CBD Design Pty Limited v Larsen & Bowman Holdings Ltd
[2017] ATMO 40
•9 May 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CBD Design Pty Limited to extensions of time in which to file Notices of Opposition to removal of trade mark registrations 444252 (16) and 444253 (28) - RUSS (Logo).
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: James Maxwell of Peter Maxwell & Associates Applicant: Stephen Rebikoff of Counsel, instructed by Ian Drew of Davies Collison Cave |
| Decision: | 2017 ATMO 40 Trade Marks Act 1955 Trade Marks Regulations 1995 Reg 9.11 extensions of time in which to oppose section 92 applications: balancing of factors involved in the exercise of the Registrar’s discretion. Extensions allowed. |
Background
In these proceedings under the Trade Marks Act 1995 (‘the Act’) and the Trade Marks Regulations 1995 (‘the Regulations’) Russ Berrie & Co Inc (‘the Prior Owner’) was the owner of the following trade mark registrations:
Number: 444252
Priority Date: 23 April 1986
Goods:Class 16: Greeting cards; pens; pencils; staplers; erasers; message post cards; posters; stationery; wall decorations in this class; paper and plastic bags for packaging
Trade Mark:
Number: 444253
Priority Date: 23 April 1986
Goods:Class 28: Toys stuffed dolls and animals, plush hand puppets, plush bean bag animal characters and vinyl banks, both being playthings, Christmas ornaments in class 28, toys, magic tricks and games
Trade Mark:
I will refer to the above as ‘the Trade Marks’.
On 4 February 2016 CBD Design Pty Limited (‘the Opponent’) filed applications in terms of paragraph 92(4)(b) for the removal of the Trade Marks from the register of trade marks for all of the goods in respect of which they were registered.
Regulation 9.8 provides:
9.8Filing of notice of intention to oppose
(1)For subsection 96(2) of the Act, the period for filing a notice of intention to oppose is 2 months from the day the application for removal is advertised in the Official Journal.
(2)The notice must be in an approved form.
(3)The Registrar must give a copy of the notice to the applicant.
Notices of Opposition to removal of the Trade Marks were not filed within the time allowed by regulation 9.8(1); accordingly the Trade Marks were removed from the register of trade marks on 18 May 2016 and advertised as such in the Australian Official Journal of Trade Marks on 26 May 2016.
On 2 September 2016, Larsen & Bowman Holdings Ltd (who claims to be the beneficial owner of the Trade Marks) (and who for convenience I will identify as ‘the Applicant’)[1] filed requests to extend the deadline to file Notice of Intention to Oppose the Removal of the Trade Marks from the register of trade marks (‘the Requests’). The Requests were accompanied by a declaration by Stacy Larsen, President of the Applicant, made on 1 September 2016 with Exhibits SL-1 to SL-5.
[1] I note that subsection 96(1) provides that ‘Any person may oppose an application under subsection 92(1) by filing a notice of opposition with the Registrar’.
The Opponent has opposed the grant of the extensions. The matter subsequently came before me, a delegate of the Registrar of Trade Marks, to hear the submissions of the parties. The hearing was in Canberra on 4 April 2017; Mr James Maxwell of Peter Maxwell and Associates represented the Opponent; Mr Stephen Rebikoff of Counsel, instructed by Ian Drew of Davies Collison Cave, represented the Applicant.
It is convenient to first detail the content of Ms Larsen’s declaration.
Evidence
Ms Larsen declares:
The recorded owner of the […] Trade Marks is Russ Berrie & Co. Inc. (“Russ Berrie”), As of September 22, 2009, Russ Berrie changed its name to Kid Brands, Inc. (“Kid Brands”). Now produced and shown to me and marked Exhibit Sl-1 are copies of the official documents evidencing that change of name.
Kid Brands was placed in liquidation and as of 30 June 2013 the […] Trade Marks were sold to [the Applicant] through RB Trademark Holdco, LLC, a subsidiary of Russ Berrie/Kid Brands. Now produced and shown to me and marked Exhibit SL-2 is a copy of the Acquisition Agreement confirming the transfer of the […] Trade Marks pursuant to this transaction.
To confirm the assignment of rights from Russ Berrie/Kid Brands to [the Applicant], the parties signed an Assignment of Foreign Trademarks dated June 4, 2015. Now produced and shown to me and marked Exhibit SL-3 is a copy of that Assignment of Foreign Trademarks, with reference to the […] Trade Marks appearing on page 4 of the document.
After the acquisition of the […] Trade Marks, [the Applicant] engaged US Attorneys[2] in early 2014 to assume responsibility for managing the global portfolio of [the Applicant’s] trade marks. As part of that engagement, [the Applicant’s] US Attorneys were required to appoint or notify agents in all countries in which rights subsisted that their firm had assumed responsibility for the relevant trade marks. Unfortunately, no notification of the change in instructor was given to DLA Piper Australia, the Australian Attorneys who were, and currently are recorded as, the Address for Service against the […] Trade Marks. This was the first omission which led to the deadline for opposing removal of the […] Trade Marks being missed.
Instead, [the Applicant’s] US Attorneys contacted the Australian firm AJ Park on 14 May 2014 to request that they direct future correspondence relating to the […] Trade Marks to [the Applicant’s] US Attorneys. I am advised and verily believe that an exchange of e-mails ensued between [the Applicant’s] US Attorneys and AJ Park, but at no point did AJ Park advise [the Applicant’s] US Attorneys that AJ Park’s address was not the Address for Service for the […] Trade Marks (or any other Australian registrations owned by [the Applicant]), nor did [the Applicant’s] US Attorneys expressly request AJ Park to enter their address as the Address for Service for the […] Trade Marks. This was the second [set of] omission[s] which led to the deadline for opposing the removal of the […] Trade Marks being missed.
On 30 November 2014, I personally advised [the Applicant’s] US Attorneys that Clark Wilson[3] was to assume responsibility for managing the global portfolio of [the Applicant’s] trade marks.
On 7 August 2015, [the Applicant’s] US Attorneys advised Clark Wilson that they would send e-mails to local counsel, with copies to Clark Wilson, to introduce Clark Wilson as [the Applicant’s] new instructing counsel. I was personally copied on that e-mail. Now produced and shown to me and marked Exhibit SL-4 is a copy of that email.
On 11 August 2015, [the Applicant’s] US Attorneys wrote to AJ Park (copying Clark Wilson), advising that responsibility for managing the global portfolio of [the Applicant’s] trade marks had been transferred to Clark Wilson, and that all future correspondence relating to the […] Trade Marks be directed to Clark Wilson. I am advised and verily believe that an exchange of e-mails ensued between Clark Wilson and AJ Park, but again, at no point did AJ Park advise Clark Wilson that AJ Park’s address was not the Address for Service for the […] Trade Marks. Now produced and shown to me and marked Exhibit SL-5 is a copy of the exchange of correspondence. This constitutes the third omission which led to the deadline for opposing removal of the Said Trade Marks being missed.
I am advised and verily believe that through exchanges of e-mails in August and September 2015, AJ Park followed up on multiple occasions with Clark Wilson regarding the opportunity to renew another registration that [the Applicant] had acquired from Kid Brands, namely Trade Mark Registration Number 405292; again, at no point in that e-mail exchange did AJ Park advise Clark Wilson that AJ Park’s address was not the Address for Service for Registration Number 405292 - despite being in contact numerous times with Clark Wilson regarding the renewal of that registration. [The Applicant] ultimately decided not to renew Registration Number 405292.
Because AJ Park’s address was not the Address for Service for the […] Trade Marks, and because no notification of the change in instructor had been given to DLA Piper Australia, Clark Wilson was not notified of the removal applications being lodged. As stated at paragraph 6, above, the removal of the […] Trade Marks only came to Clark Wilson’s attention during the latter half of July 2016. Having learned of the removal of the […] Trade Marks, without delay, Clark Wilson contacted [the Applicant’s] [present] Australian Attorneys, Davies Collison Cave (“DCC”), who have been working with Clark Wilson to prepare and gather the documents required to support a request for an extension of time to oppose the removal of the […] Trade Marks.
[2] Arnold & Porter LLP (‘Arnold & Porter’).
[3] Clark Wilson LLP.
At the hearing of these matters the Applicant also relied on the declaration of Myles Bowman, a director of the Applicant, made on 10 January 2017 and its exhibits. This declaration was filed in relation to the Applicant’s oppositions to the registrations of the Opponent’s trade mark applications 174662 RUSS and 174664 RUSS.
Without wishing to prejudice either the possible section 92 proceedings in relation to the Trade Marks, or the oppositions to the registrations of the Opponent’s trade mark applications 174662 and 174664, I merely observe that Mr Bowman’s declaration asserts ownership, residual reputation, and use of the Trade Marks within Australia by the Applicant.
Legislative Provisions
The provisions of regulation 9.8 appear above at paragraph 4.
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 subregulation 9.8(1); or
(b)the period for filing a statement of grounds and particulars under subregulation 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 subregulation 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.
And regulation 9.12 provides:
9.12Extension of time for filing—grant
(1)The Registrar may grant a request under subregulation 9.11(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.
(2)However, 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.
(3)The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
In Blount Inc v Registrar of Trade Marks[4] Branson J observed:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
[4] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.
I note that whilst the Opponent pitched its argument as if the onus upon the Applicant to satisfy the Registrar is particularly arduous, I do not agree that this is so: the Registrar only needs to be persuaded on the balance of probabilities that it is appropriate to grant the extensions of time.
Submissions
The Opponent’s submissions may be summarised as being that:
i.there was no causal link demonstrated between the claimed, or perceived[,] error or omission and the failure to lodge the Notice of Intention to Oppose;
ii.there was no error or omission as required by Regulation 9.11;
iii.there are insufficient reasons advanced to satisfy the Registrar that there was sufficient reason for the delay as required by Regulation 9.12(2), including […], that all due care was taken and that a full and frank disclosure of all relevant facts was provided;
iv.in the circumstances an extension of 4 months is excessive, unwarranted and prejudicial to the interest of the Non-Use Applicant; and
v.no serious opposition is foreshadowed in the grounds advanced by the Non-Use Opponent:
vi.the Non Use Opponent is not the registered owner or beneficial owner of the Trade Marks[5].
[5] I have noted that section 96 requires only that an opponent to removal be ‘a person’, not that an opponent be the owner of the trade mark concerned.
Further, the Opponent submits:
… that in all likelihood and on the balance of probabilities that the documented correspondence in Larsen, Annexure SL-6 is entirely consistent with an alternative scenario, namely, that a priori the Non-Use-Opponent had formed an intention by September 2015 to abandon the Registrations as a similar trade mark [registration] for RUSS had similarly been left to lapse and not be renewed.
The Applicant, for its part, submits that:
i.there has been an error or omission on the part of the Applicant or its agent, or circumstances beyond the control of the opponent (other than such an error or omission);
ii.there was a causal connection between the error or omission, or those circumstances, and the failure to file the notice of opposition within the requisite period;
iii.the words “error or omission” in provisions such as regulation 9.11 are not confined to simple accidents or oversights, but also extend to clear or obvious errors of judgement on the part of agents or attorneys;
iv.it is sufficient if there is “some link” between the failure and the error or omission, even if other circumstances also apparently contributed;
v.In relation to circumstances beyond the control of the Applicant, it has been said that this expression designates “occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent” such as “the operations of nature and the activities of strangers”:
The Applicant further submitted that:
Once the Registrar is satisfied that there are grounds which enliven the power to extend time, the Registrar retains a discretion in relation to whether those grounds justify the extension. In Sanyo Electric Co Ltd v Commissioner of Patents (1996) 36 IPR 470 at 479, it was said such a discretion should be exercised having regard to:
(a) the subject-matter, scope and purpose of the legislation;
(b)the fact that it is more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time; and
(c)the fact that a legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially.
… the discretion is to be exercised having regard to whether the revival of the trade mark is “fair and reasonable”, taking into account all of the circumstances of the case, including the relative inconvenience to the parties concerned, the public interest, and the desirability of operating the trade mark system efficiently and without unreasonable delays;
[Contrary] to the submissions of the [Opponent], there is no requirement that an applicant for an extension of time under regulation 9.11-9.12 must also demonstrate additional requirements of due care and diligence: cf [Opponent’s] Submissions at [32]. This [imports] into the test under regulation 9.11-9.12 requirements arising under regulation 9.18, which governs extensions of time for the filing of evidence.
Consideration
In considering this matter, I keep in mind the following relevant precepts from case law:
The phrase “error or omission” in the Act should not be given a construction which is limited to that which was unintended or which had been produced by accident or inadvertence, as opposed to errors or omissions which were the products of faulty reflection or deliberation[6].
The failures to file the Notices of Opposition cannot be in or of themselves the ‘error or omission’[7].
It is in the public interest that oppositions to the removal of trade marks should be dealt with on the merits, rather than be shut out in consequence of a failure of procedure and that the matters be dealt with as expeditiously as possible and with the minimum duplication of effort[8].
Most errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence. Where such errors and omissions are made against a clearly demonstrated desire to maintain the application and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt, the considerations in favour of an extension are persuasive[9].
[6] Kimberly-Clark Ltd v Commissioner of Patents and Another (1988) 84 ALR 685.
[7] Ibid.
[8] South & Walker Pty Ltd v Goldmine Software Corporation (2000) 49 IPR 85.
[9] GS Technology Pty Ltd v Commissioner of Patents and Another (2004) 63 IPR 9.
In my view there have been several errors or omissions on the part of the Applicant’s prior agents which have a causal connection to the Applicant’s failure to file the Notices of Opposition within the required time.
There was a series of errors on the part of the Applicant’s prior US trade mark attorneys who failed to:
· ascertain which Australian firm acted as the address for service for the Trade Marks;
· instruct DLA Piper that there was to be a change of address for service; and
· instruct AJ Park to enter themselves as the address for service.
I add that AJ Park appears not to have noticed that it was not the address for service for the Trade Marks and did not seek instructions in that regard either from the US trade mark attorneys or subsequently Clark Wilson.
Instead, it seems that the attention of both the instructing US trade mark attorneys (and then Clark Wilson) and AJ Park became focused on imperfections in the assignment of the Trade Marks to the Applicant. (I take it that the imperfection involved concerns about the ability of RB Trademark Holdco, LLC (‘Holdco’) to assign the Trade Marks to the Applicant when Holdco was not entered on the register of trade marks as their owner and the establishment of a chain of title which demonstrated Holdco’s ability to do so).
The notifications of application for removal were sent by IP Australia to DLA Piper (which firm was the then address for service for the Trade Marks) and DLA Piper transmitted the notifications to the, by then, insolvent Prior Owner. Accordingly, the Applicant (who claims that it is the beneficial owner of the Trade Marks) never received the notifications. Alternatively put: but for the omission of the Applicant’s prior US attorneys to instruct AJ Park to enter itself as the address for service (and AJ Park’s omission to point this error out), the Applicant should have received the notifications of the applications for removal of the Trade Marks from the Register of Trade Marks. Thus, in my view, there is a direct causal link between the omission of the Applicant’s prior US trade mark attorneys to instruct AJ Park to have itself entered as the address for service for the Trade Marks and the failure of the Applicant to file the Notices of Opposition within the allowed period.
I do not view the email chain at Exhibit SL-5 as in any way establishing that the Applicant intended to abandon the Trade Marks – in fact the chain suggests, rather, a concern that the Applicant appropriately secure in its own name all of the Australian trade mark registrations of which it was the beneficial owner. Cf RivOland Marble Co (Vic) Pty Ltd v Settef SpA[10] where Bowen CJ observed:
Once having acquired proprietorship it can only be lost upon some established general law basis such as estoppel, acquiescence or abandonment ... Counsel for the Marble Co did argue that Settef had abandoned its trade mark through disuse ... However, in my opinion, to show abandonment of the mark in circumstances such as the present it would be necessary to demonstrate more than slightness of use. There would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost. ...
[10] (1988) 19 FCR 569 at 571-572.
Additionally, the Applicant, its Canadian attorneys Clark Wilson, and its freshly appointed Australian attorneys, set about remedying the errors or omissions as soon as they were discovered.
A further factor, in my consideration, goes to the exercise of the Registrar’s discretion in favour of the Applicant. That is the Applicant’s assertions that the Trade Marks have residual reputations in Australia and that it has used the Trade Marks in Australia. These contentions are apparent in the Statements of Grounds and Particulars it has filed in relation to the applications for removal and in the declaration of Myles Bowman it has filed in relation to the Opponent’s trade mark applications 174662 and 174664. Viewed in the wide, it is (in my consideration) somewhat disingenuous for the Opponent to contend that the Applicant does not propose a serious opposition.
Moreover there is an inference that might be drawn from the Opponent’s observation in submissions that:
In 2015 the [Opponent] instructed its firm of Attorneys to conduct the necessary prior searches of the Australian marketplace so as to form a view whether the RUSS trade mark was available for use in Australia in light of the bankruptcies of the owner of the Registrations in late 2015. The [Opponent’s Attorneys] advised that the [sic] many of the trade marks owned by the owner of the Registrations had lapsed and it appeared that they were not being actively used in the Australian marketplace.
It could appear from this contention that the Trade Marks possibly have residual reputations in Australia and that there might be factors which could go to the exercise of the Registrar’s discretion[11] under section 101 of the Act in consideration of the paragraph 92(4)(b) applications themselves. I note the comments of Burchett J in Marcus v Sabra International Pty Ltd[12]:
It is not the law that all rights with respect to a trade mark vanish at once upon a mere discontinuance of its use. The connection in the course of trade denoted by it will not immediately be forgotten. That connection may be valuable, and it remains open to the proprietor to resume the use of the mark. Unless he has actually abandoned the mark, its use by another may amount to an appropriation of the benefit of the good name acquired by the mark over an earlier period of years.
[11] "Hermes" Trade Mark [1982] RPC 425; QH Tours Ltd v The Mark Travel Corporation [1999] ATMO 31.
[12] [1995] FCA 35 at [16].
I also note the comments of Carr J in PB Foods Ltd v Malanda Dairy Foods Ltd[13]:
The scheme of the Act is not proprietorship by registration but rather registration of proprietorship, although such registration confers various benefits including some protection from infringement proceedings.
[13] [1999] FCA 1602; [1999] AIPC 40,117; (1999) 47 IPR 47 at [78].
It is fitting that these issues be properly and fully considered in proceedings before the Registrar so that the register of trade marks reflects the true state of the marketplace and that trade marks which are deceptive or confusing do not remain upon the register or be placed upon it.
I thus consider that decisions to grant the extensions of time until 3 October 2016 in which to file Notices of Intention to Oppose the section 92 applications are appropriate.
Costs
The Applicant sought its costs in the event that it was successful in these matters. Costs may follow the event and I award costs against the Opponent at the Official Scale set out in Schedule 8 to the Regulations.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
9 May 2017
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