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

[2010] ATMO 95

TRADE MARKS ACT 1995

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

Re:Opposition by OMEGA SA (OMEGA SA) (OMEGA LTD) to registration of trade mark application 1234736 (16) and 1252449 (16) - OMEGACHEF and OMEGAKIDS WITH DEVICE - filed in the name of Mark Robinson and Brenda Robinson and applications by Omega SA for extensions of time to serve evidence in support.

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Peter Hallet of Watermark Patent and Trade Mark Attorneys Applicant: Mr Mark Robinson represented himself
Decision:	2010 ATMO 95 Regulation 5.15:  applications for extension of time to serve evidence in support – Registrar’s intention to refuse – opponent’s reasons for requesting the extensions are not sufficient – applications refused.

Background

1. On the 22 May 2009 and 19 May 2009, after requesting and being granted extensions of time for the purpose, Omega SA (OMEGA SA) (OMEGA LTD) (‘the opponent’) filed Notices of Opposition (‘the Notices’) to the registration of trade mark applications 1234736 and 1252449. Current details of the two applications appear below:

   Trade mark:  OMEGACHEF

   Trade mark application:      1234736

   Filing Date:  13 April 2008

   Specification:  Class 16: Paper, cardboard and goods made from these materials including paper party decorations, paper party supplies, paper napkins, paper place mats, coasters, gift wrapping paper and ribbons, paper table cloths and party bags, bags for microwave; printed matter including children's activity books, children's story books, comic books, cook books, recipe books, recipe cards, newsletters, magazines, newspapers, book marks, book covers, loose leaf binders, stationery type portfolios, bookbinding material including spiral band notebooks, note pads or writing pads, posters, postcards, greeting cards, stationery packs consisting of writing paper, envelopes, stickers and stamps; photographs; stationery; paint brushes; artists materials; instructional and teaching material (except apparatus); plastic materials for packaging

   Trade mark:  

   Trade mark application:      1252449

   Filing Date:  21 July 2008

   Specification:  Class 16: Paper, cardboard and goods made from these materials including paper party decorations, paper party supplies, paper napkins, paper place mats, coasters, gift wrapping paper and ribbons, paper table cloths and party bags, bags for microwave; printed matter including children's activity books, children's story books, comic books, cook books, recipe books, recipe cards, newsletters, magazines, newspapers, book marks, book covers, loose leaf binders, stationery type portfolios, book binding material including spiral band notebooks, note pads or writing pads, posters, playing cards, postcards, greeting cards, stationery packs consisting of writing paper, envelopes, stickers and stamps; photographs; stationery; paint brushes; artists materials; instructional and teaching material (except apparatus); plastic materials for packaging

2. The Notices claim all possible grounds allowed for by the Trade Marks Act 1995 (‘the Act’).

3. At the end of the initial statutory three month periods (22 August 2009 and 19 August 2009 respectively), the opponent filed applications for extensions of time of three months under the provisions of regulation 5.15 of the Trade Mark Regulations 1995, in which to file and serve its evidence in support of the oppositions.  The reason given in both cases was that the opponent was in the process of compiling the materials and information necessary to prepare the declaration which would form the basis of the evidence in support.  The applications were granted.

4. On the 17 and 18 November 2009 the opponent again applied for subsequent three month extensions of time in each opposition stating that it required the additional time because draft terms of settlement had been prepared and forwarded to the opponent for review before the settlement offer would be made to the applicant. The opponent stated that if settlement of the matters was not possible the opponent would require additional time to collect, file and serve its evidence in support. The applications were granted.

5. On 12 February 2010 the opponent made its third request for extensions of time in the oppositions. The opponent stated that it had forwarded a settlement offer to the applicants but that on the 19 January 2010 they received correspondence from the applicants advising that they were not interested in pursuing settlement discussions. In view of the applicants’ response the opponent stated that it had commenced preparation of its evidence in support and that the materials were well advanced.

6. However, it also stated that the opponent’s senior management, including all persons who were authorized to sign declarations on its behalf, were in Vancouver as the opponent was the official timekeeper of the Winter Olympic Games. This meant that it was not possible for the opponent to finalise its evidence until after the Winter Olympic Game had concluded on 28 February 2010. Therefore, the opponent required the additional time to serve and file its evidence in support.

7. The applicant objected to the opponent’s requests for extensions of time stating that the opponent had already been granted a number of extensions of time and had not filed any evidence in that time and that the requests had been filed outside the due date and should be rejected for these reasons. All of the applicant’s submissions were considered and the delegate of the Registrar advised the opponent that she intended to refuse the opponent’s extension of time requests. The opponent was given an additional 14 days in which to provide additional submission to support its requests.

8. The opponent and the applicant both provided additional submissions on the extension of time requests. On 25 February 2010 the delegate considered all the submissions before she determined that it was appropriate to grant the extensions of time. However, the opponent was warned at the same time that the Registrar was unlikely to grant any further extension of time unless very compelling reasons were provided.

9. Finally, on the 17 and 14 May 2010 the opponent requested a fourth extension of time on the oppositions. The reasons for the requests in respect of opposition to application 1234736 were as follows:

1. The identical reasons were also provided in support of the opponent’s request for an extension of time in relation to trade mark 1252449. The delegate advised that she considered the reasons provided were insufficient and that she intended to refuse the opponent’s requests for extensions of time. As would be expected, the applicant also objected to the opponent’s requests.

2. The opponent requested to be heard on the matter. As well as requesting a hearing, the opponent provided additional reasons in support of its extension of time requests but these did not persuade the delegate that the extensions of time should be granted. The opponent was given until close of business on Friday 7 June 2010 in which to pay the appropriate hearings fees which had not accompanied its hearing requests. 

3. The hearing fees were paid and I was delegated to hear and decide the matter. The parties came before me in Canberra on Thursday 8 July 2010. Mr Peter Hallett of Watermark Patent and Trade Mark Attorneys of Melbourne appeared for the opponent by telephone conference. Mr Mark Robinson and Ms Brenda Robinson represented themselves at the hearing by telephone conference. I note here that this matter is strictly between the Registrar and the opponent but the applicant is afforded the opportunity to represent its interests.

4. I must now decide whether to grant the current extension of time application, the consequence of which will be that the statutory declarations of Peter Stierli (filed 28 June 2010) and Sean Emmet McGuire (filed 5 July 2010) will have been served and filed within the allowed time. If I decide not to grant the extension of time, the opponent will have lost its chance to provide any evidence in support of its oppositions.

   Legislative background and procedural framework

5. Provisions for the service and filing of evidence in support of an opposition are governed by the Regulations.  Regulation 5.7 provides:

   Reg 5.7.  Evidence in support

   (1) If the opponent intends to rely on evidence in support of the opposition, the opponent must serve a copy of the evidence in support on the applicant within 3 months from the day on which the notice of opposition is filed.

   (2) As soon as practicable after the opponent serves a copy of the evidence in support on the applicant, the opponent must file with the Registrar: 

   (a) the original evidence; and

   (b) a statement setting out the date, place and manner of service of the copy of the evidence on the applicant.

6. Regulation 5.15 provides:

   Reg 5.15.  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.

   (4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

   (5) If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

   (6) Subregulations (2), (3) and (4) apply to an application under subregulation (5). 

7. The regulations make it clear that while a party may apply for extensions of the time periods allowed for the service and filing of evidence, the Registrar has a discretion in deciding whether or not to grant such an application. However, there is no such discretion unless the Registrar is reasonably satisfied that the other party to the opposition has been served a copy of documents relevant to the application and that both parties have been given a reasonable opportunity to make reasonable representations in respect of the matter.  In addition to those factors, the Registrar must be reasonably satisfied that the extension of time is appropriate.

8. Given the facts of this case, what remains for me to decide is whether I am reasonably satisfied that it is appropriate to extend the time for serving and filing the opponent’s evidence in support from 22 May 2010 until 22 August 2010 and from 19 May 2010 until 19 August 2010 respectively.  

   The Registrar’s benchmarks for extensions of time for serving evidence

9. In their objections to Omega’s fourth application for an extension of time, the applicants referred to the matter of the Registrar’s published ‘benchmarks’ for the amounts of time to be allowed to a party during the opposition process.  A copy of the ‘benchmarks’ may be found as Part 4 of the official extension of time application document provided by IP Australia. Part 4 is reproduced below:

   Part 4  Maximum time likely to be allowed to prepare evidence

   The Registrar’s benchmarks for the maximum time likely to be allowed to prepare evidence are as follows:

   1.  Evidence in support

   ·   9 months from date notice of opposition was filed

   2.  Evidence in Answer

   ·   9 months from date applicant received opponent’s evidence

   3.  Evidence in reply

   ·   6 months from date opponent received applicant’s evidence

   A request for an extension which is within the relevant benchmark must be based on an explanation of what has been done thus far in evidence preparation and what is proposed to be done within the extended period.

   Extensions that will take the time beyond the benchmark for the respective evidence stage may be granted on a case by case basis but only if there are compelling reasons to do so.  IP Australia considers compelling reasons to be:

   ·   error or omission by an employee of IP Australia; or

   ·   error or omission by the person applying for the extension of time, or by the person’s agent; or

   ·   special circumstances

   The meaning of ‘special circumstances’ is strictly confined.  It may           be a special circumstance if the evidence has already been served        but after the due date

   A request for an extension beyond the benchmark must be supported by a full and frank disclosure of all the relevant facts.  It is highly unlikely that any more than one such extension will be granted.

10. Additional information about the benchmarks may be found in the Trade Marks Office Manual of Practice and Procedures at Part 51, paragraph 3.3: 

    3.3  Duration of extensions

    The regulations applying under the Trade Marks Act 1995 give the other party to an opposition the right to make representations about the extension sought. This may assist the Registrar’s delegates in assessing the case made.

    Nonetheless, the onus remains on an applicant for an extension to make a case for the time sought.  The Trade Marks Office has set some benchmark limits to the accumulated time of these extensions. Such limits are not absolute but are intended for the guidance of applicants and their representatives. [emphasis added]

    These limits have been and will be reviewed from time to time.  In 1994 the Trade Marks Office lowered the comparable limits under the 1955 Act. This was done to reflect the generally shorter time required to prepare evidence because of the wider use of facsimile transmissions to revise draft declarations, to serve evidence or to seek information. Such improvements in communication have continued and the benchmarks applied under the 1995 Regulations have been set with this in mind.

    The benchmark time limits generally correspond with the times at which the Registrar requires the applicant for extension to support its applications in declaratory form.  They are as follows:

    ·   Evidence in Support or in Answer:  Where the statutory three months, together with the extensions sought, amount to nine months or more in total, the Trade Marks Office will put both parties to an opposition on notice that compelling reasons will be required if further extensions are requested.  . Applications for extensions of time beyond a total of twelve months should indicate when the process is intended to be completed. These benchmark limits may be extended by six months if negotiations are involved.

    ·   Evidence in Reply: Generally speaking, because such evidence is intended to be a reply to a known body of declarations, it can be expected to be easier to compile than was the evidence served in the earlier stages. Under the Trade Marks Act 1995, the benchmark limit for service of evidence in reply is set at a shorter time than that for evidence in support or in answer. Consequently, a warning will issue where the total sought, including the statutory period, is six months or more. Extensions beyond a total of nine months should indicate when the process is intended to be completed. These benchmark limits may be extended by three months if negotiations are involved.

    Reasons

11. Omega’s evidence in support was initially due on 22 and 19 August 2009.  A full twelve months has elapsed since that time, meaning that Omega has already had 12 months in total to put together its evidence in support.  Allowing the latest application will bring that total (including the original statutory three month period initially allowed) to 15 months. 

12. In the first 12 months, no evidence was filed or served by the opponent. I note that the opponent and the applicant are engaged in another opposition proceeding in relation to trade mark no. 1210786 for the word trade mark OMEGABEE. This is an unrelated opposition proceeding, which the applicant drew to my attention in his hearing submissions. The extension of time decision issued by Hearing Officer Windsor on 26 March 2010 on the matter is a matter of public record.

13. I note that the opposition proceedings in regards to trade mark 1210786 involve exactly the same parties and that the opponent had the same legal representatives at the earlier hearing before Hearing Officer Windsor. Given these facts, I am satisfied that the opponent was made aware of the Registrar’s benchmark time frames on 15 January 2010 or by 26 March 2010 (when the earlier extension of time decision was issued[1]) at the latest.

    [1] Omega SA v Mark & Brenda Robinson [2010] ATMO 23 (26 March 2010)

14. The third extension of time requests dated 12 January 2010 were filed on the basis that opponent was still proposing to negotiate a settlement with the applicant.  Paragraph 7 of the declaration accompanying the application states “we have prepared draft terms of settlement and forwarded them to the Opponent for its review.  …  In the circumstances, further time is required to enable the opponent to progress this matter.” 

15. Two days later, the opponent had received its settlement document from its head office, provided it to the applicant, and was waiting for a response. On 19 January 2010 the applicant rejected the offer and notified the opponent that it refused to negotiate. On 25 February 2010, a letter issued from the Office advising that the extensions of time were to be granted on the basis that:

    ·     On 19 January 2010 the opponent became aware that the applicants were not interested in pursuing settlement negotiations.

    ·     The opponent had commenced preparation of the evidence in support and “the materials are well advanced”.

    ·     The opponent’s senior management, including those who are authorised to sign the declarations that will make up the evidence, were currently in Vancouver for the Olympic Games. Therefore the evidence could not be finalised until after the Olympic Games have concluded on 28 February 2010.

16. I note that the opponent was also warned at this stage that it was unlikely the Registrar would grant any further extension of time unless very compelling reasons were provided. I am far from impressed with the opponent’s submissions in support of its current extension of time requests. The further reasons in support of these extension of time requests match those argued earlier before Hearing Officer Windsor and I note her decision at paragraph 29:

    I am concerned that Omega relies so much on its claim that it has a small trade marks group at its head office to deal with a large portfolio of trade marks.  This is undoubtedly a fact, and business as well as government is well aware of the strictures that income and efficiency places on staffing levels.  The onus is on an opponent to pursue an opposition in a timely and efficient manner.  It is simply not a good enough reason to claim that there are not enough staff to deal with the work that has to be done.  Nor is it a sufficient excuse that the opponent company had other commitments than dealing with this opposition which it claimed prevented it dealing with this matter in a timely manner.  A company of Omega’s stature would be expected to be able to organize itself appropriately to deal with multiple matters at the same time.

17. I am in agreement with Hearing Officer Windsor on this point. The opponent’s behavior in these opposition proceedings has been far from exemplary and the reasons for its continual requests for extensions of time are not satisfactory. Given that the opponent had received this warning and the earlier extension of time decision for trade mark no. 1210786, the opponent should have been aware that further extensions of time were unlikely to be granted unless there were very compelling reasons for doing so.

1. The opponent has not provided any compelling reasons which would satisfy me it was appropriate to grant its extension of time requests. Instead, it appears that the opponent has taken a haphazard approach to these oppositions with the anticipation that the Registrar will simply continue to grant extension request after extension request. The opponent’s submissions document very limited progress in the gathering of its evidence particularly in the face of warnings from the Office and Hearing Officer Windsor’s comments in her earlier decision. 

2. I note the filing of two statutory declarations from the opponent purporting to form part of its evidence in support. This raises another issue since it appears to me that the opponent is taking for granted that if it files some part of its evidence in support, the Office will be more likely to approve an extension of time which is outside the Registrar’s benchmark. While there may be some validity in this supposition if the evidence provided is relevant and of good quality, the evidence filed on 28 June 2010 does not fit into this category.

3. The statutory declaration of Mr Sean Emmet McGuire filed 5 July 2010 was made to certify that the statutory declaration of Mr Peter Stierli (‘the Stierli declaration’) contained in annexure SEM-2 is a true copy. The Stierli declaration was evidence that the opponent filed and served in relation to the trade mark opposition proceedings for trade mark no. 1210786 on 7 April 2010. Therefore, this material has obviously been available to the opponent prior to making its extension requests and it could have been filed much earlier. Indeed, the opponent has indicated previously that the evidence would be finalised once the Olympic games had concluded at the end of February. A number of months have passed since that time.

4. However, in making my decision on this matter, I must consider what will be the reasonable course of action in the particular circumstances of the case. I am aware that the Registrar considers it appropriate for parties to an opposition to negotiate in the hopes of reaching a mutually beneficial solution, and that she is prepared to allow more time for this process to be completed. I am also aware that the parties need to be open and frank in their disclosures during the process.  If a settlement could have been reached in this case, it may well have finalised several oppositions, including those being dealt with here.

5. While the opponent can claim that since it has opposed more than ten of the applicant’s applications the negotiation process had taken precedence over any evidence gathering I am not satisfied the opponent has approached these oppositions with the seriousness which is warranted. The opponent has been aware of the applicant’s refusal to negotiate since 19 January 2010. Since that time the opponent has been warned that it should act with diligence and complete its evidence as a matter of urgency. This has not occurred. The opponent has been dilatory in dealing with these matters and it is only appropriate that it now reap the rewards of its actions.

6. At the hearing Mr Hallet 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. I have taken note of this fact, and also of the fact that the final dates for the extensions have now passed without the serving or filing of any of this much vaunted ‘well-advanced’ evidence. 

   Decision

7. I am not satisfied that, on the circumstances of these cases, it is appropriate to allow the extensions of time. Therefore, I refuse the extensions of time until the 22 August 2010 and 19 August 2010 to serve evidence in support of trade mark numbers 1234736 and 1252449.

   Bianca Irgang
   Hearing Officer
   Trade Marks Hearings
   24 September 2010