Horizons (Asia) Pty Ltd and Registrar of Trade Marks

[2017] AATA 1332

Horizons (Asia) Pty Ltd and Registrar of Trade Marks [2017] AATA 1332 (21 August 2017)

Division:GENERAL DIVISION

File Number:           2017/1946

Re:Horizons (Asia) Pty Ltd

APPLICANT

AndRegistrar of Trade Marks

RESPONDENT

DECISION

Tribunal:Senior Member A Poljak

Date:21 August 2017

Place:Sydney

The Tribunal does not have jurisdiction to review the email dated 16 November 2016 and the application is therefore dismissed.

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Senior Member A Poljak

CATCHWORDS

PRACTICE AND PROCEDURE – jurisdiction – whether tribunal has jurisdiction to review – opposition to registration of trade mark – request to be heard on extension of time application – extension of time already determined – no jurisdiction – application dismissed.

LEGISLATION

Administrative Appeals Tribunal Act 1975 (Cth)

Trade Marks Act 1995 (Cth)

Trade Marks Regulations 1995 (Cth)

REASONS FOR DECISION

Senior Member A Poljak

21 August 2017

1. The applicant, Horizons (Asia) Pty Ltd, sought to oppose the registration of trade mark ENAGIC in the name of Enagic Australia Pty Ltd (trade mark application number 1615861) (“the opposition”) and requested an extension of time to file a statement of grounds and particulars pursuant to regulation 5.9 of the Trade Marks Regulations 1995 (Cth) (“the Regulations”).

2. By email dated 15 November 2016, the applicant was notified that the request for an extension of time in which to submit a statement of grounds and particulars was refused and accordingly the opposition had ended. This decision is currently the subject of another review application before the Tribunal.

3. In an email dated 16 November 2016, the applicant acknowledged receipt of the email and letter dated 15 November 2016 and queried:

   “Thinking forward, in the likelihood of the letter to review been submitted today and an outcome for the letter will not be known until after today, would it be acceptable for the opponent to provisionally file an application with fees for a hearing to hear the Refusal to the time extension for the filing of the SGP, given that the statutory 3 months to file the SGP expires today (i.e. at midnight of 16 Nov 2016) and also the Refusal was not notified to the opponent until the previously specified deadline to file a hearing application had expired?”

4. In response, the respondent sent the applicant an email dated 16 November 2016, stating:

   “I am sorry to inform you that an application for a hearing (made today or at any time in the future) will not be accepted. As has been explained to you on several occasions, the deadline by which you needed to file an application to be heard was midnight on 14 November 2016 and despite you having plenty of opportunity to make this application, it was not made.

   I should also make it clear to you that although you have advised of your intention to take further action on this matter, the process arising from the refusal will continue without interruption; in particular, now that the opposition has ended, the application will proceed to registration as quickly as IP Australia’s administrative process allows, which will be very soon.”

5. The respondent then proceeded to clarify two points that were apparently discussed with the applicant in an earlier telephone conversation.

6. The applicant contends that the email dated 16 November 2016, is a reviewable decision before the Tribunal because it is a “refusal to grant a hearing to hear the refusal for the extension of time for the filing of the statement of grounds and particulars” (“the decision”).

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

   RELEVANT LEGISLATIVE PROVISIONS

8. 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 Act 1975, section 25.

9. The relevant legislation in respect of a 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.

10. Section 52 of the Act provides:

    1)If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

    2)The notice of opposition must be filed:

    a)in the manner and form prescribed by the regulations; and

    b)within the prescribed period, or within that period as extended in accordance with the regulations or in accordance with subsection (5).

11. A “notice of opposition” is defined in regulation 5.2 as “a notice of intention to oppose; and a statement of grounds and particulars”. Regulation 5.5 provides, “notice of opposition is taken to be filed when the notice of intention to oppose and the statement of grounds and particulars have been filed under regulations 5.6 and 5.7”.

12. For section 52(2) of the Act, the period of time for “filing a notice of intention to oppose is 2 months from the day the acceptance of the trade mark application is advertised in the Official Journal under paragraph 34(b) of the Act”, pursuant to regulation 5.6. Additionally, the “notice must be in an approved form” and the “Registrar must give a copy of the notice to the applicant”.

13. Regulation 5.7 of the Regulations deals with the filing of a statement of grounds and particulars and provides:

    (1)  A statement of grounds and particulars must be filed within one month from the day the notice of intention to oppose is filed.

    (2)  The statement must be in an approved form.

14. Regulation 5.9 provides that a person who intends to file an application under section 52(1) of the Act may request the Registrar to extend the period of filing either a notice of intention or the period for filing a statement of grounds and particulars.

15. If a request is made under Part 5 of the Regulations, and the Registrar proposes to grant the request, the Registrar must give the parties an opportunity to make representations, pursuant to regulation 5.4.

16. Section 224(7) of the Act provides that 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. “Relevant act” is defined in section 224(8), which provides:

    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).

17. For the purposes of the definition of “relevant act” in section 224(8) of the Act, prescribed acts and documents are contained in regulation 21.28.

    CONSIDERATION

18. The applicant contends that the email from the respondent dated 16 November 2016, was a refusal to grant a hearing to hear the extension of time application refusal and is, therefore, a reviewable decision before the Tribunal. I do not agree for the following reasons.

19. I am not satisfied that the email from the applicant to the respondent dated 16 November 2016, was an application to be heard on the extension of time application for the filing of the statement of grounds and particulars. While the making of such an application was queried by the applicant, it was no more than a hypothetical question. In response, the respondent foreshadowed a refusal to such an application and clarified potential issues faced by the applicant. This was because the extension of time application had already been determined and the opposition had already subsequently ended.

20. In any event, whether or not a formal request was made by the applicant to be heard on the extension of time application, the decision is not reviewable by the Tribunal. There is no jurisdiction conferred by enactment for the Tribunal to review a decision refusing to grant a hearing to hear an extension of time application to file a statement of grounds and particulars.

21. The applicant further contended at hearing that the respondent dismissed the opposition in the email dated 16 November 2017, and accordingly the Tribunal has jurisdiction to review that decision under section 99A of the Act.

22. Firstly, I do not agree that the email is a dismissal of the opposition. It merely states, “…now that the opposition has ended”. This is not a new decision but a restatement of the decision contained in the email dated 15 November 2016. Secondly, section 99A of the Act is not enlivened in these proceedings as it deals with the removal of a trade mark from the register for non-use. This is not the case here; the opposition concerns the registration of a trade mark.

23. For the above reasons, the Tribunal does not have jurisdiction to review the email dated 16 November 2016 and the application is therefore dismissed.

I certify that the preceding 23 (twenty- three) paragraphs are a true copy of the reasons for the decision herein of Senior Member A Poljak

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Associate

Dated: 21 August 2017

Date of hearing:	24 July 2017
Applicant:	Ms N Lee, Horizons (Asia) Pty Ltd
Solicitors for the Respondent:	Mr M Varley, Australian Government Solicitor