Jerry a Dorminy v Donald Richard Algie

[1991] ATMO 7

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by DONALD RICHARD ALGIE to an application by JERRY A. DORMINY for an extension of time in which to serve evidence in support of his opposition to trade mark application number 517452.

This matter concerns an application for an extension of the time provided by reg. 43 for service of evidence in support of the opposition by JERRY A. DORMINY doing business as HOG'S BREATH SALOON of 521 Dorado Drive, Ft. Walton Beach, Florida, 32548, USA (the opponent) to registration of the mark shown below for "Restaurant services" in Class 42 in the name of DONALD RICHARD ALGIE of 14 Wildlife Road, Airlie Beach, Queensland, 4802 (the applicant).

Acceptance of application 517452 was advertised in the Official Journal of 26 April 1990.  The opponent, through his attorneys F.B. Rice & Co of Sydney, lodged notice of opposition on 25 July 1990.  In accordance with the provisions of reg. 43, evidence in support of this opposition became due for service on 25 October 1990.

On that date, the opponent's attorney lodged an application for an extension of time of three months to 25 January 1991 within which to serve the evidence in support.  The grounds for this request were stated as:

"During the initial three month period the opponent has proceeded with the collection of its evidence for service in this matter, however further time is required in order to complete the collection of this evidence and to put this evidence into declaratory form for service."

The applicant, through his attorneys Peter Maxwell & Associates of Brisbane, objected to the grant of the extension in a letter dated 19 November 1990.  A hearing was set down to decide the matter but both sides declined to appear and relied instead on written submissions.  The applicant, the objector to the extension, lodged a submission on 27 December 1990, while the opponent, the applicant for the extension, lodged his submission on 6 December 1990.
          I believe the applicant's main points in objecting to the extension may be summarised as follows:

.The opponent has had notice since 20 August, 1990 that evidence in support of the above opposition would be necessary by 25 October 1990.

.Delays relating to the fact that the opponent is located overseas can not be justified as some relevant information was supplied in relation to an opposition to application No. A517,451.

.The applicant submits that it can be implied that the inability of the opponent to supply an invoice or any other evidence supporting an opposition to application No. A517,452 indicates there is little or no risk of public confusion or deception that would result from the registration of that application.

.The opponent itself set a precise deadline in its letter of 8 August 1990 for a response to its letter of demand which was complied with by the applicant.  After setting this precise deadline for the purpose of collecting evidence in support of the opposition in the following two month period, the opponent has

failed to produce any indication that this is a serious matter requiring further time to collect evidence.  As the opponent has been able to provide some indication of the evidence that will be lodged in support of application NO. 517,451 it would not seem possible to claim that any additional difficulties relating to communications or the collecting of evidence by the overseas opponent have been the cause of any delay.  The applicant also submits that it would be severely disadvantaged by a further three month period to collect evidence as this opposition is preventing the applicant from finalising commercial arrangements.

The opponent's arguments in favour of being granted the extension can be summarised as follows:

.In the balance of convenience as between the parties there will be a very great detriment to the opponent if the extension is refused.

.There is a serious opposition foreshadowed involving serious questions of public interest in the possibility of deception or confusion, proprietorship and the purity of the Register.

.No objection was made to a request for an extension of time in the case of a similar opposition to trade mark 517451(25).

.The opponent is proceeding with reasonable diligence and speed to collect and serve his evidence in support.

.Evidence regarding use of a mark in respect of goods is often easier to provide than evidence of use of a mark in respect of services.

.The Registrar has previously recognised that opposition proceedings can be protracted, particularly when overseas parties are involved, as in the present instance, with additional delays if intermediary parties such as overseas attorneys are involved.

.The opponent lodged his notice of opposition within the initial three month term and, if the present extension is granted, will have had a period of six months for service of evidence in support.  A settlement proposal had been sent to the applicant but rejected leaving a two month period to lodge the evidence.  Periods of time of nine to twelve months are not uncommon in similar instances of collecting evidence, especially where third parties and overseas entities are involved.

.The opponent is the proprietor of a US registration for a similar mark and the same services as the present application.

.A considerable amount of public interest was involved in the present instance and the extension of time should be granted to allow the parties sufficient time to present their arguments and provide the Registrar with the fullest disclosure of the relevant facts.

.Protection of the applicant's rights arising from registration of its mark, when and if that is achieved, is ensured by the terms of sub-section 53(2) of the Act.

.One of the grounds of the opposition is the opponent's claim of superior title to the mark and it is in the interests of both parties that the extension be granted as the proprietorship of the mark will be eventually clearly decided prior to any licencing agreements.

In determining whether or not an extension of time is justified, it is first necessary to find that the party seeking the extra time has made out a proper case.  As determined in Vangedal-Nielsen and others v Smith (Commissioner of Patents) and another, 33 ALR 144 per Bowen CJ at 150:

"The Commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest which has been mentioned, but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension.  It would be wrong if he granted an extension simply because no one had raised rather exceptional circumstances why it should not be granted."

Second, explicit in these directives is the matter of public interest.  In this regard, and as per Richardson J. in Pioneer Hi-Bred Co v Hy-Line Chicks Pty Ltd, (the Hy-Line Chicks case) [1979] RPC 410 at 435:

"Within reasonable limits it furthers that public interest to allow consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception or confusion."

Third, is the acknowledged fact that, almost as a matter of course, the statutory time provided for the preparation of evidence in support of an opposition is found to be less than adequate.  Adapting the words of His Honour Justice Beaumont, in Mitty's Authorised Newsagency v The Registrar of Trade Marks, 78 FLR 217 at 221, the Registrar's delegate is entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time.
          I will first consider the question of whether or not a satisfactory case has been made out by the opponent in seeking the extension.  The opponent has stated in his reasons given for making the application that he had proceeded with collection of the evidence during the initial three month periiod and required further time to complete its collection and put it into declaratory form for service.  These reasons would appear to be sufficient in detail to indicate that the opponent has been active in his pursuit of evidence and are, in fact, more fulsome in describing the state of play than most applications for extension in similar cases.  This is the first extension sought and, although no evidence has yet been lodged as pointed out by the applicant, it would seem that the opponent has not been idle in pursuing the matter.  I am therefore of the opinion that the opponent has adequately discharged the onus upon him to make out a proper case.
          Turning to the question of public interest, I am aware that the opponent is the registered proprietor of a similar mark for identical services in the United States.  The opponent has also lodged opposition proceedings in the case of trade mark application number 517451, also in the name of the present applicant.  There is also a claim in the notice of opposition that the opponent has been using the trade mark since a date earlier than the date of application in Australia and that use of the mark by the applicant would be deceptive and confusing.  I am therefore aware that there is a serious matter raised by the opposition and that matters of public interest are concerned.  These considerations must be weighed
against the inconvenience to the applicant through delays in the opposition proceedings.  The applicant has claimed that he will be severely disadvantaged by the delay as the opposition is preventing the applicant from finalising commercial arrangements.  However, as the opponent has put forward, it would appear to be in the interests of both parties that the question of proprietorship should be clearly decided prior to any licencing, or similar, arrangements.  In my experience, extensions of nine or twelve months are not out of the ordinary in cases of a similar nature.  This is the first extension sought in the present case.  I therefore am of the opinion that allowing the current extension will not unfairly inconvenience the applicant.  It is agreed that the rights of an applicant to achieve registration for a mark without undue delay are extremely important.  However, this should also be viewed in the context that protection of the applicant's rights arising from registration of his mark, when and if that is achieved, is ensured by the terms of sub-section 53(2) of the Act.  I find, on balance, that in order that the Registrar may be provided, as per the directives of His Honour Justice Richardson in the Hy-Line Chicks case, supra, with a 'clearer picture of the awareness of rival marks as affecting the likelihood of deception or confusion', the matter of public interest lies in favour of allowing the extension.
          Lastly, as to the time already allowed for the preparation of evidence, I have already observed that the allowance of periods of time up to twelve months are not uncommon to allow for opponents to gather, prepare and serve evidence.  The fact that the statutory allowance is generally found to be too brief has been confirmed by His Honour Justice Beaumont, supra.  The applicant has asserted that the opponent himself set a precise deadline in his letter of 8 August 1990.  However, my reading of that letter indicates to me that the opponent was merely pointing out when the statutory period allowed would be exhausted and was simply seeking a prompt response to the demands made of the applicant.  Also, despite the faith which the applicant's attorney attaches to the speed of international facsimile transmissions, the fact remains that, when overseas principals and attorneys are involved, the procedure of gathering and submitting evidence becomes more complex and time consuming.  Additionally, as the opponent has claimed, evidence regarding use of a mark in respect of goods is often easier to provide than evidence of use of a mark in respect of services.
          Considering these tests in total, I am satisfied that the opponent has met the onus on him to justify allowance of the extension currently sought and I direct that the time prescribed by reg. 43 be extended to 25 January 1991.  Neither side has made a claim as to costs in the matter and I make no award.

(I.M. FORNO)

Senior Examiner
18 January 1991