Hunter Property Holdings (Aust) Pty Ltd v Vista RV Crossover Pty Ltd

[2012] ATMO 50

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Application for extension of time to serve evidence in opposition by Hunter Property Holdings (Aust) Pty Ltd to registration of trade mark application 1439409(12) - VISTA RV - filed in the name of Vista RV Crossover Pty Ltd.

Delegate:	Claudia Murray
Representation:	Opponent: Mr Peter Willis of Counsel, instructed by Mr Mark Worsnop of Kahns Lawyers, Melbourne Applicant: Mr Malcolm Bell, assisted by Ms Fiona Galbraith, patent and trade marks attorneys, both of Phillips Ormonde & Fitzpatrick, Melbourne.
Decision:	2012 ATMO 50 Section 52 opposition: Application under regulation 5.15 for extension of time to serve evidence in support – application allowed – costs awarded against trade mark applicant (objector to the extension).

Background

1. This is a decision with reasons in the matter of an application for extension of time to serve evidence in support of an opposition to registration. Vista RV Crossover Pty Ltd, of Bayswater, Victoria (‘the applicant’) filed trade mark application number 1439409 on 26 July 2011 to register, as a trade mark, the word and letters:

VISTA RV

1. The application was filed in class 12 of the Nice Classification of Goods and Services, in respect of ‘Off-road camper trailers’.

2. A ground for rejection under section 44 was raised against the application during examination, based upon prior trade mark registration number 1154833, owned by Hunter Property Holdings (Aust) Pty Ltd, for the trade mark ‘Vista’ in classes 12 and 39, in respect of the following goods and services:

   Class 12: Motorhomes, campervans, caravans, camper trailers and campmobiles; vehicle bodies and chassis; parts and accessories for the aforesaid goods

   Class 39: Rental of motorhomes, campervans, caravans, camper trailers and campmobiles; rental of accessories for the aforesaid goods

3. The applicant filed evidence of its own use in response to the ground of rejection, which was then withdrawn. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 November 2011.

4. Hunter Property Holdings (Aust) Pty Ltd, of Mooroolbark Victoria (‘the opponent’) could have waited out the three month opposition period (also extendible in some circumstances for a further three months) available to it for the purpose, but instead chose to file its notice of opposition on very day that the acceptance of the application was advertised.

5. The statutory period for evidence in support of the opposition to be served and filed therefore commenced on that day, and the final date for this to be done, 17 February 2012, passed without further communication from opponent. However, on 5 March 2012, the Trade Marks Office (‘the Office’) received a late application from the opponent for an extension of time of three months, until 17 May 2012, to serve its evidence. The reasons for needing the extra time given in the opponent’s application were as follows:

   Both parties are trying to negotiate a settlement. In Federal Court proceedings No. VID1371/2011 issued on 5 December 2011 the Opponent is seeking orders to prevent the Applicant using the word 'Vista' due to the Opponent using its registered trade mark no.1154833 since 2006. The Applicant in the same proceeding is seeking to have trade mark no. 1154833 removed for non-use and because it says use of the word 'Vista' is likely to cause confusion or deceive. The parties have consented to the Federal Court referring the dispute to mediation before a Deputy Registrar of the Court on a date to be fixed. The extension application is late because the parties have been attempting to resolve the matter unsuccessfully and the Opponent anticipated a settlement would necessarily deal with trade mark application 1439409. If mediation is unsuccessful in the Federal Court, then the Opponent will proceed with its opposition pending the outcome of the Federal Court proceeding, and/or seek a suspension of the Opposition pending the outcome of the Federal Court proceeding. The Opponent has not obtained the written consent of the Applicant to this extension but has served it.

6. The Office did not propose to refuse the extension request, but by a notice dated 16 March, it allowed the applicant fourteen days within which to object to the extension, should it wish to do so. On 2 April 2012 the agent for the applicant wrote briefly to the Office, indicating that the applicant did indeed object to the extension, and requesting to be heard on the matter.

7. I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 1 May 2012. Mr Malcolm Bell, assisted by Ms Fiona Galbraith, patent and trade marks attorneys, both of Phillips Ormonde & Fitzpatrick, Melbourne, represented the trade mark applicant (objector to the extension request) by video link. Mr Peter Willis of Counsel, instructed by Mr Mark Worsnop of Kahns Lawyers, Melbourne, represented the opponent (extension applicant) by telephone.

   The legislation

8. The relevant provisions of regulation 5.15 state:

   (1)     A party to the opposition proceedings may apply to the Registrar:

   (a)       for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12…

   (2)     The Registrar may grant an application on reasonable terms specified by the Registrar.

   (3)     The Registrar must not grant an application unless the Registrar:

   (a)       is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

   (b)       has given the parties a reasonable opportunity to make representations concerning the application; and

   (c)       is reasonably satisfied that:

   (i)        in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence…

   is appropriate.

   (4)     For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

   Evidence and submissions

9. In the course of providing its written outline of hearing submissions objecting to the extension of time, the trade mark applicant also provided to me and to the opponent the following:

   ØStatutory declaration of Malcolm Neil Bell, with Exhibits MNB-1 to MNB-4, dated 30 April 2012.

10. Mr Bell’s declaration exhibits documents relating to the Federal Court proceedings between the parties, together with recent exchanges of letters and emails between the parties’ representatives, including in relation to attendance of compulsory mediation ordered by the Federal Court. The correspondence reflects a certain degree of mutual antagonism.

11. The opponent responded with:

    ØStatutory declaration of Mark Laurence Worsnop, with Exhibits A to G, dated 30 April 2012.

12. Mr Worsnop’s declaration also exhibits correspondence exchanged between the parties, which is of an earlier date (2011) than that in Mr Bell’s declaration, but which also reflects two parties ‘at loggerheads’ over the ‘VISTA’ trade mark, as Mr Bell put it at the commencement of the hearing. It is a rare point of common ground between the parties that the history of their grievances dates back to 2008.

13. Mr Bell’s arguments against the extension went essentially to the inadequacies of the opponent’s original case in support of its extension request, and to the fact that the applicant simply disputed that the parties have ever been involved in settlement negotiations, as claimed by the opponent. He quoted various cases in support of the applicant’s position that this first extension of time request should not be granted, most notably Parkhurst Pines Pty Ltd and Ors v Truefeat Pty Ltd (1995) 31 IPR 157 (Parkhurst Pines). Mr Bell submitted:

    In the extension application, the Opponent states that the parties "are trying to negotiate a settlement". It also refers to mediation of the Federal Court proceedings.

    The parties are not, and have not ever been, trying to negotiate a settlement, either generally, or more relevantly in relation to this opposition. The parties have through their solicitors discussed whether they might meet to discuss the Federal Court proceedings. This is dealt with in the Bell declaration. It is apparent from the Bell declaration, and the correspondence exhibited thereto that there have never been any settlement discussions.

    Federal Court proceedings are now, and have for some time, been referred to mediation by the court. The Federal Court requires parties to attend mediation at some point in the litigation process before trial. That there would be a court-ordered mediation of the proceedings was essentially inevitable, so the fact that the Applicant consented to orders that the Federal Court proceedings be referred to mediation does not demonstrate that the parties were engaged in negotiations to settle these proceedings.

    Since the 2002 PGA decision[1] was handed down, the Registrar has adopted a change in practice which allows parties to suspend an opposition by mutual consent in order to have time to carry out settlement negotiations. The Official Notice dated 21 February 2008 states that extensions of time requested for the purpose of negotiations "requested after 1 March 2008 will only be allowed if the other party provides its written consent. Furthermore, the extension applicant must provide sufficient information to show negotiations are being actively pursued by both parties."

    In recent years, suspension of oppositions has commonly occurred by consent when negotiations are on foot. However, in this case, the Applicant would not have consented to a suspension of the opposition proceedings had the Opponent requested this before its evidence in support was due. It was not in its interests to do so, and settlement discussions were not on foot at that time (nor are they now). The fact the Applicant would not have consented to a suspension of time in this opposition is irrefutable evidence that negotiations were not on foot in this opposition when the Opponent's extension of time application was filed.

    The Opponent should not be permitted to obtain a de facto suspension of this opposition merely by pointing to the fact that the parties have consented to the Federal Court proceedings being referred to mediation.

    The Opponent has clearly failed to justify its extension request on the basis that negotiations are on foot…

    In Parkhurst Pines, the Hearing Officer refused the first extension of time request. The Hearing Officer was influenced by the fact that the applicants may be adversely affected by being caught up in a lengthy process, having regard to the strong possibility that the opponent will seek further extensions. Such a concern is a live issue in this case too, given the Opponent has not indicated that it has a clear intention of preparing evidence in support before the Federal Court proceedings are resolved.

    [1] Professional Golfers Association Ltd v Ladies Professional Golf Association [2002] ATMO 79, 17 September 2002

14. In response, Mr Collins re-iterated some of the arguments raised in the opponent’s original request, and disputed the applicant’s interpretation of the current status of proceedings between them. He submitted:

    The parties have each declared themselves open to settlement of the issues in dispute, as the correspondence exhibited to the declaration by Malcolm Bell shows clearly.

    On any fair reading of the correspondence in January and February 2012 about settlement negotiations, it can be seen that there were diligent and continuous efforts of the parties to find an agreed path for such negotiations. There is no unwillingness to settle. The parties have been merely exploring forms of mediation (with or without independent mediator, whether in-Court or out of Court) and available dates. None of this is out of the ordinary or supports the mischaracterization of it advanced in the Applicant's Submissions.

    The Federal Court has now fixed a time for a Court Deputy District Registrar to mediate the matter and, subject to the parties' availability, mediation at or around that time will occur.

    The Applicant itself acknowledges that there is no point in having parallel processes running in both IP Australia and the Court with respect to the same underlying facts and issues of law. Accordingly, the Applicant is content for its removal application to be referred to and determined in the Federal Court: letter of Applicant's solicitor to Opponent's solicitor, dated 24 February 2012; and further for the application to be deferred until after mediation of the Federal Court proceedings: Applicant's solicitor to Opponent's solicitor, dated 27 February 2012, each exhibited to the declaration of Malcolm Bell made 30 April 2012.

    The Disputed Application and Opposition equally should be determined in the Federal Court. This will occur because the Court will rule on all the essential matters which would be raised by the Opposition and the Disputed Application.

    Overall, it can be seen that the Federal Court proceedings put in issue all the matters which are raised by the Application and Opposition and which must be considered by the Registrar:

    a. The similarity and confusion between "VISTA" and "VISTA RV" with respect to the same goods and similar goods of the same class (ss 43) which gives rise to inherent likelihood of deception

    b. That the Opponent's Registered TM has acquired a reputation in Australia (s 60), which obviously turns on its use

    c. Whether the Opponent's TM has been relevantly used since its registration in 2006 or should be removed for non-use

    In all the circumstances, there remains a real prospect for settlement, and if the matter is not settled, the Federal Court is seized of all the issues which the Application and opposition raise. Accordingly, there is little to be gained by the parties duplicating the time and effort in pursuing the opposition when (a) the matter may be resolved by settlement negotiations under the auspice of the Federal Court orders or otherwise; or (b) if not so resolved, will be heard and determined within the Federal Court proceedings which are on foot.

15. Mr Collins continued with the comments that, notwithstanding the opponent’s clear preference that progress of all matters now be held over until after the date of the court-appointed mediation, set for 6 June 2012, it had also been preparing its evidence material, with a view to serving and filing it within the time covered by its extension request.

Discussion

1. According to both patent and trade mark precedent case law,[2] the factors to be considered in determining whether an extension of time is ‘appropriate’, in terms of regulation 5.15(3), can be summarised as:

   (a) the length of time already allowed;

   (b) the reasons put forward to justify the extension;

   (c) the seriousness of the opposition;

   (d) the inconvenience likely to be suffered by the two parties; and

   (e) the public interest in the matter.

   [2] See, for example, Lyons (trading as Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416.

2. It is true that this Office is very conscious of the need to discourage some opposition parties, who appear to be deliberately using the extension of time provisions as a strategic tool to delay the determination of their opposition. However, it is also mindful of the important principle that a serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision.[3] To prevent that from occurring, without due consideration of the possible ramifications, could be to carelessly subject both trade mark applicant and opponent to the real possibilities of incurring considerable extra expense and experiencing further (and much longer) delays while they wrangle their unresolved dispute into the courts.

   [3] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858.

3. In this instance, the parties have already taken their differences into the Federal Court, and I agree with the opponent that the issues before the court bear a close relationship with those relevant to this opposition. It seems that this extension of time dispute may have arisen in part because the parties could not agree prior to this point upon the need to make a joint request that the opposition be suspended, at the very least until after the outcome of the compulsory court mediation is known. However, from observations made during the hearing, it seemed clear to me that, despite their differences, both parties were coming to the realization that this action may now be the obvious next step.

4. I make no further comment upon what future direction this opposition, being a single aspect of the overall picture of disputation between these parties, might take. Here, I simply conclude that, taking into account all the circumstances of this case, against the criteria I have listed above, I do not believe that it would be appropriate for me to refuse the opponent’s request for extension of time. The timeframes for this first extension are unusual in themselves, as the opponent eschewed both the options available to it to extend the initial period within which it might begin to prepare its opposition. It might have applied for an extension of the opposition period, in order to conduct genuine research into the grounds of opposition,[4] and it could also have chosen to file its notice of opposition towards the end rather than at the beginning of the opposition period. Instead, by filing its notice on the very first day available, although the opponent clearly emphasized the importance it placed on opposing the registration as soon as possible, it simultaneously reduced the time available to it for assembling its evidence by up to six months, to the applicant’s obvious advantage in terms of the timely administration of the opposition process so far.

   [4] Regulation 5.2(2)(e) of the Trade Marks Regulations 1995.

5. Further, while the opponent’s original case for needing more time to serve and file its evidence may not have been exemplary, it then chose to defend its application at hearing, thereby again demonstrating its commitment to the extension and to the seriousness of opposition process as a whole. While I have noted the applicant’s concerns about the possible ‘indefinite delay’ which may be caused by the granting of this extension, I also note that it was able to put no compelling arguments before me as to the relative inconvenience it was likely to suffer as a result of the delay immediately at issue here. This can be sharply contrasted with the inconvenience that might be expected to be suffered by the opponent which, as I have described above, has clearly demonstrated its commitment to its opposition, but is now faced with the prospect of being denied the opportunity to support this with evidence.

6. In regards to the public interest, while I agree with the applicant that there exists a reasonable public interest in any opposition proceeding in a timely manner, I do not agree that this should override the far stronger public concerns I have alluded to above. That is, the strong public interest in a serious opposition being decided on the merits of the case, not upon what amounts to an administrative hitch very early in proceedings.

   Decision

7. The opponent’s hearing submissions in support of its application for extension of time to serve its evidence in support have satisfied me that it is appropriate to grant the extension at issue, until 17 May 2012, without further delay. This I now do.

   Costs

8. The trade mark applicant sought its costs in this matter. However, it is usual for costs to follow the event, and I believe that is an appropriate outcome here. I award costs, according to the official scale, against the unsuccessful trade mark applicant, Vista RV Crossover Pty Ltd.

   Claudia Murray
   Hearing Officer
   Trade Marks Hearings
   15 May 2012