Professional Golfers Association Ltd v Ladies Professional Golf Association

[2002] ATMO 79

TRADE MARKS ACT 1995

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

Re:Application for an Extension of Time to serve Evidence in Answer to Opposition by Professional Golfers Association Ltd to registration of trade mark application 808471(25) - LPGA  and device - filed in the name of Ladies Professional Golf Association.

Background

On 28 September 1999 Ladies Professional Golf Association ('the applicant') applied to register trade mark application no 808471 (depicted below) in respect of 'Clothing, footwear and headgear' in class 25.

The application was examined, and subsequently advertised accepted in the Australian Official Journal of Trade Marks on 17 August 2000.

On 16 November 2000 Professional Golfers' Association of Australia Limited ('the opponent') filed Notice of Opposition to registration of the trade mark.  Following allowance of four 3-month extensions of time in which to do so, evidence in support was served on 11 December 2001.

The due date for service of evidence in answer was 11 March 2002.  On 19 April 2002, the applicant applied for an extension of time to 11 June, on the ground that negotiations were taking place between the parties.  The statutory declaration of Victoria Sharmandine Hiley, Solicitor of Colin Biggers & Paisley, dated 17 April 2002 ('the first Hiley declaration') accompanied the extension application.

The opponent objected to the granting of the extension, arguing that no good reason had been provided for the lateness of the extension application, and that no negotiations had commenced between the parties.  The applicant was invited to comment, and responded by providing an outline of circumstances surrounding the extension application.  A Senior Examiner of Trade Marks considered the extension application.  She was not satisfied that the applicant had made out a proper case and advised the parties that she intended to refuse the extension of time.  The applicant requested to be heard.

The matter came before me in Sydney on 23 July 2002.  Appearing for the applicant were Mr David Studdy of Counsel, with Ms Victoria Hiley, Solicitor of Colin Biggers & Paisley.  The opponent did not attend the hearing.

Prior to the hearing, the applicant filed with the Trade Marks Office ('TMO') and forwarded to the opponent the following:

• Statutory declaration of Victoria Sharmandine Hiley, Solicitor, dated 18 July 2002, with Exhibits "A" to "G" and "VSH1" ('the second Hiley declaration')

• Statutory declaration of Victoria Sharmandine Hiley, Solicitor, dated 22 July 2002, with Annexures "A" and "B" ('the third Hiley declaration')

• Statutory declaration of Elizabeth A Galloway, Senior Vice President and Chief Legal Officer of Ladies Professional Golf Association, dated 28 June 2002, with Exhibits "A" to "H"

The applicant advised that Ms Hiley's declarations relate to this extension of time matter, whereas Ms Galloway's declaration forms part of the applicant's evidence in answer.

Submissions

Mr Studdy explained that the current position in this matter is different to that which was before the Senior Examiner in June.  He said that the information now provided by way of the statutory declarations of Ms Hiley establishes that negotiations between the parties were on foot, and are continuing, and that the applicant's failure to file the extension application on time was due to misunderstanding and error.

Pointing me to the provisions of regulations 5.7 and 5.10 of the Trade Marks Regulations ('the Regulations') he argued that as the opponent had not filed its evidence in support within the 3-month statutory period allowed, it had not complied with regulation 5.7.  That being so, he contended, there was an obligation on the part of the TMO to notify the applicant of the date the period for service of evidence in answer was to commence, as per regulation 5.10.

He argued that a refusal of the extension would greatly prejudice the applicant, as both the evidence which it had now filed and any other evidence it may wish to put forward in answer would be precluded from consideration in any substantive hearing.  He pointed me to the need for justice in the final outcome (Intencity Pty Ltd v O'Mahoney (1998) 40 IPR 514 at 520) and reminded me that the relevance of the evidence now put forward should be considered prior to determination of the extension application (A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213).

The public interest, he indicated, would best be served by allowing the substantive issues to be determined on merit, not on a mere technicality.

The law

Regulations 5.7, 5.9, 5.10 and 5.15 are relevant to this decision.

Regulation 5.7 provides as follows:

Evidence in support

5.7 (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.

Regulation 5.9(1), which provides for the service of evidence in answer in opposition proceedings, reads as follows:

Evidence in answer

5.9 (1) If the applicant intends to rely on evidence in answer to the opposition, the applicant must serve a copy of the evidence in answer on the opponent within the period for service of a copy of that evidence under regulation 5.10.

Regulation 10 provides:

Period for service of a copy of the evidence in answer

5.10 (1) If the opponent complies with regulation 5.7 or 5.8, the period for service of a copy of the evidence in answer to the opposition is 3 months from the day on which the opponent serves on the applicant:

(a) the copy of the evidence in support referred to in subregulation 5.7 (1); or

(b) the copy of the notice referred to in subregulation 5.8(1).

(2) If the opponent does not comply with regulation 5.7 or 5.8:

(a) the period for service of a copy of the evidence in answer to the opposition is the period of 3 months beginning on the day notified by the Registrar under paragraph (b); and

(b) the Registrar must, after the end of the period of 3months referred to in subregulations 5.7(1) and 5.8(1), notify the parties in writing of the day on which the period for service of a copy of the evidence in answer to an opposition is to begin.

The 3-month statutory period allowed for service of evidence in support or evidence in answer may be extended as provided by regulation 5.15.  In so far as it is relevant, that regulation reads:

Extension of period to serve evidence and service of further evidence

5.15 (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

(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

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.

(6) Subregulations (2), (3) and (4) apply to an application under subregulation (5).

Reasons 

Regulation 5.15(3) requires that before granting an extension, I must be reasonably satisfied that the extension is appropriate, that service requirements have been met, and that both parties have been allowed an opportunity to make representations. 

Whether the extension is appropriate

The criteria to be applied, when deciding whether an extension of time to serve evidence in an opposition proceeding is appropriate, have been established in cases such as Lyons and Anor (trading as Mitty's Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416. Those criteria are

• whether the extension applicant has made out a proper case,

• the relative inconvenience to the parties, and

• the public interest.

Whether the extension applicant has made out a proper case

Evidence in support was served on 11 December 2001.  Allowing for the 3-month statutory period, evidence in answer was due to be served on or before 11 March 2001.  This extension application has been filed on 19 April 2002, some five weeks out of time. 

A satisfactory reason for the delay does not appear in either the first Hiley declaration or the written submissions dated 7 June 2002.  In her first declaration, Ms Hiley indicates that she sought instructions from the trade mark applicant in December but instructions were not forthcoming for some time because the in-house counsel for the applicant was overseas.  The written submissions set out a chronology of communication between Ms Hiley and the applicant but provide no satisfactory explanation of the delay.

In her second declaration, however, Ms Hiley provides a much clearer explanation of the circumstances that led to the application being made out of time, indicating that the extension of time was made late because of error or omission on her part.  She says she was under the impression that the TMO would notify the applicant's agent when evidence in answer was due.  Following service of the opponent's evidence in support, she sought instructions from the applicant several times and was advised the applicant intended to negotiate.  At that time, Ms Hiley explains, she did not press the need to serve evidence or to file an extension of time by 11 March.  When she received the Overdue Evidence Notice issued by the TMO, she sought further instructions from the applicant, and was advised to seek an extension of time on the basis of negotiations between the parties.

Mr Studdy suggests the period for service of evidence in answer never commenced, as the Registrar did not notify the parties of the date as per regulation 5.10(2).  I do not agree.  Regulation 5.7 allows three months from the date of filing of Notice of Opposition for evidence in support to be served.  That 3-month period can be extended under the provisions of regulation 5.15.  If an opponent successfully obtains an extension under regulation 5.15, and serves its evidence within the extended period, it discharges the onus on it to comply with regulation 5.7.  In such a case regulation 5.10 is not triggered. 

In this instance, the opponent successfully obtained four 3-month extensions of time.  Those extensions took the due date for service of evidence in support to 16 December 2001. It completed service of evidence on 11 December 2001, within the extended time allowed.  The opponent complied with regulation 5.7 and regulation 5.10 was not triggered.  There was no obligation on the part of the TMO either to set, or advise the parties of, the date evidence in answer was to commence.

However, I accept Ms Hiley's explanation of the circumstances that led to the extension application being filed out of time.  I am satisfied that the applicant had formed an intention to negotiate with the opponent prior to the date service of evidence in answer was due, and that error and misunderstanding on the part of the  agent were responsible for the extension application being made out of time. 

I turn now to the reasons for needing extra time.  As per Vangedal Nielsen and Others v Smith (Commissioner of Patents) and Another (1980) 33 ALR 144 the onus is on the extension applicant to provide sufficient reason to support its request.

The extension application was sought "on the basis that the trade mark applicant has entered into negotiations with the trade mark opponent".  The Registrar will usually regard negotiations as justification for extra time, providing there is no counter argument from the other party.  Here, the opponent objected to the extension application, arguing that no settlement offer had been made.  In such circumstances, the onus squarely falls on the applicant to establish that negotiations are on foot.

The information before the Senior Examiner on 14 June showed the applicant had an intention to negotiate, but it did not clearly demonstrate that negotiations were taking place.  Since then, however, adequate evidence has been provided to support the applicant's claim.  Annexures "E" and "F" of the second Hiley declaration, are copies of letters exchanged between the parties.  The letters, dated 18 and 25 April respectively, clearly establish that the parties are communicating in an effort to reach an agreed settlement.  There is nothing before me to suggest that the opponent has informed the applicant that it does not wish to negotiate, or that the opponent regards negotiations as being at an end.

I am therefore satisfied that negotiations are under way and that the applicant has made out a proper case.

Relative inconvenience

I agree with Mr Huddy that the applicant will suffer great inconvenience if the extension is denied.  The applicant is in the midst of negotiations with the opponent.  It has prepared evidence.  If the extension is refused, the applicant will be denied the opportunity of negotiating an amicable outcome, as well as the opportunity of serving evidence in answer to the opposition.  This could prove fatal for the trade mark application.

The opponent, on the other hand, after being granted four unopposed extensions of time, has served its evidence in support.  The opponent did not attend the hearing, and I am aware of nothing to suggest it would be specifically disadvantaged if the extension were granted.

On balance, I consider the inconvenience a refusal of the extension will cause the applicant outweighs the inconvenience the extension is likely to cause the opponent.

Public interest

To some extent the public interest lies in the efficient operation of the Register (Vangedal, previously quoted).  There is also a public interest in the Registrar having available all relevant material should the substantive issues be heard (Bundy American Rent-a-Wreck (Vic) Pty Ltd (1985) 5 IPR 307.

The applicant has put forward evidence in answer, and Mr Studdy has reminded me that the relevance of such evidence should be considered in deciding whether or not to allow the extension of time (A Goninan v Commissioner of Patents, previously quoted).  I am mindful that the extension of time sought covers the period 11 March to 11 June 2002.  The statutory declaration of Elizabeth A Galloway, is dated 28 June 2002, which is after the expiry of the extension sought.  The declaration was not filed with this office until 22 July 2002. The probative value of that evidence, therefore, has no relevance to this extension application.

This is a first extension request and the applicant has demonstrated it is engaged in negotiations with the opponent in an attempt to reach an amicable settlement.  In such circumstances, I consider the public interest would be best served if the extension were allowed.

Service requirements and opportunity to make representations

The applicant advised that a copy of the extension application was served on the opponent on 17 April 2002.  The opponent provided submissions objecting to the extension of time on 22 May 2002.  On 22 July 2002 the opponent advised the TMO that it would not be attending the hearing on 23 July, which was set down at the request of the applicant. 

I am satisfied that service requirements were met and that both parties have had a reasonable opportunity to make representations in relation to the extension application (regulation 5.15(3)(a) and (b)).

Decision

Having considered all relevant criteria, I am reasonably satisfied the extension requested is appropriate, and that the requirements of regulation 5.15(3)(a) and (b) have been met.  I grant the extension of time to 11 June 2002.

Frances Aarnio

Senior Examiner

Trade Marks Hearings

17 September 2002