The Applicant has sought an extension of time under s 224(3). Section 224(3) is a discretionary provision that allows the Registrar to extend the prescribed period to do a relevant act if satisfied that 'special circumstances' exist that justify the extension of time. The 'relevant act' in this case being acceptance of the Trade Mark for possible registration. I also note that there is no indication of any error or omission by the Registrar, the Applicant or its Agent, nor any circumstances beyond the control of the Applicant.

Th expression 'special circumstances' has received limited consideration in decisions before this office. In Wrangler Apparel Corp v Australia Professional Rodeo Association Inc[5] a delegate of the Registrar considered the meaning of 'special circumstances' in the context of a request for an extension of time to file evidence in support of an opposition to the registration of a trade mark under the Trade Marks Act 1955 (Cth).[6] The delegate, referring to the findings made in , noted that the expression should be interpreted liberally.

Regarding the exercise of discretion, I note that generally, discretions to grant extensions of time should be applied beneficially.[10] Other relevant factors, include the relative inconvenience to the Applicant and the public interest.[11]
The Applicant submits that denying the EOT Request would negatively impact them by causing the loss of the priority date of the Trade Mark and resulting in financial harm. Consequently, the Applicant would need to refile the Trade Mark and explore alternative strategies to address the cited trade marks. I acknowledge that should the EOT be refused the Applicant will lose the priority date for the Trade Mark. Whilst this is to the detriment of the Applicant, it is balanced against the public interest that matters, including applications for the registration of a trade mark, be decided without unnecessary delays. In this instance, the application has been subject to lengthy and continual delays. In my view, the Applicant has had a considerable amount of time to address the Examination Report. Further, despite being put on notice about the need for additional details for any further EOT requests, Lane 5, and the material submitted in respect to the hearing, included limited additional information.
Finally, I note that the Applicant filed correspondence on 20 May 2025, which includes a letter, dated 27 April 2025, consenting to the registration of the Trade Mark from the owner of one of the trade marks raised as the basis of the s 44 ground for rejection. This has not changed my views on the EOT Request. In the context of the repeated requests for extensions of time, and the lack of information provided in the Applicant's declarations and written submissions, there is no indication that the Applicant will be in a position to place the application to register the Trade Mark for acceptance anytime in the near future.
For these reasons, I am not satisfied that there are special circumstances that would justify the extension of time request, nor am I satisfied that the discretion should be exercised to grant the EOT Request.

Accordingly, I refuse to grant the EOT Request in respect of trade mark application number 2248768.

Class 3: Cosmetics, make up; non-medicated skin care preparations; lipsticks; lip gloss; make-up powder and foundation; skin moisturisers; beauty care cosmetics, body care preparations, namely, skin lotions; essential oils for personal use; preparations for removing make-up; lotions, creams and conditioners for the face, hands and body; beauty masks; abrasive cloth; abrasive paper; abrasives preparations for the skin; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil for cosmetic purposes; almond soap for the skin; aloe vera preparations for cosmetic purposes; alum stones being astringents for cosmetic purposes; amber being perfume; antiperspirant soap; antiperspirants; aromatics being essential oils; astringents for cosmetic purposes; lip and body balms other than for medical purposes; bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; breath freshening strips; cakes of toilet soap; essential oils of cedarwood; essential oils of citron; cleansing milk for toilet purposes; hair colorants for toilet purposes; color-removing preparations being nail polish removers; colour-brightening chemicals for household purposes; cosmetic kits comprising of makeup; cosmetic kits comprising of skincare; cosmetic preparations for slimming purposes; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; cosmetic creams; skin whitening creams ; dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; douching preparations for personal sanitary or deodorant purposes; dry shampoos; cosmetic dyes; eau de cologne; emery paper and cloth; ethereal essences; essential oils; ethereal oils; extracts of flowers being perfumes; eyebrow cosmetics; eyebrow pencils; adhesives for affixing false eyelashes; cosmetic preparations for eyelashes; false eyelashes; adhesives for affixing false hair; false nails; essential oils being bases for flower perfumes; extracts of flowers being perfumes; soap for foot perspiration; dental bleaching gels; greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone being perfume; jasmine oil being an essential oil; javelle water being toilet water; petroleum jelly for cosmetic purposes; joss sticks; cosmetic kits featuring cosmetics; lavender oil being an essential oil; lavender water; essential oils of lemon; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; cleansing milk for toilet purposes; mint essence being essential oils; mint for perfumery; musk being perfume; moustache wax; nail art stickers; nail care preparations; nail polish; nail varnish; hair neutralizers for permanent waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; cosmetic pencils; eyebrow pencils; perfumery; perfumes; denture polishes; pomades for cosmetic purposes; make-up powder; pumice stone for personal use; rose oil being an essential oil; shampoos; shaving preparations; shaving soap; cosmetic preparations for skin care; skin soap; antiperspirant soap; cakes of skin soap; deodorant soap; sunscreen preparations; sun-tanning preparations; talcum powder, for toilet use; terpenes being essential oils; toilet water; toiletries, namely, face wash and body wash solutions; decorative transfers for cosmetic purposes; varnish-removing preparations; depilatory wax; haircare preparations.

Class 5: Dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals; vitamin supplements; vitamin drops; vitamin drinks; mineral supplements; mineral drops; mineral drinks; medicated skin creams; medicated skin tonics; Pharmaceutical preparations; herbal preparations for medical purposes; herbal supplements and herbal extracts; herbal beverages; vitamins, vitamin preparations; minerals, mineral preparations; food supplements; anti-allergy preparations and substances; anti-oxidant preparations and supplements; herbal medicinal preparations and substances in the form of essential oils; herbal medicinal products in the form of capsules, tablets, powders, gels, herbal extracts, liquid extracts, gels and tinctures; herbal medicinal products, preparations and substances; homeopathic preparations and substances; dietetic substances and foods; vitamin drinks and beverages, compositions for the preparation thereof; traditional herbal medicinal products in the form of capsules, tablets, powders, gels, herbal extracts, liquid extracts, gels and tinctures; nutritional additives.

Class 9: Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; Downloadable virtual goods for use online and in online virtual worlds; Downloadable software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, interacting with, embedding, and sharing or otherwise providing electronic media, images, video, audio, audio-visual content, data, and information via the internet and communication networks; Downloadable software for engaging in social networking and interacting with online communities; Downloadable software for enabling transmission of images, audio, audio visual and video content and data; Downloadable software for modifying photographs, images and audio, video, and audio-visual content; Downloadable software for use in taking and editing photographs and recording and editing videos; Downloadable software for processing images, graphics, audio, video, and text; Downloadable software for gesture recognition, object tracking, motion control, and content visualization; Downloadable software for providing access to an online virtual environment; Downloadable software for the creation, production and modification of digital animated and non-animated designs and characters, avatars, digital overlays and skins for access and use in online environments, virtual online environments, and extended reality virtual environments; Downloadable augmented reality software; Downloadable mixed reality software; Virtual reality software for interactive entertainment and virtual reality gaming; Augmented reality software for interactive entertainment and augmented reality gaming; Downloadable software and mobile application software providing a virtual marketplace; Downloadable software for navigating a virtual reality and augmented reality environments; Downloadable software for enabling users to experience virtual reality and augmented reality visualization, manipulation, and immersion; Downloadable virtual goods, namely, computer programs in relation to perfumery, toiletries, cosmetics, make-up, skincare preparations, hair care preparations and hair color preparations for use online and in online virtual worlds; Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys, and accessories for use online and in online virtual worlds; Downloadable software for ordering perfumery, toiletries, cosmetics, make-up, skincare preparations, hair care preparations and hair color preparations; Downloadable software for ordering footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys, and accessories; Downloadable software for accessing and streaming multimedia entertainment content; Downloadable digital media, namely, digital tokens and non-fungible tokens (nfts); Downloadable software for enabling users to view, market, purchase, sell, or exchange non-fungible tokens (nfts) or digital goods; Downloadable software for electronically trading, storing, sending, receiving, accepting, and transmitting digital and virtual currency; Downloadable software for providing electronic cryptocurrency exchange services; Downloadable software for use as a cryptocurrency and virtual currency wallet; Downloadable software for use as a mobile and electronic wallet; Downloadable software for payment processing; Downloadable software for non-fungible token (NFT) ticketing; Downloadable software for creating non-fungible tokens (NFTs); Downloadable software for interactive games for use via a global computer network and through various wireless networks and electronic devices; Entertainment software, namely, software that is used for providing multi-player access to an on-line game environment; Downloadable game software; Video game software; Virtual reality game software; Interactive video games comprised of computer hardware and software; Downloadable software for browsing and accessing digital content, computer software, and computer games; Downloadable graphics software; Downloadable computer software for interactive games for use via a global computer network and through various wireless networks and electronic devices; Downloadable computer software for the creation, production and modification of digital animated and non-animated designs and characters, avatars, digital overlays and skins for access and use in online environments, virtual online environments, and extended reality virtual environments; downloadable mobile application software for ordering perfumery, toiletries, cosmetics, make-up, skincare preparations, body care preparations and face care preparations, hair care preparations and hair color preparations; near field communication tags for interacting with mobile applications to obtain information concerning perfumery, toiletries, cosmetics, make-up, skincare preparations, body care preparations and face care preparations, hair care preparations and hair color preparations; near field communication tags for marketing and authentication of perfumery, toiletries, cosmetics, make-up, skincare preparations, body care preparations and face care preparations, hair care preparations and hair color preparations; Sunglasses; cases for sunglasses and spectacles; spectacles; eyeglasses; sunglass chains and cords.

Class 21: Make up brushes; cosmetic brushes; brushware made of animal bristles; electric brushes, except parts of machines; shaving brush stands; shaving brushes; abrasive sponges for scrubbing the skin; soap boxes; soap dispensers; soap holders; cosmetic utensils; cosmetic spatulas; cosmetics applicators; cosmetic bags; cosmetic powder compacts; containers for cosmetics; racks for cosmetics; holders for cosmetics; dispensers for cosmetics; utensils for cosmetic purposes; cases adapted for cosmetic utensils; microdermabrasion sponges for cosmetic use; cosmetic and toilet utensils and bathroom articles; make-up removing appliances; make-up sponges; stencils for use when applying make-up; applicators for applying eye make-up; make-up artist belts.

Class 28: Games, toys and playthings; Video game apparatus; Video game consoles; Handheld units for playing video games.

Class 35: Advertising; Business management, organization and administration; Advertising and promotion of cosmetics; Mail order retail services related to cosmetics; Retail services connected with the sale of cosmetics; On-line retail store services relating to cosmetics; Online retail store services; mail order catalogue services in relation to cosmetics; Providing an interactive website and computer application software for virtual reality game services; Retail store services in relation to virtual goods, namely, perfumery, toiletries, cosmetics, make-up, skincare preparations, hair care preparations, hair color preparations, footwear, clothing, headwear, eyewear, and bags; On-line retail store services in relation to virtual merchandise, namely, perfumery, toiletries, cosmetics, make-up, skincare preparations, hair care preparations, hair color preparations, footwear, clothing, headwear, eyewear, and bags; Providing an online marketplace for non-fungible tokens (NFTs); Providing an online marketplace for buyers and sellers of digital goods authenticated by non-fungible tokens (NFTs); Online retail store services featuring virtual reality and augmented reality hardware and software; Online retail store services featuring virtual reality content and digital media namely, pre-recorded music, video, images, text, audiovisual works and virtual and augmented reality game software.

Class 41: Education; Providing of training; Entertainment; Educational services, namely, providing information and forums in the field of non-fungible tokens (nfts), nft experiences, digital collectibles, digitized assets, and tangible assets; Entertainment services, namely, providing on-line, non-downloadable virtual game currency for use in virtual environments; Providing an interactive website for virtual reality game services; entertainment services, namely, providing on-line, non-downloadable virtual perfumery, toiletries, cosmetics, make-up, skincare preparations, hair care preparations hair color preparations, footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys, and accessories, digital animated and non-animated designs and characters, avatars, digital overlays, and skins for use in virtual environments; Virtual reality and interactive game services provided online from a global computer network and through various wireless networks and electronic devices; Entertainment services, namely, online video games; Entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure, or entertainment purposes; Entertainment services, namely, providing an online environment featuring streaming of entertainment content and live streaming of entertainment events; Entertainment services in the nature of providing an on-line multi-player electronic computer game; Entertainment services in the nature of organizing, arranging, and hosting virtual performances and social entertainment events; Multimedia entertainment software production services.

Class 42: Design and development of computer hardware and software; Non-downloadable software for the creation, production and modification of digital animated and non-animated designs and characters, avatars, digital overlays and skins for access and use in online environments, virtual online environments, and extended reality virtual environments; Non-downloadable software for electronically trading, storing, sending, receiving, accepting, and transmitting digital and virtual currency; Non-downloadable software for managing digital and virtual currency payment transactions; Cloud-based software for providing electronic cryptocurrency exchange services; Cloud-based software for use as a cryptocurrency and virtual currency wallet; Cloud-based software for use as a mobile and electronic wallet; Non-downloadable software for payment processing; Non-downloadable software for non-fungible token (NFT) ticketing; Non-downloadable software for creating non-fungible tokens (NFTs); Computer services, namely, hosting an on-line 3d virtual environment featuring a wide variety of user-defined subject matter and hosting an on-line 3d virtual environment featuring a wide variety of user-defined subject matter that may be accessed by means of communications networks; design and development of multimedia and three dimensional virtual environment software; Providing temporary use of non-downloadable software for browsing and accessing digital content, computer software, and computer games; Providing temporary use of non-downloadable software for transmission and display of digital content, computer software, and computer games; Computer programming services; Software design and development services; Non-downloadable software for the creation, production and modification of digital animated and non-animated products for access and use in online environments, virtual online environments, and extended reality virtual environments; Development of on-line gaming software.

Class 44: Make up artist services; make-up services; cosmetic make-up services; beauty care services; beauty salon and beauty treatment services; beauty therapy services and treatments; healthcare, diet, exercise and lifestyle wellness advisory services; cosmetic treatment services for the hair; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services.

[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act'). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) ('Regulations').

[2] For classes 3, 9, 21, 28, 35, 36, 41, 42 and 44 (EUIPO; Convention Number: 018644207**)**.

[3] For class 5 (EUIPO; Convention Number: 018647767).

[4] See Schedule 1 for full specification.

[6] See: Trade Marks Act 1955 (Cth) s 130;

[8] See also: Harvey Comics, Inc [2001] ATMO 77 (Hearing Officer Forno).

[9] IP Australia Trade Marks Manual of Practice and Procedure Part 15.4.3 Special circumstances exist to justify the extension.

[10] Chalk v Commissioner for Superannuation [1994] FCA 1063; (1994) 50 FCR 150, 155 (Davies J).

[11] See: Richard Hall [1997] ATMO 69 (Hearing Officer Murray).

Marks Regulations 1995

Charlotte Tilbury TM Limited [2025] ATMO 89 (21 May 2025)

Charlotte Tilbury TM Limited [2025] ATMO 89 (21 May 2025)

At a glance

Court

Decision date

Source

Judgment (24 paragraphs)

Legislation Cited (3)

Cases Cited (2)

Charlotte Tilbury TM Limited [2025] ATMO 89 (21 May 2025)