Oliver Thone v Jimik Investments Limited

[1999] ATMO 121

TRADE MARKS ACT 1955

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

Re:Trade Mark Application 746400 - letter R and device - in the name of Jimik Investments Pty Limited and opposition to an application for the deferral of a hearing by Oliver Thone.

Background

In this issue Jimik Investments Pty Limited (the applicant) applied to register the trade mark appearing below in International Class 1 respect of:

A one part chemical solution for mixing with cement and soil to create a stable solid malleable solution

Following examination, the application was accepted for registration on 16 April 1998 and advertised as such on 30 April 1998.  On 30 July 1998 Oliver Thone (the opponent) lodged Notice of Opposition to the registration.  After seeking and receiving extensions of time in which to do so, evidence in support of the opposition was served and filed on 28 May 1999.  No evidence in answer was led.

On 24 November 1999, the applicant made application for a deferral of the hearing.  In the statutory declaration in support of the deferral application, the applicant states that it entered into a marketing Agreement with Gerd Thone (hereinafter GT, who is father of the opponent) on 1 September 1996.  Clause 18 of that Agreement states:

In the event that a dispute arises out of, or relates to, this agreement (including any dispute as to subject matter, breach, termination or validity of the agreement) a party may not commence any court or arbitration proceedings relating to the dispute unless it has complied with the following paragraphs of this clause  …"

Notice of dispute was served on GT on 9 November 1999.  A copy of both the Notice of Dispute and a receipt are annexed to the declaration. 

GT is required by clause 18(d) of the Agreement to have disputes such as those mentioned above resolved in accordance with the rules of Conciliation and Arbitration of the International Chamber of Commerce using any one or more arbitrators appointed in accordance with those said rules.  The applicant wishes the issues to proceed forthwith to arbitration to resolve the issues in the notice of dispute.

Trade marks are not referred to or identified in the Agreement.

I heard the issue of the deferral of the Hearing of the substantive issue, as a delegate of the Registrar of Trade Marks, on 30 December 1999.  Mr J Behm of JC Behm & Associates of St Ives represented the applicant.  Mr M Wolnizer of Davies Collison Cave appeared by telephone for the opponent. 

The submissions
Mr Behm, for the applicant, argued that having served notice in accordance with the Agreement (as outlined above), the issue should now be resolved by arbitration as GT is now contractually bound to do so.

Mr Behm argued that the opponent, as GT's son, has no jurisdiction or capability to mount such an opposition to the registration of this trade mark.  There is no apparent conferral of intellectual property rights upon the opponent and the Notification of Dispute has been agitated in proper fashion so it is appropriate the dispute now proceed to arbitration.  It is further appropriate, on the substantive issue of the opposition that GT or other German witnesses be present for cross-examination.

Mr Behm drew my attention to a letter from GT purporting to cancel the Agreement, which he wished to tender in evidence.  After considering Mr Wolnizer's objections to the tendering of this evidence, and the content of this letter, I decided not to accept it as it has no apparent relevance to the current issue, which is the deferral of the substantive issue.

Mr Wolnizer, for the opponent, responded by drawing my attention to the background to this issue.  He then turned to the regulations to the Trade Marks Act 1995, in particular to regulations 5.14 and 5.16, which, he argued give the Registrar, or his delegate, very limited discretion in deferring the hearing of the substantive matter.

Further, Mr Wolnizer argued, if I were to take notice of the Agreement on which the applicant's request for a deferral of the hearing is founded, the Agreement is between the applicant and GT, not the applicant and opponent.  He submitted, that I am, in effect, being asked to take notice of an Agreement between the applicant and a third party.  Further, he submitted, the trade mark is not mentioned in the Agreement.  Finally, he submitted that the contractual dispute is over some payment which is allegedly owing to the third party to the trade mark dispute which, again, is irrelevant to the proceedings before the Registrar.

Reasons
There are no problems in the opponent's locus in either this or the substantive issue. Section 51 of the Trade Marks Act 1995 allows:

Opposition

52.(1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

(2) The notice of opposition must be in an approved form and must be filed within the prescribed period or within that period as extended in accordance with the regulations.

(Stress added)

Since there are no apparent problems with the opponent's status as a person, there are no problems with his locus to bring this opposition or to be represented at this hearing.

I can see no reason to delay the hearing of the substantive matter.  Regulation 5.14 states, insofar as is relevant to these proceedings:

(2)   A party to opposition proceedings may ask the Registrar to hear the parties to the opposition proceedings, if:

(a)the applicant serves a copy of a notice under subregulation 5.11 (1); or

(b)at the end of the period for service of:

(i)a copy of the evidence in answer under subregulation 5.9 (1); or

(ii)a copy of the notice under subregulation 5.11 (1);

the applicant has not served a copy of the evidence in answer or a copy of the notice; or

(c)the opponent serves a copy of the evidence in reply under subregulation 5.12 (1) or a copy of a notice under subregulation 5.13 (1); or

(d)              at the end of the period for serving:

(i)a copy of the evidence in reply under subregulation 5.12 (1); or

(ii)a copy of a notice under subregulation 5.13 (1);

the opponent has not served a copy of the evidence in reply or a copy of the notice.

(3)   The Registrar must comply with a request made in accordance with subregulation (1) or (2).

The applicant has stated that it does not wish to rely on evidence in answer in accordance with subregulation 5.11 (1).  The wording of subregulation (3), above, makes it clear that I have very little discretion to defer the hearing.  Such discretion that remains with me does so via the provisions of regulation 5.16, which allows:

Conduct of opposition proceedings generally

5.16   (1)     The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.

(2)   A direction given under subregulation (1) must not be inconsistent with these Regulations.

(3)   The Registrar must not give a direction unless the Registrar:

(a)is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and

(b)has given the parties a reasonable opportunity to make representations concerning the proposed direction; and

(c)is reasonably satisfied that the proposed direction is appropriate.

As deferral of a hearing on a substantive issue is a 'proposed direction', it is clear from the above regulation that I do have a limited discretion to defer a hearing, having allowed both parties opportunity to comment.  In this issue, I am asked to suspend or defer the hearing of this issue so that arbitration, which is allowed for in a commercial contract, can take place.  I do not think that this is sufficient reason for the exercise of my limited discretion.  It has not been shown to me why arbitration on the sum payable under a contract between parties other than those before me cannot take place while a trade mark issue is being resolved before the Registrar, which is the appropriate forum.  I am hard pressed to see how any arbitration can take place in relation to the trade mark - trade marks are not mentioned in the contract at all - let alone the trade mark which is the subject of the substantive dispute.

I am not convinced that it is in any way consistent with the regulations to suspend the hearing of this issue because of a contractual dispute (which is between parties other than those parties to the trade mark dispute) so a payment which, it is alleged, was due to be made under that contract, can be arbitrated. 

I am also mindful of section 204 of the Act which prescribes:

Registrar to act as soon as practicable

204. If:

(a)  the Registrar is required under this Act to do any act or thing; and

(b)  no time or period is provided within which the act or thing is to be done;

the Registrar is to do the act or thing as soon as practicable.

If trade marks had been mentioned in the Agreement, (and the Agreement were between the parties to this issue) I have been presented with no material which demonstrates that arbitration is a forum which will deal with the matter expeditiously or, indeed, has the requisite expertise and authority to settle the issue to the satisfaction of both parties and the Registrar of Trade Marks.

Decision
The substantive issue should proceed so soon as is practicable and the application for deferral is refused.

Costs
The opponent is entitled to its costs relating to this hearing to be taxed at the official scale.

Ian Thompson
Hearings Officer

3 December 1999