Apple Computer Inc v IMAC Support Services Pty Ltd

[2001] ATMO 28

TRADE MARKS ACT 1995

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

Re:Objection by IMAC SUPPORT SERVICES PTY LTD to an application by APPLE COMPUTER INC for an extension of time of three months for the service of Evidence in Reply in connection with its opposition to the registration of trade mark application 781056.

Background

Imac Support Services Pty Ltd ("ISS") has applied to register the trade mark Imac Support Services Logo for "Computer hardware and software" in class 9 and for "Computer programming" in class 42.  Its application was advertised accepted, under the provisions of sub section 44(4), in the Official Journal of Trade Marks ("the Journal") on 5 August 1999.

Apple Computer Inc ("Apple") filed notice of opposition to the registration of the application on 3 November 1999, within the time allowed under reg 5.1 of the Trade Marks Act and Regulations 1995 ("the Act", "the Regulations"). It had served all its evidence in support of the opposition (reg 5.7) by 17 August 2000, whereupon ISS had three months in which to serve its evidence in answer (reg 5.9). This ISS did, serving its evidence on Apple on 16 November 2000. From 16 November 2000, Apple had three months, to 16 February 2001, in which to serve its evidence in reply to the evidence in answer (reg 5.12), or, alternatively, to file a notice stating that it would not rely on evidence in reply (reg 5.13). On 14 February, Apple applied for an extension of time under the provisions of reg 5.15, to 16 May 2001.

This extension application by Apple is the subject of the present decision.

The hearing was held in Canberra as a teleconference before me, as delegate of the registrar, on 28 March 2001.  Both parties provided their submissions by telephone from their respective cities.  Mr David Frank, of the Brisbane law firm of Baker-Johnson, appeared for the objecting party, ISS.  Mr Peter Knight, of the Sydney branch of the law firm Clayton Utz, appeared for the extension applicant, Apple.

Submissions

Summarised briefly, Mr Frank's contention was that the reasons provided in the extension application were not sufficient for the Registrar to be satisfied that the extension ought to be allowed, or at least that the period sought was excessive in light of the reasons provided.  He pointed out the lack of information in the application about the steps taken by Apple and its agents in the previous three months, and about the steps it intended to take in the next three months.  He also referred to the inconvenience to his client in unnecessary delay.

Mr Knight directed me to relevant case law and to the registrar's published guidelines.  He stated that Apple wished to put on evidence in respect of a very narrow set of issues which arose from the evidence in answer.  He said that his firm was briefing counsel and seeking information from Apple in relation to those issues.  He argued that the application as it stood accorded with the requirements.  The full three months would be needed to assemble, prepare and serve the material, but he was "confident" that no further extension would be sought.

Mr Knight urged me to disregard Mr Frank's submissions about inconvenience to the trade mark applicant, because these were unsubstantiated by evidence.  Mr Frank, in turn, urged me to disregard matters in Mr Knight's submissions which were not in the original application. 

I will refer again to these submissions in my reasons.

Reasons

The law

Each of the periods allowed for evidence in support (reg 5.7), evidence in answer (reg 5.10), and evidence in reply (reg 5.12) is extendible under the provisions of reg 5.15. Reg 5.15 relevantly provides:

5.15 (1) A party to the opposition proceedings may apply to the Registrar:

(a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12;

.......

(2) The Registrar may grant an application on reasonable terms specified by the Registrar.

(3) The Registrar must not grant an application unless the Registrar:

(a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b) has given the parties a reasonable opportunity to make representations concerning the application; and

(c) is reasonably satisfied that:

(i) in the case of an application to which paragraph (1) (a) applies—the extension of the period for serving a copy of the evidence

........

is appropriate.

(4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

......

However, it is to be noted that the periods allowed for serving a notice that the party will not rely on evidence in support (reg 5.8), evidence in answer (reg 5.11), or evidence in reply (reg 5.13) are not extendible under reg 5.15.

The present application is made for the purpose of serving evidence in reply.  It falls under the provisions of reg 5.12(1).

5.12 (1) If an opponent intends to rely on evidence in reply to the evidence in answer to the opposition, the opponent must serve a copy of the evidence in reply on the applicant within 3 months after the service on the opponent of a copy of the evidence in answer.

The case law

Extensions of time under the provisions of reg 5.15 of the 1995 Act have not yet been scrutinised by the courts. The Registrar continues to apply to these applications the principles and criteria, set out in two decisions under the Administrative Decisions (JudicialReview) Act 1977 (Cth), which guided practice under the equivalent provisions in the Trade Marks Act 1955[1].  In Vangedal-Nielsen and Others v Smith (Commissioner of Patents) and Another[2] , which reviewed an application for an extension of time to file notice of opposition under the Patents Act 1952, Bowen CJ stated:

[1] See, for example, ABW Australia Ltd v Sears, Roebuck & Co 42 IPR 468

[2]  1A IPR 731 at 736

The commissioner will have to consider the interests of the prospective opponent who, for some good reason, has not been able to mount his opposition within the initial period of three months.  The commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest which has been mentioned, but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension.  It would be wrong if he granted an extension simply because no one had raised rather exceptional circumstances why it should not be granted.  Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved. (Emphasis added)

This reasoning was applied by Beaumont J in Lyons and Another (trading as Mitty's Authorised Newsagency) v Registrar of Trade Marks and Another[3] , where one of the matters at issue was an extension of time to file evidence in support of an opposition under the Trade Marks Act 1955.  In  considering this matter, and after quoting the full passage from the authority from which I have provided an exerpt above, His Honour went on to state:

[3] 1 IPR 416 at 420

Although a more detailed explanation of the position may have been desirable, I think it is possible to construe the rather bald statement of the ground for the request...as indicating that, although efforts had been made in that behalf, it was not possible to finalise the form of the evidence sought to be adduced in the time allowed by the regulation.  I accept that, on one view, it is possible to read the stated ground as being little more than an assertion that more time is required.  However, the statement of the ground does at least attempt some explication of the position.  Further, I think that the delegate was entitled to have regard to the notorious fact that the opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time.  Given that background, and given the construction of the statement of the ground which was open, I am of the opinion that the delegate did not exercise his discretion in any improper way.  In particular, in my view, there was evidence before the delegate upon which he could rely in order to justify the grant of an extension. 

The Published Guidelines

The Trade Marks Office from time to time publishes information for the guidance of extension applicants on the registrar's requirements in relation to this regulation.  This information is available in hard copy in each State Office of IP Australia, as well as on-line through IP Australia's Internet site.  The current such Official Notice ("the Notice") appeared in the Journal of 18 November 1999.  It states in bold italic type:

Regardless of whether or not a declaration is required, all applicants for an extension of time are required to support their application with a full explanation of why additional time is required.

This Notice is also published as Annexe A3 to Part 51[4] of the TMO Draft Manual of Practice and Procedure ("the Manual").  That Part, which deals with general opposition procedures, provides guidelines at paragraph 3.2 on the nature of the reasons in support of an extension application.  The Manual pertinently states:

[4]  January 2000 version

While all applicants are required to give a full explanation of why additional time is required, a simple letter with a recitation of basic facts will prima facie be acceptable for a first extension.

At paragraph 3.3, under the heading Duration of extensions, particular guidelines for extensions of time in relation to evidence in reply are provided.  This entry begins:

Generally speaking, because such evidence is intended to be a reply to a known body of declarations, it can be expected to be easier to compile than was the evidence served in the earlier stages.

Part 50[5] of the Manual deals with disputed extensions of time.  I quote from paragraph 4:

[5]  January 2000 version.

The Regulations have been framed in the interest of allowing minimum formality and improved resolution.......

Where an extension is to be disputed, the primary thrust of the Regulations is to encourage written representations, rather than hearings.  Fourteen days, from the date of the letter which confirms receipt of the extension request, will be allowed for the making of such representations.  Where an objector relies on written submissions, no further opportunity will be allowed to it to request a hearing.  While it is open to an objector to seek a hearing, it is unlikely that costs would be awarded to an objector unless the Registrar was satisfied that the matter was so complex as to justify a hearing rather than being dealt with in writing.

In the absence of conflicting information, the Registrar will take the reasons for the extension, and the grounds for disputing the extension, at face value....

The Registrar will consider submissions, any additional relevant information, and any written representations, including supporting documentation, and take whatever steps are appropriate.  The options available to the Registrar include:

·granting the extension and advising both parties

·granting the extension and sending the opponent's representations to the applicant with a warning that matter(s) raised by the representations will need to be addressed if a further extension is sought

·seeking further comment or explanations, in writing, with or without the support of a declaration, from the applicant before deciding the matter

·setting down a hearing, if the relevant fee has been paid

The last option is expensive, involves further delays and should only be adopted when there are no reasonable alternatives.

At paragraph 5 of Part 50, under the heading Review of extensions under reg 5.15, the following paragraph, relevant to the present circumstances, appears:

Under the 1955 Act, as additional time accumulated, greater scrutiny was applied to reasons for further requests.  Stricter scrutiny was generally applied when the total time reached 12 months (inclusive of the initial statutory three months).  Under the Trade Marks Act 1995, the Registrar now has scope to receive and act on information from both parties.  This in itself should contribute to speedier resolution and thus reduce the need for extensions.  Again, international communications are now commonly electronic and take no longer to conduct than local transfers.  As a result, reasons of "protracted communications" and "overseas principals" are unlikely to be given as much weight as previously and, generally speaking, it is likely to be more difficult to satisfy the Registrar that the need for significant extra time arises as a result of real obstacles and not simply from a lack of effort. (Emphasis added)

The Issues

It appears to me that the matter at issue is whether it is "appropriate", having regard to all the circumstances, for me to allow the extension sought.  My understanding is that I must only do so if "reasonably satisfied" that, on balance, the application meets the tests set down in Lyons, supra.

I have applied these tests.  My enquiry leads me to believe that all but one of the appropriate tests clearly favour the extension applicant.  I set out my considerations with regard to these before discussing the one test where there appears to be some room for doubt.

• The time so far allowed

This is the first application for an extension of time for serving evidence in reply.

Mr Frank drew my attention to the fact that more than twelve months had passed since the applicant's mark had been accepted.  However, time previously allowed for other evidentiary stages is not relevant to this criterion.  Extensions beyond twelve months at any one stage of the evidence, and particularly at the evidence in reply stage, will be carefully scrutinised. 

In the experience of the registrar, the statutory three months available under reg 5.12 is often extended.  However, six months will frequently prove sufficient for this stage of the evidence.  This is especially so where the evidence in answer is fairly brief, as it is here.  In my view, the additional three months requested is not an excessive or unreasonable amount of time for the preparation and service of evidence in reply. 

Mr Frank submitted that time-frames should be strictly adhered to, referring as his model to the practices of the Queensland law courts. However, the registrar is not a court, and operates under different provisions. Whilst adherence to time frames is often desirable and laudable, so is the proper preparation and service of evidence, and reg 5.15 exists to ensure that sufficient time is available to a party to do that.

Mr Frank also submitted that a shorter period, such as ten days beyond the hearing, should be allowed instead of the full three months sought.  I can see no good reason for acceding to this request.  I understand, from statements made at the hearing, that the extension applicant is still at an early stage of the preparation of its evidence in reply.  I am inclined to believe Mr Knight's submission that Apple would be unable to serve before 16 May 2001.  Moreover, cutting the period short at this point will not preclude Apple making another extension application, with the concomitant additional processing and delay that that will cause.

I am also mindful that Mr Knight made it plain that any further extension request was unlikely.  Whilst any further extension request would be considered on its merits, it appears to me that this statement should be taken at face value and as showing that Apple and its representatives have no intention of unnecessarily protracting the proceedings.

• The relative inconvenience to the parties

I am prepared to accept Mr Frank's statement that ISS is facing commercial detriment because it has not yet achieved its goal of registration.  More than a year has passed since acceptance of its application.  This cannot but impose something of a burden of uncertainty on a small enterprise.  It is also true, as Mr Frank pointed out, that there is a vast difference in the size of the parties and the resources that each can bring to bear on the task of preparing evidence.  I think these are all factors which the registrar may take into account.

However, as Mr Knight argued, unless the opposition succeeds, ISS will eventually be granted its registration.  Its statutory rights in the trade mark, as from the date of making the application on 15 December 1998, are then secured by entry in the Register. 

By contrast, a refusal of the extension application prevents the opponent from putting evidence before the registrar which may counter or elucidate material provided by the trade mark applicant's evidence in answer.  Apple has already invested considerable effort in mounting and pursuing this opposition.  It stands to lose the opportunity to put in evidence in reply.  Losing this opportunity could compromise the case it has so far prepared. 

It is my opinion that, at this stage, the inconvenience to the extension applicant of a refusal outweighs the inconvenience to the trade mark applicant of allowing extra time.

• The public interest

The public interest lies to some extent in "the desirability of operating the system efficiently"[6].  However, there is also a strong public interest in allowing all relevant evidence to be placed before the decision maker (Bundy American Corp v Rent-A-Wreck (Vic) Pty Ltd 5 IPR 307). On public interest grounds, therefore, the registrar is reluctant to deny a party an extension where there is a reasonable prospect that the evidence will be served.

It is my view that Apple's evidence in reply is reasonably likely to be served within the extended time.

• Whether a proper case has been made out

I turn now to the final and central question.  Has the extension applicant provided sufficient reasons in support of its request?  The onus is on it to do so (Vangedal, supra).  In looking at this, I believe I may take account both the written reasons it provided in its application, and additional reasons and information provided as verbal submissions at the hearing.

The application was supported by two statements which I will consider in turn.

[6] Vangedal, previously quoted.

1. the Opponent is an overseas corporation located in the United States of America

I have some sympathy with Mr Frank's criticism of this ground as merely being a bald statement of self-evident fact.  However, I also have some sympathy with the extension applicant, who is faced with reconciling the registrar's guidelines which, on the one hand, require a "full explanation" in all cases, and on the other encourage "a recitation of basic facts" for a first extension.  In confining its explanation to this very brief statement, the applicant may satisfy the registrar, for whom the shorthand conveys meaning, but may well invite objection from a party, entitled to object, for whom the shorthand is unfamiliar.

It is the case that the registrar gives less weight to the tyranny of distance in the electronic age than was formerly the case.  However, I believe the registrar is still entitled to have regard to the additional layers of complexity added to trade mark proceedings where a party is domiciled abroad and works through several layers of legal representatives.  This is particularly so if the amount of time in question is not yet "significant", to use the terminology of the Manual, supra. 

Mr Knight argued that whilst electronic communications have accelerated the exchange of information, the declarations required as evidence in proceedings before the registrar are physical documents and require physical transmission and signature.  This is true up to a point.  Even if material is transmitted electronically to the principals abroad, the signed copy of a declaration needs to be returned as a physical document by mail. 

However, Mr Knight's submissions were for the most part in the form of generalities.  No dates or details were given at the hearing of what steps had been taken prior to the making of the extension application.

Despite this lack of precision, I am inclined to give some weight to this ground as explaining why the statutory three months has elapsed without the evidence in reply being served.

1. the Opponent is still considering the Evidence in Answer in order to determine whether it is necessary to serve any evidence in reply.

I think it is fair to say that the meaning of this ground is not entirely plain.  It could be read as meaning that Apple's intentions were not settled.  This was the basis of the attack by ISS.

The regulations provide that if the opponent intends to serve evidence in reply, it must serve that evidence within three months, unless the time is extended.  The presence of the word "if" appears to me to impose a precondition on the making of an application to extend the time.  However, as Mr Knight said, an opponent may later change its mind for some good reason and decide not to serve evidence in reply after all. 

I do not think that the ground in question needs to be construed as if the extension applicant lacked the necessary intention to serve evidence. There are other details in the application form and covering letter which provide a context for the ground, and which assist in the interpretation of the ground as stated. Firstly, the application is stated to be under the provisions of reg 5.15. Secondly, it is stated to be for the purpose of filing[7] evidence in reply.

[7] The application uses the term "file", but this is incorrect.  The application is for an extension to serve evidence.

I think it is reasonable, in the context, to construe the sentence as meaning that the extension applicant, at the time of making the application, intended to serve evidence in reply, but was giving notice that it was possible that this intention might not be carried through.

If there were doubt about it, Apple's submissions at the hearing appear to me to establish satisfactorily that, at the time of making the application, the opponent intended to serve evidence in reply.  I think it is the case that the registrar will usually take the making of an adequately specified application as being itself evidence of the requisite intention.  However, if there is no clear statement as to intention, and no indication that evidence is in preparation, the other party may well wish to challenge the application, as has happened in this instance.

In summary, while the reasons given in the application were brief to a fault, scarcely meeting the registrar's published guidelines as to the provision of a full explanation, they have been supported and clarified through the submissions made by Mr Knight at the hearing.  It appears to me that Apple has discharged the onus on it to justify the grant of the additional time sought.

Decision

I am reasonably satisfied that it is appropriate to grant the application for an extension of three months to serve a copy of evidence in reply on the trade mark applicant.  I therefore grant the extension.

Costs

Both parties made submissions as to costs.  Mr Knight, for Apple, submitted that if the extension were refused, each party should bear its own costs as there was no reason why the matters addressed at the hearing should not have been resolved through normal correspondence. 

However, even though I have decided to grant the extension, in view of the circumstances of the case as I have described it in the foregoing reasons, I make no award of costs.

Arminel Ryan
Senior Examiner

6 April 2001