Nettelefold Signs Pty Ltd v Nettlefold Advertising Pty Ltd

[1994] ATMO 76

TRADE MARKS ACT 1955.
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,
WITH REASONS.

Re:Opposition by Nettlefold Advertising Pty Ltd to an application by Nettlefold Signs Pty Ltd for an extension of time to serve Evidence in Answer to an opposition to registration of Trade Mark Application 515704.

Background

Trade Mark application 515704 was advertised accepted for registration on 27.2.92. It is proceeding in the name of Nettlefold Signs Pty Ltd ("the applicant") and was accepted in respect of "Illuminated signs including electric and neon signs". A notice of opposition to registration, such as is provided for by section 49 of the Trade Marks Act, was lodged by Nettlefold Advertising Pty Ltd ("Nettlefold") on 14.5.92 and this activated the opposition provisions of Division 1 of Part VII of the Trade Mark Regulations.

Regulation 43 provides for the service on the applicant of a copy of the evidence in support of the opposition within 3 months of the date on which notice of opposition is lodged, ie. 14.8.92, but Nettlefold was granted extensions of time of 13 additional months for that purpose, its evidence being served on 14.9.93. 

The applicant then became due to serve its own evidence, in answer to the opposition, initially in the three months ending on 14.12.93.  Extensions of this time were allowed, bringing the due date to 14.7.94.  At that time Cullen and Co, the patent attorneys for the applicant, lodged a letter which sought a further extension of three months.  The letter advised that there were Federal Court proceedings under way at the instigation of Nettlefold.  It is said in this letter that:

It was the Applicant's view that the dispute before the Federal Court would be resolved expeditiously and in the Applicant's favour, and thereby have the effect of terminating the opposition proceedings.

We have been advised by the Applicant that the instigators of the Federal Court proceedings have made several approaches to the Applicant with the view of settling the dispute.  In the light of these factors, we believe that a request for a further extension of time is justified.

Enclosed with the letter was a document headed "Application for Extension of Time".  This document told a generally consistent story but left out reference to any settlement approaches.  It concluded simply that :

The related Court case impinges on the opposition proceedings.  As the outcome of the Court case has a direct bearing on the opposition proceedings, the Applicant requests further time within which to serve Evidence-In-Answer

Nettlefold was informed of the extension sought, and was forwarded a copy of the "Application for Extension of Time".  Nettlefold objected to the grant of the time sought and, on 10.8.94, the applicant made a public offer to Nettlefold to reduce the time sought to one month.  Nettlefold continued to require to be heard before the Registrar decided the matter, as it is entitled to do as a matter of long-standing practice based on the requirement for natural justice. 

Accordingly, a hearing was set down for 17.8.94.  The hearing was before me and at that hearing the applicant was represented by its patent attorney, Mr Helmut Eichberger of the firm of Cullen and Co.  The applicant paid an appearance fee but Mr Eichberger made his submissions by telephone, as did Nettlefold, on the same terms.  Nettlefold's submissions were made by its solicitor, Mr Peter Hallett of Minter Ellison Morris Fletcher.

I note that by the time of the hearing the applicant's evidence had been served.  The date of service was 12.8.94. 

The law applicable.

The Registrar's powers to grant extensions of time for the service of evidence arise from the provisions of s 130, which states:

Where, by this Act, a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly provided, extend the time either before or after its expiration

In the first instance, the reasoning of Bowen CJ in Vangedal-Nielsen v Smith 33 ALR 144 is applicable to these matters to the extent that an extension of time is not a matter of right, but must be justified by an explanation of why the time allowed in the original period has been insufficient. Here I draw on Lyons v Registrar of Trade Marks 1 IPR 416, decided in relation to an application for additional time for service of evidence in support of a trade mark opposition.

The many decisions of the Trade Marks Office in relation to these provisions have shown that, once a case is made for the grant, the discretion to grant or refuse depends on a balancing of the balance of convenience as between the parties, with weight being given also to the public interest in having the matter decided on fully disclosed facts. 

Issues and decision:
extension
Neither party had any serious dispute with the state of the law as I have formulated it.  Mr Hallett accepted my advice at the hearing that, given the facts of the case, the extensions previously granted to his own client, the brevity of the further extension and the service of the evidence, I would grant the extension.

costs
The bone of contention is the question of costs.  Initially, the applicant sought three months extension; only when faced with an objection did it back down and moderate its claim to one month.  Secondly, Mr Hallett argued that  the grounds on which the Registrar was being requested to grant even the one month were not, in Mr Hallett's view, the truth.  Here he relied on Foodland Associated Ltd v John Weeks Pty Ltd, 9 IPR 289.

In that case, where an extension was sought belatedly, the declaration relied on by the party seeking more time was not disclosed to the objector until the hearing.  The deciding officer, Mrs Farquhar, noted that the grounds recited in the application were not accurate.  The true picture could be got only from the declaration, of which the objector was unaware.  This, said the deciding officer, was not sufficient:  "there should be enough information in the application for extension for both the Registrar and the other party to form an opinion as to whether or not the extension is justified".  Mrs Farquhar noted that the Registrar's practice, not followed in that instance, of copying information to the other party "would not displace the onus on the party seeking an extension to justify its request by stating unambiguously and accurately the grounds for seeking the extension".

It appears to be common ground that there were settlement negotiations between the parties.  Mr Hallett did not dispute this, nor did he dispute that there were mediation meetings set up to avoid court action:  apparently one of these occurred, another did not.  However, Mr Hallett argued that, at least as far as the material that the Trade Marks Office copied to him showed, the Registrar was not privy to any of these dealings. 

Moreover, if the applicant has succeeded then it has been only partially successful.  It has not gained all that it initially sought.  To that extent, in Mr Hallett's view, each party should bear its own costs.

Let me say at the outset that there is some superficial merit in Mr Hallett's view.  The actions of Nettlefold have perhaps sped up the service of the applicant's evidence.  Without the objection from Nettlefold, it is arguable that the material would not have been served until later in the three month period initially sought. 

That is, however, no more than conjecture.  It is also arguable that the material would have been served on the date in question despite the earlier objection of Nettlefold.  Such speculations will in nearly all instances be impossible to test, and for this reason they are not likely to be determinants of costs in hearings on other questions. 

Nettlefold asks too much in now seeking costs.  If the parties to an opposition matter wish to bargain, or simply to make unsolicited concessions, about the terms on which an extension is sought from the Registrar, the Registrar will not stop them.  But if a hearing goes ahead to decide the matter then it does not seem to me to be overly relevant that one or both sides may have previously made concessions with regard to the time sought.  There should be some clear reason if costs in that hearing, on the terms on which it went ahead, are not to follow the cause.

Nettlefold was heard on the question of a grant of an extension of only one month.  It was aware that the evidence had been served within the time as sought to be extended, and it knew all of the details of the settlement negotiations.  It was perhaps taken by surprise by the service of the evidence, but it could reasonably have expected the negotiations to have been relied on and it cannot point to anything in the "Application for Extension of Time" that is actually inconsistent with them.  They were at the heart of the "outcome of the Court case" to which the applicant made reference and the Registrar is entitled to rely on the fact that negotiations are one of the common ways of influencing the outcome in such matters.   

Essentially, Nettlefold has not achieved anything.  If it had not interfered, the one month extension would have been granted on the prima facie case alone; yet it interfered in the full knowledge that the case was in fact stronger than the one put, in brief form, before the Registrar.  It has, through the setting down of a hearing, only contributed to the delay in the matter.  I do not think such steps justify the variation in the normal scheme of things with regard to costs.

Conclusion
I grant an extension of time, of one single month to 14.8.94, to the applicant.  This validates the service of the Evidence in Answer.  Having granted the time, I award costs to the applicant.

T. E. Williams
Hearing Officer.
28 September 1994