Goldmine Software Corporation v South & Walker Pty Limited

[2000] ATMO 52

TRADE MARKS ACT 1995

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

Re:A delegate's intention to refuse an application for a late extension of time to file notice of opposition by South & Walker Pty Limited to an application by Goldmine Software Corporation for the removal from the Register of registration number 704383 from the Register of Trade Marks

Background

An application for the removal from the Register of trade mark registration number 704383 was filed on 16 July 1999, under s.92 of the Act, in the name of Goldmine Software Corporation (hereafter Goldmine).  The registered trade mark was the word combination GOLD-MINE in Class 9 and it included, in its specification, the goods:

Computer software and computer programs for use in the field of marketing and market research, including computer software and computer programs for the presentation and display of marketing and market research data.

The application for removal was advertised in the Australian Official Journal of Trade Marks (hereafter the Official Journal) of 12 August 1999 and any notice of opposition to the removal of the mark, or an application pursuant to s.224 of the Act for extending that time for filing a notice of opposition, was therefore due to be filed by 12 November 1999. No such notice of opposition or application was filed by the due date and the registration was removed and advertised as such in the Official Journal of 16 December 1999.

On 13 December 1999, a late application under s.224(2) for an extension of time of one month within which to file a notice of opposition to the removal application was filed by Foulsham & Geddes, Solicitors, on behalf of South & Walker Pty Limited (hereafter South & Walker). This application was based on the grounds that the failure of the applicant or its agent to file the notice of opposition by the due date was the result of an "error or omission" and that "special circumstances" existed which justified an extension of the time allowed. This application was accompanied by a declaration by Ian Foulsham, a principal of Foulsham & Geddes, dated 13 December 1999. Also included was the notice of opposition for which the extension was sought.

Mr Foulsham declared as to the history of South & Walker, its goods and also its GOLD-MINE trade mark.  He then gave details of contact made of South & Walker by a company called Bendata Asia Pacific (Bendata), which owns Goldmine, and a computer software product called GOLDMINE.  He further mentioned a meeting and correspondence between the parties, and a proposal for a settlement of the dispute between them, made by Bendata, which South & Walker found to be unacceptable.  Mr Foulsham then detailed various items of correspondence between the parties to the dispute, and also from himself.  He then outlined his various actions, inaction and assumptions in relation to the non-filing of the notice of opposition by the due date.

The grant of the extension would mean that the Registrar would be required by s.98 of the Act to restore the trade mark to the Register.  The Trade Marks Office then sought, on 20 December 1999, comments on the matter from the removal applicant.  A letter from Freehills Patent Attorneys, acting for Goldmine, was received by the Office on 10 January 2000.  It gave several reasons why the extension sought should not be allowed.

On 1 February 2000, a Senior Examiner of the Hearings Section sent a letter to Foulsham & Geddes saying that she had considered the submissions made by both parties. She said that she had not been convinced that South & Walker had made out a case to support the grounds that either an error or omission had occurred, or that their were circumstances beyond its control, any of which might have prevented the filing of the notice of opposition by the due date. She explained her reasoning there and advised that she intended to refuse South & Walker's request for the extension unless more detailed and compelling reason were supplied in declaratory form. She allowed 14 days for South & Walker to comply. Mr Foulsham replied on behalf of South & Walker in a letter dated 10 February 2000, saying that he did not appreciate that his previous statutory declaration was "expected to include submissions" and that the application for the extension should be considered under both the provisions of s.224(2) and (3). He included another statutory declaration which reiterated, in some detail, some of his previously-described actions. He also related the advice given by counsel whom he had consulted on the matter. Mr Foulsham, in his declaration, outlined certain of the circumstances relating to South & Walker's failure to apply for the extension within time. He said that these amounted to an error or omission by him as agent, circumstances beyond South & Walker's control, as outlined in s.224(2); and also special circumstances, within the meaning of s.224(3), all of which justified the extension sought. He annexed to his declaration several exchanges of correspondence between the parties in dispute. In the covering letter of 10 February, Mr Foulsham had also requested that if, after considering the matter, the Office still intended to refuse the application, then a hearing be set down to allow the matter to be fully argued.

The Senior Examiner from the Hearing Section, who had previously considered the matter, replied on 17 February 2000. She said that she had considered Mr Foulsham's submissions but that she was of the opinion that they still did not meet the requirements of s.224(2) and (3). She explained her reasoning in some detail and cited various precedent cases which she had considered in coming to her position. She said that the matter would be set down for a hearing by a delegate of the Registrar and that the s.92 applicant would be given the opportunity to appear at the hearing if it so wished.

The matter was eventually set down to be heard in Canberra on 22 March 2000.  Mr Ron Webb of counsel, instructed by Mr Ian Foulsham appeared on behalf of South & Walker, the applicant for the extension and the prospective opponent.  Mr Peter Hansen of Freehills Patent Attorneys represented Goldmine, the applicant for removal which had also objected to the extension being granted.

It is standard Office practice to allow an objector to such an extension of time to attend and be heard at a hearing in the matter, even if the delegate has also advised that s/he is intending to refuse the extension.  The Trade Marks Office Draft Manual of Practice and Procedure (the Draft Manual) says, at para 3.5 of Part 49, inter alia:

The Registrar will give the removal applicant an opportunity to make representations about the extension but neither the Act nor the Regulations specifically provide for it to be heard on the grant of the extension.

The Registrar must, however, allow the applicant for extension the opportunity to be heard if he or she intends to refuse the extension (section 203). If, under these circumstances, the applicant for extension requests a hearing, and pays the appropriate fee, the removal applicant will be advised that a hearing has been set down. Should it wish to do so, and upon payment of the required fee, the removal applicant may then also request to appear and be heard at the hearing. Costs are unlikely to be awarded in such a case.

If the extension has been applied for under the provisions of subsections 224(2) or (3), and the period of the extension exceeds three months, it must be advertised in the Official Journal for opposition purposes.

Submissions
I will attempt here to summarise the major points made in the quite lengthy submissions put forward by both parties - in particular Mr Webb.

Mr Webb said that the present application was being made on only two bases. These were, firstly, that the filing of the notice of opposition had not happened by the due date because an error or omission had occurred - as countenanced by s.224(2)(a); or that the Registrar should be of the opinion that special circumstances existed that justified an extension of time, in order that the filing should take place - s.224(3).

He said that, in respect of special circumstances, the Registrar only needed to believe that they existed - not that they prevented the doing of the relevant act.  He said that Mr Foulsham's two declarations outlined the chain of events which led up to the non-filing of the notice of opposition.  He said that from this it could be seen that an error or omission had occurred and there existed the special circumstances required by the Act which justified the extension.  He said that there was no intent on behalf of South & Walker to abandon either the opposition or its registration.

On whether an error or omission had taken place in relation to the application for an extension being made outside the allowed time, Mr Webb pointed to what he said were actions, performed by Mr Foulsham, which he said were clearly errors or omissions.  He said that the sequence of events showed that South & Walker had a fixed and continued intention to protect its registration.  He said that negotiations had been taking place between the parties and that South & Walker had been in contact with its solicitor.  It had been in this context that it had received and not closely examined the s.92 application, relying upon its solicitors in the matter to preserve its position.  Mr Foulsham had, in his turn, not closely examined the document but had taken advice from counsel which discussed the transfer of the dispute to the forum of the Federal Court.  Mr Webb said that, while South & Walker had not given any explicit instructions to Mr Foulsham to oppose the removal action, the handing of the carriage of the matter to Mr Foulsham implied that it wished him to do whatever was necessary to preserve its position.  He said that this involved its clear intention to provide the protection for its registered mark against its removal from the Register.  He said that Mr Foulsham had made an error in thinking that the matter would be dealt with in the Federal court and he pointed to several decided cases which he said supported his submissions in the matter, including Working Systems Software Pty Ltd 39 IPR 387 and Balanced Essential Holdings Pty Ltd v Calvin Klein Trademark Trust 43 IPR 632.

Mr Webb submitted that the discretion of the Registrar in such matters should be exercised in a judicial manner, taking into account several considerations - including that the words "error or omission" should be given their ordinary meaning.  He referred for support here to such precedent cases as the Hall's Appl'n 40 IPR 210 and Sanyo Electric Co Ltd and Commissioner of Patents 36 IPR 470. He said that here South & Walker had always regarded the disputed mark, which it had used since March 1996, as valuable property and that it had always intended to resist any actions which might threaten its position. He said that the case should be allowed to proceed on its merits and should not be defeated on a procedural matter. He said that there would not be any greater disadvantage to Goldmine if the extension of time was granted.

With respect to South & Walker's claim that special circumstances prevented it from applying in time for an extension of time, Mr Webb said that the state of affairs outlined in the two declarations of Mr Foulsham equated to special circumstances - as contemplated in such authorities as Genentech Inc. v Wellcome Foundation Ltd (1988) 11 IPR 401, Australian Professional Rodeo Association Inc v Wrangler Apparel Corp 36 IPR 282 and Appl'n by BS Grant Services Pty Ltd 39 IPR 656. Mr Webb said that, while it was true that the Genentech case, supra, was different on some facts to the present instance, there were sufficient points of similarity to provide guidance. He said that that case did show that the shortcomings of solicitors and clients equated to errors or omissions in terms of s.224(2). He submitted further that, in the case of Hall's Appl'n, supra, the Hearing Officer there had referred to the larger context when defining whether special circumstances existed.  He said that the broader circumstances here included the ongoing battle between the parties and the undoubted intention of South & Walker to preserve its position with respect to its registration.

Mr Webb also referred to the Registrar's discretion in the matter and to the Official letter of 17 February 2000, where the Senior Examiner there had referred to the section on "special circumstances" in the Draft Manual.  He said that circumstances which were "special" were unconfined in the Act, and thus could not be restricted to the examples in the Draft Manual quoted by the Senior Examiner.  He said that the legislation clearly contemplated the extension of time in such matters and the present instance was a clear case of where such an extension was appropriate.

Mr Hansen, in his submissions in reply, said that the disputed application for an extension of time did not specify the period of extension sought and as the due date for filing the notice of opposition was 12 November 1999, then at least a four month extension would be required if the notice of opposition had not yet been filed.  He said that this would extend the law and the scope of the precedent cases cited.

He submitted that there were two issues to be considered in coming to a decision regarding whether an error or omission had in fact occurred.  These were whether the formation of a fixed intention to oppose the removal application - as opposed to a general intention - and the alleged error that had prevented the notice of opposition being filed by the due date had both existed before that date.  He referred to several precedent cases in relation to his arguments on the first point, including Balanced Essential Holdings v Calvin Klein Trademark Trust, supra, and Appl'n by Mission Personnel Services Pty Ltd 42 IPR 255. He argued that there was nothing in the evidence here to show that there had been a definite intention by South & Walker to oppose Goldmine's removal application.

With respect to whether an error or omission had been made prior to the critical date, Mr Hansen said that the evidence revealed that, given the course of events, South & Walker had shown an overall lack of regard to the issues surrounding the s.92 application for removal.  He said that this lack of regard meant that an error or omission had not occurred before the due date for the service of the notice of opposition.  He argued that there had been no intention formed by South & Walker to oppose the removal application and, if there had been one, then it had been after that date.  He said that an intention to oppose needed to be frustrated by the error or omission claimed - for example, a wrong diary entry.   He said that there must be a limit in such cases, otherwise an error shown to be made at any time would mean that any extension would have to be allowed.

With respect to whether, as contemplated in s.224(3), the Registrar might consider that there were any circumstances which could be considered "special" which might have prevented the filing of the notice of opposition by the due date, Mr Hansen said that any consideration should be based on whether the mark was in use and the circumstances of its use. He said that, on the question of whether special circumstances existed, evidence had only been taken from one side despite both parties being referred to in relation to them. He submitted that this was a denial of natural justice. He said that there were other options open to South & Walker if the present extension was refused.

Mr Hansen submitted that due dates were laid down in the legislation for a purpose and they were not mere technicalities to be overcome easily.  He said that the Registrar's discretion should not be exercised lightly and it was only in extreme circumstances that assistance should be given to a party which had failed to comply with the legislation.  He distinguished the present case on the facts from the Hall's Appl'n and the Genentech cases, both supra, saying that the latter case was largely related to diary entries.  He said that it was not true that any failure of a solicitor to act correctly on behalf of a potential opponent could be termed an error or omission.  This interpretation was far too broad in scope, especially when all of the facts, as they related to the claim of special circumstances, were not available to the Registrar.

Discussion
I will firstly deal with Mr Hansen's claim that the extension sought will ultimately be for a period in excess of three months should I decide here to grant it.  I note that the notice of opposition was due for filing on 12 November 1999, while the application for the extension of that time was filed on 13 December 1999.  On that day and under the same covering letter, the notice of opposition in question was received.  Given that that day was the first working day after a calendar month had elapsed, it equated to one month of extension sought.  The notice has accordingly been included with the case file.  However, it cannot be taken as filed or otherwise until the matter of the allowability of the extension is resolved.

That the matter has taken this long to come to a hearing and then for a decision to issue is out of South & Walker's control.  Accordingly, should I find in favour of granting the extension, I would agree with Mr Webb that the period sought of one month's extension of time is appropriate.

This is a late application for an extension of time to file a notice of opposition to an application to remove a trade mark from the Register under s.92. It has been sought under the provisions of s.224(2)(a) and 224(3) of the Act. The relevant parts of s.224 read as follows:

Extension of Time

224.
…
(2) If, because of:

(a)         an error or omission by the person concerned or by his or her agent;…  …

a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

(3) If:

(a)         a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and
(b)         on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;

the Registrar may extend the time for doing the act.

(4) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

…

[224] (8) In this section:
relevant act means:
(a) any act (other than a prescribed act) done in relation to a trade mark; or

(b) the filing of any document (other than a prescribed document); or

(c) any proceedings (other than court proceedings).

A notice of opposition to an application to remove a mark from the Register, under s.92 of the Act, is such a relevant act that is required under the Act to be done within a particular time limit.  South & Walker have claimed that the reason that the extension has been sought was because an error or omission had been made by its legal representative and that special circumstances justified that extension.  Mr Webb has said that the error or omission was made by its attorney, Mr Foulsham, because he failed to carry out certain actions which would have preserved South & Walker's registration.

Delegates of the Registrar have considered the concept of “error or omission” on the part of an applicant or its agent in relatively recent decisions, such as Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595 and Hall's Appl'n, supra.  In the Crown & Andrews case, supra, the Registrar's delegate referred to the decision by a delegate of the Commissioner of Patents in Biosys v Ecogen Australia Pty Ltd 26 IPR 668, which dealt with reg 5.9(1)(a) of the Patents Regulations, and an application for amendment to the grounds of opposition. In that case, the delegate held that:

The term “error or omission” has been considered many times in decisions concerning s223 (and its equivalent, s160 of the Patents Act 1952 (Cth)). I consider that it would be inappropriate to give a different meaning to the term “error or omission” when used in reg 5.9(1)(a)...Thus, it is apt to apply the following formulation: “an error or omission has been considered to have occurred where there has been a breakdown in procedure in effecting a party’s intention” : Stork Pompen BV v Weir Pumps Ltd (1988) 11 IPR 542 at 546; this point was not overturned in the decision of the AAT reported at 13 IPR 163. As a consequence, the intention of the party with respect to doing some act is an essential preliminary to the demonstration of an error or omission. I think that the letter from the opposition clerk expressed the situation accurately when it said “the matter of whether or not there has been an error or omission should be assessed by having regard to the actions and intentions of the opponent on or before the date of filing the statement of grounds and particulars”.

In the Weir Pumps case, supra, the applicant for a late extension of time to file notice of opposition to a patent application relied on a deliberate decision not to instruct their attorneys to conduct a search, or to keep a watch on potentially conflicting applications in the field of interest to them, as being an error or omission.  They subsequently became aware of the acceptance of such an application after the opposition period had passed.  The delegate, in his decision there, said that an error or omission can be said to have occurred when an intention to carry out a certain action has been frustrated by either an error (e.g., the act has been done incorrectly, or mistakenly done outside the time allowed), or due to an omission (e.g., the act has not been done due to neglect or inadvertence).  An application for review of the delegate’s decision was made to the Administrative Appeals Tribunal, where the Deputy President of the Tribunal affirmed the decision of the delegate.

The words of Jenkinson J in Kimberly-Clark v Commissioner of Patents and Anor. (No 3) 13 IPR 569 indicate that the words “error or omission” should be given their plain, ordinary meaning and are not to be taken as a term of art. They should not be restricted by construction to certain categories of aberration of thought or behaviour such as misunderstanding, ignorance of the law, confusion or deception etc, or to mere inadvertences or accidental slips. Moreover, the error or omission must be obvious.

If it can be shown that there has been an error or omission, it must also be shown of course that the error or omission was the cause of the late filing of the extension application.  In the Kimberly-Clark case, supra, Jenkinson J had to consider the words “by reason of” - which were the words used in s160 of the 1952 Act.  He referred to the words of Beaumont J in Lyons v Registrar of Trade Marks (1983) 50 ALR 496 at 509 in relation to the same wording in s131 of the Trade Marks Act 1955:

The meaning of the phrase “by reason of” has been considered in a number of authorities.  In Main Electrical Pty Ltd v Civil & Civic Pty Ltd (1977) 19 SASR 34, Bray CJ (at 49) said that the phrase implies a relationship of cause and effect but it is a relationship which may be indirect: see The Diamond [1906] P 282; see also Vickers v Young (1982) 43 ALR 389 at 407; In R v Justices of the Peace at Yarram; Ex parte Arnold [1964] VR 31, Sholl J held (at 24) that “by reason of” could extend to consequential matters. In my opinion, the phrase, where used in s131, should be given the meaning explained in these cases.  (Emphasis added).

Jenkinson J went on to say that, in his opinion, it was sufficient to come to the conclusion that some prior error or omission had contributed to cause the failure to lodge the notice, even if other circumstances also apparently contributed to the making of the relevant decision. All that was required was that, once an error or omission had been established, there was some link between that error or omission and the failure to lodge the notice of opposition within the legislated three month period. Although the words now used in s224 of the Trade Marks Act 1995 are “because of” I do not think they make any material difference to the application of the decided cases on the earlier provisions on error or omission.

Jenkinson J also held that the failure to do an act or to take a step was not of itself an “error or omission”:

Mr Handley submitted that the failure to do the act or to take the step postulated in respect of an application for exercise of the power conferred by s160(2)(a) cannot itself be the “error or omission” by reason whereof the failure occurred. I accept that.

Likewise, in Toyo Seikan Kaisha Ltd v Nordson Corporation 5 IPR 388, the delegate of the Commissioner of Patents held that the plain meaning of s160(2) of the Patents Act 1952 required the establishment of some error or omission before the failure to perform the act or step and that the “error or omission” must be the cause of the failure to perform the act or step in good time. The failure to lodge notice of opposition in time cannot of itself be treated as the “error or omission” for the purposes of s160(2). This was also the case in the decision of the delegate of the Registrar in Stadium Sports Franchising Pty Ltd v Stadium Australia Management Ltd (1997) 37 IPR 345 at 351.

The Toyo case, supra, was cited with approval by Pincus J in Danby Pty Ltd v Commissioner of Patents & Anor 12 IPR 151 in which it was held that to satisfy the requirement of “error or omission” it is enough to show that the person desiring to oppose the grant of a patent had given appropriate instructions to that end, and that by an error of some kind such instructions were not carried out.

The situation in the present instance is that Mr Foulsham carried out several actions following receipt from South & Walker of Goldmine's application for removal.  He says, in his declaration, that those actions included consulting counsel, writing a letter to Goldmine and, although it is unclear whether he made any physical arrangements, preparing to refer the matter to a court.  The latter action was suspended upon the receipt of letters from Goldmine's legal representatives which Mr Foulsham believed obviated the need for those proceedings.  Mr Webb has said that South & Walker had a continued intention to protect its registration, evidenced by the ongoing negotiations between the parties, and that Mr Foulsham had made errors or omissions in failing to properly perform certain activity which might have furthered that intention.  On his part, Mr Hansen has said that there needed to be a specific intention by South & Walker to oppose Goldmine's removal application in order for there to be an error or omission, as countenanced by the legislation, and not just a general intention to preserve the status quo.

I think that this case can be distinguished from the situation in Mission Personnel Services, supra, where the necessary causal link, established in the case law, was missing from the equation.  I think that Mr Foulsham's letter of 5 August 1999 to Goldmine's attorney that he had instructions (from South & Walker) that, "…unless an undertaking…is received…an application will be made to the Court on our client's behalf without further notice".  He did not say what that action would involve but, in the context of the barrister's memorandum of advice included in Mr Foulsham's declaration - which had been also received by telephone prior to Mr Foulsham's letter to Goldmine - it can be inferred that this would involve "an injunction (interlocutory and final) restraining Goldmine Software from using the mark 'Gold-Mine' or the mark 'Goldmine' in relation to software of the relevant type".  The barrister had continued that he considered it likely that, once Federal Court proceedings were commenced in the matter, then "…the proceedings in the Registry for removal of the South & Walker trade mark will be removed into the Federal Court proceedings to be dealt with as a cross-claim".  Given Mr Foulsham's previous actions on behalf of South & Walker and the reported advice to him from counsel, I believe, contrary to Mr Hansen's claims that there was only ever a general intention to resist moves by Goldmine to remove the subject mark from the Register, that that party had demonstrated a definite interest in opposing any removal action - be it in the Federal Court, or before the Registrar.

The question then is whether Mr Foulsham's subsequent behaviour, as South & Walker's agent, constituted an "error or omission' contemplated in s.224(2). Mr Foulsham claims, in his declaration, that various steps that led up to his non-filing of the notice of opposition to the removal application - including that he, "…assumed that there would be Federal Court proceedings given what had happened" - contributed to his error or omission. In short, he appears to have thought that the matter of the s.92 application would be included with other Federal Court matters which South & Walker was considering. He then did not return to deal with the non-use application - including the requirement to file notice of opposition by the due date - after the commencement of negotiations between the parties to resolve the dispute. Mr Foulsham does say in his declaration that his "…focus was diverted from the fact of the non-use application and its requirements…" - which presumably means that he was busy with other things. He further declares that, because of this and other "causes", including advice from counsel that the affair would most likely be dealt with in the Federal Court, he failed to identify the requirement to file a notice of opposition by the due date.

I have inferred, from Mr Foulsham's declarations and from Mr Webb's submissions at the hearing, that Mr Foulsham has had little experience in prosecuting trade mark matters and that, as shown by his comments in his letter of 10 February 2000, he was picking it up as the matter progressed.  It is not for me to say whether he should have had a better diary system in place, if he had one at all, or whether he should have concentrated more on the matter of the removal application other than the bigger picture - which he seems to have been more concerned with.  However, what I can say is that I believe there is just sufficient in Mr Foulsham's neglect to act in the matter to say that he committed an error or omission as the legal representative of South & Walker, apparently because he wrongly believed that the matter was to be dealt with in a court.  Thus there has been demonstrated, in my opinion, a causal link between an error or omission which somehow thwarted South & Walker's intention to file a notice of opposition in accordance with the Act.

Given the foregoing, I do not have to consider the matter of whether special circumstances existed that justified an extension of that time, as countenanced in s.224(3). However, I will record here that I do agree with Mr Webb's submission that the reference in the Draft Manual to the term "special circumstances" should not be taken to be a limit to the state of affairs which could be considered "special".  The mention there is as a guide only and should not be used in relation to the exercise of the Registrar's discretion.

The exercise of the Registrar's discretion
Having arrived at the conclusion that the application for extension qualifies under s.224(2)(a), I must turn my attention to the question of the appropriate exercise of the Registrar's discretion, allowed for in that part of the Act. In Sanyo Electric Co. Limited v Commissioner of Patents (1996) AIPC 91-283, which was a determination by the Deputy President of the Administrative Appeals Tribunal, the issues to be considered in such a matter are summarised concisely, at page 37,844, and with reference to other relevant law:

The decisions of the courts concerning the approach to be taken to the exercise of a discretion to extend time are now well established and include:

§  in the absence of nominated factors against which the discretion is to be exercised, regard should be had to the "subject-matter, scope and purpose of the Act" - per Mr Justice Mason (as he then was) in Minister for Aboriginal Affairs and Another v Peko-Wallsend Limited and Others (1986) 162 CLR 24 at 39-40. A further exposition of this is provided by the comments of Mr Justice Davies in Chalk v Commissioner for Superannuation ( 1994) 50 FCR 150 at 154 where he said "...the discretion should be exercised by reference to the words of the statute and the context within which the discretion is conferred";...

§  it is "more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time" (per Davies J in Chalk's case, at 156, with whom Chief Justice Black and Mr Justice Cooper agreed. Similar comments are to be found in Comcare v Ahearn (1993) 119 ALR 85, particularly at 88);...

§  a legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially ( Davies J in Chalk's case at 155).

Additionally, I have had regard to D.R. Shanahan's comments on the exercise of the Registrar's discretion.  In Australian Law of Trade Marks and Passing Off, at page 81, he says:

Where the Registrar does exercise a discretionary power under the Act, the primary concern will be the public interest, but other circumstances may be relevant, including the bona fides of the parties, the position in other jurisdictions and the balance of convenience. It has been said that the Registrar's discretion should be exercised "upon judicial principles and affected neither by caprice nor over-caution" and that an application which is bona fide should not be refused on a ground which is "fanciful" or "in a business sense, unsubstantial".

This is in accordance with the guidelines given in cases such as Vangedal-Nielsen and Others v Commissioner of Patents and Another (1980) 33 ALR 144, and the Lyons case, supra.  These cases have been cited and relied upon in many delegates' decisions regarding extensions of time, such as the Wrangler case referred to by Mr Webb.  It is also in line with Re Ausorb Pty Limited (1996) AIPC 91-286. That decision, by Hearing Officer Homann, dealt with the revival of a lapsed trade mark application under the new Act, although the transitional provisions of section 240 and 248 applied in that case, as the trade mark application had lapsed prior to the commencement of the new Act. Mr Homann found, at page 37,869, that he was required to decide whether revival of the trade mark application in question, was "fair and reasonable", taking into account all the circumstances of the case. These are the terms which apply to the exercise of the Registrar's discretion to revive an application under the transitional provision of section 248, but they seem to me to provide valuable guidance as to the proper exercise of the similar discretion given to the Registrar under section 224.

In coming to a "fair and reasonable" decision in this matter, I have given regard to the following:

§  the relative inconvenience to the parties concerned, including whether the opposition to removal has otherwise been prosecuted with due diligence,

§  the public interest, and

§  the desirability of operating the (trade mark) system efficiently and without unreasonable delays Vangedal-Nielsen, supra, at page 150.

Consideration of these factors would appear to be the most effective way of arriving at a decision as to the appropriate exercise of the Registrar's discretion in all such matters as the present under section 224. A decision arrived at in this manner may oblige the Registrar not to grant an extension under certain circumstances. However, the approach takes into account the principles that extension of time provisions are beneficial and should be applied beneficially, and that due regard must been paid to the merits of each case.

The relative inconvenience to the parties concerned.
Mr Hansen was silent on the inconvenience which might be suffered by Goldmine if the extension was granted and the present mark restored to the Register.  However, a search of the file reveals that Goldmine wrote a letter to South & Walker on 9 July 1999 saying that it (Goldmine) was seeking to register the GOLDMINE trade mark in Australia and, as part of its strategy, wanted to acquire part of the then registration for which the extension is now sought.  Therefore, the allowance of an extension to file notice of opposition to the present mark's removal from the Register would delay that process.  This is because the Registrar would be obliged by the Act to restore South & Walker's mark to the Register.  That mark would then most likely be citied by an examiner as a bar to the acceptance of Goldmine's mark until the present s.92 matter was resolved.  At best this would mean a temporary delay to the registration of Goldmine's mark - assuming South & Walker's mark is subsequently removed.  At worst, there could be a total halt to the removal proceedings if the opposition to removal was eventually successful, leaving the subject mark on the Register.  Then, facing a possible citation against its own mark, it would need to then make submissions on the registrability of its mark.  If that was upheld, Goldmine would still have the option available to it to have the matter before a delegate of the Registrar.  In all of this, Goldmine would have several options and avenues open to it to pursue in relation to its own mark.

In contrast, South & Walker would be significantly disadvantaged by the extension not being granted and its mark accordingly not being restored to the Register.  It would then have lost its valuable registration which it has argued - but not yet shown - that it has been using.  It could then also be left open to possible court action for infringement for using its own trade mark - if it in fact that is the case.  This shift to the arena of the court system and away from the matter being decided by the Registrar, would seem to impose significant additional costs.  It would also need to oppose the registration of Goldmine's mark upon acceptance if it wanted to pursue the matter of protecting its own interests.

On balance, I am persuaded that South & Walker will suffer greater inconvenience from the loss of its trade mark registration, than will be suffered by Goldmine from the deferral of the progress of its own application.

The public interest
As cited by Burchett J in Ferochem Pty Limited v Commissioner of Patents (1994) AIPC 91-057 at page 38,208, Kitto J in Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 said:

…[it was in] the public interest that [a serious matter] should be dealt with on the merits, rather than that it should be shut out in consequence of a failure of procedure, lamentable though the failure may be.

The serious matter to which Ferochem referred was in fact an opposition.  Here the owner of a removed application is seeking an extension of time to file notice of opposition to a removal action.  The consequences of not granting the extension is that a trade mark, alleged by its prior registered proprietor to have been used on all of its goods, would be then be open to registration by another party.  It would therefore seem likely that some members of the public might be deceived or confused by a situation where a trade mark that they identify as being used by one trader, was registered in the name of another. Notwithstanding the desirability of the Register remaining a constant reference source for members of the public, it is undoubtedly in the public interest that the Register reflects the actual state of affairs - Re Ausorb, supra, page 37,869.

It is also in the public interest that issues relating to the ownership of trade marks are settled as expeditiously as possible, so as to avoid confusion in the marketplace.  It is true that South & Walker could file opposition to an application by Goldmine to register the trade mark based upon ownership grounds but it would seem the most efficient course if the matter was dealt with at this stage of proceedings.  The possibility of dealing with the matter as expeditiously as possible and with the minimum duplication of effort, is a desirable course for the Office which has a preference for the efficient operation of the trade mark system, without unreasonable delays.  It is also true that the public interest would best be served by the consideration by the Registrar of all of the relevant material which would, I am sure, be introduced in the form of evidence and by means of submissions at a hearing to decide the opposition.

Taking all of the foregoing into account, I have come to the conclusion that, having decided that South & Walker's application for extension of time satisfies the provisions of section 224, I should then exercise the Registrar's discretion to grant the extension, based upon my considered opinion of all the relevant factors, and especially the relative inconvenience of the parties, and the public interest.

Decision
For the reasons set out above, I have found that there was a definite intention by South & Walker to oppose the present application, but that intention was frustrated by an error or omission caused by a legal practitioner's error or omission which led to his failure to correctly act within the specified time laid down in the legislation.  I therefore grant the requested extension of time to 12 December 1999 within which to file the notice of opposition in relation to the application for removal.  I note that the said notice has been on file with this Office within the extended time allowed.

Accordingly, having extended the period within which the notice may be filed, I direct that, in accordance with s.98 of the Act, the trade mark should be restored to the Register and not be taken to have been removed.  I further direct that the evidence in support of the opposition should be due to be served within three months from the date of this decision.

As I noted before in the reasons for this decision, this hearing was sought in relation to a delegate's intention to refuse an application for a late extension of time to file notice of opposition.  Costs are therefore not an issue and there can be no award.

Ian Forno
Hearing Officer

26 May 2000