Insfin Insurance + Finance Group Pty Ltd

[2008] ATMO 80

TRADE MARKS ACT 1995

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

Re:Opposition by Insfin Insurance + Finance Group Pty Ltd to an application under section 92 of the Act by Razor USA LLC to remove trade mark number 481851(9) - RAZAR - in the name of Insfin Insurance + Finance Group Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Walter Ripper of Insfin Insurance + Finance Group Pty Ltd Applicant: Benjamin Fitzpatrick instructed by Griffith Hack
Decision:	2008 ATMO 80 Section 224 application for extension of time to file notice of opposition granted. Intention to direct that Opponent has 3 months to file and serve evidence in support Parties to bear their own costs

Background

1. Insfin Insurance + Finance Group Pty Ltd (“the opponent”) is the owner of Trade Mark 481851 razar, which had been registered for Class 9 goods since 19 February 1988.

2. Razor USA LLC (“the removal applicant”) applied for the removal of the opponent’s trade mark on 29 May 2007. The application was advertised by IP Australia; however, no opposition was raised by the opponent and the trade mark was duly removed from the Register on 2 October 2007.

3. On 9 October 2007, the opponent filed Notice of Opposition to removal of its trade mark, and applied for an extension of time in which to do so. On 24 December 2007, the opponent was advised by this office that the application for extension of time had been for an insufficient period of extension and that the application had been under the wrong provisions of the Trade Marks Act 1995 (the Act) and Trade Marks Regulations1995 (the Regulations). The total period of time to be extended was two months, to allow for the filing on 9 October 2007.

4. The opponent was not legally represented, and required some procedural assistance from the Trade Marks Office before correctly filing an application pursuant to sub-sections 224 (2) and (3) of the Act.

5. Eventually, the opponent, on 28 April 2008, sought a hearing of the matter in order to convince the delegate of the Registrar of Trade Marks. The removal applicant has been invited to participate in the hearing as a matter of procedural fairness, as described in the Trade Marks Manual of Practice and Procedure, part 49.4.

   Evidence

6. The opponent has filed with this Office, and served on the removal applicant, three declarations to support the opposition to removal. These declarations are dated 28 April 2008, 3 June 2008, and 6 June 2008.

7. The first declaration provides a chronology of events relating to the opponent’s receipt of official correspondence, and details of trade mark use outside the prescribed period for removal opposition. The later declarations provide examples of claimed trade mark use within the prescribed period.

8. There has been considerable correspondence in this matter. Of particular relevance are the letters to this office on 3 June 2008 and to the legal representatives for the applicant on 10 June 2008, which discuss the postal address of the opponent.

9. In some correspondence the opponent was critical of the manner in which the removal applicant’s representatives conducted its inquiries into use of the opponent’s mark.

   The Hearing

10. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 19 June 2008.  The opponent was represented by its Managing Director Walter Ripper, who appeared by telephone link.  Razor USA LLC was represented by Benjamin Fitzpatrick of counsel, instructed by Griffith Hack, Patent and Trade Mark Attorneys, who appeared by video link.

11. Mr Ripper effectively reiterated those matters raised in his correspondence with this office. His company had changed its postal address but not advised the Registrar, although the previous address was being used by a separate corporate entity controlled by Mr Ripper. While Mr Ripper could not explain why mail addressed to the old address did not reach him, he suggested it could be that “Razar” might have been mistaken for a surname and placed in the wrong box.

12. The essence of the opponent’s case is that he has ample evidence of use of his trade mark and, had he known of the removal application, he would have successfully opposed it.

13. Counsel for the removal applicant remarked that the concise basis on which the extension was sought should be detailed and cogent. He submitted that the evidentiary onus was on the opponent, but there was no evidence of any inquiries made by the opponent as to why the removal correspondence was not received.

14. Counsel for the removal applicant further submitted that the Regulations provided for essential time limits. In this case, counsel reminded me of the need for procedures to be followed, and collateral effects of allowing the removal opposition to be commenced, such as the fees to be applied to extensions of time.

    Discussion

15. Having regard to the evidence filed, and the submissions made, I am satisfied that the opponent did not receive the original removal application, nor any official correspondence relating to it  until being advised of the removal of the trade mark.

16. The evidence indicates that the opponent has prima facie grounds to oppose the removal of its trade mark from the register.

17. On the other hand, the opponent did not keep its address for service up to date. Fortunately for the opponent, the previous address was still being used by a business entity in which Mr Ripper has an interest. There is no evidence of any inquiries made by the opponent of the current user of the Post Office box as to whether official IP Australia correspondence relating to this matter had been received at that address.

18. However, the fact remains that the opponent did not receive notification of the application to remove its trade mark from the Register, and was thus unable to oppose the application within the time frame specified in the Act and Regulations. Therefore, I am satisfied that there are ‘special circumstances’ for the purposes of sub-section 224(3) of the Act.

19. Having found special circumstances, I am given, by the wording of the sub-section, a discretion as to whether or not to allow the extension of time: see, for example, Cynthia Armaro [2007] ATMO 9 (12 February 2007), at paragraph 16. In deciding how to exercise this discretion, I adopt the principles developed by Hearing Officer Michael Homann in Re Ausorb Pty Limited (1996) 36 IPR 178, and consider that the most important factors in coming to a ‘fair and reasonable’ decision in the matter include the relative inconvenience to the parties concerned and the public interest. See also Re Hall (1998) AIPC 91-425 at 37,393-4, which also adopts those principles.

20. The opponent has lost registration of its trade mark, while the removal applicant has as a consequence gained registration of a trade mark. There is a possibility that third parties would be affected by the opponent’s trade mark being restored to the register. On balance, it seems that the relative inconvenience would be to the opponent if the extension is not granted.

21. There is undoubtedly a public interest in the system of registration of trade marks being conducted with regularity and certainty. There is also public interest in registered owners of trade marks who are in fact using their trade marks being able to continue to do so. I take guidance from the High Court:

    In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be. Kaiser Aluminum & Chemical Corporation v. Reynolds Metal Co. [1969] HCA 7; (1969) 120 CLR 136, per Kitto J at paragraph 14.

22. I am, therefore, persuaded that I should exercise my discretion to allow the extension of time as requested by the opponent.

    Decision

23. Pursuant to sub-section 224(3) of the Act, I extend the time for Insfin Insurance + Finance Group Pty Ltd to file its notice of opposition to 9 October 2007.

24. For the purposes of the opposition proceedings, and pursuant to regulation 5.16 of the Regulations, I hereby notify the parties that I intend to direct that the opponent file and serve evidence in support of its opposition within three months from the date of this decision.

25. The parties may make written representation with regard to my proposed direction within one month of this decision. If I do not receive any representation, or any representation opposing my intended direction, I direct that the opponent file and serve evidence in support of its opposition within three months from the date of this decision.

26. I order that the parties bear their own costs in relation to this hearing.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    19 September 2008