Lyons v Registrar of Trade Marks

[1983] FCA 252

Re: NEVILLE WILLIAM LYONS AND CARMEL MARY DWYER (carrying on business as
MITTY'S AUTHORISED NEWSAGENCY
And: THE REGISTRAR OF TRADE MARKS; STAMFORD HILL PTY. LTD. (1983) 78 FLR 217
No. V.G. of 171 of 1982
Administrative Law - Trade Marks

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Beaumont J.(1)

CATCHWORDS

Administrative Law - Judicial Review - Application for registration of trade marks - Extension of time within which to lodge evidence supporting opposition to registration - Proper case to justify extension - Extension of time within which to oppose registration of trade mark application - failure to lodge notice of objection due to error or action on part of officer of Trade Marks office - Whether s.131 applicable to extend time for lodging notice of objection - Conduct constituting an "error or action" within the meaning of s.131(1)(b).

Administrative Decisions (Judicial Review) Act, 1977 s.3

Trade Marks Act, 1955 ss. 49, 130, 131

Patents Act, 1952 s.160

Trade Marks Regulations reg.43

Trade Marks - Application for registration - Notice of opposition - Prescribed time - Failure to give notice - "Error or action" - Trade Marks officer - Opponent's evidence - Declarations - Prescribed time - Failure to serve declarations - Applications to extend time - Trade Marks Act 1955 (Cth), ss 49, 130, 131 - Trade Marks Regulations, reg. 43.

HEADNOTE

Section 49 of the Trade Marks Act 1955 prescribes the time within which notice of opposition to registration of a trade mark may be given and r. 43 prescribes the time for service of such opponent's declarations in support of such notice.

The opponent ignored the formal prescribed procedures and acted on informal erroneous advice provided by a trade marks officer and consequently failed to give notice of opposition within the prescribed time.

In another application the opponent failed to serve declarations in support of the notice of opposition within the prescribed time and sought to extend time on the grounds that such evidence was in the course of preparation and that additional preparatory time was desired.

Section 131(1)(b) empowers the Registrar to extend the prescribed time in circumstances of "an error or action on the part of an officer . . . employed in the trade marks office". In each application the Registrar extended time and application was made to review the registrar's decisions.

Held: (1) The exhaustive provisions contained in s. 49 Trade Marks Act 1955 are the subject of a limited exception in the specific circumstances described in s. 131 and the power conferred on the Registrar by the section may be exercised so as to extend the time specified in s. 49.

R. v. Registrar of Trade Marks; Ex parte J. S. Staedtler (1936) 55 CLR 271, distinguished.

Lehtovaara v. Acting Deputy Commissioner of Patents (1981) 58 FLR 1, applied.

(2) The meaning of "error or action" in s. 131(1)(b) must be confined to things done or omitted to be done under the Trade Marks Act 1955.

(3) The informal and erroneous advice was not something done under the Trade Marks Act or pursuant to any statutory duty and was not an "error or action" of the kind contemplated by s. 131(1)(b).

(4) However, the failure to forward relevant documentation to the trade marks sub-office contributed materially to the failure of the second named respondent to lodge a notice of opposition in time and constituted such an "error or action".

(5) In determining the application to extend time within which an oponent may serve his evidence in support of his application to oppose registration, the Registrar 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.

HEARING

Sydney, 1983, August 22; September 28. #DATE 28:9:1983

APPLICATION.

Application made pursuant to Administrative Decisions (Judicial Review) Act 1977 (Cth) to review three decisions made by the delegate of the Registrar of Trade Marks granting extensions of time pursuant to ss 130 and 131 of the Trade Marks Act 1955 (Cth).

R. McK.Robson, for the applicant.

G. Johnston, for first respondent.

P. R. Hayes, for second respondent.

Cur. adv. vult.

Solicitors for the applicant: Phillips Fox & Masel.

Solicitor for the first respondent: B. J. O'Donovan, Deputy Commonwealth Crown Solicitor.

Solicitors for the second respondent: Lander & Rogers.

H.W.F.

ORDER

1. The application be dismissed.

2. Costs be reserved.

Orders accordingly.

JUDGE1

This is an application brought pursuant to s.5 of the Administrative Decisions (Judicial Review) Act, 1977, seeking to review three decisions made on 15 October 1982 by the delegate of the Registrar of Trade Marks granting extensions of time pursuant to ss.130 and 131 of the Trade Marks Act, 1955 ("the Act").

Sections 130 and 131 provide:

"130. 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."

"131. (1) Where, by reason of -

(a) circumstances beyond the control of the person concerned; or

(b) an error or action on the part of an officer or person employed in the Trade Marks Office,

an act or step in relation to an application for the registration of a trade mark or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Registrar may extend the time for doing the act or taking the step and permit the act to be done or the step to be taken.

(2) The time required for doing an act or taking a step may be extended under this section although that time has expired."

The decisions sought to be reviewed granted extensions of the times provided in s.49 of the Act and reg. 43 as follows:

"49. (1) A person may, within 3 months after the date of the advertisement of the acceptance of an application, or within such further period, not exceeding 3 months, as the Registrar, on application made to him within the first-mentioned period, allows, by notice in writing specifying the grounds of opposition and lodged at the Trade Marks Office, oppose the registration of the trade mark.

(2) The opponent shall serve a copy of the notice on the applicant."

. . .

"43. Opponent's evidence in support. An opponent shall -

(a) serve on the applicant, within three months after the notice of opposition has been lodged at the Trade Marks Office, a copy of each of the declarations on which he relies in support of his opposition; and

(b) as soon as practicable after the copies of the declarations have been so served, lodge the declarations at the Trade Marks Office with a written statement indicating the place at which, and the date on which, the copies of the declarations were so served."

The applicants have applied for registration of three trade marks. Advertisements of the acceptance of the trade mark applications being No's. B323651, B323652 and B339171 were published in the Official Journals of 18 September 1980, 23 October 1980 and 30 October 1980, respectively. Requests were then made by the second respondent, which carries on business under the name "Mitty's of Queen Street" for, first, an extension of the time provided by reg. 43 within which to furnish evidence in support of an opposition which it had lodged against application B323651 and secondly, extensions of the time provided by s.49 within which to oppose applications B323652 and B339171. It is convenient to deal with these matters separately as they raise quite distinct questions.

Application B323651

As has been said, the acceptance of this application was advertised in the Official Journal on 18 September 1980. The notice of opposition to its registration was lodged on 17 December 1980, so that the three months prescribed by reg. 43 for lodging evidence in support of the opposition expired on 17 March 1981. The evidence was not furnished by that date, and on 19 March 1981 the applicants lodged a request in Form 15 asking that a time and place be appointed for the hearing of the opposition. On 27 March 1981, Messrs. Callinan & Associates, patent and trade mark attorneys, informed the Trade Marks Office that they had taken over the prosecution of the opposition from the solicitors originally appointed, and requested an extension of time of three months from 17 March to 17 June within which to lodge the required evidence in support. The grounds for the request were:

"Evidence in support of the opposition is in course of preparation but it is desired to have additional time to prepare that evidence and to serve copy thereof on the applicant."

On 5 May 1981 the applicants were informed of the request; and by letter dated 13 May 1981 the Trade Marks Office was informed that the applicant objected to the request for a number of reasons which need not be described here. One of the grounds of objection to the request for an extension of time was that the request "does not establish why the time so far available has proved insufficient".

The delegate rejected this ground. He accepted that the second respondent had not fully established why the initial period of three months specified by reg. 43 was not enough in that it merely stated that its evidence was in the course of preparation and that additional time was required in order to complete its preparation. He said that this was not an uncommon problem. In his experience, it was commonly recognised by trade mark practitioners that the initial period of three months allowed by reg. 43 was generally insufficient. Requests to extend that period were, apparently, much more the rule than the exception. He inferred that although the second respondent had been active in obtaining the evidence it simply has not had sufficient time to collate it and to lodge and serve it as required by the regulation. In his view, in the circumstances, there could be no better reason than that especially as the public interest was likely to be best served by allowing this, the first extension, whilst on the other hand there was nothing to suggest that the applicants' interests were likely to be unfairly jeopardised on account of it.

By the date of his decision, the second respondent's evidence had already been lodged. The delegate decided to allow an extension of time until 26 August 1981, being the date on which the balance of the second respondent's evidence was served on the applicants.

In their application for review the applicants challenge this decision on a number of the statutory grounds. They argue that the decision was an improper exercise of the power conferred by s.130; that the decision involved an error of law or was otherwise contrary to law; that the decision was not based upon evidence or material which justified making the decision, there being, it is submitted, no evidence or insufficient evidence explaining why the time provided by reg. 43 was insufficient or explaining why an application for an extension of time had not been made prior to the expiry of the period specified in the regulation; and that, in the absence of evidence, the decision was not authorised by s.130.

The applicants submit that the onus lay upon the second respondent to explain its delay on sufficient grounds and that it failed to do so. They rely upon the decision of Bowen C.J. in Vangedal-Nielsen v. Smith (1980) 49 F.L.R. 44 for this purpose. It was there held that, in an application pursuant to s.59(1) of the Patents Act, 1952 for an extension of time to lodge notice of opposition to an application for a patent, it was wrong to grant an extension simply because no one had raised exceptional circumstances why it should not be granted. It was held that an extension of time to lodge a notice of opposition should only be granted where the party seeking the extension first, had shown a good reason why opposition was not mounted within the prescribed time, and secondly, had discharged the burden of establishing an appropriate case to justify the extension. It was further held that the fact that the applicant for an extension of time had written to the applicant for the patent requesting a licence, and the applicant for the patent had failed to reply to that request, was an irrelevant consideration and should not have been taken into account by the examiner.

Bowen C.J. pointed out (at p.50) that since no express guidance was afforded by s.59(1) of the basis on which the extension of time is to be allowed or disallowed, the purpose and scope of the provision has to be considered in order to determine what are relevant or irrelevant considerations in dealing with an application for an extension. He concluded (at p.50):

"The right to lodge a notice of opposition within three months is clearly given mainly in the interests of the person wishing to oppose a patent on any one or more of the grounds stated in s.59(1). No doubt there is also a public interest involved in ensuring that worthless patents are not granted because insufficient opportunity has been afforded of raising those grounds (Kaiser Aluminium & Chemical Corporation v. Reynolds Metal Co. (1969) 120 C.L.R. 136) Three months has been considered by Parliament to be an appropriate period to allow for this. But it has been recognized that cases may occur where for one reason or another three months may prove insufficient. Accordingly, it has been provided that further time may be allowed not exceeding a further three months. The Commissioner is interposed as the arbiter whether such an extension should be allowed and how long it should be. Clearly, the Commissioner will have to consider the interests of the prospective opponent who, for some good reason, has not been able to mount his opposition within the initial period of three months. 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. Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved."

In the present case, the delegate was not, at this stage, concerned with the time for lodgement of a notice of opposition. That notice had been lodged within time and the subject application was concerned only with the time for filing evidence. Nonetheless, in my opinion, the reasoning of Bowen C.J. should, in principle, be applied here.

Although a more detailed explanation of the position may 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. In particular, in my view, there was evidence before the delegate upon which he could rely in order to justify the grant of an extension. It follows that no case for review under the Administrative Decisions (Judicial Review) Act, 1977 has been made out on this branch of the case.

Applications B323652 and B339171

In these matters the second respondent has applied for an extension of the time prescribed by s.49 of the Act within which to oppose the registration of trade mark applications B323652 and B339171. Advertisements of the acceptance of the trade marks appeared respectively in the Official Journals of 23 October and 30 October 1980, so that, under the provisions of s.49, the respective opposition periods expired on 23 January 1981 and 30 January 1981. On 27 March 1981, Messrs. Callinan & Associates, having then taken over the prosecution of the intended oppositions from a firm of Melbourne solicitors, lodged notices of opposition to applications B323652 and B339171, but at the same time also lodged the applications for an extension of the periods concerned. The applications were expressed as being made pursuant to ss.130 and/or 131 of the Act. The grounds upon which this application is made are explained in a declaration sworn by Caroline Jane Blakiston on 16 April 1981 as follows:

"1. I am a solicitor in the employ of Lander & Rogers of 140 Queen Street, Melbourne, the solicitors representing Stamford Hill Pty. Ltd. of 126 Wellington Parade, East Melbourne in the said State (and the firm previously acting in the matter).

2. At the request of one of the partners of Lander & Rogers, Mr. Butcher, I have been checking the progress of trade mark applications numbered 323651, 323652 and 339171 lodged by Neville William Lyons and Carmel Mary Dwyer trading as Mittys Authorised Newsagency of 53 Bourke Street, Melbourne, at the Trade Marks Sub-Office at 150 Lonsdale Street, Melbourne from time to time since August 1980.

3. Although I was aware that the official document in which the acceptance of any application was published was the Australian Official Journal of Patents Trade Marks and Designs, as a result of conversations which I had with officers at the Trade Marks Sub-Office in August and September, 1980. I formed the view that an acceptable alternative method of checking what applications for trade marks had been accepted, was to examine the official trade mark files at that office. When satisfying myself as to the accuracy of this procedure I clearly recall being told by one officer that any delay from the date upon which an application was accepted in Canberra until that acceptance was placed in the official files at the sub-office in Melbourne was negligible. On all occasions since I have checked only the trade mark files at the sub-office and not the official journal.

4. On the 22nd day of October, 1980 I again checked the trade mark files at the sub-office and discovered that application number 323651 had been accepted and published on the 18th day of September, 1980.

5. I again checked the trade mark files at the sub-office on the 22nd day of October, and 17th day of December, 1980 in the same manner as previously and on both occasions it was clear that neither of the remaining applications with which I was concerned and which were numbered 323652 and 339171 had been accepted. Both of those applications remained recorded on white paper. Had they been accepted the white paper would have been replaced by gold paper.

6. On the 10th day of March, 1981 I again checked the trade mark files at the sub-office and discovered that both were then filed on gold paper with the dates of acceptance being recorded as the 23rd day of October, 1980 for application number 323652 and the 30th day of October, 1980 for application number 339171. Upon asking an officer at the sub-office why the acceptances had not been recorded in the official files when I examined them on the 17th day of December, 1980 I was informed that there had been a substantial backlog in Canberra at that time. He then went away and apparently made a further enquiry as a result of which he informed me that all applications which had been accepted on the 23rd day of October, 1980 had not been sent to the Melbourne sub-office until the 15th day of December, 1980 and that they would probably not have been entered in the official files at that office until about the 22nd day of December, 1980. As the officer concerned was referring to the applications accepted on the 23rd day of October, 1980 I assumed that any application accepted on the 30th day of October, 1980 would not have been filed earlier than about the 22nd day of December, 1980 and probably later than that.

7. Had the search of the files carried out by me on the 17th day of December, 1980 revealed the correct position my next search on the 10th day of March, 1981 would have allowed sufficient time to lodge the proposed Notices of Objection. However, because of the unusual circumstances explained to me by the officer at the sub-office this was not in fact the case."

This evidence was not challenged although the delegate explained Miss Blakiston's reference to the white and gold documents and their importance in relation to certain Trade Marks Office procedures as follows. The white form (Form 2) is for all intents and purposes a replica of the form of application (Form 1). Whereas, after lodgement, the Form 1 is retained permanently at the Central Office of the Trade Marks Office in Canberra, the Forms 2 are sent to the various Sub-Offices for public search and reference purposes. After a trade mark is accepted for registration the original white Form 2 is replaced by an updated printed version showing all of the particulars of the application as they exist at the time of acceptance, including the date of advertisements of acceptance in the Official Journal. This updated version is known as the yellow or gold Form 2 because of its colour, and it is retained permanently on public record at the Trade Marks Sub-Offices.

For the reasons he then gave, the delegate found that the failure of the second respondent to act within the times specified by s.49 was due to an error or action on the part of an officer of the Trade Marks Office within the meaning of s.131. The delegate extended time to the date on which the notices of opposition were actually deposited at the Trade Marks Office, namely, 27 March 1981.

The applicants seek to challenge these decisions on a number of statutory grounds. They contend that the delegate lacked power to extend time; that he wrongly construed s.131; and that he improperly exercised his discretion under s.131.

In submitting that the delegate lacked the relevant power, the applicants argue that the time limits specified in s.49 cannot be extended by virtue of either s.130 or s.131. In essence, the applicants contend that s.49 should be regarded as a code for its own purposes and since it amounts to an exhaustive statement of the position so far as relevant, neither s.130 nor s.131 can have any room to operate, even if a proper case for an extension were otherwise made out. It is properly conceded by the respondents that s.130 is not available in the present case since it is a mere general provision which cannot be used to cut down the operation of the specific terms of s.49 in any way. The question is whether s.131 should also be characterised in the same way.

In support of their submission, the applicants relied upon the decision of the High Court in The King v. The Registrar of Trade Marks; Ex Parte J.S. Staedtler (1936) 55 C.L.R. 271. The case was concerned with the construction of s.38 of the Trade Marks Act, 1905-1922 and its relationship, if any, with s.105 of that Act. Those provisions were similar to ss.49 and 130 respectively, of the present Act. However, there was no counterpart of s.131 in the earlier legislation: it was introduced for the first time in the 1955 Act.

In Staedtler's Case, the acceptance of the application was advertised in the Official Journal on 31 October 1935. The period of three months for lodging notice of opposition to the registration of the trade mark under s.38 expired on 31 January 1936 and no notice of any opposition to the registration of the trade mark and no notice of any application for an extension of time for lodging such notice was filed in the Trade Marks Office within such period. On 30 April 1936 an application was filed by the Royal Pencil Co. Limited of London for an extension of time for the purpose of lodging an opposition to the registration of the trade mark. J.S. Staedtler refused to consent to the extension of time and an application for such extension was made to the Registrar of Trade Marks, who granted the application, purporting to act under s.105.

The Full High Court ordered mandamus that the Registrar proceed in the application for the trade mark as one in which no opposition has been lodged within the time limited by s.38, or any time to which the same might lawfully be extended.

Dixon J. said (at p.274):

"By sec. 105, a general power is given to the Registrar to extend the times limited by the Act. It is a power which enables the Registrar to extend such a time either before or after its expiration. It contains no limit upon the period to which he may extend it. It contains no limit upon the time within which an application for extension may be made. Sec. 38 limits the period for lodging opposition to three months. It then proceeds to deal with the extension of that time. It imposes two conditions: first, that the time shall not be extended beyond three months and next, that the application for an extension shall be made within the original time. The words 'on application made within the first period of three months' appear to me to be an express provision confining to the time for lodging the opposition the power of the Registrar to entertain an application for an extension of the time for opposition. This, in my opinion, is inconsistent with the full application of the general power given to the Registrar by sec. 105 to extend times after their expiration. It is true that the section does not say that the Registrar must allow an extension of time for opposition within the period limited for lodging the opposition. But sec. 38 does expressly require the making of the application to him for such extension within that period. This is necessarily restrictive of a power to extend a period after its expiration, which otherwise would be exercisable whenever invoked. It is, therefore, inconsistent with the full operation of the power derived by the Registrar from sec. 105. Sec. 47 shows the reason for this. It is that, on the expiration of time for opposition, when no opposition is lodged, the Registrar's duty to register becomes absolute. It appears to me that sec. 38 exhaustively states the conditions governing an extension of time for lodging opposition."

Evatt J. said (at p.274):

"The main command of sec. 38 is that any person may, within three months, lodge at the office a notice of opposition. Then the Legislature proceeds to permit of an extension of the period of three months. The provision added to secure such purpose is that the notice of opposition may be lodged within 'such further time not exceeding three months as the Registrar on application made within the first period of three months allows'. This added provision includes interrelated matters and should be regarded as a unit and not analyzed into separate and independent powers. It authorizes the Registrar to allow further time, provided that such time does not exceed three months, and it also requires that the application for such extension shall be made 'within the first period of three months'. The provision thus creates a rule for extension of time which is quite distinct from the general power to extend conferred by sec. 105. In short, sec. 38 provides 'otherwise' and does so 'expressly' within the meaning of sec. 105."

Starke J. (at p.273) was not prepared to dissent from the view that s.38 provided a complete and exhaustive statement of the conditions and the times within which extensions of time for lodging opposition could be granted. McTiernan J. (at p.274) thought that s.38 exhaustively and specially stated the conditions upon which a person could apply for an extension. Because of the express provision thereby made limiting the period in which such application could be made, s.105 gave no authority to extend the time after that period has expired.

In recommending the inclusion of ss.130 and 131, the Committee appointed by the Attorney-General of the Commonwealth to consider what alterations are desirable in the trade marks law of the Commonwealth said in its report in 1954 (at p.30):

"146. Clause 130 authorizes the Registrar to extend any time specified by the Act, either before or after its expiration, unless the Act otherwise provides. This clause is identical with section 105 of the present Act, and in the view of this Committee the power granted to the Registrar by this clause is necessary and desirable.

147. Clause 131 corresponds to section 160 of the Patents Act 1952 and authorizes the Registrar to extend prescribed times under certain conditions. The reasons which caused the introduction of this provision into the Patents Act are considered to apply equally in the case of trade marks and we therefore recommend the inclusion of a similar section in the Trade Marks Act."

The Chairman of this Committee was Mr. Justice Dean of the Supreme Court of Victoria. He was also Chairman of the Committee appointed in 1950 to review Australian patent law.

Section 160 of the Patents Act, 1952 as originally enacted, was in the same terms as s.131 as follows: "160.-(1) Where, by reason of -

(a) an error or action on the part of an officer or person employed in the Patent Office; or

(b) circumstances beyond the control of the person concerned, an act or step in relation to an application for a patent or proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may extend the time for doing the act or taking the step and permit the act to be done or the step to be taken.

(2) The time required for doing an act or taking a step may be extended under this section although that time has expired."

The history of this provision may be traced back to the Patents Bill, 1906. The Patents Act, 1903 consolidated, so far as that could be done, the laws of the States relating to patents. In 1906, the Attorney-General, Mr. Isaacs (as he then was), introduced a Bill in effect to amend s.29 of the 1903 Act. Clause 2 of the Bill, as agreed to in its amended form was a temporary provision as follows:

"(1) The Commissioner, or on appeal from him the Law Officer, may, in relation to any application for a patent made under section twenty-nine of the Patents Act 1903:-

(a) extend the prescribed time for doing any act or taking any step, and

(b) revive any application for a patent or any proceedings in relation thereto which has lapsed by reason of an omission to do any act or take any step within the prescribed time.

(2) The prescribed time for doing any act or taking any step may be extended under this section although the time has expired.

(3) The powers of the Commissioner or the Law Officer under this section may only be exercised on application made to him by the applicant for the patent within six months after the commencement of this Act . . ."

Mr. Isaacs, saying that he had prepared a clause to cover the errors of officers of the Department, introduced this provision:

"1. Where, owing to any error or omission on the part of an officer of the Patent Office any application for a patent, or any proceeding in relation thereto, has lapsed, or any act or step in relation thereto required to be done or taken within a certain time has not been so done or taken, the Commissioner may -

(a) revive the application or proceeding;

(b) extend the time for doing the act or taking the step;

(c) permit the act to be done or the step to be taken.

2. The prescribed time for doing any act or the taking any step may be extended under this section, although the time has expired.

3. The powers of the Commissioner under this section may only be exercised on an application made to him by an applicant or party within one month after the applicant or party has or might, with reasonable diligence, have become aware of the error or omission, or in cases where the error or omission occurred before the commencement of this Act within one month after the commencement of this Act . . ."

(See Commonwealth of Australia, Parliamentary Debates, Session 1906, House of Representatives, 4 October 1906 at p.6129.)

These provisions became ss.2 and 3 of the Patents Act, 1906 (Act No. 19 of 1906). The Committee appointed in 1950 to review Australian patent law made no specific comment on the clause which later became s.160 of the Patents Act, 1952. The Committee appended to its report the earlier report of the Committee appointed in 1935 to review Australian patent law. The Chairman of that Committee was Sir George Knowles but Mr. Justice Dean was a member. In their report, the Knowles Committee (at p.40) referred only briefly to the precursor of s.160, saying that it was taken from the Patents Act, 1906 and observing that the 1906 Act was drafted as an independent Act and not as an amendment of the Act of 1903.

Section 160 of the Patents Act, 1952 is now in a different form. The operation of the present provision has been considered in a number of authorities. The reasoning in those cases is, I think, illuminating for present purposes, even if it be accepted that the reasoning appears to have turned, to some extent, upon the terms of some of the amendments made to s.160 since 1952.

In Scaniainventor v. Commissioner of Patents (1981) 36 A.L.R. 101, a Full Court of this Court (Fox A.C.J., Franki and Northrop JJ.) held that s.160(2) is applicable to an extension of the time specified in s.141(1) for making a convention application for a patent. The Court said (at p.105):

"There is nothing in their history which suggests that s 160(2) should not apply to s 141(1). They were introduced together in 1952 in terms not materially different from those operative in 1979. With this in mind, it is relevant to observe that while certain provisions are expressly excluded from the operation of s 160(2) by sub-s (8) (including s 52B, which relates to convention applications), s 141(1) is not one of them. Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary. This view is supported by the provisions of s 160(8)."

This decision was approved by the Full High Court (Stephen, Mason and Wilson JJ., Murphy and Brennan JJ. dissenting) in Australian Paper Manufacturers Limited v. C.I.L. Inc. (1981) 37 A.L.R. 289. Stephen J. said (at p.292): "However, analysing it as I have, s 141(1) does as a matter of language involve the very situation for which s 160(2) legislates; it provides for an act or step, the initial making of formal application for an Australian patent, which relates to an application for a patent and which may properly be described as required to be done or taken within a certain time, in this instance within 12 months. In those circumstances it would require quite compelling contextual or other considerations for s 160(2) nevertheless to be held inapplicable to s 141(1). Despite the attractive arguments of counsel for the appellant, no such consideration seems to me to exist."

Even more pertinently, in Lehtovaara v. Commissioner of Patents (1981) 39 A.L.R. 103, a Full Court of this Court (Franki J. dissenting) held that the Commissioner has power under s.160(1) and (2) to extend time under s.54(1B). The latter provision vests a power in the Commissioner to extend time for acceptance of an application but provides that any such extension shall not exceed a specified period. The majority (Northrop and Ellicott JJ.) said (at p.114):

"We can find nothing in s 54 itself which makes it inconvenient, difficult or incongruous to apply s 160 to s 54(1). It seems to us to be as appropriate as a matter of language and operation to apply s 160 to it, as it is s 54(1B). It means that s 54(1) must also be read as being subject to s 160 but, as we have pointed out, so must s 141 to which s 160 has been held to apply in the APM case, supra, and the A B Scaniainventor case, supra. Indeed, one difficulty we have in the absence of an express provision excluding it, is to identify a reason why the legislature would have intended to deprive an applicant of the benefit of s 160 in relation to such an important matter as the time for acceptance of an application, having in mind that its terms are so apt to apply to such a matter. There could obviously be cases where an application is not accepted in time due to any of the circumstances mentioned in s 160(1) and (2) and those provision, as we have pointed out, are different in their nature and scope of operation from s 54(1B). For instance, s 160(1) compels an extension for an appropriate period where the office is at fault. Why should not this right, one might ask, be available to an applicant whose application lapses at the expiry of the 21-month period because the Commissioner has not dealt with it through some error in the Patent Office? The answer given is that the legislature has, by inserting sub-s (1B), shown an intention to confine the power of extension to that contained in the sub-section. We do not accept this argument. The sub-section and s 160 are different in character. Section 160, although it places no limit on the time for extension, deals with extensions needed by reason of the specific circumstances therein mentioned. In the absence of an express provision excluding it, we think it applies."

In my opinion, this reasoning should be applied in the present case and s.131 should be read as a gloss upon the operation of s.49 in the form of a force majeure provision. Although s.131 is capable of general application to any provision of that Act, it should not be regarded as a mere "general" provision of the kind found in s.130 to which may be applied the rule of construction that where there is a conflict between "general" and "specific" provisions, the "specific" provisions prevail on the ground of repugnancy (see Refrigerated Express Lines (A/asia) Pty. Limited v. Australian Meat and Live-Stock Corporation (1980) 29 A.L.R. 333 at p.347; Pearce, Statutory Interpretation in Australia 2nd ed. at p.46). Section 131 is not a merely general power in any abstract sense: it is limited in its application to quite special situations. Further, the history of the legislation and its remedial character support the conclusion that parliament intended that, in a limited class of case, time could be extended beyond the period specified in, inter alia, s.49 (cf. TCN Channel Nine Pty. Limited v. Australian Mutual Provident Society (1982) 42 A.L.R. 496). Although it was held in Staedtler that the precursor of s.49 should be regarded as an exhaustive treatment of the subject, it is possible to reconcile that decision with the subsequent introduction of a remedial provision to deal with force majeure situations arising within the framework of s.49. The code or exhaustive provisions contained in s.49 are thus made the subject of a limited exception in the specific circumstances described in s.131. In this regard, a contrast may be drawn with the non-specific provisions of s.130 dealt with in Staedtler. Further, in Staedtler, Dixon, Evatt and McTiernan JJ. placed some reliance on the presence in s.130 of the proviso "unless otherwise expressly provided". No such proviso was inserted in s.131. As a last resort, the rule of construction that the later enactment prevails should be applied (see Ross v. R. (1979) 25 A.L.R. 137 at p.145; Pearce, op. cit. at p.48). In my opinion, the history of the legislation and the special character of s.131 suggest that the reasoning in Staedtler cannot be applied to s.131.

In my view, the power contained in s.131 may be exercised so as to extend the times specified in s.49.

It was further submitted on behalf of the applicants that s.131(1) could not be applied here because no act or step was "required" to be done or taken within a certain time. It was suggested that, because there was no obligation upon the second respondent to oppose the application for registration, it was not "required" to do or take any act or step within the meaning of the provision. However, the same argument was put and rejected in Scaniainventor (supra), and in the C.I.L. Case (supra) (at p.104 and p.292 respectively). It was there held that something can be "required" to be done if the doing of the act within a period is a condition of obtaining a benefit.

Finally, the applicants also argue that s.131(1)(b) cannot apply to the facts of this case because, on its true construction, the act or step required to be done must be one required to be done by an officer or person employed in the Trade Marks Office, yet here the failure to act was an omission on the part of the solicitors then acting for the second respondent to check the position from time to time in the Official Journal in accordance with the provisions of ss.47 and 49.

In her declaration (supra.), Miss Blakiston said, first, that she was informed that an "acceptable alternative" method of checking what applications for trade marks had been accepted was to examine the official trade mark files at the Office (see her declaration, para. 3); secondly, she was also informed that any delay from the date upon which an application was accepted in Canberra until notice of the acceptance was placed in the official files in the Sub-Office in Melbourne was negligible (ibid); and thirdly, she referred to the delay which occurred in forwarding the relevant documentation from Canberra to Melbourne (see her declaration, para. 6). The applicants submit that this evidence does not provide the causal connection required by the use, in s.131(1)(b), of the phrase "by reason of" an error or action of the kind there described.

The meaning of the phrase "by reason of" has been considered in a number of authorities. In Main Electrical Pty. Limited v. Civil and Civic Pty. Limited (1978) 19 S.A.S.R. 34, Bray C.J. (at p.49) said that the phrase implies a relationship of cause and effect but it is a relationship which may be indirect (see The Diamond (1906) P. 282; see also Vickers v. Minister for Business and Consumer Affairs (1982) 43 A.L.R. 389 at p.407). In R. v. Justices of the Peace at Yarram; Ex parte Arnold (1964) V.R. 31, Sholl J. held (at p.24) that "by reason of" could extend to consequential matters. In my opinion, the phrase, where used in s.131, should be given the meaning explained in these cases.

In the present case, the evidence showed reliance by the second respondent's solicitors upon informal advice or information which, in the events which happened, was erroneous but not necessarily actionable under the general law (see L. Shaddock & Associates Pty. Limited v. Parramatta City Council (1981) 36 A.L.R. 385). In seeking and relying upon that advice or information, given informally, the second respondent's solicitors elected to ignore the formal procedures prescribed in such a case, namely, to check from time to time whether notification in the Official Journal of the acceptance, if any, of the application had been effected pursuant to s.47. As a matter of history at least, the second respondent failed to lodge its notice of opposition because of the three errors or action already mentioned. The question is whether this conduct or any part of it, is an "error or action" within the meaning of s.131(1)(b).

In my opinion, an "error or action" within the meaning of s.131(1)(b) must be confined to things done or omitted to be done under the Act. In other words, if an officer or employee embarks upon a course of conduct which is gratuitous or voluntary in the sense that it falls outside the duties and functions imposed by the Act upon the officers and employees charged with administration of the Trade Marks Office, that conduct, in my view, falls outside s.131(1)(b) whatever may be the consequences of the conduct at common law.

In Shaddock (supra), the Council was held liable under the general law for negligent information given voluntarily in the sense that the Council had set itself up as an information centre. In doing this, it went beyond its statutory duty to furnish such information. However, it alone possessed the store of information (at p.398). That cannot be said of the Office in the present case: in s.47, the Act prescribes a manner and form of publication of acceptance of the application which is available as a source of information to any interested member of the public.

In prescribing advertisement in the Official Journal, s.47 is clearly imposing an obligation upon the officer responsible to advertise the acceptance. However, there is no other duty imposed by the Act upon officers or persons employed in the Office in this connection except the obligation under s.16 to keep the register open to the inspection of the public at all convenient times. No breach of that provision occurred here.

It follows, in my view, that the volunteering of advice that checking the files in the Sub-Office was an acceptable alternative was not something done under the Act. It was a gratuitous gesture and not done pursuant to any statutory duty or function in that behalf. In my opinion, it was not an "error or action" of the kind contemplated by s.131(1)(b).

The second subject of advice, namely, that the delays in transmission were negligible is, I think, the same in principle as the first, although it may be more accurately described as information rather than advice in the strict sense. Here also, the information was volunteered and in the absence of any statutory duty or function in this connection, for the reasons already given, it is not an "error or action" within s.131(1)(b).

The final "error or action" is said to consist of the delay in transmission of relevant documentation from Canberra to Melbourne. This is different in character from the advice and information tendered: it is clearly something done or omitted to be done under the Act. Since the failure to forward the relevant documentation to Melbourne contributed materially to the failure of the second respondent to lodge a notice of opposition within time, this conduct, in my view, constitutes an "error or action" of the kind contemplated by s.131(1)(b) by reason of which the second respondent failed to lodge its notice of opposition within time.

To this extent at least, in my opinion, the delegate was entitled to exercise the power conferred by s.131. Given the availability of that power, no case has been made out for review of the exercise of the discretion granted by the provision.

The application should be dismissed. The parties have indicated that they wish to make submissions on the question of costs in the events which have happened. I will therefore reserve costs.