in approved form;

    (b)be accompanied by a declaration stating the facts and circumstances forming the basis for the grounds for making the application.

    (4)    The application 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.

    17A.34HB Extension of time for filing – grant

    (1)    The Registrar may grant an application under subregulation 17A.34HA(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the application justify the extension.

    (2)    However, if the application is made after the period mentioned in subregulation 17A.34H(1) 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 application.

    (3)    The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.

13. I also note that a general provision for extensions of time exists under s 224 of the Act. That section provides that the time for the doing of a relevant act may be extended in certain circumstances on the application of the person concerned.[2] A relevant act includes any act done in relation to a trade mark or the filing of any document, other than a prescribed act or document.[3] Under reg 21.28(2)(ba), the filing of a notice of intention to defend an opposition to an IRDA is a prescribed document. As such, s 224 cannot be relied upon to extend the initial period for filing the NID set by reg 17A.34H(1). I note that reg 21.28 does not also prescribe the making of an application for extension of time under reg 17A.34HA(1). As such it is arguable that the two-month period set by reg 17A.34HA(2) is extendible under s 224. However, as the Holder has not made an application under s 224 or directed their submissions to s 224, I cannot consider it further in making the present decision.

    [2] s 224(2) and (3).

    [3] s 224(8).

14. The request for an extension of time to file the NID under reg 17.A34HA(1) was filed on 30 November 2021. However, the two-month period for requesting the extension of time to file the NID set by reg 17A.34HA(2) ended on 15 August 2022. As such, I am not able to grant an extension under reg 17A.34HB, and I must next consider the application of reg 17A.34H(4). That provision states that if the NID is not filed within the period mentioned in reg 17A.34H(1), or that period as extended, the Registrar may decide to take the opposition to have succeeded and refuse protection to the Holder.     

15. The Holder submits that the use of the word ‘may’ in reg 17A.34H(4) bestows on the Registrar a discretion not to take the opposition to have succeeded and not to refuse protection. The Holder submits that if a discretion did not exist, the word ‘may’ would instead read ‘must’. The Holder requests that I exercise discretion and direct that the opposition proceed (with the NID considered as filed) and set a deadline for the Opponent to file evidence in support.

16. In support of the contention that I should exercise discretion under reg 17A.34H(4), the Holder points to other provisions of the Act which allow the grant of extensions of time in exceptional circumstances and in circumstances beyond the control of the Holder. The Holder also submits:

    The purpose of a NID is to establish that the owner of the mark maintains an interest in defending it in light of third party opposition, prior to the third party incurring costs in preparing evidence that may not have been required absent that ongoing interest by the applicant.

    The present application has a lengthy and tortuous history. It is abundantly clear the applicant maintains its interest in defending the mark in light of that history and in light of the related applications and other oppositions between the Applicant and Opponent, or their reversed roles on some cases.

    and later:

    If the facts set out in my Declarations do not clearly constitute numerous circumstances beyond my control, any one of which could be considered exceptional circumstances, I cannot imagine what circumstances would be beyond my control or exceptional.

    I have made every reasonable (and unreasonable) effort to comply with all relevant filing requirements. I have acted as promptly and diligently as humanly possible in relation to every one of the many professional, parental and personal obligations I have during the period of the pandemic.

17. I agree that Ms Wadeson faced significant hardships over a long period, and that these were exacerbated by Covid. At times it seems as if she was facing a perfect storm of adverse professional and personal circumstances. The care of three special needs children while running a professional practice in a complex and deadline driven field would give rise to challenges that many people would struggle to manage. I consider that the totality of circumstances significantly contributed to the failure to file a NID and seek an extension of time by the relevant deadlines. As such, I must now consider whether a discretion exists as proposed by the Holder, and whether the circumstances relied on suffice to allow me to exercise discretion in the Holder’s favour.   

18. I am not aware of any authority that has determined that reg 17A.34H(4) confers a discretion on the Registrar. The determination of whether use of the word ‘may’ in reg 17A.34H(4) imposes an obligation or confers a discretion is a matter of statutory interpretation. However, for present purposes, I acknowledge that the use of the word ‘may’ indicates at least the possibility that discretion has been conferred on the Registrar under reg 17A.34H(4).[4]

    [4] See Re Carl Zeiss Pty Ltd's Application [1969] HCA 17, [7]-[8] (Kitto J).

19. I consider that to the extent reg 17A.34H(4) does confer a discretion, that discretion is not unfettered and must be considered in the appropriate context. In this case, the exercise of a discretion would effectively equate to the grant of an extension of time under reg 17A.34HA and 17A.34HB. Those provisions allow an extension to be granted based on an error or omission and/or circumstances beyond the control of a person. Those are essentially the grounds on which I am now also being asked to exercise discretion under reg 17A.34H(4). In this context, I doubt that any discretion Parliament intended to confer under reg 17A.34H(4) would extend to granting an extension of time on the grounds of error or omissions or circumstances beyond a person’s control, where the request is made outside of a time limit that Parliament imposed for seeking extensions on those very same grounds under reg 17.34HA(2).  

20. While I have much sympathy for Ms Wadeson, and I accept that the opposition involves live issues in genuine dispute between the parties, I do not consider that it is appropriate to exercise a discretion (to the extent such a discretion may exist) under reg 17A.34H(4) to allow late filing of the NID. The late filing of a NID in the circumstances relied on by the Holder falls more correctly for consideration under other provisions of the Act and Regulations.

    Decision

21. I have decided that the application for an extension of time was filed out of time, and that to the extent that reg 17A.34H(4) confers a discretion on the Registrar, it is not appropriate to exercise that discretion.

22. I therefore propose, subject to any appeal or other relevant action by Holder, to refuse protection of the IRDA within one month of the date of this decision.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    7 June 2022