Re: Application by SSP Assets Pty Ltd for an extension of time to file a notice of intention to oppose an application under section 92 of the Trade Marks Act 1995 (Cth) by Bluebonnet Capital Pty Ltd to remove trade mark number 767061 (classes 12, 25 and 37) - ELFIN SPORTS CARS (figurative) - in the name of SSP Assets Pty Ltd

Removal Opponent: Sven Burchartz of Kalus Kenny Intelex

2025 ATMO 130

Trade Marks Regulations 1995 (Cth) - request under reg 9.11 for an extension of time to file notice of intention to oppose an application for removal - error or omission and circumstances beyond control of the person not established - request for extension of time refused

1. This decision concerns an application made by SSP Assets Pty Ltd ('Removal Opponent') under regulation 9.11 of the Trade Mark Regulations 1995 (Cth)[1] for an extension of time to file a Notice of Intention to Oppose an application to remove the following trade mark registration ('Trade Mark'):

1. An application for removal of the Trade Mark ('Removal Application') was filed by Bluebonnet Capital Pty Ltd ('Removal Applicant') on 20 May 2024. As required by reg 9.6, the Removal Application was advertised, and notice of the Removal Application ('Notice') was sent to the Removal Opponent on 23 May 2024. Pertinently, the Notice was sent to the Removal Opponent via post. The Notice informed the Removal Opponent that it had a deadline of 2 months from the date of advertisement to oppose the Removal Application.
2. On 30 July 2024, the parties were informed that the Removal Application had not been opposed and that the Trade Mark had been removed from the Register of Trade Marks ('Register').
3. On 30 October 2024, the Removal Opponent filed a Notice of Intention to Oppose ('NIO') the Removal Application, and a request for an extension of time of four months ('EOT') to file the NIO. The basis for the EOT was that there had been an error or omission by the Removal Opponent's agent,[2] and circumstances beyond the control of the Removal Opponent existed which justified the EOT.[3] In support of the EOT, the Removal Opponent filed a declaration of Steven Luke Baker, Director of the Removal Opponent, dated 30 October 2024 ('Baker'). The Removal Opponent subsequently filed a Statement of Grounds and Particulars on 25 November 2024.
4. On 28 November 2024, a delegate of the Registrar of Trade Marks ('Registrar') informed the Removal Opponent of its intention to refuse the EOT on the basis that Baker lacked sufficient information regarding the alleged error or omission and that the circumstances described in Baker were not those beyond the control of the Removal Opponent. The delegate allowed the Removal Opponent 14 days to file a supplementary declaration.
5. On 9 December 2024, the Removal Opponent filed a response. However, on 13 December 2024, a delegate of the Registrar informed the Removal Opponent that the response was not in the form of a declaration. The Removal Opponent was given until 3 January 2025 to file a supplementary declaration. On 18 December 2024, the Removal Opponent filed the declaration of Rex Afrasiabi, Director of New Chapter Legal, dated 18 December 2024 ('Afrasiabi').
6. On 15 January 2025, a delegate of the Registrar informed the Removal Opponent that the intention to refuse the EOT was being maintained and allowed the Removal Opponent until 29 January 2025 to request a hearing.
7. On 28 January 2025, the Removal Opponent requested to be heard. The matter was heard before me, a delegate of the Registrar, on 2 April 2025. The Removal Opponent was represented by Sven Burchartz of Kalus Kenny Intelex. Also in attendance for the Removal Opponent was Jessica Bell of Kalus Kenny Intelex and Steven Baker of the Removal Opponent. The Removal Applicant did not appear or file written submissions.

1. Mr Baker declares that on 19 May 2023 the Removal Applicant acquired the Trade Mark and that he engaged M A Legal Australia Pty Ltd ('MA Legal') to act as legal representative for the purchase of the Trade Mark. Baker states that MA Legal represented the Removal Opponent until October 28, 2024, when Kalus Kenny Intelex took over as legal representative.
2. Mr Baker declares that he has been 'instructed by MA Legal that they were not aware of the non-use application' and had not 'received any correspondence relating to the removal of the trade mark'.[4] In support, Baker annexes an email from an MA Legal employee, asserting that no correspondence from IP Australia was received regarding the Removal Application.
3. Mr Baker declares that had he been 'aware of the non-use application' he would have 'strongly opposed it',[5] and claims to have extensive evidence of use of the Trade Mark over the 12-month period in which he owned the Trade Mark. Annexed to Baker is a table outlining the history of the Removal Opponent's use of the Trade Mark, which includes hyperlinks to various Instagram accounts. No documentation in this regard is attached to Baker.

1. According to Afrasiabi, New Chapter Legal Pty Ltd ('New Chapter') is what the declarant describes as the 'successor to MA Legal'. Afrasiabi describes MA Legal's processes for managing its client's trade marks and handling correspondence from IP Australia. Relevantly, Mr. Afrasiabi states that his account with IP Australia is used for managing and registering trade marks, and email correspondence has been chosen as the preferred method of communication with IP Australia. However, another employee's account was used to process the assignment of the Trade Mark to the Removal Opponent. According to Afrasiabi, this account, belonging to Mr Kantor of MA Legal, did not have electronic communications selected as a method of communication.[6]
2. Afrasiabi states that MA Legal's approach to handling mail by post involves administrative staff processing postal correspondence and directing any mail addressed to the firm to Mr Afrasiabi.[7] Mr Afrasiabi declares that no correspondence from IP Australia has been received regarding the Removal Application,[8] and that he only became aware of the Removal Application on 23 October 2024. There is no further explanation why the postal correspondence was not received by the Removal Opponent.

1. The Removal Opponent's submissions also include the following material:
   • a letter from Steven Baker dated 18 March 2025 ('Baker Letter');
   • a confidentiality agreement between SSP Assets Pty Ltd as Trustee for SSP Assets Unit Trusts and the Removal Applicant; and
   • an undated letter from Rex Afrasiabi ('Afrasiabi Letter').
2. The Baker Letter outlines the circumstances in which the Removal Opponent became aware that the Trade Mark had been removed from the Register. On or around 22 October 2024, Mr Baker states that he was alerted by a contact at the company Supercars Australia, that the director of the Removal Applicant, Mr Aaron Hickman, was purporting to be the owner of the 'Elfin brand'. Mr. Baker states that he subsequently conducted a search for the Trade Mark, discovered it had been removed due to non-use, and noted that the Removal Applicant had filed applications to register six trade marks incorporating elements from the Trade Mark.[9]
3. The Afrasiabi Letter reiterates that it is MA Legal's established practice to receive all communication from IP Australia via electronic notifications through its online account with IP Australia. According to Mr Afrasiabi, the administrative oversight which resulted in notification being sent by post was due to the assignment of the Trade Mark to the Removal Opponent, which was lodged using the account of the employee Ronen Kantor, rather than MA Legal's online services account. Mr Afrasiabi states that because of this a new Customer ID was generated for MA Legal and all correspondence was reverted to hardcopy mail.

(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.

(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.

1. Regulation 9.12 provides the Registrar with discretion to grant an extension of time only if satisfied that the grounds set out in the request justify the extension.[10] The grounds being those set out in 9.11(4). If the extension of time request is made after the deadline for filing the NIO, the Registrar must also be satisfied that there is sufficient reason for the delay in making the request.[11]

1. The phrase 'error or omission' is referenced a number of times in the Act, including s 224, as well as in corresponding sections of the Patents Act 1990 (Cth). In Kimberly-Clark Ltd v Commissioner of Patents,[12] Jenkinson J considered the expression as it appeared in s 160(2) of the Patents Act 1952 (Cth):

the word 'error' is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips...

By no means every judgment by 'the person concerned' or by 'his agent or attorney' which can be shown to have been mistaken will answer the description 'error or omission' in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.[13]

1. A failure to file a notice of intention to oppose is not itself an error or omission.[14] There must be a causal connection between an earlier error or omission and the failure to file the notice of intention to oppose by the deadline. The burden of establishing a case justifying an extension of time falls to the Removal Opponent.[15]
2. The Removal Opponent submits that but for MA Legal's failure to notify the Removal Opponent of IP Australia's correspondence, the Removal Opponent would have filed the NIO by the required deadline. MA Legal's alleged error, as explained in Afrasiabi and the Afrasiabi Letter, occurred due to using Mr Kantor's account to receive correspondence via post rather than MA Legal's account, which receives correspondence electronically. This circumstance was a legacy stemming from the processing of the assignment of the Trade Mark, which utilised Mr Kantor's account.
3. I accept that Mr Kantor's approach deviates from MA Legal's usual business practice for managing trade mark registrations and dealing with correspondence from IP Australia electronically. However, as noted in Afrasiabi, there is nothing inherently wrong or relevantly causative about this process. This situation persisted whilst the Notice was sent on 23 May 2024, and the notice of the removal of the Trade Mark was sent on 30 July 2024. These notices were sent to the Removal Opponent via post to the nominated address for service, which at the time was MA Legal. Despite being sent multiple pieces of correspondence that should have placed the Removal Opponent on notice regarding the Removal Application, the only explanation offered was neither MA Legal nor Mr Kantor received the correspondence.[16] I do not consider this explanation sufficient to demonstrate an error or omission on behalf of the Removal Opponent. I note that no correspondence sent to the Removal Opponent was returned to the sender, and that the Removal Opponent has not indicated any error occurred with the Removal Opponent's handling of its mail. It is also unclear, despite being sent correspondence via post instead of electronically, why the Removal Opponent was not able to file the NIO by the deadline, or why this situation not only persisted past the deadline, but for a further four months.
4. For these reasons I am not satisfied that an error or omission has been established. Accordingly, the ground under reg 9.11(4)(a) has not been established.

Circumstances beyond the control of the person

1. The expression 'circumstances beyond the control of the person' was considered in Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks,[17] a decision which concerned an extension of time to file a notice of opposition to the registration of a trade mark. Justice Jenkinson observed:

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 paragraph 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.[18]

1. The circumstances referred to by Jenkinson J are not exhaustive.[19]
2. The Removal Opponent did not make any further oral or written submissions regarding circumstances beyond the control of the Removal Opponent. For completeness, I do not consider any of the circumstances described in Baker or Afrasiabi to be circumstances beyond the control of the Removal Opponent. Management of the Removal Opponent's address for service and the monitoring of the status of the Trade Mark are directly within the control of the Removal Opponent and its legal representatives. There is, otherwise, insufficient evidence to establish that the failure to file the NIO by the deadline was due to circumstances beyond the Removal Opponent's control.
3. Accordingly, the ground for the extension of the period for filing a NIO under reg 9.11(4)(b) has not been established.

1. The Removal Opponent's also made submissions regarding discretionary factors which justify granting the extension of time, in particular:
   • the Removal Opponent would lose the right to defend the Removal Application due to an administrative error it has no control over;
   • the absence of any prejudice to the Removal Applicant; and
   • the Removal Applicant is acting in bad faith and attempting to appropriate the Trade Mark.
2. These factors are relevant to the exercise of discretion. However, the discretion to grant an EOT to extend the period for filing a NIO is not unfettered. Regulation 9.12(1) provides that the Registrar 'may' grant an extension of time. However, it may only do so if satisfied that either of the grounds in reg 9.11(4) are made out. I would also need to be satisfied that there is sufficient reason for the delay in making the request.[20] As discussed above, I am not satisfied that a ground has been made out that justifies the extension. As such, it is not necessary to further consider whether it is appropriate to exercise the discretion.

1. I am not satisfied that the Removal Opponent has established a ground justifying an extension of time for filing the NIO. Accordingly, I refuse to grant the EOT request.

[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').

[9] See: Trade Mark Application Numbers: 2451571, 2451574, 2451575, 2475920, 2470929 and 2470930.

[12] [1988] FCA 697 (Jenkinson J).

[15] Vangedal Nielsen v Smith (Commissioner of Patents) [1980] FCA 163; (1980) 33 ALR 144, 149 (Bowen CJ).

[16] Afrasiabi [9]; Afrasiabi Letter [4].

[17] [1987] FCA 25 (Jenkinson J).

[19] Honest Reveira v Registrar of Trade Marks [2018] FCA 1122, [56] (Moshinsky J).