Now Screen Pty Ltd v Infobreak Pty Ltd

[2007] ATMO 53

TRADE MARKS ACT 1995

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

Re:Application for Extension of Time by Now Screen Pty Ltd to file Notice of Opposition to registration of trade mark application 1129591(35) - IN THE KNOW - filed in the name of Infobreak Pty Ltd.

Delegate:	Terry Williams
Representation:	Extension of time applicant:  Carmen Champion of counsel, instructed by Hodgkinson McInnes Patents, patent and trade mark attorneys Trade mark applicant: written submissions
Decision:	2007 ATMO 53 Reg 5.2, late extension of time to oppose, mere delay in filing own application for registration cannot ground extension of time to oppose another, does not meet further test of reg 5.4(4).

Background

1. Trade mark application 1129591 was filed by Infobreak Pty Ltd (“Infobreak”) in August 2006. It has been examined and advertised by the Trade Marks Office as having been accepted for possible registration. Opposition to registration is allowed under s 52 of the Trade Marks Act 1995.  Critically, the time for filing such a notice ended, per reg 5.1 of the Trade Mark Regulations, on Wednesday 14 March 2007.

2. Belatedly, on 21 March 2007, Now Screen Pty Ltd (“Now Screen”) sought an extension of time to oppose.  A senior examiner in the Hearings Section has objected to this application as not being allowable in terms of the grounds under the regulations, to which I will come in due course.  Now Screen requested a hearing before a delegate of the Registrar of Trade Marks.  I conducted that hearing and what follows are the reasons for my decision.

3. At the hearing, Now Screen was represented by Carmen Champion of counsel, instructed by Hodgkinson McInnes Patents, patent and trade mark attorneys.  Infobreak was given the opportunity to attend the hearing but elected to rely on written submissions made by Ray Moon, its financial controller.  His submissions are forthright but go to general assertions of unfairness in the grant of the extension and do not assist me on the technical questions to be answered in terms of the regulations.

   Evidence:

4. Now Screen relies on statutory declarations as follows:

Date	By	Establishing
21.03.07	Ken McInnes, patent attorney	Dealings between client and attorney
29.06.07	Mark Silcocks, Managing Director of Now Screen	Client perceptions of relationship with attorney

1. Mr McInnes, who is a principal of the patent attorney firm used by Now Screen, has set out his instructions from that company.  The relevant facts are as follows:

2. In September 2006 Mr McInnes was “instructed to provide recommendations for the preparation and filing of various trade marks then in use by Now Screen in Australia”.  Unfortunately, due to repeated absences overseas and pressure of work, as well as the “additional distractions” of the need to vacate his existing office premises, which were to be demolished, and find a replacement, Mr McInnes was “unable to properly address the outstanding issues until March 2007”. 

3. He appends to his declaration a reminder email from Mr Silcocks.  This reminder is dated 2 February 2007 and headed “Happy New Year”.  There is no evidence that this email is a reply to any earlier email bearing that heading and it appears, on its face, to be the first email communication between the two men in what was by then the not-quite-so-new year of 2007.  It reads:

   Hi Ken

   Just hoping to pick up on where we left off with trademarks etc.

   When you’re free

   M

4. Mr McInnes goes on to declare that “despite repeated telephone and email reminders from both the Managing Director of Now Screen and his solicitor I was unable to render the necessary advice about the proposed trade mark filing strategy required by Now Screen until 7 March 2007.  Thereafter, there were numerous clarifying exchanges of email and telephone calls between the Managing Director and I prior to finalization of instructions to HMP which resulted in my completing the filing of various AFS applications on the afternoon of Wednesday 14 March 2007”.  

5. I will explain at this point that the reference by Mr McInnes to “AFS applications … of 14 March” is not a reference to the filing of any applications to register a trade mark.  It refers to the Trade Marks Office’s own Assisted Filing Service[1], designed to provide prompt assessment of merit at the time an enquiry is made by a customer.  It is not a service that necessarily requires the direct input of a patent attorney or a solicitor.  The significance of an AFS request is that, for an initial fee, it provides advice on the likely acceptability of an application for possible registration, should the customer then elect to convert the AFS request into an application for registration.  If so, examination would proceed in the usual manner.

   [1] The service is now offered as Head-Start, but mode of operation is the same.

6. By coincidence, the date that Mr McInnes made the “AFS applications”, as he calls them, was also the last day of the period to oppose the registration of Infobreak’s trade mark. 

7. On 21 March a delegate of the Registrar of Trade Marks responded to Mr McInnes’s AFS request in the ordinary way such things are done, faxing to him the full details of an earlier and conflicting application, the one made by Infobreak.  Mr McInnes’s client, Now Screen, immediately sought instruction from Now Screen and requested an extension of time to oppose the registration of Infobreak’s application, thus giving rise to the proceeding before me.

8. Mr McInnes goes on to declare that Now Screen’s own application “should have been filed well before 14 March but for my omission in not providing my client with the requested advice well before 7 March and finalizing Now Screen’s instructions on 14 March.

9. Mr Silcocks sets out his view of the matter.  I am assisted by the fact that, as well as filing a notice of opposition, Mr Silcocks has already filed part of Now Screen’s evidence in support.  It is clear from this that there is potentially a serious opposition afoot and that, arguably, his company has used its trade mark since July 2006.  Accordingly, I approach this matter in the full knowledge that, if I refuse the extension of time, an important matter will be excluded from further consideration at the Trade Marks Office.

10. Mr Silcocks says very plainly that he relied fully on Mr McInnes for advice.  I quote from his declaration more or less verbatim:

    My first meeting with Mr Ken McInnes of Hodgkinson McInnes Pappas took place on 28 September 2006. … I knew very little about trade marks and the rights obtained by registration.  I knew nothing about the registration process or opposition procedures.  I relied completely on Mr McInnes for advice in these matters.  I approached Mr McInnes for advice and recommendations concerning prompt registration of several marks, including the trade mark, which were considered to be of vital commercial importance to the future development of the opponent's business.  I was completely reliant on Mr McInnes for placing me in an informed position on the issues of the protection and defence of the opponent's rights in these marks.

    It was the opponent's intention to immediately file trade mark applications for these trade marks, including IN THE KNOW, once Mr McInnes had provided his cost estimates and proposed specification of services. Applications were filed immediately after receipt of Mr McInnes's advice on these two matters.  The delay in filing that occurred was completely out of my hands.  My concern about the delay is evident from the email I sent to Mr McInnes on 2 February 2007. [see above].

    The importance of the trade mark to the opponent is reflected in the fact that the opponent has taken this matter to this stage.  If Mr McInnes had acted upon his instructions from me promptly, the opponent would have been alerted to the existence of trade mark application 1129591 and I would have immediately instructed him to file and serve a notice of opposition in order to protect the opponent's rights and investment in the trade mark in Australia.

    Legislative framework

11. A request for an extension of time to file a notice of opposition, when filed outside the initial three-month period stipulated by reg 5.1, is governed by the provisions of regulations 5.2(3) and 5.4(4).  Regulation 5.2(3) specifies the only allowable grounds on which a potential opponent may rely when requesting an extension of time outside the statutory period as being: 

    ·an error or omission by a trade marks officer;

    • an error or omission by the person applying for the extension of time, or by the person’s agent;
    • circumstances beyond the control of the person applying for the extension of time.

    Regulation 5.4(4) further deals with the grant of an extension of time.  It specifically requires that the registrar not grant an extension which was requested outside the statutory period unless the registrar is reasonably satisfied that there is “sufficient reason for the application not being made before the end of that period”.

    Extension applicant’s submissions

12. Ms Champion argued that, in the facts disclosed, there is sufficient (albeit indirect) causation both to ground an extension of time and to, beyond this, allow the grant of the extension.  The failure of Mr McInnes to promptly supply the necessary information to Now Screen set in motion, she argued, a chain of events which resulted in the applicant being deprived of the opportunity to cause a notice of opposition to be filed on or by 14 March 2007.

13. Ms Champion conceded that Now Screen did not, at the end of the opposition period, have the intention to oppose which previous decisions demanded of an applicant for an extension[2].  Now Screen's ignorance, prior to 21 March 2007, of both the existence of trade mark application 1129591 and the opportunity to oppose its registration resulted in the applicant not being able to instruct Mr McInnes to attend to the filing of a notice of opposition within the requisite period of time.  She stressed the importance of the evidence that Now Screen had an intention, as at September 2006 to:

    (a) continue to use and expand the use of the mark;
    (b) immediately take steps to protect its investment in the mark;
    

    [2] Here Ms Champion referred to Stork Pompen BV v Weir Pumps Ltd (1988) 11 IPR 542, a patent case. There, the delegate put the requirement in terms of “while … the intention to oppose may not have been entirely definite, the intention to get in a position to be able to decide whether to oppose was there.” Consistently in the AAT, the deliberate decision not to institute a watching service allowed the delegate’s refusal of the extension to be affirmed. See also Firmaframe Nominees v Automatic Roller Doors (1984) 4 IPR 137, where the instructions given to the attorneys for the prospective opponent were only of a general nature, to keep a watch on applications relating to roller doors - not on any specific application. This is roughly , but not directly, comparable to the practice of the Trade Marks Office since British Sky, to which I will come below.  The reason for the difference will also emerge.

    (c) defend its exclusive rights in the mark.

14. These matters, she said, pointed to a frame of mind concerned with taking such steps as were necessary to protect and defend the trade mark, that is, an intention 'to get to an informed position' from which the applicant could decide to oppose or not oppose application 1129591.

15. At the end of the opposition period on 14 March and up until 21 March, Now Screen was entirely unaware of the existence of application 1129591.  However, in Ms Champion’s view, this state of affairs had itself been caused by the failure of Mr McInnes detailed above.  This concept of an intervening circumstance that itself causes the ignorance is very relevant.  I agree with Ms Champion that the decision in Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595 can be distinguished on the latter point. The current matter is therefore not one of those matters in which the extension can be decided simply by the lack of an intention to oppose, a lack that was fatal in Crown & Andrews.

16. Ms Champion went on to submit that, overall, the grant of an extension is also reasonable within the terms of reg 5.4.  The applicant had not only established a ground for the extension within the terms of reg 5.2(2)(b), but that the applicant took prompt action to deal with the issue.

    Decision

17. The evidence before me shows that, in September 2006, Mr Silcocks was concerned with a number of trade marks, and with the costs of protecting them.  According to Mr McInnes, any instruction to file applications in relation to one or more of these was in some way dependant on his own “recommendations” and a “filing strategy”.  Apparently, from the declaration of Mr Silcocks, a critical factor here was the cost estimates.  I agree with Ms Champion that it was reasonable to enquire as to costs.  However, this reasonable enquiry by Mr Silcocks subsequently foundered on the unreasonable tardiness of Mr McInnes, a matter of which Mr Silcocks was well aware. 

18. I agree with Ms Champion that the cause of the late filing of a notice of opposition need not be direct.  Mr McInnes failed to providing the necessary costings, strategy or recommendations sooner.  It was this failing that, indirectly, resulted in the failure to oppose.  However, I will have more to say, below, about the degree of causality.

19. In British Sky Broadcasting Ltd v SkyNet Global Ltd (2003) 57 IPR 93 I said “I think the necessary causality will have been demonstrated wherever a party has shown an adequate intention to get to an informed position, from which it may decide either to oppose or not to oppose, and where that intention is itself subverted by an error, omission, or circumstance within the scope of reg 5.2(2)(a), (b) or (c).” In that same case I noted that failure of a watching service to identify the publication of a particular (known, and prior identified) patent was able to authorise the grant of an extension in Kimberly-Clark v Commissioner of Patents (No 3), 13 IPR 569. And, similarly, in Danby Pty Ltd v Commissioner of Patents (1988) 12 IPR 151 at 157, the failure in not instigating a watch for the acceptance of a prior-identified patent was sufficient. 

20. However, I very much doubt that the delay in Mr McInnes taking action, which in itself delayed the filing of a trade mark application in the name of Now Screen, is sufficient causation for the failure of New Screen to oppose, in a timely way, the earlier application by Infobreak. 

21. There is no evidence that Mr McInnes intended to use the AFS system as a searching tool, with which to investigate the existence of conflicting applications.  However, I think this is a safe inference since Mr McInnes is an experienced practitioner and no doubt is quite familiar with what an AFS request entails and will produce.  Again, I think it is safe to infer that, had the AFS result disclosed the existence of Infobreak’s own earlier application at a sufficiently early time, Now Screen would have opposed its registration.  However, Mr McInnes was only authorized to make the AFS requests at some time after 7 March when, costings having presumably been provided to his client, the AFS requests were authorized by Now Screen.  Thus, the only connection between the initial tardiness and the failure to oppose is that the initial delay itself has turned out, in hindsight, to be unwise because it had unforeseen consequences.  Mr McInnes might, perhaps, be said to have erred in not producing costings and a filing strategy sooner, but the degree of causation that flows from this is, in my view, negligible when set against the role played by Mr Silcocks, to which I will come.

22. However, even if was I to accept (and I do not) that the necessary degree of causation was thus present, this would establish a ground under reg 5.2 only.  The currently-sought extension must in any case be denied because of the additional filtering effect of reg 5.4(4).  That paragraph specifically requires that:

    (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.

23. Importantly, reg 5.4(1) already stipulates that, with my emphasis added:

    (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.

24. It therefore cannot be that reg 5.4(4) simply echoes the requirement that a ground of the sort set out in reg 5.2(a) to (c) be established.  The potential grounds are stipulated in reg 5.2 and the additional provision of reg 5.4(4) comes into effect only on the elapse of the initial three month period set out in reg 5.1.  Regulation 5.4(4) must be given some work to do and there is, I believe, good reason for it to be as it is.  In Kimberly-Clark, Jenkinson J envisaged (p582) that there would be cases where an initial failure made “so indirect a contribution” that the necessary grounding was not present.  I believe that the framing of the Trade Mark Regulations has this situation in mind.  The framing of reg 5.4(4)is such that it will control, and may defeat, extensions that are based on causative relationships that are, to extrapolate the language of Jenkinson J, “just barely direct enough” to limp over the threshold of regs 5.2 and 5.4(1).  

25. I believe, therefore, that reg 5.4(4) requires me to decide if, overall, an appropriate reason for lateness has been shown.  I should consider not just the existence of a chain of (indirect, in this case) causation but the overall situation, including the length of this chain, the circumstances of which it is comprised and the overall reasonableness of the conduct of the party who claims to have been affected by its existence.  In such a context, delegates of the Registrar of Trade Marks may well take heed of the warning sounded long ago by Senior Assistant Registrar Hancock in Roger David Stores Pty Ltd v Sportsgirl Pty Ltd, and reiterated by, among others, Deputy Registrar Hardie in Stadium Sports Franchising Pty Ltd v Stadium Australia Management Limited[3], that unnecessary delays may result in dire consequences, for which the person concerned must bear responsibility. 

    [3] (1984) AIPC 93-210 and (1997) AIPC 91-320 respectively.

26. The question under reg 5.4(4) was easy to answer, even so, in British Sky, supra.  There, the prospective opponent was aware of the conflicting application for registration and of its opposition deadline, and had authorized an extension of time to be sought while it decided if it would oppose or not.  There were clear, direct and appropriate instructions, given for the express purpose of preserving the option of opposing, which an error by a law firm brought undone.

27. The present matter is well towards the other end of the scale.  I sympathize with Now Screen’s predicament.  However, Mr Silcocks simply cannot shift the blame to his company’s attorney.  Just as it was clearly unreasonable for Mr McInnes to delay, for months on end, the provision of cost estimates to a prospective client, it becomes unreasonable, later, for Now Screen to rely on its own acquiescence to, if not willing acceptance of, this unreasonable tardiness. 

28. Anyone who is required to conduct business in the ordinary way of the world should have realised that Mr McInnes was simply too busy, or otherwise unwilling, to take on more work in late 2006.  I accept that in September of that year Mr Silcocks was completely ignorant about the importance of promptness in the registration of a trade mark.  He had, as Ms Champion argued, entrusted the matter to an expert.  And he has declared, now that matters have come to a crisis, that he engaged the expert for “advice and recommendations concerning prompt registration.”  However, from his conduct up to at least February 2007, I can only accept that after engaging the expert to provide a strategy and recommendations he thereafter remained comparatively uncaring about the possible existence of any consequences flowing from Mr McInnes’s delays, of which he was clearly aware.  I have been shown nothing about the events between September and February, at which time Mr Silcocks sent his email to Mr McInnes, that suggests anything like reasonable care or attention on the part of Now Screen.  The length of the delay had, by February, become so unreasonable, in my view, that the delay occasioned by Mr McInnes was no longer what reg 5.4(4) calls a “sufficient” reason on which Mr Silcocks and Now Screen might rely. 

1. I therefore refuse to extend the time available to Now Screen to oppose registration of application 1129591.  That application is in order for registration but I direct that registration not proceed for one month until it is known if Now Screen will seek review of this decision in the Federal Court.  If such review is sought, registration of the application filed by Infobreak would be subject to any orders of the court.

   Terry Williams

   Hearing Officer
   Trade Marks Hearings
   30 August 2007