Monster Energy takes bite out of BEAST Opposition

Due to changes introduced by the “Raising the Bar” Regulations 2013, obtaining an extension of time for filing evidence in Australian trade mark opposition proceedings has become particularly difficult, unless the relevant party can demonstrate it has made all reasonable efforts to act promptly and diligently at all times.

 

Parties and Trademark

Monster Energy Company v USA Nutraceuticals Group, Inc. (2015) ATMO 1 (9 January 2015) BEAST

Decision

The Australian Trade Marks Office has refused a one month extension of time sought by USA Nutraceuticals Group, Inc. (“USA”) for filing evidence in answer to their opposed Application 1531146 (IRDA 1139097) BEAST.  This decision reaffirms that such extensions will not be granted unless the Registrar is satisfied the relevant party has made all reasonable efforts to act promptly and diligently towards the preparation of such evidence at all times.

The Intellectual Property Legislation Amendment (“Raising the Bar”) Regulations 2013 (No 1) (“RTB”) was intended to reduce delays in opposition proceedings by narrowing the circumstances in which extensions are available.  In the present matter, the reasons provided by USA were insufficient to satisfy the Registrar extension should be granted.  As such, USA have received a serious blow to their prospects of defending this opposition.

While the Registrar was initially persuaded by the reasons provided by USA in support of this extension to the 16 December 2013 deadline (and indicated an intention to grant it), Monster Energy Company (“Monster”) was afforded the opportunity to object to this extension and duly did so.  As the Registrar considered that Monster’s objection had merit, USA subsequently requested a hearing for this matter.

When deciding whether to grant this extension, the Registrar referred to previous Trade Marks Office decisions made under the RTB provisions which were based on the following questions:

  • Has the party (and their Attorney or Agent) made all reasonable efforts to comply with all relevant filing requirements?
  • Was the failure to file the evidence in time despite the party (and their Attorney or Agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
  • Were there exceptional circumstances that warrant the extension?

USA provided a timeline of the relevant period in an effort to demonstrate that it had made all reasonable efforts to prepare such evidence by acting promptly and diligently at all times.  However, despite several reminders from Australian counsel, the relevant evidentiary materials where only forwarded by USA over the weekend of December 14/15 2013.

The Registrar’s delegate referred to a two month “black hole” between 8 October 2013 and 14/15 December 2013 in which no there is no information regarding any responses or anything which may indicate that this correspondence elicited any action from (USA)”. Based on this lack of information, the Registrar could not be satisfied that USA had made all reasonable efforts to act promptly and diligently at all times.

A claim of “exceptional circumstances” made by USA was also briefly pursued.  It was based on the office closure of both their US and Australian counsel over the Christmas and New Year period.  However, USA’s claim was given little weight as this closure occurred after the 16 December 2013 deadline for filing USA’s evidence in answer. USA also claimed “exceptional circumstances” based on extreme weather conditions, which forced the intermittent closure of the offices of their US counsel.  However, as insufficient detail of these closures was provided (including when and how this impacted on the preparation of USA’s evidence), the Registrar could not be satisfied that exceptional circumstances existed which would justify the granting of the extension of time request.

This decision is a timely reminder that following the introduction of the RTB regulations, deadlines for filing evidence in opposition matters (whether in the role of trade mark applicant or opponent) are now much stricter in Australia.  The preparation of such evidence should not be left until the last minute as the Australian Trade Marks Office will only grant extensions of time where a party can demonstrate that it has made all reasonable efforts to act promptly and diligently at all times.