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

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.
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.
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:
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

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:
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”.
He appends to his declaration a reminder email from Mr Silcocks. This reminder is dated 2 February 2007 and headed “Happy…

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: [2007] ATMO 53
Decision Date: 30 August 2007

CaseChat Overview and Summary

Now Screen Pty Ltd sought an extension of time to oppose an earlier trade mark application by Infobreak Pty Ltd. The dispute concerned whether Now Screen had established sufficient grounds for the extension under the relevant regulations, specifically focusing on the reasons for the delay in filing the opposition. The matter came before Terry Williams.

The court was required to determine if Now Screen had demonstrated an adequate intention to assess whether to oppose Infobreak's trade mark application and if this intention was subverted by an error, omission, or circumstance within the scope of regulation 5.2(2) of the Trade Marks Regulations. Specifically, the court had to consider whether the delay in obtaining costings and a filing strategy from Now Screen's patent attorney, Mr. McInnes, constituted a sufficient causal link to the failure to oppose Infobreak's application in a timely manner.

The court found that while Mr. McInnes's tardiness in providing costings and a filing strategy was an error, the degree of causation flowing from this delay to Now Screen's failure to oppose was negligible. The court reasoned that Mr. McInnes was only authorised to make the necessary enquiries, including those through the Assisted Filing Service (AFS), after 7 March 2007, and the AFS results were not available early enough to allow for an opposition. The court noted that the delay in Mr. McInnes's actions, while ultimately proving unwise due to unforeseen consequences, did not directly cause the failure to oppose. The court indicated it would further consider the role of Mr. Silcocks in the matter.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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: Now Screen relies on statutory declarations as follows: 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: 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”. 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 KenJust hoping to pick up on where we left off with trademarks etc.When you’re freeM 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”. 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.

Decision

Reasons for decision

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 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. 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. 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. 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. 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.

Ratio Decidendi

Legal Principle Established

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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).

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