Noelle Jones Paul Boyatzis v THOD Pty Ltd

[2012] ATMO 3

TRADE MARKS ACT 1995

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

Re:Review of taxation of costs in the matter of opposition by Ms Noelle Jones & Mr Paul Boyatzis to registration of trade mark application 1105397(9, 41) - DR. Y.E.S! - filed in the name of THOD Pty Ltd.

Delegate:	Heath Wilson
Representation:	Decision on the Written Record.
Decision:	2012 ATMO 3 Reg 21.13(4) - Review of taxation of costs – whether costs actually incurred - representation 'at arm's length' – decision of the taxing officer affirmed.

Background

1. On 24 March 2006, THOD Pty Ltd (‘the applicant’) applied for the registration of the following trade mark:

   dr. Y.E.S!

   Class: 9

   All forms of audiovisual media, including but not limited to CD's, tapes, vinyl records, DVD's, videos, DV's, VCD's and media files; all forms of downloadable or electronically transmittable or reproducible media or media capable of being downloaded or electronically transmitted or reproduced in any manner, including but not limited to ringtones and all other audio, visual or other images (both animated or still), text, data, media and software files; electronic and recorded publications; computer programs; apparatus for recording, transmission or reproduction of all types of sound, vision or other images; cards or other devices carrying magnetically, optically or electronically recorded or encoded information; recorded discs or other recordable devices; cases and containers for recorded media; software and programs (recorded -) for use with all forms of audiovisual media, including electronic games, of all kinds; all sold or usable separately or together as a unit and in any combination

   
   
   Class: 41

   Provision (including but not limited to production and distribution) of all forms of non-downloadable recordings of audio, visual, other images and all other media, live performances, recording studio services, and all forms of publishing services in this class; provision of entertainment, sporting and cultural activities and other events

1. The trade mark was accepted for possible registration on 28 September 2007, and advertised as accepted in the Australian Official Journal of Trade Marks on 18 October 2007.

2. On 18 January 2008, the applicant’s trade mark was opposed by Ms Noelle Jones & Mr Paul Boyatzis (‘the opponents’) and the evidence stages followed.

3. Both parties requested to be heard in relation to the above opposition and paid the relevant fees. The hearing had been scheduled but was postponed several times due to the unavailability of the parties. Eventually the parties agreed that the opposition be decided on the material comprising the written record. 

4. In her decision of 31 March 2010, the delegate of the Registrar found the opposition was unsuccessful and awarded costs against the opponents in favour of the applicant.

5. Following the issuance of the decision, IP Australia received a bill of costs from the applicant on 30 June 2010. The applicant claimed that it was represented during the opposition by a business known as Consulting Services International (‘CSI’). CSI is a division of Raging Bull Communications Pty Ltd (ACN 116374666). The bill claimed a total of $3940 in costs under Schedule 8 of the Trade Marks Regulations 1995 (‘the Regulations’).

6. GV Lawyers (acting on behalf of the opponents) objected to the bill and stated the most the applicant could claim was $500, being the fee the applicant paid for the hearing. 

7. On 22 July 2010, the taxing officer wrote to the applicant referring to the “amounts that may be allowable” totalling $2,285. However, before deciding what costs may be awarded, the taxing officer specifically requested “information showing that the costs you are claiming were costs incurred and paid by THOD Pty Ltd to CSI, a separate entity who actually performed the work.”

8. After the time allowed by the taxing officer to respond had been extended several times the applicant provided IP Australia with an invoice of costs from CSI on 24 March 2011. The invoice is dated 31 January 2010, paid in full by the applicant on that date, and (with the exception of $60 for “sundry” expenses) the items in the invoice mirror the amounts previously claimed in the bill of costs.

9. The taxing officer was unconvinced by the invoice and the applicant’s accompanying submissions and on 14 April taxed the costs at $500. The applicant requested a review of the taxation of costs under Regulation 21.13(4). The matter came to me as a delegate of the Registrar of Trade Marks. I gave both parties the opportunity to provide written submissions and I have decided this matter on the material comprising the written record.

   The Law

10. Section 221(1) of the Trade Marks Act 1995 (‘the Act’) provides:

    The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

11. Reg 21.13 of the Regulations provides:

    (1)In this regulation, costs does not include the costs referred to in paragraph 105 (2) (b) of the Act.

    (2)For the purposes of section 221 of the Act (which deals with costs), costs may only be awarded in respect of a matter set out in Schedule 8.

    (3)The amount of costs must be taxed, allowed and certified by an employee appointed by the Registrar for that purpose, in accordance with:

    (a)in the case of an item in Part 1 of Schedule 8 — the amount specified in that item; or

    (b)in the case of a matter set out in a clause in Part 2 of Schedule 8 — that clause.

    (4)The Registrar may review the taxation of costs by an employee.

12. The general principles regarding entitlement to costs were set out by the High Court in Cachia v Hanes (1994) 179 CLR 403:

    It has not been doubted since 1278 when the Statute of Gloucester 1278 (UK) 6 Edw.l c.1 introduced the notion of costs to the common law, that costs are awarded by way of indemnity (or, more accurately, partial indemnity) for professional legal costs actually incurred in the conduct of litigation. They were never intended to be comprehensive compensation for any loss suffered by a litigant. 

13. There is no limitation in the Act or Regulations on the class of person that may act for another person in relation to an application to register a trade mark. As a result, allowable costs are not limited to those incurred by legal professionals (solicitors or registered patent/trade marks attorneys). However, in cases where the person performing the work for the applicant is not a legal professional there must be a clear separation between the applicant and that agent. That is, the applicant and agent should be operating ‘at arm’s length’. A definition of this legal principle is as follows (Osborn’s Concise Law Dictionary (1993) 8^th Edition):

    Arms length, at. The relationship which exists between parties who are strangers to each other and bear no special duty, obligation, or relation to each other.

14. If there is no such separation, doubt over whether costs have been actually been incurred by the applicant, will arise. The Trade Marks Office Manual of Practice and Procedure (Part 55.1) states (with my emphasis):

    An award of costs in proceedings before the Registrar is intended to cover expenses actually incurred by the successful party in establishing its case.  This will include money paid to an agent who has advised and assisted the party in filing necessary documents and in preparing its case.  As in proceedings in the courts, the costs in proceedings before the Registrar do not include work which a party does on its own behalf, as this is not done for a payment.

15. This principle was highlighted in the patents case of Bartlem Pty Ltd v Fisher (1990) 44 IPR 670, where the applicant was a patent attorney and the costs for preparation and attendance were not allowed as he was representing himself. In order to allow the claimed costs in the matter before me I must be satisfied that another person was acting at arm’s length on behalf of the applicant in the relevant stages of the opposition.

    Reasons

16. The delegate’s decision on the opposition makes no reference to the applicant being represented by another party, noting only that Mr David Burmingham is the sole director of the applicant.

17. After perusing the material on file, I note that all of the applicant’s correspondence is from Mr Burmingham either in a personal capacity (via e-mail) or under the letterhead of CSI. The correspondence under the CSI letterhead is invariably written and signed by David GP Burmingham. In addition, any delays on the part of the applicant have been due to Mr Burmingham’s personal availability, rather than that of the applicant’s representative CSI. I find there is real doubt about whether CSI and the applicant were operating ‘at arm’s length’.

18. In the invoice from CSI to the applicant, the name of the individual issuing the invoice is missing, but the invoice does contain a signature on behalf of CSI. That signature is identical to Mr Burmingham’s signature on all other correspondence. As Mr Burmingham appears to have signed all correspondence on behalf of CSI, I infer that he has control of that business as well.

19. The invoice also includes an item for attendance at a ‘1^st Hearing’. I presume this item to be in relation to a telephone conference that took place when the substantive hearing was adjourned to a later date. Mr Burmingham attended that conference. I find it extremely unlikely that CSI would bill the applicant for its own director to appear at the hearing (see also item 3(b) on the bill of costs).

20. The addresses of CSI and the applicant are identical on the invoice. I further note that the address for service for the trade mark remained at all times under the applicant’s name, THOD Pty Ltd. While it is possible that a party’s representative have the same address for service as the party itself, this fact must be considered in light of all the surrounding circumstances.

21. If there is any doubt in this regard, the taxing of costs has an element of discretion. In the case of Joose v Great White Shark Enterprises Inc [2000] ATMO 24 the delegate of the Registrar said:

    Obviously, the award of costs is discretionary. The registrar may award them or - depending on the merits - s/he may not. I think that at least some of that discretion carries over into the subsequent review, post taxing, of the amounts. There would be little point in making the taxing subject to review otherwise. Equally clearly, however, in conducting this review of taxing, I do not have the discretion to reverse the award, or to tax all the amounts at zero.

22. Despite the invoice produced by the applicant, I am not convinced that another party conducted work on this matter on behalf of THOD Pty Ltd. The above facts, taken separately, may not have been sufficient to invalidate the applicant’s claim.  However, taken as a whole, I am not satisfied that the applicant and CSI operated at arm’s length.

    Decision

23. I am not satisfied that allowable costs have been incurred by the applicant in this matter. However, the applicant is entitled to its expenses, being the fee of $500 for requesting a hearing. I now direct that, after one month from the date of this decision,  the costs be taxed and certified in the amounts proposed by the taxing officer below:

Bill of Costs taxed in accordance with Schedule 8 of the Trade Mark Regulations

Item Claimed	Amount Claimed	Amount Allowed	Comments
Notices of opposition (preparation)
Evidence in support
Receiving and perusing notice of opposition	130 x 2	0	Not Allowed
Receiving and perusing evidence in support	300 x 2	0	Not Allowed
Evidence in answer	700	0	Not Allowed
Receiving and perusing evidence in answer
Evidence in reply
Receiving and perusing evidence in reply	130	0	Not Allowed
Preparation of cases for hearing	525 x 2	0	No hearing held
Attendance at hearing by patent attorney, trade marks agent or solicitor without counsel
Attendance at hearing by patent attorney, trade marks agent or solicitor instructing counsel
Counsel fees for attendance at a hearing
Expenses (Fees & Travelling expenses)
Fees	500	500	Hearing fee
Allowance for person who, because of their professional or other special skill or knowledge, is summoned to appear as a witness Allowance per day.	700	0	Not Allowed, No hearing taken place. Decided on the written Record
Accommodation
Other -
Total	3940.00	500.00

1. If the Registrar is served with a notice of appeal before the period of one month from this decision, I direct that the certificate of costs will not issue until the appeal has been discontinued, or in the event of a decision from the court, that the review of taxation of costs be subject to that order. 

   Heath Wilson
   Hearing Officer
   Trade Marks Hearings
   19 January 2012