Roadstar Management SA v Telefonaktiebolaget L.M. Ericsson

[1996] ATMO 60

TRADE MARKS ACT 1955

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

Re:      Objection by ROADSTAR MANAGEMENT SA to an application by                 TELEFONAKTIEBOLAGET L. M. ERICSSON for extension of time to serve
           evidence in support of opposition to the registration of trade mark application
           number 633399

As set down by the transitional provisions of part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern these proceedings.  Accordingly, unless otherwise specified, the authority I refer to is the Trade Marks Act 1955.

Application No. 633399 was lodged on 27th June 1994 in the name of Roadstar Management SA (the applicant) to register the mark shown below:

Acceptance of the mark was advertised in the Official Journal of Trade Marks of 26th October 1995.  Notice of opposition to registration of the mark was lodged by Telefonaktiebolaget L M Ericsson (the opponent) on 26th April 1996.  Under the provisions of regulation 43, the evidence in support of the opposition on the application was due on 26th July 1996.  On 23rd July 1996, the opponent lodged an application for an extension of time of three months to 26th October 1996 within which to serve the evidence in support.  The grounds upon which the application was made were set out as follows:

“Evidence of acquired reputation in our (the opponent) (sic) trade mark is being collected.  We are a large multi-national telecommunications company involved in a large proportion of the Australian telecommunications market.  Our company includes a large number of divisions and business groups servicing the Australian market, including various mobile and fixed line telephone products.  The marketing and promotional procedures follow a variety of methods including media advertising through our advertising agency, sports sponsorships, regional business shop fronts and franchising agreements.  Whilst evidentiary information relating to these activities has been identified, further time is required to collect, collate and formalise the information in a condition for service upon trade mark applicants.”

The applicant’s attorneys objected to this application in a letter dated 13th August 1996.  A hearing was set down on the matter in Sydney on 17th October 1996.  The applicant’s attorneys, Davies Collison Cave, patent and trade mark attorneys of Sydney, made written submissions before the hearing.  The opponent was represented at the hearing by Mr Laurence Dyson of Watermark, also patent and trade mark attorneys of Sydney.

Submissions
The applicant’s attorneys stated that in a letter of 29th July 1996, the opponent’s attorneys were advised that oppositions had been lodged to registration of the applicant’s mark in Denmark and Ireland in similar circumstances to those of the present opposition.  In respect of those oppositions a settlement had been reached and ultimately the oppositions had been withdrawn.  In the circumstances, before the applicant could decide whether to consent to the opponent’s requested extension of time, it was seeking advice from the opponent as to whether any serious attempt had been initiated to settle the present opposition.  No constructive response to this letter had been received by the applicant, nor any evidence had been supplied to support any of the grounds of the opposition. 

Given that the opponent had not proceeded with the oppositions in Denmark or Ireland in respect of the same mark, the applicant considered the application for the extension of time to be unreasonable and unnecessary.  The applicant further reminded me that the responsibility rested with the applicant to establish that the extension was justified by providing adequate explanation as to why the original period was insufficient - Lyons and Another (Trading as Mitty’s Authorized Newsagency) v Registrar of Trade Marks and Another 1 IPR 416. Furthermore, the likelihood of deception and confusion alleged by the opponent in the notice of opposition had been dismissed by the opponent’s action in not pursuing the opposition proceedings in the said countries, therefore the opponent did not have a justifiable reason for its current opposition - Vangedal-Nielsen and Others v Smith (Commissioner of Patents) and Another 33 ALR 144. In light of this situation, the applicant sought costs in the matter.

Mr Dyson first submitted that he had not been aware of any oppositions having been settled, as asserted by the applicant.  On seeking instructions from the instructing principals in Sweden, he had ascertained that the opponent was not proposing to enter into settlement negotiations, pending obtaining of further information regarding the alleged settlements in Denmark and Ireland.  It appeared that oppositions were filed in 1993 in those two countries, but a decision had been taken not to pursue the oppositions.  There had been no actual settlement at that time.  That matter was irrelevant, however, he said, because the situation in Australia in 1996 had changed and involved different considerations from those which applied to decisions taken in Denmark and Ireland in 1993. 

With reference to a statutory declaration by Victoria J Bacon and exhibits, tendered at the hearing as part of the evidence in support, Mr Dyson said that the declaration clearly indicated the serious nature of the current opposition. 

Turning to case law in the matter, Mr Dyson cited Ferocem Pty Limited v Commissioner of Patents (1994) AIPC 91-057, Kaiser Aluminium & Chemical Corp v Reynolds Metal Co (1969) 120 CLR 136, Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915 and Vangedal-Nielsen v Smith, supra.

Considering justification for the extension of time, Mr Dyson argued that, given the difficulty of collecting the evidence required from a large and diverse multi-national company, the grounds for the additional time had been unambiguously stated.  Account should also be taken of the fact that the extension under consideration was only the first and that part of the evidence in support had now been formally served.  Furthermore, having regard to the serious nature of the opposition, the public interest would be best served by consideration of the opposition and therefore allowing the sought extension.  The applicant had not produced evidence of suffering any inconvenience in the matter.  In fact, he continued, the applicant appeared to be using the objection to the extension as a means of endeavouring to force the opponent into taking steps to settle the opposition, as indicated by copies of the letters from the applicant’s attorneys, dated 29th July 1996 and 15th August 1996, both of which were tendered at the hearing. 

The opponent sought costs.

Discussion
The current extension of time matter falls under the provisions of section 130 of the Act.  The primary factors to be considered in determining the issue in suit have been enunciated in the cases already mentioned in the submissions, Vangedal-Nielsen v Smith and Lyons v Registrar, both supra, namely: whether a proper case has been made out justifying the extension, whether sufficient reasons have been given, the relative inconvenience to the parties concerned, and the public interest. 

The applicant’s objections to the extension of time application, which revolve around the contention that a settlement had been reached in respect of oppositions to registration of the applicant’s marks in Denmark and Ireland, and therefore the application was unwarranted, have been rebutted by the opponent.  The opponent has further explained that the situation existing in those countries which enabled withdrawal of the opposition there was not the same as in Australia in that the opponent’s use of the striped logo had become prevalent here only in the last three to four years.  Consequently, the opponent was not considering any settlement negotiations in the present proceedings.       

The reasons stated in the application for the extension of time are quite explicit and sufficiently comprehensive.  They indicate that the collection of evidence in a large organisation such as the opponent’s, comprising of a number of various divisions and business groups, is a complicated task and that the gathering of the evidence had already commenced at the time of the application.  The grounds are therefore more detailed than those provided in Lyons v Registrar, supra, where the grounds “[e]vidence in support of the opposition is in course of preparation but it is desired to have additional time to prepare that evidence and to serve copy thereof on the applicant”, were considered by Beaumont J to be a “rather bold statement”, but that the applicant for the extension had endeavoured to explain the situation. 

Should the sought extension of time be allowed, the opponent would have availed itself of six months for the purpose of presenting its evidence in support.  In allowing the extension of time in relation to Lyons v Registrar, Beaumont J recognized that the statutory period of three months is generally insufficient for serving and lodging the evidence in support, being a process which involves obtaining of the evidence from third parties.  

Having considered the applicant’s and the opponent’s submissions in light of the criteria outlined in Vangedal-Nielsen v Smith and Lyons v Registrar, supra, I cannot accept the applicant’s criticism of the opponent’s application as being frivolous and unjustified.  I find that the opponent has more than adequately advanced the reasons for requiring the additional time and has established a case which warrants consideration of the application.

Even though no submissions were raised by the applicant concerning any inconvenience suffered in the matter, I concede that the applicant would be affected by some delays in the present proceedings, should the extension of time be granted.  It must be recognized, however, that such delays are an essential part of opposition proceedings, and in the event of the applicant being successful in the opposition, the registration date of this application will be the date on which the application to register the mark was lodged.  The opponent has already served and lodged some of its evidence in support.  If this extension of time is not granted, there would be no further opportunity for the opponent to complete its evidence.  I find, therefore, that, in the present situation, the inconvenience to the opponent would be greater than to the applicant.  

If the opposition involves possible deception or confusion of trade marks, then the public interest factor weighs in favour of the party seeking the extension so as to allow consideration of any relevant evidence material which “will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception or confusion” (see Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 435, also Bundy American Corp v Rent-A-Wreck (Vic) Pty Ltd 4 IPR 307 at 310). As part of the evidence lodged supports the opponent’s contention concerning the alleged similarity of the marks, it would be in the public interest to allow the requested extension.

Decision

On balancing the matters to be considered, I find the opponent has succeeded in making out a case to justify the extension of time for lodging its evidence in support.  I therefore allow the extension to 26th October 1996.  I award costs to the opponent.

Vija Zars
Hearing Officer
26 November 1996