Cacao Fine Chocolates & Patisserie Pty Ltd v Pana Chocolate Holdings Pty Ltd
[2017] ATMO 36
•27 April 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade Mark No. 1225730 (35,43) - CACAO FINE CHOCLATES & PATISSERIE AND DEVICE - in the name of Cacao Fine Chocolates & Patisserie Pty Ltd and its application for an extension of time to file a Statement of Grounds and Particulars under regulation 9.11(1)(b)
Delegate: | Cristy Condon |
Representation: | Removal Opponent: written submissions by Carolina Robinson of Jones Louros & Associates for Cacao Fine Chocolates & Patisserie Pty Ltd Removal Applicant: written submissions by IP Wealth Pty Ltd for Pana Chocolate Holdings Pty Ltd |
Decision: | 2017 ATMO 36 Trade Mark Regulations 1995 – Part 9 regulation 9.9 – Ground established under regulation 9.11(4)(a) – request for extension of time granted. |
Background
This matter concerns an application for an extension of time to file a Statement of Grounds and Particulars (‘SGP’) under part 9 of the Trade Mark Regulations 1995 (the ‘Regulations’).
The substantive matter concerns an application by Pana Chocolate Holdings Pty Ltd (the ‘Removal Applicant’) for the removal for non-use of trade mark 1225974 (current status ‘removed’) which appears below:
Application No: 1225730
Priority Date: 22 February 2008
Services
: Class 35: Provision (wholesaling and retailing) of chocolate and patisserie r(e)lated products
Class 43
: Provision of food and beverages being chocolate and patisserie related products
Trade Mark:
On 6 June 2016 the Removal Applicant filed an application to remove the Trade Mark for non use and this was published in the Australian Journal of Trade Marks (the ‘Journal’) dated 16 June 2016.
Subsequently, Cacao Fine Chocolates & Patisserie Pty Ltd (the ‘Removal Opponent’) filed its Notice of Intention to Oppose the removal of the Trade Mark (the ‘Notice’) which was advertised in the Journal on 9 August 2016.
The Removal Opponent did not file its SGP by the 5 September 2016 deadline and on 29 September 2016 applied under regulation 9.11 for an extension of time to file the SGP.
The senior examiner was not satisfied with the Removal Opponent’s reasons for failing to file its SGP within the prescribed time. In a letter dated 23 November 2016 she advised the Removal Opponent that she intended to refuse its application for an extension of time and that it had a right to be heard.
In further correspondence to this office the Removal Opponent confirmed it was relying on the ground specified in sub regulation 9.11(4)(a) for its extension of time application and that it wanted a hearing in respect of the matter. I was delegated to decide this matter on 20 February 2017 based on the written submissions of the parties. The Removal Opponent has filed two declarations made by Carolina Robinson, an employee of Jones Louros & Associates, agent for the Removal Opponent. These are dated 10 October 2016 (‘Robinson 1’) and 9 December 2016 (‘Robinson 2’). As the Removal Applicant is an interested party I advised it of its right to make submissions in relation to this matter. IP Wealth Pty Ltd has filed written submissions on its behalf.
I must now decide whether to grant the extension of time application.
Procedural Considerations
The filing of a SGP is a requirement of an opposition proceeding. Regulation 9.9 requires this to be filed within one month from the day the Notice is filed[1] (in this case a Notice of Opposition to the removal of a trade mark for non-use) and post Raising the Bar there is an expectation that these regulations are adhered to by the parties to any opposition. However, regulation 9.11 is a beneficial provision which provides for an extension of time where the circumstances described in sub regulations 9.11(4)(a) and /or 9.11(4)(b) are satisfied. Bearing in mind that any grant of an extension is subject to sub regulation 9.12(2) which stipulates “if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request”.
[1] Regulation 9.9.
Regulation 9.11 provides:
9.11Extension of time for filing—application
(1)A person who intends to oppose an application for removal may request the Registrar to extend:
(a)the period for filing a notice of intention to oppose under sub regulation 9.8(1); or
(b)the period for filing a statement of grounds and particulars under sub regulation 9.9(1)
(2)A request under paragraph (1)(a) or (b) may be made within the period for filing the document in question
Note:See subparagraph (3)(b)(ii) and sub regulation 9.12(2) in relation to the consequences of making the request after the filing period has ended.
(3)The request must:
(a)be in an approved form; and
(b)be accompanied by a declaration stating:
(i)the facts and circumstances forming the basis for the grounds; and
(ii)if the period for filing the notice of intention to oppose or the statement of grounds and particulars has ended – the reason why the request was not made within the period.
Note:Regulations 21.6 and 21.7 deal with making and filing declarations.
(4)The request may be made only on either or both of the following grounds:
(a)an error or omission by the person, the person’s agent, the Registrar or an employee;
(b)circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
Discussion
In support of its application for an extension of time (the ‘application’) the Removal Opponent has filed two declarations (the details appear in [7] above). Robinson 1 is very brief. Robinson 2 is more detailed and elaborates on the points detailed in the first declaration. Ms. Robinson describes the Removal Opponent’s reason for failing to file the SGP within one month of the Notice of Opposition is due to an ‘error or omission’ by the Removal Opponent and she gives reasons for the late extension of time request.
The Registrar may grant a request for an extension of time on the basis of an error or omission by the person, the person’s agent, the Registrar or an employee[2]. The error or omission cannot be the failure to lodge the SGP itself. In Biossys v Ecogen Australia Pty Ltd[3] the hearing officer stated:
‘an error or omission ‘ has been considered to have occurred when there has been a breakdown in procedure in effecting a party’s intention. As a consequence, the intention of the party with respect to doing some act is an essential preliminary to the demonstration of an error or omission.’
[2] Regulation 9.11 (4).
[3] 26 IPR 668 which cited in Working Systems Software Pty Ltd v Chiron Corporation [1997] ATMO 31.
It is for the Removal Opponent to establish that there was an anteceded error or omission that caused the failure to file the SGP in a timely manner. In order to identify the error or omission in this case I would find it helpful to look first at the time line of relevant events derived from the evidence, which led to the Removal Opponent’s application for an extension of time. This timeline appears below:
· 5 August 2016, Removal Opponent files Notice of Intention to Oppose Removal (‘Notice’) and this was advertised on 9 August 2016.
· 9 August 2016 -23 August 2016, Ms. Robinson was away from the office sick
· 24 August 2016, Ms Robinson returns to work
· 5 September 2016, SGP due to be filed;
· 23 September 2016, the Removal Opponent notified by letter from this office advising that it had failed to file the SGP and the Trade Mark was being removed from the Register;
· 27 September 2016, the Trade Mark was removed from the Register and was advertised for removal on 6 October 2016;
· 29 September 2016, Removal Opponent requests late extension to file extension of time request (“EOT”) but not filed as not in approved form – no declaration accompanied the form.
· 5 October 2016, Removal Opponent attempts to file a declaration but it does not qualify as a declaration so it is not considered by the senior examiner.
· 10 October 2016, Removal Opponent files a supplementary declaration to support the late extension request.
· 14 November 2016, the Removal Opponent filed an EOT request to file the SGP;
· 23 November 2016, EOT was refused and the Removal Opponent was advised by letter.
· 9 December 2016, the Removal Opponent filed an additional declaration to support its EOT.
The timeline clearly shows that Ms. Robinson was taking sick leave for a substantial part of the one month period after the Notice was filed and that the Removal Opponent’s application for an extension of time was filed after the period for filing for the Notice and the SGP had ended. Therefore I must not grant the extension unless I am satisfied that there is sufficient reason for the delay in making the request.[4]
[4] Regulation 9.12(2).
Firstly, what was the error or omission that caused the Removal Opponent not to file the SGP within the prescribed period after the Notice was filed? I have not been provided with any reason why the SGP did not accompany the Notice from the outset. Ms. Robinson says there were no procedures in place to file the SGP during her absence and I note that after filing the Notice she had only one working day to file the SGP before she took sick leave. Robinson says:
Regrettably, owing to the small size of the firm and unexpected length of time it took to recover from my illness, I did not file the [SGP] in time. In addition, it was impossible for any other employee in my department (comprising an accounts clerk and trainee receptionist) to file the SGP at a material time because they did not have the capacity or knowledge to do so, and they could not access the private username and password established with IP Australia for such purposes.[5]
[5] Robinson 2 [8].
Kimberly-Clark v Commissioner of Patents and Anor.[6] is a leading authority in this area of the law. In this case it was stated that the concept of ‘error or omission’ is not a term of art and the words should be given their ordinary meaning and not be “restricted by construction to certain categories of aberration of thought or behavior such as misunderstanding, ignorance of the law, confusion or deception etc, or to mere advertencies or accidental slips. Moreover the accident or omission must be obvious”.
[6] (No.3) [1998] FCA 421.
The Removal Opponent relevantly submits:
…the Agent had every intention to oppose the application by Pana…Regrettably, the unforeseen and prolonged absence of the Agent from the office as a result of illness, and the breakdown of administrative practices at the Agent’s office led to the failure to file the SGP within the prescribed period…
The Agent has given a full and frank account of her actions as set out in two separate declarations dated 10 October 2016 and 9 December 2016 respectively. With respect to the balance of convenience to the parties, it is submitted there would be no real inconvenience to Pana if the extension was granted, as opposed to Cacao, who would suffer significant inconvenience form the loss of the Trade Mark.
Alternatively, if the extension was not allowed, Cacao would not be able to proceed with its opposition to which it has advanced compelling reasons opposing the removal of the Trade Mark, namely:
1.Cacao operates two retail outlets in Melbourne, one at High point Shopping Centre (Maribyrnong) and the other at Westfield Doncaster Shopping Centre (Doncaster) (since ceased trading due to end of lease).
2.Cacao operates a wholesale business supplying their products to customers across Australia from their head office at 2 Kembla Street, Cheltenham Victoria.
3.Cacao continues to operate an online website at employ[s] over 25 full time staff within its operations.
5.Cacao began trading in October 2004 and continued to trade using those names to date.
Impact on the Applicant
The Removal Applicant submits (and I note that it offers me no precedent, case law or evidence to support its submission):
The Trade Mark was holding up the Applicant’s plans regarding the launching of a new service. As soon as the mark was removed, the Applicant went ahead with their plans, believing the matter to be closed and that they were safe to continue as there was no longer a registered mark.
Any revival of the removed mark, and the revival of the opposition would put the Applicant at a huge financial loss, not to mention the stress and time involved. The Applicant’s interests must be considered in the matter.
I acknowledge that Ms. Robinson was on sick leave between 9 August 2016 and 23 August 2016. The firm she worked for lacked adequate resources to properly prioritise her work upon her return, or access her password details while she was absent. I am confident that this resulted in Ms. Robinson returning to a build-up of work and that is why she did not file the SGP within the 8 working days remaining in the prescribed period. I am satisfied that the failure to lodge to SGP during the prescribed time was obviously caused by the omission of administrative procedures and this is more than merely an aberration of thought or behavior.
This is not the end of the matter however as I must also consider sub regulation 9.12(2) that is, the further 18 working days it took the Removal Opponent to apply for the extension of time to file the SGP.
In support of its position the Removal Opponent cites the case of Ferochem Pty Limited v Commissioner of Patents[7] where Burchett J cited Kitto J in Kaiser Aluminuim and Chemical Corporation v The Reynolds Metal Company[8]:
“[it was in] the public interest that [a serious matter] should be dealt with on the merits, rather than that it should be shut out in consequence of a failure of procedure, lamentable though the failure may be.”
[7] (1994) AIPC 91-057.
[8] 120 CLR 136.
Ms. Robinson says she always intended to file the SGP as soon as she returned to work but that she “may have been overwhelmed by [her] workload and the effects of [her] illness”.[9]
[9] Robinson 2 [10]
There would be substantial detriment to the Removal Opponent if I did not grant it an extension of time to file the SGP especially since it has given me an indication in its submissions that it has compelling reasons, and evidence, to oppose the substantive removal matter (see [17] above). The failure to file the application for an extension of time as soon as Ms Robinson returned to work is lamentable but I believe regulation 9.11 is best exercised in these circumstances by granting the request for an extension of time to file the SGP.
I decide that the Removal Opponent’s circumstances fall within the scope of the Regulations and I allow the extension of time to file the SGP and trade mark 1225730 should be revived.
Cristy Condon
Hearing Officer
Trade Marks and Designs Opposition and Hearings
27 April 2017
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