Oddbins Limited v Oddbins Corporate Beverage Suppliers Pty Limited

[2001] ATMO 1

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

Re: A delegate's intention to refuse an application for a late extension of time to file notice of opposition by Oddbins Corporate Beverage Suppliers Pty Limited to an application by Oddbins Limited for the removal from the Register of registration numbers 546040 and 546041 from the Register of Trade Marks

Background

Trade marks 546040 and 546041 are registered in the name of Oddbins Pty Limited of 46 York Street Sydney NSW.  Brief details of these registrations are:

Reg No:  546040
Priority date:              19/11/1990
Owner:  Oddbins Pty Limited

Goods/Services:         Alcoholic beverages (except beers); wines, spirits and liqueurs; and all other goods included in this class

Class:33

Trade Mark:               ODDBINS & Barrels Device

Reg No:  546041
Priority date:              19/11/1990
Owner:  Oddbins Pty Limited

Goods/Services:         Wholesaling and retailing services in respect of alcoholic and non-alcoholic drinks, beverages, liquors and preparations; services in this class rendered in connection with the conduct and operation of stores and outlets for the sale of alcoholic and non-alcoholic drinks including bottle shops, liquor retailers; services in this class rendered in connection with hotels and restaurants

Class:42

Trade Mark:               ODDBINS & Barrels Device

I will refer to the ‘registered owner’ as such. On 9 May 2000, Oddbins Limited (‘Oddbins Britain’) of 201 Talgarth Road, London, England made applications under section 92 of the Trade Marks Act 1995 for the removals of the above mentioned trade marks, for non-use, from the Register.  The applications were advertised in the Australian Official Journal of Trade Marks on 1 June 2000.  The period for the filing of oppositions therefore expired on 1 September 2000.
The official correspondence, advising of the removal applications, sent to the registered owner was ‘returned to sender’ to the Trade Marks Office because the registered owner of the trade marks was no longer at the registered address. On 1 June 2000, a senior examiner in the hearings section made telephone contact with a business called Oddbins Wine Merchants (‘OWM’) and spoke with the accountant/manager. She informed him of the applications under section 92 and wrote to him the same day, stating, inter alia, “As far as the application to remove the trade marks is concerned, you have until 1 September 2000 to file an opposition to the application.  If you do not file an opposition within this time, the trade marks may be removed from the register forthwith.”  The senior examiner included an appropriate form with her letter, advised the manager/accountant that it might be photocopied if required, cautioned him of the advisability of seeking legal advice and also enclosed a fee schedule.
There follows correspondence adverting to a chain of events of seeming complexity – however, I am satisfied that this complexity only exists in the minds of the protagonists and that the issues involved are quite straight-forward.  On 13 September 2000, thirteen days after the elapse of the opposition period, Mr John Spence, of John Spence & Associates, Solicitors wrote to the Trade Marks Office stating that he had received instructions on 11 September 2000.  Mr Spence stated in the letter that he acts for a company called Oddbins Corporate Beverage Suppliers Pty Limited (‘OCBS’).  He referred to the removal proceedings and, I paraphrase his words, wrote that there had ‘been a chain of ownership whereby the title to the ODDBINS & Device trade mark was devolved through a number of different parties.  The difficulty is that at each relevant step appropriate action has not been taken to record the change of ownership’.  And, ‘Each of the steps is a matter for evidence which will need to be established in the fullness of time’.  And, ‘The immediate difficulty is that our client is presently out of time.  The date by which the Notice of Opposition in relation to the removal application was due to be filed was 1 September 2000.  We are instructed to make application for the granting of a belated extension of time within which to lodge Notice of Opposition and we are currently attending to the preparation of the requisite documentation to that end.’  I will note further at this time that Mr Spence in this letter twice states that the trade mark ODDBINS & Device had at all times remained in use.
A senior examiner responded to this letter by facsimile letter on 28 October 2000, noting that no extension applications had been received and that the removal applications would be reinstated unless an extension of time application was filed before 3 October.
On 3 October 2000, after the elapse of the deadline set by the senior examiner, Mr Spence filed applications on behalf of OCBS for extensions of time under section 224 and an accompanying declaration by himself.  I will note now that, as Mr Spence did not receive instructions until after the elapse of the opposition period and the delay was on the part of a person other than himself, his declaration as to the events leading to the delay before 1 September 2000 must be viewed as being second-hand or hearsay.  The declaration also says nothing pertinent of the reasons of the person who delayed apart from it being an oversight.  Subject to the qualifications which I set out below, there is nothing, in this declaration, that speaks to me directly about the state of mind of whoever the person was who did not act, or the reason that he or she did not act.  The application cites ‘errors or omissions by the person concerned or by his agent’ and ‘circumstances beyond the control of the person concerned’.  For reasons of convenience, I will not detail the facts to which Mr Spence attests at this juncture and will summarise them in conjunction with my summary of other declarations that were later filed.  I will note that there is a factual error, either in this declaration or in the letter of 13 September 2000, as Mr Spence in his declaration attests that he received instructions on 13 September 2000 whereas in his letter he states that he was instructed on 11 September 2000.  I do not think that much turns on this; however, it does introduce an element of uncertainty into reliance on either account of events.  I further observe that Mr Spence’s ground concerning his statements as to the use of the registered trade marks appears to have shifted slightly – in his declaration he states that the use of the ODDBINS trade mark has been continuous and ongoing: this does not amount to a statement, as does his earlier assertion, that the trade marks ODDBINS & Device (as registered) [my stress] had been continuously used.
Oddbins Britain objected to the late application for extension of time giving its reasons.  Later, on 13 November 2000, the senior examiner wrote to John Spence and Associates stating that OCBS had not made out a case sufficient to support grant of the extensions and stating her reasons why.  These included the indirect nature of the evidence and insufficient factual detail as to the cause of the lack of action by OCBS.
By letter dated 27 November 2000, OCBS filed a Request for Hearing.  This was set down for 22 December 2000.  On 13 December 2000, OCBS applied to amend the grounds under which the late applications for extensions of time are made to include ‘special circumstances’.  Oddbins Britain objects to these amendments.  On 20 December 2000, OCBS sought permission to file further evidence – this is a statutory declaration by Joseph Anthony Bavaro (‘the Bavaro declaration').  The request is supported by a further statutory declaration by John Spence.  Oddbins Britain also objects to the filing of this further evidence.
As delegate of the Registrar of Trade Marks, I heard these matters on 22 December 2000 by teleconference with the parties.  David Yates and Jim Dwyer of Allen Allen and Hemsley represented Oddbins Britain.  Carmen Champion of Counsel, instructed by John Spence, represented OCBS.

The evidence

Before discussing the issues, the submissions of the legal representatives of the parties or giving my reasons, I will detail the chronology of events shown in the various declarations.  I will also discuss what, I believe, the evidence shows.

Date	Event
19 Nov 1990	Applications lodged by Oddbins Pty Ltd to register trade marks ODDBINS & barrels device – registrations take effect from this date.
3 Jun 1996	Purported sale and assignment of trade marks to Welfield Pty Ltd.
16 Jul 1996	Application to assign trade marks to Welfield Pty Ltd not recorded due to incomplete documentation.
24 Jul 1996	Welfield Pty Ltd changes name to Oddbins Wine Merchants Pty Ltd.
9 April 1997	Statutory non-use period begins.
18 Jul 1997	Oddbins Pty Ltd changes name to Winecorp Pty Ltd.
11 Nov 1997	Registrations renewed by Oddbins Wine Merchants Pty Ltd.
8 Jul 1998	Oddbins Wine Merchants Pty Ltd enters bankruptcy – administrator appointed.
25 Aug 1998	Administrator purports to assign trade marks to Ben Hughes and Joseph Bavaro.  Hughes and Bavaro act for themselves without legal advice.
18 Sep 1998	Ben Hughes and Joseph Bavaro form Oddbins Corporate Beverage Suppliers Pty Ltd.
Nov 1998	Bowen & Gerathy, solicitors, now act for OCBS in sale of PORTERS business
10 Dec 1998	Seagram Distillers Ltd ask Administrator if Oddbins name is available.  Bavaro responds to this letter.
9 April 2000	Statutory non-use period ends.
May 2000	OCBS commences sale of associated – PORTERS – liquor business.
9 May 2000	Applications to remove trade marks from register filed by Oddbins Britain.
1 Jun 2000	Applications advertised in the Australian Official Journal of Trade Marks.
1 Jun 2000	Official letter and phone call advises Mr Bavaro of OCBS of removal applications and 1 September 2000 deadline.  The letter may have passed from OCBS to Bowen & Gerathy apparently without instructions.
8 Jun 2000	Letter of demand from Oddbins Britain to OCBS requesting that they cease use of the name Oddbins.  An offer to negotiate is dated the same day
8 Jun 2000	OCBS forwards above correspondence to Bowen & Gerathy under With Compliments Slip with comment annotated “Dear Anne, New Twist to Tale” – again, no apparent instructions.
13 Jun 2000	Bavaro at conference at Bowen & Gerathy offices where John Spence is introduced as a solicitor with expertise in trade mark matters.  Various documents are shown to Mr Spence who expresses some concern about ownership issues – removal matters are not, apparently, discussed.
28 Aug 2000	Sale of PORTERS business completed by OCBS.
1 Sep 2000	Final day for filing of opposition to the removal applications.
11 or 13 Sep 2000	OCBS instructs John Spence & Associates to act in these matters.
13 Sep 2000	Letter from John Spence & Associates advises of intention to file late notices of opposition.
18 Sep 2000	Mr Bavaro & Mr Hughes meet with John Spence at his offices.
3 Oct 2000	Applications for extension of time in which to lodge Notices of Opposition filed.
24 Nov 2000	Counsel Briefed.
13 Dec 2000	Application to amend Application for Extension of Time in which to Oppose
19/20 Dec 2000	Bavaro declaration made and filed.

Mr Bavaro in his declaration states that he thought that, having alerted Bowen & Gerathy to the various problems concerning the ODDBINS trade marks, the firm was attending to those problems and that his company was entitled to assume that the matter would be acted on.  I think that Mr Bavaro is, or was, in error.  The solicitors were acting for him in another matter – the sale of the PORTERS business.  There is no evidence that he gave any instructions concerning the letter from the Trade Marks Office to his solicitors (or, indeed, that he at that time passed the letter to his solicitors); and, the letter of demand from Oddbins Britain was forwarded by OCBS under a ‘With Compliments’ slip with the comment “Dear Anne, New Twist to Tale” – I do not consider that this could be understood as being instructions or even a request for advice.  It is not expressly stated by Mr Bavaro that the removal applications were discussed in the meeting of 13 June 2000 where John Spence was present and, in any event, John Spence did not act for OCBS until 11 or 13 September 2000.  To my mind, in the light of Mr Spence’s reported advice at that meeting concerning the documentation of the OCBS ownership of trade marks, it is more likely that the conversation focussed on the letter of demand from Oddbins Britain which detailed an Internet domain name whose rightful ownership it disputed.  Moreover, it is most unlikely that if the removal issues were discussed at the meeting that Mr Spence, an experienced trade mark practitioner, would not have advised the immediate filing of Notices of Opposition to the applications for removal.  Contextually, given that OCBS had received the senior examiner’s phone call, written advice and the letter of demand, set against Mr Bavaro’s knowledge of Seagram Distillers Limited’s (the parent of Oddbins Britain) interest in acquiring the trade marks, Mr Bavaro’s failure to ensure that the removal issues (concerning trade marks that OCBS was allegedly using) were attended to as a matter of priority is puzzling and not satisfactorily explained.
However, if the situation was that Mr Bavaro had, in fact, instructed Bowen & Gerathy concerning the removal matters, there is nothing in the evidence to explain the delay on the part of that firm.  However, as I have said, I do not think that Mr Bavaro did instruct those solicitors in the removal matters.  The ‘With Compliments Slip’ on the Oddbins Britain letter of demand sent to the solicitors by Mr Bavaro was notated by them with the date of its receipt and retained on their file.  Bowen & Gerathy are thus accurate in their record keeping.  Mr Bavaro later recovered a copy of these documents for use in these proceedings.  It is fair to infer on this basis that, if instructions had been sent by Mr Bavaro to Bowen & Gerathy with the Senior Examiner’s letter (the letter which advised of the removal applications), Mr Bavaro should later also have been able to recover from his solicitors both a copy of the letter and his instructions.  He has not been able to do so.
I also find it difficult to reconcile the fundamentally different accounts of events that emerge from the declarations of Mr Bavaro and Mr Spence.  Mr Spence, in his declaration says:

The failure by [OCBS] to initiate Opposition proceedings within the prescribed period was not intentional and it was an error which occurred through oversight and lack of awareness.  At the relevant time, [OCBS] was involved in the sale and transfer of a different part of its business, namely the “PORTERS” wine wholesaling division to the company Australian Liquor Group Pty Ltd and it was preoccupied with that transaction and with the conduct of the commercial negotiations in relation to same.  By way of verification, now shown to me at the time of making this Declaration and marked with the letters “JBS-6” is a copy of the front page of the relevant contract for sale.  It would appear that the nature and seriousness of the removal application [sic] were not appreciated by [OCBS] at the relevant time.  It was only in the course of attending to the conveyancing aspects of the sale agreement that the issue of the “ODDBINS” name and trade marks was raised by Bowen & Gerathy as an ancillary matter and that a line of inquiry was then pursued which has ultimately led to an appreciation of the present position and the anomalies which currently exist.

This contrasts with Mr Bavaro’s declaration that:

I disagree with those statements.  While it is true that my company may not have fully appreciated the situation or the implications of the Removal application [sic], a serious view was taken of it and appropriate steps were initiated.  The trade mark issue was drawn to the attention of Bowen & Gerathy and copies of the relevant documents were forwarded to that firm by me.  I do not know why Bowen & Gerathy did not respond to the letter dated 1^st June, 2000 from the Trade Marks Office or the correspondence of 8^th June, 2000 from Allen Allen & Hemsley.  Having alerted that firm to the problem, I assumed (as I was entitled to do) that appropriate steps would have been taken to deal with the matter and I relied on the professional advice and assistance of Bowen & Gerathy.  The matter was out of the hands of my Company and it had been put in the keeping of our legal advisors.  My Company was entitled to assume that the matter would be acted upon.

If Mr Bavaro did forward the Trade Marks Office letter to his solicitors, it is difficult to understand his reliance on their expertise in trade mark matters, when he had effectively had their lack of expertise drawn to his attention at the meeting in the offices of Bowen & Gerathy on 13 June 2000.  Mr Bavaro was at the solicitors’ offices to discuss the sale of the PORTERS business.  I think that the introduction of Mr Spence to Mr Bavaro at the meeting in the Bowen & Gerathy offices is probably a reflection of that firm’s realisation of a potential problem with the letter of demand (I am not convinced that the Trade Marks Office letter was in their possession at that time) and that firm’s prompt, appropriate and timely advice to Mr Bavaro that, if he required trade marks advice, they were unfamiliar with the field and Mr Spence was a person to give it.
It is true that Mr Spence’s declaration is a second-hand account of events.  However, I think that his account is to be preferred for a number of reasons; it is unlikely that Mr Spence would have submitted the declaration to Trade Marks Office without first checking with his client that it was factually correct; Mr Bavaro had a meeting with Mr Spence at his offices in advance of the Spence declaration being forwarded to the Trade Marks Office; and, Mr Bavaro’s version of events did not emerge until after Counsel’s advice – I think that it can be inferred the advice from Counsel was that the applications for Extensions of Time in which to oppose were likely to fail on the reasons stated in the Spence declaration.
Mr Spence incurred further delays untangling and validating the chain of ownership of the trade marks.  Unfortunately, this delay was not necessary and is also, to this extent, unexplained but has not, I would stress, contributed to the situation in which OCBS finds itself.  Mr Spence’s delay would only become relevant if OCBS were able to establish their grounds for the extension of time.  As far as a Notice of Opposition is concerned, the chain of ownership can be disregarded.  Section 96 of the Act provides:

96  Notice of opposition

(1)Any person may oppose an application under section 92 by filing a notice of opposition with the Registrar or the court, as the case requires.

(2)The notice of opposition:

(a)must be in a form approved by the Registrar or by the court; and

(b)must be filed in accordance with the regulations or the rules of court (as the case may be).

As ‘any person’ can oppose the removal of a trade mark, a person does not have to be the owner of a trade mark in order to oppose its removal from the register.  Thus, Mr Spence could have immediately filed Applications for Extensions of Time in which to oppose and Notices of Opposition in the name of his client, OCBS, on 11 or 13 September 2000 – whenever he actually received instructions.  The devolution of ownership of the trade marks could have been addressed separately in the substantive matters if necessary.  Mr Spence’s delay from 13 September to 3 October in which to file the Applications for Extension of Time is thus not addressed or properly explained: I am not certain that this is because of mistake on his part or the result of instructions from his client – it is unprofitable to speculate on this.  I think that the essential point to be drawn is that there are two delays – one on the part of Mr Bavaro (which was fatal) and the other on the part of Mr Spence (which was not fatal), neither of which is properly explained.

I therefore conclude, on the basis of the evidence before me, that the delay on the part of OCBS has not been satisfactorily explained; and, that this delay was in the face of explicit written and verbal advice from the Trade Marks Office about the necessity to file Notices of Opposition and the deadline for doing so.
The delay appears to have been occasioned by simple inaction on the part of Mr Bavaro.
The subsequent delay on the part of Mr Spence is evident but has not been addressed in the context of the applications for extension of time.  Regarding the filing of the late evidence, the declaration by Mr Spence attests to him being a sole practitioner and being caught up with a Federal Court appeal case of considerable complexity and a vast amount of evidence to be collated, sorted and cross checked within the period 15 November 2000 to 7 December 2000.  This is after the applications for extension were filed.

The Parties

These proceedings are between the Registrar and OCBS concerning a delegate’s notified intention to refuse the Applications for Extensions of Time.  As explained by the Registrar’s Delegate, Mr Forno in the issue reported as Goldmine Software Corporation v South & Walker Pty Limited [2000] ATMO 52 (26 May 2000):

It is standard Office practice to allow an objector to such an extension of time to attend and be heard at a hearing in the matter, even if the delegate has also advised that s/he is intending to refuse the extension.  The Trade Marks Office Draft Manual of Practice and Procedure (the Draft Manual) says, at para 3.5 of Part 49, inter alia:

The Registrar will give the removal applicant an opportunity to make representations about the extension but neither the Act nor the Regulations specifically provide for it to be heard on the grant of the extension.

The Registrar must, however, allow the applicant for extension the opportunity to be heard if he or she intends to refuse the extension (section 203). If, under these circumstances, the applicant for extension requests a hearing, and pays the appropriate fee, the removal applicant will be advised that a hearing has been set down. Should it wish to do so, and upon payment of the required fee, the removal applicant may then also request to appear and be heard at the hearing. Costs are unlikely to be awarded in such a case.

If the extension has been applied for under the provisions of subsections 224(2) or (3), and the period of the extension exceeds three months, it must be advertised in the Official Journal for opposition purposes.

The Submissions

Mr Yates and Ms Champion both made comprehensive submissions concerning the approach that I should take concerning the operation of section 224 of the Act and brought the relevant case-law to my attention.  Mr Yates made strong submission that I should not allow the Bavaro declaration into evidence and that I should not allow the amendment of the application for extension of time in which to oppose.  Ms Champion made extensive submission and referred me to the Goldmine decision, above.  I do not agree that the circumstances in this case and those in Goldmine are in any way analogous.  In Goldmine, a solicitor believed that a particular removal application was to be heard in the Federal Court rather than before a delegate of the Registrar; he had the advice of Counsel to this effect and attested to these facts.  The delegate accepted that, in the context of that case, these reasons for inaction constituted a special circumstance.  Here there is no evidence from the solicitors for OCBS and the evidence suggests that they had no instructions to act in these matters for OCBS.

Reasons

I will, as might already have been inferred, allow the Bavaro declaration into evidence as it sheds light on the chain of circumstances that occurred – I think that, in order to be able to reach a decision, it is in the public interest that I be fully informed of the circumstances.  In so allowing the declaration into evidence, I note that Oddbins Britain is present at these proceedings to ensure procedural fairness and, in any event, had sufficient time in which to prepare to address the content of the declaration.

However, I do not think that the Bavaro declaration supports the position of OCBS that there are ‘special circumstances’.  Neither do I believe that I may allow the application for extension of time to be amended to include ‘special circumstances’.
Amendment of documents such as the Applications for Extension of Time under Section 224 is governed by the operation of section 66 which provides:

66  Amendment of other documents

The Registrar may, at the written request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the written request of the person’s agent, amend the application, notice or document:

(a)to correct a clerical error or an obvious mistake; or

(b)if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

Note:For file see section 6.

As regards subparagraph 66(a), if it is claimed that a clerical error or obvious mistake has been made by a person concerned, the person who makes the claim must show it was the intent of the person concerned to enter something other than what was written.  In The Queen v. Commissioner of Patents; ex parte Martin (1953) 89 CLR 381, Williams J stated:

A clerical error, I would think, occurs where a person either of his own volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different.

It has not been shown that there was any intent on the part of OCBS to nominate the ‘special circumstances’ grounds of section 224 when they made the application for extension of time.
Further, as regards whether it would be fair and reasonable in all the circumstances of the case for me to allow the amendment, it would appear that OCBS only decided to invoke the ‘special circumstances’ provisions after they received the advice of Counsel that their application was likely to be unsuccessful on any other grounds.  The Bavaro declaration was then prepared and, as I have explained, I have reasons for not placing any high reliance on it.  I am concerned that this chain of circumstances is suggestive of an attempt to tailor a perception of the facts to suit the provisions of the Act.  Further, the application to amend was made over two months after the Application for Extension was filed and over three months after the deadline had passed.  The situation here is somewhat analogous to that in Crown & Andrews Pty Ltd v All American Fremantle International Inc [1997] ATMO 36 (18 July 1997); 38 IPR 595 where the application to amend the grounds was made after it became apparent that other grounds would be refused. The application to amend the grounds in that matter was refused by the Registrar’s delegate. Given that the trade mark registrations here in question were due to be removed from the register in the first week of September, to allow the extension applications to be amended on these grounds at such a late juncture would, I believe, be quite unreasonable. Further, to allow the amendments here, after such an elapse of time, would be similar, I believe, to allowing fresh Requests for Extension of Time to be filed. Moreover, I consider that, had I allowed the amendment, the ground would have proved fruitless for OCBS.

The Applications for Extensions of Time

The Act and regulations provide:

Extension of time—application

21.25   For the purposes of subsections 224 (2) and (3) of the Act (which deal with extensions of time), an application for an extension of time for doing a relevant act:
         (a)       must be in an approved form; and
         (b)       must be accompanied by a declaration stating:

(i)      the facts on which the grounds specified in the application are based; and

(ii)     if the period for doing the relevant act has ended—the reason why the application was not made before the period ended.

Extension of time

224.(1) If, because of an error or omission by a trade marks officer, a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar must extend the time for doing the act.

Note:  For trade marks officer see section 6.

(2) If, because of:

(a) an error or omission by the person concerned or by his or her agent; or

(b) circumstances beyond the control of the person concerned;

a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

(3) If:

(a) a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and

(b) on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;

the Registrar may extend the time for doing the act.

(4) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

(5) If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal.

(6) A person may, as prescribed, oppose the granting of the application.

(7) An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of an act.

(8) In this section:

relevant act means:

(a) any act (other than a prescribed act) done in relation to a trade mark; or

(b) the filing of any document (other than a prescribed document); or

(c) any proceedings (other than court proceedings).

I will discuss each of the relevant subsections of section 224 in turn.  However, my ground for rejecting each is similar – I have been given no reason which would satisfy the criteria of any subsection as to why the applications for extension were not made before the period ended (reg 21.25(ii)).
The ‘error or omission’ referred to in subsection 224(2)(a) sufficient to allow this provision to come into operation should be via an agency extraneous to the delay itself – the inaction or failure to file opposition or to apply for extension of time in which to do so cannot be in itself treated as the error or omission:  Stadium Sports Franchising Pty Limited v Stadium Australia Management Ltd (1997) 37 IPR 345. I have been given no reason which could be viewed as an error or omission for OCBS delay – as far as I can understand the delay, it is through simple inaction. There is no doubt that Mr Bavaro was informed by a Senior Examiner of the due date both by telephone and in writing and that, by coincidence, the period of time in which he had to act exactly matched the time prescribed in the Act. As I have stated, I would infer from the evidence that Mr Bavaro did not seek advice from, or instruct, his solicitors in relation to the matters although it is certain that he did pass some documentation to them relating to the letter of demand. However, if Mr Bavaro had, indeed, instructed his solicitors, I have been given no reason for their inaction.
The further delay by Mr Spence is not properly explained either; however, his delay arose after the period for doing the relevant act had ended and the applications for extension of time would be refused anyway having regard only to the delay on the part of OCBS.
‘Circumstances beyond the control of the applicant’, (subsection 224(2)(b)) is a ‘force majeure’ provision.  Jenkinson J said, in Atomik Skifabrik Alois Rohrmoser v The Registrar of Trade Marks (1987) 7 IPR 551, at 558:

In the context in which it is found, the expression "circumstances beyond the control of the person concerned" does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts or omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in s131(1)(a), in my opinion. Nor, in my opinion are the acts or omissions of that agent's servants. The section is, I think, correctly described as a force majeure provision.

It has not been shown to me that there were here any circumstances that were beyond the control of OCBS which prevented the filing of the opposition.
I have already stated that I do not think that it is appropriate in the circumstances to amend the application forms so as to include reference to the ‘special circumstances’ provision of subsection 224(3).  However, as I have already said, there is nothing in the evidence that gives any satisfactory reason for the delay – there is no explanation of anything that could have prevented the filing of the oppositions or applications for extensions of time.  There is nothing in the evidence that shows that OCBS or its corporate officers ever had any intention of filing Notice of Opposition to the removal applications.  Indeed, the inconsistencies and incompleteness of the evidence appears to leave much unanswered and much doubt about what truly occurred.  There are allegations in Mr Bavaro’s declaration that the delay was occasioned by his solicitors; however, as I have explained above, I do not accept this version of events.

My Discretion

In Sanyo Electric Co. Limited v Commissioner of Patents (1996) AIPC 91-283, the Deputy President of the Administrative Appeals Tribunal, said:

The decisions of the courts concerning the approach to be taken to the exercise of a discretion to extend time are now well established and include:

in the absence of nominated factors against which the discretion is to be exercised, regard should be had to the "subject-matter, scope and purpose of the Act" - per Mr Justice Mason (as he then was) in Minister for Aboriginal Affairs and Another v Peko-Wallsend Limited and Others (1986) 162 CLR 24 at 39-40. A further exposition of this is provided by the comments of Mr Justice Davies in Chalk v Commissioner for Superannuation ( 1994) 50 FCR 150 at 154 where he said "...the discretion should be exercised by reference to the words of the statute and the context within which the discretion is conferred";...

it is "more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time" (per Davies J in Chalk's case, at 156, with whom Chief Justice Black and Mr Justice Cooper agreed. Similar comments are to be found in Comcare v Ahearn (1993) 119 ALR 85, particularly at 88);...

a legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially ( Davies J in Chalk's case at 155).

Ms Champion referred me to the Goldmine decision, above, there the Delegate; Mr Forno, said:

That decision,[1] by Hearing Officer Homann, dealt with the revival of a lapsed trade mark application under the new Act, although the transitional provisions of section 240 and 248 applied in that case, as the trade mark application had lapsed prior to the commencement of the new Act.  Mr Homann found, at page 37,869, that he was required to decide whether revival of the trade mark application in question, was "fair and reasonable", taking into account all the circumstances of the case.  These are the terms which apply to the exercise of the Registrar's discretion to revive an application under the transitional provision of section 248, but they seem to me to provide valuable guidance as to the proper exercise of the similar discretion given to the Registrar under section 224.

[1] Re Ausorb Pty Limited (1996) AIPC 91-286.

In coming to a "fair and reasonable" decision in this matter, I have given regard to the following:

·     the relative inconvenience to the parties concerned, including whether the opposition to removal has otherwise been prosecuted with due diligence,

·     the public interest, and

·     the desirability of operating the (trade mark) system efficiently and without unreasonable delays Vangedal-Nielsen, supra, at page 150.

Oddbins Britain has two applications for registration pending.  Ms Champion stressed the inconvenience to OCBS if the registrations were to be removed from the register – they could, she submitted, become liable to be sued for infringement.  I disagree.  The Oddbins Britain applications are before the Registrar and they may be opposed before the Registrar and not involve expense before the Courts.  If OCBS, or their purported predecessor in business, has used the trade marks, they may oppose registration of those trade marks. 
It is in the public interest that the Register of Trade Marks reflects the true state of the market-place.  The onus, in non-use proceedings, is now on the registered owner to demonstrate use if non-use is alleged.  The task is a simple one to achieve.  It has, however, not been effected.  OCBS alleges that it used one or both of the registered trade marks during the specified time – however, as I have noted, its ground concerning that use appears to have shifted slightly.  The hearing did not, of course, deal with the matters concerning the use of the trade marks, however, I find a lack of any clear statement concerning the market-place use of the trade marks or nature of the evidence which OCBS intends to put on – when I asked Ms Champion about this at the hearing, she referred me to the statements within the statutory declarations: these statements do not, as I have said, appear to be entirely consistent.  Thus, I gain a sense of equivocation concerning the state of the market-place within the specified period of time.
It is most efficient in the running of the Register, I consider, to refuse the applications.  OCBS has been less than diligent - the current state of play shows that there is no reason to expect that to change - in fact it confirms the contrary.  I note that the applications for extensions of time were filed for the period of three months from 1 September 2000 till 1 December 2000; there have been no further applications for extension of time or Notices of Opposition filed in that period.  In other words, even if I were to allow the applications, the matters were, at the date of the hearing on 22 December 2000, out of time again.
I am also concerned that OCBS has been less than forthright and complete in its explanations for the delay.  I am particularly concerned that OCBS apparently alleges inadvertence on the part of its legal advisors where the contrary situation might be inferred to truly exist.  I am unwilling in these circumstances to exercise the beneficial element of my discretion towards OCBS.

Decision

I refuse to allow the applications under section 224 for extensions of time in which to file Notices of Opposition to removal of trade mark registrations 546040 and 546041.  I direct that the trade marks not be removed from the register until after the elapse of the appeal period from these decisions.

Costs

For the reasons stated above, under the heading Parties, I do not award costs.

Ian Thompson
Hearing Officer

15 January 2001