Reme Pty Ltd v Kenneth Hope & Pauline Hope

[2005] ATMO 75

TRADE MARKS ACT 1995

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

Re:Possible opposition by Reme Pty Ltd to registration of trade mark application 983353(31, 44) - THE SOIL MASTER (AUST) - filed in the name of Kenneth Hope and Pauline Hope.

Delegate:	Terry Williams
Representation:	Prospective Opponent: Robert William Cumming assisted by Ian Forno.
Decision:	Extension of time to file Notice of Opposition allowed, error or omission by agent

1. Reme Pty Ltd (‘Reme’) seeks a one month extension of time from 18 May 2005 to 18 June 2005 to oppose registration of trade mark number 983353.

2. This trade mark application was filed by K & P Hope (‘Hope’). The application was accepted for registration under the provisions of subsection 44(4) of the Trade Marks Act 1995.  As the owner of prior registrations for trade marks that are at least deceptively similar to the applicant’s trade mark, Reme was notified of the acceptance by IP Australia.  The letter was dated 24 January 2005.  Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 17 February 2005 and the period for filing a notice of opposition therefore ended on 17 May.

3. The extension of time to oppose is a matter governed by Part 5 of the Trade Mark Regulations 1995.  Regulations 5.2 to 5.4 set out the provisions for extensions of time to file a Notice of Opposition.  Regulation 5.2(2) specifies the grounds on which an extension of time may be made.  If an application is made before the prescribed 3-month period has ended, the application may be made on one or all of the following grounds:

   (a) error or omission by an employee;

   (b) error or omission by the person applying for the extension of time, or by the person's agent;

   (c) circumstances beyond the control of the person applying for the extension of time;

   (d) conduct of genuine negotiations between that person and the applicant for registration;

   (e)  undertaking of genuine research to decide:

   (i)  whether opposition is justified; or

   (ii) on the grounds of opposition.

4. If the period for filing a Notice of Opposition has ended, as it has in this case, an application for extension of time may be made on one or more than one of the first three grounds specified in regulation 5.2(2).

5. Regulation 5.3 provides that an application for an extension of time for filing a Notice of Opposition must be in an approved form and be accompanied by a declaration stating the facts on which the grounds specified in the applications are based and - if the period for filing a Notice of Opposition has ended - the reason why the application was not made before the end of that period.

6. Regulation 5.4 relevantly provides that if the Registrar is reasonably satisfied as to the grounds set out in the application the extension must be granted.  However, in the case of a late extension application the extension must not be granted where sufficient reason for it being late has not been provided, and the regulation also requires that the trade mark applicant be given the opportunity to make representations on the matter.

7. Reme’s request for additional time was filed one day after the end of the three month opposition period.  The ground specified in the application was said to fall under the provisions of regulation 5.2(2)(b), that is, an error or omission by the person applying for the extension of time, or by the person's agent.  The application was accompanied by a statutory declaration made by Robert William Cumming, the sole director of Reme Pty Ltd, on 19 May 2005.  He declares that he travels to remote areas for extensive periods of time, that the travel causes communication difficulties and extended absences from the main office in Goulburn and that failure to file the notice of opposition in time was due to an administrative error.

8. Mr Cumming was advised that the information provided did not sufficiently support the stated ground in the application and that the application would be refused if the person who made the error or omission failed to provide a supplementary declaration detailing all the circumstances surrounding the error or omission that prevented the Notice of Opposition from being filed in time.  Mr Cumming filed a supplementary statutory declaration made on 7 June 2005.

9. Senior Examiner Deirdre O’Brien was satisfied on the basis of the information contained in the second declaration that Reme had always intended to oppose the application and but for an error on the part of Mr Cumming the notice of opposition would have been filed in time.  However, before granting the extension of time Ms O’Brien appropriately allowed Hope 14 days within which to make representations about the granting of the extension.  Hope objected and made detailed submissions in support of their objections.  These submissions persuaded Ms O’Brien that Reme had not made out the ground for the extension.  She advised Mr Cumming that she intended to refuse the extension request unless Reme applied to be heard by 14 July 2005.

10. Reme applied to be heard and as a delegate of the Registrar of Trade Marks I heard the matter in Canberra on 8 September 2005.  Reme was represented by Mr Cumming assisted by Mr Ian Forno.

11. At the hearing Mr Cumming tendered two statutory declarations which he submitted supplemented the information in his declaration of 7 June 2005 and which clarified the situation.

12. The first of these was made by Mr Cumming on 7 September 2005.  He declares that he always intended to oppose the application on the basis that the Hope trade mark is deceptively similar to trade marks owned by Reme.  He declares that on 14 February 2005 he had a meeting with Mark Wells of Infinite Solutions.  Mr Cumming has engaged Infinite Solutions as a consultant with regard to the pending opposition.  Mr Cumming declares that Mr Wells said he would contact the Trade Marks Office about the timing and that together they would complete the opposition notice in advance of the closing date.  Mr Cumming declares that on 18 May 2005 he telephoned Mr Wells because he had learned that the final opposition date had passed.  He states that Mr Wells informed him that he had diarised the matter for discussion on 6 June 2005 for a final date for filing opposition on 17 June 2005.  As a result of this clerical error the date for filing notice of opposition was missed.  Mr Cumming declares that as soon as he discovered the error he telephoned the Trade Marks Office about the matter and was advised to file an application for an extension of time.  The extension of time application was subsequently filed without delay.

13. The second statutory declaration was made by Mark Joseph Wells, a partner of Infinite Solutions on 7 September 2005.  Accompanying the declaration are copies of pages from his diary, for 14 February 2005 and 6 June 2005.  Mr Wells declares that on Monday 14 February 2005 he met with Mr Cumming of Reme Pty Ltd and they discussed the filing of a Notice of Opposition to registration of trade mark number 983353.  Infinite Solutions was engaged to notify Reme at least eleven days in advance of the due date so that the Notice of Opposition would be filed in time.  Mr Wells declares that on 15 February 2005 he telephoned IP Australia to check on the dates relevant to the opposition because at the time he was unable to access the Internet for the information.  He states that having been told the due date he proceeded to enter the dates in the work diary to flag when actions were due.  In so doing, Mr Wells declares, he made an error by entering the details in the wrong month, inserting the due date for opposition as 17 June 2005 instead of 17 May 2005 and the date to notify the prospective opponent to consider its future actions as 6 June 2005, instead of 6 May 2005.  Mr Wells declares that the error, for which he takes full responsibility, was discovered by Mr Cumming who notified him of it on the morning of 18 May 2005.  Thereafter, he avers, immediate action was taken to file an application to extend the time allowed for filing the Notice of Opposition.  Mr Wells’ diary for 14 February 2005 records a scheduled meeting with Reme Pty Ltd at 10.00am, ‘re opposition by Hope and Rob’s opposition to 983353.’  There are two dot points further down the page which state, ‘find due dates’ and ‘allow Rob 11 days before date to lodge.’  Among several entries for Mr Wells’ diary for 6 June 2005 is one that states, ‘Call Rob (Reme Pty Ltd) re progress with opposition to 983353 and reminder of due date 17-6-05.’

14. Mr Cumming submitted that the extension application was only one day late and that the proposed opposition is a serious one that does concern the public interest. He argued that Reme would be seriously disadvantaged if the extension were not allowed and the opposition could not proceed.

15. Mr Forno submitted that the evidence shows that Reme had always intended to oppose registration of the mark and that there is a direct link between Infinite Solutions’ clerical error and Reme’s failure to file a Notice of Opposition in time.  He said that Mark Wells was clearly aware of Reme’s intention to oppose and was under instructions from Reme to notify them when to lodge the paper work and but for human error the Notice of Opposition would have been filed in time.  He noted particularly that Mr Wells planned to meet with Reme to finalise the opposition some eleven days before the due date.

16. The question of error or omission was considered in cases such as Kimberly-Clark Ltd v Commissioner of Patentsand Anor (1988) 13 IPR 569 and Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595.  These cases show that the words "error or omission" should be given their plain, ordinary meaning, and the error or omission should be obvious. 

17. It is clear from Mr Wells’ declaration that Reme had formed an intention to oppose registration of the trade mark well within the three month opposition period.  It is also clear that Mr Wells made an error by entering the wrong date in his diary and that this error directly led to the failure to file the Notice of Opposition by the due date.

18. Accordingly I am satisfied that the ground of extension under regulation 5.2(2)(b) has been established.  In accordance with regulation 5.4(1), (2) and (4), I allow the extension of time to file Notice of Opposition to 18 June 2005.

Terry Williams

Hearing Officer

Trade Marks Hearings

12 December 2005