Cynthia Amaro - [2007] ATMO 9

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application to revive lapsed trade mark application number 972725(18, 25) - PAPER DOLL- in the name of Cynthia Amaro.

Delegate: Don Nancarrow

Representation: Decision on the written record – submissions from the applicant Ms. Cynthia Amaro.

Decision: s. 224(3) – extension of time – case for ‘special circumstances’ made out, relative inconvenience and public interest considered, extension of time allowed, trade mark revived with endorsement.
Background

Trade mark application number 972725 was filed on 2 October 2003 for the trade mark PAPER DOLL in respect of ‘bags’ in class 18 and ‘clothing, hats, clothing accessories’ in class 25 of the International (‘Nice’) Classification of Goods and Services.
Ms. Amaro, the applicant, prosecuted the application herself. During the course of examination another application, number 954975, was cited against this application. That trade mark was withdrawn on 10 March 2004. Thereafter, a minor problem with the statement of goods was resolved and the present application was advertised as accepted for registration on 16 June 2005. The opposition period ran until 16 September 2005 without incident. The last day for payment of the sealing fee was 16 December 2005 and this date was missed so that the application lapsed and was advertised as such in the Australian Official Journal of Trade Marks (‘the Journal’) of 19 January 2006.
On 16 October 2006 the applicant paid the sealing fee and filed an extension of time to be able to do so by means of a revival of the lapsed application under the provisions of section 224 of the Trade Marks Act 1995 (‘the Act’). In a reply to this request an Officer from the Trade Marks Administration area of IPAustralia, Mr. Malcolm Lomasney, informed the applicant in a letter of 24 October 2006 that he had checked the database of applications and registrations and found that another applicant had filed an application for the trade mark PAPER DOLL since the lapsing and commented that he intended to refuse the extension of time, unless Ms. Amaro applied to be heard in the matter within 28 days.
Ms. Amaro made the application to be heard and filed evidence to support her claims on 20 November 2006 and the matter has been directed to me for a decision on the written record.
Evidence and Submissions
The application for an extension of time in which to pay the sealing fee was made under the provisions of sub-section 224(3) – the ‘special circumstances’ provision of this section.
Ms. Amaro provided documents and a copy of an affidavit that had been used for previous Court action concerning the PAPER DOLL trade mark. A further group of documents explained Ms. Amaro’s persistent physical health problems from a time late in 2004 until the present time.
From these written submissions it is apparent that Ms. Amaro had severe health problems that have necessitated hospitalisation on several occasions, with hospital reports from as early as…

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.

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Details

Case: [2007] ATMO 9
Decision Date: 12 February 2007

CaseChat Overview and Summary

This matter concerned an application by Cynthia Amaro for an extension of time to pay the sealing fee for trade mark application 972725. The application was made under section 224(3) of the relevant Act, which requires the existence of "special circumstances" to justify an extension. Ms. Amaro's application was supported by evidence detailing persistent and severe physical health problems from late 2004 until November 2006, which included hospitalisations and ongoing medical treatment. Additionally, the evidence noted the withdrawal of a prior, conflicting trade mark application for "PAPER DOLL" by Stephanelle Pty Limited, which followed Federal Court action initiated by Ms. Amaro. Ms. Amaro also provided evidence of her use of the "PAPER DOLL" trade mark on clothing and associated design services since at least May 2001.

The legal issue before the Hearing Officer was whether the circumstances presented by Ms. Amaro constituted "special circumstances" as contemplated by section 224(3) of the Act, thereby justifying the grant of an extension of time for the payment of the sealing fee. The application covered a period of 10 months, from December 2005 to October 2006. The Act provides for the Registrar to extend time for doing a required act if special circumstances exist, and such applications for extensions exceeding three months must be advertised for opposition.

The Hearing Officer reasoned that Ms. Amaro's documented severe health issues, which significantly impacted her ability to attend to administrative matters, constituted special circumstances. The successful Federal Court action against Stephanelle and the subsequent withdrawal of their conflicting trade mark application were also considered relevant factors. The application for extension of time was advertised in the Official Journal, and no opposition was filed during the prescribed period.

Exercising his discretion as a delegate of the Registrar, the Hearing Officer granted the extension of time for Ms. Amaro to pay the sealing fee. This decision revived trade mark application 972725, which had previously been accepted and passed through the opposition period. Consequently, upon payment of the sealing fee, the trade mark application could proceed immediately to registration, subject to an endorsement noting its revival from a lapsed status.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Ms. Amaro made the application to be heard and filed evidence to support her claims on 20 November 2006 and the matter has been directed to me for a decision on the written record.Evidence and Submissions The application for an extension of time in which to pay the sealing fee was made under the provisions of sub-section 224(3) – the ‘special circumstances’ provision of this section. Ms. Amaro provided documents and a copy of an affidavit that had been used for previous Court action concerning the PAPER DOLL trade mark. A further group of documents explained Ms. Amaro’s persistent physical health problems from a time late in 2004 until the present time. From these written submissions it is apparent that Ms. Amaro had severe health problems that have necessitated hospitalisation on several occasions, with hospital reports from as early as 30 November 2004 and up until 14 November 2006. Medicines prescribed from February 2005 and a hospital document dated September 2005 show that this time period appears to be at the height of the difficulties. A further factor from the evidence, with some relevance to my overall decision, concerns the withdrawal of application 954975, also for the trade mark PAPER DOLL, filed in the name of Stephanelle Pty Limited (‘Stephanelle’), the trade mark that had initially been cited against the present application. The evidence shows that the withdrawal followed Federal Court action taken by Ms. Amaro against Stephanelle. The Court orders were handed down on 19 November 2003 and Stephanelle ultimately withdrew their trade mark application on 10 March 2004 as a ‘flow-on’ effect of the Court orders. The evidence also shows use of the trade mark PAPER DOLL by Ms. Amaro on clothing and associated designing services from as early as May 2001, although she claims use from an even earlier date – some time late in 2000.The Law and Discussion The application for an extension of time that has been made here falls under section 224 of the Act. These provisions allow:Extension of time224.(1) If, because of an error or omission by a trade marks officer, a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar must extend the time for doing the act.Note: For trade marks officer see section 6.(2) If, because of:(a) an error or omission by the person concerned or by his or her agent; or(b) circumstances beyond the control of the person concerned;a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.(3) If:(a) a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and(b) on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;the Registrar may extend the time for doing the act.(4) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.(5) If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal.(6) A person may, as prescribed, oppose the granting of the application.(7) An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of an act.(8) In this section:relevant act means:(a) any act (other than a prescribed act) done in relation to a trade mark; or(b) the filing of any document (other than a prescribed document); or(c) any proceedings (other than court proceedings).

Decision

Reasons for decision

This application for an extension of time covers a time period of 10 months, from 16 December 2005 to 16 October 2006. For a length of time beyond three months, the application must be advertised for opposition purposes under the provisions of Regulation 21.26. Current Office practice is that this advertisement occurs as soon as practicable after the time that the application is received. This advertisement occurred in the Journal of 16 November 2006 and passed through the one month opposition period without any opposition being filed.Decision My decision, in relation to the extension of time application that has been made under section 224, is for me to exercise my discretion as a delegate of the Registrar in this matter, to grant the extension of time for the payment of the sealing fee and thereby revive trade mark application 972725. The trade mark is subject to the endorsement: ‘This trade mark has been revived from a lapsed status under the provisions of section 224 after previously gaining acceptance and passing through the opposition period.’ The consequence of the revival of this application (which had already been accepted and passed through opposition without incident) is that on payment of the sealing fee it may proceed immediately to registration.Don NancarrowHearing OfficerTrade Marks Hearings12 February 2007

Ratio Decidendi

Legal Principle Established

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Delegate:	Don Nancarrow
Representation:	Decision on the written record – submissions from the applicant Ms. Cynthia Amaro.
Decision:	s. 224(3) – extension of time – case for ‘special circumstances’ made out, relative inconvenience and public interest considered, extension of time allowed, trade mark revived with endorsement.