Chernae Noonan v Benefit Cosmetics LLC
[2013] ATMO 66
•26 August 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Late application by Chernae Noonan for extension of time to file notice of opposition to registration of trade mark applications - 1423081 & 1423082(44) - BENEFIT BROWBAR - filed in the name of Benefit Cosmetics LLC.
| Delegate: | Jock McDonagh |
Representation: | Ms Noonan: Dana Prasek of Thompsons Lawyers |
Decision: | 2013 ATMO 66 Regulation 5.2 of the Trade Marks Regulations 1995 – application for an extension of time to file a notice of opposition – application allowed |
Background
Trade mark applications 1423081 and 1423082 in the name of Benefit Cosmetics LLC (‘the applicant’) were accepted for possible registration under the provisions of paragraph 44(3)(b) of the Trade Marks Act 1995 (‘the Act’), and advertised as such in the Australian Official Journal of Trade Marks on 22 November 2012. The relevant details of the applications are shown below:
| Trade Marks | BENEFIT BROWBAR (1423081) (1423082) |
| Services | Class 44: Hygienic and beauty services; beauty salon services |
| Priority date | 2 May 2011 |
The statutory period for filing notices of opposition in relation to the applications, as provided by regulation 5.1 of the Trade Marks Regulations 1995 (‘the Regulations’), is three months from advertisement and it therefore ended on 22 February 2013.
On 1 March 2013 Chernae Rachelle Noonan, filed a notice of opposition to the registration of the Trade Marks together with an application for an extension of time of one month in which file a notice of opposition. The extension application was made on the ground of “an error or omission by the person applying for the extension of time, or by that person’s agent” (Reg 5.2(2)(b))and was accompanied by a supporting declaration of Ms Noonan made 1 March 2013.
On 4 March 2013, the Trade Marks Office issued Certificates of Registration in respect of the applicant’s two trade marks.
On 19 March 2013, the Trade Marks Office issued a Proposal to Revoke Registration of the two trade marks and the applicant subsequently returned the Certificates of Registration.
On 4 April 2013 a Registrar’s delegate issued an intention to refuse the extension of time request.
On 12 April 2013. Ms Noonan’s attorneys served upon the Applicant’s attorneys a Notice of Opposition to the applications 1423081 and 1423082.
On 17 April 2013. Ms Noonan’s attorneys served upon the Applicant’s attorneys a supplementary declaration made by Ms Noonan on that date.
On 3 June 2013 I heard the matter in Canberra, although the attorneys for the parties attended by telephone. Ms Noonan was represented by Dana Prasek of Thomsons Lawyers. The applicant was represented by Francesca Colubriale of Spruson and Ferguson Lawyers.
Evidence and submissions
The succession of events surrounding Ms Noonan’s application for an extension of time are set out briefly below:
The final day for filing the notice of opposition was 22 February 2013; however, Ms Noonan was not aware of the registration of the Applicant’s trade marks until 28 February 2013.
Ms Noonan is the owner of trade mark registrations 1041379 ‘the Brow Bar’ and 1106645 ‘THE BROW BAR’, both in classes 35 and 44.
Ms Noonan declares she became aware of the applications during the period ‘mid-2011, and by no later than 4 June 2012.’ At that time she says she formed an intention to oppose the applications if and when they entered an opposition period.
Ms Noonan declared that she knew that the Applicant had previously applied for word trade marks 1287936 BROWBAR and 1293065 BENEFIT BROW BAR in 2009; however, these applications ultimately lapsed and opposition was not required.
Ms Noonan declared that she intermittently monitored the progress of the applications until about 14 November 2012 but did not thereafter personally check the progress or instruct her solicitors to do so on her behalf.
On 15 November 2012, IP Australia sent a letter to Ms Noonan’s address for service at Varsity IP to advise that applications 1423081 and 1423082 had been accepted under the provisions of section 44(3) and that such acceptance would be advertised in the Official Journal.
Ms Noonan declares that she had no knowledge of this letter until being made aware of it through the Applicant’s submissions for the hearing.
Ms Noonan further declared that had she received the letter during the opposition period, she would have opposed the registrations within time.
There is no evidence from Varsity IP, Patent & Trade Mark Attorneys.
On the day of the hearing, Ms Noonan’s attorneys (Thomsons Lawyers) provided a third declaration by Ms Noonan, along with declarations by Dana Prasek and Bentley Coogan, both being solicitors in the firm representing Ms Noonan. The declarations each declared a lack of prior knowledge of the IP Australia letter of 15 November 2012.
These declarations were allowed, without objection, and I take them into account in reaching my decision.
Ms Noonan’s submissions for the hearing state that two errors or omissions occurred. The first was not personally checking the progress of the applications, due to being a sole proprietor of an expanding business and having responsibilities for small children. The second was in not engaging a firm to monitor the progress of the applications of her behalf.
It also appears that Ms Noonan made a mistaken assumption that the applications would lapse as had previous applications by the Applicant. This was not relied on as an error or omission and I mention it only for completeness.
Additionally, it would seem that Ms Noonan’s listed address for service was not necessarily acting as such. However, in the absence of evidence as to the relationship between Ms Noonan and Varsity IP, I cannot speculate as to the current nature of the relationship.
The Applicant’s submissions can be shortly summarized as that the errors or omissions pleaded by Ms Noonan are such that cannot be relied upon for the purposes of satisfying the Regulations.
Discussion
The application for an extension of time to file a notice of opposition was filed on 1 March 2013, prior to the amendments introduced by the Intellectual Property Legislation (Raising the Bar) Regulations 2013. Consequently, a request for an extension of time to file a notice of opposition, when filed outside the statutory period, is governed by the provisions of regulations 5.2(3), 5.3 and 5.4(4).
Subregulation 5.2(3) specifies that the only allowable grounds upon which a potential opponent may rely when requesting an extension of time outside the statutory period are:
· An error or omission by an employee of IP Australia;
· An error or omission by the person applying for the extension of time, or by the person’s agent;
· Circumstances beyond the control of the person applying for the extension of time.
Regulation 5.3 sets out the formal requirements for an application for an extension of time. Regulation 5.4 is in respect of the grant of an extension of time, and specifically requires that the Registrar not grant an extension which was filed outside the statutory period unless she is reasonably satisfied that there was sufficient reason for the application not being made before the end of that period.
As stated previously the ground relied upon by Ms Noonan is “an error or omission by the person applying for the extension of time, or by the person’s agent”.
It was found in Kimberly Clark Ltd v Commissioner of Patents and Minnesota Mining and Manufacturing Company[1] that the words “error or omission” should bear their ordinary meaning and not be given a restricted interpretation (for example, of accidental slips or inadvertences only). Jenkinson J, in that case, noted that whilst errors of judgment may fall within the scope of the words “error or omission” not all such judgments shown to be mistaken will answer that description, which carries with it a “connotation of obviousness in error”. His Honour went on to note the delegate’s comment that “all that is required is once an error or omission has been established that there be some link between that error or omission and the failure to lodge a notice of opposition within three months”.
[1] Kimberly Clark Ltd v Commissioner of Patents and Minnesota Mining and Manufacturing Company (1988) 13 IPR 569; [1988] FCA 421 (2 December 1988).
It has also been found that for a causal relationship to exist between the failure to file a notice of opposition and the error or omission, the person applying for the extension of time must have either formed the intention to oppose on or before the expiry of the prescribed period[2], or have formed the intention to get to an informed position from which it may decide to oppose[3].
[2] Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595; [1997] ATMO 36 (18 July 1997).
[3] British Sky Broadcasting Ltd v SkyNetGlobal Ltd (2003) 57 IPR 93; [2003] ATMO 17 (11 March 2003).
Ms Noonan declares to have immediately formed the intention to oppose the subject applications upon being alerted to them at some time during about a year prior to 4 June 2012. This intention was thwarted firstly by her own failure to monitor the progress of the applications and secondly by omitting to engage an attorney to monitor on her behalf.
In relation to the second aspect, I do not consider the failure to instruct attorneys in time to be an error or omission of itself. It is self-evident that failing to instruct an agent to do a relevant act will, in most cases, mean that the agent does not do the act. That goes a little way towards providing sufficient reason for the extension such that the Registrar may be satisfied that the extension of time is reasonable. Here, it is the reasons and circumstances behind the failure to instruct which must be considered.
Similarly, the argument that the error or omission is a result of the applicant being sole proprietor of an expanding business, and a mother of small children does not in itself provide sufficient reasons for not conducting her business in a manner that would have detected the acceptance of the applicant’s trade marks.
However, Ms Noonan has provided consistent evidence that she was aware of the applications prior to the opposition period ending. She also declares that she had a specific intention to oppose the applications in the event that they were provisionally accepted for registration.
There is no suggestion that the IP Australia letter of 15 November 2012 was not posted to Ms Noonan’s address for service. There is no evidence whether or not Varsity IP received the letter; however, in the absence of evidence to the contrary, I presume that the letter was received by Varsity IP.
While there is no evidence that explains what, if any, business relationship exists between Ms Noonan and Varsity IP, the fact remains that it is the official address for service for Ms Noonan. It seems to me that it remains, for the purposes of correspondence relating to Ms Noonan’s own trade marks, Ms Noonan’s agent for that purpose. I note that, (according to the Applicant’s submissions and my own research based on the submissions) Varsity IP remains in existence, albeit under a different business name, at the same postal address and is a law firm. I consider that it retained a responsibility to ensure any official mail meant for Ms Noonan (I note that her name is printed in capital letter as the subject heading in the letter of 15 November 2012) is forwarded to her.
I consider that the evidence supports a hypothesis that had Ms Noonan received the IP Australia letter of 15 November 2013, she would have known that the applications had not lapsed and that she should further her previously established intention to oppose registration of the applications.
There is evidence that IP Australia sent the letter to Varsity IP. There is evidence that Ms Noonan did not receive the letter from Varsity IP, or anyone else, during the opposition period. I am prepared to accept that Varsity IP omitted to forward the letter to Ms Noonan.
I also note that Ms Noonan’s evidence is that she discovered the registration of the Applicant’s trade marks some six days after the opposition period had ended. On that discovery, Ms Noonan sought to oppose the trade marks.
Taking into account all of the circumstances, I am satisfied that the ground for the extension of time has been made out. I do not consider, for the purposes of regulation 5.2(2)(b), that there is any relevant error or omission on the part of Ms Noonan; however, I do consider that Varsity IP omitted to forward the IP Australia letter dated 15 November 2012 to Ms Noonan, and I am satisfied that this omission of Varsity IP amounts to sufficient reason as contemplated by regulation 5.4(4). Consequently I allow the application for an extension of time to file the notice of opposition.
The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into effect on 15 April 2013. The amending Regulation repeals the general opposition provisions of Part 5 and replaces them with new regulations in Parts 5, 9 and 17A. However, the repealed provisions continue to apply here, because the evidence stage commenced (with the filing of the Notice of Opposition) prior to 15 April 2013. Subregulation 22.9(1), Items 1 and 5 apply the ‘new’ extension of time provisions to any evidence period that commences on or after 15 April. The new provisions will therefore apply to the evidence in answer and reply stages of this opposition, but the ‘old’ provisions still apply to the evidence in support stage.)
I note that Ms Noonan filed and served the Notice of Opposition on 12 April 2013. As the prescribed period to file evidence in support of the opposition has passed, I direct that Ms Noonan file and serve evidence in support pursuant with the relevant legislation within two months of the date of this decision.
Jock McDonagh
Hearings Officer
Trade Marks Hearings
26 August 2013
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