Asian Advertising Festival (Spikes) Asia Pte Ltd v International Awards Group LLC

[2011] ATMO 61

TRADE MARKS ACT 1995

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

Re:Application by International Awards Group LLC for extension of time in which to file Notice of Opposition to trade mark application 1378781(35, 41) - AME - filed in the name of Asian Advertising Festival (Spikes) Asia Pte Ltd and opposition thereto by Asian Advertising Festival (Spikes) Asia Pte Ltd.

Delegate:	Iain Thompson
Representation:	IAG:  Written submissions made by Kellie Stonier of DLA Piper Owner:  Ms Catherine Chant of Thomsons Lawyers
Decision:	2011 ATMO 61 Opposition to extension of time to file Notice of Opposition - must be good reason for extension - extension allowed

Background

1. This matter concerns possible opposition to registration of an application for registration under the Trade Marks Act 1995 (‘the Act’).  Current details of the application appear below:

   Application No:           1378781
   Owner:  Asian Advertising Festival (Spikes) Asia Pte Ltd (‘the owner’)
   Priority Date:               19 August 2010
   Convention:                 23 February 2011 (301548757 Hong Kong)

   Services:Class 35: Promoting of shows, concerts, lectures, conferences, displays, exhibitions, awards ceremonies, events and seminars; none of the foregoing being in the field of product manufacturing.

   Class 41: Publication services; provision of publishing information on-line from a computer database or the Internet; arranging and conducting seminars, exhibitions and conferences; arranging and conducting seminars, exhibitions and conferences for entertainment purposes; hosting, providing, organising, planning, arranging, conducting and holding of shows, concerts, lectures, conferences, displays, exhibitions, awards ceremonies, events and seminars; provision of education, training, entertainment, sporting and cultural activities; none of the foregoing being in the field of product manufacturing.

   Trade Mark:                AME

2. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 23 December 2011.

3. On 23 March 2011, International Awards Group LLC (‘IAG’ or ‘the applicant for extension’) filed an application for an extension of time in which to serve and file Notice of Opposition (‘the Notice’) to the registration of the trade mark.

4. The grant of this extension is opposed by the owner.

5. As a delegate of the Registrar or Trade Marks I heard submissions in Canberra on 5 May 2011.  Ms Catherine Chant of Thomsons Lawyers represented the owner.  IAG relied on written submissions made by Kellie Stonier of DLA Piper.

   Legislation

6. Regulation 5 of the Trade Marks Regulations 1995 (‘the Regulations’) provides:

   5.1Time for filing notice of opposition

   For the purposes of subsection 52 (2) of the Act (which deals with notice of opposition), the period for filing a notice of opposition is 3 months from the day on which the acceptance of the application is advertised in the Official Journal.

   5.2Extension of time for filing — grounds

   (1)A person may apply to the Registrar for an extension of time in which to file a notice of opposition.

   (2)An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:

   (a)an error or omission by an employee;

   (b)an error or omission by the person applying for the extension of time, or by the person’s agent;

   (c)circumstances beyond the control of the person applying for the extension of time;

   (d)the conduct of genuine negotiations between that person and the applicant for registration;

   (e)the undertaking of genuine research to decide:

   (i)whether opposition is justified; or

   (ii)on the grounds of opposition.

   (3)If the period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragraph (2) (a), (b) or (c) and on no other ground.

   5.3Extension of time for filing — applications

   An application for an extension of time in which to file a notice of opposition must:

   (a)be in an approved form; and

   (b)be accompanied by a declaration stating:

   (i)the facts on which the grounds specified in the application are based; and

   (ii)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.

   Note   Regulations 21.6 and 21.7 deal with making and filing declarations.

   5.4Extension of time for filing — grant of extension

   (1)Subject to subregulations (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition, the Registrar must grant the extension of time.

   (2)The Registrar must not grant the extension of time, unless the Registrar:

   (a)is reasonably satisfied that the person applying for the extension of time has served a copy of the application, and the accompanying declaration, on the applicant for registration of the trade mark; and

   (b)has given to both the person applying for the extension

   
   

   of time and the applicant for registration of the trade

   
   

   mark a reasonable opportunity to make representations concerning the application for extension of time.

   (3)For the purposes of paragraph (2) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

   (4)If an application for extension of time is made after the period for filing a notice of opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period.

   History

7. The declaration filed in support of the application for extension states:

   An extension of time is required in order to gather information to determine the grounds for opposition.

8. A Senior Examiner of the Trade Marks Hearings Section wrote to the applicant for extension stating:

   As stated in the Official Notice of 30 August 2001, “It is implicit in the wording of reg 5.3(b)(i) that the declaration must provide facts which are more than a simple re-statement of the grounds upon which the application is based”.  The information contained in the supporting declaration dated 23 March 2011 does not satisfy regulation 5.3(b)(i) as it does not contain specific details of the research that the potential opponent has conducted or will be conducting.

9. The applicant for extension filed a further declaration in support of its request for extension of time.  This declaration made by Kellie Anne Louise Stonier, legal representative, for IAG states:

   The Extension Applicant only became aware of the acceptance of Asian Advertising Festival (Spikes) Pte Ltd's (AAF) application in Australia on 5 January 2011.

   The Extension Applicant intends to file a Notice of Opposition in respect of trade mark application 1378781 for the trade mark AME (the Mark) in the name of AAF. However, the Extension Applicant requires further time to assess the use of its mark in Australia and the use of AAF's mark in Australia. The Extension Applicant has been using its mark on an international scale for about 15 years. It requires time to review its records and consider what use of the mark has been made in Australia and the date of such use to determine the grounds of opposition.

   The Extension Applicant is also considering the ground of opposition under section 62A of the Trade Marks Act 1995 (Cth). This ground of opposition requires investigation of AAF's conduct and activities. Further time is required to evaluate the evidence available before any such ground of opposition is pursued.

   The Extension Applicant, being based in the United States of America, is restricted in its ability to investigate AAF's activities and the use of AAF's Mark in Australia.

   DLA Piper Hong Kong provided instructions to seek an extension of time on 22 March 2011 when it became apparent that the Extension Applicant was not yet in a position to file a Notice of Opposition.

10. The owner of the trade mark, when informed that the Senior Examiner intended to allow the extension, elected to make submissions at a hearing.

    Discussion

11. As Ms Chant submitted, IAG’s request for extension of time is made under regulation 5.2(2)(e) of the Trade Marks Regulations1995 which refers to “the undertaking of genuine research” to decide:

    ·Whether opposition is justified; or

    ·On the grounds of opposition.

12. In the statutory declaration of Kellie Anne Louise Stonier dated 4 April, 2011 on behalf of IAG, it is stated in paragraph 8 that IAG requires the extension “to conduct further investigations to determine grounds for opposition against” registration of the trade mark.  Thus, IAG relies on regulation 5.2(2)(e)(ii).

13. In the patent case of Vangedal-Nielsen v Commissioner of Patents (1980) 49 FLR 44, (‘Vangedal’) Bowen CJ stated:

    Clearly, 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.

14. Vandegal was applied in the trade mark case of Re Neville William Lyons and Carmel Mary Dwyer (Carrying on Business as Mitty’s Authorised Newsagency v the Registrar of Trade Marks [1983] FCA 236; (1983) 78 FLR 217 (‘Mitty’s’)(which concerned an extension of time for filing evidence).

15. Ms Chant submitted that the extension should not be granted because:

    ·    IAG has not given a “good reason” for the extension;

    ·    IAG had ample time to consider the grounds of its opposition and file the notice of opposition in the opposition period;

    ·    it is not in the public interest for the extension to be allowed and the registration of the trade mark to be delayed; and

    ·    it is not in the interest of the applicant for the extension to be allowed and the registration of the Mark to be delayed.

16. Undoubtedly, the reason given in the first declaration in support of the application for extension was insufficient.  As the Senior Examiner observed, the reason was no more than a recitation of the heading under which such an extension might be granted – it does not explain why, in terms of that heading, the time has been insufficient.

17. The further declaration explained that research was necessary to determine to what extent IAG’s trade mark had been used in Australia.

18. While Ms Chant submitted that an organisation should be able to readily ascertain whether its trade mark has been used in Australia, this might not always be obvious even on detailed consideration:  E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 (‘Gallo’).  With services involved (as they are here) rather than goods as was the case in Gallo, the position might be even more unclear.

19. In considering the public interest here, there are obviously a number of different aspects to be considered.  There are the interests of the parties, the interests of the Registrar in having matters dealt with expeditiously, and (to paraphrase Vandegal) the wider public interest in ensuring that worthless trade marks are not granted because insufficient opportunity has been afforded for raising those grounds: Kaiser Aluminium & Chemical Corporation v. Reynolds Metal Co. [1969] HCA 7; (1969) 120 C.L.R. 136.

20. While Ms Chant argued that it is in the interests of the owner of the trade mark to register it in a timely manner, ultimately, if a registered trade mark is open to challenge it is also in the interests of the registered owner of that trade mark to have that challenge go tested in the opposition forum rather than to find, while trying to enforce its trade mark that it is unenforceable. 

21. In balancing these interests, I am reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition.

    Decision

22. As I have observed, I am reasonably satisfied that it is appropriate to grant the application for extension of time in which to file the Notice.

    Costs

23. Costs may follow the event and I award costs against the owner as per the schedule.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    11 July 2011