Yajun Li v Zhou Hei Ya Holdings (Hong Kong) Limited
[2017] ATMO 71
•18 July 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition to removal of trade mark registration 1354068 ZHOU HEI YA and device – request by Yajun Li for extension of time to file evidence in support and objection by Zhou Hei Ya Holdings (Hong Kong) Limited.
| Delegate: | Katrina Brown |
| Representation: | Removal Opponent: Marco Saccotelli of Roberts Gray Lawyers Removal Applicant: Blake Knowles of Cullens Pty Ltd. |
| Decision: | 2017 ATMO 71 Trade Mark Regulations 1995 – reg 9.18 – extension of time to file evidence in support – extension of time refused. |
Background
This decision concerns an application for an extension of time to file evidence in support (‘EIS’) under regulation 9.18 of the Trade Mark Regulations 1995 (‘the Regulations’).
On 6 July 2016 Zhou Hei Ya Holdings (Hong Kong) Limited (‘the Removal Applicant’) made an application to remove the following trade mark from the Register of Trade Marks:
| Trade Mark No: | 1354068 |
| Trade Mark: |
|
| Registered Owner: | Shuhao International Pty Ltd |
| Registration Date: | 30 March 2010 |
| Specification: | Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats |
The application for removal of the Trade Mark was advertised in the Australian Journal of Trade Marks on 21 July 2016.
Ms Yajun Li (‘the Removal Opponent’), the sole director of Shuhao International Pty Ltd, filed a notice of intention to oppose the removal of the Trade Mark (‘the NIOR’) on 30 July 2016. The statement of grounds and particulars (‘the SGP’) was filed on 31 August 2016, one day after the time allowed for doing so. The SGP was filed late due to the Removal Opponent having difficulty with IP Australia’s e-Services. After filing a supporting declaration on 13 September 2016, the Removal Opponent was granted a one month extension of time to file the SGP. This extension was not contested by the Removal Applicant.
The Removal Applicant filed a notice of intention to defend (‘the NID’) on 24 November 2016.
The Removal Opponent’s EIS was due to be filed by 28 February 2017. On 1 March 2017 an application was made for an extension of one month to file the EIS. The application was not made in the name of the Removal Opponent. On 8 March 2017 an extension application was filed in the name of the Removal Opponent.
In the extension application of 8 March 2017 the Removal Opponent declared the following reasons for requesting an extension of time:
I was given until 28 February 2017 to file evidence in support in declaratory form for my earlier filed Notice of Intention to Oppose. The Registrar would be aware of earlier difficulties that I have had in this matter given my lack of English skills and computer skills in relation to electronic lodgement on the IP Australia E-services portal for my Notice of Intention to Oppose and Statement of Grounds and Particulars.
I have unfortunately made an error again in that I was supposed to lodge my evidence in support via Objective Connect but instead I mistakenly thought I had already done this when I lodged my statement of grounds and particulars on 31 August 2016 via the E-services portal of IP Australia. I also made an error in thinking that the Hong Kong company was supposed to lodge evidence by 28 February 2017. I have recently engaged Roberts Gray Lawyers a Melbourne firm to assist my company in this matter. Marco Saccotelli, a solicitor from Roberts Gray Lawyers suspected that I may have missed the deadline of 28 February 2017 and telephoned IP Australia to discuss this matter on 1 March 2017.
The extension of time application was lodged accidentally in the name of Shuhao International Pty Ltd rather than in my name as the person who is opposed to the application made by the Hong Kong company.
I am therefore re-submitting this application along with a covering letter via E-services.
The evidence in support was filed in declaratory form via Objective Connect on 28 March 2017.
On 18 April 2017 the Removal Applicant’s representative requested a hearing in relation to the Removal Opponent’s request for a one month extension to file her EIS.
I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 19 June 2017. The Removal Applicant was represented by Marco Saccotelli of Roberts Gray Lawyers. The Removal Opponent was represented by Blake Knowles of Cullens Pty Ltd.
Regulation 9.18
As this matter concerns an extension of time to file evidence in a removal action it is governed by reg 9.18.
Regulation 9.18 provides:
(1) A party may request the Registrar to extend a period for filing evidence mentioned in 9.16.
(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 reference to ‘this Part’ is a reference to Part 9 of the Regulations which governs removal of a trade mark from the Register for non-use.
At the end of the hearing, Mr Saccotelli made it clear that the Removal Opponent was not pursuing the argument that there are exceptional circumstances that justify the extension of time. I agree that the information before me does not establish that there are exceptional circumstances that justify the extension of time and therefore reg. 9.18(2)(b) is inapplicable in this case.
Pursuant to reg 9.18(2)(a) I may extend the period if I am satisfied that the Removal Opponent has made all reasonable efforts to comply with the relevant filing requirements and that, despite having acted promptly and diligently at all times to ensure the filing of the evidence within the period, she was unable to do so.
These considerations are the same as those under reg 5.15(2)(a), which applies to extensions of time to file evidence in oppositions to the registration of a trade mark. I mention this because the submissions made by both legal representatives refer to reg 5.15.
Discussion and Reasons
In Caprice Australia Pty Ltd v MG Icon LLC,[1] a decision of the Registrar concerning an extension of time under reg 9.18, the Hearing Officer affirmed the following statements made by the Delegate in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd:
[I] need to ask myself the following questions:
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?
I can extend the time for filing evidence only if I am satisfied that the answer 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.[2]
[1] [2014] ATMO 34.
[2] [2013] APO 57[34].
The Removal Opponent submits that in deciding whether a party has ‘made all reasonable efforts to comply’ and has ‘acted promptly and diligently at all times’ the decision maker must consider the totality of the factual matrix surrounding the conduct of the party. I agree that consideration should be given to all of the facts and circumstances of a particular case.
A party seeking an extension of time will assist the Registrar, and advance their own cause, by providing an explanation of what the party has done, when it was done, and how long it took and an explanation of any significant delays. The Removal Opponent has not provided a time line of events and I am left with much the same information as offered by Ms Li in the declaration that accompanied the extension of time application. From the information before me it appears that the Removal Opponent:
thought that they had lodged their EIS when they filed the SGP;
thought that the Removal Applicant was required to file evidence by 28 February 2017;
at some point became aware that they were given until 28 February 2017 to file EIS in declaratory form;
engaged Roberts Gray Lawyers in late February to assist in the matter.
In respect of the first dot point, material on the written record indicates that the Removal Opponent and her representative at the time, Ms Miranda Li, were issued correspondence on 4 August 2016 and 24 October 2016 informing them that the material filed with the NIOR and SGP needed to be filed on Objective Connect during the EIS stage for it to be taken as properly filed. IP Australia received a response to the correspondence of 24 October 2016 which included ‘we are happy to re-send all evidence via Objective Connect as soon as we receive the email link’. The Objective Connect link was sent on the 25 November 2016.
I recognise that the Removal Opponent may not have fully understood the correspondence sent by IP Australia due to her lack of English language comprehension skills. However the response to the correspondence of 24 October 2016 indicates that at the very least she, or her representative at the time, understood that the material filed with the NIOR and SGP needed to be filed again on Objective Connect.
The Removal Opponent has not indicated what actions they took if any, between filing the declaration supporting the extension of time to file the SGP on 13 September 2016 and retaining the services of Roberts Gray Lawyers in late February 2017. I appreciate that there are likely to be periods of inaction within this timeframe as the Removal Opponent claims to have been under the misapprehension that she had already filed her evidence or that 28 February 2017 was the deadline for the Removal Applicant to file evidence.
Crucially, the information before me does not indicate at what point the Removal Opponent realised that the deadline of 28 February 2017 applied to her or what actions she took thereafter other than engaging the services of Roberts Gray Lawyers. Nor does it indicate with much specificity when Roberts Gray Lawyers were engaged by the Removal Opponent. Without this information, I cannot determine whether the Removal Opponent acted promptly and diligently once she understood that the deadline of 28 February 2017 applied to her, let alone whether she did so at all times.
The Removal Opponent’s representative also draws my attention to:
the public interest in admitting clear evidence which would corroborate the Removal Opponent’s company owning and actively using the Trade Mark;
the extreme prejudice and detriment that would be suffered by the Removal Opponent in this matter if her comprehensive and clear evidence of continuous use of the Trade Mark were to be excluded from the Registrar’s final decision regarding the merits of the Removal Application;
the fact that the Removal Opponent has not shown bad faith at any stage through deliberately delaying or failing to exercise her rights as the valid owner of the Trade Mark; and
there has been no substantial prejudice to the Removal Applicant.
Whilst I do not disagree with the sentiment of these statements, they are not relevant to the matter before me. Regulation 9.18(2) directs that the Registrar may extend the period only if satisfied that the requirements of paragraph (a) or (b) have been met. Considerations such as the public interest and the probity of evidence were relevant to the extension of time provisions prior to the introduction of the Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013. They are also relevant to the Registrar’s discretion under reg 21.19 to use available information.
Section 224
In the alternative, the Removal Opponent submits that the extension of time should be granted pursuant to s 224(2) of the Act.
Section 224(2) of the Act provides:
If, because of:
(a) an error or omission by the person concerned or by his or her agent; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
Pursuant to s 224(8)(a), a relevant act is any act (other than a ‘prescribed act’) done in relation to a trade mark. ‘Prescribed acts’ are those listed under reg 21.28 and include filing evidence under reg 9.16.
The current matter relates to an extension of time to file EIS in a removal matter. The filing of evidence in a removal matter is governed by reg 9.16. As reg 9.16 is a prescribed act, s 224(2) cannot be the basis for the extension of time in this matter.
Decision
On the basis of the information before me, I cannot be satisfied that the Removal Opponent acted promptly and diligently at all times. There is insufficient information before me regarding any actions that were taken by the Removal Opponent during the EIS stage. Moreover, the Removal Opponent’s actions over the relevant period do on the face of it appear to be at odds with her apparent acknowledgment as early as 24 October 2016 that she would need to upload her evidence to Objective Connect in the EIS stage.
Accordingly, I refuse to grant the extension. As a consequence, the period for filing EIS ended on 28 February 2017. Any evidence filed after that date does not constitute EIS.
I award costs against the Removal Opponent in relation to the fee for requesting a hearing, preparation of the case for hearing and attendance at the hearing by a registered trade marks attorney in accordance with Schedule 8 of the Regulations.
Katrina Brown
Hearing Officer
Trade Mark Hearings
18 July 2017