Sing Tel Optus Pty Ltd v Optum, Inc

[2015] ATMO 84

TRADE MARKS ACT 1995

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

Re:Applications by Optum Inc for extensions of time to file Notices of Intention to Defend trade mark application numbers 1649817 and 1649818 in the name of Optum, Inc and opposition thereto by Sing Tel Optus Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Hamish Bevan of counsel instructed by Minter Ellison Applicant: David Larish of counsel instructed by Corrs Chambers Westgarth
Decision:	2015 ATMO 84 Section 224(2) application for extensions of time to file Notices of Intention to Defend granted - Intention to direct that opponent has 3 months to file and serve evidence in support- Parties to bear their own costs

Background

1. Optum Inc (‘the applicant’) is the owner of divisional trade mark application no.s 1649817 OPTUM and 1649818 OPTUM with device. Both of these trade mark applications are divisional applications made under s 46(2) of the Trade Marks Act 1995 (Cth) (‘the Act’). The details of these ‘divisional trade mark applications’ are as follows:

Trade mark:  OPTUM

Trade mark application no: 1649817

Filing Date:  30 September 2014

Convention Details:              25 January 2011
  85/225,782 UNITED STATES OF AMERICA

Divisionals:  Divisional Number 1438623

Specification:  Class 38: Providing multiple-use access to a global computer information network in the field of health care; on-line services for healthcare practitioners, namely providing a database featuring news and information in the fields of medicine for practitioners; providing an on-line computer database in the field of healthcare used in connection with health and productivity research and analysis; secure delivery of medical record data to medical care providers via fax, dedicated electronic mail box, print servers, and interfaces to electronic medical records (EMRS)

Trade mark:  

Trade mark application no: 1649818

Filing Date:  30 September 2014

Convention Details:              15 February 2011
  85/243,180 UNITED STATES OF AMERICA

Divisionals:  Divisional Number 1440038

Specification:  Class 38: Providing multiple-use access to a global computer information network in the field of health care; on-line services for healthcare practitioners, namely providing a database featuring news and information in the fields of medicine for practitioners; providing an on-line computer database in the field of healthcare used in connection with health and productivity research and analysis; secure delivery of medical record data to medical care providers via fax, dedicated electronic mail box, print servers, and interfaces to electronic medical records (EMRS)

1. Acceptance of the divisional trade mark applications for possible registration was published in the Australian Official Journal of Trade Marks on 23 October 2014. Subsequently, on 23 December 2014 Sing Tel Optus Pty Ltd (‘the opponent’) filed Notices of Intension to Oppose followed by Statements of Grounds and Particulars. The applicant had until 28 February 2015 in which to file its Notices of Intention to Defend. However, no Notices of Intention to Defend were filed by the applicant with the Office by that date.

2. On the 11 March 2015, after receiving some correspondence from IP Australia, the applicant’s then attorneys immediately filed Notices of Intention to Defend and on 12 March 2015 applied for an extension of time under section 224 of the Act. On 24 March 2015, the Registrar of Trade Marks advised both parties that she intended to grant the request and allowed the opponent 14 days to provide comment or to request and pay for a hearing in the matter. The opponent requested a hearing on 7 April 2015.

3. I heard the extension of time matters in Canberra as a delegate of the Registrar on 29 July 2015. The opponent was represented by Mr Hamish Bevan of counsel instructed by Minter Ellison. The applicant was represented by Mr David Larish of counsel instructed by Corrs Chambers Westgarth. Both parties’ counsel made oral and written submissions.

Evidence

1. In support of the applications for an extension of time to extend the deadline for the lodging of the Notices of Intention to Defend, the applicant filed the following declaration:

• Declaration of Helen Nectaria Kavadias, Senior Associate at Philips Ormonde Fitzpatrick accompanied by Confidential Exhibits 1 and 2.

1. Before I address the submissions provided by the parties at the hearing I believe that it is necessary to provide a detailed chronological summary of events which lead up to the filing of the divisional applications and the request for extensions of time to lodge the Notices of Intention to Defend which culminated with the hearing. I will incorporate some of the aforementioned facts and the evidence provided by Ms Kavadias into the summary.

Chronological Summary of Events

Date

Event

21 July 2011

The applicant filed trade mark application no. 1438623 OPTUM in classes 9, 16, 35, 36, 38, 41, 42, 44 and 45.

29 July 2011

The applicant files trade mark application no. 1440038 OPTUM with device in classes 9, 16, 35, 36, 38, 41, 42, 44 and 45.

4 September 2012

7.     The applicant requested amendments to the specification of goods and services (including those services in class 38) for trade mark application no. 1440038.

2 October 2012

The applicant requested the goods and services in trade mark application no. 1438623 be amended.

30 October 2012

The applicant files divisional trade mark application numbers 1522958 OPTUM and 1522963 OPTUM and device in classes 9, 16, 41 and 42.

22 November 2012

Acceptance of trade mark application no. 1438623 OPTUM in classes 35, 36, 38, 44, 45 is advertised.

6 December 2012

Acceptance of trade mark application no. 1440038 OPTUM with device in classes 35, 36, 38, 44, 45 is advertised.

22 February 2013

The opponent opposed trade mark application no. 1438623 OPTUM.

4 March 2013

The opponent opposed trade mark application no. 1440038 OPTUM and device.

29 September 2014

The applicant, through its representatives Philips Ormonde Fitzpatrick, applied to amend the specification of trade mark application no.s 1438623 OPTUM and 1440038 OPTUM and device by restricting class 38 services.

30 September 2014

The applicant filed divisional trade mark application numbers 1649817 OPTUM and 1649818 OPTUM and device in class 38 which were advertised as accepted on 23 October 2014.

23 December 2015

The opponent filed Notices of Intension to Oppose followed by Statements of Grounds and Particulars in regards to divisional trade mark application no.s 1649817 OPTUM and 1649818 OPTUM and device.

21 February 2015

Phillips Ormonde Fitzpatrick received an email from the applicant’s overseas attorneys enquiring as to whether both the ‘parent’ (i.e. trade mark applications 1438623 & 1440038) and ‘child’ (i.e. divisional trade mark applications 1649817 & 1649818) applications covered class 38 services. The applicant’s overseas attorneys advised that if the parent applications covered the class 38 services then the child applications may be allowed to lapse.

23 February 2015

Philips Ormonde Fitzpatrick checked the Australian Trade Mark On-Line Search System (ATMOSS) to confirm that both and parent and child applications covered the class 38 services. Philips Ormonde Fitzpatrick confirmed to the applicant via email and attached copies of the ATMOSS searches that both the parent and child applications covered the class 38 services. Philips Ormonde Fitzpatrick made a point to deliberately advise that the parent applications 1438623 and 1440038 contained a limitation to the specification of services in class 38 which read: all of the aforementioned being in the field of healthcare.

Philips Ormonde Fitzpatrick confirmed that because the class 38 services were in the parent applications that the child applications (i.e divisional trade mark applications 1648917, 1649818) would be allowed to lapse.

28 February 2015

The due date for the applicant to file its Notices of Intention to Defend divisional trade mark application no.s 1648917 and 1649818. No Notices of Intention to Defend were filed by the applicant.

11 March 2015

Philips Ormonde Fitzpatrick was notified by IP Australia that class 38 had been excluded from the parent applications (i.e 1438623, 1440038). Philips Ormonde Fitzpatrick called IP Australia and was advised that class 38 was deleted from the parent applications because these services had been divided out into the divisional applications 1649817 and 1649818. Philips Ormonde Fitzpatrick checked its files and realized that the divisional applications did not indicate that the class 38 services were to stay in the parent applications.

Philips Ormonde Fitzpatrick filed Notices of Intention to Defend for divisional trade mark application no.s 1649817 and 1649818.

12 March 2015

Philips Ormonde Fitzpatrick lodged extension of time requests to file Notices of Intention to Defend for divisional trade mark application no.s 1649817 and 1649818. These requests were accompanied by the declaration of Helen Kavadias and the accompanying confidential exhibits 1 and 2.

24 March 2015

IP Australia advised that the Registrar intended to grant the applicant’s extension of time requests to file Notices of Intention to Defend. The opponent was provided with 14 days in which to comment or to request and pay for a hearing in the matter.

7 April 2015

The opponent requested hearings on the matter of the extensions of time to file Notices of Intention to Defend for divisional trade mark application no.s 1649817 and 1649818.

3 June 2015

The applicant changed its Australian legal representatives from Philips Ormonde Fitzpatrick to Corrs Chambers Westgarth.

29 June 2015

IP Australia formally advised the opponent and the applicant that a hearing on the matter of the extensions of time to file Notices of Intention to Defend had been set down for 29 July 2015 in Canberra.

23 July 2015

At 6:39 pm, the opponent made a formal request that the Registrar summon a witness to attend the extensions of time hearing on 29 July 2015.

27 July 2015

The Registrar refused the opponent’s request to summon a witness to attend the hearing.

29 July 2015

I conducted the hearing on the Extensions of Time to file Notices of Intension to Defend.

1. From the above summary of events it is clear there has been considerable correspondence in these matters. Of particular relevance is the applicant’s overseas attorney’s email to Philips Ormonde Fitzpatrick dated 21 February 2015 which is asserted to have demonstrated the applicant’s intention to defend and maintain any of its trade mark applications which contained the class 38 services. Of equal importance is the email dated 23 February 2015 that Philips Ormonde Fitzpatrick sent in response which stated that the ‘parent’ trade mark application no.s 1438623 and 1440038 contained the class 38 services and confirmed that due to this, the ‘child’ divisional trade mark application no.s 1649817 and 1649818 would be allowed to lapse.

2. The opponent has been highly critical of the information provided by Ms Kavadias in her declaration and of the information contained in the emails sent between Philips Ormonde Fitzpatrick and the applicant’s overseas attorneys. Mr Hamish Bevan, the opponent’s representative, expressed disbelief that Philips Ormonde Fitzpatrick would make a mistake when it came to divisional applications as the staff are highly trained and have knowledge of divisional applications and would not make such a mistake. He alluded that this apparent ‘mistake’ made by Philip Ormonde Fitzpatrick was a ‘ploy’ on the part of the applicant. He further reminded me of the need for procedures to be strictly followed, and the collateral effects of allowing the extensions of time, such as the opposition commencing and the time and fees that would entail for the opponent.

Discussion

1. The submissions made by both parties at the hearing were in relation to subsection 224(2) so I will address that subsection in this decision. Section 224 of the Act relevantly provides:

   224 Extension of time

   …

   (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.

   …

   (4) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

   …

   (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).

1. Although it is only necessary for the applicant to establish one of the limbs of section 224(2) for the Registrar to consider it appropriate to grant the extensions of time, the applicant has submitted that both of the limbs have been satisfied. Mr Larish, the representative of the applicant, referred me to the decision in Cat Media v Apex Marketing[1] where Hearing Officer Thompson noted that the relevant considerations to be balanced under section 224(2) were whether:

a)The length of time is appropriate;

b)Sufficient reasons have been provided;

c)A proper case has been made out justifying the extension;  and

d)The relative inconvenience to the parties concerned and the public interest.

[1] (2007) 72 IPR 442 at [18] drawing from principles in Vangedal-Nielsen v Smith (Cmr of Patents) [1980] FCA 163; (1980) 3 ALN N21; 33 ALR 144; 1A IPR 731 and Lyons (t/as Mitty's Authorized Newsagency) v Registrar of Trade Marks [1983] FCA 236; (1983) 50 ALR 496; 1 IPR 416.

1. In applying these factors to the current case I note that the length of time requested is from the 28 February 2015 until the 11 March 2015. These requests are not for lengthy extensions of time and the details of why this length is required are clearly explained in the applicant’s evidence and the aforementioned timeline above. I am satisfied the length of time is appropriate.

2. Turning to the second consideration whether sufficient reasons have been provided and of course, whether one of the limbs of section 224(2) has been established, I refer to the sequence of events outlined above and to the applicant’s submissions.

3. The Oxford Online Dictionary[2] defines error to be:

   1.   A mistake: ‘an error of judgement’

   1.1 The state or condition of being wrong in conduct or judgement.

   [2] 2015, >

   In this case it is clear that the agent acting on behalf of the applicant in Australia incorrectly advised the applicant’s overseas attorneys that the class 38 services were covered by both the parent applications and the divisional applications. On the strength of this advice from its agent, the applicant chose not to file notices of intention to defend on its divisional applications. Once the agent became aware that they had incorrectly advised their client they filed the Notices of Intention to Defend and then requests for extensions of time based upon the clearly documented error of the agent and IP Australia.

4. The applicant has stated that the error involved under section 224(2)(a) was made by an agent of Philips Ormonde Fitzpatrick seeking to rely on the contents of ATMOSS to decide whether to allow the applicant’s divisional applications to lapse in circumstances where the Agent failed to appreciate that, by virtue of section 46(2) of the Act, the applicant’s parent applications no longer included the class 38 services. The applicant states that this error on the part of Philips Ormonde Fitzpatrick was compounded by the fact that, as at 23 February 2015, ATMOSS had not been updated so as to remove the class 38 services from the applicant’s parent applications; that is, the ATMOSS extract positively indicated at that date the class 38 services were part of the applicant’s parent applications. I believe this requires some discussion.

5. The opponent has pointed out that if the applicant wanted to advance its application for extensions of time based on a misapprehension of section 46(2) of the Act, then it was incumbent upon the applicant and its representative to say so directly and candidly. Mr Bevan directed me to the test in Kimberly-Clark Ltd v Commissioner of Patents[3] (‘Kimberly Clark’):

   “…an applicant would, in my opinion, have to go beyond a disclosure of the processes by which an agent’s error came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes (or, in the case of corporation aggregate, of the relevant offices and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.”

   [3] (No 3) (1988) 84 ALR 685 at 698

6. The applicant has argued that the opponent has taken this comment from Kimberly Clark out of context and that it does not apply in the present circumstances because it concerns an extension of time in respect of a failure to lodge a notice of opposition under the patent system. Mr Larish states that the failure to do so is not comparable to an extension of time in respect of a failure to lodge a notice of intention to defend an opposition under the trade mark system. He states that the former concerns an entity’s failure to do something in respect of an intellectual property right sought by another, whereas the latter concerns an entity’s failure to do something in respect of its own intellectual property right, the application for which has already been filed. 

7. Mr Bevan has put forward the counter argument that there is no basis to distinguish Kimberly Clark from the present situation. He states that Kimberly Clark is routinely followed by the Trade Marks Office in matters involving extension of time applications under the provisions of section 224 of the Act.

8. Mr Bevan was highly critical of the Kavadias declaration, stating that there is no direct evidence that Philips Ormonde Fitzpatrick, the applicant or its US Attorneys were under a misapprehension as to the law at the time that the divisional applications were filed or at any time afterwards. He states that the Kavadias declaration offers no explanation as to the matters and circumstances that lead the applicant to file the applications and that the email exchanges between Philips Ormonde Fitzpatrick and the applicant’s overseas attorneys do not assist the applicant’s case as they are concerned only with the divisional applications as they were at that point in time. He went on to suggest that many inferences can be drawn from the facts outlined in the Kavadias declaration and that given the total absence of any direct evidence from the applicant or its representatives on the issue of section 46(2) of the Act, the speculative statements in the Kavadias declaration should not be characterized as a full and frank disclosure of all of the relevant circumstances.

9. The opponent’s point regarding the full and frank disclosure of all the relevant circumstances within the Kavadias declaration requires some discussion. The declaration of Ms Kavadias states the facts of what happened within Philips Ormond Fitzpatrick but is carefully worded. I may generously characterize this as potentially being done in an effort to satisfy as many branches of section 224 as possible in order to obtain the extension of time for the applicant. I note that the agent’s error is clearly outlined in the declaration. However, I also note the email exchanges between Philips Ormonde Fitzpatrick and the applicant’s overseas attorneys, that the declaration has hesitated to point to the reasoning behind all of the errors which seem likely to have occurred given the Kavadias declaration. However, given the clear errors already stated in the declaration as well as the actions of the agent and the agent’s beliefs at the time, I believe that a frank disclosure has taken place such that I am able to make my decision.

1. The opponent has argued that a ‘full and frank’ disclosure has not taken place but I question what could potentially characterise a more full and frank disclosure? Perhaps the agent making statements to the effect of: ‘I made a mistake when I…’, ‘I did not check…’, ‘I forgot about…’? A full and frank disclosure is desirable and indeed, necessary. However, I am unimpressed to witness an agent’s genuine and well-documented error being turned into a ‘witch hunt’ with each word carefully considered, attempted to be discredited and then used in an effort to gain advantage over the applicant who has already been disadvantaged by its agent’s error.

2. The opponent has implied that both the agent and the applicant would have been aware of section 46(2) of the Act which governs divisional applications so that a decision not to file the Notices of Intention to Defend was made for whatever reason known only to them. I believe that the opponent draws a long bow to suggest that the applicant would deliberately not file the Notices of Intention to Defend when it has clearly been disadvantaged by this course of action. Indeed, the emails attached to the Kavadias declaration demonstrate that the applicant always intended to maintain those applications which contained the class 38 services but then has had its intention frustrated due to the errors made by its agent and through these circumstances of relying on incorrect advice. I do not believe that knowledge of the relevant law precludes someone from making a mistake. Mistakes (which are synonymous with errors) can result from different causes including carelessness which is why they are ‘mistakes’. Knowledge of the law would not be a shield against such a cause, nor should the applicant pay for such an error on the part of their former agent. I am satisfied that the applicant has established subsection 224(2)(a) of the Act.

3. Having found an error on the part of the applicant’s agent, I am given, by the wording of the subsection discretion as to whether or not to allow the extension of time: see, for example, Cynthia Armaro[4], at paragraph 16. In deciding how to exercise this discretion, I adopt the principles developed by Hearing Officer Michael Homann in Re Ausorb Pty Limited[5], and consider that the most important factors in coming to a ‘fair and reasonable’ decision in the matter include the relative inconvenience to the parties concerned and the public interest. See also Re Hall[6], which also adopts those principles.

   [4] [2007] ATMO 9 (12 February 2007)

   [5] (1996) 36 IPR 178

   [6] (1998) AIPC 91-425 at 37,393-4

4. If the extensions of time were not to be granted, the applicant will (as a result of the agent’s error) have lost its divisional trade mark applications which cover the class 38 services, while the opponent has, as a consequence, not had to engage in the opposition process to prevent registration of these divisional trade mark applications. The opponent has pointed out that it would be inconvenienced by going through the opposition and incurring the costs that would entail. However, I am underwhelmed by this reasoning. When the opponent chose to file its intentions to oppose the divisional trade mark applications it would have done so in the full knowledge and acceptance of the costs involved in pursuing opposition proceedings. On balance, it seems that the greater inconvenience would be to the applicant if the extensions are not granted.

5. In Insfin Insurance + Finance Group Pty Ltd v Razor USA LLC[7] Hearing Officer McDonagh considered a similar issue under section 224 and stated:

   There is undoubtedly a public interest in the system of registration of trade marks being conducted with regularity and certainty. There is also public interest in registered owners of trade marks who are in fact using their trade marks being able to continue to do so. I take guidance from the High Court:

   In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be. Kaiser Aluminum & Chemical Corporation v. Reynolds Metal Co. [1969] HCA 7; (1969) 120 CLR 136, per Kitto J at paragraph 14.

   [7] 2008 ATMO 80

6. Therefore, I am satisfied that I should exercise my discretion to allow the extensions of time as requested by the applicant.

Decision

1. Pursuant to subsection 224(2) of the Act, I extend the time for Optum Inc to file its Notices of Intention to Defend to 11 March 2015.

2. For the purposes of the opposition proceedings, and pursuant to regulation 5.19 of the Regulations, I hereby notify the parties that I intend to direct that the opponent file and serve evidence in support of its opposition within three months from the date of this decision.

3. The parties may make written representation with regard to my proposed direction within one month of this decision. If I do not receive any representation I direct that the opponent file and serve evidence in support of its opposition within three months from the date of this decision.

4. I order that the parties bear their own costs in relation to this hearing.

Bianca Irgang
Hearing Officer
Trade Marks and Designs Hearings
10 September 2015