Munchtime Products (Aust) Pty Ltd v Bocastle Pastries & Foods Ltd

[2005] ATMO 27

TRADE MARKS ACT 1995

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

Re:A late application for an extension of time to file a notice of opposition filed by Munchtime Products (Aust) Pty Ltd to registration of trade mark application 898866, 898867, 898868(35) - DOT/STRIPE/CROSS PIECRUST DEVICE - filed in the name of Bocastle Pastries & Foods Ltd.

Delegate:	Jock McDonagh
Representation:	Prospective Opponent: Mr Ben Fitzpatrick, instructed by Macpherson + Kelley Lawyers Applicant: Dr Sam Ricketson, instructed by Middletons Lawyers
Decision:	Late application for extension of time to file notice of opposition made under subreg 5.2(2)(b).  Grounds relied upon not established, application for extension refused.  Costs awarded against prospective opponent.

Background

1. The applications by Bocastle Pastries & Foods Ltd were filed on 24 December 2001 and were formally accepted and advertised in the Australian Official Journal of Trade Marks on 24 June 2004 in class 35 in respect of "wholesale and retail of pies".

2. The period for filing a notice of opposition in relation to these applications therefore finished on 24 September 2004.

3. On 21 September 2004, the applicant had paid the registration fees due with respect to these registrations.

4. On 1 October 2004, Munchtime (trading as Ivan's Pies) filed an application with the Trade Marks Office for an extension of time to file a notice of opposition, and on 5 October 2004 a further application for an extension of time to file a notice of opposition was filed by Chilton's Foods.

5. On 7 October 2004 the Trade Marks Office erroneously issued registration certificates for trade marks 898866 and 898867.  The following day, the Trade Marks Office requested the return of the certificates.  The applicant's solicitors complied with this request.

6. A delegate of the Registrar of Trade Marks initially refused both extension applications on 25 October 2004, providing Munchtime with the prescribed 14 days in which to seek a hearing in relation to this provisional refusal.  However, after receiving written submissions by Munchtime on 1 November 2004, another delegate of the Registrar overturned this provisional rejection and granted the extension of time sought.

7. A hearing was requested by the applicant, and as a delegate of the Registrar of Trade Marks, I heard the matter in Melbourne on 17 February 2005.  Mr Ben Fitzpatrick of counsel, instructed by Macpherson + Kelley, Lawyers, represented the proposed opponent.  Dr Sam Ricketson of counsel, instructed by Middletons Lawyers, represented the applicant.

8. On the day of the hearing, the proposed opponent tendered a statutory declaration by Nicholas John Collins executed on 16 February 2005. It referred to the declaration made on 1 October 2004 in support of the notices of opposition and stated that on “24 September 2004 [he] received correspondence from [his] general legal advisers advising of the acceptance of Trade mark Application Nos. 898866; 898867 and 898868” and exhibited a copy of that correspondence, which was also dated 24 September 2004.

   Preliminary issue raised at the hearing

9. At the hearing, counsel for the applicant made oral submissions that as certificates of registration had issued prior to the application for extension of time, irrespective of the merits of its case, the prospective opponent was unable to rely on provisions of Regulation 5.2(2)(b) because sub-regulation 5.2(3) provides that an application for an extension of time may only be made “at any time before the trade mark is registered”.

10. Counsel for the applicant was under the impression that certificates had issued on 27 September 2004.  Therefore, notwithstanding the recall of the certificates, registration had occurred before the filing of the notices of opposition.

11. I directed that the parties provide me and each other with supplementary submissions relating to this issue.  Such submissions were to reach me by 4 March 2005.

12. The applicant's supplementary submissions conceded that the certificates of registration were issued on a date after the applications for extension of time were filed.  The applicant therefore did not maintain its submission that the registrar had no power to grant extension of time under sub-regulation 5.2(3).

    Statutory framework

13. Part 4 of the Trade Marks Act 1995 (the Act) is concerned with applications for registration of trade mark in respect of goods and/or services.

14. Part 5 of the Act is concerned with opposition to registration trade mark.  So far as is here relevant, section 52 provides as follows:

    52.(1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

    (2) The notice of opposition must be in an approved form and must be filed within the prescribed period or within that period as extended in accordance with the regulations.

15. Regulation 5.1 of the regulations fixes the prescribed period for the purposes of section 52 of the Act.  It is in the following terms:

    5.1 For the purposes of subsection 52 (2) of the Act (which deals with notice of opposition), the period for filing a notice of opposition is 3 months from the day on which the acceptance of the application is advertised in the Official Journal.

16. It is necessary also to note  the terms of regulations 5.2, 5.3 and 5.4:

    5.2 (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.

    5.3 An application for an extension of time in which to file a notice of opposition must:

    (a) be in an approved form; and

    (b) be accompanied by a declaration stating:

    (i) the facts on which the grounds specified in the application are based; and

    (ii) if the period for filing a notice of opposition has ended—the reason why the application was not made before the end of that period.

    5.4 (1) 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 a notice of opposition, the Registrar must grant the extension of time.

    (2) The Registrar must not grant the extension of time, unless the Registrar:

    (a) is reasonably satisfied that the person applying for the extension of time has served a copy of the application, and the accompanying declaration, on the applicant for registration of the trade mark; and
    (b) has given to both the person applying for the extension of time and the applicant for registration of the trade mark a reasonable opportunity to make representations concerning the application for extension of time.

    (3) For the purposes of paragraph (2) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
    (4) 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 that period.
    (5) An extension of time must be for such period:

    (a) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (a), (b) and (c)—as the Registrar believes is reasonable; or
    (b) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (d) and (e)—not exceeding 3 months as the Registrar believes is reasonable.

17. The primary ground relied upon by Munchtime is sub-regulation 5.2(2)(b).

    The factual circumstances

18. The only evidence regarding the circumstances said to justify this ground is contained in the declarations of Nicholas John Collins.

19. Mr Collins states that he is a director of Munchtime and is responsible for marketing efforts of the company.  He goes on to state he became aware of the applicant's application on 24 September 2004 when his general legal advisers provided him with a copy that they had become aware of “by chance”.  Mr Collins exhibited a copy of the letter in his second declaration.  The relevant text of the letter is as follows:

    Please find enclosed copies of trade marks that have been accepted and published in recent trade mark journals.

    Should you have any queries please contact Paul Kirton.

20. Mr Collins states that on quickly reviewing the applications he wondered “why anyone would wish to register such strange logos for pies”.  He then put the correspondence aside, and asserts that his error lay in his failure to recognise that a trade mark could be used on top of a pie and could “in fact protect the appearance of a pie”.

21. Mr Collins goes on to state that Munchtime has a small management team and was in the midst of moving premises, and that he was distracted and did not attend to the matter of trade mark applications right away and make further inquiries.

22. Mr Collins states that he subsequently returned to and reviewed the correspondence, whereupon he realised the trade marks depicted the top of a pie.  He then sought advice from his legal advisers, realising the significance of the trade mark applications for pie manufacturers, including his own company, which use similar kinds of markings to those covered by the trade mark applications.

23. There is no evidence relating to any instructions regarding trade mark matters that Munchtime might have given to its legal advisers.  For example, the legal advisers appear to have found the advertisement of the trade mark applications by chance rather than as part of a watching plan or service.

    Error or omission

24. In Kimberley Clark Ltd v Commissioner of Patents (1988) 13 IPR 569, Jenkinson J. noted that the words ‘error or omission’ must bear their ordinary meaning and should not be given a restricted interpretation, for example to limited lapses of memory or accidental slips. His Honour referred more generally to “errors in judgment”, although he noted that “not every such judgment that can be shown to be mistaken will answer the description of ‘error or omission’ in the ordinary meaning of these words, which in their context carry … a connotation of obviousness in error”.

25. His Honour continued to say, “all that is required is once an error or omission has been established that there be some link between that error or omission and the failure to lodge a notice of opposition within three months”.

26. It is well-established that the failure to file a notice of opposition in time cannot itself be the ‘error or omission’: Kimberley Clark, supra, GS Technology Pty Ltdv Commissioner of Patents [2004] FCA 1017.

27. It is also clear that where the proposed opponent became aware of an application it wished to oppose only after expiry of the opposition period it is not an error or omission: Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595.

28. That decision (Crown & Andrews) by a delegate of the Registrar of Trade Marks found that the causal relationship between the failure to file the notice of opposition in time and the error or omission required that the person applying for extension of time must have formed the intention to oppose the application on or before expiry of the prescribed period.  However, in British Sky Broadcasting Ltd v SkyNetGlobal Ltd (2003) 57 IPR 93, the delegate considered that it would be sufficient for potential opponent to intend “to get to an informed position, for which may decide either to oppose or not to oppose, and aware that intention is itself subverted”.

29. Counsel for Munchtime submitted that there was no such requirement for a potential opponent and that all is required is that an error or omission be established and that there be some link between that error or omission and the failure to do the relevant act.  Further the delegate must consider the consequences of refusing the applications for extension of time.

30. Counsel for the applicant submitted that in order for the error or omission to be relevant, there must be something on which it can operate, that is it must have deflected the would-be opponent from doing what he would otherwise have intended to do, namely to file a notice of opposition.

31. Counsel for the applicant also submitted that there is no evidence of any obvious error or omission on the part of either of the potential opponent or its solicitors before the end of the opposition period.  While it appeared that they had knowledge of the advertisement of the acceptance of the applications by 24 September 2004, there was no evidence that they had directed their minds to the legal consequences of the advertised acceptance until after the date.  He therefore submitted that it was logically impossible to say they had formed any erroneous view about the application or that they had failed or omitted to do anything about it, and that it was this error or omission that led to the failure to file a notice of opposition in time.  Mere failure cannot in itself be described as an ‘error or omission’.

32. Having considered the evidence and the submissions of the parties, I have concluded that it has not been demonstrated that there was any error or omission on the part of Munchtime or its agent.

33. While it is, perhaps, a cruel coincidence that Munchtime’s general legal advisors forwarded the advertised acceptances of the applicant’s trade marks on the very last day of the statutory opposition period, there is no evidence that this amounts to error or omission on the part of the legal advisers.  There is no evidence, or even suggestion, that the solicitors had been instructed to maintain a trade mark watching service on behalf of Munchtime.  The copy of the advertised applications was said to have been obtained by chance.  That the solicitors' covering letter contains no advice, nor conveys any sense of urgency, is therefore not surprising.

34. Despite the remarkable speed at which the solicitors' correspondence appears to have travelled to Munchtime, given the lack of advice or urgency communicated in the letter it is unsurprising that Mr Collins gave it little thought.  In the absence of any reason for Munchtime to think that this particular letter contained any information of consequence, it cannot be said that any obvious error or omission can be ascribed to Mr Collins's reaction to the letter.

35. I am not satisfied that there is any relevant error or omission for the purposes of sub- regulation 5.2(2)(b) that provides the necessary causal link leading to Munchtime's failure to file its notice of opposition within the relevant time.  Consequently I refuse the application for an extension of time to file notices of opposition.

36. The trade mark applications may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

37. Dr Ricketson sought costs on behalf of the trademark applicant. I see no reason why costs should not follow the event. I award costs against Munchtime and direct that Munchtime pays the costs of the applicant insofar as authorised in the Official Scale detailed in Schedule 8 of Trade Mark Regulations.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    31 May 2005