Kompass International Neuenschwander S.A. v EDP Compass AG

[1996] ATMO 3

TRADE MARKS ACT 1955.

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

RE:-     Opposition by EDP Compass AG to an application by Kompass International   Neuenschwander S.A. for an extension of time to lodge evidence in answer to           applications under section 23 to remove trade mark registration nos. 341466           and 341467 from the Register.

An application, under section 23 of the Act, to remove trade mark application nos 341466 and 341467  from the Register was lodged on 10th June, 1994 by EDP Compass AG (EDP).  On 18th November, 1994 the registered proprietor of the mark Kompass International Neuenschwander S.A.(Kompass) lodged opposition to the application.  The mark covered by the registrations comprises the word KOMPASS and the device of compass; and is registered for

‘registration, transcription, composition, compilation, transmission, processing and/or systematisation of commercial, fiduciary or economic information, fiduciary services; commercial information agencies; business advisory services; advisory services for business management, business consultants; business appraisals; business inquires; business investigations; business management and organisation consulting, business management assistance and consulting; business research ‘in class 35   
and ‘electronic data processing, preparing programmes of data processing, computer programming, computer hiring (including time sharing)’ in class 42.

EDP served all the evidence in support of the section 23 application on Kompass on 3rd March, 1995.  Under the provisions of reg. 55 the evidence in answer was therefore due on 3rd June, 1995. On 1st June, 1995, Kompass requested a three month extension of time  to serve evidence in answer until 3rd September, 1995

A declaration by Robert Charles Kelson, which formed part of the evidence in answer was served on 5th June, 1995.
The extension of time request  to 3rd September, 1995  was allowed on 5th July, 1995.

On 4th September, 1995 Kompass requested an extension of time to file evidence in answer to 3rd December, 1995.  On 21st September, 1995 EDP objected to the further extension of time sought by Kompass.  The reasons for the objection were:-

‘(i) the opponent had not clearly established a case for the grant of the   extension;
           (ii) no indication that the opponent  had been actively pursuing the matter in the            intervening 3 month period since the (Kelson) declaration was lodged, and            nothing in the document requesting additional extension of time to indicate           what future steps the opponent intended to undertake
           (iii) the applicant for removal is also the applicant in respect of 4 trade mark      applications which are being blocked by these registrations. The applicant is            paying monthly extension fees while awaiting the outcome of the present            removal applications. ‘

EDP sought a hearing in the matter, which was held in Canberra on 25th October, 1995 before me as a delegate of the Registrar.  EDP was represented by Mr. David Hughes of Phillips Ormonde & Fitzpatrick, patent and trade mark attorneys of Melbourne.  Kompass was represented by Mr. Robert Kelson of Callinan Lawrie patent and trade mark attorneys of Melbourne by telephone.

Mr. Hughes opened his submissions by pointing out that reg. 55 allows a three month  period for the serving of evidence and the provisions of section 130 of the Act allow for the granting of an extension of time to that period.  He also drew my attention to the discretion that may be exercised by the Registrar under section 130.  He said that an extension of time is not a matter of right, but that the party seeking the extension of time must justify the extension sought by furnishing good reasons why it has been unable to serve the evidence within the prescribed time. It must also discharge the burden of establishing a proper case to justify the extension sought.  Mr. Hughes maintained that in this case Kompass had failed to meet the requirements set out above.  He contended that the reasons given in the applications for extension were insufficient to explain why the time already allowed had been insufficient or to justify why a further three month extension should be allowed.  He stated that Kompass had already had some eight months in which to prepare the evidence and that as this was in relation to a non use application which was filed in June, 1994, the opponent had known about the matter since then.  Mr. Hughes also pointed out that this was a second extension request  and there was therefore a heavy onus on Kompass to justify the extension due to the time already elapsed.  He also said that it should be a simple matter to prepare the evidence in answer.

Mr. Hughes also raised the question of the public interest and the balance of convenience between the parties.  With respect to the former consideration, Mr. Hughes maintained that it was in the public interest for marks that were not being used to be removed from the Register.  In the latter respect, he drew my attention to the fact that EDP was also the applicant in respect of four trade mark applications which are being blocked by these registrations.  EDP was paying monthly extension fees while awaiting the outcome of the present removal applications, and would be therefore financially disadvantaged if the extension was allowed.

He concluded his submissions by arguing that costs should be awarded to EDP, given the insufficient reasons put forward in the application for extension of time.

Mr. Kelson began his submissions by referring to the background of the case and the fact that an assignment of the mark had taken place in 1995 which had caused some delays in obtaining information.  He also referred me to relevant case law, Simmons v. Latrobe Brewing Company 94 AIPC 38639, regarding the things that should be considered when deciding whether to grant extensions of time in circumstances where a section 23 action was involved.  He also referred to the fact that Kompass was an overseas company with consequent communication delays.  Such a situation had been  recognised as being a mitigating factor in similar cases where an extension of time to serve evidence had been sought.  The fact that the original proprietor had assigned the mark in 1995 had also meant that the attorney handling the matter overseas had changed and this too contributed to the difficulty in obtaining instructions and information.  The obtaining of information from a proposed registered user of the mark in Australia also involved  dealing with another party.

Concerning the matter of costs, Mr. Kelson argued that these should be borne by the applicant as the extension of time request met the requirements of the Act, and sufficient reasons had been given in the original application.

Discussion
Regulation 55 of the Trade Marks Act, states, inter alia,

‘55 an opponent shall:-
           (a) serve on the applicant, within three months after the date on which the         declarations of the applicant were served, a copy of each of the declarations on    which he relies in support of the opposition, and in answer to the application;’

Section 130 reads

‘Where, by this Act, a time is specified within which an act or thing is to be       done, the Registrar may, unless otherwise expressly provided, extend the time   either before or after its expiration.’

In the circumstances under consideration, the provisions of section 130 apply.

Deciding whether or not an extension of time is allowable in the present proceedings will depend upon considering the matter in light of the factors outlined in Lyons and Another (trading as Mitty’s authorised Newsagency v. Registrar of Trade Marks and Another (1983) AIPC (1983) 1 IPR 416, namely; whether a proper case had been made out justifying the extension, whether sufficient reasons have been provided, the relative inconvenience to the parties concerned, and the public interest.

The reasons given for the second  extension of time request were

Some evidence has been obtained in Australia already and has been put into      declaratory form and a copy served upon the Section 23 applicant. Further investigations are continuing in Australia via our Australian  Patent & Trade            Mark  Attorneys and the Australian Patent and Trade mark Attorneys for the   registered user of two associated trade mark registrations.  Further time is          required to permit the above to be completed, and to confer further with our            Australian attorneys, via our French Patent and Trade Mark Attorneys, and to have further declarations, prepared, settled and executed and copies thereof           served upon the Section 23 applicant

The wording differs from that requested in the first extension of time which stated that:-

‘A copy of evidence in support has been forwarded to us by our Australian      Patent and Trade mark Attorneys, via our French patent and Trade mark Attorneys, and we have been considering that evidence.  Some evidence has            already been obtained in Australia and has yet to be put into declaratory form.    Further time is required to prepare declarations constituting evidence in      answer, have those declarations settled and executed, to confer further with our Australian attorneys, and to arrange for the service of copy      evidence in answer.’

I also note that following the first extension of time, a Statutory Declaration, which is part of the Evidence in answer, was lodged with the Office on 5th June, 1995.

From the wording in this application for the  second extension of time, it appears that Kompass has been gathering information from a number of different sources, both within Australia and overseas, and is in the process of assembling material in declaratory form for service on EDP.

According to EDP, the reasons given are insufficient, as they are vague and non-specific, and do not detail the nature of the investigations being undertaken or indicate a timetable of how long it will take to finalise the evidence in answer.  However, in the Lyons case, supra, where the applicant for the extension of time had relied on the grounds that ‘evidence in support of the opposition is in the course of preparation but it is desired to have additional time to prepare that evidence and to serve copy thereof on the applicant, ‘ Beaumont J. said at AIPC page 38,630 

‘Although a more detailed explanation of the position my have been desirable, I            think that it is possible to construe the rather bald statement of the ground for      the request (supra) as indicating that, although efforts had been made in that   behalf, it was not possible to finalise the form of the evidence sought to be        adduced in the time allowed by the regulation.  I accept that, on one view, it is      possible to read the stated ground as being little more than an assertion that            more time is required. however, the statement of the ground does at least         attempt some explication of the position.  Further, I think that the delegate was            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 given that background, and given the construction of the           statement of the ground which was open, I am of the opinion that the delegate          did not exercise his discretion in any improper way.’

The reason given for the extension of time request in this instance appears to be sufficient to establish that some progress in assembling the evidence is being made. The fact that in this case Kompass must establish use of a mark to prevent its removal of the mark from the Register still involves the process of obtaining evidence of use and this may require consultation with and obtaining documents from third parties.  Moreover, since Kompass is located overseas, in France, it is reasonable to presume that the relevant company records would be kept in that country. In such circumstances, more time would be required to obtain the information and details, and receive instructions from the overseas attorneys, than would be the case if the opponent resided in Australia (see Stafford Miller Limited v Cosco Holdings Pty. Ltd. (1989) AIPC 90-583).

I have considered the progress that has been made since the last extension sought and note that, following the first extension of time, a Statutory Declaration which is part of the Evidence in answer was lodged with the Office on 5th June, 1995, four days after the first extension of time request was lodged on 1st June, 1995.

I have also considered Mr. Hughes’ submissions regarding the matter of whether Kompass has  met the requirement to explain what progress has been made since the last extension sought.  This matter was considered in the Office decision of ACI Australia Limited v. Shelm Merchandising Company Pty. Ltd. (as yet unreported).

‘It is a corollary of such cases that, as time passes, there is a rising onus on a     party seeking such extensions to justify its conduct.  This can be done by          showing what actions it has taken in the time as previously allowed.  In no            other way, it seems to me, can a reason be seen as being either good or           otherwise.’

I think that the foregoing is the case in the present instance.  Having said that, I am satisfied that Kompass has met its requirements to provide better reasons which indicate the present state of play as a further extension was sought.

The question of whether or not an additional extension of time should be granted to allow evidence to be disclosed is discussed  at pp 69 - 70 of Australian Law of Trade Marks and Passing Off, (2nd edition, 1990) by D.R. Shanahan. The author states that, "every effort should be made to enable the Registrar to consider the circumstances with the assistance of as much documentary evidence as possible". The authorities relied on by Shanahan in support of that proposition include Bundy American Corp v Rent-a-Wreck (Vic) Pty Ltd (1985) 5 IPR 307. That case also notes, however, the principle that "an extension of time may not be granted simply in order to make good a careless oversight or a mere casual regard for the times prescribed by the Act and Regulations". This is a consideration that should neither be applied unjustly nor lost to sight. However, I think that in the present case, Kompass has indicated that there is more evidence to gather and that is has been diligent in obtaining it.

On the matter of the balance of convenience, I am mindful that, should I disallow this request, it would be likely to result in the failure of Kompass to serve evidence in answer regarding use of the mark in Australia.  This could well mean the loss of  such a valuable piece of property as its registration simply because of a technical problem in obtaining an extension of time necessary to provide evidence of use.  On the other hand, if I allow the application for the extension of time, the disadvantage to EDP which is apparent to me is that its pending applications for a phonetically identical word mark might be delayed for consideration of acceptance for registration.  It is true that, if the extension was allowed, EDP will be out of pocket for additional extension of time fees to keep its pending applications in a ‘live’ state, however such expenses are an integral part of any opposition process.  I therefore believe that denial of the extension would cause greater hardship to Kompass than to EDP.

I must also consider the question of public interest.  In this regard, it is true that the public interest demands that unused marks should be removed from the Register without undue delay.  However, here  I consider that this interest would be best served if both parties in the dispute are allowed to present their arguments and evidence as fully as possible (Rollbits Pty. Ltd. v Rowntree Macintosh plc (1986) AIPC 90-291).

As EDP has already lodged evidence in support of their application, I feel that it is in the public interest that Kompass  be given the opportunity to lodge its evidence in answer.  This will enable all the evidence to be presented and will allow the Registrar to have all the relevant material before him in coming to a decision when the matter is tested fully at a hearing.

Decision
Having considered the facts surrounding the case I have decided to allow the extension of time of three months to 3rd December, 1995.  I am of the opinion that the reasons given  by Kompass for the second extension of time request do indicate some progress has been made in the process.  I also note that since the hearing, an additional statutory declaration  has been lodged.

Costs
As Kompass has been successful in having its extension to serve evidence in answer allowed, I see no reason why costs should not follow the result.  Consequently, costs in the matter are awarded to Kompass..

Sandra Jarvis
Senior Examiner

22nd January, 1996.