Omega SA (Omega AG (Omega Ltd) v Mark and Brenda Robinson

[2011] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by Omega SA (Omega AG) (Omega Ltd.) to registration of trade mark applications 1298301 OMEGAGLYCAN; 1298303 OMEGASPELLING; 1299165 OMEGAPLEX; 1299637 OMEGAHONEY; 1300243 PLX (and Omega Device); 1300313 OMEGACHEF & 1300317 OMEGAHONEY - filed in the name of Mark and Brenda Robinson and an application by Omega SA (Omega AG) (Omega Ltd.) for extension of time to serve evidence in support.

Delegate:

Heath Wilson

Representation:

Opponent: Peter Hallett of Watermark Patent and Trade Mark Attorneys

Applicant: Mark Robinson and Brenda Robinson

Decision:

2011 ATMO 29

Regulation 5.15: extension of time to serve evidence in support - reasons insufficient – application for extension of time to serve evidence in support refused.

Background

1. On 7 and 9 December 2009, Omega SA (Omega AG) (Omega Ltd) (‘the opponent’) filed seven applications for an extension of time under Regulation 5.2 of the Trade Marks Regulations 1995 (‘the Regulations’) to file notices of opposition in relation to the following trade mark applications:

   1298301: OMEGAGLYCAN

   1298303: OMEGASPELLING

   1299165: OMEGAPLEX

   1299637: OMEGAHONEY

   1300243:

   1300313: OMEGACHEF

   1300317: OMEGAHONEY

   (Hereafter ‘the trade marks’)

2. The recorded owners of these are Mark and Brenda Robinson (‘the applicants’) and the specifications of those trade marks consist of various goods and services in classes 3, 25 and 41.

3. The opponent was granted the extension of three months and filed notices of opposition nominating every available opposition ground under the Trade Marks Act 1995 (‘the Act’). Subsequently, the opponent applied under Regulation 5.15 for a 3 month extension of time to serve evidence in support for each of the above oppositions. The opponent’s supporting declarations stated that:

   The Opponent is in the process of assembling and compiling the necessary materials which will form the basis of its evidence but requires more time to collate these materials and prepare the necessary statutory declaration.

4. Those extensions were granted, and on or around 30 August 2010, the opponent applied for a second 3 month extension of time in which to serve evidence in support for all the oppositions. The stated reasons for this extension were:

   A draft declaration which will form the basis of the Opponent’s evidence in support has been forwarded to the Opponent for review.

   The Opponent has now compiled additional materials for inclusion in the declaration and is in the process of forwarding these materials to our office.

   Further time is required to amend and forward the declaration to the Opponent, and to serve upon the Applicants.

5. That extension of time was also granted for each opposition. In December 2010, the opponent requested a third extension of time to serve evidence. This extension request referred to a meeting between the opponent and its Australian legal representative concerning involvement in a number of trade mark oppositions with the applicants:

   …Omega made it clear that it is extremely difficult to obtain evidence in support for so many oppositions across so many different classes. However, a draft declaration which will form the basis of Omega’s evidence in support of its opposition has been prepared and forwarded to Omega for review. The exhibits to the declaration have been prepared. We are awaiting receipt of the signed declaration from Omega.

6. In addition, the opponent’s lawyers made reference to possible settlement negotiations with the applicants and a draft settlement proposal which had also been sent to the opponent for review. I note that the option to negotiate with the applicant has only been mentioned in the opponent’s most recent extension of time application.

7. If granted, the time allowed to serve the evidence in support would extend to 4 March 2011 (for trade mark application nos. 1298301 and 1298303), 10 March 2011 (1299165), 15 March 2011 (1299637) and 16 March 2011 (1300243, 1300313 and 1300317).

8. The applicants objected to these extensions of time and their response highlighted the history of the opposition matters between the parties, the pattern of the opponent’s conduct, the lack of any negotiations to date and the applicant’s clear refusal to negotiate presently or at any time in the future.

9. Following the objection from the applicants, a delegate of the Registrar wrote to both parties on 10 January 2011 indicating that she intended to refuse the opponent’s application for extension of time while, per s203, providing an opportunity for the opponent to be heard. In the delegate’s view, the reasons given in the opponent’s supporting statutory declaration were not compelling.    

10. The opponent requested to be heard on the matter of the extension of time and paid the requisite fees. The applicant was also given the opportunity to appear and elected to do so, paying its hearing fees.    

11. As the delegate of the Registrar of Trade Marks for this opposition hearing, I made directions for written submissions from the parties to be filed and served prior to the hearing. The opponent produced a draft statutory declaration of the proposed evidence in support and submitted that:

    The bulk of the Opponent’s evidence is well-advanced….This draft is provided … for the purpose of showing that significant progress has been made towards finalising the Opponent’s evidence…

12. The opponent made clear that the draft declaration did not constitute official evidence for the above oppositions.  The applicant also provided written submissions to be considered for the hearing.

13. On 18 March 2011 I heard the oppositions in Canberra and the applicant and opponent both attended via telephone. Peter Hallett of Watermark Patent and Trade Mark Attorneys appeared on the opponent’s behalf and Mark and Brenda Robinson were the self-represented applicants.

The Law

Reg 5.15 of the Regulations relevantly provides:

Extension of period to serve evidence and service of further evidence

(1)A party to the opposition proceedings may apply to the Registrar:

(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

(b)for permission to serve a copy of further evidence on the other party.

(2)The Registrar may grant an application on reasonable terms specified by the Registrar.

(3)The Registrar must not grant an application unless the Registrar:

(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

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

(c)is reasonably satisfied that:

(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and

(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;

is appropriate.

Reasons

1. In this case the onus is on the opponent, as the person applying for the grant of extension of time to satisfy the Registrar that the extension of time is appropriate under regulation 5.15. Part 51 of the Trade Marks Office Manual of Practice & Procedure (‘Manual’) relevantly sets out the benchmarks of the maximum acceptable time for serving evidence:

• Evidence in support – 9 months from the date on which the notice of opposition is filed.

• Evidence in answer – 9 months from the date on which the applicant was served with all, or the balance of, the opponent’s evidence or from the date set by the Registrar for service of evidence in answer.

• Evidence in reply – 6 months from the date on which the opponent was served with all, or the balance of, the applicant’s evidence.

1. Extensions for the purpose of preparing evidence in support are therefore within the acceptable benchmark up to 9 months from the date of filing a notice of opposition. Each application for extension is assessed on its own merits, however, the requirements for the person requesting the extension of time become progressively more onerous for later extensions. If granted, the period of time for serving evidence in these matters would be twelve months from the notice of opposition. 

2. The Manual also sets out possible compelling reasons that prevented a party from serving its evidence in time:

• An error or omission by an employee of IP Australia.

• An error or omission on the part of the extension applicant, or its agent.

• Special circumstances.

1. The considerations that have been taken into account in previous decisions[1] can be summarized as: Whether a good reason has been provided for the extension, the time that already been allowed to serve the evidence, the interests of the respective parties and the public interest.

   [1] See Lyons (t/a Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 78 FLR 217; 1IPR 416; Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 49 FLR 44; 33 ALR 144.

2. It is evident from the reasons provided for extensions of time thus far, that little or no progression has occurred past the preparation of a draft statutory declaration. On 30 August 2010, a draft declaration had been forwarded to the opponent for review. Seven months later, the opponent has still not finalised that declaration and served it on the applicant. This lengthy period of time should have been sufficient to produce some evidence at least, regardless of the difficulty in preparing for many opposition matters. The opponent’s reasons are far from compelling. 

3. The requested extension of time expired for each of the trade marks prior to the parties being heard on 18 March 2010. No evidence has been produced and no additional compelling reasons were given for that delay at the hearing. The opponent’s attorney could not give any assurance that evidence would be provided if further extensions were granted, or indeed any indication that it would be served at all in the near future. I do note that on 15 March 2011 further applications for extensions of time were filed by the opponent reiterating the reasons for the previous extension, referring to this hearing and declaring:

   …the opponent requires further time to provide certain additional information that is needed in order to finalise the declaration.

4. In a similar situation involving these parties, the Hearing Officer in ‘Omega Kids[2]’  also relevantly noted (at 32):

   …Mr Hallett stated that the preparation of the opponent’s evidence in support was well-advanced and that he did not anticipate that any further extensions of time would be required…the final dates for the extensions have now passed without the serving or filing of any of this much vaunted ‘well-advanced’ evidence.

   [2] Omega SA (Omega SA) (Omega Ltd) v Mark Robinson and Brenda Robinson [2010] ATMO 95.

5. The applicant referred to the history of trade mark oppositions involving the opponent and the applicant in relation to previous oppositions to extensions of time to serve evidence in support (“Omegabee”[3], “Omegakids” and “Omegachef”[4]). Each case is determined on its own facts, but it is worth noting that in the latter two decisions (to which the current facts bear striking similarities) the opponent was refused its extension of time to serve evidence in support.

   [3] Omega SA v Mark & Brenda Robinson [2010] ATMO 23.

   [4] Omega SA (Omega SA) (Omega Ltd) v Mr Mark Robinson and Ms Brenda Robinson [2011] ATMO 16.

6. Mr Hallett made submissions regarding another opposition under section 52 involving the parties which had also been heard recently. He submitted that due to matters arising from the substantive hearing, further evidence would need to be provided regarding the applicant’s lack of intention to use these trade marks under section 59. It was not explained what that evidence might comprise, and the matters involve different trade marks. A lack of intention to use one trade mark does not necessarily establish the lack of intention to use another. I cannot be satisfied that this is a compelling reason sufficient for this extension to be granted.  

7. In the event the extensions are not granted, the only disadvantage highlighted by the opponent is that it will be unable to rely on evidence in support for the substantive hearing.  If this were a genuine concern, I believe that by now it would have, as do most opponents, attended to producing material in a judicious manner. This is not the case here. I find this disadvantage to the opponent to be minimal. The opposition may still succeed under a ground of opposition which does not necessarily require evidence in support. Conversely, the applicants have submitted that the delays have adversely affected their interests, in terms of their marketing and business commitments.

8. Mr Hallett further argued that there is a public interest in ensuring the Register remains free of trade marks that ought not to be registered. As a general statement, this is true, but it is not pertinent at this stage of the proceedings. That submission presumes that these are trade marks that ought not to be registered and that the opponent has a strong case for opposition. Neither of these propositions can be tested here. In addition, as an opposition under section 52 may succeed without the provision of evidence in support that argument carries even less weight.  

9. The overriding public interest at this point is to ensure that trade mark opposition matters are dealt with in an efficient and equitable fashion. This consideration is outlined in Part 51.3 of the Manual which states: 

   In the interests of natural justice each party to an opposition should be allowed a reasonable amount of time to prepare and serve its evidence. However there should be some predictability about how long the evidence stage of an opposition is likely to take.  There is a public interest in the trade mark register being administered efficiently and trade mark disputes decided as quickly as possible.

10. In making this decision, I have carefully considered the opponent’s reasons for the extension, the time already allowed, the interest of the parties involved, the public interest and the opponent’s previous omissions relating to serving evidence in a punctual fashion.

Decision

1. I am not satisfied that the extensions of time are appropriate. I therefore refuse the opponent’s applications for an extension of time to serve evidence in support for each of the subject oppositions. The hearing of this extension of time matter was set down at the instigation of the Trade Marks Office and the usual rule of “costs follow the event” is therefore not applicable. I make no award of costs.

Heath Wilson

Hearing Officer

Trade Marks Hearings

31 March 2011