Gadesa Trading Pty Ltd
[2019] ATMO 30
•1 March 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark registration number 918056(37) - FONE FIX - in the name of Gadesa Trading Pty Ltd.- Application for extension of time to file Notice of Opposition
Delegate: | M Cooper |
Representation: | Applicant: James Lawrence of Mills Oakley Lawyers |
Decision: | 2019 ATMO 30 Trade Mark Regulations 1995 – application for extension of time to file a notice of intention to oppose and statement of grounds and particulars - whether error or omission or circumstances beyond the control of the applicant for extension - grounds not established – request for grant of extension of time refused. |
Background
Gadesa Trading Pty. Ltd., the extension of time applicant (“the Applicant”) is the owner of trade mark registration 918056, which has been registered for class 37 services on 14 April 2003. Its details are below. It was assigned to the Applicant on 17 July 2005.
(“the Trade Mark”)
Goods & Services
Class 37: Mobile telephones repairs and maintenance
Endorsements: Provisions of subsection 44(4) applied
In or around June 2013 the Applicant claims it assigned the Trade Mark to Fone Fix Australia Pty. Ltd., (“Fone Fix”), the sole director of which is Mr. Shaun Moffatt. IP Australia was not notified of this assignment and the Trade Mark remained on the Register in the Applicant’s name and with the same PO Box address for service.
On 19 October 2017, Mr. Adam Tonzing (the Removal Applicant) filed a non-use application under s 92 of the Trade Marks Act 1995 (“the Act”) in respect of the Trade Mark.
On 25 October 2017 IP Australia sent a notice to the Applicant at its registered address for service, notifying it of the removal application and the deadline for filing a Notice of Intention to Oppose the application. No response to this correspondence was received. The correspondence was not returned to IP Australia.
The non-use removal application was advertised on 26 October 2017 and any opposition was due to be filed by 26 December 2017.
No opposition was filed and on 9 January 2018 the Trade Mark was removed from the Register. On 12 January 2018 IP Australia sent correspondence to the Applicant at its address for service advising of the removal. No response was received to that correspondence and it was not returned to IP Australia.
The removal was published on 18 January 2018.
On 24 August 2018 the Applicant, through its legal representatives, sought to file a Notice of Intention to Oppose Removal of the Trade Mark (“NIO”) and a Statement of Grounds and Particulars (“SGP”). An 8-month extension of time to file those materials was also sought. A declaration from the Applicant’s legal representative was attached to this request.
Correspondence with IP Australia followed which is discussed further below.
On 16 October 2018 IP Australia notified the Applicant, through its legal representatives, that the application for an extension of time to file a NIO and SGP was refused.
Following this decision, the Applicant sought an ex parte hearing. The matter was allocated to me as delegate of the Registrar and I heard it in Canberra on 4 December 2018.
The Applicant’s legal representative, Mr. James Lawrence of Mills Oakley, filed a submission prior to the hearing and appeared at the hearing.
Evidence and submissions
Mr. Lawrence provided two declarations supporting the application for an extension of time. The first was attached to the Extension of Time to File a Notice of Intention to Oppose application (“the first Lawrence declaration”) dated 24 August 2018. The second was a “Supplemental declaration” dated 13 September 2018 with annexures JL-1 to JL-3 (“the second Lawrence declaration”).
In the first declaration, Mr. Lawrence asserted that the Applicant had “recently become aware” of the application by Adam Tonzing to remove the Trade Mark from the Register for non-use. He noted trade mark registrations 1880654 and 180655 assigned to Mr. Tonzing’s company, Hard to Earn Pty. Ltd., on 29 June 2018[1]. He stated that the Applicant’s address for service, as advised to IP Australia by the Applicant, was no longer in use and it had therefore not received the notification of the application for removal of the Trade Mark. He claimed that the Trade Mark was of the “utmost importance” to the Applicant’s business and it would have opposed it if it had the opportunity. He asserted the Trade Mark was not vulnerable to removal for non-use because it had been in continuous use and this would have been revealed by a simple internet search. He maintained that the Applicant would have been “undoubtedly successful” in opposing the removal. Consequently, in the interests of justice and on the basis that previous such applications had been granted[2], an 8-month extension of time within which to file the NIO and SGP was sought. He stated that the relevant error or omission was the failure of the Applicant to update its address for service with IP Australia. The Applicant’s non-receipt of the notice of the non-use removal application, and its consequent loss of its chance to oppose the removal, were said to constitute special circumstances beyond the Applicant’s control that warranted the grant of the extension of time.
[1] Trade Mark 1880654 was for the word mark “Mr Fone Fix” and 1880655 for the composite mark “Mr fone fix”. Both are registered for class 37 mobile phone repair services. Both also contained endorsements under s.44(3)(b) and r.4.15A(3)(b).
[2] Insfin Insurance and Finance Group v Razor [2008] ATMO 80 (“Insfin”).
Following IP Australia’s correspondence indicating a refusal of the extension of time application on 30 August 2018, Mr. Lawrence filed the second declaration. He claimed its contents were based on direct discussions with Mr. Moffatt, the sole director of Fone Fix, to whom the Applicant had assigned the Trade Mark in June 2013. He reiterated his claim that the Trade Mark had been in continuous use in connection with the mobile phone repair business since 1993. He stated that following assignment of the Trade Mark Mr. Annear, the Applicant’s sole director, “had no involvement in the business of Fone Fix” and had voluntarily deregistered the Applicant on 17 November 2013. He had reinstated the Applicant with ASIC in order to assist Fone Fix. The ASIC record of the assignment of the business name “Fone Fix” to Shaun Moffatt on 5 July 2013 was attached.
Mr. Lawrence claimed that Mr. Moffatt genuinely thought he had done all that was necessary to transfer the Trade Mark to his business and had considered he was free to use it by virtue of the business name transfer. Mr. Lawrence asserted that the business had been purchased without any legal advice and, in Mr. Lawrence’s experience, it was “common for lay members of the public to conflate the concepts of trade marks and business names.” He further claimed that Mr Moffatt’s failure to update his address with IP Australia was an oversight.
He recited Mr. Moffatt’s claim that in or around August 2017 he started to get telephone calls from customers asking whether he had extended his business to Queensland. He discovered that a Mr. Adam Tonzing was using the Trade Mark and, Mr. Lawrence claimed, Mr. Moffatt wrote to him asserting infringement. Mr. Lawrence attached correspondence from Tonzing’s attorneys, IP Wealth, dated 11 October 2017, which proposed settlement terms including an undertaking by Mr. Tonzing that he would “cease trading under the name MR FONE FIX”. That correspondence advised that, on Mr. Moffatt’s acceptance of the terms, “we will arrange for our client to provide the signed undertakings.” Mr. Lawrence asserted that Mr. Moffat advised the attorneys that he accepted the terms however by late October 2017 it became apparent to him that Mr. Tonzing had abandoned the settlement. He further claimed that, in or around May 2018, Mr. Moffatt conducted a search of the Australian Trade Marks Register and discovered two other marks which concerned him, Registration numbers 1880654 and 1880655, which were owned by Mr. Tonzing’s company. Mr. Lawrence also claimed Mr. Moffatt then discovered the Trade Mark had been removed.
Mr. Lawrence asserted that it was “plain that .. Mr. Tonzing and his solicitors realised the [Applicant] had been deregistered in 2013. It can be readily inferred that the settlement terms were abandoned by Mr. Tonzing because he formed the view (whether on advice or otherwise) that it was unlikely a non-use action would be responded to on that basis and so the [Trade Mark] would therefore be removed.” He contended that “it seems plain that the [Trade Mark] was cited as a blocking mark against those applications”.
In relation to the non-return of IP Australia’s correspondence sent to the Applicant’s address for service, Mr. Lawrence said that the Applicant’s PO Box lease would have “lapsed on or around May 2014”. He related his contact with Australia Post and the advice he received that the only way such mail would be returned to sender is “if the controller of the address (in this case, the new holder of the PO Box) takes it upon his or herself to do so.” It was claimed that the general Australia Post Office Terms and Conditions attached to the declaration confirmed this. Consequently Mr. Lawrence contended that the inference should be drawn that the new owner of the PO Box had chosen not to return IP Australia’s correspondence and may have simply disposed of it. These events were said to explain the Applicant’s non-receipt of the correspondence and to be beyond its control.
Submission
A written submission was provided by the Applicant’s legal representatives prior to the hearing. In that submission Mr. Lawrence reiterated the factual background of the Trade Mark ownership, its assignment to the Applicant, the sale of the business and the purported assignment of the Trade Mark to Fone Fix in or around June 2013. It noted that this business is a separate legal entity to the original Trade Mark owner, also called Fone Fix, and is also a separate legal entity with a separate director to the Applicant. Specifically, the submission denied the apparent suggestion by IP Australia in its correspondence of 16 October that the address for service was jointly owned by the Applicant and Fone Fix, maintaining that at no time did Mr. Moffatt or Fone Fix have any connection to the PO Box as recorded by IP Australia for the Trade Mark.
It was further contended that the facts of this application bore a close resemblance to those in the decision Insfin. This is discussed further below.
Hearing
As noted above, Mr. Lawrence appeared for the Applicant.
He submitted that the course of events has placed Mr. Moffatt in a manifestly unjust position. He claimed he had entered discussions with Mr. Tonzing in October 2017 and had accepted his offer to cease using the Trade Mark. Asserting bad faith, he noted that 6 days after the Applicant had accepted the offer, the Removal Applicant had filed for removal of the Trade Mark.
Mr. Lawrence claimed an almost inescapable inference that the Removal Applicant had become aware that the Trade Mark Register did not reflect Mr. Moffatt’s ownership of the Trade Mark and they had filed the removal application “knowing full well” that the IP Australia notifications might not be received. He noted the adverse exam report issued in respect of the Removal Applicant’s Trade Mark registrations 1880654 and 1880655 and inferred this had been due to the citation of the Trade Mark. In this context he claimed the evidence of the Removal Applicant’s offer to settle the Applicant’s allegations of Trade Mark infringement [3] was highly relevant and contended that it was exceptions of this precise nature that were covered by the extension of time provisions.
[3] Exhibit JL-2 of the second Lawrence declaration.
Mr. Lawrence relied on several decisions but particularly the abovementioned Insfin decision which he claimed had “uncanny similarities” to the circumstances of this application and should be followed. He maintained that it was “incontestable” that the Removal Applicant knew the Applicant was using the Trade Mark and that the removal application would have been unsuccessful. He contended that the High Court decision in Kaiser Aluminium[4] should be followed insofar as the discretion to extend time should be liberally interpreted so as not to allow the Removal Applicant to unfairly pursue the non-use removal application.
[4] Kaiser Aluminium and Chemical Corporation v Reynolds Metal Co [1969] HCA 7; 120 CLR 136 (“Kaiser Aluminium”).
He noted that Mr. Moffatt had accepted the Removal Applicant’s settlement terms in which it agreed, among other things, to cease trading under the name “Mr. Fone Fix” and he contended that it was reasonable of Mr. Moffatt to conclude that the issue was settled. When asked why Mr Moffatt had waited seven months (until May of the next year) to follow up or check the Register, Mr Lawrence responded that Mr Moffatt runs the business by himself, he did not have the time to be concerned whether the Removal Applicant had honoured its commitment and he was not experienced in trade mark law. In addition, the delay was explicable in a context in which he thought the deal had been done. Mr Lawrence said it was his strong submission that this delay should have no bearing on whether to exercise the discretion to extend time.
Relying on several decisions he submitted that there were two compelling reasons to allow the extension of time:
it is more important to consider consequences of refusing an extension of time than to debate why the application was not filed in time; and
a legislative provision providing for the exercise of discretion to extend time is beneficial in nature and should be liberally applied.
In balancing the interests of the Applicant and the Removal Applicant, Mr Lawrence submitted that the Removal Applicant could not be in a worse situation because its marks would remain on the Register. On the other hand, not granting the extension of time would place the Applicant in a grossly prejudicial position. Therefore, in considering what is fair and reasonable in the circumstances, the extension of time should be granted.
I requested Mr. Lawrence address the relevant regulations, noting that his written submissions had not done so and at the hearing he had placed reliance on the existence of special circumstances. In relation to r 9.11, he submitted that the factor outside the Applicant’s control was the failure of the person or entity which received the IP Australia notification of the removal application to return it to “sender”. The failure to update the Applicant’s address for service with IP Australia was the error or omission.
Returning to the provisions of s 224 of the Act, Mr. Lawrence maintained that the totality of the circumstances demonstrated that special circumstances existed such that the extension of time should be granted.
I referred Mr. Lawrence to the observations of Jenkinson J that a failure to do an act or to take a step is not in itself an “error or omission” within the meaning of the Regulations[5] and, in relation to circumstances beyond a person’s control, it pertains to
“occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent…. The section is, I think, correctly described as a force majeure provision.”[6]
[5] Kimberly-Clark v Commissioner of Patents (No3) [1988] FCA 421.
[6] Re Atomic Skifabrik Alois Rohrmoser v the Registrar of Trade Marks [1987] FCA 22 (“Re Atomic”).
Mr. Lawrence responded that the High Court authority in Kaiser Aluminium ‘trumps’ that decision. In addition, he maintained that Insfin is directly on point, with an identical factual matrix and the equivalent applicable legislative provisions. He submitted that the merits of the underlying case are important and that the Removal Applicant would have failed if the opposition to its non-use removal application had proceeded. I queried Mr. Lawrence’s assumption in this respect, noting that, in the absence of further evidence, it was entirely speculative. He responded that the Applicant had “better than” a prima facie case and stressed the bad faith manner in which the Removal Applicant filed the application after Mr Moffatt had agreed to their proposed settlement terms. I suggested the possibility that there might be a more benign explanation, such as the non-receipt by the Removal Applicant of the Applicant’s response. Mr. Lawrence maintained his inference should be drawn.
Consideration and reasons
Section 96 of the Act provides that “any person” may oppose an application under subs 92(1) by filing a notice of opposition. In this context the Applicant, notwithstanding its evidence that it assigned the Trade Mark to Fone Fix in or around June 2013, has the necessary standing to bring the substantive application, and therefore to also avail itself of the relevant extension of time provisions for the filing of opposition documents.
As noted above, the Applicant’s submissions relied heavily on s 224 of the Act and the existence of special circumstances to submit that the extension of time to file a NIO and SGP should be allowed. Mr. Lawrence provided only brief submissions regarding r 9.11 and r 9.12. Following the hearing, as requested, he provided a list of the authorities on which the Applicant relied as well as a copy of an email which was said to be the Applicant’s acceptance of the Removal Applicant’s settlement offer. In his covering letter Mr. Lawrence also acknowledged as follows:
“Further to the issue whether the application is brought under s.224 of the Act or regulation 9.11, the application is correctly bought under Regulation 9.11. We note that, in any event, the grounds contained in s 224(2) of the Act and regulation 9.11(4) carry identical statutory import.”
I note that while s 224(2) generally reflects r 9.11, the submissions and authorities relied upon by Mr. Lawrence in the hearing had reflected reliance on s 224(3). That is, his submissions were largely directed to whether special circumstances existed to justify the grant of an extension of time to file the documents.
A request for an extension of time can be made under s 224 of the Act unless the act or document has been prescribed in r 21.28 as one to which s 224 does not apply (s 224(8)). Relevantly to this application, r 21.28(2)(b) prescribes a notice of opposition to which s 96 of the Act applies. Section 96 applies to oppositions to non-use removal applications made under s 92(1). It follows that the extension of time application made by the Applicant is prescribed and therefore the provisions of s 224 do not apply.
Notwithstanding the apparent confusion, and having provided the Applicant with the opportunity to address r 9.11 and r 9.12, I have carefully considered all the evidence and submissions made. As noted above, in the declaration attached to the extension of time application, the Applicant’s failure to update its PO Box address was claimed to constitute the relevant error or omission. The failure to receive notification of the non-use removal application and loss of the opportunity to oppose it and/or the failure of the person who received the notification to return it to IP Australia, were claimed to constitute special circumstances and to be beyond the Applicant’s control.
The filing of a relevant NIO and an SGP is governed by r 9.8 and r 9.9 and, in these circumstances, when filed outside the statutory period, by the provisions of regs 9.11 and 9.12. They provide as follows:
9.8
Filing of notice of intention to oppose
(1) For subsection 96(2) of the Act, the period for filing a notice of intention to oppose is 2 months from the day the application for removal is advertised in the Official Journal.
(2) The notice must be in an approved form.
(3) The Registrar must give a copy of the notice to the applicant.
9.9
Filing of statement of grounds and particulars
(1) A statement of grounds and particulars must be filed within one month from the day the notice of intention to oppose is filed.
(2) The statement must be in an approved form
…
9.11
Extension of time for filing--application
(1) A person who intends to oppose an application for removal may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under subregulation 9.8(1); or
(b) the period for filing a statement of grounds and particulars under subregulation 9.9(1).
(2) A request under paragraph (1)(a) or (b) may be made within the period for filing the document in question.
Note: See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice of intention to oppose or the statement of grounds and particulars has ended--the reason why the request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds:
(a) an error or omission by the person, the person's agent, the Registrar or an employee;
(b) circumstances beyond the control of the person, other than an error or omission by the person, the person's agent, the Registrar or an employee.
In this case the Applicant, Gadesa Trading Pty. Ltd., has indicated its intention to oppose removal of the Trade Mark and is applying for an extension of almost 8 months outside the statutory time limit to lodge its NIO and SGP. Its request was accompanied by a declaration stating the reason why the request was not made in the relevant period.
Under sub-reg 9.11(4), the only grounds upon which the Applicant may rely in seeking the extension are:
· An error or omission by the Registrar or an employee of IP Australia; or
· An error or omission by the Applicant or its agent; and/or
· Circumstances beyond the control of the Applicant (that is, the person applying for the extension of time).
The grounds are discussed further below.
Regulation 9.12 is also relevant. It requires as follows:
9.12
Extension of time for filing--grant
(1) The Registrar may grant a request under subregulation 9.11(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.
(2) However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request.
(3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
As noted above, the relevant period for filing the NIO ended on 26 December 2017. As the request was made in August 2018, after the relevant period, r 9.12(2) applies. It specifically requires that the Registrar must not grant an extension which was filed outside the statutory period unless he or she is satisfied that there wassufficient reasonfor the application not being made before the end of that period.
In this context I note Part 48 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’), paragraph 4 which provides in part:
The longer the mark is off the Register, the more likely it is that restoration will seriously inconvenience the non-use applicant. Consequently, while an application for a late extension of time on certain grounds may succeed in the first week after removal, the onus increases sharply with the passage of time.
Error or omission/beyond control
As discussed with Mr. Lawrence at the hearing, there is no direct evidence before me as to the circumstances surrounding the sale of the business, the purported assignment of the Trade Mark or of Mr. Annear’s or Mr. Moffatt’s subsequent activities in this regard. There is Mr. Lawrence’s [hearsay] evidence of what Mr. Moffatt did and did not do, but little that relates to the Applicant or, more specifically, its director, Mr. Annear. The sale of business contract is not in evidence, nor is any other document that might have indicated what the parties agreed regarding the assignment of the Trade Mark and/or responsibilities for notification to IP Australia. While I appreciate that I am not bound by the rules of evidence, in such a context, in the absence of an ability to directly test the claims made or to clarify relevant circumstances and events, I consider the weight of the evidence is diminished.
The relevant “error or omission” claimed by Mr. Lawrence is the Applicant’s, or alternatively Mr. Moffatt’s failure to update the address for service with IP Australia when the Trade Mark was assigned in June 2013. This failure cannot be assessed in isolation. Concomitant with the assignment was the failure by the parties to also advise IP Australia of the change of ownership/assignment of the Trade Mark. Section 109 of the Trade Marks Act 1995 (“the Act”) requires that the Registrar be advised of change of ownership as soon as it occurs. In the circumstances, I consider it would be a perverse outcome to find that the claimed “error or omission”, which was directly associated with the parties’ noncompliance with the Act, could reasonably be regarded as establishing a ground for the favourable exercise of the discretion to extend time.
In the alternative, as noted above, in the absence of any direct or objective evidence of the sale/assignment of the Trade Mark, or the relevant undertakings/responsibilities of the parties as they related to it, there is nothing before me which establishes that the Applicant, as the person seeking the extension, has made any relevant error or omission. On the evidence, the Applicant has not owned the Trade Mark since June 2013 and “neither had nor has any interest or role in Fone Fix.”[7] Mr. Lawrence also stated that Mr. Annear deregistered and then reinstated the Applicant, “as a result of the present concerns” but that following the Trade Mark assignment in 2013, “Mr. Annear had no further involvement in either the business of the Opponent and had no involvement in Fone Fix.” In this context, where the Applicant no longer owns the Trade Mark and has not done so for over 5 years, it had no reason or obligation at any later date to update the address for service in respect of it. Any connection between the Applicant’s asserted error or omission and the late filing of the relevant documents is, at best, remote. It follows that I am not satisfied that the Applicant has established grounds under r 9.11(4)(a).
[7] Paragraph 10 of second Lawrence declaration.
In relation to r 9.11(4)(b), there is nothing before me that suggests or indicates that there were any circumstances beyond the control of the Applicant, in the sense found by Jenkinson J above[8], such as would constitute a ground under r 9.11(4)(b). Mr. Lawrence contended that the failure of the new owner of the Applicant’s PO Box address to return IP Australia’s notification of the removal application was beyond the Applicant’s control. Whether the Applicant maintained its PO Box, surrendered it or let it lapse, it was a matter entirely within its control. The evidence does not disclose otherwise. The submissions contended that an inference should be drawn, based on Australia Post’s terms and conditions, that it lapsed after 12 months and was taken over by someone else. This is speculative, and, in any event, the Applicant had assigned the Trade Mark, so it presumably did not need to maintain the PO Box. Even if the new owner did return the IP Australia notification to sender it is not clear how this would have assisted the Applicant. To the extent that Mr. Moffatt’s failures might be said to indicate circumstances beyond the Applicant’s control, the claims of their ongoing friendship and of Mr. Annear’s efforts in reinstating the Applicant to the ASIC register[9] militates against such a finding. Overall there is nothing in the evidence which demonstrates “occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent”.[10]
[8] Paragraph 33 above.
[9] Second Lawrence declaration paragraph 12.
[10] Re Atomic.
There is nothing in the material before me that suggests any error by IP Australia or its employees. Nor is there any claim or indication of a failure by the Applicant’s agent.
In the circumstances, I am not satisfied that the evidence establishes the failure of the Applicant to file a NIO and/or SGP within the relevant time period was beyond its control within the meaning of r 9.11(4)(b).
Sufficient reason for delay
Although the Applicant has failed to demonstrate the grounds required to make the request for the extension of time under r 9.11, for the sake of completeness I have also considered r 9.12(2).
The following reasons for the delay, which were put in respect of the Applicant in the first Lawrence declaration and Mr. Moffat in the second Lawrence declaration, were as follows:
- The address for service held by IP Australia was no longer in use and consequently the Applicant did not receive notice of the removal application and this prevented it from opposing it within the required time.
- Mr. Moffatt’s failure to update his address with IP Australia was an oversight that meant he did not receive the notice of the removal application and therefore was unable to oppose it within the required time.
- On being made aware in or around August 2017 that another business was using the Trade Mark in another state, Mr. Moffatt wrote to that person (Tonzing) asserting infringement. He accepted Tonzing’s offer to cease using the Trade Mark (or variations of it) however he did not become aware until late October 2017 that the settlement offer had been abandoned.
- In May 2018 Mr. Moffatt searched the Trade Mark Register and it was not until then that he discovered Tonzing’s company’s trade marks 1880654 and 1880655 which “concerned him” and discovered the Trade Mark had been removed. Thereafter, in August 2018, the Applicant filed the NIO and SGP, at the same time seeking an extension of 8 months to file them.
I make the following observations regarding the evidence as it relates to these reasons:
- The reason for the Applicant’s delay is somewhat moot given circumstances in which the evidence unequivocally states that it had not owned and/or used or had any interest in the Trade Mark since June 2013.
- Even assuming the relevance of Mr. Lawrence’s explanations of Mr. Moffatt’s delay in making the extension of time request, in considering whether there is sufficient reason to extend time, I note:
Øthe available inference from the evidence is that from the date of the assignment of the Trade Mark to his company in June 2013 to May 2018, Mr. Moffatt did not check or maintain a watch on the status of his Trade Mark on the Register.
ØInsofar as it was claimed that Mr. Moffatt, as a lay person, was ignorant of his rights and obligations regarding the Trade Mark, this appears to be contradicted by his relatively swift action, after being alerted in August 2017, in writing to the Removal Applicant asserting its infringement of the Trade Mark.
ØThe settlement terms proposed by the Removal Applicant[11] clearly state that it is contingent on the parties’ bearing their own costs and that, on receiving Mr Moffatt’s acceptance of the terms, a Letter of Undertaking would be drawn up. Mr. Moffatt’s response did not indicate his position on costs and there is no claim or suggestion he took any steps to follow up the further document. The evidence asserts only that in October 2017 he became aware that the settlement had been abandoned. It is difficult to reconcile his pursuit of the alleged infringement with his complete failure to act to ensure the settlement was either finalised or that his Trade Mark remained protected.
ØNo reasons have been provided why Mr. Moffatt waited until May 2018 to take any further action in this regard. When asked at the hearing, Mr. Lawrence did not accept the delay was relevant, claiming that Mr. Moffatt was busy and was entitled to assume the settlement terms had been honoured. This is inconsistent with the terms of the offer which clearly indicated that further steps would be necessary.
ØNo cogent reasons have been provided as to why Mr. Moffatt, having discovered an apparent infringement of the Trade Mark in August 2017 waited until May 2018 to check the Register.
ØNo cogent reasons have been provided explaining why he delayed a further 3 months before lodging a NIO and SGP with the accompanying request for an extension of time in which to file the documents.
[11] JL-2 to second Lawrence declaration.
On the basis of the above observations I am not satisfied that sufficient reason has been provided for the delay. On my assessment of the evidence and submissions, the delay was caused by a combination of the Applicant’s and Mr. Moffatt’s failure to advise IP Australia of the change of ownership of the Trade Mark and Mr. Moffatt’s lack of diligence in maintaining his rights in respect of the Trade Mark.
I have had regard to the authorities relied on by Mr. Lawrence and accept that it has been considered to be in the public interest that a serious opposition should be allowed to proceed to resolution and not be shut out because of a "failure in procedure"[12], and that legislation which provides for a discretion to extend time is beneficial and should be liberally applied. The current applicable legislative context is, however, more circumscribed than that which applied when those decisions were made. To the extent that this might be unclear, the Explanatory Statement to the Regulations which introduced these (among other) regulatory amendments stated their purpose was as follows:
Schedule 3 to the Regulation amends both the Patent Regulations and Trade Marks Regulations to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence.[13]
[12] Kaiser Aluminium.
[13] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1).
I have also had regard to the submission made that Insifin so closely resembles the facts in this matter that it should be followed. On the contrary, I consider there are several distinguishing features between this application and the circumstances of that request. In that matter, s 224 did apply and therefore the legal assessment was different. In addition, the person applying for the extension of time was clearly the owner of the Trade Mark and was using it. The extension of time sought was 2 months, much less than the 8 months requested in this application. It also appears that the proposed opponent appeared and provided direct evidence of relevant events and evidence of its ongoing use of the disputed Trade Mark. The delegate was satisfied that the proposed opponent had established prima facie grounds to oppose the removal. In this matter, notwithstanding the claims of evidence establishing use, no such evidence was provided, only assertions of the ongoing use and a website address. Furthermore, in Insfin, the delegate considered that the absence of notification of the owner’s change of address meant the proposed opponent had been unable to oppose the the removal application in the timeframe specified and this constituted “special circumstances” under s 224(3). As previously noted, the legislative provisions to be applied in this matter are considerably more circumscribed. It follows that I have found Insfin of little assistance in determining this application.
The provisions of r 9.12(2) clearly provide that I must not grant the requested extension of time unless I am satisfied there is sufficient reason for the delay in making the request. On the basis of the above discussion, the reason for the delay in making the request appears largely attributable to the Applicant’s lack of ownership or association with the Trade Mark as well as significant, unexplained failings in diligence by the assignee in maintaining its rights in respect of the Trade Mark.
Accordingly, I am not satisfied that sufficient reason has been provided for the delay within the meaning of r 9.12(2).
Decision
As delegate of the Registrar I am not satisfied that r 9.11 and r 9.12(2) are met. It follows that I refuse the Applicant’s request to extend the period for filing a notice of intention to oppose under sub-reg 9.8(1) and for filing a statement of grounds and under sub-reg 9.9(1).
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
1 March 2019
0
3
0