Forrester & Ca., S.A v Forrester & Ca., S.A - [2006] ATMO 57

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Forrester & Ca., S.A. for an extension of time to oppose registration of trade mark application 1065063(33) - OATLEY - filed in the name of Balmoral Operations Pty Ltd.

Delegate: Deirdre O'Brien

Representation: Opponent
Siobhan Ryan of counsel, instructed by Davies Collison Cave, patent and trade mark attorneys
Applicant
Carmen Champion of counsel, instructed by FB Rice & Co, patent and trade mark attorneys

Decision: Reg 5.2 extension of time to oppose registration
Ground pursuant to reg 5.2(2)(b) made out. Extension of time granted.
Background

Trade mark application 1065063 was filed in the name of Balmoral Operations Pty Ltd (‘the applicant’). It was advertised as accepted for possible registration on 1 December 2005. The three month period prescribed by reg 5.1 of the Trade Marks Regulations 1995 in which registration could be opposed expired on 1 March 2006.
On 2 March 2006 Forrester & Ca., S.A. (‘the opponent’) applied for an extension of the statutory opposition period. It cited the grounds contained in reg 5.2(2)(b)&(c). In support of those grounds it filed a statutory declaration by Ms Christine Lowe of its agent, Davies Collison Cave, patent and trade mark attorneys. Pursuant to reg5.4(2)(a) the opponent served a copy of its extension application and supporting declaration on the applicant.
A delegate of the Registrar of Trade Marks considered the opponent’s extension request but found the facts in the supporting declaration did not make out either of the grounds relied on. The applicant and opponent were notified that the Registrar intended to refuse the extension application and the opponent was given until 31 March in which to provide better reasons or to request a hearing.
The official notice to the opponent said, inter alia,
If you provide further reasons in support of the extension application, you MUST serve a copy of those reasons on the other party at its address for service and inform this Office of the date, place and manner of service.
The notice sent to the applicant of the Registrar’s intention included the following:
If a hearing is requested, you will be given an opportunity to attend. If no hearing is requested but the other party provides further reasons which satisfy the Registrar that the extension should be allowed, you will be given an opportunity to comment on those reasons before a final decision is made.
On 15 March the opponent filed and served a second statutory declaration made by Ms Lowe. Ms Lowe notified this office that this second declaration had been served on the applicant and in its letter dated 21 March the applicant refers to both Lowe declarations.
The official record shows that after the filing of the second Lowe declaration there were telephone conversations between Ms Lowe and the delegate on 31 March and 7 April whereby the delegate allowed Ms Lowe further time to file another declaration. The content of those conversations is not recorded so…

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: [2006] ATMO 57
Decision Date: 11 July 2006

CaseChat Overview and Summary

This decision concerns an application for an extension of time to file a notice of opposition in trade mark proceedings before Deirdre O'Brien of the Trade Marks Hearings. The applicant sought this extension after the period for filing the notice of opposition had expired.

The primary legal issue before the Registrar was whether to grant the extension of time, which required being reasonably satisfied that there was a sufficient reason for the application not being made before the expiry of the opposition period. This was to be considered in light of regulation 5.4(4) of the relevant regulations and the principle that such applications should follow as soon as possible after the discovery of the error or omission.

The Registrar was satisfied that the opponent's Australian agent had applied for the extension as soon as possible after receiving instructions, thereby meeting the requirements of regulation 5.4(4) and the principle articulated by Justice Jenkinson. Consequently, the Registrar granted the extension of time, deeming the Notice of Opposition to be properly filed on 2 March 2006. Regarding costs, the Registrar declined to award costs against the opponent, attributing the applicant's situation to a breakdown in official procedure rather than the opponent's actions, and also declined to award costs against the applicant, noting the hearing was requested by the opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Reg 5.4(4) provides: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.This is consistent with the remarks of Justice Jenkinson[12] that ‘…my opinion is that the lodging of an application under s160(2)(a) should follow as soon as possible after discovery of the error or omission upon which reliance is to be placed…’ The opponent has done this. Its Australian agent applied for an extension of time as soon as possible after receiving instructions. I am satisfied there is sufficient reason for the extension application not being made any earlier.[12] Supra note 8 at 584Decision As I am satisfied the ground relied on has been made out and that the requirements of reg 5.4(2)&(4) have been met, it is my decision to grant the extension of time. The Notice of Opposition is therefore taken to be properly filed on 2 March 2006.Costs As already noted in the background to these reasons, the applicant’s decision to attend the hearing may have been otherwise if it had received the Antunes declaration at the appropriate time, that is, at the time when it had to decide whether or not to attend the hearing. Having already instructed counsel on what it believed was the full extent of the opponent’s case, it was placed in the position of having to re-consider its case only one day before the hearing. This is a regrettable situation but it cannot be laid at the foot of the opponent. Indeed it is only because of the diligence of the opponent’s agent that the applicant became aware of the Antunes declaration before the hearing rather than at the hearing itself. Accordingly I do not consider it appropriate to award costs against the opponent as requested by the applicant. It was a breakdown in official procedure that resulted in the applicant not having all the information necessary to make a considered decision about whether or not to attend the hearing. I can only offer it the consolation that the official procedure will be reviewed and the applicant’s appearance fee refunded. Nor do I consider it appropriate to award costs against the applicant. The hearing was not held at the applicant’s instigation but was requested by the opponent pursuant to s203. In other words the dispute was between the Registrar and the opponent and the role of the applicant could perhaps be described as that of ‘friend of the tribunal’. I find the opponent is not entitled to its costs.Deirdre O'BrienTrade Marks Hearings11 July 2006

Ratio Decidendi

Legal Principle Established

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Delegate:	Deirdre O'Brien
Representation:	Opponent Siobhan Ryan of counsel, instructed by Davies Collison Cave, patent and trade mark attorneys Applicant Carmen Champion of counsel, instructed by FB Rice & Co, patent and trade mark attorneys
Decision:	Reg 5.2 extension of time to oppose registration Ground pursuant to reg 5.2(2)(b) made out. Extension of time granted.