Honest Reveira v Registrar of Trade Marks

Legislative provisions 8 I will first set out the relevant provisions of the Trade Marks Act 1995 and the Trade Marks Regulations. I will then set out the background facts in more detail. 9 Section 92 of the Trade Marks Act 1995 deals with an application for removal of a trade mark from the Register. Section 92(4) provides that an application for removal (the non-use application) may be made on either or both of the grounds set out in that subsection. In broad terms, the ground in s 92(4)(a) is that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith of using the trade mark in Australia in relation to the goods or services to which the non-use application relates, and the registered owner has not used the trade mark in Australia in relation to those goods or services. The ground in s 92(4)(b), in broad terms, is that the trade mark has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed and, at no time during that period did the person who was the registered owner use the trade mark in Australia in relation to the goods or services to which the application relates. 10 An application on the ground referred to in s 92(4)(b) may not be made before a period of five years has passed from the filing date in respect of the application for the registration of the trade mark: s 93(2). 11 Section 95 provides for notification of an application for removal. The Registrar is required to give notice of the application in accordance with the regulations: s 95(1). If the application is in respect of a trade mark already entered on the Register, the Registrar must advertise the application in the Official Journal: s 95(2). 12 Any person may oppose an application under s 92(1) by filing a notice of opposition with the Registrar: s 96(1). The notice of opposition must be filed: in the manner and form prescribed by the regulations; and within the prescribed period: s 96(2). 13 Section 97 deals with removal of a trade mark from the Register if an application for removal is unopposed. Section 97(1) provides that if there is no opposition to an application to the Registrar under s 92(1), or if an opposition to an application under s 92(1) has been dismissed, the Registrar must remove the trade mark from the Register in respect of the goods or services specified in the application. Thus, in the present case, as Honest the Snack Shack did not file a notice of intention to oppose within the prescribed period, if it is unable to obtain an extension of time to file such a notice, the Trade Marks must be removed from the Register. 14 Section 98 provides that if: (a) the Registrar has removed a trade mark from the Register under s 97(1) because no notice of opposition was filed within the period provided under the regulations; (b) the Registrar subsequently extends the period within which the notice may be filed; and (c) a notice of opposition is filed within the extended period, the Registrar must restore the trade mark to the Register; also, the trade mark is taken not to have been removed from the Register. 15 While not directly relevant for present purposes, for completeness, I note that s 224 deals with extensions of time. Section 224(2) provides that if, because of: (a) an error or omission by the person concerned or by his or her agent; or (b) circumstances beyond the control of the person concerned, a relevant act that is required by the Trade Marks Act 1995 to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act. The time allowed for doing a relevant act may be extended, whether before or after that time has expired: s 224(4). An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of a relevant act: s 224(7). The definition of "relevant act" in s 224(8) refers to filing of a document "other than a prescribed document". A notice of opposition under s 96 of the Trade Marks Act 1995 is a prescribed document. 16 I turn now to the Trade Marks Regulations. The relevant regulations are contained in Pt 9, Div 3, which deals with the filing of opposition documents in respect of applications for removal of trade marks for non-use. Although the key regulations for present purposes are regs 9.11 and 9.12, I set out some additional regulations that provide context: 9.7 Filing of notice of opposition A notice of opposition is taken to be filed when the notice of intention to oppose and the statement of grounds and particulars have been filed under regulations 9.8 and 9.9. 9.8 Filing of notice of intention to oppose (1) For subsection 96(2) of the Act, the period for filing a notice of intention to oppose is 2 months from the day the application for removal is advertised in the Official Journal. (2) The notice must be in an approved form. (3) The Registrar must give a copy of the notice to the applicant. 9.9 Filing of statement of grounds and particulars (1) A statement of grounds and particulars must be filed within one month from the day the notice of intention to oppose is filed. (2) The statement must be in an approved form. … 9.11 Extension of time for filing - application (1) A person who intends to oppose an application for removal may request the Registrar to extend: (a) the period for filing a notice of intention to oppose under subregulation 9.8(1); or (b) the period for filing a statement of grounds and particulars under subregulation 9.9(1). (2) A request under paragraph (1)(a) or (b) may be made within the period for filing the document in question. Note: See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the consequences of making the request after the filing period has ended. (3) The request must: (a) be in an approved form; and (b) be accompanied by a declaration stating: (i) the facts and circumstances forming the basis for the grounds; and (ii) if the period for filing the notice of intention to oppose or the statement of grounds and particulars has ended - the reason why the request was not made within the period. Note: Regulations 21.6 and 21.7 deal with making and filing declarations. (4) The request may be made only on either or both of the following grounds: (a) an error or omission by the person, the person's agent, the Registrar or an employee; (b) 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. 9.12 Extension of time for filing - grant (1) The Registrar may grant a request under subregulation 9.11(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension. (2) However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request. (3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances. (Emphasis added.) 17 I observe that the applicants' first ground of judicial review focuses on the emphasised words in regs 9.11(4)(b) and 9.12(1), while their second ground focuses on the emphasised words in reg 9.12(2).

Background facts 18 The following statement of the background facts is based on the affidavit material relied on at the hearing. The applicants relied on an affidavit of Fiona Gilbert, a partner of KHQ Lawyers, the solicitors acting for the applicants, dated 12 April 2018. Honest the Snack Shack relied on an affidavit of Mrs Naik dated 7 June 2018. There was no cross-examination. 19 Ms Gilbert gives evidence that she is instructed that the applicants have conducted a restaurant and catering business under the trade mark HONEST since 1976 and that, since 1991, that business has been conducted under a logo comprising the word HONEST in a yellow oval within a red rectangle. In March 2006, The Honest Reveira registered the copyright in the logo with the Indian Copyright Office under the provisions of the Copyright Act 1957 (India). Ms Gilbert gives evidence that the applicants operate or licence the operation of 67 restaurants and catering businesses in India, as well as one in Thailand, two in the United Arab Emirates and seven in the United States. There is no evidence to suggest that the applicants carry on business in Australia. 20 Honest the Snack Shack was incorporated in Australia in 2010. Since 2013, the company's sole director has been Mrs Naik. Mrs Naik is also the company secretary. 21 On 19 March 2013, Honest the Snack Shack applied under the Trade Marks Act 1995 to register a trade mark consisting of the words INDIAN HONEST - FOR DELICIOUS FOOD in a device comprising a yellow oval in a red rectangle, in relation to the following goods or services: (a) in class 29: cooked dishes with vegetables (vegetables predominating); cooked meat dishes; prepared dishes consisting principally of meat; prepared meat dishes; and (b) in class 30: prepared rice dishes. The trade mark was subsequently registered (number 1547148). 22 On 4 July 2013, Honest the Snack Shack applied under the Trade Marks Act 1995 to register a trade mark in the same form, in relation to the following goods or services: in class 43 - providing information, including online, about services for providing food and drink, and temporary accommodation. The trade mark was subsequently registered (number 1566921). The two trade marks are referred to as the "Trade Marks" in these reasons. 23 Mrs Naik gives evidence that, in September 2013, Honest the Snack Shack commenced trading as a take away and catering business in Northmead, Sydney, New South Wales. This continued until September 2015, when the business moved to better premises in Harris Park, Sydney, New South Wales. It appears from the material annexed to Mrs Naik's affidavit that the company has carried on business under the name INDIAN HONEST - FOR DELICIOUS FOOD and the Trade Marks. 24 On 27 August 2017, KHQ Lawyers on behalf of The Honest Reveira filed an application for removal for non-use in respect of the Trade Marks. The application relied on both s 92(4)(a) and s 92(4)(b). The application sought removal in respect of all of the goods and services in respect of which the Trade Marks were registered. 25 On 28 August 2017, IP Australia sent a letter to Honest the Snack Shack indicating that an application for removal had been received. The letter stated that the application would proceed only on the ground in s 92(4)(a); the application could not proceed on the ground in s 92(4)(b) as a period of five years from the filing date of the application for registration had not passed (s 93). The copy of the letter in evidence deals with trade mark 1566921. I infer that a letter in the same terms was sent in relation to the other trade mark. 26 On 31 August 2017, IP Australia sent a letter to Honest the Snack Shack formally giving notice of the application for removal in respect of trade mark 1566921. The letter stated that: the removal application would be advertised on 7 September 2017; removal of the trade mark could be opposed by filing a notice of intention to oppose within two months of the date of advertisement of the removal application; and if removal was not opposed within time, the trade mark would be removed from the Register in respect of the goods or services specified in the removal application. Again, the copy of the letter in evidence deals with trade mark 1566921 (although it attached a copy of the application for removal in respect of both trade marks); I infer that a letter in the same terms was sent in relation to the other trade mark. 27 On 7 September 2017, the removal application was advertised by IP Australia in the Official Journal. 28 On 7 November 2017, the prescribed period for the filing of a notice of intention to oppose ended. As at this date, Honest the Snack Shack had not filed a notice of intention to oppose. Accordingly, the Trade Marks were removed from the Register. 29 On 22 November 2017, Honest the Snack Shack filed an application for an extension of time, seeking an extension of one month (ie, until 7 December 2017) to file a notice of intention to oppose the removal application. The application was apparently filed by a firm, IP Attorneys, based in East Brisbane. In the section of the form dealing with the grounds for the application for an extension of time, the box alongside "an error or omission by the person, the person's agent, the Registrar or an employee" was ticked, but it is apparent from the material filed in support of the application for an extension of time that Honest the Snack Shack in fact relied on the other ground, namely "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". Nothing turns on the fact that the wrong box was ticked on the form. 30 Attached to the application for an extension of time was an undated declaration signed by Mrs Naik and her husband, Mr Naik. The declaration was in the following terms: The following Declaration by Mr and Mrs Naik is made in support of their application for extension of time and they both sincerely state: The grounds for filing the Application for an Extension 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". The sole director of the trade mark owner (Honest the Snack Shack Pty Ltd) is Mrs Parul Naik. Mrs Naik works in the restaurant, prepares the food and looks after the couple's two children. All of the business matters are managed by the husband Mr Jitrendakuma Naik who can speak some English. Mr Naik manages the company's affairs and handles any official correspondence for the company. The reason why the application was not made before the end of the filing period (before 7/11/17) is: Mr Naik had an accident at work. The accident left Mr Naik debilitated and he has been off work for several weeks. During the relevant time, Mr Naik was unable to meet the company's legal advisers to obtain guidance and was unable to lodge the application (please see the attached medical certificates). Please note that the trade mark owner is only requesting (1) one month's extension from 7/11/17 to 7/12/17. The trade mark owner intends to lodge a Notice of Intention to Oppose on or before 7/12/17 to avoid any inconvenience to the Applicant. (Bold emphasis added.) 31 This declaration was subsequently annexed to a statutory declaration of Mrs Naik dated 30 November 2017. Although the declaration set out above referred to attached medical certificates, it is unclear if they were attached to that declaration. In any event, they were annexed to the statutory declaration dated 30 November 2017. There were two medical certificates. 32 The first medical certificate was dated 14 November 2017, from Dr Rubing Wei of the Edinburgh Medical Centre in Harris Park, New South Wales, and stated: This is to certify that Mr Jitenddrakuma Naik attended this surgery on 28/08/2017, 31/08/2017, 04/09/2017 and 14/11/2017. This certificate was completed on 14/11/2017 33 The second medical certificate (also in respect of Mr Naik) was dated 13 July 2017 and from Dr M Omer Mohmand of the Priority Medical Centre in Harris Park, New South Wales. The certificate was evidently prepared using a form, with text inserted in various fields. In the section headed "Diagnosis", the certificate referred to three medical conditions. The first condition was chronic back pain. I do not set out the other two conditions for privacy reasons. The certificate stated that the first condition was the exacerbation of an existing condition that commenced in 2005. The second and third conditions were described as temporary. In the section headed "Prognosis", it was stated that the first condition was likely to persist and the second and third conditions were likely to show considerable improvement "within two years". Under the heading "Fitness for work/study", it was stated: "In my opinion this person is/has been unfit for work/study from 13/7/17 TILL 13/10/17 inclusive". In response to the question "Can the patient currently do their usual work/study?" the answer "No" was given. In response to the question "Can the patient do any other work for 8 hours or more per week?" the answer "No" was given. Details of the patient's treatment were also provided in the certificate. 34 On 4 December 2017, Honest the Snack Shack filed a notice of intention to oppose removal and a statement of grounds and particulars. 35 On 6 December 2017, a delegate of the Registrar wrote to KHQ Lawyers in relation to the application for an extension of time. The letter stated that the delegate intended to grant a one month extension of time, to 7 December 2017. The letter stated that, before the extension was granted, the delegate would allow The Honest Reveira 14 days to file written representations or request a hearing in the matter of extension of time. 36 On 11 December 2017, KHQ Lawyers on behalf of The Honest Reveira wrote to the delegate opposing the application for an extension of time. The letter contended that Honest the Snack Shack had not demonstrated that the notice of intention to oppose was not filed in time due to circumstances beyond the control of the person, nor had they demonstrated sufficient reason for the delay in making the request. It was also submitted that there were inconsistencies in the evidence provided. Further, screenshots from Mr Naik's Facebook page were provided to seek to show that he was active during the relevant period. 37 On 15 December 2017, IP Australia sent a letter to IP Attorneys, referring to the application for an extension of time. The letter stated that the removal applicant had objected to the extension of time, and attached a copy of the letter from KHQ Lawyers dated 11 December 2017. The letter from IP Australia stated that the objection had merit and highlighted a number of matters that had been raised by KHQ Lawyers. The letter gave Honest the Snack Shack an opportunity to respond. 38 On 18 January 2018, Honest the Snack Shack submitted a further statutory declaration of Mrs Naik, which stated as follows: DECLARATION IN RESPONSE TO THE APPLICANT'S OBJECTION TO THE GRANTING OF AN EXTENSION OF TIME TO OPPOSE THE NON-USE REMOVAL OF TRADEMARKS 1547148 AND 1566921. ADDRESSING THE POINTS RAISED BY THE APPLICANT: No 1 (Why state of health is relevant) While Mr Jitender Naik resigned as a director and secretary in 2013 from the company and has been working as a manager for the Honest Snack Shack Pty Ltd, he still works closely and assists Mrs Parul Naik (current Director) in the affairs of the company's management. It is to be understood quite clearly that in any typical "Mom's and Dad's business", irrespective of who is a director and who is a manager both husband and wife work quite closely to make things happen. One cannot assume that simply because one of the persons (husband or wife) has resigned as a director, it does not mean he or she washed off hands from the management role. To this extent, state of health of one of the key persons - husband or wife plays a significant role in not attending to critical matters related to company affairs. No 2 (Why Mrs Naik could not file the application) Mrs Naik was involved in attending to the family with two children, looking after her husband's health. On her own she has limited capability to file a response regarding her intention to oppose. She could have appointed legal advisors. However kindly understand that running a small business - in particular a small restaurant is not the easiest thing to do on this planet. Most of the time we lose money and find it extremely hard to pay wages to employees we hire. You may note that sometime the whole family is involved in running the restaurant as hiring outside staff is expensive. Therefore we could not think of hiring lawyers for this purpose. We have been running this business for the past few years and hence there was an assumption made that the trade marks registered with IP Australia for a fixed period are all valid by default. It appeared strange that an overseas company with absolutely no base in Australia comes to Australia and challenges a right that has legally been registered and used for the past few years. We hope IP Australia sees some sense in our assumption. No 3 (The Data specified by Medical Certificates) The mental and physical health issues faced by Mr Naik and post facto after the accident are the result and have a definite relation to the challenges Mr Naik has. No 4 (The certificate for ongoing condition) The ongoing condition of back pain added to the additional health issues Mr Naik faced during this period when the filing for opposing could have been done. This is a chronic situation that acted as a base problem causing distraction for filing of the intention to oppose. This issue is unavoidable even today as we run this business. No 5 (No explanation) We request IP Australia to look at all the above explanations that are the reason we could not file the intention to oppose in time. To summarise again - health issues faced by Mr Naik, chronic back condition of Mr Naik, Mrs Naik being business with family with two children, attending to husband's health, all family still trying to make things work at the restaurant and make a living. 6) Facebook postings Private Facebook postings are irrelevant to this dispute. Mr Naik tried to divert his mind privately during such difficult times. In summary: • The family is making a living out of running a small business (running a restaurant for the past few years). The entire family is often engaged in making this business work. • A lot of times we lose money in running the restaurant. However, there is no other means to make a living for us. We want to continue working hard and make an honest living. • The applicant is a competitor company based overseas. The applicant is not entitled to apply for a removal on the grounds of non-use. The applicant is not "a person aggrieved" by the existence of our registrations and has no rightful claim or cause of action. We are Australians operating an Australian company and using our business names legitimately for many years. We have continuously used the trade marks at all times to identify our business in good faith. As a result of our continued use, the trade marks have acquired a strong reputation for us in the marketplace and we claim the rightful ownership of the Trade Marks as our individual brand for the period for which we registered and paid for them. We intend to defend that right. • We request that IP Australia allow us to retain the trade marks and to reject the applicant's unfair application. The application to remove is based on a complete falsehood, a fabricated allegation of a "non use" of our trade marks. (Errors in original.)

The Decision 39 On 2 February 2018, a delegate of the Registrar of Trade Marks made the Decision, namely a decision to grant an extension of time of one month (ie, until 7 December 2017) to Honest the Snack Shack to file a notice of intention to oppose the application for removal. The delegate sent a letter to Honest the Snack Shack informing it of the Decision. The letter stated in part: I have now had the opportunity to consider all the relevant material on the official file. As the Registrar's delegate, I am satisfied that the declarations dated 30 November 2017 and 18 January 2018 justify the decision under Reg 9.11(4)(b). 40 The delegate also sent a letter dated 2 February 2018 to KHQ Lawyers as follows: I refer to my letter dated 15 December 2017. The opponent has provided some comments on your objection to the granting of the extension of time (copy attached). I have now had the opportunity to consider all the relevant material on the official file and I have carefully considered your objection and the reasons for requiring the additional time. As the Registrar's delegate, I am satisfied that the declarations dated 30 November 2017 and 18 January 2018 justify the extension under Reg 9.11(4)(b) • The state of health of Mr Jitrendakuma Naik is relevant as Mr Naik (as the current [Director's] husband and a manager of Honest the Snack Shack) is the person who manages all the business matters. • Mrs Naik could not afford to hire lawyers to oversee any possible opposition proceedings and had assumed this was not necessary as they had been 'running the business for the past few years' and had made the assumption that there was no need. • One medical certificate states Mr Naik attended the Edinburgh Medical Centre on 28 August 2017, 31 August 2017, 4 September 2017 and 14 November 2017 and the other states [details omitted] as a result of an ongoing back condition that made him unfit for work from 13 July 2017 to 13 October 2017[.] The declaration dated 18 January 2018 states that Mr Naik faced mental and physical health issues after the accident. The declaration dated 30 November 2017 states that Mr Naik was unable to meet the company's legal advisers to obtain guidance during the relevant period as he had an accident at work and had been off work for several weeks. • Facebook postings of Mr Naik's activities do not disprove that Mr Naik was not at work during the relevant period and therefore not attending to managing the business's affairs. They also do not prove that he was not physically and mentally unable to work. • Mrs Naik's normal procedure is to depend on her husband (and manager) to deal with all the business matters while she looks after their children and cooks in the restaurant. This normal procedure was disrupted due to a work accident that resulted in weeks off work. This is unforeseen. The most equitable course for both parties, and also taking into account the public interest, is to allow the proceedings to take its course, thereby allowing all the relevant issues between the parties to be properly canvassed and addressed. The extension of time has been granted and you will receive official notification of this under separate cover. The trade mark registrations have been restored and the opposition proceedings will commence. The Notice of Intention to Oppose Removal and the Statement of Grounds and Particulars were filed 4 December [2017] and you will receive notification of this under separate cover in due course. 41 As indicated in the above letter, following the Decision, the Trade Marks were restored to the Register.

The application for judicial review 42 By their amended originating application for judicial review, the applicants challenge the Decision on the two grounds, which have been set out at [4] above. 43 The substantive orders sought in the amended originating application are as follows: 1. A declaration that the material set out in the declarations submitted on behalf of [Honest the Snack Shack] in support of its request for an extension of time was not capable of: (a) constituting circumstances beyond the control of [Honest the Snack Shack] within the meaning of reg 9.11(4)(b) of the Regulations; (b) justifying the grant of an extension of time under reg 9.12(1) of the Regulations; or (c) providing a sufficient reason for the delay in making the request for an extension of time for the purposes of reg 9.12(2) of the Regulations. 2. An order that the Decision be set aside. 44 Additionally, in their outline of submissions, the applicants seek an order that the Registrar of Trade Marks remove the Trade Marks from the Register in respect of all of the goods and services for which they are registered. 45 I will now consider each ground in turn.

Ground 1 46 By this ground, the applicants contend that the Decision was not authorised by the Trade Marks Regulations and/or involved an error of law because the material filed on behalf of Honest the Snack Shack was not capable of constituting circumstances beyond the control of that company within the meaning of reg 9.11(4)(b), or justifying the grant of an extension under reg 9.12(1).

The applicants' submissions 47 The applicants submit that it is well established that the power to extend the time for filing a notice of opposition based on circumstances beyond the control of the applicant for an extension is an exceptional one with a narrow scope for operation. In Lyons v Registrar of Trade Marks (1983) 50 ALR 496 (Lyons) (also reported at 78 FLR 217), Beaumont J described its equivalent under s 131 of the Trade Marks Act 1955 (Cth) as a "force majeure provision" (at 507). In Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1987) 13 FCR 199 (Atomic) at 205-206, Jenkinson J agreed with that characterisation. 48 Accordingly, the applicants submit, it is only if the act or circumstance is such as to prevent either the applicant or its servant or agent from filing the relevant notice that the requirements of the provision will be satisfied: see, eg, Mildura and District Education Council v EF Gutenkunst Teachers Centre (2002) 58 IPR 650 at 655. It is also well established, the applicants submit, that the provision will not apply where the circumstances, though outside the control of any particular individual, are foreseeable in a general sense and able to be avoided in the ordinary course of business: see, eg, Stafford Miller Ltd v Jean Patou Parfumeur (1988) 11 IPR 409 at 411. See also Re application by Tandy Corporation (1991) 22 IPR 639; Burrell v International Business Exchange Limited [1996] ATMO 13. 49 The applicants' further submissions can be summarised as follows: (a) The delegate failed to give effect to the accepted construction of the relevant exception as a force majeure provision that only operates where the applicant has been prevented from filing its notice of opposition due to the operation of some "irresistible force" that could not have been foreseen or avoided and that was effective to deprive both the applicant and its employees or agents of any ability to take the requisite step within the relevant period. (b) The facts and circumstances relied on by Honest the Snack Shack were incapable of satisfying this requirement for two essential reasons: (i) because they involved an injury to only one representative of Honest the Snack Shack (Mr Naik), which did not prevent another officer or employee of Honest the Snack Shack from filing the notice or from engaging lawyers to do so; and (ii) because they related to only part of the period within which the notice was required to be filed (July 2017 to October 2017), and therefore could not have operated to prevent the filing of the notice outside of that period. (c) In relation to the first reason, while Honest the Snack Shack claims that Mrs Naik had "limited capacity" to file a response herself because of her other commitments within the business, the failure of those in control of Honest the Snack Shack to make adequate provision for the management of its business affairs during Mr Naik's absence is not sufficient to satisfy the requirements of the provision: see Re application by Tandy Corporation and Burrell v International Business Exchange Limited. (d) Further, Mrs Naik herself accepted in her declaration that she could have appointed legal advisors (as she ultimately did), although she was reluctant to do so because of the financial situation of the business. That decision, too, was a management decision made by Honest the Snack Shack and not a circumstance of the kind that is sufficient to satisfy a force majeure provision like reg 9.11(4)(b). (e) In relation to the second reason, it is telling that despite being challenged by The Honest Reveira (and the delegate) in relation to the periods covered by and information contained within the medical certificates, Honest the Snack Shack did not provide any further detail or supporting material to demonstrate the injury to be anything other than a temporary exacerbation of an existing injury (which could have been foreseen) that had ceased to have effect by 13 October 2017. (f) In those circumstances, even if (contrary to the submissions set out above) the effect of the injury was accepted as a circumstance beyond the control of Honest the Snack Shack, on the evidence before the delegate that effect had ceased almost a month before the relevant period expired. As such, it could not properly have been characterised as a circumstance that prevented Honest the Snack Shack from filing the notice.

Consideration 50 Provisions for the grant of an extension of time, such as regs 9.11 and 9.12 of the Trade Marks Regulations, have a long history in trade marks legislation and, indeed, intellectual property legislation more generally. 51 The applicants rely on the description of such a provision as a "force majeure provision" by Beaumont J in Lyons. It is important to have regard to the context in which that description was applied. In that case, the applicants had applied for the registration of three trade marks. The second respondent lodged a notice of opposition in relation to one application, but failed to furnish supporting evidence within the time prescribed by reg 43 of the applicable regulations. In relation to the other two applications, the second respondent failed to lodge notices of opposition within the time prescribed by s 49 of the Trade Marks Act 1955 (Cth). The second respondent requested extensions of time to furnish the evidence and lodge notices of opposition. In each case, the requests were granted by a delegate of the Registrar of Trade Marks. The applicants sought judicial review of the decisions pursuant to the ADJR Act. In relation to the extension of time to furnish supporting evidence, Beaumont J held (at 500) that the delegate did not exercise his discretion in an improper way; in particular, there was evidence before the delegate upon which he could rely in order to justify the grant of an extension. 52 In relation to the extension of time to lodge notices of opposition, the applicants submitted that the delegate lacked the relevant power, contending that the time limits specified in s 49 could not be extended by virtue of either s 130 or 131 of the Trade Marks Act 1955 (see at 503). In essence, the applicants contended that s 49 should be regarded as a code for its own purposes, and ss 130 and 131 did not have any room to operate. Section 49(1) provided that a person "may, within 3 months after the date of the advertisement of the acceptance of an application, or within such further period, not exceeding 3 months, as the Registrar, on application made to him within the first-mentioned period, allows, by notice in writing specifying the grounds of opposition and lodged at the Trade Marks Office, oppose the registration of the trade mark". Sections 130 and 131 were in the following terms: 130 Where, by this Act, a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly provided, extend the time either before or after its expiration. 131(1) Where, by reason of - (a) circumstances beyond the control of the person concerned; or (b) an error or action on the part of an officer or person employed in the Trade Marks Office, an act or step in relation to an application for the registration of a trade mark or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Registrar may extend the time for doing the act or taking the step and permit the act to be done or the step to be taken. (2) The time required for doing an act or taking a step may be extended under this section although that time has expired. 53 After considering the legislative history of ss 130 and 131, and other comparable provisions, Beaumont J concluded (at 507) that "s 131 should be read as a gloss upon the operation of s 49 in the form of a force majeure provision". His Honour continued (at 507-508): "Although s 131 is capable of general application to any provision of that Act, it should not be regarded as a mere 'general' provision of the kind found in s 130 to which may be applied the rule of construction that where there is a conflict between 'general' and 'specific' provisions, the 'specific' provisions prevail … Section 131 is not merely a general power in any abstract sense, it is limited in its application to quite special situations." Accordingly, his Honour concluded, the power contained in s 131 could be exercised so as to extend the times specified in s 49 (at 508). His Honour then considered some additional arguments raised by the applicants. As this discussion makes clear, the case was concerned with the ground for extension contained in s 131(1)(b) (an error or action on the part of an officer or person employed in the Trade Marks Office) rather than s 131(1)(a) (circumstances beyond the control of the person concerned). Beaumont J rejected the additional arguments, concluding (at 510) that the delegate was entitled to exercise the power conferred by s 131; given the availability of that power, no case had been made out for review of the exercise of the discretion granted by the provision. 54 As is apparent from the above description of the issues and conclusions in Lyons, Beaumont J's description of s 131 as a "force majeure provision" was given in the context of determining that it provided a gloss on s 49 of the Trade Marks Act 1955 and, accordingly, the power contained in s 131 could be exercised so as to extend the times specified in s 49. The judgment did not directly address the construction of the phrase "circumstances beyond the control of the person concerned" in s 131(1)(a); indeed, the ground relied upon to support the extension of time was s 131(1)(b) rather than s 131(1)(a). 55 The applicants in the present case also rely on the judgment of Jenkinson J in Atomic, in particular a passage at 206. Before setting out that passage, I outline the issue that arose for determination. Through negligence on the part of the applicant's attorney's employee, the applicant's notice specifying grounds of opposition to an application for a trade mark was not lodged within three months after the date of the advertisement as required by s 49(1) of the Trade Marks Act 1955. The application was lodged 18 days out of time. The applicant applied, at the same time, for an extension of time pursuant to s 131(1)(a). (Both s 49 and s 131 were in the same form as considered in Lyons.) The Assistant Registrar of Trade Marks refused the application for an extension of time. The applicant sought an order of review in respect of that decision. The critical issue was identified by the applicant's submission, summarised at 204-205. The applicant contended that: an employee of the patent attorney had negligently failed in the performance of her duty; but for that failure, the notice would have been lodged in time; none of the applicant's officers or servants had, or could have been expected to have had, any means of detecting that failure at any relevant time; therefore, it was "by reason of circumstances beyond the control of the" applicant that the notice was not lodged in time. The submission of the respondent, summarised at 205, referred to Beaumont J's description of s 131 as a force majeure provision. The respondent submitted that the circumstances to which reference was intended by s 131(1)(a) were those of which it could be predicated that they stood outside the spheres of action available to the person interested and his servants and agents. Jenkinson J accepted the respondent's submission, concluding as follows (at 206): In the context in which it is found, the expression "circumstances beyond the control of the person concerned" does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in s 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent's servants. The section is, I think, correctly described as a force majeure provision. 56 In my view, this reasoning is also applicable in relation to the expression "circumstances beyond the control of the person" in reg 9.11(4)(b) of the Trade Marks Regulations. It should be noted that the second and third sentences in the above passage are merely examples of facts and circumstances that may constitute circumstances beyond the control of the person, and do not purport to be exhaustive. Further, although Jenkinson J adopted the description "force majeure provision", I do not consider this to be more than a general description of the nature and effect of the provision; it is not, of course, a substitute for the words actually used. 57 Applying the above reasoning in the context of the present case, I consider that the facts and matters relied upon by Honest the Snack Shack to be capable, in principle, of constituting "circumstances beyond the control" of the company. The first declaration indicated that: Honest the Snack Shack was a small company; Mrs Naik, the sole director, worked in the restaurant, prepared the food and looked after the couple's children; and all of the business matters were managed by Mr Naik. The first declaration also stated that, due to health issues, Mr Naik had been unable to meet with advisers to obtain guidance and had been unable to lodge the application. As a matter of principle, I consider that health issues affecting a person are capable of constituting circumstances beyond the person's control for the purposes of reg 9.11(4): see, eg, Watson v Bristol-Myers Co (1985) 5 IPR 333 at 338; see also (albeit in a different context) Secretary, Department of Employment, Education and Youth Affairs v Ferguson (1997) 76 FCR 426 at 438; Secretary, Department of Social Security v Secara (1998) 89 FCR 151 at 161. Of course, whether or not health issues amount to circumstances beyond a person's control is a question of fact to be determined in all the circumstances. 58 Further, as a matter of principle, in the case of a small company, I consider that it may be possible to establish circumstances beyond the control of the company by reference to the situation of a single individual. Much will depend on the facts and circumstances of the particular case. However, conceptually, it is possible for the criterion to be established in this way. 59 In light of the above, I consider that it was open to the delegate to conclude that there were circumstances beyond the control of Honest the Snack Shack and that these circumstances justified an extension of time. It is important to emphasise that the question for the Court on an application such as this is whether it was open to the delegate to form the view that she did, namely that there were circumstances beyond the control of Honest the Snack Shack; the Court does not determine whether it would have granted an extension on the basis of the material provided. 60 The applicants contend that the facts and circumstances relied on by Honest the Snack Shack were incapable of constituting "circumstances beyond the control" of Honest the Snack Shack for two reasons. The first reason is that they involved an injury to only one representative of Honest the Snack Shack (Mr Naik), and this did not prevent another officer or employee of Honest the Snack Shack from filing the notice or from engaging lawyers to do so. However, it is permissible, in my view, to have regard to the small size of the company and the allocation of responsibility. Here, Honest the Snack Shack contended, and the delegate accepted, that all of the company's business matters were managed by Mr Naik. Accordingly, the delegate approached the question of circumstances beyond the company's control by reference to the situation of Mr Naik. I consider that it was open to the delegate to do so. 61 The second reason put forward by the applicants is that the facts and circumstances relied on by Honest the Snack Shack related to only part of the period within which the notice was required to be filed. However, in my view, the material put forward by Honest the Snack Shack, while perhaps not as detailed as it could have been, was capable of supporting a finding that there were circumstances beyond the company's control throughout the relevant period. In the first declaration, Mrs Naik stated that "[d]uring the relevant time, Mr Naik was unable to meet the company's legal advisers to obtain guidance and was unable to lodge the application". The second medical certificate (described in [33] above), provided evidence of three medical conditions. It was open to the delegate to have regard to the nature of these conditions. The doctor stated that the second and third conditions were likely to show considerable improvement "within two years", suggesting that they would last for some time after the date of the certificate (13 July 2017). While the first medical certificate provided dates of doctor's visits outside the relevant period, it is relevant that those dates were both before and after the relevant period; this is consistent with the health issues persisting throughout the relevant period. While the second medical certificate nominated a period during which Mr Naik could not work (13 July 2017 until 13 October 2017), it does not follow that he would necessarily be able to work at the end of that period. I accept that the evidence filed in support of the application for an extension of time may be considered thin, and another delegate may have formed a different view, but I consider the material to be capable of supporting a finding that there were circumstances beyond the company's control throughout the relevant period. 62 Apart from Lyons and Atomic, which I have discussed above, the other decisions relied on by the applicants turn on their own facts and circumstances. I do not regard those decisions as being of assistance for present purposes. 63 For these reasons, the first ground is not made out.

Ground 2 64 By this ground, the applicants contend that the delegate did not have jurisdiction to make the Decision because the material filed on behalf of Honest the Snack Shack was not capable of providing a sufficient reason for the delay in making the request for an extension of time for the purposes of reg 9.12(2).

The applicants' submissions 65 The applicants' submissions commence by noting that under reg 9.11(3), a request for an extension of time that is filed after the period for filing a notice of intention to oppose or statement of grounds and particulars has ended must be accompanied by a declaration stating "the reason why the request was not made within the period". Further, under reg 9.12(2), the Registrar must not grant a request for an extension of time unless the Registrar is satisfied "that there is sufficient reason for the delay in making the request". The applicants submit that it is clear that these provisions require an applicant for an extension of time to address not only the facts or circumstances that bring the applicant within the terms of reg 9.11(4), but also to explain the delay between the period when the notice of intention to oppose was first due and when the request for an extension was actually filed. The applicants submit that in the absence of such an explanation the Registrar has no jurisdiction to grant an extension. 66 The applicants' further submissions may be summarised as follows: (a) The declarations filed on behalf of Honest the Snack Shack failed to provide the necessary explanation. Indeed, they did not address at all the period between 7 November 2017 (when the notice of intention to oppose was due) and 22 November 2017 (when the request for an extension of time was ultimately made by Honest the Snack Shack). (b) However, notwithstanding this deficiency, the delegate granted the extension without making any reference at all to the requirement under reg 9.12(2) that she be satisfied that there was sufficient reason for the delay in making the request. (c) The explanation offered by Honest the Snack Shack was not capable of satisfying this requirement. That explanation only concerned the period leading up to the date for filing the notice, and even then, related to only part of the period within which the notice of intention to oppose was required to be filed (the period up to 13 October 2017). Accordingly, in no sense could it justify the failure to seek an extension outside of that time. (d) Further, no additional explanation was forthcoming from Honest the Snack Shack, even after the matter was expressly raised by both The Honest Reveira (in its submissions) and the delegate (in a letter to Honest the Snack Shack). In particular, Honest the Snack Shack offered no explanation as to when it first became aware of the removal application, when a law firm was first engaged, or why the request for an extension was not sought until more than two weeks after the period for filing the notice had ended.

Consideration 67 I do not accept that the declarations filed by Honest the Snack Shack failed to provide an explanation as to why the request for an extension of time was not made within the prescribed period for filing a notice of intention to oppose. It is apparent that the declarations provided both: (a) the facts and circumstances forming the basis of the ground relied on; and (b) the reasons why the request was not made within the prescribed period. Accordingly, I consider the material provided by Honest the Snack Shack to be capable of satisfying the requirement in reg 9.11(3). 68 It is true that the delegate did not expressly state that she was satisfied that there was "sufficient reason for the delay in making the request" (reg 9.12(2)) in the letter to KHQ Lawyers dated 2 February 2018. However, the material generally indicates a close familiarity of the delegate with the relevant provisions, and I am not prepared to infer that she did not reach the required state of satisfaction under reg 9.12(2). 69 For these reasons, the second ground is not made out.

Conclusion 70 For the reasons set out above, the application is to be dismissed. In light of the conclusions that I have reached, it is not necessary to deal with all of the submissions raised by Honest the Snack Shack. In relation to costs, it does not appear that Honest the Snack Shack has incurred any legal costs. Accordingly, I will make an order that there be no order as to costs. However, I will reserve liberty to apply in case either party seeks a variation of this order. I certify that the preceding seventy (70) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Moshinsky.