Mattben Pty Ltd and Jencolden Pty Ltd v Gilchrist Nominees Pty Ltd

[2009] ATMO 43

TRADE MARKS ACT 1995

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

Re:Opposition by MATTBEN PTY LTD AND JENCOLDEN PTY LTD to registration of trade mark application 1238525 (39) - GFL - filed in the name of GILCHRIST NOMINEES PTY LTD.

Delegate:	Bianca Irgang
Representation:	Applicant for extension: Submissions by Peter Caporn of Wrays and Associates.
Decision:	2009 ATMO 43 Regulation 5.15: Application for extension of time in which to serve evidence in support granted, time for service allowed to 2 July 2009.

Background

1. On 2 January 2009, Mattben Pty Ltd and Jencolden Pty Ltd (‘the extension applicant’) filed a Notice of Opposition to the registration of the trade mark current details of which are set out below:

   Trade mark:  GFL

   Application Number:                1238525

   Owner:  Gilchrist Nominees Pty Ltd

   Priority Date:               22 May 2008

   Class 39:Advisory services relating to road transportation; advisory services relating to the transport industry; advisory services relating to transport; advisory services relating to transportation; agency services for arranging the transportation of goods; car transport; cargo transportation; transport by land; transport by road; transport of freight; transport of furniture; transport of goods; transport of motor vehicles; transport services; transportation by land; transportation of parcels; transportation of vehicles; transportation of waste; boat transport

2. The Notice of Opposition embraces grounds under sections 41, 59, 62 and 62A of the Trade Marks Act 1995 (‘the Act’).

3. On 31 March 2009, the extension applicant sought an extension of time of three months to serve evidence in support under the provision of regulation 5.15 of the Trade Mark Regulations 1995 because genuine negotiations were on-going between the parties. Specifically, the extension applicant declared that in response to their settlement proposal of the 4 March 2009, the trade mark applicant’s correspondence dated 20 March 2009 invited further discussion with a view to settlement.

4. On 21 April 2009 the extension applicant served a copy of their request on the trade mark applicant. On that same day the trade mark applicant objected to the requested extension of time on the basis that no negotiations were taking place between the parties.

5. On 4 May 2009 a Delegate of the Registrar of Trade Marks (‘the Delegate’) wrote to the extension applicant advising that she considered the trade mark applicant’s objection had merit. She allowed the extension applicant 14 days to respond to the objection and advised it that it had the right to be heard.

6. On 7 May 2009, the extension applicant requested to be heard. A hearing date of 16 June 2009 was appointed and the trade mark applicant requested that they have a representative attend the hearing as an observer.  

7. On 15 June 2009 the extension applicant provided a copy of its submissions for my consideration. Included in those submissions were copies of the correspondence between the parties dated 4 March 2009 and 20 March 2009 respectively. As a Delegate of the Registrar I heard the extension applicant’s arguments and I must now decide whether to grant the present extension until the 2 July 2009.

   Reasons

8. Regulation 5.15 of the Trade Mark Regulations 1995 provides:

   5.15Extension of period to serve evidence and service of further evidence

   (1)A party to the opposition proceedings may apply to the Registrar:

   (a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

   (b)for permission to serve a copy of further evidence on the other party.

   (2)The Registrar may grant an application on reasonable terms specified by the Registrar.

   (3)The Registrar must not grant an application unless the Registrar:

   (a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

   (b)has given the parties a reasonable opportunity to make representations concerning the application; and

   (c)is reasonably satisfied that:

   (i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and

   (ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;

   is appropriate.

   (4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

   (5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

   (6)Subregulations (2), (3) and (4) apply to an application under subregulation (5).

9. Thus, I must not grant the extension unless:

   ·    I am reasonably satisfied that the applicant has served a copy of the application, and any documents accompanying the application, on the other party; and

   ·    the parties have been given a reasonable opportunity to make representations; and

   ·    I am reasonably satisfied that the extension of time is appropriate.

10. I am satisfied that the first two matters above have been complied with. 

11. As noted by the extension applicant’s representative, Mr Peter Caporn, the Hearing Officer in ABW Australia Pty Ltd v Sears, Roebuck and Co (1998) 42 IPR 468, stated that there are five matters to be considered when considering the whether the grant of the application for extension of time is appropriate:

    ·    the length of time already allowed;

    ·    the reasons put forward to justify the granting or rejection of the extension application;

    ·    whether the opponent has established that its opposition is serious;

    ·    the inconvenience likely to be suffered by the parties;

    ·    the public interest.

12. In Exxonmobil Oil Corporation v Shahin Enterprises (2002) 55 IPR 630, Hearing Officer Thompson summarised the position as being governed by cases such as Vangedal-Nielsen v Smith (Cmr of Patents) (1980) 3 ALN N21; 33 ALR 144; 1A IPR 731; and Lyons v Registrar of Trade Marks (1983) 50 ALR 496; 1 IPR 416. The guidelines developed from these decisions can be summarised as follows:

    ·    the extension applicant has to make out a proper case;

    ·    there must have been no undue delay on the part of the opponent;

    ·    the private interests of the applicant and the opponent as well as the public interest are considered by ensuring that invalid rights are not granted and that proceedings are not protracted;

    ·    there is a serious opposition in train.

13. The relevant date in the present situation is the date of the application for extension which is 31 March 2009. The onus is on the extension applicant to satisfy me, at least on the balance of probabilities, that the extension of time was appropriate at that date.

14. In his submissions, Mr Caporn outlines the chronology of the opposition to registration of trade mark application 1238525 and places emphasis on the fact that this was the extension applicant’s first request for an extension of time. He drew my attention to the decision of the Delegate in Nolmont Pty Ltd v Jesse James [2006] ATMO 58 (12 July 2006), where the Delegate observed:

    “It is well accepted that the statutory three month period allowed for serving evidence is rarely sufficient.  Clear comments on the subject of extensions of time are given in the Trade Marks Office Manual of Practice and Procedure, Part 51 at paragraph 3.2:

    The extent of the information needed in support of an application for an extension of time will rise with the passage of time.  While all applicants are required to give a full explanation of why additional time is required, a simple letter with a recitation of basic facts will prima-facie be acceptable for a first extension.  If subsequent extensions are sought, more detailed explanations are required and these may be required in declaratory form. If the application is made late, ie after the end of the time as so far allowed, a supporting declaration is required in all cases.”

15. At the hearing, Mr Caporn expressed surprise that the Delegate had not been satisfied it was reasonable to grant the first request for an extension of time given the above precedent. I believe this view requires some comment.

16. As discussed earlier, a Delegate must be reasonably satisfied the extension of time is appropriate giving regard to the issues outlined in paragraph 11 of this decision. The extension applicant based their three month extension of time request solely on genuine negotiations taking place between the parties that were expected to lead to the resolution of the opposition. The extension applicant made no mention in its request that any evidence was being collected for the opposition.

17. The objection made by the trade mark applicant on the 21 April 2009 asserted that no negotiations were taking place between the parties and that a letter had been sent to the extension applicant on the 20 March 2009 which declined any negotiations. This same letter appeared to have been received by the extension applicant as it was referred to in their extension of time request. With these contradictory assertions before her, I believe the Delegate’s decision to question the appropriateness of granting the extension applicant’s request for additional time solely on the basis of negotiations was well founded.

18. However, the extension applicant has now provided copies of the correspondence between the parties, namely, the extension applicant’s letter dated 4 March 2009 and the trade mark applicant’s letter dated 20 March 2009. These letters provide the clarity that has been previously lacking in this scenario.

19. The extension applicant’s letter to the trade mark applicant dated 4 March 2009 clearly states “…we advise that we are instructed to propose a resolution of … your application to register a trademark with IP Australia”.  Further reading indicates the trade mark in dispute was “GFL”.

20. On 20 March 2009 the agent for trade mark applicant responded to the extension applicant saying “…I advise that my client would be willing to allow your clients the use of the “GFL” logo…I invite you to respond to this correspondence…”. The substance of the correspondence between the parties indicates that negotiations were taking place between the parties and that the trade mark applicant invited the extension applicant to continue settlement discussions, as at 20 March 2009.

21. While it does appear that negotiations are not currently taking place between the parties, there is no additional information before me which contradicts the extension applicant’s assertion that negotiations were still active between the parties on the relevant date being 31 March 2009.

22. Having regard to all of the above factors, I am satisfied that the extension applicant has made out a proper case in its application for extension of time in which to serve a copy of the evidence in support and that the grant of the extension of time is “appropriate”. Therefore, I am allowing the extension applicant’s request for an extension of time to serve a copy of its evidence in support made on 31 March 2009. This will take the date for service of that material to 2 July 2009.

    Costs

23. The extension applicant has asked for costs. However, I do not believe it would be appropriate to award costs in this case. When the Delegate wrote to the extension applicant on the 4 May 2009, a decision to either refuse or grant the extension of time on the basis of the trade mark applicant’s objection had not yet been made. The letter was advising of the objection and inviting the extension applicant to provide additional information before a decision was made. At this stage the extension applicant made the decision to request to be heard rather than simply providing written submissions. Therefore, I will not award costs against the trade mark applicant in these circumstances. 

    Bianca Irgang
    Trade Marks Hearings
    29 June 2009