The demise of extensions for filing evidence in trade mark oppositions
IP Australia has clearly signalled that parties in trade mark oppositions can no longer rely on the availability of extensions to file evidence.
This significant shift is attributable to the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012 and the accompanying Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) (“RTB”) which came into effect on 15 April 2013.
Under rules of statutory interpretation it is permissible, in the first instance, to consider material extrinsic to legislation to interpret that legislation. This is to place the legislation in context and includes how the law previously stood and the mischief which the legislation was designed to remedy. There is no need to identify an ambiguity before having regard to such extrinsic materials.
One such piece of extrinsic material is the Explanatory Memorandum to the RTB which expressed the need for reducing delays in resolution of patent and trade mark oppositions by refining opposition proceedings to better meet their intended purpose as a means for settling disputes quickly and inexpensively. However, it was also noted that the patent and trade mark systems also need to strike a balance between giving sufficient time to get applications in order for grant or registration and minimising delays in giving certainty about whether a right would be granted and what scope that right would have.
It is submitted that two Trade Marks Office decisions issued to date and discussed below, indicate that IP Australia is struggling with striking the right balance and has currently set the bar for extensions at an unrealistic level. In so doing, the interests of natural justice are not being properly considered and it may take an appeal to the Administrative Appeals Tribunal to obtain some clearer direction on extensions under the RTB.
MG Icon LLC v Caprice Australia Pty Ltd  ATMO 34 (30 April 2014)
This was the first decision issued by the Trade Marks Office and concerned the refusal of an application by Caprice for an extension of time to file evidence in reply to its opposition to an application for removal of its MATERIAL GIRL trade mark registration on the ground of non use.
The application for removal was advertised on 29 March 2012. A notice of opposition was filed on 29 June 2012. The opponent filed its evidence in support on 10 October 2012 after obtaining a 1 month extension. The applicant for removal obtained extensions totalling 6 months and completed its evidence in answer on 11 July 2013.
Caprice had to comply with the stricter requirements of the RTB for its evidence in reply. It filed part of its evidence in reply in time on 14 November 2013 and requested a 1 month extension to complete this evidence. It subsequently filed some additional evidence on 27 November 2013. However, on 29 November 2013, IP Australia issued a notice of intention to refuse the extension and allowed Caprice 14 days to file further reasons in support of its extension. Caprice filed the balance of its evidence in reply on 3 December 2013 and also filed further reasons in support of the extension on 4 December 2013.
IP Australia was prepared to allow the extension, but the applicant for removal objected to the extension and applied for a hearing.
Regulation 9.18 requires a party seeking an extension to satisfy the Registrar that it has (a) made all reasonable efforts to comply with all relevant filing requirements and despite acting promptly and diligently at all times to ensure the filing of the evidence within that period, is unable to do so; or (b) there are exceptional circumstances that justify the extension.
Since this was the first decision on extensions before the Trade Marks Office, the hearing officer referred with approval to the Patent Office decisions in McCarthy v TRED Design Pty Ltd  APO 57 (11 November 2013) and Merial Limited v Novartis  APO 65 (5 December 2013).
Caprice argued that it was disadvantaged by this new Regulation coming into effect between the evidence stages and a sale of the business which occurred in July 2013. However, the hearing officer was not satisfied these were exceptional circumstances.
The hearing officer also considered that Caprice had not acted promptly and diligently at all times. She was critical of the initial reasons given which did not sufficiently explain what occurred after the removal applicant’s evidence in answer was filed and prior to 13 November 2013. The further reasons given by Caprice were a more comprehensive explanation of the events and circumstances, but the hearing officer was still not satisfied.
The hearing officer refused the extension, but seemingly left the door open for Caprice to apply for leave to file further evidence (which was an option available to it because the opposition commenced before the stricter evidence regime of the RTB came into effect).
Monster Energy Company v USA Nutraceuticals Group, Inc  ATMO 1 (9 January 2015)
In this second decision on extensions in oppositions, the Trade Marks Office refused an application by USA Nutraceuticals for an extension of time to file evidence in answer.
This case involved an opposition (filed after the RTB came into effect) by Monster Energy to registration of the trade mark BEAST. It had filed its evidence in support within the allowed 3 month period but USA Neutraceuticals was unable to file its evidence in answer within its allowed 3 month period, so applied for a 1 month extension from 16 December 2013 to 16 January 2014 and subsequently filed this evidence on 8 January 2014.
IP Australia indicated that it intended to allow the extension, but Monster Energy objected to this.
The hearing officer observed that between 8 October 2013 to 14/15 December 2013, there was little or no action taken by USA Nutraceuticals despite multiple reminder emails from its attorneys. There were general statements to the effect that it is a small business with limited staff, was involved in other litigation and the controlling officer of the company was engaged with business travel. However, there was a lack of specific information as to what steps were taken to gather its evidence. The hearing officer was not satisfied that it had made all reasonable efforts to act promptly and diligently at all times.
As a result, USA Neutraceuticals’ evidence was not allowed and it was effectively shut out from relying on any evidence to defend its trade mark application.
Take home message
As a result of these two decisions, it is unsafe for parties in trade mark oppositions to rely on the availability of any extension for filing evidence. Every effort must be made to compile evidence and have a Declaration ready to be filed within the initially allocated time. If necessary and where practicable, a Declaration may be made by the party’s Trade Marks Attorney based on information and belief. The Trade Marks Office, as an Administrative Tribunal, is not bound by the strict rules of evidence (such as hearsay) and it is better to file something rather than risk being shut out from having any evidence placed on record if an extension is refused. As a last resort, a party should file what information is available, give a copy to the other party and seek to have the Registrar at least take this information into account under Regulation 21.19.