Vito Mitolo & Son Pty Ltd v Mitolo Wines Aust Pty Ltd [2019] FCA 903

Vito Mitolo & Son Pty Ltd v Mitolo Wines Aust Pty Ltd [2019] FCA 903

The applicant was entitled to an extension of time because its reasons for delay, particularly reliance on incorrect advice from the delegate regarding appeal rights and prompt action thereafter, satisfied relevant criteria and mitigated prejudice to the respondent. However, the substantive application for judicial review was dismissed because the delegate had properly considered the claimed exceptional circumstances both in aggregate and individually, and no error was demonstrated; the merits did not justify intervention.

Parties
Applicant: Vito Mitolo & Son Pty Ltd; First Respondent: Mitolo Wines Aust Pty Ltd; Second Respondent: Registrar of Trade Marks of the Australian Trade Marks Office
Jurisdiction
Australia
Judgment Date
13 June 2019
Procedural Posture
Application for Extension of Time and Judicial Review / Final Judgment on Extension of Time and Dismissal of Substantive Application
Outcome
Extension of time application allowed; application for judicial review dismissed
Legal Topics
Extension of Time, Judicial Review, Trade Marks, Exceptional Circumstances, Evidence Filing, Registrar Discretion
Administrative Law Intellectual Property Extension of Time Judicial Review Trade Marks Exceptional Circumstances Evidence Filing Registrar Discretion

Case Brief

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Parties

Vito Mitolo & Son Pty Ltd

Applicant

Mitolo Wines Aust Pty Ltd

First Respondent

Registrar of Trade Marks of the Australian Trade Marks Office

Second Respondent

Procedural Posture

Application for Extension of Time and Judicial Review / Final Judgment on Extension of Time and Dismissal of Substantive Application

Legal Issues

  1. 1 Whether exceptional circumstances existed justifying extension of time under reg 5.15(2)(b) Trade Marks Regulations 1995 (Cth)
  2. 2 Whether delegate considered relevant circumstances in aggregate or individually
  3. 3 Whether the delegate erred in not considering prejudice as part of exceptional circumstances

Ratio Decidendi

The applicant was entitled to an extension of time because its reasons for delay, particularly reliance on incorrect advice from the delegate regarding appeal rights and prompt action thereafter, satisfied relevant criteria and mitigated prejudice to the respondent. However, the substantive application for judicial review was dismissed because the delegate had properly considered the claimed exceptional circumstances both in aggregate and individually, and no error was demonstrated; the merits did not justify intervention.

Court Disposition

Extension of time application allowed; application for judicial review dismissed

Orders

  • The first respondent to file and serve draft minutes of order reflecting the conclusions within 14 days.
  • The applicant to indicate by letter whether it agrees with draft minutes of order within a further seven days, or file and serve its own draft minutes of order.