Lowering the Bar on Procedural Fairness?
This matter concerned an application for an extension of time to file evidence in reply under Regulation 9.18 of the Trade Mark Regulations 1995, which arose in relation to an application by MG Icon LLC to remove the trade mark MATERIAL GIRL owned by Caprice Australia Pty Ltd.
There were, throughout the course of the proceedings, several requests for extensions of time to file evidence from both parties. The law that applied to these earlier requests was the law as it stood prior to the Raising the Bar Amendments (which came into effect on 15 April 2013) and each of the extensions were granted.
It is important to note that full evidence-in-answer was served on 11 July 2013. As the evidentiary period changed after 15 April 2013 (from evidence-in-answer to evidence-in-reply), Caprice’s evidence-in-reply fell under the new law under the Raising the Bar Amendments. One of the key changes under these amendments was to make the granting of extensions of time far more stringent for opposition matters.
Caprice’s evidence-in-reply was initially due on 14 November 2013. On this date it filed partial evidence and requested a one month extension of time to file the remainder of the evidence. The Delegate refused the request for the extension of time, but gave 14 days for Caprice to file submissions supporting its request. Caprice filed evidence explaining steps that it had taken to prepare its evidence in reply and detailing some delay due to the sale of its business and difficulty in obtaining instructions suffered by its Australian counsel that resulted therefrom.
The Delegate reviewed the law as amended by the Raising the Bar Amendments to find that the applicable law for an opposition matter filed before 15 April 2013, but in which an extension of time is sought after 15 April 2013 and where the current evidentiary period began after 15 April 2013, is the current form of the legislation.
As there were no decisions yet published by the Registrar of Trade Marks related to an extension of time falling within these circumstances, the Delegate referred to decisions of the Patent Office which reviewed similarly introduced provisions within the Patents Act. The Delegate stated that the questions which are to be answered are:
- Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
- 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?
- Were there exceptional circumstances that warrant the extension?
Either (1) and (2) together, or (3) on its own, must be answered with ‘yes’ if an extension is to be granted.
In this instance the sale of the Caprice business (the main reason relied on for the need for an extension of time) did not justify the granting of the extension. In respect of (1) and (2) above, the efforts to comply with filing requirements at all times were not substantiated by the evidence led. As a consequence, the period for filing evidence in reply ended on 14 November 2013 and the declarations filed after that date do not constitute part of the evidence-in-reply.
To view the Office decision, click here.
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