Square, Inc v Brett Assets Pty Ltd
[2017] ATMO 93
•28 August 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Square, Inc to an application for extension of time under subsection 224(3) in which to pay the registration fee for trade mark application 1682953(36) - Cashtag - made by Brett Assets Pty Ltd.
Delegate: | Decision on the Written Record Iain Campbell Thompson |
| Representation: | Opponent: AJ Park – written submissions Applicant: Shelston IP – written submissions |
| Decision: | 2017 ATMO 93 Trade Marks Act 1995 Subsection 224(3) – extension of time in which to pay registration fee; ‘special circumstances’ not shown to exist; exercise of Registrar’s discretion; application for extension of time refused. |
Background
These proceedings under subsection 224(3) of the Trade Marks Act 1995 (‘the Act’) concern the lapsed trade mark application which appears below:
Application No: 1682953
Applicant: Brett Assets Pty Ltd
(‘the Applicant’)
Priority Date: 24 March 2015
Services: Class 36: Collection of payments
Trade Mark: Cashtag
(‘the Trade Mark’)
Following acceptance of the application for possible registration it was advertised for possible opposition in the Australian Official Journal of Trade Marks on 13 August 2015. No opposition was forthcoming. However, the Applicant failed to pay the registration fee by the due date: 13 February 2016. The application then lapsed. Subsequently, on 19 May 2016, the Applicant has applied for an extension of time in which to pay the registration fee citing ‘special circumstances’. The grant of this extension has been opposed by Square, Inc. (‘the Opponent’).
The parties have elected not to be heard but to rely on the written submissions of their legal representatives: the Opponent is represented by AJ Park and the Applicant is represented by Shelston IP.
I am a delegate of the Registrar of Trade Marks and am to decide this matter on the basis of the materials on the official record.
Evidence
The evidence is comprised of the following declarations:
In Support of the Application
Dale Brett, CEO of the Applicant, made on 19 May 2016, as a part of the Application for extension;
Dale Brett, made on 29 August 2016, with annexures DB-1 to DB-4; and
In Answer
Tania Paula Cresswell Weir, Litigation Assistant of AJ Park, made on 26 August 2016, with annexures TPCW-1 to TPCW-4.
Relevant to my decision Mr Brett’s declarations state:
I apologise we have moved business address and did not receive the correspondence requiring payment. It was an error on my behalf. I am making immediate payment plus late fees.
[19 May 2016]
When making the Declaration, I was of a belief that my mistake in missing the Deadline was due to either losing correspondence in the process of moving to Stone & Chalk, or for some other reason I had never received correspondence requiring payment.
Regardless of the precise reason for missing the Deadline, I appreciate that I should have been aware of the Deadline irrespective of correspondence from IP Australia, and missing the Deadline is entirely an error on my part.
[29 August 2016]
I note that Mr Brett does not present any evidence that the Applicant has used the Trade Mark.
The declaration of Ms Weir brings into evidence various documents associated with the application for the extension of time which are relied upon by the Opponent in its submissions.
The Opponent is the holder of the pending International Registration Designating Australia which appears below:
Application No: 1746284
IRDA: 1283684
Priority Date: 9 Jun 2015 (via 86657090 – United States of America)
Services:Class 36: Accepting, processing, and reconciling financial and payment transactions; financial transaction services, namely, providing secure commercial transactions and payment and funds transfer options
Class 38: Providing electronic transmission of financial and payment transactions and related information
Class 42: Providing temporary use of non-downloadable software for making, processing and authenticating financial and payment transactions and refunds over electronic mediums
Trade Mark: CASHTAG
Discussion
Section 224 of the Act provides:
224Extension of time
(1)The Registrar must extend the time for doing a relevant act that is required by this Act to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a)the Registrar or a Deputy Registrar; or
(b)an employee; or
(c)a person providing, or proposing to provide, services for the benefit of the Trade Marks Office.
(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.
(3A)If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.
(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.
Note:For month see section 6.
(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).
The application for extension is one made under subsection 224(3) – citing ‘special circumstances’. This is a discretionary provision. Even were the Registrar to be satisfied that ‘special circumstances’ exist, she must also be satisfied that the exercise of the discretion in favour of the Applicant is appropriate.
Discussion
The circumstances before me are unusual in that the Applicant has applied under subsection 224(3) (‘special circumstances’) but has presented both evidence and argument in support of its position as if the application for extension was made under subsection 224(2)(a) (‘error or omission’). The Opponent, for its part, couches its arguments against the grant of the extension in terms of whether ‘special circumstances’ exist here or not.
Although ‘errors or omissions’ and ‘special circumstances’ may be closely related,[1] they are specified by the Act to be different things and it follows that the fact that an error or omission may have occurred does not in itself constitute a ‘special circumstance’.
[1] See, for example, Richard Hall, Re [1997] ATMO 69.
I note that, further, the Applicant argues for the extension in the following terms:
Furthermore, we respectfully submit that, to the extent that there is any merit to allegations that the Opponent is the Applicant of the CASHTAG trade mark, the public interest favours that such issues are resolved via a substantive opposition on the merits, rather than having the substantive issues avoided due to an unfortunate failure to pay fees on time by a novice self-representing applicant.
[and]
The public interest also favours granting of the Extension of Time. As noted in Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company [1969] HCA 7; (1969) 120 CLR 136, cited in Ferochem Pty Limited v Commissioner of Patents [1994] FCA 981; (1994) AIPC 91-057 at page 38,208:
It is in the public interest that [a serious matter] should be dealt with on its merits, rather than that it should be shut out in consequence of a failure of procedure, lamentable though the failure may be.
Here, the “serious matter”, as in Ferochem, is a substantive opposition. Whilst the Opponent has not at this stage filed a substantive opposition, the allegation made by AJ Park that the Opponent is the owner of the CASHTAG trade mark provides a clear indication that such a substantive opposition would have eventuated but for the current error or omission on the part of the Applicant (a “failure of procedure, lamentable though the failure may be”). Accordingly, following Ferochem and Kaiser Aluminium, the public interest favours granting the Extension of Time so that rights to the CASHTAG trademark can be determined on their merits via a substantive opposition (should the Opponent decide to do so).
There would be significant disadvantage to the Applicant if the Extension of Time were not granted. The Applicant, who happens to be the first to file the CASHTAG mark in Australia (a filing that occurred, to the best of our current knowledge, prior to any use of the mark by the Opponent in Australia) would be precluded from defending ownership of the mark, and instead be forced to effectively surrender the mark to a comparatively much larger and better resourced overseas company without being afforded an opportunity to be heard on the merits. This effective surrender would be due to an unfortunate (and minor) oversight in the process of a small start-up business self-representing in trade mark matters.
The above argument presupposes that, should the request for the extension be granted, there is an opportunity for the Opponent to oppose the registration of the Trade Mark. However, the time allowed in which the Opponent may do so has elapsed – this application for an extension is not in order to gain acceptance of the Trade Mark (when the Opponent would then have an opportunity to oppose the registration of it) but rather for payment of the registration fee (whereupon the registration of the Trade Mark becomes a fait accompli).
It follows that if there is an opportunity for the ownership of the Trade Mark to be tested, it lies in an opposition by the Applicant to the extension of protection to the Opponent’s application 1746284 (IRDA 1283684). Such is an appropriate course because I note, as was stated in PB Foods Ltd v Malanda Dairy Foods Ltd[2] by Carr J:
The scheme of the Act is not proprietorship by registration but rather registration of proprietorship …
[2] 1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117 at [78].
In Re Richard Hall[3] (‘Hall’) Hearing Officer Murray observed:
The practice is applied in all cases where an application for revival of a lapsed trade mark application is received. A search of the database is made. If that search reveals the existence of either:
·a later filed, deceptively similar trade mark application, previously blocked by the earlier application, but which has now proceeded as a result of the lapsing of that application, or
·a new, deceptively similar trade mark application, which has been filed subsequent to the lapsing of the earlier application,
then the Registrar declines to exercise his or her discretion to revive the lapsed application. A general assumption is made that the likelihood of causing inconvenience to an unrelated third party by the revival is a consideration which is greater than the interests of an applicant which has, after all, allowed its application to lapse. The effect of special circumstances or errors or omissions is taken to be outweighed by the circumstance of a pending application, against which the revived trade mark would be either raised, or re-instated as an objection.
There is also a generally applied public interest component to the Registrar declining to exercise his or her discretion under such circumstances. That is, the desirability of the Register remaining a constant reference source for members of the public, who may well be deceived or confused by movements of trade mark applications off, and then back onto, the database.
[3] [1997] ATMO 69.
Discretion
Hearing Officer Murray noted in Johnson & Johnson v Self Care Corporation Pty Ltd:[4]
Exercise of the Registrar’s discretion generally requires consideration and balance of the interests of the applicant, any third parties and the general public. Other considerations that appear to be relevant in the circumstances are the effect of the amendment if made, and the timing of the amendment request.
[4] [2014] ATMO 111 at [35].
In Hall Hearing Officer Murray elaborated on the exercise of the Registrar’s discretion:
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] HCA 40; (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] FCA 1063; (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] FCA 498; (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).
[…]
In Australian Law of Trade Marks and Passing Off, at page 81, [DR Shanahan] 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".
[…]
For convenience, I summarise the most important factors to be considered in coming to a fair and reasonable decision in this matter, thus:
·the relative inconvenience to the parties concerned, including
·whether the trade mark application has otherwise been prosecuted with due diligence
·the public interest, including
·whether the applicant has continuously used its trade mark, and especially whether it has prior use (Re Ausorb, supra, at page 37,869)
·the desirability of operating the (trade mark) system efficiently and without unreasonable delays (Vangedal-Nielsen, supra, at page 150)
To the above I add the desirability that the Register of Trade Marks reflects the actual state of the marketplace.
Here I note the following:
· The Applicant has not established (nor, indeed, alleged) the existence of ‘special circumstances’ in terms of subsection 224(3) under which the application for extension of time was made;
· An error or omission is not in itself a special circumstance;
· The Applicant has applied for the extension under subsection 224(3) and has filed evidence and submission in terms of an application for extension of time made under subsection 224(2)(a). There has been no application for the amendment of the application for extension of time. The Opponent, for its part, has presented its case appropriately for the application under subsection 224(3). It follows that considerations of procedural fairness should prima facie preclude a decision against the interests of the Opponent;
· There is no evidence that the Applicant has used the Trade Mark; and,
· The Applicant argues, in effect, that it is in the public interest that the ownership of the Trade Mark be tested in opposition proceedings before the Registrar. This opportunity, however, arises only in an opposition by the Applicant to the extension of protection to the Opponent’s trade mark application 1746284 (IRDA 1283684) because an opposition to the registration of the Trade Mark is no longer possible.
Each of the above factors militates against the grant of the extension. It is, accordingly, not appropriate that the Registrar grant the extension of time.
Decision
I refuse to grant the application made under section 224(3).
Costs
The Opponent sought its costs in this matter. I accordingly award costs against the
Applicant at the official scale set out in Schedule 8 to the Trade Mark Regulations 1995.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
28 August 2017
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