Seven Network (Operations) Limited v Giorgio Armani SPA, Milan, Swiss Branch Mendrisio

[2013] ATMO 70

TRADE MARKS ACT 1995

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

Re:Application for extension of time to serve evidence in opposition by Seven Network (Operations) Limited to protection of trade mark no. 1476201 (3, 9, 12, 14, 18, 24, 25, 28, 35) (IR No. 1106042) - NUMBER 7 (DEVICE MARK) - filed in the name of Giorgio Armani S.P.A., Milan, Swiss Branch Mendrisio.

Delegate:

Claudia Murray

Representation:

Opponent (applicant for extension): Ms Celia Davies, Herbert Smith Freehills, Sydney.

Holder: Not represented at the hearing.

Decision:

2013 ATMO 70

Section 52 opposition: Application under regulation 5.15 for extension of time to serve evidence in support – application allowed.

Background

1. This is a decision with reasons in the matter of an application for extension of time to serve evidence supporting opposition to protection of an International Registration Designating Australia (IRDA). Giorgio Armani S.P.A., Milan, Swiss Branch Mendrisio, of Switzerland (‘the holder’) filed trade mark number 1476201 (International Registration No. 1106042) on 21 December 2011, for nine classes of goods and services. The device trade mark is:

1. No grounds for rejection were raised against the IRDA during examination. It was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 8 March 2012.

2. Seven Network (Operations) Limited (‘the opponent’ or ‘Seven’) filed notice of opposition to protection on 8 June 2012. After the initial statutory period of three months, it sought and was granted two extensions of time of three months each to serve and file its evidence in support of the opposition. Then, at the end of the second extension period, the opponent filed and served a declaration and exhibits which it indicated was part of its evidence in support, together with a request for a third three month extension period, taking the total time proposed to be allowed for provision of the evidence to twelve months (including the initial three months allowed by the regulations). The reasons given for the new extension request were set out in a statutory declaration dated 7 March 2013, by Renee Elizabeth Burgess, a solicitor with Herbert Smith Freehills, the opponent’s representative. Ms Burgess declared that:

   Since seeking the last extension, the Opponent has continued with its collection of evidence and it is intended that a further statutory declaration, executed by an employee of the Opponent, will be filed to complete the evidence in support of this opposition. An additional three month extension of time is required to complete, file and serve that further declaration.

   I believe that the evidence will completed within the next period sought.

   I believe it to be in the public interest for the further extension of time to be granted, to enable all evidence to be served and the Opposition heard on its merits.

3. On 12 April 2013, a notice of intention to refuse the extension of time was issued by this Office. The notice stated:

   On 7 March 2013 you asked for an extension of time to 8 June 2013.

   The reasons you provided for the extension do not make an appropriate case for it to be granted. You have 14 days from the date of this notice to provide further reasons in support of the extension or to ask to be heard regarding the intended refusal.

   IF YOU DO NOT RESPOND WITHIN THE TIME ALLOWED THE EXTENSION WILL BE REFUSED WITHOUT FURTHER NOTICE.

   IMPORTANT

   IF YOUR FURTHER REASONS DO NOT MAKE AN APPROPRIATE CASE FOR THE GRANT OF THE EXTENSION, YOU WILL NOT BE GIVEN ANOTHER OPPORTUNITY TO BE HEARD BEFORE THE EXTENSION IS REFUSED.

4. On 26 April, the opponent elected to be heard on the potential refusal of the extension. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 21 June 2013. Ms Celia Davies, of Herbert Smith Freehills, Sydney, represented the opponent via video link. The holder is represented in Australia by Spruson and Ferguson, Sydney. However, despite being afforded the opportunity to do so, it did not make written submissions in relation to the extension request and did not attend the hearing.

The legislation

1. The relevant provisions of regulation 5.15 state:

   (1) A party to the opposition proceedings may apply to the Registrar:

   (a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12…

   (2) The Registrar may grant an application on reasonable terms specified by the Registrar.

   (3) The Registrar must not grant an application unless the Registrar:

   (a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

   (b) has given the parties a reasonable opportunity to make representations concerning the application; and

   (c) is reasonably satisfied that:

   (i) in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence…is appropriate.

   (4) For the purposes of paragraph (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.[1]

   [1] The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into effect on 15 April 2013. The amending Regulation repeals the general opposition provisions of Part 5 (which are applied in this case by regulation 17A.33) and replaces them with new regulations in Parts 5, 9 and 17A. The extension of time to file evidence provision in the new regulations which applies to IRDA oppositions to protection is regulation 17A.34K – ‘Extension of time for filing’. However, the repealed provisions continue to apply here, because the evidence stage commenced prior to 15 April 2013. Subregulation 22.9(1), Items 1 and 5 apply the ‘new’ extension of time provisions to any evidence period that commences on or after 15 April. The new provisions will therefore apply to the evidence in answer and reply stages of this opposition, but the ‘old’ provisions still apply to the evidence in support stage.

Evidence and submissions

1. The day before the hearing, Ms Davies provided to me a written outline of hearing submissions, together with a statutory declaration made by Tessa Jovljevic, Regulatory Executive to the opponent, dated 20 June 2013.

2. Ms Davies began her submissions by observing that the opponent had, on 11 June 2013, completed filing[2] the balance of its evidence in support of the opposition. 11 June was the first working day after the final date (8 June) of the proposed new extension period, taking into account that the 8^th was a Saturday and Monday 10 June was the Queen’s Birthday public holiday. Accordingly, should I decide to allow the extension request at issue, the opponent would need no further time within which to comply with the first stage of the opposition timetable.

   [2] Also due to the commencement of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) on 15 April 2013, the opponent was no longer required to serve its evidence on the holder. Instead, the evidence was filed electronically with the Office and made available to the holder at that time. (See transitional subregulation 22.9(1), Item 3.)

3. Ms Davies relied on several authorities[3] in pointing out that a combination of factors have been identified as relevant to the determination of whether an extension of time is ‘appropriate’ in terms of subregulation 5.13(3). These are:

   [3] See: Australian Olympic Committee v Brennan (1994) 30 IPR 44; Exxonmobil Oil Corporation v Shahin Enterprises (2002) 55 IPR 630; ABW Australia Pty Ltd v Sears, Roebuck and Co (1998) 42 IPR 468; IMAC Support Services Pty Ltd v Apple Computer Inc (2001) 52 IPR 183; Turner Entertainment Company v Yo-Merry Todd (2003) 58 IPR 138; and Re Volkswagen AG (2008) 79 IPR 352; NASDAQ Stock Market Inc v OZDAQ Research Pty Ltd (2002) 55 IPR 421.

• whether a proper case has been made out justifying the extension

• the seriousness of the opposition

• the length of time already allowed

• reasons for the extension

• relative inconvenience to the parties

• the public interest.

1. Ms Davies then summarised the circumstances and seriousness of Seven’s case. She argued:

   The Statutory Declaration of Tessa Jakovljevic dated 20 June 2013 sets out a chronology of Seven's preparation of its evidence in support of this opposition, together with details of efforts and reasons for the delay in the finalisation of that evidence. In brief:

   ·     over 30 people were consulted;

   ·     there was a 1 month period in which Seven was closed over the Christmas holidays and when Tessa Jakovljevic was away from work ill;

   ·     it was an extensive process to verify the history and evolution of Seven's branding because there is no central repository of that information and it had not previously been collected; and

   ·     the evidence obtained and filed evidences s60 grounds of opposition, which deal with the likelihood of deception and confusion with the opposed trade mark.

   The opposition is very serious.

   Seven has a history of protecting its valuable portfolio of trade marks containing and comprising SEVEN and 7.

   In our submission, the opposed 7 device is overwhelmingly similar to Seven's 7 device trade marks, as illustrated in the following example:

   The Opposed 7 device:  Seven's 7 device:

   Seven enjoys a widely recognised reputation in SEVEN and 7, in relation to a wide range of goods and services.

   Seven Network is Australia's leading free to air capital city television network.

   This opposition is serious and has serious implications for the valuable branding of Seven. Seven is determined to pursue its opposition and s60 is an important ground on which Seven will rely.

2. In relation to the remaining relevant issues to be considered, Ms Davies submitted that, under the (now repealed) extension provisions of regulation 5.15, the Registrar had ‘regularly’ allowed 12 months of extensions where circumstances had been shown to be sufficiently compelling. Further, she argued that her client’s interests would be severely affected if the extension was refused, as the new evidence at risk was critical to the opponent’s case under section 60, and without it the opposition may be decided without consideration of the marketplace realities of the opponent’s longstanding use of trade marks incorporating ‘seven’ as both the word and number. Finally, she argued that it was both in the public interest as well as her client’s interest that the evidence be allowed in, to ensure that the opposition be decided on its merits, rather than risking an incorrect decision being made as a result of a procedural matter. These factors outweighed the advantages of disallowing the evidence in order to enable the opposition to proceed more swiftly.

Discussion

1. Ms Jakovljevic covers a great deal more ground in her declaration than Ms Burgess’ original declaration in support of the extension request. She explains that, even after filing its notice of opposition to protection of the IRDA in early June, the opponent’s first action was to write to this Office requesting that revocation of acceptance be considered, in the face of Seven’s prior registrations. Notice that revocation was refused was received in July 2012. The opponent then sought to open settlement discussions with the holder, which ultimately failed in October 2012.

2. Ms Jakovljevic also paints a comprehensive picture of the considerable efforts she and others were put to, in gathering together the opponent’s evidence in an environment where there was no central source or location where current or historical information on branding was stored, and no single department or individual with sole responsibility for managing Seven’s portfolio of trade marks. Such a scenario is probably not uncommon in many busy organisations, but undesirable in the face of the statutory deadlines associated with the compilation of opposition evidence, for the purpose of trade mark protection. It is clearly unhelpful when the history of a company’s reputation in a trade mark must be gleaned from the corporate knowledge of over thirty different people, from offices all across the country, who happen to have been with it the longest. [4]

   [4] Statutory declaration made by Tessa Jovljevic, dated 20 June 2013, especially paras 9, 10 and 16.

3. I am prepared to accept the opponent’s case in support of its extension of time, weighed against the accepted criteria quoted above. I am particularly mindful that the evidence in support has now been finalised, so that resumption of the opposition timetable is merely waiting upon my decision to grant the requisite extension of time which will allow the evidence in. I also note that the holder has raised no argument at all upon the question of the relative inconvenience to it of the extension being granted.

4. Having arrived at this conclusion, I would observe that this Office is very conscious of a pressing need to discourage some opposition parties, who appear to be deliberately using the extension of time provisions as a strategic tool to delay the determination of their opposition. That was the reasoning behind the changes to opposition evidence extension of time provisions which are now in force in respect of new oppositions filed, and new opposition stages commenced in relation to existing oppositions, on or after 15 April 2013. During the course of consultation prior to the introduction of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), IP Australia recognized that the granting of extensions for the filing of evidence was a ‘major cause of protracted opposition proceedings’.[5] It proposed the repeal of the existing extension of time provisions, which has now occurred. The new opposition evidence extension provisions are set out in regulations 5.15, 9.18, 17A.34K and 17A.48T. They are intended to ‘narrow the circumstances in which the Registrar will grant an extension of time to provide evidence’.[6]

   [5] IP Australia, Resolving Trade Mark Opposition Proceedings Faster (June 2009), pages 13-15.

   [6] Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), Explanatory Statement (Select Legislative Instrument 2013 No. 31), Item 11 – Part 5 – Opposition to Registration.

5. It is clearly desirable that unnecessarily protracted opposition proceedings be curtailed by these recent changes to our legislation. However, the important principle that a serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision, has not been diminished by these changes. It cannot but remain a potent factor to be weighed into the balance whenever a delegate exercises discretion under the legislation that has the potential to exclude evidence critical to an opposition outcome.[7]

   [7] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858.

Decision

1. The opponent’s declaration and hearing submissions in support of its application for extension of time, together with the fact that it has now completed and filed its evidence within the disputed extension period, have together satisfied me that it is appropriate to grant the extension without further delay. This I now do. Some time has passed since 8 June, during which the holder has been waiting to hear whether it would be required to answer the second part of the opponent’s evidence which has now been allowed in. Accordingly, I also propose to direct that the final date for filing evidence in answer be set at 8 December 2013. Unless I receive representations from either party within the next ten working days in relation to this direction, it may be taken as final.

Claudia Murray

Hearing Officer

Trade Marks Hearings

29 August 2013