Amper S a v Ampex Corporation

[1994] ATMO 40

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application for an extension of time to serve evidence in support of an opposition by AMPEX CORPORATION to registration of trade mark applications numbers 487570 and 487572 in the name of AMPER, S.A.

Background

Applications numbers 487570 and 487572 were lodged on 23rd May, 1988, in the name of AMPER, S.A. (the applicant) and were for registration of the trade marks, respectively:

The acceptance of the applications was advertised in the Official Journal of 6th December, 1990, both for the statement of goods:

Apparatus and instruments for telephony, telegraphy and
                 telecommunications; telematic apparatus and equipment;
                 transmission and reception apparatus and instruments;
                 telephonic, telematic and telecommunication automatic
                 answering systems; apparatus and instruments for
                 regulators and regulator peripherals, for the electronic
                 management of data and information processing; integrated
                 hybrid and printed electronic circuits; parts and
                 accessories for the said products, in class 9.

Notice of opposition to the registration of the marks was lodged on 6th June, 1991 by AMPEX CORPORATION (the opponent).  The opponent's evidence in support was due to be served on 6th September, 1991.  It applied and was granted an extension of time to serve the evidence until 6th December, 1991 on the grounds that the opponent and the applicant were involved in world wide settlement negotiations.  Subsequently, the ongoing settlement negotiations were stated as basis for requesting further periods of extensions for three months each, all of which were granted.

In applying for the extension to 6th June, 1993, the opponent advised the office that the parties concerned had been close to settlement and the agreement required only some minor amendments, but that the attorney dealing with the applicant's matter had either left the company, or was no longer responsible for it.  In an application for an extension for a further period to 6th September, 1993, the opponent undertook to provide the Registrar with details of the state of the negotiation, if the settlement had not been reached.  Before the end of this period, however, additional time was required on the grounds that the negotiations had not yet been completed, and consequently additional time was required for the same purpose.  In an official letter of 8th September, 1993, the opponent was advised that as 18 months, or more, had already been allowed for the preparation of evidence, the stated grounds were not adequate and that the opponent was to be allowed 14 days from the date of the letter to provide further justification for the extension, or request a hearing.  In a reply of 19th October, 1993, the opponent's attorneys forwarded a copy of a letter from their instructing overseas attorneys, which advised that following a meeting of the two parties in New York, the applicant had forwarded a settlement proposal to the present opponent, which was not considered to be in accordance with the terms discussed at the said meeting.  Consequently, both parties had agreed to consent to the extensions necessary to resolve the conflict and amicably settle the matter.  These reasons were considered adequate to justify the required further time for serving the evidence in support.

When the opponent applied for a further period of three months to 6th March, 1994, again stating that the negotiations between the applicant and the opponent had not yet been completed, another official letter dated 6th December, 1993, was issued warning the opponent that in view of the previously allowed 30 months extensions, any further time beyond 6th March, 1994, may be refused unless very compelling reasons were provided, together with a definite timetable of when the negotiations were likely to be finalised.  In a letter of 3rd December, 1993, the opponent's attorneys explained that the parties were clearly actively working to a resolution of the world wide conflict and enclosed a copy of a facsimile from their instructing attorneys in New York, which lists dates of correspondence between both parties on the conflict, adding that the latest proposal from the applicant, dated 16th November, was currently being considered by the opponent.  These reasons resulted in the granting of the requested extension of time to 6th March, 1994.

None of the opponent's above applications for the extensions of time were opposed by the applicant.

In a letter of 7th March, 1994, in a further application for a three months extension, the opponent advised that every effort was being made to resolve the dispute, and a revised proposal for settlement had been forwarded to the applicant on 18th February, 1994.  To this request the Registrar responded on 22nd March, 1994, by advising the opponent that he intended to refuse the grant of any more time for service of the evidence in support unless within three weeks of the date of the letter the opponent requested to be heard in the matter.  Consequently, the opponent applied for a hearing, which was held in Canberra on 11th May, 1994.  The opponent was represented by Mr. Peter Pearson of H.R. Hodgkinson & Co., patent and trade mark attorneys of Sydney.  The applicant chose neither to appear nor present any submissions.

Submissions
After briefly covering the history of the applications for extensions of time, Mr. Pearson submitted that complications had been responsible for prolonging the settlement between the parties,  caused by disputes in various countries by one party opposing the other; this was particularly so in the United States of America where Amper, S.A. is opposing Ampex Corporation.  It had been decided that it would be in the best interests of both parties that there be a global settlement.  This decision had resulted in the failure to resolve the matter earlier in Australia. From the correspondence with the overseas associates, it was his belief that a settlement had been reached, although the agreement had not yet been made available.  He had also spoken to the applicant's attorney, who had confirmed the existence of an agreement which needed yet to be finalized.

Referring to the letter of 22nd March, 1994, which expressed the Registrar's intention to refuse the current request for further time, Mr. Pearson pointed out that whilst the Registrar has discretion in such matters, it would be in the public interest to resolve the conflict to avoid the necessity for opposition, or any further legal action.  Even though he did not know specifically when the matter would be resolved, it was certainly the opponent's as well the applicant's intention to do so as quickly as possible.

Decision
Paragraph (a) of Regulation 43 of the Trade Marks Regulations states:
                 43. An opponent shall:
                 (a)  serve on the applicant, within three months after the

notice of opposition has been lodged at the Trade Marks
                 Office, a copy of each of the declaration on which he
                 relies in support of his opposition.

Section 130 of the act reads:

Where, by this Act, a time is specified within which an
                 act or thing is to be done, the Registrar may, unless
                 otherwise expressly provided, extend the time either before
                 or after its expiration.

The criteria to be applied, when deciding applications for extension of time to lodge evidence in opposition proceedings, have been established in Vangedal-Nielsen and Another v. Smith (Commissioner of Patents ) and Another (1980) 33 ALR 144 and Lyons (trading as Mitty's Authorized Newsagency) v. Registrar of Trade Marks (1983) IPR 416. Based on the criteria considered in those cases, I think, in the present circumstances, the factors to be taken into account are: whether the applicant has made out a proper case justifying the extension, the public interest and the relative inconvenience to both parties, if the extension is allowed or refused.

If the current request for a further extension of time is granted, the opponent would have availed itself of thirty-six months within which to serve the evidence in support of the opposition.  In applying for the extensions of time the opponent has emphasized the necessity of a global settlement of the conflict between the parties.  According to the reasons stated for the extension of time request to 6th June, 1993, the parties encountered some difficulties in finalizing an agreement which required "some minor amendments".  However, from the instructing overseas attorneys' letters of 18th October, 1993, and 1st December, 1993, which accompanied the opponent's attorneys letters of 19th October, 1993, and 3rd December, 1993, respectively, it appears that the completion of the settlement had encountered problems following the meeting between the two parties in New York, which had taken place in November, 1992; however, since the meeting, the parties had engaged only in exchanging some correspondence dated 20th October, 1993, 9th November, 1993 and 16th November, 1993.  Even though some progress appears to have been made in the preparation of a revised settlement proposal forwarded to the applicant on 18th February, 1994, the opponent has failed to provide any evidence of its existence.  Given the exceedingly slow progress in settling the matter in question, which I understand to be a mutually satisfactory agreement to amend the statement of goods of the respective applications, the fact that the opponent has been unable to indicate with some certainty as to when the dispute is likely to be resolved, notwithstanding the official letters from the Registar expressing his concern over the excessive time in finalizing the matter, I do not believe that every effort has been made to finalize the matter.  As to the submission on the parties' desire to achieve a global settlement, I point out that whilst the Registrar may appreciate the enormous task of such an undertaking and the ensuing delays in the present proceedings, he is concerned only with the situation in Australia and "must give greater weight to the general public interest of effective, timely administration of [the relevant] provisions of the Act" - Re Application by Jonathan Sceats Design Pty Ltd 15 IPR 59 at page 61. Accordingly, the opponent has failed in presenting a reasonable case justifying the current extension of time.

With reference to the public interest, Mr. Pearson expressed the view that the resolution of the matter would be to its advantage, and I agree with him.  However, in the circumstances stated above, I believe that the interests of the public would be better served by a speedy resolution of the matter. 

Having considered the interests of the parties in question, I am aware of the fact that by refusing the current extension I could be responsible for denying the opponent an opportunity of supporting its claims by evidence.  It seems to me, however, that the opponent itself has been unable to demonstrate sufficient diligence and concern over its own interests by endeavouring to expedite the settlement negotiations to bring the matter to a satisfactory conclusion in Australia.  Despite the fact that the applicant did not object to any of the extension of time requests, registration of the present application is being delayed by the unreasonably long periods of extensions which, after three years, have failed to show positive results.  I consider therefore that even though the applicant's mark, if registered, will be protected from the date of application, the applicant should not be inconvenienced by further delays in having the matter decided at this juncture.

Conclusion
In light of my previous comments, I have decided that the reasons stated in the current application for the extension of time are insufficient to justify a further extension of time to serve evidence in support.  I find therefore that I must refuse to grant the sought after extension.  Having so found, and subject to any appeal from this decision, it would appear open to the applicant to seek a hearing in the matter under paragraph 49(2)(a) of the Trade Marks Regulations.

Vija Zars

Senior Examiner
26 May 1994