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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: International Data Group, Inc [1999] ATMO 64
Case: [1999] ATMO 64
Decision Date: 21 June 1999

CaseChat Overview and Summary

This matter concerns a trade mark application by International Data Group, Inc. for the word GAMESTAR. The applicant lodged the application on 11 January 1999, but underpaid the filing fee by $20. The Trade Marks Office notified the applicant's agents of the shortfall on 21 January 1999, stating that the filing date would be the date the outstanding fee was paid. The agents paid the balance on the same day and requested the original filing date be retained.

The legal issues before the delegate of the Registrar of Trade Marks were whether the payment of the application fee constituted a "relevant act" and whether an extension of time could be granted under section 224 of the *Trade Marks Act 1995* to preserve the original filing date. Specifically, the delegate had to determine if the payment of the application fee was an act required by the Act to be done "within a certain time" for the purposes of section 224.

The delegate reasoned that while the payment of the application fee could be considered a "relevant act" under section 224(8), it was not an act required to be done within a certain time. The delegate noted that section 223(5) and Regulation 21.23 govern the situation of underpaid fees, stipulating that the filing date will be the date the fee is fully paid if the Office notifies the applicant of the shortfall within 14 days. Crucially, there is no time limit imposed by the Act or Regulations for the applicant to rectify such an underpayment once notified. Therefore, section 224, which provides for extensions of time for acts required to be done within a certain time, was not applicable.

Consequently, the delegate refused the application for an extension of time. The delegate determined that the filing date for the GAMESTAR trade mark application was 21 January 1999, the date on which the balance of the application fee was paid.

Orders