Gavin James O'Mahoney v Intencity Pty Ltd

[1997] ATMO 67

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Objection by INTENCITY PTY LTD to an application for a late extension of time by GAVIN JAMES O’MAHONEY to serve evidence in support of an opposition to an application under section 92 of the Trade Marks Act 1995 for the removal from the Register of trade mark registration number 565476

Background
An application under s.92 of the Trade Marks Act 1995 for the removal from the Register of registration number 565476 which covered the trade mark INTENSITY was filed by Intencity Pty Ltd (Intencity) on 25 October 1996 and a notice of opposition to that application was filed by Gavin James O’Mahoney (Mr O’Mahoney) on 14 January 1997.  The evidence in support was therefore due on 14 April 1997.

It is necessary, at the outset, to outline the history of what led up to the present dispute between the parties.  On 1 May 1997, Phillips Ormonde & Fitzpatrick, the attorneys for Intencity, advised that it had not been served with any evidence in support.  On 12 May 1997, the Office sent a notice regarding the overdue evidence to Mr O’Mahoney.  On 16 May 1997, Mr O’Mahoney filed a letter saying that his legal representatives appeared not to have filed evidence as instructed by him.  At the same time, he filed a statutory declaration which appeared to be intended to be evidence in the matter.  The Office sent another letter to Mr O’Mahoney on 28 May 1997, advising him that the evidence could not be received unless the period for filing and serving it was successfully extended, pointing out the provisions of reg.5.15, and advising him that late applications for extension should be supported with good reason.  A facsimile copy of a declaration by Mr O’Mahoney dated 3 June 1997, together with other material, was sent by him to the Trade Marks Office on 4 June 1997 but no advice of service of these documents was given.  On 5 June 1997, Mr O’Mahoney sent another fax which indicated that the material filed on 4 June was intended as “documented evidence in support (non use)”.  A “File Record Of Conversation” dated 6 June 1997 indicates that an officer from the Hearings Section advised Mr O’Mahoney that he needed to file the original statutory declaration with the Office, that an extension of time for service should be sought until 14 June 1997, that a late fee and extension fees for two months should be paid, and also that the evidence and the application for the extension should be served on Intencity.  On 11 June 1997, Mr O’Mahoney sent a fax to the Office saying that he had been instructed by his lawyer to personally file certain documents.  He subsequently filed on that day, at the AIPO Brisbane State Office, an application for the extension including advice that the evidence was proposed to be served on Intencity on 10 June 1997, and also a statutory declaration which repeated some of the information in the 3 June declaration but also included new material and which also sought leave to “adduce particular evidence” as to use.  This latter reference was the only mention of the extension sought.

Phillips Ormonde & Fitzpatrick advised in a letter, on 18 June 1997, that they had received a copy of Mr O’Mahoney’s latest statutory declaration, the purpose of which they questioned, but that they had received no copy of an extension request.  On 24 June 1997, an officer from the Hearings Section sent a letter to Mr O’Mahoney seeking clarification of his intentions and giving him general advice on procedure to facilitate his reply.  This letter was later re-sent to another address on 4 July 1997 on its return from the official address for service.  Phillips Ormonde & Fitzpatrick were advised on 24 June 1997 of the Office’s action.

On 18 July 1997, Mr Ian Tannahill of Pizzeys, patent and trade mark attorneys, sent a letter which said that his firm had assumed responsibility for the matter on Mr O’Mahoney’s behalf.  In an accompanying statutory declaration, Mr Tannahill outlined conversations between himself and Mr O’Mahoney and various events which he said had contributed to Mr O’Mahoney’s failure to file (sic) the evidence in support in time due to circumstances beyond his control.  The conversations and events reported in Mr Tannahill’s declaration indicated that Mr O’Mahoney had been left stressed by certain incidents, and that it was difficult for him to recall events and the dates upon which they occurred during the period 3 March 1997 to 3 June 1997.  Phillips Ormonde & Fitzpatrick advised, on 14 August 1997, that Intencity objected to the extension being granted, sought a hearing in the matter and paid the hearing fee.

There then followed some exchanges of correspondence between the Office and the parties, during which time Phillips Ormonde & Fitzpatrick restated its request for an oral hearing maintaining that its client’s case could be best made at such a forum.  Finally, the Deputy Registrar, Hearings, decided that such a hearing was the best way for all parties to have reasonable opportunity to make representations in the matter.  On 24 October 1997, Mr O’Mahoney filed what appeared to be submissions in the matter in lieu of appearing at the hearing.  He indicated in this correspondence that he had suffered an illness “which is life threatening”.  However, he did not advise whether or not he was intending to appear at the hearing to present his case in person.

The matter was set down for hearing before me, as the delegate of the Registrar, in Canberra on 28 October 1997.  Mr Malcolm Bell of Phillips Ormonde & Fitzpatrick appeared on behalf of Intencity.  Mr O’Mahoney did not appear but relied upon his written submissions.  I will now attempt to briefly summarise the submissions made by both parties in the matter.

Submissions
Mr Bell said that reg.5.15 and not s.224 appeared to be appropriate piece of legislation which referred to a situation like the present where an application was made for an extension of time to serve evidence, and also if it was made out of time.  It was only required in reg.5.15 that the Registrar be “reasonably satisfied” that the grant of the extension was appropriate.  He said that the Act and regulations were silent as to what criteria needed to be satisfied to convince the Registrar of this and also what documentation was required in support of an application for such a grant.  However, he said various materials put out by the Trade Marks Office indicated that a declaration should be submitted to the Office with the application for extra time, giving a full explanation of the reasons for the extension.  He said that, notwithstanding the lack of mention in the legislation of the procedure to be followed in such a circumstance, it could be inferred that similar conditions should apply to late applications to serve evidence as did for an extension of time sought under s.224.  These were that it should be shown that the extension was required because of circumstances beyond the control of the person involved, or that special circumstances existed that justified the extension of time.

Mr Bell referred to the similar extension of time provisions contained in the Patents Act 1990.  This legislation was also silent on the issue of what needed to be shown before the Commissioner could be satisfied that the extension was warranted.  However, Part 8 of Volume 3 of the Australian Patent Office Manual of Practice and Procedure said that an applicant for a similar extension to the present one, apart from needing to establish grounds sufficient for the extension to be granted, should also show that special circumstances existed which prevented the application being made before that time.  He said that, because the Trade Marks legislation was intended to follow the Patents legislation wherever possible and that both present Acts were silent on the issue in question, it was reasonable to assume that Trade Marks practice should follow that laid down in the Patents Manual and that special circumstances should be shown in cases such as the present.

He said that, with respect to such extensions, there were two things that an applicant needed to show: why the extension was necessary; and why, in the circumstances, it had been made late.  This, he said, had been pointed out to Mr O’Mahoney in the Office letter of 24 June 1997.  He said that the onus was on an applicant to show that it qualified for the allowance of an extension by making out a proper case.  For support, he referred to such cases as Ferocem Pty Limited v Commissioner of Patents (1994) AIPC 91-057 and Vangedal-Nielsen and Others v Commissioner of Patents and Another (1980) 33 ALR 144. He said that, in the present case, Mr O’Mahoney had opposed an application to remove a trade mark from the Register. The onus was therefore on him to show use of the trade mark. This, Mr Bell said, should not have been a difficult thing to do if use had indeed taken place. However, despite having the statutory three months to do so, Mr O’Mahoney had not served the evidence upon which he was relying to show use and he had now made an application, out of time, to extend the period. Mr Bell said that Mr O’Mahoney had later produced some evidence, in the form of a declaration containing statements as to use by him, but which made no reference to exhibits, supporting declarations and the like, and which did not address the relevant time period under s.92. Indeed, he said, such a declaration could have been made on the day that Mr O’Mahoney filed his notice of opposition. He said that the evidence for which the extension is apparently sought was at the very weak end of showing use and did not even approach overcoming the onus on the opponent to a removal.

Mr Bell said that, at various times during the period for serving evidence, Mr O’Mahoney had been legally represented, although he had apparently dismissed his solicitors and attorneys at times unknown.  Despite this, the initial declaration in support of the application, presumably prepared with legal assistance, had not set out why the original three months allowed had been insufficient.  He said that, in the case of Gordon & Rena Merchant v Barrymore Pty Ltd 28 IPR 71, regarding a late application for an extension to serve evidence in answer, the Hearing Officer had said that, despite a liberal interpretation of the expression “special circumstances”, solicitors were expected to be aware of and able to apply the regulations. He said that the only declaration supporting the lateness of the extension had been made by a registered patent attorney, Mr Ian Tannahill of Pizzeys, Patent and Trade Mark attorneys. He said that this person should have known the type of circumstance which would equate to circumstances that were special or beyond the applicant’s control. However, Mr Bell said that this declaration was inadequate because the best person to give an account of the circumstances outlined there was the applicant himself. Mr Bell said that Mr Tannahill had merely reported what Mr O’Mahoney had told him and Mr Bell alleged that he had been careful not to say that he believed this information. This, he submitted, brought the probity of the declaration into question, despite the flexibility given to the interpretation of such evidence by the Registrar. He said that the declaration certainly did not show that circumstances had existed which prevented the application being made on time and there was no other documentation regarding any medical or other condition which may have exacerbated matters. He said that the majority of the circumstances outlined did not reach the threshold for being those which were special or beyond Mr O’Mahoney’s control. In fact, for much of the time that the extension was sought, Mr O’Mahoney had been on holidays within Australia and presumably stress-free. Additionally, the declaration made by Mr O’Mahoney on 11 June 1990 did not say why he needed the extension of time, just that he wanted “to adduce particular evidence”.

Mr Bell said that a good summary as to the requirements that an applicant needed to fulfil, in relation to a late application for an extension of time, were contained in the Office decision Lord Bloody Wog Rolo v United Artists Corporation 1987/88 11 IPR 516 at 519, especially where it mentioned the onus on an applicant to show what progress has been made in the gathering of evidence when seeking an extension, and also where the Hearing Officer there had said that, “(a)n extension of time may not be granted simply in order to make good a careless oversight or a mere casual regard for the times prescribed by the act and regulations”.

Mr Bell listed several precedent cases where there had been a late extension sought to file evidence on the grounds of special circumstances and where the concept of such circumstances had been considered, including Genentech Inc. vs Wellcome Foundation Ltd (1988) 11 IPR 401, Jess v Scott (1986) 70 ALR 185 and D'Urban Inc v Canpio Pty Ltd (1990) AIPC 90-658.  However, he said the present case could be distinguished from those where the extension sought had been allowed on the ground of special circumstances.  This was because, here, there had been no case at all made out to justify the granting of the extension sought and no real explanation as to why it had been made late.  Mr Bell concluded his submissions by seeking costs in the matter on behalf of Intencity.

In his written submissions, Mr O’Mahoney said that the Trade Marks Act was, “...black and white (in) stating (an) extension of time shall be granted for unforseen circumstances outside the owners control.”  He cited death as an unforseen circumstance and said that an extension of time would be granted on such an occasion.  He also said that the evidence of use of his trade mark had been sent to the Office via his Sydney legal representation approximately three months prior to the closing date.  This had been followed by his illness which was life threatening.  Consequently, he had been prevented from corresponding directly with AIPO, leaving his trade mark attorney to pass messages via three or four people.  He said that the Office now had sufficient information according to the Trade Marks Act for the extension of time to be granted as well as evidence (of use) from many customers in the way of statutory declarations.

Discussion
By virtue of s.224(8) of the 1995 Act and reg.21.28(f) of the regulations, an application for an extension of time for the service of evidence in opposition proceedings is excluded from the operation of s.224 of the Act and is governed instead by reg.5.15 which provides as follows:

Extension of period to serve evidence and service of further evidence

5.15   (1)     A party to the opposition proceedings may apply to the Registrar:

(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

(b)for permission to serve a copy of further evidence on the other party.

(2)   The Registrar may grant an application on reasonable terms specified by the    Registrar.

(3)   The Registrar must not grant an application unless the Registrar:

(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b)has given the parties a reasonable opportunity to make representations concerning the application; and

(c)is reasonably satisfied that:

(i)in the case of an application to which paragraph (1)(a) applies—the extension of the period for serving a copy of the evidence; and

(ii)in the case of an application to which paragraph (1)(b) applies—permission to serve a copy of further evidence;

is appropriate.

(4)   For the purposes of paragraph (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

(5)   If the Registrar grants an application under paragraph (1)(b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

(6)   Subregulations (2), (3) and (4) apply to an application under subregulation (5).

The present application for an extension of time for service of evidence is made under the provisions of reg.5.7 and therefore comes within the terms of reg.5.15(1)(a).

It is true, as Mr Bell submitted, that the Act and regulations are silent as to what needs to be shown in an application for an extension of time to serve evidence if it is made late.  The legislation does not mention the circumstance of an application being made out of time, merely stating in reg.5.15 that the Registrar must not allow an extension unless he or she is reasonably satisfied that the extension is appropriate.  Therefore, the Registrar is bound under the legislation to refuse an application containing grounds which fall short of achieving this.  In the Official Journal of Trade Marks of 8 May 1997, an Official Notice advised that, following a revision of previous practice which obliged applicants for extensions of time under reg.5.15 to support all their applications with declarations, the practice was being changed to not require this until various time limits had expired.  However, the Notice did state that,“(a)ll applicants for an extension of time are required to give a full explanation of why additional time is required.”  Additionally, in the case of all late applications for extensions of time, the requirement for declaratory support was maintained.  The Trade Marks Office Draft Manual of Practice and Procedure says, in para.3(1), that, “if the application is late, sufficient reasons (should be given as to) why the application could not have been made in time”.  All of this supports the general principle that, if there is a time period in the Act or regulations by which something must be done then, if it is not, the full circumstances of the delay should be given to the Registrar to enable him or her to be reasonably satisfied that it is appropriate to grant the extension, despite its lateness.  Mr Bell has argued that the circumstances which needed to be outlined, should be “special” or “beyond the control of the person concerned”, as in the case of an extension of time for doing a “relevant act” under s.224.  I cannot agree that this is the case.  Parliament has seen fit to require the Registrar to determine whether the grant of an extension is “appropriate” in the circumstances.  This means, I think, that all of the surrounding circumstances should be examined before coming to a decision in the matter.

Mr O’Mahoney has furnished a statutory declaration which would appear to be an attempt to show why the application was made out of time.  This is the declaration by Mr Tannahill of Pizzeys.  There, Mr Tannahill outlines a series of events which, it could be inferred, go towards explaining why the delay occurred.  He states at para. 5 of his declaration that it is an account of several conversations which he had with Mr O’Mahoney and his impressions of these.  I must agree with Mr Bell here that it is significant that Mr Tannahill does not say that he “believes to be true” what he is recounting but, in most instances, “I gather...”.  One of the latter instances was where Mr O’Mahoney said to him that he had entrusted the matter of the preparation of the evidence in support prior to the due date with his solicitor but that relations broke down between the parties.  Mr Tannahill said that Mr O’Mahoney, “...found it difficult to deal with the problems he was having with his solicitor and (had) to terminate the relationship.”  Mr Tannahill later stated that Mr O’Mahoney learned, at some stage after the evidence was due, 14 April 1997 and before 14 June 1997, that his solicitor had not attended to the filing of the evidence.  He then handled the matter himself.  Mr Tannahill further declared that he believed that Mr O’Mahoney found it difficult to recall events and the dates upon which they occurred during the period 3 March to 3 June 1997, and that the failure to attend (in time) to the “lodgement” (sic) of the evidence in support was due to circumstances beyond Mr O’Mahoney’s control.

There has been no explanation given as to why Mr O’Mahoney could not have, himself, made a declaration attesting to the alleged events.  This would have been more credible and convincing than a second hand retelling of a series of events, most of which Mr Tannahill has omitted to say he believes.  Mr O’Mahoney has said in letters to the Office that he has a medical condition which is life threatening and could produce certificates to this effect.  However, there has been nothing filed at all to support this contention.  Although I have said that I do not believe that “special circumstances” should be shown in such a case under the Trade Marks Act 1995, I do think that the state of affairs which prevented the application being made in time should be of reasonable moment.  Thus, some degree of similarity may be inferred between the series of events which might delay a matter and the special circumstances referred to in the 1955 legislation.  In Genentech Inc. v Wellcome Foundation Ltd. supra, a Patents case, Supervising Examiner Roveta said that the modern interpretation of the latter expression should be sufficiently liberal to include errors or omissions made by an applicant for extension, or by their agent. He also expressed the view that the word "prevented" in paragraph (b) of reg.82 of the then Patents regulations (Reg. 82 of those regulations was expressed in almost identical terms to reg.69 under the Trade Marks Act 1955) should "be given a broad meaning so as to give effect to the regulation in situations where the person concerned has failed to apply on time owing to some circumstance which has prevented the knowledge of the need to apply coming to that person's attention".  A similar conclusion has been reached by the Registrar of Trade Marks in D'Urban Inc v Canpio Pty Ltd, also supra.  I note too that there is, in the Genentech case, supra, a real emphasis on justice in the final outcome.  However, this concept must extend to both sides in a dispute.  Given my formerly stated reservations about the account of the events related to Mr Tannahill and repeated in his declaration, and the lack of any other convincing material at all as to the events surrounding the late application, it would seem to me to be unjust to the other side in the matter to take at face value the account given by Mr O’Mahoney.  All the evidence points to the situation as being similar to that in the case of Gordon & Rena Merchant v Barrymore Pty Ltd, supra.  There, the Hearing officer found that:

Here, unlike Genentech, supra, the applicant has not acted with dispatch but has continued with a haphazard approach.  It will not assist the applicant in such a case to point to any one single factor and say "there I made a mistake”...It has been said many times in decisions of this Office that it is not open to a party to seek an extension of time simply to make good a careless oversight or a mere casual regard for the times prescribed by the Act and the Regulations.

Mr O’Mahoney was apparently legally represented at various times during the prosecution of this case.  However, he saw fit to dismiss them and pursue the matter himself.  The affair has therefore not always been given the attention that a professional acquainted with trade mark matters would give.  I sympathise with the difficulties that Mr O’Mahoney has encountered but I can come to no other conclusion, in relation to the matter of the evidence and the application for its late filing, that his problems were principally self-caused.  With respect to the reason given for the extension itself, it would seem that this was because of the alleged delinquent actions by Mr O’Mahoney’s legal representatives.  Mr O’Mahoney initially stated that the reason for the evidence not being served on time was that the original solicitor had, “...not acted in good faith and pass(ed) on the evidence (of use)” that he had instructed them to do.  However, there is simply no evidence to support this contention other than that statement in Mr O’Mahoney’s letter of 16 May 1997.

Consideration of the evidence
I cannot, however, come to a conclusion in the matter unless I take into account the public interest.  This is usually served by having all of the pertinent evidence available to the Registrar in order to determine the substantive matter.  In the same vein, in the recent case of A.Goninan & Co Limited v The Commissioner of Patents and Anor (1997) AIPC ¶91-330, the court found that it was necessary for the Commissioner to consider the nature of the evidence an opponent sought to adduce and the significance of the evidence for the opposition proceedings. That was not to suggest that the evidence had to be scrutinised in the same way as would occur at a hearing on the merits but merely to make some sort of a determination as to its relevance to proceedings.

The evidence filed so far comprises a declaration by Mr O’Mahoney, dated 3 June 1997, which gives details of the alleged use of the mark by himself and Waterski International Pty Ltd, the original applicant for registration. The declaration does not specify that the mark was in use on all of the goods for which it was registered, or mention the critical period under s.92, except to say that, “(s)ince registration of the Intensity TM, Waterski International and us are open to the public for trade. Selling and marketing surf, ski and leisure commodities with the Intensity TM sceenprinted or embroided to the products (sic)”. There is no mention of exhibits or attachments to the declaration, although there were some other documents included with it. These comprise copies of invoices for ski suits and related goods from Waterski International Pty Ltd. Nowhere does the word INTENSITY appear in this material. There is also an invoice for artwork for delivery to “Intensity Wetsuits” at an address in Albion, Queensland. These invoices do not, prima facie, show use of the trade mark on, or in connection with, the goods. The last paragraph of the declaration says that, “(t)here are further customers documentation to call upon if required to give evidence that the Intensity TM logos are attached by screen print to the products of which are for sale to both the public and retailers.” This indicates that the process of gathering evidence may yet not be finished. In his letter to the Office of 24 October 1997, Mr O’Mahoney says, “...you have sufficient information...for extension of time to be granted as well evidence from many customers in the way of Statutory Declarations. Declaring a large scale use of the Intensity TM. If required further evidence can always be submitted upon request.” These declarations, if they exist, do not appear to have been served on Intencity, or filed with the Office. Mr O’Mahoney has also filed copies of declarations dated 20 March 1997 (filed 16 May 1997) and 11 June 1997 which were apparently intended to show use of the trade mark. The information with respect to what evidence Mr O’Mahoney intends to rely upon to show use is confusing to say the least. Mr O’Mahoney has been given considerable assistance by officers of the Trade Marks Office, in letters and in telephone conversations, as to what was required of him in the matter. During prosecution of the matter he also had legal assistance from solicitors and attorneys whom he saw fit to dismiss. Despite this, he still does not appear to have gathered any material to show use of his trade mark. Without giving the evidence the same scrutiny as would need to be done to determine the substantive matter, I therefore conclude that the evidence he wishes to file and serve has little, if any, value. Given all of this, it would seem that, even if the late extension was granted, nothing would turn on consideration of the evidence sought to be relied upon.

Conclusion
I therefore find that the material and submissions made by Mr O’Mahoney are insufficient to satisfy the Registrar that there was good reason for the application to be made late and therefore that it is not appropriate for an extension of the period to serve evidence in the matter under reg.5.7. I accordingly refuse to grant the extension. Having so found, it is open to the applicant under s.92 to seek a hearing in the substantive matter in accordance with s.5(14).

Costs
The matter of Intencity’s objection to the extension of time was the subject of some correspondence between the parties.  Phillips Ormonde & Fitzpatrick submitted that an oral hearing was necessary due to the nature and circumstances of the application.  A Senior Examiner from the Trade Marks Hearings Section replied that the Deputy Registrar, Hearings, would not move to appoint a hearing unless she was satisfied that there was good reason why matters could not be adequately dealt with by written submissions.  Phillips Ormonde & Fitzpatrick replied, reiterating their request to be heard orally and alleging that the case was unusual in a number of respects.  They gave some details of why they believed that this was so.  However, the question was still unclear as to whether a hearing, with the attendant costs involved, was necessary in the circumstances.  Notwithstanding this, the Deputy Registrar Hearings decided to set the matter down to be heard in Canberra in view of the time which had by then elapsed and in the interests of bringing the matter to a speedy conclusion.  Mr O’Mahoney then made written submissions for my consideration and Mr Bell attended on Intencity’s behalf.

However, extension of time matters are not usually complex in nature and may easily be conducted by way of telephone hearings, or in written submissions.  This case was no different, despite the circumstances pointed to by Intencity’s attorneys.  Mr Bell’s submissions, as eloquent as they were, could have just as effectively been made in written form or on the telephone.  In all the circumstances of this case, all that Mr O’Mahoney is attempting to do is to defend his trade mark registration.

Therefore, taking the circumstances as a whole, and mindful of the Registrar’s general attempt to minimise costs, I have decided not to award them here, leaving both parties to bear their own.

Ian Forno
Hearing Officer

6 November 1997