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

This matter concerned an extension of time application to file evidence in support of two trade mark oppositions filed by Fed Square Pty Ltd against Federation IP Pty Ltd.

The respective parties were involved in negotiations prior to the evidentiary periods being set by the Trade Marks Office. These negotiations failed and the opponent set about attempting to prepare its evidence in support.

In the timeline noted by the opponent (reproduced by the Hearing Officer) there was a ‘substantial delay at the beginning’ of the opponent’s evidentiary period as the opponent was bringing a new CEO up-to-speed with the matters.

Additionally, midway through preparing its evidence, the opponent again sought to negotiate with the applicant to attempt to settle the oppositions. During this period of second negotiations, the opponent made the decision to ‘delay all activities relating to the preparation of evidence’.

Largely on the basis of these two periods of delay, the Hearing Officer found that the opponent failed to act promptly and diligently at all times in the preparation of its evidence and was not, therefore, entitled to an extension of time.

However, the opponent was able to successfully argue that the additional evidence, for which it was seeking the extension of time, should be considered by the Hearing Officer in the substantive opposition matter. This, in effect, has allowed the opponent to circumvent the need for the extension of time, as the additional evidence will now be considered despite being filed out of time.