Horizons (Asia) Pty Ltd
[2017] ATMO 13
•22 January 2017
TRADE MARKS ACT 1995
TRADE MARKS REGULATIONS1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1615861 (11, 35) - ENAGIC- in the name of Enagic Australia Pty Ltd and request by Horizons (Asia) Pty Ltd under regulation 5.9(1)(a) for extension of time in which to file a Notice of Intention to Oppose.
| Delegate: | Iain Campbell Thompson |
| Representation: | Applicant: self-represented, written submissions Interested party: Enagic Australia Pty Ltd: written submissions by its attorney, Danielle Jepson of Fisher Adams Kelly, Patent & Trade Mark Attorneys |
| Decision: | 2017 ATMO 13 Trade Marks Act 1995 Trade Marks Regulations 1995 Request under regulation 5.9(1)(a) to extend time in which to file a Notice of Intention to Oppose. Whether error or omission; whether circumstances beyond the control of the applicant for extension. Grounds not established – request for grant of extension of time refused. No costs award. |
Background
In this matter Enagic Australia Pty Ltd (‘Enagic’) has filed an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark appearing below:
Application No: 1615861
Priority Date: 7 April 2014
Goods/Services: Class 11: Apparatus for water supply; apparatus for water filtration, water softening, water purification and or water ionization; ionisation apparatus and instruments for the treatment of air or water; ion generating water purification apparatus; reverse osmosis devices for use in water conditioning apparatus and instruments; filters for drinking water; water purification filters, water treatment filters; parts and fittings for the aforementioned goods, allowed in this class
Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); wholesale; retail; sales by any means; advertising, marketing, promotion and public relations; operation, supervision and management of party plans, loyalty programs, sales and promotional incentive schemes; discount services (retail, wholesale, or sales promotion services); customer support services; compilation and maintenance of directories, mailing lists including such lists compiled and maintained via the global computer network; conferences and exhibitions for commercial purposes; business administration; business development; dissemination of commercial information; distribution of prospectus; importing services; exporting services; providing information, advisory and consultancy services, including by electronic means, for all of the aforesaid services
Trade Mark: ENAGIC
(‘the Trade Mark’)
The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration on 16 June 2016 in the Australian Official Journal of Trade Marks.
On 16 August 2016 Horizons (Asia) Pty Ltd (‘Horizons’) filed a Notice of Intention to Oppose.
Thereafter, on 16 September 2016, Horizons requested an extension of time of two months from 17 September 2016 (sic) in which to file its Statement of Grounds and Particulars. This request was refused by a delegate of the Registrar of Trade Marks.
Horizons then filed a request for an extension of time in which to file a further Notice of Intention to Oppose. A delegate of the Registrar of Trade Mark indicated her intention to refuse this request.
Subsequently, Horizons requested to be heard and the proceedings were before me, a delegate of the Registrar of Trade Marks, by way of written submissions made by Horizons. As Enagic is an interested party, I advised them of their right to make submissions in relation to this matter and Enagic filed written submissions by its attorney, Danielle Jepson of Fisher Adams Kelly, Patent & Trade Mark Attorneys.
Consideration
A request for an extension of time in which to file a Notice of Intention to Oppose is made under regulation 5.9(1)(a) which provides:
5.9Extension of time for filing—application
(1)A person who intends to oppose an application under subsection 52(1) of the Act may request the Registrar to extend:
(a)the period for filing a notice of intention to oppose under subregulation 5.6(1); or
[…]
(2)A request under paragraph (1)(a) or (b) may be made:
(a)within the period for filing the document in question; or
(b)before the trade mark is entered on the Register under section 69 of the Act.
Note:See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the consequences of making the request after the filing period has ended.
(3)The request must:
(a)be in an approved form; and
(b)be accompanied by a declaration stating:
(i)the facts and circumstances forming the basis for the grounds; and
(ii)if the period for filing the notice or the statement of grounds and particulars has ended—the reason why the request was not made within the period.
Note:Regulations 21.6 and 21.7 deal with making and filing declarations.
(4)The request may be made only on either or both of the following grounds:
(a)an error or omission by the person, the person’s agent, the Registrar or an employee;
(b)circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
The grant of the extension is subject to regulation 5.10 which provides:
5.10Extension of time for filing—grant
(1)The Registrar may grant a request under subregulation 5.9(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.
(2)However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request.
This is the second Notice of Intention to Oppose filed by Horizons. While Horizons has filed submissions in relation to its request for extension of time in which to file this Notice of Intention to Oppose, these submissions do not in the main directly address the criteria which the Registrar must assess: those are, whether the request for grant is in relation to an ‘error or omission’ on the part of Horizons or as a ‘circumstance beyond the control’ of Horizons.
A time line of relevant events leading up to the request for extension appears below:
1. On 16 August 2016, Horizons filed a Notice of Intention to Oppose registration of the Trade Mark.
2. The deadline to file a Statement of Grounds and Particulars was due to be filed by 16 September 2016.
3. On 16 September 2016, Horizons filed an application for a 2 month extension of time to file a Statement of Grounds and Particulars citing ‘circumstances beyond its control’.
4. On 6 October 2016, a delegate of the Registrar of Trade Marks advised both parties that she intended to refuse the application for an extension of time to file a Statement of Grounds and Particulars due to the request not being due to a circumstance beyond the control of Horizons.
5. On 7 November 2016, a delegate of the Registrar of Trade Marks advised the parties that the Opponent had filed further reasons to support the application for an extension of time to file a Statement of Grounds and Particulars however, this still did not meet the requirements of an extension request and the Office intended to refuse the extension request. The Opponent was provided with time to request a hearing.
6. On 15 November 2016, a delegate of the Registrar of Trade Marks advised the parties that the request for an extension of time to file a Statement of Grounds and Particulars had been refused.
7. On 16 November 2016 Horizons filed a further Notice of Intention to Oppose (‘the Further Notice’).
The due date for a Notice of Intention to Oppose in relation to this matter was before or on 16 August 2016. This second Notice of Intention to oppose is thus over three months out of time. I do not consider that the Registrar of Trade Marks could accept Horizons’ arguments that the decision of the delegate of the Registrar, on 15 November 2016, contributed time-wise to Horizons’ delay in this matter: in fact, it was the decision of the Registrar’s delegate that precipitated the request of extension of time in which to file the Further Notice. Had the delegate decided to allow the extension, Horizons would not have filed its Further Notice (and, indeed, the Notice(s) of Intention to Oppose could have been filed at any time in the preceding three months by Horizons).
The Further Notice was thus, on any objective view, filed by Horizons because of its failure to demonstrate to a delegate of the Registrar of Trade Marks that its request filed on 16 September 2016 for extension of time in which to file its Statement of Ground and Particulars was as the result of a circumstance beyond its control. It follows as a matter of logic that the reasons that applied to the delegate’s earlier refusal also apply with equal force to the circumstances now before me because the request for grant in respect of the Further Notice is only filed because of the Registrar’s refusal to grant in relation to the Statement of Grounds and Particulars. This is also because the law as it applies to an application under 5.9(1)(a) (re Notice of Intention to Oppose) applies with equal force to an application made under 5.9(1)(b) (re Statement of Grounds and Particulars).
Further, Horizons in arguing ‘error or omission’ here appears to point to its own failure to file its Statement of Grounds and Particulars within the time prescribed as being the relevant ‘error or omission’: this failure, however, as the delegate has found, was a circumstance within the control of Horizons. Additionally Horizons, significantly, conceded then that it was not an ‘error or omission’ but a conscious decision made on its part. Moreover, as Jenkinson J observed in Kimberly-Clark v Commissioner of Patents (No 3)[1] the failure to do an act or to take a step is not of itself an ‘error or omission’ within the meaning of the Regulations.
[1] [1988] FCA 421; 13 IPR 569.
On the above basis the cause for the request for grant of the extension is not because of an ‘error or omission’ on the part of Horizons.
As regards whether the request for grant in relation to the Further Notice is as a result of a ‘circumstance beyond the control’ of Horizons, I refer to Re Atomic Skifabrik Alois Rohrmoser v the Registrar of Trade Marks[2] where Jenkinson J observed of the expression ‘circumstances beyond the control of the person concerned’:
[It] does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in paragraph 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent’s servants. The section is, I think, correctly described as a force majeure provision.
[2] [1987] FCA 22.
As I have observed, this application for grant of extension of time in relation to the Further Notice has stemmed directly out of Horizons’ failure to file its Statement of Grounds and Particulars within the time allowed by the Regulations and in relation to the request (filed on 16 September 2016) for grant of extension in relation to the Statement of Grounds and Particulars. As Horizons’ failure in relation to the Statement of Grounds and Particulars was a circumstance within its control, it follows that this further request for grant in relation to the Further Notice (which flows directly from that earlier failure) is also as the result of a circumstance within its control. It cannot logically be any other way. Moreover, I do not consider that it is possible in this situation to point to a decision of a delegate of the Registrar of Trade Marks that refuses an extension of time in the same circumstances and successfully claim that the decision of the delegate was a ‘circumstance beyond the control’ of Horizons (or, indeed, an ‘error or omission’ on the part of Horizons).
Decision
I do not consider that the Registrar could be satisfied that the grounds that the grounds set out in the request justify the extension. I therefore refuse to grant it.
Costs
Enagic requested its costs in the event that Horizons’ request for an extension of time be refused. However, as Enagic was not a formal party to these ex parte proceedings and made submissions only as an interested party, it is not appropriate that the Registrar awards costs against Horizons.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
22 February 2017
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