Mission Personnel Services Pty Ltd v Mission Australia

[1998] ATMO 30

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. 733794 in the name of MISSION PERSONNEL SERVICES PTY LTD

Background

Trade mark application no 733794 was filed on 5 May 1997 by Mission Personnel Services Pty Ltd (Mission Personnel) for the word trade mark MISSION. The trade mark was advertised accepted on 16 October 1997, in respect of:

Business consultation services in this class including employment agency services, services relating to the placement and provision or temporary and contract staff, promotion of sales by the means of telemarketing, and business consultation customer support services

in class 35, and Career development consulting services in class 42.

The three months within which any 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 (the Act) and regulation 5.1 of the 1995 Trade Marks Regulations (the Regulations) expired on 16 January 1998. However, the final date for payment of the registration fee was not until 16 April 1998. It therefore happened that the trade mark application was still unregistered when, on 6 March 1998 (seven weeks after 16 January), a late application for extension of time of three months for filing a notice of opposition was made by Mission Australia. The application was made under the provisions of paragraph 5.2(2)(b) of the Regulations and nominated the ground of:

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

The application was accompanied by a Statutory Declaration by Ms Elaine Patricia McDonald, company secretary of Mission Australia. She explained in her declaration that:

• On or before 23 December 1997, she had instructed FB Rice & Co, Patent and Trade Mark Attorneys, to file a trade mark application on behalf of Mission Australia. The application was for the trade mark MISSION EMPLOYMENT in class 35 to cover Services in this class assisting persons to find employment; employment agency services.

• Mission Australia has been involved in community service for over one hundred and thirty six years and has a substantial reputation as a provider of charitable services. It is the owner of trade marks including the word MISSION in classes 36 and 42. It has been providing employment agency services including assisting the Commonwealth Government in those services since 1981.

• FB Rice & Co provided Mission Australia with pro bono trade mark registration services. Mr Wayne Willis of FB Rice was responsible for carriage of matters dealt with by his firm on Mission Australia’s behalf.

• When Ms McDonald requested Mr Willis to file the trade mark application on Mission Australia’s behalf, she was aware that she could have filed the application at the Trade Marks Office herself. However, she was also aware that the Register of Trade Marks could be searched for the existence of trade marks potentially conflicting with that which Mission Australia intended to use. Ms McDonald did not know how to do such a search herself. She believed that the significant advantage of engaging a trade mark attorney to file an application was that the attorney would conduct a preliminary search for conflicting trade marks before filing, alert her to any relevant marks, and seek her further instructions at that point. She understood that this was “normal procedure in securing the registration of a trade mark”. However, Ms McDonald has since been informed that trade mark searches are only conducted when specifically requested by the client.

• When Ms McDonald was advised that Mission Australia’s trade mark application had been filed, she took this to mean that the Trade Marks Register did not contain marks which conflicted with that application. Had she been aware of the existence of trade mark application no. 733794, she would immediately have instructed that it be opposed on the basis of Mission Australia’s longstanding use of the word MISSION in relation to employment agency and other services.

• It was due to Ms McDonald’s failure to instruct Mr Willis to conduct a search, and Mr Willis’ error in “failing to advise of the need to conduct a search” that Mission Australia failed to file the notice of opposition by 16 January 1998.

By letter dated 10 March 1998, a senior examiner in the Hearings Section advised the agents for Mission Australia that he intended to refuse the late application for extension of time. His letter stated:

I note that the reason stated for the lateness of the application concerns Regulation 5.2(2)(b), being an error or omission by the person applying for the extension of time or the person’s agent. During the opposition period neither the person making the extension of time application nor the agent was aware of the acceptance. In such situations, earlier decisions from this Office under the 1995 Act, have resulted in the extension of time being disallowed. This has been for the reason that no error or omission can occur where there was no clear intention to oppose the acceptance during the opposition period.

The senior examiner then cited a recent trade marks decision upon a late application for extension to file notice of opposition: Crown & Andrews Pty Ltd v All American Fremantle International Inc, 38 IPR 595.

By letter of 17 March 1998, Mission Australia’s agents requested to be heard on the matter. A hearing was set down before me, as a delegate of the Registrar, in Canberra on 9 April 1998. Mission Australia was represented by telephone by Ms Fleur Hinton, of Freehill Hollingdale & Page, Sydney. Mission Personnel, the trade mark applicant, was also represented by telephone at the hearing, by Mr James Samargis, of counsel.

Submissions for the prospective opponent
Ms Hinton began her submissions by drawing my attention to statements in Ms McDonald’s declaration, attesting that it was always the intention of Mission Australia to take whatever steps were necessary to protect its rights to the exclusive use of the word MISSION in relation to the services offered by it. This was, however, without having any precise idea about how the trade mark system worked.

Ms Hinton said that she was not aware of any trade marks case law relevant to the kind of situation her client found itself in. She said that there was nothing in any of the recent decisions to indicate either that a proposed opponent should have formed an intention to file a particular notice of opposition prior to the deadline for filing that notice, or that its failure to do so must be caused by a kind of mechanical action such as, for example, someone dropping the document on the way to the lodgement office.
Ms Hinton contended that the Crown and Andrews case (supra), which was cited by the senior examiner, dealt with the kind of “mechanical mistake” more likely to occur when there has been an error or omission on the part of an agent. That case, she said, could therefore be distinguished from the present situation, where the proposed opponent could not be said to possess the same degree of knowledge as an attorney. That lack of knowledge should be viewed by the Registrar as a relevant fact, when assessing the grounds for a late application for extension of time to file a notice of opposition.

Ms Hinton emphasised that Ms McDonald did not understand how to search the trade mark Register. On the contrary, she had at some point formed a strong impression that trade marks searching was a complicated and sometimes hazardous process, not to be undertaken by someone who didn’t know what they were doing. She was therefore grateful that Mr Willis would be performing this process for her. The breakdown of communication between Ms McDonald and Mr Willis upon the matter of the search was an “understandable misunderstanding” falling into the category of an error or omission in terms of regulation 5.2. Ms Hinton further submitted that:

Ms McDonald’s actions or her decision to take steps through a patent attorney with the intention of protecting Mission Australia’s very well known trade mark is the essential preliminary step [on which] to base the necessary intention which fails and therefore triggers the ability to satisfy the error or omission section within regulation 5.2.

Ms Hinton touched on several of the cases cited in the Crown and Andrews case. She argued that her case, in relating to an “unsophisticated” prospective opponent, could be distinguished from the patents case Stork Pompen BV v Weir Pumps Ltd (1988) 11 IPR 542. In that case, where the extension of time application was not allowed, the prospective opponent, a company familiar with the patents system, had made a deliberate decision not to maintain a watching service for possible infringing patents. That decision had resulted in the prospective opponent not being aware of the existence of just such a patent application until after the opposition period had expired.

Ms Hinton said her client’s situation was much closer to the circumstances of Danby Pty Ltd v Commissioner of Patents & Anor 12 IPR 151, the findings of which she said demonstrated that there need not be a direct causal link between the actual error or omission and a prospective opponent’s failure to file a notice of opposition within time. Ms Hinton also drew my attention to the parallels between this case and those of Groko Maskin AB v Sebastian Engineering (1981) Pty Ltd (1984) AIPC 93-221, where the Deputy Commissioner of Patents granted, to a similarly unsophisticated prospective opponent, a late application for extension of time to oppose a patent application.
Ms Hinton concluded her submissions by referring me to some of the findings of Jenkinson J in Kimberly-Clark v Commissioner of Patents (No 3) 13 IPR 569, as cited in Crown and Andrews (supra). I will return to these later.

Submissions for the trade mark applicant
Mr Samargis began his submissions by disagreeing with the proposition that Mission Australia was an unsophisticated applicant. He said that it was reasonable to credit the prospective opponent with some degree of sophistication, when its representative had indicated that she was aware that searches of the Trade Marks Register could be carried out. Mr Samargis submitted that this awareness should have prompted Ms McDonald to:

• make necessary enquiries with Mission Australia’s patent attorneys for the results of any searches conducted at the time of filing any trade marks for the prospective opponent, and/or

• expect a search report or an opinion in relation to the registrability of any proposed trade mark

According to Mr Samargis, Ms McDonald’s own awareness of the ability to search should also have put her on notice that Mission Australia could, if it wished to do so, maintain a watching service of the Register for any trade marks of concern. Alternatively, her agent should have provided the necessary information to fill any such gap in her knowledge. Mr Samargis pointed out that there is no evidence of any information or advice from FB Rice & Co to Mission Australia supporting Ms McDonald’s declared belief that a search was always conducted by an agent prior to filing a trade mark. Further, in Mr Samargis’ opinion, the pro bono nature of the arrangement between Mission Australia and its agent would have caused FB Rice & Co to make quite clear to its client that they were providing trade mark registration services only. Additional trade mark searching services, when provided, involve considerably more resources and time to carry out. Notwithstanding this, Mission Australia had only become aware of the acceptance of Mission Personnel’s trade mark application as a result of a letter of demand sent by the latter’s solicitors on 27 February 1998, after the opposition period had expired.

Mr Samargis distinguished Danby v Commissioner (supra), because in that case instructions to oppose were given but, through an error, not carried out. There is, he said, no evidence here of clear instructions to conduct searches being given by Mission Australia to its agent, which instructions were not implemented. He said that the Weir Pumps case (supra), determined that an oversight or failure to instruct that searches be carried out is not a relevant error or omission under regulation 5.2(2)(b), and that the precedent established in the Crown and Andrews case (supra) dictates that Mission Australia’s late application for extension of time should be refused, on the basis of a lack of intention to oppose on the part of the proposed opponent during the opposition period. Mr Samargis concluded that:

If an extension of time were to be granted in the present circumstances it would mean any accepted mark could be opposed at any time up to registration on a vague and general hypothetical intention rather than a real or actual intention to oppose a specific accepted trade mark.

Discussion
Under regulations 5.2 and 5.4, before granting an application for extension of time, the Registrar must be reasonably satisfied as to the validity of the ground(s) set out in the extension application. If the application is late, the Registrar must not grant the extension unless he or she is reasonably satisfied that there is sufficient reason for the application not being made before the end of the opposition period.

As described above, Mission Australia identified its grounds for making application under paragraph 5.2(2)(b), “an error or omission by the person applying for the extension of time, or by the person’s agent”. In the Crown and Andrews case, Hearing Officer Homann drew a parallel between the relatively new and untried concept (in terms of trade marks legislation) which appearing in paragraph 5.2(2)(b), and the similar concept in patents legislation. At pages 599-600, he remarked:

The concept of “error or omission” on the part of an applicant or its agent appears for the first time in Australian trade marks legislation in the 1995 Act. It has a long history, however, in patents legislation and its meaning has been refined by a series of decisions of the courts and the Commissioner. The words “error or omission” in reg 5.2(2)(b) must, I think, be given the same meaning as in s224(2) of the Act which is the equivalent of s223(2) of the Patents Act 1990, the successor to s160(2) of the Patents Act 1952. The decided cases under the latter provisions are therefore directly in point in determining the meaning of the same words in the Act.

Mr Homann went on to examine the significance to his case of several of the patents cases cited by both Ms Hinton and Mr Samargis in relation to the present proceedings. He concluded, at pages 603-604 that:

In the absence of evidence to the contrary I consider that I must adopt the reasoning in the Weir Pumps case and that of the Federal Court in Kimberly-Clark and Danby v Commissioner, all supra. The effect of those decisions is that the person applying for the extension of time must have formed the intention to oppose the application on or before the expiry of the prescribed period and that that intention must have somehow been thwarted or frustrated by an error or omission. That was not the case in the present circumstances in which no person either within AMFI or in the offices of its agents had formed such an intention until after the time for filing notice of opposition had passed. There was therefore no relevant error or omission to file the notice in that time. The mere failure to file the notice on time is not in itself an error or omission and the failure to conduct a search of the relevant records or to keep a watch on the Journal is not in itself to be considered as an error or omission.

Despite Ms Hinton’s submissions to the contrary, I do not consider that there is a significant degree of difference between the circumstances considered by Mr Homann in the Crown and Andrews case, and those of the present prospective opponent. In both cases the prospective opponent was represented by an agent and in both cases, that agent did not conduct a search prior to filing a trade mark application. Also in both cases, little information was provided about the relationship between the actual “error or omission” which prevented a notice of opposition being filed in time, and the decision by the agent not to conduct a search prior to filing a trade mark application.

Ms Hinton has argued that the lack of a causal link should not be fatal to her client’s case, because, she contends, the requirement for that link has not been finally proven in the case law. Besides this, her client’s error or omission falls into a special category, also not addressed by most of the case law, being an error or omission made by an unsophisticated entity, lacking in knowledge of the trade marks system. After due consideration of the circumstances of this case, I find that I cannot agree with Ms Hinton’s reasoning on either score.

I have already quoted Mr Homann’s thoughts on several of the patents cases cited favourably by Ms Hinton. I fully concur with his findings, differing from Ms Hinton, that those cases do establish the need to demonstrate a causal link between an error or omission which somehow thwarts an intention to file a notice of opposition. The only exception in the cases cited by Ms Hinton is the Groko Maskin patents case (supra), which therefore deserves specific attention here. However, as Ms Hinton herself conceded, Groko Maskin was criticised in the later Weir Pumps case (also supra). At page 545 in Weir Pumps, Supervising Examiner Bruhn said:

At the hearing, I was referred to the decision of the Deputy Commissioner in Groko Maskin AB v. Sebastian Engineering (1981) Pty. Ltd. (1984) AIPC 93-221; 3 IPR 614. In that case an extension of time was sought in circumstances very similar to those of the present, the extension subsequently being granted. Consequently, Mr. Terry argued that I should follow that decision and grant the extension sought here. However Mr. Hinde submitted that this decision should be treated with some caution as it did not, in his view, follow the established precedent and principles at the time. In support of his submission, Mr. Hinde referred to earlier decisions of the Commissioner concerning section 160 extensions in relation to lodging notices of opposition namely Liquid Air Australia v. C.I.G. 1 IPR 145, Kabushiki Kaisha Ishida v. Duro-Matic 1 IPR 309 and Dow Chemical v. I.C.I. 1 IPR 542, and the decision of the Commissioner's delegate in the more recent case of Toyo Seikan Kaisha v. Nordson Corp. (1986) AIPC 90-272; 5 IPR 388. He argued that these decisions, and other decisions and Court judgements concerning section 160 extensions, suggest a necessary link between the intention of the person concerned to do the act or take the step and the subsequent failure in that action due to error or omission, unlike the circumstances in the Groko Maskin case (supra).

Mr. Hinde, I believe, makes a pertinent point concerning the intention of the person to do the act or take the step and the existence of an error or omission. A review of recent sub-section 160(2)(a) extension decisions including those mentioned by Mr. Hinde indicates that an error or omission has been considered to have occurred where there has been a breakdown in procedure in effecting a party's intention in respect of an invention or application (e.g. in respect of making an application pursuant to section 141, in prosecuting an application to acceptance, or in lodging a notice of opposition). Such cases indicate that having decided a course of action in respect of an act or step the performance of which is required within a certain time under the Act, that intention has been frustrated by either an error (e.g. the act has been done incorrectly, or mistakenly done outside the time allowed) or due to an omission (e.g. the act has not been done due to neglect or inadvertence). Therefore in my view, it is appropriate to consider in relation to the person seeking the extension, that person's intention with respect to doing the act or taking the step, and to determine whether any error or omission arose to frustrate that intention.

For the purposes of consideration of the case before me, it is important to heed the note of caution sounded in Weir Pumps as to the precedent value of the Groko Maskin findings in relation to causal links and “error or omission”. Further, I believe that it is possible to distinguish Groko Maskin from the present case by virtue of the different situation which applied to the prospective patent opponent, in contrast with the situation of the prospective trade mark opponent, Mission Australia. This harks back to Ms Hinton’s second argument, that her client’s error or omission, being made by an unsophisticated entity, should be viewed as different from errors or omissions by agents, covered in the case law.

In Groko Maskin, Deputy Commissioner Friemann used his discretion to find that the prospective opponent, Sebastian Engineering, had a “good reason” for not filing its opposition to a patent in time. This was because it had had no involvement with the patent, had been “most surprised” that relevant patent rights affecting its business could be claimed under the prevailing circumstances and had, in general, no reason to have been aware of the patent application. Sebastian Engineering, it appears, was not in the business of claiming patent rights in new technology, or using, so far as it was aware, technology subject to the patent claims of others. However, on becoming aware of the existence of the relevant patent application, by way of a threatening letter from the patent applicant, Sebastian Engineering had acted forthwith in instituting opposition proceedings.
As Mr Samargis pointed out in his submissions, Mission Australia also became aware of the existence of Mission Personnel’s trade mark application by way of a threatening letter. However, this is where the similarity between the cases ends. It is not possible to say without question that Mission Australia had no other reason to have been aware of the trade mark application, because:

• by Ms McDonald’s own declaration, Mission Australia is already the owner of trade mark registrations including the word MISSION

• Ms McDonald was sufficiently familiar with the process of registering a trade mark to be aware of the existence of a facility for conducting searches of the trade mark database prior to filing a trade mark application

• thanks to the pro bono services provided by FB Rice & Co in filing Mission Australia’s trade mark application, they were not without legal representation and advice, during the relevant opposition period for Mission Personnel’s trade mark application.

All these factors combine to form a scenario very different from that of Groko Maskin, but very like Crown and Andrews (supra). As in Crown and Andrews, the agents here have been silent upon the question of how or why their practices in relation to the filing of a client’s trade mark application might be seen as comprising an error or omission in relation to the filing of an unrelated notice of opposition. Ms McDonald herself has been less than forthcoming as to how it was that, in spite of possessing some (albeit incomplete) knowledge of trade mark processes, she failed to ask her agent the obvious questions about the results of his trade marks database search which would have alerted her to the fact that no such search had been conducted.

Given all the circumstances, I do not believe that I am entitled to credit the prospective opponent with the lack of sophistication which it claims justifies its argument for a special case of error or omission having prevented it filing a notice of opposition to Mission Personnel’s trade mark application within time. As I mentioned earlier, Ms Hinton concluded her submissions at the hearing by referring me to some of the findings of Jenkinson J in the Kimberly-Clark case (supra), as cited in Crown and Andrews (also supra). These were that:

• the word “error” should be ascribed its plain ordinary meaning

• if an error or omission exists, it should be obvious

• full and frank disclosure of all the facts surrounding an extension application should be provided by the applicant.

Ms Hinton argued that her client’s case for extension of time satisfied these criteria. I do not doubt for a moment the integrity of the proposed opponent and its representative Ms McDonald. Nevertheless, I have not been provided with sufficient information to allow me to conclude that Mission Australia has committed an obvious error or omission relevant to the late filing of an extension of time to file notice of opposition. The explanation for this situation lies, ultimately, in the lack of connection between the two events. The simple purpose behind the actions of Ms McDonald and her agent, as attested to in the evidence, was to file a trade mark application. The “error or omission” described relates to nothing more than a misunderstanding as to whether a search for conflicting trade marks would occur as part of that process. It was equally likely, and equally irrelevant, that if such a search had been conducted, it would have given Mission Australia early notice of the existence of a prior conflicting trade mark that was already registered, instead of discovering an accepted application almost at the end of its opposition period. The search was not something to which either party attached great import at the time, because the critical matter then was the filing of Mission Australia’s application, which was duly completed to the satisfaction of both parties.

Coincidentally, it was the same agent, Mr Willis, whose explanation for not searching prior to filing a trade mark application is given at page 598 in Crown and Andrews (Mr Willis was appearing for the trade mark applicant on that occasion):

...it was not usual to conduct a prior search simply to determine whether or not an unused trade mark was registrable because that was something that could be determined during the course of examination. Generally, it would only be of importance to conduct a search before a trade mark was used and failure by an attorney to recommend a search before an unregistered trade mark was used would be negligent because of the risk of infringement.

I note that, as Mission Australia was already using its trade mark, Mr Willis’ criterion for a prior search did not apply to the filing of its trade mark application. However, the most important point to clarify here is that performance of the (apparently) non-essential trade marks search at issue is directed only to identifying possible citations that may stand in the way of a new trade mark application, about to be filed. The patents watching services discussed in Groko Maskin, Weir Pumps and Danby v Commissioner (all supra) were, in contrast, to be conducted specifically to identify possible infringing patents, for the purpose of opposition.

I have considered elsewhere (Re An Application By Meath, 40 IPR 150) the Registrar’s apparent lack of discretion to take into account factors such as the seriousness of a prospective opposition when assessing an application for extension of time to file notice of opposition. I am aware that, if I do not allow Mission Australia’s late application for extension, I will be shutting out a potentially valid opposition by a party which has apparently been using the disputed trade mark on the relevant services for some considerable time. However, it should not be forgotten that the wider avenue of a passing off action remains open to the aggrieved party. As far as overcoming the citation against its own pending trade mark application is concerned, the options of filing evidence of honest concurrent use or prior use will also be available to Mission Australia.

Decision
Mission Australia may well have had good reason to oppose Mission Personnel’s trade mark application within the time allowed, given its general intention to protect its own trade marks. However, the issue to be decided is whether, during the critical period for filing notice of opposition, Mission Australia’s general intentions, reflected in the filing of its new trade mark application, had escalated into a specific intention to oppose Mission Personnel’s trade mark application. This was impossible, as Mission Australia was unaware of the existence of that application, during the relevant period. Thus, the necessary causal link, established in the case law, is missing from the equation. Ms Hinton has argued that her client’s extenuating circumstances should lead me to interpret the term “error or omission” other than in accordance with the guidelines set down in Crown and Andrews (supra) and others. Although I have declined to accept Ms Hinton’s proposition that her client is a truly unsophisticated party, even had I accepted her proposition, this would not have affected my ultimate finding on the application of precedent here.

An alternative interpretation of the Regulations would, I believe, lead to the unacceptable situation alluded to by Mr Samargis. That is, any accepted trade mark could be opposed at any time up to registration on a mere vague, hypothetical intention. The importance of a party’s right to oppose is enshrined in the legislation. However, that right should not be allowed take precedence, in cases such as this, over the trade mark applicant’s right to registration where there has been no opposition within the prescribed period. The provisions of regulations 5.2 and 5.4 are intended to protect the rights of a party who can demonstrate a concrete intention to oppose that was somehow thwarted. For the protection of the trade mark applicant, interpretation of those provisions should not be extended to encompass insubstantial, “what if..?” scenarios.

It follows that, in regard to Mission Australia’s late application for extension of time to file notice of opposition, I am not reasonably satisfied either:

• that the ground of “error or omission by the person applying for the extension of time, or by the person’s agent” has been established, or

• that there was sufficient reason for the application for extension not being made within the opposition period.

I must therefore refuse the application for extension. Subject to any appeal from this decision, the trade mark application should now proceed to registration.

I award costs to the trade mark applicant, Mission Personnel, being the successful party in this matter.

Claudia Murray
Acting Hearing Officer

23 June 1998