Coogi Australia Pty Ltd v Shamar

[1996] ATMO 50

TRADE MARKS ACT 1955 AND TRADE MARKS ACT 1995


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

Application by COOGI AUSTRALIA PTY LTD for Extension of Time to Lodge Notice of Opposition to Application for Registration No 638388 in the Name of SHAMAR PTY LTD

Application no 638388 was lodged on 22 August 1994 in the name of SHAMAR PTY LTD (Shamar). The application was advertised as accepted on 30 November 1995 and pursuant to s49 of the Trade Marks Act 1955 the time within which a person might lodge notice of opposition to the registration of the trade mark expired 3 months from that date.  “Month” is defined in para 22(1)(b) of the Acts Interpretation Act 1901 as meaning a calendar month, which in turn is defined at para (g) of the same subsection:

“Calendar month” means a period commencing at the beginning of a day of one of the 12 months of the year and ending immediately before the beginning of the corresponding day of the next month or, if there is no such corresponding day, ending at the expiration of the next month;

As there was no “corresponding day” to the 30 November 1995 the three month period ended at the expiration of the month of February 1996, that is, on Thursday 29 February, 1996 being a leap year.  A notice of opposition was recorded as having been lodged by COOGI AUSTRALIA PTY LTD (Coogi) at the Melbourne State Office of the Australian Industrial Property Organisation (AIPO), of which the Trade Marks Office is a part, on Friday 1 March 1996.  As this was one day outside the due date for lodgment of a notice of opposition Coogi was notified of this by a letter from the Trade Marks Office on 18 March 1996.  On 22 March 1996 Coogi’s attorneys, Callinan Lawrie, lodged applications for an extension of time for lodgment of notices of opposition to this application and a companion application, no 638389.  Although the application was headed Trade Marks Act 1995 Mr Kelson of Callinan Lawrie referred in the body of the application to “Section 131(1)(a)”, which is the relevant provision of the 1955 Act.  The grounds of the application were stated to be as follows:

Due to circumstances beyond the control of the person concerned, the Notice of Opposition was not recorded as being lodged on 29 February 1996, but rather as having been lodged on 1 March 1996.  The Notice of Opposition , together with fee, was delivered to a courier on 29 March (sic) 1996 with instructions to lodge at the Melbourne Sub-Office or in the late lodgement box, and that courier deposited the Notice of Opposition, along with other documents in the late lodgement box outside the Sub-Office of the A.I.P.O. at 150 Lonsdale Street, Melbourne, but the lodgement was recorded as having been made on 1 March 1996.  The courier’s actions were outside our control.  It is also not certain that the dates of lodgement were correctly recorded.

The application for extension of time was accompanied by a statutory declaration by Mr Kelson, together with exhibits, in which he stated that he had received instructions from Coogi’s solicitors on 27 February 1996 to lodge notices of opposition in the matter and that the notices, other unrelated documents and the fee in respect of the notices of opposition were delivered to a courier at 4.10pm on that same day.  He said that the courier had standing instructions to deposit documents in the late lodgment box if lodgment over the counter was not possible because of the office being closed for business.

The application for extension of time in respect of 638389 was withdrawn on 26 March 1996. In respect of 638388 Mr Kelson submitted a second declaration in which he stated that he had been informed by Classic Couriers that its driver had indeed deposited documents in the late lodgment box on 29 February 1996. Callinan Lawrie were advised by letter from a Senior Examiner that she proposed to refuse the application for extension of time as the normal procedures of the State Office had been carried out, that the notices of opposition together with other documents lodged by Callinan Lawrie were removed from the late box on the morning of Monday 4 March 1996 and that they were given the lodgment date of the last previous working day, Friday 1 March 1996. She considered that late lodgment of the notice of opposition in these circumstances was not beyond the control of the person concerned as required by s131 of the 1955 Act. Callinan Lawrie responded with a letter of 7 May 1996 enclosing a statutory declaration by Mr Colin Ellis, the courier employed by Classic Couriers in which he stated that he had picked up a package from Callinan Lawrie at 4.10pm on 29 February 1996 and deposited it in the late lodgment box at approximately 4.35pm on the same day. Attached as an exhibit to the declaration was a copy of a delivery slip of Classic Couriers dated 29 February 1996 and showing the pick up time from Callinan Lawrie as 4.10pm, the destination as AIPO 15th, 150 Lonsdale St MELB and marked “IN LATE BOX”. He stated further that he knew where the late lodgment box was, that he had previously placed packages in the box and that although he had had some difficulty inserting this package into the box he had heard it drop within. The Senior Examiner maintained her objection to the grant of the extension of time. In support of her position she enclosed copies of the Late Box Lodgment records of the Melbourne State Office for the 29 February, 1 March and 4 March. These showed that documents from Callinan Lawrie had been removed from the late box on the mornings of 29 February and 4 March but that nothing from them had been found on the morning of 1 March. Mr Kelson then requested a hearing of the matter requesting also that he be able to question staff of the State Office.

The hearing was held in Melbourne on 3 June 1996 before the Registrar’s delegate, Mr Ian Forno.  Mr Kelson appeared for Coogi.  As he had previously requested he put questions to members of the staff, under oath, as to the procedures carried out by staff in relation to the late box.  In his decision Mr Forno found that it was extremely unlikely that the package had become lodged in the opening of the box so as to be overlooked by staff when the box was cleared on the morning of 1 March, and had then become dislodged by the introduction of a later package and so not retrieved until 4 March.  He also found that it was improbable that an error had been made in the dating of the documents of one particular package, as was argued, or that the package had been retrieved at the proper time but had then become mislaid within the office and not discovered until later on in the day of 1 March or until 4 March.  He found that it was more likely overall that the packet containing the notices of opposition had been delivered after the late box had been cleared on the morning of 1 March and that Mr Ellis’ declaration to the contrary, although undoubtedly honestly made, was flawed by the passage of time and the effects of memory and surrounding circumstances.  As a consequence, in his decision dated 17 June 1996, he held that the notice of opposition had been lodged out of time and was therefore invalid.

Steps were then taken to set down for hearing the matter of the application for extension of time for the lodgment of the notice of opposition to application 638388.  However, under cover of a letter dated 12 July 1996 from Mr Kelson, who is the principal of Callinan Lawrie, solicitors, a copy of an Application for an Order of Review of Mr Forno’s decision made to the Federal Court on that date  pursuant to the provisions of the Administrative Decisions (Judicial Review) Act 1977 and Order 54 of the Federal Court Rules, was served on the Registrar.  In those circumstances Callinan Lawrie were informed that it was proposed, contrary to earlier advice, to hold over the hearing on the extension of time until the application to the Court should be determined.  However, on 28 August 1996 a notice of motion pursuant to Order 19, rule 4 of the Federal Court Rules was served on the Australian Government Solicitor acting for the Registrar of Trade Marks in the proceedings relating to the Application for the Order to review the delegate’s decision.  The notice recited that the applicant before the Court intended to move the Court for certain orders at the directions hearing set down for 2 September 1996.  At that hearing Merkel J made the following orders, among others, by consent:

1. The respondent proceed with the hearing and determination of the application by the applicant pursuant to Section 131 of the Trade Marks Act 1955 (or Section 224 of the Trade Marks Act 1995) for an extension of time within which to lodge Notice of Opposition to the registration of trade mark application number 638388 in the name of Shamar Pty Limited.

2.    The hearing and determination referred to in paragraph 1 hereof to take place by 31 October 1996.

3.    This proceeding be stayed pending the determination referred to in paragraphs 1 and 2 hereof.

The matter was therefore set down for hearing on 30 September 1996 in Canberra before me as the Registrar’s delegate.  Mr Barry Hess of counsel, instructed by Mr Kelson, made submissions by telephone on behalf of Coogi.  Freehills Patent Attorneys made written submissions on behalf of Shamar. 

Scope of this decision

Mr Hess outlined the history of this matter which I have set out above in these reasons. He also made submissions similar to those made to Mr Forno on the hearing of whether the notice of opposition was in fact lodged in time. However, I do not think it would be proper for me to reconsider the reasons given by Mr Forno in his decision on that question now that that decision is the subject of an application for an Order for Review before the Federal Court. Moreover, the order of Merkel J of 2 September directs the Registrar in terms to hear and determine the application for extension of time pursuant to s131 of the 1955 Act or s224 of the 1995 Act. I therefore do not propose to canvass the issues already canvassed by Mr Forno in his decision but intend to limit my decision to those matters ordered by the Court to be decided.

The relevant provisions

Mr Hess addressed the question whether the application for the extension of time to lodge notice of opposition fell to be considered under s131 of the 1955 Act or s224 of the 1995 Act. He submitted that the transitional provisions of the Trade Marks Act 1995, which commenced on 1 January 1996, were not at all clear as to the appropriate statute or statutory provisions which should govern an application for an extension of time to lodge a notice of opposition in the circumstances of this application.  He pointed out that the application for registration had been accepted on 30 November 1995 and was therefore a “pending” application in accordance with subs 11(2) of the 1995 Act.  It seemed therefore to be clear that opposition proceedings in relation to the application were governed by the repealed Act in accordance with subss(1) and (2) of s241  However, he said, because of the wording of para 241(3)(a) it was not clear that ancillary applications such as an application for extension of time were also to be treated as coming within the provisions of the 1995 Act.  He submitted that the word “application” in s241 was capable of several interpretations.

Subsection 11(2) is in the following terms:

(2) An application for the registration of a trade mark under the repealed Act was pending   immediately before 1 January 1996 if before that day:

(a)the application had not lapsed (see subsection 48(1)), been withdrawn (see subsection 40A(1)) or refused (see subsection 44(1)); and

(b)the Registrar had not refused (under section 50) to register the trade mark or if he or she had refused to register the trade mark:

(i)the period allowed for appealing against the decision had not yet ended; or

(ii)an appeal had been made against the decision but had not yet been decided; and

(c)       the trade mark had not been registered under section 53.

Sections 240 and 241 are as follows:

Applications, notices etc.—general

240.(1) Subject to this Division, an application, notice or request that:

(a)was lodged with the Registrar in accordance with the repealed Act; and

(b)was pending immediately before 1 January 1996;

is to be dealt with in accordance with this Act.

Note:For pending see subsection 11(2)

(2) The application, notice or request is taken to have been filed in accordance with this Act.

Note:For file  see section 6

Application for registration of trade mark

241.(1) This section applies if an application for the registration of a trade mark in Part A or B of the old register was pending immediately before 1 January 1996.

Note 1:For old register see section 6

Note 2:For pending see subsection 11(2)

(2) If the application had been accepted under the repealed Act and the acceptance was in force immediately before 1 January 1996, the following provisions apply:

(a)subject to subsection (4), the repealed Act (other than paragraph 45(1)(b)) continues to apply in relation to the application;

(b)if, after dealing with the application in accordance with the repealed Act, the Registrar is required under section 53 of that Act to register the trade mark in the old register—the Registrar is to register the trade mark under Part 7 of this Act.

Note:Subsection 45(1) of the repealed Act provided as follows:

"45.(1) An application for the registration of a trade mark may be accepted, and the trade mark may be registered, notwithstanding that the applicant does not use or propose to use the trade mark:

(a)    ...

(b)   if an application has been made for the registration of a person as a registered user of the trade mark and the Registrar is satisfied that the proprietor intends the trade mark to be used by that person in relation to those goods or services and is also satisfied that that person will be registered as a registered user of the trade mark immediately after registration of the trade mark.''.

(3) If, immediately before 1 January 1996, the application had not been accepted, the following provisions apply:

(a)subject to subsection 240(2) and subsection (5) of this section, the application is to be dealt with in accordance with this Act;

(b)if:

(i)there is no opposition to the registration; or

(ii)there is an opposition to the registration but the Registrar's decision, or (in the case of an appeal against the Registrar's decision) the decision on appeal, is that the trade mark should be registered;

Part 7 is to apply in relation to the registration of the trade mark.

(4) If, when dealing with the application under the repealed Act as provided by paragraph (2)(a), the Registrar withdraws the acceptance of the application under subsection 44(3) of that Act, the following provisions apply:

(a)subject to subsection 240(2) and subsection (5) of this section, the application is to be dealt with in accordance with this Act as if it were an application whose acceptance had been revoked under subsection 38(1);

(b)if:

(i)there is no opposition to the registration; or

(ii)there is an opposition to the registration but the Registrar's decision, or (in the case of an appeal against the Registrar's decision) the decision on appeal, is that the trade mark should be registered;

Part 7 is to apply in relation to the registration of the trade mark.

(5) The filing date in respect of the application is:

(a)if paragraph (b) does not apply—the day on which the application was lodged with the Trade Marks Office under the repealed Act; or

(b)if section 43 of the repealed Act applied to the application and the Registrar had made the proper direction—the day on which the application is to be taken to have been lodged with the Trade Marks Office under the repealed Act.

It is clear from subs 11(2) that application 638388 was a pending application as at 1 January 1996 since it was an accepted application which had not lapsed, been withdrawn or refused and had not been registered.  It seems equally clear from para 241 (2) that the repealed Act continues to apply in relation to the application.  However, as I understood Mr Hess’ submission, the word “application” in para 241(3)(a) cast doubt on the meaning of that word throughout s241 so that it was not clear that an “application”, such as an application for an extension of time, was governed by the repealed Act or the Act now in force.  However, it seems clear to me that read in the context of s241 as a whole the words “the application”, at least in that section, must refer to an application for registration.- subsection (1) reads “This section applies if an application for the registration of a trade mark ... was pending immediately before 1 January 1996”.  Any subsequent reference to “the application” in that section therefore must be a reference to the application for registration. In this respect s241 is to be contrasted with s240 where, in the context of “an application, notice or request”, the word “application” must be given a wider meaning than an application for registration. Moreover, the reference to “the repealed Act” in para 241(2)(a) must refer to all provisions of the repealed Act. This conclusion is strengthened by the express exclusion of para 45(1)(b) from the continued operation of that Act. It follows that, if all the provisions of the repealed Act continue to apply to the present application, ss130 and 131 of that Act must continue to apply to an extension of time for the lodgment of a notice of opposition. This was the position accepted by the attorneys for Shamar who made submissions on the basis of s131 alone.

Sections 130 and 131 of the 1955 Act

Section 130 of the Trade Marks Act 1955 is a general extension of time provision in the following terms:

Extension of time

130. Where, by this Act, a time is specified within which an act or thing is to be    done,   the Registrar may, unless otherwise expressly provided, extend the time          either before or after its expiration.

Section 49 provides for the lodgment of notice of opposition:

Notice of opposition

49. (1) A person may, within 3 months after the date of the advertisement of the   acceptance of an application, or within such further period, not exceeding 3   months, as the Registrar, on application made to him within the first-mentioned      period, allows, by notice in writing specifying the grounds of opposition and   lodged at the Trade Marks Office, oppose the registration of the trade mark.

(2) The opponent shall serve a copy of the notice on the applicant.

In R v The Registrar of Trade Marks; ex parte J S Staedtler (1936) 55 CLR 271 the High Court held unanimously that s38 of the Act of 1905, the equivalent of s49, provided a complete and exhaustive statement of the conditions and the times within which extensions of time for lodging opposition might be granted and that s105 of the 1905 Act, the equivalent of s130, did not apply to the lodgment of notice of opposition. Evatt J, in referring to the qualification “unless otherwise expressly provided”, said, at 275:

The provision thus creates a rule for extension of time which is quite distinct from the general power to extend conferred by sec. 105.  It allows of extension in a different manner and by other means than those contemplated by sec.105.  In short, sec. 38 provides “otherwise” and does so “expressly” within the meaning of sec.105.

And McTiernan J agreed, also at 275:

Sec. 38 in my opinion exhaustively and specially states the conditions upon which a person may apply for an extension of time within which to lodge a notice of opposition.  Because of the express provision thereby made limiting the period in which such application may be made, sec. 105 gives no authority to extend the time after that period has expired.

Although the general extension of time provisions of s130 therefore are not available to an applicant for extension of time for late lodgment of a notice of opposition it seems to be now well established that the special provisions of s131 may be relied on. Section 131 is as follows:

Power to extend times by reason of errors in Trade Marks Office, &c.

131. (1) Where, by reason of-

(a) circumstances beyond the control of the person concerned; or

(b) an error or action on the part of an officer or person employed in the Trade Marks Office,

an act or step in relation to an application for the registration of a trade mark or in            proceedings under this Act (not being proceedings in a court) required to be done or    taken within a certain time has not been so done or taken, the Registrar may extend the         time for doing the act or taking the step and permit the act to be done or the step to be         taken.

(2) The time required for doing an act or taking a step may be extended under this           section although that time has expired.

In Lyons v Registrar of Trade Marks (1983) 1 IPR 416 Beaumont J said, at 427-428:

s131 should be read as a gloss upon the operation of s49 in the form of a force majeure provision. Although s131 is capable of general application to any provision of that Act, it should not be regarded as a mere “general” provision of the kind found in s130 to which may be applied the rule of construction that where there is a conflict between “general” and “specific” provisions, the “specific” provisions prevail on the ground of repugnancy...Section 131 is not a merely general power in any abstract sense; it is limited in its application to quite special situations. Further, the history of the legislation and its remedial character support the conclusion that Parliament intended that, in a limited class of case, time could be extended beyond the period specified in, inter alia, s49... Although it was held in Staedtler that the precursor of s49 should be regarded as an exhaustive treatment of the subject, it is possible to reconcile that decision with the subsequent introduction of a remedial provision to deal with a force majeure situations arising within the framework of s49. The code or exhaustive provisions contained in s49 are thus made the subject of a limited exception in the specific circumstances described in s131. In this regard, a contrast may be drawn with the non-specific provisions of s130 dealt with in Staedtler.  Further, in Staedtler, Dixon, Evatt and McTiernan JJ placed some reliance on the presence in s130 of the proviso “unless otherwise expressly provided”. No such proviso was inserted in s131. As a last resort, the rule of construction that the later enactment prevails should be applied...In my opinion , the history of the legislation and the special character of s131 suggest that the reasoning in Staedtler cannot be applied to s131.

In my view, the power contained in s131 may be exercised so as to extend the times specified in s49.

Mr Forno in his decision of 17 June 1996 found that there was no evidence to support a contention that the late lodgment of notice of opposition to application 638388 was due to any error or action on the part of an officer or person employed in the Trade Marks Office. I therefore propose to consider only the case for the allowance of the extension of time on the basis of para 131(1)(a). In considering the meaning of the expression “circumstances beyond the control of the person concerned” in s131(1)(a) Jenkinson J said, in Atomik Skifabrik Alois Rohrmoser v The Registrar of Trade Marks (1987) 7 IPR 551, at 558:

In the context in which it is found, the expression “circumstances beyond the control of the person concerned” does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts or omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in s131(1)(a), in my opinion. Nor, in my opinion are the acts or omissions of that agent’s servants. The section is, I think, correctly described as a force majeure provision.

Both parties made submissions on this passage.  Freehills submitted that the Atomik Skifabrik case required that a document must be lost or destroyed as opposed to merely temporarily misplaced or delayed in order to be a circumstance justifying an extension of time and referred me to a decision of the Registrar in Re Application by Esselte Letraset Ltd (1990) 21 IPR 517. In that case the notice of opposition had been misplaced when an office cleaner had transferred files to different piles on an attorney’s desk.. The application for extension under para 131(1)(a) was refused. Mr Hess argued that the words of Jenkinson J as to the loss or destruction of a document were meant as no more than exemplary and were not to be taken as exhaustive of the possibilities of circumstances which would justify the description of beyond the control of the person concerned. He submitted that the courier was clearly an independent contractor and was therefore not a servant or an employee of Callinan Lawrie who were the agents of the person concerned, Coogi. As an independent contractor, he said, the courier was clearly out of the control of Callinan Lawrie and para 131(1)(a) was applicable.

Mr Hess also addressed the question of the Registrar’s discretion in the matter of the grant of extensions of time and referred to Abbott & Lamb v Registrar of Trade Marks (1991) AIPC ¶90-806 and Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243. The latter case, however, was concerned with the general discretion under reg 5.10 of the Patents Regulations 1991 which is a provision similar to s130 of the Trade Marks Act 1955  and concerned an extension of time to serve evidence in opposition proceedings.  The Abbott & Lamb case, on the contrary, was a decision on s131 of that Act and, concerning an extension for the late lodgment of a notice of opposition, is more directly in point. In that case the attorney responsible for the lodgment of the notice of opposition left his office at 5pm on the last day for lodgment of the notice, expecting to reach the Sydney sub-office by 6pm and leave the notice in the late box. He was unable to do so because an unknown person had improperly parked a car in front of his garage, thus preventing his car from leaving. The notice was therefore lodged on the following day, one day out of time. The delegate of the Registrar refused the extension on the ground that the circumstances were unfortunate but reasonably foreseeable and therefore not beyond the control of the attorney and thus of the prospective opponent. Mr CJ Bannon QC, Deputy President of the Administrative Appeals Tribunal, while agreeing that it was reasonably foreseeable to a patent attorney setting out to travel by car from his office in Manly to the Sydney Sub-Office in the heart of Sydney that any number of things might prevent him from arriving in time, particularly traffic conditions at that time of the day. He said, at 37,647:

…applying Jenkinson J’s decision [in Atomic Skifabrik] and accepting as I do that the patent attorney should have foreseen the possibility of delay, the fact remains that it was not his act or omission, but that of a stranger which prevented him getting out the car and arriving in time at the sub-office.  The finding of the delegate of the Registrar on this point is not in dispute.  It was her finding that, but for the improperly parked vehicle, he would probably have arrived in time.  …but it remains true that one cause for the late filing was the act of a stranger in improperly parking the vehicle.

Those circumstances amounted in Mr Bannon’s opinion to circumstances beyond the control of the person concerned and he directed that the decision under review be set aside and that the Registrar should exercise his discretion under s131(1) of the Act so as to extend the time for filing the notice of opposition as requested. He added that he could see no reason why the discretion should not be exercised favourably.

The decision of Mr Bannon was taken on appeal to the Federal Court and was subsequently settled by Consent Orders made by Burchett J on 3 July 1991 the effect of which was that the decision of the AATwas set aside and the decision of the Registrar restored (not affirmed-see Official Notice in the Australian Official Journal of Trade Marks of 5 September 1991.)

In addition, Mr Hess submitted that it was clear from the evidence that Coogi was serious in its intention to oppose the mark. He said that the applicant had been served with the notice of opposition soon after its lodgment and could not be prejudiced by any previous lack of notice of the intended opposition.  Further, he said, there had been no delay by Coogi in making the present application for extension of time and there would be no delay in the finalisation of the evidence in support of the opposition.  The evidence in support had in fact already been lodged and a copy served on the trade mark applicant.  He further submitted that the interests of the public are not well served if the Register of Trade Marks should contain marks which ought not to have been registered: Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144.

Freehills argued in their submissions on behalf of the applicant, Shamar, that the “person concerned” in para 131(1)(a) is the opponent: Re Application by Steen Alan Stevns (1985-87) 7 IPR 70, ie the person in whose name the step is to be taken or the act is to be done: Atomik Skifabrik.  The onus was on Coogi to show that the failure to lodge the notice of opposition within the prescribed time was due to circumstances beyond its control.

Freehills argued further that an oversight on the part of the agent for the opponent did not constitute circumstances which were beyond the control of the person concerned: Re Application by The Ritz Hotel (London) Limited (1985-87) IPR 546; Atomic Skifabrik.  Any oversight by the opponent’s patent attorney was not a circumstance beyond the control of Coogi.  It was further submitted that Coogi had failed to provide any explanation for the delay in filing the notice.  There was no evidence that the courier acted otherwise than in accordance with the instructions received from the opponent’s patent attorneys and it was made clear in the Ritz case, supra, that in the absence of any explanation for delay a presumption that it was beyond the control of the opponent would not be made.

It was said that where matters are left to the last day or almost the last day, any delays due to oversight, illness or whatever (sic) may result in major consequences for which a person concerned must bear responsibility: Roger David Stores v Sportsgirl Pty Ltd (1984) AIPC 93-210 at 39,271; Stafford-Miller Ltd v Jean Patou Parfumeur (1987-88) 11 IPR 409. Coogi must therefore bear responsibility for the fact that its solicitors did not instruct its patent attorneys until 27 February 1996 which allowed little time to file the notice of opposition The resulting lateness and subsequent failure to file a notice of opposition within the time specified by the Act must therefore fall upon Coogi but was not a factor relevantly beyond its control. Coogi should have ensured that the matter was followed through within the time available. Unfortunate events which are avoidable would not justify the application of a force majeure power like section 131: Re Application by Tandy Corporation (1991-92) 22 IPR 639.

In summary Freehills submitted that the evidence provided by Coogi identified no circumstances or other facts which were outside the control of Coogi.  Coogi’s application therefore failed to provide any grounds on which it might be granted an extension of time under para 131(1)(a).

Decision

Accepting, as I do, the uncontradicted evidence of Mr Kelson that the notice of opposition was delivered to the courier together with other documents and the necessary fees on the afternoon of Thursday 29 February with instructions that the packet be deposited in the late lodgments box that same day, I consider that he, Mr Kelson, had done everything within his power to ensure that the notice was lodged on time.  I do not therefore accept the submission that the late lodgment was due to an error or oversight on his part, as the agent of the “person concerned”, the would-be opponent, Coogi.  Rather, I accept that the courier was an independent contractor, or the employee of an independent contractor, who was, in the legal sense, outside the control of Mr Kelson once the packet was delivered to him.  Furthermore, I believe that the words of Jenkinson J when referring to the acts or omissions of an independent contractor who causes the loss or destruction of a document were not intended to be a definitive or exhaustive statement but rather merely exemplary.  I can see no reason why the acts or omissions of the same independent contractor who causes a delay in the lodgment of a document should be excluded from those circumstances which are beyond the control of a relevant person concerned.  In any case the words of Jenkinson J are not a legislative enactment to be strictly construed.

I think the case of Re Application by Esselte Letraset Limited (1991) 21 IPR 517 can be distinguished in that in that case the notice of opposition was in the control of the agent of the person concerned at all relevant times. It seems that the attorney in that case was unaware of the last lodgment date until four days later when the file was discovered. Otherwise a quick search of his desk would have revealed the presence of the file even if not in the expected place. The actions of the cleaner were not therefore decisive in the late lodgment of the notice of opposition but rather the omission of the agent. In the present case, however, as I have said, Mr Kelson was perfectly aware of the last day of lodgment of the notice, he had done eveything in his power to enable the document to be lodged in time and it was entirely due to the acts or omissions of the courier, who was outside his control, that the notice was lodged out of time.

With respect to the argument that to delay lodgment of a notice of opposition until the last possible day is not a circumstance beyond the control of a prospective opponent, it is true that Mrs Farquhar, in her decision in Stafford-Miller Ltd v Jean Patou Parfumeur 11 IPR 409, said at 411:

There is another aspect of this matter, on which no information or submissions were forthcoming on behalf of Jean Patou Parfumeur, and that is the question of why that firm, as the “person concerned”, apparently did nothing until the second last day of the initial three month period available to it to decide to oppose or to seek further time in which to oppose.  Nothing has been put to me to suggest that circumstances beyond their control prevented them from instructing their agents at an earlier date, and I can only repeat a comment made in an earlier decision of the Registrar, Roger David Stores Pty Ltd v Sportsgirl Pty Ltd (1984) AIPC 93-210 at 39271, that where matters are left to the last day or so available, any delays due to oversight or illness or whatever may result in major consequences for which the person concerned must bear responsibility.

While the decision in Abbott & Lamb, supra, was set aside by consent and I therefore do not expressly rely on the ultimate finding in that case, the words of Mr Bannon at 37,646 as to the practice of agents of prospective opponents to leave the lodgment of a notice of opposition until the latest possible day in order to take full advantage of the time limits for the service of evidence in support and thus perhaps to avoid the necessity of requesting extensions of time to do so merit consideration:

While recognising the problem of filing evidence in the times allowed under the Regulations, it appears to the Tribunal that the practice referred to is unwise and leads precisely to the situation facing the applicant in this matter.  While it is true that it is perfectly permissible to file a notice of opposition at the end of the last permissible day, deliberately to take the course of delaying filing so that it occurs as close to the deadline as is practicable is to take a course pregnant with danger.

And in reference to the judgment of Beaumont J in Lyons v Registrar of Trade Marks, supra, he added:

He [Beaumont J] concluded that the “phrase “by reason of” which appears in both provisions[ s131 of the Trade Marks Act 1955 and s160(2) of the Patents Act 1952] includes indirect causal relationships (p 167 ibid ).  That an indirect causal relationship may operate on the last day for filing just as much as on any intermediate date appears to me to be within the purview of the phrase.

The fact that the solicitors for Coogi did not instruct Mr Kelson to lodge notice of opposition until 27 February and, as a consequence, the notice was not ready for lodgment until 29 February, seems to me not to be relevant to the decision whether the late lodgment was due to circumstances beyond the control of Coogi.  Mr Bannon went on to say:

Of course Beaumont J’s description of the subsection as a force majeure provision, does not operate to place a gloss on the words of the subsection, if circumstances beyond the control of the person concerned in fact cause, directly or indirectly, a failure to take the required step in proceedings under the Act.

Conclusion

Accepting Mr Forno’s decision that the most likely explanation for the late lodgment of Coogi’s notice of opposition is that the notice together with other documents to be lodged by Callinan Lawrie were deposited in the late lodgments box of the Melbourne State Office some time after the clearance of the box on the morning of the 1 March 1996, I consider that the late lodgment of the notice was due to circumstances beyond the control of Coogi, namely, the acts or omissions of an independent contractor, the courier, in causing the delay in the lodgment.  Accordingly, I allow Coogi an extension of time until 1 March 1996, pursuant to para 131(1)(a) of the Trade Marks Act 1955, for the lodgment of notice of opposition to application 638388.

Michael Homann
Hearing Officer

11 October 1996