A&E Television Networks v Trossart Pty Ltd

[2005] ATMO 21

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Possible Opposition by A & E Television Networks to registration of trade mark application 999698(25) - BIOGRAPHY - filed in the name of Trossart Pty Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Ian Tannahill, Ahearn Fox Applicant: no submissions
Decision:	Reg 5.2: late extension to oppose – explanation of circumstances of error insufficient to show causality of any identified error or omission.

1. A & E Television Networks has applied for an extension of time to oppose registration of trade mark number 999698, which was filed by Trossart Pty Ltd.  For convenience, I will refer to the two parties as the prospective opponent and as Trossart, respectively.  The extension of time sought was from 2 December 2004 to 2 January 2005.

2. This is a matter governed by Part 5 of the Trade Mark Regulations 1995.  Relevantly, these provide, with parenthetical material added.

   Extension of time for filing—grounds

   5.2 (1) A person may apply to the Registrar for an extension of time in which to file a notice of opposition.
   (2) An application for an extension of time may be made within the (three month) period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:

   (a) an error or omission by a trade marks officer;
   (b) an error or omission by the person applying for the extension of time, or by the person’s agent;
   (c) circumstances beyond the control of the person applying for the extension of time;

   (Paragraphs d and e, which might otherwise provide additional grounds, are excluded by the action of sub-regulation (3))

   (3) If the period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragraph (2) (a), (b) or (c) and on no other ground.

3. The prospective opponent’s request for more time was filed one day after the end of the three month opposition period set out in regulation 5.1.  With this flaw in mind, the prospective opponent’s attorneys, Ahearn Fox, have sought to bring the extension of time request within the scope of reg 5.2(2)(b) or (c).  In support of that request, Mr Ian Tannahill, a patent attorney of Ahearn Fox, has made a declaration to set out the facts on which the prospective opponent sought to rely.  This declaration was to the effect that on December 3, at 10.05 am, his office, which is in Brisbane, had received an instruction to oppose the registration of the trade mark.  That instruction arrived by facsimile and the time and date of receipt are visible on the instruction, a copied portion of which is exhibited to his declaration.

4. Mr Tannahill, in a letter supporting the extension of time, has said that the late filing was caused by circumstances beyond his firm’s control and/or was caused by an error or omission in the office of the American attorneys who instruct Ahearn Fox in the matter.  Mr Tannahill was of the opinion that the sending of instruction by fax on the last day of the opposition period (as determined by the time zone in the USA) was necessarily an error on the part of the instructing attorneys.

5. Ms Klippan, a Senior Examiner of the Hearings Section has considered this declaration, and responded as follows:

   I have considered the information contained in the supporting declaration made by Ian Tannahill.  However, in the case of a late application for extension of time to file notice of opposition, the supporting declaration should be made by the person who made the error/omission.

6. This, in my view, was a correct approach.  There might be circumstances where this is difficult, as when the person who made the error is unavailable, later, to give evidence.  But, difficult or not, the responsibility for establishing the facts with sufficient certainty rests with the extension of time applicant and second-hand evidence can carry little weight.  In the current matter, it is hard to see how Mr Tannahill could give cogent evidence about facts said to have existed in a lawyer’s office in the United States of America at a time when he was not present.  It would have been unreasonable, I think, for the senior examiner to have put sufficient weight on Mr Tannahill’s evidence as to conclude that the grounds set out in reg 5.2(2) had been met.

7. Nor is the reference to the circumstances as being beyond the control of Mr Tannahill’s firm at all relevant. There is authority in relation to s 131 of the former Trade Marks Act 1955 on this point[1].  No doubt it is for this reason that the wording of the regulation itself distinguishes between “an error or omission by the person applying for the extension of time, or by the person’s agent” for the purposes of paragraph (b) and, for (c), “circumstances beyond the control of the person applying for the extension of time”.  It may well be that circumstances that were outside the control of Ahearn Fox, the agent, would still not entitle the prospective opponent, being the person applying for the extension, to such an extension.  For example, if the prospective opponent had simply failed to give instructions until too late, this would clearly be a circumstance beyond the control of Ahearn Fox but no extension would be grantable.

   [1] Atomic Skifabrik Alois Rohrmoser v Registrar Of Trade Marks – (1987) 7 IPR 551: “in s 131(1)(a) of the Trade Marks Act there is indicated only the person in whose name the step is to be taken or the act done”

8. The prospective opponent has requested a hearing.  Trossart was advised of the date of the hearing but has neither appeared nor made any written submissions.

9. Just prior to the hearing, Mr Tannahill filed a declaration by Lawrence Abelman, an attorney in the American firm that instructed Ahearn Fox in the matter.  Mr Abelman has declared that he has knowledge of the business of his firm and of its records.  He goes on to declare:

   The late filing was due to a docketing error of the opposition date in the United States.  The docketing system inadvertently failed to recognize that Australia is a “day later” because of the differences in time zones.  Upon receiving instructions I immediately instructed Ahearn Fox to file the Opposition on behalf of (the prospective opponent). 

10. Mr Abelman goes on to say that he sent the letter to which Mr Tannahill refers.  He states his understanding of how the firm of Ahearn Fox was late in filing the notice due to the time difference preventing receipt of his instruction in sufficient time to respond.  Interlacing this with Mr Tannahill’s earlier declaration, I have already noted that the instruction was received at 10.05 am on the first day after the end of the time period.  The time in New York, where Mr Abelman’s office was located, was then 7.05pm.

11. Mr Abelman has not expressly said that the docketing system to which he refers was that of his own firm.  His wording arguably skirts the issue quite deliberately.  Just as Mr Tannahill attempted to give evidence about events in the United States, Mr Abelman’s apparent refusal to identify the location of the erroneous records may suggest that he in his turn was, perhaps, attempting to give evidence about an error in his client’s office.  His declaration goes on to refer to the late filing as an “omission” by his firm.  Unless the docketing failure to which he refers was one that was under the control of his firm, this acceptance of responsibility for the failing would have no meaning at all.  It would perhaps be open to me to accept that Mr Abelman, in accepting responsibility, has demonstrated that there was an error or omission within his firm and that this was the cause of the late filing in Australia.

12. This, however, is not the appropriate course.  I am required to be satisfied that the necessary causation exists.  It is not sufficient for Mr Abelman to accept responsibility; he is required to demonstrate that the facts of the case amount to sufficient cause as to authorise the grant of the extension.  Mr Abelman has not done this, nor has he explained how anything to do with a docketing error in his office caused the instruction to Mr Tannahill to issue at, apparently, 7.05 pm on the very last day.  It cannot have escaped Mr Abelman’s notice that he himself was leaving it until very late to instruct any firm, even if it was in the United States, to oppose.  Mr Tannahill would have it that the docketing system alone is responsible for all of the delay but I do not think that this is necessarily so.

13. At this point, I note a second crucial problem with the case.  Mr Abelman’s declaration has glossed over any distinction between the “docketing system” and the receipt of instructions to oppose.  The docketing system I take to be some sort of diary system, designed to ensure that necessary actions are taken on time.  Instructions, however, are more formal and involve the authorisation, by a client or by someone acting for a client, of actions of significance.  Even if I assume that the docketing system was within Mr Abelman’s firm, I still need to make the assumption that, when Mr Abelman refers to “receiving instructions” he means “being alerted by the docketing system to the fact that his firm had already been instructed to oppose and that he should therefore now do so”.  That seems to me to be too much of a leap of faith.  I am not prepared to make such a significant but unsupported assumption.

14. When I put some of these difficulties to Mr Tannahill at the hearing, he noted that Mr Abelman had previously made an allegedly comparable error in the matter of another trade mark.  He noted that, in that case, Mr Abelman had given a more full explanation of the circumstances.  Mr Abelman, in the other matter, explained how “errors” were made in both the filing and docketing departments of his firm, and states the date on which the instruction to oppose was received.  Mr Tannahill argued that I should read the present declaration as being just another and analogous error under similar circumstances.  However, I think it would be more appropriate to say that the lack of detail from Mr Abelman is significant in the present case. 

15. Accordingly, I am not satisfied that the ground of extension under reg 5.2(2)(b) has been established.  I refuse to grant the extension of time and the trade mark therefore appears to be in order for registration.

    Terry Williams
    Hearing Officer
    Trade Marks Hearings
    29 April 2005