GSM (Trademarks) Pty Ltd & Mark Occhilupo v William Hitching

[2005] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by GSM (Trademarks) Pty Ltd and Mark Occhilupo to an application by William Hitching for an extension of the period to serve evidence in answer in respect of the opposition by GSM (Trademarks) Pty Ltd and Mark Occhilupo to registration of trade mark application 956218(14) - OCCY - filed in the name of William Hitching.

Delegate:	Mary Skivington
Representation:	Opponent: Elisa McCutcheon of Cullen & Co, Patent and Trade Mark Attorneys.
Decision:	Extension allowed

Background

1. William Hitching, (‘the applicant’), applied on 3 June 2003, to register the trade mark OCCY, for goods in classes 14 and 18.  The trade mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 2 October 2003. GSM (Trademarks) Pty Ltd and Mark Occhilupo, (‘the opponent’), filed notice of opposition to registration of the trade mark on 16 December 2003.

2. Class 18 was deleted from the application on 16 July 2004.  The remaining goods in the application are watches (chronometric instruments); jewellery; precious stones all being goods in class 14.

3. The opponent filed and served its evidence in support on 25 May 2004. By letter dated 9 June 2004, Eakin McCaffery Cox, solicitors, notified IP Australia that the evidence in support had been served on their client. Up until that time the applicant had been self represented. The solicitor’s letter did not specifically request that Eakin McCaffery Cox should be entered as the address for service and it was not noted at IP Australia that the applicant now had an agent acting on his behalf, so that notifications from the office continued to be sent directly to Mr Hitching.  It was not until after the application for an extension of the period to serve evidence  was filed that the address for service was appropriately amended.

4. The due date for evidence in answer passed and on 2 September 2004 the opponent, in accordance with regulation 5.14, requested a hearing which was subsequently set down for 14 October 2004. However, on 30 September 2004 a late application for an extension of the period for serving evidence in answer was filed and in consequence, the scheduled hearing was adjourned.

5. The opponent objected to the requested extension of time and applied to be heard in the matter, which came before me, as a delegate of the Registrar of Trade Marks on 15 November 2004. Elisa McCutcheon, of Cullen & Co, Patent and Trade Mark Attorneys appeared on behalf of the opponent. Mr Ben Katekar, of counsel, appeared  on behalf of the applicant, but as it later came to light that the hearing fee had not been  paid I will take no note of his submissions in deciding this matter.

1. The extension application states that the parties had been negotiating and, in the belief that there were reasonable prospects of settlement and to save the applicant incurring unnecessary costs, the preparation of the evidence was delayed. In the statutory declaration that accompanied the application, Michael John White, solicitor for the applicant, declares that three weeks before the due date he wrote to the applicant to seek instructions in relation to an application for an extension of time. This letter was not tendered as an exhibit to the declaration.  Mr White also avers that on ‘numerous occasions’ he also sought to contact Mr Hitching by telephone  He declares that his inability to obtain instructions was due to Mr Hitching’s difficulty in attending to business matters because of the grave illness of his wife. 

2. Mr White further declares that Mr Hitching attended his office on 21 September 2004 with a notification dated 3 September 2004, he had received from IP Australia advising that the evidence in answer was overdue. He declares that Mr Hitching instructed him at their meeting to file an application for an extension of time. Mr White advised IP Australia by letter dated 21 September 2004 that an application for an extension of time would be filed.

   Mr White declares that the prospects for further negotiations were then explored until 29 September 2004.  Only after that, on 30 September 2004 was the application filed.

   The Law

3. So far as it concerns this application the relevant paragraphs of regulation 5.15 of the Trade Mark Regulations 1995 provide as follows:

   (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

   (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;

   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.

   Submissions

4. Ms McCutcheon submitted that the applicant had failed to present a proper case to justify the extension noting in particular that a claim of ongoing negotiations is not a valid reason for not filing an in time extension application. Ms McCutcheon said  that the parties had been involved in negotiations but these had terminated when an offer made by the applicant on 2 August 2004 and open for 14 days was not accepted and no counter-offer was made by the opponent.  Therefore, she argued, there was no reasonable basis for an expectation that the matter would settle.  She argued that there is a public interest in the speedy resolution of oppositions and that the Registrar  must give greater weight  to the general public interest of effective timely administration of the relevant provisions of the Act.  Ms McCutcheon further argued that if a late extension for the period for serving evidence is required the application should be made as soon as possible to avoid undue delay and further inconvenience to the parties. Finally Ms McCutcheon submitted that the applicant had failed to demonstrate sufficient diligence and concern for his own interests as there had been no information provided on the progress of the preparation of evidence, other than that a conference with counsel was held on 12 November 2004 and that the evidence was likely to be finalised within the period for which the extension had been requested.

Discussion

1. The legislation provides that the Registrar must not grant an application unless s/he is reasonably satisfied that the extension of the period for serving a copy of the evidence is appropriate. The legislation is clear that reasonableness is the factor that should prevail over other considerations.

2. I agree with Ms McCutcheon that there is a public interest in having matters resolved as efficiently and fairly as possible.  To this end both parties should have sufficient opportunity to file and serve all the relevant materials so that when the substantive matter is decided the Hearing Officer will be able to reach a fully informed decision.

3. I also agree with Ms McCutcheon that there is an onus on the relevant party to diligently apply itself to the preparation of evidence; however, any reason for denying the application and thus shutting out the evidence completely needs to be of a significant nature. While, with the passage of time, an applicant needs to provide more compelling reasons, and greater detail of the situation when applying for an extension, in the present situation this is the applicant’s first application, albeit late, for an extension. Preparation of evidence often requires more time than that allowed by statute. I note that the applicant has now filed its evidence in answer within the period for which the extension of time was requested and well within the time frequently required by parties in opposition matters. There appear to be no third parties who would be inconvenienced by the comparatively short delay in proceedings and between the two parties concerned in this opposition, I am satisfied that the inconvenience that would be suffered by the applicant if he were to be denied the opportunity to file his evidence in answer is significantly higher than any inconvenience the opponent will suffer by the allowance of the extension of the period to serve evidence in answer.

4. I consider that the public interest falls in favour of the applicant for the extension of time when the party has a real intention of providing evidentiary material and has in fact since filed that material. Neither the interests of the public nor the interests of the applicant are well served by shutting out available evidence.

5. I agree with Ms McCutcheon that an expectation that a settlement will be reached is not a valid reason in itself for not applying for an extension of time.  However, I would be reluctant to disadvantage an applicant because his legal representative has chosen either not to acquaint himself with the provisions of the legislation or has willfully elected to disregard them and who even when instructed to file an extension application did so with an absence of alacrity.

6. Generally the circumstances of a person’s private life should not adversely affect a person’s ability to deal with their business responsibilities. Having said that, the supporting statutory declaration also detailed the personal circumstances in which Mr Hitching found himself and I accept that these particular circumstances would have made it difficult for him to focus on business matters particularly as they relate to a trade mark opposition, being a matter with which he has had no prior experience.

Decision

1. On balance, in the particular circumstances of this case I am reasonably satisfied that an extension of the period for serving evidence in answer would be appropriate. Therefore, I allow the extension of time covering the period from 25 August 2004 to 25 November 2004 in which the applicant may serve its evidence in answer to the opposition to registration of trade mark application number 956218.

Costs

1. I make no award of costs.

Mary Skivington
Hearing Officer
Trade Marks Hearings
4 February 2005