Polymaze Pty Ltd v Halbach & Braun

[1995] ATMO 29

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by HALBACH & BRAUN to an application by POLYMAZE PTY LTD for an extension of time to serve evidence in answer to the opposition to registration of Trade Mark Application number517751

Application number 517751 was lodged on 24th August 1989, in the name of POLYMAZE PTY LTD (the applicant) for a series of trade marks shown here:

DYNA-TRAC

DYNA TRAC

DYNATRAC

Acceptance of the application was advertised in the Official Journal of 24th September 1992 in respect of:

"Conveyor belt mechanical cleaning and sealing equipment in this class namely belt conveyors including belt conveyor skirt boards, skirt board systems, air blasters and impact slider beds; and belt conveyor cleaners including belt scrapers, belt brushes and belt spray bars; excluding engines and motors".

Notice of opposition to the registration of the series of marks was lodged on 23rd March 1993 by HALBACH & BRAUN (the opponent).

The service of the evidence in support of the opposition, in accordance with reg 43, was completed on 23rd June 1994.  The evidence in answer, under reg 44, was therefore due on 23rd September 1994.  The applicant applied for and was allowed an extension of time to 23rd December 1994 (first extension) and, before the expiry of the allowed period, a further extension was requested and allowed to 23rd March 1995 (second extension).

In a letter dated 25th January 1995, the opponent's attorneys had advised the Office that, in their opinion, there did not appear to be any reason why extensions should be sought or granted beyond 23rd March 1995, as, they said, the task in relation to the supporting declarations merely involved their collection, and that preparation was not required.  They further submitted that the time already permitted should be sufficient for completion of the preparation of, finalisation of, and service of a copy of, the main statutory declaration.  On 23rd March 1995, however, the applicant applied for an additional three months to 23rd June 1995 for the purpose of serving the evidence in answer, the grounds being set out in the application for the extension as:

"Further time is required in order to finalise and have executed the main Statutory Declaration.  The majority of proposed declarants are resident in the Eastern States making the task of assembling the required evidence more difficult."

Following these grounds, comments are made in response to the opponent's attorneys' letter of 25th January 1995:

"Contrary to the assumption made in the letter dated 25 January 1995 of the Attorneys acting for the Opponent the task in relation to the supporting declarations has not only required their return but their preparation also.  We feel the term collection is not exclusive of preparation.  Given the lengthy period of extension allowed without opposition for the filing of evidence in support we do not see that in the present circumstances a further extension would be excessive."  

The opponent expressed objection to this application in a letter of 7th April 1995.  A subsequest letter of 13th April 1995 advised the Office that the opponent objected to the extension of time insofar as it extended beyond 23rd April 1995.  In view of the objection, a hearing was requested on the matter and set down for 9th May 1995.  The applicant desired to have the hearing deferred, but the opponent did not consent to the deferral.  Consequently, the opponent's attorneys, Callinan Lawrie, patent and trade mark attorneys of Melbourne, lodged written submissions.  The applicant was represented, on telephone, by Mr Peter Caporn, of Wray & Associates, patent and trade mark attorneys of Perth.

Submissions

In the written submissions, the opponent's attorneys point out that, even though the current objection to the extension of time application did not apply to the month from 23rd March 1995 to 23rd April 1995, the applicant failed to serve any evidence at all on the opponent, and there was no indication that the applicant was acting diligently in collecting and completing the evidence in answer.  Having outlined the general principles to be applied to the present case, the attorneys for the opponent then consider the subject application in light of those principles which I will summarize as follows:

(a)The application is not the first extension sought.

The current extension of time is the third sought.  The applicant has had at least nine months within which to prepare and serve the evidence.  As the first part of the evidence in support was served in March 1994, the applicant has had some knowledge for twelve months upon which the opponent bases its case.  During the period of negotiations between the opponent and the applicant, from March 1993 to October 1993, the opponent was not unjustified in believing that negotiations could eliminate the need for a full opposition process.  In this regard, reference is made to The Australian Olympic Committee Inc v Brennan 30 IPR 44. The opponent was able to collect, prepare, settle, execute, and serve a copy of its evidence in support within a period of between six to eight months, from the end of October 1993.

(b) The grounds are not sufficient for allowing the extension of time.

The applicant has not demonstrated that real progress has been made in the evidence in answer phase.  The applicant has recited that the majority of the proposed declarants reside in the Eastern States and therefore the task of assembling the required evidence is more difficult.  The opponent points out that it was faced with a similar problem and was able to overcome it.  In view of the nature of the applicant's goods, the enquiries for the supporting declarations would be limited.  The applicant has not given any indication whether any declaration has been finalised and executed.  The grounds did not indicate that a further extension of time will not be required.  In light of the previous application for extension of time, one has to treat with caution the terms "finalise and have executed".

(c) The application is not for lodging a notice of opposition.

Whilst there is a greater discretion to extend the time within which to serve a copy of evidence in answer than to lodge notice of opposition, that discretion cannot be exercised on grounds other than sufficient grounds.  The applicant has not demonstrated due diligence.

(d) The opponent has consented to part of the extension sought.

Although the applicant may wish to serve all the evidence in answer at the same time, the failure to serve any copy evidence to date cannot be overlooked.  The public interest in expeditious conduct of the proceedings has not been satisfied.  The applicant has been granted sufficient time, but has not shown sufficient industry to substantiate its claim to the extension of time sought.

If material extraneous to that disclosed in the grounds comes to light and the extension is allowed because of that extraneous material, costs must not be awarded in favour of the applicant.

(e) No copy evidence in answer has been served.

Referring to the opponent attorneys' above submissions, Mr Caporn denied that the applicant's grounds for the sought extension were insufficient (b).  He then commented on each of the items, first arguing, in relation to (d), that, until receiving the opponent's submissions, the applicant had no knowledge concerning the opponent's consent to part of the requested extension.   Had the applicant known earlier, it was possible that part of the evidence could have been filed before 23rd April 1995.  He remarked that in instances where part of the extension had been objected to, the objecting party had an obligation to explain the motives (Lind Engineering Pty Ltd v Leeton Steel Works Pty Ltd 4 IPR 445). Given this lack of explanation in the present situation, the public interest must be seen to require allowance of the required extension of time.

Concerning item (a), Mr Caporn vigorously rebutted the assertion that twelve months had been available to the applicant for the preparation of the evidence in answer.  The applicant could not fully appraise the case to be answered before the balance of the evidence in support was served in June 1994.  In response to the opponent attorneys' emphasis on the time taken to serve the evidence in support, Mr Caporn submitted that, in his opinion, the adequacy or perhaps the inadequacy of the opponent's evidence and the speed in which it was served should not place a rigorous time table on the applicant to serve its evidence in answer.

Turning to item (b), Mr Caporn submitted that, in fact, progress had been made in the preparation of the applicant's evidence as a result of its diligent action and despite circumstances conspiring against it, as will be explained later in this decision.  In spite of the opponent's contrary assertions, the reasons for the present extension were far more detailed than those in Lyons (trading as Mitty's Authorized Newsagency)vRegistrar of Trade Marks (1983) 1 IPR 416. He further commented that the opponent's attorneys had failed to support their contention that only limited sources would be available for the gathering of the applicant's evidence, having regard to the range of the applicant's goods. Concerning the submissions that the applicant had not indicated that no further extensions would be sought beyond the current one, Mr Caporn believed it was an unfair and unjust statement, given the circumstances explained below. With reference to criticism of the terms "finalise and have executed", Mr Caporn said that statement had been correct at the time of filing the application. He further submitted that the applicant had clearly indicated that the evidence was in preparation. In addition, the evidence in answer was to be completed shortly and served within the time allowed, if granted. The balance of conveniece and the public interest therefore required the granting of the extension.

Mr Caporn's response, that the applicant's failure to serve any part of the evidence in answer was owing to something other than the lack of industry, will become clearer from his submissions addressing the factors for consideration of applications in terms s 130 of the Act.  Concerning the assertion that the applicant had already had sufficient time, and that it was in the public interest to resolve the matters of contention speedily, he said that neither he nor the opponent was in a position to advise on this matter.

Responding to the opponent attorneys' comments on costs, Mr Caporn argued that the extension would be appropriate even without additional facts.  He further explained that the warning in relation to further extension of time applications, which was expressed in the opponent's letter of 25th January 1995, was based on an erroneous conclusion drawn in response to the applicant's application of 16th December 1994.  He therefore sought an award of costs to the applicant, should it succeed in these proceedings. 

With reference to Lyons, supra, Tomlin Holdings Pty Ltd v KT Technology (S) Pte Ltd (1991) AIPC 90-747 and Universal City Studios Inc v Frankenstein Pty Ltd (1994) AIPC 90-044, Mr Caporn proposed to discuss the three essential principles to be considered in relation to extension of time applications, namely: whether the party requesting the extension has made out a sufficient case justifying the extension; the balance of convenience and the public interest. Reference has alrady been made to these issues in Mr Caporn's reply to the opponent's submissions.

On the first question, Mr Caporn argued that the reasons given in the application for the extension of time went beyond simply stating that further time was required to complete the evidence in answer.  The additional comments were included, he said, to correct what was seen as an incorrect and potentially prejudicial assumption on behalf of the opponent's attorneys in the letter of 25th January 1995.  If the current application for the extension were granted, the time for the service of evidence would be twelve months in total.  This was not unreasonably long in the circumstances, particularly in view of the observations by Beaumont J that, since opposition proceedings usually involve the gathering of evidence from third parties, the process normally takes considerable time.  A further factor to be considered was the frequent absences on business in the Eastern States and overseas of Mr John Massarotto, the managing director of the applicant company, the only persons who is possessed of the information pertinent to the leading declaration.  As at the date of the hearing, he had been away 118 days from July 1994.  Mr Caporn also mentioned that the applicant's sales manager in Brisbane had resigned in mid January 1995, requiring much of Mr Massarotto's time in recruiting a new person.  In addition to these factors, the Christmas/New Year season, Easter and Anzac day fell during this period.  In spite of these circumstances, the preparation of the evidence in answer had been pursued with diligence demonstrated by the fact that the evidence would be in order to be served in approximately three weeks time.

Moving on to the second area of enquiry, the balance of convenience, Mr Caporn directed my attention to the fact that, under the relevant regulations, the applicant is provided with only one opportunity to file its evidence, whereas two opportunities exist for the opponent (Tomlin v KT Technology, supra).  With reference to the evidence in support, he noted, whilst the potential of deception or confusion is the main thrust of that evidence, no actual instances of deception or confusion had been obvious.  There was no real indication that the opponent was, either in the past or in the present, disadvantaged by use of the applicant's mark on the goods proposed to be registered, and, importantly, the mark had been held to be distinctive by the Trade Marks Office.

Considering the matter of public interest, Mr Caporn submitted that in cases of alleged deceptive similarity of trade marks used in respect of various goods, it had been held that the public interest was paramount and would best be served if both parties were able to present their evidence and arguments fully (Rollbits Pty Ltd v Rowntree Mackintosh Plc (1985) 6 IPR 292 and Tomlin v KT Technology, supra).  Further, he argued, it would obviously be a considerable disadvantage to the applicant if it were unable to present the evidence in answer at its only opportunity   As the applicant proposed to serve the evidence shortly, this factor also weighed in the applicant's favour, thereby giving the matter its widest possible investigation (Charles of the Ritz Group Ltd v Hans Schwarzkopf GmbH (1986) AIPC 90-347).

Discussion
Para 44(a) of Trade Marks Regulations states that:

44.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...

Section 130 of the Act reads:

Where, by this Act, a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly provided, extend the time either before or after its expiration.

Mr Caporn has already referred to Lyons case, supra.  The criteria in relation to extension of time applications to serve evidence in opposition proceedings considered in that case were based on Vangedal-Nielsen and Another v Smith (Commissioner of Patents) and Another (1983) 33 ALR 144. I think it is appropriate to consider the present circumstances in light of the same factors recited by Mr Caporn.

With the statutory period of three months included, following the service of the evidence in support, the applicant has had nine months in total for the purpose of serving its evidence in answer.  If by the second application for extension of time to serve the evidence in answer the applicant required further time to collect the supporting declarations and to prepare and finalise the leading declaration, then, as I read it, from the current application it can be assumed that the preparation is continuing and the whole process is approaching its final stages, but the applicant has not succeeded in completing the evidence material in the allowed period.  Whilst some progress appears to have been made between the previous and the present extension period, I think the applicant ought to have stated in the application precisely what material had been completed, and the nature of the evidence still in preparation, as the obtaining of declarations from the Eastern States cannot be considered such an onerous task that it should delay for nine  months the finalisation of all the supporting declarations proposed to be included in the evidence in answer, notwithstanding the established fact that the gathering of evidence from third parties is a time consuming exercise.  On the other hand, I must take into account Mr Caporn's statement that the applicant could have served part of this evidence in the month between 23rd March 1995 and 23rd April 1995, had the applicant been aware of the opponent's intention not to object to that extension period.  Moreover, Mr Caporn has explained the delays caused by Mr Massarotto's frequent absences from his office and problems associated with the resignation of the sales manager in Brisbane.  More importantly, there is now a clear undertaking by the applicant to have the evidence in answer complete for it to be served on the opponent before 23rd June 1995.  Thus, while I do agree with the opponent's submissions that the application under consideration falls short of establishing a sound case which warrants a further extension, in light of the applicant's proposal to serve the evidence in answer in the very near future, I accept the applicant's explanation at the hearing of the circumstances which prevented it from taking action in the matter before the expiry of the 2nd extension period. 

Considering the balance of convenience, whilst I appreciate the opponent's concern over the delays of the proceedings, which, according to the opponent, are caused by the lack of diligence on the part of the applicant, I am also mindful of the fact that, as submitted by Mr Caporn, the applicant is given only one opportunity to present a case in answer and to defend registration of its mark.  The extension period so far allowed has not been of exceedingly long duration; nine months or more to prepare and serve evidence on another party is not so uncommon (see The Black & Decker Corporation v Akarana Abrasive Industries Ltd 15 IPR 399). Moreover, the opponent has not advanced any reasons how it would be disadvantaged if the current extension is granted. In the absence of any evidence to the contrary, I consider therefore that three additional months within which all the evidence in answer will be served on the opponent would not cause undue inconvenience to the opponent.

The opponent's allegations involving deceptive use of the opponent's mark are important issues concerning the public interest.  It is well established that, in order to decide the opposition on such matters, the Registrar must have access to as much of the relevant documentary material as possible (see Bundy American Corp v Rent-A-Wreck (Vic) Pty Ltd 5 IPR 307 and Application by Jonathan Sceats Design Pty Ltd 15 IPR 59). D.R. Shanahan has stated on p 69 of Australian Law of Trade Marks and Passing Off, 2nd ed., that "the public interest in denying registration to a deceptive mark will often weigh heavily in favour of extension".  On the other hand, the public interest will, if the applicant continues to be tardy, be well protected if further extension is refused.  Having considered the foregoing findings in light of the submissions, particularly on the finalisation and serving of the applicant's evidence in the sought period of time, I believe it would be desirable and in the public interest to allow the applicant the opportunity of serving its evidence in answer. 

Conclusion
Having considered the relevant factors, I have decided to allow the requested extension of time to 23rd June 1995.  In allowing this extension I have been swayed by the applicant's submissions that the evidence in answer is almost finalised and will be served on the opponent in the time now allowed.  In the circumstances, I warn the applicant that, should any further extensions be sought, it will face a very heavy burden in establishing a case in its favour. 

Even though the applicant has been successful in the present extension of time request, the opponent was justified in objecting to the grant of it in view of the inadequate grounds in the application.  Consequently, I make no award of costs.

Vija Zars

Senior Examiner
31 May 1995