Interactive Aroma Technology Australia Pty Ltd

[1999] ATMO 49

TRADE MARKS ACT 1995

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

Re:     Application to revive trade mark application number 740497 in the name
           of INTERACTIVE AROMA TECHNOLOGY AUSTRALIA PTY LTD
           which lapsed after acceptance

Background
This matter concerns trade mark application number 740497, which was filed on 31 July 1997 in the name of Interactive Aroma Technology Australia Pty Ltd (the applicant) to register the trade mark:

 

The mark was accepted for registration, the acceptance having been advertised in the Australian Official Journal of Trade Marks of 4 December 1997.  In the absence of any proceedings following the advertisement of acceptance, the registration of the mark, in accordance with subregulation 7.1, was due on 4 June 1998, subject to payment of the prescribed registration fee.  This fee was not received by the due date.

On 24 August 1998, the applicant remitted the registration fee and applied for an extension of time, under section 224 of the Act, within which to revive and register the mark.  In an official letter of 2 September, the Trade Marks Office (the Office) advised the applicant that a trade marks data search had revealed the existence of a later filed application number 765581 for an identical mark and that a revival of application 740497 would adversely affect that pending application.  The applicant was allowed time to apply for a hearing on the matter.  Subsequently, the applicant filed evidence in support of a claim as to use of its mark prior to the filing of application 765581.  This evidence was found to be insufficient.  The applicant made further submissions, primarily based on its registered mark AROMASLIM, which has been cited against application 765581, and an assertion that no notice had been received by it relating to the notification of acceptance of the mark and payment of a registration fee.  Extensive correspondence between the Office and the applicant ensued.  Finally, a hearing was set down in Sydney on 10 March 1999.  The applicant decided not to appear at the hearing, but filed its written submissions at the IP Australia State Office in Sydney.

Applicant's submissions
The applicant's submissions consist of a statutory declaration, with exhibits, executed by Mr Philip Maitland, the managing director of the applicant company.  In the declaration, Mr Maitland states that, in February 1997, he had made arrangements with a Mr Clint Hallam, who lived in Perth, to act as the applicant's distributor, as he himself was residing in the United States of America.  Shortly after, he had arrived in Perth, where an interview had been held on the Today Tonight television show concerning the product under the AROMATRIM trade mark.  Mr Maitland had suggested at that interview, that fifty viewers trial the product for a month and that the results of that trial be reported later.  He says the trial was successful and a report followed.

Mr Maitland had engaged Mr Tony Davis, a solicitor of the firm Tony Davis & Associates, to apply for registration of his trade marks.  Along with the trade mark under consideration, applications for other trade marks had been filed by Mr Davis at the same time.  No notice for payment of the registration fees in relation to the subject mark, nor any other communication about the status of the mark, had ever been received by Mr Davis, Mr Maitland says.  He had become aware of the lapsing of the application through a search of the Internet, when he had taken over the trade mark application prosecution himself.  Mr Maitland claims that the failure to advise him of the payment to register the mark would not have occurred had the correspondence containing the notice been sent by registered mail. 

Discussion
Under section 68 of the Act, if a trade mark has been accepted for registration and there has been no opposition to its registration, or an opposition has been dismissed, then, in the event of non-payment of a registration fee within the period specified under the regulations, the application lapses.  Upon advertising the acceptance of a mark in the Australian Official Journal of Trade Marks, the applicant is notified of its acceptance and the requirement to pay the registration fee.  The period for registration is six months, but it can be varied in some circumstances.

It is possible to revive a lapsed application, under the provisions of section 224, if the applicant succeeds in establishing a case and the revival would not disadvantage any later applications.  The granting of the extension on these grounds is discretionary.  In the present circumstances, the revival is sought in terms of the provisions which read:

224.(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. 

The Registrar, or his delegate, needs to consider whether the applicant's claim, that it did not receive a notification concerning payment of the registration fees, can be regarded as "circumstances beyond the control of the persons concerned" within the meaning of paragraph (b) of the said subsection, which is equivalent to paragraph 131(1)(a) of the Trade Marks Act 1955.

In Atomic Skifabrik Alois Rohrmoser v The Registrar of Trade Marks (1987) 7 IPR 551, at 558, Jenkinson, has defined that term as:

In the context in which it is found, the expression "circumstances beyond the control of the person concerned" does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent.  The operations of nature and the activities of strangers may result in such occurrences.  So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed.  But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in s 131(1)(a), in my opinion.  Nor, in my opinion, are the acts or omissions of that agent's servants.  The section is, I think, correctly described as a force majeure provision.      

The Office records indicate that, on 18 November 1997, a standard notice, which included the information concerning the registration fee, was despatched to the applicant's address for service which, at that time, was the post office box address of Mr Maitland's solicitor, Mr Davis.  I must stress here that it is not the practice of the Office to send the standard notices by registered mail.  In terms of subregulation 21.3(2) the Registrar must be notified of a new address.  If the notices despatched from the Office do not reach the addressee due to a change of address, an incorrect address, or other reasons, then the mail is usually returned to the Office, with the envelope bearing the remarks from the person responsible for the delivery of the mail as to the reasons for the failure of its delivery.  That envelope and the returned correspondence are then attached to the respective file.  If there is no record of the notices or any correspondence having been returned unclaimed, it is the Office practice that an assumption is made that the mail despatched by the Office has reached its destination. 

In a statutory declaration annexed to Mr Maitland's declaration, Mr Davis declares that his firm had not received any request for payment [of the registration fee] other than for the applicant's trade mark applications numbers 742173 and 746386.  As both of these applications had been filed and advertised accepted later than the present application, it seems somewhat surprising that Mr Davis, a legal practitioner in care of the applicant's trade marks, did not, at any time, enquire as to the status of that application.  It appears that the applicant was relying on its agent to whom it had entrusted its application and, in turn, the agent was awaiting advice from the Office on any further action in relation to the application.  Be that as it may, it appears, from Mr Maitland's declaration, that, after leaving the Office, the standard notice somehow became lost or, at least, did not reach the solicitor's office.  The annexed declaration of Mr Davis attests to this.  As a consequence, Mr Davis, acting for the applicant, would not have been aware of the due date for paying the registration fee in respect of this application and therefore could not meet a requirement under the Act.  In the absence of any evidence to the contrary, such a situation, I believe, falls within the meaning of "circumstances beyond the control of the person concerned" and justifies the granting of an extension of time for reviving the application.    

Conclusion
I have found the applicant has established a case for revival of its application.  However, in view of the time which has elapsed between the expiry of the time for paying the registration fee and the revival of this application, I have determined that, in the public interest, the acceptance of the application be readvertised in order that any person who may wish to might file opposition to the mark's registration.  In this regard, I rely on the provisions of paragraph 34(b) and subregulation 21.14(5) of the Act. 

Vija Zars
Hearing Officer

12 May 1999