FEDERAL COURT OF AUSTRALIA

Donzenac Pty Ltd v MCV Enviroworks Pty Ltd [2015] FCA 361

THE COURT ORDERS THAT:

1.    The time for filing an appeal in the form of the notice of appeal annexed as KAS-13 to the affidavit of Kellie Anne Louise Stonier sworn 21 July 2014 from the decision of the Delegate of the Registrar of Trade Marks dated 14 May 2014 and described as Decision 2014 ATMO42 is extended to and including Friday, 24 April 2015.

2.    The applicant pay the costs of the respondent of and incidental to the application.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1    These proceedings concern an application by Donzenac Pty Ltd (“Donzenac”) for an extension of time under r 34.25 of the Federal Court Rules 2011 to file a notice of appeal under s 56 of the Trade Marks Act 1995 (Cth) (the “Act”) from a decision of the Delegate of the Registrar of Trade Marks made under s 55 of the Act.

2    The respondent, MCV Enviroworks Pty Ltd (“MCV”), filed an application for the trade mark Enviroblanket on 17 September 2012 in the following classes of goods and services:

Class 1:    Soil, mulch for soil enrichment, mineral sand, chemically treated sand

Class 37:    Landscaping services (including soil blasting, soil stabilisation; and soil, rock and mulch spreading)

3    Donzenac opposed the registration of the trade mark. By its notice of opposition of 10 January 2013 Donzenac relied upon grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A of the Act. Not all of those grounds of opposition were pressed at the hearing before the Delegate. On 15 May 2014, the Delegate published his decision (dated 14 May 2014) arising out of the opposition proceedings. In that decision, the Delegate observes that Donzenac had withdrawn reliance upon grounds under ss 43, 44 and 58 of the Act; only grounds under ss 42(b), 60 and 62A were pressed; and, for the sake of “completeness”, the Delegate found that none of the withdrawn grounds of opposition had been established: para 3 of the Delegate’s decision.

4    As to the grounds under ss 42(b), 60 and 62A of the Act, the Delegate found that none of those grounds had been made good: para 48 of the Delegate’s decision.

5    In the result, the Delegate decided, under s 55(1)(b) of the Act to register the trade mark.

6    It will be necessary to examine some aspects of the Delegate’s decision later in these reasons. However, for present purposes, it is sufficient to note the following aspects of the matter. Donzenac contends that at the hearing of the opposition proceeding on 20 February 2014 it informed the Delegate that it had previously withdrawn reliance upon the s 58 ground on the footing that the evidence put before the Delegate by the parties (upon which the decision would be based) comprised the state of the evidence prior to any attempt by MCV to rely upon further evidence comprising a statutory declaration by Mr Michael Vella, a Director of MCV, made on 9 January 2014 and a statutory declaration made by Mr Mark Metzeling, MCV’s trade mark attorney, on 18 February 2014.

7    Donzenac says that it objected to Mr Vella’s statutory declaration. It says that the Delegate refused to accept Mr Vella’s statutory declaration. It says that in reliance upon that decision it elected to withdraw the s 58 ground of opposition. It says that MCV then filed and sought to rely upon the statutory declaration of Mr Metzeling. Donzenac says that it objected to reliance upon that declaration. It says that at the hearing it informed the Delegate that, in effect, should the Vella and Metzeling declarations be admitted, it would maintain the s 58 ground of objection. Donzenac says that the Delegate entertained submissions from Donzenac on the s 58 ground. Donzenac’s point of complaint, on this issue, is that the Delegate seems to have “decided the complicated issue of the s 58 ground against [Donzenac] without any reasoning or analysis”: para 6 of Donzenac’s submissions.

8    Donzenac seeks to agitate the merits of the s 58 ground by way of appeal. It also seeks to agitate the merits of the s 62A ground on appeal.

9    I refer to Donzenac’s desire to agitate the merits of the two grounds of appeal as that matter raises the central question of the nature of the appeal to this Court. An appeal from the Delegate’s decision under s 55 of the Act lies to this Court under s 56 of the Act. In such an appeal the orders the Court may make are those set out in s 197 of the Act. Under that section, the Court may do any one or more of the following: admit evidence orally or on affidavit or otherwise; permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar (or his or her Delegate); order an issue of fact to be tried as the Court directs; affirm, reverse or vary the Registrar’s decision or direction; give any judgment, or make any order, that, in all the circumstances, the Court thinks fit; and order a party to pay costs to another party.

10    An appeal under s 56, having regard to the scope of the orders the Court might make under s 197, is a hearing de novo in the Court’s original jurisdiction. Rule 34.24(1) of the Federal Court Rules 2011 provides that a party who wants to appeal from a decision of the Registrar must within 21 days of the date of the decision, file a notice of appeal in the relevant form identifying the matters at r 34.24(2). Rule 34.25(1) provides that a person who wants to apply for an extension of time within which to file a notice of appeal mentioned in r 34.24 must file an application for an extension of time in the relevant form either during or after the 21 day period contemplated by r 34.24(1).

11    An application for an extension of time must be accompanied by an affidavit which addresses the following factors: the facts on which the application relies set out briefly but specifically; an explanation of why the notice of appeal was not filed within time; the nature of the appeal; and the questions involved in the appeal: see r 34.25(3).

12    I mention these matters because Donzenac in its written submissions seeks to rely upon r 36.05 in support of its application for an extension of time. However, r 36.05 relates to r 36.03 and those rules form part of Div 36.1 which, in turn, forms part of Pt 36 of the Federal Court Rules dealing with appeals. When the Court entertains an appeal under s 56 of the Act, the Court is not engaged in an exercise of the Court’s appellate jurisdiction. Rather, the Court is engaged in an exercise of the Court’s original jurisdiction and the appeal is conducted as a hearing de novo: Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 59; Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 209 ALR 93 at [3]; Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 16; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [32]-[34]; and NV Sumatra Tobacco Trading Company v British American Tobacco Services Ltd (2011) 198 FCR 435; 283 ALR 743 at [14]. From time to time the authorities describe the nature of such an appeal to this Court as a re-hearing and on other occasions as an appeal de novo. The nature of the appeal is correctly described as an appeal de novo having regard to s 197.

13    As to the difference between an appeal by way of re-hearing and a hearing de novo, the plurality said this in Allesch v Maunz (2000) 203 CLR 172 at [23]:

… the critical difference between an appeal by way of rehearing and a hearing de novo is that, in the former case, the powers of the appellate court are exercisable only where the appellant can demonstrate that, having regard to all the evidence now before the appellate court, the order that is the subject of the appeal is the result of some legal, factual or discretionary error, whereas, in the latter case, those powers may be exercised regardless of error. At least that is so unless, in the case of an appeal by way of a rehearing, there is some statutory provision which indicates that the powers may be exercised whether or not there was error at first instance.

                                [emphasis added]

                                [citations omitted]

14    In Coal & Allied v AIRC (2000) 203 CLR 194 at [12] and [13], the plurality said this:

12    It is common and often convenient to describe an appeal to a court or tribunal whose function is simply to determine whether the decision in question was right or wrong on the evidence and the law as it stood when that decision was given as an appeal in the strict sense. … In the case of an appeal in the strict sense, an appellate court or tribunal cannot receive further evidence and its powers are limited to setting aside the decision under appeal and, if it be appropriate, to substituting the decision that should have been made at first instance.

13    If an appellate tribunal can receive further evidence and its powers are not restricted to making the decision that should have been made at first instance, the appeal is usually and conveniently described as an appeal by way of rehearing. Although further evidence may be admitted on an appeal of that kind, the appeal is usually conducted by reference to the evidence given at first instance and is to be contrasted with an appeal by way of hearing de novo. In the case of a hearing de novo, the matter is heard afresh and a decision is given on the evidence presented at the hearing.

                                [emphasis added]

                                [citations omitted]

15    It follows that the questions to be addressed in an appeal under s 56 do not involve an examination of whether there was factual or legal error on the part of the Delegate. Due regard will, of course, be given to the opinion of the Registrar’s Delegate as a decision of a skilled and experienced person. Nevertheless, s 197 makes plain that the focus of the appeal is not the examination of error by the Registrar’s Delegate; the appeal must be determined on the merits before the Federal Court; and the appeal involves an exercise of original jurisdiction. There is no presumption in favour of the correctness of the Registrar’s Decision but, of course, weight will be given to the Delegate’s opinion having regard to the individual’s experience and skill. On appeal to this Court, the question of whether the opposition is made good is to be determined by applying the same legal criteria that the Registrar (and his or her Delegate) is required to apply.

16    In such an appeal, Donzenac is required to establish the grounds of opposition on the balance of probabilities. However, as to that question, regard needs to be had to the decision of the Full Federal Court in Lomas v Winton Shire Council [2003] AIPC 91-839 at [17]-[19]; Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 594; Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [28], [32] and [34] per Keane CJ, Stone and Jagot JJ; and the discussion of the differing expressions of opinion in decisions of this Court set out in NV Sumatra v British American Tobacco (supra) at [16]-[38].

17    The application for an extension of time is principally supported by the affidavit of Ms Kellie Stonier, a Principal of Griffith Hack Lawyers, the solicitors acting for Donzenac, sworn 21 July 2014. Ms Stonier has filed a further affidavit in support of the application sworn 8 September 2014. As to the events which occurred after publication of the Delegate’s decision, Ms Stonier says the following things.

18    By a letter dated 30 May 2014 to MCV’s trade mark attorney, Mr Metzeling, Ms Stonier advised Mr Metzeling that Donzenac was contemplating either an appeal from the Delegate’s decision to this Court or filing an application for judicial review of the Delegate’s decision pursuant to the provisions of the Administrative Decisions (Judicial Review) Act 1977 (Cth) (the “ADJR Act”). Ms Stonier’s letter set out the grounds which were likely to be relied upon by the applicant.

19    By an email dated 3 June 2014, Mr Metzeling responded to Ms Stonier’s letter and took issue with a number of the matters Ms Stonier had set out in her letter concerning the proposed grounds of error on the part of the Delegate.

20    Ms Stonier says at para 7 of her principal affidavit that in the period 3 June 2014 to 10 June 2014, Donzenac and MCV through their representatives were engaged in “without prejudice” discussions which failed to resolve the dispute concerning the grounds of criticism of the Delegate’s decision.

21    On 11 June 2014, Donzenac filed in the Federal Court an application for judicial review under the ADJR Act. The 21 day period for an appeal contemplated by r 34.24(1) had expired on 5 June 2014. Ms Stonier says that an application for judicial review was filed under the ADJR Act on 11 June 2014 because the appeal period had expired on 5 June 2014. Ms Stonier says that on 11 July 2014, Mr Metzeling sent an email to Ms Stonier attaching a proposed interlocutory application by which MCV would seek to be joined as a respondent to the ADJR proceedings.

22    On 14 July 2014, Ms Stonier sought further information from Mr Metzeling about that matter.

23    On 14 July 2014, Ms Stonier sent a letter to Mr Metzeling advising that Donzenac intended to file an application to seek an order for leave to treat the ADJR proceedings as an appeal under s 56 of the Act to which MCV would be joined as a respondent.

24    On 15 July 2014, Mr Metzeling wrote to Ms Stonier advising that so far as the ADJR application was concerned, MCV contended that it ought to be joined as a respondent. As to the question of the ADJR application being treated as an appeal under the Act, Mr Metzeling contended that Ms Stonier had not identified “persuasive reasons why these proceedings should be treated as an appeal”.

25    On 15 July 2014, Mr Metzeling sent a letter to Ms Stonier attaching an interlocutory application (dated 15 July 2014) by which MCV sought to be joined as a respondent to the ADJR proceedings, supported by particular affidavit material.

26    By letter dated 16 July 2014, Ms Stonier responded to Mr Metzeling’s no “persuasive reasons” proposition of 15 July 2014 and made three observations about an appeal under s 56 of the Act.

27    First, Ms Stonier said that MCV had been given notice of Donzenac’s intention to either appeal to the Court or file an application under the ADJR Act as earlier as 30 May 2014 and, by that letter, Donzenac had set out its concerns with the Delegate’s decision.

28    Second, the time period between the last date for filing an appeal (5 June 2014) and the date of filing of the ADJR application (11 June 2014) had been minimal (six days).

29    Third, as MCV had filed an application to be heard on substantive submissions concerning its position in relation to an ADJR review of the Delegate’s decision, Donzenac found it difficult to see how MCV could be materially prejudiced by being heard on the matter if treated as an appeal under the Act.

30    In other words, MCV seemed ready to deal with a challenge to the Delegate’s decision, either way.

31    On 16 July 2014, Mr Metzeling sent an email to Ms Stonier in which he said that MCV did not consent to the proposed application to, in effect, convert the ADJR proceedings into an appeal under the Act. In his email Mr Metzeling said that Donzenac was aware at least by 30 May 2014 that it was entitled to file an appeal under the Act or seek judicial review and yet it “knowingly declined to file an appeal and instead filed an application for judicial review”. Mr Metzeling said that in taking that action, Donzenac “made a positive indication” or a conscious election not to have the matter heard as an appeal.

32    Mr Metzeling also asserted that MCV would be materially prejudiced should a hearing de novo occur. The expression of the prejudice was said to be that “all evidence will need to be refiled, in addition to any new evidence filed by either party in relation to this matter” [emphasis added]. Mr Metzeling said that these steps would “result in significant additional cost and time for both parties and the Court”. Moreover, Mr Metzeling contended that MCV had already incurred substantial costs in preparation for the judicial review proceedings.

33    On 21 July 2014, Donzenac filed its application for an extension of time under r 34.25.

34    The orders sought in the appeal proceeding are that the appeal be allowed; the decision of the Delegate made on 14 May 2014 be set aside; the Registrar be directed to refuse registration of the trade mark Enviroblanket; and the respondent pay Donzenac’s costs of the appeal proceeding. The two grounds Donzenac seeks to agitate are based upon s 62A and s 58 of the Act. Section 62A of the Act provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

35    As to the first ground concerning s 62A, Donzenac firstly contends that the Delegate erred in making findings which were not open before him on the evidence. The three particulars of that error are these.

36    First, the Delegate made a finding that in 2009 Mr Vella began trading as MCV Enviroworks when there was no evidence upon which the Delegate could reasonably be satisfied of that matter.

37    Second, the Delegate made a finding that in 2009 Mr Vella commenced using Enviroworks in relation to the goods and services specified in the trade mark application when there was no evidence upon which the Delegate could reasonably be satisfied of that matter.

38    Third, the Delegate made an erroneous finding concerning a relationship between an undertaking given by MCV to Donzenac not to adopt particular trade descriptions or trade marks in the course of trade when, according to Donzenac, the adoption of the Enviroblanket trade mark by MCV had occurred prior to any undertakings being given and thus the adoption of the Enviroblanket trade mark by MCV was not something done by reason of or motivated by or in conformity with the undertakings. In other words, Donzenac says that MCV gave the undertaking knowing that it had chosen to adopt Enviroblanket as a trade mark in any event.

39    The second ground of appeal is that the Delegate erred in failing to have regard to relevant evidence. Donzenac contends that the Delegate failed to take into account evidence which was said to establish five particularised matters.

40    The third ground of appeal is that the Delegate erred by relying upon evidence, sought to be relied upon by MCV, which the Delegate had earlier rejected. Donzenac says that MCV filed two applications seeking to rely upon further evidence prior to the hearing held on 20 February 2014. However, the Delegate is said to have made a finding (at para 16 of the decision) not to permit MCV to serve further evidence in the proceeding. Donzenac says that despite that ruling, the Delegate subsequently relied upon the further evidence filed by MCV and relied upon it in reaching a finding (in para 20 of the decision) that in 2009 Mr Vella began trading as MCV Enviroworks and commenced using Enviroworks in relation to the specified goods and services.

41    The fourth ground of appeal concerns s 58 of the Act. Donzenac says that the Delegate erred by failing to consider Donzenac’s case based upon s 58. It says that having taken into account the further evidence which the Delegate had decided not to permit MCV to serve, the Delegate ought to have acted upon the footing that the basis for Donzenac not pressing its ground of opposition under s 58 had fallen away and thus the Delegate ought to have considered Donzenac’s ground of opposition under s 58.

42    Rule 34.25(3) uses language materially different to that adopted in Order 58, r 4(3) of the Federal Court Rules prior to the adoption of the Federal Court Rules 2011. Although the commentaries on the Rules assert that there is no difference between r 34.25(3) and the earlier rule in the form of Order 58, r 4(3), it is important to note that the earlier rule provided that an application could be made to the Court to extend the time for the filing of an appeal at any time (unless a law of the Commonwealth provided otherwise) supported by an affidavit showing “special circumstances”. Rule 34.25(3) does not use the phrase “special circumstances”. As mentioned at [11] of these reasons, the four factors set out at r 34.25(3) to be demonstrated by an applicant in an affidavit in support of the extension application are now, expressly, these:

(i)    briefly but specifically, the facts on which the application relies; and

(ii)    why the notice of appeal was not filed within time; and

(iii)    the nature of the appeal; and

(iv)    the questions involved.

43    These are the factors to be addressed in seeking an extension of time for the filing of a notice of appeal.

44    In Kabushiki Kaisha Universal v Aristocrat Leisure Industries Pty Ltd BC9800472, 26 February 1998; [1998] AIPC 91-396, Branson J observed, when construing the term “special circumstances” in Order 58, r 4(3)(b) that it contemplated circumstances that “take the case out of the ordinary” so as to justify departure from the general rule that an appeal is to be instituted within 21 days from the date of the decision. Branson J also observed that for the purposes of Order 58, r 4(3)(b), the power conferred by that rule to grant an extension of time is a grant of a flexible discretionary power which, although only exercisable in a particular case when circumstances subsist justifying departure from the usual rule, the exercise of the power was not otherwise confined except by the dictates of the justice of the case. The grant of the power contemplated by r 34.25 is also a broad flexible discretionary power unconstrained, however, by any reference to “special circumstances”. In the context of Order 58, r 4(3)(b) conditioned, of course, by reference to the phrase “special circumstances”, Branson J considered that the factors appropriate to be taken into account in the exercise of the discretion included these matters:

(a)    the length of the delay;

(b)    the explanation for the delay, and in particular, whether the plaintiff is personally blameless for the delay;

(c)    any prejudice to the respondent or to other persons, arising out of the delay;

(d)    actions taken by the applicant to alert the respondent to the fact that the decision is, or may be, contested;

(e)    the merits of the proposed appeal;

(f)    alternative avenues of relief, if any, available to the applicant; and

(g)    questions of public interest, if any, in the subject matter of the appeal.

                                [citations omitted]

45    Although r 34.25 makes no reference to “special circumstances” and, in particular, r 34.25(3) sets out the matters that must be addressed by an applicant in an affidavit in support of an extension application, it seems to me that the factors identified by Branson J as appropriate matters to be considered in the exercise of the discretion remain, in a relevant case, matters to be taken into account in the exercise of the discretion under r 34.25. Plainly enough, r 34.25 contemplates the exercise of a discretion to enable an appeal to be brought outside the ordinary circumstances of an appeal normally commenced within 21 days. Although the circumstances are not taxonomically described as “special”, circumstances must nevertheless be made out which demonstrate that the discretion is to be exercised in favour of enabling an appeal to be brought outside the ordinary 21 day period for the filing of a notice of appeal. However, there is no utility in seeking to exhaustively define the considerations which would be relevant.

46    As to the question of delay, I am satisfied that Donzenac acted promptly in seeking to agitate grounds of criticism of the Delegate’s decision. Donzenac, through its advisers, made it plain from the very outset that it would seek to take issue with aspects of the Delegate’s decision either by way of judicial review under the ADJR Act or by an appeal under s 56 of the Act. Exchanges took place between the advisers about those matters. The ADJR application was filed six days after the expiration of the 21 day period for the filing of an appeal. Although an appeal ought to have been filed within 21 days, I am satisfied that there is a very clear explanation for the failure to file an appeal within 21 days. It is true that Donzenac’s advisers chose to pursue judicial review of the decision by way of ADJR proceedings once it became clear that the 21 day period had expired. Nevertheless, there is no “last opportunity rule” nor any “final election” proposition that governs the exercise of the discretion. Although the ADJR route to correcting perceived errors or anomalies in the Delegate’s decision seems an odd way to proceed having regard to a party’s entitlement to a review de novo under s 56, Donzenac was acting consistently with its contention made in correspondence at the outset (within the 21 day period) of particular criticisms of the Delegate’s decision. The question is always one of how are the interests of justice best served? The delay in this case has a context and the failure to file the appeal within 21 days ought not to be regarded as fatal to Donzenac’s essential entitlement to contest de novo the questions it wishes to have determined by way of an appeal.

47    As to the matters that Donzenac seeks to agitate by way of appeal, the following matters are said by Donzenac to be material.

48    Donzenac commenced using the trade mark Ecoblanket on 29 November 2005. MCV was incorporated on 26 March 2010. During 2010, disputes emerged between the parties about MCV’s use of the mark Ecoblanket in relation to its goods and services and in relation to a search engine. On 19 October 2010, MCV signed undertakings given to Donzenac “not to use the word ECOBLANKET or any deceptively similar words in respect of any goods and services provided by [MCV]”. MCV filed the trade mark in issue in these proceedings for Enviroblanket on 17 September 2012. MCV subsequently developed and sold a range of products beginning with the prefix Enviro. Donzenac says that prior to that conduct, the use of Enviro had been primarily in connection with MCV’s name rather than its products. Donzenac became aware of MCV’s application and requested MCV to cease use of Enviroblanket. Donzenac commenced opposition proceedings on 10 January 2013.

49    Donzenac says that it follows from these briefly described events that MCV’s conduct in applying in 2012 for the trade mark Enviroblanket was “discreditable or underhand” (at [50)] conduct for the purposes of s 62A of the Act having regard to these further following factors as contended for by Donzenac. First, MCV had adopted Enviroworks as part of its corporate name in early 2010. Second, Donzenac had objected to MCV’s conduct in using the similar Ecoblanket trade mark in its business. Third, the dispute had been resolved by undertakings from MCV not to use deceptively similar terms to Ecoblanket in that business. Fourth, MCV had allowed a period of time to elapse between the giving of the undertakings and engaging in the challenged conduct; and MCV applied to register the Enviroblanket trade mark in circumstances where it knew or ought to have known that Donzenac would object having regard to the earlier objections to particular conduct which led to the MCV undertakings.

50    Donzenac says that all of these matters go to the merits of a ground of challenge under s 62A of the Act.

51    Donzenac says that despite the Delegate rejecting the further evidence earlier described, the Delegate erroneously relied upon the rejected evidence in a way that had a material effect upon the Delegate’s reasoning. Donzenac says that in Mr Vella’s statutory declaration of 9 January 2014 he says this at para 3(a):

[MCV Enviroworks Pty Ltd] first used ‘ENVIRO’ as its defining element of [MCV’s] trade marks in 2009 when it renamed the company to MCV ENVIROWORKS.

52    Donzenac says that Mr Vella also says this at para 5(a) of the same declaration:

[MCV Enviroworks Pty Ltd] has been using ‘ENVIRO’ in relation to its products and services since the adoption of [MCV’s] current name, MCV ENVIROWORKS, in 2009.

53    The relevant declarations are in evidence in these proceedings.

54    Donzenac says that the references in Mr Vella’s statutory declaration to MCV having used MCV ENVIROWORKS could not have been accurate because the company was not incorporated until 26 March 2010 and it follows that those statements ought to be taken to be a reference to Mr Vella contending that he had used those names prior to MCV’s incorporation.

55    Donzenac says this at para 52 of its written submissions in relation to the s 62A ground of appeal:

By erroneously finding that Mr Vella had used an ENVIROWORKS mark from 2009 [see para 20 of the Delegate’s decision], the complexion of the chronology was substantially changed. It appears to have led the delegate to find that [MCV’s] conduct in applying for the ENVIROBLANKET trade mark was creditable (by changing the mark used from [Donzenac’s] ECOBLANKET mark to a mark similar to the one which [MCV] had – it was contended – used for some time) when in fact it was discreditable (by spring boarding off the ECOBLANKET trade mark when [MCV’s] business was first established and then adopting a mark deceptively similar to ECOBLANKET in defiance of the terms of the undertakings).

                                [emphasis added]

56    Thus, Donzenac seeks to challenge in the appeal proceedings the various factual matters which are said to go to the question of whether MCV’s application for the trade mark was made in bad faith because, in context, it is said that MCV’s conduct is underhand or discreditable. Whatever the ultimate merits of that contention may be, I am satisfied that an arguable question in relation to s 62A arises.

57    As to the s 58 ground, Donzenac says this. Donzenac says that it advised the Delegate that it did not press its s 58 ground on the basis that the further evidence which MCV sought to file was not admitted. However, in light of MCV’s further application for leave to rely upon further evidence, Donzenac sought to maintain the s 58 ground. Donzenac says that it is common ground between the parties that Donzenac sought to maintain the s 58 ground and that the Delegate entertained submissions from Donzenac on that matter. Donzenac says that the Delegate made a series of errors on this issue by erroneously reciting in the decision that the s 58 ground was not pressed by Donzenac; finding that the s 58 ground was not made out in any event (as one of the not pressed grounds – see [3] of these reasons) but failing to give any exposed reasons for that finding; and relying on evidence which the Delegate had decided not to admit (but relied upon at para 20 of the Delegate’s decision) to support the finding that MCV was the owner of the trade mark. Donzenac says that this conclusion as to ownership follows because no other finding in the Delegate’s decision suggests that at the date of the application for the trade mark, MCV was the owner of the trade mark.

58    Donzenac says that in the event that the Delegate chose to rely upon the further evidence of MCV in deciding the application, the Delegate ought to have found that the evidence led by MCV suggested use by a person or entity other than MCV. That conclusion is said to follow by reference to this material: Exhibit MJV-1 to the statutory declaration of Mr Vella sworn 3 July 2013 (being the only invoice in issue, issued by MCV Enviroworks Pty Ltd dated 27 June 2010 referring to one half day of “Enviro Blanket Installation on Centenary Highway”); and Exhibit MJV3-03 to the statutory declaration of Mr Vella sworn 9 January 2014 comprising two invoices issued without letterhead on 21 January 2010 and 17 March 2010 by an entity trading with a different ABN to that of MCV Enviroworks Pty Ltd.

59    Donzenac makes three other submissions on this issue. First, it says that the material it identifies (and referred to at [58] of these reasons) is not all of the evidence that was produced to the Delegate on the s 58 issue. Its submission is that for the purposes of the extension application it should be observed that the s 58 issue was factually involved, comprised a substantial factual contest and was not capable of being dismissed as it was at para 3 of the Delegate’s decision (see [3] of these reasons). Second, Donzenac says that once it established a prima facie case, the evidentiary onus shifted to MCV on the question. Third, it further says that the evidence on the s 58 ground was such that an evidentiary onus fell upon MCV as to use at the relevant time which MCV was unable to discharge.

60    Having regard to these matters, it seems reasonably clear that the Delegate erred by failing to consider Donzenac’s s 58 ground of opposition. That being so, Donzenac ought to be given an opportunity to seek to demonstrate the merits of that ground by way of a de novo hearing.

61    Counsel for MCV urges the proposition that the s 58 case is misconceived as a question of law and on the facts. Ownership of a trade mark sufficient to confer an entitlement to registration under the Act is made good in circumstances where the applicant for registration is either the author of the trade mark or alternatively the first user of the mark. This is orthodoxy. In order for Donzenac to succeed on a s 58 ground of challenge (leaving aside for the moment questions of onus) it must be shown that MCV, at the priority date, was not the owner in the sense in which that term is thus understood. Donzenac seeks to demonstrate that MCV was neither the author of the mark nor the first user of the mark. The extent of the challenge to ownership in MCV, by Donzenac, before the Delegate is affected by the controversy concerning the state of the evidence and the circumstances in which Donzenac initially abandoned the s 58 ground of challenge, and then sought to agitate that ground of challenge in what appeared to be the changed circumstances. Having regard to the apparent error on the part of the Delegate and the controversy Donzenac agitates about the state of the evidence, it seems to me that Donzenac ought to be put in a position where it can properly argue the s 58 ground of challenge free of error and free of controversy about whether the argument is alive and the state of the evidence going to it.

62    For the purposes of an application for an extension of time and the exercise of the discretion under s 34.25 which, should an appeal be granted, involves a hearing de novo, it seems to me that it is sufficient for the Court to be satisfied that there is at least an arguable question alive in relation to each ground of appeal which an applicant would seek to agitate by way of appeal.

63    For the reasons mentioned above, I am satisfied that there is at least an arguable question to be determined in respect of each of these grounds of appeal.

64    The remaining question is whether MCV would be prejudiced by the grant of an extension of time.

65    MCV relies upon the affidavit of Mr Vella sworn 25 August 2014.

66    In that affidavit, Mr Vella says by paras 2 and 4 that since applying for the registration of the trade mark on 17 September 2012, MCV has developed and now sells a range of products with names that all begin with the prefix “Enviro”. He says that the marketing strategy behind the use of this common prefix is to create a brand association between MCV and all of the products it sells. Mr Vella identifies six products including its compost and erosion control blanket the subject of the Enviroblanket trade mark. The other five are Envirosock, Enviroseeder, Enviroblend, Envirogrow and Enviromulch. The focus of those products does not particularly matter for present purposes.

67    At para 7, Mr Vella says that MCV is looking to expand its business by selling its products and providing services in the United States and Canada. As such, MCV wants to register Enviroblanket and the other product names already mentioned, in those jurisdictions. He says that before that kind of expansion occurs, MCV wishes to obtain registration of the Enviroblanket mark in Australia because “obtaining registration of a trade mark in Australia makes it easier to obtain registration of the same word as a trade mark” in those jurisdictions.

68    Mr Vella says that on 22 January 2013, MCV instructed its patent and trade mark attorneys to provide an estimate of the cost of filing trade mark applications in the United States and Canada. MCV received an estimate. On 26 February 2013, MCV advised its attorney that it “would like to seek” registration of the Enviroblanket trade mark in the United States and Canada. Mr Vella also says that MCV wishes to register each of the product names earlier mentioned as trade marks in Australia. Mr Vella says that on 25 June 2013 he had discussions with Mr Metzeling about MCV filing trade mark applications in Australia for the remaining MCV products as earlier mentioned. Mr Vella says that on 20 November 2013, Mr Metzeling telephoned Mr Vella and discussions took place about MCV filing trade mark applications in Australia for those other five products and filing trade mark applications in the United States and Canada for Enviroblanket. Mr Vella says at para 16 that he told Mr Metzeling that he did not want to proceed with these trade mark filings until the dispute concerning Enviroblanket in Australia was resolved. Mr Vella says that he would consider changing the names of MCV’s suite of products if MCV is not successful in registering Enviroblanket as a trade mark.

69    Donzenac says at para 46 of its written submissions that notwithstanding these commercial and legal plans of MCV for United States registrations and particularly the registration in the United States of the trade mark Enviroblanket, MCV would be unlikely to secure registration of the Enviroblanket trade mark in the United States because of the existing Enviroblanket trade mark in that country in respect of “fibrous composition mulch for soil control”.

70    The effect of Mr Vella’s evidence is that although he would like to do a number of things, in fact no action has been taken about these various possible steps. Mr Vella’s affidavit talks about events across a period from 18 December 2012 to February 2013 and then events between June 2013 and November 2013.

71    Apart from Mr Vella’s affidavit, MCV relies upon the affidavit of Mr Metzeling sworn 25 August 2014. Mr Metzeling is a trade mark attorney experienced in Australian trade mark law and as appears from his affidavit he has some knowledge of the principles of trade mark law as they apply in other international jurisdictions although I accept Donzenac’s proposition that Mr Metzeling is not an expert in the domestic trade mark law of these foreign jurisdictions. The short point of Mr Metzeling’s affidavit is this. He says this at paras 11 and 12:

11.    … if an applicant has obtained registration of a trade mark in Australia, a United States or Canadian application to register the same mark can proceed to registration based on foreign use in Australia. In these circumstances, the applicant does not have to file a declaration of use until five years after the trade mark has proceeded to registration.

12.    This allows Australian trade mark applicants to attain registered trademarks in the United States and Canada that are identical to their Australian registered trade mark, prior to trading under that name in the United States and Canada.

72    Thus, Mr Metzeling’s affidavit is designed to support, as a matter of law, the commercial proposals Mr Vella talks about and Mr Vella’s proposition that registration of the mark in Australia would facilitate ease of registration in the United States and Canada.

73    I am not satisfied that these matters amount to prejudice which ought to foreclose the opportunity of Donzenac to ventilate its contended grounds of appeal in circumstances where at least arguable grounds of appeal are made out and the delay in filing the notice of appeal is properly explained.

74    For these reasons, I exercise the discretion to extend time to enable Donzenac to file a notice of appeal in terms of the proposed appeal notice being Annexure KAS-13 to the affidavit of Ms Stonier filed 21 July 2014, by 24 April 2015.

75    Donzenac seeks the Court’s aid in putting itself in the position it could have been in had it simply filed a notice of appeal within 21 days of the making of the Delegate’s decision. Had it done so, Donzenac would not have had to make the present application. MCV would not have had to respond to the material. In these circumstances, it seems to me appropriate to exercise the discretion as to costs by making an order that Donzenac pay MCV’s costs of and incidental to the application for an extension of time.

Associate:

Dated:    20 April 2015