Vito Mitolo & Son Pty Ltd v Mitolo Wines Aust Pty Ltd

Federal Court of Australia|2019-06-13|Before: Mr P, Besanko J

Introduction 1 This is an application for an extension of time within which to lodge an Originating Application for Judicial Review under the Administrative Decisions (Judicial Review) Act 1977 (Cth) (ADJR Act). The application for an extension of time and the substantive application under the ADJR Act, should an extension of time be granted, were heard together. 2 The decision which the applicant seeks to challenge under the ADJR Act is a decision made by a delegate of the Registrar of Trade Marks on 22 February 2018. The delegate had before him a request by the applicant under reg 5.15 of the Trade Marks Regulations 1995 (Cth) (the Trade Mark Regulations) for extensions of time to file evidence in support of a Notice of Intention to Oppose in proceedings in the Australian Trade Marks Office (ATMO). The delegate decided to refuse the request and gave detailed reasons for his decision.

The Parties and Details of the Broader Dispute 3 The parties to this proceeding are Vito Mitolo & Son Pty Ltd (Vito Mitolo & Son) who is the applicant, and Mitolo Wines Aust Pty Ltd (Mitolo Wines) and the Registrar of Trade Marks (the Registrar) who are the respondents. 4 In August 2016, Mitolo Wines lodged two applications for the registration of trade marks under the Trade Marks Act 1995 (Cth) (the Act). Application No 1789135 was made on 11 August 2016 and was for registration of the mark, MITOLO. Application No 1789821 was made on 15 August 2016 and was for registration of the mark, MITOLO WINES. 5 Vito Mitolo & Son filed a Notice of Intention to Oppose the registration of the marks. Before summarising the grounds of opposition, it is necessary to refer to proceedings in this Court between Mitolo Wines and Vito Mitolo & Son and parties associated with Vito Mitolo & Son, Mr Vito Mitolo and his son, Mr Anthony Mitolo. Those proceedings are brought by Mitolo Wines and a related company and are for relief for the infringement of registered trade marks under s 120(1) of the Act, contraventions of ss 18 and 29(1)(h) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) and the tort of passing off. Those proceedings were commenced on 21 December 2016. The respondents to that proceeding pleaded (among other pleas) an estoppel as a defence and that estoppel was based on an exchange of communications on Facebook between Mr Frank Mitolo on behalf of Mitolo Wines and its related company in that proceeding, and Mr Anthony Mitolo in July 2014 (the Facebook Exchange). The Facebook Exchange also formed the basis of a cross-claim in that proceeding by Vito Mitolo & Son and Mr Vito Mitolo and Mr Anthony Mitolo in which an estoppel and contravention of s 18 of the Australian Consumer Law were claimed. I will refer to the proceeding commenced on 21 December 2016 as the "Federal Court Infringement Proceeding". 6 The reasons in the Federal Court Infringement Proceeding will be published on the same day as these reasons. The details of the Facebook Exchange are set out in that proceeding. To the extent it is necessary to understand the details of the Facebook Exchange for the purposes of this proceeding, I refer to those reasons (Mitolo Wines Aust Pty Limited v Vito Mitolo & Son Pty Ltd [2019] FCA 902). 7 Vito Mitolo & Son's Statement of Grounds and Particulars in the proceedings in the ATMO contains claim that Mitolo Wines' applications for the registration of the marks were made in bad faith (s 62A of the Act) and key factual allegations in support of that allegation are the Facebook Exchange and an allegation that to the knowledge of Mitolo Wines, Vito Mitolo & Son had acquired a reputation in classes 35, 41 and 43, whereas Mitolo Wines had not acquired a reputation with respect to those classes.

Key Dates in the Proceedings IN THE ATMO 8 The trade marks were advertised as accepted on 12 January 2017 and 19 January 2017 respectively. The Notice of Intention to Oppose Registration of the trade marks was filed on 9 March 2017. The Statement of Grounds and Particulars was also filed. On 7 April 2017, Mitolo Wines filed a notice of its intention to defend the opposition. 9 Vito Mitolo & Son was required to file evidence in support of its opposition to the trade marks on 18 July 2017 and 19 July 2017 respectively. On 14 July 2017, Vito Mitolo & Son filed a request under reg 5.15 of the Trade Mark Regulations for a one month extension of time to file evidence in support of the opposition. Correspondence with respect to that request then passed between IP Australia and Vito Mitolo & Son, and IP Australia and Mitolo Wines. On 14 August 2017, Mitolo Wines made submissions in support of its opposition to the grant of an extension of time. On 31 August 2017, Vito Mitolo & Son responded to those submissions. On 28 September 2017, IP Australia notified Vito Mitolo & Son's solicitors that it intended to refuse the application for an extension of time and granted Vito Mitolo & Son until 11 October 2017 to request a hearing on the matter of the extension application. On 10 October 2017, Vito Mitolo & Son requested such a hearing.

Key Dates in this Proceeding 10 As I have said, the delegate's decision was made on 22 February 2018. In the delegate's letter enclosing his decision, he advised Vito Mitolo & Son that it could appeal from the decision to this Court. That advice was incorrect, but neither Vito Mitolo & Son nor its solicitors knew that fact. Vito Mitolo & Son filed a Notice of Appeal from the delegate's decision on 15 March 2018. The Notice of Appeal was filed within the 21 day period specified for appeals, whether they be general appeals (r 36.03 of the Federal Court Rules 2011 (Cth) (the Rules)) or intellectual property appeals (r 34.24 of the Rules). Approximately six weeks later, the solicitors acting for Mitolo Wines wrote to Vito Mitolo & Son's solicitors advising them that, in their view, the "appeal" was not competent. After some delay, Vito Mitolo & Son agreed that its appeal was not competent and, on 18 June 2017, the "appeal" was dismissed by consent. This proceeding was commenced by the application for an extension of time on the same day. 11 I accept that Vito Mitolo & Son and the solicitors acting for the company relied on the advice of the delegate in filing a Notice of Appeal and that Mitolo Wines has known of the intention of Vito Mtolo & Son to challenge the delegate's decision from the date the Notice of Appeal was filed.

The Delegate's Decision 12 The delegate set out the relevant events before and after the request for an extension by Vito Mitolo & Son made its request for an extension on 14 July 2017 and the terms of reg 5.15 of the Trade Mark Regulations. 13 Regulation 5.15 is in the following terms: 5.15 Extension of time for filing (1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 5.14. (2) The Registrar may extend the period only if the Registrar is satisfied that: (a) the party: (i) has made all reasonable efforts to comply with all relevant filing requirements of this Part; and (ii) despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or (b) there are exceptional circumstances that justify the extension. (3) The Registrar: (a) must decide the length of the extended period having regard to what is reasonable in the circumstances; and (b) may do so on terms that the Registrar considers appropriate. (4) In this regulation: exceptional circumstances includes the following: (a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part; (b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part; (c) an order of a court or a direction by the Registrar that the opposition be stayed. 14 The delegate noted that reg 5.15 came into force on 15 April 2013 which was the same time as other significant amendments to the Act, the Patents Act 1990 (Cth) and the Patents Regulations 1991 (Cth) (the Patents Regulations). The delegate quoted extensively from the Explanatory Statement (ES) for the amendments which identified the mischief the amendments were designed to remedy and how it is envisaged the amendments would operate. 15 The ES states: A second purpose of the [RTB Amendments] is to amend the Patents Regulations and the [TM Regulations] to reduce delays in the resolution of patent and trade marks applications. … Schedule 3 to the [RTB Amendments] amends both the Patent[s] Regulations and [TM] Regulations to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence. 16 The ES states with respect to reg 5.15 of the Trade Mark Regulations: New regulation 5.15 narrows the circumstances in which the Registrar will grant an extension of time to provide evidence. Extension of the evidentiary periods is at the discretion of the Registrar and only where the Registrar is satisfied that the party entitled to file evidence in that period has acted promptly and diligently at all times since the opposition proceedings began, but despite that, or because of some other exceptional circumstances, cannot file the evidence in that period. Once the conditions are met the Registrar has the discretion to consider whether or not it is appropriate that an extension of time be granted. The policy and intended operation of this regulation 5.15 is the same as for the corresponding regulation 5.9 at item 2 for the Patent[s] Regulations above, which sets out the new test for extending evidential periods for patents oppositions. 17 As to the corresponding reg 5.9 of the Patent Regulations, the ES provided the following with respect to onus and the Commissioner's (or Registrar's) discretion: A major cause of protracted opposition proceedings is extensions to the various time periods for extending evidence. The law has developed in such a way as to significantly narrow the Commissioner's [or Registrar's] discretion to disallow extensions. As a result, oppositions are normally subject to multiple [EOTs] and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster. New subregulation 5.9(2) [corresponding to reg 5.15(2) of the TM Regulations] addresses this issue by introducing a new test for determining whether an [EOT] for filing evidence is justified. The Commissioner [or Registrar] will not be able to extend time periods unless at least one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner [or Registrar] of this. Once the conditions in subregulation 5.9(2) [TM reg 5.15(2)] are met, the Commissioner [or Registrar] still has the discretion to consider whether the or not it is appropriate that an [EOT] be granted. In applying the test, the Commissioner [or Registrar] will not be required to give a direction to extend a period solely because of delays caused by an agent or legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings. Where a party cannot satisfy the Commissioner [or Registrar] that an extension is justified under the test, the Commissioner [or Registrar] will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time. 18 As to the exceptional circumstances provision, the ES provided: New subregulation 5.9(5) [TM reg 5.15(4)] provides an inclusive list of circumstances that may be considered by the Commissioner [or Registrar] as exceptional circumstances for the purposes of subregulation 5.9(2)(b) [TM reg 5.15(2)(b)]. A change in circumstances may not in itself be exceptional. For example, if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, then the sudden loss of the preferred expert is not an exceptional circumstance. 19 The delegate then referred to the discussion of the extension of time provisions in decisions of the Commissioner of Patents and the Registrar of Trade Marks and, in particular, TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 and the trade mark decision Caprice Australia Pty Ltd v MG Icon LLC [2014] ATMO 34. 20 Before proceeding further, it is convenient at this point to set out a schedule provided by Vito Mitolo & Son which sets out the company's actions at various points in time between 10 March 2017 and 31 July 2017. This schedule was provided to the ATMO by the company's solicitors and is reproduced in the delegate's reasons (at [7]): DATE STEPS UNDERTAKEN 10/03/2017 Opposition to Trademark filed 10/03/2017 Telephone out to Vito Mitolo 15/03/2017 Waveform Label proofs received 23/03/2017 Meeting between Vito Mitolo, Instructing Solicitor and Counsel 01/04/2017 Telephone out to Counsel 04/04/2017- Draft and further drafting of Declaration of Vito Mitolo, including collation of evidence and proof by Senior Solicitor 20/05/2017 15/05/2017 Telephone call with Vito Mitolo 12/05/2017 Telephone out to Counsel [sic] 15/05/2017 Telephone out to Counsel 29/05/2017 Meeting with Vito Mitolo to take instructions on Declaration 02/06/2017 Further drafting of Declaration of Vito Mitolo and inclusion of evidence annexures 02/06/2017 Solicitor managing this matter leaves employment with Georgiadis Lawyers 20/06/2017 Meeting with Vito Mitolo to take further instructions on Declaration 22/06/2017- Further drafting of Declaration of Vito Mitolo and expansion of Statement of Grounds of Opposition in light of evidence 03//07/2017 28/06/2017 Vito Mitolo and Anthony Mitolo travel to Italy - unable to contact 03/07/2017 Finalisation of Statement of Vito Mitolo and Annexures - Awaiting Counsel's consideration and sign-off - no response from Counsel 13/07/2017 Application for Extension of Time to file evidence 13/07/2017 Receipt of Report of Professor Lockshin in relation to subject marks 13/07/2017 Assessment of Report of Professor Lockshin in relation to Declaration of Vito Mitolo 13/07/2017 Follow up Counsel in relation to matter - no response 19/07/2017 Further drafting of Declaration of Vito Mitolo in response to Report of Professor Lockshin 19/07/2017 Telephone call in from Blazenka of IP Australia providing advice to file Declaration in current format or to file timeline of work undertaken 20/07/2017 Further email to Counsel to finalise Declaration of Vito Mitolo for filing in light of IP Australia's recommendation 28/07/2017 Vito Mitolo and Anthony Mitolo return from Italy 31/07/2017 Meeting with Counsel to finalise Declaration for filing - Counsel unavailable at short notice

21 The delegate then discussed the submissions made by Vito Mitolo & Son. The key submissions were as follows: (1) Vito Mitolo & Son alleged that Mitolo Wines made the applications in bad faith and an aspect of that plea was that V. Mitolo and Son had acquired a reputation in the relevant trade mark in relevant classes (i.e., Classes 35, 41 and 43). The bad faith plea required an examination of the history of the matter and electronic communications and direct discussions between the parties. In those circumstances, the affidavits of Mr Vito Mitolo and Mr Anthony Mitolo required careful consideration and drafting. Those tasks were carried out with diligence. (2) Intervals of one or two weeks where there was no activity did not mean that Vito Mitolo & Son had not acted promptly and diligently "in the overall context of the matter". (3) With respect to Mr Vito Mitolo and Mr Anthony Vitolo's absence overseas from 28 June 2017 to 28 July 2017, the Trade Mark Regulations do not require everything possible to be done and "for a party's life to be set to one side whilst trade mark evidence is prepared". (4) The proceedings in the ATMO were conducted "in the shadow of [the Federal Court Infringement Proceeding]". 22 The delegate described Vito Mitolo & Son as relying on three matters in relation to the requirements in reg 5.15(2)(a), namely, the concurrent Federal Court Infringement Proceeding, the attempts at settlement and the fact that the evidence being prepared was complex. These were essentially the same matters Vito Mitolo & Son relied on in connection with its argument that there were exceptional circumstances within the meaning of reg 5.15(2)(b). 23 The delegate started with Vito Mitolo & Son's reliance on reg 5.15(2)(b) and then moved to reg 5.15(2)(a). The delegate commenced his consideration of Vito Mitolo & Son's case under reg 5.15(2)(b) with the following comment (at [26]): Before discussing Mr Williams' response with respect to the reg 5.15(2)(a) ground, it is convenient to address the Opponent's alternative "exceptional circumstances" claim based on reg 5.15(2)(b). In brief, I do not accept that involvement in related court matters, or negotiations for a possible settlement, or the fact that the relevant evidence was eventually filed, constitutes a special circumstance as contemplated by the relevant regulation. As Mr Williams highlighted, IP Australia's publicly available Trade Marks Examiners' Manual ("the Examiners' Manual") advises at Part 51, Paragraph 2.2 that: Exceptional circumstances include (but are not limited to): a circumstance beyond the control of a party; an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement; an order of a court or a direction by the Registrar that the opposition be stayed. Parties should not expect that time needed for the purpose of settlement negotiations will be considered under these provisions. Time needed for that purpose should be applied for under the appropriate suspension or coolingoff provisions. 24 The delegate said that the efforts which the parties made to settle the Federal Court Infringement Proceeding appeared rather inconsequential on their face. The proceedings were commenced on 20 December 2016 and the parties asked the Court for time to explore settlement on 4 April 2017. There were subsequent communications between the parties by way of email and letter, but they did not lead to a meeting between the parties or any substantive discussions. On 27 June 2017, Mitolo Wines, through its solicitors, indicated that it would not participate in any further settlement discussions. 25 As to the relevance of settlement negotiations, the delegate referred to, and relied upon, IP Australia's publicly available Trade Marks Examiners' Manual (Examiners' Manual) Part 51, Paragraph 2.2 (see [23] above) and the decision in Rotary International v Interact Australia (Victoria) Ltd [2015] ATMO 44. 26 As to the claimed relevance of related litigation and the fact that the evidence being prepared was complex, the delegate referred to, and relied upon, the decision in Milir Enterprises Pty Ltd v Dungeatle Enterprises (Pty) Ltd and Scarab Australia Pty Ltd [2015] ATMO 95 at [8]-[9]. In connection with his analysis, the delegate referred to the following matters. First, a cross-claim was filed in the Federal Court Infringement Proceeding on 9 February 2017 and any work required to consider the history of communications had already been substantially completed by Vito Mitolo & Son for and in the context of those other proceedings. Secondly, the delegate did not consider the matters raised in the respective affidavits of Mr Vito Mitolo and Mr Anthony Mitolo to be particularly complex. He said (at [30]): ... The two affidavits are essentially identical, relatively brief (having a small number of short, essentially identical, exhibits) and merely relate the history of the Mitolos' own business and Anthony and Vito Mitolo's personal dealings with the Applicant over the preceding three year period. Moreover, as mentioned, Mr Williams pointed out that much of this information "is largely a replication of the Opponent's pleadings in the Cross-Action which it filed on 9 February 2017 in the Federal Court proceedings." The delegate said that the evidence was not in any way out of the ordinary or otherwise exceptional. 27 As I have said, the delegate noted that the same matters were advanced under reg 5.15(2)(a) as were advanced under reg 5.15(2)(b) and he said that, for essentially the same reasons discussed in relation to reg 5.15(2)(b), they did not make out a case under reg 5.15(2)(a).

The Grounds of Judicial Review 28 The proposed grounds of judicial review are as follows: 1. The making of the Decisions by the Second Respondent was an improper exercise of power conferred by regulations 5.15(2)(a) or (b) of the Trade Mark Regulations 1995 (Cth) ("the Regulations") in pursuance of which the Decisions were purported to be made by failing to take relevant considerations into account in the exercise of that power (section 5 (1)(e) and (2)(b) of the Administrative Decisions (Judicial Review) Act 1977 (Cth) ("ADJR Act")): 1.1 The Second Respondent failed to consider whether the factors identified by the Applicant, namely: 1.1.1 The concurrent Federal Court proceedings (being Action Number 340 of 2016); and 1.1.2 The attempts at settlement; and 1.1.3 The complexity of the evidence required to be prepared to support the Applicant's allegation of bad faith; and 1.1.4 The absence of Vito Mitolo and Anthony Mitolo overseas when considered on an aggregate basis (as opposed to individually) meant that: 1.1.5 The Applicant had made all reasonable efforts to comply with the relevant filing requirements; and 1.1.6 The failure to file the evidence in time was despite the Applicant acting promptly and diligently at all times to ensure the evidence was filed on time; and 1.1.7 There were exceptional circumstances that warrant the extension. 1.2 The Second Respondent failed to have any or any proper regard to the relevant fact that from at least 4 April 2017 the parties had sought time from the Federal Court in Action Number 340 of 2016 to explore a settlement but that substantive discussions referable to the contemplated settlement did not progress beyond meetings between counsel, and that the First Respondent then on 27 June 2017 declined to participate further in the settlement discussions and that this constituted an exceptional circumstance as being a matter out of the control of the Applicant. 2. The making of the Decisions by the Second Respondent was an improper exercise of power conferred by regulations 5.15(2)(a) or (b) of the Regulations in pursuant of which the Decisions were purported to be made by exercising a discretionary power in accordance with a rule or policy without regard to the merits of a particular case (section 5(1)(e) and (2)(f) of the ADJR Act): 2.1 The Second Respondent failed to consider whether the factors identified by the Applicant, namely: 2.1.1 The concurrent Federal Court proceedings (being Action Number 340 of 2016); and 2.1.2 The attempts at settlement; and 2.1.3 The complexity of the evidence required to be prepared to support the Appellant's allegation of bad faith; and 2.1.4 The absence of Vito Mitolo and Anthony Mitolo overseas when considered on an aggregate basis (as opposed to individually) meant that: 2.1.5 The Applicant had made all reasonable efforts to comply with the relevant filing requirements; and 2.1.6 The failure to file the evidence in time was despite the Applicant acting promptly and diligently at all times to ensure the evidence was filed on time; and 2.1.7 There were exceptional circumstances that warrant the extension. 3. The Decisions by the Second Respondent involved an error of law (section 5(1)(f) of the ADJR Act): 3.1 The Second Respondent misdirected himself that settlement negotiations would not be an exceptional circumstance for the purpose of Regulation 5.15(2)(b) of the Regulations. 3.2 The Second Respondent failed to have any or any proper regard to the relevant fact that from at least 4 April 2017 the parties had sought time from the Federal Court in Action Number 340 of 2016 to explore a settlement but that substantive discussions referable to the contemplated settlement did not progress beyond meetings between counsel, and that the First Respondent then on 27 June 2017 declined to participate further in the settlement discussions and that this constituted an exceptional circumstance as being a matter out of the control of the Applicant. 3.3 The Second Respondent erred in law relying on Rotary International v Interact Australia (Victoria) Ltd (2015] ATMO 44 because the exceptional circumstance relied on by the Applicant was the proportion of the statutory period which had been eroded by the parties attempts to facilitate settlement negotiations, which did not progress beyond meetings between counsel because despite seeking time from the Federal Court in April 2017 to permit such negotiations to occur the First Respondent withdrew from the process on 27 June 2017. The Applicant did not seek an extension of time for the purpose of continuing settlement negotiations.

The Extension of Time 29 Vito Mitolo & Son seeks an extension of time within which to lodge its Originating Application for Judicial Review under the ADJR Act up to and including 18 June 2018. The time limit for the lodging of the application was 28 days after the decision which was made on 22 February 2018 (s 11(3) of the ADJR Act). The Court has the power to extend the time (s 11(1)(c) of the ADJR Act). The period of delay is approximately three months. 30 The matters that the Court considers in determining whether to grant an extension of time are well-known. They are the length of the delay, the explanation for the delay, the merits of the substantive application, the prejudice to the applicant if an extension of time is not granted, the prejudice to the respondent if the extension of time is granted and any public interest considerations which may be raised by the facts of the particular case (Construction, Forestry, Mining and Energy Union v Director of the Fair Work Building Industry Inspectorate [2016] FCA 1475 at [6]). 31 As I have said, the length of the delay is approximately three months. However, because of the "appeal" filed by Vito Mitolo & Son within 21 days of the date of the decision, Mitolo Wines has known from that point that Vito Mitolo & Son seeks to challenge the delegate's decision. Clearly, that is a significant matter. 32 The explanation for the delay is that Vito Mitolo & Son or, more importantly, its solicitors, relied on the delegate's statement that the company could appeal, if so advised. That is an explanation for the delay. There was probably more delay than there should have been after Mitolo Wines advised Vito Mitolo & Son that its "appeal" was incompetent and that is a matter I take into account. 33 With respect to the merits of the substantive application under the ADJR Act, I consider that the grounds advanced by Vito Mitolo & Son are reasonably arguable. That will become apparent from my discussion of those grounds. 34 The prejudice to Vito Mitolo & Son if an extension of time is not granted is that it will be deprived of the opportunity to challenge the delegate's decision which, as it stands, precludes it from filing evidence in the opposition. 35 There is no obvious prejudice to Mitolo Wines if an extension of time is granted, although it relies on the public interest consideration of the finality of litigation. That matter is to be taken into account. 36 Having regard to the above matters and, in particular, the fact that Mitolo Wines has known of Vito Mitolo & Son's intention to challenge the delegate's decision from the date the "appeal" was filed, I have concluded that an extension of time should be granted.

The application Under the ADJR Act 37 In his oral submissions, counsel for Vito Mitolo & Son substantially narrowed the challenge to the delegate's decision. First, the company abandoned any challenge to the delegate's decision and reasons with respect to reg 5.15(2)(a). The company's challenge is now limited to the delegate's decision that he was not satisfied that there were exceptional circumstances that justified the extension (reg 5.15(2)(b)). Secondly, the company does not contend that the matters relevant to whether there were exceptional circumstances (and it identified the four matters in Ground 1 of its application) were not individually considered by the delegate, or that the delegate's decision with respect to each matter individually involved error. The company contends that the error was that the delegate failed to consider the aggregate or accumulated significance of the four matters. 38 In addition to this matter, Vito Mitolo & Son referred to two matters which I think were linked. First, it submitted that the delegate failed to consider, as part of his analysis of whether there were exceptional circumstances, the issue of prejudice to the respective parties. Secondly, it submitted that the delegate failed to consider, as part of his analysis of whether there were exceptional circumstances, the fact that Vito Mitolo & Son challenged Mitolo Wines' applications on the ground of bad faith. I think that the two arguments were linked in that the argument was that the prejudice was that Vito Mitolo & Son would be precluded, in effect, from pursuing an opposition based on the ground of bad faith. 39 Finally, I note that Vito Mitolo & Son mentioned and did not abandon the ground in its application (proposed Ground 2) that the delegate had applied a rule or policy without regard to the merits of the case. It was not clear to me how it was deployed by Vito Mitolo & Son or indeed whether it was being pressed with any vigour. In any event, the argument fails. Whilst the delegate referred to the Examiners' Manual in [26] of his reasons (set out at [23] above), there is no indication, considering the reasons as a whole, that he did not consider the individual merits of the case. 40 Counsel for Mitolo Wines seemed to me to concede that the delegate was required to consider the circumstances advanced as exceptional circumstances as a whole or in aggregate and his argument was that the delegate had done that. Nevertheless, some attention to the matters which inform the meaning of "exceptional circumstances" is warranted. 41 There is the non-exhaustive definition of exceptional circumstances in reg 5.15(4) and the various observations or statements in the ES. There are the authorities in the ATMO to which the delegate referred about the matters which could constitute exceptional circumstances. The words have also been considered by this Court in other areas, including the migration area. 42 In Hatcher v Cohn [2004] FCA 1548; (2004) 139 FCR 425, Kiefel J (as her Honour then was) said (at [49]-[50]): 49 "Exceptional" circumstances, in general terms, are those circumstances which are unusual or out of the ordinary. But the term is also one which may have a wide operation. Factors affecting a person and which set them apart from other persons in a comparable situation may amount to exceptional circumstances. Speaking in the context of extradition, Gleeson CJ, McHugh and Gummow JJ have held that "special circumstances" need to be "extraordinary and not factors applicable to all defendants facing extradition". It was not necessary that any particular circumstance be regarded as special; several factors in combination could constitute special circumstances: United Mexican States v Cabal (2001) 209 CLR 165 at [52]. And in Baker v The Queen (2004) 78 ALJR 1483 at [13] Gleeson CJ considered the use of "special circumstances" to condition the exercise of judicial discretion. His Honour said: This is a verbal formula that is commonly used where it is intended that judicial discretion should not be confined by precise definition, or where the circumstances of potential relevance are so various as to defy precise definition. That which makes reasons or circumstances special in a particular case might flow from their weight as well as their quality, and from a combination of factors. 50 Although his Honour was speaking of judicial decision-making the observations are apposite here. The words "exceptional circumstances" may apply to a variety of circumstances and no definition which limits their application should be adopted, unless the limitation appears from the words of the relevant statutory provision. That is a question which arises here. 43 In R v Kelly (Edward) [2000] 1 QB 198, Lord Bingham of Cornhill CJ said (at 208): We must construe "exceptional" as an ordinary, familiar English adjective, and not as a term of art. It describes a circumstance which is such as to form an exception, which is out of the ordinary course, or unusual, or special, or uncommon. To be exceptional a circumstance need not be unique, or unprecedented, or very rare; but it cannot be one that is regularly, or routinely, or normally encountered. 44 The issue has been discussed in a number of authorities (AQU17 v Minister for Immigration and Border Protection [2018] FCAFC 111; (2018) 162 ALD 442; BVZ16 v Minister for Immigration and Border Protection [2017] FCA 958; (2017) 254 FCR 221 (BVZ16); CMY17 v Minister for Immigration and Border Protection [2018] FCA 1333; Minister for Immigration and Border Protection v CQW 17 [2018] FCAFC 110; (2018) 162 ALD 427 and BYI18 v Minister for Home Affairs [2019] FCA 803). 45 It is clear that a combination of factors may constitute exceptional circumstances and, therefore, the circumstances must be considered as a whole (or in aggregate), as well as individually (Griffiths v The Queen [1989] HCA 39; (1989) 167 CLR 372 at 379 per Brennan and Dawson JJ; BVZ16 at [41] per White J). 46 Before turning to the delegate's reasons in order to determine whether he considered the relevant circumstances as a whole or in aggregate, it is relevant to consider how the matter was put to him. The delegate noted that Vito Mitolo & Son's case was originally limited to reliance on reg 5.15(2)(a) and that reliance on the exceptional circumstances (i.e., reg 5.15(2)(b)) was added later. 47 In a submission to the ATMO on 31 August 2017, the solicitors for Vito Mitolo & Son put the following: The Opponent submits that the possibility of settlement negotiations covering the Federal Court proceedings and the Trade Mark applications being in contemplation by the parties between at least April and late June 2017 constitutes exceptional circumstances justifying the grant of an extension of time in any event. 48 In written submissions dated 6 November 2017 provided by Vito Mitolo & Son to the delegate in advance of the hearing on 20 December 2017, the company submitted the following under the heading "Exceptional Circumstances": The fact that the parties were involved in related litigation in the Federal Court, that they were exploring settlement in the way set out in the submissions referred to in paragraph 19 and that those proceedings are continuing is an exceptional circumstance and enables consideration of the respective times involved. In turn, a consideration against that background of the fact that the relevant evidence was filed on 18 and 21 August 2017 is a circumstance which renders it appropriate for there to be an extension to that time. 49 The similarity between this submission and the way in which the delegate describes the submission which he rejects is apparent (see the passage from the delegate's reasons set out above (at [23]). That was the submission which was put and that was the submission dealt with by the delegate. 50 The delegate's conclusion was as follows (at [33]): In summary, none of the circumstances described by the Opponent appears to me exceptional. I accordingly reject the Opponent's submission that it is entitled to rely on reg 5.15(2)(b) in the present matter. 51 As I understood it, Vito Mitolo & Son submits that the matters relevant to exceptional circumstances are the four matters identified in paragraph 1.1 of the proposed grounds of judicial review (set out above at [28]). In order to match these four matters to the written submission in paragraph 20 made on 6 November 2017, counsel for Vito Mitolo & Son said that related litigation in the Federal Court was broad enough to include the complexity of the evidence to be prepared and, in turn, as relevant to that matter, the absence of Mr Vito Mitolo and Mr Anthony Mitolo overseas during the period in which the evidence might otherwise have been prepared. The way in which counsel for Vito Mitolo & Son put it was to say, "there are two parts of this silo but they are not dealt with in any way, in my submission, cumulatively". 52 My reading of the delegate's reasons is that he considered the matters advanced as part of the case of exceptional circumstances being related court proceedings, settlement negotiations and the fact that the relevant evidence was eventually filed. The last matter was noted, but it did not seem to be a matter of particular significance. As far as the related court proceedings were concerned, the significance of this matter was said to be, aside from the mere fact that there were related court proceedings, the complexity of the evidence of Mr Vito Mitolo and Mr Anthony Mitolo. That was a matter addressed by the delegate. The significance of the settlement negotiations was also addressed by the delegate. 53 The fact that Mr Vito Mitolo and Mr Anthony Mitolo were overseas from late June 2017 and July 2017 was put as a matter relevant to reg 5.15(2)(a), not as a matter relevant to reg 5.15(2)(b). The delegate addressed the case put to him and he did not err in not considering the absence of witnesses overseas in his consideration of reg 5.15(2)(b). 54 It seems, therefore, that there were two principal matters put by Vito Mitolo & Son as exceptional circumstances and they were the related court proceedings, in the sense of the complexity of the evidence of the two witnesses, and the settlement negotiations. Those matters were considered by the delegate. In my opinion, they were considered cumulatively. They were put that way by Vito Mitolo & Son and the delegate's reasons are not to be read with an eye keenly attuned to error (Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6; (1996) 185 CLR 259 at 271-272). 55 I turn to the additional matter(s) made by Vito Mitolo & Son. 56 As I have said, I think the two matters are related. It is argued that the delegate erred in not considering the issue of prejudice to the parties in his consideration of exceptional circumstances and, in that context, the fact that Vito Mitolo & Son was basing its opposition on the ground of bad faith. I reject that submission. First, it was not put as relevant to exceptional circumstances. Secondly, although it is a matter that might be relevant to the discretion of the delegate after one or both of the requirements in reg 5.15(2)(a) and reg 5.15(2)(b) were satisfied, that point was not reached by the delegate.

Conclusion 57 The application for an extension of time is allowed. The application under the ADJR Act must be dismissed. Mitolo Wines should file and serve draft minutes of order reflecting the conclusions in these reasons within 14 days. Vito Mitolo & Son within a further seven days indicate by letter whether it agrees with the first respondent's draft minutes of order, or, if it does not, file and serve its own draft minutes of order. I certify that the preceding fifty-seven (57) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko.

Patent Regulations 1991(Cth)

Act, the Patents Act 1990(Cth)

Trade Mark Regulations 1995(Cth)

Federal Court Rules 2011(Cth)rr 34.24, 36.03

TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57

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