Next Retail Limited v Cubic Transportation Systems, Inc
[2013] ATMO 4
•22 January 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia 1075723 – Australian trade mark application number 1426878(9) – NEXTACCOUNT - in the name of Cubic Transportation Systems, Inc. and objection by Cubic Transportation Systems, Inc to application by Next Retail Limited for extension of time in which to serve evidence in support
.
Delegate: Iain Thompson Representation: Applicant: Siobhán Ryan of Counsel instructed by Griffith Hack
Other: Written submissions by MaddernsDecision: 2013 ATMO 04
Extension of time: reasons given by Retail reasonable under the circumstances, extension allowed.Background
This is a proceeding under regulation 5.15(3)(b) of the Trade Mark Regulations 1995 concerning an opposed application (‘the Application’) by Next Retail Limited (‘Retail’) for an extension of time in which to serve and file evidence in support of its opposition to the protection of International Registration Designating Australia (‘IRDA’) which appears hereunder:
Application No: 1426878
IRDA: 1075723
Owner: Cubic Transportation Systems, Inc. (‘the Holder’)
Filing Date: 8 April 2013Goods:Class 9: Computer hardware, computer software, operating systems and peripherals therefor for integrating fare collection and payment system transactions; computer hardware, computer software, operating systems and peripherals therefor for fare collection and payment; computer hardware, computer software, operating systems and peripherals therefor for data and transaction management and analyses; computer hardware, computer software, operating systems and peripherals therefor for financial settlement and clearing; computer hardware, computer software, operating systems and peripherals therefor for consumer behavior tracking; computer hardware, computer software, operating systems and peripherals therefor for tracking people's use of transportation and mass transit; computer hardware, computer software, operating systems and peripherals therefor for customer relationship management; serialized media for fare collection and payment systems; smart cards; smart card readers; magnetic encoded cards; magnetic encoded card readers; near field communication (NFC) technology-enabled readers
Trade Mark: NEXTACCOUNT
The Application is objected to by the Holder and by the Trade Marks Office with the issue of an official letter notifying Retail of an intention to refuse the Application.
The issue came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 11 December 2012. Siobhán Ryan of Counsel instructed by Griffith Hack represented Retail. The Holder did not appear but filed written submissions by its Attorneys, Madderns.
History of the Application
The statutory declaration in support of the Application is by Sally Anne Shrimpton of Griffith Hack, trade mark attorneys for the Retail. In the declaration Ms Shrimpton states:
The statutory declaration constituting the Evidence-in-Support is largely completed. However, the Opponent is seeking additional materials including relevant local sales figures. Further time is required to complete these processes and to finalise the declaration constituting the evidence.
On 13 November 2012, Retail’s attorneys were notified of the Registrar’s intention to refuse the extension of time. On 15 November 2012, the Holder’s attorneys objected to the extension application. Retail’s trade mark attorneys have stated that they filed and served the Evidence-in-Support, pending approval of the extension of time. This evidence comprises:
· the statutory declaration of Sarah Louise Waterland together with exhibits SLW-1 to SLW-9; and
· the statutory declaration of Sally Anne Shrimpton together with exhibit SAS-1.
However, the statutory declaration of Ms Shrimpton was filed by email on 10 December 2012 and the covering letter which accompanied it termed complete evidence in support. The statutory declaration of Ms Waterland was served and filed under a covering letter dated 10 December 2012 and termed as being part evidence is support and was apparently sent by ordinary mail and not received until early in the New Year.
It is not clear to me to what extent these apparent discrepancies are appreciated by either party to these proceedings and neither party has commented on them. I do not know what to make of them apart from the fact that there seemingly exists at least one error but whether this is due to mail handling at some stage before it was received by the Trade Marks Hearings Section is not at all clear. The discrepancies are not inconsistent with Ms Ryan’s submissions and I will leave the discussion of them at that.
Legislative background
In adapting the regulations to IRDAs, regulation 17A.33 provides:
17A.33Opposition proceedings
(1)The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.
(2)Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.
(3)Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply until the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.
And regulation 5.15 provides:
5.15Extension of period to serve evidence and service of further evidence
(1)A party to the opposition proceedings may apply to the Registrar:
(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or
(b)for permission to serve a copy of further evidence on the other party.
(2)The Registrar may grant an application on reasonable terms specified by the Registrar.
(3)The Registrar must not grant an application unless the Registrar:
(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b)has given the parties a reasonable opportunity to make representations concerning the application; and
(c)is reasonably satisfied that:
(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and
(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;
is appropriate.
(4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.
(6)Subregulations (2), (3) and (4) apply to an application under subregulation (5).
I am satisfied that the terms of subregulations 5.15(3) and (4) have been met.
Submissions
The Holder’s written submissions, after detailing the history of the opposition process thus far state:
We note that, according to the Trade Marks Office Manual of Practice & Procedure (Part 51 at 3.2.1), the Registrar's benchmark for the maximum time that is tikely to be allowed for one party to prepare and serve evidence in support is 9 months from the date on which the notice of opposition was filed ie in this case 6 November 2012. The Manual states that "as a general principle an extension which will take the time allowed beyond the Registrar's benchmark for the relevant evidence stage is unlikely to be granted unless the extension application is able to demonstrate there are compelling reasons to do so". We submit that the Opponent has not demonstrated that there are compelling reasons for granting a further extension of time beyond the 9 month benchmark period.
Ms Ryan’s written summary of her submissions is a concise précis of the foregoing statutory law and its interpretation by the Courts. Concerning the latter Ms Ryan states:
The guidelines developed from the leading cases on extensions of time applications in patent and trade mark proceedings, Vangedal-Nielsen v Smith (Cmr of Patents) [1980] FCA 163; (1980) 1A IPR 731 and Lyons v Registrar of Trade Marks[1983] FCA 236; (1983) 1 IPR 416 (‘Mitty’s Case’) (and which are still adhered to[1]), can be summarised as follows:
· the applicant seeking the extension of time has to make out a proper case;
· the private interests of the applicant and the opponent as well as the public interest are considered by ensuring that invalid rights are not granted and that proceedings are not protracted;
· there is a serious opposition in train.
[1] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) ATMO 87.
Ms Ryan continued by applying the above to the matter at hand; she submitted:
The Shrimpton declaration posited the following reasons for the extension application:
· the statutory declaration constituting the Evidence-in-Support is largely compiled;
· opponent is seeking additional materials, including recent locals sales; and
· further time is needed to complete these processes and to finalise the declaration.
The Shrimpton declaration may be sparse, but it passes muster as a “proper reason” on the basis of the standard of explanation accepted in Mitty’s Case. In Mitty’s Case the grounds for the extension request were:
Evidence in support of the opposition is in course of preparation but it is desired to have additional time to prepare that evidence and to serve a copy thereof on the applicant.[2]
Under judicial review, Beaumont J agreed with the Registrar that this was an acceptable explanation for the purpose of s 130 o the Trade Marks Act 1955 Cth:
“Although a more detailed explanation of the position may have been desirable, I think that it is possible to construe the rather bald statement of the ground for the request (supra) as indicating that, although efforts had been made in that behalf, it was not possible to finalize the form of the evidence sought to be adduced in the time allowed by the regulation. I accept that, on one view, it is possible to read the stated ground as being little more than an assertion that more time is required. However, the statement of the ground does at least attempt some explication of the position. Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time. Given that background, and given the construction of the statement of the ground which was open, I am of the opinion that the delegate did not exercise his discretion in any improper way. In particular, in my view, there was evidence before the delegate upon which he could rely in order to justify the grant of an extension. It follows that no case for review under the Administrative Decisions (Judicial Review) Act 1977 has been made out on this branch of the case [emphasis added].
In short, Beaumont J thought that the reason given was a “proper reason”.
In this case, the Registrar has requested “further reasons”[3] . However, it is respectfully submitted that the Shrimpton declaration adequately explicates the position. As in Mitty’s case, although sparse it provides sufficient detail on which the Registrar can exercise her discretion. It makes a “proper case”.
The Registrar has set benchmarks and given guidance for extension applications in the Examiners Manual at chapter 51(3.2). However, it is respectfully submitted that the Registrar must also be guided by the attitude of the judges in the prescribed courts when exercising her discretion.
It has also been noted that while adherence to timeframes is laudable and desirable, so is the proper preparation and service of evidence, and reg. 5.15 exists to ensure that sufficient time is available to a party to do that.[4] In this case, the Evidence in Support has now been filed; well within the extended time sought.
[2] Mitty’s Case at p 418
[3] IP Australia Letter to Griffith Hack dated 13 November 2012.
[4] IMAC Support Services Pty Ltd v Apple Computer Inc (2001) 52 IPR183 at 188.
Decision
I agree with the Ms Ryan’s submissions and add that the submission of the evidence in support by the Retail within the time sought lends verity and immediacy to Ms Shrimpton’s declaration in support of the Application.
I observe that the guidelines applied by this Office are precisely that and as such are to be applied flexibly according to the circumstances of the application for extension of time under consideration. In my observations, there is frequently some delay when a party liaises with its local branch or distributer concerning revenues figures and advertising expenditure through the intermediary of its legal representatives. The realization that such figures were necessary appears to have come somewhat late, but the delay here does not appear to me to be unreasonable.
I therefore allow the extension.
Iain Thompson
Hearing Officer
Trade Marks Hearings
22 January 2013
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