Television Food Network G.P. v Fppd Channel Network Pty Ltd

[2007] ATMO 69

TRADE MARKS ACT 1995

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

Re:Objection by Television Food Network G.P. to an application by Food Channel Network Pty Ltd for an extension of time to serve evidence in answer to the Opposition by Television Food Network G.P. to registration of trade mark application number 1074227 in the name of Food Channel Network Pty Ltd

Delegate:	Debrett Lyons
Representation:	Opponent :   Ian Tannahill, Patent Attorney of Ahearn Fox, Patent & Trade Mark Attorneys Applicant :   No appearance
Decision:	2007 ATMO 69 1. Regulation 5.15 : Late application for further time to complete evidence in answer : application allowed 2.  No costs award made

Background

1. Food Channel Network Pty Ltd (‘FCN’) has applied under application number 1074227 to register a trade mark.  That trade mark application was accepted for possible registration but has been opposed by Television Food Network G.P. (‘TFN’) which completed the service of its evidence in support of the opposition on 14 January 2007.

2. Under paragraph 5.9 of the Trade Mark Regulations 1995 (‘Regulations’) a copy of any evidence in answer to the opposition on which FCN wished to reply was due to be served no later than 14 April 2007.

3. On 4 April 2007, FCN served TFN with a copy of a Statutory Declaration of Paul Lawrence together with exhibits 1-17.  The cover letter to that evidence made it plain that further evidence in answer was to follow.

4. On 26 April 2007, FCN served TFN with a copy of a second Statutory Declaration of Paul Lawrence together with exhibit 18 (‘second declaration’).  That concluded the evidence in answer.

5. On 2 May 2007 a delegate of the Registrar of Trade Marks (‘Registrar’) wrote to FCN advising it that this second declaration was served and filed out of time.  That letter explained that FCN would need to apply for an extension of time to admit that evidence.

6. On 14 May 2007, FCN filed an application under paragraph 5.15 of the Regulations retrospectively seeking a one month extension of time to 14 May 2007 in which to have served the second declaration (‘the application’).  The application was supported by a further Statutory Declaration (‘supporting declaration’) of Mr Lawrence explaining the delay and the appropriate application fee was paid.

7. TFN’s attorneys subsequently wrote to the Registrar objecting to allowance of the application but received a reply from a delegate of the Registrar that since the second declaration had been served, the Registrar’s delegate proposed to grant the application but gave TFN the opportunity to make representations on the matter, either in writing or at a hearing.

8. That opportunity to be heard was taken up and the matter was set for Hearing before me, Debrett Lyons, as a delegate of the Registrar in Brisbane on 23 July, 2007.  TFN was represented by Ian Tannahill of Ahearn Fox, Patent & Trade Mark Attorneys.  FCN did not appear but provided written submissions which I have read and taken into account and which were also seen by Mr Tannahill.

   Submissions and Reasoning

9. On behalf of TFN, Mr Tannahill submitted that the Registrar’s delegate had erred in proposing to grant the application.  It was argued that FCN had not given adequate reason to excuse the delay in filing the second declaration. 

10. In aid of that submission, TFN noted that the pre-printed standard form documents filed by FCN in making the application carry a note stating: “All applications filed after the end of the period of time to be extended for an extension of time must be supported by a declaration setting out the reasons for the delay”.

11. The supporting declaration filed by Mr Lawrence states merely: “Because additional evidence was filed after the due date, the evidence was filed on 26^th April when the full evidence was due on 14th April”.

12. Mr Tannahill’s submission was essentially that, in so far as that statement can be given sense, it does nothing more than state the obvious – that the evidence was filed late – but it gives no reason or explanation for that lateness.

13. In further support for TFN’s position, Mr Tannahill referred me to the decision of Hearing Officer Williams in the 1995 case of  Food Marketers Pty Ltd v Valley View Poultry Pty Ltd [1995] ATMO 1 (9 January 1995) where it was said:

    In the present instance we have a party which had no professional representation. In deciding that it could adopt such a course it made a considered decision, and in doing so it assumed at least the responsibility of finding out what was to be done and when.

    Nor was this a course without warnings. Valley View had ample opportunity to see that there were matters which it did not understand. I completely reject Mr Hodgkinson's criticism of the standard notices used by this Office. The Trade Marks Office should not give legal advice in what is no less than a dispute between two parties about a piece of property. Nor does the Office attempt to soften the obvious face of the law at issue in any opposition matter by breaking down the timetable of events provided for in the regulations into a user-friendly format. A party which cannot or will not exert itself to come to grips with the obligations under the regulations will not be equipped to deal with the complexity of preparing the evidence necessary to address the issues of registrability.

    This is simply not an area of law that can be tackled by the unprepared, and if a party is not willing or able to find out what needs to be done then there is no point in luring it on by suggesting that the matter is easily managed. The warning signs were posted but in this case Valley View simply did not make the investigations necessary in the task which it elected to take on.

    Valley View made a decision to intervene, without legal advice, in an application by a third party, yet it had done nothing, in the time between the advertising of the acceptance of the application and the letter of 29 August last year, to come to grips with what it actually needed to do if it was to succeed. It is simplistic to say that it did not understood the warnings in letters sent to it, since that failure was symptomatic of a desultory approach to its self-appointed task.

    Valley View has acted with dispatch only once it realised that it had failed, totally, to do what was required of it. This is not a case which can be said to be a "failure of procedure" (Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company, 120 CLR 136) so much as a lack of all necessary application.

    It has been said many times, for example in decisions of long standing such as Bundy American Corp v Rent-A-Wreck, (1985) IPR 307, that it is not open to a party to seek an extension of time simply to make good a careless oversight or a mere casual regard for the times prescribed by the Act and the Regulations. In Leser v Spiritual Sky, (1985) 5 IPR 149, that proposition was described as a corollary of Vangedal-Neilsen v Smith (1980) 33 ALR 144.

    Once the time set by the relevant regulation has passed, the onus on an applicant to justify the conduct that has caused it to need extra time is considerably increased. While belated extensions of time may fairly be granted to overcome delays due to the death or unavailability of key officers, the clear-cut loss of documents, the errors of legal representatives or many unforeseeable and unusual circumstances, the failure of Valley View is not something which I can now remedy.

14. In conclusion, TFN submitted that FCN had not discharged the onus which fell upon it to give proper reason for the delay.

    Regulation 5.15

15. Regulation 5.15 states in part:

    Extension of period to serve evidence and service of further evidence

    (1)   A party to the opposition proceedings may apply to the Registrar:

    (a)    for an extension of the period for serving a copy of the evidence under                  regulation 5.7, 5.10 or 5.12; or

    (b)    for permission to serve a copy of further evidence on the other party.

    (2)   The Registrar may grant an application on reasonable terms specified by               the Registrar.

    (3)   The Registrar must not grant an application unless the Registrar:

    (a)    is reasonably satisfied that the applicant has served a copy of the   application, and of any documents accompanying the application, on                 the other party; and

    (b)    has given the parties a reasonable opportunity to make representations                   concerning the application; and

    (c)    is reasonably satisfied that:

    (i)    in the case of an application to which paragraph (1) (a) applies --                    the extension of the period for serving a copy of the evidence; and

    (ii)    in the case of an application to which paragraph (1) (b) applies --                    permission to serve a copy of further evidence;

    is appropriate. 

1. I am of the view that the case of Food Marketers Pty Ltd v Valley View Poultry Pty Ltd is only superficially instructive.  That decision applied the now repealed Trade Marks Act 1955 and its Regulations.  Old Regulation 69 considered in that case was caste in very different terms to its present day counterpart, Regulation 5.15.  It provided that:

   An application for an extension of time under these Regulations shall be in writing and shall be lodged at the Trade Marks Office -

   (a) before the expiration of the time sought to be extended; or

   (b) if the Registrar is satisfied that special circumstances existed which prevented the application being made before that time, within such time as the Registrar allows.

2. Many cases under the old law which considered Regulation 69 were concerned with what constituted “special circumstances”. That language is no longer part of the current law and does not guide me as to how Regulation 5.15 is to be understood.

3. There is a balance of convenience to be struck between the parties in order that each side is given a reasonable opportunity to bring in relevant evidence, despite the inconvenience that delay must inevitably cause to the other party.  Additionally the public interest in the accuracy of the register weighs on the side of allowing relevant evidence where there would be a public detriment by excluding it, which is most typically in the case of an opponent’s evidence rather than that of an applicant.  There is also clear public interest in the efficient running of the system in an orderly and predictable way.  To assess the state of that balance in this case, I note that the additional delay is short, a matter of days.  Moreover, despite the obvious lack of explanation for the need for more time, the total is not excessive since this is the first extension of time to be sought by the trade mark applicant, whereas the objector in this matter has already sought and been granted six additional months to progress its own case.

4. It is not outside the exercise of weighting the balance of convenience to take some account of the evidence sought to be added to the record.  That said, a thorough-going analysis of the evidence is properly the job of the Registrar’s delegate who hears the substantive case, should it proceed that far.  For my part, I have made a deliberately casual analysis of the second declaration and of exhibit 18 and I could not with any authority conclude that this evidence might not have at least some influence on the outcome of the case.  To exclude the evidence, it would need to be overwhelmingly clear to me that exhibit 18 could not advance FCN’s prospects of successfully defending the opposition in any way and in this case, having briefly previewed the grounds of opposition, I am not prepared to draw that adverse inference.

5. I share some of Mr Tannahills’s concern that normal Trade Mark Office practice was not followed in that the applicant has not been required to explain, in declaratory form, the lateness of the second declaration (see Trade Marks Office Examiner’s Manual,  part 51, annex A3), nonetheless, balancing as I have done the various factors I am of the view that the second declaration should be allowed onto the record.

   Decision

6. For these reasons I decide that the Registrar’s delegate was right to indicate her intention to grant the extension of time application.  In consequence the second declaration forms part of the record of FCN’s evidence.

   Costs

7. FCN did not seek its costs in the event that the application was allowed following this Hearing.  Since it made no appearance and is self-represented, I make no order as to costs.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   31 October 2007