Barrymores Pty Ltd v Gordon and Rena Merchant Pty Ltd

[1993] ATMO 86

TRADE MARKS ACT 1955.
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS.

Re:Objection by the Registrar and by Gordon and Rena Merchant Pty Ltd to an application by Barrymores Pty Ltd for an extension of time to serve Evidence in Answer to the Opposition to registration of Trade Mark Application 548922 and 548923.

Background

Trade Mark applications 548922 and 548923 were advertised accepted for registration on 16.7.92 .  They are proceeding in the name of Barrymores Pty Ltd ("the applicant").  The trade mark in suit is as below, and the applications were filed for, in general terms, clothing and printed matter.

Notices of opposition to registration, as are provided for by section 49 of the Trade Marks Act, were lodged by Gordon and Rena Merchant Pty Ltd ("the opponent") on 13.10.92. This is sufficient to activate the opposition provisions of Division 1 of Part VII of the Trade Mark Regulations. The opposition is cast in general terms but does include a specific ground that the opponent is the proprietor of the trade mark BILLABONG in various classes.

Regulation 43 in Division 1 provides for the service on the applicant of a copy of the evidence in support of the opposition within 3 months of the date on which notice of opposition is lodged.  The evidence was thus due by 13.1.93, but the opponent sought and was granted an extension to 13.4.93 for that purpose.  The Trade Marks Office followed its usual practice and sought the comment of the applicant before granting that extension.  It is worth noting that the applicant did not object to the grant of extra time to the opponent.

The opponent served its evidence in support on 15.2.93, and regulation 44 provides that an applicant's evidence in answer to the opposition is to be served on the opponent three months from that date.  No advice of service was received from either party so on 28.5.93 the Office advised both sides that if that was so then, as provided by regulation 49, it was open to the opponent to request a hearing.  The opponent has in fact done this, but that request has been overtaken by subsequent events.

On 10.6.93 the applicant's solicitor lodged a belated request for extensions of time to serve evidence in answer to both oppositions.  The facts and arguments surrounding those applications are identical, and for convenience I will refer to the applications as though they were one.

The application is supported by a statutory declaration by Mr Stuart Barrymore, who is both a director of the applicant company and a solicitor of Parker and Parker, the firm of solicitors which acts for the applicant in this matter. 

Mr Barrymore declared that the applicant intends to rely on two declarations in answer to the opposition.  One of these is to be his own declaration as to the results of a market survey that had, at that time, not been finalised.  The other declaration is said to have involved "the collation of a considerable amount of historical material and data".  That declaration is said to be intended to be made by the co-director of the applicant.

More significantly, he declares:

No particular cause can be attributed to the delay in the Applicant serving declarations in answer to the opposition.  However, factors include the time taken to decide whether to respond to the opposition and to determine what was required to respond to the declarations and the unavailabilty or busyness of the relevant officers and advisers to the Applicant.

As is usual where an extension is requested belatedly, the reasons given were assessed, and the officer dealing with the application formed the view that the extension should not be granted.  The applicant was informed of the intention to refuse the extension and it applied to be heard.  The opponent was given an opportunity to attend the hearing, at which it was represented by Mr Helmut Eichberger, a patent attorney of the opponent's attorneys, Cullen and Co.

The applicant did not appear at the hearing, but relied instead on written submissions lodged by its solicitors.  These submissions cover a range of factors all said to be relevant to the grant of a belated extension to the applicant in the circumstances in which it found itself.

It is said that, although the applicant had secured registrations of a number of trade marks, it had never had to contend with an opposition.  Legal advice was thus sought of a "specialist trademark and intellectual property practitioner." 

Mr Barrymore continues:

On 8 April 1993 (the practitioner) was briefed again with all the opponent's evidence to advise on the strength of the opposition and settle the content of the statutory declaration to be sworn by Mrs Barrymore.  His advice was furnished on 7 May 1993.  (The practitioner) also recommended that a survey be undertaken.  It was not until that advice had been given that the applicant decided to proceed with a survey.  The results of the survey are annexed to the declaration of the writer ...

The applicant contends that it was reasonable for it to secure counsel's advice before defending the opposition. ...

Inexplicably, the writer of this letter was of the opinion that the time for lodgement of the applicant's evidence in reply under regulation 44 fell due on or about 20 May 1993.

Mr Barrymore goes on to say that on either 17 or 18 May he spoke to the Opposition Clerk of the Trade Marks Office to determine the procedure for extending the time available.  He says that "at the time the declaration to be sworn by Mrs Barrymore had been finalised, but the survey had yet to be completed".

The rest of the applicant's submissions are more by way of legal argument.  Mr Barrymore points to the gathering of evidence as being notoriously a time consuming process - Lyons v Registrar of Trade Marks (1983) 1 IPR 416.

He points out also that since the making of the application all of the evidence has in fact been lodged and served - Jamieson v American Dairy Queen Corporation (1985) 5 IPR 551. Thus, on granting the extension the matter can go forward immediately. It is submitted by the applicant that it is in the public interest that the matter be decided on full disclosure of the facts, that the extension is not sought to frustrate the efficient operation of the opposition process and that the opponent has itself delayed that process in seeking an extension.

However, while I have no difficulty at all in agreeing with these as powerful arguments for the grant of an extension, I regret that, for reasons which I will now set out, the request for an extension cannot, under the terms of regulation 69, be allowed.  First, let me quote that provision:

69. An application for an extension of time under these Regulations shall be in writing and shall be lodged at the Trade Marks Office‑
(a) before the expiration of the time sought to be extended; or
(b) if the Registrar is satisfied that special circumstances existed which prevented the application being made before that time, within such time as the Registrar allows.

Mr Barrymore and Mr Eichberger both deal with the provisions of that regulation.  In the applicant's view, and relying on the decision in Bernard Leser v Spiritual Sky Group Companies Pty Ltd (1985) 5 IPR 149, regulation 69 does not apply to the present situation. Let me simply say that this office no longer follows that case. The matter is now looked at as set out in D'Urban Inc v Canpio Pty Ltd 1990 AIPC 90-658. Regulation 69 is now regarded as applying with full force to extension of the times set out in the regulations, even though the ultimate source of power to grant those extensions is in section 130.

Decision
I agree with Mr Eichberger's description of reg 69 as the first hurdle.  If the circumstances in which this extension was requested belatedly are not "special circumstances" then the application cannot proceed.  Mr Barrymore's argument, in a fallback position, is that special circumstances can include omissions on the part of the applicant's solicitor.  Such a view is consistent with Durban v Canpio, supra.

In Durban v Canpio the facts at issue were of an initial misunderstanding as to the efficacy of service on a DX, followed by 14 months of inaction once the invalidity of that service was brought to the attention of the attorney concerned.  In that case, though the extension was ultimately refused, Assistant Registrar Farquhar agreed that, as with the finding in Genentech v WellcomeFoundation Ltd, (1987-88) 11 IPR 401, reg 69 should be interpreted liberally.

In Genentech, Supervising Examiner Roveta referred to Jess v Scott (1986) 70 ALR 185 as establishing that the modern interpretation of the expression "special circumstances" in the Patents regulations should be a liberal one. Mr Roveta notes, at p 405, after he has looked at relevant court decisions:

The point is that both courts appeared to take the view that the particular expression with which we are here concerned - even though, apparently, a somewhat more stringent requirement than that of the court rule - ought to be liberally interpreted by a tribunal so as not to let an appellant suffer unfairly.

Mr Roveta also concluded that

the word "prevented" ought to be given a broad meaning so as to give effect to the regulation in situations where the person concerned has failed to apply on time owing to some circumstance which has prevented the knowledge of the need to apply coming to that persons's attention.

On consideration of those comments, Mrs Farquhar, in Durban, had formed the conclusion that regulation 69 can be applied to remedy the consequences of "errors or omissions made by the applicant for extension, or by their agent".  However, in the application of regulation 69 all of the surrounding circumstances must be considered and the final question must be if, as a whole, there is anything about them that is "special".

In the present instance we have an applicant who is also a solicitor.  Such an applicant must be assumed to be well aware of and able to apply the regulations.  Here I think Mr Eichberger's reference to application by Steen Alan Stevns (1985-86) 7 IPR 70 at p 75 is appropriate: "a firm of duly accredited solicitors can be expected to be aware of official requirements". If there was any doubt in the matter, then the fact that the applicant was advised by this office, on 18.2.93, that the provisions of regulation 44 apply, should resolve it.

For the applicant and its solicitor - and they are inseparable - to have still had an "inexplicable" opinion that the due date was on or about 20 May, and to have not checked this on or before 17 or 18 May is remarkable in proceedings such as this.  As Mr Eichberger pointed out, it is also quite clear that Mr Barrymore did not, when phoning the Trade Marks Office, check that his assumption was correct.  No corrective action was taken, on the face of it, until after the applicant was advised in writing that it had failed in its obligations.  That was in the official letter of 28.5.93, yet Mr Barrymore did not make the necessary application until 8 June.  Indeed, the survey itself was not sent out until 18.6.93.

Here, unlike Genentech, supra, the applicant has not acted with despatch but has continued with a haphazard approach.  It will not assist the applicant in such a case to point to any one single factor and say "there I made a mistake".

It has been said many times in decisions of this Office that it is not open to a party to seek an extension of time simply to make good a careless oversight or a mere casual regard for the times prescribed by the Act and the Regulations.  This has been said in decisions of long standing such as Bundy American Corp v Rent-A-Wreck, 5 IPR 307. Indeed, in Leser v Spiritual Sky, supra, that proposition was described as a "corollary" of Erling Vangedal Neilsen v Commissioner of Patents and Gelphen Nominees (1980) 33 ALR 144.

Once the time set by the relevant regulation has passed, the onus on an applicant to justify the conduct that has caused it to need extra time is considerably increased.

This is so despite the factors which Mr Barrymore has argued should support the grant.  I note in particular the public interest which in the applicant's submission might be better served by allowance of the extension, and the fact that the declarations on which the applicant is to rely are already served, albeit out of time.

None the less, I cannot stretch the language of reg 69 to a point where I can justify the grant of this extension.  Equally, the applicant has brought this matter to its present state, and the opponent had sought a hearing to decide the opposition itself.  I do not think that the public interest in the smooth and orderly conduct of oppositions is well served by an extension sought in such circumstances.

Accordingly I am obliged to refuse the applications for further time to serve evidence in answer to the oppositions.

That being so, and subject to any appeal from this decision, the opponent's requested hearing of the full oppositions will be set down in due course.  That hearing will proceed on the basis that there is no evidence in answer to the opposition.

I accept Mr Eichberger's submission that it was prudent for the opponent to attend the hearing, even though it was set down because of what was initially an objection raised by the Office.  It follows that, the extension having been refused, I should award costs to the opponent.  This I do.

T. Williams
Hearing Officer

18 September 1993