British Sky Broadcasting Limited v The Registrar of Trade Marks

[2002] FCA 1556

FEDERAL COURT OF AUSTRALIA

British Sky Broadcasting Limited v The Registrar of Trade Marks [2002] FCA 1556

TRADE MARKS –application for an extension of time to file a notice of opposition – proper construction of s 68(1) of the Trade Marks Act 1995 (Cth).

Administrative Decisions (Judicial Review) Act 1977 (Cth), ss 5(1)(f), 16(1)(a) and 16(1)(d)
Judiciary Act 1903 (Cth), s 39B
Trade Marks Act 1995 (Cth), ss 52(2), 68(1), 213(1), 213(3) and 223(3)
Trade Mark Regulations 1995 (Cth), regs 5.1, 5.2, 5.3, 5.4 and 7.1

Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 referred to
Craig v The State of South Australia (1995) 184 CLR 163 referred to
Stadium Sports Franchising Pty Limited v Stadium Australia Management Limited (1997) 37 IPR 345 followed

BRITISH SKY BROADCASTING LIMITED V THE REGISTRAR OF TRADE MARKS
N227 of 2002

JACOBSON J
SYDNEY
13 DECEMBER 2002

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N227 of 2002

BETWEEN:	BRITISH SKY BROADCASTING LIMITED APPLICANT
AND:	THE REGISTRAR OF TRADE MARKS RESPONDENT

JUDGE:	JACOBSON J
DATE:	13 DECEMBER 2002
PLACE:	SYDNEY

REASONS FOR JUDGMENT

Introduction

1. This is an application under the Administrative Decisions (Judicial Review) Act 1977 (Cth) (“the ADJR Act”) for the review of three “decisions” made by the respondent (“the Registrar”) in relation to the registration of the trade mark SkyNet Global (“the Trade Mark”).  I have put the word “decisions” in quotation marks because the Registrar contends that two of the decisions were not decisions to which the ADJR Act applies.

2. The first decision which is challenged is the registration of the Trade Mark which took place on 21 February 2002. The Registrar concedes that this decision is reviewable under the ADJR Act provided, of course, that one or more of the grounds of review contained in s 5 of the ADJR Act are enlivened. I will refer to this decision as “the First Decision”.

3. The second decision in question was made on 22 February 2002.  On that date the Registrar declined to consider an application made by the applicant (“BSB”) for an extension of time to file a notice of opposition to the registration of the Trade Mark.  I will refer to this as “the Second Decision”. 

4. The third decision was made on or about 5 March 2002 when the Registrar refused to reconsider the second decision.  I will refer to the refusal to reconsider as “the Third Decision”.

5. It is unnecessary for me to consider whether the Second Decision and the Third Decision are decisions to which the ADJR Act applies; as to which, see Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at 337. This is because the Registrar concedes that if the decisions involved an error of law there would be jurisdictional error within the well-known principle stated in Craig v The State of South Australia (1995) 184 CLR 163 at 179. In that event, I would have power to review the Second Decision and the Third Decision under s 39B of the Judiciary Act 1903 (Cth).

   The Facts

6. On 31 March 2000, SkyNet Global Limited (“SkyNet”) lodged with the Registrar an application for registration of the Trade Mark.  The application sought registration within classes 9 and 38 which cover telecommunications apparatus and telecommunications services.  The application number for the Trade Mark was 830112. 

7. On 8 November 2001, the Trade Marks Office (“the TMO”) advertised acceptance of the application for registration of the Trade Mark.  The effect of Reg 5.1 of the Trade Mark Regulations 1995 (“the Regulations”) was that the period for filing a notice of opposition to the registration expired on 8 February 2002. 

8. On 19 February 2002, the TMO received a letter from the solicitors for SkyNet Global enclosing payment of the prescribed fee for registration of the Trade Mark.  At 1:42 pm on that day, the receipt of payment was logged on to the TMO’s computer system.

9. The effect of s 223(3) of the Trade Marks Act 1995 (Cth) (“the Act”) is that, until payment of the fee, the Registrar was prohibited from registering the Trade Mark. Thus, as from 19 February 2002, the impediment to registration resulting from s 223(3) of the Act was removed.

10. On 20 February 2002, BSB’s solicitor, Ms Jacqueline O’Brien of Allens Arthur Robinson had a conversation with Mr Robert Macrae of the TMO.  Ms O’Brien stated that BSB intended to file an application for an extension of time to oppose registration of the Trade Mark (“the Late Application for Extension of Time”).

11. Mr Macrae made a note of the conversation which recorded his advice to Ms O’Brien that the application should be made quickly because the registration fee had been paid and the Trade Mark could be registered the next day. 

12. At 5 pm on 20 February 2002, Ms O’Brien lodged the Late Application for Extension of Time with the Sydney State Office of the TMO together with the prescribed fee.

13. At 7:32 pm on the same day, Ms O’Brien faxed a copy of the Late Application for Extension of Time to the TMO in Canberra.  The TMO’s practice direction, which appeared in the Australian Official Journal of Trade Marks on 6 February 1997, states as follows:-

    “So long as a late application for an extension of time to file notice of opposition reaches the Hearings Support Unit before the subject trademark is registered, the application will be assessed in accordance with the provisions of regulation 5.2.”

14. The TMO database records the fact that the Late Application for Extension of Time was logged on to the database as having been received on 20 February 2002.  The evidence does not disclose whether the document reached the Hearings Support Unit before the Trade Mark was registered. However, it seems likely that it was not seen by the Hearing Support Unit prior to registration on 21 February 2002. 

15. The Late Application for Extension of Time was signed by Ms O’Brien.  She stated in paragraph 3 that the ground upon which the application was made was that due to an error or omission by the potential opponent’s agent, Messrs Allens Arthur Robinson, the application for an extension of time was not filed within the prescribed period.

16. The Late Application for Extension of Time was accompanied by a statutory declaration made by Ms Joycia Young, a senior associate with Allens Arthur Robinson, who is assisting Ms O’Brien in this matter.  The effect of Ms Young’s statutory declaration is that the reason for the delay was that Ms Young inadvertently omitted to enter the deadline of 8 February 2002 in her electronic calendar.  Ms Young set out the reason in detail in paragraphs 8 to 17 of her statutory declaration.  In my view, Ms Young’s statutory declaration established that the failure to file an application for extension within the prescribed period was caused by her error or omission. 

17. On 22 February 2002, the TMO wrote to Messrs Allens Arthur Robinson in response to the Late Application for Extension of Time.  The letter was not received by Allens Arthur Robinson until 28 February 2002.  The letter annexed a copy of the practice direction dated 6 February 1997 to which I referred in paragraph [13] above.  The letter stated that the faxed application to the Canberra office of the TMO was received outside normal business hours and could not be acted upon until after the TMO opened on 21 February 2002.  The letter also stated that the Trade Mark was registered early on the morning of 21 February 2002 before the Late Application for Extension of Time could be acted upon.  The letter stated that the First Decision could not be reversed.

18. On 28 February 2002, Allens Arthur Robinson wrote to the TMO requesting a reconsideration of the matter. The letter referred to s 213(1) of the Act which provides that a document is taken to be filed at the TMO if it is filed at a sub-office. The letter also referred to Reg 5.2(3) of the Regulations which provides that an application for extension of time may be made at any time before the Trade Mark is registered.

19. On 5 March 2002, the TMO notified Allens Arthur Robinson that the Deputy Registrar would not reconsider the Second Decision. 

20. On 22 March 2002, BSB filed its application for an order of review in this Court.

    The Submissions

21. Mr D M Yates SC appeared with Mr D B Studdy for BSB.  Mr G Johnson appeared for the Registrar.  Counsel for both parties filed helpful written submissions in advance of the hearing.  These submissions were further refined in oral argument.

22. Mr Johnson relied on s 68(1) of the Act which is as follows:-

    “(1)The Registrar must, within the period provided under the regulations, register a trade mark that has been accepted for registration:

    (a) if there has been no opposition to the registration; or

    (b) if there has been an opposition – if the Registrar’s decision, or (in the case of an appeal against the Registrar’s decision) the decision on appeal, is that the trade mark should be registered.

    Otherwise, the application for the registration of the trade mark lapses.”

23. Mr Johnson submitted that s 68(1) is in mandatory terms and that the Registrar was bound to register the Trade Mark when the prescribed fee was paid on 19 February 2002. He said that this was because, at that time, there was “no opposition to the registration” in accordance with s 68(1)(a).

24. Indeed, he said that this was the case even if the Late Application for Extension of Time was filed on 20 February 2002 because that did not constitute an opposition to the registration.

25. Mr Johnson also submitted that SkyNet had a statutory entitlement under s 68(1) to have the Trade Mark registered as soon as the impediment to registration, namely non-payment of the prescribed fee, was removed.

26. The effect of Mr Yates’ submission was that, upon the proper construction of s 68(1) of the Act and the regulations to which I will refer below, the obligation of the Registrar was to register the Trade Mark within the time prescribed by the Regulations. The relevant regulation to which Mr Yates referred is reg 7.1(1)(a) which provides that the period for registration of a trade mark which has been accepted is six months after the date of advertisement. Thus, here, the prescribed period did not expire until 8 May 2002.

27. Mr Yates submitted that the effect of s 52(2) of the Act and regs 5.1, 5.2, 5.3 and 5.4 of the Regulations is that BSB was entitled to have its Late Application for Extension of Time considered on the merits because it was lodged before the Trade Mark was registered.

    Decision

28. It is plain that the Late Application for Extension of Time was filed on 20 February 2002, that is, before the Trade Mark was registered on the next day. This is because it was delivered to the Sydney sub-office by courier on 20 February 2002; see ss 213(1) and (2) of the Act.

29. Also, the faxed copy was transmitted to the TMO at Canberra before midnight on 20 February 2002.  This was in accordance with the Registrar’s official notice headed “Time periods and ‘local’ holidays” dated 14 June 2001 which was in evidence before me.

30. In my view, Mr Yates’ submissions as to the proper construction of s 68(1) of the Act and the Regulations are correct and they are supported by authority to which I will refer below.

31. A notice of opposition must be filed within 3 months of the date of advertisement or within an extended period in accordance with the Regulations; see s 52(2) of the Act and regs 5.1 and 5.2(1) of the Regulations.

32. An application for extension of time may be made within the period of three months from the date of advertisement or, alternatively, after that period has expired; see regs 5.2(2), 5.2(3) and 5.3(b)(ii) of the Regulations.

33. Regulation 5.2(3) is critical because it provides that, if the three month period has expired, an application for extension of time may be made at any time before the trade mark is registered on one or more of the specified grounds.  The ground relied upon here was reg 5.2(b), namely an error or omission by BSB’s agent.  As I have already said, the matters set out in paragraphs 8 to 17 of Ms Young’s statutory declaration satisfied this requirement.  The material contained in those paragraphs also satisfied the provisions of reg 5.3(b)(ii) because they stated the reason why the application was not made before 8 February 2002.

34. Regulation 5.4(1) is in mandatory terms.  It provides that, subject to sub-regs  (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for extension of time to file a notice of opposition, the Registrar must grant it.  This regulation, together with reg 5.2(3) supports the proposition that a person filing an application for extension of time before the registration of the relevant mark has an entitlement to have it considered on its merits.  There is nothing in regs 5.2(2) or 5.2(4) which, either as a matter of construction or upon the facts of this case, negatives BSB’s entitlement to have its Late Application for Extension of Time considered on the merits. 

35. The submissions made by Mr Johnson are contrary to the decision of H R Hardie (Deputy Registrar of Trade Marks) in Stadium Sports Franchising Pty Limited v Stadium Australia Management Limited (1997) 37 IPR 345.

36. The facts in that case were almost identical to the facts here. The TMO practice at that time was that so long as the registration fee had been paid, the Registrar must register the mark regardless of the fact that a late filed application to extend the time for opposition may be pending. The Deputy Registrar held that this practice contravened the provisions of s 68 of the Act. The Deputy Registrar’s reasons are set forth in the following passage at 349:-

    “… I agree with [Mr Muratore] that the word “must” in s 68 obliges the registrar simply to act within the time specified in the regulations. Within that time, so long as there is no opposition, and so long as the registration fee has been paid, the registrar “must” register the trade mark.  As Mr Muratore contends, the section ensures against an accepted mark languishing but it does not oblige the registrar to register a paid up application as soon as the opposition period has expired.  Nor does it oblige the registrar to disregard the merit of any late application for an extension to file opposition which may be filed before the registration is effected.  Applying such a practice would, I agree, circumvent the operation of reg 5.3 and the specific provision in that regulation, that “at any time before registration”, an application may be made to extend the time for filing opposition.

    Applications properly made according to the provisions of reg 5.2(3) must succeed or fail on a full assessment of the merits.  They should not fail simply on the application of an Office practice.

    I find that the Office practice which excludes consideration of the merits of certain late applications filed under s 52(2) of the Act, for additional time for filing notice of opposition, is wrong.”

37. Mr Johnson submitted that the decision of Deputy Registrar Hardie was wrong and that I should not follow it. He submitted that the Deputy Registrar failed to take into account that an applicant for registration has a right to registration under s 68(1) where the prescribed fee has been paid and the three month opposition period has expired without a notice of opposition being filed.

38. He submitted that there was a distinction between an opposition to registration and an application for an extension of time.  Thus, he said that even if the Late Application for Extension of Time was pending on 20 February 2002, the Registrar was bound to register the Trade Mark because no notice of opposition had been filed.

39. Mr Johnson further submitted that s 68(1) of the Act must be read with s 52(2) of the Act and that s 52(2) does not permit an application for an extension of time to be made after the expiration of the three month period unless the applicant for registration has not paid the prescribed fee.

40. Mr Johnson also relied upon the practice direction dated 6 February 1997 which I have set out at [13] above.

41. I am unable to accept Mr Johnson’s submissions. First, it seems to me that the construction of s 68 of the Act given by Deputy Registrar Hardie is correct for the reasons which he gave.

42. Second, whilst it is true that an application for an extension of time does not constitute an opposition, for the reasons given by Deputy Registrar Hardie, the Registrar was not empowered to register the Trade Mark without first considering the Late Application for Extension of Time, which was filed before registration of the Trade Mark, on its merits. 

43. I accept the submission made by Mr Yates that, in this regard, it is important to take into account the fact that an opposition to registration plays an important public function in the scheme of the Act because it must be borne in mind that the registration of a trade mark confers a statutory monopoly on the proprietor. If the Registrar were to rule favourably on the Late Application for Extension of Time, this would enable an opposition to be lodged.

44. Third, in my view, there is nothing in s 52(2) of the Act which precludes an application for an extension of time after the expiration of the three month opposition period. Mr Johnson’s proposed construction of s 52(2) would leave almost no work for reg 5.2(3) of the Regulations to perform. I do not consider that reg 5.2(3) should be so narrowly construed. Nor do I think that there is any inconsistency between s 52(2) and reg 5.2(3) or indeed between s 68(1) of the Act and the regulations set forth in Part 5 of the Regulations.

45. Fourth, it seems to me that the practice direction dated 6 February 1997 which states that a late application will be considered provided that it reaches the Hearings Support Unit before the mark is registered puts an impermissible gloss on reg 5.2(3).  It is therefore not open to the Registrar to rely upon the practice direction.

46. It follows, in my opinion, that the First Decision, that is to say the registration of the Trade Mark, involved an error of law, namely an incorrect construction of the obligations of the Registrar under s 68(1) of the Act. The ground of review contained in s 5(1)(f) of the ADJR Act is therefore made out. It is unnecessary to consider the other grounds for review relied on by BSB, namely the grounds contained in ss 5(1)(b), (d), (e), (j) and s 5(2)(b) of the ADJR Act.

47. Accordingly, I propose to exercise my powers under ss 16(1)(a) and 16(1)(d) of the ADJR Act to set aside the First Decision and direct the Registrar to consider the Late Application for Extension of Time in accordance with the Regulations. The effect of my order setting aside the registration would be that, under s 68(1) of the Act, the application would lapse unless the six month period (which expired on 8 May 2002) is extended. I have power to extend that date under reg 7.1(2) and I propose to do so.

48. The Second Decision and the Third Decision were both affected by the error of law relating to the proper constitution of s 68(1) of the Act. I therefore propose to set aside both of those decisions.

49. It has been agreed between the parties that short minutes of order will be brought in to give effect to my judgment.

I certify that the preceding forty-nine (49) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jacobson

Associate:

Date:              13 December 2002

Counsel for the Applicant:	Mr D M Yates SC with Mr D B Studdy
Solicitor for the Applicant:	Allens Arthur Robinson
Counsel for the Respondent:	Mr G Johnson
Solicitor for the Respondent:	Australian Government Solicitor
Date of Hearing:	5 December 2002
Date of Judgment:	13 December 2002