Centron P.T.F.E Technology Pty Ltd v Conservelec Pty Ltd - [2009] ATMO 104

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Centron P.T.F.E. Technology Pty. Ltd. for an extension of time to file a notice of opposition to an application under section 92 of the Act by Conservelec Pty Ltd to remove trade mark number 605799 (4) - CENTRON - in the name of Centron P.T.F.E. Technology Pty. Ltd.

Delegate: Bianca Irgang

Representation: Opponent: Christian Jensen on behalf of Centron P.T.F.E. Technology Pty Ltd
Applicant: Simon Butler of Conservelec Pty Ltd

Decision: 2009 ATMO 104
Section 224 application for extension of time to file notice of opposition granted.
Intention to direct that Opponent has 3 months to file and serve evidence in support.
Parties to bear their own costs
Background

Centron P.T.F.E. Technology Pty. Ltd. (“the opponent”) is the owner of Trade Mark 605799 CENTRON, which had been registered for Class 4 goods since 29 June 1993.
On 31 October 2008 Conservelec Pty Ltd (“the removal applicant”) applied for the removal of the opponent’s trade mark from the register on the basis of non-use. The application was advertised by IP Australia on 11 December 2009 and the opponent had a period of three months from this date in which to oppose the removal application. However, no opposition was raised by the opponent by 11 March 2009 and the trade mark was duly removed from the Register on 2 April 2009.
On 21 April 2009 the opponent filed a Notice of Opposition (“the 2^nd Notice of Opposition”) to the removal of its trade mark. In the same correspondence the opponent advised that it had already sent the office a Notice of Opposition on the 11 March 2009 (“the 1^st Notice of Oppositon”) by Express Post (article number CV9899380) and served a copy on the removal applicant. The original of the 1^st Notice of Opposition was included in the correspondence.
On 1 May 2009, a delegate of the Registrar wrote to the opponent and advised that the office had no record of its 1^st Notice of Opposition being filed on the 11 March 2009 but did have a request for assignment of ownership of the trade mark. The opponent was advised that it would need to substantiate its claim of filing the 1^st Notice of Opposition on the 11 March 2009 or make a late request for a two month extension of time to cover the late filing of the 2^nd Notice of Opposition on the 21 April 2009.
The opponent elected to make a late request for an extension of time to file its 2^nd Notice of Opposition. The opponent was not legally represented and required some procedural assistance from the Trade Marks Office before correctly filing an application pursuant to sub-sections 224 (1) and (2) of the Act. There has been considerable discussion surrounding the alleged posting of the 1^st Notice of Opposition, however, the opponent also advised that it would not be seeking to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2009] ATMO 104
Decision Date: 18 December 2009

CaseChat Overview and Summary

This matter came before Bianca Irgang, a delegate of the Registrar of Trade Marks, concerning an application by Centron P.T.F.E. Technology Pty Ltd (the opponent) for an extension of time to file a notice of opposition to a removal action initiated by Conservelec Pty Ltd (the removal applicant). The dispute arose from the alleged loss of the opponent's initial notice of opposition during transit, leading to a late request for an extension to file a second notice. The removal applicant contested the validity of the opponent's assertions regarding the lost notice and its intention to oppose the removal proceedings.

The primary legal issue before the delegate was whether to exercise discretion to grant the opponent's late request for an extension of time to file its notice of opposition. This involved considering the opponent's explanation for the delay, namely the loss of its initial notice of opposition, and assessing the opponent's bona fide intention to oppose the removal action, supported by evidence of continuous trade mark use since 1993. The delegate also had to consider the procedural fairness obligations owed to the opponent.

The delegate reasoned that the opponent had provided sufficient evidence, including statutory declarations and correspondence, to demonstrate a genuine intention to oppose the removal proceedings. While the exact circumstances of the loss of the first notice of opposition remained unexplained, the delegate was satisfied that this loss was a significant factor contributing to the need for a late extension. Applying the principles of procedural fairness and considering the evidence of the opponent's long-standing use of its trade mark, the delegate exercised discretion to allow the extension of time.

Consequently, the delegate extended the time for Centron P.T.F.E. Technology Pty. Ltd. to file its notice of opposition to 11 May 2009. The delegate also notified the parties of an intention to direct the opponent to file and serve evidence in support of its opposition within three months, subject to any written representations from the parties. The parties were ordered to bear their own costs in relation to the hearing.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Eventually, the opponent, on 3 August 2009, sought a hearing of the matter in order to convince the delegate of the Registrar of Trade Marks that it was appropriate to grant its late extension of time request. The removal applicant was invited to participate in the hearing as a matter of procedural fairness, as described in the Trade Marks Manual of Practice and Procedure, part 49.4.Evidence The opponent has filed with this Office a total of nine statutory declarations to support its late request for an extension of time and its opposition to removal. These declarations are as follows: In his declaration, Christian Benjamin Jensen states that he sent the 1st Notice of Opposition to IP Australia in Express Post envelope CV9899380 on 11 March 2009. The lift and peel numbered receipt from the Express Post envelope was attached to his declaration. The other declarations provide rough chronologies of the opponent’s intention to defend its trade mark and oppose the removal action, and assert that the opponent has used its trade mark within the prescribed period. There has been considerable correspondence in this matter. Of particular relevance is the opponent’s letter to this office dated 13 May 2009 and the removal applicant’s correspondence in response dated 5 June 2009 which discuss the apparent loss of the 1st Notice of Opposition by Australia Post. In its correspondence the removal applicant was highly critical of the validity of the opponent’s assertions regarding the 1st Notice of Opposition and its alleged loss by Australia Post. Similarly, the removal applicant expressed considerable doubt over the opponent’s intention to lodge a Notice of Opposition to the removal proceedings and its legal standing to do so.The Hearing The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 13 October 2009. The opponent was represented by Mr Christian Benjamin Jenson, a Consultant for Centron P.T.F.E. Technology Pty. Ltd, who appeared by telephone link. The removal applicant was represented by Simon Butler, Manager of Conservelec Pty Ltd who appeared at the Hearing in person. Mr Jensen effectively reiterated those matters raised in his correspondence with this office. He stated that the opponent had always had an intention to oppose the removal application as it had been using its trade mark continuously on a broad range of products since 1993. Six trade declarations to this effect were filed on the day of the Hearing to support the opponent’s assertions. While Mr Jensen could not explain what had happened with the 1st Notice of Opposition and did not wish to pursue that matter, he maintained that the loss of the 1st Notice of Opposition was a main factor behind the opponent seeking a late request for an extension of time in which to file its 2nd Notice of Opposition. The essence of the opponent’s case is that it has used its trade mark since 1993 and has always had the intention to oppose the removal action which was frustrated by the inexplicable loss of its 1st Notice of Opposition in transit.

Decision

Reasons for decision

Therefore, I am satisfied that I should exercise my discretion to allow the extension of time as requested by the opponent.Decision Pursuant to sub-section 224 (2) of the Act, I extend the time for Centron P.T.F.E. Technology Pty. Ltd. to file its notice of opposition to 11 May 2009. For the purposes of the opposition proceedings, and pursuant to regulation 5.16 of the Regulations, I hereby notify the parties that I intend to direct that the opponent file and serve evidence in support of its opposition within three months from the date of this decision. The parties may make written representation with regard to my proposed direction within one month of this decision. If I do not receive any representation, or any representation opposing my intended direction, I direct that the opponent file and serve evidence in support of its opposition within three months from the date of this decision. I order that the parties bear their own costs in relation to this hearing.Bianca IrgangHearing OfficerTrade Marks and Designs Hearings18 December 2009

Ratio Decidendi

Legal Principle Established

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Delegate:	Bianca Irgang
Representation:	Opponent: Christian Jensen on behalf of Centron P.T.F.E. Technology Pty Ltd Applicant: Simon Butler of Conservelec Pty Ltd
Decision:	2009 ATMO 104 Section 224 application for extension of time to file notice of opposition granted. Intention to direct that Opponent has 3 months to file and serve evidence in support. Parties to bear their own costs