Allied Pinnacle NSW Pty Ltd v Dingo Flour Mill Pty Ltd

[2018] ATMO 175

TRADEMARKSACT 1995

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

Re:Application by Allied Pinnacle NSW Pty Ltd (formerly named Allied Mills Pty Ltd). for an extension of time to file a notice of opposition to an application under section 92 of the Act by Dingo Flour Mill Pty Ltd to remove trade mark number 648892 (30) – DINGO and dingo device - in the name of Allied Pinnacle NSW Pty Ltd

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Ed Heerey of Counsel instructed by Gilbert + Tobin Lawyers Removal Applicant: Shauna Ross of Counsel instructed by Williams + Hughs Commercial and Litigation Lawyers

DECISION:

2018 ATMO 175

Regulation  9.11  application  for  extension  of  time  to  file  notice  of opposition granted.

Background

1. Allied Pinnacle NSW Pty Ltd (“the opponent”) is the owner of Trade Mark 648892 DINGO with dingo device, which had been registered for Class 30 goods since 19 December 1994. The details of the Trade Mark are as follows:

1. On 13 April 2017 Dingo Flour Mill Pty Ltd (“the removal applicant”) applied for the removal of the Trade Mark from the register on the basis of non-use. On 26 April 2017,  IP  Australian  sent  a  letter  to  the opponent’s  listed  attorney’s  in

accordance with the Address for Service and advised that an application for removal had been filed by the removal applicant. The opponent asserts that the listed attorneys did not receive that letter or any other notification of the application for removal.

1. The application was advertised by IP Australia on 27 April 2017 and the opponent had a period of two months from this date in which to oppose the removal application. However, no opposition was raised by the opponent by 27 June 2017 and the trade mark was duly removed from the Register on 12 July 2017.

1. On 17 July 2017 IP Australia wrote to the opponent and advised them that the Trade Mark had been removed from the Register for non-use. This correspondence is on the Official File and has been returned to sender unopened. The envelope bears the words ‘return to sender’.

1. On 10 January 2018 the opponent discovered that it had not received notice of the removal application and had missed the deadline to file a notice of opposition to removal. On the 15 January 2018 the opponent filed three trade mark applications being trade mark application no.(s) 1900248 DINGO FLOUR, 1900249 Dingo and Dingo device substantially identical to the Trade Mark, 1900250 DINGO.

1. On 26 February 2018 the opponent applied for a late extension of time to file Notice of Opposition to removal of the Trade Mark. On 12 March 2018 the opponent filed a Statement of Grounds and Particulars in support of its opposition to removal for non-use.

1. On 26 March 2018 a delegate of the Registrar advised the opponent via letter that she intended to refuse the opponent’s late extension of time request because the opponent had not adequately explained why it needed an extension of time and it did not provide any information about its failure to receive the IP Australia letter of 26 April 2017 which advised of the removal application.

1. The opponent provided additional information which the delegate considered sufficient to intend to grant the late extension of time to a file Notice of Opposition to the removal application.

1. On 11 May 2018 the removal applicant duly requested a hearing on the matter of the late extension of time to file a Notice of Opposition to removal for non-use. The parties filed evidence and provided written submissions.

Evidence

1. The opponent has filed with this Office a total of three declarations to support its late request for an extension of time and its opposition to removal. These declarations are as follows:

Declarant	Position	Date Made
Ms Johanna Campbell	General    Manager,    Marketing    and Insights of Allied Pinnacle Pty Ltd	26 February 2018
Mr Mario Sidone	Consultant employed by Dentons	29 March 2018
Ms Lisa Lennon	Partner of Gilbert + Tobin	9 April 2018

1. The removal applicant provided two declarations in support of its case. These declarations are as follows:

Declarant	Position	Date Made
Ms Magdalena Rousseau	Legal Practitioner at Willims + Hughs	11 May 2018
Mr  Mathew  Donald Walker	Sole Director of Dingo Flour Mill Pty Limited	11 May 2018

The Hearing

1. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 16 July 2018. The opponent was represented by Ed Heerey of Counsel instructed by Gilbert + Tobin Lawyers. The removal applicant was represented by Shauna Ross of Counsel instructed by Williams + Hughs Commercial and Litigation Lawyers.

The Law

1. Sections 91(1) and (2) of the Trade Marks Act 1995 (‘the Act’) provide that any person may oppose an application to remove a trade mark for non-use by filing a Notice of Opposition in the manner and form prescribed by the Act and within the

prescribed period. Regulation 9.7 of the Trade Mark Regulations 1995 (‘the Regulations’) provides that a Notice of Opposition is taken to be filed when the Notice of Intention to Oppose and the Statement of Grounds and Particulars have been filed under regulations 9.8 and 9.9.

1. Regulation 9.8(1) prescribes the period for filing a Notice of Intention to Oppose being two months from the day the application for removal is advertised in the Official Journal of Trade Marks. Regulation 9.9(1) provides that a Statement of Grounds and Particulars must be filed within a month of the Notice of Intention to Oppose.

1. In this case the relevant advertisement was 27 April 2017 which means that the opponent’s Notice of Intention to Oppose was due by 27 June 2017 and the Statement of Grounds and Particulars was, therefore, due one month later. As the hearing is about a late extension of time in which to file a Notice of Intention to Oppose I turn to Regulation 9.11 which provides for extensions of those deadlines in regulationss 9.8(1) and 9.9(1).

2. Regulations 9.11 and 9.12 provide:

9.11     Extension of time for filing—application

(1)A person who intends to oppose an application for removal may request the Registrar to extend:

(a)the period for filing a notice of intention to oppose under subregulation 9.8(1); or

(b)the period for filing a statement of grounds and particulars under subregulation 9.9(1).

(2)A request under paragraph (1)(a) or (b) may be made within the period for filing the document in question.

Note:See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the consequences of making the request after the filing period has ended.

(3)The request must:

(a)    be in an approved form; and

(b)    be accompanied by a declaration stating:

(i)    the facts and circumstances forming the basis for the grounds; and

(ii)if the period for filing the notice of intention to oppose 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.

9.12     Extension of time for filing—grant

(1)The Registrar may grant a request under subregulation 9.11(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.

(2)However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request.

(3)The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.

1. Regulation 11(3)(b)(ii) makes it clear that an extension may be requested after the period for filing the Notice of Intention to Oppose has ended.

Discussion

1. There has been a lot of arguments entered into by the parties on this matter. The main contention has always been why the opponent was so delayed in opposing the application for removal for non-use or applying for an extension of time in which to do so. The sequence of events leading up to the opponent’s eventual filing of this late extension of time request is as follows:

·     A business transaction was finalised on 31 March 2017 that involved the purchase of shares in the opponent’s parent company Allied Pinnacle Pty Ltd which resulted in significant changes in the business for the opponent.

·     On 13 April 2017 the removal applicant applied for the removal of the Trade Mark from the register on the basis of non-use.

·     On 26 April 2017, IP Australian sent a letter to the opponent’s listed Address for Service and advised that an application for removal had been filed by the removal applicant.

·     On 27 April 2017, the application was advertised by IP Australia and the opponent had a period of two months from this date in which to oppose the removal application. However, no opposition was raised by the opponent by

27 June 2017 and the Trade Mark was duly removed from the Register on 12 July 2017.

·     On 5 July 2017 Hannah Reid, a solicitor at Dentons, sent an email to Robert Lee (of Allied Pinnacle Pty Ltd) regarding the opponent’s trade marks. The email was titled ‘Trade Marks for Allied as at July 2017” and contains the Trade Mark with its status being “Registered”.

·     On 17 July 2017 IP Australia wrote to the opponent and advised them that the Trade Mark had been removed from the Register for non-use. This correspondence is on the Official File and has been returned to sender unopened. The envelope bears the words “return to sender”.

·     On 30 August 2017, Gilbert + Tobin was instructed to take over management of the opponent’s trade mark portfolio. As part of that process, Gilbert + Tobin received two schedules prepared by two different firms (Dentons and Allens Linklaters) setting out the status of over 60 applications and registrations in the opponent’s portfolio. Both of these schedules prepared by Dentons and Allens Linklaters identified the status of the Trade Mark as simply “registered” with renewal due on 19 December 2024.

·     On 30 November 2017, Ms Lennon met with Ms Campbell to discuss the portfolio and trade marks of interest including the Trade Mark. As a follow up to the meeting, Ms Lennon’s junior lawyer Alexia Marinos Bender identified four other trade mark applications that were the same/very similar to the Trade Mark and appeared to be filed in the name of one of the opponent’s companies “Great Southern Flour Mills Pty Ltd”.

·     In December 2017, Gilbert + Tobin mistakenly mistook those four applications as belonging to the opponent given that they were for the exact same trade marks as the opponent believed it currently had registered and they were filed in the name of a company bearing a name so similar to Great Southern Flour Mills Ltd (one of the opponent’s predecessors).

·     Acting on the mistaken belief, on 20 December 2017, Gilbert + Tobin filed an application  with  IP  Australia  to  change  the  address  for  service  on  those

applications to Gilbert + Tobin. This is later what led to direct correspondence between Gilbert + Tobin and the removal applicant’s solicitor, Williams + Hughes which revealed that the entity “Great Southern Flour Mills Pty Ltd was not a predecessor of the opponent opponent and had applied for those four trade marks.

·     On 10 January 2018 Gilbert + Tobin consolidated all the information on the opponent’s portfolio of trade marks and determined that there was a potential problem regarding the Trade Mark.

·     On 15 January 2018, Ms Campbell instructed Gilbert + Tobin to file= new trade mark applications as an interim measure to protect the opponent’s interests in the Trade Mark while it explored restoration of the Trade Mark.

·     On 16 February 2018 Ms Campbell contacted Samantha Walker, a solicitor at Dentons, to ask why the Trade Mark had been removed for non-use.

·     On 19 February 2018, Ms Walker advised that Dentons had never received the correspondence from IP Australia advising of the application for removal for non-use. She also advised that IP Australia had correspondence on file marked ‘returned to sender’ and they were unclear why since the address was correct.

·     On 19 February 2018, Ms Campbell instructed Gilbert + Tobin to make the current extension of time application in order to oppose the removal for non- use.

·     On 26 February 2018 Gilbert + Tobin applied for a late extension of time to file Notice of Opposition to removal of the Trade Mark.

·     On 12 March 2018 the opponent filed a statement of grounds and particulars in support of its opposition to removal for non-use.

1. Of further note is that the Trade Mark has been featured on the outside of the opponent’s heritage listed working flour mill at 111 Stirling Highway in North Freemantle, Perth, Western Australia since approximately 1940. The long-use of the Trade Mark has been recognized by the Heritage Council of Western Australia in 2008. The Heritage Council specifically identifies the Trade Mark in its report

on the heritage listing of the mill, still owned and operated by the opponent. According to the Heritage Council the dingo is an iconic figure of North Freemantle and why the mill is very often referred to as the Dingo Flour Mill1. The Trade Mark is appears on the mill in the color red and is over five stories high. Given the size of the Trade Mark and its prominence it was considered a security risk during World War ii and temporarily painted over. It was reinstated in 1946 and then restored in 2016.

1. Given all of the above information it is clear that the essence of the opponent’s case is that it has used its Trade Mark since 1940 and has always had the intention to oppose the removal action which was frustrated by the inexplicable loss of the notification from IP Australia about the removal application. This was further compounded by the opponent’s business changes and the portfolios of trade marks sent to the opponent by two (possibly three) separate legal representatives which listed the Trade Mark as ‘registered’.

1. I further note, on 13 April 2017 (same day the removal applicant applied for removal of the Trade Mark) the removal applicant filed application no. 1838549 to register the following trade mark for goods including flour in class 30:

2. The above trade mark is an identical copy of the opponent’s predesessor’s Australian Trade Mark no. 20970 filed on 6 January 1917 in respect of goods including flour. The opponent’s predecessor’s trade mark was removed in 2011 as the renewal fee was not paid. The below is the representation of that trade mark on the Register.

1 Exhibit JC-1 accompanying the Campbell declaration

1. Having regard to the evidence filed, and the submissions made, I am satisfied that the opponent had at the relevant time an intention to oppose any removal application filed against its Trade Mark, or at the very least it held ‘the intention to get in a position to be able to decide whether to oppose’2. I am also satisfied that through circumstances outside of its control its intention to oppose the removal application was frustrated by a number of errors which compounded to the point where the new legal representatives of the opponent understandably believed that

   the removal applicant’s trade mark applications belonged to the opponent, as evidenced by the fact they sought to rectify several addresses for service with IP Australia. The actions of the opponent in maintaining its Trade Mark on the mill in North Fremandle at considerable expense as well as its Heritage Listing also indicate an ongoing interest in the Trade Mark which belies the removal applicant’s assertion that the opponent’s failure to oppose removal was due to a lack of interest in the Trade Mark.

1. On the contrary, the evidence indicates that the opponent has prima facie grounds to oppose the removal of its Trade Mark from the register.

1. On the other hand, the removal applicant has argued that not all correspondence such the letter referring to the removal application being filed was ‘returned to sender’ so there is strong evidence that the opponent or at the least its legal representatives at the time, Dentons, would have been aware of the removal application. I am not persuaded by this argument.

1. It is clear that there has been correspondence related to the removal application returned to IP Australian unopened. There is a very high likelihood that for an

2 British Sky Broadcasting Ltd v SkyNetGlobal Limited [2003] ATMO 17

unknown reason the correspondence relating to the removal application was not received by the opponent’s legal representatives at the time (and certainly any information on the removal application not passed on to or received by the opponent) as demonstrated by the two separate Trade Mark portfolios given the opponent by two separate legal representatives which both listed the Trade Mark as ‘registered’. The opponent had no reason not to believe the validity of the Trade Mark portfolios provided to it by its legal representatives even though it is clear now that both trade mark portfolios were incorrect. The number of circumstances beyond the control of the opponent (mail not received by its legal representatives) and errors (trade mark portfolios not being kept up to date, changes not being checked or delay in checking details of the portfolio by legal representatives etc.) which lead to the opponent being unaware of removal application is considerable.

1. Either way, it is clear that the opponent always believed that the Trade Mark was registered with IP Australia and was deeply concerned when this proved not to be the case. Therefore, I am satisfied that there were at a minimum ‘circumstances beyond the control of the opponent’ for the purposes of regulation 9.11(4)(b) of the Regulations.

1. Having found that circumstances beyond the control of the opponent led to its failure to oppose within time, I am given, by the wording of the regulation, a discretion as to whether or not to allow the extension of time: see, for example, Cynthia Armaro3 at paragraph 16. In deciding how to exercise this discretion, I adopt the principles developed by Hearing Officer Michael Homann in Re Ausorb Pty Limited4, 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. See also Re Hall5, which also adopts those principles.

1. The opponent has lost the registration of its Trade Mark, while the removal applicant  has, as a consequence applied for registration of a number of trade

3 [2007] ATMO 9 (12 February 2007),

4 (1996) 36 IPR 178

5 (1998) AIPC 91-425 at 37,393-4

marks including the Trade Mark. There is a possibility that third parties would be affected by the opponent’s trade mark being restored to the register. On balance, it seems that the relative inconvenience would be to the opponent if the extension is not granted.

1. In Insfin Insurance + Finance Group Pty Ltd v Razor USA LLC6 Hearing Officer McDonagh considered a similar issue under s. 224 and stated:

There is undoubtedly a public interest in the system of registration of trade marks being conducted with regularity and certainty. There is also public interest in registered owners of trade marks who are in fact using their trade marks being able to continue to do so. I take guidance from the High Court:

In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be. Kaiser Aluminum & Chemical Corporation v. Reynolds Metal Co. [1969] HCA 7; (1969) 120 CLR 136, per Kitto J at paragraph 14.

1. Therefore, I am satisfied that I should exercise my discretion to allow the extension of time as requested by the opponent.

Decision

1. Pursuant to regulation 9.12 of the Regulations, I extend the time for Allied Pinnacle NSW Pty Ltd to file its notice of intention to oppose by eight months, in line with the opponent’s application for extension of time. This brings the notice of intention to oppose, filed on 26 February 2018, within this extended period. I note that this brings the statement of grounds and particulars, filed on 12 March 2018 into time as well.

1. As a result of the grant of this extension of time, the notice of intention to oppose will now be entered into our systems as having been filed in time. Once this is done, the statement of grounds and particulars will be assessed for adequacy.

1. I order that the parties bear their own costs in relation to this hearing.

Bianca Irgang

6 2008 ATMO 80

Hearing Officer

Trade Marks and Designs Hearings 30 October 2018