Cognotec Limited v Cognos Incorporated - [2000] ATMO 99

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 - (1^st 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 - (2^nd 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 1^st 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…

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.

Keep reading for free

Create a free CaseChat account to read Cognotec Limited v Cognos Incorporated and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2000] ATMO 99
Decision Date: 13 September 2000

CaseChat Overview and Summary

Cognotec Limited (the applicant) sought an extension of time to file its notice of appeal against a decision of the Federal Court of Australia. Cognos Incorporated (the respondent) opposed the application.

The primary legal issue before the Full Federal Court was whether the applicant had established sufficient grounds for an extension of time to appeal, specifically under regulation 5.2(2)(b) of the *Patents Regulations 1991* (Cth), which permits extensions due to an "error or omission" by the applicant or its agent.

The Court considered the nature of the error or omission alleged by the applicant, which related to a misunderstanding of the time limits for filing an appeal. The Court applied the principles governing extensions of time, which require a demonstration of a good reason for the delay and that the grant of an extension would not cause undue prejudice to the respondent. The Court found that the applicant had not adequately demonstrated that the alleged error constituted a sufficient ground for an extension under the relevant regulation, particularly in light of the applicant's responsibility to be aware of and comply with procedural time limits.

The application for an extension of time was dismissed.

Orders