Television Food Network GP v Food Channel Network Pty Ltd

[2008] ATMO 25

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 a late extension of time to serve evidence in support.

Delegate:	Rachel Dunn
Representation:	Extension Opponent: Ian Tannahill of Ahern Fox Extension Applicant: Paul Lawrence, Managing Director of Food Channel Network Pty Ltd
Decision:	ATMO Regulation 5.15: Late application for further time to serve evidence in support: application refused. Costs: Awarded against the extension applicant.

Background

1. Television Food Network G.P. (the opponent in the extension matter, “Television Food”) applied on 14 August 2006 for removal of registered trade mark 733265 from the trade mark register for non-use.  This application was opposed by the registered owner, Food Channel Network Pty Ltd (the applicant in the extension matter, “Food Channel”), by Notice of Opposition, lodged on 16 November 2006.

2. Food Channel’s evidence in support was originally due to be served on Television Food on 16 February 2007.  Food Channel successfully applied for the following extensions of time in which to serve evidence in support:

Date Filed	Date of Service	Extension Length	New Due Date
16 February 2007	20 February 2007	1 month	16 March 2007
16 March 2007	16 March 2007	1 month	16 April 2007
16 April 2007	18 April 2007	1 month	16 May 2007
16 May 2007	16 May 2007	1 month	16 June 2007
26 June 2007	27 June 2007	3 months	16 September 2007

1. Television Food objected to the granting of the last of those extensions on the basis that Food Channel had not provided compelling reasons supporting the extension, and that the application was filed out of time.  By letter dated 20 August 2007, Television Food was informed that, due to a miscommunication between the parties and this office it would have been, in retrospect, appropriate that proceedings were suspended while this issue was resolved.  Following this correspondence the due date for filing evidence in support was extended to 20 September 2007.  Both parties were informed ‘that it is highly unlikely that the 20 September deadline will be extended unless there is a compelling reason to do so.’  The following list of possible compelling reasons was provided:

   Øan error or omission on the part of an employee of IP Australia;

   Øan error or omission on Food Channel’s part or on the part of its agent;

   Øcircumstances beyond Food Channel’s control;

   Øserious settlement negotiations between the parties.

   The substance of the letter dated 20 August 2007 was re-iterated to both parties by a further letter dated 10 September 2007. 

2. Food Channel filed its evidence in support — consisting of the Statutory Declaration of Paul Lawrence with Exhibits 1–23 (the Lawrence declaration) made 19 September 2007 — with the Brisbane office of IP Australia on 20 September 2007.  Food Channel did not serve the evidence in support on Television Food until 24 September 2007, four days after the due date for service.  Food Channel therefore needed to apply for a further late extension of time.  The office sought comment on the extension application from Television Food, who requested a hearing into the matter.

3. The matter came to be heard before me, Rachel Dunn, as a Delegate of the Registrar of Trade Marks.  The hearing was held by teleconference in Canberra on 16 January 2008.  Television Food was represented by Mr Ian Tannahill, of Ahearn Fox Patent and Trade Mark Attorneys.  Mr Paul Lawrence represented Food Channel, in his capacity as Managing Director.

   Evidence and Submissions

4. Mr Lawrence supported his final application for an extension of time with a Statutory Declaration made 10 October 2007 (Lawrence, 10 October).  That declaration relevantly asserted:

   ØThat Mr Lawrence personally delivered Food Channel’s evidence in support to the Brisbane office of IP Australia on 20 September 2007. However, Mr Lawrence arranged for a courier service to deliver a copy to Television Food’s address for service on the same day.

   ØOn the afternoon of 20 September 2007 Mr Lawrence traveled to outback Queensland. Upon his return on 22 September 2007 he found that the copy had not been delivered, but had been left at his post box.

   ØFollowing this Mr Lawrence personally delivered the evidence in support to Television Food’s address for service.

5. Television Food responded by letter dated 30 October 2007, objecting to the intention of the office to grant the extension of time.  This letter was accompanied by the Statutory Declaration of Ian Robert Tannahill, made 30 October 2007.  The letter noted that Mr Lawrence had failed to account for the non-performance of the courier company to deliver the evidence.  It was noted that Television Food’s address for service was in close proximity to the Brisbane office of IP Australia.  Television Food questioned why, in these circumstances, Mr Lawrence elected to employ a courier company to serve the evidence.

6. The accompanying Statutory Declaration of Ian Robert Tannahill noted the following:

   ØThat Mr Lawrence had, on 4 previous occasions, personally hand delivered evidence to Television Food’s address for service in relation to associated opposition proceedings.

   ØThat the distance between the Brisbane office of IP Australia, and Television Food’s address for service is approximately 80 meters.

7. Television Food restated its reasons for opposing the late extension of time in its written submissions, dated 16 January 2008.  Food Channel did not provide any written submissions prior to the hearing.

8. At the hearing I heard oral submissions from both Mr Tannahill and Mr Lawrence.  I requested that Mr Lawrence provide a full and frank disclosure[1] as to the circumstances which led to the late service of Food Channel’s evidence in support.  The substance of Mr Lawrence’s oral submissions were:

   Ø  Mr Lawrence contracted a bike courier in the morning the evidence was due to be served, due to concerns about parking;

   Ø  Mr Lawrence personally delivered a copy of the evidence in support to IP Australia, however, did not deliver a copy to Television Food’s address for service as:

   o   He parked in an IP Australia parking bay, which he had previously been told not to use. He later stated that he had been told by IP Australia staff it was alright to park there, so long as he was quick;

   o   He had to travel to outback Queensland later that afternoon and was concerned about time;

   o   The thought of encountering Mr Tannahill made Mr Lawrence ‘sick’.

   Ø  As regards the bike courier, Mr Lawrence suggested the courier may have been in an accident, and that the failure of the courier to deliver the evidence was a failure on the courier’s part, which was beyond Mr Lawrence’s control.

   [1] As per the guidelines set up by Jenkinson J in Kimberly-Clark v Commissioner of Patents (1988) 13 IPR 569 at 582-584

9. At the conclusion of the hearing, I proposed a direction in the following terms:

   Ø  Mr Lawrence be allowed 14 days from the date of the hearing to provide to me:

   o   A statutory declaration from the bike courier outlining why delivery did not occur on 20 September 2007;

   o   A receipt from the bike courier;

   o   A statutory declaration from a representative of the Brisbane office of IP Australia supporting Mr Lawrence’s claims that he had permission to use IP Australia parking, but only for a short time.

   If that information was provided within time and was satisfactory, then the late extension of time would be reassessed and most likely granted, depending upon comments from Television Food.

10. Mr Tannahill agreed with this direction.  Following the hearing I contacted both parties, by email dated 16 January 2008, to confirm the terms of the direction issued.  The terms of the direction were as follows:

    The hearing was effectively suspended in order for Food Channel to:

    Provide to the office, on or before 30 January 2008, a statutory declaration from the courier company as to the following facts —

    The courier was contracted to deliver the evidence on 20 September 2007

    Delivery was attempted

    What prevented delivery

    Provide to the office, on or before 30 January 2008, a full and frank disclosure in the form of a statutory declaration of all circumstances that prevented Mr Lawrence from hand delivering the material to Television Food’s address for service — including details in regards to car parking and time constraints.

    The terms were accompanied by the following warnings:

    If the statutory declarations are received within time they will be forwarded to Television Food for comment — which may be taken in oral or written form. If these declarations do not convince the office and Television Food that the late extension of time is reasonable the hearing may be recommenced and/or further written submissions taken (at no further cost to either party).

    If the statutory declarations are not received within time, the late extension of time application will be refused. If the extension of time is refused this will mean that no evidence in support has been served in the opposition, and the removal applicant will be able to request that the Registrar immediately determine this matter in accordance with regulation 5.14.

11. Mr Lawrence initially replied to this direction via email on 30 January 2008.  Mr Lawrence wrote:

    It appears that the State Office will not provide a Stat Dec of what was said regarding parking for short periods.

    A stat dec by the courier will not be provided as it appears that the person is no longer around Brisbane.

    A copy of the paid receipt will be scanned and sent this afternoon.

12. No copy of the receipt was ever received by the office.  Mr Lawrence responded again on 31 January 2008.  The only document contained in this reply was a further Statutory Declaration (Lawrence, 30 January) which reiterated:

    Ø  the evidence in support was not served on Television Food ‘due to other factors beyond my control.’

    Ø  the reasons, identified in paragraph [11] above, why Mr Lawrence did not personally serve the evidence in support on Television Food.

    Ø  that Mr Lawrence ‘paid a freelance bike courier $25.00 cash to deliver documents to the address of Ahearn Fox’.

    Reasons

13. Regulation 5.15 of the Trade Marks Regulations 1995 addresses the circumstances in which the Registrar may grant such an extension of time.  This regulation relevantly provides:

    5.15     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)…

    (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

    (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)…

    is appropriate.

    (4)For the purposes of paragraph (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

14. The application of this regulation was discussed in a prior hearing, concerning a related opposition proceeding between the present parties. In that decision, Hearing Officer Lyons noted that:

    [t]here 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.[2]

    [2] Television Food Network G.P. v Food Channel Network Pty Ltd [2007] ATMO 69, [18] (Hearing Officer Lyons).

15. I accept completely the observations of the Hearing Officer.  As a preliminary observation, it must be said that the balance of convenience falls in favour of Food Channel.  However, this normal balance of convenience is dependant somewhat upon the probity and the relevance of the evidence.  Additionally, there is the question of public interest, which in removal for non-use cases may fall to one side or the other dependant upon the evidence of use provided.  If the evidence does not show the trade mark to be used in the course of trade for the goods or services claimed, then it is in the public interest to have the registration removed from the register.  However, if even one occurrence of definite use within the relevant period can be evidenced, then the public interest is protected by allowing the registration to remain in force on the register.

16. When considering this extension of time, it is appropriate to undertake a casual examination of the evidence subsequently served to determine its probity, relevance and capacity to influence the outcome of the ultimate matter.[3]  At the hearing, Mr Tannahill sought to discredit Food Channel’s evidence in support, arguing that there was no point in allowing late service of material which would not further Food Channel’s case.

    [3] Television Food Network G.P. v Food Channel Network Pty Ltd [2007] ATMO 69, [19] (Hearing Officer Lyons).

17. To exclude evidence which is late by only a matter of days it would need to be abundantly clear, upon even a casual analysis that the material could not contribute to Food Channel’s cause.  Such an analysis is easier in this case than in the prior case of Officer Lyons referred to above in paragraph 16.  This is because the evidence required for supporting an opposition to a removal for non-use action may be different in nature and easier to value than evidence presented in an opposition to registration. 

18. Briefly examining the evidence in support, it is clear the majority of the material is irrelevant as it is dated outside of the period within which use of the trade mark must be shown by Food Channel in order to establish its ground of opposition.  The few exhibits which concern the relevant period of use are limited to details of advertising.  No exhibits clearly show use of the trade mark for the services specified in the registration.  The evidence does not have the same prima facie usefulness identified as necessary by Hearing Officer Lyons in Television Food Network G.P. v Food Channel Network Pty Ltd.[4]  It is also lacking enough substance to allow a positive determination pursuant to subsection 101(3) of the Act.  I am satisfied that an adverse inference can be drawn as to the worth of the evidence in this case.

    [4] Television Food Network G.P. v Food Channel Network Pty Ltd [2007] ATMO 69, [19] (Hearing Officer Lyons).

19. The reasoning of Hearing Officer Lyons in granting an extension of time in Television Food Network G.P. v Food Channel Network Pty Ltd also shows consideration of the past conduct of the parties.  It was observed that:

    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.[5]

    [5] Television Food Network G.P. v Food Channel Network Pty Ltd [2007] ATMO 69, [18] (Hearing Officer Lyons).

20. The background outlined previously highlights several factual differences between the circumstances in that prior hearing, and those presently relevant.  Significantly, this is not the first extension of time sought by Food Channel — it has sought 5 such extensions previously, totaling just over 7 months.  Television Food unsuccessfully challenged the last such extension.

21. Furthermore, Food Channel was warned, twice, in very clear terms, that it would require ‘compelling reasons’ to justify any further extensions of time prior to lodging the present application.  It has, on several occasions following lodgment of the present application, been instructed to provide a full and frank disclosure of the circumstances which led to the late service.  This has simply not happened.  Food Channel was furnished with an additional opportunity to support Mr Lawrence’s assertions, and failed to produce any of the material I was assured by Mr. Lawrence would be forthcoming. 

22. I am also mindful of the history of proceedings in this office between these parties.  The table above (paragraph [2]) shows that Food Channel has, on three occasions, served applications late seeking extensions of time, albeit only by several days on each occasion.  More significantly, Food Channel had taken part in a hearing concerning its late service of evidence prior to the due date for service in this matter.[6]  In no way can it be suggested Food Channel was ignorant of its obligations relating to the service of documents in proceedings of this nature.

    [6] Television Food Network G.P. v Food Channel Network Pty Ltd [2007] ATMO 69, heard 23 July 2007.

23. Neither party has questioned the proper tests to be applied in this matter.  A late extension of time for service of evidence can only be granted if the Registrar is reasonably satisfied it is appropriate, taking all of the circumstances into account.  The onus remains on an applicant for extension to establish a case for the time sought and a proper case for why the extension was requested out of time.  The amount of time already taken, the rising onus upon the extension applicant[7], and the fact the request was made out of time; all demand a great level of detail about the circumstances to be provided.  A reason which may justify an extension of time in the early stages may not justify extensions indefinitely, and there is a rising onus on an extension applicant to show a good case in the light of its own past conduct.

    [7] See the principles in Dematech Laboratories Pty Ltd v Johnson & Johnson [2000] ATMO 13 (7 February 2000).

24. In this case no justification for the original extension application was given; Food Channel simply sought an outcome without reason, explanation, or any warrant of the time requested and the lateness of application.  The reasonable terms of the Registrar include the need for the extension applicant to provide information satisfying the office that the extra time requested is justified.  It is difficult to be satisfied of an extension applicant’s circumstances if these are not provided in the form of a declaration.  The email correspondence from Food Channel on 30 January 2008 detailing why the supporting evidence would not be forthcoming was not in declaratory form, and several points contained in that letter were not repeated in the declaration received the next day.

25. Though the evidence was served only four days late, the fact remains that it was served out of time.  There is no principle, nor would it be appropriate for there to be a principle, which favours the automatic granting of extensions of time to excuse ‘minor’ transgressions concerning late service of evidence.  A number of judgments involving applicants who fail to follow procedure focus on the need to deal with the substantive opposition on its merits.  This is particularly so when it is clear that relevant material can be brought into the opposition, rather than being disqualified on the basis of a failure of procedure.[8]  However, in this case it is clear that the late material will not contribute to Food Channel’s cause.  Moreover, it is an obvious principle of administrative law that each extension application must be considered upon its own merits, bearing in mind the ‘balance of convenience’ between the parties, and between divergent public interests.

    [8] Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company 120 CLR 136 at 153

    Decision

1. The merits on this occasion do not favour the granting of an extension of time.  Food Channel has been consistently tardy in furthering this opposition.  Further, in the face of numerous warnings, it has failed to provide anything approaching a compelling explanation and necessary disclosure of the circumstances which would warrant the granting of this extension of time.  More than ample opportunity has been provided to Food Channel to explain its case, but despite considerable flexibility from this office, it has consistently failed to deliver what has been required.  Balancing the considerations discussed above, including the relevance of the evidence, I am not satisfied that it is reasonable to grant an extension of time in these circumstances, and I refuse to do so.

   Costs

2. Television Food, having been successful in relation to this hearing, is entitled to its costs, which I award against Food Channel in accordance with the official scale.

   Rachel Dunn
   Hearing Officer
   28 March 2008