Overdrive Holdings Pty Ltd v Bram Lagrou

[2011] ATMO 72

TRADE MARKS ACT 1995

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

Re:Potential opposition by Overdrive Holdings Pty Ltd to registration of trade mark application 1366301(41) - XSELL PARTNERS INTERNATIONAL - filed in the name of Bram Lagrou.

Delegate:

Heath Wilson

Representation:

Potential Opponent: Rohan Wallace of Rohan Wallace Patent and Trademark Services.

Applicant: No appearance.

Decision:

2011 ATMO 72

Regulation 5.2(2)(b) of the Trade Marks Regulations 1995 – Application for an extension of time to file a notice of opposition – application refused.

Background

1.     Bram Lagrou (‘the Applicant’) applied on 20 June 2010 for registration of the following trade mark no. 1366301:

Class: 41 Adult training; arranging and conducting of workshops (training); business training consultancy services; business training services; commercial training services; conducting training seminars; conducting workshops (training); mentoring (training); personal development training; providing courses of training; staff training services; training consultancy

2.     Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks on 21 October 2010. The ensuing three month opposition period elapsed on 21 January 2011.

3.     On 15 March 2011, Overdrive Holdings Pty Ltd (‘the Potential Opponent’) filed an application for an extension of time of two months in which to file a notice of opposition to the registration of the above trade mark.   

4.     The ground under which the application is made is that contained within regulation 5.2(2)(b) of the Trade Marks Regulations 1995 (‘the Regulations’). Regulation 5.2(2) provides:

(2)An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:

(a)an error or omission by an employee;

(b)an error or omission by the person applying for the extension of time, or by the person’s agent;

(c)circumstances beyond the control of the person applying for the extension of time;

(d)the conduct of genuine negotiations between that person and the applicant for registration;

(e)the undertaking of genuine research to decide:

(i)whether opposition is justified; or

(ii)on the grounds of opposition.

5.     Anna Zammit, Director of the Potential Opponent explains that the existence of the Applicant’s trade mark came to her attention after the statutory opposition period had ended. Ms Zammit declares:

I had cause to meet with Rohan Wallace, Patent and Trade Marks Attorney of Rohan Wallace Patent and Trademark Services on Wednesday 9 March 2011 in relation to other unrelated matters.

…

I was not aware of this application prior to meeting with Rohan. I was also not aware that there was a deadline for filing an opposition to the registration to this application in which I or My Company can contest whether this application should be registered.

…            

I have now come to the realisation that I made the following errors of judgement:

1.thinking that the business name registration was enough protection,

2.thinking that that (sic) the Trade Marks Office would not accept an application similar to My Company’s trade mark Xsell given My Company’s business name registration and many years of use of the trade mark,

3.not earlier filing an application to register by company’s trade mark (which I am informed would probably have blocked a subsequent similar application) and

4.not monitoring for accepted trade mark applications similar to My Company’s trade mark.

6.     On 30 March 2011, the Registrar’s delegate informed the parties of her intention to refuse the extension of time application as she was not satisfied that ground had been established. The delegate stated, inter alia:

Within the opposition period, the potential opponent needs to have formed a clear intention to oppose.  Failing that, there must be demonstration of an intention to get to an informed position, during the opposition period, from which it might make the decision whether or not to oppose.  It is not possible to show either when the potential opponent did not know that the trade mark application existed.

In the present case the potential opponent admits it made various errors of judgement, as referred to in paragraph 5 of the statutory declaration made by Anna Zammit.  These errors of judgement however do not constitute an error or omission in terms of subregulation 5.2(2)(b). 

This ground has not been made out.

7.     Subsequently, the Potential Opponent requested a hearing on the Registrar’s intention to refuse the application. I heard this matter, as a Delegate of the Registrar of Trade Marks, in Canberra on 12 May 2011. Mr Rohan Wallace of Rohan Wallace Patent and Trademark Services appeared on behalf of the Opponent. The Applicant did not appear or provide any written submissions for me to consider. 

Discussion

‘Error or Omission’

8.     It is well established that the failure to file a notice of opposition in time is not in itself an ‘error or omission’[1] within the meaning of regulation 5.2(2)(b) of the Regulations. An ‘error or omission’ needs to be something more than a mere failure to do the relevant act[2], the act in this case being the filing of a notice of opposition within the statutory opposition period. There must be a causal connection between the error or omission and the failure to lodge the notice of opposition in time.

[1] Per Justice Branson in Chiron Corp v Registrar of Trade Marks (1998) FCR 480; 42 IPR 75; and Danby Pty Ltd v the Commissioner of Patents and Rib-Loc Group Limited [1988] FCA 43 [at 29].

[2] Kimberly-Clark Limited v Commissioner of Patents and Minnesota Mining and Manufacturing Company [1988] FCA 421.

9.     For the Potential Opponent, Mr Wallace criticises what is, in his view, an unduly restrictive view of ‘error or omission’ taken by the delegate. In addition, he submits that recent cases from IP Australia summarising the law as requiring an intention to oppose or to get to an informed position to decide whether or not to oppose, oversimplify the law and are inconsistent with the principles set down by the Federal Court in Kimberly-Clark and Danby v Commissioner of Patents (‘Danby’). Those cases involved watching services that had been requested by the potential opponent and which failed due to certain factors. Those Federal Court judgments cautioned against restricting the meaning of ‘error or omission’ to only inadvertences and accidental steps.

10.   Having considered the comments made by the delegate in the notice of intention to refuse, I do not believe the implication was that ‘errors of judgement’ in themselves are insufficient to amount to an error or omission. Such an approach would, as Mr Wallace submits, be contrary to the comments of Jenkinson J in Kimberly-Clark Limited v Commissioner of Patents[3]. Instead, I am of the view that those comments specifically pertain to the Potential Opponent’s purported errors of judgment.

[3] Kimberly-Clark v Commissioner of Patents (Supra) at paragraph 9.

11.   It is the nature and strength of the purported errors of judgement which were (and shall be) crucial to the outcome of this matter. In Kraft Foods Schweiz Holding AG v Darrell Lea Chocolate Shops[4] Hearing Officer Thompson highlighted a distinction between ‘mere ignorance’ and a mistake:

In the High Court, Isaacs and Gavin Duffy JJ, in Murray v Baxter [1914] HCA 78; (1914) 18 CLR 622 at 631, found that a mistake does not include ignorance. They quote with approval these words from Fletcher Moulton LJ and Buckley LJ ex Roles v Pascall & Sons [1911] 1 KB 982 at 987: "A mistake exists when a person erroneously thinks that one state of facts exists when, in reality, another state of facts exists". "Mistake", I note, is given by Websters Third New International Dictionary as a synonym for "error".

[4] Kraft Foods Schweiz Holding AG v Darrell Lea Chocolate Shops [2003] ATMO 58 [at 36].

12.   Mr Wallace submits that the purported ‘errors of judgement’ were not mere ignorance of the law, but a belief of the facts different to reality and therefore ‘mistakes’. If it is a mistake, that is synonymous with an error. However, in Kimberly-Clark, Justice Jenkinson provided some limitation as to which ‘mistakes’ could be regarded as errors or omissions[5]:

By no means every judgment by “the person concerned’ or by “his agent or attorney” which can be shown to have been mistaken will answer the description “error or omission” in the ordinary meaning of those words which in their context carry, in my opinion, a connotation of obviousness in error.

[5] Kimberly-Clark v Commissioner of Patents (Supra) at paragraph 10.

13.   On the current facts, the Potential Opponent’s beliefs regarding the protection of its common law trade mark were born of an ignorance of Trade Marks legislation and procedure, and the failure to become properly informed. Once the Potential Opponent made the decision to become informed, the allowable period for filing a notice of opposition had passed.

‘Forming an Intention to Oppose’

14.   A requirement that a potential opponent demonstrate an intention to oppose or an intention to get into an informed position to decide whether or not to oppose within the opposition period has been addressed in a number of decisions.[6] In particular, after some analysis of the Stork Pompen case and Mission Personnel decision, Hearing Officer Williams in the case of British Sky Broadcasting[7] found:

I think the necessary causality will have been demonstrated wherever a party has shown an adequate intention to get to an informed position, from which it may decide either to oppose or not to oppose, and where that intention is itself subverted by an error, omission, or circumstance within the scope of reg 5.2(2)(a), (b) or (c).

[6] See Crown & Andrews Pty Ltd v. All American Fremantle International Inc [1997] ATMO 36; (1997) 38 IPR 595; Application by Mission Personnel Services Pty Ltd (1998) 42 IPR 255; Stork Pompen BV v Weir Pumps Ltd (1998) 11 IPR 542; and Re Application by Elixir Technologies Corporation (2002) 55 IPR 576-595 (Elixir case).

[7] British Sky Broadcasting Ltd v SkyNetGlobal Limited [2003] ATMO 17.

15.   The Hearing Officer qualified the approach saying that “certainty of opposition is not the sole touchstone” and “a deliberate step consistent with not opposing is not necessarily a disqualifier”. However, he went on to say that the formation of an intention to oppose the application should be treated as a critical criterion in cases where:

· the potential opponent was entirely unaware of the existence of a relevant application and

· this state of affairs had not itself arisen because of any previous failure to follow clearly evidenced and relevant instructions.

Unlike Danby, in Crown & Andrews there was no evidence to show that the state of ignorance had itself arisen because of a relevant error or omission. Mr Homann implied at page 603, I think, that had there been such evidence, he might have looked more favourably on the extension.

16.   The above approach does not preclude ‘errors of judgment’ as a possible cause for the failure to file a notice of opposition in time, but neither does it restrict the meaning of ‘errors or omission’ to inadvertences or accidental steps. Such an approach is not, in my view, inconsistent with the reasoning in Kimberly-Clark or Danby.

17.   In the current matter, it is clear that the Potential Opponent had no intention to oppose during the opposition period and neither had it put itself into an informed position to decide whether or not to oppose. In an analogous case, the Hearing Officer in Crown & Andrews Pty Ltd (supra) found that:

The mere failure to file the notice on time is not in itself an error or omission and the failure to conduct a search of the relevant records or to keep a watch on the Journal is not in itself to be considered as an error or omission.

18.   And as Hearing Officer Windsor in Xiying Susan Guo v David Bilanycz[8] succinctly put it:

I do not believe it is possible to omit to do an action if you are unaware that the action needs to be done…

[8] Xiying Susan Guo v David Bilanycz [2010] ATMO 123

19.   However, the fact that the Potential Opponent had no knowledge of the application before the end of the opposition period is not as important to the outcome of the matter as the reason for that lack of knowledge.[9] Either the Potential Opponent did not know it needed to monitor the Register or mistakenly believed that it was unnecessary. The Potential Opponent here had a misguided sense of the protection its common law trade mark had and therefore made a conscious decision not to monitor the Register of Trade Marks for similar trade marks (or to enlist a legal representative to do so on its behalf).

[9] See Stork Pompen B.V. v Weir Pumps Limited (Supra) and Re Application by Mission Personnel Services Pty Limited (Supra).

20.   In Application by Mission Personnel Services Pty Ltd,[10] the Delegate said:

…The importance of a party's right to oppose is enshrined in the legislation. However, that right should not be allowed take precedence, in cases such as this, over the trade mark applicant's right to registration where there has been no opposition within the prescribed period. The provisions of regulations 5.2 and 5.4 are intended to protect the rights of a party who can demonstrate a concrete intention to oppose that was somehow thwarted…

[10] Application by Mission Personnel Services Pty Ltd (1998) 42 IPR 255.

21.   In Vangedal-Nielsen v Commissioner of Patents[11], Bowen CJ stated that the Commissioner:

…will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension. It would be wrong if he granted an extension simply because no one had raised rather exceptional circumstances why it should not be granted. Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved.

[11] Vangedal-Nielsen v Commissioner of Patents (1980) 49 FLR 44.

22.   Taking into account all the circumstances, I am not satisfied the ground for the extension has been made out. The Potential Opponent’s errors of judgment were not ‘errors or omissions’ as contemplated by the case law, nor am I satisfied that they are causally linked to the failure to file the notice of opposition. I therefore refuse the application for an extension of time to file a notice of opposition to trade mark application no. 1366301.

Heath Wilson

Hearing Officer

Trade Marks Hearings

28 July 2011