The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 introduced new tougher rules for the filing of late evidence in trade marks oppositions. The relevant provision is Regulation 5.15 which provides that an extension of time for filing may only be granted if the Registrar is satisfied that:
(a) the party despite making all reasonable efforts and acting promptly and diligently at all times, was unable to file the evidence by the deadline; or
(b) there are exceptional circumstances.
The regulation explains that “exceptional circumstances” includes:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.
The Explanatory Statement to the Amending Regulations explains:
New regulation 5.15 narrows the circumstances in which the Registrar will grant an extension of time to provide evidence.
The policy and intended operation of this regulation 5.15 is the same as for the corresponding regulation 5.9 at item 2 for the Patent Regulations above…
In the section of the Explanatory Statement relating to Regulation 5.9 of the Patent Regulations, it is stated:
Where a party cannot satisfy the Commissioner that an extension is justified under the test [provided by Regulation 5.9], the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time. (Emphasis added)
This presents a major obstacle to the introduction of late evidence but there is another door that has been left slightly ajar which will be available in some circumstances.
Regulation 21.19 (which was unchanged by the RTB amendments) provides a general discretionary power to the Registrar to inform herself by reference to any information available in the Trade Marks Office. The Explanatory Statement to the amending regulations said that Reg 21.19 was “not intended to be used as a substitute for the repealed further evidence provisions.”
In the recent case of Fed Square Pty Ltd v Federation IP Pty Ltd  ATMO 42, however, the opponent successfully relied on Reg 21.19 for the admission of late evidence having failed to meet the requirements of Reg 5.15.
The hearing officer noted that the “clear intention is that Regulation 21.19 should not been interpreted as a substitute for the repealed further evidence provisions” and that “I am being asked to exercise the discretion and allow precisely the same evidence under reg 21.19 that has failed the requirements under the extension of time provisions for evidence in support“.
The Opponent contended, however, that the effect of not permitting the additional evidence would be that it could not support several of its grounds of opposition at the substantive hearing and, unless it succeeded on s 44, would be left with no choice but to appeal to the Federal Court (which would be a de novo hearing) where it could rely on whatever grounds and evidence it then chooses. The hearing officer appeared to accept that such an outcome would be “at odds with the broader purpose of the relevant ‘Raising the Bar’ amendments, which were to “reduce delays in the resolution of patent and trade marks applications” and to “streamline the opposition process”“.
The hearing officer referred earlier TMO authority (here and here) in relation to the previous extension of time provisions to the effect that it is preferable for oppositions to be decided by the delegate on their merits (on all of the relevant evidence) rather than to have a party whose evidence has been excluded for lateness being left with no alternative but to appeal.
He said that the “nature and significance” of the evidence must be considered and that if the material is of high probative value, that will be “a crucial factor in the determination of whether it should be admitted“. In circumstances where:
(a) the evidence was immediately available (and in fact had been filed 7 days after the due date); and
(b) constitutes the primary basis for the oppositions including details of the Opponent’s use of, and reputation of, its marks in Australia;
the hearing officer considered that the evidence was “of high probative value and is likely to significantly affect the outcome of the substantive opposition.” He considered that it was not the intention of the RTB amendments to entirely shut out oppositions where there is serious issue to be heard, the evidence is of high probative value and was submitted shortly after the due date. Accordingly, the late evidence was accepted.
A final “cautionary note” was added to the decision. The hearing officer pointed out that parties “should not attempt to circumvent the extension of time provisions under the misguided assumption that Regulation 21.19 will apply in every case.” He noted that “it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose.”
Nevertheless, the hardline that the RTB amendments appeared to have introduced seems to have been slightly softened.
Despite its success, costs were awarded against the Opponent.