Next Retail Limited v Cubic Transportation Systems, Inc - [2013] ATMO 4

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

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Delegate: Iain Thompson

Representation: Applicant: Siobhán Ryan of Counsel instructed by Griffith Hack
Other: Written submissions by Madderns

Decision: 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 2013
Goods: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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2013] ATMO 4
Decision Date: 22 January 2013

CaseChat Overview and Summary

This matter concerned an application for an extension of time to serve evidence in opposition proceedings before the Registrar of Trade Marks. The applicant sought to serve further evidence, which would extend the time beyond the Registrar's benchmark of nine months from the date of the notice of opposition. The opponent argued that the applicant had not demonstrated compelling reasons to justify such an extension.

The legal issues before the court were whether the Registrar had erred in granting the extension of time, and whether the applicant had met the requirements of the relevant regulations, specifically regulation 5.15 of the Trade Marks Regulations 1995. This regulation outlines the conditions under which the Registrar may grant an extension of time for serving evidence or permission to serve further evidence, including the requirement to be reasonably satisfied that the applicant has served the application on the other party and has given parties a reasonable opportunity to make representations.

The court considered the legislative background, including regulation 17A.33 which governs opposition proceedings for IRDAs, and regulation 5.15. The court was satisfied that the terms of subregulations 5.15(3) and (4) had been met, indicating that the procedural requirements for granting the extension had been followed. The court noted the opponent's submissions regarding the Registrar's benchmark for evidence preparation and the need for compelling reasons to exceed it, but ultimately found that the Registrar had acted appropriately in granting the extension.

Orders

Orders of the court

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Background

Background to the litigation

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.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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Delegate:	Iain Thompson
Representation:	Applicant: Siobhán Ryan of Counsel instructed by Griffith Hack Other: Written submissions by Madderns
Decision:	2013 ATMO 04 Extension of time: reasons given by Retail reasonable under the circumstances, extension allowed.