Pitman-Moore Australia Limited v Australian Feed Company Pty Limited

[1995] ATMO 41

TRADE MARKS ACT 1955

Objection by AUSTRALIAN FEED COMPANY PTY LIMITED to Application for Extension of Time to Lodge Evidence in Answer in the Matter        of Opposition Proceedings against Application No 572758

Trade Mark Application No 572758 was lodged in the name of PITMAN-MOORE AUSTRALIA LIMITED ("the applicant") on 19 February 1992. Acceptance of the application was duly advertised in the Official Journal of 28 October 1993. Opposition to the registration of the trade mark was lodged, in accordance with s49 of the Act, by AUSTRALIAN FEED COMPANY PTY LIMITED on 23 December 1993.

Service of evidence in support of the opposition was completed on 20 January 1995 and the applicant's evidence in answer to the opposition therefore became due for service on the opponent on 20 April 1995 in accordance with reg 44 of the Trade Marks Regulations. However, on 18 April 1995 an application for an extension of time of three months within which to serve that evidence was lodged by LIVESTOCK NUTRITION TECHNOLOGIES PTY LIMITED.

The opponent objected to the allowance of the extension of time sought on the ground that the applicant for the extension was not the trade mark applicant. It in turn applied for a time and place for the hearing of the opposition. It was decided, however, to set the extension of time matter down for hearing as an assignment of the trade mark from the applicant to LIVESTOCK NUTRITION TECHNOLOGIES PTY LTD, which had applied for the extension of time, had been lodged on 12 January 1995. This was done, the matter being set down for hearing in Sydney on 3 July 1995. Mr Ray Walton of Griffith Hack & Co appeared for the applicant and Mr Peter Maxwell of Peter Maxwell and Associates for the opponent.

Mr Maxwell argued that there were no provisions for the assignment of a trade mark application, that even if the application proceeded to registration the assignment might well turn out to be invalid, and that in any case there were no provisions in the Act or the Regulations to permit another party to be substituted for the applicant in opposition proceedings. The assignee therefore had no standing to apply for the extension of time sought. In those circumstances the opposition should be set down for hearing.

Mr Walton for his part referred to a statutory declaration made by himself in support of the application for extension of time. In that declaration it is stated that the shareholders of the assignee company LIVESTOCK NUTRITION TECHNOLOGIES PTY LIMITED ("LNT") were previously employees of the applicant and that the assignment from the applicant included the goodwill of the business concerned in the goods in respect of which the trade mark is used and in respect of which registration is applied for. It is further stated that the assignee company is currently marketing goods under the subject trade mark and that following the assignment of the trade mark the assignor changed its name. There is therefore no company in existence bearing the name of the original trade mark applicant which can continue to prosecute the application.

The reason given by LNT for seeking the extension of time was that: "More time is required to gather the evidence and place into declaratory form." This was expanded upon in the declaration referred to above in which it is said that the reason that the evidence could not be served by the due date was due to the evidence having to be considered "at two centres", to "the need of the management of the company to confer in relation to the evidence, to the need for the management of the company to determine the extent of use that has been made in total in relation to the subject trade mark and the need to determine and collate various other pieces of information that are relevant to the matter." It goes on to state that steps had been undertaken toward collection and formulation of the evidence to be served in answer in the proceedings but that insufficient time had been available to the management of the company to complete the exercise. Only one declaration had been obtained as at that date for service as part of the intended evidence.

Mr Walton submitted that the assignee in the present case had a proprietorial and equitable interest in the trade mark by virtue of the assignment. He conceded that an assignment of a trade mark could not be registered until the mark itself was registered but that this meant that the assignee could not defend its rights in opposition proceedings if it could not serve evidence. He argued that it was a matter of natural justice that an assignee should be so able to defend its rights, that it was no fault of the current proprietor of the trade mark that it could not use the name of the original applicant and that as the equitable owner of the trade mark the assignee should be entitled to serve evidence. Furthermore, he said, the assignment of the trade mark was not an assignment of mere future property as the assignee had common law rights in the trade mark as current property. As to the argument that the assignmment might turn out to be defective he submitted that a mere technical deficiency in the assignment would not defeat the assignment in a court of equity and that in any case such an argument was mere speculation. In summary he said that the assignee was the owner of the trade mark in the fullest sense, that there had been no suggestion of misuse of the mark and that the only question at issue in this matter was the grant of an extension of time to serve evidence in answer to the opposition.

In reply Mr Maxwell contended that the issue in question was not one of common law rights but rather of rights established by the relevant legislation which made no provision for the assignment of an unregistered trade mark nor for the substitution of an assignee of a trade mark for an applicant in opposition proceedings. Moreover, he argued, the assignment to LNT had taken place on 11 August 1993 but the application for the recording of the assignment had not taken place until 12 January 1995 so that the opponent had not been made aware that the mark had been assigned. Mr Walton responded that the delay in lodging the application to record the assignment was not relevant to the question of extension of time to lodge evidence in answer.

Decision

Regulation 41 of the Trade Marks Regulations provides, for the purposes of PART VII - PRACTICE AND PROCEDURE, of those Regulations that :

"applicant" means a person who has made the request or application in         respect of which a person has given a notice of opposition

Regulation 44 of the same Regulations further provides that

An applicant shall:

(a) serve on the opponent, within three months after the date on which the declarations of the opponent were served, a copy of each of the declarations on which he relies in answer to the opposition; ...

It seems clear from these provisions that the only person enabled to serve evidence in answer to the opposition to registration of the trade mark in suit was the person who had made application for the registration of the trade mark, namely, PITMAN-MOORE AUSTRALIA LIMITED, and, as Mr Maxwell pointed out, there are no provisions in the current Act or Regulations for the recording of an assignment of a pending application for registration, there seems to be no way that an assignee of a pending application can be substituted for the original applicant for registration.

However, while I agree with Mr Maxwell that this matter is not a question of any common law rights that may have been acquired by the assignee by virtue of the assignment but rather of rights given by the statute I must say that there are no restrictions contained in the Act or the Regulations on who may apply for an extension of time to take any step in those proceedings. Taking into account the arguments of Mr Walton, therefore, I am prepared to entertain an application for extension of time on behalf of the applicant by LNT.

It remains to be seen whether the extension of time is warranted. The reasons given for seeking the extension have been set out above. Although they are rather slight I bear in mind the words of Beaumont J in Lyons v The Registrar of Trade Marks (1983) 1 IPR 416, where the applicant for an extension of time had relied on the ground that "evidence in support of the opposition is in course of preparation but it is desired to have additional time to prepare that evidence and to serve copy thereof on the applicant". Beaumont J said, at 420:

Although a more detailed explanation of the position may have been desirable, I think that it is possible to construe the rather bald statement of the ground for the request (supra) as indicating that, although efforts had been made in that behalf, it was not possible to finalize the form of the evidence sought to be adduced in the time allowed by the regulation. I accept that, on one view, it is possible to read the stated ground as being little more than an assertion that more time is required. However, the statement of the ground does at least attempt some explication of the position. Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time. Given that background, and given the construction of the statement of the ground which was open, I am of the opinion that the delegate did not exercise his discretion in any improper way.

Bearing in mind also that this is the first extension of time sought by the applicant I am prepared to allow the extension of time to serve evidence in answer until the 20 July 1995. In doing so, however, I draw the applicant's attention to my comments above in relation to the service of evidence.

I make no award as to costs.

Michael Homann
Hearing Officer

9 August 1995