Liberty Financial Pty Ltd v Liberty Mutual Insurance Company

[2004] ATMO 14

TRADE MARKS ACT 1995

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

Re:A late application for an extension of time to file a notice of opposition filed by LIBERTY FINANCIAL PTY LTD in relation to trade mark application 853361(36, 41, 42) - LIBERTY - filed in the name of LIBERTY MUTUAL INSURANCE COMPANY.

Delegate:	Tabatha Klippan
Representation:	Opponent: Ms Louise Duncan, of Counsel, instructed by Mr Chris Round of Middletons Lawyers Applicant: Mr Brian Elkington, of Blake Dawson Waldron
Decision:	Application for extension of time to file notice of opposition refused

Background

1. On 12 October 2000, Liberty Mutual Insurance Company, ('the applicant'), filed trade mark application number 853361 to register the trade mark, LIBERTY, in respect of various services in classes 36, 41 and 42.

2. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 1 August 2002.

3. A third party filed a notice of opposition to the trade mark application on 31 October 2002 however the opposition was withdrawn on 5 November 2003.

4. Liberty Financial Pty Ltd, ('the proposed opponent' or 'Liberty'), filed a late application for an extension of time to file Notice of Opposition on 6 August 2003.  The application was made under subregulation 5.2(2)(b) and accompanied by a statutory declaration by Anthony Brooke Watson (the Watson declaration), a partner of Middletons Lawyers.

5. Mr Watson declares that when acceptance of the trade mark application was advertised, Liberty's original solicitors, Jerrard & Stuk Lawyers, "failed to inform the opponent of the applicant's intention to apply for the trade mark and that it could lodge an opposition to the registration". 

6. A delegate of the Registrar of Trade Marks decided that the information contained in the Watson declaration showed that Liberty did not have, at the relevant time, the requisite intention to oppose.  On 29 August 2003, an intention to refuse the application, unless another declaration containing better reasons was filed within 14 days, was issued.

7. On 12 September 2003, the proposed opponent filed a supplementary statutory declaration made by Richard Wood, a risk analyst for Liberty.  A delegate of the Registrar of Trade Marks again issued an intention to refuse the application for extension of time unless the proposed opponent applied to be heard on the matter.  A hearing was requested and as a delegate of the Registrar of Trade Marks, I heard the matter in Canberra on 12 November 2003.  Ms Louise Duncan of Counsel, instructed by Mr Chris Round of Middletons Lawyers, represented the proposed opponent.  Mr Brian Elkington of Blake Dawson Waldron represented the applicant.

8. On the day prior to the hearing, the proposed opponent tendered the following three statutory declarations:

   ·     A statutory declaration made by Jonathan Barry Cohen, a partner of Jerrard & Stuk Lawyers, on 11 November 2003

   ·     A second statutory declaration made by Richard Wood, a risk analyst for the proposed opponent, on 11 November 2003

   ·     A statutory declaration made by Christopher John Round, a solicitor with Middletons Lawyers, on 11 November 2003.

9. At the commencement of the hearing Ms Duncan asked the delegate of the Registrar of Trade Marks to disregard the Watson declaration and Mr Wood's first declaration and only take into account the 3 statutory declarations filed on the day prior to the hearing.  I think it would be quite improper to disregard these declarations as they are part of the official record.

   Submissions And The Law

10. Subregulation 5.4(4) states:

    if an application for extension of time is made after the period for filing a notice of opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period

11. Once the three month period allowed under regulation 5.1 has elapsed, an application for extension of time to file notice of opposition may only be made pursuant to subregulation 5.2(2)(a), 5.2(2)(b) and 5.2(2)(c) of the Trade Marks Regulations 1995.

12. Ms Duncan submitted that the evidence filed by the proposed opponent in support of the application for extension of time was pursuant to regulation 5.2(2)(b), in that the failure to file a notice of opposition within the statutory 3 month period was due to:

    An error or omission by the person applying for the extension of time, or by the person's agent

13. Ms Duncan claimed that a series of errors or omissions led to the failure to lodge the notice of opposition within the statutory 3 month period.

14. Ms Duncan submitted that the first error or omission was the solicitor's failure to monitor the Australian Official Journal of Trade Marks.  She stated that after receiving relevant instructions, Jerrard & Stuk omitted to carry out the proposed opponent's instructions to advise the proposed opponent if a third party sought to obtain registration of any trade mark similar to LIBERTY FINANCIAL.  In the normal course of events, according to Ms Duncan, this should have included monitoring of the Australian Official Journal of Trade Marks.

15. Ms Duncan referred to British Sky Broadcasting Ltd v Skynetglobal Limited (2003) 57 IPR 93 to 99 where Hearing Officer Williams said:

    I think the necessary causality will have been demonstrated wherever a party has shown an adequate intention to get to an informed position, from which it may decide either to oppose or not to oppose, and where that intention is itself subverted by an error, omission, or circumstance within the scope of reg 5.2(2)(a), (b) or (c).

16. Mr Wood declares in his second statutory declaration that he discussed with Mr Jeremy Feiglin of Jerrard & Stuk Lawyers the importance of protecting the proposed opponent's LIBERTY FINANCIAL trade mark.  Mr Wood recalls saying to Mr Feiglin that Liberty did not want any third party to obtain registration of any similar trade mark.  From this discussion Mr Wood understood that Mr Feiglin would advise him if any third party sought to obtain registration of any trade mark similar to LIBERTY FINANCIAL.

17. Mr Jonathan Cohen, a partner of Jerrard & Stuk Lawyers, confirms in his statutory declaration that "proper conduct of a trade mark application should, in these circumstances, have included monitoring the Australian Official Journal of Trade Marks and providing advice to the proposed opponent regarding trade mark applications by third parties seeking to obtain registration of similar trade marks". 

18. However no attempt has been made to explain why the Australian Official Journal of Trade Marks was not monitored in this case.  There has also been no mention of whether Jerrard & Stuk have a process in place to ensure that it is monitored and if there is such a process, how the error or omission that led to Jerrard & Stuk's failure to monitor it occurred.

19. Ms Duncan submitted that the proposed opponent first became aware of the subject trade mark application on or about 14 August 2002 when it was cited against trade mark application number 920141, in the examiner's first report, dated 9 August 2002.  In his second statutory declaration dated 11 November 2003, Mr Wood states that Jerrard & Stuk's covering letter referred, in the second paragraph, to "four trade marks registered to Liberty Mutual Insurance Company...".  It was claimed that this led the proposed opponent to believe that the subject trade mark was in fact registered.

20. Ms Duncan argued that Jerrard & Stuk had erred in failing to provide accurate advice in their covering letter of 14 August 2002 that trade mark application number 853361 was not yet registered.  Ms Duncan further argued that if Jerrard & Stuk had advised the proposed opponent of trade mark application number 853361, then the proposed opponent would have instructed Jerrard & Stuk to oppose the registration of that mark.

21. However, this failure on the part of Jerrard & Stuk did not directly lead to the failure to file a notice of opposition because, as Ms Duncan submitted, in or about September or October 2002, within the opposition period, the proposed opponent discovered that trade mark 853361 was not yet registered.  Following this discovery, Mr Wood claims to have met and discussed this with Mr Feiglin.  The result of this discussion, Mr Wood states, was that Liberty believed the subject application would not proceed to registration until after 9 November 2003, which was the due date for acceptance of the proposed opponent's application number 920141.

22. Ms Duncan further submitted that when Mr Wood raised the issue of the subject application with Mr Feiglin he should have advised Mr Wood of the requirement to file a specific notice of opposition to trade mark number 853361 and of the requirement that such a notice of opposition should be filed within 3 months from the acceptance date.

23. Ms Duncan then went on to say that Mr Feiglin failed to properly inform the proposed opponent of these matters and this directly caused the proposed opponent to be denied the opportunity to oppose the trade mark application. 

24. Ms Duncan submitted that until April 2003 the proposed opponent continued to act under the erroneous belief that it had until 9 November 2003 to formally oppose the trade mark application.  However upon changing solicitors to Middletons Lawyers in April 2003, the proposed opponent was advised that a notice of opposition should have been filed within the 3 months after acceptance.  It was at this point that Mr Round of Middletons advised the proposed opponent that it was too late to file a notice of opposition.

25. From Mr Round's statutory declaration of 11 November 2003, it appears that Mr Round was not aware that it was possible to seek an extension of time to file a notice of opposition until late July 2003.  Ms Duncan claimed that this constituted an error that was directly responsible for the delay in filing the application for extension of time. 

26. Ms Duncan argued that the evidence provided by the proposed opponent establishes that at all times since the proposed opponent became aware, in late September or early October 2002, of the unregistered trade mark, it never wavered in its intention to oppose the trade mark.  Ms Duncan further argued that it was the erroneous advice of its solicitors which thwarted this intention.

27. Ms Duncan considered it significant that the proposed opponent took only 3 hours to provide instructions to Middletons once it was advised of the method by which it could seek an extension of time.  I note however that the application for extension of time was still not filed for another 2 weeks.  The proposed opponent did not provide any explanation for this further delay.

28. Mr Elkington submitted that the proposed opponent has not, and cannot, establish grounds 5.2(2)(a), (b) or (c), nor can it present any circumstances that would provide reasonable justification for over 9 months delay in filing the extension request.

29. Mr Elkington argued that the proposed opponent must establish that it had formed the intention to file the notice of opposition before the expiration of the opposition period, and that this intention was thwarted by an error or omission of the proposed opponent or its agent.  In support of this argument, Mr Elkington referred to Crown & Andrew Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595.

30. Mr Elkington argued that by its own admission, in the statutory declaration of Mr Watson, the proposed opponent did not form the intention to file a notice of opposition until April 2003, 5 months after the expiration of the opposition period.  Mr Elkington also observed that the first statutory declaration by Mr Wood contains statements, which are both confusing and contradictory and do not establish that an intention to oppose was formed during the opposition period.  Mr Elkington went on to say that in Mr Wood's statutory declaration he contradicts both himself and also the clear statement of Mr Watson.

31. Mr Elkington said that Mr Watson declares, at paragraph 14 of his statutory declaration,

    It was not within the opponent's control to file a notice of opposition any earlier [than April 2003] as the opponent was not aware of the applicant's trade mark application.

    Mr Elkington then went on to say that Mr Wood's first statutory declaration claims that the opponent was indeed aware of the trade mark because it was raised as a citation in the examiner's first report dated 9 August 2002.

32. Mr Elkington referred to Chiron Corporation v Registrar of Trade Marks, (1998) 42 IPR 75, when stating that the failure of a legal practitioner to file a notice of opposition is not, of itself, an "error or omission" for which an extension of time can be granted. Once the intention to oppose has been formed, there must be an error or omission which is the cause of the failure to file the notice of opposition, before an extension request may be granted. Mr Elkington argued that the proposed opponent has not established any such error or omission on the part of its previous legal representatives.

33. Mr Elkington stated that it is a basic tenet of the law in this area that if there were an error or omission on the part of the opponent or its agent, it must still be established that it was that error or omission which caused the failure to take action.  Mr Elkington argued that even if the Registrar were to distil sufficient facts from which to conclude that it was error or omission on the part of Jerrard & Stuk which caused the opponent to miss the initial opposition deadline, the opponent's request for an extension must still be refused.  This being because both Mr Watson and Mr Wood agree that, in early April 2003, the opponent knew about the opposition deadline and knew that it had been missed by a considerable period of time.  However, despite this knowledge, no action was taken.

34. Finally on this point, Mr Elkington stated that although the application for extension of time was filed on 6 August 2003, more than a year after the trade mark was accepted, the proposed opponent had not offered any explanation for this delay.  Mr Elkington went on to say that even if there were an initial error on the part of the proposed opponent's previous attorneys, there is no causal connection between that error and the proposed opponent's failure to file a timely request for an extension of time.  Mr Elkington referred to British Sky Broadcasting Ltd v Skynetglobal Limited (2003) 57 IPR 93.

35. Mr Elkington stated that regulation 5.4 prohibits the granting of an extension of time which is filed out of time "unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period".  Mr Elkington submitted that even if the proposed opponent were given the benefit of the doubt until April 2003, there is no justification for the additional 4-month delay in requesting the extension of time.

36. Mr Elkington submitted that once the proposed opponent learnt the facts of the matter, in April 2003, it was charged with the responsibility of immediate action yet nothing was done for a further 4 months.  Finally Mr Elkington submitted that the applicant will clearly be prejudiced by having to defend its trade mark against an opponent whose right to bring such an action has, in all fairness, long since expired.

37. To be satisfied that the extension of time should be granted, the proposed opponent must show that, within the 3 month statutory period, the proposed opponent had a fixed intention to oppose registration.  The proposed opponent must also show that within the same period, there was an error or omission that prevented the notice of opposition from being filed. 

38. It is clear that both Jerrard & Stuk Lawyers and Middletons Lawyers mismanaged the prosecution of this potential opposition from the start.

39. During the submissions made at the hearing, Ms Duncan argued that as soon as the proposed opponent became aware of the subject trade mark in September or October 2002, it had a fixed intention to oppose the registration of this trade mark application.  However this was contradicted by information contained in the Watson declaration and the first Wood declaration.

40. At paragraph 5, Mr Watson declares that

    Jerrard & Stuk should have become aware of the trade mark as it was cited against the opponent's application for trade mark no. 920141.  At that time it was pending registration as a trade mark and could still have been opposed by the opponent had it received advice as to is existence by its lawyers at that time.

Mr Watson also went on to say, at paragraph 14,

It was not within the opponent's control to file a notice of opposition any earlier as the opponent not aware of the applicant's trade mark application.

How can one form a fixed intention to oppose the registration of a trade mark they don't know exists?

1. In paragraph 9 of his first declaration, Mr Wood states,

   One of the marks cited against registration of the LIBERTY FINANCIAL trade mark was trade mark 853361 for the word LIBERTY in classes 36, 41 and 42 (the Trade Mark) as an Australian registered trade mark

   .

Then in paragraph 11, Mr Wood says,

I read the examiner's report and saw reference to the trade mark.  I decided that it would not be in the interests of the opponent for this trade mark to achieve registration.

1. Mr Wood states in paragraph 15,

   The opponent had the intention to file a notice of opposition against registration of the trade mark from the time it received the first report of the Trade Marks Office in August 2002.

Clearly, this information is contradictory.  If Mr Wood believed that the trade mark was already registered why would he decide to oppose registration?

1. Based on the proposed opponent's submissions and the contradictory information contained in each of the 5 statutory declarations that were tendered as evidence, I can not be satisfied that Liberty had the requisite intention to oppose registration of the subject trade mark application within the 3 month statutory period.

2. In relation to an error or omission that prevented a notice of opposition from being filed in time, it was argued that Mr Feiglin of Jerrard & Stuk, Liberty's original solicitor, provided erroneous advice to the proposed opponent and failed to monitor the Australian Official Journal of Trade Marks.  I note however Mr Feiglin has not provided a declaration.  Based on the evidence provided by others, it appears that Mr Feiglin may have had very little knowledge of trade mark opposition procedures.  A casual disregard of the legal requirements, however, does not constitute an error or omission.  And in the absence of evidence from Mr Feiglin himself, I can not be satisfied that the failure to file a notice of opposition was due to an error or omission.

3. Although Mr Cohen confirmed in his statutory declaration that monitoring the Australian Official Journal of Trade Marks was normal procedure at Jerrard & Stuk, there was no explanation of why this didn't occur in this particular instance.  If Jerrard & Stuk do have a process in place to ensure that the Australian Official Journal of Trade Marks is monitored, what was it that went wrong on this occasion?  In the absence of such information, it can not be established that an error or omission occurred within the relevant 3 month period.

4. When Middletons took over the matter in April 2003 it took a further 4 months for the extension application to be filed.  In fact, it wasn't until July 2003 that Middletons discovered that a late application for extension of time could have been filed.  Once this discovery was made, Liberty took only 3 hours to issue instructions to Middletons to oppose the registration however the application still wasn't filed until 6 August 2003.  Once again, no explanation for this delay was offered.

   Decision

5. The proposed opponent has failed to establish its grounds and my decision is to refuse the application for an extension of time to file a notice of opposition.

   Costs

1. Mr Elkington sought costs on behalf of the trade mark applicant.  This hearing concerned the Registrar's intent to refuse an application for an extension of time to file a notice of opposition.  In these circumstances I refuse to make an order as to costs.

   Tabatha Klippan
   Senior Examiner
   Trade Marks Hearings and Legislation
   27 February 2004