Lydia Brichta on Behalf of the Pet Vet Woodpark Animal Hospital v Torrag Pty.Ltd

[2000] ATMO 9

TRADE MARKS ACT 1995

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

Re:Objection by Torrag Pty Ltd to late application for extension of time by Lydia Brichta on behalf of The Pet Vet Woodpark Animal Hospital for filing a notice of opposition to trade mark application number 786044

Background

Trade mark application number 786044 was filed on 19 February 1999 in the name of Torrag Pty Ltd (hereafter Torrag), for the trade mark shown here:

 

The mark was accepted and advertised in the Australian Official Journal of Trade Marks (hereafter Official Journal) of 15 July 1999 in respect of "veterinary hospital, pet boarding" in class 42.  Any notice of opposition to registration of the mark. or application for extending the time for filing a notice of opposition, pursuant to s.52 and reg.5.1 of the Act, was therefore due on 15 October 1999. 

On 26 October 1999, a late application for an extension of time of one month to file a notice of opposition was filed by Lydia Brichta on behalf of The Pet Vet Woodpark Animal Hospital (hereafter Woodpark).  This application was based on the ground of "an error or omission by the person applying for the extension of time, or by that person's agent".  The application form indicates that another ground had been selected but was crossed out in the box against its wording.  I will elaborate on this point later in this decision.  A statutory declaration setting out the reasons for not making the application in the prescribed period was filed on 10 November 1999, following an official letter advising Woodpark of it being required.  That declaration is made by Lydia Frances Brichta, the director and owner of Lyboots Pty. Limited, which company, in partnership, trades under the name "The Pet Vet Woodpark Animal Hospital".  Dr Brichta states that the existence of the present application had been drawn to her attention at the end of April 1999 in a telephone call from Dr Margaret McLachlan, the director and/or owner of Torrag, who had warned her that use of the Woodpark's business name would infringe Torrag's rights in the subject trade mark, should it be accepted for registration.  As a consequence of this telephone call, on 4 May, Dr Brichta had consulted a legal practitioner, Philip Day, on the matter, receiving advice to the effect that:

" a)  trade mark applications took over 10 months to be approved;

b)I should wait until the trademark I wished to oppose was published in the Official Journal of Trade Marks before proceeding;

c)Mr Day thought it was unlikely that the Trade Mark would be accepted due to its vague and descriptive nature".

Dr Brichta states further in the declaration that, from the conversation with Mr Day, she had gained the impression that Mr Day would be monitoring the situation, because she did not have access to the Official Journal.  However, she had not confirmed this.  To her astonishment, she had discovered that the subject trade mark had been accepted three months earlier when, out of interest, she happened to look up the IP Australia web site on 24 October 1999.   

After considering the application for the extension of time, a senior examiner proposed to refuse the extension of time for the following reasons:

"Although the sequence of events and suppositions which led to lateness is described, the causal relationships have not been established in a way that could lead me to conclude that there had been error or omission on your part.  Within the context of the Trade Marks legislation, these terms are quire narrow in definition. 

There is no statement that you had a clear intention to oppose.  I cannot infer such an intention from the declaration.  It is not in the declaration…".

Before refusing the application, the senior examiner allowed Woodpark fourteen days within which to request a hearing on the matter.  This it did.  The hearing was held in Canberra on 22 December 1999.  Dr Lydia Brichta appeared on behalf of Woodpark, the prospective opponent.  Mr Geoff Davidson of Halford & Co, patent and trade mark attorneys of Sydney, represented Torrag, the trade mark applicant, by telephone. 

Submissions
Dr Brichta contended that, contrary to the senior examiner's finding, the whole purpose of consulting a legal practitioner had been to seek advice on how to oppose Torrag's application.  Unfortunately, the problems had started there, she said, because of what she had been told about the time taken before a trade mark was advertised for opposition.  She had not forgotten her intention to oppose registration of the mark, but, relying on the advice she had received from the legal practitioner, she thought there was sufficient time for it and, in fact, even at the time of perusing the web site she believed it would be too early to obtain any relevant information on the progress of the application.  Dr Brichta acknowledged that she might have made a mistake in not clarifying with the legal practitioner as to who was to monitor the Official Journal for acceptance of the mark.  She had always assumed, however, that he would take care of that matter on her behalf.  Dr Brichta then briefly referred to the reasons for Woodpark's decision to oppose registration of the subject mark: after conducting searches to ensure that no one else was using the business name, it had commenced trading under that name, gaining considerable clientele and reputation.  Since there was already an extension of time granted to another party to file a notice of opposition, Woodpark wished to submit that, allowing the requested extension of time would not be prejudicial to Torrag, but, if a chance was denied to Woodpark to oppose registration of the mark in question, it would result in a great prejudice to it and would also cause it commercial damage. 

Mr Davidson referred to the relevant regulations, followed by some cases in relation to the matter in suit, citing first Meath & Anor v Kyprianou (1997) AIPC 91-379 to the effect that each extension of time application is judged on its merits, and that the issues of relative inconvenience and public interest cannot be taken into account. With particular reference to reg.5(4)(2), Mr Davidson submitted that, while it appeared that the late extension of time application had been served on Torrag, the declaration that was to accompany the application but which was not filed at the Trade Marks Office until 10 November 1999, had never been served on it. The copy before Mr Davidson had been obtained on request from the Trade Marks Office. Invited to comment, Dr Brichta said that she had posted the copy of the declaration with the application on 11 November 1999, but, because she had written the incorrect name of the street on the address, the mail had been returned to her . However, she said, copies of the original letter, declaration and application for the extension of time had then been hand-delivered to Torrag's business premises on 13 or 14 November 1999 and were definitely served on it, along with copy of the notice of opposition. The delivery had been made by Mr Ian Herbert, who had handed the documents to a receptionist, ascertained that Dr McLachlan was present in the surgery on that day and had asked the documents to be given to her.

To resolve this matter, I directed at the hearing that written submissions will be required from Woodpark, explaining the circumstances, together with a declaration from the person who was responsible for taking the documents to Torrag and that a copy of the declaration was to be served on Torrag.  I allowed two weeks from the day of the hearing within which to comply with these requirements. 

In continuing his submissions, Mr Davidson turned to the reasons justifying the belated extension of time as set out in Dr Brichta's declaration.  With reference to Kimberley-Clark Ltd v Commissioner of Patents (No 3) (1988) 13 IPR 569, he pointed out that the failure to file the notice of opposition was not in itself an error or omission, but that one had to look beyond that. In Crown & Andrews Pty Ltd v All American Fremantle International Inc 38 IPR 595, he said, the preliminary requirement had been appropriately summarised as the need to demonstrate that the person applying for the extension of time had formed an intention to oppose on or before the prescribed period, and that that intention had somehow been thwarted or frustrated by an error or omission. There was a vague suggestion in Dr Brichta's declaration that Woodpark might oppose the present application, but sufficient evidence was lacking as to its real intention to do so. That contention, Mr Davidson said, was supported by Dr Brichta's actions in two important aspects: that, at the time of filling out the application for the extension of time, she had been in two minds as to why she needed the extension, and the fact that Dr Brichta did not file the notice of opposition until 15 November 1999. In respect of the former, Mr Davidson was referring to the grounds for the extension listed under reg. 5.2(2) which are printed in full on Woodpark's application form for an extension of time provided by IP Australia, enabling it to tick an appropriate box.  The application form in question shows a cancelled tick in a box against the ground of para (e) concerning the undertaking of a genuine research to decide whether opposition was justified, or on the grounds of opposition.  From this Mr Davidson deduced that, as of 26 October 1999, Woodpark needed to conduct research that would require three weeks before the actual filing of the notice of opposition.  He said a similar situation had occurred in Crown v All American, supra, and Chiron Corp v Registrar of Trade Marks 42 IPR 75: in those cases it had been found that the applicant for the extension of time had failed to show a clear intention to oppose as of the relevant date.

Concerning the question of error or omission, Mr Davidson submitted that Dr Brichta's declaration failed to provide information as to what the error was, who was responsible for it, or how it thwarted Woodpark's intention to oppose registration of the mark.  He said that, even if the most favourable view were to be taken of the declaration and the Woodpark's case, none of Woodpark's circumstances justified an extension past 26 October, because the notice of opposition was filed after that date.  Where an error or omission was claimed in a late application for an extension of time to file a notice opposition, the applicant was already late and therefore had to act with haste to minimise the amount of time the error had caused.  On the matter of costs, Mr Davidson submitted that, in view of Woodpark's failure to serve the declaration in support of its application on Torrag, costs should be awarded to Torrag.  If, however, it could be established that the service did occur, then costs ought to go with the event. 

In responding to Mr Davidson's submissions, Dr Brichta stated that, when initially ticking the box relating to para (e) of reg.52.2(2), she had been wondering whether that ground would cover a consultation of a legal practitioner, but, on further thought, she had decided it was irrelevant.  

Discussion
Whether the applicant for extension of time has complied with regulations 
In order to proceed to consideration of the merits of Woodpark's application, I must determine whether Woodpark had met the requirements in respect of the application as prescribed in the regulations. Under reg.5.3, an application for an extension of time in which to file a notice of opposition must be filed together with a declaration stating, in the case of a late application, the reasons why the application was not made before the end of the statutory period. 

The time period for clarifying the matter concerning the alleged non-service of Dr Brichta's declaration in support of the application, as indicated by me at the hearing, ended on 5 January 2000.  Written submissions from Dr Brichta were not received until 10 January.  On the following day, 11 January, a declaration was filed by the person responsible for delivering the documents personally to Torrag's business premises.  A copy of this declaration was received by the applicant's attorneys, as confirmed.  Whilst I acknowledge that the required evidence was filed outside the period specified at the hearing, I have decided to give it consideration.  In doing so, I have taken into account the fact that the two weeks allowed coincided with the most popular holiday time in Australia - the Christmas/New Year period - when many people take a break from their normal occupations, and most offices and businesses close or operate with reduced staff.  It follows that, during this time, many of the normal business activities and contacts are either disrupted or delayed.  Although these factors do not excuse Woodpark from failing to meet the specified deadline, I think some allowances should be made in the present circumstances where Dr Brichta had to obtain a declaration from another party during a period when normal services and communications are limited or even unreliable.  In addition, the public interest factor, i.e. that, wherever possible in opposition matters, the disputing parties should be given an opportunity to present their respective cases, weighs in favour of accepting the belatedly furnished material. 

Dr Brichta's written submissions are to the effect that, in the two envelopes which are enclosed as evidence, she had sent to Torrrag copies of the notice of opposition, the statutory declaration, the letter to the Trade Marks Office and the application for the extension of time.  After the incorrectly addressed mail had been returned to her, a personal delivery of the copies had been made to Torrag by Mr Herbert.

The statutory declaration in relation to the delivery of the papers is made by Iain Ferguson MacRae Herbert, who declares that:

"(1) On the 21^st of November 1999 I attended the premises of a veterinary

surgeon at 296 Stanmore Road Petersham for the purposes of serving a notice upon the business using those premises.

1. I entered the premises at about 18.00 hrs and was mildly surprised to find them still open, being a Sunday.

(3) There was no one in attendance behind the counter but a female called out from a consulting room that she would not be long.

1. At the same time another female came to the counter from a door directly to the rear of the desk.  This person did not identify herself by name.

(5) I asked that person if she could please ensure Margaret (the proprietor) got the letter.  She assured me she would and I left.

1. I did not believe it was necessary to serve the proprietor personally as the notices were required only to be delivered to the company, Torrag Pty Ltd, at that address.

1. The individual I spoke to was apparently a responsible officer of that entity".

In my opinion, the above evidence shows that Woodpark, albeit belatedly, did comply with the relevant regulations.  It has been submitted by Dr Brichta that a copy of the application for the extension of time was faxed to Dr McLachlan personally and this is not denied by the applicant.  When copies of the documents did not reach the addressee, Dr Brichta arranged to have them delivered by hand.  Mr Herbert attests to handing copies of the documents to a person on Torrag's business premises, who, apparently, promised to pass the papers on to the owner of Torrag.  In an official letter of 12 November 1999, Woodpark had been advised that, if a hearing was requested on the extension of time matter, then it would be required to serve copy of the declaration on Torrag.  The date of Mr Herbert's attendance at Torrag's premises to serve the documents closely corresponds with Woodpark's request for a hearing on 23 November 1999.  From the evidence before me, pursuant to reg.5.4(2)(a), I am therefore reasonably satisfied that Woodpark, the applicant for the extension of time, has served the required documents on Torrag, the applicant for registration of the subject trade mark. 

Is the late extension of time justified?
The grounds upon which a person may apply for an extension of time within which to file a notice of opposition are set out in reg.5.2(2):

5.2(2)         An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:
      (a)       an error or omission by a trade marks officer;

(b)an error or omission by the person applying for the extension of time, or by the person's agent;

(c)circumstances beyond the control of the person applying for the extension of time;

(d)the conduct of genuine negotiations between that person and the applicant for registration;

(e)the undertaking of genuine research to decide:

(i)whether opposition is justified; or

(ii)on the grounds of opposition.

(3)       If a period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragraph (2) (a), (b) or (c) and no other ground.

Having made a late application, Woodpark had three grounds available to it upon which to request the extension of time for filing its notice of opposition, as stipulated under reg.5.2(3).  Here Woodpark has indicated it is seeking the extension in terms of paragraph (b) - an error or omission by the person applying for the extension of time, or by that person's agent.  I have not overlooked Mr Davidson's submissions in relation to the ground based on paragraph (e), but I do not believe I can regard as valid a ground where an elimination of the tick obviously shows that the ground is not applicable.  Thus, it follows that the parallels with the situation in the two cases cited by Mr Davidson are not as well-defined as asserted by him.  In Chiron case, supra, the initial ground under reg.5.2(2)(d) was changed by filing another application for the extension of time in terms of reg. 5.2(2)(b).  Similarly, in Crown v All American,  supra, a late application for the extension of time had been made by relying on the ground that circumstances had existed that were beyond the control of the applicant for the extension of time, and the need to undertake genuine research concerning the opposition, but, when advised that the latter ground was not available, the applicant for the extension of time applied to add to the application a ground based on "error or omission".  The present applicant for the extension of time has not sought to change or add any ground.  Dr Brichta's explanation that she realized the para (e) ground was not relevant sounds feasible and I have no reason to doubt it.

Mr Davidson was right in stressing the need for Woodpark to demonstrate a causal link between an error or omission which somehow thwarted its intention to file the notice of opposition.  Thus, to justify the extension of time, it must first be shown that Woodpark had actually intended to oppose the application on or before the opposition period expired, but that its intention had been hindered by an error or omission - Crown v All American, supra.  From Dr Brichta's declaration it appears that she was informed of the present application, filed on 19 February 1999, at the end of April 1999.  From the steps taken by Dr Brichta shortly after the telephone conversation, it is evident that she was anxious to seek professional advice in relation to the alleged conflict between the marks.  It has been submitted by Mr Davidson that, because of Dr Brichta's reticence in her declaration, one could not draw a conclusion that Woodpark had formed a firm decision to oppose the mark.  However, even though she does not state the intention in precise words or any detail, I think it is sufficiently transparent from the language in the sentence where she recounts that she was told to wait until acceptance of the mark "I wished to oppose" was advertised in the Official Journal before proceeding to opposing it.  The legal practitioner's estimated time for the advertisement, if the mark were to be accepted, was over ten months, therefore not until some time in December 1999 at the earliest.  In fact, the advertisement of its acceptance appeared much earlier - in the Official Journal of 15 July 1999.  Clearly, Dr Brichta would not have been aware of this and therefore did not act on her intention

There is no evidence that Dr Brichta had any previous experience in dealing with trade mark matters, nor is she a person who would be expected to regularly scrutinise the Official Journal for acceptance of trade marks.  In such circumstances, it would be reasonable to assume that the legal practitioner would have undertaken to watch acceptance of the subject mark, especially if a person consulting him had expressed concern about protecting her mark and had enquired about opposition in relation to an allegedly similar mark.  It seems to me that this case contrasts the situation in Stork Pompen BV v Weir Pumps Ltd 11 IPR 542, discussed in Crown v All American, supra, where the applicant for the late extension of time to file a notice of opposition had actually made a deliberate decision not to instruct its agents to maintain a watching service for potentially conflicting patent applications.  In finding that this action did not constitute an "error or omission", the hearing officer said, at 546:

… in the present case, Weir [the applicant for the late extension of time] at no stage before 16 October 1987 [when the opposition period expired] took any steps which would have put it in a position to make a decision on whether it should oppose this application.  Therefore, while in some previous situations like Firmaframe Nominees v Automatic Roller Doors, supra, the intention to oppose may not have been entirely definite, the intention to get in a position to be able to decide whether to oppose was there.  In this case I am satisfied from the evidence that there was never any such intention. 

… the failure to instruct a search arose from a deliberate decision by Weir.

I think it can be inferred from the foregoing that the error or omission was caused by the misleading advice given to Dr Brichta as to the anticipated time of advertisements for opposition of the accepted trade marks.  Even though Dr Brichta should have confirmed that the legal practitioner would be watching for the advertisement in question, in view of the advice given to her by a person versed in legal matters, there was nothing else Dr Brichta could have done other than wait until the estimated ten months passed.  It may well be that the legal practitioner himself decided not to peruse the Official Journal, or to make enquiries at the Trade Marks Office on the fate of the application until about December 1999. 

Mr Davidson's submissions that, even if Woodpark succeeded on the ground of an error or omission having occurred, that ground would be relevant only up to 26 October 1999, the date of the extension of time application, cannot be sustained in the present circumstances.  The application under consideration sought an extension of time of one month for the purpose of filing a notice of opposition, i.e. from 15 October 1999, the last day of the opposition period.  The notice of opposition was filed on 15 November 1999, therefore within the one month period.  It is not a requirement that a late application for an extension of time for filing the notice of opposition must accompany that notice of opposition.  In the circumstances discussed earlier, it is obvious that Dr Brichta had not expected the mark to be accepted for some considerable time, and, therefore, she would not have been in a position to file the notice of opposition at a short notice.  On becoming aware of the mark's acceptance by perusing the web site, as she states in her declaration, she acted immediately by requesting time for the actual preparation and filing of the notice of opposition.  I draw a distinction between this situation and that contemplated under reg.5.2.(2)(e), because Dr Brichta had already formed an intention to oppose the subject mark, but, in view of the unforeseen circumstances, was unable to formulate the opposition so as to file the notice of opposition on the same day as the late application for the extension of time. 

Decision
For the reasons set out above, I have found that there was a definite intention by Woodpark to oppose the present application, but that intention was frustrated by an error or omission by a legal practitioner's wrong advice offered to Dr Brichta, on behalf of Woodpark, in relation to the time accepted marks were advertised in the Australian Official Journal of Trade Marks.  As I am also reasonably satisfied that Woodpark has complied with the relevant regulations, I accordingly grant the requested extension of time to 15 November 1999 within which to file the notice of opposition in relation to trade mark application 786044. 

Costs
I see no reason why costs should not follow the result.  I therefore order that Torrag pay the costs of Woodpark. 

Vija Zars
Hearing Officer
25 January 2000