Hino Jidosha Kabushiki Kaisha v Tallevine Pty Ltd
[2019] ATMO 75
•15 May 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Hino Jidosha Kabushiki Kaisha to extension of time for acceptance of trade mark application 1719737 (12) – RAPTOR 4X4.COM.AU (logo) - in the name of Tallevine Pty Ltd
Delegate: Robert Wilson
Hearing by way of written submissions
Representation: Opponent: K & L Gates
Applicant: Agility Legal Pty Ltd
Decision: 2019 ATMO 75
Trade Marks Act 1995 (Cth) – Oppositions to the granting of applications under s 224 for: extension of time of final acceptance date of trade mark application and extension of time in which to request deferment – error or omission established – not appropriate to grant extensions – applications refused
Background
1. This decision concerns oppositions brought by Hino Jidosha Kabushiki Kaisha (‘the Opponent’) to the granting of applications for an extension of the time to extend the period for acceptance of the application detailed below:
Application Number:
1719737
Owner:
Tallevine Pty Ltd (‘the Applicant’)
Filing/Priority Date:
7 September 2015
Goods:
Class 12: Motor Vehicles
Trade Mark:
(‘the Trade Mark’)
Trade Mark examination and report
2. Agility Legal Pty Ltd (‘Agility Legal’) filed an application to register the Trade Mark on the Applicant’s behalf on 7 September 2015. The application was duly examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’). On 15 December 2015 the examiner issued an adverse examination report which indicated that the trade mark detailed below was a barrier to acceptance of the application under s 44 of the Act. The cited trade mark is owned by the Opponent.
Trade Mark Number:
610173
Priority Date:
27 August 1993
Goods:
Class 12: Quad bikes (also known as all-terrain vehicles)
Trade Mark:
RAPTOR (‘the Opponent’s Earlier Trade Mark’)
3. The examination report was sent to Agility Legal as they were—and remain at the time of writing this decision—the address for service of the application. The report indicated that the Applicant might overcome the ground for rejection of the application if it supplied evidence under ss 44(3) or 44(4) of the Act. The report also indicated that the final date for acceptance of the application was 15 March 2017.
4. I note that the Opponent’s Earlier Trade Mark is subject to an application for removal for non-use by the Applicant.
Trade Mark application lapsed
5. By 16 January 2017 IP Australia had received no response to the adverse examination report. On that date IP Australia sent a Reminder of time limit for acceptance letter to Agility Legal. The notice reiterated the 15 March 2017 deadline for acceptance and indicated the options which were available to the Applicant including the possibility of requesting an extension of time.
No response to the reminder notice was received and on 6 April 2017 the lapsing of the application was advertised in the Australian Official Journal of Trade Marks. At this time the status of the Trade Mark was changed to ‘Lapsed: Not accepted’. For the application to register the Trade Mark to proceed any further the application would need to be ‘revived’. This would occur in the event of a successful application for an extension of time of the acceptance date under s 224 of the Act.
The first EOT application
7. On 17 January 2018, some 12 months after the reminder notice was issued and some 10 months after the final date for acceptance of the application, Agility Legal filed an application on behalf of the Applicant under s 224 of the Act to extend the acceptance due date by 12 months to 15 March 2018 (‘the first EOT application’). The first EOT application was filed via IP Australia’s eServices portal. The cover sheet produced by the portal indicates that the request was an ‘Extension of Time Due to Circumstances Beyond Control’ which is available under s 224(2)(b) of the Act. This indication is likely due to the choices made by Agility Legal when filing the application on the portal. However, the first EOT application itself explicitly indicated that the extension of time was required because of ‘an error or omission by the person concerned or by his or her agent’. This ground for an extension of time is available under s 224(2)(a).
8. The first EOT application was accompanied by the following Statutory Declarations:
· undated, by Bart Khan, a sales manager of the Applicant (‘the Khan declaration’); and
· made on 13 December 2017, by Charlotte Morson, a solicitor employed by Agility Legal (‘Morson 1’).
9. The fees for an application for an extension of time on the basis of ‘circumstances beyond control’ differ from those for an extension on the basis of ‘error or omission’. The fees which accompanied the first EOT application were those which applied in respect of ‘circumstances beyond control’.
The first EOT application was assessed by a delegate of the Registrar who took the application to have been based on s 224(2)(b) which permits an application on the basis of ‘circumstances beyond the control of the person concerned’. The delegate sent correspondence to Agility Legal on 23 January 2018 which stated, inter alia:
Your extension of time cannot be processed because the reasons you have provided cannot be granted under ‘Circumstances Beyond Your Control’. This is a force majeure provision that cover circumstances which could not be prevented such as wars and terrorism, industrial action, machinery breakdowns [etc] …
Your extension of time request will need to be applied for under one of the following grounds, being:
·error or omission by the person concerned or by his or her agent;
·special circumstances exist to justify the extension.
…
Therefore before your extension of time can be processed you must specify under which of the grounds above your extension is now requested and pay any additional fees.
The correspondence indicated that a response was required by no later than 6 February 2018. The correspondence further indicated that if no response was received by that date the first EOT application would be deemed invalid and the fees paid would be refunded. No response was received and on 14 February 2018 a refund of the fees was approved. As a consequence, the first EOT application is no longer on foot.
The second EOT application
On 27 April 2018 Agility Legal filed another extension of time application on behalf of the Applicant (‘the second EOT application’). The application is for an extension of time of 17 months and is based on ‘an error or omission by the person concerned or by his or her agent’ under s 224(2)(a). The second EOT application was accompanied by:
· Statutory Declaration made on 21 March 2018 by Charlotte Morson with Annexure A (‘Morson 2’);
· The Khan declaration; and
· Morson 1.
The Deferment application
On the same day that the second EOT application was filed, Agility Legal filed an Application for an Extension of Time Under Section 224 for Deferment (‘the Deferment application’). This extension of time was also to extend the final date for acceptance of the trade mark application by 17 months. The basis of the request for deferment was the abovementioned application for removal by the Applicant of the Opponent’s Earlier Trade Mark.
Requests for deferment should normally be made before the due date for acceptance. In the case where a request for deferment is sought to be made after that date an applicant must seek an extension of the acceptance period to enable the request. The application for an extension of time must state why the request for deferment was not made, or could not be made, by the acceptance date. The Applicant indicated that ‘an error or omission by the person concerned or by his or her agent’ was the reason the request was not made in time. This, again, is an application for an extension of time under s 224(2)(a) of the Act. The Deferment application was accompanied by Morson 1, Morson 2 and the Khan declaration.
Intention to grant EOTs
A delegate of the Registrar considered the second EOT application and the Deferment Application and by correspondence dated 9 May 2018 the Applicant was informed that the ‘extension of time applications meets [sic] the provisions of section 224’. Section 224(5) requires that if an application is made under s 224(2) for an extension of time for more than three months, the Registrar must advertise the application in the Official Journal. The correspondence to the Applicant included this information and indicated that ‘if there was no opposition to the extension of time application, the extension of time will be granted.’ The second EOT application and the Deferment application were both advertised on 17 May 2018.
Oppositions to extensions of time filed
On 15 June 2018 the Opponent opposed the extensions of time by the filing a Notice of Opposition (‘the Notice’). The Notice included the Opponent’s reasons for opposing the extensions of time; these will be discussed in further detail below. The Notice also indicated that the Opponent had made a request under the Freedom of Information Act 1982 (Cth) for copies of the extension applications. The Notice also requested that ‘the Registrar make further directions for the further conduct of this opposition … having regard to the fact the Opponent will not have access to the materials filed by [the Applicant] … until at least 6 August 2018’.
The letter from Ford
On 22 June 2018 IP Australia received correspondence from Allens Patent & Trade Mark Attorneys (‘Allens’) in their capacity as representatives of the Ford Motor Company (‘Ford’). It is apparent from the correspondence that Allens had had discussions with a senior person at IP Australia regarding the extensions of time and that person had suggested that Ford present to the Registrar its position regarding the extensions of time. The correspondence listed four trade marks owned by Ford which are detailed below—including their status at the time of writing this decision:
| Application number | Trade Mark | Class | Status |
| 1697792 | FORD RANGER RAPTOR | 12 | Accepted: in opposition period |
| 1697794 | RANGER RAPTOR | 12 | Accepted: in opposition period |
| 1814101 | F-150 RAPTOR | 12 | Accepted: in opposition period |
| 1893047 | RAPTOR | 12 | Accepted: in opposition period |
I note that the priority dates for Ford’s trade marks numbers 1697792 and 1697794 are earlier than the priority date of the Trade Mark and that trade marks numbers 1814101 and 1893047 have priority dates that are later than that of the Trade Mark.
The correspondence from Ford submitted that ‘it will be significantly adversely affected if application No 1719737 is revived’. The correspondence noted that the Trade Mark was not mentioned as a citation under s 44 in either of the examination reports for trade marks 1814101 F-150 RAPTOR or 1893047 RAPTOR and that the status of the Trade Mark was ‘Lapsed: Not Accepted’ at the time those applications were examined. Ford indicated that as a consequence it ‘did not instigate procedures to monitor the status of [the Trade Mark]’. Ford noted that it first became aware of the Applicant’s attempts to revive its lapsed application on 21 June 2018. Ford further noted that had it put in place the monitoring of the Trade Mark application it would have been aware of the Applicant’s attempt to revive the application and would have opposed the applications for extensions of time. The potential arises, says Ford, that the revival of the Trade Mark means that the Trade Mark could then be cited under s 44 against its applications numbers 1814101 and 1893047 putting Ford ‘in a most invidious position, both as to registration and use of this marks’.
Ford’s Notice of Opposition refused
On 29 June 2018 Ford filed a Notice of Opposition to the extensions of time. As the time for filing the notice had passed, Ford concurrently filed an application for an extension of time of one month in which to file the notice. By correspondence dated 4 July 2018, IP Australia informed Ford that the period of time in which to file a notice of opposition to an extension of time under s 224 is not extendable.
Opponent’s Notice of Opposition acknowledged
By correspondence from IP Australia dated 9 July 2018, the Applicant was informed that the Opponent had opposed ‘the extension of time’. I note that the correspondence referred to a single application ‘for an extension of time and deferment’ rather than two separate applications. The correspondence indicated that a copy of ‘your extension application only’ had been provided to the Opponent and that in accordance with reg 21.11A(2)(f) of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’) the Opponent had not been provided with a copy of the supporting declarations. The correspondence further indicated that directions in connection with the filing of evidence and submissions would be provided at a later date.
Complementary correspondence was concurrently sent to the Opponent acknowledging the receipt of the Opponent’s Notice of Opposition and providing the Opponent with ‘a copy of the extension application only’ without the supporting declarations. The correspondence noted that the Opponent had filed a request under the Freedom of Information Act 1982 and requested that the Office be advised ‘as soon as possible when you have received those documents’.
The Supreme Court proceedings
Correspondence was received on 14 August 2018 from Lander & Rogers Lawyers which indicated that they acted for Ford Motor Company of Australia Limited (‘Ford Australia’) in two proceedings in the Supreme Court of New South Wales. The correspondence indicated that its purpose was to put the examiner of the Trade Mark ‘on notice of matters that we consider relevant to your examination of [the Trade Mark]’. The correspondence indicated, in summary:
The Applicant is a former authorised dealer of Ford.
Orders of the Supreme Court of NSW include injunctions in favour of Ford:
oThe Applicant is restrained from, inter alia, registering any trade mark which contains any of the Ford Signs and Ford Raptor Signs or any substantially identical or deceptively similar sign.
Failure by Applicant to withdraw the application and attempt to revive the application ‘is liable in contempt’.
Evidence and Submissions
By correspondence dated 3 September 2018 the Applicant and Opponent were given one month to file any additional evidence in support of their cases that they may wish to have considered by the Registrar. On 3 October 2018 the Opponent filed a Statutory Declaration made on 3 October 2018 by Gregory Michael Pieris, a Special Counsel at K&L Gates, with Exhibits GP-1 to GP-8 (‘the Pieris declaration’). The Applicant did not file any evidence additional to the declarations previously mentioned.
By correspondence dated 17 October 2018 the Applicant was given one month to file evidence in answer to the Opponent’s evidence. On 19 November 2018 the Applicant filed a Statutory Declaration made on 19 November 2018 by Thomas John Pilsneniks, a solicitor employed by Agility Legal (‘the Pilsneniks declaration’).
By correspondence dated 27 November 2018 the parties were informed that the evidence stages had been completed and that they had ten business days from the date of the correspondence to request a hearing. Neither party requested a hearing so by correspondence dated 7 February 2019 the parties were informed that a decision would be made on the written record and they were given one month to file written submissions.
On 7 March 2019 the Opponent filed written submissions prepared by its representatives K&L Gates. The Opponent’s submissions included the decisions in the two Supreme Court matters referred to earlier in this decision. Those decisions are reported at Ford Motor Company of Australia Limited v Tallevine Pty Ltd [2018] NSWSC 136, and Ford Motor Company of Australia Limited v Tallevine Pty Ltd [2018] NSWSC 2002.
The Applicant did not file any submissions; however, I note that the Pilsneniks declaration includes material in the form of submissions and I will consider them as such in arriving at my decision.
The Opponent
According to the Pieris declaration:
The Opponent is a manufacturer of commercial vehicles and diesel engines (including for trucks, buses and other vehicles), with headquarters in Tokyo. The Opponent is a leading producer of medium and heavy diesel trucks in Asia, but has active operations throughout the world, including Australia.
In addition to the Opponent’s Earlier Trade Mark, the Opponent is the owner of the registered trade mark detailed below:
Trade Mark Number:
1892454
Priority Date:
6 December 2017 (this priority date is later than that of the Trade Mark)
Goods:
Class 12: Quad bikes (also known as all-terrain vehicles)
Trade Mark:
RAPTOR (‘the Opponent’s Later Trade Mark’)
The Applicant
The Pieris declaration also provided some background information about the Applicant which was based on ‘searches carried out by K&L Gates’:
(a)the Applicant has carried on the business of a new and used car dealership since around 1984;
(b)as part of its operations, the Applicant also advertises that it carries out customisation and re-engineering of vehicles;
(c)in November 2010, the Applicant was appointed by Ford Motor Company of Australia Limited (‘Ford Australia’) as an authorised Ford dealership;
(d)in mid to late 2013, a dispute arose between Ford Australia and the Applicant, which subsequently led to the Applicant’s dealership being terminated on February 2014 (sic) …
The Legislative Framework
In summary, an application to register a trade mark lapses ‘if it is not accepted within the prescribed period or within that period as extended in accordance with the regulations’.[1] The prescribed period is nominally 15 months from the date of the first adverse report;[2] however, in certain circumstances the prescribed period may be extended under s 224 of the Act.
[1] Trade Marks Act 1995 (Cth) s 37(1).
[2] Trade Marks Regulations 1995 (Cth) reg 4.12(1).
Additionally, acceptance may be deferred in certain circumstances. Those circumstances include where a trade mark has been cited under a s 44 ground for rejection and the affected applicant has filed an application for removal of that trade mark under s 92 of the Act and is awaiting the finalisation of proceedings in respect of that removal application.[3] Where acceptance has been deferred ‘no account is to be taken of a period in which acceptance of the application is deferred’ in determining the 15 month period mentioned above.[4] Requests to defer the acceptance of an application are normally to be made during the 15 month period; however, the Registrar may defer acceptance where the request was made during the prescribed period as extended under s 224 of the Act.[5]
[3] Trade Marks Regulations 1995 (Cth) reg 4.13(1)(c)(iii).
[4] Trade Marks Regulations 1995 (Cth) reg 4.12(2).
[5] Trade Marks Regulations 1995 (Cth) reg 4.13(1)(a).
Applications for extension of time under s 224
Section 224 is reproduced below:
Section 224 – Extension of time
(1)The Registrar must extend the time for doing a relevant act that is required by this Act to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a)the Registrar or a Deputy Registrar; or
(b)an employee; or
(c)a person providing, or proposing to provide, services for the benefit of the Trade Marks Office.
(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. …
(3A) If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.
(4)The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
(5)If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal.
Note: For month see section 6.
(6)A person may, as prescribed, oppose the granting of the application.
(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 a relevant 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 applications for extensions of time in the present matter were made under s 224(2)(a). This is a discretionary provision which allows the Registrar to, inter alia, extend the prescribed period if, because of an error or omission, a request to defer acceptance was not made within the prescribed period. As it is a discretionary provision, even were the Registrar to be satisfied that there was a relevant error or omission she must also be satisfied that the exercise of the discretion in favour of the Applicant is appropriate.
The error and omission relied upon
The Khan declaration indicates that the Applicant’s failure to respond to the examination report was because it had not been informed by its agent, Agility Legal, of the existence of the report. Had the Applicant been informed of the report it ‘would have taken all necessary steps to provide the response within the timeframe stipulated in order to advance the Trade Mark Application’. Morson 1, which was initially provided with the (no longer on foot) first EOT application, provides the following details of the circumstances which resulted in the failure of Agility Legal to inform the Applicant of the existence of the report:
·[U]ntil 14 February 2014, Catherine Higgins (formerly Mooshi), a former managing director and solicitor of Agility Legal had sole conduct of this matter and, I am instructed, filed the original Trade Mark Application.
·On 14 February 2017, Ms Higgins resigned from Agility Legal.
·At the date of Ms Higgins’ resignation, I was the only other solicitor employed by Agility Legal.
·Upon Ms Higgins’ resignation … she did not hand her files over to me nor did she tell me about the Trade Mark Application. I did not know that she had sole responsibility for the file.
·Accordingly, as I was unaware of this Trade Mark Application file, I did not know that any steps needed to be undertaken in relation to the Trade Mark Application. In particular, I was unaware that on 16 January 2017 IP Australia sent a reminder of time limit acceptance to Agility Legal by which it advised Agility Legal that it needed to submit a response to the examiner’s first report by 15 March 2017.
·Accordingly, between 14 February 2017 and 6 November 2017 no-one at Agility Legal was managing the Trade Mark Application.
·On or about 7 March 2017, Thomas Pilsneniks was employed as managing solicitor of Agility Legal.
·Mr Pilsneniks informs me and I believe that, upon his appointment, he took responsibility for a number of litigation files in which Agility Legal represented [the Applicant] but he did not take responsibility for the Trade Mark Application because he did not know about it and was not told about it.
·In November 2017 … for the purposes of undertaking work in relation to another matter concerning [the Applicant] [Pilsneniks] undertook a trade search … Upon performing this search, he found the Trade Mark Application on the register and noticed it was marked as ‘Application Lapsed and Withdrawn’.
·… I contacted IP Australia by telephone to query why the Trade Mark Application had lapsed. I was advised … that (i) the Trade Mark Application had lapsed because the Applicant had failed to respond to an adverse report and (ii) the Examiner would email me a copy of the report. …
·Upon reviewing the Examination Report, I noticed that the Final Date for Acceptance was 15 March 2017. At this point I was not aware of any steps that could be taken to revive the application. Mr Pilsneniks shared my view, which we maintained until we sought advice from counsel this month [December 2017].
·Mr Pilsneniks and I have conducted a search for a hard copy file concerning the application but we have failed to locate a copy of the file. We have also searched our firms records of its outgoing mail. We have been unable to locate any record indicating that [the Applicant] was provided with a copy of the adverse report, or informed of the deadline to respond to it or otherwise informed of any steps in the trade mark application process following the initial application. …
·In the circumstances, the failure of [the Applicant] to respond to the Time Limit Reminder Letter is attributable wholly to an error or omission or both on the part of its representative, Agility Legal.
As indicated above, there was no response to certain correspondence from IP Australia to Agility Legal with the result that the first EOT application was not granted. Morson 2 provides details as to why this occurred and asserts there was an error or omission on its part which was the cause. There appears to be no limit imposed by the Act or Regulations on how many times an application to extend a particular period of time under s 224 can be made. Neither does there appear to be any time limit on when an application under s 224 can be made. Consequently, the reasons for this particular failure on the part of Agility Legal are not material to the consideration of whether there was a relevant error or omission which might support the second EOT application and/or the Deferment application. The delay caused by Agility Legal’s failure to deal with the first EOT application is, however, potentially relevant in a consideration of whether it is appropriate for the Registrar to grant an extension of time.
Was there a relevant error or omission?
Guidance regarding the nature of ‘error or omission’ as it pertains to s 224 may be found in the decision of Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents (No 3).[6] In that case His Honour considered the meaning of those words as they appeared in s 160(2) of the Patents Act 1952 (Cth). His Honour found that a simple failure to do a required act cannot in itself be the error or omission ‘by reason whereof the failure occurred’.[7] Further:
By no means every judgement by ‘the person concerned’ or by ‘his agent or attorney’ which can be shown to have been mistaken will answer the description ‘error or omission’ in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness of error.
[6] (1988) 13 IPR 569.
[7] Ibid 580.
The Opponent has provided a number of submissions which assert that there was no error or omission which lead to the failure of the Applicant to file the extension applications on time. These submissions commence with:
The Opponent acknowledges that there were identifiable errors or omissions made by [Agility Legal] which may explain part of the delay in reviving [the Trade Mark]. However, the failure to file the extension applications on time was not attributable to these errors but rather were caused by dilatoriness. This is not a sufficient basis for granting an extension under section 224(2)(a). …
and conclude with:
In summary, the failure to file the required applications for extension of time on time were not caused by error or omission and thus there are no grounds to grant an extension under section 224(2)(a) of [the Act].
These submissions evince a misunderstanding on the part of the Opponent as to what is required for an extension to be granted in the present matter. The Applicant is seeking an extension of the prescribed period in which an application to register a trade mark must be accepted. There are two extension applications on foot here, one of which is for an extension of the prescribed period to enable the filing of a request for deferment. In the case of that extension request, the ‘relevant act’, for the purposes of s 224(2)(a) is the request for deferment under reg 4.13. The ‘relevant act’ is not the filing of an extension application under s 224. There is no requirement in the Act or Regulations that an application for an extension of time under s 224 be filed within a particular time. The relevant ‘error or omission’ in the present matter is that which caused the request for deferment not to be made within the prescribed period. Beyond the concession that ‘there were identifiable errors or omissions made by [Agility Legal] which may explain part of the delay in reviving the [Trade Mark]’, there are no submissions from the Opponent which address the question of whether there was a relevant error or omission.
I am satisfied that the course of events described in the statements from Morson 1, above, amount to more than a simple failure to file a deferment request. At the very least, at the time of her resignation approximately one month before the due date for acceptance, Ms Higgins’ failure to perform a proper handover of the relevant file to Ms Morson is sufficient to constitute a relevant error or omission that caused the failure to file the request. However, that is not the end of the matter: as indicated above, s 224(2)(a) is a discretionary provision.
The Registrar’s discretion
Having found the there was a relevant error or omission it must now be considered whether it is appropriate to grant the extension. Hearing Officer Murray stated in Re Application by Hall (‘Hall’)[8] that ‘all the relevant factors, and especially the relative inconvenience of the parties, and the public interest’ are to be taken into account in deciding whether to grant the extension. Ms Murray summarised ‘the most important factors to be considered’ thus:
[8] (1997) 40 IPR 210.
the relative inconvenience to the parties concerned, including:
owhether the trade mark application has otherwise been prosecuted with due diligence; and
the public interest, including:
owhether the applicant has continuously used its trade mark, and especially whether it has prior use;
othe desirability of operating the trade mark system efficiently and without unreasonable delays.[9]
[9] Ibid 221.
The effect of the grant of an extension in the present matter would be to revive the application to register the Trade Mark. The result of this would be, amongst other things, that the Trade Mark retains its priority date. The Pilsneniks declaration includes the following submissions under the heading Registrar’s Discretion:
If the Second Extension Application and Deferment Application are rejected, the consequence for the Applicant will be that it will forever lose the right to claim priority in [the Trade Mark]. I note that in Re Application by Hall (1997) 40 IPR 210 at 222 it was considered that an applicant who stood to lose their priority date would be more seriously disadvantaged than a third party who retained the right to oppose registration of the mark if it is ultimately accepted.
The Opponent submits that Hall ‘does not stand for such a blanket proposition and that the reasoning that led to the lapsed application being revived in that case was far more nuanced’. The Opponent added that in the present case:
Contrary to the assertion in paragraph 28 of the Pilsneniks Declaration, reviving [the Trade Mark] could affect the rights of the Opponent. In addition to [the Opponent’s Earlier Trade Mark], [the Opponent] is the owner of [the Opponent’s Later Trade Mark]. This application has a priority date of 6 December 2017, which is after the priority of [the Trade Mark]. [The Opponent’s Later Trade Mark] was pending at the time of the filing of [both the extension applications] and was only entered onto the Register on 12 February 2019. Although [the Applicant] did not oppose the registration of that mark, revival of [the Trade Mark] could provide grounds for [the Applicant] to seek revocation of registration of the mark, for example under section 84A of the TMA.
Third parties would also be affected by revival of [the Trade Mark]. [The Trade Mark] is likely to have been cited against two of the Ford Applications, trade mark applications nos. 1814101 and 1893047. Reviving [the Trade Mark] could have the effect of stymying the registration of these 2 Ford Applications.
The relative inconvenience to [the Applicant] is minimal because it is not using [the Trade Mark], has no intention to use [the Trade Mark], has no lawful basis to use [the Trade Mark] and has no reasonable prospects of achieving registration of [the Trade Mark] (for example through prior continuous use or honest concurrent use). Thus, the present case can be distinguished from [Hall]. This is demonstrated by the following factors:
(a)[The Applicant’s] director has sworn an affidavit in the New South Wales Supreme Court that [the Applicant] sold its business in June 2017 and has no employees.
(b)The website for the business formerly conducted by [the Applicant] does not use [the Trade Mark], but instead use a name and logo which is completely different.
(c)[The Applicant] entered into the Settlement Agreement and consented to the Consent orders which had the effect of forever prohibiting [the Applicant] from using or seeking to register [the Trade Mark].
(d)…
[The Applicant] has not filed any evidence asserting that it is using or intents to use [the Trade Mark]. …
Moreover, it can readily be seen that [the Applicant] has not prosecuted [the Trade Mark application] with due diligence. …
In addition to the submissions of the Opponent above, I note the significant period (some two years) since the application for registration of the Trade Mark lapsed. Whilst the Deferment application itself was made some 12 months after that date, the effect of the additional time which has elapsed since then ought to be taken into account when considering the effects of reviving the application. In any event, 12 months after an application has lapsed is a lengthy period when considering reviving a trade mark in the light of the desirability of operating the trade mark system efficiently and without unreasonable delays.
It is apparent that parties other than the Applicant are likely to suffer greater inconvenience from any revival of the application to register the Trade Mark than that likely to be suffered by the Applicant. In the light of this and the other factors discussed above I am of the view that it would not be appropriate to grant the extension of time applied for in the Deferment application. Further, if I were to find there were a relevant error or omission for the purposes of the second EOT application neither would the granting of that extension be appropriate. It is not necessary that I consider the merits of the second EOT application further.
Decision
I refuse to grant either of the extensions applied for by the Applicant. Consequently, the application to register the Trade Mark shall not be revived.
Costs
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Robert Wilson
Hearing Officer
Trade Mark Oppositions and Hearings
15 May 2019
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