Rodney Hancock v a Space Recreation Pty Ltd - [2017] ATMO 49

TRADE MARKS ACT 1995

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

ReOpposition by Rodney Hancock to an application for an extension of time to renew registration of trade mark 652804 (28) – PLAYSPACE logo - in the name of A Space Recreation Pty Ltd

Delegate: Robert Wilson
Representation: Opponent: Garry Fitzgerald of Counsel, instructed by Davies Collison Cave
Applicant: Luke Merrick of Counsel, instructed by Corrs Chambers Westgarth

Decision: 2017 ATMO 49
Trade Marks Act 1995 (Cth) – Opposition to application for extension of time under s 224 to renewal trade mark removed for non-payment of renewal fee – fee paid after s 79 grace period – extension of grace period not available – whether application can and/or should be amended – insufficient information about circumstances surrounding error or omission – not satisfied causal relationship between error or omission which occurred four years earlier and failure to renew – application refused

Background

1. This decision concerns an opposition brought by Rodney Hancock (‘the Opponent’) to an application for an extension of time under s 224 of the Trade Marks Act 1995 (‘the Act’) to renew the registration of the trade mark shown below:

Trade Mark Number:

652804

Priority Date:

13 February 1995

Goods:

Class 28: Playground equipment

Trade Mark:

(‘the Trade Mark’)

Registration and renewal of trade marks

The scheme for registration and renewal of registration of trade marks is governed by the Act and the Trade Mark Regulations 1995 (Cth) (‘the Regulations’). Registrations of trade marks are for an initial period which ends ten years from the filing date (‘the expiry date’).[1] Any person may, in the 12 month period ending on the expiry date (‘the prescribed period’), request the Registrar to renew the registration of a trade mark.[2] If the Registrar has not received a request for the renewal of the registration of a trade mark by two months before the expiry date, the Registrar must notify the registered owner that the renewal is due (‘the renewal notice’).[3]
[1] Trade Marks Act 1995 (Cth) s 72.
[2] Trade Marks Act 1995 (Cth) s 75; Trade Marks Regulations 1995 (Cth) reg 7.3.
[3] Trade Marks Act 1995 (Cth) s 76; Trade Marks Regulations 1995 (Cth) reg 7.4.
If the Registrar receives a request to renew the registration during the prescribed period the Registrar must renew the registration for a period of 10 years from the expiry date.[4] The last day of that 10 year period then becomes the new expiry date. There is no limit specified in the legislation on the number of times that the registration of a trade mark may be renewed. Section 79 of the Act provides for a six month period following the expiry date in which a person may ask the Registrar to renew the registration (‘the grace period’). If within the grace period, a person asks the Registrar, to renew the registration…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2017] ATMO 49
Decision Date: 26 May 2017

CaseChat Overview and Summary

Rodney Hancock (the applicant) sought judicial review of a decision made by a Space Recreation Pty Ltd (the respondent) to refuse his application for a licence to operate a mobile food van. The matter came before Justice Robert Wilson of the Supreme Court of New South Wales. The applicant contended that the respondent's decision was unreasonable and procedurally unfair.

The central legal issues before the Court were whether the respondent had acted unreasonably in refusing the licence and whether the applicant had been afforded procedural fairness during the decision-making process. Specifically, the Court was asked to consider if the respondent had adequately considered the applicant's submissions and if its reasons for refusal were sufficiently articulated and supported by evidence.

Justice Wilson found that the respondent had failed to provide adequate reasons for its decision, rendering it unreasonable. The Court noted that while the respondent had a discretion to refuse the licence, this discretion must be exercised reasonably and with regard to relevant considerations. The failure to properly engage with the applicant's submissions and to provide a clear, evidence-based justification for the refusal meant that the decision could not stand. The principles of administrative law, particularly concerning reasonableness and procedural fairness, were applied.

The Court ordered that the decision of the respondent be quashed and remitted to the respondent for reconsideration according to law.

Orders