The Nasdaq Stock Market, Inc v Ozdaq Research Pty Ltd

[2002] ATMO 26

TRADE MARKS ACT 1995

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

Re:Objection by Ozdaq Research Pty Ltd to applications by The Nasdaq Stock Market, Inc for extensions of time to serve evidence in support of its oppositions to registration of trade mark applications 812101, 812103, 844338, 844339 and 844340 filed in the name of Ozdaq Research Pty Ltd

Background

This decision relates to objections by Ozdaq Research Pty Ltd ('Ozdaq') to applications for extensions of time by The Nasdaq Stock Market, Inc ('Nasdaq') to file evidence in support of its oppositions to Ozdaq's trade mark applications 812101, 812103, 844338, 844339 and 844340.  For convenience, I have listed background information relating to the five trade mark applications in the following table.

Trade Mark No	Trade Mark	Class	Date filed	Date advertised accepted in Official Journal of Trade Marks
812101	WORLDAQ HI TECH INDEX	16, 35, 36, 42	01/11/99	14/09/00
812103	OZDAQ HI TECH INDEX	16, 35, 36, 42	01/11/99	12/10/00
844338	OZDAQ and dot device	16, 35, 36, 42	31/07/00	30/11/00
844339	OZDAQ HI TECH INDEX and dot device	16, 35, 36, 42	31/07/00	30/11/00
844340	OZDAQ SECURITIES and dot device	16, 35, 36, 42	31/07/00	30/11/00

Nasdaq opposed registration of each of the trade mark applications. With the exception of that in respect of trade mark application 812103, Notice of Opposition was filed within the three months allowed under regulation 5.1 of the Trade MarksAct and Regulations 1995 ('the Act', 'the Regulations').  Again for convenience, I have set out the relevant date information in tabular form.

Trade Mark Application  No	Date Notice of Opposition due	Date Notice of Opposition filed	Date Evidence in support due
812101	14/12/00	14/12/00	14/03/01
812103	12/01/01	24/01/01 following allowance of late extension of time	24/04/01
844338	28/02/01	21/02/01	21/05/01
844339	28/02/01	21/02/01	21/05/01
844340	28/02/01	21/02/01	21/05/01

As provided by regulation 5.7(1), evidence in support of each opposition was due to be served three months from the date of filing Notice of Opposition.

On each application, the opponent applied for, and was granted, a three-month extension of time to serve evidence in support under regulation 5.15.  Ozdaq did not object to allowance of the extension in respect of trade mark application 812101, but did object to the granting of extensions in respect of the other applications.  Despite these objections, a delegate of the Registrar granted the extensions.  A second three-month extension of time was requested in each case, and Ozdaq again objected.  All extensions were subsequently granted.  Nasdaq then requested a third extension of time.  Relevant extension dates are set out below.

Trade Mark No	Evidence in support due	1st Extension of time approved to	2nd Extension of time approved to	3rd Extension of time requested to
812101	14/03/01	14/06/01	14/09/01	14/12/01
812103	24/04/01	24/07/01	24/10/01	24/01/02
844338	21/05/01	21/08/01	21/11/01	21/01/02
844339	21/05/01	21/08/01	21/11/01	21/01/02
844340	21/05/01	21/08/01	21/11/01	21/01/02

The practice of the Registrar as set out in an Official Notice in the Official Journal of Trade Marks dated 18 November 1999 ('the Official Notice') is to require declaratory support for an extension of time for serving evidence in support, where that extension takes the total time beyond nine months.  Declaratory support did not accompany the third extension request in respect of trade mark application 812101, although the extension would take the total time to serve evidence to 12 months.  A delegate of the Registrar advised Nasdaq of the deficiency, and the supporting statutory declaration of Wendy Susan Burnett, solicitor of Allens Arthur Robinson, dated 23 October 2001 ('the first Burnett declaration') was filed on 23 October 2001.  The applications were processed, and Ozdaq allowed 14 days in which to object to, or to request to be heard in relation to, the extensions of time.

On 16 and 30 November 2001, Ozdaq filed submissions objecting to the extension of time in each case, and requested to be heard.  A hearing was scheduled for 4 February 2002. 

Prior to the hearing, the opponent filed with the Trade Marks Office ('TMO') and forwarded to Ozdaq four statutory declarations which it said constituted its evidence in support in respect of the oppositions.  Those declarations are:

Declarant	Dated	Filed
John Wall, President of Nasdaq International, Ltd	23 October 2001	21 November 2001
John Wall, President of Nasdaq International, Ltd	3 January 2002	9 January 2002
Michael Jon Greig, Partner of Allens Arthur Robinson	21 January 2002	21 January 2002
Mark Christopher Malinas, Articled Clerk of Allens Arthur Robinson	21 January 2002	21 January 2002

A request for a fourth two-month extension of time was filed on 14 December 2001 in respect of trade mark application 812101.  That request was supported by a statutory declaration of Wendy Susan Burnett, dated 14 December 2001 ('the second Burnett declaration').  The opponent advised that this statutory declaration was also relevant to the third applications for extensions of time in respect of trade mark applications 812103, 844338, 844339 and 844340, and to the hearing on those matters.  This was confirmed by a third statutory declaration of Wendy Susan Burnett, ('the third Burnett declaration') dated 9 January 2002.

The hearing was conducted in Canberra on 4 February 2002.  Mr Andrew Crowe of Counsel, instructed by Walker Smith & Breen, Solicitors, appeared on behalf of Ozdaq.  Mr Colin Oberin of Allens Arthur Robinson, Patent & Trade Mark Attorneys, appeared on behalf of Nasdaq.

At the hearing, Mr Oberin addressed some of his submissions to allowance of the fourth extension of time Nasdaq requested in respect of trade mark application 812101.  However, Ozdaq requested the hearing in relation to the third extensions of time and I did not indicate at the hearing that I was prepared to consider the fourth extension request at the same time.  I will therefore confine my decision to the third extension requests.

Submissions

On behalf of Ozdaq

Mr Crowe argued that the reasons provided to support the extension requests were simply not sufficient to justify allowance of extensions of time at this stage of proceedings.  He said it was inappropriate for Nasdaq to seek to rely on the fact that evidence had now been put forward in order to have those extensions allowed.  The nature of that evidence, he said, showed that it could have been obtained much earlier.  He submitted that Nasdaq had always waited until the deadlines to file its extension requests and the overall delays in the proceedings had caused serious inconvenience to Ozdaq's business.  To support this contention, Mr Crowe filed the statutory declaration of Emmanuel George Cassimatis, Director of Ozdaq, dated 1 February 2002.  Mr Crowe then challenged the seriousness of the oppositions, and suggested the public interest would best be served by refusing the extensions.

On behalf of Nasdaq

Mr Oberin made quite extensive submissions on behalf of Nasdaq.  Pointing to earlier decisions of the courts and the Registrar, he submitted that the extensions would not make the total time allowed excessive.  He said that Nasdaq had made out a proper case for needing extra time, the reasons put forward being supported by the Burnett declarations.  He then expanded on the reasons put forward in those declarations. He argued that Nasdaq had demonstrated its opposition was serious and refusal of the extensions would cause it considerable inconvenience. The public interest, he said, was best served by allowing available evidence in, and Nasdaq had now finalised its evidence.
I will refer to these submissions later under the heading Reasons.

The law

Regulation 5.7(1), which provides for the service of evidence in support in opposition proceedings, reads as follows:

Evidence in support

5.7 (1) If the opponent intends to rely on evidence in support of the opposition, the opponent must serve a copy of the evidence in support on the applicant within 3 months from the day on which the notice of opposition is filed.

The 3-month statutory period thus allowed may be extended as provided by regulation 5.15.  In so far as it is relevant, that regulation reads:

Extension of period to serve evidence and service of further evidence

5.15 (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.

(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.

(5) If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

(6) Subregulations (2), (3) and (4) apply to an application under subregulation (5).

Reasons

Regulation 5.15(3) requires that before granting an extension of time, I must be reasonably satisfied that the extension is appropriate, that service requirements have been met, and that both parties have been allowed an opportunity to make representations.

Service Requirements and Opportunity to make representations.

On 16 November 2001 Ozdaq requested to be heard in relation to the extension of time requests on trade mark applications 812101 and 812103.  On 30 November 2001 Ozdaq acknowledged that it had been served with copies of the extension applications in respect of trade mark applications 844338, 844339 and 844340, and requested to be heard on those extensions.  Both parties were represented at the hearing that was conducted before me on 4 February 2002.

I am therefore satisfied that service requirements were met and both parties had a reasonable opportunity to make representations in relation to the extension applications (reg 5.15(3)(a) and (b)).

Whether the extension is appropriate

The criteria to be applied, when deciding whether an extension of time to serve evidence in an opposition proceeding is appropriate, have been established in cases such as Vangedal Nielsenand Others v Smith (Commissioner of Patents) and Another (1980) 33 ALR 144 and Lyons (trading as Mitty's Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416. In Australian Olympic Committee v Brennan (1994) 30 IPR 44 Deputy Registrar Hardie set out those criteria as the:

• amount of time so far allowed

• reasons put forward for needing the extension of time

• seriousness of the opposition

• relative inconvenience to the parties, and the

• public interest.

The amount of time so far allowed

The opponent has requested, and been allowed, two three-month previous extensions of time in respect of each application.  If the current extensions are granted, the total times allowed for preparation and service of evidence in support will be as follows:

812101 and 812103  12 months
844338, 844339 and 844340              11 months

Mr Oberin submits these amounts of time are not excessive.  To support his argument he referred me to Bundy American Corp v Rent-A-Wreck (Vic) Pty Ltd (1985) 5 IPR 307 ('Bundy American v Rent-A-Wreck'), Yo-Merry Todd v Turner Entertainment Co [2001] ATMO 69 (7 August 2001), and three other cases where similar or larger amounts of time were allowed.

I agree with Mr Oberin on this point.  While 12 months is beyond the benchmark limit set out in the Official Notice, it is not an excessive amount of time.  The Registrar has regularly allowed extensions at the 12-month stage of proceedings if the reasons are sufficiently compelling and there are no countervailing circumstances.

The reasons put forward for needing the extensions of time

Nasdaq's reasons for seeking the extensions are that it needed further time to review, settle and serve draft statutory declarations which had been provided to US principals by the Australia attorneys.  It expected further delays in finalising the evidence due to the shutdown of services in the United States resulting from the terrorist attacks on 11 September 2001.  In particular, Nasdaq expected delays due to the partial collapse on 12 September of its New York headquarters.

The first, second and third Burnett declarations have been provided in support. 

Mr Crowe argued that the 11 September reasons advanced by Nasdaq are simply inadequate.  He pointed out that Nasdaq has provided no explanation of how the terrorist attacks, or the closure of Nasdaq's headquarters led to delays in the gathering and completion of the Australian declarations of Greig and Malinas, or the declarations of Mr Wall, who resides in Washington.  He reminded me of the rising onus on an extension applicant to support each successive extension application with sufficiently compelling reasons - Dermatech Laboratories Pty Ltd v Johnson & Johnson (2000) 49 IPR 419. In requesting its second extension of time, he said, Nasdaq indicated that the gathering of evidence had commenced and a questionnaire had been sent to its United States attorneys for completion.

I take Mr Crowe's point on this issue.  There is a rising onus on an extension applicant to show progress in the preparation of evidence and there was some paucity in the case originally put forward by Nasdaq.  The first Burnett declaration gave 11 September as the reason for expected delays but gave no detail.  The link between the closure of Nasdaq's premises and the delay in finalising evidence was not explained.  Nor was it explained whether Nasdaq needed further time to collect evidence or simply to have already-prepared evidence executed.  More information at the outset would have been helpful.

The second Burnett declaration addresses the deficiencies to some extent but leaves it to one's imagination to determine how the building closure led to the evidence being delayed. 

Mr Oberin explained that the events of 11 September, and the closure of Nasdaq's building, had placed considerable pressure on Mr Wall.  Although the declarations of Greig and Malinas were prepared in Australia, he said, they needed to be sent to the United States for approval.  Similarly, the Wall declarations needed review and execution in the United States.  He reminded me of the layers of complexity added to proceedings where a party is domiciled overseas as discussed in Apple Computer v Imac Support Services (2001) AIPC ¶91-718 ('Apple Computer v Imac'), and pointed to the fact that all evidence had now been completed.  I consider Mr Oberin has provided an adequate explanation of the situation, and I am satisfied Nasdaq has satisfied the onus placed upon it to provide sufficient reasons.

Taking into account the Burnett declarations, and Mr Oberin's explanation, I am satisfied that the reasons provided are sufficiently compelling to justify allowance of the extensions.

The seriousness of the opposition

Mr Crowe questioned the seriousness of the opposition.  Pointing out that Nasdaq had not instigated any court proceedings in the matter, Mr Crowe said the opponent appeared to be content to stretch out the opposition time for as long as possible without doing anything to prevent Ozdaq carrying on its business in the challenged marks.  He reminded me that I must be satisfied that the opposition was serious and that the extension application was not simply an attempt to delay - as per AustralianFood & Beverage Group Pty Ltd v Cadbury Schweppes Pty Ltd (1997) 39 IPR 100. I agree with Mr Crowe on the latter point, but I do not think it relevant that Nasdaq has not commenced court proceedings against Ozdaq.

Nasdaq's Notice of Opposition lists various grounds, including issues of deception and confusion which have been addressed in the four statutory declarations now put forward as evidence in support.  As argued by Mr Oberin, Nasdaq's actions in this regard are sufficient to demonstrate that the opposition is of a serious nature. 

Relative inconvenience to the parties

Both parties made strong submissions on this point.  The Cassimatis declaration points to the considerable inconvenience, stress and loss of potential revenue Ozdaq has suffered as a result of the opposition proceedings.  Mr Crowe confirmed this, and commented also on the inadequate compensation the relevant dates of registration, if granted, would be likely to provide.  I accept Mr Crowe's submissions in this respect, and the evidence of Mr Cassimatis.

Conversely, Nasdaq has indicated that its evidence in support has been delayed as a result of disruptions caused by damage to, and subsequent temporary closure of, its New York premises.  Since requesting the extensions of time, it has demonstrated good faith by completing and putting forward its evidence.  Refusal of the extension applications would, as Mr Oberin submits, shut out that evidence and would effectively terminate the opposition proceedings.  This would cause considerable inconvenience to Nasdaq.

I am mindful, also, that all of the extension periods sought by Nasdaq had elapsed prior to the hearing being conducted.  Taking this into account, I consider the inconvenience Ozdaq is now likely to suffer if the extensions are allowed is considerably less than the inconvenience a refusal will cause Nasdaq.

Public interest

I agree with Mr Oberin's argument that the public interest is paramount in matters where likelihood of deception and confusion is alleged, and is best served if both parties are able to present their evidence and arguments fully.  Cases such as Bundy American v Rent-A-Wreck, supra, and Pioneer Hi Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 support his argument in this respect. Mr Oberin also argued that, as per Apple Computers v Imac, supra, the Registrar should be reluctant to deny a party an extension where there is a reasonable prospect that evidence will be served.

Mr Crowe, on the other hand, urged me to consider the nature of the evidence Nasdaq has put forward before deciding whether or not to allow the extension - A Goninan & Co Limited v The Commissioner of Patents and Anor (1997) AIPC ¶91-330. He suggested that the declarations comprising the evidence in support now provided by Nasdaq are very simple and do not say anything of great import.

I am not prepared to comment on the amount of weight the four statutory declarations comprising Nasdaq's evidence should be given in any eventual decision on the substantive issues of these cases.  I think it is sufficient for me to note that issues of deception or confusion are addressed in those declarations.  As full investigation of the substantive issues is desirable, I am satisfied the public interest lies in granting the extensions of time, thus allowing the available evidence into proceedings.

Conclusion

Having considered the relevant criteria, I am reasonably satisfied that the extensions of time are appropriate, and the requirements of regulation 5.15(3)(c) have been met.

Decision

As registrar's delegate, I am satisfied the requirements of regulation 5.15(3)(a), (b) and (c) have all been met.  I therefore grant the requested extensions of time as follows:

Trade Mark Application	Extension of time granted to
812101	14 December 2001
812103	24 January 2002
844338	21 January 2002
844339	21 January 2002
844340	21 January 2002

Frances Aarnio
Senior Examiner

26 March 2002