The Intellectual Property Laws Amendment (Raising the Bar) Bill came into effect in April 2013. One of the aims of the amendment was to streamline the trade marks opposition process, making the overall process more time and cost-effective for brand owners.
A key element in this streamlining was the ‘raising the bar’ on the standard required to obtain an extension of time to file evidence during the normal evidentiary periods (support, answer and reply). In practice, the bar has been raised so high that it has become almost impossible, baring natural disaster, to obtain an extension of time to file evidence.
However, the recent Trade Marks Office decision Fed Square Pty Ltd v Federation IP Pty Ltd  ATMO 42 has exposed a potentially significant flaw in the current regulations governing Australia’s trade mark opposition proceedings (or, at least, the application of the regulations by the Trade Marks Office).
In that matter, the opponent (Fed Square), filed its evidence in support online through the usual means 7 (seven) days after deadline for doing so had passed. Having failed to file its evidence in time, the opponent applied for an extension of time to do so pursuant to regulation 5.15.
The application for the extension of time was refused by a Delegate of the Registrar, who applied the current standard in deciding that the opponent had not acted ‘promptly and diligently at all times’ and was, therefore, not entitled to an extension of time.
Concurrent to its extension of time application, the opponent also applied for the same evidence to be allowed under regulation 21.19.
Regulation 21.19 existed prior to the Raising the Bar amendments and allows for the Registrar to use any information available provided it is relevant to the proceedings, known to both parties and the Registrar proposes to take the information into account when making a decision.
Essentially, regulation 21.19 is a fail-safe which ensures that information, such as evidence, that would have a real effect on a matter, is to be considered by the Registrar when making a decision.
In this matter, the Delegate decided that the late-filed evidence should be considered by the Hearing Officer when the opposition matter is decided. This decision has the effect of allowing the opponent to rely on evidence that, due to the refused extension of time, should have been taken to have never been submitted.
All this leads to the question; what is the purpose of the Raising the Bar amendments and the refusal of extensions of time when all an opponent (or applicant) need do is file probative evidence out of time and apply for the evidence to be considered under regulation 21.19?
In anticipation of this question, the Delegate does issue a ‘cautionary note’ that regulation 21.19 is not a means to circumvent the extension of time provisions, but it may be best to take this note with a grain of salt, given that the effect of the decision is a precedent for circumvention.