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

1. 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.

2. 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.

3. 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.

4. 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.

5. 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 rely on the 1^st Notice of Opposition. Instead, the disappearance of the 1^st Notice of Opposition formed part of the supporting reasons for the opponent’s late request for an extension of time in which to file the 2^nd Notice of Opposition.

6. On 26 May 2009 the delegate advised the opponent and the removal applicant that he intended to grant the opponent’s late request for an extension of time in which to file its 2^nd Notice of Opposition. The removal applicant objected and stated that it had never been served with a copy of the 1^st Notice of Opposition as asserted by the opponent. The removal applicant also maintained that it had contacted Laura from Australia Post and been advised that no record of Express Post envelope number CV9899380 entering or exiting the system or being returned to sender existed. Further, the removal applicant states that it was advised by Australia Post that it was ‘extremely uncommon’ for an Express Post envelope to go missing.

7. On 25 June 2009 the delegate advised both parties that he intended to refuse the opponent’s late request for an extension of time on the basis of the removal applicant’s research regarding the Express Post envelope number CV9899380. The opponent was given 14 days in which to provide further reasons in support of its extension of time request.

8. 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

9. 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:

Declarant	Position	Date Made
Christian Benjamin Jensen	Consultant	11 May 2009
John Leo Brady	Managing Director of Centron P.T.F.E. Technology Pty. Ltd	12 May 2009
John Brady	Managing Director of Centron P.T.F.E. Technology Pty. Ltd	9 July 2009
Scott Ronald Davies	Engineering and Maintenance Superintendent of Cracow Gold Mine	6 October 2009
Owen John Uabei	Managing Director of One Eye Industries (Aust) Pty Ltd	-
John Gardener	Director	8 October 2009
Elke Anna Maria Efller	Bookkeeper of Centron P.T.F.E. Technology Pty. Ltd	9 October 2009
Monika Evers	Evers Consulting	11 October 2009
Christine Joan Brady	Housewife	12 October 2009

1. In his declaration, Christian Benjamin Jensen states that he sent the 1^st 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.

2. 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.

3. 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 1^st Notice of Opposition by Australia Post.

4. In its correspondence the removal applicant was highly critical of the validity of the opponent’s assertions regarding the 1^st 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

5. 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.

6. 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 1^st Notice of Opposition and did not wish to pursue that matter, he maintained that the loss of the 1^st Notice of Opposition was a main factor behind the opponent seeking a late request for an extension of time in which to file its 2^nd Notice of Opposition.

7. 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 1^st Notice of Opposition in transit.

8. Mr Butler remarked that the removal applicant’s research had indicated that Australia Post had no records of an Express Post envelope bearing the number CV9899380 entering or exiting the system or being returned to sender. Mr Butler also advised that the removal applicant had never been served with a copy of the 1^st Notice of Opposition which was purportedly sent to it by the opponent on the 11 March 2009.

9. Mr Butler expressed disbelief that Australia Post would lose two letters and that it was more likely that the opponent had never posted them. Indeed, Mr Butler pointed to inconsistencies in the opponent’s sworn statements and to the telephone conversations the removal applicant had with Mr Brady in March 2009 and the failure of Mr Brady to mention filing or an intention to file a Notice of Opposition.

10. Mr Butler further submitted that the Regulations provided for essential time limits. In this case, Mr Butler reminded me of the need for procedures to be followed, and the collateral effects of allowing the removal opposition to be commenced, such as the fees to be applied to extensions of time.

    Discussion

11. Having regard to the evidence filed, and the submissions made, I am satisfied that the opponent did form an intention to defend its trade mark registration and oppose the removal application before the 11 March 2009. I am also satisfied that through circumstances outside of its control its intention to oppose the removal application was frustrated by the non-filing of its 1^st Notice of Opposition.

12. The evidence indicates that the opponent has prima facie grounds to oppose the removal of its trade mark from the register.

13. On the other hand, the removal applicant has made a persuasive case by suggesting that the 1^st Notice of Opposition was never posted. However, the responsibility of posting the 1^st Notice of Opposition lay with Mr Jensen who was acting as the opponent’s agent in this matter. The opponent had every right to believe that its agent would act upon its instructions and file and serve the Notice of Opposition by the relevant date. The 1^st Notice of Opposition could have been ‘lost in the post’ or Mr Jensen may have inadvertently failed to post it. Either way, it is clear that the opponent always believed that the 1^st Notice of Opposition had been filed with this Office by the relevant date and was deeply concerned when it transpired that this was not the case. Therefore, I am satisfied that there are ‘circumstances beyond the control of the opponent’ for the purposes of sub-section 224(2) of the Act.

14. Having found circumstances outside the control of the opponent, I am given, by the wording of the sub-section, a discretion as to whether or not to allow the extension of time: see, for example, Cynthia Armaro [2007] ATMO 9 (12 February 2007), at paragraph 16. In deciding how to exercise this discretion, I adopt the principles developed by Hearing Officer Michael Homann in Re Ausorb Pty Limited (1996) 36 IPR 178, and consider that the most important factors in coming to a ‘fair and reasonable’ decision in the matter include the relative inconvenience to the parties concerned and the public interest. See also Re Hall (1998) AIPC 91-425 at 37,393-4, which also adopts those principles.

15. The opponent has lost the registration of its trade mark, while the removal applicant has, as a consequence gained registration of a trade mark. There is a possibility that third parties would be affected by the opponent’s trade mark being restored to the register. On balance, it seems that the relative inconvenience would be to the opponent if the extension is not granted.

16. In Insfin Insurance + Finance Group Pty Ltd v Razor USA LLC[1] Hearing Officer McDonagh considered a similar issue under s. 224 and stated:

    There is undoubtedly a public interest in the system of registration of trade marks being conducted with regularity and certainty. There is also public interest in registered owners of trade marks who are in fact using their trade marks being able to continue to do so. I take guidance from the High Court:

    In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be. Kaiser Aluminum & Chemical Corporation v. Reynolds Metal Co. [1969] HCA 7; (1969) 120 CLR 136, per Kitto J at paragraph 14.

    [1] 2008 ATMO 80

17. Therefore, I am satisfied that I should exercise my discretion to allow the extension of time as requested by the opponent.

    Decision

18. 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.

19. 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.

20. 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.

21. I order that the parties bear their own costs in relation to this hearing.

    Bianca Irgang
    Hearing Officer
    Trade Marks and Designs Hearings
    18 December 2009