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…

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.

Continue reading Future Software Pty Ltd v AWA Limited

Details

AGLC: Future Software Pty Ltd v AWA Limited [1991] ATMO 25
Case: [1991] ATMO 25
Decision Date: 15 April 1991

CaseChat Overview and Summary

This matter came before a delegate of the Registrar of Trade Marks concerning an application by AWA Limited (the opponent) for an extension of time to serve evidence in support of its opposition to the registration of trade mark application A466739 by Future Software Pty Ltd (the applicant). The applicant sought to register the mark EUREKA for computer programs. The opponent had previously been granted an extension to lodge its notice of opposition, which was filed on 6 September 1990. The evidence in support of the opposition was initially due on 6 December 1990, and a subsequent extension was granted to 6 March 1991. The current application sought a further three-month extension to 6 June 1991.

The legal issues before the delegate were whether a proper case had been made out justifying the extension, whether sufficient reasons were provided for the delay in presenting evidence, the relative inconvenience to the parties if the extension was granted or refused, and whether the public interest would be best served by ensuring the Registrar had access to all relevant material. The opponent argued that it had been attempting to resolve the matter through negotiations and by seeking to register its own conflicting trade marks, and that the preparation of evidence for opposition proceedings was a complex and time-consuming process, often involving third parties. The applicant contended that the opponent had already had sufficient time, that the evidence it had gathered for its own applications could have been used in the opposition, and that the prolonged process caused commercial and financial disadvantages.

The delegate reasoned that while some delay in notifying the applicant of the examiner's response to proposed amendments could have been avoided, it did not fundamentally alter the course of events. The delegate noted that attempts to resolve the conflict through amendments had been unsuccessful, and that the opponent had then focused on its own applications, requiring time to compile evidence. The delegate considered that the nine-month period sought for gathering and serving evidence was not unreasonable, referencing previous cases where longer extensions had been granted. The delegate also acknowledged that the nature of evidence required for registration under specific subsections of the Act differed from that for opposition proceedings, justifying further time for reorganising or gathering additional information. The delegate found that the inconvenience to the applicant was outweighed by the public interest in ensuring the Registrar had all relevant material to determine the opposition, particularly given the potential for deception or confusion between the marks.

The delegate granted the requested extension of time, allowing the opponent until 6 June 1991 to serve its evidence in support of the opposition. Costs were awarded against the applicant.

Orders