Future Software Pty Ltd v AWA Limited

[1991] ATMO 25

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:An Application for an Extension of Time to Serve Evidence in Support of the Opposition by AWA LIMITED to Registration of Trade Mark Application A466739 in the Name of FUTURE SOFTWARE PTY LTD.

This matter concerns an application for extension of time provided by reg 43 for serving evidence in support of the opposition by AWA LIMITED, a company incorporated under the laws of the State of New South Wales, of 422 Lane Cove Road, North Ryde, in the said State (hereafter "the opponent") to registration of trade mark application A466739 in the name of FUTURE SOFTWARE PTY LTD, incorporated in New South Wales, of 12 Merton Street, Stanmore, New South Wales 2048 ("the applicant").
          Acceptance of application for the mark EUREKA was advertised in the Official Journal of 8 March 1990 in respect of "Computer programs stored in any material form including hard disks, floppy disks, cassettes and tapes but excluding paper tapes and cards for the recordal of computer programs, and transmitted by any method and stored and used on any computers or computerised data processing equipment".  Notice of opposition to registration of the mark, pursuant to section 49 of the Act, was due on 8 June 1990.  On 4 June 1990 the opponent applied for three months extension of time within which to lodge the notice of opposition.  This application was opposed by the applicant, but following a hearing on the matter the extension was allowed.  The notice of opposition was lodged on 6 September 1990.  In accordance with the provisions of reg 43, evidence in support of the opposition was due for service on 6 December 1990.

On 28 November 1990, the attorneys for the opponent lodged an application for an extension of time of three months to serve the evidence in support, the grounds for the request being:

"AWA Limited has attempted to resolve the current matter without recourse to formal opposition proceedings and still wishes to avoid such proceedings if possible.  Further time is required in order to enable AWA Limited to seek to resolve the current problems associated with its Trade Mark Application Nos. 485001 and 491030 and to gather and prepare evidence in support of those applications.  Accordingly, further time is required within which to serve evidence in support of the current opposition which it may be necessary to pursue if its trade mark applications cannot proceed to registration by alternative means."

No objections in relation to this extension were received, and consequently the date for serving the evidence in support was extended to 6 March 1991.
          On 26 February 1991 a further application for an extension of time was lodged requesting that the opponent be granted to 6 June 1991 to serve the evidence in support.  The reasons stated in the application were the same as those given for the earlier request.  The applicant notified its objections to this application in a facsimile received at the Office on 28 February 1991, and the matter was set down for a hearing in Canberra on 20 March 1991.  The applicant's written submissions and a copy of a Statutory Declaration by Louise Mary Steer, a director of the applicant company were transmitted by facsimile to this Office on 19 March 1991.
          At the hearing Mr Sean McManis of Shelston Waters, a Sydney firm of patent and trade mark attorneys appeared for the opponent, AWA Limited.  The trade mark applicant, Future Software Pty Ltd, was represented by the said Ms Steer.

Mr McManis opened his submissions by commenting that the principle on serious opposition being foreshadowed in relation to extension of time matters enunciated in Vangedal-Nielsen and Others v Smith (Commissioner of Patents) and Another, (1980) 33 ALR 144 has been given a broader application in subsequent decisions by requiring proof that opposition should be seriously intended as considered in Poltrock v Ennor (1986) 8 IPR 217. This intention of serious opposition had been demonstrated by the opponent in the evidence tendered concerning use of its marks from July 1981, which predated the applicant's use since 1986, he said, and cited Aston v Harlee Manufacturing Co (1960) 103 CLR 391 as authority in relation to first use of a mark. He further argued that the opponent, who was in the process of preparing and gathering the evidence in support, which normally requires considerable time having to involve third parties in the endeavour, had provided more expansive and substantial reasons for the additional evidence than were considered by Beaumont J. in Lyons and Another (trading as Mitty's Authorized Newsagency) v Registrar of Trade Marks and Another (1983) 1 IPR 416.
          Whilst Mr McManis recognized that the extension requests should clearly indicate the reasons for seeking additional time, he believed, regard should also be had to the whole circumstances surrounding such requests, for example, where matters of public interest were to be determined, the Registrar should have all the relevant facts of the case before him, or further time was to be sought for negotiations or for the preparation and service of the evidence following a breakdown of negotiations as were considered in Bundy America Corp v Rent-A-Wreck (Vic) Pty Ltd (1985) 5 IPR 307, Jamieson v American Dairy Queen Corp (1985) 5 IPR 551 and Examiner's Manual, para 9.08.
          Given that the opponent's and the applicant's marks were substantially identical or deceptively similar and used in conjunction with the same goods, Mr McManis emphasized the public interest aspect of the present proceedings necessitating the compilation of evidence in support of the opposition.
          He also explained that a settlement had been sought by enquiring from the Office whether amendments to the goods of the present application and the opponent's pending applications could resolve the conflict, but these proposals had been rejected by the Office.  On receiving the adverse response from the Office, the opponent had decided to lodge evidence in support of the pending applications with a view to seeking registration of the marks under the provisions of sub-sections 34(1) or 34(2) of the Act, he said, and referred to copy of a letter annexed to a Statutory Declaration prepared by himself and tendered at the hearing.  This letter, dated 26 February 1991, communicates to the applicant the opponent's action concerning lodgment of the evidence as well as its intention to apply for further time within which to serve the evidence in support.
          Mr McManis noted that following the opponent's letter of 20 September 1990 suggesting that the applicant pursue further with the examiner the matter relating to amendment of its application, no advice was received from the applicant clearly indicating that the opponent should continue the preparation of the opposition evidence.
          By endeavouring to resolve the conflict without the opposition proceedings, Mr McManis continued, the opponent had adopted a conciliatory approach, and to that end it had presented evidence in support of its applications Nos 485001 and 491030 so that the applicant's mark could also proceed to registration.  He could not comprehend, therefore, how the opponent's action adversely affected the applicant, nor did he concede any undue delays caused by the opponent in the present proceedings, and submitted that in the circumstances the opponent was entitled to the requested extension of time.
          At the outset of her submissions Ms Steer stated that on her reading of the Lyons case, supra, Beaumont J. did not consider the actual contents of a notice of opposition, that is, whether fresh grounds could be introduced subsequent to serving of a notice of opposition.  Mr McManis had referred to the provisions of section 34 of the Act, even though these provisions had not been raised in the notice of opposition and the current application for the extension of time, she observed.
          She continued by pointing out that the examiner's report advising the opponent's attorneys of the unsuccessful attempt to resolve the matter by amending the respective applications was dated 3 August 1990, but stamped as received by the opponent's attorneys only on 4 September 1990.  Therefore, she said, the opponent's invitation of 20 September 1990 to deal further with the matter would have been fruitless.  As in the opponent's letter of 6 September 1990 to the applicant no mention had been made of the examiner's rejection of the proposed amendments, the applicant, in the belief that the opponent was making a genuine effort to settle the matter, continued to negotiate with the Office as demonstrated in a letter dated 18 September 1990, Ms Steer explained.
She further maintained that the opponent's actions constituted an attempt to have its marks registered ahead of the applicant's mark. The type of evidence lodged in respect of the opponent's applications attesting to use of the mark URICA since July 1981, which was described by Mr McManis at para 15 of his declaration, could have been served in support of the opposition to allow the applicant an opportunity to assess its weight, Ms Steer asserted. In the circumstances, she believed, nine months available to the opponent for the purpose of serving the evidence in support should have been sufficient time. In any event, she said, the dispute should be dealt with properly at opposition proceedings and emphasized that the rules of natural justice were very clearly laid out and further codified in the Administrative Decisions (Judicial Review) Act.
          By the present prolonged process, Ms Steer submitted, the applicant was disadvantaged, firstly, by being prevented from the marketing of the product bearing the mark, secondly, the likelihood that the payment of renewal fees could fall due immediately after the mark's registration, which clearly was not in the public interest and, thirdly, the finance incurred by continuously having to oppose the extension of time applications and travelling to Canberra to represent the applicant, which is a small company.
          The opponent's allegations as to its strong case had not been substantiated as far as the applicant was concerned, Ms Steer contended, and further submitted that cases like Vangedal, Lyons, both supra, and others on this point, indicated that a serious opposition was not serious simply by nature of the grounds of the opposition, but should be seriously pursued which the opponent had  failed to do, notwithstanding the evidence already in its possession.
          It has been established, Ms Steer continued, that public interest demanded efficient course of opposition process.  In the circumstances where any attempts by both parties to sway the opinion of the Office concerning registration of their marks had been unsuccessful, the only course open to the parties would be to proceed with the opposition matter so that the applicant could decide whether negotiations would be expedient.
          As to Mr McManis' reference to the cases which suggest that time must be granted for a reasonable extension, Ms Steer commented that these cases have given no real indication on reasonable extension periods, as such matters must be decided in light of the relevant facts.  In the present situation, she claimed, the opponent already had reasonable time taking into account the existing evidence and the considerable period of time spent on negotiations.  She also failed to see how pursuing registration of its own trade mark could possibly be in the applicant's interests, as claimed by Mr McManis, particularly if the opponent's marks proceed to registration before the subject mark.
          Responding to some points raised by Ms Steer, Mr McManis stated that section 34 did not constitute a ground of opposition, but a ground of registration and that the proprietorship question, the claim based on substantial identity or deceptive similarity of the marks under consideration, and the likelihood of deception or confusion of these marks were expressed in the notice of opposition under paras (a), (b), (c) and (d).
          He did not agree with Ms Steer's insistence that the evidence should be served on the applicant as evidence in support of the opposition to prove the alleged strong case, since the evidence lodged on the pending application was precisely intended not to be recorded as evidence for that purpose and could have adversely affected the fate of the present application in an opposition proceeding.  Furthermore, the evidence might not have been appropriate in respect of opposition, in which case additional time would have been required for gathering of further evidence to be utilized for the opposition.
          Ms Steer could not accept Mr McManis' explanation on the evidence matter.  In her opinion, allegations of prior use of a mark should be supported by evidence, and in the interests of natural justice the evidence should be made available for the matter in suit to be properly adjudicated.
          She also expressed concern that if the opponent's trade marks are registered before resolving the opposition, the opponent would be in a position to prevent registration of the subject mark by having priority of registration.  In her view, even if the opponent withdrew its opposition once its marks were registered, the Office could raise objections to registration of the applicant's mark.
          The essential factors to be considered in order to determine extension of time matters in the current proceedings are as follows:

.that a proper case has been made out justifying the extension;

.that sufficient reasons have been given for the failure to present the evidence within the prescribed period;

.the relative inconvenience to the parties concerned if the extension is, or is not, granted;

.that the public interest would best be served by ensuring, as far as possible, that the Registrar has access to all the relevant material for the purpose of deciding the opposition.

(See Vangedal, Lyons, both supra, and Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, 1979 RPC 410).
          To date the opponent has had six months, under the provisions of reg 43, in which to prepare and serve its evidence in support of the opposition.  If the current extension of time is allowed, the opponent will have availed itself of 9 months for this purpose.
          In both applications for the extensions of time as well as at the hearing Mr McManis, on behalf of the opponent, repeatedly stressed the opponent's desire to resolve the existing conflict by avoiding opposition proceedings, if possible.  Both the applicant and the opponent had endeavoured to settle the matter by applying for amendments of the specifications of goods of the respective applications.  On being advised by the examiner that the proposed amendments were not acceptable, that is, did not allow withdrawal of the objection based on the subject mark, the opponent elected to lodge formal notice of opposition on 6 September 1990.  It is acknowledged that some delays occurred on the part of the opponent in notifying the applicant of the examiner's response dated 3 August 1990, but forwarded to the applicant with a letter dated 20 September 1990.  This delay could have been avoided.  However, I do not think it would have altered the course of events as the opponent had decided on another option available to it by concentrating on its pending applications Nos 485001 and 491030.  As indicated in the previous and current applications for the extensions of time, the opponent required time to compile the evidence for this purpose.  It is clear that the filing of this evidence was considered to be necessary to seek co-existence on the Register of the opponent's marks with the mark of the present application, which otherwise would be refused registration as substantially identical or deceptively similar  marks for the same goods or services, or other goods or services.  In a letter of 26 February 1991 addressed to the applicant, a copy of which is annexed to Mr McManis' declaration, the applicant is advised of the actual lodgment of such evidence, and in the same letter at para 3 the opponent expresses its intention to withdraw the opposition to this application

"If the Registry agrees to allowing our client's applications to proceed, without first requiring the opposition proceedings to be resolved, our client will be able to withdraw its opposition to the registration of your company's mark which should enable that application to proceed."

As serving of the evidence in support of the opposition fell due on 6 March 1991, it is obvious that the examiner would have insufficient time to consider the evidence lodged in respect of the opponent's applications and to issue further reports before that date.
          By the applicant's own admission, no further negotiations were initiated by either party since receiving adverse communication from the examiner in relation to the proposed amendments.  As was contended by Mr McManis, the Registrar will not refuse applications for reasonable extensions in instances where negotiations have broken down to allow the party concerned time for the preparation and service of the relevant evidence, as discussed in Jamieson v American Dairy Queen, supra and Jonathan Sceats Design Pty Ltd's Appn (1989) 15 IPR 59. In the latter case the opponent was granted a further extension despite the fact that it had already availed itself of 29 months for the service of evidence in support. I note also that the opponent succeeded in obtaining additional time for the same purpose after having been allowed some 33 months in Bundy case, supra.  As I am aware, nine months for the gathering and serving of evidence in support are not considered uncommon (see, for example, Lord Bloody Wog Rolo v United Artists Corporation (1988) 11 IPR 516 and The Black & Decker Corporation v Akarana Abrasive Industries Ltd (1989) AIPC 90-617). Therefore the period of time currently sought by the opponent cannot be regarded as unreasonable.
          Furthermore, being mindful of the "notorious fact" that opposition proceedings usually involve obtaining of the evidence from third parties, which can become a relatively lengthy process, as well as the words of Beaumont J in Lyons, supra, when upon considering an application for an extension of time for serving of the evidence in support on the grounds that "evidence in support of the opposition is in course of preparation but it is desired to have additional time to prepare that evidence and serve copy thereof on the applicant", his Honour, in light of the principles enunciated in Vangedal case, supra, stated at page 420:

"Although a more detailed explanation of the position may have been desirable, I think that it is possible to construe the rather bald statement of the ground for the request (supra) as indicating that, although efforts had been made in that behalf, it was not possible to finalize the form of the evidence sought to be adduced in the time allowed by the regulation.  I accept that, on one view, it is possible to read the stated ground as being little more than an assertion that more time is required.  However, the statement of the ground does at least attempt some explication of the position.  Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time.  Given that background, and given the construction of the statement of the ground which was open, I am of the opinion that the delegate did not exercise his discretion in any improper way.  In particular, in my view, there was evidence before the delegate upon which he could rely in order to justify the grant of an extension,"

I find the opponent has more than adequately explained the circumstances which prevented the service and lodgment of the evidence in support by the due date and has established a case which warrants consideration of the extension of time now sought.
          In pondering over this matter I have not ignored the applicant's submissions that the evidence lodged in respect of the opponent's pending applications could also have been utilized for the opposition proceedings and therefore no additional time was required for the preparation of such evidence.  Whilst I acknowledge that a substantial portion of this evidence might constitute evidence in support of the opposition, the nature of evidence for registration of a mark under the provisions of either sub-section 34(1) or sub-section 34(2) differs from that prescribed in opposition proceedings under reg 43 of the Act.  Consequently, the opponent would require further time for reorganizing the accumulated evidence and/or for gathering additional information and material from other sources.
          Ms Steer has stressed the commercial and economical disadvantages caused to the applicant by the obstacles encountered in having its mark registered.  Her concern is noted.  I must, however, take into account the factor that in opposition matters the parties concerned usually have only one opportunity to prove their case and to justify registrations of their respective trade marks.  Whilst I recognize that, if possible, such disputes should be speedily resolved, in the present case the public interest is a significant factor having regard to the opposition's claim of potential deception or confusion of the opponent's marks with the mark of the present application (see Eno v Dunn (1890) 7 RPC 311). In the circumstances then, the trade mark applicant may have a considerable onus to discharge. If the opponent's evidence in support is not served, the applicant will miss an opportunity to serve its own evidence in answer. In the absence of the evidence the Registrar will be at a disadvantage in determining whether the applicant is in a position to discharge its onus, and whether registration of its mark would be in the public interest. Thus, as expressed by the Senior Assistant Registrar S. Farquhar in Bundy case, supra, at page 310:

"... it is a matter of great importance that the Registrar, when determining that opposition, should have the fullest possible disclosure of relevant facts in the material before him.  Given the circumstances described in the foregoing, and particularly if, as the opponent alleges, the opponent has used the mark, there is a considerable matter of public interest to be determined and every effort should be made to enable the Registrar to consider those circumstances with the assistance of as much documentary evidence as possible."

In the circumstances, I believe the inconvenience encountered by the applicant cannot outweigh the matters concerning public interest raised in the opposition.
          As to the applicant's submissions in relation to the priority in time question, under sub-section 53(2) of the Act, a trade mark is registered from the date of the application and that date is also deemed to be the date of registration, therefore, if the opponent's conflicting marks proceed to registration, the date of registration of those marks would not be earlier than that of the subject mark.
          Having considered the relevant factors I have decided to grant the requested extension of time.  Accordingly, I find in the opponent's favour and allow the extension of time for serving the evidence in support to 6 June 1991.
          I award costs against the applicant.

(V. ZARS)
Senior Examiner
15 April 1991