Re B S Grant Services Pty Ltd

[1997] ATMO 61

Trade marks act 1955

decision of a delegate of the registrar of trade marks with reasons

Application for Extension of Time to Register a Trade Mark in Relation to Lapsed Application No 648922 in the Name of B S GRANT SERVICES PTY LIMITED

Background

Trade mark application no 648922 was advertised as accepted for registration on 9 November 1995.

On 21 October 1996 the applicant for registration, B S Grant Services Pty Limited (“Grant”), lodged a request for the recordal of an assignment of the trade mark to Softspikes Inc together with a certified copy of the deed of assignment.  Apart from a question as to the seal of the assignee, as to which the applicant was alerted, the Act contained no provision for the assignment of an application for registration and the assignment was not recorded at that time.

On 12 December 1996, the registration fee not having been paid within the prescribed period of 12 months, the application was advertised as lapsed.

Although the Trade Marks Act 1995 commenced on 1 January 1996, as provided in the transitional provisions of Part 22 of that Act, the provisions of the repealed Trade Marks Act 1955 continue to govern this application for extension of time as the application for registration was accepted before that date.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

On 23 April 1997 H R Hodgkinson & Co, patent attorneys, applied to restore the lapsed application stating that at all times it was intended to pay the registration fee prior to the deadline of 9 November 1996. In an accompanying declaration Mr David Bradley of Hodgkinsons stated that that firm acted for the assignee of the trade mark. He also stated that negotiations between Grant and the assignee had taken place over a considerable period of time and were continuing at around the time of the acceptance of the application. It was presumed throughout that Grant had attended to payment of the registration fee. He further stated that the application lapsed due to an error or omission on the part of the assignor in the first instance and thereafter due to the fact that the Trade Marks Office did not notify his firm of the imminent due date for payment of registration fee of 9 November 1996. He stated that the application for restoration was being made pursuant to s224(3) of the Trade Marks Act 1995 on the ground of special circumstances which justified the grant of an extension of time.

On 5 May 1997 the Assistant Director, Trade Marks Support, refused the application for restoration of the lapsed application pointing out that in accordance with s241(2) of the 1995 Act reg 18(2) of the repealed Act continued to apply and that that regulation required an applicant to show circumstances beyond his or her control before a lapsed application could be revived. She also noted that because an assignment could not be recorded until the trade mark was registered the trade mark application had to be prosecuted by the applicant or the applicant’s agent and not by an assignee.

On 28 May 1997 Hodgkinsons responded requesting reinstatement of the application pursuant to reg 18(2) of the Act stating that they were authorised by Grant to act on its behalf in all matters relative to the registration of application 648922.  Mr Hugh Hodgkinson submitted that there were circumstances beyond the control of the applicant that resulted in the failure to pay the registration fee by the prescribed date.  Those circumstances were that as a result of the assignment of the trade mark on 8 July 1996 the applicant had no control over the mark including the steps that might or might not be taken to achieve registration of it.  He said that a decision whether or not to pay the registration fee in the period from 6 July 1996 to 9 November 1996 was therefore quite out of the applicant’s control.  He also noted that the assignee was the owner of the trade mark at common law in Australia having used the mark on its goods in this country since at least 1993.  He therefore submitted that its proprietorship of the trade mark would be prejudiced should the Registrar’s discretion not be exercised in favour of the restoration of the lapsed application.

On 5 June 1997 the Assistant Director, Trade Marks support, wrote again to Hodgkinsons informing them that she accepted the submission that the failure to register the trade mark in the time allowed was a circumstance beyond the control of the applicant and that the requirements of reg 18(2) had been met.  She added, however, that the grant of an extension of time under s54(5) of the Act was discretionary and that it was the Registrar’s practice not to exercise the discretion if the interests of a third party would be adversely affected by the grant.  In this case the applicant’s trade mark had been cited against three later filed applications.  Two of those, however, were owned by the assignee of the present trade mark.  She concluded that because the reinstatement of the present application would adversely affect the owner of the remaining application she was not prepared to grant the extension of time.  She reminded Hodgkinsons of the applicant’s right to be heard.

On 25 September 1997 Hodgkinsons applied to be heard in the matter and a hearing was set down for 21 October 1997 in Canberra.

On 16 October 1997 I spoke to Mr Hodgkinson by telephone and informed him that, unlike the Assistant Director, I did not accept that the circumstances detailed in his submissions amounted to circumstances beyond the control of the applicant and that he should be prepared to make submissions on the matter at the hearing.

During the hearing Mr Hodgkinson, in detailing the history of the application, raised a number of matters of fact for the first time.  I therefore asked him to file a statutory declaration attesting to those new material facts.  This he did by fax on 22 October 1977.  The fresh facts which then emerged were that:

¨    “on 6 August 1996 H R Hodgkinson & Co wrote to our instructing solicitors reminding them of the need to pay the registration fee;

¨    on 14 August 1996 the US Attorneys for the assignee faxed the Australian solicitors instructions to instruct us to attend to the assignment and to pay the registration fee by the due date of 9 November 1996;

¨    on 15 August 1996 the Australian solicitors faxed a copy of the 14 August fax to us with a request that “Please deal with Fish & Neave (the US attorneys) direct on this matter.”  At this point H R Hodgkinson & Co should have paid the fee but the responsible officer within my firm overlooked same during his preparations to record the assignment.”

In support of the above, copies of the following correspondence were annexed to the declaration:

¨    fax from H R Hodgkinson & Co to Robinson Creais, solicitors, dated 6 August 1996, containing the following:

“We recommend that registration of the Grant Services application in fact be completed, as it will then provide Softspikes, Inc with a useful precedent in achieving registration of its own application 707957, bearing in mind that both marks will then be in the same name.

Please note the due date for payment of the registration fee in connection with application 648922 is the 9th November 1996.”

¨    fax dated 14 August 1996 from Fish & Neave, the US attorneys for Softspikes, Inc to Robinson Creais, solicitors, containing the following instructions:

“Please instruct H R Hodgkinson & Co to attend to the assignment recordation of Australian Application No 648922 of SOFTSPIKES to Softspikes, Inc

Also, kindly instruct payment of the registration fees for Application No 648922 prior to the due date of November 9, 1996.”

¨    fax dated 15 August 1996 from Robinson Creais to Fish & Neave containing the following:

“I have written to Mr Hodgkinson confirming your instructions for him to attend to appropriate notifications of the assignment.

I assume that he will write to you separately concerning the arrangements to place him in funds to pay the required registration fee,”

¨    fax from Robinson Creais to H R Hodgkinson & Co dated 15 August 1996:

“I attach a copy of a facsimile received this morning from Fish & Neave together with a copy of my reply.

Please deal with Fish & Neave direct on this matter.”

Submissions

Mr Hodgkinson then referred me to the following cases:

In Re Coles and Ravenshear (1907) 1 KB 1 the English Court of Appeal dealt with an application to extend time for appeal, the time having been allowed to expire because a solicitor had accepted an erroneous opinion of counsel that time would run until a particular date. The Court refused the application which was brought under a rule in the following terms:

No appeal to the Court of Appeal shall, except by special leave of the Court of Appeal, be brought after the expiration of fourteen days.

Collins MR and Cozens-Hardy LJ both held that binding authority compelled them to the view that a mistake made by a solicitor was an insufficient ground under a rule expressed in those terms, but both would have granted an extension if the matter had been free from authority.  Collins MR said, at 4:

I confess that, if the case were free from authority, and I felt myself at liberty to follow my own judgment in the matter, I should unhesitatingly allow the time to be extended.  Although I agree that a Court cannot conduct its business without a code of procedure, I think that the relation of rules of practice to the work of justice is intended to be that of handmaid rather than of mistress, and the Court ought not to be so far bound and tied by rules, which are after all only intended as general rules of procedure, as to be compelled to do what will cause injustice in the particular case.

And at 5:

Therefore, where there has been a perfectly bona fide mistake, and no damage has thereby been done to the opposite party which cannot be sufficiently compensated by costs, I should, if the matter were at large, be of the opinion that special leave to appeal should be granted.

In Martin v The Nominal Defendant (1954) 74 WN (NSW) 121 which dealt with an application for an extension of time fixed by statute for the commencement of proceedings Walsh J said, at 125:

...a failure by a solicitor to take the proper steps could itself be regarded as establishing sufficient cause for an extension of time.

A similar finding was made in Hunter Valley Developments Pty Ltd v Minister for Home Affairs and Environment (1984) 3 FCR 344.

In Salter Rex & Co v Ghosh (1971) 2 QB 597 Lord Denning MR said, at 601:

So Dr Ghosh is out of time.  His counsel admitted that it was his, counsel’s, mistake, and asked us to extend the time.  The difference between two weeks and four weeks is not much.  If Dr Ghosh had any merits which were worthy of consideration, we would certainly extend the time.  We never like a litigant to suffer by the mistake of his lawyers.

In Regina v Secretary of State for the Home Department, Ex parte Mehta (1975) 1 WLR 1087 Lord Denning MR, stating the reasons of the Court of Appeal, said, at 1091:

One of the special circumstances here was the fact that the omission was the mistake of Miss Mehta’s solicitors.  It was said that the mistake of her solicitors could not amount to “special circumstances” within rule 11.  I do not agree.  In applying rule 11, I should have thought that the appellate authority might well adopt the practice which we adopt in the Court of Appeal here.  We are often asked to extend the time of giving notice of appeal.  We never let a party suffer because his solicitors make a mistake and are a day or two late in giving notice of appeal.  We always treat it as a ground for extending the time...

In Hughes v National Trustees Executors & Agency Co of Australasia Ltd (1978) VR 257 McInerney J of the Victorian Supreme Court said:

The object of the rule is to give the Court a discretion to extend the time with a view to the avoidance of an injustice...

One object of fixing times under the rules is to achieve a time table for the conduct of litigation in order to achieve finality of judicial determinations.  A successful litigant has an interest in knowing that a claim against him has been determined and that he is no longer “at risk”...

In the Supreme Court of New South Wales, the joint judgment of Reynolds, Hutley and Bowen JJA in Outboard Marine Australia Pty Ltd v Byrnes (1974) 1 NSWLR 27 at 30 includes the following:

We appreciate that the Rules of Court, particularly those relating to time, should never be allowed to be an instrument of tyranny.  They do, however, have purposes, one of which is that the parties may know where they stand and regulate their affairs accordingly.  It is also appreciated that where genuine issues ought to be litigated, if such can be done with fairness to all concerned, it is appropriate to take a benign view of applications to extend time

The approach of that Court that its discretion should not be bound by rules but should be exercised wherever sufficient cause is shown upon an examination of the circumstances of the particular case was confirmed in Morris v Public Transport Commission (unreported, Moffit P, Glass and Mahoney JJA, 28 May 1984), where the time was extended, in unusual circumstances, six years after a notice of appeal had been inadvertently filed one day outside the prescribed period.  Moffit P (with whom Glass JA agreed) held that the notice of appeal was irregular, but not a nullity.  He said that if the irregularity had been perceived shortly after it had occurred:

It is inconceivable that the error would not have been adjusted by an order extending time. ...  The modern practice is directed to avoiding technicality and instead seeks to look to the actual prejudice arising from departures from procedural rules. ...  In the end it is a question of what is just between the parties.  The negligent delay by a plaintiff’s solicitors may operate against a plaintiff, but the blamelessness of a plaintiff personally for delay has to be weighed with such negligence and other relevant facts.

All of the above cases can be readily distinguished from the present inasmuch as they deal with applications for special leave to file notice of appeal or with statutes or rules of court which stipulate “special circumstances”, “good reason”. etc.  None of them deals with the much more stringent test of “circumstances beyond the control” of the relevant person.  The case itself in which the above authorities are gathered, Jess v Scott (1986) 70 ALR 185, concerned the application of Order 52 Rule 15(2) of the Federal Court Rules. Sub-rule (1) of Rule 15 provided for the appeal period of 21 days, and for its extension upon application made by motion upon notice filed within the period of 21 days. Sub-rule (2) then provided as follows:

Notwithstanding anything in the preceding sub-rule, the Court or a Judge for special reasons may at any time give leave to file and serve a notice of appeal. (Emphasis added)

Once again, this is quite different from “circumstances beyond the control” of the applicant.

Mr Hodgkinson then attempted to distinguish Stadium Sports Franchising Pty Ltd v Stadium Australia Management Ltd (1997) 37 IPR 345 which dealt with an application to extend time for the late filing of a notice of opposition under subregulations 5.2(b) and (c) of the 1995 Trade Marks Regulations. In that case the delegate of the Registrar found that the failure to deposit the notice in the late box at the Sydney State Office in time did not amount to circumstances beyond the control of the person applying for the extension of time because the filing of the notice had been left until the last possible moment. Mr Hodgkinson argued that that was not the case with this application where the trade mark applicant and/or the assignee had simply been unaware that the relevant act had not been done.

Mr Hodgkinson also referred me to Re Sanyo Electric Co Ltd and Commissioner of Patents (1996) 36 IPR 470 which dealt with an application for extension of time to pay renewal fees on a lapsed patent where there had been a failure to pay and other delays totalling roughly four years. This was a decision of the Administrative Appeals Tribunal setting aside the decision of the delegate of the Commissioner and allowing the extension. However, that case was decided on the basis of errors or omissions by Sanyo’s agents which enlivened the Commissioner’s discretion to allow an extension under s223(2)(a) of the Patents Act 1990 and not on the basis of circumstances beyond the control of the person concerned under s223(2)(b).

Another case to which Mr Hodgkinson referred, which concerned the restoration to the Register of a mark which had been removed for non-renewal, is Re Application by D R and E M Sefton (1987) 11 IPR 424. In that case, which was decided on the basis of s131(1)(a), the delegate of the Registrar, relying on Lyons v Registrar of Trade Marks (1983) 1 IPR 416, found that the failure to renew the registration was due to circumstances beyond the control of the applicants because of the loss, or non-delivery to them, of a letter from the Office in response to a letter of theirs requesting the appropriate forms and further information as to method of payment of the renewal fee. If that letter had been delivered the registration would have been renewed within time and nothing that subsequently followed would have occurred.

Mr Hodgkinson also cited the words of Dixon J, as he then was, in R v The Registrar of Trade Marks; ex parte J S Staedtler (1936) 55 CLR 271 at 274:

...on the expiration of time for opposition, when no opposition is lodged, the Registrar’s duty to register becomes absolute

in support of the proposition that there is an overriding obligation on the Registrar to register a trade mark once the period for opposition has passed without notice of opposition.

As to the question whether, if the mark were registered, the use of it would lead to deception or confusion Mr Hodgkinson referred to Jafferjee v Scarlett (1937) 57 CLR 115. In that case Latham CJ said, at 119:

The result is that the applicant before this court is in the same position as before the Registrar, that is, the onus is on the applicant to show that, if his mark is registered, “there would be no reasonable danger of the public being so deceived” - to use the words of Lord Herschell in Eno v Dunn (1890) 15 App Cas 261. If the matter is left in dubio the application for registration should be refused.

He submitted that there was no reasonable danger of deception or confusion of the public to be feared if the extension of time were to be allowed and the trade mark registered.

Mr Hodgkinson then referred to Unibraze Corp v Sandgate Investments Pty Ltd (1972) 42 AOJP 4102 in which the facts were somewhat similar to those of the present case except that Unibraze filed notice of opposition and then withdrew the opposition when the trade mark was assigned to it by the local applicant.  Mr Ashton observed:

...while the question of the validity of an assignment of the marks is not presently in issue, there is nothing before me to show that as trade marks proposed for use there has been any use of the marks by the applicant which would warrant the opponent claiming that the applicant has anything to assign.  It is clear from the provisions of s82 of the Act that a registered trade mark may be assigned with or without the goodwill of the business concerned in the goods in respect of which the trade mark is registered or of some of those goods, but I cannot find any authority for the proposition that an unregistered trade mark, particularly one which has not been shown to be used by the proposed assignor, can be assigned without the goodwill of the business concerned in the goods in respect of which the trade mark is used.

...

The only decision I have to make is that in my view the applicant has not made adequate disclosure to me of its relationship to the trade marks which are the subject of the present application, in particular with regard to the fundamental question whether the application is made on behalf of a person properly claiming to be the proprietor of the mark.

In the absence of such disclosure Mr Ashton refused an extension of time in which to register the trade mark and directed that the applications be recorded as lapsed.  I cannot see how this case is of any assistance to Mr Hodgkinson’s cause.

Decision

Section 241 of the Trade Marks Act 1995 provides as follows:

Application for registration of trade mark

241.(1) This section applies if an application for the registration of a trade mark in Part    A or B of the old register was pending immediately before 1 January 1996.

Note 1:For old register see section 6

Note 2:For pending see subsection 11(2)

(2) If the application had been accepted under the repealed Act and the acceptance was    in force immediately before 1 January 1996, the following provisions apply:

(a)subject to subsection (4), the repealed Act (other than paragraph 45(1)(b)) continues to apply in relation to the application;

(b)if, after dealing with the application in accordance with the repealed Act, the Registrar is required under section 53 of that Act to register the trade mark in the old register—the Registrar is to register the trade mark under Part 7 of this Act.

Application 648922 was accepted on 9 November 1995 and the acceptance was in force immediately before 1 January 1996.  Therefore the repealed Act continues to apply to this application.

Section 54 of the repealed Act, so far as is relevant to this application, provides as follows:

Time for registration

54. (1) Subject to this section, a trade mark shall not be registered after 12 months           from the date of the advertisement of the acceptance of the application.

...

(5) Where a trade mark cannot be registered within the time allowed by or under this      section, that time may, on application made to the Registrar within the   prescribed time, but subject to the regulations, be extended for such further      time as is prescribed.

(6) Where a trade mark has not been registered within the time which is applicable to it    under this section the application shall lapse.

Regulation 18 then provides:

Prescribed time and conditions for purposes of section 54 (5)

18. (1) The prescribed time for the purposes of sub-section (5) of section 54 of the Act     is the period of twelve months after the expiration of the time allowed by or      under that section for the registration of the trade mark.

(2) An extension of the time within which a trade mark may be registered shall not be      allowed under sub-section (5) of section 54 of the Act unless the Registrar is          satisfied that the trade mark cannot, or could not, be registered within the time    allowed by or under that section by reason of circumstances beyond the control     of the applicant.

In order, then, to grant the extension of time sought I must be satisfied that the trade mark could not be registered within the time allowed, that is, 12 months from 9 November 1995, by reason of circumstances beyond the control of the applicant.  Section 54 of the Act together with reg 18 form a code or exhaustive set of provisions relating to the time for the registration of trade marks under the 1955 Act which therefore excludes the operation of other extension of time provisions such as ss130 and 131.  It is therefore necessary that the applicant demonstrate that the trade mark could not be registered by reason of circumstances beyond the applicant’s control.  No other consideration is relevant.

In considering the meaning of the expression “circumstances beyond the control of the person concerned” in s131(1)(a) of the 1955 Act Jenkinson J said, in Atomik Skifabrik Alois Rohrmoser v The Registrar of Trade Marks (1987) 7 IPR 551, at 558:

In the context in which it is found, the expression “circumstances beyond the control of the person concerned” does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent.  The operations of nature and the activities of strangers may result in such occurrences.  So, too, may the acts or omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed.  But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in s131(1)(a), in my opinion.  Nor, in my opinion are the acts or omissions of that agent’s servants.  The section is, I think, correctly described as a force majeure provision.

The context referred to was that of extension of time which is the same context in which the expression occurs in reg 18(2) to the same Act.  It must therefore have the same meaning in that regulation.  It designates therefore - and designates only - occurrences which neither the applicant nor any person acting on its behalf could prevent.

It is not clear when H R Hodgkinson & Co commenced to act for the assignee, Softspikes, Inc in the matter of the assignment but it is clear from the correspondence of 14 and 15 August 1996 that they were instructed to pay the registration fee prior to the due date of 9 November 1996 and assumed that responsibility.  Mr David Bradley had declared in his statutory declaration of 23 April 1997:

Negotiations took place over a considerable period of time between the assignor and assignee and indeed negotiations were continuing at around the time of acceptance of the application.  It was presumed throughout the course of negotiations that the assignor had attended to the payment of the registration fee.

At no time did the assignee intend the subject application to lapse.  The application lapsed due to an error or omission on the part of the assignor in the first instance and thereafter due to the fact that the Trade Marks Office did not notify my firm of the imminent due date for payment of registration fee of 9 November 1996. (Emphasis added)

And yet Hodgkinsons were aware as early as 3 May 1996 that the registration fee was due by 9 November 1996 and had not yet been paid.  In a letter of that date to Robinson Creais Mr Hodgkinson stated:

...an enquiry to the Trade Marks Office this morning indicates the registration fee has still not been paid.  If the said fee is not paid by the 9th November 1996, the application will lapse.

And on 14 or 15 August 1996, some three months before the final date for payment, the firm assumed responsibility for the payment of the fee.

The failure to pay the fee by the applicant, B S Grant, the assignor, was never a circumstance beyond its control.  Indeed, the ultimate responsibility for the payment of the registration fee lay on it as the applicant for registration.  Because the 1955 Act contained no provision for the assignment of unregistered trade marks the assignment of a trade mark could only take place after registration.  Hundreds, if not thousands, of trade marks were registered prior to the recordal of an assignment which had taken place during the course of examination or after acceptance.  Sometimes the fee was paid by the assignor, sometimes by the assignee, but there was absolutely nothing to prevent the applicant from paying the registration fee even if the trade mark had been assigned.  Having assumed responsibility for the payment of the fee, nor was the fact that the responsible officer “overlooked” the payment circumstances beyond the control of Hodgkinsons.

Conclusion

I cannot find that there were circumstances beyond the control of the applicant or beyond the control of H R Hodgkinson & Co, who assumed the responsibility to act on its behalf in the payment of the registration fee, which prevented the payment of the fee by the due date.  Therefore I must refuse the application for extension of time to pay the fee and to restore lapsed application 648922.

Michael Homann
Hearing Officer

30 October 1997