Re Richard Hall

[1997] ATMO 69

Trade marks act 1995

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

Application to revive lapsed trade mark application no. 646313 in the name of RICHARD HALL

Background

Trade mark application no. 646313 was filed on 22 November 1994 by Richard Hall and Trivisa International for the trade mark

in respect of “All categories of clothing, footwear and headwear as per class group 25”. The application was self-filed by Mr Hall.

The first examiner’s report was issued on 8 August 1995, under the Trade Marks Act 1955. A citation objection was raised on the basis of registered trade mark no. 508529, for the trade mark WILD OATS in class 25. The examiner also requested that the applicant’s goods be restricted to accord with the description FOR MEN in the trade mark, and that the word NATURALLY in the trade mark be disclaimed.

On 11 April 1996, Mr John Spence, of John Spence & Associates, solicitors, advised the Office that his firm acted for Mr Richard Hall, and applied for the assignment of the application from the joint names Richard Hall and Trivisa International, to Richard Hall alone.

Then, on 4 June 1996, Mr Spence replied to the examiner’s first report. He made submissions to the effect that the cited trade mark had been due for removal on 13 April 1996, but that removal had not been effected. Further, he requested that the trade mark be amended to delete the words NATURALLY SEWN and FOR MEN from the trade mark, or, alternatively, that a “claim to vary” endorsement be entered for the trade mark in respect of the words FOR MEN, along the lines of:

In use the descriptive words FOR MEN appearing within the mark may be varied to accord with the particular nature of the relevant goods with which they are used.

He also observed that, as the application was now proceeding under the Trade Marks Act 1995 (the new Act), a disclaimer in respect of the word NATURALLY would no longer apply.

The examiner issued his second report on 11 June 1996, and reviewed the trade mark application under the provisions of the new Act. He advised that, as the status of the cited trade mark was then “expired - renewal possible”, the owner of the trade mark still had 12 months from the date renewal fell due, within which to renew registration. After that time, the registration would be removed from the Register, and could not be renewed. This is in accordance with the provisions of sections 78 to 80 of the new Act. Grounds for rejection were therefore maintained under section 44 of that Act, subject to the trade mark applicant being able to provide evidence of concurrent or prior use of his trade mark, in terms of subsections 44(3) or (4).

Neither Mr Spence’s proposed amendment to the trade mark, nor the alternative of a “claim to vary” endorsement, were accepted by the examiner. He maintained that the statement of goods should be restricted to “Men’s clothing, footwear and headgear”.

The effect of the citation objection was that no further progress could be made on Mr Hall’s application until the twelve month restoration period had elapsed, on 13 April 1997. In the meantime, however, Mr Spence did continue correspondence with the examiner upon the issue of his proposed endorsement for the application.

Under section 36 of the new Act, and regulation 4.13 of the corresponding regulations, Mr Hall’s application would have been entitled to deferment of acceptance, had this been applied for within 15 months of the date of the examiner’s first report on the application. As the examiner’s first report issued on 8 August 1995, the final date for making application for deferral was therefore 8 November 1997. Mr Hall appears to have been unaware of his entitlement to defer, until it was too late. In any event, an application for deferment was not filed by Mr Spence until 27 November 1996. This was not allowed, as it was out of time. Therefore, if Mr Hall elected to keep his application alive, it was necessary for him to do this by way of paid applications for extension of time, at least until 13 April 1997, the final date for restoration of the cited trade mark.

Mr Hall duly filed and paid for the extensions, until his WILD OATS trade mark application was due for extension of time on 8 January 1997. At that point, however, the necessary request was not made by the relevant date. Much later, on 23 April 1997, Mr Spence made a belated application for extension of time.

By letter of 1 May 1997, the Assistant Director, Trade Marks Support, indicated that she was not prepared to grant Mr Spence’s application. She said:

I have considered the application and believe that the declaration would support the grounds on which the application is based. The declaration also contains reasons why the application was made more than three months after the time for acceptance had expired.

However, the grant of an extension of time under section 224(3) is discretionary and it is the Registrar’s practice not to exercise this discretion if the interests of a third party would be adversely affected by the grant. In this case your client’s trade mark had been cited against pending application 666126 in the name of Wild Oats Noosa Pty Ltd. I am aware that the applicant for this trade mark telephoned the examiner in mid February and was advised that your client’s application had lapsed.

Therefore in these circumstances I am not prepared to grant this application for an extension of time. As this decision will adversely affect your client, I remind you that your client may apply to be heard on this matter.

Mr Spence responded on 21 May 1997, requesting that the matter be set down for a hearing. In the meantime, cited trade mark no 508529 had passed the final date within which its renewal was possible. Its removal from the Register was advertised in the Official Journal of 15 May 1997.

Consequently, but prematurely, application no. 666126, for the trade mark was advertised accepted in the Official Journal on 29 May 1997. It has now been opposed by the present applicant, Richard Hall. I will return to the matter of the premature acceptance of this application later.

Submissions

In his original application for extension of time, dated 23 April 1997, Mr Spence declared the circumstances under which his client’s application was allowed to lapse. He described the background to the application, which I have already outlined above, and emphasised its “uncertain status, over a prolonged period”. He described the reasons for the application being made late as follows:

On or about the time when the said application was due for extension (on 8th January 1997), the office of my Firm was closed for the Christmas vacation. Due to an oversight, an application for extension of time was inadvertently not lodged before 8th January 1997. The office of my Firm re-opened on Monday 13th January 1997 but I did not return to work until Tuesday, 28th January 1997. Upon my return to work I realised that an extension of time was due in relation to the said application. However I was unable to obtain the instructions of my Client because he was at that time absent on a business trip both interstate and to New Zealand. It was only recently, on Monday 21st April, that I have been able to make contact with my Client and to obtain his instructions as well as suitable funds to enable the request for an extension of time to be made. It was not until I had obtained appropriate instructions as to the intentions of my Client as well as the requisite funds that I was able to attend to the making of the request for the relevant extension of time. Appropriate steps were taken by me promptly once I was in a position to do so. It was at all times my belief that my Client wished to maintain its pending trade mark application and that it was not the intention of my Client to allow the said application to lapse.

Mr Spence submitted that all the circumstances under which his client’s application had been prosecuted to date, taken in conjunction with the particular circumstances which necessitated the application for extension of time being made out of time, together constituted special circumstances under which the application should be granted. He pointed out that, given the prolonged period of time for which regular extensions of time had to be obtained by his client in order to keep current his pending application while the prior conflicting registration no. 508529 continued to remain on foot, it was not too difficult to conceive how easy a step it was to omit to effect the necessary extension at any due date.

At the hearing, which was held before me in Sydney on 7 July 1997, Mr Spence went on to argue that:

In any event, our submission is that the meaning of the expression “special circumstances” is not at issue in this present application and it does not need to be debated for the simple reason that the Assistant Director in her determination as set out in the official letter dated 23 April, 1997 (and which is the subject of this Hearing) has accepted that the ground of “special circumstances” has been made out and is supported. In other words, the validity of the ground for the requested extension of time is not contested and is not in issue. Rather, the Assistant Director has made a different decision entirely, namely that the Registrar’s discretion should in this instance be exercised against our client and in favour of Wild Oats Noosa Pty. Limited as the other interested party. It is that decision and the correctness of same which is the subject of this present Hearing and which we seek to review and reverse.

Mr Spence then went on to draw my attention to much relevant case law dealing with the exercise of the Registrar’s discretion. I will canvass further some of the points he raised later in my discussion.

As a “fall-back position”, Mr Spence submitted that his client’s application could also be considered pursuant to the provisions of paragraph 224(2)(a), “an error or omission by the person concerned or by his or her agent”. He based this argument on the failure of his client to seek deferment of acceptance within the prescribed time, and also his failure to secure the requisite extension of time before the prescribed date had passed.

Finally, Mr Spence observed that:

Having persevered for a long time and at considerable expense in maintaining his application, having come so far with that application, and having thereby demonstrated his commitment to the securing of registration, it does indeed seem to us unfair that our client should falter at the end and should be precluded from attaining registration on a technical ground.

Discussion
The relevant provisions of the Trade Marks Act 1995

Lapsing of application

37.(1) Subject to subsection (2), an application lapses if it is not accepted within the prescribed period or within that period as extended in accordance with the regulations.

(2) If, after the prescribed period or the prescribed period as extended (as the case may be) has expired, the Registrar extends under section 224 the period within which the application may be accepted, the application:

(a)is taken not to have lapsed when the prescribed period expired; and

(b)lapses if it is not accepted within the extended period.

Extension of time

224.(1) If, because of an error or omission by a trade marks officer, a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar must extend the time for doing the act.

(2) If, because of:

(a)an error or omission by the person concerned or by his or her agent; or

(b)circumstances beyond the control of the person concerned;

a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

(3) If:

(a)         a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and

(b)         on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;

the Registrar may extend the time for doing the act.

(4) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

(5) If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal.

(6) A person may, as prescribed, oppose the granting of the application.

Revocation of acceptance

38.(1) If, before a trade mark is registered, the Registrar is satisfied:

(a)         that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or

(b)         that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations;

the Registrar may revoke the acceptance of the application.

My decision in the matter of whether or not to revive this trade mark application hinges upon the provisions of subsections 224(2) and 224(3) of the Trade Marks Act 1995. Mr Spence’s “fall-back position” related to paragraph 224(2)(a), “error or omission by the person concerned or his or her agent”, although his original application was based upon “special circumstances”, under paragraph 224(3)(b). For the sake of continuity of progression through the provisions, I will deal with the arguments under subsection 224(2) first.

Error or omission by the person concerned or by his or her agent
Mr Spence’s submissions, as I described earlier, based his arguments in relation to paragraph 224(2)(a) on the failure of his client to seek deferment of acceptance within the prescribed time, and also his failure to secure the requisite extension of time before the prescribed date had passed. The phrase “error or omission”, as it appears in section 160(2) of the Patents Act 1952 has been subject to quite specific interpretation in the case law. Justice Jenkinson in Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Ltd 13 IPR 569, considered an application grounded on error or omission, where the error or omission claimed was the failure to do the act which brought on the need for the extension. He directed that the failure to do the act itself was not an error or omission which constituted a ground for an application to extend the time for doing that act. At page 580 he said,

...the failure to do the act or to take the step postulated in respect of an application for exercise of the power conferred by s160(2)(a) [of the Patents Act 1952] cannot itself be the “error or omission” by reason whereof the failure occurred. I accept that.

Similarly, in Toyo Seikan Kaisha Ltd v Nordson Corporation 5 IPR 388 the delegate of the Commissioner held that the plain meaning of s160(2) of the Patents Act 1952 required the establishment of some error or omission antecedent to the failure to perform the act or step; the “error or omission” must be the cause of the failure to perform the act or step in good time.

These interpretations have been carried through to the Trade Marks Act 1995 in recent decisions of delegates of the Registrar such as Stadium Sports Franchising Pty Ltd v Stadium Australia Management Limited (1997) AIPC 91-320, and Crown & Andrews Pty Ltd v All American Fremantle International Inc (unreported).

In light of the above, it is clear that Mr Hall’s simple failure to file his application for extension of time within time does not represent in itself an error or omission for the purposes of paragraph 224(2)(a). Furthermore, there is no apparent causal link whereby his failure to file an application for extension within time depended upon his earlier failure to seek deferment of acceptance within the prescribed time. Accordingly, I do not believe that the arguments provided by Mr Spence at the hearing in support of this application for extension of time properly satisfy the provisions of paragraph 224(2)(a).

However, when I return to the description of the circumstances of the late application which was initially provided by Mr Spence in his supporting statutory declaration, I find that this is not the end of the matter. The difficult and protracted nature of the prosecution of the trade mark application does seem to have set the scene for an “error or omission” in terms of paragraph 224(2)(a), on the part of either or both Mr Spence and Mr Hall, in actually losing sight of its final date for acceptance. As a result, Mr Spence went on Christmas leave without making due note that an extension was due by 8 January 1997, and Mr Hall went overseas without depositing the requisite funds or making any other necessary arrangements with his agent to continue extending his application.

Mr Spence declared that “due to an oversight, an application for extension of time was inadvertently not lodged before 8 January 1997”. Justice Jenkinson in Kimberly-Clark (supra), at pages 579-80, reflected upon the nature of such “oversights” with these words:

...the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips...

...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.

Judge Jenkinson hereby indicated a belief that the words “error or omission” should be given their plain, ordinary meaning. They should not be restricted by construction to certain categories of aberration of thought or behaviour such as misunderstanding, ignorance of the law, confusion or deception etc, or to mere inadvertences or accidental slips. Furthermore, the error or omission should be obvious.

It may have been helpful for Mr Spence to elaborate further in his evidence upon the circumstances surrounding his actual failure to file the extension application within time. However, Mr Spence’s primary focus was to establish the criteria for special circumstances. Then, at the hearing, he directed his arguments primarily towards the exercise of the Registrar’s discretion, having assumed that the issue of whether the application satisfied the requisite criterion of “special circumstances” under section 224 had already been decided. Although I have limited information about the true circumstances of the oversight, when I consider it in conjunction with what I do know of the history of the prosecution of the trade mark application, I am satisfied that it was an obvious error or omission. Because the oversight flies in the face of Mr Hall’s long persistence up to that point to maintain his application until the removal of the registration which blocked its acceptance, the only satisfactory, or obvious, explanation for the oversight is that it was a genuine error or omission.

In D'Urban Inc v Canpio Pty Ltd (1990) AIPC 90-658, the delegate of the Registrar formed the conclusion that regulation 69 of the Trade Marks Act 1955 could be applied to remedy the consequences of “errors or omissions made by the applicant for extension, or by their agent”. Regulation 69 allowed late extensions of time under that Act to be made

if the Registrar is satisfied that special circumstances existed which prevented the application from being made before [the expiration of the time sought to be extended], within such time as the Registrar allows.

Under the new Act, the concept of “special circumstances” is no longer required to remedy such errors or omissions, as they are separately covered by their own provision. However, it seems to me that, in the present circumstances at least, the two factors are very closely related.

Mr Hall’s case for special circumstances, and his case for error or omission are inextricably bound together, such that my finding that an error or omission has occurred depends upon the context of the special circumstances affecting the prosecution of Mr Hall’s trade mark application, as described in Mr Spence’s declaration. It is to these special circumstances that I must now direct my attention.

Whether special circumstances exist
Paragraph 224(3)(b) says:

[if] on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time

then, the provision concludes:

the Registrar may extend the time for doing the act.

It follows, therefore, that in applying this provision, the Registrar must firstly be satisfied that special circumstances do exist. Then, he or she must be satisfied that, on the basis of the facts, the established special circumstances justify the grant of an extension of time. The Registrar retains a discretion. He or she may extend the time. It was upon the question of discretion that Mr Spence directed most of his submissions at the hearing, for the reasons I have quoted earlier.

From consideration of the Assistant Director’s letter of 23 April, I concede that it appears she did indeed lean towards the opinion that Mr Hall’s extension application had demonstrated the requisite special circumstances provided for under paragraph 224(3)(b). However, I cannot agree with Mr Spence that the Assistant director had intended by her letter to definitively determine that aspect of the matter, so that it may not be further debated in the present forum. Instead, I believe that, in order for me to properly make a decision in relation to the appropriate exercise of the Registrar’s discretion to revive the subject application, I do need firstly to be satisfied that special circumstances existed in relation to the late application for extension of time at issue.

Although it is a new provision in a new Act, the wording of subsection 224(3) has a good deal in common with the wording of regulation 69 of the Trade Marks Act 1955, quoted above.

Recent case law showed that section 69 should be interpreted by the delegate of the Registrar so as to achieve an outcome that is fair in the circumstances, having due regard to the factors to be determined, as outlined in the case of Lyons (trading as Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416.

In Australian Professional Rodeo Association Inc v WranglerApparel Corp, (1996) 36 IPR 282, Hearing Officer Forno said, at page 288:

Given that reg. 69 is now triggered, the “special circumstances” mentioned in that regulation must be shown which are sufficient to satisfy the Registrar before s/he can favourably exercise his discretion. Only if those circumstances are shown to the Registrar's full satisfaction, can s/he further consider the matter of the extension itself. If that is successfully accomplished, the criteria used to decide the case would be the same as those at issue as in the Lyons case, supra. This means that the applicant for the extension must then discharge its onus of making out a proper case for the granting of the extension, and the Registrar should also consider the balance of convenience for both parties in allowing the extension and the public interest.

...In D'Urban Inc v Canpio, supra...although the extension was ultimately refused, Assistant Registrar Farquhar agreed that, as with the finding in Genentech v WellcomeFoundation Ltd, (1987-88) 11 IPR 401, reg 69 should be interpreted liberally.

In Genentech, supra, Supervising Examiner Roveta referred to Jess v Scott (1986) 70 ALR 185 as establishing that the modern interpretation of the expression “special circumstances” in the Patents regulations should be a liberal one...so as not to let an appellant suffer unfairly.

With regard to the present situation, Mr Spence has cited a series of circumstances which he claimed as “special”. I agree with him that this application has had a particularly unfortunate history. In the first instance, it was entitled to deferral of acceptance, as a result of the citation raised against it. That opportunity was lost, largely because, during the time he was self-prosecuting his application, Mr Hall was unaware of this entitlement.

In the second instance, when he took over prosecution of the application, Mr Spence was required to direct a great deal of his energies towards attempting to overcome an examination requirement for restriction of the statement of goods. That requirement seems to have resulted from a rather more strict application of the guidelines outlined in the Trade Marks Draft Manual of Practice and Procedure (The Draft Manual) than was appropriate under the circumstances. The Draft Manual says, at Part 25, Section 1.3.5:

However, when making a decision as to when a specification should be restricted because of the presence of a possibly misdescriptive element in the trade mark, it is the Registrar's function to be concerned with possible deception of a person of “ordinary intelligence” (Windeyer J the “Oil Drop” case) rather than a “specially stupid person” (Lathan CJ “Peanuts” case). Examiners must be satisfied that there is a real risk of confusion to the customer of average sense and education before requesting such a restriction of the specification. As a guide, if the description can reasonably be checked out by inspection of the product, no restriction will be needed (eg Beachgirl on men’s and women’s swimwear). If on the other hand the description cannot be verified by an ordinary inspection, then the constraints on the specification must be imposed to ensure that the trade mark is not used misdescriptively (eg All wool on fabrics or clothing).

As with the use of BEACHGIRL on swimwear, the present trade mark will be used on clothing, and whether that clothing is suitable for men or women or both, will be verifiable on ordinary inspection. Whether a person considers the clothes they buy to be specifically “for men”, or “for women” depends just as much upon their point of view, as upon the way those clothes are labelled, or even upon the type of shop in which they are sold. The average customer would generally be expected to examine the products and decide for themselves. Accordingly, I do not believe that there is any risk of confusion which would justify the imposition of a restriction of the goods of Mr Hall’s trade mark application.

This belief was and is shared by Mr Spence. Unfortunately, it appears that his attention and energies were diverted, at a vital time, away from other aspects of the case and towards his urgent campaign to avoid a restriction of goods being imposed on his client’s application.

Ultimately, the scene was set for the critical error or omission which I have examined above. As I have said, although that error or omission stands alone under the provisions of subsection 224(2) of the new Act, it also represents the culmination of all the circumstances affecting the ability of Mr Spence and his client to vigilantly maintain the current status of the application. I am now satisfied that the combination of factors described by Mr Spence does represent special circumstances, in terms of the interpretation described in the Wrangler case, supra.

The exercise of the Registrar’s discretion

Having arrived at the conclusion that the application for extension qualifies under both paragraphs 224(2)(a) and 224(3)(b) of the Act, I must turn my attention to the question of the appropriate exercise of the Registrar’s discretion, allowed for in both those provisions. The Assistant Director, in her letter to Mr Hall, said:

...the grant of an extension of time under section 224(3) is discretionary and it is the Registrar’s practice not to exercise this discretion if the interests of a third party would be adversely affected by the grant.

In its discussion of the General Extension of Time Provisions, at Part 15, the Draft Manual is silent upon the circumstances under which the Registrar may exercise his or her discretion not to grant an extension request, even though a case satisfying the provisions of section 224 has been made out. There is a small procedural reference in Part 18, Finalisation of Applications for Registration, at Section 1.4. It says:

Lapsed applications can be revived under section 224, by way of a late application for extension of time if a case is made out, appropriate fees are paid and the revival will not disadvantage later applications.

From the above, supported by separate inquiries I have made, I have confirmed that the Assistant Director was indeed complying with a set Office practice, which has been in place for many years. It was applied under the Trade Marks Act 1955, and has been carried forward under The Trade Marks Act 1995. The practice is applied in all cases where an application for revival of a lapsed trade mark application is received. A search of the database is made. If that search reveals the existence of either:

• a later filed, deceptively similar trade mark application, previously blocked by the earlier application, but which has now proceeded as a result of the lapsing of that application, or

• a new, deceptively similar trade mark application, which has been filed subsequent to the lapsing of the earlier application,

then the Registrar declines to exercise his or her discretion to revive the lapsed application. A general assumption is made that the likelihood of causing inconvenience to an unrelated third party by the revival is a consideration which is greater than the interests of an applicant which has, after all, allowed its application to lapse. The effect of special circumstances or errors or omissions is taken to be outweighed by the circumstance of a pending application, against which the revived trade mark would be either raised, or re-instated as an objection.

There is also a generally applied public interest component to the Registrar declining to exercise his or her discretion under such circumstances. That is, the desirability of the Register remaining a constant reference source for members of the public, who may well be deceived or confused by movements of trade mark applications off, and then back onto, the database.

What I must consider here is whether, notwithstanding the reasons behind the adoption of the practice I have explained above, it is appropriate to apply a blanket practice which, in effect, bypasses the proper exercise of the Registrar’s discretion. Deputy Registrar Hardie recently dealt with an equivalent situation relating to an Office practice, in the Stadium Sports decision, supra. That practice dictated that, even though the Office has not yet had the opportunity to effect registration of a trade mark, once its registration fee had been paid and the opposition period had ended, a late application for extension of time to file notice of opposition to registration of that trade mark would not be accepted. This was because the interests of the trade mark applicant, whose application was otherwise entitled to registration, were considered paramount. In the circumstances, it was held that the Registrar’s first duty under the Act was to register the trade mark. Ms Hardie found, at page 39-304:

Applications properly made according to the provisions of sub-regulation 5.2(3) must succeed or fail on a full assessment of the merits. They should not fail simply on the application of an Office practice.

I find that the Office practice which excludes consideration of the merits of certain late applications filed under sub-section 52(2) of the Act, for additional time for filing notice of opposition, is wrong.

Ms Hardie referred in her decision to the provisions of paragraph 5(2)(f) of the Administrative Decisions (Judicial Review) Act 1997, which describes (inter alia) the making of a decision as

an improper exercise of the power conferred...[where that decision involved] an exercise of a discretionary power in accordance with a rule or policy without regard to the merits of the particular case.

There is a significant body of case law which deals with the exercise of discretion under various circumstances. Mr Spence drew my attention to the reference Sanyo Electric Co. Limited v Commissioner of Patents (1996) AIPC91-283. This was a determination by the Deputy President of the Administrative Appeals Tribunal. At page 37,844, the issues are summarised succinctly, and with reference to other relevant law:

The decisions of the courts concerning the approach to be taken to the exercise of a discretion to extend time are now well established and include:

·  in the absence of nominated factors against which the discretion is to be exercised, regard should be had to the “subject-matter, scope and purpose of the Act” - per Mr Justice Mason (as he then was) in Minister for Aboriginal Affairs and Another v Peko-Wallsend Limited and Others (1986) 162 CLR 24 at 39-40. A further exposition of this is provided by the comments of Mr Justice Davies in Chalk v Commissioner for Superannuation (1994) 50 FCR 150 at 154 where he said “...the discretion should be exercised by reference to the words of the statute and the context within which the discretion is conferred”;...

·  it is “more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time” (per Davies J in Chalk's case, at 156, with whom Chief Justice Black and Mr Justice Cooper agreed. Similar comments are to be found in Comcare v AHearn (1993) 119 ALR 85, particularly at 88);...

·  a legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially (Davies J in Chalk's case at 155).

Mr Spence also drew my attention to D.R. Shanahan’s comments on the exercise of the Registrar’s discretion. In Australian Law of Trade Marks and Passing Off, at page 81, he says:

Where the Registrar does exercise a discretionary power under the Act, the primary concern will be the public interest, but other circumstances may be relevant, including the bona fides of the parties, the position in other jurisdictions and the balance of convenience. It has been said that the Registrar’s discretion should be exercised “upon judicial principles and affected neither by caprice nor over-caution” and that an application which is bona fide should not be refused on a ground which is “fanciful” or “in a business sense, unsubstantial”.

Taking all of the foregoing into account, I have come to the conclusion that, having decided that Mr Hall’s application for extension of time satisfies the provisions of section 224, I should then exercise the Registrar’s discretion to grant the extension, based upon my considered opinion of all the relevant factors, and especially the relative inconvenience of the parties, and the public interest. This is in accordance with the guidelines given in cases such as Vangedal-Nielsen v Commissioner of Patents (1980) 3 ALR 140 and the Lyons case, supra. These cases have been cited and relied upon in many delegates’ decisions regarding extension of time, such as the Wrangler case quoted earlier. It is also in line with Re Ausorb Pty Limited (1996) AIPC 91-286. This decision, by Hearing Officer Homann, deals with revival of a lapsed trade mark application under the new Act, although the transitional provisions of section 240 and 248 applied in that case, as the trade mark application had lapsed prior to the commencement of the new Act. At page 37,869, Mr Homann found that he was required to decide whether revival of the trade mark application in question, was “fair and reasonable”, taking into account all the circumstances of the case. These are the terms which apply to the exercise of the Registrar’s discretion to revive an application under the transitional provision of section 248, but they seem to me to provide valuable guidance as to the proper exercise of the similar discretion given to the Registrar under section 224, especially subsection 224(3), which depends upon the Registrar’s opinion of whether special circumstances exist that justify an extension.

For convenience, I summarise the most important factors to be considered in coming to a fair and reasonable decision in this matter, thus:

• the relative inconvenience to the parties concerned, including

*whether the trade mark application has otherwise been prosecuted with due diligence

• the public interest, including

*whether the applicant has continuously used its trade mark, and especially whether it has prior use (Re Ausorb, supra, at page 37,869)

*the desirability of operating the (trade mark) system efficiently and without unreasonable delays (Vangedal-Nielsen, supra, at page 150)

Consideration of these factors would appear to be the most effective way of arriving at a decision as to the appropriate exercise of the Registrar’s discretion in all such matters of revival of lapsed applications under section 224. A decision arrived at in this manner may oblige the Registrar not to grant an extension under certain circumstances. However, the approach takes into account the principles that extension of time provisions are beneficial and should be applied beneficially, and that due regard must been paid to the merits of each case.

The relative inconvenience to the parties concerned
The Assistant Director indicated her intention not to grant the extension of time, because of the likely inconvenience to the third party, Wild Oats Noosa Pty Limited (Wild Oats Noosa), that would be caused by the revival of Mr Hall’s application. At the hearing, Mr Spence put the point of view that the mere existence of another party with an interest should not of itself necessarily create a presumption in favour of that party. Further, he submitted that in the present instance, the third party would not be unduly disadvantaged because it would be no worse off than it would have been, had the extension of time been sought within the due date. This was because the third party would:

• retain its position in the “queue” with regard to later applications, and would, after revocation of acceptance, be entitled to a “deferred” status in terms of section 36 and regulation 4.13, until the fate of Mr Hall’s application is known

• retain its right to initiate opposition proceedings against Mr Hall’s revived application

• avoid the present opposition proceedings against its own application by Mr Hall, taken in conjunction with whatever legal remedies he might consider necessary to protect his position, if his application could not be revived.

By contrast, Mr Hall would be significantly disadvantaged by losing his trade mark application, because:

• the substantial effort, expense and inconvenience that he has already put into this application, for a trade mark he has been using continuously since late 1994, would be lost

• he would lose his priority date and his place in the “queue”, so that, even if he refiled immediately, and was successful in his opposition to Wild Oats Noosa’s application, he would still need to “run the gauntlet” of any new applications that may have been filed in the meantime.

• that situation may well result in and necessitate Mr Hall embarking on a multiplicity of common law actions, as well as proceedings under section 52 of the Trade Practices Act 1974.

On balance, I am persuaded that Mr Hall will suffer greater inconvenience from the loss of his trade mark application, than will be suffered by Wild Oats Noosa from the revocation of their application.

The public interest
At the hearing, Mr Spence quoted to me from Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136, cited in Ferochem Pty Limited v Commissioner of Patents (1994) AIPC 91-057 at page 38,208. He said:

It is in the public interest that [a serious matter] should be dealt with on its merits, rather than that it should be shut out in consequence of a failure of procedure, lamentable though the failure may be.

The serious matter to which Ferochem referred was in fact an opposition. However, similar issues of proprietorship to those which are raised in the circumstances of opposition to registration are also present in this case. Mr Hall has, by the account of Mr Spence, been using his trade mark since 1994. That is, prior to the date of filing (10 July 1995) of Wild Oats Noosa’s application. It would therefore be likely that some members of the public might be deceived or confused by a situation where a trade mark that they identify as being used by one trader, was registered in the name of another. Notwithstanding the desirability of the Register remaining a constant reference source for members of the public, it is undoubtedly in the public interest that the Register reflects the actual state of affairs. (Re Ausorb, supra, page 37,869)

It is also in the public interest that issues relating to the ownership of trade marks are settled as expeditiously as possible, so as to avoid confusion in the marketplace. By the arguments summarised above, in relation to my examination of the relative inconvenience to the parties, Mr Spence has convinced me that the most expedient course here is to allow Mr Hall’s application to run its full course. Revival of the application that was originally first in time, (after removed trade mark no. 508529), and which may well prove to have first use, is likely to result in the least multiplicity of actions and duplication of effort. This is because there will again be the potential for the relevant proprietorship issues to be decided conclusively at the stage of that single initial application. I agree with Mr Spence that from a practical point of view, there seems to be more likelihood of achieving a certainty of result at an earlier opportunity if Mr Hall’s application is revived.

The possibility of dealing with the matter as expeditiously as possible and with the minimum duplication of effort is also, of course, desirable from the Office’s point of view. This conforms with our preference for efficient operation of the trade mark system, without unreasonable delays.

Decision
Advertisement of the extension application for opposition purposes
Having now considered in some detail what I believe to be all the circumstances of this case, I have decided that it would be appropriate for me to exercise my discretion as a delegate of the Registrar, to grant Mr Hall’s application for extension of time, and thereby to revive trade mark application no. 646313. However, as the period of time in question exceeds four months, before I can grant the extension, I am obliged by the provisions of subsection 224(5) to advertise the application in the Official Journal of Trade Marks. Subsection 224(6) then enables any person to oppose the granting of the application. In this way, should Wild Oats Noosa choose to do so, it will have the opportunity to put its case against the extension, and to draw a hearing officer’s attention to information concerning the relative inconvenience to the parties which only it may be in a position to provide.

If, after the one month allowed by regulation 21.26, there is no opposition to the application for extension, then I will grant the extension of time until 8 May 1997. Under paragraph 37(2)(b), the application should lapse again if not accepted within that time. However, on 8 May 1997, long past, Mr Hall’s trade mark application was in limbo, awaiting the setting down of a hearing date. No further progress, from 8 May until the present, could have been made in relation to the application, pending my decision on the extension application. Given these circumstances, and in the absence of opposition to the extension, (or at the conclusion of an opposition, if it is unsuccessful), I propose to grant a further extension of time under the provisions of subsection 224(1) to allow the trade mark application to be accepted. As I indicated earlier, I do not believe that a restriction of goods is necessary on this application. Accordingly, I am prepared to accept the application as it stands, once the necessary requirements of subsection 224(5) have been satisfied.

Revocation of acceptance
Although the matter of Mr Hall’s application for extension of time is still by no means finally settled, nevertheless it is clear to me that proceedings to revoke acceptance of the Wild Oats Noosa trade mark application, no. 666126, should begin forthwith. When that application was accepted, the status of Mr Hall’s trade mark application was uncertain, pending a hearing on the late application for extension of time. In these circumstances, application no. 666126 could not have been properly accepted under section 33, as the Registrar could not have been satisfied at that time that there were no grounds for rejecting the application. It appears that these circumstances were unknown to the acceptance officer. In accordance with the provisions of both paragraphs 38(1)(a) and (b) of the Act, I direct that revocation proceedings now commence in respect of trade mark application no. 666126.

I also direct that Wild Oats Noosa be advised of the impending advertisement in the Official Journal, for opposition purposes, of Mr Hall’s late application for extension of time for acceptance.

Claudia Murray
Acting Hearing Officer

18 November 1997