Australia Update: Swole O’Clock Wins Its Battle Against Time

Australia Update: Swole O’Clock Wins Its Battle Against Time

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In the case of Swole Gym Wear Group Pty Ltd v Swole O’Clock Ltd [2019] FCA 685, the Federal Court dismissed an application for an extension of time to file a notice of appeal against the decision of the Registrar of Trade Marks.

Background

An application was filed by Swole O’Clock Ltd (Swole O’Clock) for the removal of Trade Mark No. 1702160 for SWOLE (the Trade Mark) under s 92(4)(a) of the Trade Marks Act 1995 (the Act) on the basis that at the time the application was filed, its owner, Swole Gym Wear Group Pty Ltd (Swole Gym), had no intention in good faith to use the Trade Mark. The removal application was subsequently opposed by Swole Gym.

Swole Gym claimed that the Trade Mark first appeared on its wristband products and adduced evidence of email correspondence and social media posts, from one year prior to the registering of the Trade Mark, to demonstrate that the Trade Mark was registered in good faith. Swole O’Clock highlighted that silicon wristbands were not included as part of the specified goods and, therefore, cannot be relied on to prove any intention to use the Trade Mark.

The Delegate of the Registrar of Trade Marks held that Swole Gym did not use the Trade Mark in Australia at any time before the period of one month ending on the day on which the removal application was filed and evidence of intended use was a “speculative possibility or general intention for using the Trade Mark at some future but unascertained point in time”. Accordingly, the Delegate ordered that the Trade Mark be removed from the Register one month from the date of the decision.

Swole Gym sought to appeal the decision of the Delegate, however, it did not file a notice of appeal within the required time period. Instead, Swole Gym filed both an application for an extension of time to file a notice of appeal and a “(Draft) Notice of appeal (Intellectual property)” on the last day of that period. The application was filed on the basis that Swole Gym did not have legal representation during the hearing before the Delegate and it did not have sufficient time to retain legal representation.

The Court was required to consider Swole Gym’s application for an extension of time.

Decision of the Federal Court

Justice Steward upheld the decision of the Delegate and refused Swole Gym’s application for an extension of time.

In reaching his conclusion, Justice Steward accepted that Swole O’Clock had suffered some prejudice and uncertainty; prejudice was suffered due to the delay in the service of Swole Gym’s application, and uncertainty arose as Swole O’Clock had two pending trade mark applications that were unable to progress as a result of Swole Gym’s to-be-removed Trade Mark.

Notwithstanding that Swole Gym was within the timeframe to file a notice of appeal, it elected to request an extension of time in order to retain legal representation. The Court acknowledged that neither the Act nor the Court Rules provides for an election to seek an extension of time in lieu of the filing of a notice of appeal. Justice Steward rejected Swole Gym’s argument that it required additional time to retain legal representation, describing it as “unconvincing”.

The Court considered the merits of the appeal and concluded that any appeal from the decision of the Delegate is bound to fail. The evidence of intended use was “simply too thin or non-existent” to discharge Swole Gym’s onus of showing that it intended to use the Trade Mark in good faith in respect to the specified goods. Furthermore, any evidence which supports Swole Gym’s case should not be given any probative weight as it took place after the non-use application was filed and, therefore, unable to rebut allegations made under s 92(4) of the Act. Justice Steward concluded that the “delegate’s decision was plainly right”.  

Commentary

A party can appeal a decision of the Registrar of Trade Marks within 21 days. Where the party is unable to comply with the specified timeframe it may seek an extension of time from the courts. However, as demonstrated in this case, any party that seeks to rely on the court’s discretion in this respect should exercise caution, as there is a risk that the court will not accommodate such a request.

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