Horizons (Asia) Pty Ltd and Registrar of Trade Marks

[2018] AATA 239

Horizons (Asia) Pty Ltd and Registrar of Trade Marks [2018] AATA 239 (15 February 2018)

Division:GENERAL DIVISION

File Number(s):      2017/1726; 2017/1782

Re:Horizons (Asia) Pty Ltd

APPLICANT

AndRegistrar of Trade Marks

RESPONDENT

DECISION

Tribunal:Deputy President B W Rayment

Date:15 February 2018

Place:Sydney

The application filed in this Tribunal on 27 March 2017 is dismissed pursuant to section 42A(4) of the Administrative Appeals Tribunal Act 1975 (Cth) for want of jurisdiction.

...........................[sgd].............................................

Deputy President B W Rayment

Catchwords

PRACTICE AND PROCEDURE – jurisdiction – whether tribunal has jurisdiction to review – opposition to registration of trade mark – application for extension of time refused – no jurisdiction – application dismissed

Legislation

Administrative Appeals Tribunal Act 1975 (Cth) s 42A(4)
Trade Marks Act 1995 (Cth) ss 203, 224

Trade Marks Regulations 1995 (Cth) rr 5.9, 21.28

Cases

Horizons (Asia) Pty Ltd and Registrar of Trade Marks [2017] AATA 1332

Horizons (Asia) Pty Ltd and Registrar of Trade Marks [2017] AATA 2175

REASONS FOR DECISION

Deputy President B W Rayment

15 February 2018

1. These proceedings come before me to determine whether the Tribunal has jurisdiction to entertain proceedings commenced by an application for review filed on 27 March 2017.

2. That application relates to two decisions made by the Registrar of Trade Marks (Registrar), respectively dated 22 February 2017 and 15 November 2016. Any extension of time necessary to enable the application to this Tribunal to proceed is not presently before me. The applicant previously advanced contentions that an email sent by the Registrar dated 16 November 2016 and a letter from the Registrar dated 21 November 2016 also each embodied reviewable decisions, and it has been decided in two previous proceedings between the same parties that the Tribunal does not have jurisdiction to review either the email or the letter. Those decisions are reported at [2017] AATA 1332 and [2017] AATA 2175.

3. In the application form the decision of 22 February 2017 was stated to have been taken by the Registrar under s.224 of the Trade Marks Act 1995 (the Act). The decision of 15 November 2016 was identified as a refusal under s.224 and as a refusal to grant a hearing under s.203 of the Act.

4. I will take first the earlier decision of 15 November 2016.  That decision records that Enagic Australia Pty Ltd had applied for the registration of the trade mark ENAGIC in certain classes of goods or services, and it was advertised as accepted for possible registration on 16 June 2016 in the Australian Official Journal of Trade Marks. On 16 August 2016 the present applicant filed a Notice of Intention to Oppose the registration of the mark. This was the first of two documents necessary to be filed in order to enliven the opposition process which the applicant desired to embark upon. The second document (a Statement of Grounds and Particulars) was required to be filed within one month of the first, that is, by 16 September 2016. A Notice of Opposition comprises a Notice of Intention to Oppose and a Statement of Grounds and Particulars.

5. On 16 September 2016 the applicant applied for an extension of time to file the Statement of Grounds and Particulars. Thereafter certain communications took place between the applicant and the Registrar and on 15 November 2016 the Registrar refused the application for an extension of time.

6. The Registrar did not have power under s.224 of the Act to grant the application for extension of time in my opinion. Section 224 of the Act provides as follows:

   (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).

7. If an act or a document is prescribed for the purposes of the definition of “relevant act” then s.224 is not the Registrar’s source of power to act. Regulation 21.28(a) of the Trade Marks Regulations 1995 (the Regulations) provides that:

   (2)       For the purposes of paragraph (b) of the definition of relevant act in subsection 224(8) of the Act, the following documents are prescribed:

   (a)a notice of opposition to the registration of a trade mark under section 52 of the Act;

8. The effect of that regulation is twofold for relevant purposes: so far as concerns the Registrar, it is necessary to look elsewhere to find the power to grant or refuse the application made on 16 September 2016. So far as concerns this Tribunal, s.224 does not confer jurisdiction to review the Registrar’s decision.

9. The Registrar’s power to entertain and resolve the application of 16 September 2016 was to be found in regulation 5.9 which provides as follows:

   Extension 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

   (b)the period for filing a statement of grounds and particulars under subregulation 5.7(1).

   (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.

10. There is no jurisdiction conferred upon this Tribunal to review decisions made by the Registrar under r.5.9.

11. The application for makes reference to s.203 of the Act. That section provides as follows: The Registrar may not exercise a power under this Act in any way that adversely affects a person applying for the exercise of that power without first giving that person a reasonable opportunity of being heard.  That section is not a source of jurisdiction for this Tribunal.

12. It follows in my opinion that this Tribunal has no jurisdiction to entertain so much of the application as relates to the decision of 15 November 2016.

13. Ms Ng on behalf of the applicant appeared before me to make submissions about jurisdiction. She handed up a document recording her submissions. In that document she referred to the fact that a Statement of Grounds and Particulars was filed on 13 November 2016 together with a declaration providing further reasons for the extension of time to be granted, and noting that the Registrar refused the extension of time.

14. In part Ms Ng’s submissions summarise the Registrar’s decision.  I will set out the Registrar’s letter of 15 November 2016 as Annexure A to these reasons. 

15. Ms Ng’s submissions then asserted that a “relevant act” with s.224 arose “which was the filing of the Statement of Grounds and Particulars on 13 November 2016 together with a request for time extension and which, as stated in the ending of the Decision dated 15 November 2016, was REFUSED”. She added:

    Pursuant to the Act, SECT 224(7), the Registrar's Decision dated 15 November 2016 not to extend the time for the doing of a relevant act, that is, the act of seeking time extension for the late [Statement of Grounds and Particulars] on 13 November 2016 to complete [a] Notice of Opposition under SECT 52 of the Act, is indeed reviewable by the Administrative Appeals Tribunal, thus there is no jurisdiction issue here.

16. I reject those submissions. The late lodgement of a statement of grounds and particulars on 13 November 2016 and the supplementing of the reasons for extension of time was an incident of the then pending application for an extension of time, originally made on 16 September 2016. The act of the Registrar refusing the extension of time on 15 November 2016 took account of the original application of 16 September 2016 and the intervening acts, including those taken by the applicant on 13 November 2016. The decision of the Registrar of 15 November 2016 was taken under r.5.9 and not under s.224. Moreover, the acts done by the applicant on 13 November 2016 were not “a relevant act that is required by this Act to be done within a certain time” within the meaning of s.224(2) of the Act. They were acts done by the applicant of its own volition, as part of the material put forward in support of the pending application. No time limit was specified for the acts done on 13 November 2016.

17. Next, Ms Ng submitted that the decision of 15 November 2016 “came from the act of seeking time extension for the late Statement of Grounds and Particulars on 13 November 2016” which is a relevant act under s.224 not prescribed under r.21.28(1) and which as such, may be reviewed under s.224(7) of the Act. I reject that submission for substantially the same reasons. The making of a declaration providing further reasons for the extension of time to be granted was but an incident of the pending application. Moreover the Act did not require such an act to be done at all, or to be done within any particular time.

18. Ms Ng concluded her submissions on the first decision with the following:

    Furthermore, without the relevant act of seeking the time extension, there could be no filing of the [Statement of Grounds and Particulars] document irrespective whether such document is considered prescribed under REG 21.28 (2)(a) or not. This point is supported by the fact that the Decision Maker of the Decision dated 15 Nov 2016 never appraised the contents of the [Statement of Grounds and Particulars] for its adequacy, because extension of time was REFUSED. (sic) (emphasis in original)

19. I do not understand the words just set out to involve any additional submission.  The point that the refusal of the extension of time meant that the Registrar had no occasion to review the document lodged on 13 November 2016 is correct, but does not seem to me to add anything to the submissions already discussed.

20. The decision of 22 February 2017 was taken in response to documents filed by the applicant on 16 November 2016. By these documents the applicant lodged its Notice of Intention to Oppose afresh and lodged with it a Statement of Grounds and Particulars and applied and paid fees for an extension of time to lodge both documents. After hearing from the applicant and from Enagic Australia Pty Limited, the Registrar rejected that application for an extension of time. Again, in my opinion, the Registrar was acting under r.5.9 and not under s.224, so that this Tribunal has no jurisdiction to review the decision of the Registrar.

21. The applicant submits that there was within the meaning of s.224 a “relevant act” in the seeking of an extension of time for the late filing of the notice of opposition. Ms Ng submitted that the refusal of that application was a decision not excluded from s.224 by the prescription made by r.21.28(2)(a). In my opinion the Registrar’s refusal to permit the late filing of the notice of opposition is not with respect to a “relevant act” because of the prescription made by r.21.28(2)(a).

22. The jurisdiction of this Tribunal is limited by s.224(7) to applications to review decisions of the Registrar not to grant certain extensions of time. Because of the terms of r.21.28, there is excluded from those extensions of time ones that are for the extension of time to file a notice of opposition to the registration of a trade mark. The submissions made on behalf of the applicant seek to involve the Tribunal in a search for fine distinctions not involved in the Act or the regulations so as to expand the jurisdiction of the Tribunal. The Tribunal ought to resist such invitations.

    DECISION

23. Therefore the application filed in this Tribunal on 27 March 2017 will be dismissed pursuant to section 42A(4) of the Administrative Appeals Tribunal Act 1975 for want of jurisdiction.

I certify that the preceding 23 (twenty-three) paragraphs are a true copy of the reasons for the decision herein of Deputy President B W Rayment

............................[sgd]............................................

Associate

Dated: 15 February 2018

Date(s) of hearing:	14 February 2018
Advocate for the Applicant:	Ms Ng Lee
Solicitors for the Respondent:	Australian Government Solicitor

ANNEXURES TO DECISION

Annexure A – Letter of 15 November 2016 regarding Trade Mark Application No. 1615861 in the name of Enagic Australia Pty Ltd and opposition by HORIZONS (ASIA) PTY LTD