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
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)
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.
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…
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Details
- Case
- [2015] ATMO 84
- Decision Date
CaseChat Overview and Summary
This decision concerns an application by Sing Tel Optus Pty Ltd (the applicant) for extensions of time to file notices of intention to defend oppositions to its divisional trade mark applications. The opponent, Optum, Inc, argued that the applicant had not made a full and frank disclosure of the circumstances leading to its failure to file the notices within the prescribed time. The applicant contended that its agent, Philips Ormonde Fitzpatrick, had made a documented error in advising its overseas attorneys that class 38 services were covered by both the parent and divisional applications, leading the applicant to forgo filing notices of intention to defend.
The primary legal issue before the Hearing Officer was whether the applicant had satisfied the requirements of subsection 224(2)(a) of the relevant Act, which allows for extensions of time in cases of error. This required determining if the applicant's agent had made an error and if the applicant had made a full and frank disclosure of all relevant circumstances, including the agent's conduct, knowledge, beliefs, and mental processes, as per the principles in *Kimberly-Clark Ltd v Commissioner of Patents*. The Hearing Officer also had to exercise discretion in granting the extension, considering factors such as the relative inconvenience to the parties and the public interest.
The Hearing Officer found that the applicant's agent had indeed made a clear and documented error in advising the applicant regarding the coverage of class 38 services, which was compounded by the state of the ATMOSS system at the time. Despite the opponent's arguments that the disclosure was not sufficiently frank, the Hearing Officer considered the agent's documented error and actions to be a frank disclosure, stating that a more candid admission was unlikely and that the opponent's approach amounted to a "witch hunt." The Hearing Officer was satisfied that the applicant had established the error under section 224(2)(a). In exercising discretion, the Hearing Officer considered the inconvenience to both parties and the public interest in the regularity and certainty of the trade mark registration system, ultimately finding that the greater inconvenience would be to the applicant if the extensions were not granted.
Pursuant to subsection 224(2) of the Act, the Hearing Officer extended the time for Optum Inc to file its notices of intention to defend to 11 March 2015. The Hearing Officer also indicated an intention to direct the opponent to file and serve evidence in support of its opposition within three months, subject to any written representations from the parties. The parties were ordered to bear their own costs.
The primary legal issue before the Hearing Officer was whether the applicant had satisfied the requirements of subsection 224(2)(a) of the relevant Act, which allows for extensions of time in cases of error. This required determining if the applicant's agent had made an error and if the applicant had made a full and frank disclosure of all relevant circumstances, including the agent's conduct, knowledge, beliefs, and mental processes, as per the principles in *Kimberly-Clark Ltd v Commissioner of Patents*. The Hearing Officer also had to exercise discretion in granting the extension, considering factors such as the relative inconvenience to the parties and the public interest.
The Hearing Officer found that the applicant's agent had indeed made a clear and documented error in advising the applicant regarding the coverage of class 38 services, which was compounded by the state of the ATMOSS system at the time. Despite the opponent's arguments that the disclosure was not sufficiently frank, the Hearing Officer considered the agent's documented error and actions to be a frank disclosure, stating that a more candid admission was unlikely and that the opponent's approach amounted to a "witch hunt." The Hearing Officer was satisfied that the applicant had established the error under section 224(2)(a). In exercising discretion, the Hearing Officer considered the inconvenience to both parties and the public interest in the regularity and certainty of the trade mark registration system, ultimately finding that the greater inconvenience would be to the applicant if the extensions were not granted.
Pursuant to subsection 224(2) of the Act, the Hearing Officer extended the time for Optum Inc to file its notices of intention to defend to 11 March 2015. The Hearing Officer also indicated an intention to direct the opponent to file and serve evidence in support of its opposition within three months, subject to any written representations from the parties. The parties were ordered to bear their own costs.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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. 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. 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 698The 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. 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. 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. 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. 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. 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.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 37,393-4If 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.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 80Therefore, I am satisfied that I should exercise my discretion to allow the extensions of time as requested by the applicant.DecisionPursuant 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.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.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.I order that the parties bear their own costs in relation to this hearing.Bianca IrgangHearing OfficerTrade Marks and Designs Hearings10 September 2015
Ratio Decidendi
Legal Principle Established
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