APN Newspapers Pty Ltd v AECgroup Limited - [2007] ATMO 41

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by APN Newspapers Pty Ltd for extension of time to file notice of opposition to registration of trade mark application number 1129372 in the name of AECgroup Limited

Delegate: Alison Windsor

Representation: Potential Opponent: Kellie Stonier and Jeremy Charlston of Clayton Utz, Lawyers, of Brisbane

Decision: 2007 ATMO 41
Late application for extension of time to file notice of opposition – application flawed – no grounds established – application refused.
Background

Trade mark application number 1129372 in the name of AECgroup Limited (“AEC”) was advertised as accepted for possible registration on 14 December 2006. The statutory three month period for opposition as allowed for by subsection 52(2) of Trade Marks Act 1995 (“the Act”) and set out in regulation 5.1 therefore ended on 14 March 2007.
APN Newspapers Pty Ltd (“APN”) applied for an extension of time to file a notice of opposition. The application was received by the Trade Marks Office (“the Office”) on 21 May 2007, almost ten weeks after the end of the statutory period. The application was filed on the Office form intended for applications for extensions governed by the provisions of section 224 of the Act. The reasons given were taken by the Office to be insufficient, resulting in a request for APN to provide more compelling reasons. A second declaration stated that the application was filed out of time because APN was not aware of the existence of the trade mark, nor of the applicable statutory opposition period.
A staff member at the Office wrote to APN advising she intended to refuse the request for extension of time, and allowed 14 days for APN to request a hearing in the matter. She gave the following reasons for refusing the application:
- A late application for an extension of time to file notice of opposition to the registration of a trade mark application may only be applied for under reg 5.2(2)(a),(b) or (c), not section 224 of the Act
- Although APN had filed two supporting declarations, they had not provided a full and frank explanation of the exact circumstances surrounding the failure to file a notice of opposition within the opposition period.
APN wrote requesting to be heard within the 14 days allowed. Enclosed with the letter was advice of the decision to formally mount an opposition, and a Notice of Opposition, accompanied by a declaration correcting and clarifying earlier information. Submissions in support of APN’s case formed the remainder of the letter.
The matter came before me as delegate of the Registrar on 2 July 2007 in Canberra. The hearing was conducted by telephone conference. APN was represented by Jeremy Charlston and Kellie Stonier of Clayton Utz, Lawyers, from Brisbane. AEC did not elect to appear or to file submissions.
Evidence and submissions
The succession of events surrounding APN’s application are set out briefly below:
·The final day for filing the notice of opposition was 14 March 2007.

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: [2007] ATMO 41
Decision Date: 18 July 2007

CaseChat Overview and Summary

This matter concerned an application by APN Newspapers Pty Ltd for an extension of time to file a notice of opposition to a trade mark application by AECgroup Limited. APN alleged that AEC had wrongfully appropriated the words "IN THE CITY," which APN claimed to have developed a reputation for through its publication "CityLife." APN sought to oppose AEC's trade mark registration, but the statutory period for filing a notice of opposition had expired. The application for an extension of time was heard by Alison Windsor, delegate of the Registrar, on 2 July 2007. AEC did not appear at the hearing or file submissions.

The primary legal issue before the delegate was whether APN had established sufficient grounds for an extension of time to file its notice of opposition, given that the application was made after the expiry of the statutory period. Specifically, the delegate had to determine if APN's circumstances met the requirements of regulations 5.2(3), 5.3, and 5.4(4) of the relevant trade marks regulations, which outline the allowable grounds for such extensions, including errors or omissions by a trade marks officer, the applicant, or their agent, or circumstances beyond the applicant's control.

The delegate reasoned that APN had not provided sufficient evidence to satisfy the requirements of the regulations. While APN's lawyers, Clayton Utz, attributed the delay to internal oversights and a failure to conduct timely searches of the trade marks register following receipt of AEC's response, the delegate found that these deficiencies did not constitute the type of error that would have thwarted an already existing intention to oppose. The delegate noted that there was no evidence that APN or its agents were aware of the true status of AEC's application until after the opposition period had closed, meaning there was no intention to oppose within the statutory timeframe. Consequently, the delegate concluded that APN had not established any allowable ground under the regulations or provided sufficient reason for the delay.

The delegate refused APN's application for an extension of time. The delegate acknowledged APN's belief in a genuine dispute but noted that AEC had paid its sealing fee and was entitled to expect registration due to the lack of opposition within the allowed period. AEC's trade mark application was therefore permitted to proceed to registration, subject to any appeal.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The matter came before me as delegate of the Registrar on 2 July 2007 in Canberra. The hearing was conducted by telephone conference. APN was represented by Jeremy Charlston and Kellie Stonier of Clayton Utz, Lawyers, from Brisbane. AEC did not elect to appear or to file submissions.Evidence and submissions The succession of events surrounding APN’s application are set out briefly below:·The final day for filing the notice of opposition was 14 March 2007.·On 4 April 2007 Clayton Utz, on behalf of APN, sent a letter to AEC accusing them of wrongfully appropriating the words IN THE CITY in which APN claimed to have developed a reputation via use as a banner headline in its publication “CityLife”. The letter made various demands for rectification actions, under threat of legal action.·On 17 April 2007, via its lawyers Wilson Ryan Grose, AEC responded advising that it did not intend to accede to any of APN’s demands; that it had registered the words as a trade mark on 14 August 2006; and that any objections by APN should have been made before the end of the opposition period which it said ended in November 2006. Clayton Utz did not confirm the application status and date information at this time.·On 17 May 2007, following contact from APN for advice about its options, Kellie Stonier of Clayton Utz conducted a search of the trade marks register and discovered that the application was not yet registered and that the correct date for the end of the statutory period was 14 March 2007. On instructions from APN, Ms Stonier immediately filed the extension of time application. Ms Stonier’s submissions for the hearing state that she considers there is a genuine dispute between the parties, and that the public interest is best served by determining whether AEC is properly entitled to the registration of the trade mark. She said that this determination could best be made after due consideration of all the relevant facts and evidence as could be done if the opposition is allowed to proceed. She claimed that an error or omission within the Clayton Utz office resulted in the extension application not being filed in a more timely fashion. This, she said, resulted from Clayton Utz not having organized sufficient internal briefings following receipt of AEC’s letter of 17 April 2007, resulting in appropriate searches of the trade marks register not being carried out in good time. She submitted the Registrar could take this into account in making her decision.Discussion A request for an extension of time to file a notice of opposition, when filed outside the statutory period, is governed by the provisions of regulations 5.2(3), 5.3 and 5.4(4). Subregulation 5.2(3) specifies the only allowable grounds on which a potential opponent may rely when requesting an extension of time outside the statutory period as being: an error or omission by a trade marks officer; an error or omission by the person applying for the extension of time, or by the person’s agent; circumstances beyond the control of the person applying for the extension of time.

Decision

Reasons for decision

This failure to confirm the details may perhaps have been an oversight on the part of Clayton Utz, but there is no evidence that this was so. Similarly, I have not been provided with information demonstrating that there was any failure on the part of Clayton Utz to follow clearly evidenced and relevant instructions. It appears that at no time up until Ms Stonier conducted her search of the trade marks register on 17 May 2007 was the potential opponent or the staff of Clayton Utz aware of the true status and circumstances surrounding the application. Therefore APN cannot have had an intention within the statutory period to oppose the registration. It is clear to me that the APN likewise cannot have had any intention, prior to Ms Stonier’s search, to investigate the application with a view to deciding whether an opposition was appropriate. The quoted deficiencies in briefings within the agent’s office do not form the kind of error which would have thwarted the opponent’s already existing intentions, thus creating the necessary causal connection. Decision The application for an extension of time was itself flawed. It did not meet the requirements of regulations 5.2 and 5.3. The information and submissions provided in correspondence with the Office and at the hearing have not provided me with evidence which allows me to overlook the flaws in the application. The application does not meet the requirements of the Act and Regulations, and APN has not satisfied me that it had sufficient reason for not complying with the statutory requirements. I recognize that APN considers it has a real dispute with AEC over the rights in this particular trade mark, and that by refusing to allow the opposition to proceed, I may be excluding a possibly serious and valid opposition claim. However, I also note that AEC has now paid its sealing fee, and is justified in expecting its trade mark to be registered as there was no opposition mounted within the allowed period and APN has not provided sound reasons for failing to do so. In respect of APN’s application for an extension of time to file notice of opposition, I am not reasonably satisfied that any ground allowable under the regulations has been established, or that there was sufficient reason for the application for extension not being made within the statutory period. I therefore refuse the application for an extension of time. AEC has paid its sealing fee and, unless the Registrar is notified of an appeal from this decision, may expect its application to proceed to registration in due course. If the Registrar is notified of an appeal, and if that appeal is not discontinued, the progression to registration will be dependent on any orders which may be made by the court. Alison WindsorHearing OfficerTrade Marks Hearings18 July 2007

Ratio Decidendi

Legal Principle Established

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Delegate:	Alison Windsor
Representation:	Potential Opponent: Kellie Stonier and Jeremy Charlston of Clayton Utz, Lawyers, of Brisbane
Decision:	2007 ATMO 41 Late application for extension of time to file notice of opposition – application flawed – no grounds established – application refused.