Horizons (Asia) Pty Ltd and Registrar of Trade Marks

[2017] AATA 2175

Horizons (Asia) Pty Ltd and Registrar of Trade Marks [2017] AATA 2175 (9 November 2017)

Division:GENERAL DIVISION

File Number(s):      2017/3790

Re:Horizons (Asia) Pty Ltd

APPLICANT

AndRegistrar of Trade Marks

RESPONDENT

DECISION

Tribunal:Senior Member A Poljak

Date:9 November 2017

Place:Sydney

The Tribunal does not have jurisdiction to review the letter from the Respondent dated 21 November 2016 and the application is therefore dismissed.

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

Senior Member A Poljak

CATCHWORDS

PRACTICE AND PROCEDURE – jurisdiction – whether tribunal has jurisdiction to review – opposition to registration of trade mark – late application for extension of time – intention to refuse extension of time application – procedural fairness letter not final determination – no jurisdiction

LEGISLATION

Administrative Appeals Tribunal Act 1975 (Cth)

Trade Marks Act 1995 (Cth)

REASONS FOR DECISION

Senior Member A Poljak

9 November 2017

1. Horizons (Asia) Pty Ltd, the applicant, seeks to oppose the registration of trade mark ENAGIC in the name of Enagic Australia Pty Ltd (trade mark application number 1615861). The applicant had previously filed a notice of intention to oppose (“NOP”) and a related extension of time application; both of which were unsuccessful.

2. On 16 November 2016, the applicant filed a late application for an extension of time to file a “new” NOP and a statement of grounds and particulars. In a letter dated 21 November 2016, the respondent advised the applicant of its intention to refuse the extension of time application. The applicant contends that the letter dated 21 November 2016, is a decision which is reviewable by the Tribunal (“the decision”).

3. These proceedings concern whether the Tribunal has jurisdiction to review the decision.

   RELEVANT LEGISLATIVE PROVISIONS

4. The Tribunal has no general power to review decisions; it may only review decisions in relation to which jurisdiction has been conferred on it by an enactment: Administrative Appeals Tribunal Act1975 (Cth), s 25.

5. The relevant legislation in respect of opposition to registration of a trade mark is to be found in Part 5 of the Trade Marks Act 1995 (Cth) (“the Act”) and also in the Regulations.

6. Section 203 of the Act provides:

   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.

   CONSIDERATION

7. As stated above, the applicant seeks review of a letter from the respondent dated 21 November 2016, which advised the applicant of an intention to refuse the extension of time application which was filed by the applicant on 16 November 2016.

8. The letter dated 21 November 2016, includes an overview of the merits of the application and provides the applicant an opportunity to request a hearing in the matter of the extension of time as required by s 203 of the Act. This is plainly a “procedural fairness” letter and is not a final determination, in that it identifies an intention to refuse the extension of time application and provides an opportunity for the applicant to be heard on the matter.

9. The applicant confirmed at hearing that a request was made for a hearing in the matter of the extension of time and that the resulting decision is currently under review in the Tribunal. It appears that this decision is the reviewable decision for the applicant’s extension of time application.

10. For the above reasons, the Tribunal does not have jurisdiction to review the letter from the respondent dated 21 November 2016. The application is therefore dismissed.

I certify that the preceding 10 (ten) paragraphs are a true copy of the reasons for the decision herein of Senior Member A Poljak

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

Associate

Dated: 9 November 2017

Date(s) of hearing:	9 October 2017
Advocate for the Applicant:	Ms N Lee
Solicitors for the Respondent:	Mr M Varley, Australian Government Solicitor