Forrester & Ca., S.A v Forrester & Ca., S.A
[2006] ATMO 57
•11 July 2006
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 attorneysDecision: 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 there is no way of knowing from the official file whether the delegate informed Ms Lowe that the Registrar required that this third declaration also be served on the applicant.
The third declaration was made by Mr Joao Antunes, company secretary of the opponent, and was filed on 18 April 2006. It was accompanied by submissions from by Ms Lowe. Ms Lowe makes no mention in her submissions of serving the Antunes declaration on the applicant. I take it from the absence of any advice in Ms Lowe’s submissions as to service that the delegate had not required that the declaration be served.[1]
[1] At the hearing Ms Lowe confirmed this.
There is no legislative requirement that additional material in support of an extension be served on the other party but procedural fairness means the Registrar’s practice is to direct that it be done. Failing that, the Registrar will send the other party a copy of the material that has been filed. However due to an unfortunate combination of circumstances this did not occur here with respect to the Antunes declaration.
In a letter dated 3 May 2006 the delegate advised the opponent that the Registrar still intended to refuse the extension and gave it 14 days in which to request a hearing. On 17 May the opponent requested and paid for a hearing. The hearing was set for 6 June 2006 in Melbourne and the applicant subsequently indicated that it would be attending by telephone.
Out of professional courtesy Ms Lowe contacted the applicant one day before the hearing and it was then that the applicant became aware of the existence of the Antunes declaration. Ms Lowe immediately sent it a copy but the applicant’s counsel had by this time already prepared for the hearing and was obliged to re-visit her preparations.
The hearing duly took place in Melbourne on 6 June 2006. I was the hearing officer. Ms Siobhan Ryan of counsel, instructed by Davies Collison Cave, appeared in person on behalf of the opponent. Ms Carmen Champion of counsel, instructed by FB Rice & Co, appeared by telephone on behalf of the applicant.
On the morning of the hearing the opponent filed and served another declaration by Ms Lowe. Ms Champion for the applicant objected to the late service of this and the Antunes declaration, arguing that the opponent had not complied with its obligation to serve the evidence on which it intended to rely on the other side in good time. In particular she said the contents of the Antunes declaration may have affected the applicant’s consideration of whether or not to attend the hearing.
I have gone into such detail about the background to this matter as it will be relevant to my consideration of an award of costs later in these reasons.
Extension ground
The ground for the extension pressed by the opponent at the hearing is that contained in reg 5.2(2)(b), namely:
(b)an error or omission by the person applying for the extension of time, or by the person’s agent;
The opponent is a Portuguese company. In order to make out the extension ground it has filed three declarations by Ms Lowe of its Australian agent, Davies Collison Cave[2], and one by its company secretary, Mr Antunes, who is located in Portugal.
[2] Annexed to the Lowe declarations are:
- Letter of instruction from the opponent’s Portuguese attorney to oppose registration
- Letter of instruction from the opponent to its Portuguese attorney (in Portuguese and the English translation thereof)
- Information about 2006 public holidays in Portugal from the web site of the British Embassy in Lisbon
·Information about the Portuguese postal service CTT and CTT’s delivery service standard
I have summarized the relevant facts as follows:
- The statutory opposition period expired on Wednesday 1 March 2006.
- On 24 February 2006 the opponent’s secretary, Mr Antunes, sent a letter by regular mail to the opponent’s Portuguese attorney advising that it wanted to oppose registration of application 1065063.
- Mr Antunes’s letter was received by its Portuguese attorney on 1 March whereupon the attorney emailed and faxed instructions to Davies Collison Cave to oppose registration. The instructions were marked VERY URGENT.
- Due to the time difference between Portugal and Australia the instructions were received by Davies Collison Cave after the close of business on 1 March and were not acted upon until 2 March when Davies Collison Cave filed a notice of opposition together with an application for an extension of time and a declaration in support thereof.
In other words the opponent formed an intention to oppose within the statutory opposition period and sent instructions to this effect by regular mail to its attorney in Portugal five days before expiry of that period. The opponent says its error lay in not taking into account the public holiday in Portugal on 28 February which meant its agent’s office was closed that day. The letter of instruction was not received until the following day.
In his letter of 3 May the delegate said, inter alia:
I am not satisfied the failure to account for the effect of the public holiday (Carnival Day – 28 February) constitutes an error or omission. Where such matters are left to the last day or so available, any delay due to oversight, illness or as in this case (a public holiday) may result in major consequence for which the potential opponent concerned must bear responsibility.
The opponent argues that in coming to that conclusion the delegate has given too much weight to the words of the delegate in Roger David Stores Pty Ltd v Sportsgirl Pty Ltd[3] and re-stated in Stafford-Miller v Jean Patou Parfumeur[4] as follows:
Where matters are left to the last day or so available, any delays due to oversight or illness or whatever may result in major consequences for which the person concerned must bear responsibility.
[3] (1984) AIPC 92-210 at 39,271
[4] (1988) 11 IPR 406 at 411
Similar words were said by the delegate in Stadium Sports Franchising Pty Ltd v Stadium Australia Management Ltd.[5] However the delegate in Coogi Australia Pty Ltd v Shamar Pty Ltd[6] expressed a different view. In the matter before him he found the fact that instructions were given late in the opposition period was not relevant to his consideration of whether or not late filing was due to circumstances beyond the control of the potential opponent.
[5] (1997) 37 IPR 345 at 352
[6] (1996) ATMO 50 (11 October 1996)
The foregoing decisions were in relation to ‘circumstances beyond the control of the person concerned’. That is the ground contained in reg 5.2(2)(c). The opponent is no longer relying on that ground but on the ground of error or omission contained in reg5.2(2)(b). The prerequisite for this ground[7] is that the opponent had formed the necessary intention; to oppose, or to gain time to oppose, or to gain an informed opinion on whether to oppose. Once this has been established it is irrelevant at what stage the alleged error or omission occurred.[8] The question to be answered is whether there was an error or omission and, if so, whether it was the cause of the failure to oppose in time.[9]
[7] As it is for the grounds in reg 5.2(2)(a)&(c)
[8] British Sky Broadcasting Ltd v SkyNet Global Ltd (2003) 57 IPR 93; Cognotec Ltd v Cognos Inc (2000) 49 IPR 630;
[9] Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 13 IPR 569 at 581
I am satisfied the opponent had the requisite intention. I am also satisfied that it was not unreasonable on its part to send its instructions by regular mail to its Portuguese attorney. Although in hindsight it would have been safer if it had emailed or faxed the instructions, it was a reasonable expectation that instructions sent by regular mail would arrive in time to be acted on before the opposition period expired. The opponent’s failure to consider the effect of the public holiday is, I consider, the kind of error contemplated by Justice Jenkinson in Kimberly-Clark Ltd v Commissioner of Patents (No 3).[10] It is an obvious error and contributed materially to the failure to file in time.
[10] Supra note 8 at 580
The applicant has pointed to Justice Jenkinson’s direction that in order to make out a proper case for an extension: [11]
…an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent’s errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant … relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.’
[11] Supra note 8 at 583-4
I note Justice Jenkinson’s remarks were directed to the use of a discretionary power under the Patents Act 1952. Under s160(2) of that Act not only did the relevant ground have to be made out but an assessment had to be made of all the surrounding circumstances relevant to the exercise of the discretion.
In the present case I am satisfied there has been sufficient disclosure. It is true that it took four supporting declarations from the opponent before the full facts were revealed. That is a reflection of the Australian agent requesting an extension of time before it became aware of the reasons why its instructions were received late. The agent needed to do so in order to halt the registration process. It does not reflect adversely on the opponent’s case that the full facts were not available to the agent at the time the extension was requested.
Reg 5.4 provides that the Registrar must grant an extension of time if the ground has been made out and the requirements of reg 5.4(2)&(4) have been met. I am satisfied the ground in reg 5.2(2)(b) has been made out. As already noted the opponent served a copy of the extension application and supporting declaration on the applicant and both sides have been heard in the matter. Reg 5.4(2) has thus been satisfied.
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 584
Decision
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'Brien
Trade Marks Hearings
11 July 2006
Key Legal Topics
Areas of Law
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Administrative Law
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Civil Procedure
Legal Concepts
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Procedural Fairness
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Costs
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Standing
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