RMG Call Centres Pty Ltd v Crown in the Right of the State of Western Australia through Its Department of Contract and Management

[2001] ATMO 70

TRADE MARKS ACT 1995

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

Re:Extension of time application by RMG Call Centres Pty Ltd to file a notice a of opposition in relation to trade mark application number 838144(36) - WA FASTPAY- filed in the name of the Crown in the Right of the State of Western Australia through its Department of Contract and Management Services.

Background

The State of Western Australia applied for registration of the word trade mark wa fastpay in its formal name of the Crown in the Right of the State of Western Australia through its Department of Contract and Management Services (WA) on 7 June 2000 in Class 36.  The trade mark was advertised as accepted for registration in the Australian Official Journal of Trade Marks (the Journal) on 30 November 2000. 

RMG Call Centres Pty Ltd (RMG) filed a notice of opposition to the registration of the trade mark via its solicitors, Middletons Moore & Bevins (Middletons) on 1 March 2001. 

Regulation 5.1 of the Trade Marks Regulations 1995 specifies that the period for filing a notice of opposition is 3 months from the date of advertisement.  Accordingly, the period for filing expired on 28 February 2001.  The notice of opposition was filed on 1 March 2001 - a single day late. 

None of these facts are contested by either party.

Preliminary
On 8 March 2001, I wrote to the representatives of the parties, informing them of the late filing.
On 19 March 2001, RMG applied for a one month extension of time in which to file a notice of opposition. The application was expressed to be pursuant to section 224 of the Trade Marks Act 1995 and was supported by a statutory declaration of Mr Sebastian Hughes, the solicitor with conduct of the matter for Middletons. Both the application and the statutory declaration are dated 14 March 2001. While the application should have been brought under Part 5 of the Regulations, rather than s.224, this was not a substantive error. I advised the parties that I would treat the application as though it was brought under Part 5. Neither party objected to this course.

Grounds of Application and Preliminary Submissions
RMG's application for extension of time relied on three grounds, namely:

1.Error or omission by a trade marks officer;

2.Error or omission by the person concerned or by his or her agent; and

3.Special circumstances.

The supporting declaration set out the following salient matters:

1. In the period 16 to 28 February 2001, Mr Hughes was in negotiations with the representatives of WA - Wray & Associates (Wrays).

2. RMG had been aware of the trade mark application since 30 November 2000 and had formed an intention to oppose the application if the matter could not be settled.

3. On 20 February 2001, Mr Hughes advised Wrays that if they did not respond to an offer by 23 February 2001, the notice of opposition would be pursued.

4. On 23 February 2001, Mr Hughes received a fax from Wrays.

5. Having heard nothing more, Mr Hughes called Wrays on 28 February 2001 and left a message.  His call was not returned, so he drafted a notice of opposition on that same day.

6. Mr Hughes did not file the notice of opposition until 1 March 2001, as he was of the view that settlement could still be reached and

   "[he] was aware of and had previously taken advantage of the [TMO] procedure of emptying the late filing box ... at 10.00am every business day.  [He] was further aware of and had relied upon the [TMO] procedure whereby the contents received in the late filing box by 10.00am was accepted and deemed to have been filed by close of business on the previous day."

7. Mr Hughes attempted to file the notice of opposition at 9.30am on 1 March 2001.  He found that the late filing box was no longer in operation.  He was consequently unable to file the notice of opposition by the due date.

8. Mr Hughes chose to use the late box, "[d]espite the fact that I would have been able to file the Notice of Opposition by facsimile by close of business on the 28 February 2001".

9. Mr Hughes asserted that neither he nor anyone in his office had, to his knowledge, been notified that the TMO had ceased use of the late box.  He also asserted that had he known of the closure, he would have filed the notice of opposition by close of business on 28 February 2001.

In the covering letter to the application and declaration, Mr Hughes stated:

"It is of some concern to us that as a consequence of an arbitrary change in Trade Marks Office procedure our client has suffered prejudice and had incurred unnecessary costs.  We request that you waive penalty fees in respect of this matter."

I have taken this letter into account in so far as it appears relevant to the claimed ground of error or omission by a trade marks officer, and in relation to the fees that remain, to date, unpaid.

I provided Wrays with a copy of the application for extension of time and the statutory declaration on 29 March 2001, and allowed them 14 days to provide their own submissions.  These submissions were duly filed in letter form on 6 April 2001.  I have indicated to both parties that I am prepared to accept the submissions in that form, and that they did not need to be elevated to statutory declaration form.  Neither party opposed this course.  Wrays' submissions can be summarised as follows:

1. The late boxes were closed on 28 June 2000 after the change in procedure was widely advertised throughout the patent and trade mark attorney profession.  A notice to this effect was placed in the Journal on 8 June 2000.  Consultation with the industry also took place, including a meeting on 18 August 1999 with the Institute of Patent and Trade Mark Attorneys.  The Institute informed members of the change.

2. The change in practice occurred almost 9 months prior to the date for filing.  Accordingly, the error or omission was not one contemplated by the Regulations, and in fact, constituted an error due to ignorance of the law or an aberration of thought or behaviour.  This meant that the requirements set down in Crown & Andrews Pty Ltd v All American Fremantle International Inc 381 IPR 595 had not been satisfied.

3. The error was not "obvious" as required by case law.

4. That the late filing was not beyond the control of Mr Hughes.

5. The history provided by Mr Hughes did not set out the full history.  In particular:

(a)Mr Hughes did not respond to the fax sent to him on 23 February 2001;

(b)Wrays returned Mr Hughes' phone call on 26 February 2001, twice, without response.

(c)When Mr Hughes did call on 28 February 2001, it was 3.45pm Melbourne time.  Ms Stead, who had carriage of the matter at Wrays, was unavailable to return the call on that day.  It was unrealistic of Mr Hughes to expect that a settlement could be achieved between 3.45pm and 5.00pm.

Intention to Determine
I wrote to the parties on 23 April 2001 advising them that I intended to refuse to grant the application for extension of time.  I indicated to the parties that, given the existence of the Official Notices of 8 June 2000 which confirmed the closure of the late boxes, the closure was not arbitrary, there had been no error or omission by the TMO and there were no circumstances which were beyond the control of RMG.  I also indicated that I did not believe that the stalling of negotiations would be sufficient to qualify as "special circumstances".  Finally, the facts as they were presented did not indicate that RMG was relying on any error by Mr Hughes, apart from the mere failure to file the notice within time.  This, according to precedent, was insufficient.  I indicated that the matter could be referred to a hearing, if either party chose this course.  RMG exercised this option and the matter came before me, as delegate of the Registrar, by way of telephone hearing on 5 July 2001.  RMG was represented by Mr Heerey of counsel, instructed by Middletons.  WA was represented by Mr McCormack of counsel, instructed by Wrays.

Grounds and Factors for Consideration
At the hearing, RMG formally abandoned all grounds except for "error or omission by the person applying for the extension of time, or by the person's agent" - Regulation 5.2(2)(b).  The "error or omission" was expressed as "Mr Hughes' failure to observe the change in the Trade Marks Office procedure to cease use of the late filing box at the Melbourne Trade Marks Sub-office". 

It is well established that the following matters should be taken into account when assessing an application for an extension of time based on attorney or agent error:

1. There must have been an intention to oppose formed before the expiry of the 3 month period;

2. "Error or omission" is to be given its ordinary meaning;

3. The error must be an obvious error

4. There must be a causal link between the error or omission and the failure to file the notice within time;

5. Mere failure to file within time is not a sufficient "error or omission"; and

6. Errors or omission which arise as a product of deliberation cannot be relied upon.[1]

   [1] See for example, Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595, Kimberly-Clark v Commissioner of Patents (1988) 13 IPR 569, Stadium Sports Franchising Pty Ltd v Stadium Australia Management Ltd (1996) 37 IPR 345

RPG submitted that each of these pre-conditions had been satisfied. 

Intention to oppose
I am satisfied, on the basis of Mr Hughes' evidence, that there was an intention to oppose within the limitation period.  The uncontradicted evidence was that he had instructions to file the notice if no response was received from Wrays by 23 February 2001.

"Error or omission" to be given its ordinary meaning
I am satisfied that the chain of events here - the failure of Mr Hughes to inform himself of the change in practice and to file the notice within time - is capable of falling within the ordinary meaning of "error or omission".

Obviousness of Error
RPG submitted that the error was clearly obvious - Mr Hughes would not have filed the notice late if he had known of the closure of the later boxes.  In other words, there is no other explanation for why he might have waited to file the notice.

On the other hand, WA has submitted that there is nothing obvious in Mr Hughes' failure to make himself aware of a change in procedure that had occurred more than six months earlier.  In other words, it was inconceivable that a competent practitioner would allow six months to go by without informing himself of a change in practice.

I am not satisfied that WA's submission is on point.  While there may be an issue as to whether an error is "excusable", this is not relevant to the assessment of obviousness.  I believe that the tests laid down in Kimberly-Clark and Chiron Corporation v Register of Trade Marks (1998) 42 IPR 75 are limited to determining whether the error or omission is clear, rather one that is contrived, or which needs to be teased out from unclear facts.

Given the circumstances of this case, I am satisfied that the error was clear - Mr Hughes failed to inform himself of the change in practice and this led him to draft, but not file, the notice on 28 February 2001.

Causal Link
RPG submitted that Mr Hughes' failure to observe the TMO change of procedure played a key causal role in his decision to use the late box, rather than file the notice on 28 February 2001.  WA submitted that the causal link was broken by the deliberate conduct of Mr Hughes - he chose to not to file the notice within time.  In making its submissions, counsel for WA referred me to the decisions in March v E & H Stramare Pty Ltd & Anor [1990-91] 171 CLR 506 and State Government Insurance Commission v Sinfein Pty Ltd (1996) 15 WAR 434. These cases are authority for the proposition that intervening acts can break the chain of causation. Those cases were of course, determined on their particular facts. I have no doubt that the chain of causation can be so broken in negligence or direct personal injury claims, where the supervening event is the true cause of the ultimate injury. However, in the present circumstances, it appears to me that the intervening act (the deliberate decision of Mr Hughes' not to file on 28 February 2001) cannot be separated from his original failure to read the appropriate notice informing the industry of the closure of the late boxes. There is nothing before me to contradict Mr Hughes' evidence that the reason he chose not to file on 28 February 2001 was because he believed the late box was still available. The "errors" go hand in hand. It is not as though the second error arose from a completely unrelated act, such as willing inactivity or forgetfulness. The failure to file flowed directly from his misapprehension as to the state of the late filing box.

Accordingly, I am satisfied that the requisite causal link existed.

Mere failure to file within time
Prior to the hearing of this matter, RPG had not specifically relied on Mr Hughes' failure to read the Journal notice.  Rather, its solicitors had attempted to claim error or omission by the TMO and/or special circumstances.  The grounds for such claims arose from the perceived failure of the TMO to notify Mr Hughes, or his office, of the change in practice and the alleged arbitrary nature of the TMO's decision.  The facts now demonstrate that these assertions were incorrect.  This left RPG in the position that the only remaining ground it could rely on was error or omission by Mr Hughes.  This error was, on the evidence, constituted by Mr Hughes' simple failure to file within time.  Such a failure is insufficient to satisfy the requirements of Regulation 5.2(2)(b).  Rather, there must be some other error or omission which lead to the failure to file within time - Stadium Sports Franchising and Kimberly-Clark, supra.

However, at the hearing, RPG's counsel submitted that the error was in fact Mr Hughes' failure to inform himself of the change in procedure.  This was not something that was, or could have been claimed at the time Mr Hughes' declaration was prepared, as he clearly did not know of the closure of the box or the steps taken to inform the industry of the change.  His failure to file within time was a consequence of this lack of knowledge.

Accordingly, I am satisfied that the error was in Mr Hughes' failure to take notice of the change in practice.  This was compounded, but not replaced by, his decision to file the notice on 1 March 2001.   I will deal with whether such a failure to take notice constitutes an inexcusable act in the circumstances or an ignorance of the law, later in this decision.

Errors or Omission Arising from Deliberation
Jenkinson J stated in Kimberly-Clark at 579:

"Parliament was concerned with accidental slips which frustrate an intention formed to do an act or take a step within the time required, and not with errors or omissions the product of deliberation..."

WA submitted that Mr Hughes elected, as part of a deliberate course of conduct, to file the notice of opposition outside the time allowed for so doing, but with the [mistaken] knowledge that the late box would be available.  The evidence establishes that:

(a)there had been discussions between the parties;

(b)Mr Hughes had indicated to WA that he had instructions to file a notice of opposition if a response was not received by 23 February 2001;

(c)Mr Hughes had left the drafting and filing of the notice of opposition to the last moment; and

(d)despite having the option to file the notice by facsimile, Mr Hughes had "opted to make use of the late filing box the following morning".

Accordingly, in WA's submission, each step in the drafting and filing of the notice of opposition was within the control of Mr Hughes.  It was his deliberate decision not to file the notice on or before 28 February 2001, and therefore, RPG's case fails.

The difficulty with this submission is that the relevant error or omission is not the filing of the notice.  Rather, it is the failure to read the Journal notice and be aware of the change in procedure. With that in mind, there is nothing before me to indicate that Mr Hughes deliberately failed to read the Journal.  Nor is there anything to indicate that he deliberately chose not to research this particular facet of procedure.  Accordingly, the relevant error or omission did not arise as the product of deliberation.

Ignorance of Practice and Procedure
While the authorities do not deal with ignorance of procedural matters, WA has made a number of submissions relating to Mr Hughes' failure to observe the change. In the absence of authority, and in light of the comments of Jenkinson J in Kimberly-Clark at 579-580 regarding the need to avoid categorising of types of errors or omissions and the drawing of fine and unrealistic distinctions, I am not satisfied that the ignorance of procedural matters in this case is fatal to the application.  Further, I believe that the following comments of Hearing Officer Homann in Crown & Andrews at 603:

the failure to conduct a search of the relevant records or to keep a watch on the Journal is not in itself to be considered as an error or omission

were limited to conducting searches for trade mark names and the like.  Such an act might be the result of a conscious decision.  His comments were not directed to Official Notices, and the case may be distinguished on that basis.  I am however, satisfied that the failure to keep a watch was the type of error or omission contemplated by the Regulations and by Jenkinson J in Kimberly-Clark.

Conclusion
I am satisfied that the grounds for an extension of time have been made out.  In accordance with Regulation 5.4, I therefore grant the extension. 

As I mentioned earlier, Middletons requested that the TMO waive any "penalty fees" associated with the late filing.  The request was made on the basis that the TMO had acted arbitrarily in closing the late boxes.  Such an assertion is simply unsupported by the facts in this case.  Accordingly, I am not satisfied that there is any reason why the relevant fees should not be paid.

Subject to payment of all of the relevant fees, I grant the extension of time in which to file the notice of opposition.  The period for the filing of evidence in support shall commence from the date of this decision.

Costs

RPG did not seek the costs of the hearing.  WA, on the other hand, did.  While costs generally follow the event, I accept that WA was fully entitled to contest the filing of the notice of opposition and the extension of time application.  Up to the date of the hearing, WA could not have been aware that RPG would claim error or omission due to a failure to observe a change in TMO procedure.  Accordingly, while ultimately unsuccessful, WA's actions in objecting to the extension of time were reasonable and were based on an error by RPG's representative. 
Therefore, I direct that RPG pay WA's costs in accordance with the official scale for preparation for and attendance at the hearing by Wrays and Mr McCormack (Items 9, 11 and 12 in Schedule 8 to the Regulations).

Geoff Purvis-Smith
Hearing Officer

2 August 2001