Agro-K Corporation v Ag Direct Sales Pty Ltd & Sumitomo Australia Ltd

[2001] ATMO 101

TRADE MARKS ACT 1995

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

Re:Objection by Ag Direct Sales Pty Ltd and Sumitomo Australia Ltd to an Application by Agro-K Corporation for an extension of time to file a notice of opposition to registration of trade mark application 784636(1) - Vigour.

Background

On 4 February 1999, Ag Direct Sales Pty Ltd and Sumitomo Australia Ltd ("ADS & S") filed at the Trade Marks Office ("the Office") a joint application for the registration of the trade mark Vigour in class 1 for Fertilisers, fertilising preparations, manures, soil conditioning chemicals and agents, soil improvement chemicals and agents and trace elements.  Their application was assigned number 784636.  Following examination, it was advertised accepted for registration in the Official Journal of Trade Marks ('the Official Journal") on 1 March 2001.  The advertisement included the following endorsements:

Provisions of subsection 41(5) applied.
Provisions of paragraph 44(3)(a) applied.

These endorsements indicate that application 784636 had encountered at least two grounds for rejection under the Trade Marks Act 1995 ("the Act") at the examination phase.  The inference was that the application had only proceeded to acceptance following provision, by ADS & S, of satisfactory evidence of use and/or other circumstances (s 41(5)), and of honest use concurrently with at least one conflicting trade mark application or registration (s  44(3)(a)). 

From 1 March 2001, there was a period of three months, to 1 June 2001, during which any person might file either a notice of opposition to registration, or an application to extend the time for that purpose. 

On 23 May 2001, Agro-K Corporation ("Agro-K"), an American corporation based in Minneapolis, acting through its Perth attorney, Mr Rolf Van Wollingen, of Griffith Hack, filed a request for a copy of the contents of the accepted file.  I have made some enquiries as to the Office process for handling requests under the Freedom of Information Act 1982 ("the FOI Act"). It appears that, until 11 April 2001, there had been a routine seven-day turnaround on them. Effective from that date, the process was changed to a quite lengthy consultation process, to comply more closely with the provisions of the FOI Act. There seems to have been no public announcement of this change.

On 31 May 2001, again through Mr Van Wollingen, Agro-K filed an application to extend the time for filing notice of opposition.  The extension requested was for one month only, to 1 July 2001.  It was not granted until 23 July 2001, because there was a procedural delay - the declaration accompanying the application had not been witnessed ("Van Wollingen 1A").  This was rectified in a properly made declaration, dated 18 June 2001 ("Van Wollingen 1B"). Paragraphs 2-4 of the declaration stated:

AGRO-K Corporation are the owners of the trade mark Vigor Cal in relation to fertilisers and fertilising preparations.  Products manufactured by AGRO-K Corporation and bearing the trade mark Vigor Cal have been sold in Australia for several years.

I was recently instructed by AGRO-K Corporation to conduct a trade mark availability search in Australia, prior to filing an application for registration of the trade mark Vigor Cal.  The results of the search were reported to the Australian distributor for AGRO-K Corporation on 18 May 2001.  One of the trade marks located in the search was [..] trade mark No. 784636 (Vigour) [..].

AGRO-K Corporation have indicated that they wish to oppose the registration of trade mark No. 784636, as it may conflict with their proposed use and registration of the trade mark Vigor Cal in Australia.  However, before lodging a Notice of Opposition, further time is required to undertake further research to decide whether an opposition is justified.  In particular, investigations need to be made as to the extent of the use of the trade mark Vigour by Ag Direct Sales and Sumitomo Australia Ltd. 

ADS & S did not object to the grant of the extension when given the opportunity to do so.

On 29 June 2001, Agro-K filed another application to extend the time.  This application requested a further two months, to 1 September 2001, within which to file a notice of opposition.  This second application for extension is the subject of the present hearing.

The circumstances in which the extension to 1 September is being sought are set out in a statutory declaration made by Rolf Van Wollingen ("Van Wollingen 2") on 29 June 2001.  As mentioned above, and as shown by Exhibit RVW1 to Van Wollingen 2, his firm had filed an urgent request, dated 23 May 2001, that the Office should:

...provide us with copies of the file contents for [trade mark application 784636], including the following documents:

(i)      the Application Form and all Examiner's Reports issued on the application;

(ii)     any evidence lodged in connection with the application, including Statutory Declarations; and

(iii)     any other documents relating to the prosecution of the application

If any of the above documents are only available under the Freedom of Information Act (FOIA), we request you provide us with such information in accordance with the provisions of the FOIA....

As shown by Exhibit RVW2, a Trade Marks officer responded to this request by letter dated 21 June.  This letter said:

We have completed the consultation process with the trade mark owner/ or their agent.  The delegate has made a decision and the trade mark owner has been advised of that decision and now has a statutory period of 30 days in which to seek an internal review if they do not agree with what has been decided.

If the owner does not respond within 30 days, the material will be forwarded on to you.

Accordingly, I hope to send you the FOI documents that you seek as soon as possible.  This should be after 21 July 2001, depending on the final outcome.

If the owner of the marks seeks to have an internal review, you will be notified again of this decision.

By routine notice dated 2 August 2001, the Hearings section advised ADS & S that it had 14 days in which to object to the grant of the extension to 1 September 2001.  ADS & S, through its attorneys, responded to the notice on 13 August 2001, exercising its right to request a hearing.

On 31 August 2001, Agro-K, through its attorney, submitted a notice of opposition.  It also paid the prescribed fee for attendance at the hearing. 

The matter came before me, as delegate of the Registrar, on 20 September 2001.  The hearing was conducted from Canberra, with the representatives of both parties appearing by telephone conference call from Perth.  Mr Richard McCormack, of Counsel, instructed by Wray & Associates, patent and trade mark attorneys, appeared for ADS & S.  Mr Rolf Van Wollingen appeared on behalf of the extension applicant, Agro-K.

Submissions

Mr McCormack urged on me the central importance of "reasonableness" in the application of the regulations.  As I understood his submissions, the gist of ADS & S's objection to the further extension was that the ground of "circumstances beyond the control of the applicant or its agent" had not been made out, particularly because the applicant had not shown in its extension applications the necessary intention to file a notice of opposition.  Nor, in his submission, had it given sufficient information about the progress of its investigations into the extent of use and why it had been unable to file its notice within the statutory period.  Finally, he submitted that, if the extension were granted, the prospective opponent should not be allowed to benefit from any additional information it obtained during the further time.  Instead, the notice should be restricted to grounds of opposition which arose only from its investigations through the FOI request.  (I will state here that I am at a loss to see how this could be done, as a practical matter, or what criteria I should apply.)

For his part, Mr Van Wollingen said that I must have regard to the scheme of the provisions as a whole, and that the effect of the operation of regulation 5.2(d) and (e) could not be disregarded in assessing what was reasonable.

I will refer further to the submissions of both parties in the course of this decision.

Reasons

The Law

An extension of time to file notice of opposition under the Trade Marks Act 1995 is governed by the provisions of regulations 5.1 through 5.4, which read as follows:

Time for filing notice of opposition

5.1 For the purposes of subsection 52(2) of the Act (which deals with notice of opposition), the period for filing a notice of opposition is 3 months from the day on which the acceptance of the application is advertised in the Official Journal.

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 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;
(d) the conduct of genuine negotiations between that person and the applicant for registration;

(e) the undertaking of genuine research to decide:

(i) whether opposition is justified; or
(ii) on the grounds of opposition.

(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.

Extension of time for filing—applications

5.3 An application for an extension of time in which to file a notice of opposition must:

(a) be in an approved form; and

(b) be accompanied by a declaration stating:

(i) the facts on which the grounds specified in the application are based; and

(ii) if the period for filing a notice of opposition has ended—the reason why the application was not made before the end of that period.

[NOTE: Regulations 21.6 and 21.7 deal with making and filing declarations.]

Extension of time for filing—grant of extension

5.4 (1) Subject to subregulations (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition, the Registrar must grant the extension of time.

(2) The Registrar must not grant the extension of time, unless the Registrar:

(a) is reasonably satisfied that the person applying for the extension of time has served a copy of the application, and the accompanying declaration, on the applicant for registration of the trade mark; and
(b) has given to both the person applying for the extension of time and the applicant for registration of the trade mark a reasonable opportunity to make representations concerning the application for extension of time.

(3) For the purposes of paragraph (2)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(4) If an application for extension of time is made after the period for filing a notice of opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period.
(5) An extension of time must be for such period:

(a) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (a), (b) and (c)—as the Registrar believes is reasonable; or
(b) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (d) and (e)—not exceeding 3 months as the Registrar believes is reasonable.

Reg 5.3 governs the form of an application to extend the time.  It seems to me to be inherent in the terms of reg 5.3(b)(i) that an extension application under reg 5.2, to meet the requirements of reg 5.3(a) as to form, should ideally specify the grounds on which the application is made, as well as being supported by a declaration as to the facts which underpin the ground/s specified in the application.

The time-frames which apply were considered in Chiron Corporation v Registrar of Trade Marks (1998) 42 IPR 75, which was an application under s 5 of the Administrative Decisions (Judicial Review) Act 1977 .  In Chiron, at 81, her Honour Branson J said:

Regulation 5.2 allows a person to apply to the registrar, at any time before the trade mark is registered, for an extension of time within which to file a notice of opposition. However, more extensive grounds may be relied on if an extension is sought at any early stage than if an extension is sought at a later stage. Regulation 5.2 (2) lists the grounds upon which such an application may be made “within the period for filing a notice of opposition referred to in regulation 5.1”. Regulation 5.2 (3) provides that only a limited number of the grounds set out in reg 5.2 (2) are available ‘‘[i]f the period for filing a notice of opposition has ended”. Senior counsel for the applicant appropriately conceded that the period referred to in reg 5.2 (3) must be the same period as that referred to in reg 5.2 (2), namely “the period for filing a notice of opposition referred to in reg 5.1”.

The period for filing a notice of opposition referred to in reg 5.1 is 3 months. Regulation 5.1 makes no mention of any extension of that period. Section 52 (2) of the Act provides that a notice of opposition must be filed within the prescribed period (ie the period prescribed by reg 5.1) or within that period as extended in accordance with the regulations (ie as extended by the registrar under reg 5.4). However, it would seem to fly in the face of the plain words of reg 5.2 (2) to treat “the period for filing a notice of opposition referred to in reg 5.1” as including any extension of that period granted pursuant to reg 5.4 in a particular case. The words “referred to in regulation 5.1” must be given some work to do: they are calculated, in my view, to limit the period within which the grounds set out in reg 5.2 (2) (d) and (e) may be invoked by an applicant for an extension of time within which to file a notice of opposition. That is, they are intended to impose a temporal limit on the extent to which the processing of an application for registration may be delayed by negotiations between an applicant for registration and a potential opponent to the registration, or by the undertaking of research by a potential opponent to the registration.

Where an application for extension is made outside the initial three months period, it is only allowable if the applicant has made out at least one of the grounds still available to it under regulation 5.2(a),(b) or (c).  By the same token, the relevant date is the date of expiry of the statutory period, and not the date of expiry of the extended period.

The terms of reg 5.4(1) allow the Registrar no discretion to grant or not to grant an application.  (See Re Application by Working Systems Software Pty Ltd (1997) 39 IPR 387 and again in Meath, supra, at 158-159).  The tests of relative inconvenience to the parties concerned and the public interest, which were factors that the Registrar could take into account in exercising his discretion under the previous Act, are no longer relevant.  If sufficient reasons are provided as to why the notice of opposition has not been filed within the relevant period, and if a proper case has been made out justifying the extension, the Registrar must grant it.

Both reg 5.4(1) and (4) require the registrar to be reasonably satisfied as to the relevant matters.  In Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 504, Branson J said:

Where the Act requires the Registrar to be 'satisfied' of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities: Rejfek v McElroy (1965) 112 CLR 517; at 521. That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

I also refer to Briginshaw v Briginshaw(1938) 60 CLR 336. In his judgement on that case, Dixon J (as he then was) discussed the level of proof required in civil proceedings. In this context his Honour stated, at 362:

But reasonable satisfaction is not a state of mind that is attained or established independently of the nature and consequence of the fact or facts to be proved.  The seriousness of an allegation made, the inherent unlikelihood of an occurrence of a given description, or the gravity of the consequences flowing from a particular finding are considerations which must affect the answer to the question whether the issue has been proved to the reasonable satisfaction of the tribunal.  In such matters "reasonable satisfaction" should not be produced by inexact proofs, indefinite testimony or indirect inferences.

I understand reasonably satisfied to mean that I must be satisfied on reasonable grounds, sufficiently well-demonstrated, and on the balance of probabilities.

It is well-established that the onus is on an applicant for extension to justify its need for additional time.  In Vangedal-Nielsen v Smith (1980) 33 ALR 144; 49 FLR 44, which was a decision in relation to an extension of time to lodge notice of opposition under the Patents Act 1952, Bowen CJ held that it was wrong to grant an extension application simply because no one had raised exceptional circumstances why it should not be granted. 

It is also well-established that, where an application to extend is not made until after the opposition period has expired, the applicant must establish that it had formed, within that period, an intention to file notice of opposition.  The applicant must also show that the intention was thwarted, and demonstrate a causal relationship between the chain of events that occurred and the failure to file the notice.  (See Stork Pompen BV v Weir Pumps Ltd (1988) 11IPR 542 and Re Application by Mission Personnel Services Pty Limited (1998) 42 IPR 255). These principles hold good irrespective of whether the matter at issue falls for consideration under reg 5.2(2)(a), or (b), or (c), or under a combination of these provisions.

The matter particularly at issue here is that of "circumstances beyond the control of the person applying for the extension of time", as provided by reg 5.2(2)(c).  In Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1988) 7 IPR 551 at 558, Jenkinson J 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 designate 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....The section is, I think, correctly described as a force majeure provision.

While his Honour was discussing an extension of time for notice of opposition under s 131 of the Trade Marks Act 1955, the question that was there addressed was held by the delegate in Re Meath and Another (1997) 40 IPR 150 at 156 to be directly applicable to the provisions of paragraph 5.2(2)(c) of the regulations to the 1995 Act.

However, I do not think it is possible or appropriate to ignore the circumstances created by the existence of an extension of time, validly granted under reg 5.2(2)(d) and/or (e), when a further extension is sought under reg 5.2(2) (a), (b) and/or (c) within the extended time allowed.  What may show "intention", particularly, must be seen in the context of the existence of such an extension.  Nevertheless, the facts on which the extension application are based must be revealed sufficiently if the Registrar is to be able to make a favourable assessment of the application.  "Full and frank disclosure", required under a comparable Act and regulations to ensure the decision maker could properly exercise a discretionary power (per Justice Jenkinson in Kimberly Clark Ltd v Commissioner of Patents and Anor (1988) 13 IPR 569 at 582-584), remains crucial to the establishment of a case under reg 5.2 (2)(b) and/or (c).

Discussion

The regulations require me to consider

·    the form of the application (reg 5.3),

·    whether sufficient reasons have been provided for the extension application not having been filed within the relevant time (reg 5.4(4), and

·    whether a proper case has been made out, justifying the grounds on which the extension is sought (reg 5.4(1).

Form of the application

The present application does not specify the grounds on which the application is based.

The matter of form was touched on very briefly by Mr McCormack in his submissions on behalf of the trade mark applicants, in the context of ascertaining that the extension applicant was relying solely on the ground, allowed by reg 5.2 (2)(c), of circumstances beyond the control of the person applying for the extension of time or by the person's agent. 

It is the current practice of the Hearings Support Unit to accept such applications as substantially conforming with reg 5.3, if at least one of the available grounds appears obvious from the supporting declaration.  I think this is a practical and efficient way of applying the provision.  So long as the application includes a declaration as to the facts, making out a prima facie case for allowing the extension under an available provision, the Registrar will treat the application as entitled to consideration.

I find no reason to fail the application under reg 5.3.

Whether sufficient reasons have been provided for the extension application not having been filed within the relevant time (reg 5.4(4))

The initial matter for consideration here is the extension applicant's intentions at the relevant date of 1 June.  The clearest statement about this is found in Van Wollingen 1A (31 May 2001) and 1B (18 June 2001), para 4.  That paragraph begins:

AGRO-K Corporation have indicated that they wish to oppose the registration of trade mark No. 784636, as it may conflict with their proposed use and registration of the trade mark Vigor Cal in Australia. 

Agro-K itself has given no direct evidence as to its intentions or state of mind at the relevant date.

In his application for a copy of the file, dated 23 May 2001, Mr Van Wollingen wrote:

[Trade mark 784636] has recently come to our client's attention, and it is considering whether or not to file a Notice of Opposition to the registration of the trade mark.

Does the difference in wording mean that between 23 and 31 May the potential opponent's intentions became more settled?  There is no explanation.

So the question here is whether the statement made in paragraph 4 of the document filed on 31 May 2001 is enough to satisfy me of the applicant's intentions as at the relevant date. 

In considering this question, I have taken into account all the circumstances of the case.  I have paid due regard to such decisions as Kimberly Clark (supra) (1988)13 IPR 569 and Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997)38 IPR 595, as to what constitutes sufficiently full and frank disclosure in respect of late-filed applications.  Clearly, the extension applicant's intention was contingent on the outcome of its research.  Mr McCormack put it to me that if the intention was contingent on the outcome of its research, it was not a settled intention to oppose. Mr Van Wollingen, in response, noted that the question of a late extension being granted where the intention had been contingent on the outcome of negotiations was considered by the delegate in Cognotec Limited v Cognos Incorporated (2000) 49 IPR 630. In that decision, Senior Examiner Edlington found that "an intention to oppose may be contingent on many factors" without thereby failing the tests set out in Stork Pompen, supra.  She pointed to Meath supra, as another instance where the delegate had come to a similar conclusion.  I note that both Cognotec and Meath concerned late applications.  The evidence before the respective decision makers was more comprehensive and the case establishing the applicant's intentions was, I think, more compelling.  That was certainly appropriate where the application was unequivocally late, and was not a further application, made within the time as extended. 

After careful consideration, I think that the terms of the regulations must mean that an intention to file notice of opposition may be a settled intention even though it is stated to have been contingent on the outcome of one or more of the reasons for which the applicant sought the original extension of time.

In all the circumstances, I think it is not unreasonable to conclude that the extension applicant had the requisite intention to oppose within the prescribed period of three months after the advertisement of acceptance.

The second matter at issue under reg 5.4(4) is whether the reasons provided establish why the second extension application was not filed within the relevant period.  I am reasonably satisfied on the facts that the reason was, quite simply, that an extension was sought during the relevant period - an extension of only one month.

Whether a proper case has been made out, justifying the grounds on which the extension is sought (reg 5.4(1)).

The first issue here is whether the failure to file a notice of opposition, within the extended period originally granted, has been shown to fall within the scope of reg 5.2(2)(c).

I am inclined to think that an unprecedented response from the Office to a routine request for information must constitute an action by a third party of the kind contemplated by Jenkinson J, supra.  It was indeed an occurrence which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent.  However, it is not clear that this circumstance resulted in the failure to file the notice of opposition.

The extended time of only one month was insufficient for the extension applicant to obtain the information sought, consider whether opposition was justified, and file the notice of opposition as intended.  Regulation 5.4(5)(b) allows up to three months for an extension under paragraph 5(2)(e).  It might have been more prudent for the extension applicant to have applied initially for a longer period.  Nevertheless, I think the first extension request may be viewed as the practical expression of Agro-K's intention, at the relevant date, of completing its enquiries and filing notice of opposition with minimum delay.  It was a reasonable, albeit somewhat risky, plan. 

Agro-K's failure to file notice of opposition when its plan went awry was not, however, caused by the actions of the Office.  When the Office letter of 21 June came to Mr Van Wollingen's attention, shortly before the end of the extended period, he could have filed a notice of opposition.  Instead, he chose to apply to further extend the time.  It was a risky option, but I can only infer, on the facts before me, that it was a deliberate decision.

I do not consider that Agro-K has shown that circumstances beyond its control prevented it from filing a notice of opposition in the period between 21 June and 1 July 2001.  Even though it had been prevented from completing its research, it was not prevented from filing the notice.  A choice was made.

As mentioned previously, Agro-K's intentions and the actions and decisions of its agent have not been set out clearly in the declarations or, for that matter, in the submissions made at the hearing. While I believe that accessing a trade mark application file under the FOI Act may be one of the most efficient (and, I might add, economical) methods of obtaining information relevant to a possible opposition proceeding under the Trade Marks Act, insufficient information has been provided for me to be satisfied that it was vital for Agro-K to have an additional two months for its research before it could file notice of opposition.

I conclude that the ground on which the application was made has not been made out.  On the facts and submissions provided by the extension applicant, I can see no other ground for allowing the extension. 

Conclusion

Although I am reasonably satisfied as to the reason this extension application was not sought within the relevant period, I am not at all satisfied as to the grounds on which the extension application is based.

Decision

I refuse the extension of time application.

Costs

Both parties made submissions as to costs.  In my view, there is no reason why costs should not follow the event.  I award costs in this matter against Agro-K Corporation, in accordance with the official scale.

Arminel Ryan
Acting Hearing Officer

24 October 2001