British Sky Broadcasting Ltd v Skynetglobal Limited

[2003] ATMO 17

TRADE MARKS ACT 1995

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

Re:Application by British Sky Broadcasting Ltd for an extension of time to file Notice of Opposition to registration of trade mark application 830112 (9, 38) - SKYNET GLOBAL - filed in the name of SkyNetGlobal Limited.

DATE OF DECISION:	11 March 2003
DELEGATE:	Terry Williams
DECISION:	Extension of time to file notice of opposition granted under Reg 5.2(2)(b).  Error or omission leading to failure to file, by due date, request for time for research under under reg 5.2(2)(e).

Introduction

On 18 February 2003, I wrote to the parties involved in the matter that is discussed below.  I proposed to grant an extension of time and the document I sent them is as per the appendix attached, except for some minor format changes.  The circumstances in which that extension of time was proposed will be clear from what follows.

The time I have allowed for one of the parties to request a hearing has now passed.  No hearing has been requested and it is now time for me to carry out my proposal and extend the time in question as I foreshadowed.

Grant of extension

For the reasons set out in the attached appendix, I now extend the period for the filing of a notice of opposition to 14 March 2003.

Terry Williams
Hearing Officer
Trade Marks Hearings
11 March 2003

Appendix

Background

Trade mark application 830112 is in the name of SkyNetGlobal Limited.  The status of that application for registration has already been the subject of litigation, see British Sky Broadcasting Limited v Registrar of Trade Marks [2002] FCA 1556. Briefly, the Court found that the Trade Marks Office erred in registering the application in the face of the present request by British Sky Broadcasting Ltd (BSB) for an extension of time within which to file a notice of opposition to the registration of the trade mark in question. The Federal Court has issued orders that correct the register and require that the Registrar of Trade Marks consider BSB's extension request on its merits.

In general, this matter is governed by Part 5 of the Trade Marks Regulations 1995 (the regulations).  To date, the regime set out in reg 5.2 has been followed, in that BSB has served a copy of the extension request on the trade mark applicant, who was given an opportunity to make representations about its grant.  The extension request is the subject of adverse representations by the trade mark applicant.  However, that company has not requested to be heard on the issue.

SkyNetGlobal Limited is both an applicant (for registration) and an objector (to an extension of time application made by BSB), but for convenience I will refer to it simply as "the objector" from this point.  The Registrar of Trade Marks is required, now, by the orders of Jacobson J in the litigation to which I have referred, to deal with the merits of that extension request.  I do so now under appropriate delegation from Registrar of Trade Marks.  The objector has been given an opportunity to make written submissions, which I will deal with below.

Legislative Framework

The mechanics of this matter are found, not in s 52 of the Trade Marks Act 1995, but in the regulations. Of Part 5 of the regulations, reg 5.1 is relevant but not critical to the present issue, though I will refer to it below. Regs 5.3, 5.4(2) and 5.4(3) are also not critical, as they govern only the form the extension application must take and the entitlement of the objector to make the representations that it has made and to which I will come in due course. I will set out now the remaining parts of regulations 5.2 and 5.4.

Extension of time for filing—grounds

5.2 (1) A person may apply to the Registrar for an extension of time in which to file a notice of opposition.
(2) An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:

(a) an error or omission by a trade marks officer;
(b) an error or omission by the person applying for the extension of time, or by the person’s agent;
(c) circumstances beyond the control of the person applying for the extension of time;
(d) the conduct of genuine negotiations between that person and the applicant for registration;

(e) the undertaking of genuine research to decide:

(i) whether opposition is justified; or
(ii) on the grounds of opposition.

(3) If the period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragraph (2)(a), (b) or (c) and on no other ground.

Extension of time for filing—grant of extension

5.4 (1) Subject to subregulations (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition, the Registrar must grant the extension of time.

...

(4) If an application for extension of time is made after the period for filing a notice of opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period.
(5) An extension of time must be for such period:

(a) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2(2)(a), (b) and (c)—as the Registrar believes is reasonable; or
(b) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2(2)(d) and (e)—not exceeding 3 months as the Registrar believes is reasonable.

The time initially provided for any request for an extension of time to oppose registration is the 3-month opposition period specified in reg 5.1.  (Chiron Corp v Registrar of Trade Marks (1998) 85 FCR 480, (1998) AIPC 91-439). BSB was late in filing its request, and missed that deadline. As a late extension request, one made after that deadline, it is subject to the limits imposed by reg 5.2(3) and 5.4(4). I will now set out some details of both the extension request and the objector's comments.

Grounding of the extension

There is no dispute that the late filing of the extension request was attended by an error or omission in the office of the solicitors for BSB, Allens Arthur Robinson. There is, again, no dispute about the circumstances of this error.  Solicitor Joycia Young failed, in carrying out her client's instructions, to make a diary note to allow for the timely filing of the extension request.  What is in dispute is the allowability of the extension itself.  Therefore, most of the relevant and undisputed facts come from the extension request, not from the accompanying declaration that Ms Young filed in compliance with reg 5.3.  Where those latter details are relevant, they appear in sufficient detail from the written submission of the objector's solicitors.

Paragraph one of BSB's extension of time application recites the amount of time initially sought: 3 months.  This correctly identifies the end of the opposition period as 8 February 2002, and seeks to extend that period to 8 May 2002.  Paragraph 2 states that:

The ground upon which this application is made is that the Potential Opponent is undertaking genuine research to decide

a) whether the opposition is justified; and

b) if so the grounds of opposition.

On its face, this poses some difficulty when the limits and exclusions of reg 5.2(3) are considered.  However, paragraph 3 recites:

The ground upon which the late application is made is that, due to certain errors or omissions by the Potential Opponent's agent the relevant deadline was overlooked and the application for extension of time was not filed within the prescribed period.

Issues

What is at issue in deciding this extension is ultimately the tension inherent in this triangular balance between reg 5.2(3) and Paragraphs 2 and 3 of BSB's extension request.

For the objector, Messrs Clayton Utz have laid out two lines of argument.  The second of these deals with various matters which appear to be somewhat discretionary, in that they rely on either the public interest or the special complexities of the present matter.  Under this heading, the objector argues that its trade mark application is particularly vulnerable to lapsing, because of the terms of s 68, in the circumstances of the litigation to which I have previously referred.  However, I must exclude such issues.  Regs 5.1 to 5.4 are a codification of the process for the grant or refusal of extensions[1].  There is no scope, beyond this codified process, for any exercise of discretion in either direction.  The process under the 1995 regulations is thus different to that under the former 1955 Act[2] though the details of some of the tests and stipulations are comparable.  Secondly, I must respectfully accept that the orders issued by Jacobsen J are adequate for their purpose, which was the avoiding of any potential for this application to lapse because of the intervention of BSB.

[1] Re Application by Working Systems Software Pty Ltd  [1997] ATMO 31, (1997) 39 IPR 387

[2] Matthew John Meath and John Norman Meath v Anestis Kyprianou [1997] ATMO 45; 40 IPR 150;

However, the objector has raised a second and detailed argument as follows.  I set this out verbatim, as it is a full yet concise statement of, among other things, the rationale behind current practice at the Trade Marks Office.  The bolding and underlining were added for emphasis by the objector's solicitor:

... in view of the provisions of Reg.5.3 the Registrar must be satisfied under the provisions of Reg.5.4, on an application under Reg.5.3 based on Reg.5.2(2)(b), that there is a causal link between the error by the agent of the potential opponent and the failure to file the Notice of Opposition by the potential opponent and the potential opponent must have formed an intention to file the Notice of Opposition prior to the expiry of the opposition period; See Crown & Andrews Pty Ltd v. All American Fremantle International Inc (1997) 38 IPR 595; Application by Mission Personnel Services Pty Ltd(1998) 42 IPR 255;  Stork Pompen BV v Weir Pumps Ltd (1998) 11 IPR 542; and Re Application by Elixir Technologies Corporation (2002)55 IPR 576-595 (Elixir case).

In the Elixir case the Delegate for the Registrar refused the late request for an extension as, although she was satisfied in terms of sub-regulation 5.4(4) that there was sufficient reason for the lateness of the potential Opponent's application for an extension of time to file a Notice of Opposition, she could not also be satisfied as to the grounds for requiring the extension in terms of sub-regulation 5.4(1).

In particular in the Elixir case the Delegate for the Registrar stated at 582 - 585:

It may appear to the potential opponent that the restriction in the regulations, so that once the period for filing a notice of opposition has ended an application for an extension of time in which to file a notice of opposition can only be made on certain grounds, is somewhat arbitrary.  Indeed one effect of this restriction in the regulations may be the filing of notices of opposition perhaps prematurely when there is still a real prospect for settlement or coexistence.  In other cases, notices of opposition may be filed citing a large number of grounds, as the potential opponent has not yet completed research to decide which grounds of opposition, if any, are viable.  While filing what later turns out to be an unnecessary notice of opposition may cause the potential opponent unwanted cost, it does protect the opponent's position should an opposition on substantive matters become reality.  I note the submission of Ms Drummond and Ms Dunn in regard to the fact that extensions of time can obviously be granted, even late ones, and a potential opponent should not be prejudiced by the fact that it has not yet decided to oppose.  However, if grounds for negotiations or research were open to late applications for extensions of time where the opponent had yet to decide if opposition was warranted, the undesirable possibility of frivolous delay in the registration of an accepted trade mark could result.

In the Mission Personnel decision, supra, Hearing Officer Murray looked at the issue of whether, during the statutory period in which to file the notice of opposition, the potential opponent's intentions had escalated into a specific intention to oppose.  It was noted that without this specific intention:

any accepted trade mark could be opposed at any time up to registration on a mere vague, hypothetical intention.  The importance of a party's right to oppose is enshrined in the legislation.  However, that right should not be allowed to take precedence, in cases such as this, over the trade mark applicant's right to registration where there has been no opposition within the prescribed period.  The provisions of regulations 5.2 and 5.4 are intended to protect the rights of a party who can demonstrate a concrete intention to oppose that was somehow thwarted.  For the protection of the trade mark applicant, interpretation of those provisions should not be extended to encompass insubstantial, "what if..?" scenarios."

At that point at which it applied for its extension of time to file a notice of opposition, Elixir Technologies no longer had the option under regulation 5.2 to apply for extra time to carry out genuine research.  Once an application for an extension of time to file a notice of opposition is late, the Registrar can only allow it if it has been thwarted by error or omission by either a trade mark officer, by the extension applicant.

In the present case, while BSB may have established grounds for the lateness of the application, it has not satisfied the grounds upon which the application may be made and has not established that BSB as the potential opponent had a clear and concrete intention to oppose the application before the expiry of the prescribed period.

In paragraph 6 of Ms Young's Statutory Declaration it is stated that the opponent was undertaking genuine enquiries based on its prior use.  However there is no evidence that BSB had formed an intention to file a Notice of Opposition prior to the expiry of the opposition period.  Indeed, the evidence is to the contrary.  It appears from Ms Young's Declaration, including in particular para. 6, that the instructions of BSB were to request an extension of time on the basis that further enquiries were to be conducted before a decision could be made as to whether to oppose the registration of the mark.

Thus while there may be a causal link to show that the failure to file an extension of time within the prescribed period was caused by the agent's error or omission, there is no such link to show that there was a failure to file a Notice of Opposition.

Firstly, the objector's solicitor asserts that BSB "has not satisfied the grounds upon which the application may be made". In so far as this goes to the apparent dichotomy between paragraphs 2 and 3 of the application, I disagree.  It is true that BSB has nominated, in paragraph 2, one of the grounds expressly excluded by the action of reg 5.2(3).  Were this all there was to it, with nothing more to be discovered from the application, I think the extension request would be fatally flawed.  However, paragraph 3 of the application invokes one of the grounds that are allowable under reg 5.2(3).  I intend to overlook the defect of form that sees, on the same document, a reference to one of the proscribed grounds.

Therefore, my concern is not the question of form so much as of substance, and in particular the difficult issue of causality.  In a nutshell, was the error or omission a ground on which BSB can now rely for an extension of time to file a notice of opposition?

At the heart of the objector's argument is one aspect of current practice at the Trade Marks Office.  From the objector's submissions it appears that, as a prerequisite, a party seeking to rely on the provisions of reg 5.2(2)(a), (b) or (c) cannot do so unless it has already formed an intention to oppose.  Where is the authority for this?  If it exists, then there is a fundamental problem with the grounding of the extension request. 

The decisions to which the objector has referred for this aspect of Trade Marks Office practice all appear to have their origin in Stork Pompen BV v Weir Pumps Ltd (1998) 11 IPR 542. That case was decided under s 160 of the Patents Act 1952.  That provision was an empowering and discretionary provision, rather than a codification of the extension of time process and so the case does not translate directly into the present legislative framework.  However, the decision makes it very clear that there must be causality between the error or omission and the subsequent need for an extension of time.  In other words, BSB must show that it needs an extension, now, because of the error already set out.

Clearly, BSB had not, at 8 February 2002, formed an intention to oppose.  Indeed, as late as 20 January 2003 BSB had still not filed a notice of opposition.  It is beyond dispute that a party that seeks to ground its failure to file a notice of opposition on an error or omission while also admitting that it had no intention to file such a document faces an uphill battle. 

Hence, as the objector's solicitor has noted, in Mission Personnel, supra, the existence of 'insubstantial, "what if..?" scenarios' was found to be well beyond the tolerance of the extension of time provision.  As Hearing Officer Murray there found, the prospective opponent was, at the critical time, utterly oblivious of the existence of a trade mark application the registration of which it might otherwise have wanted to oppose.  What that entity would have done had it known was, in the delegate's view, very much "what if".  Much more was, obviously, needed.

This should be compared with the situation in Weir Pumps, supra.  At 546 - 547, the delegate first noted that Weir had not endeavoured to get to a point where it could oppose the grant of the patent in question.  Indeed, it had made a deliberate decision not to keep a watch on patent applications in a particular and critical area.  From this, the delegate concluded (emphasis added):

... Clearly therefore, in such circumstances there can be no error or omission in not performing an act which Weir never intended to perform.

On the question of intention, Mr Terry argued that in a number of Office decisions, the intentions of the prospective opponents were not clear and yet extensions had been granted.  For example, in Firmaframe Nominees v Automatic Roller Doors (1984) 4 IPR 137, the instructions given by the prospective opponent to the attorneys were only of a general nature to keep a watch on applications relating to roller doors - not on any specific application.  Such general instructions, he submitted, could not be indicative of any intention to oppose a specific patent application.

Whilst I acknowledge that in the above decision (and others like it), the link between the initial instructions and an intention to oppose may be rather tenuous, instructions were given which, if they had been carried out, could at least have placed the accepted application before the party in time to enable it to decide whether it wished to oppose that application.  However, in the present case, Weir at no stage before 16 October 1987 took any steps which would have put it in a position to make a decision on whether it should oppose this application.  Therefore, while in some previous situations like Firmaframe Nominees v Automatic Roller Doors, supra, the intention to oppose may not have been entirely definite, the intention to get in a position to be able to decide whether to oppose was there.  In this case I am satisfied from the evidence that there was never any such intention.

In the present case, the fact is that, to quote the objector's submissions:

the instructions of BSB were to request an extension of time on the basis that further enquiries were to be conducted before a decision could be made as to whether to oppose the registration of the mark.

Consideration of the Issues

I think the necessary causality will have been demonstrated wherever a party has shown an adequate intention to get to an informed position, from which it may decide either to oppose or not to oppose, and where that intention is itself subverted by an error, omission, or circumstance within the scope of reg 5.2(2)(a), (b) or (c). 

This, however, is not a view that runs contrary to the findings in Mission Personnel.  Clearly, an applicant has a right, but for opposition, to registration of an accepted trade mark application.  Therefore, there is a good general reason why a chain of speculations and "what ifs" should not be substituted for a proper degree of established causality.  Again, it is obvious that the chain of causality is strongest where, for instance, a person  has prepared a notice of opposition and written out the cheque for the fee, only to be overtaken by catastrophe at the door of the Trade Marks Office.  However, even such a case is not one of absolute certainty.  Some degree of "what if" is unavoidable, as some of the case law to which I will come below recognises. 

In the cases relied on by the objector, a lack of intention to actually oppose has been generally concomitant with a lack of any intention to get to an informed position, one from which to decide whether to oppose or not.  "Intention" figures largely in the headnotes to published decisions, and in decisions of the "we'd have opposed if only we'd known", sort.  This has interlocked with the fact that under the current regulations, for the first time, extensions on particular grounds are excluded after a particular date.  Thus, it is possible to see a lack of an express and settled purpose - an intention to actually file a notice of opposition on or by a due date - as being the end of the matter.  However, in light of the directives in Kimberly-Clark v Commissioner of Patents(No 3), 13 IPR 569, to which I will come below, I do not think that the lack of intention to actually oppose is, by itself, a sufficient test on which to refuse a late application for an extension of time for filing a notice of opposition. The essential matter is the presence of a "sufficient causal connection"[3] between the error or circumstance relied on and the failure to lodge the notice of opposition.

[3] Kimberly-Clark, supra, p 582 line 26

The case of Sefton's Trade Mark, (1987) 11 IPR 424 is comparable. Here, I do not refer to the decision to restore the trade mark, but to the earlier grant of an extension of time, under the provisions of s 131(1)(a) of the Trade Marks Act 1955, within which to request renewal of a trade mark registration.  The extension issue is dealt with as Attachment A in the report, and starts at page 430. 

The s 131 extension was sought, and granted, in a case where "by reason of " an error or omission at the Trade Marks Office, a trade mark registration was not renewed. Yet the facts in Sefton, which emerge from what follows, show a considerable degree of "what if".  I quote the Chief Assistant Registrar, Susan Farquhar:

(It was) submitted on behalf of the applicants that the failure to renew the registration was due to circumstances beyond the control of the applicants because of the loss, or non-delivery to them, of a letter from the Office dated 15 September 1983 in response to a letter of theirs requesting the appropriate forms and further information as to method of payment of the renewal fee.  If that letter had been delivered, he argued, the registration would have been renewed within time and nothing that subsequently followed would have occurred.  In this regard he referred to the following passage from the judgment of Beaumont J in Lyons v Registrar of Trade Marks (1983) 1 IPR 416 at 430:

"The final 'error or action' is said to consist of the delay in transmission of relevant documentation from Canberra to Melbourne. This ... is clearly something done or omitted to be done under the Act. Since the failure to forward the relevant documentation to Melbourne contributed materially to the failure of the second respondent to lodge a notice of opposition within time, this conduct, in my view, constitutes an 'error or action' of the kind contemplated by s 131 (1) (b) by reason of which the second respondent failed to lodge its notice of opposition within time."

Although that was a case under s 131 (1) (b) Mr Shavin argued that the test stated by his Honour was whether the relevant circumstances "contributed materially" to the failure to lodge the required document within time. The apparent failure of the mail contractor to deliver the letter constituted such circumstances, he submitted, in as much as had the letter been received the registration would have been renewed, the subsequent notice of removal would not have been necessary and the failure of Mr Russell Sefton to draw the applicants' attention to the notice would not have occurred. Everything that afterwards happened followed consequentially on the failure to deliver the letter.

The delegate was prepared to accept that: 

...the failure to deliver the letter of 15 September 1983 was beyond the control of the applicants and contributed materially to the failure of the applicants to renew the registration of the trade mark and that everything else flowed from that.

This approach is consistent with other and weighty authority.  In Kimberly-Clark v Commissioner of Patents (No 3), 13 IPR 569, Jenkinson J had to consider the words “by reason of”, used in s160 of the Patents Act 1952, which governed extensions of time for late oppositions.  He referred to the words of Beaumont J in Lyons v Registrar of Trade Marks (1983) 50 ALR 496 at 509 in relation to the same wording in s131 of the Trade Marks Act 1955 (my emphasis added):

The meaning of the phrase “by reason of” has been considered in a number of authorities.  In Main Electrical Pty Ltd v Civil & Civic Pty Ltd (1977) 19 SASR 34, Bray CJ said that the phrase implies a relationship of cause and effect but it is a relationship which may be indirect: see The Diamond [1906] P 282; see also Vickers v Young (1982) 43 ALR 389 at 407; In R v Justices of the Peace at Yarram; Ex parte Arnold [1964] VR 31, Sholl J held (at 24) that “by reason of” could extend to consequential matters. In my opinion, the phrase, where used in s131, should be given the meaning explained in these cases.

Jenkinson J was dealing with a case where a watching service went astray.  The prospective opponent, Kimberly-Clark, had at no stage said more than (p 574) "we may well wish to oppose the grant of Letters Patent".  Moreover, it had already, within the time allowed for a timely opposition, sought an extension of time under s 59. Therefore, by the time it came to make its (second and belated) application under s 160, it was clear that there was a degree of deliberation attending the late filing of the notice of opposition.

Jenkinson J went on to say, despite this, that even if there was some evidence to suggest a degree of deliberation in not lodging a notice of opposition, it was sufficient to come to the conclusion that some prior error or omission had contributed to cause the failure to lodge the notice.  This could be so even if other circumstances also apparently contributed to the making of the relevant decision.  Jenkinson J went on to note, though not necessarily adopt absolutely, the view of the original delegate of the Commissioner of Patents.  The delegate had said that that:

All that is required is that, once an error or omission had been established that there be some link between that error or omission and the failure to lodge the notice of opposition within three months. 

Justice Jenkinson commented (p582)

I accept as applicable in respect of s 160 (2) what Beaumont J said in Mitty's case, supra, concerning the indirect causal relationship which is comprehended by the expression "by reason of". And, whatever other finding may have been open to the delegate, I do not consider that the finding he did make, of a sufficient causal connection between the errors and omissions which preceded 20 July 1987 and the failure to lodge notice of opposition on or before 7 August 1987, was one which on the material before him was not open to him.

Taking the broad view of this, it seems to me that "some link", in the delegate's decision in Kimberly-Clark, should be read as a short form for the necessary degree of causation. 

In that case, the extension was ultimately refused for lack of clear disclosure of the circumstances of the error.  That, however, is not a feature of the case before me now.

Similarly, in Danby Pty Ltd v Commissioner of Patents (1988) 12 IPR 151 at 157:

It is true that there was no evidence proving that, if a watch had been kept on behalf of the second respondent it would necessarily, or even probably, have picked up the advertisement.  Then, if a watch had been kept and had picked up the advertisement, perhaps another error would have been made, resulting in failure, after all, to lodge notice of opposition in time.

Putting that more generally, if there had not been an error on the part of Schmidt or Thomas in arranging for the conduct of a watch of the Journal, there may well have been a later error defeating Menzel's intention of opposing the grant. Had there been such a later error, it would itself have given jurisdiction under s 160 (2) to extend time.

... The error was not precisely identified, but one thing that went wrong was that no watch was instituted.  It was not necessary, in order to found jurisdiction in the examiner to make an order for extension, to show whether or not it was likely that something else would also have gone wrong, even if a watch had been instituted.

From such cases, various things emerge.  Certainty of opposition as an outcome is not the sole touchstone.  Indeed, a deliberate step consistent with not opposing is not necessarily a disqualifier.  Once the necessary error, omission or relevant circumstance - reg 5.2(3) - is shown and a sufficient causation is shown to flow from this, the authorities suggest very strongly that an applicant for extension is able to proceed. 

I note that, in Crown & Andrews Pty Ltd v All American Fremantle International Inc[4] Hearing Officer Homann said, at 604:

[4] [1997] ATMO 36, 38 IPR 595

... I must adopt the reasoning in the Weir Pumps case and that of the Federal Court in Kimberly-Clark and Danby v Commissioner, all supra. The effect of those decisions is that the person applying for the extension of time must have formed the intention to oppose the application on or before the expiry of the prescribed period and that that intention must have somehow been thwarted or frustrated by an error or omission.

However, this reference to an intention must, I think, be treated as a critical criterion that will apply in cases such as those where:

• the potential opponent was entirely unaware of the existence of a relevant application and

• this state of affairs had not itself arisen because of any previous failure to follow clearly evidenced and relevant instructions. 

Unlike Danby, in Crown & Andrews there was no evidence to show that the state of ignorance had itself arisen because of a relevant error or omission. Mr Homann implied at page 603, I think, that had there been such evidence, he might have looked more favourably on the extension.

Conclusion

General

On the evidence before me, I believe that I should find that the error or omission in the diary system at the office of the solicitors for BSB, Allens Arthur Robinson, is a ground sufficient, now, on which to allow BSB further time to file a notice of opposition.

The same error also explains why, in terms of reg 5.4(4), I am "reasonably satisfied that there is sufficient reason for the application not being made before the end of (the initial three month period set out in reg 5.1)". 

Due dates: for filing of Notice of Opposition and for Registration

The time initially sought by BSB has already ended.  When that time ended, moreover, the trade mark was actually on the register, from which it has since been removed by the court action instigated by BSB.  After this, BSB has put a case for the grant of its extension of time.  It should not be robbed of the fruit of this by the passage of time compounding an initial error at the Trade Marks Office.  Therefore, I propose to allow, under the general power of reg 5.16, an additional amount of time for the filing of the notice of opposition.  Such an exercise requires that I give the parties the opportunity to make representations on the matter.  I note, also, that the objector's submissions have shown the need to fit within the terms of Order 3 of the court orders in this matter.

Proposed actions:

Therefore, I propose to deal with the matter as follows.  Fourteen days hence, unless the objector requests, within that time, to be heard on either question, I will conclude the present matter by:

• granting the currently-sought extension and

• further extending the period for the filing of a notice of opposition until 3 days after the date on which I then act. 

If a hearing is so requested, it will be set down and BSB will be given the opportunity to attend and make submissions.  The entire matter will then be reviewed on its merits.

Otherwise, when I act as I have proposed, I believe that I will have fully exercised the function necessary to trigger the action of Order 3 of the court orders in this matter.  The due date for registration will then, as I understand the effect of the court's order, be either 14 days from that triggering event, or 7 days from that event if no notice of opposition is filed.