Fed Square Pty Ltd v Federation IP Pty Ltd [2015ATMO 42 (15 May 2015)

We previously reported that the new extension of time provisions to file evidence in trade mark oppositions introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“Raising the Bar”) were being interpreted fairly strictly by the Trade Marks Office (“TMO”).  The TMO has now issued a number of decisions on the extension of time provisions, all of which have interpreted the new provisions strictly.  In particular, a high standard has been set on what conduct meets the promptness and diligence test.

The TMO’s most recent decision in Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42 (15 May 2015) (“the Fed Square Case”) continues this trend.  However, the Fed Square Case is of particular interest as, although an extension of time to file evidence was refused, the late evidence was allowed to be considered under regulation 21.19.  This regulation allows the Registrar to take into account information that is relevant to the proceedings but which does not form part of the evidence provided that certain natural justice obligations are met.

Background to the Fed Sqaure Case

In the Fed Square Case, the Opponent sought a 1 month extension of time to file its Evidence in support.  The Evidence was filed 1 week after the official deadline and comprised declarations setting out details of the Opponent's use of, and the reputation in, its trade marks in Australia.  Concurrent with the extension request the Opponent also requested that the Registrar consider and allow its Evidence under regulation 21.19

The Extension of Time Application

Under regulation 5.15(2), an extension of time for filing evidence in a trade mark opposition will only be granted if:

  1. the party has made all reasonable efforts to comply with filing requirements and has acted promptly and diligently at all times to ensure the filing of the evidence; or
  2. exceptional circumstances exists.

In the Fed Square Case, the Opponent only pressed subsection (a).

Reasonable efforts to comply with filing requirements

Consistent with the TMO’s previous decisions on this aspect of regulation 5.15, the Delegate looked to the Opponent’s conduct in the earlier stages of the opposition.  As the Opponent timely filed its Notices of Intention to Oppose and Statement of Grounds and Particulars, the Opponent was found to have made reasonable efforts to comply with filing requirements.

Promptness and diligence - the key hurdle

Ultimately, the extension of time application was unsuccessful as the Opponent failed to show that it had acted promptly and diligently at all times.  It is this aspect of regulation 5.15 in relation to which parties are being held to a high standard.  

In the Fed Square Case, the Delegate was critical of a delay of around 3 weeks in the first half of the evidentiary period where no activity appeared to have occurred.  Furthermore,    the Opponent made a specific decision to delay gathering evidence while it pursued settlement with the Applicant.  Ultimately, attempts to settle the opposition were unsuccessful and the preparation of evidence did not commence until more than 2 months into the evidentiary period.  The Opponent claimed that finalisation of the evidence took longer than anticipated, due to the form and size of the evidence provided to the Opponent’s attorneys.  The Delegate was not sympathetic to these complications and noted:

A party will not always provide evidence requested by its attorneys in the most accessible or appropriate form and some allowance should be made for such eventualities. Had the preparation for the evidence in support commenced at least a week earlier they would simply not be obstacles to filing the evidence in support by the due date. In other words, the problems with the evidence could have been remedied had the Opponent acted promptly and diligently at all times

As a result, the Delegate was not satisfied that that the Opponent had acted promptly and diligently at all times, and the extension of time application was refused.

Regulation 21.19 provides the saving grace

As noted above, while the extension of time application was refused, the Opponent's evidence was allowed for consideration under Regulation 21.19.

Historically, Regulation 21.19 was typically utilised by the Delegate to consider materials which were publicly available, such as dictionary definitions, google searches, and information on the Trade Mark Register.

However this decision heralds a clear departure from this trend as the Opponent's late evidence comprised details of its use of, and reputation in, its trade marks in Australia.

Late materials allowable if "of a high probative value"

In deciding that the Opponent's late evidence in support can be considered under Regulation 21.19, the Delegate noted:

In order to determine whether or not to take information into account under Reg 21.19 it is necessary for an administrative decision maker to consider the nature and significance of the evidence put forward. If that material is of high probative value, that will be a crucial factor in the determination of whether it should be admitted.

The Opponent's late evidence was considered to be of a high probative value and was likely to significantly affect the outcome of the substantive opposition.  Moreover, it was noted that:

The intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out oppositions where there is a serious issue to be heard, the evidence is of high probative value, submitted shortly after the due date and is immediately available to the Registrar and the other side.

In addition, it was considered to be in “the public interest in hearing the opposition on its merits and the intent of the legislative changes in resolving oppositions efficiently outweighs the inconvenience to the party and the danger of circumventing the conventional evidence process”.

The "cautionary note"

Despite finding the applicability of regulation 21.19 in the Fed Square Case, the Delegate cautioned that it is not sufficient for a party to only show that the evidence is relevant and there is a possibility that the opposition may fail without it.  Further circumstances that make it reasonable for the material to be taken into account must exist.  While it is not too clear what the “further circumstances” in the Fed Square Case were, it is likely that the “high probative value” of the Opponent’s evidence and the timing of its lodgement were both relevant factors.  

Lessons for parties in trade mark oppostions

The Fed Square Case reinforces the high bar that parties must meet in order to be granted an extension of time to file evidence in opposition proceedings.  It serves as yet another reminder for parties and practitioners to ensure the prompt progression of evidence preparation at all stages of the statutory evidentiary period even if settlement is being pursued.

It is too early to tell what impact the Fed Square Case will have on future cases where parties are seeking to admit evidence under regulation 21.19.  However, parties will no doubt find some comfort in knowing that this avenue may be available if they fail to file evidence within the statutory time periods.