Terumo KK v Boston Scientific Limited

[2004] ATMO 24

TRADE MARKS ACT 1995

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

Re:Extension of time for filing a Notice of Opposition by Terumo KK to application under section 92 of the Act by Boston Scientific Limited to remove trade mark numbers 379794(10) - Capiox - in the name of Terumo KK

Delegate:	Terry Williams
Representation:	Proposed Opponent: Wayne Willis, F B Rice Removal Applicant: Ken McInnes, Hodgkinson and McInnes
Decision:	S 224: extension of time to oppose removal under s 92. S 224(2): insufficient evidence of causal error; extension granted under s 224(3)

Background

Terumo Kabushiki Kaisha ("Terumo") is registered as the owner of trade mark number 379794, the word CAPIOX.  This is registered in respect of:

Surgical, medical, dental and veterinary instruments and apparatus including oxygenator, cardiotomy reservoir, blood pump, pump oxygenator circuit, heat exchanger, arterial and venous cannula, instruments for pump oxygenator and parts and fittings therefor belonging in class 10.

However, Boston Scientific Limited ("Boston") has filed an application to remove the trade mark from the register in respect of certain goods, on the ground (s 92) that the trade mark has not been used.  The scope of the registration, if the application by Boston succeeds, will be cut back so as to specify only:

oxygenators, instruments for compact oxygenators and parts and fittings thereof used in connection with heart surgery.

Under the structure of Part 9 of the Trade Marks Act 1995 ("the Act"), Boston's removal application must inevitably succeed unless it is opposed.  With this in mind, Terumo has filed a notice of opposition, albeit ten days late. 

Extension of time

The notice, being out of time, cannot be received[1] unless Terumo now obtains an extension of time under s 224.  The relevant parts of this are as follows:

[1] S 96(2)(b) and reg 9.3

224 (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.

(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.

Terumo's application for an extension of time was examined by a Duty Officer in the Hearings Section, who raised an objection as to the sufficiency of the evidence in the supporting declaration[2], made by Joanne Martin, an Australian Trade Mark Attorney.  Terumo has since then requested a hearing in the matter.

[2] required by reg 21.25(b)

At that hearing, Terumo was represented by Wayne Willis, solicitor, of the attorney firm FB Rice and Co, patent attorneys.  Ken McInnes, a patent attorney of the firm Hodkingson and McInnes, represented Boston.

Mr Willis commenced his submissions by noting that, subsequent to the objection that had initially been raised by the Duty Officer, his client had filed a second declaration, one that gave first-hand evidence about the circumstances of the error or omission relied on for the purposes of s 224(2).   This is the declaration of Shin Kimura.

Mr Willis said, in written submissions supporting his appearance at the hearing, that it might have been open to me to accept that the originally filed (Martin) declaration, made by an Australian Trade Mark Attorney sufficed to establish that an error or omission had been made by the instructing client in Japan.  However, for reasons that will emerge, I find it difficult to imagine how a declaration made by a person with direct knowledge only of events in one country could sufficiently evidence the making, in another country, of an error or omission by another person.

The facts:

As to the relevant circumstances of this case, Mr Kimura has declared as follows:

I am a Senior Staff officer of the Intellectual Property Department of (Terumo)

….

I was advised by FB Rice & Co that the application for partial removal was advertised on 6 November 2003 and that the deadline for filing a Notice of Opposition by Terumo K.K. would be 6 February 2004.

The filing of the application for partial removal of the CAPIOX registration in Australia by Boston Scientific Limited did not come as a surprise to me because, since the beginning of 2003 I have been involved in numerous matters around the world regarding conflicts between the CAPIOX trade mark and the CAPIO trade mark of Boston Scientific Limited and, more particularly, a number of oppositions filed by Terumo K.K. to registration of the CAPIO trade mark in several countries.  I have therefore been actively involved in the preparation of documentation and the collection of evidence regarding the nature and extent of use of the CAPIOX trade mark in various countries overseas.

By letter dated 6 January 2004, FB Rice & Co reminded me of the need to provide instructions in relation to their earlier letter dated 28 October 2003.

Having regard to the number of co-pending matters under my control and relating to the CAPIOX trade mark around the world, I simply lost track of exactly what was required regarding proceedings in Australia and because of this, I omitted to furnish instructions to FB. Rice & Co prior to 6 February 2004 specifically directed to the filing of a Notice of Opposition to the application for partial removal of registration 379794.

By fax dated 9 February 2004, FB Rice & Co advised that since instructions were not received prior to 6 February 2004, a Notice of Opposition was not filed but that I should advise at the earliest opportunity if this was not in accordance with the wishes of Terumo K.K. and if not, if an application for extension of time for filing a Notice of Opposition should be filed.

On receipt of the fax from FB Rice & Co dated 9 February 2004, I immediately realised my error in failing to provide timely instructions and so, by fax dated 9 February 2004, I advised FB Rice & Co. to ask the Registrar of Trade Marks for an extension of time on the basis that Terumo K.K. would file a Notice of Opposition to the partial removal of registration 379794.

By fax dated 10 February 2004, FB Rice & Co asked me to provide an explanation of the error or omission that resulted in my failure to furnish instructions and I gave an explanation to FB Rice & Co by fax dated 10 February 2004.

By fax dated 11 February 2004, FB Rice & Co asked me for further details of the circumstances surrounding my error but, due to a national holiday in Japan on 11 February 2004, I was not able to provide the requested information to FB Rice & Co prior to my fax dated 12 February 2004.

I note that the faxes to which Mr Kimura refers informed the Martin declaration of 13 February.  Ms Martin inferred from these faxes, which are not in evidence, that:

Given the volume of work involved (in the oppositions to which Mr Kimura refers) many deadlines are involved and many reminder letters are received from the opponent's Intellectual Property Attorneys around the world.  In view of the number of matters being handled by Mr Kimura and his staff, Mr Kimura overlooked the need to provide my Firm with instructions about the deadline by 6 February 2004 and indeed was confused that a request for an extension of time was required for this matter.  (Italicised material added)

S 224(2)

At the hearing, Mr Willis directed his submissions essentially at s 224(2), while noting that s 224(3) might be applicable and had, in the Trade Marks Office, a history of what he called "liberal" application.  Given the emphasis he put on s 224(2) - the "error or omission" provision, I will turn to the Kimura declaration under that heading.  I will also have regard to the actions set out in the Martin declaration as confirming the extent of certain advice that was before Mr Kimura at the time of the events in question.

Mr McInnes was critical of the lack of detail in this declaration.  It is not clear just how directly Mr Kimura was involved, what records were to be kept, or how many other people contributed to the failure to file a notice of opposition by the due date.  More significantly, Mr Kimura has not declared that his firm intended to oppose the application to remove its trade mark from the register. 

Mr Willis countered by saying that the provision in question can be triggered by "inadvertence and accidental steps" and that I should take the existing description of the events as given and apply the law to that description.

The elements of the s 224(2) issue

1.  Error or omission

Both Mr Willis and Mr McInnes agreed that the appropriate source of law on this issue is Kimberly-Clark Ltd v Commissioner of Patents[3].  I accept this.  I note Mr Willis's further stipulation that the words in question should be given their ordinary meaning.  I accept, on the authority referred to, such words would include "errors or omissions which were unintended or which were produced by accidents or inadvertence".  To return to the relevant decision, Jenkinson J noted:

[3] (1988) 13 IPR 569

The inclusion of error or omission on the part of the person concerned or of his agent or attorney as circumstances enlivening the discretionary power of extension conferred by s 160 was affected by the Patents Act 1960 (Cth). The speech of the Attorney-General on moving the second reading of the Bill for that Act included this statement of the reason for the amendment:

I now pass to the power of the Commissioner to extend the time set down for the doing of an act. Under s 160 of the Act, he can extend the time where the act has not been done by reason of circumstances beyond the control of the person concerned. The committee considered representations that through pressure of business in offices of patent attorneys, errors do occur that result in acts that ought to be done not being done. It recommended that an error or omission on the part of an applicant, or of his agent or attorney be made an additional ground for extending the time for the doing of an act. Clause 29 restates s 160 to give effect to this recommendation. Provision is also made by the amendment to protect persons who are adversely affected by an extension of time under the section.

The committee to which the Attorney-General referred had reviewed, under the chairmanship of Dean J, the operation of the Patents Act 1952 from the time when it commenced on 1 May 1954.  Those observations confirm the impression which the words of s 160(2)(a) might be thought to give that Parliament was concerned with accidental slips which frustrate an intention formed to do an act or to take a step within the time required, and not with errors or omissions the products of deliberation. But the same amending act of 1960 substituted for the words “an error or action on the part of an officer or person employed in the Patent Office” in s 160(1) the words “an error or omission on the part” of such a person.  A deliberate choice of the same collocation of words was thus made to designate the aberrations of the person holding office or employment in the Patent Office and “of the person concerned or of his agent or attorney”, by reason whereof a consequence of the same description ensued.  It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1).  Further, the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function.  The attempt is likely to lead to the drawing of fine and often unrealistic distinctions.  And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips.  Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think the phrase “error or omission” should be given by construction the restricted meaning which the delegate assigned, and accordingly I conclude that this ground of the application has been established.

I do not think that the conclusion I have reached reduces s 160(2)(a) to a mere general power of extension. By no means every judgment by “the person concerned” or by “his agent or attorney” which can be shown to have been mistaken will answer the description “error or omission” in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.

Mr Willis therefore argued that, in essence, a simple accident or oversight was enough.  With one caveat, the issue of causality, I agree with him.  He cautioned me that it was inappropriate for a delegate to attempt to categorise some such errors as undeserving of the relief that could be granted by allowing the extension, while allowing relief in other cases where the error was judged to have sufficient merit.  Again I agree with him, subject to it being necessary to appreciate that s 224 is a discretionary provision.  I will deal with this below.  However, that is not any sort of filter when it comes to deciding if the conditions necessary to empower the provision are, as a threshold question, present.

Mr Willis argued that, in relation to s 59 oppositions to the registration of a trade mark under the Trade Marks Act, where otherwise comparable extensions might be granted under part 5 of the trade mark regulations, there was a sound policy reason to restrict any liberalization of the requirements.  However, in relation to the removal of a trade mark, he said that this reason did not operate.  All that was at issue in cases such as this, he argued, was whether the registration of a trade mark would continue in one or another restricted form.  He argued, and there seems to be no dispute, that if I grant this extension a serious opposition to removal can be mounted and that the exact scope of the goods for which the trade mark will be removed will undergo some fine tuning. 

However, the present case is but a subset of those to which the Act is aimed. In general, where a trade mark has been used it deserves to be retained on the register. But in such cases there are also rights that exist aside from the retention (or otherwise) of an entry on a page of the Register of Trade Marks. There is thus a real problem with Mr Willis's argument. He urges me to interpret a set of words tightly in order to shut out, from opposing registration, a party that has used a trade mark. Perhaps, in some other forum, Terumo itself might fall victim to such a rigorous reading. Yet at the same time he would urge me to read the same words, in s 224, more liberally, now, in order to protect Terumo's registration from the consequences of what may be no more than its own ill-organisation.

There is no great consequence to the general public in the removal of a registration if the owner is tardy in protecting it[4].  The consequences for the owner or applicant might be described as self-inflicted injury and do not extend to the public at large.  Equally, the owner loses no other rights.  Thus, an applicant for registration or a (formerly) registered owner, be it Terumo or otherwise, can still exert its rights both as a common law owner and in opposing the grant of registrations to third parties.  By contrast, the accuracy of the register suffers considerably every time a person whose case is without merit becomes a registered owner and the shutting out of opponents to registration is a considerable restriction on this test of merit.  It is in that latter process, therefore, not the one under s 224, that a liberal application of "error or omission" might be desirable, were it possible[5]. 

Therefore, if not from first principles alone, "error or omission" under s 224 cannot be given a less rigorous meaning than that which is given under Part 5 of the regulations.  Neither from a policy view, nor from a simple reading of the wording of the provisions, am I able to see anything that would urge a more benevolent reading where the identical wording is used in s 224.

In the present case Mr Kimura says, "I simply lost track of exactly what was required regarding proceedings in Australia".  This wording perhaps might be seen to suggest that Mr Kimura knew a deadline was involved and overlooked it.  That would not, however, be consistent with the wording "was confused about" in the Martin declaration.  Moreover, if Mr Kimura, a senior officer in an IP department, wanted to say that simple inadvertent failure to give instruction was the case, I am quite confident that either he or his Australian advisers would have proposed or used that form of words.  I believe the safest course, therefore, is to read his declaration as saying no more than that he had omitted, which is to say neglected, to come to terms with the specific requirements of this potential opposition.

I do not think that I can safely infer, from the words "On receipt of the fax from FB Rice & Co dated 9 February 2004, I immediately realised my error" (my emphasis added) that the error had about it sufficient of the "obviousness" referred to by Jenkinson J in Kimberly-Clark.

[4] s224, because of the action of reg 21.28, deals only with extensions of time to gain acceptance of an application, to oppose removal of such a registration under s 92, or to deal with costs subsequent to an opposition. My comments about self-inflicted consequences apply equally to all.

[5] I am mindful of a further reason for not drawing too great an analogy between s 224 and the superficially similar test set out at regs 5.2 to 5.4. The two provisions share a common test. However, s 224 is a discretionary provision with antecedents under s 160 of the Patents Act 1952, and with an additional and further liberalising clause, 224(3), absent from either s 160 of the Patents Act 1952 or from s 131 of the Trade Marks Act 1955. Part 5 of the Trade Mark Regulations 1995, on the other hand, is a code, intended to guide the decision-maker either to conclude that (s)he "must grant" (reg 5.4(1)) or "must not" (reg 5.4(4)). It is the antithesis of a traditional discretionary provision.

2.  Causality

S 224(2) is conditioned to require some causality between the error or omission and the failure to do the necessary thing.  If the failure happened "because of" an error or omission, it cannot then be said that the error or omission and the failure can be the same thing.  To confuse the cause and effect would be to turn s 224(2) into a general extension of time provision, which it plainly is not.

I think Mr Willis has gone on to put undue emphasis on the words "faulty reflection" when reading Jenkinson J's words at p 579.  At p 580, Jenkinson J goes on to stress[6] the nature and history of the requirement for a causal relationship, noting, inter alia, Lyons v Registrar of Trade Marks[7].  Once it is said, as Jenkinson J does at 580, that there must be an "obviousness of error" and sufficient causality between that "obvious" error and the subsequent failure, the matter becomes relatively clear.  I find nothing in the decision of Jenkinson J that would authorise an extension of time under s 224(2) in a case where no more is said than that the thing was not, by lack of sufficient intention, done within the time allowed. 

To put matters more generally, as a consequence of this, an error of the form "I didn't do it.  This turns out to have been an error", is probably outside the scope of the provision.  "I mis-remembered the due date by which the thing had to be done", might be within the scope, assuming that sufficiently cogent evidence is forthcoming.  "I wrongly recorded the due date in my diary", would, in terms of published decisions of this office, be a fairly clear example of an error or omission that does cause the subsequent failure.  Again, "I prepared the document, but sent it by post instead of fax", would generally be sufficient if supported by clear statements about knowledge of the actual due date[8].

[6] Per Jenkinson J: "Mr Handley submitted that the failure to do the act or to take the step postulated in respect of an application for exercise of the power conferred by s 160(2)(a) cannot itself be the “error or omission” by reason whereof the failure occurred.  I accept that."

[7] 50 ALR 496 1 IPR

[8] Meath v Kyprianou (1997) 40 IPR 150; (1997) AIPC 91-379

3.  Discretion

I think, for reasons that I have already set out, that the correct approach is to see s 224 as a discretionary provision standing somewhat apart from the general run of decision-making under Part 5 of the Regulations.  I am also guided by the words of the AAT in Sanyo Electric Co. Limited v Commissioner of Patents (1996) AIPC 91-283. At page 37,844, the issues are summarised succinctly, and with reference to other relevant law:

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:

qin 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”;...

qit 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);...

qa 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).

If I approach the matter in that way, I think I am sufficiently armoured against what Mr Willis apprehended might be a judgemental approach, denying relief to errors that I might, in his view, perceive as "unworthy". 

Mr McInnes noted that, in Kimberly-Clark, supra, the extension had been refused.  It needs to be recalled that the Commissioner's delegate in that case had initially declined to find that any relevant error or omission was present.  Jenkinson J said plainly that this was not so.  He then went on to say: (p 583)

I have already indicated… my opinion that the material before the Commissioner’s delegate would support his conclusion that the causal connection between the errors and omissions of Mr Sandercock’s firm and the failure to lodge notice of opposition on or before 7 August 1987 satisfied the requirement expressed by the words “by reason of” in s 160(2). But what may just suffice to enliven the power cannot in this case justify its exercise, in my opinion. …

In order to make out the “proper case … justifying an extension”[9]… an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent’s errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant (or, in the case of corporation aggregate, of the relevant officers 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.  Whether or not the error or omission of the agent which enlivened the power occurred without moral fault on his part, the applicant’s claim to the exercise of the power cannot be judged without the means of evaluating the applicant’s moral claim to an indulgence which will, to some extent at least, work a prejudice to the efficient operation of what Bowen CJ in that case called “the system”, even if no prejudice to the applicant for a patent.  In this case no material of that kind was submitted to the delegate.

[9] from Vangedal-Nielsen v Commissioner of Patents (1980) 33 ALR 144.

In the present case, Mr Kimura appears to have stopped short of actually detailing his state of understanding, other than to say that he had lost track of the matter.  This, as I have already said above, is insufficient to establish causality, since here the alleged cause and the effect are most probably one and the same.  I accept, however, that this is a case of the type described by Jenkinson J as one where "the material before the delegate hardly justifies more than speculation as to the mental processes by which the decision was reached".

Were I to accept that it did establish a sufficient level of causality, I might still be inclined to say, as Jenkinson did, that the extension should be refused in terms of s 224(2).  Even if the necessary level of causality was present, there is still some level of apparent neglect of an important matter by an IP professional who has the regular worldwide conduct of similar matters.  That, however, does not conclude the matter.  I am required to consider the extension also in terms of s 224(3).

S 224(3)

Clearly there has been use of the mark.  The important thing is to get to the bottom of the case if that can be done consistently with the legislation.  Section 224(3) is a special circumstances provision, apparently intended to give additional liberality to what would otherwise be provisions more directly comparable of earlier Patent or Trade Mark legislation.  Given that s 224(3) is available, I believe that in the present case I am entitled to grant the extension under that provision in view of the circumstances of the case.  It may perhaps be said that Mr Kimura failed to come to grips with the requirements of what is clearly, but for the present dispute, a serious opposition.  It is the unusual nature of this failing, set in a context of ongoing worldwide opposition matters, that suggests that I should grant the extension in order to have the matter resolved on the merits rather than decided by an act of, perhaps, disregard or lack of decisiveness.

Conclusion and Costs

I hereby grant the extension of time.

The hearing was set down at the request of Terumo, because of an objection raised by a delegate of the Registrar of Trade Marks.  While Boston was quite understandably keen to attend and to play the role of an adversary, I see nothing here that would entitle either party to an award of costs, nor was one sought. 

Terry Williams
Hearing Officer
Trade Marks Hearings
7 May 2004