Rodney Hancock v a Space Recreation Pty Ltd
[2017] ATMO 49
•26 May 2017
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 of a trade mark, the Registrar must renew the registration for 10 years from the expiry date. If the registration of a trade mark is not renewed by the end of the grace period the Registrar must remove the trade mark from the Register six months after the expiry date.[5]
[4] Trade Marks Act 1995 (Cth) s 77.
[5] Trade Marks Act 1995 (Cth) s 78.
History of the Trade Mark
The Trade Mark was registered in the name of Workshop Studios Pty Ltd for an initial period of 10 years which expired on 13 February 2005. On 8 May 2001 the owner’s name was changed to Playspace Playground Pty Ltd (‘Playspace’). The registration was renewed for 10 years, that period ending on 13 February 2015 (‘the Expiry Date’).[6] The prescribed period for the renewal of the registration of the Trade Mark is therefore the 12 month period ending on the Expiry Date (‘the Prescribed Period’). The grace period in relation to the renewal of the registration of the Trade Mark is therefore the six month period ending on 13 August 2015 (‘the Grace Period’).
[6] When referring to the expiry date, the prescribed period and the grace period as they relate specifically to the Trade Mark those terms will be capitalised.
Playspace went into receivership in August 2011. In September 2011, Playspace’s receivers entered into a Sale of Assets Agreement with A Space Recreation Pty Ltd (‘the Applicant’) (then known as Australasian Playgrounds Pty Ltd). Pursuant to the Sale Agreement, Playspace’s receivers purported to sell certain assets including the Trade Mark. The Trade Mark was assigned to the Applicant pursuant to an Assignment of Trade Mark Agreement dated 26 September 2011. IP Australia was not notified of the assignment at that time.
On 17 December 2014 a renewal reminder notice was sent by IP Australia to the address for service for the Trade Mark recorded on the Register (which was not the Applicant’s address). The Registrar did not receive a request for renewal during the Prescribed Period. On 13 March 2015 a final renewal reminder notice was also sent to the address for service. No request for renewal of the registration was received during the Grace Period. In accordance with s 78 of the Act the Trade Mark was removed from the Register on 31 August 2015 and the removal was advertised in the Journal on 3 September 2015.
On 6 May 2016—some four years and eight months after the assignment of the Trade Mark—the Applicant filed a Request for a Full Assignment of the Trade Mark to the Applicant with IP Australia. On the same day, the Applicant—some eight months after the Trade Mark was removed from the Register—filed an application under s 224 of the Act to extend the due date for renewal of the registration. The application was supported by a declaration made on 5 May 2016 by Dean Steven Joel, the Managing Director of the Applicant (‘the Joel declaration’). These documents will be discussed further, below. On 23 June 2016 the Trade Marks Office recorded the assignment and indicated its intention to grant the extension of time. Both of these were advertised in the Journal on 30 June 2016.
On 27 July 2016 the Opponent filed a Notice of Opposition to the extension of time (‘NOO’). On 10 August 2016, and in accordance with reg 21.20D, the Office sent correspondence to the Applicant and the Opponent which contained directions for the procedure to be followed in the opposition. Both parties were given an opportunity to file evidence in support of their cases and, should evidence in support be filed, to file evidence in answer.
9. The Opponent filed evidence in support of his opposition on 12 September 2016, being a declaration made on 12 September 2016 by the Opponent, with Annexures RJH-1 to RJH-18 (‘the Opponent’s declaration’). The Applicant filed no evidence additional to the Joel declaration. Following the end of the evidence period both parties requested an oral hearing.
The matter was listed for hearing on 18 April 2017. I was assigned to hear the matter as a delegate of the Registrar of Trade Marks. On 3 February 2017 I issued directions regarding the submission of written submissions. The Opponent’s submissions were to be filed by 3 April 2017 and the Applicant’s by 10 April 2017. The Opponent filed his written submissions in accordance with my directions.
By email on 10 April 2017, the Applicant filed its written submissions along with a request that the hearing be adjourned on the basis, in summary, that ‘in the course of preparing this matter for hearing, the Applicant has identified substantial additional material which is not currently before IP Australia and will be relevant to [the Registrar’s] decision’. After considering objections to the request for adjournment which were submitted by the Opponent, the request for adjournment was refused.
I heard the matter in Canberra on 18 April 2017. Garry Fitzgerald of Counsel, instructed by Timothy Creek of Davie Collison Cave Lawyers, appeared in person for the Opponent. Luke Merrick of Counsel, instructed by Corrs Chambers Westgarth appeared via video link for the Applicant.
The Opponent
The Opponent’s declaration contains the following information and claims:
In 1994 the Opponent created the sign which constitutes the Trade Mark and is the sole owner of the copyright of that sign. The Opponent has never assigned nor agreed to assign copyright in the sign to anyone.
In 1994 the Opponent caused to be incorporated the original owner of the Trade Mark—Workshop Studios Pty Ltd, later named Playspace Playground Pty Ltd. The Opponent allowed Playspace to use the sign only for so long as he was a director and in effective control of the company.
As indicated in the history of the Trade Mark, above, Playspace went into receivership in August 2011.
The Opponent is the owner of the registered trade mark detailed below:
Trade Mark Number:
1689085
Priority Date:
23 April 2015.
Goods:
Class 28: Playground equipment
(‘the Opponent’s goods’)
Trade Mark:
(‘the Opponent’s Trade Mark’)
The Opponent’s Trade Mark was applied for during the Grace Period and was accepted once the Trade Mark was removed from the Register.
The Applicant
The Applicant’s submissions assert the following:
A general agreement with the history of the Trade Mark given above.
Since it took the assignment of the Trade Mark the Applicant has used the Trade Mark in the course of its business. The Applicant has been producing and selling a range of products bearing the Trade Mark for about five years.
That the assignment was not recorded with IP Australia was due to an error or omission on the part of the Applicant’s former lawyers.
Applications for extension of time under s 224
Section 224 is reproduced below:
Section 224 – Extension of time
(1)The Registrar must extend the time for doing a relevant act that is required by this Act to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a)the Registrar or a Deputy Registrar; or
(b)an employee; or
(c)a person providing, or proposing to provide, services for the benefit of the Trade Marks Office.
(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. …
(3A) If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.
(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.
Note: For month see section 6.
(6)A person may, as prescribed, oppose the granting of the application.
(7)An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of a relevant act.
(8)In this section:
relevant act means:
(a)any act (other than a prescribed act) done in relation to a trade mark; or
(b)the filing of any document (other than a prescribed document); or
(c)any proceedings (other than court proceedings).
The application in this matter was made under s 224(2)(a). This is a discretionary provision. Even were the Registrar to be satisfied that there was an error or omission on the part of a relevant person she must also be satisfied that the exercise of the discretion in favour of the Applicant is appropriate.
Section 224(2)(a) provides for extensions of time only for a ‘relevant act’. As indicated by s 224(8)(a) a relevant act means any act (other than a prescribed act) done in relation to a trade mark. The prescribed acts are found in reg 21.28(1) of the Regulations. Relevantly for this opposition, reg 21.28(1)(k) lists requesting renewal of the registration of a trade mark under s 79 as a prescribed act. Consequently, the request for renewal of a trade mark during the grace period is a prescribed act and the time for making such a request cannot be extended under s 224(2)(a). In short, there is no provision in the Act for extending the grace period. On the other hand, a request to renew a trade mark during the prescribed period is not listed as a prescribed act.
The Application
At issue in this matter is whether the application was a request to extend the Grace Period or to extend the Prescribed Period. The determination of this question requires a detailed consideration of the application.
In the application as originally filed the Applicant relied only on s 224(2)(a). Specifically, the Joel declaration contains the following:
[The Applicant] requests a 10 month extension of the final deadline for attending to payment of the renewal fees, from 13 August 2015 to 13 June 2016. This extension request under s 224 is made on the ground of error or omission. …
[The Trade Mark] was assigned from the Assignor to [the Applicant] by an Assignment Agreement dated 26 September 2011. [The Applicant] engaged lawyers to prepare the Assignment Agreement and had always understood that the lawyers would, following execution of the Agreement, take all steps necessary to record the transfer of legal ownership of [the Trade Mark] from the Assignor to [the Applicant].
It recently came to my attention that the lawyers acting for the [the Applicant] in its acquisition of [the Trade Mark] never recorded the assignment of [the Trade Mark] at the Trade Marks Office. Accordingly, the Assignor remained the address for service of [the Trade Mark] since 26 September 2011.
[The Trade Mark] became due for renewal on 13 February 2015. The 6 month grace period expired on 13 August 2015. I understand that the Trade Marks Office issued a renewal reminder notice on 15 December 2014. [The Applicant] never received that renewal notice as it was not the address for service of [the Trade Mark] at the time and the Assignor did not provide [the Applicant] with a copy of the renewal notice.
Had [the Applicant’s] lawyers acting in the trade mark assignment recorded the assignment of [the Trade Mark] with the Trade Marks Office, [the Applicant] would have been notified of the renewal fee due date and the grace period provisions and would have attended to prompt payment of the renewal fees.
The application was accompanied by fees described by the Applicant as the ‘$1,000 extension fee and $395 renewal fee’. The $1,000 represents $100 per month for the 10 months from the end of the Grace Period. On 13 May 2016, IP Australia’s Customer Operations Group (‘COG’)—the section responsible for processing the relevant fees—contacted the Applicant via email and indicated that the fees paid by the applicant were insufficient. COG indicated that the total fee payable was $1,850 broken down as follows: [7]
·Renewal fees - $350
·Late fees - $600 ($100 per class for 6 months) 13/3/15 to 13/8/15
·Extension fees - $900 (13/9/15 to 13/5/16)
[7] Note: these fees represent the amounts payable at that time. There have been changes to some of IP Australia’s fees since the date of the application.
The renewal fee represents the fee for renewing 1 class for 10 years.
Where a request is made to renew a registration during the grace period late fees are charged at the rate of $100 for each month, or part thereof, after the expiry date. As the Prescribed Period ended on 13 February 2015, it appears the dates provided by COG represent the dates of the end of each month. The late fees therefore represent $100 per month for the six months of the Grace Period.
Where there is an application for an extension of time under s 224 a fee of $100 per month (or part thereof) is charged. The extension fees therefore represent an extension of time of nine months from the end of the Grace Period to the date on which the application was made (actually nine months minus three days). The balance of the fees was paid by the Applicant on 13 May 2016.
In its submissions the Applicant requested an amendment to its application to include as a basis for the extension that special circumstances exist that justify the extension under s 224(3). At the hearing, I reserved my decision on whether I would allow the amendment. However, I allowed the Applicant to make relevant submissions at the hearing and provided an opportunity for the Opponent to make written submissions in response to the Applicant’s submissions and, if it wished, for the Applicant to respond to those submissions. The Opponent filed supplementary submissions on 26 April 2017, to which the Applicant responded on 3 May 2015.
The grounds for opposing the original application
The Opponent opposed the application on two principal grounds. Firstly, that the Registrar does not have the power to grant the extension requested. This ground was particularised as follows:
In its application for an extension of time under [s 224(2)(a)] dated 6 May 2016, [the Applicant] requested an extension of the grace period provided in [s 79 of the Act] within which to pay the renewal fee for [the Trade Mark] (ie, [the Applicant] sought an extension of the expiry of the grace period from 13 August 2015 to 13 June 2016). The Registrar does not have the power under [s 224] to extend the grace period: see regulation 21.28(1)(k) of [the Regulations].
Secondly, that there was no error or omission. This ground was particularised as follows:
[T]he declaration filed in support of [the Applicant’s] application does not disclose, or does not adequately disclose, an error or omission for the purposes of [s 224(2)(a)].
What period has the Applicant applied to extend?
The Opponent has submitted that Applicant had a clear intention to extend the Grace Period, asserting:
In the Application, the Applicant requested an extension of the ‘due date for renewal of this application (sic) [of] 10 months from 13 August 2015 to 13 June 2016’ (emphasis added). The date of 13 August 2015 was the last day of the grace period provided under s 79 of the act. The Applicant therefore applied for an extension of the grace period.
The Applicant relied on Mr Joel’s Declaration in support of the Application. In his declaration, Mr Joel stated twice that the Applicant ‘request[ed] a 10 month extension of the final deadline for attending to payment of the renewal fees, from 13 August 2015 to 13 June 2016’ (emphasis added). This clearly corroborates, confirms and identifies the nature and scope of the application as to the extension sought. The ‘final deadline’ must be understood to mean the last possible date on which the [Trade Mark] could be renewed before it was removed from the Register and is expressly identified as ’13 August 2015’. That date is the date provided by the grace period under section 79 of the Act, as the Act does not permit renewal of a trade mark registration beyond that date. Any earlier date would not be the ‘final’ date for paying the renewal fees. It is clear from Mr Joel’s Declaration that the Applicant intended to apply to extend the grace period, and not the original renewal deadline.
At the time the Applicant filed the Application, the Applicant paid the prescribed fee for the Application of $100 per month or part thereof of the extension sought … This fact too supports the view that the Applicant intended to apply for an extension of the grace period.[8]
[8] The emphases in this quote are the Opponent’s.
On 29 August 2016, following the filing of the NOO and the issuing of directions, Ms Natalia Blecher of the Applicant’s representative spoke by telephone to Ms Blazenka Skrobot of the Trade Mark Hearings Support Team seeking clarification of the Trade Marks Office position with respect to the power to extend the grace period. The telephone call was followed up with an email from Ms Blecher the next day which stated, inter alia:
I look forward to hearing from you once you have further investigated the TMO’s position with respect to the power to extend the renewal grace period.
The TMO’s power to extend the renewal term is a threshold issue …
Ms Skrobot responded on 30 August 2016 by email which included:
The Registrar’s practice to extend the time to request renewal of registration of a trade mark is based on [the consent decision in Australian Institute of Conveyancers (Victorian Division) Inc v Registrar of Trade Marks (Unreported, Administrative Appeals Tribunal, Forgie DP, 17 February 2010)].
Please note that the renewal grace period under s 79 is a prescribed act under regulation 21.28(1)(k) and cannot be extended under s 224.
By correspondence received by the Office on 6 September 2016 the Opponent sought summary dismissal of the application on the strength of Ms Skrobot’s confirmation that the Grace Period cannot be extended under s 224. Ms Skrobot responded by correspondence dated 9 September 2016 and indicated her view that she ‘cannot agree that [the Applicant] unequivocally requested an extension of the grace period’. Ms Skrobot indicated her view that while the dates might indicate that the request was for an extension of the grace period, ‘15 months of extension fees … were paid … together with the renewal fee’ and that ‘[t]he incorrect dates are an administrative deficiency’. Ms Skrobot decided that there was no basis to summarily dismiss the application.
In its submissions the Applicant relies to a significant degree on Ms Skrobot’s stated view and has submitted:
It could not be more plain that [the Applicant] seeks an extension of time to renew the Trade Mark. The combined effect of [the Act and the Regulations] is that the relevant extension must be to the deadline set out in s 72(3) of [the Act], rather than to the expiry of the grace period under s 79 of [the Act].
In these circumstances, it is appropriate to read the Application is seeking the extension that is open to [the Applicant], rather than an extension which is not. This is a practical and common-sense reading of the Application. Further, on 9 September 2016 … a Senior Examiner wrote to DCC confirming that IP Australia understood the Application in this manner. In reality, there has been no doubt about how [the Applicant] pursues, and how IP Australia understood, the Application since that time. This occurred before [the Opponent] made his declaration.
I am not bound by Ms Skrobot’s interpretation of the application and I am not persuaded by the Applicant’s submissions. The wording of the application, the original fees paid by the Applicant when it filed the application and the breakdown of the fees provided by COG satisfy me that the application was for an extension of the Grace Period. If the application was to extend the Prescribed Period: it would have been a request for a 15 month extension rather than 10 months; there would be no late fees payable as the Grace Period would be irrelevant; and, the extension fees payable would instead be $1,500 being $100 per month for the 15 months from the expiry date to the date of the application. It would be ultra vires for me to grant the extension based on the application as filed. I note that Applicant has sought to amend the application so that, in its words, ‘this matter may be placed beyond doubt’. I move then to consider the request to amend the application.
Amendment of application
Section 66 of the Act is a discretionary provision which grants the Registrar the power to amend the application under s 66 of the Act. The provision allows amendment: (a) to correct a clerical error or obvious mistake; or (b) if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
The Applicant has submitted that in the circumstances outlined at para 32, above, ‘there is no merit to any submission that such an amendment (which is implicitly formal) ought not to be allowed’.
The Opponent submits that s 66 is not enlivened in the present circumstances for reasons including the following:
(a) it is clear that the Applicant intended to apply for an extension of the grace period so there is no ‘clerical error’ or ‘obvious mistake’;
(b) it is not ‘fair and reasonable in all the circumstances of the case’ to amend the Application. Doing so would unfairly and unreasonably prejudice the Opponent in respect of the Opposition. The Opponent commenced the Opposition and has continued with the Opposition on the basis that, at all times, the Applicant applied to extend, and intended to extend, the grace period for renewal of [the Trade Mark]. Furthermore, the Applicant has not demonstrated or suggested that it clearly had intended to apply for an extension of the renewal date of 13 February 2015 before it filed the Application and that the Application had inadvertently referred to the wrong date.[9]
[9] See, for example, Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595.
The Opponent further submitted that allowing a request to amend at this late date
would significantly inconvenience and prejudice the Opponent and would undermine the efficient operation of the trade mark system by causing unreasonable delay; both factors which the Registrar must take into account when exercising her discretion under s 66(b).[10]
[10] See, for example, Invecon v Sasse (2008) 80 IPR 600; Re Application by Oddbins Corporate Beverage Supplies (2001) 52 IPR 434; Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd (2011) 91 IPR 416.
As indicated in my discussion above, I am satisfied that the application as originally filed was for an extension of the Grace Period. Further, I am satisfied that it was the intention of the Applicant to apply for an extension of the Grace Period. I am also satisfied that at the time the application was made the Applicant was not aware that an extension of the Grace Period was not available to it, and that it wrongly understood that to achieve its aim of extending the time available to it to renew the Trade Mark the extension requested was the appropriate one. This view is strengthened by the request by the Applicant on 29 August 2016, discussed at para 29 above, for clarification of the Trade Marks Office’s position with respect to the power to extend the Grace Period.
Current Trade Marks Office practice is to allow extensions of time to renew trade marks which have been removed from the Register due to their owners having failed to renew them by the end of the Grace Period. The Applicant made what is, in my view, not a clerical error but a mistake in assuming that such extensions are made by extending the Grace Period rather than by extending the prescribed period. This poses the question of whether this is an ‘obvious mistake’ of the type contemplated by s 66(1)(b).
An obvious mistake?
The mistake made by the Applicant can be characterised as a ‘mistake of law’. In Murray v Baxter[11] Isaacs and Gavan Duffy JJ considered whether a ‘mistake of law’ constituted a ‘mistake’ for the purposes of s 12 of the Workmen’s Compensation Act 1910. That provision required proceedings to be commenced within a certain time; however, a failure to commence proceedings within that time would not be barred if the failure was occasioned by any of certain factors, including ‘mistake’. Their Honours considered a number of earlier cases and concluded that there is ‘nothing to qualify the natural meaning of the unrestricted language used by the legislature’,[12] and found that a ‘mistake of law’ was a ‘mistake’ for the purposes of the provision under consideration there.
[11] (1914) 18 CLR 622.
[12] Ibid.
There is nothing before me to suggest that ‘mistake’ for the purposes of s 66(1)(b) should be interpreted as excluding a mistake of law. However, s 66(1)(b) qualifies ‘mistake’ as ‘an obvious mistake’. In Johnson & Johnson v Self Care Corporation Pty Ltd (‘Johnson & Johnson’), Hearing Officer Murray considered what constitutes ‘an obvious mistake’ for the purposes of amendments under s 65A(2) of the Act. The wording of that provision closely mirrors that of s 66. Ms Murray found:
To be an obvious mistake, the mistake itself must be plain on its face, and the proper correction that would remedy the mistake must also be obvious. Both tests are considered from the point of view of ‘an instructed reader’.[13] [14]
[13] [2014] ATMO 111, [30].
[14] Ms Murray drew on General Tire & Rubber Company (Frost’s) Patent (1972) 89 RPC 259, 277-8 in formulating her view.
An instructed reader—one familiar with the intricacies of the Act—would be aware that an extension of the grace period is not permitted and that amending the application to instead extend the prescribed period is the obvious correction to remedy the mistake. On this basis I am satisfied that the Applicant has made an obvious mistake. This, however, is not the end of the matter. Section 66 is a discretionary provision and I move to consider now whether the discretion should be exercised in the Applicant’s favour.
Should the Registrar amend the application?
Hearing Officer Murray noted in Johnson & Johnson:
Exercise of the Registrar’s discretion generally requires consideration and balance of the interests of the applicant, any third parties and the general public. Other considerations that appear to be relevant in the circumstances are the effect of the amendment if made, and the timing of the amendment request.[15]
[15] [2014] ATMO 111, [35].
On the matter of prejudice to the Opponent the Applicant submitted:
Everyone understood the basis on which the application was being pursued in September 2016; that was before [the Opponent] put on his declaration. …
There can be no suggestion of involving prejudice because [an extension of the time to renew the Trade Mark] has been the basis upon which IP Australia and certainly [the Applicant] has been proceeding at all material times. In effect, what [the Opponent] is trying to do is to avoid the substance of the application by emphasising what is, on any view, purely a matter of form. …
The amendment ought to be allowed on the basis that it is reasonable in all the circumstances to do so.
The Opponent has submitted that to amend the application would
unfairly and unreasonably prejudice the Opponent in respect of the Opposition. The Opponent commenced the Opposition and has continued with the Opposition on the basis that, at all times, the Applicant applied to extend, and intended to extend, the grace period for renewal of [the Trade Mark]. … [I]n the letter from IP Australia to [the Opponent] of 9 September 2016, the Senior Examiner give absolutely no indication that the Senior Examiner formed the opinion that it is fair and reasonable in all the circumstances of the case to amend the Application and, even if she did, she has not provided any reasons to justify that opinion. …
[A]llowing such a request now would significantly inconvenience and prejudice the Opponent and would undermine the efficient operation of the trade mark system by causing unreasonable delay; both factors which the Registrar must take into account when exercising her discretion under s 66(b).[16]
[16] See for example: Invecon v Sasse (2008) 80 IPR 600; Re Application by Oddbins Corporate Beverage Supplies (2001) 52 IPR 435; Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd (2011) 91 IPR 416.
The Opponent’s evidence and submissions have addressed the ground relied upon in the original application. Allowing amendment of the application so that it is to extend the Prescribed Period rather than the Grace Period would, in my view, cause no significant inconvenience or prejudice to the Opponent nor will it cause any further delays. There is a public interest in the speedy resolution of this issue. Allowing the amendment will not delay the decision in this matter. In the circumstances, I am satisfied that it is appropriate to amend the application accordingly.
The second requested amendment – special circumstances
The Applicant has sought a second amendment of the application to add a second ground under s 224(3), that is, that special circumstances exist that justify an extension of the prescribed period. This request was supported by a declaration made on 10 April 2017 by Stephen Stern, a partner at Corrs Chambers Westgarth. Mr Stern declared:
[I]n the course of preparing this matter for hearing in conjunction with the Applicant’s Counsel, we have now formed a view that there is further material about the Applicant’s extension of time request, the history between the parties and the Applicant’s ongoing use of the mark the subject of the Registration which is relevant to both the ‘error or omission’ and ‘special circumstances’ grounds under section 224 of [the Act].
It is apparent that at the time the application was filed the Applicant intended to rely only on ‘error or omission’ under s 224(2)(a). Forming a view one week before the scheduled hearing date that s 224(3) might also support the extension does not amount to a clerical error or an obvious mistake for the purposes of s 66(1)(a). I therefore move to consider whether it is fair and reasonable in all the circumstances of the case to amend the application under s 66(1)(b).
The Stern declaration has not specifically addressed why it is ‘fair and reasonable in all circumstances of the case’ that the Registrar should amend the application. However, the Stern declaration continues:
Our view is that this material should be before the Hearing Officer in determining this matter. Without this material, the Hearing Officer will not be in a position to fully consider all of the circumstances relevant to the Applicant’s extension of time request.
The Opponent has submitted in regard to the request to amend the application that:
[P]ermitting the Applicant to amend the Application now would invite other users of the trade marks system to withhold applications under section 66 to amend documents until the last minute which would prejudice others relying on the document as filed as they would act on the basis of information contained in the document to their detriment. Permitting this type of conduct would promote an inefficient use of the trade mark system and countenance opportunistic or cynical behaviour which is not in the public interest.
In fact, permitting such conduct would be completely at odds with the purposes of the amendments made to the Act by Schedule 3 of the IP Laws Amendment (Raising the Bar) Act 2012 (Cth) (Raising the Bar Act). Those amendments included amendments to section 66 to prevent notices of opposition filed under section 52 and 62 of the act from being amended under section 66. The Second Reading Speech makes it clear that the purpose of such amendments was to ‘speed up the process for determining applications for IP rights … [and] prevent tactical use of the system by those who profit from delay’.[17] The Explanatory Memorandum to the Raising the Bar Act is even more explicit:
Restricting the circumstances under which an opponent can amend [notices of opposition filed under sections 52 and 92] ensures that complete information is filed in the first instance. An opponent will not be able to use the broad power under section 66 to later add grounds of opposition or particulars that should have been included when the documents were first filed.[18]
[17] Commonwealth, Parliamentary Debates, Senate, 22 June 2011, 3485-3488 (Kim Carr).
[18] Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, 83‑84.
I am persuaded by the Opponent’s submissions. The Applicant has not satisfied me that it is fair and reasonable in all the circumstances of the case to amend the application to include the ground under s 224(3). Consequently, the only ground that will be considered is that under s 224(2)(a); I move now to consider that ground.
Error or omission
It remains now to consider whether the Trade Mark was not renewed because of an error or omission by the Applicant or its agent. Relevant parts of the Joel declaration were provided at para 20 above. One additional paragraph is relevant, being:
[The Trade Mark] was removed from the Register with effect from 3 September 2015. It was never [the Applicant’s] intention to allow [the Trade Mark] to lapse. [The Trade Mark] has been used by [the Applicant] and its predecessors in title since 1995 and remains in use and of ongoing commercial interest to [the Applicant].
The Opponent has submitted the following:
It is not clear from Mr Joel’s Declaration what ‘error or omission’ the Applicant relies on as causing it to fail to renew [the Trade Mark] within the time provided under the Act or, indeed, who is responsible for that error or omission. From Mr Joel’s Declaration, it seems that the Applicant relies on one or more of the following acts or omissions as amounting to an ‘error or omission’ by the Applicant or its agent:
(a)the Applicant’s lawyers (assuming such lawyers were actually appointed, as discussed further below) failing to record the assignment of [the Trade Mark] …
(b)the Applicant forming the mistaken belief that the Applicant’s lawyers would record or had recorded that assignment …
(c)[The assignor] failing to pass on the renewal notice …
The Opponent (and, indeed, the Registrar) should not be left to guess which ‘error or omission’ the Applicant says caused it to fail to renew the [Trade Mark]. In the absence of any evidence from the Applicant about this, the Applicant has failed to demonstrate that there was an obvious ‘error or omission’.
Even if the Registrar is satisfied that the Applicant has shown that there was an obvious error or omission … the Applicant cannot satisfy the Registrar that any of the actions referred to [above] amounts to an error or omission by the Applicant or its agent for the purposes of sub-section 224(2) for the reasons set out below.
In its written outline of submissions the Applicant clarified the error or omission relied upon as being the failure of the Applicant’s former lawyers to attend to the assignment of the Trade Mark with IP Australia, that this had the effect of the Applicant not receiving any renewal notice, which in turn led to the Trade Mark not being renewed in a timely manner. The Applicant responded to the Opponent’s criticisms in oral submissions, submitting:
The nature of the error or omission in this case is so clear and so striking that it is capable of being expressed, as Mr Joel did, in very short order. It was natural for [the Applicant] to expect that its lawyers would complete the process of having the Trade Mark assigned. [The Applicant] at the time it secured the assignment was represented by lawyers who had the carriage and conduct of obtaining the assignment. In circumstances where a party obtains assignment from a stranger—as opposed to, say, a related company—it would be an unusual circumstance for that assignment not to be recorded. …
In the circumstances of this case there is no need for any more detail as to the nature of the error or omission, or how it occurred. … We say, Mr Joel’s declaration is adequate to explain it.
The leading case with respect to extensions of time under s 224 of the Act is the Federal Court case of Kimberly-Clark Ltd v Commissioner of Patents (No 3).[19] This case dealt with an extension of time under s 160(2) of the Patents Act 1952 (Cth). The wording of that provision closely mirrors that of s 224. It is clear from Jenkinson J’s decision that an application for an extension of time based on ‘error or omission’ requires significant detail of the circumstances of the error or omission relied upon by an applicant. This includes details of the processes by which an agent’s errors or omissions came to occur, and—in the words of the summary of the case in the Intellectual Property Reports—the conduct, knowledge, beliefs and mental processes of the Applicant. It is also necessary for the Registrar to be satisfied that there is a causal relationship between the error and omission relied upon and the failure to do the relevant act in the time required.
[19] (1988) 13 IPR 569.
The application fails on two fronts. Firstly, there is insufficient detail of the circumstances which gave rise to the asserted error or omission. There is no information about the law firm and their usual processes in the situation described, and there is no detail as to how or why those processes broke down. Without this information it cannot be determined whether an error or omission of the appropriate nature has in fact occurred.
Secondly, the error or omission is said to have occurred some three and a half years before the Expiry Date and some four years before the end of the Grace Period. As indicated in the Opponent’s declaration and confirmed by the Register, the Applicant filed at least five trade mark applications between December 2013 and June 2015. It is reasonable to expect that the Applicant should have looked at the Trade Mark registration in the normal course of its business and of managing its intellectual property. It is reasonable to expect that the Applicant should have been aware of the expiry date of its Trade Mark and not to have relied solely on receiving a reminder notice. It is also reasonable to expect that the Applicant should have become aware, at least before the end of the Grace Period, that the assignment had not been recorded and to have taken steps to correct that situation. For these reasons, I am not satisfied that there is a sufficient causal relationship between the failure of the Applicant’s lawyers to record the assignment and the failure of the Applicant to renew the Trade Mark by the Expiry Date or at least by the end of the Grace Period.
I am not satisfied that the Applicant failed to renew the Trade Mark by the Expiry Date because of an error or omission by the Applicant or the Applicant’s agent.
Decision
I refuse to grant the Applicant’s request to extend the Prescribed Period.
Costs
The Opponent has sought an award of costs in his favour. I see no reason to depart from the general rule that costs follow the event. As the Applicant has been unsuccessful in its Application, I award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.
Robert Wilson
Hearing Officer
Trade Marks and Designs Hearings
26 May 2017
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