Shop-Vac Corporation v E.D. Oates Pty Ltd

[1991] ATMO 49

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by E.D. OATES PTY LTD to an Application by SHOP-VAC CORPORATION to Remove Registration Numbers 88473, 334416, 334417 and 334418 from the Register of Trade Marks - Request for Award of Costs

Lodgement by SHOP-VAC CORPORATION of 2323 Reach Road, Williamsport, Pennsylvania, USA, of applications under the provisions of section 23 for removal of trade marks 88473, 334416, 334417 and 334418 from the Register of Trade Marks was advertised in the Official Journal of 13 September 1990.  Those registrations, being for the trade mark FLOORMASTER in respect of goods specified in classes 21, 9, 21 and 7 respectively, are in the name of E.D. OATES PTY LTD of 86-106 Plenty Road, Preston, Victoria and the removal was requested in respect of all or some of the goods for which the marks were registered.
          In accordance with reg 22(4), notice of opposition to the s.23 applications was thus due by 13 December 1990.  E.D. Oates Pty Ltd (hereafter "the opponent"), through their agents Callinan Lawrie of Melbourne, lodged notices of opposition on 12 October 1990 and service of the notices on the s.23 applicant was acknowledged by their agents, Griffith Hack & Co of Sydney, by letter dated 17 October 1990.  Before the expiry of the fourteen day period allowed by reg 54(a) for service of the applicant's evidence in support, the s.23 applications were withdrawn.
          Following withdrawal of the s.23 applications, the opponent submitted a bill of costs which they requested "be taxed and certified in the usual way".  However, as the provisions of reg 52 do not apply to proceedings under Division 2 of the Trade Marks

Regulations (that is opposition cases under reg 22), it is inappropriate to seek taxing, allowance and certification of costs in the same way as for proceedings under s.49.  The applicant was advised that, while it was open to the opponent in this matter to seek an award of costs under s.119, the issue of costs had not been considered at a hearing and a period of one month would be allowed for the applicant to advise the Office of its position on the question.
          In a letter dated 21 December 1990, the agents for the applicant commented on the circumstances surrounding the progress of the proceedings and submitted that, in view of these circumstances, the award of costs should be refused.  A copy of that letter was forwarded to the attorneys acting for the opponent and their comments invited.  Their response, dated 1 February 1991 was in support of the opponent's claim.
          The matter was set down for hearing in Canberra on 28 June 1991.  Prior to that date both parties advised that they did not wish to appear at the hearing but would rely on the submissions already made.  Thus this issue is to be decided on the written record.
          The letter of 21 December 1990 from Griffith Hack & Co stated that on 27 September 1990, that firm received an offer for settlement dated 25 September 1990 from the attorneys acting for the registered proprietor.  The notice of opposition had been filed within two weeks of the offer for settlement being received by the applicant and some two months before service of the notices of opposition became due. While acknowledging the rights of the registered proprietor to lodge notices of opposition at any time within the prescribed period, it was submitted that it was unreasonable for this to occur when it did in view of the proprietor's settlement offer to which they did not give the applicant sufficient opportunity to reply before lodging notices of opposition.  It was claimed that "had they given the applicant the opportunity of replying within a reasonable time, they would have found it quite unnecessary to lodge Notices of Opposition".
          Commenting on the applicant's submissions, Callinan Lawrie noted that an offer of full settlement had been made and suggested that, with use of modern means of communication, the period of two weeks before notices of opposition were lodged would have allowed sufficient time for the applicant to respond to the settlement offer.  Further, it was claimed that the opponent's mark had always been in use, it appears in the opponent's catalogues and price lists and that the products are on sale.  It was submitted that, had the proper investigations into use of the mark which it is incumbent on a s.23 applicant to conduct been carried out in this case, the need for applications under s.23 would have been avoided.
          While reg 22(4) provides a period of three months after advertisement of an application under s.23 in which to give notice of opposition, such notice may, as was acknowledged by the applicant's agent, be lodged at any time in that period.  There is nothing in the legislation or case law which determines how the parties to a s.23 matter should conduct themselves should any negotiations precede the final determination.  Indeed, there is nothing to suggest the parties need communicate at all other than in the service of notices and evidence.  It is clearly established by cases such as Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd 116 CLR 254 that the onus is on the s.23 applicant to establish, through evidence, a prima facie case of non-use.  It is the lodging of a notice of opposition which starts the 14 day period provided by reg 54(a) for the applicant to serve on the opponent copies of the evidence lodged to support the application.  A prospective opponent may well see the lodgement of a notice of opposition as soon as is practicable after advertisement of the application for removal as allowing the evidence relied upon by the applicant to be viewed and considered at the earliest opportunity.  There is nothing which restricts a prospective opponent from lodging its notice of opposition where a settlement offer may be under consideration and, insofar as the circumstances are known to me, I can not agree with the applicant's agent that the timing of the lodgement by the opponent in this case was unreasonable.
          All details of the settlement offer to which both parties referred remain unknown to me.  It is clear, however, that the s.23 applications were withdrawn following notice of opposition to each application and that no evidence to support the applications had been lodged.  As there has been no request to amend the Register in respect of any of the subject trade marks, there is nothing to indicate that any of the s.23 applications succeeded, even in part.  The opponent is the successful party in this matter and, as nothing put before me persuades me that the opponent is not entitled to its costs, I award costs to E.D. Oates Pty Limited.  The bill of costs submitted includes an amount to cover fees for taxing costs however this is not appropriate in a s.23 matter.   I direct that the amount of $900.00 be allowed as being the costs the applicant must pay the opponent.

(BARBARA J. BENNETT)
Senior Examiner
16 July 1991