Cognotec Limited v Cognos Incorporated
[2000] ATMO 99
•13 September 2000
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Objection by COGNOTEC LIMITED to application by COGNOS INCORPORATED for extension of time to file notice of opposition to trade mark application no. 797712
Background
Trade mark application 797712 in the name of Cognotec Limted (Cognotec) was advertised accepted on 2 March 2000. The three months within which a person may file notice of opposition to the registration of the trade mark, pursuant to subsection 52(2) of the Trade Marks Act 1995 (the Act) and regulation 5.1 of the 1995 Trade Mark Regulations, expired on 2 June 2000. On the 8 June 2000, Cognos Incorporated (Cognos) made an application for an extension of time of three months for filing notice of opposition. The application was made pursuant to the provisions of regulation 5.2 and nominated the following grounds:
1. regulation 5.2(2)(b) - An error or omission by the person applying for the extension of time, or by that person's agent; and
2. regulation 5.2(2)(c) - Circumstances beyond the control of the person applying for the extension of time.
The applicant for the extension of time did not pursue the grounds cited under regulation 5.2(2)(c) and I do not consider that such grounds have been established. I have not, therefore, addressed these grounds in the reasons for this decision.
Altogether, Cognos filed five declarations in support of its application for extension of time. The filing dates and details of these declarations are as follows:
i) Filed 8 June 2000 - Colin Oberin dated 8 June 2000, of McMaster Oberin Arthur Robinson & Hedderwicks (MOARH), patent and trade mark attorneys - (Oberin declaration);
ii) Filed 13 June 2000 - Dominique Hussey dated 8 June 2000, of Gowling, Strathy & Henderson (GSH), the Canadian trade mark agent for Cognos - (1st Hussey declaration);
iii) Filed 24 July 2000 - Paul Blanchard dated 21 July 2000, partner of GSH - (Blanchard declaration);
iv) Filed 24 July 2000 - Dominique Hussey dated 21 July 2000, of GSH - (2nd Hussey declaration);
v) Filed 10 August 2000 - Diana Cianciusi dated 8 August 2000, inhouse counsel for Cognos - (Cianciusi declaration).
A Duty Officer in the Hearings Section made an initial assessment of the application for extension of time on the 10 July 2000, on the basis of the Oberin and 1st Hussey declarations. The officer wrote to both parties indicating that, as a delegate of the Registrar, she was not satisfied with the grounds set out in the application for extension of time and that it was her intention to refuse the application. Cognos was given the opportunity to be heard in the matter, which it accepted on the 24 July 2000. Cognotec had already advised of its intention to object to the application for extension of time, by letter of 6 July 2000.
Prior to the hearing, as the person delegated by the Registrar to decide the matter, I had the opportunity to review the application for extension of time, in light of the Blanchard, 2nd Hussey and Cianciusi declarations. On 21 August 2000, I informed both parties that I was prima facie satisfied with the grounds set out in the application for extension of time, pursuant to regulation 5.2(2)(b), and that I was intending to allow the request by Cognos for additional time to file notice of opposition. Cognotec did not withdraw its objection to the extension being granted and, despite the offer of an adjournment (of the hearing), both parties elected to proceed with the hearing as set down for 23 August 2000. The hearing was held before me in Canberra on this date. Mr Colin Oberin of MOARH represented the applicant for the extension of time (Cognos) and Mr Richard Smoorenburg of Watermark represented the trade mark applicant (Cognotec), who was objecting to the grant of the extension.
The five declarations (listed above), filed by Cognos in support of its application for extension of time, when considered jointly, outline the sequence of events which led to the late filing of the application. The Blanchard declaration, in particular, provides a documented history of the relevant details, by way of exhibits of pertinent email and written correspondence. A summary of the events, as evidenced throughout the declarations is given below:
On or before the 2 November 1999, Diana Cianciusi (of Cognos) verbally informed Paul Blanchard (of GSH) that Cognos was concerned about the existence of the trade mark cognotec owned by Cognotec Limited. Mr Blanchard was instructed (by Ms Cianciusi) to seek worldwide restrictions on the use and registration of cognotec, through agreement, if possible, and, if necessary, by opposition. - (Blanchard and Cianciusi declarations).
On or about 16 March 2000, Mr Andrew Butler (of MOARH) drew the attention of GSH, in particular Paul Blanchard, to the acceptance of Australian trade mark application 797712 and the due date for opposition of 2 June 2000. - (Blanchard and Oberin declaration).
Communications, concerning settlement negotiations, occurred between Paul Blanchard and Cognotec's Canadian trade mark agent in January, February and April 2000. On the 27 June 2000 the Canadian trade mark agent for Cognotec contacted Cognos to report that it was "keen to reach amicable agreement". - (Blanchard and 2nd Hussey declaration).
In early April 2000, Dominique Hussey (of GSH) was requested by her principal Mr Blanchard to take over the matter of monitoring negotiations with Cognotec, in his absence during April and May 2000. Ms Hussey was advised of the due date for filing notice of opposition (of 2 June 2000) to Australian trade mark application 797712. Her instructions were to continue to press for a reply from Cognotec, but to proceed with the opposition in Australia in a timely manner unless settlement was forthcoming. - (Blanchard and 2nd Hussey declarations).
Due to an error or omission on Ms Hussey's part, no diary entries in respect of the upcoming deadline to oppose in Australia were made by herself or any staff of her firm at any time between Ms Hussey receiving instructions from Mr Blanchard and the 2 June 2000 deadline. As a result, neither she nor Mr Blanchard were reminded of the opposition deadline. [Ms Hussey states that it is the policy of her firm (GSH) that, in the case of a prospective opposition, a new file should be opened and the due date for action entered in the firm-wide diary and in the operative's personal diary]. - (Blanchard and 2nd Hussey declarations).
No response was received from Cognotec prior to the 2 June 2000 deadline. Ms Hussey states that she did not realise the deadline had passed without action until 7 June 2000 Ottawa time when she checked her file with a view to following up a response from Cognotec. Upon realising the deadline had passed, Ms Hussey emailed Mr Oberin (of MOARH), inquiring as to whether a retroactive extension of time would be available. On 8 June 2000, Melbourne time, Mr Oberin received Ms Hussey's email. Mr Oberin immediately phoned Ms Hussey to discuss the circumstances which led to the failure to lodge notice of opposition by the 2 June 2000 deadline. - (Oberin and 2nd Hussey declarations).
MOARH filed an application for extension of time to file notice of opposition to the subject trade mark application, on behalf of Cognos, on 8 June 2000. The notice of opposition followed on 24 July 2000
Submissions
Both Mr Smoorenburg and Mr Oberin presented detailed submissions on behalf of their clients.
In brief, the submissions put forward by Mr Smoorenburg, on behalf of Cognotec, went towards his argument that: i) there was no clear intention, on behalf of Cognos, to oppose trade mark application 797712 within the prescribed period; and ii) there had been no error or omission within the meaning of regulation 5.2(2)(b). Mr Smoorenburg also made brief submissions concerning the claim by Cognos under regulation 5.2(2)(c). However, for the reasons I have stated above, I have not fully detailed these submissions.
Mr Smoorenburg submitted that the actions of Cognos and its Canadian agents, GSH, showed little more than an overriding intention to seek negotiation. Mr Smoorenburg further intimated that the decision of Cognos to oppose after the prescribed period was based on a commercial reason to bring pressure to bear when negotiations were failing. In support of his submissions concerning Cognos' lack of intention to oppose, Mr Smoorenburg relied upon a number of decided cases, including Stork Pompen BV v Weir Pumps Ltd[1] and Mission Personnel Services Pty Ltd v Mission Australia[2].
[1] Stork Pompen BV v Weir Pumps Ltd (1988) 11 IPR 542
[2] Mission Personnel Services Pty Ltd v Mission Australia TMO decision of 23 June 1998
In regard to the error or omission claimed by Cognos, Mr Smoorenburg submitted that Cognos appeared to be relying on the fact that Mr Blanchard was too busy to deal with the matter. In support of his submission in this regard, he referred to Stadium Sports Franchising Pty Ltd v Stadium Australia Management Ltd[3] and Roger David Stores v Sportsgirl[4]. Mr Smoorenburg further said that the relevance of the missed diary entry was minimised by the fact that the ongoing negotiations had ensured the matter of application 797712 and its relevant date for opposition remained at the fore. On this point, he also referred to the filenote written by Ms Hussey in May 2000 (Exhibit A, 2nd Hussey declaration).
[3] Stadium Sports Franchising Pty Ltd v Stadium Australia Management Ltd (1997) 37 IPR 345
[4] David Stores v. Sportsgirl, 1984 AIPC 93-210
Finally, Mr Smoorenburg made submissions regarding the nature of the extension application. He said that the Registrar should assess the application as originally filed (ie on the basis of the Oberin and 1st Hussey declarations) and not on the facts presented in the declarations that followed. He queried the reason why the initial declarations had failed to provide the necessary details regarding the error or omission and why the notice of opposition had been filed as late as 24 July 2000. Mr Smoorenburg suggested that it would be unjust for me to decide the matter in regard to all five declarations filed by Cognos and went on to request costs on behalf of his client.
Mr Oberin, in his submissions in reply, summarised the sequence of events which led to the late filing of the application for extension of time, while addressing the points raised by Mr Smoorenburg.
Mr Oberin argued that the requisite intention to oppose had been formed prior to the relevant deadline and that Ms Hussey's error or omission had interceded to frustrate Cognos' intention. Mr Oberin further submitted that it was totally appropriate for Mr Blanchard and GSH to have a reminder system in place and for them to rely on such a system. The appropriate steps were taken, he said, by Mr Blanchard to carry out his client's intention to oppose and that this intention was frustrated by the failure of Ms Hussey to follow normal procedures. In support of his submissions, Mr Oberin referred to a number of cases, including Weir Pumps, supra, Crown and Andrews Pty Ltd v All American Fremantle International Inc[5], Balanced Essential Holdings Pty Ltd v Calvin Klein Trademark Trust[6] and Re Application By Meath And Another[7].
[5] Crown and Andrews Pty Ltd v All American Fremantle International Inc 38 IPR 595
[6] Balanced Essential Holdings Pty Ltd v Calvin Klein Trademark Trust 43 IPR 632
[7] Re Application By Meath And Another 40 IPR 150
In response to Mr Smoorenburg's arguments regarding the relevancy of the declarations filed by Cognos, Mr Oberin said that the reason sufficient details were not provided in the original declarations was because the agents for Cognos had moved quickly to file the application for extension of time and that there had not been adequate time to make more detailed enquiries. He said that the subsequent declarations provided additional details, which explained the basis for the statements made in the initial evidence. Mr Oberin pointed to several decided cases in which an application for extension of time had been supported by a number of supplementary declarations filed later in the proceedings (ie. Balanced Essential Holdings, supra, and Meath's application, supra). He also responded to the comments made by Mr Smoorenburg regarding the date of filing of the notice of opposition, stating that this was not an issue and certainly not conditional on the granting of the extension.
Discussion
This is a late application for extension of time to file notice of opposition to a trade mark application. The application has been sought under the provisions of subsection 5.2(2) of the
Act and the relevant provisions read as follows:
Extension of time for filing—grounds
5.2 (1) A person may apply to the Registrar for an extension of time in which to file a notice of opposition.
(2) An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:(a) an error or omission by a trade marks officer;
(b) an error or omission by the person applying for the extension of time, or by the person’s agent;
(c) circumstances beyond the control of the person applying for the extension of time;
(d) the conduct of genuine negotiations between that person and the applicant for registration;(e) the undertaking of genuine research to decide:
(i) whether opposition is justified; or
(ii) on the grounds of opposition.
(3) If the period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragraph (2) (a), (b) or (c) and on no other ground.
Extension of time for filing—grant of extension
5.4 (1) Subject to subregulations (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition, the Registrar must grant the extension of time.
(2) The Registrar must not grant the extension of time, unless the Registrar:
(a) is reasonably satisfied that the person applying for the extension of time has served a copy of the application, and the accompanying declaration, on the applicant for registration of the trade mark; and
(b) has given to both the person applying for the extension of time and the applicant for registration of the trade mark a reasonable opportunity to make representations concerning the application for extension of time.
(3) For the purposes of paragraph (2) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(4) If an application for extension of time is made after the period for filing a notice of opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period.
(5) An extension of time must be for such period:(a) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (a), (b) and (c)—as the Registrar believes is reasonable; or
(b) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (d) and (e)—not exceeding 3 months as the Registrar believes is reasonable.
Under regulations 5.2 and 5.4, before granting an application for extension of time, the Registrar must be reasonably satisfied as to the validity of the ground(s) set out in the extension application. If the application is late, the Registrar must not grant the extension unless he or she is reasonably satisfied that there is sufficient reason for the application not being made before the end of the opposition period. If satisfied, on both accounts, the Registrar must grant the extension of time (my emphasis).
The grounds upon which Cognos has made application for extension of time are pursuant to regulation 5.2(2)(b), "an error or omission by the person applying for the extension of time, or by the person's agent". In the Crown and Andrews case, supra, Hearing Officer Homann compared the concept appearing in paragraph 5.2(2)(b) to a similar concept in patents legislation. At pages 599-600, he remarked:
The concept of "error or omission" on the part of an applicant or its agent appears for the first time in Australian trade marks legislation in the 1995 Act. It has a long history, however, in patents legislation and its meaning has been refined by a series of decisions of the courts and the Commissioner. The words "error or omission" in reg 5.2(2)(b) must, I think, be given the same meaning as in s224(2) of the Act which is the equivalent of s223(2) of the Patents Act 1990, the successor to s160(2) of the Patents Act 1952. The decided cases under the latter provisions are therefore directly in point in determining the meaning of the same words in the Act.
And, at pages 603-604 that:
In the absence of evidence to the contrary I consider that I must adopt the reasoning in the Weir Pumps case and that of the Federal Court in Kimberly-Clark and Danby v Commissioner, all supra. The effect of those decisions is that the person applying for the extension of time must have formed the intention to oppose the application on or before the expiry of the prescribed period and that that intention must have somehow been thwarted or frustrated by an error or omission. That was not the case in the present circumstances in which no person either within AMFI or in the offices of its agents had formed such an intention until after the time for filing notice of opposition had passed. There was therefore no relevant error or omission to file the notice in that time. The mere failure to file the notice on time is not in itself an error or omission and the failure to conduct a search of the relevant records or to keep a watch on the Journal is not in itself to be considered as an error or omission.
In the first instance, as the applicant for the extension of time, Cognos must demonstrate that it had formed an intention to oppose the trade mark application during the prescribed opposition period (ie. on or before the 2 June 2000). Despite Mr Smoorenburg's submissions to contrary, I consider that Cognos has discharged its onus in this regard.
Mr Smoorenburg has compared the present circumstances to that of Weir Pumps, supra, where the extension application was not allowed. In that case, the error or omission (claimed by the applicant in relation to a late extension of time to file notice of opposition to a patent application) was based on a deliberate decision by that party not to instruct their attorneys to conduct a search, or to keep watch on potentially conflicting applications. The party subsequently became aware of the acceptance of such an application after the opposition period had passed. However, in the present circumstances, Cognos was aware of the existence of Cognotec and the subsequent acceptance of its Australian trade mark application during the relevant period for opposition. Furthermore, Cognos declared its intention to restrict the use and registration of the trade mark cognotec worldwide and the situation, including the acceptance of trade mark application 797712, was being monitored. I accept that it was only through a breakdown in the normal office procedures of Cognos' Canadian agent (GSH), that the actual deadline for filing notice of opposition passed without the necessary action being taken.
The evidence contained in the supporting declarations, in my opinion, shows that Cognos (through its Canadian agent - GSH) had formed a definite intention to oppose during the relevant period, albeit conditional on a settlement being reached before the due date of 2 June 2000. I cannot agree with Mr Smoorenburg that Cognos' actions can be liken to the "what if" scenario referred to by the delegate in Mission Australia, supra. I concur with Mr Oberin's submissions on this point, that an intention to oppose may be conditional on many factors. Indeed, a number of decided cases support this conclusion, as per Meath's Application, supra. Here, the decision to oppose was conditional upon the conduct of investigations that were to be made about the applicant's sales. Although some degree of ambiguity existed as to the instructions given to the agent by the prospective opponent, the delegate found that there was enough to indicate a definite intention to oppose.
I have found that Cognos had the necessary intention to oppose the subject trade mark application during the relevant period for opposition. However, for the extension application to proceed, I must now find that an error or omission occurred of the kind contemplated by regulation 5.2(2)(b).
The cases already cited in this decision, with the addition of Kimberly Clark v Commissioner of Patents and Anor[8], show that an error or omission can be said to have occurred when an intention to carry out a certain action has been frustrated by either an error (eg. the act has been done incorrectly, or mistakenly done outside the time allowed), or omission (eg. the act has not been done due to neglect or inadvertence). The error or omission must be obvious and it must be shown that the error or omission was the cause of the late filing of the extension application.
[8] Kimberly Clark v Commissioner of Patents and Anor 13 IPR 569
In my opinion, the failure of Ms Hussey to follow normal office procedure (ie. to effectively utilise her firms reminder system), is an error or omission of the kind contemplated by regulation 5.2(2)(b) and I am satisfied that this error or omission led to the late filing of the notice of opposition (and extension application). I acknowledge Mr Smoorenburg's point that, given the history between the two parties and the ongoing negotiations, Cognos should have been more aware of the impending date for opposition. However, reminder systems are widely used by attorney firms and there is nothing before me to suggest that GSH's reliance on its reminder system was inappropriate. It appears to be the case that the direction to oppose was left to the 'final hour', however this does not negate the fact that Cognos had formed an intention to oppose within the prescribed opposition period and that an error or omission on the part of Cognos' Canadian agent had frustrated this intention.
In response to Mr Smoorenburg's submissions concerning the relevancy of all five declarations, the fact that the full details regarding the late filing of the extension application only came to light after some communication between the applicant for the extension and the Registrar does not negatively influence my decision. On the basis of the initial declarations, the delegate did not consider Cognos' application acceptable. As is usual practice, Cognos was allowed the opportunity to further support its case before its application was refused. Subsequently, both parties were informed prior to the hearing that it was the Registrar's intention to allow the extension application.
In regard to Mr Smoorenburg's claim of a potentially unjust decision (on the basis of all five declarations filed by Cognos), I note that I had discussed the extension application with Mr Matt Pini of Watermark prior to the hearing, upon the offer of an adjournment of the hearing. I enquired as to whether Watermark had prepared their submissions, objecting to the extension application, on the basis of all five declarations. Mr Pini confirmed this fact and stated his firm's desire to proceed with the hearing
Mr Smoorenburg also made issue of the fact that Cognos' notice of opposition was filed as late as 24 July 2000, with Cognos requesting a period of extension of 3 months, being 2 June 2000 to 2 September 2000. Regulations 5.4(4) and 5.4(5) direct that, in the case of an extension that is granted on a ground set out in regulation 5.2(2)(a), (b), or (c), the extension of time must be for such period as the Registrar believes is reasonable. I have said that I am reasonably satisfied with both the grounds set out in the application and the reason given as to why the application was not filed within the time allowed. I am therefore obliged, under regulation 5.4(1), to grant the extension. I believe a request of three months is reasonable in the circumstances.
Decision
In regard to Cognos' late application for extension of time to file notice of opposition, I am reasonably satisfied that the ground of "error or omission by the person applying for the extension of time, or by the person's agent" has been established. Further, I am reasonably satisfied that there was sufficient reason for the application not being made within the prescribed opposition period. I must therefore allow the application for extension of time and I direct that the due date for evidence in support of the opposition be set at 2 December 2000.
Costs
Having found in favour of the applicant for the extension of time, I see no reason why costs should not follow the result. I have considered Mr Smoorenburg's submissions regarding the somewhat protracted consideration of this extension application. Nevertheless, the hearing in the matter proceeded on the basis of an objection by Cognotec to the extension application and, having found against Cognotec, I see no reason why the matter of costs should be determined otherwise. I therefore award costs to Cognos, in accordance with the official scale.
Michelle Edlington
Senior Examiner
13 September 2000
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