Aco Polycrete Pty Ltd v Krebar Pty Ltd - [2009] ATMO 95

TRADE MARKS ACT 1995

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

Re:Objection by Aco Polycrete Pty Ltd to application by Krebar Pty Ltd for an extension of time to serve and file evidence in support of its opposition to registration of trade mark application 1164611(6) - HEELGUARD - filed in the name of Aco Polycrete Pty Ltd

Delegate:

Alison Windsor

Representation:

Extension applicant: Andrew Fox of counsel, instructed by Griffith Hack, Patent and Trade Mark attorneys

Objector: Sam Park of SamPark & Co, IP Lawyers

Decision:

2009 ATMO 95

Regulation 5.15 – disputed application for extension of time in which to serve evidence in support – extension allowed – costs awarded against objector

Background

Aco Polycrete Pty Ltd (“Aco”) filed an application to register as a trade mark the word HEELGUARD for various goods in class 6. The application was examined in the normal course of events and in due course was accepted for possible registration. It was advertised as such in the Australian Official Journal of Trade Marks (“AOJT”) on 11 September 2008.
It is relevant to note here that the acceptance was made on the basis of the specific application of subsections 41(5) and 44(4) of the Trade Marks Act 1995 (“the Act”), and that the following endorsements appear on the application record on the electronic register:
Provisions of subsection 41(5) applied.
Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
The endorsements reflect evidence of use of the word HEELGUARD as a trade mark, and supplied by Aco to the examiner during the course of examination of the application. They refer to a claim by Aco that the application has been used in the relevant trade, and that it has been used prior to the application date of other earlier dated and similar trade marks on the register which were raised as grounds for rejection in examination reports.
On 11 September 2008, Krebar Pty Ltd (“Krebar”)[1] filed a notice of opposition (“the notice”) to the proposed registration, as provided for by section 52 of the Act. The notice was expressed in the widest possible terms, effectively nominating all available grounds of opposition.
[1] The trade mark file includes a notification dated 26 October 2009 that Krebar has changed its name to Paige Stainless Pty Ltd. For convenience sake, I will refer to the opponent as Krebar in the course of this decision.
On 11 March 2009, Krebar applied for an extension of time until 11 June 2009 in which to serve its evidence in support. The office allowed the application despite a lengthy document from Aco objecting to allowance of the extension request.
On 11 June 2009, Krebar applied for another extension of time, taking the date for serving its evidence up until 11 September 2009. Aco did not object to the application and the extension was allowed.
On 11 September 2009, Krebar again applied for another three month extension of time to file its evidence, taking the final date up until 11…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2009] ATMO 95
Decision Date: 26 November 2009

CaseChat Overview and Summary

Aco Polycrete Pty Ltd (Aco) sought a direction from the Registrar concerning the late service of evidence by Krebar Pty Ltd in opposition proceedings. The dispute arose when Krebar served two further declarations as part of its evidence in support, which arrived at Aco's office late on the afternoon before the hearing and were left with a neighbouring tenant as Aco's office was unattended. Aco's representative was out of the country and unaware of the service until the morning of the hearing.

The court was required to determine whether to grant a direction regarding the late service of Krebar's evidence. This involved considering the procedures for the service and filing of evidence in opposition proceedings, particularly in relation to applications for extensions of time. The court also had to assess the appropriateness of the Registrar giving a direction under regulation 5.16 of the relevant regulations, which requires the Registrar to be satisfied that parties have been notified, given an opportunity to make representations, and that the direction is appropriate.

The court referred to regulation 5.15, which permits applications for extensions of time for serving evidence, and regulation 5.16, which allows the Registrar to give directions regarding procedure. The court also noted Part 51, paragraph 3.3 of the Trade Marks Office of Practice and Procedure, which states that while the other party has a right to make representations, the onus remains on the applicant for an extension to justify the time sought. The Office has benchmark limits for extensions, which are not absolute but serve as guidance. The court considered that the late service of the declarations, arriving on the eve of the hearing and left with a neighbouring tenant, meant that Aco's representative was not properly notified and did not have a reasonable opportunity to consider the evidence before the hearing.

The Registrar granted Aco's request for a direction, effectively deeming the service of the two declarations to be ineffective. This meant that Krebar would need to re-serve the declarations and potentially seek an extension of time, subject to Aco's right to make representations.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

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Evidence

Evidence Before The Court

Regulations 5.15 and 5.16 state:Reg 5.15. Extension of period to serve evidence and service of further evidence (1) A party to the opposition proceedings may apply to the Registrar: (a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or (b) for permission to serve a copy of further evidence on the other party. (2) The Registrar may grant an application on reasonable terms specified by the Registrar. (3) The Registrar must not grant an application unless the Registrar: (a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and (b) has given the parties a reasonable opportunity to make representations concerning the application; and (c) is reasonably satisfied that: (i) in the case of an application to which paragraph (1) (a) applies -- the extension of the period for serving a copy of the evidence; and (ii) in the case of an application to which paragraph (1) (b) applies -- permission to serve a copy of further evidence; is appropriate. (4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows. (5) If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period. (6) Subregulations (2), (3) and (4) apply to an application under subregulation (5). Reg 5.16. Conduct of opposition proceedings generally (1) The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings. (2) A direction given under subregulation (1) must not be inconsistent with these regulations. (3) The Registrar must not give a direction unless the Registrar: (a) is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and (b) has given the parties a reasonable opportunity to make representations concerning the proposed direction; and (c) is reasonably satisfied that the proposed direction is appropriate. (4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows. Much of the content of Aco’s submissions go to the Registrar’s procedures for dealing with the service and filing of evidence of use in oppositions, and in particular those surrounding applications for extensions of time for the purpose. I will set out the relevant procedures here. Regulation 5.15 makes it clear that extensions of time for the purpose of providing evidence are available to a party on application, under certain circumstances. These are set out in the regulation recited previously. The regulation does not, however, make specific reference to time frames for the purpose.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

Paragraph 3.3 of Part 51 of the Trade Marks Office of Practice and Procedure makes the following comments:3.3 Duration of extensionsThe regulations applying under the Trade Marks Act 1995 give the other party to an opposition the right to make representations about the extension sought. This may assist the Registrar’s delegates in assessing the case made.Nonetheless, the onus remains on an applicant for an extension to make a case for the time sought. The Trade Marks Office has set some benchmark limits to the accumulated time of these extensions. Such limits are not absolute but are intended for the guidance of applicants and their representatives. [emphasis added]These limits have been and will be reviewed from time to time. In 1994 the Trade Marks Office lowered the comparable limits under the 1955 Act. This was done to reflect the generally shorter time required to prepare evidence because of the wider use of facsimile transmissions to revise draft declarations, to serve evidence or to seek information. Such improvements in communication have continued and the benchmarks applied under the 1995 Regulations have been set with this in mind.The benchmark time limits generally correspond with the times at which the Registrar requires the applicant for extension to support its applications in declaratory form (see Annex A3).[2] They are as follows:· Evidence in Support or in Answer: Where the statutory three months, together with the extensions sought, amount to nine months or more in total, the Trade Marks Office will put both parties to an opposition on notice that compelling reasons will be required if further extensions are requested. . Applications for extensions of time beyond a total of twelve months should indicate when the process is intended to be completed. These benchmark limits may be extended by six months if negotiations are involved.· Evidence in Reply: Generally speaking, because such evidence is intended to be a reply to a known body of declarations, it can be expected to be easier to compile than was the evidence served in the earlier stages. Under the Trade Marks Act 1995, the benchmark limit for service of evidence in reply is set at a shorter time than that for evidence in support or in answer. Consequently, a warning will issue where the total sought, including the statutory period, is six months or more. Extensions beyond a total of nine months should indicate when the process is intended to be completed. These benchmark limits may be extended by three months if negotiations are involved.[2] I have attached Annex 3 as an appendix to this decision. When he arrived at the hearing venue, Mr Sam Park, representing Aco, advised me that he would be requesting that I provide a direction in respect of a matter which had arisen on the Friday before the hearing. I took submissions on this matter at the beginning of the hearing. Mr Park advised that Krebar had served two further declarations as part of their evidence in support. These declarations had arrived late on the afternoon of Friday 6 November 2009 and were left with a neighbouring tenant as his office was temporarily unattended. As he was out of the country at the time, Mr Park said, he was not aware that the evidence had arrived until he attended his office on Monday morning, the day of the hearing.