Coca-Cola Amatil (Aust) Pty Limited v Cafedirect Plc

[2012] ATMO 34

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Late application by Cafedirect Plc for extension of time to file notice of opposition to registration of trade mark application 1416660(9, 35) - CAFE DIRECT THE COFFEE EXPERIENCE AND DEVICE and device - filed in the name of Coca-Cola Amatil (Aust) Pty Limited.

Delegate:

Nicole Worth

Representation:

Potential Opponent: Peter Caporn of Wrays, Patent and Trade Mark Attorneys.

Applicant: Written submissions by Blake Dawson Lawyers.

Decision:

2012 ATMO 34

Regulation 5.2 of the Trade Marks Regulations 1995 – application for an extension of time to file a notice of opposition – application refused.

Background

1. Trade mark application 1416660 in the name of Coca-Cola Amatil (Aust) Pty Limited (‘the trade mark applicant’) was accepted for possible registration under the provisions of paragraph 44(3)(b) and/or regulation 4.15A(3)(b), and advertised as such in the Australian Official Journal of Trade Marks on 28 July 2011. The relevant details of the application are shown below:

Trade Mark

Goods/Services

Class 9: Automatic vending machines; automatic vending machines for the dispensing of beverages; vending machines

Class 35: Rental of vending machines; vending machines (rental of -)

Priority date

28 March 2011

1. The statutory period for filing a notice of opposition in relation to the application, as provided by regulation 5.1 of the Trade Marks Regulations 1995 (‘the Regulations’), is three months from advertisement and it therefore ended on 28 October 2011.

2. On 31 October 2011 Cafedirect Plc (‘Cafedirect’), a UK company, filed a notice of opposition to the registration of the application 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” but was not accompanied by any supporting declaration. The cover letter to the application stated that the declaration would be filed “in the very near future”.

3. On 16 November 2011 the Registrar’s delegate issued an intention to refuse the extension request given no supporting declaration had been filed. Cafedirect was allowed 14 days in which to request a hearing on the matter, which it did on 30 November 2011, again stating that it expected to file the necessary declaration in the very near future.

4. The hearing was accordingly set down for 15 December 2011. In the meantime on 6 December 2011 Peter Caporn, attorney for Cafedirect, filed a declaration made by him which exhibited a declaration of Nicola Pearson, Commercial Director of Cafedirect. The declaration was not, however, served upon the trade mark applicant until 12 December 2011.

5. On 13 December 2011 Amy Reynolds of Blake Dawson Lawyers informed me that Blake Dawson was now acting on behalf of the trade mark applicant, and contended that the trade mark applicant had never received the notice of opposition nor the request for an extension of time in which to file a notice of opposition. For its part Cafedirect contended that those documents were sent to the trade mark applicant on 31 October 2011 by mail, and on 14 December 2011 provided a copy of the letter which had been sent enclosing them.

6. In order to provide the applicant a reasonable opportunity to make representations I directed that the hearing be postponed. On 31 January 2012 I heard the matter in Canberra. Cafedirect, represented by Peter Caporn of Wrays Patent and Trade Mark Attorneys, attended by telephone. The trade mark applicant did not attend but made written submissions prepared on its behalf by Blake Dawson Lawyers.

Evidence and submissions

1. The succession of events surrounding the Cafedirect’s application are set out briefly below:

• The final day for filing the notice of opposition was 28 October 2011.

• On 1 August 2011, Cafedirect’s UK attorneys alerted Nicola Pearson to the publication of the subject trade mark[1]. The UK attorneys had, in turn, been alerted to it by their Australian associates, Wrays.

  [1] I have presumed that what is meant by ‘publication’ is publication of the acceptance of the subject application, the acceptance being advertised on 28 July 2011 and brought to the Australian associate’s attention on 20 July 2011 by way of a courtesy letter from IP Australia.

• Nicola Pearson declares that she had immediately formed an intention to prevent the trade mark’s registration in Australia, on the basis of it being too similar to Cafedirect’s own trade mark CAFEDIRECT (currently the subject of Australian trade mark application 1244250).

• Nicola Pearson subsequently informed the UK attorneys that Cafedirect was recruiting an “International Brand Manager” and that “this person, when recruited, would be given an opportunity to provide input to the decision to prevent registration of the Application”.

• On 17 October 2011 the UK attorneys again contacted Nicola Pearson regarding the upcoming opposition deadline. The International Brand Manager had not yet been recruited but it was hoped the position would be filled by the deadline. Final instructions were delayed pending this recruitment.

• On 25 October 2011 the UK attorneys again contacted Nicola Pearson, however she had by then gone on holidays and her emails were not being monitored due to “resource limitations internally”.

• Whilst on holiday, on 28 October 2011 (being the final day for opposition), Nicola Pearson became aware of the last reminder from the UK attorneys. She immediately instructed them to obtain an extension of time to oppose or, failing that, to oppose registration of the subject application.

• The UK attorneys did so, however by this time in Australia it was 7.32pm on the evening of Friday 28 October and the Australian associate (being Peter Caporn of Wrays) had left for the day and did not review his emails until the following day.

• Upon confirmation of instructions Mr. Caporn filed the notice of opposition and request for an extension of time in which to file a notice of opposition the following business day, being Monday 31 October 2011.

1. Mr. Caporn’s submissions for the hearing state that two errors or omissions occurred. The first was on the part of Cafedirect in providing late instructions to oppose the Applicant’s mark, which was contributed to by the delays associated with looking for an International Brand Manager and by the failure to discover the UK attorney’s second reminder. The second was on the part of Wrays in not continuing to monitor emails on the evening of Friday 28 October 2011, so that even though instructions to oppose were received within the relevant time frame they were not acted upon until the deadline had passed. Mr. Caporn submits that it was these errors or omissions that ultimately frustrated Cafedirect’s previously formed intention to oppose the subject application.

2. For its part the trade mark applicant submits that the failure to recruit the International Brand Manager is not an error or omission which constitutes a ground to extend the time. Similarly it contends that Nicola Pearson’s being on holiday and the lack of monitoring her emails are not errors or omissions, and have no causal connection to the failure to file the notice of opposition – especially when Ms Pearson had already formed the intention to oppose, was aware of the deadline and had received reminders from her attorneys.

3. The trade mark applicant makes further submissions with regard to the public interest, namely that (a) if parties are easily able to file notices of opposition outside of the statutory period then the level of certainty afforded to an applicant upon expiry of the opposition period is reduced, and (b) business plans are linked to the trade mark registration process and therefore disregarding the relevant time frames unjustly affects the applicant’s interests and business plans, which is contrary to the public interest.

Preliminary matter

1. The trade mark applicant contends that the declaration of Nicola Pearson should be stuck out as invalid on the basis that it does not comply with either regulation 21.6(2) or 21.6(3) of the Regulations. I note that the declaration does not state the name or title of the person before whom the declaration was made, nor does it state the place at which the declaration was made, as set down in regulation 21.6(2). Nor does it appear that the declaration was made before any of the persons listed in regulation 21.6(3), or indeed witnessed at all.

2. Whilst I acknowledge that the declaration does not meet all of the requirements of regulation 21.6, I also bear in mind that under regulation 21.15(8) the Registrar is not bound by the rules of evidence but may inform herself of any matter before her in any way believed to be reasonably appropriate. I consider that the information in Nicola Pearson’s declaration is material – it is this declaration which sets out the circumstances under which instructions to oppose were eventually given to the Australian associates. There is no apparent reason to suspect the declaration’s contents, and the trade mark applicant has been given a reasonable opportunity to make submissions regarding it.

3. Bearing the above in mind, I believe it appropriate to follow the observation of Finkelstein J in Malibu Boats West Inc v Catanese[2]:

   The only question that arises in relation to the rejection of evidence is whether the decision maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision-maker to ignore relevant material while discharging his or her statutory duty. As a result, when the registrar is required to decide whether a mark qualifies for registration, the Registrar is not entitled to disregard evidence which bears upon that question.

   [2] Malibu Boats West Inc v Catanese (2000) 51 IPR 134; [2000] FCA 1141 (18 August 2000), at 24.

4. I therefore consider it reasonable to take the contents of Nicola Pearson’s declaration at face value in deciding this matter.

Discussion

1. 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).

2. 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.

3. 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.

4. As stated previously the ground relied upon by Cafedirect and its Australian associate, Mr. Caporn of Wrays, is “an error or omission by the person applying for the extension of time, or by the person’s agent”.

5. It was found in Kimberly Clark Ltd v Commissioner of Patents and Minnesota Mining and Manufacturing Company[3] 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 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”.

   [3] Kimberly Clark Ltd v Commissioner of Patents and Minnesota Mining and Manufacturing Company (1988) 13 IPR 569; [1988] FCA 421 (2 December 1988).

6. 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[4], or have formed the intention to get to an informed position from which it may decide to oppose[5].

   [4] Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595; [1997] ATMO 36 (18 July 1997).

   [5] British Sky Broadcasting Ltd v SkyNetGlobal Ltd (2003) 57 IPR 93; [2003] ATMO 17 (11 March 2003).

7. Ms Pearson, for Cafedirect, declares to have immediately formed the intention to oppose the subject application upon being alerted to it on 1 August 2011. Mr. Caporn, on behalf of Cafedirect, submits that this intention was thwarted firstly by the late provision of instructions from Cafedirect and secondly by his own failure to monitor his emails on the evening of 28 October 2011.

8. Because the second of these submissions is more easily dealt with, I will dispense with it first. I do not consider that Mr. Caporn’s failure to monitor his emails on the evening of 28 October 2011 is a circumstance falling within the description “error or omission”. There is no evidence to suggest that it was the usual practice of Wrays attorney firm to monitor emails well after business hours. Nor is there anything to suggest that Mr. Caporn was anticipating the receipt of instructions from the UK attorneys, such that one might expect him to continue to monitor his emails despite the lateness of hour and the fact he had left work for the day. To use the words of Hearing Officer Windsor in Xiying Susan Guo v David Bilanycz[6], “I do not believe it is possible to omit to do an action if you are unaware that the action needs to be done…”

   [6] Xiying Susan Guo v David Bilanycz [2010] ATMO 123 (8 December 2010).

9. In relation to the first of the submissions I do not consider the failure to instruct in time to be an error or omission 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 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.

10. The two principle factors behind Cafedirect’s late instructions appear to have been (a) the delay associated with Cafedirect’s desire to first recruit an International Brand Manager, who would have some (unspecified) input into the potential opposition, and (b) the failure to take note of the contact made by the UK attorneys on 25 October 2011 until the last day of the opposition period.

11. Whilst the delay associated with the recruitment of an International Brand Manager may be said to be an error of judgement – in that it arose from deliberate, though faulty, reflection – I do not consider that this inaction itself frustrated or thwarted the intentions of Cafedirect. There is no evidence to suggest that Ms Pearson did not have the requisite authority to proceed with the opposition, nor that she was bound in any way to wait until such recruitment occurred. Although she may have wished for the input of the yet to be recruited International Brand Manager, there appears to have been no barrier to her proceeding to instruct the UK attorneys, particularly once it became apparent that the International Brand Manager would not be recruited within the relevant time. I therefore do not accept that the necessary degree of causation is present with respect to this circumstance.

12. The remaining question is whether Ms Pearson’s and/or Cafedirect’s failure to take note, in a timely way, of the UK attorneys’ reminder of 25 October 2011 is an error or omission with a sufficient degree of causality to result in the failure to file the notice of opposition. I am aware that finding that the causality exists requires certain assumptions to be made, namely that Ms Pearson would have instructed to oppose the subject application had she taken note of the reminder and/or Cafedirect would have acted in Ms Pearson’s absence, or made every effort to contact her, were they monitoring her emails. Whilst such assumptions are not unreasonable, given Ms Pearson’s actions immediately upon becoming aware of the UK attorney’s attempt to contact her, I am mindful also that the repeated delays on her part detract from establishing a concrete intention to oppose.

13. However even were I satisfied that there is a causal link between the failure to take note of the UK attorneys’ reminder and the failure to file a notice of opposition, I am not satisfied that this establishes sufficient reason to grant the extension of time. The UK attorneys had twice before contacted Ms Pearson regarding the matter, the second of those times being 17 October 2011, only eight days before the final reminder which she missed. By then one could suppose Ms Pearson was aware that only a matter of days remained in which to recruit the International Brand Manager and proceed with the opposition, should she wish to do so. It appears that Ms Pearson either did not foresee the possibility that the International Brand Manager would not be recruited in time, or had put in place no contingency plan regarding the potential opposition should that circumstance eventuate. I have seen no evidence which shows that reasonable attention or care on the part of Ms Pearson or Cafedirect was taken, and I consider the repeated delays occasioned by Ms Pearson (including up to only days before her departure on holiday) are not what is contemplated by regulation 5.4(4) as a “sufficient reason”.

14. In Vangedal-Nielsen v Commissioner of Patents[7] Bowen CJ stated that the Commissioner:

    …will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension. It would be wrong if he granted an extension simply because no one had raised rather exceptional circumstances why it should not be granted. Reasons why this is so include the desirability of operating the system efficient and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved.

    [7] Vangedal-Nielsen v Commissioner of Patents 1A IPR 731; [1980] FCA 163 (19 December 1980).

15. Taking into account all of the circumstances, I am not 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 Mr. Caporn, and I am not satisfied that the actions of Ms Pearson or Cafedirect amount to sufficient reason as contemplated by regulation 5.4(4). Consequently I refuse the application for an extension of time to file the notice of opposition.

Costs

1. Both parties sought their costs. However as this matter was set down at the instigation of the Trade Marks Office and the usual rule of “costs follow the event” is therefore not application. I make no award of costs.

Nicole Worth

Hearing Officer

Trade Marks Hearings

11 April 2012