Harrah's Licence Company LLC - [2007] ATMO 16

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2007] ATMO 16
Decision Date: 4 April 2007

CaseChat Overview and Summary

This matter concerned an application by Harrah's Licence Company LLC for an extension of time to file a notice of opposition to a trade mark application. The applicant, who had filed the original trade mark application, elected not to participate in the proceedings before the Registrar. The dispute therefore proceeded between Harrah's Licence Company LLC and the Registrar.

The primary legal issue before the court was whether to grant Harrah's Licence Company LLC an extension of time to file its notice of opposition. This required the court to consider the circumstances that led to the late filing, including the disruption to Harrah's usual procedures caused by the absence of a key employee due to surgery and the subsequent heavy workload on her assistant. The court also had to determine the significance of the applicant's decision not to participate in the proceedings.

The court reasoned that the applicant's deliberate decision not to be involved in the proceedings meant that any opportunity for them to object had been lost, and the matter was now solely between Harrah's and the Registrar. In assessing the application for an extension of time, the court noted that Harrah's had established a co-existence agreement in the European Union and was in negotiations for similar agreements globally. The failure to file the opposition within the prescribed time was attributed to a disruption in normal office procedures, specifically the absence of Ms. Tyler due to eye surgery and the resulting pressure on her assistant, Ms. Lisa. This disruption led to the deadline being missed.

The court ultimately granted the extension of time to Harrah's Licence Company LLC.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

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. 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

Ratio Decidendi

Legal Principle Established

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. 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

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.