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

[2011] ATMO 16

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 1234735(21) - OMEGACHEF - filed in the names of Mark Robinson and Brenda Robinson and an application by Omega SA (OMEGA SA) (OMEGA LTD) for extension of time to serve evidence in support.

Delegate:	Debrett Lyons
Representation:	Opponent: Mr Peter Hallet of Watermark Patent and Trade Mark Attorneys Applicants: Mr Mark Robinson and Ms Brenda Robinson
Decision:	2011 ATMO 16 Regulation 5.15:  application for extension of time to serve evidence in support – Registrar’s intention to refuse – opponent’s reasons for requesting the extension  not sufficient – application refused.

Background

1. Mark Robinson and Brenda Robinson (‘the Applicants’) have applied for registration of the trade mark OMEGACHEF in class 21.

2. Following examination, the trade mark application was accepted and advertised on 20 August 2009 in the Official Journal of Trade Marks for possible registration in respect of the following goods:

   Cookware of all types in this class; pots, frying pans, boiling pans, saucepans, baking and casserole dishes, serving dishes, kitchen utensils.

3. On 16 February 2009, after requesting and being granted an extension of time for the purpose, Omega SA (OMEGA AG) (OMEGA LTD)(sic)[1] (‘the Opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), opposing registration of the trade mark.

   [1] Omega SA (a French rendering of the company name) is also known as Omega AG when rendered in German and Omega Ltd in English.  The three versions of the company name reflect that there are three languages spoken in Switzerland where Omega is based.

4. At the end of the initial statutory three months for serving evidence in support[2] of the opposition, the Opponent sought and was granted a three month extension of time on the basis that declaratory evidence was being prepared.

   [2] in the interests of brevity, I will not refer, from this point on, to the fact that what is actually served is a copy of the evidence in support

5. Subsequently, first on 13 August 2010 and then again on 16 November 2010, the Opponent sought additional three month extensions, giving essentially the same reason as before.  IP Australia wrote to the Opponent on 29 November 2010 indicating its intention to refuse the 16 November application for more time (‘the Application’).  That letter also gave the Opponent the opportunity to be heard.

6. The Opponent asked to be heard and the matter came before me, Mr Debrett Lyons, for hearing in Canberra on 1 February 2011.  Both parties relied solely on oral submissions made to me by telephone that day.  Mr Peter Hallett of Watermark Patent and Trade Mark Attorneys appeared for the Opponent.  Mr Mark Robinson and Ms Brenda Robinson represented themselves.

   Legislative background and procedural framework

   Trade Mark Regulations 1995

7. The service and filing of evidence in opposition proceedings under section 52 of the Act are governed by the Trade Mark Regulations 1995 (‘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.

8. 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). 

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

9. The Registrar has published ‘benchmarks’ for the amount of time to be allowed to a party during the opposition process.  Those benchmarks may be found as Part 4 of the official extension of time application document provided by IP Australia, which is now 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 those benchmarks is found at paragraph 3.2.1 of the Trade Marks Office Manual of Practice and Procedures which reads:

    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.  For these reasons the Registrar has set the following benchmarks for the maximum time likely to be allowed for one party to prepare and serve its evidence:

    Evidence in support – 9 months from the date on which the notice of opposition was 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.

    The Registrar must not grant an extension unless reasonably satisfied it is appropriate (reg 5.15(3)(c)).  The onus is on the party applying for the extension to make out a case for it to be granted.  The information needed to satisfy the Registrar will depend on how much time the extension applicant has already had to prepare its evidence.  

    For a first extension of the statutory three month period, a simple explanation of what has been done thus far in evidence preparation and what is planned to be done within the extended period is likely to be sufficient.  However, if the application is filed late, i.e. after the due date for evidence to be served, there must be a full explanation of why this is so.

    More information will be required to make out a case for a second extension.  The Registrar will need to be satisfied the extension applicant has made good use of the time available to it thus far and that evidence preparation is progressing well.  There may be cases where evidence preparation has not proceeded according to plan because of unforeseen circumstances.  It is important to make the Registrar and the other party aware of this and what is being done to make good lost time including, where feasible, a timetable for the completion of the evidence.  If the extension applicant is awaiting the return of executed declarations it should provide details of their likely receipt and service.

    Each application will be assessed on its merits.  However as a general principle an extension which will take the time allowed beyond the Registrar’s benchmark for the relevant evidence stage is unlikely to be granted unless the extension applicant is able to demonstrate there are compelling reasons to do so.  Such reasons may be:

    ·     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

    which prevented the party from serving its evidence in time.  To establish compelling reasons the party needs to provide a full and frank disclosure of all the relevant facts, preferably in the form of a declaration.

    Reasons

11. Having regard to paragraphs 5.15(3)(b) and 5.15(4) of the Regulations, the parties have been given the opportunity to be heard.  I base my decision on the oral submissions made to me on 1 February 2011 and on the statements made by the Opponent at various points when it applied for more time to serve it evidence.

12. Paragraph 5.15(3)(c) of the Regulations provides that I must not allow the Application unless I am reasonably satisfied that the extension is appropriate in the circumstances.     

13. Ignoring the three month extension of time the Opponent was granted in which to file its Notice of Opposition, it has since that time made requests exceeding 9 months for more time to serve evidence in support.  At the hearing the Opponent recognized that it was seeking an indulgence from the Office to allow the Application, but attempted to justify that indulgence because of the following factors:

    v  the Opponent manages it trade mark matters in-house and, for whatever reasons, is under-resourced to do so expeditiously;

    v  if allowed, the extension would be only for approximately another two weeks, until 16 February 2011; and

    v  the Opponent has opposed numerous Australian trade mark applications made by the Applicants which all include the word OMEGA and the awaited evidence in support of this opposition has been adapted to cover all the oppositions.

14. For the sake of brevity, my response thereto incorporates to the extent necessary the submissions which were made by the Applicants.

15. The Opponent is correct in characterizing its request for more time as an indulgence.  The Opponent has already exceeded the published benchmark period allowed for extensions of time for evidence in support.  The reasons given to justify more time are not compelling.  In Omega SA (Omega AG) (Omega Ltd) v Mark Robinson & Brenda Robinson, 2010 ATMO 23 (26 March 2010), a decision involving the same parties and, like this case, concerned with an application by the Opponent for additional time to serve evidence in support[3], Hearing Officer Windsor wrote:

    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.  … 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.

    [3] Also being one of the several oppositions to which the Opponent alluded where the same evidence applied.

16. Nor does the fact that the Application, were it granted, only extend time until mid February 2011, influence me to favour the grant of the Application.  The Opponent has since 29 November 2010 or soon thereafter, been on notice that the Office intends to refuse the Application and yet at the hearing the Opponent was unable to give any firm indication that the evidence would definitely be served by 16 February 2011 should the Application be granted.  There is no reason for me to think that on or before that date a further application would not be made and indeed Mr Hallett could not assure me of that.

17. To my mind, the only weighty consideration is the claim that the evidence is being prepared to support many oppositions.  Mr Hallett did not give me precise figures and said only that the Opponent was currently opposing about 25 trade marks filed by the Applicants.  If the evidence was so adapted to suit all those cases then the balance of convenience might lean towards the Opponent.

18. That said, my very brief assessment of this opposition is that the key arguments are likely to depend on the application of sections 44 and 60 of the Act.  I say so, first, because the Notice of Opposition makes particular reference to the Opponent’s registration numbers 190631 and 556242 within the context of section 44 prior rights, and secondly, because at the hearing, Mr Hallett clearly indicated that the evidence in support was directed to support the section 60 ground of opposition.

19. As to the section 44 ground, I note that the Applicants have already filed removal applications against the two registration cited above, for alleged non-use in Australia.  When I asked Mr Hallet whether the evidence on which we were waiting would also entail the evidence of use to defend the registrations from attack for non-use, he answered in the negative and said that separate evidence would be assembled in that regard.

20. I am therefore left to consider the Application within the context of opposition mounted primarily, so far as the evidence goes, on section 60.  That being so, success will depend upon proof of reputation and, as the Applicants rightly stated, that is something entirely within the Opponent’s control and dependent on their own records.

21. I can not accept that it need take longer for the Opponent to prove its renown in Australia.  To the extent that the evidence may support all of the pending oppositions filed against the Applicants, there is no proof of that claim, nor any assurance that the Opponent will not seek to tailor evidence which it has yet to produce to suit different causes. 

    Decision

22. I am not reasonably satisfied that it is appropriate to grant the Application and I refuse to do so.  Unless this decision is appealed, the parties may take this decision as notification, in terms of regulation 5.10(2), that the due date for service of a copy of the evidence in answer to the opposition is three months from the date of this decision.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    14 February 2011