Geoffrey Floyd v Water Factory Systems, Inc

[1996] ATMO 45

TRADE MARKS ACT 1955

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

Re:Opposition by WATER FACTORY SYSTEMS, INC to an application by GEOFFREY FLOYD for extension of time to serve evidence in answer to an opposition to registration of trade mark application no 562758.

Background
Application number 562758 was lodged on 2 September 1991 by Geoffrey Floyd (the applicant) for the trade mark THE WATER FACTORY and drop device, as shown below.

The trade mark was advertised accepted on 5 January 1995 for “water filtration, purification and softening apparatus in this class” in class 11. On 14 June 1995 an extension of time to lodge notice of opposition was granted to Water Factory Systems, Inc (the opponent) and on 5 July 1995 they lodged a notice of opposition under section 49 of the Trade Marks Act 1955.

Regulation 43 provides for the service on the applicant of the evidence in support of the opposition within three months of the date on which the notice of opposition is lodged. The evidence in support was duly served by the opponent on 4 October 1995.

The applicant was then entitled to three months to serve his evidence in answer to the opposition. On 28 December 1995 an application for an extension of time of three months to serve the evidence in answer was lodged by patent and trade mark attorneys Cullen & Co. They advised that they had only recently been engaged to handle the applicant’s opposition proceedings, that the applicant was going overseas over the Christmas New Year period, and that he would be discussing the preparation and lodgement of the evidence in answer immediately upon his return. Accordingly, more time was required to prepare and file the evidence.

On 4 April 1996, a further request for an extension of time of three months, to 4 July 1996, was lodged by the attorneys for the applicant. The opponent objected “strenuously” to that extension request. The matter was set down for a hearing before me, as a delegate of the Registrar, in Canberra on 29 May 1996. The applicant, Mr Geoffrey Floyd, represented himself at the hearing, and the opponent was represented (by telephone) by Mr Jeffrey Winch of Callinan Lawrie.

Under the provisions of section 241 of the Trade Marks Act 1995, proceedings under section 49 of the repealed Act which were pending immediately before 1 January 1996 will continue to be dealt with under the repealed Act. Therefore, any references in this decision to sections of the Act are to be taken as referring to the Trade Marks Act 1955.

Telephone submissions by Water Factory Systems, Inc opposing the extension
Mr Winch’s submissions were directed towards his client’s concern that the wording of the two applications for extension of time was very “bland”, and suggested that the inference to be drawn from them was that, to date, there had been no attempt by the applicant to collate any evidence in answer to the opposition at all.

Mr Winch outlined the opponent’s record in the prosecution of the opposition. He pointed out that his client is an overseas organisation, and that all his instructions come from its US attorneys. The evidence in support had to be collected from his client’s Australian distributor and, in general, all dealings with his client were via a very circuitous route. Notwithstanding this, his client had only required one extension of time on its part - to lodge the Notice of Opposition - and the evidence in support of the opposition had been duly served within time.

In contrast, despite having been alerted to the possibility of opposition to his trade mark application at a much earlier time, the applicant had waited until December 1995 to engage the services of an attorney. Mr Winch said that his client had considered objecting to the applicant’s first extension of time on the basis that no progress whatsoever in the gathering of evidence appeared to have been made, but had decided to wait on that occasion.

The agents for the applicant then made a second application for an extension of time of three months, to 4 July 1996. The case made out for the extension on this occasion was simply:

“My client telephoned me on 3 April 1996 and advised me that he is gathering material for this opposition. However, due to his trip overseas, this has been somewhat delayed. Accordingly, he requires further time to put together his evidence-in answer. Thus, he has requested that I apply for three months extension of time on his behalf, to file his evidence-in answer.”

According to Mr Winch, this wording was less encouraging still. There was no indication that the planned meeting with the attorney, mentioned in the first application, had actually occurred when the applicant returned from overseas in the New Year. Instead, despite the applicant’s having engaged his trade mark attorneys in December 1995, they had apparently had no active input into the proceedings, other than the preparation of the two requests for extensions of time.

Mr Winch concluded that, in accordance with the relevant case law, extensions of time should not be regarded as an automatic right. The applicant had not discharged the rising onus upon him to make out a proper case justifying the extension, and this represented a “blatant disregard” of the opposition procedures by both the applicant and his agent.

Submissions by Geoffrey Floyd in support of the extension
Mr Floyd began his submissions by explaining that he has had considerable constraints on his time because he operates a “one man business”. For the purposes of his preparation of evidence in support, this meant that he had neither the time nor the resources to devote to full-time collation of documents. Further, the records which he needed to access in order to compile his evidence had been filed in a very haphazard way; the archiving of records having been the responsibility of his (now) ex-wife during a “difficult time in their relationship”.

Mr Floyd then explained that, although he had actually been aware of the opponent’s concerns regarding his use of the subject trade mark since 1991, it was not until he had been served with the opponent’s evidence in support late last year that he became aware that it had used the trade mark in this country. It was at that point that he decided to seek legal representation. He indicated that, since engaging the services of Cullen & Co, he had already provided some potential evidence in answer to them. In response to Mr Winch’s comments that the serving of partial evidence under those circumstances demonstrates good faith that progress is being made, Mr Floyd pointed out that, despite also apparently having had several years in which to prepare its case, the opponent itself had not served its own evidence until the last day of the period allowed.

Mr Floyd concluded with the assertion that the fact that he had flown from Brisbane to personally represent himself at the hearing was a clear demonstration of his concern for the progress of the opposition proceedings. He also indicated that he was confident that he would be in a position to serve all his evidence in answer within the period covered by the disputed extension of time.

Discussion
As a delegate of the Registrar, before exercising my discretion under section 130 of the Act, I must weigh up the relative merits of the arguments presented by the parties for and against the granting of the extension of time. The issues to be determined are as outlined in the case of Lyons (trading as Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416. These are: whether a proper case had been made out justifying the extension, whether sufficient reasons have been provided, the relative inconvenience to the parties concerned, and the public interest.

I have quoted above the case made out by the applicant for the disputed extension of time. The reason given is similar to, but more detailed than, the reason favourably discussed in the Lyons case (supra), which was: “Evidence in support of the opposition is in the course of preparation but it is desired to have additional time to prepare that evidence and to serve a copy thereof on the applicant”. In that case, Beaumont J said 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 finalise 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.”

It appears that the reason given by the applicant for his extension of time comes within reasonable bounds, particularly since the extensions beyond the time permitted by the Regulations to lodge his evidence in answer (if this extension is allowed) will only have reached six months, when a pattern of much longer periods is, unfortunately, not unusual in such proceedings.

It is true that, with each additional application for extension of time, there is an increasing burden upon the party making the request to justify the need for a lengthy cumulative delay. In the present case, the reasons for requiring the second extension did indicate, in contrast to the reasons given for the first extension, that material was then in the process of being gathered by the applicant. Also taking into account Mr Floyd’s further explanation of the situation, as discussed above, I am satisfied that the applicant has satisfied the rising onus to justify his requirement for the second extension of time.

In arriving at my final decision, I must also give weight to the other factors mentioned in Lyons (supra). With regard to the relative inconvenience to the parties, Mr Winch did not offer any opinion on the likely inconvenience to his client if this extension is granted, beyond conveying its obvious annoyance at the applicant’s apparent prevarication, when it (the opponent) “has played ball all the way along the line”.

In contrast, if this extension is not granted, the applicant will lose his opportunity to serve any of the evidence in answer to the opposition, and may thereby ultimately be refused registration. I believe that he would certainly view this as an inconvenience. On balance, then, I believe that denial of the extension will cause greater hardship to the applicant, than allowance of the extension will cause the opponent.

I must also consider the question of public interest. In this regard, it is true that it is in the public interest that proceedings such as these proceed efficiently, and without undue delay. However, as the opponent’s Notice of Opposition indicates, it claims proprietorship of the subject trade mark, and has itself lodged a trade mark application featuring the words “WATER FACTORY”. Given these circumstances, I consider that the public interest would be best served if both parties in the dispute are allowed to present their arguments and evidence as fully as possible (Rollbits Pty. Ltd. v Rowntree Macintosh plc (1986) AIPC 90-291).

Decision
Having considered all the facts surrounding this case, I have decided to grant the application by Geoffrey Floyd for an extension of time to serve evidence in answer to the opposition by Water Factory Systems, Inc. Accordingly, the final date for serving the evidence in answer (as I advised the parties some time ago) is 4 July 1996. It is usual for costs to follow the result in these matters and, accordingly, I award costs to the successful applicant.

Claudia Murray
Senior Examiner
30 August 1996