Matthew John Meath and John Norman Meath v Anestis Kyprianou

[1997] ATMO 45

Trade marks act 1995

decision of a delegate of the registrar of trade marks with reasons

Objection to application for extension of time to file notice of opposition to trade mark application no. 681723 in the name of MATTHEW JOHN MEATH and JOHN NORMAN MEATH

Background

Trade mark application no 681723 was filed on 28 December 1995 by Matthew John Meath and John Norman Meath (the Meaths) for the trade mark:

The trade mark was advertised accepted on 5 December 1996, in respect of “Hairdressing and beauty care services” in class 42. The three months within which a person may file a notice of opposition to the registration of the trade mark under the provisions of subsection 52(2) of the Trade Marks Act 1995 and regulation 5.1 of the 1995 Trade Marks Regulations therefore expired on 5 March 1997. On 13 March 1997 an application for extension of time of three months for filing a notice of opposition was made by Anestis Kyprianou. The application was made under the provisions of regulation 5.2 and nominated the following grounds:

1.    An error or omission by the person applying for the extension of time, or by that person’s agent

2.    Circumstances beyond the control of the person applying for the extension of time

3.    The conduct of genuine negotiations between that person and the applicant for registration

Concurrently, an application by Mr Kyprianou was also made under the provisions of section 224 for a one month extension of time “within which to file an application for an extension of time to lodge Notice of Opposition”. The grounds in this application were given as:

1.    Error or omission by the person concerned or by his or her agent

2.    Circumstances beyond the control of the person concerned

3.    Special circumstances

Both applications were accompanied by a Statutory Declaration by Mr Ian Taylor of Davies Ryan De Boos, Solicitors. The declaration explained that Mr Kyprianou provides hairdressing and beauty services under the COBELLA trade mark in the United Kingdom. He has also engaged in certain activities in Australia in relation to the provision of hairdressing services and beauty services. Mr Kyprianou is of the opinion that he has a substantial reputation in Australia in the COBELLA trade mark in relation to hairdressing and beauty services.

In early 1996, Mr Kyprianou became aware that one of his former employees, Matthew John Meath, had returned to Australia, and in conjunction with his father, Mr John Norman Meath, had established in Melbourne a number of hairdressing salons under the name COBELLA.

Since that time, Mr Kyprianou has been involved in a dispute with the Meaths in relation to the use of the COBELLA trade mark. Initially, Mr Kyprianou was represented in that dispute by Mr Mark Hickey of Castle International, Mr Kyprianou's attorney in the United Kingdom. Subsequently, Mr Raymond Hind of Davies Collison Cave, Patent Attorneys, became involved in relation to the dispute on the instructions of Mr Hickey. Mr Taylor, of the related firm, Davies Ryan DeBoos, Solicitors and Intellectual Property Lawyers, has also acted for Mr Kyprianou in relation to his dispute since October 1996. Since that time, he has engaged in considerable correspondence with the various solicitors who have acted for the Meaths from time to time with a view to reaching a negotiated settlement. At the time the declaration was made, no resolution had yet been reached. Mr Kyprianou has for a number of weeks been endeavouring to discuss the matter directly with Matthew John Meath.

The declaration also gave a chronology of events leading up to the filing of the late application for extension of time. As a knowledge of this chronology is important to an understanding of the Registrar’s initial position in relation to the extension application, I will reproduce it in some detail:

·Mr Hind had advised Mr Hickey of the existence of Trade Mark Application No. 681723 filed by the Meaths for registration of COBELLA AUSTRALIA in respect of hairdressing and beauty care services, and had arranged for a watch to be placed on that application.

·On 26 November 1996, Mr Hind wrote to Mr Hickey informing him that the Meaths’ Trade Mark Application No. 681723 had been accepted for registration by the Trade Marks Office and that the period for lodging opposition to registration of that application would expire on 5 March 1997. Mr Hind advised Mr Hickey that unless the dispute between Mr Kyprianou and the Meaths could be successfully concluded before that date then opposition should be lodged in order to preserve Mr Kyprianou’s position. Mr Hind sought Mr Hickey’s instructions in the matter.

·On 15 January 1997, Mr Hind forwarded a letter by facsimile transmission to Mr Hickey advising Mr Hickey that, as a tactical move in relation to the dispute, Mr Hind considered it vital that opposition proceedings be lodged and reminded Mr Hickey of the deadline of 5 March 1997.

·On 20 February 1997, Mr Hind forwarded a letter by facsimile transmission to Mr Hickey seeking further instructions concerning the potential opposition to the Meaths’ trade mark application and reminding Mr Hickey of the due date.

·On 27 February 1997, Mr Taylor forwarded a letter by facsimile transmission to Mr Kyprianou informing Mr Kyprianou that the period within which opposition could be lodged to registration of the Meaths’ trade mark would expire on 5 March 1997. He further advised Mr Kyprianou that if his intention was to pursue the Meaths further in relation to their use of the COBELLA name then opposition proceedings should be lodged.

·On 4 March 1997, Mr Hind forwarded a letter by facsimile transmission to Mr Hickey by way of a final reminder informing him that the opposition deadline would expire on 5 March 1997 and that, in the absence of receipt of any instructions, Mr Hind would take no action concerning lodgement of opposition proceedings.

·No instructions were received by Mr Hind or Mr Taylor from either Mr Hickey or Mr Kyprianou in relation to the opposition proceedings prior to 5 March 1997.

·On 12 March 1997, Mr Taylor received a telephone call from Mr Kyprianou. He informed Mr Kyprianou that the period within which opposition proceedings could be lodged to registration of the Meaths’ trade mark application had now expired. Mr Kyprianou expressed some surprise. Mr Kyprianou informed Mr Taylor of the following matters which Mr Taylor believed to be true:

- Mr Kyprianou’s intention had at all stages been to oppose registration of the Meaths’ trade mark application if his dispute with the Meaths could not be settled.

- Mr Kyprianou had been hopeful that the dispute could be settled without the lodgement of opposition proceedings. In the weeks leading up to the due date, Mr Kyprianou had made several attempts to contact Matthew Meath directly to discuss the matter. Mr Kyprianou spoke with Matthew Meath on 12 March 1997 but Mr Meath was not able to discuss the matter in detail at that time.

- Mr Kyprianou was not concerned that the due date had passed because he was under the impression that there would be no difficulty in obtaining an extension of the period within which opposition proceedings could be lodged, particularly given that bona fide negotiations were taking place between himself and the Meaths in relation to the use of the COBELLA name.

- As a consequence of these matters, Mr Kyprianou had not given instructions to Mr Taylor or to Mr Hickey to oppose the registration of the Meaths’ trade mark prior to the due date.

·On 12 March 1997, Mr Kyprianou wrote to Mr Taylor, instructing him to make all efforts to rectify the position in relation to the opposition.

Grounds for filing an application for extension of time
By letter dated 21 March 1997, a senior examiner advised the agents for Mr Kyprianou that there was no provision in the Act for making an application for extension of time within which to file an application for extension of time to file notice of opposition. Extension of time applications were either in time or out of time, and in either case were dealt with under the provisions of regulation 5.2. The senior examiner went on to list the provisions of regulation 5.2, which read:

(1)  A person may apply to the Registrar for an extension of time in which to file a notice of opposition.

(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 the 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 on no other ground.

The senior examiner advised that Mr Kyprianou’s extension of time application should therefore have been made under the provisions of subregulation 5.2(3). She went on to say that she had carefully considered Mr Taylor’s declaration. From this it was apparent to her that “at all times the appropriate people were informed and reminded that the opposition period expired on 5 March 1997. Mr Kyprianou’s ignorance of the requirements of the Act and Regulations does not constitute an error or omission or a circumstance beyond the control of the person concerned.” The senior examiner then advised that the Registrar proposed to refuse the application unless the prospective opponent applied to be heard within fourteen days of the date of her letter.

By letter of 4 April 1997, Mr Kyprianou’s agents requested to be heard. The matter was set down for a hearing before me, as a delegate of the Registrar, in Melbourne on 3 June 1997. Mr Brett Lewis from Davies Collison Cave and Mr Ian Taylor, of Davies Ryan DeBoos, Melbourne, represented Mr Kyprianou at the hearing. The trade mark applicants, although entitled to make representations on the extension application, were not otherwise a party to the dispute, which was between the Registrar and the applicant for the extension at that stage. However, at short notice, the Meaths did elect to be represented at the hearing. They were represented by Mr Goldblatt, of Counsel. Mr Matthew John Meath was also present.

The evidence
As I have already indicated, Mr Kyprianou’s application for extension of time was initially supported by a Statutory Declaration by Ian Taylor, dated 13 March 1997. However, at the hearing, a further four Statutory Declarations were filed. These were:

·   A supplementary Statutory Declaration of Ian Rolyat Taylor, made 19 May 1997

·   Statutory Declaration of Anestis Kyprianou, made 28 May 1997

·   Statutory Declaration of Bojana Rodic, Mr Kyprianou’s secretary, made 28 May 1997

·   Statutory Declaration of Mark Hickey, Mr Kyprianou’s UK attorney, made 29 May 1997

Submissions for the prospective opponent
Mr Lewis began his submissions by referring me to the new declarations I have described above. He said that the declarations clearly demonstrated that Mr Kyprianou’s application for extension of time satisfied the provisions of paragraph 5.2(2)(c), that is, “circumstances beyond the control of the person applying for the extension of time”.

Mr Lewis drew my attention to explanations given in Mr Kyprianou’s declaration, and in the declaration of his secretary, Ms Bojana Rodic, that a letter was dictated by Mr Kyprianou on Thursday 27 February 1997, instructing his English attorney, Mr Mark Hickey, of Castle International, to oppose registration of the Meaths’ trade mark application. A copy of the letter forms an exhibit to both the Kyprianou and the Rodic declarations. The copy is dated 27 February 1997, and says:

Further to our telephone conversation today, as requested I am writing to confirm to instruct your Australian Associates to oppose Meaths’ Applicaction (sic) and to proceed with our application.

According to Mr Kyprianou, this letter is consistent with his intention, which “was always to oppose the Meaths’ Application in the event that (his) dispute with them could not be resolved before the 5 March 1997 opposition deadline.” Mr Kyprianou confirmed the understanding related in Mr Taylor’s original declaration, that he (Mr Kyprianou) had “formed the impression” from Mr Hickey that it would probably be possible to obtain an extension of time to file opposition proceedings if the parties were negotiating. He also explained that Mr Hickey had previously told him that if he (Mr Kyprianou) wanted Mr Hickey to take any action in relation to his files, then he should put his instructions to Mr Hickey in writing. The words “as requested I am writing to confirm” in his letter relate, according to Mr Kyprianou, to this requirement of Mr Hickey’s.

Despite the imminent deadline, the letter dictated by Mr Kyprianou was prepared and signed on his behalf by Ms Rodic, as attested in her declaration, and despatched by regular post on 27 February 1997. Although Mr Hickey’s fax number is shown at the top of the letter, Ms Rodic states that she did not fax the letter, but posted it, as was her usual practice, at the local post box, located outside the office.

According to Mr Kyprianou, “in the ordinary course of events” the letter should have reached Mr Hickey’s office the next day, or by Monday 3 March 1997 at the latest. Mr Hickey’s office has no record of having received the letter at all. Mr Kyprianou therefore submits that his failure to file notice of opposition to the Meaths’ application has resulted from circumstances beyond his control.

Mr Lewis then turned my attention to the statutory declaration by Mr Mark Hickey, which attests to the fact that Mr Kyprianou did not instruct him by telephone to proceed with an opposition, during a conversation they had on 27 February 1997. He had the impression that “Mr Kyprianou’s mind was concentrated on other matters”. Mr Hickey received no instructions, either verbal or written, from Mr Kyprianou prior to the 5 March deadline. He said:

Although it would have been more prudent for Mr Kyprianou to confirm that I had received his letter of 27 February 1997 before the 5 March 1997 deadline I am aware that letters mailed to my firm from London normally arrive within one or two days of the mailing date.

Mr Lewis made reference to Mr Taylor’s second declaration, of 19 May 1997, in which he explains how it came about that his first declaration, of 13 March 1997, did not refer to Mr Kyprianou’s lost letter of instruction. Mr Taylor had made his earlier declaration after a telephone conversation with Mr Kyprianou, during which Mr Kyprianou, who was “clearly upset” that opposition proceedings had not been filed, did not provide Mr Taylor with a full and coherent explanation of the situation. As a result of this, although Mr Kyprianou mentioned in the course of the conversation that he had written to Mr Hickey instructing him to oppose the Meaths’ application, Mr Taylor did not mention this in his declaration because he “found it difficult to believe that Mr Hickey would not have acted on such instructions.” Mr Taylor was not aware, at that stage, that the letter referred to by Mr Kyprianou had not been received by Mr Hickey.

Having taken me through the contents of the new declarations, Mr Lewis then went on to refer to relevant case law dealing with the concepts of circumstances beyond control and error or omission. He referred, inter alia, to the words of Justice Jenkinson in Atomic Skifabrik Alois Rohrmoser v The Registrar of Trade Marks, 7 IPR 551 at 558:

In the context in which it is found, the expression “circumstances beyond the control of the person concerned” does in my opinion designate - and designate only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed...The section is, I think, correctly described as a force majeure provision.

His Honour was actually discussing section 131, an extension of time provision under the Trade Marks Act 1955, but I agree with Mr Lewis that the question being addressed is directly applicable to the new provisions of paragraph 5.2(2)(c) of the regulations of the Trade Marks Act 1995.

Mr Lewis then went on to consider the applicability of the second ground specified in Mr Kyprianou’s application for extension of time, that of error or omission. He cited the Patents case, Ethyl Petroleum Additives Ltd. v Exxon Chemical Company [1995] 26 AIPO (27 April 1995). This case dealt with equivalent provisions of section 223(2) of the Patents Act 1990, which read:

Where, because of:

(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;

a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

In this case a delegate of the Commissioner of Patents decided that a relevant document being delayed in the post until after its due date for service had passed did not constitute circumstances beyond the control of the agent responsible for that service, as there were several more reliable alternatives available which nothing had prevented him from using. However, in line with Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Ltd 13 IPR 569, where Justice Jenkinson said that the term “error” should not be limited to accidents or inadvertences, but include errors of judgement, the delegate found that it was just such an error of judgement that led the agent to choose an inappropriate mode of delivery.

Mr Lewis submitted that Mr Kyprianou had made an equivalent error of judgement when he allowed his letter of instruction to Mr Hickey to be sent through the ordinary mail system, rather than specifying that it be sent via a special delivery service, or simply by fax, in view of the imminent deadline for filing notice of opposition. This was notwithstanding the fact that, as Mr Hickey mentioned in his declaration, letters mailed to his firm from London normally arrive within one or two days.

Mr Lewis then completed his submissions by listing the reasons why Mr Kyprianou’s application for extension of time should be allowed. These were:

·   that a serious, rather than frivolous, opposition was foreshadowed

·   that, once the situation was realised, the application was filed as soon as possible thereafter

·   that an issue of proprietorship existed, as Mr Kyprianou’s ex employee had filed an application for his trade mark in Australia for identical goods and services

·   substantial information existed which demonstrated that Mr Kyprianou had a high profile in his trade mark in Australia

·   there was therefore a public interest in maintaining the purity of the Register

·   there would be no inconvenience to the trade mark applicants in granting the extension, as they were already using the trade mark in Australia.

Submissions for the trade mark applicants
Mr Goldblatt began his submissions for the trade mark applicants by harking back to the original declaration by Mr Taylor, dated 13 March 1997. He traced the steps taken by Mr Kyprianou’s Australian agents, who communicated with their client or his British representative on five separate occasions between 26 November 1996 and 4 March 1997, in relation to the filing of a notice of opposition. Concerning Mr Kyprianou’s reference to continuing negotiations, Mr Goldblatt pointed out that these stopped in December 1996, and that their resumption after 12 March 1997 was really “too little, too late”.

Mr Goldblatt then drew my attention to what he described as “inconsistencies in the evidence in relation to a totally crucial matter” He questioned how it came about that Mr Kyprianou, knowing that the deadline for filing notice of opposition was 5 March 1997 in Australia, could have elected to send a letter by ordinary post to his attorney in England, which by his own declaration, he would have expected to arrive by 3 March 1997, a mere two days before the deadline. This despite the fact that Ms Rodic, his secretary, had Mr Hickey’s fax number, and indeed, had typed it at the top of the letter.

Mr Goldblatt then went on to point out that the contents of Mr Kyprianou’s letter of instruction appeared to be in direct conflict with Mr Hickey’s declaration. Mr Hickey stated that, when he spoke to Mr Kyprianou on 27 February 1997, reminding him of the 5 March deadline, “Mr Kyprianou did not instruct (him) to proceed with an opposition during that conversation.” Yet, the wording of Mr Kyprianou’s letter clearly says: “Further to our telephone conversation today, as requested I am writing to confirm...”

Mr Goldblatt then dealt with the question of whether, in these circumstances, the provisions of paragraph 5.2(c) had been satisfied. He said that, in line with the findings of Justice Jenkinson, in Atomic Skifabrik (supra) it did not appear that there was sufficient information to satisfy the force majeure nature of the provision. He said that there should be some evidence, given the nature of the postal system in London, that Mr Kyprianou’s letter was never delivered. It could have been expected to have returned to the sender, at least.

In contrast, Mr Hickey’s declaration made no mention whatsoever of the letter, and asserts that no verbal instructions were provided to him, despite his having reminded Mr Kyprianou of the impending deadline.

In summary, the facts that Mr Kyprianou had not given his UK agent verbal instructions in the first instance, had not elected to send his written instructions by fax, and had not followed up those instructions to see whether they had been duly received before the deadline, all militated against a finding that the loss of his letter, and therefore his instructions, represented circumstances over which he had no control, and could not have changed.

Mr Goldblatt concluded his submissions by referring to the guidelines set out in Lyons (trading as Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416. He said that, according to these guidelines, it would have been “usual and prudent” for the prospective opponent to provide more information on the “meat” of the opposition foreshadowed. As it stands, he said, there has been no evidence provided of the seriousness of the matters contemplated, or the merits of the opposition as a whole. Merely “bold assertions” have been made.

Against this background, Mr Goldblatt submitted, this is not a case where force majeure or other special circumstances have been established. The evidence is sparse, “illuminating in what it doesn’t say”, and “damning in its inconsistencies”. According to Mr Goldblatt, to stretch paragraph 5.2(2)(c) to say that this case falls within that force majeure provision is to move beyond the ambit contemplated by the legislation.

Discussion
Differences between the old and new legislation
This application for extension of time to serve notice of opposition is to be decided under the provisions of regulation 5.2 of the 1995 Trade Marks Regulations. There are some similarities between the wording of this regulation and the wording of sections 130 and 131 of the Trade Marks Act 1955, and regulation 69 of the 1955 Trade Marks Regulations. However, there are two significant differences.

In the first instance, under regulations 5.2 and 5.4, neither an application made in time, nor a late application for extension of time to file notice of opposition may be granted by the Registrar on the basis of “special circumstances”, such as those which the Registrar may take into account under regulation 69 of the 1955 Trade Marks Regulations. The only grounds available to an applicant for a late extension under regulation 5.2 are:

·   an error or omission by a trade marks officer

·   an error or omission by the person applying for the extension of time, or by the person’s agent

·   circumstances beyond the control of the person applying for the extension of time.

In the second instance, under the Trade Marks Act 1955, the Registrar was afforded a discretion to grant, or not to grant, the extension. This discretion has been traditionally exercised by the delegate of the Registrar, having due regard to the factors to be determined, as outlined in the case of Lyons (trading as Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416. The factors were:

·   whether sufficient reasons had been provided in support of the extension

·   whether a proper case had been made out justifying the extension

·   the relative inconvenience to the parties concerned

·   the public interest

Both Mr Taylor and Mr Goldblatt have alluded to the interplay of these factors during the course of their submissions.

By contrast, under the new Act, the Registrar appears limited, when granting extensions of time to file notice of opposition, to the first two criteria only. Subregulation 5.4(1) says:

Subject to subregulations (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file notice of opposition, the Registrar must grant the extension of time.

Subregulation 5.4(2) relates to the service of the application, and the opportunity to make representations concerning the application, and need not be considered further here. Subregulation 5.4(4), on the other hand, has a notable effect on the operation of subregulation 5.4(1). It reads:

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

Therefore, before granting a late application for extension of time, the Registrar must be reasonably satisfied, both as to the validity of the ground(s) set out in the extension application, and also that there is sufficient reason for the application not having been made in time. These conditions parallel the first two factors for consideration from the Lyons case (supra), that is, whether sufficient reasons had been provided in support of the extension, and whether a proper case had been made out justifying the extension.

However, once these conditions are satisfied, the Registrar must grant the extension. The regulations do not allow the Registrar any discretion to enquire further into broader issues of the prospective opposition. Because of this difference in the new legislation, the last two tests set down in Lyons, being consideration of the relative inconvenience to the parties, and the public interest, no longer apply to applications to file notice of opposition.

Whether the application for extension satisfies regulations 5.2 and 5.4
The question of whether the present extension of time should be granted on the basis of an error or omission by a trade marks officer was never an issue here. It follows, therefore, that in order to grant Mr Kyprianou’s application for extension of time, I must be satisfied that either or both of the two other grounds of subregulation 5.2(2), specified in subregulation 5.2(3), apply. That is, the grounds of an error or omission by the person applying for the extension of time, or by the person’s agent, or circumstances beyond the control of the person applying for the extension of time.

Following on from the manner in which Mr Lewis presented his arguments, I will examine firstly the question of whether reasons for the application for extension fall into the category of circumstances beyond the control of the person applying for the extension. Mr Lewis has quoted Justice Jenkinson who, in Atomic Skifabrik (supra), describes the equivalent provision under the Trade Marks Act 1955 as a force majeure provision. Mr Goldblatt has elaborated on this concept. The Oxford English Dictionary defines force majeure as “irresistible force or overwhelming power” deriving from “a French commercial term for unavoidable accidents in the transport of goods, from superior force, the act of God, and etc.”

Taking this definition into account, I do not think that the loss of Mr Kyprianou’s letter does represent an unavoidable accident, or circumstances beyond his control. Justice Jenkinson (supra) described “the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed” as conforming with the description “circumstances beyond a person’s control”. However, he was talking about the loss or destruction of a document to be filed. An example of such an occurrence would be, if Mr Kyprianou had posted his notice of opposition to this Office in good time, and that notice had been inexplicably lost in the Post. This is not the situation here. The document at issue was simply a written instruction, the proper delivery of which could have been, and should have been, ascertained by its writer before the due date for filing the notice to which it related. No “superior force” intervened to prevent Mr Kyprianou from checking on its progress, by way either of fax, or telephone. He simply neglected to do this, to the apparent considerable surprise of both his UK and Australian agents.

This brings me to the second criterion, error or omission. The initial declaration, made by Mr Taylor, supporting Mr Kyprianou’s late application, seemed to rely only on “genuine negotiations between the parties”. This ground, by virtue of the provisions of subregulation 5.2(3), is not available to a party making a late application for extension of time to file notice of opposition. The only “error or omission” apparent at this time was merely that Mr Kyprianou had neglected to give instructions to his agents, either in the UK, or Australia, to oppose the Meaths’ application. Justice Jenkinson in the Kimberly-Clark case (supra) considers an application grounded on error or omission, where the error or omission claimed was the failure to do the act which brought on the need for the extension. He clearly directs that the failure to do the act itself is not an error or omission which constitutes a ground for an application to extend the time for doing that act. At page 580 he says,

...the failure to do the act or to take the step postulated in respect of an application for exercise of the power conferred by s160(2)(a) [of the Patents Act 1952] cannot itself be the “error or omission” by reason whereof the failure occurred. I accept that.

This was the situation, as far as the Office and the trade mark applicants were aware, until the matter came to a hearing. At that time, the existence - and disappearance - of Mr Kyprianou’s instructing letter was revealed. I must admit that I share some of Mr Goldblatt’s uneasiness as to certain inconsistencies apparent between the evidence given by Mr Kyprianou and his secretary, and his representatives in the UK and Australia. However, prima facie, I accept the declaratory evidence of Mr Kyprianou and Ms Rodic, that Mr Kyprianou did indeed dictate a letter of instruction to Mr Hickey on 27 February 1997, and that the letter was posted by ordinary mail on that day.

Having accepted the existence of the letter, the wording of which places Mr Kyprianou’s intention to oppose the Meaths’ application beyond question, I return to the words of Justice Jenkinson in Kimberly-Clark (supra), at pages 579-80:

...the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips...

...By no means every judgment by “the person concerned” or by “his agent or attorney” which can be shown to have been mistaken will answer the description “error or omission” in the ordinary meaning of those words, which in their context carry, in my opinion a connotation of obviousness in error.

By these words, Judge Jenkinson indicated a belief that the words “error or omission” should be given their plain, ordinary meaning. They should not be restricted by construction to certain categories of aberration of thought or behaviour such as misunderstanding, ignorance of the law, confusion or deception etc, or to mere inadvertences or accidental slips. Furthermore, the error or omission should be obvious.

I believe that the extension application in question satisfies the broad test described by Justice Jenkinson. The evidence before me has demonstrated that, at the least, Mr Kyprianou believes that he has a case for opposition to the Meaths’ application in Australia for the trade mark he claims as his own. By his declaration, and that of Mr Hickey, the letter confirming his intention to oppose could conceivably have been delivered (just) in time for his agents in the UK and Australia to carry out his instructions. However, as we know, the letter never reached its intended destination.

Possibly, Mr Kyprianou’s original delay in issuing his instructions was related to his misunderstanding that he would be able to obtain an extension of time to file his opposition because the parties were negotiating. Under paragraph (d) of subregulation 5.2(2), this would indeed have been possible if he had made application before, rather than after the time for filing notice of opposition had ended.

However, once Mr Kyprianou had made the decision to instruct his attorneys to oppose, to rely so heavily on the successful postal delivery of his instructions at that late stage in proceedings was certainly an obvious and potentially costly error of judgement. I am satisfied that Mr Kyprianou made an error or omission, of the kind envisaged by Justice Jenkinson, which led him to assume that the letter would be expeditiously delivered in good time, and that his opposition would be duly filed before the deadline without further enquiry from him.

Decision
Taking into account all that I have discussed above, I have decided that Mr Kyprianou’s late application for extension of time satisfies the requirements of paragraph (c) of subregulation 5.2(2), that is “an error or omission by the person applying for the extension of time, or by the person’s agent”. Accordingly, as a delegate of the Registrar, I hereby grant the extension, to 5 June 1997. Mr Kyprianou’s notice of opposition was filed, subject to the outcome of the proceedings, at the time of the hearing on 3 June 1997.
I have given some thought to how I should award costs in this matter. It is usual for costs to follow the result, which would mean that they would be awarded in this case to Mr Kyprianou, and against the Meaths. However, other factors for consideration are that this hearing was in the first instance to decide a dispute between the Registrar and the applicant for extension of time. Further, the Registrar was not prepared to grant the extension on the basis of the evidence initially filed. It is only as a result of evidence tendered at the hearing that the extension has been granted. In the case referred to by Mr Lewis, Ethyl Petroleum (supra) the delegate allowed the extension, but awarded costs to the objecting party. He said, at page 6:

Although I have found the present request for an extension of time justified, I believe that that would not have been the case in the absence of the information provided by Ms Stafford at the hearing. Because that information was not provided earlier in declaratory form, the patent applicant was not afforded an appropriate opportunity to reconsider whether or not it should maintain its position in objecting to the extension of time. In these circumstances, I award costs against Exxon.

The situation here is similar. It is true that it was the Registrar who had initially objected to Mr Kyprianou’s extension application. However, it was, at the present early stage in the implementation (and interpretation) of the new Act and Regulations, entirely reasonable for the Meaths to wish to make representations about the grant of the late extension. This was particularly understandable given the inadequacies of the case first presented in support of the grounds given in the application, and the additionally confusing aspect of a concurrent application being made under section 224.

Regulation 5.2(2) entitled the Meaths to make representations in relation to the extension application. Yet, because of the way Mr Kyprianou had dealt with the extension matter, it eventuated that the best way to make those representations was at the hearing which had been set down. This situation resulted in additional costs to the Meaths, for which Mr Kyprianou is to blame.

The grounds and the supporting case which I have accepted in granting Mr Kyprianou’s extension of time are very different from those upon which the application was originally based. These new circumstances depend upon Mr Kyprianou’s lost letter of instruction, the existence of which was disclosed at the hearing, very much like a white rabbit being pulled out of a hat.

In view of all the somewhat unusual circumstances I have described above, I have decided that, although Mr Kyprianou has ultimately been successful, the Meaths should not suffer because of the unsatisfactory prosecution of this application by Mr Kyprianou. Accordingly, I award costs in this matter to the Meaths.

Claudia Murray
Senior Examiner

26 August 1997