Montres Rolex S.A. v Celine

[1997] ATMO 29

TRADE MARKS ACT 1955

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

Re: Objection by MONTRES ROLEX S.A. to an application by CELINE for an extension of time to serve evidence in support of an opposition to registration of trade mark application number 564807.

As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995 the provisions of the Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Background

Trade mark application 564807 was lodged on 4 October 1991 by Montres Rolex S. A. (Montres) for the trade mark CELLINI, in respect of a broad specification of goods in class 14, and was advertised in the Official Journal of Trade Marks as accepted on 2 February 1995. The acceptance was for a narrower range of goods than the application and endorsements involving s34(1) and s26(2) were applied.

A request for an extension of time of three months in which to file a notice of opposition was made by Celine, within the statutory three months period, followed by lodgement of the notice on 2 August 1995. Thereafter, followed requests and the granting of extensions of time to serve evidence in support from 2 November 1995 to 2 February 1996, from 2 February 1996 to 2 May 1996, from 2 May 1996 to 2 August 1996, from 2 August 1996 to 2 November 1996, from 2 November 1996 to 2 February 1997, from 2 February 1997 to 2 May 1997 followed by the present request for an extension from 2 May 1997 to 2 August 1997.

Montres has objected to the present extension and the matter was set down to be heard on 16 June 1997. At the hearing, in Canberra, Ms. Anne Makrigiorgos of the Melbourne office of Griffith Hack represented Celine, the applicant for the extension of time. As previously notified to the Registrar, Ms. Annette Freeman of Spruson and Ferguson made written submissions on behalf of Montres.

Submissions

In her written submissions, Ms. Freeman pointed out that the extension, if allowed, would bring the total time for serving of the evidence in support to two years. This amount of time, she submitted, was an inordinate length of time for Montres to wait for Celine to serve the evidence. Ms. Freeman added that, although the early extensions were requested on the basis of negotiations between the parties, as those negotiations had now broken down, Montres was concerned to ensure that the matter did not drag on indefinitely with additional extensions being requested. In a further submission, Ms. Freeman requested that, if her submissions were unsuccessful, Celine be made aware that this present extension would be the final extension that the Registrar would allow.

Costs were sought by Montres.

Ms. Makrigiorgos opened her submissions with a brief chronological history of events leading to the present request for the extension of time. For each of the extensions sought a reason was outlined. Ms. Makrigiorgos further submitted that Celine was fully expecting a worldwide settlement during the first 18 months of the requested extensions and had not actively pursued the expensive course of collection of evidence during this period. Only when negotiations had broken down on 31 January 1997 had Celine begun such collection in earnest. In effect, this meant that the present extension was really only the second three month extension request. During these six months one declaration was filed and served on 25 February 1997. Celine also claimed that two further declarations have been served on Montres on 7 May 1997 and 13 June 1997, both during the present disputed extension period. Comment was also made that these declarations completed Celine’s evidence in support. Ms. Makrigiorgos relied on the cases: (1) Lyons (trading as Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416, (2) Bundy American Corp. v Rent-A-Wreck (Vic.) Pty. Ltd. (1985) 5 IPR 307 to support the view that the three month statutory period was rarely sufficient time to collect and collate the evidence in opposition cases. As previously submitted, the present extension was virtually the second three month extension requested in view of the circumstances of the case and, thus, should be allowed.

Additionally, Ms. Makrigiorgos submitted that in cases where parties are in the process of negotiating and mutually agree to extensions of time, that if the negotiations finally break down, the Registrar favourably views additional extensions of time. She cited Lord Bloody Wog Rolo v United Artists Corporation (1988) 11 IPR 516 to support the argument. Further to this situation, where negotiations were in progress, Ms. Makrigiorgos stated that parties could be expected to exercise some restraint in the collection of evidence for an opposition in order to demonstrate good faith. In a situation where negotiations do break down, in general, extensions of time have been shown to be warranted to make good the time lost: Vangedal - Nielsen v Commissioner of Patents (1980) 33 ALR 144 and Stafford-Miller Ltd. v Cosco Holdings Pty. Ltd. (1989) 15 IPR 199.

Ms. Makrigiorgos cited the public interest as a major factor in allowing an extension of time, because the grounds specified in the notice of opposition were of a serious nature and evidence that deception and confusion had occurred had been submitted: Pioneer Hi-Bred Corn Co. v Hy-Line Chicks Pty. Ltd. (1979) RPC 410 and Bundy v Rent-A-Wreck, supra.

Addressing Ms. Freeman’s written submissions, Ms. Makrigiorgos commented that it should be noted that for 18 months of the extensions Montres had readily consented to the extensions. On the issue of any protracted delay in the serving of further evidence, the fears of Montres could be allayed by the fact that all the evidence in support was now complete.

Costs were requested by Celine.

Decision

In coming to a decision on the objection to an extension of time, I have taken into account the relevant criteria with respect to such matters as outlined in the case Lyons v Registrar of Trade Marks, supra. These are: whether a proper case has been made out; the relative inconvenience to both parties of the allowance, or otherwise, of the extension; and the public interest.

On the first criterion, I consider that, when all of the submissions from both sides are weighed up, Celine has given sufficient information to make out a proper case. Given the fact that neither party shed light on the negotiations going on between the applicant and opponent from 2 August 1995 to 31 January 1997, makes a decision giving weight to the time period rather difficult. On balance, I can only assume that both parties were entirely satisfied with proceedings until 31 January 1997 and thus, as argued by Ms. Makrigiorgos, Celine had no reason to actively pursue collection and collation of the evidence.

With respect to the relative inconvenience to both parties, Montres submitted that it was concerned that two years was an inordinate length of time to serve the evidence and that further extensions could seriously inconvenience it. Celine, on the other hand, claimed that a serious opposition existed and given the circumstances of the first 18 months of agreed extensions, it should not be denied the opportunity to conclude the evidence in support. At first glance, a two year delay in completing the evidence in support would appear to be excessive. However, on closer inspection, with the fact in mind that the first 18 months of extensions were mutually agreed, I do not believe the present extension to be inordinate. Adding weight to this viewpoint is Celine’s claim that all the evidence in support is now finalised, indicating that no further extensions will be required. If a serious opposition exists, it would be advantageous if the Registrar had all of the facts of the matter available when the substantive matter is decided. (Bundy v Rent-A-Wreck, supra)

From the above, I cannot find that the trade mark applicant, Montres would be disadvantaged to any great extent by allowing the extension, whereas it is possible that the opponent, Celine could be seriously disadvantaged by not allowing it.

On the last criterion, that of the public interest, I believe it is of paramount importance that the Registrar be in possession of all the facts of the case to ensure that an informed and balanced decision can be made in the substantive matter of the opposition. In this regard the public may suffer materially if the present extension of time is refused and Celine is denied the opportunity to address a serious opposition, if such exists.

Conclusion

Given the foregoing, I have decided, as the Registrar’s delegate, to allow the extension of time to file evidence in support in this case until 2 August 1997.

In the matter of costs, I can see no reason why the costs should not follow the decision. Thus, I award costs to the applicant for the extension of time, Celine.

Don Nancarrow
Senior Examiner

23 June 1997