Beware!! IP Australia refuses extension of time for filing evidence

The implementation of the new IP laws in April 2013 brought about some welcome changes. One change that has not been so welcome in the IP community is the more stringent application of extensions of time for filing evidence in oppositions. Just last month, the Registrar’s delegate Bianca Irgang refused one additional month (above the initial statutory three months) to allow the applicant to file its evidence in answer.

USA Nutraceuticals Group Inc faced a deadline of 16 December 2013 to file its evidence in answer. Despite the Australian attorney firm informing USA Nutraceuticals Group’s US attorney firm of the deadline in early October and sending several reminders, no evidence details were provided to the Australian attorney firm until 14/15 December 2013. A draft declaration was sent to the declarant for signing that same day, but was not actually signed until 8 January 2014.

A one month extension of time was sought on the basis that the applicant:

  1. had made all reasonable efforts to comply with all relevant filing requirements; and
  2. despite acting promptly and diligently at all times to ensure the filing of the evidence within the [3 month] period, was unable to do so.

The reasons put forward by the applicant for the delay were:

  • The applicant was delayed in finalizing its Evidence in Answer because Mr Altieri, the President of the Applicant, had been travelling extensively throughout the United States, Canada, Japan and the United Kingdom for business;
  • The applicant was engaged in litigation proceedings in the United States which had demanded a substantial amount of Mr Altieri’s time and attention;
  • The applicant experienced further delay when collecting information specific to Australia, as the applicant was required to search extensively through physical historical data which dated back over 10 years. Much of the material and information required retrieving and searching through old archived files and boxes which had been kept in storage; and
  • A lot of information and documentation of sales in Australia was obtained from third party retailers and distributors, which are based outside of the United States.

These are pretty typical issues faced by many trade mark owners when preparing evidence.

Not surprisingly, the opponent, Monster Energy Company, opposed the extension.

In submissions at the hearing, a timetable was provided by the applicant showing dates when various correspondences between the Australian attorney firm, the US attorney firm, and the applicant took place. Unfortunately, this timetable revealed a glaringly big ‘black hole’ in the dates: On 8 October 2013 the Australian attorney firm notified the US attorney firm of the evidence in answer deadline and provided details of what would be required; 14/15 December 2013 is the first date listed that the US attorney firm responded and provided evidence, one day before the evidence was due. No details of what preparation was done between those dates by the applicant was provided.

The applicant’s counsel tried to provide additional reasons for the ‘black hole’, including the shut down of offices due to snow storms in the USA and substantial travel by the declarant. One problem with this was that there was a distinct lack of detail – exact dates were not provided – so the Registrar’s Delegate rightly afforded these additional reasons very little weight.

A quote from the case:

“This two month period between the 8 October and 14/15 December 2013 appears to be a black hole when it comes to action from the holder. There is no indication of unusual events or new litigation commencing during this time but rather broad statements that the litigation was ongoing and that Mr Altieri engaged in business travel. If and how long that business travel occurred during this period is unknown.”

Lessons Learnt

There are some vitally important lessons to take away from this case:

  1. Evidence deadlines should be treated as non-extendible. Evidence preparation must commence as early as possible, even before the pleadings phase and/or the opponent’s evidence phase has been completed.
  2. Steps in the evidence preparation period, no matter how small, must be undertaken (and noted) consistently and continuously from the beginning. Don’t leave a ‘black hole’ within the period where no action was taken.
  3. Any application for extension of time needs to have VERY detailed reasons, with timelines describing all the steps taken since the start of the relevant evidence period.

While in a past life it was somewhat straightforward to be granted extensions of time up to nine months or more, it seems those good times have gone. Don’t be caught out – prepare early!