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Australian Trade Mark Opposition Extensions of Time: A Review – 6 June 2014

 

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into force on 15 April 2013 and updated the Trade Marks Act 1995 and the Trade Marks Regulations 1995, including amendments to the procedures relating to oppositions. As we noted in our article Patent Opposition Extensions of Time: A Review - 24 April 2014, it was plain to those who regularly deal with oppositions that the changes to the extension of time provisions for filing evidence were always going to lead to dispute.

Recap - the Old Law

Prior to 15 April 2013, IP Australia (which incorporates both the Patent Office and the Trade Marks Office) had to be reasonably satisfied an extension of time "is appropriate in all the circumstances". Case law dictated that only basic reasons were required to obtain an extension and therefore it was common to obtain extensions. Often two or three (three month) extensions were obtained, meaning oppositions often took years to resolve.

Recap - the New Law

The intention of the new law, with respect to opposition proceedings, is to "reduce delays" and "introduce a more rigorous test for granting extensions of time to file evidence" [1]. Regulations 5.15(2) and 9.18(2) of the Trade Marks Regulations 1995 (as amended on 15 April 2013) provide that:

(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 [the Part being opposition proceedings]; 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.

[emphasis added]

Implementation under the New Law

The first contested decision dealing with trade mark opposition evidence extensions of time under the new law (as it applies after 15 April 2013) is MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 (30 April 2014) ("MG Icon") in relation to registration no. 901355 MATERIAL GIRL in class 25. The extension request was refused.

The decision applies Regulation 9.18(2) (opposition to application for removal for non-use), which is in identical terms to Regulation 5.15(2) (opposition to registration). Thus it is relevant to any trade mark opposition evidence extension of time case. Regulations 9.18(2) and 5.15(2) are also in identical terms to the equivalent Australian Patent Regulations.

The evidence supporting the extension request was filed in multiple steps, and the Delegate discusses these separately and in detail, making the decision useful for assessing the likelihood that a given extension request might be refused. 

Patent Office decisions issued thus far, taken together with the consistent approach by the Trade Marks Office in MG Icon, provide clear guidelines (for both patent and trade marks opposition cases) on interpreting the wording of the new provisions, the required timeliness and diligence of actions taken by the party seeking the extension, and the level of documentation required to obtain an extension.

Brief case summary – MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 (30 April 2014)

The non-use removal applicant, MG Icon LLC, is part owned by Madonna, aka MATERIAL GIRL. However, the non-use opponent and current owner of registration no. 901355 MATERIAL GIRL in class 25 is Caprice Australia Pty Ltd. Caprice sought leave for an extension of time to file its evidence in reply, being the first evidence period commenced under the new law for this opposition. The Trade Marks Office initially proposed to grant the extension, but after a contested hearing the extension request was refused, the Delegate not being satisfied that there were exceptional circumstances, nor that the extension applicant had acted promptly and diligently at all times during the period [2].

This decision is consistent with Patent Office decisions issued to date on extensions of time for filing evidence under the new law, citing [3] the Patent Office’s decision in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 ("TRED") and specifically the test formulated in TRED at [34] to [35]. 

A Delegate of the Registrar issued a notice of intention to refuse the original extension request made on 14 November 2013, allowing 14 days for further reasons supporting the request to be filed. The further reasons/evidence were filed 4 December 2013 (referred to in the decision as the "initial evidence") and the Delegate issued a notice of intention to grant the extension. MG Icon LLC objected to the extension, applying for a hearing. The hearing was held on 5 February 2014 and subsequently, on 18 February 2014, additional evidence supporting the extension request was filed ("the subsequent evidence"). 

The initial evidence consisted of a declaration by Caprice’s attorney. The subsequent evidence consisted of two attorney declarations and a declaration by a Director of Caprice.

The initial evidence did not provide sufficient explanation of the questions it raised [4]. The subsequent evidence "provides a far more comprehensive explanation of events and circumstances during the period for evidence in reply" [5], although it did not establish prompt and diligent conduct at all times. An inference may be drawn that, had the facts of the case been different, the subsequent evidence was sufficiently detailed it may have allowed the Delegate to be satisfied that the party had acted promptly and diligently at all times to ensure the filing of the evidence within the period, but was unable to do so.

Extension of Time Factors and Key Points

  • The grant of an extension of time is discretionary. The Commissioner or Registrar may grant an extension, not must grant an extension, if satisfied.
  • Notably, under 2(a)(i) failure to make "all reasonable efforts to comply with all relevant filing requirements", at any stage during the opposition process, may affect the ability to obtain an extension of time to a period in which it is possible to demonstrate that the party has acted promptly and diligently at all times. 
  • 2(a)(ii) has thus far been consistently interpreted to associate "within the period" with the requirement to act promptly and diligently, i.e. interpreted as a requirement for promptness and diligence at all times within the period sought to be extended, which is a lesser requirement than the alternative - to act promptly and diligently at all times (i.e. at any time including before commencement of the period) in order to ensure that the evidence is filed within the period. 
  • Thus the extension applicant needs to address different time periods for each leg of the test under (2)(a), and succeed with both legs.
  • The public interest is irrelevant unless the Commissioner or Registrar’s discretion is first enlivened under either 2(a) or 2(b) [6].

Reasonable Efforts – 2(a)(i)

  • Making "all reasonable efforts to comply with all relevant filing requirements" is considered over the period of the whole opposition process, not just the evidentiary period in question [7].
  • Detailed submissions as to the actions taken to date and, particularly, the period in question must be furnished.
  • "[I]t is necessary to understand the actions that they have taken (for instance, what was done, when it was done, how it was done, and by whom it was done) covering at least the period in question, and the nature of the evidence that they are preparing" [8].
  • However, the fact that a party met each of its filing deadlines up to the period in question may be sufficient to show "all reasonable efforts to comply with all relevant filing requirements" as regards the conduct of the opposition prior to the period sought to be extended [9].
  • Relying on one person, whether that it is the expert or the patent attorney, is not necessarily sufficient: efforts must be made to seek an alternative or explain why that person is not replaceable [10].

Acting Promptly and Diligently – 2(a)(ii)

  • Consideration of the whole evidentiary period, not just any extended period, of the current phase of the opposition is relevant, when considering whether the party has acted promptly and diligently "at all times" [11] within the period.
  • "At all times" is a key aspect - there must be no significant gaps in the timeline [12].
  • The test may be applied in relation to each of the declarations for which an extension of time is sought and the actions or otherwise of the attorney and each of the declarants or other individuals involved may be separately considered [13]. Thus it appears possible that an extension for one declaration could granted under 2(a) yet refused for another. 
  • Notably, the issues of "making all reasonable efforts" and "acting promptly and diligently" are often considered to be one and the same [14].
  • An expert’s involvement in other opposition matters can be a relevant factor when considering whether the party has acted promptly and diligently, but evidence must be provided to demonstrate the effort required to be allocated to any alternative tasks and their urgency [15].
  • Suspending work due to settlement negotiations, or waiting for the outcome of other processes, does not constitute acting promptly and diligently [12], [15].
  • The failure by a party to follow up with its attorney when expected information was not received (due to email issues and regardless of other circumstances) is not prompt and diligent conduct [16].
  • Annual leave is generally not unforeseen and does not excuse lateness [17].
  • Failure by a party to advise its attorney that the business was sold for more than a month post-sale, and subsequent stalling of the evidence preparation process, is not prompt and diligent conduct [17].
  • Leaving finalisation of evidence to the day before the deadline is "very late in the period", allowing little time to deal with contingencies (such as a witness delaying return of the declaration) [18].
  • Actions taken after the deadline cannot contribute to establishing prompt and diligent action to ensure filing within the period, no matter how well documented and evidenced [19].

Exceptional Circumstances – 2(b)

  • The only decision which has concluded that "exceptional circumstance" warranted the extension of time was a "stay" of the opposition proceedings by IP Australia [20]. No decisions have concluded that circumstances put forward by the relevant party have constituted "exceptional circumstances".
  • Situations which would be regarded as exceptional circumstances include "matters outside the normal evidentiary process and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence" [21].
  • There appear to be obiter comments suggesting that a change in circumstances of an expert may constitute exceptional circumstances, such as unexpected leave or work commitments [22].
  • Exceptional circumstances are not: the new amendments to the Regulations (applicable to evidence periods of both parties) [23]; inequity or breach of natural justice due to the different evidence periods available or actually used by each party, caused by timing of the new amendments to the Regulations [24]; an assertion that the acceptance of the application is in error [25]; the request of an applicant for further and better particulars [26]; holidays of an expert, where they were known well in advance of the deadline [27]; documents in evidence in support that were not particularised in the Statements of Grounds and Particulars [28]; procedural fairness [29]; the Melbourne Spring Racing Carnival! [30]; sale of a business three months before the extension was sought, taken alone or in combination with other factors [31].

Summary

Overall, the application of the extension of time provisions by IP Australia is not surprising for those who attended any of the IP Australia workshops prior to the current law coming into force on 15 April 2013. It was fully expected that engaging experts at an early stage and otherwise ensuring that the opposition process never appears to "grind to a halt" would be required if an extension of time was ever going to be allowed. As such, IP Australia’s goal of increasing procedural efficiency with respect to oppositions is being achieved.

The question is whether the changes in the procedures actually correspond with the separate goal of "raising the bar". Whilst opposition procedure clearly needed some attention, the results of the extension of time provisions are more likely to "lower" the bar, certainly in oppositions by limiting the timeframe for opponents.

 

Ian Lindsay Australian Patent Attorney 

Ian Lindsay - Consultant

Patent Attorney & Trade Marks Attorney

 

Patent attorney manufacturing   

Belinda Wadeson - Principal

Patent Attorney & Trade Marks Attorney

 

Related topics

-> Australian Patent Opposition Extensions of Time: A Review – 24 April 2014

 


[1] EXPLANATORY STATEMENT: Intellectual Property Legislation Amendment (Raising the Bar)

Regulation 2013 (No. 1)

[2] MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 at [54]

[3] MG Icon at [15] to [17]

[4] MG Icon at [39] to [41]

[5] MG Icon at [45]

[6] Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 at [24] to [26]

[7] Merial Limited v Novartis AG [2013] APO 65 at [16]; MG Icon at [38]

[8] TRED at [40]

[9] MG Icon at [38]

[10] TRED at [45]

[11] Merial Limited v Novartis AG [2013] APO 65 at [18]

[12] Fonterra Co-operative Group Limited v Meiji Dairies Corporation [2014] APO 11 at [16]; see also lack of explanation of 6 week delay MG Icon at [40] to [41]

[13] MG Icon at [37] to [49]

[14] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [24]

[15] Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15 at [21] and [24]

[16] MG Icon at [41] and [48]

[17] MG Icon at [46]

[18] MG Icon at [49]

[19] MG Icon at [42]

[20] ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2014] APO 22 (15 April 2014)

[21] TRED at [64]

[22] Merial Limited v Novartis AG [2013] APO 65 at [25]

[23] TRED at [67]

[24] MG Icon at [29] to [30]

[25] TRED at [69]

[26] TRED at [71]

[27] Merial Limited v Novartis AG [2013] APO 65 at [24]

[28] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [31]

[29] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [33]

[30] Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21 (11 April 2014)

[31] MG Icon at [33]