The Burton Corporation

[2006] ATMO 16

TRADE MARKS ACT 1995

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

Re:Request to amend application numbers 1083295 (18, 25, 28) - B BY BURTON and 1083296 (18, 25, 28) - B label- in the name of The Burton Corporation.

Delegate:	Alison Windsor
Representation:	Applicant:  Christine Lowe of Davies Collison Cave, Melbourne
Decision:	Application to amend under Part 6 and/or subsection 223(5) unsuccessful. Trade marks to retain their current filing date.

Background

1. In this matter, the applicant has applied for two trade marks with the expectation that a convention priority date a full 6 months earlier will apply.  Details of the applications appear below: 

Application number	1083295
Trade mark	B BY BURTON
Goods/Services	Class 18:  Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks, travelling bags, cases, bags; umbrellas, and walking sticks Class 25:  Clothing, footwear including snowboard boots and snowboarding bindings, headgear Class 28:  Games and playthings; gymnastic and sporting articles including snowboards and snowboarding bindings
Convention Priority Claim:	United States of America:  78/615944 25 April 2005 (for “cases, bags, clothing, snowboards, snowboarding bindings, snowboard boots”)

Application number	1083296
Trade Mark
Goods/Services	Class 18:  Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks, travelling bags, cases, bags; umbrellas, and walking sticks Class 25:  Clothing, footwear including snowboard boots and snowboarding bindings, headgear Class 28:  Games and playthings; gymnastic and sporting articles including snowboards and snowboarding bindings
Convention Priority Claim:	United States of America:  78/615939 25 April 2005 (for “cases, bags, clothing, snowboards, snowboarding bindings, snowboard boots”)

1. The applications were filed at the Trade Marks Office on 25 October 2005, the final date available if the convention priority claim was to be valid.  Both applications contained three classes, as noted above, and each application form is annotated with the following note:  Fees enclosed:  $450.  However, the applications were accompanied by lodgement schedules and fees lists nominating payments of $150 per application, a total of only $300.

2. On 28 October, the following letter was sent from the Trade Marks Office to the applicant’s agent via facsimile transmission: 

   I have received your applications for the registration of a trade mark on 25 October 2005. Your applications have not been given a filing date because the following requirement/s of the Trade Marks Act have not been met:

   • Your applications have been underpaid by $600 ($300 for each application).  The prescribed fee for filing an application to register a trade mark is $150 for each class.  Please pay the outstanding fee.

   The filing date of these applications will be the date on which I receive your correspondence complying with the above request.  If after two months from the date of this letter you have not complied with the above requirements, your applications will be returned.

   If you need clarification of these matters, please contact me on the telephone number given below or reply via e-mail to the following address [email protected] quoting the above reference number.

3. On receipt of this facsimile and on 28 October 2005, the agent submitted the missing fees, accompanied by a Statutory Declaration made by Christine Faye Lowe and a letter containing submissions.  The main thrust of the submissions was a request that the filing date accorded the two applications revert to 25 October 2005, rather than being given the date the additional fees were submitted, i.e  28 October 2005.

4. The agent’s submissions were considered, and on 2 November 2005, the Trade Marks Office issued a letter advising the request to revert the applications’ filing dates was denied, unless a hearing was requested within 14 days.  The letter also advised that since the additional fees had been received, the applications had been filed and published with the filing date of 28 October 2005.  In addition, the letter notified that examination of the applications had been expedited.  On 16 November 2005, the applicant requested to be heard.  The Hearing was held via telephone in Canberra on December 8, 2005, the applicant being represented by Ms Christine Lowe from Davies Collison Cave in Melbourne.

Submissions

1. At the Hearing, Ms Lowe relied on two sets of similar submissions, those she made on the day and the ones made in writing following our letter advising of the underpayments.  Ms Lowe argued that there were several possible amendments that could have overcome the problem.  However, in my view, once IP Australia sent the letter advising the applicant of the underpayment, subsection 223(5) was triggered.  The application was deemed not filed at that point and there was nothing to amend.[1] 

   [1] The issue of extending time to provide applications fees has been dealt with before, most recently in an unpublished decision, application 783545 for the trade mark “Gamestar”, International Data Group Inc [1999] ATMO 64 (21 June 1999)

2. Having said that, however, I will deal with the matter in the way it was argued, starting with what Ms Lowe said were amendment options.  It must be clearly seen, however, that what is being sought is amendment of an application which, at that point, already had a filing date of 28 October.

3. Ms Lowe describes the processes which took place in her office following receipt of  instructions from the applicant’s US firm of attorneys to file two trade mark applications in Australia.  She specifies that a typographical error occurred in relation to the amount of fees which should have accompanied the two applications.  The clerical error was not detected, and the attorney’s fee schedule and the credit card payment made by the firm were short $600.

4. Ms Lowe submits the two applications met the minimum filing requirements as per Regulation 4.2.  They were accompanied by a trade mark lodgement schedule (Form TM/00/12), a document appearing in the schedule of forms available from IP Australia via the State Offices or the website, on which the attorney nominated the fees supplied.  This lodgement schedule, as mentioned before, was in error and the fees were underpaid.  Ms Lowe requested the Registrar to exercise her discretion and amend either the applications for registration or other documents to enable the applications to be accorded the filing date originally planned – 25 October 2005.  The request for amendment is in respect of any of sections 63, 64, 65, and 66.

5. Ms Lowe goes into some detail about the use of the word “may” in sections 63 to 66 and the Registrar’s discretion.  I will refer to this later in this decision.  She then goes on to discuss amendment under each of the sections and how it could be applied to the applicant’s particular circumstances.  Rather than setting out all the detail of these submissions, I will deal with them in turn during my discussions of the issues. 

Discussion

1. Ms Lowe’s submissions refer to various parts of the Trade Marks Act 1995 (the Act), Trade Marks Regulations 1995 (the Regulations) and the Trades Marks Office Manual of Practice and Procedure (the Manual).  I will refer to these where necessary in the following paragraphs.

Registrar’s discretion

1. Ms Lowe submitted firstly that the use of the word “may” in sections 63 to 66 provides the Registrar with a discretionary power.  I have no argument with this at all.  Subsection 33(2A) of the Acts Interpretation Act (1901) specifies that use of the word may means “the act or thing may be done at the discretion of the person, court or body”. 

2. I also agree with Ms Lowe’s reference to Davies J’s comment in Chalk’s[2]  case, that is, “it is more important to consider the consequences of [the amendment] than to debate the reasons why the act was not done in time”.  Exactly how the act occurred becomes much less relevant if the consequences of the act are catastrophic.

   [2] Chalk v Commissioner for Superannuation (1994) 50 FCR 150 at 154

3. Ms Lowe submitted the applicant intended the applications to be filed by 25 October 2005, the documents were prepared for filing on October 25 accompanied by fees, which, inadvertently, were only for one class.  She states all parties involved in the chain of instruction and lodgement were acting in a bona fide manner and suggests not exercising the Registrar’s discretion in a beneficial manner will deprive the applicant of its ability to claim convention priority.

4. I agree the intent was clear, especially since the application forms themselves include annotation as to fees, and quote $450.  However, the degree to which the Registrar’s discretion can be used will depend on what the legislation allows in the way of amendment.

Amendments to trade mark applications – sections 63, 64 and 65

Section 63

1. Subsection 63(1) allows for amendment to an application on the written request of the applicant or agent, and in accordance with section 64 or 65.  The applicant in this case has requested an amendment in writing, so that portion of the requirement is met.  However, before determining whether the Registrar may use her discretion to allow the amendment, sections 64 and/or 65 must be considered.  I will look at these sections in turn in following paragraphs.

2. Subsection 63(2) allows the Registrar to amend an application on her own initiative without a written request from the applicant or agent in order to remove any ground for rejection, but only if such an amendment is allowable under section 65.  This effectively means the Registrar may only exercise her discretion in this situation if the application has already been filed and published, as that is the circumstance when section 65 may be triggered.  An amendment under section 63 is therefore likely to be of limited use to the applicant in this case, but I shall go into this in greater detail later on in the decision.

Section 64 

1. Section 64 deals with amendments before the particulars of the application are published.  This section therefore covers a very limited window of opportunity for the applicant.  The Office Customer Service Charter provides that receipt of a trade marks application will be acknowledged within 5 days.  Acknowledgement of receipt is usually via the filing notice.  In practice, an application which is in order for filing will have its particulars entered into the data base within 2 days of receipt in the Office. 

2. If an applicant wishes to take advantage of the provisions of section 64, the request must be received before the details of the application are entered into the data base, as this entry equates to publication[3] of the details.  Not only must the request be in time, but in most cases, the amendment itself must take place before publication.  Once the details are published, the provisions of section 65 take over, limiting what changes can be made.

   [3] Sub-regulation 4.7(2) specifies the following as meeting the description of “published”:  publication in the Official Journal; listing in a computer database maintained by the Trade Marks Office or making a record of the application available, in electronic or other form, in each of the sub-offices of the Trade Marks Office.

3. The applications in this case met minimum filing requirements.  The particulars were in order for entering into the database, but were not entered because of an apparent shortfall in fees.  The applications therefore were not published, pending resolution of the fees issue.  As for the application forms themselves, there was nothing within the documents which fits the description of “clerical error or obvious mistake”.  The applications were for three classes.  Three classes were nominated, and goods listed for each.  The fees nominated on the application forms were $450, the correct amount for the three classes claimed.  There does not appear to be any scope for applying the provisions of section 64.

4. I note the reference to the decision Polo Sport Clothing America v Hill[4].  The situation in that instance was not analogous to the current situation.  Hearing Office Purvis Smith described the situation as follows:

   Section 64 allows amendments, prior to the entry of the trade mark application details on the electronic Trade Marks database.  Section 65 allows amendment of a non-substantial nature after the details have been entered on the database.  In the present case, the database shows that the trade mark details were entered on 21 December 1998.  It appears from the file that the details that were entered were different from those that had originally been applied for.  It appears from all the material before me, that the Trade Marks Office determined that the original application contained an obvious error, in that the applicants had inserted the words " Polo-Sport America" on the front page of the application, but attached a different device mark to the sheet used for scanning device marks into the electronic database.  It is the Registrar's practice, where such a discrepancy exists, to ask the applicant which of the representations is actually being sought.   As a response to this inquiry it appears that the applicants, on 15 December 1998, indicated that they wished to apply for device mark, a copy of which was provided to the Trade Marks Office .  This device mark was then attached to the application form by the Trade Marks Office and scanned into the database.  The database record does not show the words "Polo Sport" in the shield, or the different shading in the bottom two-thirds of the shield.  Accordingly, I do not believe that any substantial amendment was made subsequent to publication on the database and s.65 is of no relevance.  In terms of s.64, I believe that the amendment was made to correct an obvious error.  This was done prior to the entry of the application details on the electronic database. 

   [4] 57 IPR 288

5. As mentioned above, there was no “obvious error” within this applicant’s applications forms, and therefore there was no scope to apply the provisions of section 64.

Section 65

1. Section 65 becomes relevant once the details of the application have been published in any of the ways mentioned above.  The scope for amendment under this section is limited.  The relevant subsections for this case are 65(3) – amendment to correct a mistake in fact or error in classification; and 65(5) – amendment to any other particular specified in the application.  There is a rider on subsection 65(5) in that the amendment may only be made if it does not have the effect of extending the rights the registration (if granted) would have enjoyed, if the amendment has not been made. 

Subsection 65(3)

1. Once the applications were published, and this occurred on 2 November 2005 according to the official history of the application file, only minimal amendment may be made.  As I have mentioned before, there was no obvious mistake of fact or error in classification of the goods specified in the application.  Ms Lowe notes in her submissions that if the applicant had only included a single class number, despite nominating goods in more than one class, the application would have proceeded to filing on its original date, as the number of classes and the fees would have tallied.  She suggests it would be appropriate for the Registrar to amend the application to delete reference to two class numbers and allow the application to proceed as being lodged on 25 October 2005 and deal with any issues with correct classification during the examination process. 

2. Ms Lowe is quite correct in her comment about the single class number – one class number would have sufficed.  All that is required for an application to meet the minimum filing requirements, according to sub regulation 4.2(c), is an indication of the goods claimed.  Applicants theoretically do not have to supply a class number at all.  Corrections can usually be made during examination of the application if the information is found to be incomplete.  However, in this case, there were three classes nominated, each with its list of goods.  There was no obvious error at the time of filing, and the actual error in the classification was dealt with in the first report.  What appears to be requested here is that the Registrar amend the application on her own initiative to create an error so the applicant may benefit from an earlier filing date.  This scenario simply does not come within the amendments envisaged by subsections 63(3) or 65(3), and I do not consider it would be proper to consider such a proposal. 

Subsection 65(5)

1. The applications were filed with a priority date of 28 October 2005, and without the Convention claim date, which would have dated back to 25 April 2005.  Ms Lowe has suggested the Registrar consider allowing each application to proceed in respect of only one class, an allowable amendment under this part, but for the filing date of 25 October 2005, thus accessing the Convention priority date.  The submissions also included a request that the applicant decide which class should be retained, a fair enough request in the circumstances. 

2. It is certainly possible for the applicant to delete two classes from the application.  However, this is allowable only because it does not extend the rights existing before the amendment.  Deleting two classes would not, however, allow the application to proceed with an earlier filing date.  Since the application has been filed, any amendment which allowed a reversion to either the original date the application arrived in the Office (25 October) or the Convention priority date (25 April) extend the applicant’s rights as they were at the time of publishing the applications.  The provisions of subsection 65(5) prohibit this kind of amendment.

Amendments to other documents - section 66

1. Section 66 allows the Registrar, at the written request of the person who has filed a notice or other document, (other than an application for registration of a trade mark), to amend said document to correct a clerical error or an obvious mistake, or if she considers it fair and reasonable in the circumstances of the case to do so.  This group of possible amendments appears to cover the documents accompanying an application for registration of a trade mark, such as the lodgement schedule and fees list.

2. Ms Lowe describes in her submissions the error which occurred in this case.  It appears the person typing up the lodgement schedule for each application inadvertently entered a figure of $150 instead of the required $450.  This is an easy enough error to make, especially if you are in the habit of using the number keypad present on many computer keyboards.  The number 1 is immediately below the number 4, and it only takes a slight misplacing of a finger to strike the incorrect key.  It is clear from the application form itself that the correct fees to accompany the application should have been $450.  When the fees list and the application were tallied, the fees were short $300 for each application.  The staff member dealing with the application once it reached the Office annotated the file as having deficient fees, and did not file it, pending submission of the missing fees.  This action followed accepted procedures within the Office. 

3. It appears from the wording of section 66 that it would be a fair and reasonable thing to allow the lodgement schedule and fees list to be amended as suggested.  However, there is an immediate tension between this amendment, and amendments being allowed under sections 63 to 65.  An amendment to these documents would allow the official record of fees to tally with the fees noted on the application form, but I cannot see that this amendment would benefit the applicant at all.  The Act does not allow the application itself to be amended.

Notifying the applicant of a shortfall in fees  - subsection 223(5)

1. Ms Lowe submitted she was not notified of the fee deficit via the correct procedure, as notification occurred by fax, not telephone.  The Act requires the applicant be notified, and the regulations specify this must be within 14 days or else the application will be taken to be filed.  Ms Lowe’s office was notified of the deficiency in the fees on 28 October, via fax.  There is no requirement within the procedures documented in Part 4 of the Manual, and quoted by Ms Lowe in her submissions that the first option for notification be telephone.  The paragraph mentions fax first, telephone second and written notification third.  In any event, even if the notification had been by phone, if it occurred on the same date, 28 October, the outcome for the applicant would be the same.  The applicant had lost its filing date once notification was made and rectification of the fee shortfall occurred any date later than 25 October 2005.

2. Here I must comment on the dangers of leaving a filing until so close to the end of the period in which convention priority may be claimed.  I mean no criticism of the agent in this case, as she has worked within the very limited time frames accorded her by the overseas firm of attorneys who originated the applications.  Nevertheless, the applications were received at the State Office in Melbourne very late on October 25, 2005.  They were stamped received after 5pm, and were too late to take advantage of the overnight bag which would have taken them to Canberra that day.  The worst case scenario has occurred here – the filings were not notified until the very last minute, an error has occurred, and there was simply not enough time left for the Office to advise the applicant of the error so that it could be rectified within the provisions of the legislation, while retaining the filing date.  The result of this is that the applicant has lost their right to claim convention priority, and there is no way the application could have been amended in time or can now be amended to retain that date. 

Decision

1. From the foregoing, I have found there is no provision under the legislation to allow the applications to be amended to retain their originally proposed filing date, 25 October 2005.  The applicant has therefore lost their right to claim a convention priority date of 25 April 2005.  Subject to any appeal from this decision, I refuse the application to amend the filing dates, and find the filing date for the two applications shall remain as 28 October 2005. 

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

2 February 2006