International Data Group, Inc

[1999] ATMO 64

TRADE MARKS ACT 1995

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

RE:Trade Mark Application Number 783545 for the word GAMESTAR in the name of INTERNATIONAL DATA GROUP, INC.

Background

On 11 January 1999, International Data Group, Inc. (the applicant) filed an application to register the trade mark GAMESTAR in class 16. Lord & Company, Patent and Trade Mark Attorneys of Perth, act for the applicant. The applicant underpaid the $150 filing fee, required by the regulations, by an amount of $20. In a letter dated 21 January 1999, Mr Jesus Campo, of the Trade Marks Office Fee Processing Unit, wrote to the agents for the applicant informing them of the shortfall. A copy of the letter was sent to the agents via facsimile on that day. In that letter, Mr Campo indicated that the filing date would be set as the date on which the outstanding fee was paid. This procedure is as outlined in terms of s.223(5) of the Trade Marks Act 1995 (the Act) and Regulation 21.23 under that Act.

The agent paid the fee on that same day and requested that the date of 11 January still be accorded the application date of their application. On 27 January, the Deputy Registrar, Client Services and Trade Marks Support, Ms Meena Jacques, telephoned the agents for the applicant to discuss their request. The note on file indicates that Ms Jacques informed the agents that the Trade Marks Office had provided notification, in accordance with the requirement on this Office under s.223(5), to inform the applicant of the underpayment. Ms Jacques also indicated that it was not possible to obtain an extension of time under the provisions of s.224, because no time limit existed for the act of payment of the fee.

On 1 February 1999, Mr Kelvin Lord, of Lord & Company, submitted an application for an extension of time, in which to pay the application fee, claiming the provisions of s.224(1), (2) and (3). Mr Lord sought an extension of the time period, between the original filing of the application, on 11 January, and the notification of the underpayment of the fee by this Office, on 21 January. The application was supported by a statutory declaration from Ms Katherine Victoria Amy Quinn, a filing clerk with Lord & Company.

Ms Shirley Harris, Acting Assistant Director Client Services and Support, responded to this request in a letter dated 12 February, sent by facsimile. Ms Harris indicated that the provisions of s.224 did not apply, because no time limits existed for the payment of the application fee.

Mr Lord replied to that correspondence with a facsimile on 19 February that argued the matter with more detailed submissions. Ms Harris replied to that facsimile and concluded with an offer for the agents to seek a hearing on the matter. The offer was taken up and the matter was set down to be heard on 7 April 1999.

On 6 April 1999, a facsimile copy of a statutory declaration was received in this Office from Ms Sherrie Anne Heather, personal assistant to Mr Lord, setting out, in further detail, the circumstances surrounding the initial application on 11 January. On 7 April, before the time set for the hearing, Mr Lord telephoned to say that the applicant did not intend to proceed with the hearing and no representation would be made. However, the application was not withdrawn and the matter has now been directed to me for decision.

Discussion

In his previous submissions, Mr Lord had argued that the provisions of s.224 of the Act applied to the application in terms of any or all of sub-sections (1), (2) and (3). This part of the Act reads as follows:

Extension of Time

224. (1) If, because of an error or omission by a trade marks officer, 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 must extend the time for doing the act.

(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.

(3) If:

(a)         a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and
(b)         on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;

the Registrar may extend the time for doing the act.

All three subsections above refer to 'a relevant act' that is 'required by this Act' to be done 'within a certain time'. In order to rely on these provisions, an action would need to be shown to fall under the definition of 'a relevant act', and also be shown to be an action that was 'required' to be done, 'within a certain time'.

(a) A 'Relevant Act'

Mr Lord submitted that the payment of the application fee in respect of a trade mark is 'a relevant act'. He made this claim because, he said, it follows that any act (other than a prescribed act) done in relation to a trade mark, must be a relevant act from the definition given in s.224(8). Mr Lord argued that all acts must be either 'relevant' or 'prescribed', from the reading s.224(8) alone. Prescribed acts are those listed in Regulation 21.28 and paying the application fee is not listed among them. On this basis, he argued that the paying of the application fee must be a 'relevant act'. Subsection (8) of s.224 reads:

(8) In this section:
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).

I accept Mr Lord's reasoning on this point. The payment of the application fee is, I believe, a 'relevant act'.

(b) 'Within a Certain time'

Mr Lord submitted that the application for the extension of time, under s.224, was to extend the time period between the original filing of the application, on 11 January, and the notification of the underpayment by this Office by means of Mr Campo's facsimile, of 21 January. In order to obtain this conclusion, Mr Lord argued that the time period between these events was a "certain time" envisaged by the legislation at s.224 in subsections (1), (2) and (3).

I do not agree with Mr Lord on this issue. A reading of s.224 indicates that the provisions of sub-sections (1), (2) and (3) are only available for 'relevant acts' that are 'required by this Act to be done within a certain time'. When the application was made on 11 January (and underpaid by $20) there was no time limit placed on making good the remainder of the fee by any constraint of the Act or the Regulations.

Failure by the applicant to pay the amount, by which the application fee here was short, might have eventually resulted in the application and underpaid fee being returned. This situation would only have occurred, however, after the applicant had been clearly advised of the shortfall. However, no time limit exists for making good the full payment. There is simply no requirement that the fee must be paid within a set or given time period.

The non-payment or underpayment of an application fee is governed, inter alia, by the provisions of s.223(5) and regulation 21.23. This legislation reads:

223(5) If the Registrar, the Commission or the Comptroller notifies the person concerned or his or her agent, in accordance with the regulations, that the fee has not been paid, the act is not taken to have been done, or the document is not taken to have been filed, before the day on which the fee is paid.

Notice of non-payment of fee

21.23 For the purposes of subsection 223(5) of the Act (which deals with non-payment of fees), the Registrar or the Comptroller must notify in writing the person concerned, or his or her agent, that the fee has not been paid, within 14 days after the doing of the act, or the filing of the document, for which the fee is payable.

Accordingly, should the Registrar advise a trade mark applicant that an application fee has not been paid, and that notice is issued within 14 days of a trade mark application being filed, the legislation states that the date of the application will be the date on which the application fee is fully paid.

This process depends solely on the Registrar. Once the Registrar acts within the 14 days specified in Regulation 21.23 to notify the applicant, this triggers s.223(5) and that is the end of the matter. As s.223(5) indicates, the filing date is 'the day on which the fee is paid'. The formulation of this part of the legislation makes no provision concerning a time limit for any action on the part of the applicant. Because no time limit exists for the payment of the outstanding fee, the provisions of s.224(1), (2) and (3) can have no application to the situation.

Conclusion

From the foregoing I have found that the payment of the fee, in relation to filing a trade mark application, is a relevant act in terms of s.224(8). I have also found that it is not an action for which an extension of time can be obtained.

Therefore, as a delegate of the Registrar, subject to an appeal from this decision, I refuse the application for an extension of time in which to pay the application fee, made on 1 February 1999. I find that the date of filing in the present case is, accordingly, the date on which the balance of the application fee was paid, 21 January 1999.

Don Nancarrow

Acting Hearing Officer
Trade Mark Hearings
21 June 1999.