Omega SA v Mark & Brenda Robinson

[2010] ATMO 23

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 application 1210786(28) - OMEGABEE - filed in the name of Mark Robinson & Brenda Robinson and application by Omega SA for extension of time to serve evidence in support.

Delegate:	Alison Windsor
Representation:	Extension applicant: Peter Hallett of Watermark Patent and Trade Mark Attorneys Trade Mark applicant:  Shaun Creighton of Buchanan Law
Decision:	2010 ATMO 23 Regulation 5.15:  application for extension of time to serve evidence in support – Registrar’s intention to refuse - application allowed in circumstances of the case– evidence in support to be filed and served by end of extension period.

Background

1. On 13 October 2008, after requesting and being granted an extension of time for the purpose, Omega SA[1] (“Omega” or “the opponent”) filed a Notice of Opposition (“the Notice”) to the registration of trade mark application 1210786, current details of which appear below:

   Trade mark Applicants:        Mark and Brenda Robinson
   Priority date:  18 November 2007
   Acceptance advertised:        15 May 2008
   Goods:             Class 28:  Games, toys and playthings; gymnastic and   sporting articles not included in other classes;   decorations for Christmas trees
   

   [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.

   Trade mark:  OMEGABEE

2. The Notice is couched in the broadest possible terms, claiming all possible grounds allowed for by the Trade Marks Act 1995 (“the Act”).

3. On 12 January 2009, Omega filed an application for an extension 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 opposition.  The reason given was that Omega 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 application was granted bringing the date for submissions of evidence to 13 April 2009.

4. On 9 April 2009, Omega filed a second application for a three month extension of time stating that it was still in the process of compiling materials and required further time for the purpose.  This application was granted, the date for submissions of evidence now being 13 July 2009.

5. On 10 July 2009 the attorneys for Omega applied for a third three month extension of time, stating in a declaration that “we have today received a fax from the Opponent advising that the Opponent wishes to negotiate a coexistence agreement in Australia with the Applicants.  Accordingly, further time is required for us to obtain further instructions from the Opponent and to contact the Applicants with a view to settling this matter”.  The extension request was allowed, bringing the submission date to 13 October 2009.

6. A fourth application for a three month extension of time was filed on 12 October 2009.  The grounds for the extension included in an accompanying declaration were as follows:  “At the request of the Opponent, we have prepared draft terms of settlement which have been forwarded to the Opponent for its review.  However, given the number of marks involved and the complexity of the matter, additional time is required for the Opponent to consider its position”. 

7. The trade mark applicants objected to allowance of this application.  A delegate of the Registrar advised that she intended to refuse the application because Omega had already had a total of twelve months in which to collect its evidence and/or attempt to negotiate with the applicants and it appeared that matters had not progressed.  She allowed 14 days for Omega to comment on the matter. 

8. Omega responded within the allowed time and gave additional reasons to support its application.  The applicants reiterated their objections to allowance in greater detail.  Despite the applicants’ objections, a delegate of the Registrar allowed the application.  The reasons given were that it was in both the public interest and the interests of both parties that the Registrar has access to all relevant information in order to decide the opposition.  She also noted Omega’s notification of an intention to negotiate a settlement.

9. The applicants wrote again setting out the reasons they considered the extension request should be refused, noting in particular that they had not had any contact from either Omega or its Australian legal representatives in respect of negotiation or commercial settlement.  The extension of time having already been approved, a delegate wrote to the applicant giving general information about the process.  The final date for submission of evidence in support was now set at 13 January 2010.

10. On 12 January 2010 Omega filed an application for a fifth extension of time.  The accompanying declaration stated the following: 

    The Opponent has a small team which is responsible for the protection of the Opponent’s trade marks, including potential oppositions, around the world.

    The Opponent has a genuine interest in pursuing and resolving this opposition, and it is anticipated that there should be scope to settle these oppositions on a commercial basis.  However, as the applicants have filed over 70 applications, for a wide and diverse range of goods and services, the matter is very complex and involves considerably more work than would typically be involved in the opposition to a single application.

    We have prepared draft terms of settlement and forwarded them to the Opponent for its review.  However, as noted above, the Opponent has a small team responsible for trade mark issues globally, and that team has a large and demanding workload.  In the circumstances, further time is required to enable the Opponent to progress this matter.

    In light of the trade mark team of the Opponent having a large and demanding workload and the Christmas/New Year break intervening, this has meant that our client has been unable to provide us with further instructions in relation to the draft terms of settlement.  Further time is required for the Opponent to complete its review of the draft terms and for these to be forwarded and considered by the Applicants.

11. On 14 January 2010, Omega filed a further declaration in support of the extension request.  This declaration stated that Omega had received instructions from its head office regarding the draft terms of settlement, had put the offer of settlement to the applicants that day and were waiting for a response.  Omega stated, as it had in all previous declarations, that if it was not possible to negotiate a settlement, it would need further time to prepare and serve its evidence in support.

12. By letter dated 15 January 2010 a delegate of the Registrar advised the applicants that she considered it appropriate to allow the extension application.  She said:

    I have carefully considered the application and I am satisfied that it is appropriate to grant the extension application.  The Opponent has indicated that they made you a settlement offer.  I consider the extension appropriate to allow you sufficient time to consider the proposal.  However, I have warned the Opponent that if genuine negotiations are not taking place, it should not expect to be granted any further extensions of time without compelling reasons. 

    As such, I intend to grant the application.  Before I do so however I am allowing you an opportunity to object to the granting of the extension.

13. At the same time the delegate advised Omega of her intentions, pending objections from the applicants.  She included in her letter the following warning:

    I put the Opponent on notice that if genuine negotiations are not taking place, it should not expect to be granted any further extensions of time without compelling reasons.

    The opponent has already had 15 months in which to file and serve its evidence in support.  While I note the Opponent’s difficulties in managing a large portfolio of trade marks, the opponent chose to oppose registration and the onus is on them to take the necessary steps to ensure their evidence is filed and served in a timely manner. 

14. The delegate gave the applicants 14 days to respond with objections to allowance of the extension.  They responded by letter on 18 January 2010 giving detailed reasons to support their contention that the extension application should be refused.  The reasons given are generally those which were canvassed in previous objections, and referred to the amount of time which had already lapsed with no apparent action by Omega.  On 19 January 2010, the applicants filed another letter stating categorically that they were not negotiating or entering into negotiations with Omega.  The applicants stated that they had advised Omega in writing on the same day that they were rejecting the offer of settlement and that they did not intend to enter into negotiations. 

15. Following receipt of these letters, another delegate of the registrar issued the following letter to Omega:

    I refer to the above matter and to the opponent’s request for an extension of time until 13 April 2010.

    The trade mark applicants have objected to the grant of the extension (see attached).  They say the opponent’s settlement offer was rejected by them.  They further say they are not interested in negotiating.

    In the official letter of 15 January 2010 the delegate considered it appropriate to grant the extension in order to give the applicants sufficient time to consider your offer.  As the applicants have now indicated they are not interested in negotiating, it is no longer appropriate to allow the opponent more time.

    The Registrar intends to refuse the opponent’s request.  Pursuant to s203 the opponent has until 14 February 2010 in which to apply and pay for a hearing in the matter of the intended refusal.

16. Omega requested a hearing, and I was delegated to hear and decide the matter.  The parties came before me in Canberra on 15 March 2010.  Peter Hallett of Watermark Patent and Trade Mark Attorneys of Melbourne appeared for Omega by telephone conference.  Shaun Creighton of Buchanan Law in Canberra appeared for the applicants.  I note here that this matter is strictly between the Registrar and the opponent, but as a matter of procedural fairness, the applicant is afforded the opportunity to represents its interests.

17. Unbeknown to me at the time of the hearing, on 9 March 2010 Omega had filed with the Office and served on the applicants a declaration which it specifies forms part of its evidence in support.  The material in question comprises a declaration made on 9 March 2010 by Peter Hallett, the trade mark attorney who is representing Omega in this matter, and incorporating Exhibits PLH-1 and PLH-2. 

18. I must now decide whether to grant the current extension of time application, the consequence of which will be that the Hallett declaration will have been served and filed within the allowed time.  If I decide not to grant the extension of time, Omega will have lost its chance to provide any evidence in support of its opposition.

    Legislative background and procedural framework

19. 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.

20. 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). 

21. The regulations make it clear that while a party may apply for extensions to 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.  There is, however, 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.

22. 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 Omega’s evidence in support from 13 January 2010 until 13 April 2010. 

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

23. 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 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.

24. 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

25. Omega’s evidence in support was initially due on 13 January 2009.  A full twelve months has elapsed since that time, meaning that Omega has had fifteen months in total to put together its evidence in support.  Allowing the latest application will bring that total to eighteen months. 

26. In the first fifteen months, nothing was received from the opponent.  Because Omega had advised that it proposed to negotiate a settlement with the applicants, it did not receive a warning about exceeding the Registrar’s benchmark time frames until the delegate’s letter dated 15 January 2010. 

27. The application dated 12 January 2010 was filed on the basis that Omega was still proposing to negotiate a settlement with the applicants.  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.” 

28. Two days later, the landscape had changed as Omega had received its settlement document from its head office, provided it to the applicant, and was waiting for a response.  Four days after that, the applicant had categorically rejected the offer and notified that it refused to negotiate.  It was a week after this, on 25 January 2010, that the letter issued from the Office advising that the extension of time was to be refused because negotiations were not in train.

1. 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.

2. I am also concerned that Omega has been so dilatory in dealing with this matter.  Seven months passed between the initial indication that Omega intended to negotiate and the appearance of the document which was sent to the applicants for their consideration.  In that time, there is no sign of any progress in the gathering of evidence at all.  Omega can certainly claim that since they have opposed more than ten of the applicants’ applications, the negotiation process had to take precedence over any evidence gathering.  Despite my concerns about the delays, I can see that this is a reasonable argument.

3. I note the applicants’ frustration with this process which comes through clearly in their objections to the two most recent applications for extensions of time.  At face value, it does appear that Omega has been far from efficient in its dealing with this matter, and the amount of time it has taken to respond to its Australian agents appears to be excessive. 

4. In addition, the filing only a few days before the date of the hearing of a statutory declaration from Omega’s Australian agents purporting to form the initial part of their evidence in support raises another issue.  It appears that it is often taken for granted that if the opponent files a part of its evidence in support, the Office will be more likely to approve an extension of time which is outside of the Registrar’s benchmark.  There may be some validity in this supposition if the evidence provided is relevant and of good quality.  The evidence filed on 9 March 2010 certainly does not fit into this category – it consists of information from the Register, and copies of pages from the applicants’ website.  This is material which could have been gathered many months ago and I am at a loss as to its relevance in this matter.     

5. However, in making my decision on this matter, I must consider what will be the reasonable course of action in the particular circumstances of this 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, not just this one.

6. As noted above, Omega was still waiting for the settlement document at the time it filed the most recent extension of time application.  The application was thus filed without knowledge of when this document was likely to arrive, and in the knowledge that once it did arrive, time would be needed for the applicants to consider it and respond.  The fact that the document arrived on the very next day is beside the point – time would still be needed for the applicants’ response.  This is reflected in the delegate’s letter which issued on 15 January 2010, notifying that she proposed to accept the application but would allow the applicants time to make representations.

7. The fact that the applicants made their representations and a day later notified all parties that they did not intend to negotiate does not, to my mind, mean that this extension should be automatically refused.  At the time the extension application was filed, Omega was not aware that the negotiation process would be so quickly terminated.  I am satisfied that the application was filed in good faith, on the basis that there was at least some possibility that multiple oppositions could be resolved without going through the remainder of the process.  The original delegate proposed to accept the application because of the negotiation process, and I am satisfied that this was the correct approach.  I do not consider the subsequent letter was appropriate in all the circumstances.

8. At the hearing, and in his supporting declaration provided on 9 March 2010, Mr Hallett stated that preparation of the opponent’s evidence in support was now well-advanced, and that he did not anticipate that any further extensions of time would be required past 13 April 2010.  I have taken note of this fact, and it forms part of my ultimate decision.

   Decision

9. I am satisfied that, on the circumstances of this case, it is appropriate to allow the extension of time, taking the final date for service of evidence in support to 13 April 2010.  I direct that Omega serve and file its complete evidence in support by that date.  Any further application for additional time will only be allowed if it is based on a force majeure.

   Alison Windsor
   Hearing Officer
   Trade Marks Hearings
   26 March 2010