Elixir Solutions Provider Pty Ltd

[2002] ATMO 46

TRADE MARKS ACT 1995

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

Re:Application by Elixir Technologies Corporation for a late extension of time to file an extension of time to file a Notice of Opposition to registration of trade mark application number 843885(35 and 42) - ELIXIR SOLUTIONS PROVIDER and device - in the name of Elixir Solutions Provider Pty Ltd.

Background

Trade mark application 843885 was filed on 25 August 2000 by Elixir Solutions Pty Ltd (Elixir Solutions) for the trade mark ELIXIR SOLUTIONS PROVIDER and device as reproduced below.

The trade mark was advertised as accepted under the provisions of subsection 44(4) on 1 November 2001, in respect of Sale of business hardware and software in Class 35, and Hardware and software development and design services providing complete business solutions; consulting services in relation to development and design system architecture in Class 42.

The three months within which any person may file a notice of opposition to the registration of the trade mark under the provisions of section 52 of the Trade Marks Act 1995 (the Act) and regulation 5.1 of the Trade Marks Regulations 1995 (the Regulations) therefore ended on 1 February 2002.  The registration fee had been paid by Elixir Solutions on 23 October 2001.  However, the application was still unregistered when, on 6 February 2002, Elixir Technologies Corporation (Elixir Technologies) made a late application for a three-month extension of the time in which to file a notice of opposition.  The extension application was made under the provisions of paragraph 5.2(2)(b) of the Regulations which reads as an error or omission by the person applying for the extension of time, or by the person's agent.  The reason given for needing the extension of time was that the potential opponent is undertaking genuine research to decide the grounds of opposition.  The application was accompanied by a statutory declaration of Frances McNeill Drummond dated     6 February 2002.  Ms Drummond is a partner of the firm Freehills, Carter, Smith and Beadle, who represent the potential opponent.

Ms Drummond states that on 29 October 2001 her firm's associates in the United States of America were informed of the acceptance of the subject trade mark and the final date that the notice of opposition was due, 1 February 2002.  There are no details provided as to who the United States associates are, or that they directly represent Elixir Technologies.  On 21 November 2001 the United States associates were advised as to the potential cost of an opposition, the possible grounds for opposition and a suggestion that a Freedom of Information (FOI) request be filed in order to consider the merits of possible grounds of opposition.  A request for information under the FOI process was filed by Elixir Technologies on 15 January 2002.  This request eventuated in the release of the subject trade mark file after 3 March 2002.

The statutory declaration explains why the application for an extension of time to file a notice of opposition was made out of time.  The due date for opposing the subject trade mark was entered into an electronic reminder system, however the repetition cycle was entered incorrectly, and as such the appropriate people were not reminded of the due date until after it had passed.  The statutory declaration was made the same day the oversight was noticed.  Ms Drummond explains that real effort was made by the potential opponent to investigate the grounds and merits of an opposition and that the potential opponent needed the information to be obtained by the FOI request in order to properly assess the merits of an opposition.  She further states that the potential opponent would have requested an extension of time to file a notice of opposition even if the error on her firm's behalf had not occurred.

I advised the potential opponent by letter dated 14 February 2002 that the late application for an extension of time would be refused.  The letter stated:

I note that the reason provided for the request for an extension of time is that the potential opponent is undertaking genuine research to decide the grounds of opposition.  These grounds are not valid for an extension application filed more than three months after acceptance of the mark was advertised.  Pursuant to regulation 5.2(3) the only grounds that may be relied upon for a late extension of time are contained in paragraphs (2)(a), (b) and (c) of regulation 5.2.  No other grounds may be relied upon for a late extension of time in which to file a notice of opposition.

By letter dated 21 February 2002, Elixir Technologies requested to be heard on the matter.  A hearing was set down before me, as delegate of the Registrar in Canberra on 28 March 2002.  Ms Frances Drummond and Ms Joanne Dunn of Freehills, Carter, Smith and Beadle provided written submissions for the potential opponent.  The trade mark applicant was not represented and did not provide submissions on the matter.

Submissions for the potential opponent

Ms Drummond and Ms Dunn began submissions by acknowledging that only certain grounds can be relied upon for a late extension of time.  They stated that the application was made under the provisions of paragraph 5.2(2)(b) and thus clearly falls within the requirements of the Regulations.  A decision of a delegate of the Registrar upon a late extension of time to file a notice of opposition: Crown & Andrews Pty Ltd v All American Fremantle International Inc, [1997] 38 IPR 595, (Crown & Andrews) which considered Regulation 5.2, and in particular the terms error or omission, was cited.

Ms Drummond and Ms Dunn then suggested that the examiner should ask two questions in this matter.

The first being:

• But for the error on behalf of the possible opponent's attorneys, would the possible opponent have filed a valid application for an extension of time to file a notice of opposition? 

The second being:

• Whether she [the senior examiner] would have granted the extension of time in which to file a notice of opposition had the application not been late?

Paragraph 16 of Ms Drummond's statutory declaration states that the potential opponent would have requested an extension of time to file a notice of opposition even if the error on her firm's part had not occurred, thus the answer to the first question is "yes".  The answer to the second question is also "yes", however as the legislation that applies to extensions of time made within time is different to those made out of time, I believe that question provides little insight into the matter at hand.

Ms Drummond and Ms Dunn then stated that it can not be the intention of the legislation that errors or omissions by an opponent's agent only be excused if the potential opponent is ready to file the notice of opposition, whether the time for filing the notice has passed or not.  They suggested that to only excuse error when the potential opponent is ready to file the notice of opposition defeats the fact that extensions of time can be obtained to file a notice of opposition pursuant to regulation 5.2.

At the conclusion of the potential opponent's submissions a summary of the matter was provided, reiterating that the application was filed late due to agent error, and the potential opponent would have requested an extension of time had the error not occurred.  It is stated that "the potential opponent was investigating the merits of a possible opposition" and "the potential opponent intended to file an application for an extension of time".  The submissions ended with the statement that "the ground in the late application for an extension of time to file an extension of time to file a notice of opposition was valid, and that there is sufficient reason for the application not having been made before the end of the period for filing an application for an extension of time or notice of opposition".

The Legislation

The relevant grounds upon which a person may apply for an extension of time within which to file a notice of opposition are set out in Regulation 5.2:

5.2.(2) An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:

(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.

(3) 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 1, or more than 1, of the grounds set out in paragraph (2) (a), (b) or (c) and on no other ground.

In this case the extension applicant has relied on the ground described in paragraph (b), with supporting reasons as described in paragraph (e).

Regulation 5.3 explains that reasons are needed to support a late application:

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 application 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.

[NOTE: Regulations 21.6 and 21.7 deal with making and filing declarations.]

Regulation 5.4 relates to the granting of an extension of time:

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.

Accordingly, the Registrar must be reasonably satisfied as to the validity of the ground and the supporting reasons set out in the extension application before allowing an extension of time.  If the application has been made out of time, as in this case, the Registrar must not grant the extension unless he or she is reasonably satisfied that there is sufficient reason for the application not being made before the end of the opposition period.  Once the Registrar is satisfied that the ground and reason for late application have been made out, the Registrar must grant the extension.

Discussion

Late applications for extensions of time in which to file a notice of opposition were the subject of Crown & Andrews (supra) and Application by Mission Personnel Services Pty Ltd 42 IPR 255 (Mission Personnel).  These decisions show that there is an initial requirement for an applicant for a late extension of time to establish an intention to oppose during the statutory opposition period.  Whilst the Hearing Officer in Crown & Andrews, at page 595, made mention that the opponent "had no intention to oppose, or to extend the time for opposing, during the prescribed period" (my emphasis), it was held that an applicant for an extension of time in which to file a notice of opposition must have formed an intention to oppose on or before the end of the prescribed period.  This view was formed from application of Stork Pompen BV v Weir Pumps Ltd (1988) 11 IPR 542 (Stork v Weir).  In that case the potential opponent made a conscious and deliberate decision not to maintain a watching service for possible infringing patents.  The extension of time was refused on the basis that the opponent simply could not have formed the intent to oppose the patent application, as it did not know of its existence until after the opposition period had expired.  In discussing the importance of the intention of the person making an extension application, Supervising Examiner Bruhn, in Stork v Weir at page 545 said:

Such cases indicate that having decided a course of action in respect of an act or step the performance of which is required within a certain time under the Act, that intention has been frustrated by either an error (e.g. the act has been done incorrectly, or mistakenly done outside the time allowed) or due to an omission (e.g. the act has not been done due to neglect or inadvertence).  Therefore, in my view, it is appropriate to consider the relation to the person's intention with respect to doing the act or taking the step, and to determine whether any error or omission arose to frustrate that intention ... there can be no error or omission in not performing an act which Weir never intended to perform.

Therefore, if a late extension of time to file notice of opposition is to be granted, the extension applicant must demonstrate that it had formed an intent to oppose on or before the prescribed date of 1 February 2002.

It is apparent from Ms Drummond's declaration supporting the original application and from her written submissions that the reason the extension of time was needed was for the undertaking of genuine research in order to investigate the grounds and merits of opposition.  It is stated that the potential opponent intended to file an extension of time.  However, it is not stated that the opponent had the intent to oppose within the prescribed period.  In fact, the written submissions make the point that this intent should not be necessary when error has occurred.  The submissions read:

It surely can not be the intention of the law that errors made by the potential opponent's attorneys are only excused if the potential opponent is ready to file a notice of opposition on the due date.  That would defeat the fact that extensions can be obtained to file a notice of opposition.

Furthermore, it is stated in paragraph 15 of Ms Drummond's declaration that "without the Freedom of Information request material, the potential opponent can not properly assess the merits of an opposition".  Elixir Technologies had been advised by the Trade Marks Office that the material sought under the Freedom of Information request would not be released until after 3 March 2002.  This was well after the period in which to file a notice of opposition, the last possible day being 1 February 2002.  There appears, therefore, to have been little possibility of establishing the merits and grounds of a possible opposition before the prescribed period elapsed, due to the extent of the genuine research Elixir Technologies wished to undertake.  Accordingly, the intent necessary to be shown in this case, that is the intent to oppose within the statutory period can not be established in these circumstances.  Furthermore, it appeared that even after the period had elapsed Elixir Technologies was not willing to file a notice of opposition to preserve its position while it continued the process of further research.

It is established that "error or omission" within the meanings of paragraph 5.2(2)(b) needs to be more than the simple fact that the notice of opposition was filed out of time, there needs to be a causal reason that the act was performed out of time.  This issue is looked at in some detail in Kimberly-Clark Ltd v Commissioner of Patents (1988) 13 IPR 569 (Kimberly Clark), Crown & Andrews supra, and Mission Personnel also supra.  These cases clearly direct that the failure to do the act itself is not an error or omission which can constitute a ground for an application to extend the time for doing that act.  Hearing Office Homann in Crown & Andrews supra, at page 602 paraphrased the words of Jenkinson J in Kimberly Clark:

...the words "error or omission" should be given their plain, ordinary meaning and are not to be taken as a term of art.  They should not be restricted by construction to certain categories of aberration of thought or behaviour such as misunderstanding, ignorance of the law, confusion or deception etc, or to mere inadvertences or accidental slips.  Moreover, the error or omission must be obvious.  If it can be shown that there has been error or omission it must also be shown of course that the error or omission was the cause of the late filing of the extension application.

In the opinion of Jenkinson J it was sufficient to come to the conclusion that some prior error or omission had contributed to cause the failure to lodge the notice, even if other circumstances also apparently contributed to the making of the relevant decision.  All that was required once an error or omission had been established was that there was some link between that error or omission and the failure to lodge the notice of opposition within three months.

The error or omission that occurred in this case is detailed in the statutory declaration made by Ms Drummond on 6 February 2002.  Ms Drummond states the following events occurred:

• An administrative assistant entered the due date for a notice of opposition into the firm's "Inproma" database as an ad hoc reminder.

• The repetition cycle for this reminder was entered incorrectly, and the reminder was not entered against the responsible fee earner and opposition administrator.

• The reminder appeared on an unnamed partner's reminder sheet approximately two weeks before the due date in which to file a notice of opposition, but did not appear on the opposition administrator's sheet until after the prescribed period had elapsed.

• The error was detected on 6 February 2002 and the late extension of time application in which to file a notice of opposition was filed that day.

Importantly, Ms Drummond also stated that "the potential opponent would have requested an extension of time to file a notice of opposition even if the error on our part had not occurred".  Thus, whilst no clear direction from Elixir Technologies to certainly oppose the trade mark application existed, it may be inferred from these details that it was their intent to obtain an extension of time in which to decide the question of possible opposition.  The mechanical mistake of incorrectly entering dates in reminder databases is more than an accidental slip which frustrates a prior formed intention - it is an error or omission that caused the act or step intended by Elixir Technologies to fail.  Thus, error or omission by their agent caused Elixir Technologies' application to extend the time to file a notice of opposition to be late, thus bringing into play the regulations of subparagraph 5.3(b)(ii) and paragraph 5.4(4).

Elixir Technologies' intent to conduct further genuine research and to extend the time in which to file the notice of opposition in order to carry out this research is satisfactorily established.  The request for information under the FOI provisions was initiated by Elixir Technologies on 4 January 2002, and I am satisfied that this shows real effort by the potential opponent to investigate the grounds and merits of opposition.  This intent however, is not supported by the legislation or the case law as being a ground for seeking an extension of time to file a notice of opposition as Elixir Technologies' application was made out of time.

It may appear to the potential opponent that the restriction in the regulations, so that once the period for filing a notice of opposition has ended an application for an extension of time in which to file a notice of opposition can only be made on certain grounds, is somewhat arbitrary.  Indeed one effect of this restriction in the regulations may be the filing of notices of opposition perhaps prematurely when there is still a real prospect for settlement or coexistence.  In other cases, notices of opposition may be filed citing a large number of grounds, as the potential opponent has not yet completed research to decide which grounds of opposition, if any, are viable.  While filing what later turns out to be an unnecessary notice of opposition may cause the potential opponent unwanted cost, it does protect the opponent's position should an opposition on substantive matters become reality.  I note the submission of Ms Drummond and Ms Dunn in regard to the fact that extensions of time can obviously be granted, even late ones, and a potential opponent should not be prejudiced by the fact that it has not yet decided to oppose.  However, if grounds for negotiations or research were open to late applications for extensions of time where the opponent had yet to decide if opposition was warranted, the undesirable possibility of frivolous delay in the registration of an accepted trade mark could result.

In the Mission Personnel decision, supra, Hearing Officer Murray looked at the issue of whether, during the statutory period in which to file the notice of opposition, the potential opponent's intentions had escalated into a specific intention to oppose.  It was noted that without this specific intention:

any accepted trade mark could be opposed at any time up to registration on a mere vague, hypothetical intention.  The importance of a party's right to oppose is enshrined in the legislation.  However, that right should not be allowed to take precedence, in cases such as this, over the trade mark applicant's right to registration where there has been no opposition within the prescribed period.  The provisions of regulations 5.2 and 5.4 are intended to protect the rights of a party who can demonstrate a concrete intention to oppose that was somehow thwarted. For the protection of the trade mark applicant, interpretation of those provisions should not be extended to encompass insubstantial, "what if..?" scenarios." (my emphasis)

At the point at which it applied for its extension of time to file a notice of opposition, Elixir Technologies no longer had the option under regulation 5.2 to apply for extra time to carry out genuine research.  Once an application for an extension of time to file a notice of opposition is late, the Registrar can only allow it if it has been thwarted by error or omission by either a trade mark officer, by the extension applicant or an agent; or circumstances beyond the control of the applicant.  It may be that Elixir Technologies always had the intention to preserve its position by filing a notice of opposition if it were not able to complete the necessary research in time, however this was never mentioned in its supporting declaration or in its written submissions.  Therefore, the provisions in paragraph 5.2(2) of the Regulations are not fulfilled and the extension must be refused.  The late application for an extension of time to file a notice of opposition, by the potential opponent's own submissions, was made merely for the unallowable reasons of conducting further research, not for the filing of a notice of opposition.

A notice of opposition in the name of Elixir Technologies was filed on 30 April 2002.  The filing of a notice of opposition at this stage obviously shows a current real intent on the part of Elixir Technologies to oppose Elixir Solution's trade mark.  This intent has now appeared well after the period for filing a notice of opposition has elapsed.  Whilst there may now be good reasons for Elixir Technologies to oppose, the intent to do so was not developed within the critical prescribed time for filing the notice of opposition.

I recognise that if this late application is not allowed and the notice of opposition, which has now been filed, is taken to be of no effect, I will be excluding a possibly serious and valid opposition claim.  However, the remedy of a passing off action may still be available to Elixir Technologies.  Elixir Solutions has already paid the sealing fee for this trade mark application and no notice of opposition or an extension of time to file a notice of opposition was filed within the prescribed period.  In accordance with the requirements of the regulations, the right to oppose, without the kind of compelling reasons covered by paragraphs 5.2(1)(a), (b) or (c), should not take precedence over the right to registration in these circumstances.

Decision

I have decided that Elixir Technologies' late application for an extension of time to file a notice of opposition does not satisfy the requirements of the regulations.  This is because it was made only on the grounds specified under paragraph 5.2(2)(e) the undertaking of genuine research to decide whether opposition is justified or on the grounds of opposition.  These grounds are excluded from operating in relation to any application for an extension of time to file a notice of opposition after the opposition period has ended.  Although, I am satisfied, in terms of subregulation 5.4(4), that there was sufficient reason for the lateness of the potential opponent's application for an extension of time to file a notice of opposition, I can not also be satisfied as to the grounds for requiring the extension, in terms of subregulation 5.4(1).  Elixir Solutions have already paid the registration fee for this trade mark application.  I therefore direct that the application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Rachel Dunn

Senior Examiner

Trade Marks Hearings

30 May 2002