Bentley Lingerie Inc v Greta Lingerie (Aust) Pty Ltd

[1994] ATMO 26

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

Re:  Opposition by Bentley Lingerie Inc to an application by Greta Lingerie (Aust) Pty Ltd for an extension of time to serve Evidence in Support of Opposition to registration of Trade Mark Application 494103.

Background

Trade Mark application 494103 was advertised accepted for registration on 25.2.93. It is proceeding in the name of Bentley Lingerie Inc ("the applicant") and was accepted in respect of "Sleepwear including lingerie, nightshirts, loungewear, robes, tank tops and underwear". A notice of opposition to registration, as provided for by section 49 of the Trade Marks Act, was lodged by Greta Lingerie (Aust) Pty Ltd ("the opponent") on 21.5.93 and this activated the opposition provisions of Division 1 of Part VII of the Trade Mark Regulations.

Regulation 43 of that division provides that a copy of the evidence in support of the opposition shall be served on the applicant within 3 months of the date on which notice of opposition is lodged, i.e. by 21.8.93 but, as is common in such matters, the opponent sought an extension of time, to 21.9.93, within which to effect such service.  The stated reason was that "the collection and collation of the evidence has as yet not been completed.  Further time is required in order to complete the above and to serve and lodge the evidence".  As is normal practice in such matters, the view of the applicant was sought and, in the lack of any adverse comment, the Registrar's delegate considered that the stated reason was prima facie sufficient and granted the extension sought.

That extension had been sought by the firm of Watermark, the opponent's patent attorneys, by way of letter dated 20.8.93.  Some two weeks later, on 2.9.93, the same firm advised this office that "we have relinquished our representation of the opponent in this matter.  We suggest that any further correspondence with the opponent should be sent directly to the opponent".  A footnote to the letter reads:  "cc Greta Lingerie (Aust) Pty Ltd, Attn. Ray Magid". 

Acting on the import of that letter, the office sent the advice of the grant of the extension, to which I have just referred, directly to the opponent.  That was by way of a standard computer generated notice which issued on 21.9.93.

On 23.9.93, the Office received a letter which reads:

We wish to advise you that we received your letter dated the 21/9/93 in todays mail (23/3/93) regarding extension time for Trade mark Application No. 494103.

We would please ask for one (1) months extension for us to be able to serve evidence.

We hope you will be able to assist us in this matter.

A note on the application file shows that, on 27.10.93, an officer of the Trade Marks Office rang the opponent company and advised a Mr Ray Magid that the application lodged on 23.9.93 was made out of time.  As such, it was required to be supported by a statutory declaration explaining how it came to be made after the expiry of the time as originally allowed.  The appropriate late fee was also requested and, in view of the passage of time, it was put to Mr Magid that two months of extension would be required.

It is noted on the file that Mr Magid asserted that he and his company were unaware that their attorneys had relinquished responsibility for the handling of the matter.  He requested a copy of the letter written to this Office by his company's former attorneys, and according to the file note this was sent to him by fax, the transmission report of which appears on the file.

Such was the state of matters when, on 17.11.93, the opponent again wrote to the Office, advising that an extension to 21.12.93 was required.  This was accompanied by a statutory declaration by Mr Magid.  The declaration states that Mr Magid is in fact a director of the opponent.  At the heart of the matters now at issue is the statement:

Watermark has now informed the Company that it will no longer represent the Company in this matter.  The company wishes to retain the services of Feingold Partners, solicitors ...  The company will require to obtain the relevant files from Watermark and deliver those files to Feingold Partners where the relevant material will have to be perused and instructions given in order to enable Feingold Partners to take up the Opposition...

As had previously been done, the Office sought the comment of the applicant.  The applicant's attorney was sent a copy of the material lodged on 17.11.93 but, by oversight, this Office made no mention of the earlier request for time or of the subsequent phone call from this office to Mr Magid.  It is not surprising, therefore, that the applicant objected to the grant of the extension sought, and the stating of that objection was the trigger for the setting down of a hearing.

At the hearing, the applicant was represented by Mr Leon Allen, patent attorney, of the attorney firm of Shelston Waters.  The opponent's newly appointed solicitors, Feingold Partners, did not appear and made no written submissions.

At the outset, Mr Allen was taken aback by the material which had not been sent to him.  He did, however, submit that the material which was revealed to him none the less failed to show that the opponent was entitled to the benefit of an extension of time in the circumstances.  While he noted the truism that the public interest is best served by the allowance of the extension, he noted that it is still a privilege to be granted such an extension.  The onus in justifying a late extension is higher than in any comparable request made within time in view of the terms of regulation 69, he argued. 

Mr Allen referred me to a decision of a delegate of the Registrar of Trade Marks in the case of Unilever Aust v Johnson and Johnson 25 IPR 410. That decision emphasises the necessity of showing some good reason for the grant of the extension. It is also an authority for the proposition that the reasons for seeking the extension must, if a good reason is to be shown, be disclosed rather than left entirely unrevealed. While the Registrar can have some regard to the "notorious" difficulty of preparing evidence in these matters - refer Lyons v Registrar of Trade Marks (1983) 1 IPR 416 - it may be fatal for a party seeking extension not to disclose at least some base for that plea.

Mr Allen argued that, in the present case, the opponent had in fact relied on a cleverly worded declaration that did not disclose the truth of the matter.  Mr Magid's declaration was framed, in his submission, to conceal the fact that the opponent company must have had warning of the fact that its attorney was planning to relinquish its role on the opponent's behalf.  It was prima facie very unlikely, according to Mr Allen, that a firm with the experience and reputation of one of the major firms of attorneys would simply abandon its client with no more warning than the sending of a copy of a letter written primarily to the Registrar.

To this, Mr Allen added the caution that there is an onus on any party seeking the indulgence of an extension to make full and frank disclosure to the Registrar.  Here he relied on a decision under the Patents Act1952, given in Kimberly-Clark Ltd v Commissioner of Patents and Another (No 3), 13 IPR 569 at p 584.

In that decision, Jenkinson J notes that the considerations posed by Bowen CJ in Vangedal-Nielsen v Commissioner of Patents, (1980) 33 ALR 144 at 150, as relevant to s 59(1) of the Patents Act apply also to the exercise of the power, conferred by s 160(2)(a), to extend the time prescribed by the former sub-section for lodging notice of opposition, although the relative weight of each consideration may well be different in the two different discretionary judgements.

Jenkinson J notes that:

In order to make out the "proper case ... justify an extension" to which Bowen CJ referred in that case, an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant ... relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.  Whether or not (that which) enlivened the power occurred without moral fault on his part, the applicant's claim to the exercise of the power cannot be judged without the means of evaluating the applicant's moral claim to an indulgence which will, to some extent at least, work a prejudice to the efficient operation of what Bowen CJ in that case called "the system", even if no prejudice to the applicant for a patent."

The decision goes on to note that s 160(2)(a) confers a power so conditioned that its exercise is not lightly to be granted, and that such grant must be invoked only upon a prompt, frank, comprehensive and clear disclosure of all the circumstances relevant to the weighing of the discretionary considerations on which the grant or refusal of the extension will depend.  It was on that aspect that Mr Allen concentrated.  However, the need to disclose in the fullest detail the circumstances surrounding the late application in Kimberly-Clark were a reflection of the fact that there was a need to show that what was arguably a deliberately chosen course was in fact within the definition of "error or omission" applicable under s 160(2).  Jenkinson J thus emphasised that there was a need to know the extent of the knowledge, or lack of it, of those who gave instruction to an attorney in Australia, in addition to the processes by which that agent's errors came to be committed.

Decision
The Registrar's powers to grant extensions of time for the service of evidence arise from the provisions of s 130, which states:

Where, by this Act, a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly provided, extend the time either before or after its expiration

In the first instance, the reasoning of Bowen CJ in Vangedal-Nielsen v Smith 33 ALR 144 is applicable to these matters to the extent that an extension of time is not a matter of right, but must be justified by an explanation of why the time allowed in the original period has been insufficient. Here I draw on Lyons v Registrar of Trade Marks 1 IPR 416 at p. 419, decided in relation to an application for (as is presently the case) additional time for service of evidence in support of a trade mark opposition.

The matter is also to be looked at as set out in D'Urban Inc v Canpio Pty Ltd 1990 AIPC 90-658, and in many decisions since then. 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. It is thus clear that an extension which is requested after the end of the period sought to be extended can proceed only if it is made in "special circumstances". Regulation 69 is thus a barrier to some extensions which might otherwise meet the requirements of s 130. If the circumstances in which this extension was requested belatedly are not "special circumstances" then the application cannot proceed.

In D'Urban v Canpio, supra, 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 the 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 person's attention.

On consideration of those comments, Mrs Farquhar, in D'Urban, 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".  Mrs Farquhar was not attempting, in referring to "errors and omissions", to set limits on what may constitute special circumstances.  She was merely citing one example of such circumstances, but to the extent that a party wishes to claim the existence of an error or omission it should base its claim on the frank and comprehensive disclosure of all relevant facts.

I note too that there is, in Genentech, supra, a real emphasis on justice in the final outcome, and that this is consistent with the weighing up of what Jenkinson J called a moral claim to an indulgence.

In the present case, there are elements in addition to the declaration of Mr Magid that do not meet the "frank, comprehensive and clear" test of Jenkinson J in Kimberly-Clark, supra.  It would be most remarkable if an attorney had abandoned its client in the way that might be inferred from a simple reading of the declaration of Mr Magid.  Further, I note that Mr Magid declares that "Watermark has now (my emphasis) informed the company" of its decision to relinquish the case.  That is at best a spurious issue, since Mr Magid had been informed, well previous to the making of his declaration, by the Trade Marks Office if by nobody else, that Watermark had so decided.

I note that regulation 69 is a general stipulation about the requesting of extensions in general. It is thus not a narrow permissive provision and hence not framed in a way which suggests that its exercise should be as rigorously controlled as the approach of Jenkinson J to s 160(2)a of the Patents Act, in Kimberly-Clark, supra.  However, there is still a very strong inference that the approach of the present opponent has either been less than diligent or less than frank.  The first of these would rule out a claim that there were special circumstances which might justify the extension.  Similarly, if there is reason for me to believe that there are undisclosed circumstances which argue against the grant, then it has not been properly justified. 

On the material before me there has thus been no proper case made out and I must refuse to extend the time allowed.  This I do, and I award costs to the trade mark applicant.

T. Williams
Hearing Officer
7 April 1994