Calddran Pty Limited and Sisbro Holdings Pty Limited T/as Wild Turkey v Pieve Pty Ltd

[1991] ATMO 39

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by PIEVE PTY LTD to an Application by CALDDRAN PTY LIMITED AND SISBRO HOLDINGS PTY LIMITED T/AS WILD TURKEY for an Extension of Time to Serve Notice of Opposition in the Matter of Trade Mark Application No. A493225

These matters arise from the advertisement on 9 August 1990 of the acceptance for registration of trade mark application No A493225 in the name of PIEVE PTY LTD of C/- Southern Gentlemen, Shop 6, Basin Street, Pacific Fair, Gold Coast, Queensland 4218, ("the applicant").  Under the provisions of section 49 of the Act, oppositon to the registration, or a request to lodge such opposition, could be lodged at any time in the three months up to and including 9 November 1990.
          On 24 October 1990 a letter, together with a fee, was received at the Trade Marks Office from Galluzzo Golotta Andriano, a firm of solicitors of Fairfield, New South Wales, informing that its client, Calddran Pty Limited and Sisbro Holdings Pty Limited t/as Wild Turkey wished to instigate opposition proceedings.  In separate official letters dated 1 and 5 November 1990, the prospective opponent was sent a standard acknowledgement concerning receipt of a notice of opposition and a request to substitute the letter of 19 October 1990 with form 3 - a notice of opposition under reg 16, respectively.  An executed form 3 was returned to the Office on 16 November 1990.  On 12 February 1991 an application, by facsimile, was transmitted to the Office for an extension of time within which to lodge notice of opposition from 18 (sic) February 1991 to 18 (sic) May 1991.  An amended substitute application for an extension

of time to lodge the evidence in support of the notice of opposition for the same period was received on 20 February 1991.  An official letter of 13 March 1991 confirmed to the opponent the date of lodgment of the notice of opposition as being 16 November 1990 and advised of the necessity to apply retrospectively for an extension of time to lodge the notice of opposition from 9 November 1990 to 9 December 1990.  In the same letter the opponent was also notified that the advertisement relating to the opposition in respect of the present application, which appeared in the Official Journal of 15 November 1990, would be deleted under Corrigenda.
          The required application, together with the fee, was lodged on 27 March 1991.  In the application Michael Simonetta, director, of 19 Chamberlin Avenue, Rose Bay, New South Wales, on behalf of the opponent, requested additional time for lodging the notice of opposition from 9 November 1990 to 9 December 1990 on the following grounds:

1. I required more time to formulate the grounds of my Notice of Opposition.

1. I sent my Notice of Opposition in letter form within the time specified unaware of the requirement of a form 3 application.

1. The Applicant was therefore placed on notice of my claim and was not prejudiced if a formal Form three (3) was not filed until a later date."

   An official letter of 19 April 1991, in response to some points raised by the applicant's attorneys, informed the applicant that the prospective opponent's letter of 19 October 1990 was deemed not to be in "substantial compliance" with form 3, and since the correct form was lodged on 16 November 1990, that date governed the due date and extension date for serving of the evidence in support. 
   The applicant was also advised of the opponent's application concerning the belated lodgment of form 3.
             In a subsequent letter of 23 April 1991, the applicant formally objected to the opponent's request for an extension of time from 9 November 1990 to 9 December 1990 to lodge the notice of opposition and applied to be heard in the matter.  The hearing was set down in Canberra on 23 May 1991.  The applicant's attorneys, Peter Maxwell & Associates, patent and trade mark attorneys of Brisbane, and Galluzzo Golotta Andriano, solicitors of Fairfield, New South Wales, on behalf of the opponent, elected not to appear at the hearing.  Both parties have made written submissions, however; the matter therefore is to be decided on the written record.
             The purpose of my decision is to determine whether the grounds set out by the opponent in its application to extend the time beyond 9 November 1990, together with its submissions in the matter, fall within the scope of the provisions under either para (a) or para (b) of sub-section 131(1) of the Act, namely:

   131.(1) Where, by reason of -

(a)circumstances beyond the control of the person concerned; or

(b)an error or action on the part of an officer or person employed in the Trade Marks Office,

an act or step in relation to an application for the registration of a trade mark or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Registrar may extend the time for doing the act or taking the step and permit the act to be done or the step to be taken.

In the submissions the opponent argues that its substantive reasons for opposing the application, and a case based on the provisions of section 34 would be in the public interest, and therefore the opponent ought to be allowed sufficient time for adequately preparing its case.  The opponent further asserts that it is in the process of gathering the evidence in support and is simultaneously negotiating with the applicant in an endeavour to settle the dispute.  Given the likelihood of a satisfactory settlement, the opponent claims, the sought additional time could obviate the expensive opposition proceedings.
          On perusing the leading cases on section 131 of the Act such as Lyons and Another (trading as Mitty's Authorized Newsagency) v Registrar of Trade Marks and Another (1983) 1 IPR 416 and Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1986-1987) 7 IPR 551, it is evident that the nature of the issues intended to be raised in the course of opposition bears little or no significance whatsoever in deciding whether the provisions of that section can be applied to the matter in suit. Similarly, those provisions were not designed for allowing extension of time for the purpose of collecting evidence or enabling the parties time to reach a mutually agreeable settlement.
          These cases have also established that the time stipulated by section 49 of the Act for lodging the notice of opposition should not be freely varied.  In fact, the provisions of section 131 have been interpreted as providing only very limited possibilities of obtaining further time for opposing an application for registration of a trade mark.  These provisions depend on certain conditions as observed by Beaumont J in Lyons, supra, at page 427:

"Section 131 is not a merely general power in any abstract sense: it is limited in its application to quite special situations."

In Atomic Skifabrik, supra, at p.558 section 131 has been expounded by Jenkinson J to be a force majeure provision:

"In the context in which it is found, the expression "circumstances beyond the control of the person concerned" does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent.  The operations of nature and the activities of strangers may result in such occurrences.  So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed.  But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in s131(1)(a), in my opinion.  Nor, in my opinion, are the acts or omissions of that agent's servants.  The section is, I think, correctly described as a force majeure provision."

Having considered the reasons given in the current application for the extension of time in light of the criteria enunciated in the above cases, I do not find that the opponent's delays in the present proceedings were caused by "circumstances beyond the control of the person concerned" as contemplated by para 131(1)(a) of the Act.  Mr Simonetta's statement that he was not familiar with the formalities concerning opposition such as form 3 cannot, in my opinion, be justified as the requirement of the form is clearly prescribed under reg 16.  Furthermore, even if, as he claims, the applicant was placed on notice regarding the proposed opposition by the letter of 19 October 1990, it does not explain the time taken in lodging the notice of opposition in the proper form, which was received at the Trade Marks Office only on 16 November 1990, given that the official letter advising of this requirement was despatched on 5 November 1990.  In this regard I note that the opposition is based only on two relatively brief grounds comprising a minor rephrasing of the reasons for the proposed opposition indicated in the letter mentioned earlier, thus considerably weakening the opponent's assertion that more time was required for formulating the grounds of opposition.
          Turning to para 131(1)(b), the opponent has submitted that the official letters of 1 November and 5 November 1990, the first acknowledging receipt of the notice of opposition in a letter form and the second advising to lodge the notice in form 3, had confused the opponent since the Office failed to indicate the final date for filing the notice of opposition.  By this omission, the opponent argues, an officer or a person employed in the Trade Marks Office has committed "an error or action" within the meaning of para 131(1)(b) of the Act and is analogous to the situation considered in Lyons, supra.
I cannot agree with this proposition. The officers or employees at the Trade Marks Office are not obliged, under the statutory duty or function imposed by the Act, to inform a prospective opponent of the dates in relation to section 49 of the Act. The action concerning the initiation of opposition, the various steps in its proceedings and time constraints are clearly stipulated in the Trade Marks Act and Regulations. The omission of the section 49 deadline, therefore, cannot be construed as a thing done or "omitted to be done under the Act" (Beaumont J in Lyons, supra, at p.429) by a person employed in the Trade Marks Office, and is contrary to the circumstances in Lyons, supra, where a delay caused by an employee of the Office in forwarding the relevant documents from Canberra to Melbourne was found to constitute an "error or action" envisaged by para 131(1)(b) of the Act.
          Having considered the relevant factors, I find that a case has not been made out in terms of either para 131(1)(a) or para 131(1)(b) of the Act.  In support of my conclusions I further refer to Roger David Stores Pty Ltd v Sportsgirl Pty Ltd (1984) AIPC 93-210, Re: Application by The Ritz Hotel (London) Ltd (1986) 7 IPR 546, Thermos Limited v Registrar of Trade Marks (1988) AIPC 90-532 and Re: Stafford-Miller Limited (1988) AIPC 90-484. Accordingly, the application for an extension of time to lodge the notice of opposition is refused.

(V. ZARS)
Senior Examiner
11 June 1991