Ayrton Senna Promocoes E Emprendimentos Ltda v Senna Racing Team Pty Ltd

[1998] ATMO 13

Trade marks act 1995

decision of a delegate of the registrar of trade marks with reasons

Opposition by AYRTON SENNA PROMOCOES E EMPRENDIMENTOS LTDA (“the opponent”) to Applications 707241, 712555, 712556 and 72557 in the Name of SENNA RACING TEAM PTY LTD (“the applicant”) and Application by the Opponent for a Direction pursuant to Regulation 5.16 to Suspend Opposition Proceedings pending the Outcome of Court Proceedings

Regulation 5.16 of the Trade Marks Regulations made under the Trade Marks Act 1995 provides as follows:

Conduct of opposition proceedings generally

5.16(1) The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.

(2)       A direction given under subregulation (1) must not be inconsistent with these Regulations.

(3)       The Registrar must not give a direction unless the Registrar:

(a) is reasonably satisfied that parties to the proceedings have been               notified of the proposed direction; and

(b)has given the parties a reasonable opportunity to make representations concerning the proposed direction; and(c) is reasonably satisfied that the proposed direction is appropriate.

(c)is reasonably satisfied that the proposed direction 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.

The trade marks in question are as follows:

1. 712555  

1. 712557                 

The opponent has opposed the registration of the trade marks which are the subject of the abovementioned applications and on 17 October 1997 sought a direction under reg 5.16 that the opposition proceedings before the Registrar be suspended on the ground of certain proceedings between the parties pending in the Federal Court (No VG 559 of 1996). Those proceedings were commenced under ss 52, 53, 80 and 82 of the Trade Practices Act 1974 and ss 115(2) and 116 of the Copyright Act 1968 seeking, inter alia, injunctions restraining the use of the word “Senna” and “Double S” mark, and damages.  Both parties were informed that before any decision was made on that request the trade mark applicant was to be allowed 21 days to comment.  Mr Leslie Crampton, a director of the applicant company, who is a respondent in the applications to the Court, objected to the proposed suspension of the opposition and requested a hearing of the matter which was set down for 9 January 1998.  Mr Brett Lewis of Davies Collison Cave, patent attorneys for the opponent, filed written submissions in support of the request for the stay of opposition proceedings.  Mr Crampton made submissions by telephone.

Mr Lewis submitted that the Court proceedings were directly relevant to the issues to be decided by the Registrar.  He referred in particular to the following grounds of the notice of opposition:

6.        The use of the trade mark is contrary to law.

7.        Given the reputation the opponent has in the trade mark and/or elements    thereof, the use of the trade mark in relation to the goods for which      registration is sought would be likely to mislead or deceive and pass off the        goods as being those of or associated with or approved by the opponent.

Mr Lewis also referred to the administrative inconvenience to the opponent and the Office, as well as the cost involved, of the necessity of numerous extensions of time if the Registrar declined to direct the suspension of the opposition.

In addition the decision of the Court would provide a clear basis upon which the trade mark oppositions could be determined by the Registrar.

Mr Lewis referred me to a decision of a delegate of the Commissioner of Patents in Ferochem v Hightech Auto Tools (1993) 29 IPR 144 in which the delegate stated:

As a general proposition, where there is a pending court action of direct relevance to a matter before the commissioner, the commissioner prefers the court action to be concluded before determining the matter before him.

This would seem to particularly apply where the matters in dispute are strictly between the parties, and have no significant consequential effect on third parties. Thus if the effect of the court action was in a practical sense confined to the parties, I think the commissioner would be fully justified in deferring a hearing until the court action is determined — providing neither party would be significantly disadvantaged.

He submitted that that proposition applied equally to the present trade mark oppositions which did not involve any parties other than the applicant and opponent.  If it were accepted that deferment of a hearing was in order then deferment of service of evidence which might ultimately prove to be superfluous was also in order.

Mr Crampton relied on the inconvenience to the applicant of the protracted Court proceedings which were commenced in September 1996 and which seemed to him not to have advanced very far.  This left the applicant in a state of uncertainty as to its rights in the trade mark.  Furthermore, he submitted that the applicant had used the mark since April 1997.

Decision

In the Ferochem case, supra, the delegate referred, at 147-48, to the practice of the Patent Office:

Patent Office practice

Part 24 of the APO Manual of Practice and Procedure — Oppositions, Courts, Extensions and Disputes relates to the extension of term of petty patents. Paragraph 24.10 sets out the practice to be followed when court action is pending.

“24.10 HEARING WHEN COURT ACTION PENDING

Frequently a petty patent is obtained to enable the patentee to take action for infringement at the earliest opportunity. As a result, at the time when the commissioner is required to consider whether or not to extend the term of a petty patent (which involves a consideration of the validity of the petty patent), there may be a pending court action in which the validity of the petty patent is in dispute.

For administrative convenience, the commissioner prefers not to hear and decide the extension of term of the petty patent, pending the outcome of the court action. However where the patentee wants the matter of the extension of term determined, there is no bar to the commissioner proceeding to determine the matter on the basis of the pending court action, and the commissioner will proceed with the determination.”

The authority behind this practice is a Patent Office decision Re Yamazaki Mazak Corporation (1992) 24 IPR 321; AIPC 90–879. In this case a decision of the Federal Court was issued after the end of the initial term but before the commissioner proceeded to determine the extension of term. The Federal Court decision was appealed. The patentee sought a determination of the extension of term as soon as possible so that they could seek an injunction to restrain ongoing infringement. The delegate found that, in these circumstances, if the patentee wants the matter determined then the commissioner should proceed.

From this it appears that the relevant consideration in relation to petty patents at least is that the validity of the patent must be in question in the Court proceedings.  More generally, in relation to a direction with respect to the time for serving evidence in oppositions before the Commissioner the same Manual states, at para 9.2.1:

Where a party applies for a directions hearing seeking a determination that a prescribed period be extended under reg 5.10(1)(b) [equivalent to reg 5.16] , the Commissioner may exercise a broad discretion if the extension is sought at an early stage in the opposition.  The party seeking the extension must establish or provide good reasons why the prescribed time for doing the particular action should be extended under the provisions of reg 5.10(1)(b).

Where a party applies for a directions hearing other than at an early stage in the opposition, the Commissioner may exercise his discretion under reg 5.10(1)(b) only if unusual circumstances, or circumstances beyond the control of the party and its declarants, are established.  Some examples of such circumstances are:

a)        Where a current court action in Australia may directly affect the opposition.

b)        ...

I think the above applies equally to reg 5.16(1) of the Trade Marks Regulations, and whether the application for a direction of the Registrar be regarded as made early or late in the present opposition proceedings, that the Registrar has a broad discretion to extend the prescribed time for the serving of evidence in support by the opponent until the Federal Court proceedings are determined.  I also think it is quite clear that those proceedings have a direct bearing on the validity of the trade marks for registration.

With regard to the relative inconvenience to the parties of the direction sought I consider that the balance favours the opponent.  It is not at all clear that the uncertainty with respect to the applicant’s rights would be removed if the opposition were to proceed while ever the Court proceedings were not resolved, whereas the labour and expense in gathering and serving what may well turn out to be unnecessary evidence is a distinct disadvantage to the opponent.

I therefore direct, pursuant to reg 5.16(1) of the Regulations, that the time for serving evidence in support of the oppositions to applications 707241, 712555, 712556 and 712557 be extended until the Court proceedings in relation to the trade marks which are the subject of those applications, No VG 559 of 1996, are determined by the Federal Court.

Michael Homann
Hearing Officer

21 April 1998