Big Screen Video Pty Ltd v Pyramid Circle Holdings Pty Ltd T/a LED Sign Supply

[2016] ATMO 6

TRADE MARKS ACT 1995

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

Re:Opposition by Combined Group of Companies Pty Ltd to registration of trade mark application 1401705(6, 19) – RAIN MATE - filed in the name of Reln Pty Ltd.

-and-

Application under section 224 by Combined Group of Companies Pty Ltd for an extension of time in which to serve evidence in reply.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Applicant for extension of time: Frazer Old & Sohn

DECISION:

2016 ATMO 06

Application for extension of time – Regulation 5.14 a prescribed act and thus Regulation 5.15 and not section 224 applies. However, in an exercise of discretion under Regulation 21.4(b) the Registrar requires the documents filed by Combined to be altered so as to comply with the Regulations. Combined is therefore required by the Regulations to file a declaration in the “approved form”.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) and the Trade Mark Regulations 1995 (‘the Regulations’), Combined Group of Companies Pty Ltd (‘Combined’) has applied for an extension of time under section 224 of the Act in which to serve evidence in reply in its opposition to registration of the trade mark appearing below:

Application No:           1401705
Owner:  Reln Pty Ltd
Priority Date:               22 December 2010

Goods:Class 6: Metallic water and effluent drainage systems; metallic channels and channel drains, storm water catchment pits, field gully traps, floor wastes;   parts   and   fittings   for   all   of   the   aforesaid;   all   of   the aforementioned goods relating to surface water or effluent drainage Class  19:  Non-metallic  water  and  effluent  drainage  systems;  non- metallic channels and channel drains, storm water catchment pits, field gully traps, floor wastes; parts and fittings for all of the aforesaid; all of the aforementioned goods relating to surface water or effluent drainage

Trade Mark:                RAIN MATE

1. Failing grant of the extension of time under section 224 of the Act, Combined, via its attorneys, Frazer Old & Sohn, requests the application of Regulation 21.4(b).

2. The circumstances under which this matter arose followed the events in the timetable below: 15 July 2014 – Combined files Notice of Intention to Oppose

   15 August 2014 – Combined files Statement of Grounds and Particulars 3 September 2014 – Applicant files Notice of Intention to Defend

   9 December 2014 – Combined files Evidence in Support:

   Statutory Declarations of:

   Jamie Slater made on 1 December 2014

   Shaun Leslie Griffin made on 3 December 2014

   20 April 2015 – Applicant files Evidence in Answer:

   Statutory Declarations of:

   Frank Villeneuve Nicholson dated 10 April 2015
   Grahame Barker dated 10 April 2015, with exhibits GB1 to GB4
   Owen Edward Luke dated 17 April 2015, with exhibits OEL1 to OEL 22.

1. Thereafter, on 3 August 2015, Combined filed an unwitnessed and unsigned document bearing the heading ‘Statutory Declaration’ (the ‘Document’), which was also missing Attachment D, being that of Shaun Leslie Griffin who is a registered patent and trade mark attorney employed by Frazer Old & Sohn.

1. On 4 August 2015, Frazer Old & Sohn filed the missing Attachment D to Mr Griffin’s unsigned and unwitnessed Document.

1. On 6 August 2015, Mr Old of Frazer Old & Sohn wrote to the Registrar stating:

In this case the evidence has been completed and filed in due time but because of various computer glitches with Objective Connect, the evidence is not in proper form.

In particular, rather than scan the signed original Declaration, a Macro was used to insert the signatures of Messrs Griffin and Old. However, the Macro appears not to have worked and that is why a slash (/) appears in the documents as lodged to either side of the names Griffin and Old.

Furthermore, in relation to Annexure D when converting this into PDF format, the conversion program appears to have created a large number of small rectangles rather than carrying out the conversion.

We believe the appropriate action is for the Registrar to utilise the provisions of Regulation 2 l .4(b) and issue a direction requiring the documents to be altered so as to comply with the Regulations.

1. I interpose that my understanding is that (notwithstanding what Mr Old states above) the problem, or problems, lay with the computer within Frazer Old & Sohn’s office rather than with Objective Connect, a system used by parties to opposition proceedings for the electronic uploading and filing of opposition evidence in proceedings before the Registrar.

1. A delegate of the Registrar responded to Mr Old’s letter:

I […] refer to the statutory declaration dated 3 August 2015 uploaded on Objective Connect on this date. The statutory declaration is not signed or witnessed. In addition Annexure D was filed on 4 August 2015 and is therefore overdue.

Regulation 21.7 states that evidence that is given in writing in any proceedings before the Registrar must be in the form of a declaration. A declaration must be signed and a statutory declaration must be signed and witnessed. The statutory declaration of Shaun Leslie Griffin is treated as not having been filed (Regulation 21.4(a)).

The time for filing your evidence in reply expired on 3 August 2015. As it stands, the statutory declaration and exhibits referred to above, submitted on 3 August 2015, will not be given the full weight of evidence. In order for a signed and witnessed statutory declaration to be taken into account as evidence when the substantive matter is decided, you will need to apply for an extension of time. The extension application must be accompanied by the fee of $150.

The evidentiary period for filing evidence in reply commenced after 15 April 2013. The new provisions for Regulation 5.15 which commenced after 15 April 2013 therefore apply.

[The delegate then quoted Regulation 5.15]

The current extension of time provisions are discussed at length in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 and MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34.

An extension under regulation 5.15(2)(a) requires a party to have made “all reasonable efforts” to comply with relevant filing requirements and to have acted “promptly and diligently at all times” (my emphasis added). Consequently, a party making a request to the Registrar for an extension of time should be able to demonstrate a consistent pattern of reasonable effort, promptness and diligence in relation to all their endeavours so far to file their evidence within the statutory timeframe.

A timeline outlining the steps taken in the preparation of evidence during the statutory period is necessary in determining whether the extension applicant has acted promptly and diligently at all times.

Your correspondence dated 6 August 2015 refers to various glitches with Objective Connect. However, this is not an exceptional circumstance. You are reminded that it is the responsibility of the party filing documents to check all documents being uploaded to ensure that they are complete and no evidence has been omitted.

1. On 20 August 2015, Frazer Old & Sohn sent a letter to the Registrar stating:

In the expectation of an extension of time being allowed under Section 224 or a requirement under Regulation 21.4 arising, we hereby forward a copy of each of the following documents as originally lodged 3 August 2015.

Declaration of Shaun Griffin dated 3 August 2015 and Annexure D of that Declaration.

1. The above letter enclosed a scanned copy of the file copy original Statutory Declaration made by Mr Griffin before Mr Old – not that “as originally lodged 3 August 2015”. I note that the Document submitted was not a copy of those originally lodged on 3 August 2015 as the Document lodged on 3 August was not signed and witnessed. Neither is the Document a corrected copy of the documents that Frazer Old & Sohn had attempted to file on 3 August 2015 as those corrected documents (if only a correction of what was filed) would have contained the scanned signatures of Messrs Old and Griffin inserted via a macro program on their secretary’s computer rather than being a scanned copy of the original Statutory declaration that Frazer Old & Sohn did not attempt to file.

1. In answer, on 25 August 2015, a delegate of the Registrar wrote to Mr Old saying:

[The delegate’s] letter dated 11 August 2015 advised that you could file an application for an extension of time under regulation 5.15 and/or make a request under regulation 21.19. I note you have applied for an extension of time under section 224. After the $150 fee has been paid, a delegate will decide whether the application substantially complies with regulation 5.15.

1. Thereafter, Mr Old has written to the Registrar requesting a decision on the written record in the following terms:

   Combined Group of Companies Pty Ltd wishes to proceed with the application for Extension of Time under Section 224 and requests a decision based on the written record. No hearing is required.

   In the alternative, a favourable reconsideration under the provisions of Regulation 21.4(b) is requested.

1. I am a delegate of the Registrar of Trade Marks and the issue has been given to me for my decision on the basis of the written record which includes, as well as the above-mentioned correspondence, the Statutory Declaration of Ms Odette Chater, secretary to both Messrs Old and Griffin.

Discussion

1. Section 224 of the Act provides:

224  Extension of time

(1)    The Registrar must extend the time for doing a relevant act that is required by this Act to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:

(a)    the Registrar or a Deputy Registrar; or

(b)    an employee; or

(c)    a person providing, or proposing to provide, services for the benefit of the Trade Marks Office.

(2)    If, because of:

(a)    an error or omission by the person concerned or by his or her agent; or

(b)    circumstances beyond the control of the person concerned;

a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

(3)    If:

(a)    a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and

(b)    on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;

the Registrar may extend the time for doing the act.

(3A)  If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.

(4)    The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

(5)    If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal.

Note:       For month see section 6.

(6)    A person may, as prescribed, oppose the granting of the application.

(7)    An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of a relevant act.

(8)    In this section:

relevant act means:

(a)    any act (other than a prescribed act) done in relation to a trade mark; or

(b)    the filing of any document (other than a prescribed document); or

(c)    any proceedings (other than court proceedings).

1. The effect of subsection 224(8) is that section 224 only applies to a relevant act if it is not a prescribed act. Prescribed acts are those listed under Regulation 21.18:

21.28  Extension of time—prescribed acts and documents

(1)    For the purposes of paragraph (a) of the definition of relevant act in subsection 224(8) of the Act, the following acts are prescribed:

(a)    complying with the requirements of subregulation 4.2(1);

(aa) filing notice of a claim to a right of priority under subsection 29(1) of the Act;

(b) applying for the registration of a trade mark in the circumstances described in paragraph 29(1)(b) of the Act;

(c) making a divisional application for the registration of a trade mark under subsection 45(1) of the Act;

(f)  filing evidence under regulation 5.14, 9.16, 17A.34J or 17A.48P;

(j) requesting that an application for the registration of a trade mark be amended under paragraph 64(b) of the Act;

(k) requesting renewal of the registration of a trade mark under sections 79, 80D or 80G of the Act;

(n)    complying with the authorised user’s request referred to in regulation 13.2;

(o)    complying with a request for information referred to in regulation 13.3;

(p)    responding to a notice under subregulation 16.3(2);

(q)    responding to an advertisement under subregulation 16.3(3);

(r) making a claim for priority under section 29 of the Act for an application for the registration of a trade mark in the circumstances mentioned in section 244 of the Act;

(s)    the filing of a document or the giving of advice to the Registrar under Part 3A;

(t)    an action or step prescribed in Part 20.

(2)    For the purposes of paragraph (b) of the definition of relevant act in subsection 224(8) of the Act, the following documents are prescribed:

(a) a notice of opposition to the registration of a trade mark under section 52 of the Act;

(b) a notice of opposition to which section 96 of the Act or subregulation 17A.32(1), regulation 17.48F or subregulation 21.20B(1) applies;

(c)    any of the following documents required or permitted to be submitted under Part 3A:

(i)an AFS request;

(ii)a submission;

(iii)an attachment;

(iv)accompanying material;

[Stress added]

1. It follows that section 224 cannot be the basis for an extension of time in relation to filing evidence in reply in an opposition since such in relation to Regulation 5.14 is a prescribed act. Regulation 5.14 provides:

5.14  Filing of evidence

(1)    The Registrar must notify the parties that:

(a)    all the evidence for an evidentiary period mentioned in this regulation has been filed; or

(b)    no evidence was filed for the period.

(2)    The Registrar must give a copy of any evidence filed by a party under this regulation to the other party:

(a)    before the end of the relevant evidentiary period, if the Registrar considers it appropriate to do so; or

(b)    after the evidentiary period ends.

Evidence in support

(3)    An opponent must file any evidence in support of the opposition within 3 months from the day the opponent is given a copy of the notice of intention to defend.

Evidence in answer

(4)    If the opponent files evidence in support of the opposition, the applicant must file any evidence in answer to the evidence in support within 3 months from the day the Registrar:

(a)    gives the applicant:

(i)all the evidence in support; or

(ii)if the opponent files the evidence in support in instalments—the final instalment of the evidence in support; and

(b)    notifies the applicant that all the evidence in support has been filed.

(5)    If the opponent does not file any evidence in support of the opposition, the applicant must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the Registrar notifies the applicant that no evidence in support was filed.

Evidence in reply

(6)    If the applicant files evidence in answer under subregulation (4) or (5), the opponent must file any evidence in reply to the evidence in answer within 2 months from the day the Registrar:

(a)    gives the opponent:

(i)all the evidence in answer; or

(ii)if the applicant files the evidence in answer in instalments—the final instalment of the evidence in answer; and

(b)    notifies the opponent that all the evidence in answer has been filed.

1. It follows that section 224 of the Act only operates in relation to extensions of time which are not prescribed acts and that the extension of time sought by Combined is in relation to an act under Regulation 5.14 which is a prescribed act.

1. The extension of time requested by Combined under section 224 of the Act, being in relation to a prescribed act, is therefore not granted under that section.

1. Combined has requested that (failing grant of the extension of time under section 224) the provisions of Regulation 21.4(b) be applied. Regulation 21.4(b) provides:

21.4    Filing of documents—treatment of non-complying documents

If a document received for filing at the Trade Marks Office fails to comply with the Act or these regulations, the Registrar may:

(a)    treat the document as not having been filed at the Trade Marks Office; or

(b)    treat the document as having been filed, but require the person who filed the document to make, or cause to be made, any alterations to the document that are necessary to enable the document to so comply.

Note:Regulations 4.2 and 4.2A set out requirements with which applications for the registration of trade marks must comply to be taken as having been filed.

1. I noted that Regulations 4.2 and 4.2A mentioned in the Note to Regulation 21.4, above, apply only to applications for registration and are therefore not relevant to the documents in question here.

1. By the use of the words “the Registrar may” within Regulation 21.4, above, the regulation is a discretionary provision which the Registrar may apply having regard to all of the circumstances of the case.  It is useful here to turn to the Statutory Declaration of Ms Chater.

1. Ms Chater states:

The Evidence-in-Reply in relation to the above opposition was due 3 August 2015 and was completed late in the afternoon of that day. The Evidence-in Reply consisted of a (second) statutory declaration of Mr Griffin and seven Annexures labelled A, B, C, D, E, Fl and F2.

There were several versions of Mr Griffin's declaration prepared in the course of preparing the evidence. In addition, any given document can have several versions such as WORD, tiff, JPEG or PDF depending upon which part of IP Australia is being dealt with. This is because different parts of IP Australia only accept different types of electronic documents. As a consequence of the above, there were a considerable number of electronic documents in the sub-directory relating to the opposition.

Since Mr Old and Mr Griffin regularly witness each other's signature on statutory declarations, an image of the signature of each patent attorney is stored in the computer of Fraser Old & Sohn. This computer also includes an auto-text facility, or small sub-program, which enables the image of these signatures to be inserted into a document. This is done by the placing a forward slash (f) at the beginning and the end of each person's name.

Annexed hereto and marked OC 1 is an early version of Mr Griffin's declaration which erroneously omits the final paragraph reading "I understand ... in every particular" and which includes the intended auto-text provision.

Once the statutory declaration of Mr Griffin had been finalised, the final version (without auto-text) was printed out and signed by both patent attorneys. The signed declaration was placed in the file (so as to be sighted if necessary at any hearing by the Hearing Officer or by the other side's patent attorney). Annexed hereto and marked OC2 is a copy of the signed final declaration of Mr Griffin as witnessed by Mr. Old.

Rather than scanning the signed final version of OC2, I proposed to use an autotext version of OC2 for the purposes of electronically loading Mr Griffin's declaration into Objective Connect in order to file the Evidence. Annexed hereto and marked OC3 is the auto-text version of the final declaration I intended to file. It includes the final paragraph "I understand .... in every particular" but for reasons which I do not understand the auto-text signature insert provision has not worked and the forward slashes still appeared on either side of Mr Griffin and Mr Old's names.

In addition, I converted the WORD document which was Annexure D into a PDF format. I have carried out this procedure many times but now understand that in this particular instance Annexure D was not successfully converted and instead of forming a legible PDF document, a mass of rectangles or squares was produced. (Presumably these rectangles have the meaning of the original document to a computer but not to a human).

Late in the afternoon of 3 August 2015 I logged into Objective Connect and loaded eight documents. Annexed hereto and marked OC4 is a copy of the confirmation email of 6.45pm "automatically" sent from Objective Connect and listing the documents I had loaded. These documents are:

Annexure D 6.29 PM Annexure F2 6.3 7 PM Annexure E 6.30 PM Statutory Declaration 6.29 PM Annexure C 6.28 PM Annexure A 6.28 PM Annexure F l 6.37 PM Annexure B 6.29 PM

Naturally, I loaded the documents in the order indicated by the times given in the email of OC4, not in the order listed in the email of OC4. I did not realise it at the time but the Statutory Declaration loaded by me into Objective Connect was the declaration Annexure OC 1.

I also loaded the PDF version of Annexure D into Objective Connect at 6:29pm in the afternoon of 3 August 2015.

After loading the eight documents into Objective Connect, I went home as it was late.

Once I reached home, I had second thoughts about the declaration document I had loaded and, to be on the safe side, I decided to re-load the declaration document. I

therefore remotely logged on to the office computer and loaded into Objective Connect a ninth document, this time the "correct" declaration of OC3.

Annexed hereto and marked OC5 is a copy of the confirmation email of 7:39pm "automatically" sent from Objective Connect and listing the ninth document I had loaded.

I made an error in not viewing the documents loaded into Objective Connect at the conclusion of the browsing activity during the loading. Since I had created, named, stored and, where necessary, typed the documents, I had no reason to suspect that any document was anything other than the document indicated by its name. Had I viewed the documents loaded, I would have seen that the signatures were missing from the statutory declarations and that Annexure D was incorrectly converted. Had I viewed the documents loaded, I would have been able to make the necessary corrections then and there on 3 August 201

1. The Statutory Declarations Act 1959 provides:

8 How statutory declaration is made

A statutory declaration made under this Act must:

(a)be in the prescribed form; and

(b)be made before a prescribed person.

1. I note that the language of section 8 of the Statutory Declarations Act 1959 is mandatory.

1. While the Statutory Declaration which Mr Old refers to as ‘the original’ was made before a prescribed person1, it is apparent that the unexecuted Document which was filed on 3 August 2015 was a not properly made statutory declaration and would have still not been properly made if the Macro had inserted the signatures onto the document. Mr Griffin would not have been ‘before’ Mr Old and, in fact could not have ‘made’ that iteration of the Statutory Declaration  since  he  had  not  seen  it.    The  document  thus  would  not  have  been  what  it

   purported to be.

1. Further, Mr Griffin was not in a position to know whether the unexecuted Document filed on 3 August 2015 was (or would have been) identical to the one which he had properly made before Mr Old and placed onto an office file since the person who placed his signature onto the Document was not him but was his secretary. And in fact the Document was not identical to the file copy (original) of the properly made Statutory Declaration since it did not contain the signature of Mr Griffin, or of Mr Old, nor indeed Annexure D.  These shortfalls would have

1 Schedule 1 to the Statutory Declarations Regulations 1993 includes Patent attorney at Item 107 and Trade mark attorney at Item 111

been addressed or noticed had the unexecuted 3 August 2015 Statutory Declaration been properly made, then scanned and lodged as evidence in reply. Therefore the evidence in reply was not before the Registrar.

1. Additionally, it is not clear to me whether Combined wishes the Registrar to substitute either the properly made statutory declaration (which it did not attempt to file on 3 August 2015) or the purported Statutory Declaration with autotexted signatures (which it did attempt to file on 3 August 2015) for the Document which it actually filed on 3 August 2015.

1. Set against these considerations in the exercise of the Registrar’s discretion is the desirability of having all available evidence before the Registrar so that the substantive matter can be fully considered.

1. The Document lodged was significantly different from the properly executed document which should have been scanned and filed via an electronic upload onto Objective Connect.

1. However, Regulation 21.4(b) in favour of Combined in relation to a document of questionable antecedents and legality.

1. However, 21.17 provides me with a discretion to treat the document (in this case the declaration) as having been filed, but require the person who filed the document to make, or cause to be made, any alterations to the document that are necessary to enable the document to so comply.

1. Regulation 21.6 relevantly provides:

21.6  Declarations

(1) A declaration required or permitted by the Act or these Regulations must be in an approved form.

Note:Declaration forms in the approved form are available on the IP Australia website at A declaration in the form of a statutory declaration, required or permitted to be given to a person mentioned in subregulation (3), may be given to the person in an electronic form by a means of electronic communication approved by the Registrar.

Note:A declaration that is not in the form of statutory declaration may also be given in an electronic form by means of an electronic communication: see section 11 of the Electronic Transactions Act 1999.

(3)    For subregulation (2), the following persons may be given declarations, including statutory declarations, in electronic form by electronic means:

(a)    the Registrar of Trade Marks;

(b)    the Designated Manager;

(c)    the Disciplinary Tribunal;

(d)    the Professional Standards Board.

Decision

1. I refuse the application under section 224. However, I have decided in this case to exercise my discretion under Regulation 21.4(b) in favour of Combined and require Combined to alter the document so that it is submitted correctly in the “approved form” as required by Regulation

   21.6.  I allow Combined two weeks from the date of this decision to make this alteration and to file its Evidence in Reply via Objective Connect

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 29 January 2015