F.H. Faulding & Co v Laboratoire Garnier

[2000] ATMO 80

TRADE MARKS ACT 1995

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

Re:      Application by LABORATOIRE GARNIER & CIE for an extension of time to serve evidence in answer to opposition by F.H.FAULDING & CO to the registration of trade mark application 588201.

Background

Laboratoire Garnier & Cie ("Garnier") has applied to register the trade mark NEUTRALIA for a range of hair, cosmetic and toiletry products in class 3.  The Trade Marks Office ("TMO") has accepted the application, number 588201, for registration but this is opposed by F.H. Faulding & Co ("the opponent").

Notice of opposition was filed on 24 November 1995. Regulation 5.7 initially allowed the opponent three months after the filing of the notice of opposition to serve evidence in support. As is often the case, the initial three months proved insufficient.  It served a copy of this evidence on Garnier on 20 June 1996, after gaining the necessary extensions of time to do so, and therefore took a total of just under seven months to complete this stage of the proceedings.

Garnier, if it wished to rely on evidence in answer to the opposition, also had an initial period of three months, from receipt of the opponent's own evidence, to serve the opponent with a copy of its evidence in answer. The three months is set by regulation 5.9.   That initial period ended on 20 September 1996. Since then, Garnier has obtained a series of extensions of time.  In this way, it has kept open for nearly four years the option of serving a copy of any evidence on which it might intend to rely in answer to the opposition.

In September 1997, the TMO requested that Garnier give a timetable for when the service of its evidence would be completed.  It asked the same question again in January 1998 and in December 1999.  In all instances, Garnier replied that it wished to defer preparation and service of its evidence until the outcome of negotiations with the opponent was known.  I note that the opponent expressly consented to all of the extensions referred to, as it has to the one now in contention.  On the previous occasions, TMO allowed the extensions.

On 20 March 2000, Garnier again applied for an extension of time of three months, to 20 June, in which to serve its evidence. Its grounds for the request had not changed.  This application failed to satisfy the relevant officer of the TMO, who called for more specific information about the intended conclusion of the negotiations.  Garnier replied that it "hoped" to know the outcome within the next few months.  The officer, a Senior Examiner in the Hearings Section, then warned that she intended to refuse to grant additional time unless Garnier requested to be heard in the matter.  That warning was by way of a letter dated 6 April 2000.  On 14 April, Garnier requested a hearing.  This was set down for 16 May 2000, but postponed at the request of Garnier.  Garnier also advised on 16 May that agreement had been reached and that it hoped to receive the terms of the settlement "by the end of the month".  The hearing was rescheduled to 20 June. On 16 June, by facsimile, Garnier advised TMO that the applicant would neither attend nor file written submissions, and stated that "The application will be withdrawn when confirmation is received from the opponent."

However, Garnier has not given any other indication of either a settlement or of readiness to finalise its evidence.

The matter now comes to me, as delegate of the Registrar, for decision on the basis of the written material on the file.

The Law

Extensions of time in opposition proceedings under the Trade Marks Act 1995 are amongst the "prescribed acts" listed at sub-regulation 21.28.  This extension therefore does not fall within the scope of section 224 of the Act because, although section 224 applies to extensions of time for "relevant acts", it is specifically excluded, by subsection 224(8), from application to "prescribed acts".

The matter is therefore to be considered under sub-regulation 5.15 which, so far as is relevant, provides:

5.15 (1) A party to the opposition proceedings may apply to the Registrar:

(a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; ...

....

(2) The Registrar may grant an application on reasonable terms specified by the Registrar.

(3) The Registrar must not grant an application unless the Registrar:

(a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b) has given the parties a reasonable opportunity to make representations concerning the application; and

(c) is reasonably satisfied that:

(i) in the case of an application to which paragraph (1) (a) applies—the extension of the period for serving a copy of the evidence; ...

....

is appropriate.

(4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

.....

Decision

An extension of time for serving evidence in an opposition matter is not a matter of right.  Under regulation 5.15(3)(c) I cannot grant this extension unless I am "reasonably satisfied" that it is appropriate.  Making that decision requires me to balance one against the other the relative interests of the parties.  These will often conflict, although I note that there is no evidence that that is the case in this instance. In addition, there is authority for putting due weight on the public interest. Typically, the weight lies in not shutting out evidence that might prevent a bad or questionable registration.  However, that should not be taken too far:  fairness and administrative efficiency are also to be taken into account in deciding where the public interest may lie[1].

[1] See, generally, Lyons v Registrar of Trade Marks 1 IPR 416 at 420, Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, 1979 RPC 410 at pages 435-436, ACI Australia Ltd v Shelm Merchandising Co Pty Ltd (1995) 32 IPR 563.

It has been said many times that there is an increasing onus on an extension applicant to justify the exercise of discretion in its favour[2].  Where it is the trade mark applicant, and not an opponent, that is requesting the extension, the desirability of admitting evidence that might prevent a bad or questionable registration is irrelevant.  Garnier is the trade mark applicant, not the opponent, and has now been called to justify the passage of time. 

[2] Notably in ACI v Shelm, supra at 567.

The length of time spent in negotiation, with no preparation of evidence or prospect of preparing it, must call into question the applicant's desire to obtain registration of this trade mark.  Garnier has been given more than ample opportunity to put some limit on its apparent willingness to put off the conclusion of this opposition.  It has consistently declined to do so.  It appears that Garnier regards the negotiations, not the application, as its primary objective.  Indeed, it says that the application is to be withdrawn subject to "confirmation" from the opponent. 

What precisely it is that the opponent is to confirm is unclear.  Garnier's statement could be taken as merely indicating that some broad agreement in principle has been reached.  It could equally be that the applicant is simply waiting for confirmation that a detailed agreement has finally received signature.

Garnier is either being evasive about its intentions, or is satisfied that it will withdraw this application for registration.  Neither contingency argues that it should be allowed more time to defend the application.  If, ultimately, registration is refused, this will not affront the public interest.  Indeed, it would be generally consistent with Garnier's expressed intention to withdraw the application.

I stated at the outset that administrative efficiency also impinged on public interest.  I think it is clear from the foregoing that the resources of TMO have been sufficiently expended in processing Garnier's many extension requests and in bringing the present matter to a head.  It hardly needs stating that there is no public interest in prolonging this stage of the process, as it would be contrary to administrative efficiency.

I therefore find that it would not be appropriate, in all the circumstances, to allow the extension.  Accordingly, I refuse to extend the time for service of evidence in answer.

Arminel Ryan
Senior Examiner

2 August 2000