Honest Reveira v Registrar of Trade Marks

[2018] FCA 1122

[7 August 2018]

Trade marks – application for judicial review of decision of Registrar to extend time for filing notice of intention to oppose application for removal of two trade marks – “circumstances beyond control of the person”

Mr Jitrendakuma Naik and his wife Mrs Parul Naik owned a company called Honest the Snack Shack Pty Ltd which operated a small Indian restaurant.  Mr Naik, who also had other employment, managed all business matters.  Mrs Naik, the sole director, worked in the restaurant, prepared the food, and looked after their two children.

Since 2013 the Naiks’ company had been the registered owner of two trade marks consisting of the words INDIAN HONEST – FOR DELICIOUS FOOD in a device comprising a yellow oval in a red triangle.

On 27 August 2017 Honest Reveira filed an application for removal of the marks under s 92 of the Trade Marks Act 1995 (Cth).

After publication of the application in the Official Journal, the period for filing a notice of intention to oppose ended on 7 November 2017.  Two weeks later, on 22 November, the Naiks’ company filed an application for an extension of time for filing a notice of intention. The application sought an extension of time for one month, that is, until 7 December. Pending a decision of the Registrar the company filed a notice of intention to oppose, together with grounds and particulars, on 4 December.

Following opposition by The Honest Reveira to the extension of time, the Naiks responded on 18 January 2018.  They relied on a chronic back condition suffered by Mr Naik in his other employment and Mrs Naik having to run the business and look after the children. Medical certificates were supplied.

On 2 February a delegate of the Registrar of Trade Marks made a decision granting an extension of time of one month, that is, to 7 December 2017. The delegate relied on reg 9.11(4)(b) of the Trade Marks Regulations 1995 (Cth) which provides a ground for extension where there are “circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.”

Justice Moshinsky dismissed an application by The Honest Reveira for judicial review of the delegate’s decision.

His Honour held (at [57]) that health issues affecting a person were capable of constituting “circumstances beyond the person’s control” for the purposes of the regulation.

The Honest Reveira had argued that the injury only affected Mr Naik and that did not prevent another officer, Mrs Naik, from attending to the filing of the notice.

However, his Honour noted that the delegate had accepted that all of the company’s business matters were managed by Mr Naik. It was open to the delegate to approach the question of circumstances beyond the company’s control by reference to the situation of Mr Naik: [60].

This post was initially posted by The Hon Peter Heerey AM QC, Tom Cordiner QC and Alan Nash on IPForum.

 

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