Cordon Bleu International LTEE v Renaud Cointreau & CIE and Le Cordon Bleu B.V.

[1996] ATMO 21

TRADE MARKS ACT 1955

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

Re:Opposition by CORDON BLEU INTERNATIONAL LTEE to applications by RENAUD COINTREAU & CIE and LE CORDON BLEU B.V. for extensions of time to serve evidence in support of their oppositions to registration of trade mark application no 474808.

Background
Application number 474808 was lodged on 16 October 1987 by Cordon Bleu International Ltee (the applicant) for the mark CORDON BLEU, represented in script form. The mark was advertised accepted on 21 April 1994, for “pate and meat spread in this class” in class 29. On 21 July 1994 extensions of time to lodge notices of opposition were granted to Renaud Cointreau & Cie and Le Cordon Bleu B.V., (together, the opponents) and on 21 October 1994, notices of opposition under section 49 of the Act were lodged by those parties. Renaud Cointreau & Cie is the former owner of LE CORDON BLEU trade marks now owned by Le Cordon Bleu B.V. in various countries including Australia.

In accordance with regulation 43, evidence in support of both oppositions was due on 21 January 1995. Applications for extensions of time to 21 April 1995 to serve the evidence in support were lodged on 20 January 1995. These requests were granted, as were requests for further extensions to 21 July and 21 October 1995 and 21 January 1996. Some evidence in support of the oppositions, including the main declaration, was served on 20 July 1995 and 21 October 1995. The declarations have been made on behalf of both opponents, and are to be considered as supporting both oppositions.

On 22 August 1995, the attorneys for Cordon Bleu International Ltee (Spruson and Ferguson) sent a letter addressed to the attorney for the opponents (Callinan Lawrie) and copied to this Office, advising that their client was concerned that the proceedings were becoming excessively protracted, and placing the opponents on notice that any extension requests “beyond the fourth” would meet with opposition.

On 19 January 1996, a request for a further three months extension of time to 21 April 1996 was made by both opponents. This was objected to by the attorneys for Cordon Bleu International Ltee, on the basis that this was the fifth extension request, and that the opponent had now already had fifteen months within which to serve the evidence in support.

The matter was set down for a hearing in Canberra on 12 March 1996. Cordon Bleu International Ltee was represented by Ms Annette Freeman of Spruson and Ferguson who made written submissions, and Renaud Cointreau & Cie and Le Cordon Bleu B.V. were represented by telephone by Mr Robert Kelson of Callinan Lawrie.

Written submissions by Cordon Bleu International Ltee opposing the extensions of time
Ms Freeman’s arguments against the granting of the extensions of time were based on four grounds:

• that the opponents had had adequate time to prepare their evidence in support;

• that they had not acted diligently in collecting the evidence

• that the reasons given by the opponents for requesting the subject extensions of time were not sufficient; and

• that the balance of convenience between the parties and the public interest did not support the granting of further extensions.

Ms Freeman’s submissions began by observing that the extension requests applied for would give the opponents an “excessive” total of eighteen months within which to serve their evidence in support, and that this would cause substantial inconvenience to their client, who is anxious to establish its rights to the trade mark expeditiously.

Ms Freeman pointed out that Andre J Cointreau’s declaration, served as part of the evidence in support, explains that a number of oppositions regarding the subject trade mark are being prosecuted around the world. From this, she assumed that the opponents were not unaware of her client’s application, and that the opponents may therefore have been well prepared to oppose the subject application, and should not have needed fifteen months to complete the evidence in support. She commented that:

“The public interest of having an opposition matter decided in light of all evidence considered necessary by both sides diminishes once the matter has become unreasonably extended. This is because there is a competing necessity for the rights of the parties to the opposition to use the subject marks to be determined promptly so that possible deception or confusion may be prevented.”

Ms Freeman then went on to quote discussion from the Trade Marks Office Draft Manual of Practice and Procedure, (section 50, page 5) dealing with the fact that international communications are now commonly electronic and take no longer to conduct than local transfers, and that in view of this, and the public interest of expeditious processing, the Registrar will require compelling reasons before allowing further time beyond nine months for extensions granted under regulation 5.15. The manual continues:

“While Pioneer Hi-Bred Corn Co v Hy-Line Chick Pty Ltd (1979) RPC 410 (CA of NZ) makes it clear that there is some public interest in the allowing of relevant information to be brought into procedures before the Registrar, there is also a public interest in the expeditious determination of applications. The failure of an applicant, as a consequence of its own tardiness, to gain that which it seeks, is not (on the face of it) a matter of public interest.”

Although I believe Ms Freeman’s point here relates to general principles which may well be applicable under both acts, it should be noted that the manual refers to regulations under the Trade Marks Act 1995, and this opposition, being subject to the transitional provisions of section 241 of Trade Marks Act 1995 (the new Act), is proceeding under the Trade Marks Act 1955 (the old Act).

Ms Freeman then drew my attention to the fact that the reasons given in support of the extension request in dispute were almost identical to those given in the previous request of 21 October 1995, causing her to be doubtful of the progress of the investigations referred to in those reasons. She suggested that, unless it could be shown that the opponents are diligently seeking the additional evidence, further extensions of time should not be granted.

The submissions concluded with reference to the comments of Bowen C.J. in Vangedal-Nielsen v Commissioner of Patents 33 ALR 144, that it would be wrong for the Commissioner to grant an extension simply because no one had raised rather exceptional circumstances why it should not be granted. (The applicability of this reasoning in relation to extensions of time for evidence was discussed in Lyons v Registrar of Trade Marks 1 IPR 416.) Ms Freeman requested that, as the opponent has not provided compelling reasons as to why the matters need be protracted any further, the extension requests should be refused.

Telephone submissions by Renaud Cointreau & Cie and Le Cordon Bleu B.V. in support of the applications for extensions of time
Mr Kelson opened his submissions by advising me that he had received instructions from his clients that morning, to the effect that the remaining evidence in support in regard to both oppositions would be completed, served and lodged prior to the deadline of 21 April 1996, which is the date of the extension in dispute. There will therefore be no further extensions applied for beyond the present extension.

Mr Kelson then went on to describe the situation of his clients. Renaud Cointreau & Cie is a French corporation, and Le Cordon Bleu B.V., a Netherlands corporation. Both clients are operating through a firm of French patent attorneys who are not experienced in Australian trade mark law. This situation has resulted in instructions between the parties passing through very convoluted channels, and communications have suffered accordingly.

Le Cordon Bleu B.V. will be (on registration) the assignee from Renaud Cointreau & Cie of trade mark applications no 485578 and 611209 for the marks LE CORDON BLEU PARIS (and other matter) and CORDON, both for a large range of goods in class 30. These applications have been opposed by Cordon Bleu International Ltee. It is the existence of the complicating factors of these cross-oppositions which have been alluded to in all the opponents’ applications for extensions of time to serve evidence in support to date.

Mr Kelson referred in turn to the reasons provided in each extension of time request, indicating that they reflected progress of a steady nature through the process of collection of evidence in support. He drew my attention to the fact that both the main declaration and a second subsidiary declaration, forming part of the evidence in support, have already been served and lodged. He also drew my attention to the reference in the third application for extension of time (dated 21 July 1995) in which the prospect of settlement was discussed. This had been raised as a result of developments on application no 611209. This prospect, however, has not proved viable.

In short, Mr Kelson’s submissions were directed to the points that his applications for extensions of time had all been within time, and within the requirements of the Act and established precedents in case law. He cited arguments from Lord Bloody Wog Rolo 1988 AIPC 90-501 and Vangedal-Nielsen and Lyons, both supra, in support of his case. Mr Kelson argued that the public interest will best be served in this case by all intertwined proceedings between Cordon Bleu International Ltee, Renaud Cointreau & Cie and Le Cordon Bleu B.V. being decided in a manner allowing both sides to fully present all the circumstances of their case. The effect of refusing the extension would be to deny the opponents this opportunity, whereas granting the extension (which the opponents have undertaken will be their last) will not unduly delay proceedings. Furthermore, the trade mark applicant is not being put to any extra expense as a result of the extension being granted.

Mr Kelson concluded his submissions by pointing out that, in the corresponding proceedings on trade mark applications no 485578 and 611209, where the identities of opponent and applicant are reversed, applications for extensions of time by Cordon Bleu International Ltee have not been objected to by his clients.

Discussion
As a delegate of the Registrar, before exercising my discretion under section 130 of the old Act, I must weigh up the relative merits of the arguments presented by the parties for and against the granting of the extensions of time. The issues to be determined are; whether a proper case had been made out justifying the extension, whether sufficient reasons have been provided, the relative inconvenience to the parties concerned, and the public interest.

Ms Freeman has pointed out that the most recent application for extension of time states reasons almost identical to the immediately previous application, and that she therefore doubts the progress of the investigations referred to in both applications. However, beyond the reasons relating to intertwined proceedings given in the previous applications, there is also a new reference to:

“a discussion between the main declarant [of the evidence in support already lodged] and our Australian Patent and Trade Mark Attorneys as the result of which further investigations by our Australian Patent and Trade Mark Attorneys have been initiated.

“Accordingly, further time is required to enable the completion of the further investigations...”

This elaboration compares favourably with the Lyons case, supra, where the grounds for a request for an extension of time were “Evidence in support of the opposition is in the course of preparation but it is desired to have additional time to prepare that evidence and to serve a copy thereof on the applicant”. In this case, Beaumont J said at page 420:

“Although a more detailed explanation of the position may have been desirable, I think that it is possible to construe the rather bald statement of the ground for the request (supra) as indicating that, although efforts had been made in that behalf, it was not possible to finalise the form of the evidence sought to be adduced in the time allowed by the regulation.  I accept that, on one view, it is possible to read the stated ground as being little more than an assertion that more time is required.  However, the statement of the ground does at least attempt some explication of the position.  Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time.  Given that background, and given the construction of the statement of the ground which was open, I am of the opinion that the delegate did not exercise his discretion in any improper way. In particular, in my view, there was evidence before the delegate upon which he could rely in order to justify the grant of the extension.”

The circumstances of the present case are such that I am satisfied that I am entitled to find that a proper case had been made out justifying the extension, and that sufficient reasons have been provided. There is new material in the recent extension application, which gives an indication that further avenues of inquiry have only recently become apparent to the opponents, and they wish to be given the opportunity to pursue these enquiries via an additional extension of time. While the reasons given are not particularly detailed, they are considerably more specific than many reasons given for similar extension of time requests. They are clearly more than “the bald statement” referred to in Lyon’s case, supra, and meet the requirements of informing the Registrar as to the nature of the progress to date and steps required to complete the service of the evidence in support.

I am mindful of Ms Freeman’s comments that, if the opponents were prosecuting a number of oppositions regarding the subject trade mark around the world, they would not be unaware of her client’s application, and therefore should have been well prepared to complete the evidence in support within the time already allowed. I am also mindful of the references quoted from Trade Marks Office Draft Manual of Practice and Procedure, which have flagged changes in Office practice under the Trade Marks Act 1995, based upon the advances made in international communication. However, in this instance, I am also prepared to give credence to Mr Kelson’s descriptions of the difficulties of these particular international trade mark dealings. I accept that, far from expediting proceedings, the existence of numerous concurrent oppositions being prosecuted in different countries and in different languages by different attorneys, with local rather than international experience in trade mark law, has made his task difficult indeed.

It is true that, with each additional application for extension of time, there is an increasing burden upon the party making the request to justify the need for such a lengthy cumulative delay. In the present case, there have been some differing circumstances related to each extension application, including a possibility of settlement (albeit unfounded) referred to in the third extension request, in connection with information provided on the co-pending Australian oppositions by Cordon Bleu International Ltee.

Further, all the opponents’ extension requests must be considered against the background of “worldwide oppositions” and their associated communication difficulties, and “the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time” as described by Beaumont J above.

The total time allowed for the service of evidence in support in this matter, if the current extension of time request is allowed, will be eighteen months. This is a relatively short time, particularly when compared to other extension of time cases, such as Bundy American Corp v Rent-A-Wreck (Vic) Pty Ltd (1985) 5 IPR 307 (Reg.) where 33 months was allowed. The main declaration and a supporting declaration, both with associated exhibits, have already been served in support of the oppositions. I note that the opponents have undertaken to serve and lodge the remaining evidence in support within the time frame provided, if the current extension is allowed. Given all the circumstances, I am satisfied that the opponents have been diligent in the matter and that the time spent has not been excessive.

Having determined that the opponents have established their case for the granting this extension of time, I must now refer to the matters of relative inconvenience to the parties and the public interest.

Considering the inconvenience caused to Cordon Bleu International Ltee by the delay in the present proceedings, I note that Ms Freeman has submitted that the extension “will cause substantial inconvenience to her client, who is anxious to establish its rights to the subject trade mark expeditiously.” However, no further elaboration of the foreshadowed inconvenience is provided, and indeed Ms Freeman says later “...unless it can be shown that the opponent is diligently seeking the additional evidence, further extensions of time should not be granted.”

I have already indicated that I am satisfied of the opponents’ diligence in this matter. Further, given the opponents’ undertaking to finalise the evidence in support by 21 April 1996, I cannot consider that the relative unspecified inconvenience to Cordon Bleu International Ltee, in allowing this final extension, outweighs the obvious inconvenience to Renaud Cointreau & Cie and Le Cordon Bleu B.V. if they are prevented from serving what may prove to be crucial additional evidence in support of their opposition.

The question of whether or not an additional extension of time should be granted to allow evidence to be disclosed is discussed by D.R. Shanahan at page 70 of Australian Law of Trade Marks and Passing Off (Second Edition). He states that, “every effort should be made to enable the Registrar to consider the circumstances with the assistance of as much documentary evidence as possible.” In view of the co-existence of inter-related cross oppositions on Australian applications numbered 485578 and 611209 involving the same parties (but with reversed roles) as those in the present case, I agree with Mr Kelson that all three cases should be decided in a manner allowing all parties to fully explain their positions. I believe this to be equally in the interests of Cordon Bleu International Ltee, as it is in interests of the opponents.

Finally, I must deal with the question of public interest. In Rollbits Pty. Ltd. v Rowntree Macintosh plc (1986) AIPC 90-291, it was held that the public interest is paramount in matters in which deception is likely, and that this is best served if both parties are able to present their evidence and arguments fully. I think that, given the claims of potential deception and confusion that were made in the notices of opposition to registration of this trade mark, and the complicating factors of the co-pending oppositions discussed above, the public interest will best be served by a full and open disclosure of the facts and evidence from both sides. As the opponents have undertaken to complete service of their evidence in support within the time allowed by the extension, I am convinced that it is in the public interest that all of that relevant material be available to the Registrar when the matter is fully tested at a hearing.

Decision
Having considered all the facts surrounding this case, I have decided to grant the applications by Renaud Cointreau & Cie and Le Cordon Bleu B.V. for extensions of time of three months to finalise the evidence in support of their oppositions. Accordingly, the final date for lodging the evidence in support is now 21 April 1996.

A significant factor in my decision has been the opponents’ undertaking that lodgement of all evidence in support will be complete by that date. I therefore take this opportunity to make very clear to all parties involved that any further attempt to extend the time for lodgement of evidence in support beyond 21 April 1996 would viewed with great concern by this Office, and (under any but the most exceptional of circumstances) would not succeed.

None of the parties has made application for an award of costs in this matter, and so I make no award.

Claudia Murray
Senior Examiner
9 April 1996