Omega SA v Mark & Brenda Robinson

[2011] ATMO 70

TRADE MARKS ACT 1995

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

Re:Oppositions by Omega SA (Omega Ltd) (Omega AG) to registration of trade mark applications 1333519(21), 1333521(25), 1333531(21) – OMEGA symbol/CHEF devices - filed in the name of Mark and Brenda Robinson and oppositions by Mark and Brenda Robinson to applications for extensions of time in which to serve and file evidence in support by Omega SA (Omega Ltd) (Omega AG).

Delegate:

Iain Thompson

Representation:

Opponent: Written submissions by Peter Hallett of Watermark.

Applicant:  Telephone submissions by Mark Robinson

Decision:

2011 ATMO 70

Regs 5.7 and 5.15 – applications for extensions of time in which to file evidence in support refused.

Background

1. Mark and Brenda Robinson (‘the applicants’) of Paterson Lakes, Victoria, have filed applications to register three trade marks under the Trade Marks Act 1995 (‘the Act’).  Current details of these applications are listed below:

Application No: 1333519

Priority Date:  26 November 2009

Goods:Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass; glassware, porcelain and earthenware not included in other classes; cookware of all types in this class; pots, frying pans, boiling pans, saucepans, baking and casserole dishes, serving dishes, kitchen utensils

Trade Mark:  

Application No: 1333521

Priority Date:  26 November 2009

Goods:  Class 25: Clothing, footwear, headgear, scarves

Trade Mark:  

Application No: 1333521

Priority Date:  26 November 2009

Goods: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, not 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; plastic material for packaging

Trade Mark:  

2. The applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks and Omega SA (Omega AG) (Omega Ltd) (‘the opponent’) of Switzerland filed Notices of Opposition (‘the Notices’) according to the timetable below. 

Application No	Acceptance Advertised	Opposition filed
1333519	25 March 2010	25 June 2010
1333521	25 March 2010	25 June 2010
1333531	25 March 2010	25 June 2010

3. The Notices are in common form and nominate all of the available grounds of opposition.

4. Since the Notices were filed, the opponent has made applications for extension of time in which to serve and file evidence in support of its oppositions (concurrent with the part evidence served and filed) as shown in the table below:

1333519	1333521	1333531
Extension of time (‘EOT’)	20 September 2010	20 September 2010	20 September 2010
EOT	15 December 2010	15 December 2010	15 December 2010
Part Evidence in support	25 March 2011	25 March 2011	25 March 2011
EOT	25 March 2011	25 March 2011	25 March 2011

5. The opponent’s part evidence in support is a statutory declaration by Peter James Hallett, trade mark attorney for the opponent, which shows that the applicants use the trade mark OMEGA on a variety of products. This declaration apparently goes to section 59 of the Act which is nominated in the Notices.

6. The opponent’s application for extension of time is supported by a declaration by Mr Hallett which states:

A draft statutory declaration which will form the basis of the opponent's evidence in support of this opposition has been prepared and forwarded to the opponent for review. The exhibits to the declaration have been collated. However, the opponent requires further time to provide certain additional information that is needed in order to finalise the declaration, and for the declaration to be signed in Switzerland and returned to Australia for service.

In addition, partial evidence in support has been prepared and will be filed and served prior to 25 March 2011.

7. The opponent’s final applications for extensions of time (on 25 March 2011) in which to complete its evidence in support of its oppositions have been opposed by the applicants for registration.  As a delegate of the Registrar of Trade Marks, I heard the oppositions to the applications for extensions of time at a hearing in Canberra on 18 May 2011.  The applicants for registration made submissions by telephone; the opponent filed written submissions by its attorney, Peter Hallett of Watermark Patent and Trade Mark Attorneys.

Discussion

8. The trade mark Regulations provide for the service and filing of evidence in support of an opposition.  Regulation 5.7 provides:

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.

9. Additionally, regulation 5.15 provides:

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).

1. The period of time which had elapsed since the filing of the Notices on 25 June 2011 totaled 9 months as at 25 March 2011 when the opponent filed these opposed applications for further extensions of three months in which to complete its evidence in support.  The applications for extension of time (if granted) would thus take the time allowed to the opponent in which to serve and file its evidence in support of the oppositions to a year.

2. I must not, in terms of the regulations, grant the applications for extensions of time unless I am reasonably satisfied that the applicant for the extensions of time has made out a proper case for grant of the extensions.  In other words, the onus is on the opponent to make out its case for the extensions of time to my reasonable satisfaction.  The oppositions, as will be noticed from the table above, are proceeding to the same timetable and there is no requirement to deal with them separately.

3. My consideration of whether to grant the extension of time is governed by cases such as Vangedal-Nielson v Smith (Commissioner of Patents) [1980] FCA 163; (1980) 33 ALR 144; and, Lyons v Registrar of Trade Marks [1983] FCA 236; (1983) 50 ALR 496; 1 IPR 416.

4. The thrust of the above cases may be summarised as follows:

• the applicant seeking the extension of time has to make out a proper case;

• there must have been no undue delay on the part of the potential opponent;

• the private interests of the applicant and opponent in the opposition as well as the public interest are considered by ensuring that invalid rights are not granted and that proceedings are not protracted; and,

• there is a serious opposition in train.

1. The opponent is a large company with the resources of one of Australia’s leading firms of patent and trade mark attorney managing this matter for it and, I would infer, considerable resources at its headquarters to manage these oppositions.  These matters cannot be said to be in any way new to the opponent, it having been in dispute with the applicants for a considerable period of time in relation to the applicants’ attempts to register several related trade marks.  I would also infer that such evidence as might be filed by the opponent in relation to these matters is reasonably accessible to it and there is no claim by the opponent that such evidence is not accessible to it.

2. Mr Hallett in his declaration does not state the nature of the evidence which it is claimed that the opponent is collating, nor does he state which grounds out of the plethora of grounds nominated in the Notices that evidence is intended to support.  Nor is the draft declaration which is said to have been sent to the opponent exhibited to Mr Hallett’s declaration in support of the extensions.  I thus have no way of gauging whether or not there are serious oppositions on foot.

3. The onus is on the party seeking an extension of time to establish a proper case for the extension – this onus is one which naturally rises as the time sought increases.  While the reasons given by the opponent at paragraph 6, above, might support extensions within the first six months of an opposition, they fall well short of establishing why extensions of time are still required after nine months.

4. There are public interests in ensuring that matters before the Registrar are conducted in a timely manner and that there is no perception that a large and well organised opponent might use unreasonable extensions of time in proceedings before the Registrar of Trade Marks to delay or frustrate the trade mark applications of a comparatively small organisation.

5. The opponent has plainly not made out a case to my reasonable satisfaction as to why these extensions of time remain necessary.

6. I refuse to grant extensions of time to the opponent in which to serve evidence in support of the opposition in relation to applications 1333519 (21), 1333521 (25) and 1333531 (21).

Iain Thompson

Hearing Officer

Trade Marks Hearings

28 July 2011