Delta Corporate Identity, Inc v Sky Channel Pty Limited

[2002] ATMO 1

TRADE MARKS ACT 1995

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

Re:Application by Delta Corporate Identity, Inc for a late extension of time in which to file Notice of Opposition to registration of trade mark application 834738(35, 39) - SKY REWARDS - filed in the name of Sky Channel Pty Limited.

Background

Trade mark application number 834738 was filed by Sky Channel Pty Limited ('Sky') on 10 May 2000.  The application was for the word trade mark SKY REWARDS.  The application was advertised accepted in the Australian Official Journal of Trade Marks on 3 May 2001 in respect of the following services:

Class 35:         Advertising, marketing, publicity and promotional services including arranging trade and industrial exhibitions; customer loyalty and incentive programs and schemes; supply of benefits in connection with loyalty and incentive programs and schemes; product promotions; operation and administration of loyalty marketing and other sales and promotional incentive and loyalty schemes; sales promotion through frequent buyer incentive programs and customer loyalty programs; arranging the provision by third parties of discounts, complimentary goods and complimentary services

Class 39:         Arranging of passenger transport; booking and reserving of seats for travel by air, road, rail and sea; transport and travel reservation services, including ticketing, in this class; arranging and conducting tours, sightseeing events and cruises; frequent flyer plans, schemes and programs; flyer benefits in connection with transport and travel; tourism services

On 27 July 2001, Delta Corporate Identity, Inc ('Delta') through its agent Peter Maxwell & Associates, Sydney, applied for a one-month extension of time to file Notice of Opposition.  The ground relied on was in terms of regulation 5.2(2)(d) of the Trade Marks Regulations ('the Regulations').  There was no objection from Sky and the extension of time was subsequently allowed. 

Delta filed a second application for an extension of time to lodge Notice of Opposition on 29 August 2001.  This application was for two months from 3 September 2001 to 3 November 2001.  Again, the ground relied on was in terms of regulation 5.2(2)(d).  A statutory declaration of James Vernon Maxwell, attorney for Delta, dated 29 August 2001 ('the second Maxwell declaration'), supported the extension application.  A delegate of the Registrar wrote to the potential opponent, advising that as the statutory period for filing Notice of Opposition had passed, an extension application could only be made on the basis of regulation 5.2(2)(a), (b) or (c).  For this reason, the ground Delta had relied on was invalid.  The delegate told Delta that she intended to refuse the extension of time, but before doing so, would allow 14 days for it to request to be heard.  A copy of the delegate's letter was forwarded to Sky, for information.

On 21 September 2001 Delta requested to be heard.  The matter was not set down for hearing at that stage, however, as the required hearing fee had not been paid.

Delta filed a third application for an extension of time on 5 November 2001.  This application was also for a two-month extension from 3 September 2001 to 3 November 2001, and was made under grounds (a) and (b) of regulation 5.2(2).  Notice of Opposition was filed and served at the same time.  A statutory declaration of James Vernon Maxwell, dated 5 November 2001 ('the third Maxwell declaration'), accompanied the extension application.  In this declaration, Mr Maxwell explained that Delta had always had an intention to oppose trade mark application 834738.  He said, acting as Delta's attorney, he had misunderstood the provisions of regulation 5.2 of the Regulations and had filed the second extension application erroneously.  This error, he stated, had prevented the Notice of Opposition being filed in time.

After some correspondence between the Trade Marks Office and Delta, and payment of the required hearing fee, a hearing was scheduled in Canberra for 23 November 2001.  Both parties were advised of the hearing by facsimile dated 16 November 2001.

The matter came before me as a delegate of the Registrar.  Ms Julia Baird, of Counsel, instructed by Peter Maxwell & Associates, Sydney, attended on behalf of Delta.  Sky did not request to attend the hearing.  On its behalf, written submissions were provided both before and subsequent to the hearing by its solicitor, Ms Simone Tierney, of Phillips Fox, Sydney.

The law

Regulations 5.2 to 5.4 of the Regulations set out the provisions for filing extensions of time to file Notice of Opposition.  Regulation 5.2(1) provides that the prescribed period for filing a Notice of Opposition may be extended.  Regulation 5.2(2) specifies the grounds on which an extension of time may be made.  If an application is made before the prescribed 3-month period has ended, the application may be made on one or all of the following grounds:

(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

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 one, or more than one, of the grounds set out in paragraph (2)(a), (b) or (c) and on no other ground.

Regulation 5.3 states the form that an application for an extension of time for filing a Notice of Opposition must take.

5.3      An application for an extension of time in which to file a notice of
           opposition must:
           (a)       be in an approved form; and
           (b)       be accompanied by a declaration stating:

(i)        the facts on which the grounds specified in the
  applications are based; and

(ii)       if the period for filing a notice of opposition has
  ended - the reason why the application was not
  made before the end of that period.

Regulation 5.4 sets out matters to which the Registrar must have regard in determining whether to allow an extension.  Regulation 5.4 provides:

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.

Submissions

Delta

Ms Baird indicated that she would address her submissions to the third extension application - that filed on 5 November 2001.  She acknowledged that the second extension of time application - that filed on 29 August 2001 - was made on an invalid ground.  It was clear, she said, that the attorney's interpretation of the Regulations in filing the second extension request did not accord with the court's interpretation of the Regulations, as per Chiron Corp v Registrar of Trade Marks (1998) 42 IPR 75 at 81. She argued, however, that the third extension of time should be granted, thus allowing Notice of Opposition to be filed.

Ms Baird submitted that at all relevant times within the three-month opposition period, and within the one-month extension already allowed, Delta had maintained a settled intention to oppose trade mark application 834738.  Referring to Objection by Ag Direct Sales Pty Ltd and Sumitomo Australia Ltd to an Application by Agro-K Corporation for an extension of time [2001] ATMO 24 October 2001 ('Ag Direct Sales v Agro-K'), she contended that the contingencies of the outcome of the reasons for which Delta sought its first extension did not alter that settled intention.   It had sought its first extension of time to carry out research to determine if its intention to oppose was justified.  It had then entered into negotiations with the applicant.  It was always Delta's intention to oppose if the matter could not be resolved amicably within the extended period.  But for the attorney's misinterpretation of the Regulations, which led to the erroneous filing of the second extension of time, Notice of Opposition would have been filed within the first extension period and before 3 September 2001.  As Delta's attorney had only been apprised of the error on 10 September, Notice of Opposition could not be filed in time. 

As evidence of Delta's intention to oppose, Ms Baird pointed me to relevant paragraphs of statutory declarations provided by James Vernon Maxwell in support of Delta's three extension applications - paragraphs 3 and 4 of his declaration of 27 July 2001 ('the first Maxwell declaration'), paragraphs 3 and 4 of the second Maxwell declaration, and paragraph 11 of the third Maxwell declaration.

She said the attorney's misinterpretation of the Regulations and subsequent filing of the second extension of time was an error within the meaning regulation 5.2(b).  Here she referred to the concept of error or omission as set out in cases such as Stork Pompen BV v Weir PumpsLtd (1988) 11 IPR 542 at 546 ('Stork Pompen v Weir Pumps'), Kimberly-Clark Ltd v Commissioner of Patentsand Anor (1988) 13 IPR 569 at 580 ('Kimberly-Clark'), and a recent decision of a delegate of the Registrar in RMG Call Centres Pty Ltd v State of Western Australia (2001) AIPC 91-753. The attorney's error, Ms Baird stated, causally led to the failure to file Notice of Opposition within the prescribed period as extended.

Sky

In written submissions on behalf of Sky, Ms Tierney argued that, although Delta had demonstrated an intention to negotiate with Sky, it had not demonstrated an intention to oppose trade mark application 834738.  She said this was evidenced by the fact that at no time between the date when Delta was notified that its second extension request was invalid, 10 September 2001, and 5 November 2001, did Delta file a replacement application, or a Notice of Opposition. 

She contended that at the time the second extension of time was made, Delta could not rely on any of the grounds set out at regulation 5.2(2)(a) to (c), thus the extension application was made on ground (d).  For Delta to now seek a third extension of time on the basis of "mistake" in the second extension, Ms Tierney argued, was beyond belief.  She requested both the second and third extension applications be refused, and that Sky be awarded its costs in the matter.

Reasons

Delta have filed two pending applications, each for the same two-month period running from 3 September 2001 to 3 November 2001.  In the circumstances, I think it is appropriate to treat these applications as one.  The submissions, however, and therefore my reasons, concentrate on the second-filed application viz - that there has been an error by Delta's agent.

Regulations 5.2 to 5.4 of the Trade Marks Regulations set out the provisions for filing extension of time to file Notice of Opposition.  Under those provisions, I must consider whether the application is in an approved form.  I must also be reasonably satisfied that:

• the ground is valid and has been properly made out,

• service requirements have been met, and

• both parties have had the opportunity to make representations.

If the above criteria are met, I must allow the extension of time.

Approved form

This extension of time application was made in a format approved by the Registrar as set out at Schedule 7 of the Regulations.  The application set out the grounds relied on.  A statutory declaration of James Vernon Maxwell dated 5 November 2001 accompanied the application, and set out the facts on which the grounds were based.  The prescribed fees were paid.

I am therefore satisfied the extension application was made in an approved form, and that the requirements of regulation 5.3 have been met.

The ground

My consideration here is whether the ground relied on was available to Delta, and whether I am reasonably satisfied Delta has made out that ground.  As the extension application was made out of time, I must be satisfied that the extension applicant had formed an intention to oppose within the prescribed three months allowed for doing so, but that its intention was somehow thwarted - as per Stork Pompen v Weir Pumps and Kimberly-Clark, both supra.  I must also be satisfied that Delta has demonstrated a causal link between the events that occurred and its failure to file Notice of Opposition within the period allowed.

Sky contends that Delta has demonstrated an intention to negotiate but not to file Notice of Opposition.  This, it argues, is evidenced by the time lapse between when Delta's agent was informed that the second extension was invalid, and when Notice of Opposition was eventually filed.  Ms Baird, however, submits that Delta had formed the required intention and had its agent not misinterpreted the Regulations, Delta would have filed Notice of Opposition before expiry of the first extension.

In Cognotec Limited and Cognos Incorporated (2000) 49 IPR 630, a delegate of the Registrar found that an intention to oppose may be contingent on many factors without failing the tests set out in Stork Pompen v Weir Pumps, supra.  The question of settled intention was also considered in Ag Direct Sales v Agro-K, supra, where Acting Hearing Officer Ryan observed:

After careful consideration, I think that the terms of the regulations must mean

that an intention to file Notice of Opposition may be a settled intention even though it is stated to have been contingent on the outcome of one or more of the reasons for which the applicant sought the original extension of time.

Despite Sky's submissions to the contrary, I am satisfied Delta had a settled intention to oppose, and that intention was contingent upon the matter not being resolved amicably through negotiations. I think it is reasonable to conclude that Delta maintained its intention until its eventual filing of Notice of Opposition on 5 November 2001.  As pointed out by Ms Baird, evidence for this may be found in the statements made by Mr Maxwell in his second and third declarations.

I must now consider whether Delta has established the ground relied on. 

This extension application has been made on two grounds.  Although these are labelled (a) and (b) in the extension application, they are in terms of grounds (b) and (c) of regulation 5.2(2).  Support for the second ground, that in terms of regulation 5.2(2)(c), has not been provided in either the third Maxwell declaration or Ms Baird's submissions.  I therefore find the extension application has failed on ground (c).

I turn now to the first ground, in terms of 5.2(2)(b) - "error or omission by the person applying for the extension of time, or by the person's agent".  As provided by regulation 5.2(3), late extension applications may be made under this ground. 

The question of error or omission was considered in cases such as Kimberly-Clark, supra and Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595.  These cases show that the words "error or omission" should be given their plain, ordinary meaning, and the error or omission should be obvious. 

In his third declaration, Mr Maxwell explains that he misinterpreted the Regulations and filed the second extension application erroneously.  This in turn led to the Notice of Opposition not being filed within the prescribed period, as extended.  Mr Maxwell says he was of the belief that he could apply for rolling extensions up to a total of three months before it was necessary to file Notice of Opposition.  Ms Baird confirms Mr Maxwell's mistaken interpretation of the Regulations in her submissions. 

I am aware from my own experience of trade marks proceedings, that it is not unknown for a party seeking to extend the prescribed period for filing a Notice of Opposition to misinterpret regulation 5.2(3) and seek a second extension on an invalid ground.  I consider that such an error is of the kind envisaged by Jenkinson J in Kimberly-Clark, supra.

In the circumstances of this case, I accept the evidence of the Maxwell declaration and I am satisfied that an obvious error was made.  I am also satisfied that Mr Maxwell's error in misinterpreting the Regulations, and consequently his filing of the second extension of time, led to Delta's Notice of Opposition not being filed within the prescribed period, as extended. 

Service requirements

Sky confirmed that service of the extension of time was effected on 9 November 2001.  I am therefore reasonably satisfied that the requirements of regulation 5.4(2)(a) have been met.

Reasonable opportunity given to both parties to make representations

Delta was afforded an opportunity to be heard in relation to its extension of time application.  When Delta requested a hearing, Sky was afforded an opportunity to attend the hearing, or to provide written submissions.  I am reasonably satisfied that both parties had a reasonable opportunity to make representations, and I have taken full account of the written submissions provided by Sky's agent.

Decision

I am satisfied Delta has established the first ground relied on its extension application, filed on 5 November 2001, that being in terms of regulation 5.2(2)(b), and that the requirements of regulations 5.3 and 5.4(2) and (3) have been met.  In accordance with regulation 5.4(1), I allow the extension of time to file Notice of Opposition to 3 November 2001.

I direct that, in view of the time that has already elapsed, the three-month period for service of evidence in support of the opposition provided under regulation 5.7 is to commence on 2 January 2002.

Costs

Sky has requested its costs in the matter.  However, I have allowed Delta's third extension of time application, and, taking all of the circumstances into consideration, I make no award as to costs.

Frances Aarnio
Senior Examiner

2 January 2002