Mad Keen Pty Ltd (April Cornwell) v Jenkar Developments Pty Ltd

[2011] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by JENKAR DEVELOPMENTS PTY LTD to an application under section 66 of the Act by APRIL CORNWELL and MAD KEEN PTY LTD to amend the notice of opposition to trade mark applications 1298177; 1298700 (39; 39 and 43) - MAD KEEN; MAD KEEN FISHING CHARTERS - in the name of JENKAR DEVELOPMENTS PTY LTD

Delegate:	Heath Wilson
Representation:	Jenkar Developments Pty Ltd – Greg Finlayson of Grope Hamilton Lawyers. April Cornwell – Dr Kevin Pullen, Patent and Trade Mark Attorney. Mad Keen Pty Ltd – Written submissions provided.
Decision:	2011 ATMO 91 Section 66 amendment: Application to amend notice of opposition – whether fair and reasonable in all the circumstances to allow amendment – Amendment allowed – limited costs awarded against Jenkar.

Background

1. On 8 and 13 May 2009, Jenkar Developments Pty Ltd (‘Jenkar’) applied to register two trade mark applications (‘the Trade Marks’), the details being:

TM No.	Trade Mark	Class / Statement of Services
1298177	Mad Keen Fishing Charters	Class 39: Boating, fishing, hunting and sightseeing excursions
1298700	Mad Keen	Class 39: Boating, fishing, hunting and sightseeing excursions Class 43: Hospitality services (accommodation); provision of temporary accommodation; provision of tourist accommodation

1. The Trade Marks were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 October 2009. An application for an extension of time to file a notice of opposition was lodged on 4 January 2010 by Mad Keen Pty Ltd, represented (at that time) by Dr Kevin Pullen, Patent and Trade Mark Attorney.  

2. A notice of opposition to the registration of the Trade Marks was later filed nominating A. Cornwell as the opponent (with ACN 104 676 995) on 29 March 2010. However, the opponent in the proceedings was incorrectly recorded by IP Australia as Mad Keen Pty Ltd (the company that had filed the extension of time) rather than Ms Cornwell. The likely explanation for the oversight is that Mad Keen Pty Ltd remained recorded as the opponent following the extension of time to file a notice of opposition.  

3. This anomaly was not identified until some time later. Subsequent correspondence from IP Australia, from Mad Keen Pty Ltd and from Jenkar all referred to the opponent as Mad Keen Pty Ltd. It was not until 6 January 2011 that Mr Finlayson of Grope Hamilton Lawyers acting on behalf of Jenkar brought to the Registrar’s attention that it was April Cornwell and not Mad Keen Pty Ltd listed as the opponent on the notice of opposition. I note that Mr Finlayson’s supporting statutory declaration of 25 January 2011 further confuses the issue by incorrectly referring to “a notice of opposition by A Crawford ACN 104676995 29 May 2010”. The name of the opponent and the date of the notice of opposition are both incorrect. The actual error in the notice of opposition was subsequently identified and steps were taken to rectify the situation.

4. To correct the error in the notice of opposition, on 23 March 2011 Alexander Rich, the Director of Mad Keen Pty Ltd officially requested an amendment to the name of the opponent under section 66 of the Trade Marks Act 1995 (‘the Act’). His statutory declaration provides:

   The previous applicant (sic), April Cornwell, was acting on behalf of our company Mad Keen Pty Ltd in the original defence of our trademark which has been infringed by the applicant, Jenkar Developments Pty Ltd.

   April Cornwell was the director of Mad Keen Pty Ltd until it was 100% acquired by Delgeo Pty Ltd in June 2010 under a share sale agreement and left the company at the time of acquisition.

   We request that the notice of opposition be corrected for the applicant (sic) to the company name of Mad Keen Pty Ltd which is the owner of the original trademark for Mad Keen.

5. On 11 May 2011, IP Australia informed the parties of the Registrar’s intention to allow the amendment to the notice. Jenkar was given an opportunity to be heard on the section 66 matter and on 19 May, Jenkar requested to be heard. I further note that Jenkar’s application for a hearing lists the name of the other party not as Mad Keen Pty Ltd but “April Cornwell ACN 104676995 (Fishing Blokes Pty Ltd. formerly Mad Keen Merchandising Pty Ltd). However, it was not until 30 May that Ms Cornwell also filed an application to amend the notice of opposition accompanied by a declaration. That declaration explains the error in the notice of opposition:

   The person identified as “person opposing” was mistakenly identified to be April Cornwell rather than the name of the correct opponent MAD KEEN PTY LTD.

   The ACN of the Opponent was inadvertently identified as 104 676 995.

   The person executing the NOTICE OF OPPOSITION inadvertently failed to indicate that the NOTICE was being executed in a capacity as director of MAD KEEN PTY LTD.

6. Ms Cornwell declares:

   I am now aware that I misunderstood the information that is required to be entered in the fields in a Notice of Opposition and that I inadvertently omitted certain information relevant to identifying the Opponent.

   I mistakenly entered my name as the “person opposing” instead of MAD KEEN PTY LTD.

   I failed to indicate that I was executing the Notice in my capacity as director of MAD KEEN PTY LTD.

   …

   It was always the intention that the Opponent to registration of the TRADE MARKS be MAD KEEN PTY LTD.

7. Prior to this amendment request, Mr Finlayson had advised IP Australia that Jenkar wished to be heard on any amendments to the notice of opposition. Consequently, on 3 June 2011 IP Australia wrote to both parties stating that the requested hearing would relate to both Mad Keen Pty Ltd’s and Ms Cornwell’s request to amend the notice of opposition.

8. It was initially unclear whether Jenkar opposed Ms Cornwell’s amendment request, but it was confirmed at the hearing that Jenkar objected to both requests. I heard the matter as a Delegate of the Registrar of Trade Marks in Canberra on 15 July 2011. Mr Finlayson appeared on behalf of Jenkar (the opponent to the section 66 amendments). There was no appearance on behalf of Mad Keen Pty Ltd, but brief written submissions were supplied by Mr Alexander Rich. Dr Kevin Pullen, Patent and Trade Mark Attorney appeared only on behalf of Ms Cornwell.

9. Immediately prior to the hearing, Dr Pullen produced and filed his own statutory declaration dated 15 July 2011. This declaration consisted of correspondence from IP Australia and between Mr Pullen and Mr Finlayson on behalf of their respective clients. The majority of this material exists on the official file for the Trade Marks. However, the hearing was briefly adjourned to invite submissions from Mr Finlayson on the admissibility of this material.     

10. Upon recommencement of the Hearing, Mr Finlayson did not appear to have any objections to the declaration, except to imply that it was not comprehensive enough and all the correspondence between the parties should have been before me. I then directed that the Pullen declaration be allowed as evidence in the proceedings.

11. After the hearing, Mr Finlayson took it upon himself to supply me with additional evidence consisting of his own declaration with attached correspondence between himself and Dr Pullen. He also argued that certain submissions made by Dr Pullen in the hearing were provocative and requested that they be withdrawn. Dr Pullen was not inclined to withdraw those comments, nor am I inclined to reject them outright.

12. I have considered the entirety of the evidence from all parties. However, I attach no weight to general unsupported opinions or submissions regarding the legal prowess of the respective representatives. In any event, such comments are irrelevant to the matter at hand.

13. Regardless of the inconsistency between the notice of opposition and the trade marks register, the evidence stages for the opposition were still able to proceed under the name of the recorded opponent Mad Keen Pty Ltd. It is now worth noting that the evidence stages for the opposition under section 52 are complete and the substantive opposition is ready for a decision by a delegate of the Registrar.

    Relevant Provisions of the Act

14. Section 66 of the Act provides:

    Amendment of other documents

    The Registrar may, at the request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the request of the person’s agent, amend the application, notice or document:

    (a)to correct a clerical error or an obvious mistake; or

    (b)if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

    Note:For file see section 6.

15. Subsection 52(5) provides:

    (5)If:

    (a)a person is granted an extension of time in which to file a notice of opposition; and

    (b)before the notice of opposition is filed, the right or interest on which the person could have relied to file the notice of opposition becomes vested in another person; and

    (c)the other person notifies the Registrar in writing that the right or interest is vested in him or her;

    then:

    (d)the other person is taken to have been granted an extension of time in which to file the notice of opposition; and

    (e)that extension ends when the extension mentioned in paragraph (a) ends.

16. Section 53 provides:

    Circumstances in which opposition may proceed in name of a person other than the person who filed the notice

    If:

    (a)after a person has filed a notice of opposition, the right or interest on which the person relied to file the notice of opposition becomes vested in another person; and

    (b)the other person:

    (i)notifies the Registrar in writing that the right or interest is vested in him or her; and

    (ii)does not withdraw the opposition;

    the opposition is to proceed as if the notice of opposition had been filed in that other person’s name.

    Note:For file see section 6.

    Reasons

17. Mr Finlayson addressed the two amendment requests separately, but there was inevitable overlap regarding the crucial issues. Both declarations consist of requests to change the name of the opponent on the notice of opposition from A. Cornwell to Mad Keen Pty Ltd. While the first request does not mention a change to the Australian Company Number (ACN), the second request does. I find this difference to be insignificant. If the opponent’s name was changed as a result of either request, the previous ACN would be deleted or amended to reflect the new company. I find that these are essentially the same amendment requests from two different parties and I will therefore address them concurrently.

18. Mr Finlayson’s submission is that as Mr Rich is director of Mad Keen Pty Ltd he does not have standing to request the amendment to the notice of opposition. His company did not appear to file the notice. Section 66 states that an amendment to a notice under that section can only occur:

    [A]t the request of the person who has filed… a notice or other document for the purposes of this Act or at the request of the person’s agent.

19. I am inclined to agree that Mr Rich does not have standing to make the request. Mr Rich’s declaration does provide an explanation of the events leading to the error, but I find that the notice of opposition cannot be amended on the strength of that declaration alone.

20. In most circumstances, a simple change of opponent in opposition proceedings would have been addressed under section 53 of the Act. Mr Finlayson pointed out that no evidence has been provided to show the right or interest in the opposition had transferred from Ms Cornwell to Mad Keen Pty Ltd. However, section 53 does not require (as Mr Finlayson suggests) evidence of an assignment or transfer to be effected. All that section requires is the other person to notify the Registrar that the right or interest vests in him or her. Mad Keen Pty Ltd has, in effect, done this.

21. The change was requested under section 66 because the position of both Ms Cornwell and Mad Keen Pty Ltd is that the Opponent ought to have always been Mad Keen Pty Ltd. Dr Pullen pursued section 62(b) of the Act on behalf of his client Ms. Cornwell.

22. Mr Finlayson made the submission that Ms Cornwell’s error could not be described as a misnomer or misapplied name. I agree, but I think that submission misses the point. If there was any mistake under section 66(a), it was not in Ms Cornwell believing that the name of the company was A Cornwell, but in mistakenly putting her name and the incorrect ACN as the opponent on the notice of opposition. Even if it is not an obvious mistake, section 66(b) provides the Registrar with the discretion to make an amendment to an application, notice or document provided it is reasonable to do so.

23. As to the unreasonableness of the amendment, Mr Finlayson’s arguments may have had more weight if the effects of changing the opponent’s name (as at the date of the notice of opposition) were greater. The subsequent actions of all parties and the fact that some time had elapsed prior to the error being identified lends credence to the argument that it was generally understood who the opponent was intended to be.

24. The argument that the amendments would retrospectively permit Mad Keen Pty Ltd to oppose Jenkar’s trade marks ignores the reality of the situation. The only official document filed by any party referring to the opponent as Ms Cornwell was the notice of opposition. Mad Keen Pty Ltd has in all respects (expect in the notice of opposition) been the opponent since that time. 

25. It was argued that this matter is analogous to the decision of the Full Federal Court in Crazy Ron’s Communications Pty Ltd v Mobile World Communications Pty Ltd[1]. I am not convinced by Mr Finlayson’s submissions in this regard. One of the issues in that decision was whether subsection 65(5) authorised an amendment of an application for registration which had designated the wrong person as the owner. Unlike subsection 65(5) (at that time), section 66 clearly contemplates amendments to documents because of ‘an obvious mistake’. Apart from the fact that the sections of the Act clearly have different functions and intentions, an assignment of a trade mark is not the same thing as a change of opponent in opposition proceedings. The new opponent would not acquire any benefit from the change (as an assignee for a trade mark would) but rather assumes the onus of establishing an opposition. The concerns expressed by Moore, Sackville and Emmett JJ in Crazy Ron’s are therefore not applicable to the current facts.  

    [1] Crazy Ron’s Communications Pty Ltd v Mobile World Communications Pty Ltd (2004) 209 ALR 1 at 117-127.

26. Dr Pullen referred to the Oddbins[2] decision in which Hearing Officer Thompson outlined the considerations for a ‘fair and reasonable’ amendment under section 66[3]:

    ·    The relative inconvenience to the parties concerned (…)

    ·    The public interest, and

    ·    The desirability of operating the (trade mark) system efficiently and without unreasonable delays.[4]

    In addition, it is preferable to have opposition matters under section 52 of the Act initially heard before the Registrar rather than before the Federal Court. To decide otherwise under these circumstances would unduly inconvenience the parties and adversely affect the public interest and efficient operation of the trade marks system.

    [2] Re Application by Oddbins Corporate Beverage Suppliers (2001) 52 IPR 435.

    [3] With reference to Goldmine Software Corporation v South & Walker Pty Limited [2000] ATMO 52.

    [4] Vangedal-Nielsen v Commissioner of Patents, (1980) 33 ALR 144 at 150.

27. Mr Finlayson further argued that as Mad Keen filed the extension of time to file the notice of opposition, if the opponent remains as Ms Cornwell then the notice of opposition was filed out of time. Putting Ms Cornwell or Mad Keen Pty Ltd to further expense by requiring late extensions of time to file and serve a new notice of opposition and identical evidence to that already served would be detrimental to all parties and unnecessarily delay the hearing of the substantive opposition. This is especially so in an instance where IP Australia did not identify the discrepancy between the extension of time and the notice of opposition. As any “person”[5] may oppose the registration of a trade mark. I find that this opposition to Jenkar’s trade marks would not be nullified regardless of the outcome of the amendment request.  I find there is no real inconvenience to Jenkar in allowing the amendment.

    [5] See section 6 and subsection 52(1) of the Act.

28. The reality of the current matter is that the public will be largely unaware (apart from these reasons) that any amendment has occurred, as the Opponent is currently recorded (albeit incorrectly) on the Trade Marks Register as Mad Keen Pty Ltd.

29. Mr Finlayson argued that if the amendment were allowed, it would defeat an existing application for costs he has made against Ms Cornwell. While an application for costs can be made “during the proceedings”[6] the amounts can only be claimed for expenses actually incurred under Schedule 8 of the Trade Marks Regulations 1995. An application for costs ordinarily follows an order made by the Registrar under section 221 of the Act. In this case, no such order has yet been made. If Ms Cornwell is not the opponent as at the date of filing the notice of opposition, then Mad Keen Pty Ltd is the opponent from whom an award of costs may be sought in relation to the substantive matter.

    [6] Reg. 21.12(2)(a)) of the Trade Marks Regulations 1995.

30. As mentioned earlier, the evidence stages have proceeded (and concluded) with the opponent’s name as Mad Keen Pty Ltd. Both parties are well aware of this fact. As a result, my decision will have minimal effect on the procedure for the substantive opposition and I make no further directions in that regard.  The evidence stages are complete and I do not anticipate applications for further evidence on the basis of my decision.      

31. Considering the above facts and circumstances, I find it fair and reasonable in all the circumstances for this requested amendment to occur.  I also find it surprising that a matter of a simple change of name for an opponent has proceeded to a formal hearing. It is Jenkar that has exercised its right to contest this issue and has therefore adopted the inherent risks that follow.

    Decision

32. If there is no appeal from this decision, I direct that the name of the opponent on the notice of opposition filed 29 March 2010 to trade marks 1298177 and 1298700 be amended from A. Cornwell to Mad Keen Pty Ltd one month from the date of this decision. It follows that the relevant ACN should be altered to reflect this amendment. If this decision is appealed, I direct that the amendment shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the applications be subject to that order.

    Costs

33. Both Jenkar and Ms Cornwell have requested an award of costs in the event of success in relation to the amendment request. An effect of my decision is that Ms Cornwell would no longer be a party to proceedings and would not be entitled to costs if Mad Keen Pty Ltd is successful in the substantive opposition matter.

34. Ms Cornwell has been successful in the current matter and I award costs against Jenkar under Schedule 8 of the Trade Marks Regulations 1995. I find that the only allowable costs for Ms Cornwell are the Hearing Fee, attendance costs at scale for Dr Pullen’s appearance and the preparation of the case for the hearing.   

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    14 September 2011