Olympiad 2000 Pty Limited

[1999] ATMO 112

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:      Trade mark applications numbers 613717 614492 and 616855 — OLYMPIAD 2000, OLYMPIAD and OLYMPIAD 2000 — in the name of Olympiad 2000 Pty Limited

The following trade marks are filed in the name of Olympiad 2000 Pty Limited, a company located at 2 Market Street, Sydney, NSW.   The applications were filed under the Trade Marks Act 1955 and originally comprised a large number of separate applications.  These were amalgamated under the provisions of the Trade Marks Act 1995 and the details of the applications as they now read are tabled below.

613717 OLYMPIAD 2000 Application filed on 14 October 1993

Class: 3   All goods in class 3; cosmetics and toiletries; perfumery; soaps, hair preparations and dentifrices Class: 6   All goods in class 6; key rings; magnets

Class: 9   All goods in class 9; prerecorded videos, tapes, records, discs and films; talking books; magnets; sunglasses and optical goods; amusement apparatus in class 9; video games machines; calculators, computer goods; visors and shades

Class: 14  All goods in class 14; watches, jewellery including imitation jewellery, clocks

Class: 16  All goods in class 16; albums, books, colouring books, activity books, comics; calendars, cards, pictures, posters; stationery; table covers/napkins, paper and cardboard goods, containers, stickers and transfers, show bags, activity packs, all being in class 16; printed matter; greeting cards, gift cards, wrapping paper, calendars,

Class: 18  All goods in class 18; umbrellas; bags and cases; leather and imitation leather goods

Class: 21  All goods in this class; lunch boxes, drink containers, mugs, plastic school containers; combs and brushes, statues, coolers, drinking and eating implements, glass, porcelain and earthenware goods, articles for cleaning/ washing purposes, moulds, holders and containers, all being in class 21; toothbrushes

Class: 24  All goods in class 24; bed and table covers; bed linen; towels, face washers, tea towels; table mats, napkins and textile goods

Class: 25  Clothing, footwear, headgear; tops, pants, jackets, shirts dresses, overalls, coveralls; children's footwear; children's sox; T-shirts, bibs, pilchers, braces, belts

Class: 26  Badges; all goods in this class

Class: 27  Carpets, rugs and other floor coverings, wall hangings, all being in class 27

Class: 28  All goods in class 28; toys and playthings, including Plush dolls, puppets, jigsaw puzzles, balloons and games in class 28

Class: 30  All goods in class 30, cereal goods, snack foods, prepared meals in class 30, bread, pastry, and confectionery including iced confections, pizzas

Class: 41  Entertainment services in the nature of production, performance, and/or screening of shows and movies for television, cinemas or other exhibitions; other entertainment services including public appearances by characters dressed in costume and entertainment services rendered as a result of club participation; educational  services

614492	OLYMPIAD	Application filed on 22 October 1993
Class: 31  Living plants and flowers, seeds, and all other goods in  this class

616855 OLYMPIAD 2000 Application filed on 24 November 1993

Class: 1   All goods in this class

Class: 2   All goods in this class

Class: 4   Candles and all other goods in this class

Class: 5   All goods in this class

Class: 7   Pumps, filtering machines, filters being parts of machines, and all other goods in this class

Class: 8   Hand tools, cutlery, razor blades, razors and all other goods in this class

Class: 10  Dental floss and all other goods in this class

Class: 11  Lighting apparatus, water purifying apparatus and installations, and all other goods in this class

Class: 12  Bicycles, baby carriages, golf carts and all other goods in this class

Class: 13  All goods in this class

Class: 15  Musical instruments and all other goods in this class

Class: 17  All goods in this class

Class: 19  Building materials in this class and all other goods in this class

Class: 20  Furniture in this class, picture frames, and all other goods in this class

Class: 22  Tents, hammocks and all other goods in this class

Class: 23  Yarns, threads and all other goods in this class

Class: 29  Dairy products in this class, meat, fish and poultry in this class, fruit and vegetables in this class, and all other goods in this class

Class: 32  Beer, beverages in this class, and all other goods in this class

Class: 33  Alcoholic beverages in this class, and all other goods in this class

Class: 34  All goods in this class

Class: 35  Advertising services, business management services in this class and all other services in this class

Class: 36  Insurance and financial services and all other services in this class

Class: 37  Construction and repair services, including dry cleaning, laundering and shoe repair and all other services in this class

Class: 38  Telecommunications services and all other services in this class

Class: 39  Transport services and all other services in this class

Class: 40  Material treatment services, including development of photographic film, engraving and all other services in this class

Class: 42  Restaurant and hotel services and all other services in this class

All of these applications were duly examined. On  613717 the first adverse report issued on 14 July 1994; on 614492 the first adverse report issued on 2 August 1994; and on 616855 the first adverse report issued on 10 October 1994.    The trade mark applications therefore became liable for lapsing on, respectively, 14 October 1995, 2 November 1995 and 10 January 1996.  No submissions were filed against the examiners’ objections but on each of the applications, repeated extensions of time were applied for and allowed. 

In January 1996, the Trade Marks Act 1995 came into operation and pending trade marks were reassessed in terms of the new law. Further adverse reports were duly issued for 613717 614492 and 616855 advising Olympiad 2000 Pty Limited of the new state of the objections.  These reports said that, in view of new grounds of objection, a further 15 months was allowed before the trade marks lapsed.  613717 and 614492 were allocated a final date of 10 May 1998; 616855 was allocated a final date of 6 May 1998.

Olympiad 2000 Pty Limited continued to apply for extensions.  The following table shows the number of applications for further time, and the time that was allowed.

Request received	Time  requested	New final date for acceptance
April 1998	1 month	6 and 10 June 1998
June 1998	2 months	6 and 10 August 1998
August 1998	2 months	6 and 10 October 1998
October 1998	3 months	6 and 10 January 1999
December 1998	3 months	6 and 10 April 1999

When the December 1998 application for an extension of time was received by the Trade Marks Office the Registrar’s delegate indicated that the grounds set down in the declaration and relied upon to support the extension request, failed to satisfy the requirements of section 224 of the Trade Marks Act 1995.  She said, therefore, that she intended to refuse the applications for the extensions but she allowed 14 days in which Olympiad 2000 Pty Limited could apply to be heard.

On 21 January 1999, Mr Michael Vincent Bourke, manager and executive director of Olympiad 2000 Pty Limited, faxed to the Office a statutory declaration of the same date, attesting to his medical indisposition.  It was accompanied by a facsimile copy of a medical certificate.  In his declaration Mr Bourke stated

… on behalf of Olympiad 2000 Pty Ltd and under Sub-Section 224(3) of the relevant Act (relating to grounds for an extension under special circumstances), I apply for an extension of time in the matter of Trade Mark Applications Number 613717 614492 and 616855. My grounds for this application for extension are that I have been medically unfit to attend to my duties…

In order to expedite matters, the Company has engaged the services of Dare Concepts of Melbourne to assist in the final submissions for these Trade Mark applications and to negotiate with any interested parties. 

In light of the medical evidence, albeit only a copy of a certificate, and not a part of any declaration, the delegate decided to allow that extension.  The applications now stand with acceptance dates of 10 April 1999 for 613717 and 614492; and 6 April 1999 for 616855.  

Contrary to Mr Bourke’s assurance, no submissions materialised either from the applicant or from Dare Concepts of Melbourne.  Accordingly, on 27 January, in consideration of the length of time these trade mark applications had been pending, and in consideration of the fact that there had been no progress in overcoming any of the objections, the Registrar, as per the provisions of regulation 21.15, set these trade mark applications down to be heard.  The hearing was to be scheduled in Sydney in March of 1999. 

On 3 February 1999, the Office wrote to Olympiad 2000 Pty Limited summarising the position in respect of the outstanding and unaddressed objections; explaining that the Registrar intended to reject the applications; advising that a hearing in the matter would be scheduled for March; that the fee for appearing at the hearing is $300 but, that as an alternative to appearing at the hearing, the applicant could file written submissions.  In a subsequent telephone call, Mr Bourke requested, for reasons including his health, that Registrar postpone the hearing. The Registrar agreed.

On 1 April 1999, Olympiad 2000 Pty Limited applied for yet another 2 months’ extension of time on each of the three trade mark applications. This would take the time to 10 June 1999 for 613717 and 614492; and 6 June 1999 for 616855.  This application too was accompanied by a statutory declaration from Mr Bourke, wherein he again stated that he had been medically indisposed “as evidenced by an attached medical certificate” and as a result had been unable to attend to his duties as Manager and Executive Director of Olympiad 2000 Pty Limited.  Contrary to Mr Bourke’s statement, however, no medical certificate was attached.

On 16 April 1999, the Office advised Olympiad 2000 Pty Limited that these extension applications were not going to be allowed; that the hearing would be rescheduled for Sydney between 12 and 16 July 1999, and that in order to assess the extension properly, any medical certificate that the applicant relied upon to support the grounds for the extension should be provided, and properly appended to a declaration. In accordance with sub-regulation 21.15(3) Olympiad 2000 Pty Limited was given notice in writing of the time, date and place fixed for the hearing

One week before the July hearings, Olympiad 2000 Pty Limited requested that the hearing be delayed, the reason being Mr Bourke’s medical condition.  The Office replied as follows:

The hearing scheduled to be heard in Sydney on 15 July 1999 has been deferred.  The hearing will be re-scheduled for a time in the Sydney hearing session during the week of 11 October to 15 October 1999.   Should you file the hearing fee and request an earlier date, a hearing in Canberra can be arranged.  If you request a hearing in Canberra it is possible for you to be heard at the hearing by telephone. 

On 24 September 1999, the Office issued another set of formal hearing notices confirming the appointment of the hearing for 12 October 1999 in Sydney.

On 11 October 1999, the day before the hearing, Olympiad 2000 Pty Limited sought again to defer the hearing.   The reasons, filed in a facsimile signed by Mr Bourke, shortly stated, are as follows:

• Olympiad 2000 Pty Limited no longer had access to all relevant correspondence

• Mr Bourke had been incapacitated and unable to prepare for the hearing

• a barrister had only just been located and was not properly briefed

• the barrister had only limited time available to attend at the appointed time.

I advised Mr Bourke (by facsimile) that I intended to proceed with the hearing and determine the extension of time matter.  However, on further representations from Mr Michael Hall of counsel, and in order to allow Mr Hall (who acted on behalf of Olympiad 2000 Pty Limited) some time to familiarise himself with the facts of the case, I agreed to shift the time to 14 October.  However, as the Hearing Rooms in the Sydney Office were fully occupied with other matters, Mr Hall was obliged to make his submissions to me in the Canberra Office by conference phone.

The matter for decision

The law

The provisions governing the time in which a trade mark application is to be processed to acceptance, is governed by section 37. The relevant part of section 37 reads:

37.(1)   Subject to subsection (2), an application lapses if it is not accepted within the prescribed period or within that period as extended in accordance with the regulations.

Regulation 4.12 specifies the prescribed period.  So far as it is relevant to the current situation, that regulation reads:

4.12.(1)   For the purposes of subsection 37 (1) of the Act (which deals with lapsing), the prescribed period, for an application in respect of which a report is made under regulation 4.8, is:

(a)except as provided by paragraph (b) — 15 months from the date of that report (whether or not a further report is made under regulation 4.10); or

(b)   if a further report raises grounds under Division 2 of Part 4 of the Act for rejecting the application that were not raised in the report made under regulation 4.8 — 15 months from the date of the further report.

(2)   …

(3) An applicant may, before the end of a period prescribed in subregulation (1), or that period as extended under section 224 of the Act or as a result of a previous application of subregulation (4), request the Registrar in writing to extend the period.

(4)   The Registrar must, in accordance with a request made under subregulation (3), extend a period, unless:

(a)     the period; or

(b)that period as extended under section 224 of the Act or as a result of a previous application of this subregulation;

would be extended for more than 6 months after the end of the relevant period prescribed in subregulation (1).

[NOTES:  1. …

2. If a period prescribed in subregulation 4.12 (1) has been extended by 6 months, any application for a further extension of time must be made under section 224 of the Act.]

The advent of the Trade Marks Act 1995 during the time that trade mark applications 613717 614492 and 616855 were pending, required the Registrar to raise fresh objection in terms of the new law. In consequence, the provisions of regulation 4.12(1)(b) applied and the applications were accorded the new 15 month lapsing dates of 10 May 1998 for 613717 and 614492; and of 6 May 1998 for 616855. The provisions of regulation 4.12 provide that the Registrar must, in accordance with a request made in writing before the end of the prescribed 15 month period, allow an extension of the time for acceptance unless the time exceeds, in sum, 21 months. The note to regulation 4.12 indicates that any extension request for time beyond 21 months is to be dealt with under the provisions of section 224.

Section 224, so far as it is relevant to submissions concerning the present matter, reads:

224.(1) …

(2) …

(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) …

(5)  …

(6)  …

(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)   …

Olympiad 2000 Pty Limited bases its claim for an extension of time on the ground of special circumstance and relies therefore on section 224(3).

Submissions

Mr Hall’s first submission is directed to the intervention of the new legislation and the new time frames that were brought into operation once the objections were re-set in terms of the Trade Marks Act 1995.  He says that because of this circumstance, I should not regard the extension time as running from late 1995 (for 613717 and 614492) and early 1996 (for 616855).  From that base the current extension to June 1999 would bring the total extended time to a little over three years.  Mr Hall submits that because of the new objections, the extended time should be calculated from the new acceptance dates of early May 1998.  On that calculation the total extended time required is only 13 months.   13 months, he says, is a considerably less onerous time to justify than three years.

Mr Hall’s second submission is that part of this 13 months is the six months that the Registrar is obliged to permit under the terms of regulation 4.12(4). Taking that into account, the balance of seven months, he says, is not an excessive amount.

Mr Hall’s third submission goes to the adequacy of the reasons supporting the extension of time request. On being asked for reasons, Mr Bourke, he says, has provided them promptly.  He draws my attention to a number of letters from Mr Bourke to the Registrar, in which Mr Bourke provides reasons for the extensions. In a letter of 17 June 1996 addressed to Mrs Lil Crawford, Mr Bourke writes:

… As discussed with you by telephone, I have been ill and have been the person charged with the responsibility of sending this information to you. 

Mr Bourke attached to this letter a photocopy of a medical certificate apparently issued in May 1996, confirming that Mr Bourke was not able to do his usual work, but was likely to be able to work in some three to six months time.  A further letter referred to by Mr Hall is dated 15 October 1996 and addressed to Ms Elaine Bowbrick.  This letter applied for three months of extensions (to January 1997) and purported to enclose payment for the extensions (which apparently it did not) and a medical certificate (again which it did not). A copy of the medical certificate (dated 14 October 1996) was later submitted by facsimile transmission: sometime later the fee payments were also made good.  Mr Hall’s contention here hinges mainly, I think, on the submission that carriage of the Olympiad 2000 Pty Limited applications has been in the hands of Mr Bourke. He has suffered from ill health.  He is also inexperienced.  Mr Bourke, however, believes that his trade mark application has merit and, says Mr Hall, the limitations imposed by his health and lack of experience should not be allowed to stand in the way of Olympiad 2000 Pty Limited’s right to register its trade marks.

Mr Hall’s  fourth submission is a general plea that the subject marks have sufficient potential to overcome the grounds of rejection raised by the examiners. 

His last submission concerned a decision by Justice Burchett — Bourke v Companies Auditors & Liquidators Disciplinary Board and Australian Securities Commission (Federal Court NG 388 of 1997) (Bourke v Companies Auditors).  This case concerns the issue of natural justice, the refusal to adjourn where an unrepresented litigant (being Mr Bourke - the same Mr Bourke who is now manager and executive director of Olympiad 2000 Pty Limited) claimed to be too ill to attend, reliance on matter that the litigant had not had opportunity to address, and the dismissal of a substantial application without affording the applicant an opportunity to be heard.  Mr Hall referred me generally to this judgment, and submitted that the circumstances which satisfied Justice Burchett were parallel to the present situation, and I too should find that on account of Mr Bourke’s illness, the case for a further extension of time was made out.

Consideration

Taking Mr Hall’s submissions in turn.

§  In view of the directives of regulation 4.12(4), I have to agree with Mr Hall that the position presented in these extension of time applications is not simply the fact that Olympiad 2000 Pty Limited has had some four and a half years in which to deal with the objections to acceptance.  Those original objections were overtaken by the Trade Marks Act 1995 grounds for rejection, and the directives of 4.12(4) did bring in a new set of time limits – 15 months for submissions followed by 6 months of “easy” extension. The requirement to satisfy the provisions of section 224 then only operates as of November 1998.

§ Mr Hall’s second point is that, of the total extension time from May 1998 to June 1999, six months is provided as “easy” extension, and it is only in respect of the remainder (seven months) that section 224 must be satisfied. The five months already allowed under 224, he says, is not exceptional. I cannot agree. While I may not use the word excessive, it is clear to me that five additional months over and above the “easy” six month extension, is a very significant length of time. Extending this to seven months is well beyond the norm. It is an extension which prolongs the pending time of 21 months (provided per section 37 and regulation 4.12) by 33%. It is therefore a time that can only be allowed when it is justified by good and sufficient reasons that fully satisfy the requirements of section 224.

§  Mr Hall’s third submission argues for the adequacy of reasons supporting the Olympiad 2000 Pty Limited application for further time.  The support (as mentioned) is Mr Bourke’s 1 April 1999 declaration; and the ground is Mr Bourke’s ill health.  No medical certification was provided to support this ground of continuing medical conditions.  Neither was any declaratory evidence of the illness filed.  Furthermore, the 1 April 1999 declaration adds almost nothing to the information provided in the Bourke declaration of 21 January 1999  (filed to support the previous extension).   Indeed, for the most part the 1 April declaration is a word for word repetition of the 21 January document.  I do, however, acknowledge a hand-written insertion which modifies the second paragraph to read:

As a result of my indisposition, I have been unable to attend to my duties as Manager and Executive Director of Olympiad 2000 Pty Ltd in the past but am now in a position to have the Applications processed.

I might observe in passing that, so far as I can see, there is still no sign of any activity directed to addressing the outstanding trade mark objections.  Be that as it may, the Trade Marks Office letter of 16 April 1999 advised Olympiad 2000 Pty Limited that this extension was not being allowed and cited the inadequacy of the support.  This letter says that a hearing was being scheduled, and that in order that the hearing officer could properly assess the requests, the applicant should file any medical certificate that it intended to rely on.  Such certificates, moreover, would need to be properly appended to a declaration.

There is evidence that at times, during the prosecution of the succession of extensions, Mr Bourke has responded promptly to a number of official enquiries, and at times he has provided some evidence of his medical conditions.  However, this is nothing more than the responsibility that lies with an applicant.  And the fact that Olympiad 2000 Pty Limited has elected not to have professional assistance, is not a factor that can affect the matter one way or another. 

The relevant point is that Olympiad 2000 Pty Limited has not made good a shortfall in the support that it ought to have provided for the present extension applications. In the circumstances, I find that the reasons set down in the application for this extension of time on trade mark applications numbers 613717 614492 and 616855 are not adequate.  I am not of the opinion that special circumstances exist, and I cannot agree with Mr Hall that the further extensions of time sought, are justified.

§ In respect of Mr Hall’s fourth point, I note that marks of this kind have, in the past, succeeded. They may well do so again. A prospect that the subject trade marks may be registrable, however, is not a special circumstance for the purpose of section 224. It may be an ameliorating factor if one small point is needed to confirm or confound a finding. In the present situation, however, where the onus to justify the extension is heavy, and the shortfall in justification wide, this factor is of negligible weight.

§  Mr Hall’s last submission concerns Bourke v Companies Auditors (supra). The circumstances in that case, however, I find to be quite different from the present.  It concerned an appeal from a decision of the Administrative Appeals Tribunal. In the transcript of the Tribunal proceedings the Deputy President of the Administrative Appeals Tribunal is recorded as saying:

My associate received a telephone call this morning from Mr Bourke.  He said that he had a gastric attack and that he would be unable to attend today.  In view of the history of this matter, and in view of his non-appearance before the Board … and his failure to attend on a number of other occasions, I do not propose to accept his excuse in the absence of any corroborating medical evidence.  No such corroborating evidence was offered, so I propose to proceed in his absence.

Justice Burchett found however, that there was good reason for the Tribunal hearing not to have proceeded.  He found that a number of undertakings (given to Mr Bourke by telephone) had not been complied with. These included an assurance that the Securities Commission would not actively pursue the strike out of an application made by Mr Bourke, and an assurance that the Deputy President would be notified of Mr Bourke’s telephone call.  Further, the Deputy President was not told that Mr Bourke wished to participate in the hearing by way of a telephone link-up. His Honour found that Mr Bourke was denied the opportunity to argue his case. Further:

Although the Deputy President dealt with the matter on the merits, he also gave weight to what he perceived as past failures to comply with directions, which in his view provided a reason for denying any adjournment and dealing with the matter at once “in the absence of any corroborating medical evidence.”  To the extent that this approach purported to exercise powers contained in s42A, it involved a further denial of natural justice, since the applicant had never been called upon to answer any charge of that kind.  … Medical corroboration was never sought, and the applicant was effectively denied the opportunity to procure its immediate transmission by facsimile to the Tribunal.

The present situation is quite different.  The matter for assessment is the current application for the additional time of two months from 10 and 6 April 1999 to 10 and 6 June 1999.  Olympiad 2000 Pty Limited was advised in April 1999, that probative medical evidence was needed to support the current extension requests.  It was also advised of its right to appear at the hearing or to file written submissions and, in accordance with the provisions of regulation 21.15, it has had the appropriate notice of the time, date and place of the scheduled hearing. In order to accommodate Mr Bourke, two adjournments of the hearing session have been allowed … the second of these being sought only on the eve of the appointed day. And in the long term, when the hearing finally took place, Olympiad 2000 Pty Limited was indeed represented.  

A further difference is the nature of the proceedings.  The Administrative Appeal Tribunal was dealing with Mr Bourke’s late filing of a triennial statement associated with his registration as a liquidator. On the face of it, this matter essentially concerned only Mr Bourke. This extension matter, on the other hand, concerns three trade marks which in sum cover all of the 42 classes of goods and services, with extensive claims in each class and they have been pending since October 1993. Clearly, their unresolved status has significant potential to affect other traders adversely.   

I do not find, therefore, that Mr Bourke’s success in his appeal from the Administrative Appeals Tribunal assists Olympiad 2000 Pty Limited in its present attempt to extend the acceptance dates on 613717 614492 and 616855 to seven months beyond the “easy” six months of additional time allowed under the provisions of regulation 4.12.

Finally, I note some written submissions filed by Mr Bourke on behalf of Olympiad 2000 Pty Limited, in which there is an indication that Mr Bourke is negotiating some business matters with SOCOG[1].  The nature of this business is only obliquely mentioned, and the degree of progress that might have been achieved is quite unknown.  The relevance of such negotiations to the fate of the present applications has not been shown.  I am not prepared to give this material any weight at all.

[1] Sydney Organising Committee for the Olympic Games

Decision

On the basis of the grounds and evidence filed by Olympiad 2000 Pty Limited for two months of extensions to 10 June 1999 (for 613717 and 614492) and 6 June 1999 (for 616855) in which to prosecute the applications, and having considered the submissions put to me by Mr Hall, I am not of the opinion that any special circumstances have been shown to exist that would justify the grant of these extensions.

I therefore refuse the applications for the extensions of time now sought on these three trade mark applications.  In accordance with the provisions of section 37, trade mark applications numbers 613717 614492 and 616855 are now lapsed. 

Helen R. Hardie
3 November 1999