Re: Application by Young Engineering Pty Ltd for an extension of time to file a statement of grounds and particulars for an opposition to the registration of trade mark application number 1590822 (class 7) - VOKES - in the name of Dollinger Filtration Limited.

Opponent: Wen H Wu of Counsel instructed by Rose Litigation Lawyers

2025 ATMO 259

Application under regulation 5.9 of the Trade Marks Regulations 1995 (Cth) for an extension of time to file a Statement of Grounds and Particulars - grounds not made out - extension of time refused.

1. This decision concerns an application made by Young Engineering ('Opponent') under regulation 5.9 of the Trade Mark Regulations 1995 (Cth)[1] for an extension of time ('EOT') to file a Statement of Grounds and Particulars ('SGP') in the opposition to the registration of the following trade mark:

Goods Specification: Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); machines for the treatment of insulating fluids; valves (parts of machines); waste disposal units; pumps (machines); pumps (parts of machines, engines or motors); fans being parts of machines; fans for motors and engines; all the foregoing excluding machines and apparatus for collecting, exhausting, controlling waste products, filtration machines, filtering apparatus, air conditioning, humidifying and dehumidifying apparatus or installations, and parts and fittings therefor

1. After a significant examination period of over 10 years, the details of which are not necessary to summarise here, the application to register the Trade Mark was accepted by this office and advertised on 15 April 2025. The Opponent filed a Notice of Intention to Oppose ('NIO') on 26 April 2025. In accordance with reg 5.7(1), the Opponent was notified by IP Australia on 5 May 2025 that it had until 26 May 2025 to file its SGP. On 16 May 2025, the Opponent filed an application for an extension of time to file the SGP. In support of the application, the Opponent filed the declaration of Brian Young, owner of the Opponent, dated 16 May 2025.
2. What follows is a time-line of the events leading up to the request for a hearing in this matter:
   • On 26 April 2025, Mr Young filed a Notice of Intention to Oppose registration of the Trade Mark and sent a letter to Mr Michael Schwager, the Director-General of IP Australia, complaining about the filing of TM 2530273 VOKES (the divisional child) 12 years after the filing of the Trade Mark (the divisional parent); the grant of extensions of time to accept TM 1590822; and the subsequent acceptance of the Trade Mark;
   • Between 2 May 2025 and 11 May 2025, Mr Young exchanged email correspondence with Mr Blake Knowles (Deputy Registrar of Trade Marks), about the matters in Mr Young's 26 Apr 2025 complaint to the Director-General of IP Australia;
   • On 13 May 2025, after Mr Knowles confirmed the Trade Mark had not been accepted in error, Mr Young emailed the Opponent's then-solicitor Mr John Fasha. Mr Young instructed Mr Fasha to engage Mr Wen Wu of counsel. Mr Fasha forwarded Mr Young's instructions to Mr Wu;
   • On 15 May 2025 Mr Wu responded to the email advising he had been ill and would not be able to make the 21 May 2025 deadline stipulated in Mr Young's correspondence. He advised that he would not be available until after 26 June 2025 but that he could provide advice after that date and requested that the deadline be extended;
   • On 16 May 2025, My Young called IP Australia's Trade Mark Office call centre to obtain help on making the EOT request;
   • On 16 May 2025, Mr Young completed and filed the EOT request along with the first declaration of Brian Allan Young, Director of the Opponent;
   • On 21 May 2025, Mr Young provided an update to Mr Fasha that the Request for the EOT remained under consideration;
   • On 26 May 2025, was the deadline to file the SGP; however no SGP was filed on that date.
   • On 28 May 2025, IP Australia wrote to the Opponent advising that the EOT request could not be considered because a number of issues requiring clarification had been identified in the request. The Opponent was given until the 12 June 2025 in which to respond to IP Australia's letter;
   • From 1 June 2025 until 26 June 2025, Mr Wu was busy preparing for and then appearing in a trial in the Federal Court;
   • On 4 June 2025, Mr Fasha forwarded Mr Young's update of the 21 May 2025 onto Mr Wu;
   • On 10 June 2025 Mr Young provided a second declaration to IP Australia in support of the EOT and provided a second update to Mr Wu and Mr Fasha about the EOT request, attaching IP Australia's letter dated 28 May 2025;
   • On 23 June 2025, IP Australia wrote to the Opponent advising that the Registrar intended to refuse the EOT request;
   • After 26 June 2025 Mr Wu reviewed the earlier correspondence and realised that the SGP was due to be filed on 26 May 2025. Mr Young then instructed Mr Wu to prepare, and Mr Wu did prepare, the SGP;
   • On 30 June 2025, the Opponent filed the third declaration in response to the Registrar's intention to refuse the EOT;
   • On 7 July 2025, the Opponent filed the SGP prepared by Mr Wu;
   • On 8 July 2025, the Opponent filed the fourth declaration of Brian Young ('Young 4') in support of the EOT request which superseded the other three declarations;
   • On 22 July 2025, the Registrar sent a communication to Mr Young, maintaining the intention to refuse the EOT and provided the Opponent with an opportunity to request a Hearing on the matter; and
   • On 28 July 2025, the Opponent requested a Hearing on the matter.
3. The matter was heard before me, a delegate of the Registrar of Trade Marks, by video conference on 17 November 2025. The Opponent filed written submissions on 17 November 2025 along with the transcript of the phone call Mr Young had with a representative of IP Australia on 16 May 2025. The Applicant was not present at the hearing and did not provide submissions for consideration. In making this decision I take into account all of the above detailed material.

(1) A person who intends to oppose an application under subsection 52(1) of the Act may request the Registrar to extend:

(a) the period for filing a notice of intention to oppose under subregulation 5.6(1); or

(b) the period for filing a statement of grounds and particulars under subregulation 5.7(1).

(2) A request under paragraph (1)(a) or (b) may be made:

(a) within the period for filing the document in question; or

(b) before the trade mark is entered on the Register under section 69 of the Act.

Note: See subparagraph (3)(b)(ii) and subregulation 5.10(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 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 5.10(1) 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. These grounds pertain to either of those outlined in reg 5.9(4). Furthermore, if the EOT request is made after the deadline for filing the statement of grounds and particulars, the Registrar must be satisfied that there is sufficient reason for the delay in making the request.[2]

1. The correspondence regarding the EOT nominates both an error or omission, and circumstances beyond the control of the person as grounds for the EOT. The Opponent's submissions explain the errors as:

(The Opponent's) intention (to oppose registration) was frustrated by a compounding series of errors, largely caused by Mr Young's self-representation and his lack of knowledge about trade mark law and procedure:

• Mr Young's incorrect description of the work to Mr Fasha and Mr Wu as "an extension of time [that] needs to be filed before 21st May";
• Mr Young's failure to tell Mr Fasha and Mr Wu when Mr Young filed the NIO or the SGP deadline;
• Mr Young's incorrect description of the NIO and SGP and their associated dates as "An objection has been filed to the office on 25th April 2025 and a response is required on or before 23rd May 2025";
• Mr Young's wrong belief that the work to prepare the SGP involved great complexity and required "a period of six to nine months" to complete;
• Mr Wu and Mr Fasha - having been misled by Mr Young's instructions that the work involved "an extension of time [that] needs to be filed before 21st May" - advising Mr Young to seek that extension of time;
• Mr Young's misinterpretation of Mr Wu's statements of "personal leave" and "I cannot make the existing deadline", as meaning Mr Wu was on sick leave for an extended period;
• the IP Australia's representative's wrong advice to Mr Young that the length of an EOT sought for sickness was "just up to the customer. Some people do like a month at a time. Some people will do, you know, six months"; and
• the various errors made by Mr Young in the EOT Request.

1. The term 'error or omission' features in a number of provisions, including the provision for an extension of time under s 224 and equivalent provisions in the Patents Act 1990 (Cth). In Kimberly-Clark Ltd v Commissioner of Patents[3], Jenkinson J considered the meaning of 'error or omission' in the context of an extension of time under s 160(2)(a) 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.[4]

1. The failure to file an SGP in and of itself cannot be the error or omission.[5] There must a causal connection between the error or omission and the failure to file the statement of grounds and particulars by the deadline. This requires the relevant error or omission to be antecedent to the failure to meet the deadline.[6] The burden of establishing a case justifying an extension of time falls to the Opponent.[7]
2. The Opponent's legal representatives have emphasised that the Opponent always had the intention to oppose registration of the Trade Mark but was frustrated by a compounding series of errors, largely caused by Mr Young's self-representation and his lack of knowledge about trade mark law and procedure.
3. I note from Young 4 that it took Mr Young around one month from discovering acceptance of the Trade Mark to corresponding with his solicitor, Mr Fasha. According to Young 4, Mr Wu and Mr Fasha had acted for the Opponent's related company, Laminar Air Flow Pty Ltd, in six disputes before the Federal Court or IP Australia[8] being:
   • Laminar Air Flow Pty Ltd v Vokes Ltd [2017] ATMO 48; 128 IPR 165;
   • Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447;
   • Vokes Ltd v Laminar Air Flow Pty Ltd [2018] FCAFC 109; 263 FCR 523;
   • Laminar Air Flow Pty Ltd v Vokes Ltd, Federal Court proceeding no. NSD 1364 of 2017, which was settled by consent orders on 21 July 2021;
   • Dollinger Filtration Ltd v Laminar Air Flow Pty Ltd, Federal Court proceeding no. NSD 2290 of 2018, which was settled by consent orders on 21 July 2021 to cancel trade mark no. 152414 VOKES and no. 250505 VOKES with effect from 23 January 2018 and 21 July 2021 respectively; and
   • Young Engineering Pty Ltd v Vokes Ltd [2022] ATMO 21; 171 IPR 572, in relation to the Opponent's opposition to the non-use removal of trade mark no. 216896 VOKES VEE-GLASS
4. Because of the history between the parties, Mr Young wanted to engage Mr Wu and Mr Fasha again for this prospective opposition. Young 4 states that Mr Fasha was a local general practice solicitor, who relied on counsel (Mr Wu) for trade mark law expertise.[9]
5. Young 4 avers that because of a lack of knowledge about trade mark law and practice, Mr Young made an error or omission in instructing Mr Fasha, by not drawing his attention to the deadline to file the SGP on 26 May 2025.[10] Young 4 states[11]:

I wrongly believed that the Prospective Opponent could obtain an extension of time to file the SGP: "please note an extension of time needs to be filed before 21st May".[12]

On the same day (13 May 2025), Mr Fasha forwarded my email and attachment to Mr Wu[13]. Because of Mr Fasha's lack of knowledge about trade mark law and practice, Mr Fasha made an error or omission in instructing Mr Wu, by not drawing the deadline to file the SGP (26 May 2025) to Mr Wu's attention.

On 15 May 2025, Mr Wu responded to Mr Fasha's email in [24] above.[14] Mr Wu was misled by my earlier indication that the matter concerned an extension of time: "I see from Brian's email below that there is an IP Aus deadline of next Wednesday 21 May. Would you please see if you can extend that deadline? I cannot make the existing deadline, but will be able to help if the deadline is extended."

On the same day (15 May 2025), Mr Fasha asked me to request an extension of the deadline.[15]

Because of my lack of knowledge about trade mark law and practice, I made various errors in completing the EOT Request.

On 21 May 2025, I provided an update about the EOT Request to Mr Fasha.[16] I continued to make the same error or omission by not drawing the deadline to file the SGP (26 May 2025) to Mr Fasha's attention.

On 4 June 2025, Mr Fasha forwarded my update about the EOT Request to Mr Wu.[17] Mr Fasha continued to make the same error or omission by not drawing the deadline to file the SGP (26 May 2025) to Mr Wu's attention. Mr Fasha also made another error or admission by failing to promptly forward my update to Mr Wu; it took Mr Fasha almost two weeks to forward my update.

On 10 June 2025, I forwarded Mr Wu and Mr Fasha an update about the EOT Request.[18] I attached a copy of IP Australia's letter dated 28 May 2025 seeking clarification about the EOT Request; my 5 June 2025 declaration (misdated 5 June 2024); and its filing receipt.

I am informed by Mr Wu and believe that, in the period 1-15 June 2025, he was busy preparing for a trial in the Federal Court, beginning 16 June 2025. Because Mr Fasha and I had failed to draw the deadline to file the SGP (26 May 2025) to his attention, Mr Wu failed to attend to preparing the SGP.

On 26 June 2025, I received an email from Mr Wu that he had just finished his trial.[19]

I am informed by Mr Wu and believe that, after 26 June 2025, he reviewed the earlier correspondence and realised that the SGP was due to be filed on 26 May 2025. I then instructed Mr Wu to prepare, and he prepared, the SGP.

On 7 July 2025, I filed the SGP prepared by Mr Wu. The attachment to the SGP, setting out the grounds and particulars.[20] The Prospective Opponent opposes registration of the Application based on the grounds in section 44 and 59.

1. While the above has been described as compounding errors and omissions by the Opponent and its agent/s, I am not persuaded this is the case. Considering Young 4, it is clear that Mr Young, Mr Fasha and Mr Wu have had considerable experience in dealing with the Federal Court and IP Australia through multiple legal matters spanning almost a decade. Even if I were to accept that Mr Young engaged in requesting the EOT as a self-represented party with a lack of knowledge about trade mark law and procedure, Mr Young was still able to successfully file a Notice of Intention to Oppose. The information contained in the 'Notice of intention to oppose filed' notice ('NION') sent to Mr Young on 5 May 2025 (and accessed multiple times by Mr Young) is not ambiguous and does not require knowledge of IP rights law. The due date for the SGP was clear, just as the consequences for missing the deadline were clear. The NION stated:

1. The Opponent has provided a transcript of the conversation that Mr Young had with an agent from IP Australia on 16 May 2025. The Opponent has asserted that the incorrect information provided on extension of times by IP Australia at that time was one of the many errors that frustrated the Opponent from filing its SGP. I disagree. The Opponent contacted IP Australia on 16 May 2025 not for information on how to file a SGP but on how to apply for an EOT. Given that this was ten days before the SGP was due, it does not appear that the Opponent intended to file the SGP by the due date. The events before me do not demonstrate that there is a causal link between any of the proposed errors or omissions made by the Opponent, its agents or IP Australia which led to the Opponent not filing the SGP by the 26 May 2025.
2. Instead, the evidence and submissions demonstrate that the Opponent made a series of conscious decisions to:
   • engage a familiar local general practice solicitor, who relied on counsel for trade mark law expertise;
   • receive advice from counsel they were unavailable to provide guidance or advice on the matter from 15 May 2025 until 26 June 2025 and as a result, decide to apply for an EOT to file the SGP without legal guidance[21] rather than seek different and available legal counsel or file the SGP by the due date.
3. The Opponent's arguments concerning the lack of knowledge about trade mark law and practice attempt to persuade me that Mr Young did not fully understand the important deadlines mentioned in the communications from IP Australia.[22] But as per Kmart Australia Limited[23], misapprehension or ignorance of the law does not constitute an error by itself.
4. A SGP does not require a detailed submission and is a relatively straightforward document that only requires the Opponent to particularise the grounds with an outline of the material facts on which each ground is based. The Opponent's belief about the legal complexity of the opposition is also not an error or omission that might justify an extension of time to file the SGP.
5. The choices made by the Opponent and detailed above do not demonstrate errors or omissions but rather, conscious decisions. Opposition proceedings before the Registrar are serious matters and can have serious consequences. The Regulations do allow for EOTs to be granted where there are errors or omissions that have prevented the filing of the SGP, but reg 5.9(4)(a) is not a catch-all for a party to abdicate responsibility for decisions it made on how to how to proceed with an opposition. For these reasons, I am not satisfied that there is an error or omission justifying an extension of time to file the SGP. Accordingly, the ground under reg 5.9(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[24], 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.[25]

1. The circumstances referred to by Jenkinson J are not exhaustive.[26] In Honest Reveira v Registrar of Trade Marks[27], a decision which concerned an application for judicial review of a decision to grant an extension of time to file a notice of intention to oppose an application for removal under reg 9.11, Moshinsky J observed:

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.[28]

1. According to Young 4, there were delays in Mr Fasha and Mr Wu reviewing the documents he forwarded to them and receiving advice from them about filing the SGP. This has been argued it was beyond the control of the Opponent. As outlined above, this delay was caused by Mr Wu preparing for a case in Federal Court. The Opponent was advised on the 15 May 2025 (which was eleven days before the due date for the SGP) that Mr Wu would not be able to provide advice or guidance until after 26 June 2025.
2. I do not accept that this situation was a circumstance outside of the Opponent's control. The Opponent had eleven days in which to seek other legal advice or any advice on how to file the SGP by the due date. The Opponent at all times had access to the relevant documentation and should have been aware of the deadline for filing the SGP.
3. The Opponent has not satisfied me that circumstances beyond its control exist that justify the EOT. Accordingly, the ground for the extension of the period for filing the SGP under reg 5.9(4)(b) has not been established.

1. Even though I have not been satisfied that the Opponent has demonstrated either an error or omission or circumstances outside of its control, I am given, by the wording of Reg 5.10(1), a discretion as to whether or not to allow the extension of time.[29] The Opponent has also argued that should the EOT not be granted the Opponent has lost the opportunity to pursue its opposition against the Trade Mark and test the grounds of opposition under s 44 and 59 of the Act. As a consequence, the Applicant would gain unchallenged registration of a Trade Mark that may cause problems in the marketplace for the Opponent and Australian consumers.
2. In deciding how to exercise this discretion, I adopt the principles developed by Hearing Officer Michael Homann in Re Ausorb Pty Limited[30], and consider that the most important factors in coming to a 'fair and reasonable' decision in the matter include the relative inconvenience to the parties concerned and the public interest, including the desirability of operating the trade mark system efficiently and without unreasonable delays.[31]
3. In this instance, I am not persuaded that it would be appropriate to exercise any discretion to allow the substantive opposition to continue. The Opponent has had multiple opportunities since filing the NIO in which to obtain information and file the SGP. While the Opponent may have had the intent to oppose this Trade Mark, the intent to file a SGP by the due date has not been demonstrated in the materials before me.

1. The Opponent has not established a ground justifying an extension of time for filing the SGP. Accordingly, I refuse to grant the EOT for the Opponent to file its SGP.

[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').

[3] [1988] FCA 697 (Jenkinson J).

[6] Golden Buffalo Group Pty Ltd v Posh Lifestyle Pte Pty Ltd [2022] ATMO 104, [15] (Hearing Officer Barbey).

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

[10] Annexure BY-4 accompanying Young 4.

[13] Annexure BY-4 accompanying Young 4 p 26.

[14] Annexure BY-4 accompanying Young 4 p 24 to 25.

[15] Annexure BY-4 accompanying Young 4 p 24.

[16] Annexure BY-4 accompanying Young 4 p 23 to 24.

[17] Annexure BY-4 accompanying Young 4 p 23.

[18] Annexure BY-4 accompanying Young 4 p 32 to 33

[19] Annexure BY-4 accompanying Young 4 p 32.

[20] Annexure BY4 accompanying Young 4 p 34 to 35.

[21] Despite having engaged legal representatives.

[23] [2011] ADO 2, 25.

[24] [1987] FCA 25 (Jenkinson J).

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

[29] Cynthia Amaro [2007] ATMO 9 [16] (Hearing Officer Nancarrow)

[30] [1996] ATMO 39; (1996) 36 IPR 178

[31] See also Re Hall (1998) AIPC 91-425 [37,393-4].