She Corporation Pty Ltd

[2009] ATMO 57

TRADE MARKS ACT 1995

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

Re:Hearing into intention to remove trade mark registration number 304289(3) – SHE - in the name of She Corporation Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Proprietor: Adrian Ryan SC, instructed by Demenzies Lawyers
Decision:	2009 ATMO 57 Part 7 Div 2 Renewal of registration – request to renew not made due to error by Trade Marks Office – s224(1) extension of time to renew under s75 allowed – removal of trade mark from register not authorised by s81 – Registrar not liable for costs - no order as to costs

Background

1. The trade mark SHE has been registered from 4 February 1977 in respect of class 3 goods. The current proprietor of the trade mark is She Corporation Pty Ltd (“the company”). The company acquired the trade mark in October 2007 when the company purchased the “She” cosmetics business by contract of sale dated 12 September 2007.

2. The company, through its legal representatives, applied to record assignment of the trade mark with the Trade Marks Office on 15 November 2007. The application showed the company’s address for service as its address at 55 Colebrook Street Brunswick, Victoria.

3. The trade mark became due for renewal on 4 February 2008. Pursuant to section 76 of the Trade Marks Act 1995 (“the Act”) and regulation 7.4 of the Trade Marks Regulations 1995 (“the Regulations”), on 4 December 2007 the Registrar was required to notify the company that the renewal was soon due.

4. The Trade Mark Office (“the Office”) sent the notice in error to an address being 1 Hudson Street, South Yarra, Victoria. There is no such address; however, the solicitors for the company are located at 1 Hobson Street, South Yarra. The address for service nominated by the company is that shown in paragraph 2 above.

5. In any event, neither the company nor its legal representatives received a notice from the Office. The company did not request renewal of the trade mark. Pursuant to sub-section 78(a) of the Act, the registration ceased to have effect on 4 February 2008 and, in the absent any grace period application under section 79 by 4 August 2008, the Registrar was required to remove the mark from the Register pursuant to sub-section 78(b).

6. The company did not apply for renewal of the mark during the section 79 grace period; however, the Registrar did not remove the trade mark from the Register. In February 2009, the company general manager was checking the Office’s website as part of the process of applying for another trade mark. The website indicated that the trade mark had expired and renewal was possible upon payment of a renewal fee and a late fee.

7. Following numerous communications with the Office, the company was advised by a representative of the Office that late fees would be waived and that, upon payment of the renewal fee, the trade mark would be renewed for a further period of ten years. The renewal fee was paid by the company on 27 February 2009.

8. On 5 March 2009, the trade mark was briefly removed from the Register but reinstated very soon thereafter, following discussions between Office staff and the company’s representatives.

9. By letter dated 25 March 2009, a delegate of the Registrar advised the company that the trade mark should not have been reinstated to the Register and he proposed to correct the Register pursuant to section 81 of the Act by removing the trade mark. The company sought to be heard on the matter.

10. The company has filed a declaration made on 21 May 2009 by Martin Stephen Fraser, a director of the company.

11. The matter came before me, as a delegate of the Registrar, in Melbourne on 29 May 2009. The company was represented by Adrian Ryan SC, instructed by Demenzies Lawyers.

    Issues

12. The company submitted that as a matter of law, the Registrar had no power to remove a trade mark pursuant to section 81 of the Act. In the alternative to this submission, the company submitted that the section 81 power is discretionary, so even if it were exercisable by the Registrar it ought not to be exercised.

13. The company further submitted that on a proper construction of the Act, the Registrar never had an obligation (or power) to remove the trade mark pursuant to section 78(b) on 4 August 2008 or any later time.

14. Counsel for the company submitted that because the hearing is the consequence of errors made by the Office, the Registrar ought to indemnify the company for the costs of and associated with the hearing.

    Discussion

15. Counsel for the company submitted that section 81 of the Act did not give the Registrar the power to remove a trade mark from the Register.

16. Section 81 provides:

    81  Correction of Register

    The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.

17. Counsel directed my attention to the Full Federal Court decision in Big Country Developments Pty Ltd v TGI Friday’s Inc & Anor (2000) 48 IPR 513, where the Court, when considering section 85 of the Act - relating to a prescribed court’s power to order rectifying of the Register by entering particulars wrongly omitted from it or correcting any error in an entry in the register - said, at 518:

    It is not apt to describe the complete removal of a trade mark from the register as “correcting any error in an entry in the Register”

18. The Court also, at 519, states that sections 73 and 75 to 79 of the Act constitute a code with regard to renewal of registration of trade marks. Therefore, I am satisfied that it is not within the power of the Registrar to remove a trade mark under section 81 of the Act.

19. Counsel for the company submitted that the scheme set up in sections 75 to 79 of the Act involved interdependent obligations imposed on the Registrar and proprietors of trade marks. Thus the Registrar’s power to remove the trade mark under section 78(b) is contingent upon the Registrar complying with the obligation to notify the proprietor pursuant to section 76.

20. In this case, the company submits that the Registrar did not in fact notify the company that registration was due. This, according to the company, was caused by two errors. The first error identified by the company was not sending the notice to the nominated address for service for the company. The second error identified by the company was misspelling the street name in the address to which the notice was intended to be sent.

21. The evidence satisfies me that the company valued its trade mark and would likely have renewed it in the event that it had been notified by the Office. I am satisfied that the company was not notified of the impending expiry date.

22. I am further satisfied that the company was notified pursuant to section 76 because of the misspelling of the address of the company’s solicitors. This was an error of an employee of the Registrar. While it does not affect this proceeding, I do note that had the notification been forwarded to the correct address of the solicitors, constructive notification of the company would thereby have been effected.

23. Having regard to the evidence in this matter, the Act and submissions made by senior counsel, I have decided to allow the trade mark to be renewed from 4 February 2008. My reasons are twofold and follow.

24. I concur with the submissions that the statutory scheme for the renewal of registration of trade marks requires the Registrar to notify a proprietor that renewal is due pursuant to section 78 of the Act. It is a statutory expression of the principle of natural justice that a person who is liable to an adverse administrative action is to be given notice of that liability.

25. Therefore, it follows that to take adverse administrative action - by way of removing the trade mark from the register - without giving the proprietor notice would be a denial of natural justice. The trade mark registration should not be removed from the register and the proprietor should be allowed to renew the registration.

26. Further, or in the alternative, the error made by the Office is such an error contemplated by sub-section 224(1) of the Act, allowing for an extension of time for the company to apply for renewal of the trade mark under section 75. Section 75 is not a prescribed act as defined in regulation 21.28. Extension of the grace period under section 79 is not available, since section 79 is prescribed by the regulations.

27. In practice, it is very rare for the section 75 renewal period to be extended, especially if a trade mark has been removed from the Register. Unlike removal of trade marks for non-use, which at section 98 provides for restoration of a removed trade mark, Part 7 Division 2 of the Act does not have a restoration provision applicable to extensions of time.

28. At the time of the hearing, the trade mark remained on the Register. Therefore, no restoration is required. Additionally, had the trade mark been removed under purported application of section 78, such removal would likely be voidable because the company had not been given notice of the intention to remove the trade mark.

    Fees and Costs

29. The company seeks indemnification by the Office for the company’s costs of and associated with the hearing.

30. The customer service charter of IP Australia provides that if the Office has made an error, given incorrect advice or failed to provide a notification, in such a way as will make a customer liable for a fee that they would not otherwise have needed to pay then this money should be refunded or waived as appropriate.

31. Adherence to the charter means that as to fees payable, the company is only liable to pay the renewal fee for its registration. Fees for extension of time and for the hearing shall be waived. If such fees have already been paid, they shall be refunded.

32. The power of the Registrar to award costs is provided in subsection 221(1), which provides:

    (1) The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings bought before him or her.

33. The company is a party brought before the Registrar. However, the company is not liable to have costs awarded against it. The power is to award costs against a party, not to a party. The Registrar is not a party before himself or herself and is not liable to an order of costs.

34. I decline to make any order with respect to costs.

    Summary

35. The trade mark registration 304289 shall remain on the Register and be renewed until 4 February 2018.

36. The company is not liable to pay any fees additional to the renewal fee already paid with regard to the renewal of the registration.

37. There is no order as to costs.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    27 July 2009