Gracey and Registrar of Trade Marks and Unilever Australia Ltd (Party Joined)
[2000] AATA 354
•5 May 2000
DECISION AND REASONS FOR DECISION [2000] AATA 354
ADMINISTRATIVE APPEALS TRIBUNAL )
) No N1999/545
GENERAL ADMINISTRATIVE DIVISION )
Re NICHOLAS DYNES GRACEY
ApplicantAnd REGISTRAR OF TRADE MARKS
RespondentAnd UNILEVER AUSTRALIA LTD
Party Joined
DECISION
Tribunal Senior Member M D Allen
Date5 May 2000
PlaceSydney
Decision The decision under review is affirmed.
(Sgd) M D ALLEN
..............................................
Senior Member
CATCHWORDS
TRADE MARKS - Application to review decision that Applicant failed to lodge application for priority for the registration of a trade mark within time. Documents faxed from United Kingdom on 29th but received in Australia on 30th. 29th last day. Application to extend time not permitted for an application for priority. Date of filing is date and time in Australia not date and time when faxed from United Kingdom.
Trade Marks Act 1995 - ss6, 29, and 224
Trade Mark Regulations 1995 - Regs 19, 21.2 and 21.28
Acts Interpretation Act 1901 (Cwth)
Scaniainventor v Commissioner of Patents 36 ALR 101
Minister for Immigration and Ethnic Affairs v Teoh 183 CLR 273
Re Thermos Ltd and Registrar of Trade Marks 17 ALD 595
REASONS FOR DECISION
5 May 2000 Senior Member M D Allen
By application lodged with the Tribunal on 14 April 1999 the Applicant sought review of a decision by a delegate of the Respondent refusing a request by the Applicant, pursuant to s224 of the Trade Marks Act 1995, to extend by one day the date for filing a request for priority under s29 of the said Act with respect to trade mark applications numbered 726667, 726668 and 726669.
The matter came on for hearing before me in Sydney on Thursday 20 April 2000. The Applicant, who resides in Scotland, participated in the hearing by means of telephone. At that hearing the following documents were taken in as exhibits and marked as follows, namely:
T1 to T23: The documents prepared for the Tribunal pursuant to s37 of the Administrative Appeals Tribunal Act 1975
Exhibit A1 : Statement of Agreed Facts
Exhibit A2 : Applicant's submissions dated 30 June 1999
Exhibit A3 : Applicant's submissions dated 27 July 1999
Exhibit R1 : Respondent's Statement of Issues
Exhibit R2 : Respondent's Statement of Facts and Contentions.
Section 29 of the Trade Marks Act 1995 states inter alia:
"29 Application for registration of trade mark whose registration has been
sought in a Convention country claim for priority(1) If:
(a) a person has made an application for the registration of a trade mark in one or more than one Convention country; and
(b) within 6 months after the day on which that application, or the first of those applications, was made, that person or another person (successor in title) of whom that person is a predecessor in title applies to the Registrar for the registration of the trade mark in respect of some or all of the goods and/or services in respect of which registration was sought in that country or those countries;
that person or that person's successor in title may, when filing the application, or within the prescribed period after filing the application but before the application is accepted, claim a right of priority for the registration of the trade mark in respect of any or all of those goods and/or services in accordance with the regulations.
(2)The priority claimed is for the registration of the trade mark in respect of the goods or services:
(a) if an application to register the trade mark was made in only one Convention country—from (and including) the day on which the application was made in that country; or
(b) if applications to register the trade mark were made in more than one Convention country—from (and including) the day on which the earliest of those applications was made.
(3)The regulations may provide for the filing of documents in support of a notice claiming priority and, in particular, for the filing of certified copies of any application for the registration of the trade mark made in a Convention country.
Note: For Convention country see section 225."
Whereas s224 states inter alia:
"224 Extension of time
(1)If, because of an error or omission by a trade marks officer, 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 must extend the time for doing the act.
Note: For trade marks officer see section 6.
(2)If, because of:
(a) an error or omission by the person concerned or by his or her agent; or
(b) circumstances beyond the control of the person concerned;
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.
…
(7)An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of an act.
(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)."
The Statement of Agreed Facts (Exhibit A1) cites the following:
"1.Australia is a signatory to the Paris Convention for the Protection of Industrial Property of 20 March 1883. The United Kingdom acceded to the Convention on behalf of three of the Australian colonies and did so on behalf of Australia on 5 August 1907. Australia became an independent contracting signatory from 10 October 1925 and has passed legislation in terms of the requirements of subsequent revisions of the Convention.
2.On 29 July 1996, Mr Gracey applied for registration of UK trade mark number 2106345 (see T11) being for a series of 5 words, ADRENALIN, ADRENALINE, ADRENALYN, ADRENALINN & ADRENALYNN, and on 31 July 1996 'Unilever NV' filed Australian TM number 714223 for ADRENALIN, ADRENALINE (see T4)."
Section 22 of the Acts Interpretation Act 1901 (Cwth) defines "month" as "month shall mean calendar month" and "calendar month" as meaning:
"… a period commencing at the beginning of a day of one of the 12 months of the year and ending immediately before the beginning of the corresponding day of the next month or, if there is no such corresponding day, ending at the expiration of the next month."
Section 36 of the Acts Interpretation Act 1901 (Cwth) states inter alia:
"Reckoning of time
(1)Where in an Act any period of time, dating from a given day, act, or event, is prescribed or allowed for any purpose, the time shall, unless the contrary intention appears, be reckoned exclusive of such day or of the day of such act or event."
In order to maintain a claim for a right of priority in Australia for the trade marks registered by him in the United Kingdom, the Applicant would, pursuant to s29 of the Trade Marks Act 1995, have to have filed the required documents with the Trade Marks Office in Australia on or before 29 January 1997, that is to say six months after the day on which the application was made in a Convention country, viz the United Kingdom.
As stated in Exhibit A1 and reiterated at the hearing, the Applicant on 28 January 1997 forwarded an inquiry by facsimile addressed to the Commissioner of Patents at Canberra, inquiring about filing an application for priority based on the filing date of 29 July 1996 in the United Kingdom (Document T5).
By letter dated 29 January 1997, which was faxed to the Applicant, the Applicant was informed of the requirements, that letter specifically stated:
"If you wish to claim convention priority as stated in your facsimile please ensure your application and proof of payment reaches our office on 29 Jan. 1997 (today)."
That letter was faxed to the Applicant at 1216 hours Australian Eastern Daylight Saving Time.
Section 6 of the Trade Marks Act 1995 defines "file" as:
"file means to file at the Trade Marks Office."
And "filing date" is defined as meaning:
"(a) in relation to an application for the registration of a trade mark other than an application referred to in another paragraph of this definition – the day on which the application is filed; …"
Regulation 21.2 of the Trade marks Regulations 1995 reads:
"21.2 Filing of documents – requirements as to form
(1)A document to be filed at the Trade Marks Office must comply with the requirements set out in Schedule 7.
(2)If the document does not comply with the requirements in Schedule 7, the Registrar may return the document to the person from whom it was received with a statement setting out the requirements that have not been complied with.
(3)A document may be filed by facsimile transmission:
(a)if no fee is payable on filing the document; or
(b)if a fee is payable on filing the document – if the document is accompanied by:
(i)documentary evidence that the fee has been paid; or
(ii)written authorisation of the payment.
(4)If a document is filed by a person by facsimile transmission, the Registrar may require the person to file the original document from which the facsimile was transmitted."
On 29 January 1997 the Applicant paid his trade mark application fees by funds transfer and faxed proof of payment. Proof of payment was received by the Respondent on 29 January 1997 (T7). However, no other documents were received (T7A).
At 2216 hours Greenwich Mean Time, the Applicant forwarded by facsimile to the Respondent the documents required to file an application for priority of registration of a trade mark (see Document T8).
Regulation 19.1 of the Trade Marks Regulations 1995 states:
"19.1 Trade Marks Office and sub-offices – business hours
The hours of business of the Trade Marks Office and each sub-office of the Trade Marks Office are from 10 a.m. to 4 p.m. on each day other than:
(a)a Saturday or a Sunday; or
(b)a public holiday:
(i) where the Office or sub-office is located; or
(ii) for the purposes of the Australian Public Service in that place."
Although I was informed from the bar table that arrangements can be made to keep the office or a sub-office open after normal hours, no such arrangements were made in this case.
The Applicant commenced to forward the relevant documents to ensure his claim for a priority by facsimile commencing at 2216 hours Greenwich Mean Time on 29 January 1997 and those documents were received at the Trades Marks Office, Canberra at between 0916 hours and 0922 hours Australian Eastern Daylight Saving Time on 30 January 1997.
In his oral submissions to the Tribunal, the Applicant argued that having regard to the Paris Convention for the Protection of Industrial Property of 20 March 1883, the time of lodgment of the said documents should be taken to be the time they were forwarded by facsimile from the United Kingdom, namely at 2216 hours on 29 January 1997 and thus they were lodged within time.
Clause 4C(3) of the Paris Convention reads:
"If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day."
The Applicant also referred to the Madrid Protocol. I understand that reference to that protocol was by way of analogy only and the Applicant argued that the Acts Interpretation Act 1901 (Cwth) should be read so as to take into account technology which did not exist at the time that Act was passed. That the Act can so be read, see Lake Macquarie Shire Council v Aberdare County Council (1970) 123 CLR 327 at 331 per Barwick CJ and also McFarlane v Burke [1983] 2 QdR 584.
However, the Madrid Convention can have no relevance as Clause 01.02 of that Convention makes clear that communications which do not involve the International Bureau (headquartered at Geneva) are outside the scope and agreement of that Protocol, and are a matter for the domestic law and practice of the country concerned. In this case the domestic law concerns the Trade Marks Act 1995 and the Acts Interpretation Act 1901 (Cwth).
Similarly, Clause 4C(3) of the Paris Protocol has no application. The day in question, namely 29 January 1997, was not a public holiday nor was it a day when the office was not open for the filing of applications.
Even if some clauses of the Paris Convention may have had some amendment so as to refer to the receipt of communications forwarded by facsimile, that Convention is not part of the domestic law of Australia. In Scaniainventor v Commissioner of Patents 36 ALR 101 at 106 the Full Court of the Federal Court (Fox ACJ, Franki and Northrop JJ) stated:
"We do not have any difficulty in concluding that the Treaty currently dealing with convention applications is the Paris Convention. We recognize, of course, that municipal law may not always be in step with the latest Treaty commitments of Australia. …
It seems to us plain that what Art 4 provides for has to be understood in the light of the fact that each country has to provide by legislation for the circumstances dealt with. The Treaty arrangements have to be accommodated to the local scene. Moreover, it is open to the municipal law of a country to enact provisions which give effect to those of the treaty in its own way. If the municipal law does not accord with the Treaty (and this can only be decided by an application of ordinary principles), the provisions of the municipal law prevail. …"
The interrelationship between a convention and the domestic law of a State was examined by the High Court in Minister for Immigration and Ethnic Affairs v Teoh 183 CLR 273. At p286 Mason CJ and Deane J said:
"It is well established that the provisions of an international treaty to which Australia is a party do not form part of Australian law unless those provisions have been validly incorporated into our municipal law by statute. … a treaty which has not been incorporated into our municipal law cannot operate as a direct source of individual rights and obligations under that law. …"
I was informed, and I have no reason to doubt, that to date the provisions of the Paris Protocol have not been assimilated into Australian domestic law.
It seems clear from the above cases that what I have to apply to the matter before me is the domestic law of Australia, namely the Trade Marks Act 1995 and the Regulations thereunder, together with the Acts Interpretation Act 1901 (Cwth).
The simple and unassailable fact is that the Applicant's documents were filed on 30 January 1997 and he was thus out of time.
A similar matter was discussed by Deputy President Thompson in Re Thermos Ltd and Registrar of Trade Marks 17 ALD 595. At p600 the learned Deputy President said:
"Undoubtedly the existence of the time difference between the UK and Australia was part of the circumstances in which the failure to lodge the notice of opposition in time occurred and it was a circumstance that was beyond the control of the applicant and its agents. But, I am satisfied, it cannot be regarded as having contributed materially to that failure any more than, if an agent of the applicant had posted the notice at Geelong at 4.30 pm on 21 August, the distance between Geelong and Melbourne and the necessary time taken in handling mail and transporting it between Geelong and Melbourne, a circumstance beyond the control of the applicant and its agent, could be regarded as contributing materially to the applicant's failure to lodge its notice in time. The only reason why the applicant failed to lodge its notice of opposition in time was that, in spite of the reminder sent to the UK agents by the Australian agents on 13 August 1987, the UK agents neglected to give attention to the lodgment of the notice of opposition until it was too late, that is to say until after the working day in Melbourne had finished and the offices of the Australian agents and the respondent were closed. …"
Initially the Respondent had extended the time in which to file the said applications but later, after receiving correspondence from the Party Joined, reversed that decision.
26. Section 224 of the Trade Marks Act 1995 refers generally to the power of the Registrar to extend the time for the doing of a "relevant Act". The term "relevant Act" is defined in subs224(8) and is defined to mean "any act (other than a prescribed act) done in relation to a trade mark". Regulation 21.28 of the Trade Marks Regulations 1995 reads inter alia:
"(1)For the purposes of paragraph (a) of the definition of relevant act in subsection 224(8) of the Act, the following acts are prescribed:
(a) …
(b) claiming a right of priority for an application for the registration of a trade mark under subsection 29(1) of the Act; …"
The effect of these subsections and regulations is that there is no power in the Respondent to extend the time in which the Applicant can make the application which he seeks.
Being satisfied that the Applicant is out of time in lodging his application and that the submission by the Respondent that there is no authority in the Act to permit the Respondent to extend the time in which to file the said application, the decision under review is affirmed.
I certify that the 30 preceding paragraphs are a true copy of the reasons for the decision herein of:
Senior Member M D Allen
Signed: .....................................................................................
AssociateDate of Hearing 20 April 2000
Date of Decision 5 May 2000Solicitor for the Applicant Applicant self-represented -
by telephone from Scotland
Counsel for the Respondent Dr A Bell
Solicitor for the Respondent Ms K Ruddock,
Australian Government Solicitor's Office
Counsel for Party Joined Mr M Hall
1
0