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

1. 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.

2. 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.

3. 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.

4. 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.

5. 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

6. 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.

7. 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

8. 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).

9. 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.

10. Regulation 5.3 sets out the formal requirements for an application for an extension of time.  It specifies that the application must be in an approved form, and that it must be supported by a declaration setting out the following information:

    • the facts on which the grounds specified in the application are based; and
    • 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.

11. Regulation 5.4 deals with the grant of an extension of time, and specifically requires that the Registrar not grant an extension which was filed outside the statutory period unless she is reasonably satisfied that there was sufficient reason for the application not being made before the end of that period.

12. There are two major errors in APN’s application for an extension of time – the request has been made under the incorrect provisions of the Act, and the reasons given for the request are not allowed by the regulations which actually govern the matter.

13. In respect of the first error, regulation 5.3 requires that the application be “in an approved form”. “Approved form” is defined in section 6 of the Act as meaning “a form approved by the Registrar for the purposes of the provision in which the expression appears”. This application therefore technically does not meet the requirements of regulation 5.3 as it was submitted on a form designed for a completely different purpose, and was thus made under the wrong provisions of the legislation.

14. That said, it is clear from the form that APN had the intention of requesting an extension of time to file a notice of opposition.  While it may not be “tidy”, the office does not usually refuse to allow an application of this kind because it has been submitted on the incorrect form, providing other requirements are in order.  I am prepared to accept the application as being properly made in respect of the legislative provisions applicable to the matter.

15. The significant error in the application, however, is in the reasons given for the application to extend the opposition period.  The only allowable grounds under the regulations are those set out previously in paragraph 9.  None of the allowable grounds were quoted in the original application, with the reasons being stated as “the prospective opponent requires further time to conduct investigations, undertake genuine research and to obtain legal advice to decide whether an opposition in justified”.  These grounds are specifically excluded from applications filed after the end of the statutory period.

16. This type of error need not be fatal to the application, if it is rectified early in proceedings.  It is clear from the application file that the TMO did not refuse to grant the extension of time despite the errors the application contained, but gave APN the opportunity to provide additional information to clarify the matter.  The information received, however, neither rectified the errors in the original extension application, nor provided persuasive information to support APN’s request. 

17. Ms Stonier’s submissions at the hearing reiterated the already received information, but she also referred more than once to deficiencies in briefings within the Clayton Utz office.  In response to my question about grounds, Ms Stonier agreed that APN now wished to rely on the ground that an error or omission had occurred in the Clayton Utz office, which she said resulted in the application for an extension of time not being made at an earlier date.

18. Late applications for extensions of time in which to file a notice of opposition were the subjects of the decisions in Mission Personnel[1] and British Sky Broadcasting[2], amongst others.What is clear from these cases is the necessity for there to be a causal link between the error or omission by the agent of the potential opponent and the failure to file the Notice of Opposition within time.  On the part of the potential opponent there needs to be a clear intention to oppose within the allowed time, or failing that, demonstration of an intention to get to an informed position from which it might make the decision whether or not to oppose.  To create the causal link, the agent’s error or omission should be something which has thwarted the potential opponent’s intentions in respect of initiating the opposition.

    [1] Application by Mission Personnel Services Pty Ltd (1998) 42 IPR 255

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

19. In the current case, APN was not aware of the existence of AEC’s trade mark application at the time it caused a letter of demand to be written.  At the time the letter was dispatched, the statutory opposition period has already passed.  There is no evidence that Clayton Utz had instructions to research the matter at that time, and even after receipt of the letter from AEC’s legal representative later in the month, the firm did not confirm the trade mark details included in that letter. 

20. 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

21. 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.

22. 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.

23. 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 Windsor
    Hearing Officer
    Trade Marks Hearings
    18 July 2007