Omega SA v Mark Robinson and Brenda Robinson

[2011] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by Omega S.A. to application by Mark Robinson and Brenda Robinson to remove trade mark number 556245(28) - OMEGA logo – in the name of Omega SA (Omega AG) (Omega Ltd) for non-use

and

Application by Omega S.A. for extension of time to serve evidence in support

Delegate:	Deirdre O'Brien
Representation:	Opponent: Peter Hallett of Watermark Patent and Trade Mark Attorneys Applicants:  Brenda Robinson
Decision:	2011 ATMO 89 Reg 5.15: application for extension of time to serve evidence in support of opposition to removal – hearing re Registrar’s intention to refuse extension – no reasonable basis to allow extension for the entire period requested but appropriate to allow one week to bring evidence already served into proceedings.

Background

1. Mark and Brenda Robinson (‘the applicants’) have applied for removal of trade mark 556245 from the trade mark register in respect of all the goods for which it is registered.  Omega S.A. (‘the opponent’) opposed removal by filing a notice of opposition on 4 August 2010. 

2. The Trade Mark Regulations 1995 (‘the Regulations’) set out the periods allowed for the parties to serve evidence in a trade mark opposition.  Pursuant to reg 5.7 the opponent has three months from the date on which the notice was filed to serve a copy of its evidence in support of the opposition on the applicants.  That period may be extended on application under the provisions of reg 5.15 provided the Registrar is satisfied the extension is appropriate.

3. The opponent has already been allowed two extensions, each of three months, of the statutory three month period.  It has now applied for a third extension of the period, also of three months.  If granted the extension would allow it until 4 August 2011 in which to complete service of its evidence.  It has already filed and served two declarations as evidence.  In support of the extension the opponent’s agent says:

   I understand that the Opponent is in the process of compiling further materials and information in relation to the use of its mark. Further time is required to collate this further information and to finalise the declaration which will form the balance of the Opponent’s evidence.

4. The applicants objected in writing to the grant of the extension.  A delegate of the Registrar considered the substance of the objection and found it had merit.  He informed the opponent that he intended to refuse the extension. 

5. As required by section 203 of the Trade Marks Act 1995 (‘the Act’) the delegate gave the opponent an opportunity to request a hearing and it did so.  In the interest of procedural fairness the applicants were informed of the hearing and were given an opportunity to attend.  The hearing took place by teleconference before me, as the Registrar’s delegate, on 23 August 2011.  Mr Peter Hallet of Watermark Patent and Trade Mark Attorneys made submissions on behalf of the opponent.  Mrs Brenda Robinson made submissions on behalf of the applicants.

   Submissions

6. In their written submissions objecting to the grant of the extension the applicants point out that they are involved in other oppositions with the opponent.  They allege the opponent has a history of requesting extensions of time in those oppositions and then failing to serve any evidence.  They refer to decisions by delegates of the Registrar where the opponent was made aware of the Registrar’s expectations for the timely service of evidence.  In the present matter they refer to a letter from the Registrar’s delegate dated 21 March 2011 in which the opponent was informed compelling reasons would be required to support any further extension.  The applicants say the reasons the opponent has provided in support of the present extension are not compelling.

7. At the hearing Mrs Robinson repeated the substance of the written submissions and emphasized the inconvenience to the applicants by the opponent’s delay in providing evidence which, if it had used the trade mark as alleged, should have been relatively easy to obtain.  She considered the opponent had had more than sufficient time to defend its registration and there was no public interest in a trade mark remaining registered if it is not being used.  She said there was nothing to show the opponent had done anything towards finalizing its evidence in the three months since it applied for the extension.  If the extension were granted, the extended date of 4 August had now passed and the opponent would require yet another extension in which to serve the balance of its evidence with no real likelihood that would occur. 

8. Mr Hallett emphasized the consequences for the opponent if the extension were to be refused.  However he could not say if and when the balance of the opponent’s evidence would be filed and served.   He was ‘hopeful’ it would be soon but could not provide details of any progress made since his declaration in support of the opponent’s second request for an extension. At that time he said a draft declaration had been forwarded to the opponent for consideration. 

   Reasons

9. Subregulation 5.15(1)(a) provides that the period for serving evidence may be extended upon application.  Subreg 5.15(2) provides that the Registrar may grant an extension application which has been made on reasonable terms that the Registrar has specified.  Those terms are contained in Part 51.3.2 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’).  They were derived from the matters considered in Vangedal-Nielsen v Commissioner of Patents[1] and Lyons (trading as Mitty's Authorised Newsagency) v Registrar of Trade Marks[2] in relation to the grant of an extension of time[3]. 

   [1] (1980) 3 ALR 144

   [2] (1983) 1 IPR 416

   [3] Those matters were summarised by the Registrar's delegate in Australian Olympic Committee v Brennan (1994) 30 IPR 44 at 46 as:

   ·     the length of time already allowed;

   ·     the reason put forward to justify the extension;

   ·     the seriousness of the opposition;

   ·     the inconvenience likely to be suffered by the two parties; and

   ·     the public interest in the matter

10. Part 51.3.2 of the Manual commences:

    3.2 Reasons for the extension

    Reg 5.15(2) allows the Registrar to grant an application for an extension of the period for serving evidence on reasonable terms specified by the Registrar. The Registrar considers reasons for such an extension are:

    ·for one party to prepare and serve its evidence

    ·for both parties to undertake settlement negotiations.

    3.2.1 Extension for the purpose of preparing evidence

    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.

11. In the present matter the opponent has had more than nine months in which to serve its evidence. As noted in the Manual if the parties are not negotiating extensions beyond nine months are only likely to be allowed if there are ‘compelling reasons’ to do so.  The Manual gives the following examples of what may be considered compelling reasons:

    ·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

12. The opponent has not shown there are compelling reasons for the extension. As previously noted it has already filed and served two declarations in these proceedings but they are not in relation to trade mark use.  The opponent cites the consequences it would suffer if it could not rely on evidence of trade mark use to defend its registration. 

13. The opponent is located in Switzerland and the evidence it has to provide is evidence of trade mark use in Australia.  Notwithstanding the consequences for it if it does not provide such evidence, the opponent has not yet said whether it will be relying on its own use of the trade mark or on authorised use by another party.  Its failure to disclose such fundamental information more than nine months after filing its notice of opposition gives rise to the inference that it is not serious in its opposition.

14. At this stage of proceedings, when the opponent has already had a reasonable opportunity to prepare and serve its evidence, I consider the public interest lies in the efficient and timely administration of the trade mark register.  A trade mark that is not being used should be removed from the register as expeditiously as possible.

15. For these reasons I am not satisfied the extension of three months is appropriate. 

16. At the hearing the issue of the date of service of the opponent’s second declaration was raised.  The opponent had until 4 May 2011 in which to serve the declaration and it believed it had been served by that date.  However the official record showed service had taken place on 5 May.  If the date of service on 5 May is correct, the declaration was served out of time and thus not part of proceedings. 

17. The applicants could not recall on which date the declaration had been served. I asked them to check their records and let me know after the hearing. If the date were 5 May, I said I would then have to consider whether a short extension from 4 May to encompass the service date was appropriate. That would depend on the relevance of the declaration to proceedings. Mr Hallett submitted that the declaration was relevant to the exercise of the Registrar’s discretion under section 101 of the Act[4]. 

    [4] The onus on the opponent in a non-use opposition is to rebut the allegation of non-use. If it is unable to do so, section 101 gives the Registrar the discretion to allow the trade mark to remain on the register. However the opponent has to establish a case for that discretion to be exercised.

18. After the hearing the applicants informed me that according to their records the date of service was 5 May. The declaration in question is that of Peter Hallett dated 4 May 2011. Exhibit PLH-1 to Mr Hallett’s declaration is a copy of a declaration by Peter Stierli. I consider the information in the Stierli declaration is arguably relevant to the exercise of the Registrar’s discretion under section 101. I am satisfied a short extension to bring it into proceedings is appropriate.

    Decision

19. I hereby extend the period allowed for the opponent to serve a copy of its evidence in support until 11 May 2011. I direct that the due date for the applicants to serve a copy of their evidence in answer to the opposition is three months from the date of this decision, namely 9 December 2011. 

    Costs

20. The applicants have sought their costs but as the hearing was held in response to the Registrar’s intention to refuse the extension, it is not appropriate for me to award costs. 

    Deirdre O'Brien
    Hearing Officer
    Trade Marks Hearings
    9 September 2011