Spirits Product International Intellectual Property BV

[2006] ATMO 4

TRADE MARKS ACT 1995

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

Re:Application for extension of time under section 224 for lapsed application 932471(33) (International application 788948) STOLICHNAYA ELIT(logo) in the name of Spirits Product International Intellectual Property B.V.

Date of Decision:	16 January 2006
Delegate:	Ian Thompson
Representation:	Applicant: Tim Clarke of Mallesons Stephen Jaques
Decision:	Section 224 application allowed – error or omission on the part of applicant’s agent, public and other owner’s interests considered.

Background

1. The details of lapsed trade mark application 932471 are as follows:

Appn Number:            932471

Owner:Spirits Product International Intellectual Property B.V (‘the applicant’)

Priority Date:              12 July 2002

Goods:   Class: 33  Alcoholic beverages (except beers); vodka; spirits

Trade Mark:                

 

1. On 15 November 2002, an examiner reported that there were grounds for refusing the application under section 44.  The examiner cited prior registrations as per the table below:

Number	Owner	Trade Mark	Class	Goods
298660	See Note 1	33	Russian vodka
590305	See Note 1	STOLICHNAYA	33	Alcoholic beverages including vodka
665684	See Note 1	33	Orange flavoured Russian vodka
719317	See Note 1	STOLICHNAYA OHRANJ	33	Orange flavoured vodka
762168	Diageo Australia Limited See Note 3	STOLICHNAYA BLUE SALYT	33	Alcoholic beverages including wines, spirits, vodka, pre-mixed alcoholic beverages, blended alcoholic beverages, wine based beverages
894200	ZAO "Gruppa Predpriyatij OST" See Note 2	STOLNAYA	33	Alcoholic beverages excluding whiskey

Table 1.

Note 1 to Table 1: While the owner is now Spirits International BV, the prior owner was Guinness United Distillers & Vintners Australia Ltd (now Diageo Australia Limited)(‘Diageo’).

Note 2 to Table 1: This application has now lapsed.

Note 3 to Table 1: This application is now cancelled by Diageo Australia Limited

1. Court action (commenced on 7 December 2004 between, inter alia, Diageo Australia Limited and Spirits International NV) is pending in relation to each registration listed above – as noted, 894200 has lapsed.  Further, an interest is claimed in the first four of the above registrations by Federal Public Unitary Enterprise External Economic Union Sojuzplodoimport (FGUP VO) and by Federal Treasury Enterprise (FKP) Sojuzplodoimport the latter of whom is now a party to the Federal Court proceedings.[1]

   [1] S.P.I. Spirits (Cyprus) Limited v Diageo Australia Limited and Others [2004] FCA 1780

2. On 23 August 2003, the application was assigned from Spirits International NV to the applicant.

3. On 11 February 2004 Spruson & Ferguson, patent and trade mark attorneys assumed address for service responsibilities for the application and obtained a three month extension of time until 15 August 2004. 

4. On 13 August 2004, Mallesons Stephen Jaques assumed responsibility for the application and a further extension of time was sought – on the basis of a statutory declaration by Deborah Jackson (of Spruson & Ferguson) annexed to the declaration of Sarah Elliot (of Mallesons) made on 16 August 2004.

5. This was prior to the commencement of the Court proceedings and the extensions were sought on the basis of negotiations between Diageo and Spirits International NV – a company related to the applicant for extension.

6. When part, but not all, of the solicitor’s file was transferred from Spruson & Ferguson to Mallesons in September 2004, Ms Michelle Garnett, a secretary/paralegal employed by Mallesons, entered the details of the application into Mallesons’ monitoring/policing data-base.  In an oversight, Ms Garnett did not enter the extended deadline of 15 November 2004 into this data-base.  The consequent lapsing of the application was discovered by Ms Garnett in July 2005 and on 19 July 2005, the applicant sought an extension of time until 15 October 2005.

7. On 27 July 2005 the Registrar’s delegate refused the extension of time by letter on the basis that:

   Two other conflicting trade mark application (numbers 1034151 and 1034154) were received on 13 December 2004 which was after the lapsing date of 932471.  Additionally, both were examined on 31 March 2005 and reports issued on the basis that 932471 was lapsed.

   The owners of the other two trade marks have applied in good faith and their applications have been examined accordingly.  If I were to approve the extension of time you seek, the owner of the two other applications would be disadvantaged.

1. Details of these later applications appear in Table 2, below:

Number	Owner	Trade Mark	Class	Goods
1034151	FKP Sojuzplodoimport (See Note 1)	STOLICHNAYA	33	Alcoholic beverages including wines, spirits, vodka, pre-mixed alcoholic beverages, blended alcoholic beverages, wine based beverages
1034154	FKP Sojuzplodoimport	33	Alcoholic beverages including wines, spirits, vodka, pre-mixed alcoholic beverages, blended alcoholic beverages, wine based beverages

Table 2.

Note 1 to Table 2: FKP Sojuzplodoimport is one of the people that have an interest recorded on the earlier four registrations that were cited against this application and is a party to related Federal Court proceedings.

Note 2 to Table 2: The examiner’s reports on the above applications cite section 44 and the following trade marks as a bar to the registration of the applications: 298660, 590304[2], 590305, 665684, 719317, 762168, 932465[3] and 934031[4].  The conflicting trade marks other than those footnoted as 2, 3 and 4, below, occur in Table 1, above.

[2] 590304(33) STOLI is registered in the name of Spirits International NV, who is related to the applicant and a party to the Federal Court proceedings.

[3] 932465(33) STOLICHNAYA ELIT proceeds in the name of the instant applicant

[4] 934031(33) STOLICHNAYA ELIT (& Device) proceeds in the name of the instant applicant

1. The applicant made further submission on 5 August 2005 and by letter dated 9 August the delegate responded saying:

   Simply, section 224 is a discretionary power and the Registrar normally does not exercise this discretion in circumstances where others are to be adversely affected.

1. The applicant subsequently applied to be heard at a hearing before me, as a delegate of the Registrar of Trade Marks in a hearing in Sydney on 21 October 2005.  Tim Clarke of Mallesons represented the applicant.

2. Declarations of Michelle Garnett, Sarah Elliott and Deborah Renate Charlotte Jackson are in evidence and substantiate the pertinent facts set out in the background, outlined above.

Reasons

1. Section 224 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.

(5)If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal.

(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 an 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. Mr Clarke’s main argument is under subsection 224(2)(a); that is, that the error or omission by Ms Michelle Garnett in failing to record the deadline in Malleson’s policing data-base is an error or omission within the meaning of the Act.  This lapse directly resulted in the firm’s further failure to request further extension of time for acceptance pursuant to regulation 4.12(3).  I will decide this matter under this ground.

2. In Crown and Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595, at 599-600, Hearing Officer Homann observed:

   The concept of "error or omission" on the part of an applicant or its agent appears for the first time in Australian trade marks legislation in the 1995 Act. It has a long history, however, in patents legislation and its meaning has been refined by a series of decisions of the courts and the Commissioner. The words "error or omission" in reg 5.2(2)(b) must, I think, be given the same meaning as in s224(2) of the Act which is the equivalent of s223(2) of the Patents Act 1990, the successor to s160(2) of the Patents Act 1952. The decided cases under the latter provisions are therefore directly in point in determining the meaning of the same words in the Act.

1. And, at pages 603-604 Hearing Officer Homann said that:

   In the absence of evidence to the contrary I consider that I must adopt the reasoning in the Weir Pumps[5] case and that of the Federal Court in Kimberly-Clark[6] and Danby v Commissioner[7], all supra. The effect of those decisions is that the person applying for the extension of time must have formed the intention to oppose the application on or before the expiry of the prescribed period and that that intention must have somehow been thwarted or frustrated by an error or omission. That was not the case in the present circumstances in which no person either within AMFI or in the offices of its agents had formed such an intention until after the time for filing notice of opposition had passed. There was therefore no relevant error or omission to file the notice in that time. The mere failure to file the notice on time is not in itself an error or omission and the failure to conduct a search of the relevant records or to keep a watch on the Journal is not in itself to be considered as an error or omission.

   [5] Stork Pompen BV v Weir Pumps Ltd (1998) 11 IPR 542

   [6] Kimberly-Clark Ltd v. Commissioner of Patents and Minnesota Mining and Manufacturing Co (1988) AIPC 90-487

   [7] Danby Pty Ltd v Commissioner of Patents (1988) 12 IPR 151

1. Here the question relevantly is, whether (prior to the lapsing of the application) the applicant had formed the intention to pursue the application and seek extensions of time for acceptance.  I think that the evidence (despite the lack of direct evidence of the applicant’s instructions to Spruson & Ferguson or Mallesons)[8] strongly suggests that the applicant had that intention and, but for the omission of Ms Garnett, such extensions would have been sought and the application would still be on foot.

   [8] I note that there is an inference that the instructions might not have been in the part of the file received by Mallesons from Spruson & Ferguson.

2. That, however, is not the end of the matter.  Via the use of the word ‘may’ in subsection 224(2), the power exercised by the Registrar here is a discretionary power and I should consider whether the use of this discretion is appropriate.

3. In Richard Hall, Re [1997] ATMO 69, Hearing Officer Murray stated:

   The decisions of the courts concerning the approach to be taken to the exercise of a discretion to extend time are now well established and include:

   * in the absence of nominated factors against which the discretion is to be exercised, regard should be had to the "subject-matter, scope and purpose of the Act" - per Mr Justice Mason (as he then was) in Minister for Aboriginal Affairs and Another v Peko-Wallsend Limited and Others (1986) 162 CLR 24 at 39-40. A further exposition of this is provided by the comments of Mr Justice Davies in Chalk v Commissioner for Superannuation (1994) 50 FCR 150 at 154 where he said "...the discretion should be exercised by reference to the words of the statute and the context within which the discretion is conferred";...

   * it is "more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time" (per Davies J in Chalk's case, at 156, with whom Chief Justice Black and Mr Justice Cooper agreed. Similar comments are to be found in Comcare v Ahearn (1993) 119 ALR 85, particularly at 88);

   * a legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially (Davies J in Chalk's case at 155).

   Mr Spence also drew my attention to D.R. Shanahan's comments on the exercise of the Registrar's discretion. In Australian Law of Trade Marks and Passing Off, at page 81, he says:

   Where the Registrar does exercise a discretionary power under the Act, the primary concern will be the public interest, but other circumstances may be relevant, including the bona fides of the parties, the position in other jurisdictions and the balance of convenience. It has been said that the Registrar's discretion should be exercised "upon judicial principles and affected neither by caprice nor over-caution" and that an application which is bona fide should not be refused on a ground which is "fanciful" or "in a business sense, unsubstantial".

1. The delegate indicated that his refusal to allow the application under section 224 was based on the existence of two subsequent applications to register the same trade marks.  Mr Clarke, however, submits, and (with some qualifications) I agree, that the owner of those two applications will be no worse off if this application is ‘revived’ for the following reasons:

   ·     The trade mark (or elements of it) and the goods are substantially contained within those already cited against the subsequent applications.  This revival should not substantially add to the difficulties facing the subsequent applicant.

   ·     The putative owner of this lapsed application is a related company to the owner of the conflicting registered trade marks which act as a bar to the registration of the subsequent application.

   ·     These registered trade marks have been transferred to the related company by order of the Federal Court.

   ·     The putative owner of this lapsed application has two other applications which act as a bar to the subsequent applications.

   ·     The applications in the name of the instant applicant and those subsequent applications are all ‘stalled’ awaiting the outcome of either negotiations between the parties to the Federal Court proceedings, or a decision by the Federal Court concerning the ownership of the registered trade marks listed in Table 1, above.

   ·     It is the outcome of either these negotiations of the decision of the Court which will ultimately determine the disposition of all the relevant applications to register.

2. Given the potential nature of the proceedings in the Federal Court, it is possible that the two subsequent applications have been filed by FKP Sojuzplodoimport to give it a locus standi, if locus should become an issue.

3. Given the multiplicity of trade marks involved and the number of parties to proceedings in the Federal Court, it is arguably in the public interest that ownership of all related trade marks should be fully canvassed and the revival of this application (particularly if there are common-law rights in the trade mark) might contribute to that process.

4. At the hearing of the issue, I indicated to Mr Clarke that I was concerned that (if my decision was in the affirmative) the owner of the subsequent two applications, FKP Sojuzplodoimport, know of the ‘revival’ of this lapsed application so that it either has the opportunity to oppose this decision or to have the information if it is relevant to proceedings in the Federal Court.

5. Mr Clarke undertook to inform the legal representatives in Australia for FKP Sojuzplodoimport if my decision was in his client’s favour.

6. Having now considered in some detail what I believe to be all the circumstances of this case, I have decided that it would be appropriate for me to exercise my discretion as a delegate of the Registrar, to grant Spirits Product International Intellectual Property B.V.’s application for extension of time, and thereby to revive trade mark application no. 932471. However, as the period of time in question exceeds four months, before I can grant the extension, I am obliged by the provisions of subsection 224(5) to advertise the application in the Official Journal of Trade Marks. Subsection 224(6) then enables any person to oppose the granting of the application. In this way, should FKP Sojuzplodoimport choose to do so, it will have the opportunity to put its case against the extension, and to draw a hearing officer's attention to other information concerning the relative inconvenience to the parties which only it may be in a position to provide.

7. If, after the one month allowed by regulation 21.26, there is no opposition to the application for extension, I will grant the extension of time until 15 October 2005.

Ian Thompson

Hearing Officer

16 January 2006