Harrah's Licence Company LLC
[2007] ATMO 16
•4 April 2007
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application for extension of time to file notice of opposition to registration of trade mark application number 1103247 in the name of Riu Hotels S.A..
Delegate: Alison Windsor Representation: Potential Opponent: Christian Bova of counsel, instructed by Allens Arthur Robinson, Patent and Trade Mark Attorneys
Decision: 2007 ATMO 16
Regulation 5.2(2)(b) – error or omission by potential opponent’s legal representative – application allowed.Background
Trade mark application number 1103247 in the name of Riu Hotels S.A. (“the applicant”) was advertised as accepted for possible registration on 13 July 2006. The statutory three month opposition period therefore ended on 13 October 2006.
On 17 October 2006 the trade marks office received, via facsimile transmission, a letter from Allens Arthur Robinson (“AAR”), patent and trade marks attorneys acting on behalf of Harrah’s License Company LLC (originally nominated as Harrah’s Entertainment Inc). The letter incorporated an application for an extension of time in which to file a Notice of Opposition, and a Statutory Declaration of Lucy Meadley in support of the application. The application was made under the provisions of subregulation 5.2(2) of the Trade Mark Regulations, nominating paragraphs (b) - an error or omission by the person applying for the extension of time, or by that person’s agent; and (c) - circumstances beyond the control of the person applying for the extension of time.
The application was considered by a senior examiner (“the duty officer”), and the potential opponent (“Harrah’s”) was advised that the reasons provided in support of the application were insufficient, especially as the application was made out of time. The duty officer advised she intended to refuse the extension application unless Harrah’s provided, within 14 days, additional information detailing the circumstances which resulted in the statutory deadline being missed.
AAR responded on 13 November 2006, and provided a declaration from Jane E Tyler, Assistant Secretary and Intellectual Property Manager of Harrah’s. This declaration gave further detail about the circumstances surrounding Harrah’s failure to file a notice of opposition or to request an extension of time for that purpose within the allowed period.
The duty officer considered the additional information and made the following comments in her letter dated 20 November 2006 :
You have based the request for an extension of time on the grounds contained in reg. 5.2(2)(b) and (c). Reg 5.2(2)(c) has not been made out as the reasons provided do not constitute circumstances beyond the control of the applicant for an extension of time.
The judge in Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1987) 7 IPR 551 indicated that the circumstances referred to at reg 5.2(2) (c) were influences such as forces of nature or the activities of strangers, such as the failure of a courier company, who prevented the lodgement of the notice of opposition in time. A failure to file a notice on time or to take action on a watching service notification would not normally be considered ‘circumstances beyond the control ..’ of the person applying.
Similarly, to show error or omission it is first necessary to show that there was an intention to oppose. It is then necessary to demonstrate that there was some aberration from, or impediment to, an established or usual process by which the opposition notice was to have been filed. It is necessary in other words, to show how a fixed intention was thwarted in the execution by some mistaken act or some omission of an act.
Please note that implicit in these grounds is the requirement that the opponent had formed the intention to oppose during the 3 month opposition period and that either circumstances beyond their control, or an error or omission on the part of the applicant or their agent prevented the lodgement of the notice within the required timeframe. Also implicit is that, while the Notice of Opposition could not be lodged within the requisite timeframe, it is lodged as soon as possible thereafter and the extension of time is only granted to allow this to happen.
At that stage, Harrah’s had not filed its notice of opposition. The duty officer found the grounds nominated were not made out, and advised she intended to refuse the application. She allowed Harrah’s 14 days in which to request a hearing on the matter, else the extension of time request would be refused.
Harrah’s requested a hearing in a letter dated 4 December 2006, and on 5 December 2006, filed its notice of opposition (“the notice”). I heard the matter of the disputed extension of time in Canberra on 5 March 2007. The potential opponent was represented by Christian Bova of counsel, instructed by Allens Arthur Robinson, patent and trade mark attorneys of Sydney.
Applicant’s decision not to be involved
The applicant, whilst aware of the proceedings, elected not to attend or to provide submissions. Their agent advised that while they were aware it is appropriate for both parties to be heard on the matter at the same time, it was their opinion, on the basis of the facts of the matter and case law, that the extension should be refused. They considered the costs to their client could not be justified at the time. However, they also advised that should I decide to allow the extension of time, they reserved their right to object, either via written submissions or via a hearing.
I should point out here that the applicant, by choosing not to be involved in this matter in any way, has lost its chance to object. The matter is now between the Registrar and the potential opponent. Any opportunity for the applicant to be involved in this matter no longer exists.
Supporting declarations
Shortly before the hearing, Harrah’s provided, along with written copies of its submissions and supporting decided cases, additional declarations to support its arguments. I have listed all the declarations received in this matter in the following table.
Declarant
Position Date Lucy Henrietta Meadley Trade marks attorney, AAR 17 October 2006 Jane E Tyler Assistant secretary and intellectual property manager of Harrah’s 8 November 2006 (Tyler 1) Jane E Tyler As above
28 February 2007 (Tyler 2) Valerie Lisa Paralegal in intellectual property law department of Harrah’s 28 February 2007 Jacqueline O’Brien Partner of AAR
2 March 2007
The events surrounding the late application for an extension of time, as set out in the various declarations, are the core of this matter. Therefore, I have set them out in some detail:
·Harrah’s is in negotiations with the applicant on a worldwide basis. A co-existence agreement exists for the European Union, and earlier in 2006 negotiations were in train for agreements covering the rest of the world. (Tyler 2, para 2)
·Harrah’s was endeavouring to reach a resolution of the dispute between the parties, so that the applicant would not oppose Harrah’s pending application in Hong Kong, and Harrah’s thus would not need to oppose the applicant’s trade mark application in Australia.
·Around 5 July 2006, Ms Tyler was notified that the applicant had filed a notice of opposition to Harrah’s trade mark application in Hong Kong. Because of this action she knew it would be necessary to oppose the applicant’s Australian trade mark application in order to preserve Harrah’s position in negotiations, if a co-existence agreement had not been completed before the deadline for opposing. (Tyler 2, para 4)
·Ms Tyler was admitted to hospital for eye surgery on 14 September 2006. She was to be absent from work for approximately one month, with the responsibility for all her work falling on her assistant, Valerie Lisa. Ms Lisa had not been working for Harrah’s for very long at that stage, and was put under significant pressure in a very busy department. (Tyler 2, paras 5 – 7)
·Harrah’s has a regular watch placed on all its brands. On 28 September 2006, Ms Lisa received a watch notice advising of the deadline to file a notice of opposition in respect of the Australian application. She informed Ms Tyler of the notice, and diarised the final date. Ms Tyler did not instruct her to oppose the application at that time, but put the notice aside, intending to deal with it later. (Tyler 2; para 8; Lisa, para 5)
·The usual practice within Harrah’s office would be for both Ms Lisa and Ms Tyler to check the diary entries in advance so that any necessary action could be taken in time. Because of the volume of work Ms Lisa was handling, she omitted to check the diary ahead of time. Thus she did not notice the deadline until she checked her diary on the final date. Ms Lisa was not authorized to instruct the opposition be filed without reference to Ms Tyler, who was absent from the office. Ms Lisa contacted her for instructions, and received confirmation that AAR should be contacted about the opposition. This contact was made by e-mail, received in Australia at 11.48pm on Friday, 13 October 2006. (Tyler 2, para 9; Lisa, para 7)
·The e-mail incorporating a request to provide advice regarding opposing the applicant’s trade mark was not dealt with in AAR’s office until Monday morning, 16 October 2006. AAR was finally able to file a late application for an extension of time on behalf of Harrah’s on 17 October 2006. (Meadley, paras 3 – 7)
·Ms Tyler stated that she had in place procedures which would normally have prevented her from missing the opposition deadline. However, as a result of her absence from work following surgery, and the consequent heavy workload placed on Ms Lisa, the usual routine was disrupted, resulting in the deadline being missed. (Tyler 2, para 10).
Submissions
In its submissions at the hearing, Harrah’s advised that it intended to rely only on regulation 5.2(2)(b) to found its application. It no longer pressed the ground under regulation 5.2(2)(c). The single ground relied on, therefore, relates to “an error or omission by the person applying for the extension of time, or by the person’s agent”.
Harrah’s submitted that error or omission was a breakdown in normal office procedures, and provided copies of the following two decided cases in support of its submissions: Cognotec Ltd v Cognos Inc (2000) 49 IPR 630 and British Sky Broadcasting Ltd v SkyNetGlobal Limited (2003) 57 IPR 93.
The Cognotec case, Harrah’s submitted, was on all fours with the current situation. In that case there had been a failure to follow the normal procedure for recording due dates in the pertinent diary systems, resulting in a missed deadline. In the current case, while the deadline was diarised, because of pressure of work Ms Lisa did not follow the normal office procedure of checking the diary ahead of time. This resulted in the due date being discovered too late for appropriate action to be taken within the statutory time limits.
Harrah’s submissions firstly specifically targeted the duty officer’s comments regarding an intent to oppose during the allowed three month period. Quoting from Harrah’s submissions,
“It is necessary to address [the above] conclusion …This is because the question of intention is part of the question of causation (i.e. whether or not the “error or omission” caused the Potential Opponent to fail in filing a Notice of Opposition within the three month period) in that if the Potential Opponent had no intention to file a Notice of Opposition prior to the expiration of time, an “error or omission” cannot be the cause of the Potential Opponent’s failure to lodge a Notice of Opposition”.
Harrah’s submitted that there always was an intention to file a Notice of Opposition prior to the final date, and pointed to various paragraphs in the second Tyler declaration, a declaration which was not before the duty officer when she wrote her final letter. However, Harrah’s said, even if there had not been such an intention, the necessity to have a fixed intention to oppose, was contrary to authority. In support of this contention, they referred me to British Sky (supra) where the delegate said:
I do not think that the lack of intention to actually oppose is, by itself, a sufficient test on which to refuse a late application for an extension of time for filing a notice of opposition. The essential matter is the presence of a "sufficient causal connection"[1] between the error or circumstance relied on and the failure to lodge the notice of opposition.
[1] Kimberly-Clark v Commissioner of Patents(No 3), 13 IPR 569
It said that the fact Ms Lisa had diarised the deadline and had declared the intention of seeking Ms Tyler’s instruction to engage AAR on the matter was sufficient indication of an intent to oppose. This was supported, Harrah’s said, by the British Sky decision where the delegate said:
I think the necessary causality will have been demonstrated wherever a party has shown an adequate intention to get to an informed position, from which it may decide either to oppose or not to oppose, and where that intention is itself subverted by an error, omission, or circumstance within the scope of reg 5.2(2)(a), (b) or (c). …
Harrah’s also made brief submissions in respect of the duty officer’s comments about the relationship between the non-filing of the Notice of Opposition itself and potential opponent’s intent to oppose within the statutory time period. I will deal with this matter later in my discussion.
Discussion
This is a late application for an extension of time to file notice of opposition to a trade mark application. As noted previously, the potential opponent is relying only on the provisions of reg 5.2(2)(b), an allowable ground[2] , which reads as follows:
An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5(1) on 1, or more than 1, of the following grounds, and on no other ground:
…
(b) an error or omission by the person applying for the extension of time, or by the person’s agent.
[2] See Chiron Corporation v Registrar of Trade Marks, (1998) 42 IPR 75)
Relevant also to this case are the provisions of regulation 5.4 which I have quoted in full:
5.4 Extension of time for filing — grant of extension
(1) Subject to subregulations (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition, the Registrar must grant the extension of time.
(2) The Registrar must not grant the extension of time, unless the Registrar:
(a) is reasonably satisfied that the person applying for the extension of time has served a copy of the application, and the accompanying declaration, on the applicant for registration of the trade mark; and
(b) has given to both the person applying for the extension of time and the applicant for registration of the trade mark a reasonable opportunity to make representations concerning the application for extension of time.
(3) For the purposes of paragraph (2) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(4) If an application for extension of time is made after the period for filing a notice of opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period.
(5) An extension of time must be for such period:
(a) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (a), (b) and (c) — as the Registrar believes is reasonable; or
(b) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (d) and (e) — not exceeding 3 months as the Registrar believes is reasonable.
The current matter is quite similar to Meath v Kyprianou[3], a case where the registrar intended to refuse an application for an extension of time to file a notice of opposition, but where additional information provided at the hearing was sufficient to satisfy the delegate that it was reasonable to allow the extension.
[3] (1997) AIPC 91-379
Three additional declarations were filed just prior to the hearing. These declarations were not available to the duty officer at the time she made her decision to refuse the application for an extension of time. From the information within these declarations, it is clear that the prospective opponent did have an intention to mount an opposition to the application. If a co-existence agreement for the rest of the world was not achieved by the final date, opposition to the Australian application was to be used to preserve Harrah’s position in any ongoing negotiations. Ms Tyler advised that negotiations were not progressing during her absence from the Office following surgery, so it stands to reason that mounting the opposition was a foregone conclusion. If Harrah’s office had been operating in its normal fashion with Ms Tyler at the helm and following her usual procedures as referred to in her declaration, there is no reason to suggest the deadline would have been missed.
However, the circumstances in the office were not the usual ones - Ms Tyler was not at work and her deputy, Ms Lisa, was both inexperienced and under significant stress because of the volume of work she had to deal with. Both were aware of the watching service notification about the accepted trade mark application. While the final date for filing a notice of opposition was diarised in the normal fashion, Ms Lisa did not check the diary several days in advance in order to determine whether there were any deadlines coming up, as Ms Tyler would have done had she been at work. Thus, the deadline was not discovered until the final day, and given the time difference between the United States and Australia, that was already too late to contact AAR for assistance.
I am satisfied this set of circumstances identifies the “sufficient causal connection” between the occurrences within Harrah’s office and the failure to lodge either the notice of opposition or the request for an extension of time to do so within time. As submitted by Harrah’s at the hearing, I consider the situation to be in line with that found in the Cognotec case, noted earlier. The delegate in that case said, when discussing the circumstances surrounding the late filing of the extension application:
In my opinion, the failure of Ms Hussey to follow normal office procedure (ie to effectively utilize her firm’s reminder system) is an error or omission of the kind contemplated by reg 5.2(2)(b) and I am satisfied that this error or omission led to the late filing of the notice of opposition (and extension application). … It appears to be the case that the direction to oppose was left to the “final hour”, however this does not negate the fact that Cognos had formed an intention to oppose within the prescribed opposition period and that an error or omission on the part of Cognos’ Canadian agent had frustrated this intention.
I think it is worthwhile to point out here that the circumstances in this case differ from those in the Chiron case[4], a case which was specifically mentioned by the applicant’s legal representative in an e-mail to me when I advised her of a change of date for the hearing, and she advised me the applicant still would not be attending. In the Chiron case, the delegate found there were inconsistencies in the information provided to the registrar in the various statutory declarations supporting the requests for extensions of time. These inconsistencies were such that the decisions issuing from the Register and the Federal Court both disallowed the requested extension of time. There are not the same kind of inconsistencies here. I consider the information provided to have been consistent, but it has taken several declarations and a certain amount of time to tease it all out.
[4] Chiron Corp vs Registrar of Trade Marks, 38 IPR 387, appeal decision 42 IPR 75
Regulation 5.4 requires me to be reasonably satisfied that there is sufficient reason for the application being made before I may grant the extension of time. It appears to me that the reasons for the request are sound, and that it is appropriate to grant the extension of time. However, for completeness, and because it was specifically raised in Harrah’s submissions at the hearing, I consider I need to deal with the significance in this whole matter of Harrah’s failure to lodge its notice of opposition at the same time as its application for an extension of time.
Timing for filing the notice of opposition
In her final letter to Harrah’s, the duty officer made the following comments:
… Also implicit is that, while the Notice of Opposition could not be lodged within the requisite timeframe, it is lodged as soon as possible thereafter and the extension of time is only granted to allow this to happen.
I note that the Notice of Opposition still has not been lodged in relation to this matter….
Harrah’s submitted that this was an inference that the potential opponent had no intention to oppose within the opposition period. There were, it said, three reasons why the duty officer’s inference could not be sustained:
- The relevant form headed “Application for an Extension of Time to File a Notice of Opposition” does not distinguish between applications made within the opposition period and applications made outside that period
- There is no requirement than in order for such an application to be considered, an applicant need also file a notice. It would be reasonable to expect practitioners to seek an extension of time which, when granted, would allow them to file a notice
- As declared by Ms O’Brien, Harrah’s gave her instructions to file an extension of time for the purpose of filing a notice of opposition, not for the purpose of research into its options.
I consider, given the paucity of information in front of the duty officer, she reached a reasonable conclusion. General practice within the profession is that the notice is filed concurrently with the application for an extension of time to do so. It is not strictly necessary for this to occur, but a potential opponent who does not file their notice at the same time is putting themselves at risk of missing the deadline for filing whilst waiting to find out if their request for an extension has been allowed. Because of the requirement that time be allowed for the other party to comment on[5], and potentially object to, any request for an extension of time, requests for extensions of time are seldom approved immediately. Indeed, if it is necessary to consider comments and responses from both sides, it may be a number of weeks before the matter is finalized and a decision made on whether the request can be allowed. This often means that the time covered by the extension request has already passed before the extension is allowed, and the notice is once again late. Most practitioners avoid the risk by filing the notice concurrently.
[5] See regulation 5.4(2)(b)
In this case, AAR did not provide sufficient information to satisfy the duty officer that the extension was warranted, and did not file the notice of opposition. A request for additional information resulted in receipt of the first Tyler declaration. At paragraph 9, Ms Tyler said:
However, as soon as I was available after my surgery I asked my assistant, Valerie Lisa, to instruct AAR to provide us with an opinion on an urgent basis regarding the likelihood of successfully opposing the Trade Mark Application, as well as a cost estimate for doing so.
Without the additional information provided at the hearing, it was quite reasonable for the duty officer to reach the conclusion she did. The above paragraph does appear as a request for information to assist in making a decision whether or not to oppose, rather than comments from a person who already had that firm intention. The fact that the notice had not been filed further supported this view, resulting in the duty officer’s advice that she intended to refuse the extension application.
I note that AAR filed the notice on 4 December 2006.
Decision
The circumstances attested to are sufficient for me to be satisfied that there was an error or omission on the part of the potential opponent’s legal representative which resulted in the deadline for filing the notice of opposition being missed. The requirements of regulation 5.2(2)(b) have been met, and I note the notice of opposition was filed within the time allowed by the extension request.
My decision is to allow the application for an extension of time to file the notice of opposition.
Alison Windsor
Hearing Officer
Trade Marks Hearings
4 April 2007
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