United Assets Pty Limited v Lakeside Estate Pty Limited

[1998] ATMO 38

TRADE MARKS ACT 1995

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

RE:Opposition by LAKESIDE ESTATES PTY LIMITED to the registration of trade mark application 639008 in the name of UNITED ASSETS PTY LIMITED.

Background

On 29 August 1994, United Assets Pty Limited filed the above numbered application in respect of, “vacant land all goods and services in class 36”. Objection was raised, both under Section 24 of the Trade Marks Act 1955 and in terms of the specification of services claimed, in a report that issued in May 1995. After an amendment of the specification of services, the trade mark was determined as being capable of distinguishing the applicant’s services under Section 41 of the Trade Marks Act 1995, which came into force on 1 January 1996. The application proceeded to acceptance and was duly advertised as accepted in the Official Journal of Trade Marks of 5 September 1996.

The composite word and device trade mark, as depicted on the application form, is shown below:

 

Lakeside Estates Pty Limited filed a notice of opposition on 5 December 1996. The grounds, under the Trade Marks Act 1995, on which opposition is based are stated to be: (1) Section 58 - the applicant is not the owner of the trade mark, (2) Section 43 - use of the trade mark is likely to deceive or cause confusion and (3) Section 41 - the trade mark is not capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

The applicant had filed another application, after the present application, and that was numbered 639526. Acceptance of the later filed application was advertised on 8 February 1996. Because opposition to registration on both trade marks proceeded concurrently, an element of confusion appeared to arise in the mind of the agent for the opponent concerning the timing of proceedings for both applications. I have made reference to these events below.

The Evidence

The Trade Marks Regulations specify that evidence relied on in opposition proceedings in support, answer and reply must be served on the other party in the dispute and filed with the Registrar within specific time-frames. However, in this case, no evidence was properly filed and served as required by those Regulations.

The Discussion section below describes the unfolding of the events that brought about this situation. An opposition in which no evidence is filed is not unusual in itself, but the circumstances in the present case are sufficiently remarkable to be reported in this decision. For this reason some detail is outlined in what follows.

Discussion

The present application was advertised as accepted in the Official Journal of 5 September 1996. However, prior to this date, application 639526 was advertised as accepted in the Official Journal of 8 February 1996. The opponent filed a Notice of Opposition claiming opposition to both application 639526 and to application 639008 on 29 April 1996. However, since at that stage 639008 had not been accepted for registration by this Office, the opponent was advised that the Notice of Opposition should be amended to indicate opposition to application number 639526 only. This amendment was made following correspondence dated 24 May 1996 from the agent for the opponent.

On 29 July 1996, the opponent served its evidence in support for application 639526. This evidence was duly filed on 2 August 1996. The evidence itself consisted of a Statutory Declaration dated 29 July 1996, from Mr. Barry Arthur Donaghey (the first B. Donaghey declaration), a director of the opponent. The applicant then served its evidence in answer for application 639526 on 30 August 1996 but did not file the evidence with this Office until 9 October 1996. In the meantime, the present application (number 639008) was advertised as accepted in the Official Journal of 5 September. The opponent then filed a Statutory Declaration, declared on 29 November 1996, from Barry Arthur Donaghey (the second B. Donaghey declaration) claiming it to be evidence in reply for the opposition involving 639526. The opponent filed this declaration on 2 December 1996. The opponent then filed a Notice of Opposition to the present application on 5 December 1996.

The next correspondence received from the opponent in connection with opposition for the present application was on 5 March 1997, requesting an extension of time of three months in which to serve the evidence in support. The applicant objected to this application. Following a consideration of the issues, on 15 May 1997, the Registrar's delegate granted the request for the further time. This brought the due date for evidence in support for this application to 5 June 1997.

During this same time period, on 25 March 1997, an extension of time in which to serve evidence in reply was requested for the opposition involving 639526. Because of this application, a Duty Officer from this Office sent a letter dated 4 April 1997, requesting that the opponent clarify the status of the second B. Donaghey declaration in connection with the opposition on 639526. The opponent did not respond to this request. On 5 May 1997 a second attempt was made to clarify the status of the second B. Donaghey declaration by means of a letter from a Duty Officer. This time, the opponent was also requested to state whether or not the declaration was also intended to form all or part of the evidence in support for the present opposition. This letter was also unanswered by the opponent.

The opponent wrote to this Office on 22 May 1997 requesting an extension of time to 30 June. Both trade mark numbers were quoted in the correspondence but because the due date for evidence in reply for 639526 was, at that time, 30 March 1997, and the due date for evidence in support for 639008 was 5 June 1997, the application was taken to apply to 639526 only. This assumption was supported by the fact that a fee had been received for a three month extension of time for serving evidence for application 639526 only, on 27 March.

On 3 July 1997, another attempt was made to clarify the status of the second B. Donaghey declaration by means of a letter from another Duty Officer from this Office to the opponent. A response to this letter was received on 14 July 1997, indicating that the opponent wished the second B. Donaghey declaration to be considered as part of both the evidence in reply for 639526 and part of the evidence in support for 639008. In this correspondence, the opponent also requested further time to serve the evidence in support for 639008. At that time, the required fee was not paid nor was any supporting declaration submitted which would explain the circumstances about why the extension was required. Any late filed request for an extension of time to serve evidence under Regulation 5.15 of the Act must, as is the advertised practice of the Registrar, be supported by a declaration setting out the particulars as to why the delay occurred. A further Official letter from a Duty Officer, dated 1 August 1997, indicated that because the opponent had only informed this Office on 14 July 1997 that the second B. Donaghey declaration was to be part of the evidence in relation to the present opposition, a late extension of time would be required. The final date for service of the evidence in support for this opposition was 5 June 1997. The Official letter dated 1 August also indicated some procedural requirements to assist the opponent in filing a late extension of time request. The opponent was given fourteen days to file the request for a late extension of time or the Registrar would be obliged to find the time allowed for serving the evidence in support had expired. The opponent made no such application.

On 1 September 1997, both parties were advised that the time for serving the evidence in support had expired and the time was set for the service of the evidence in answer. Ultimately, no evidence in answer was served by the trade mark applicant. Thus, no evidence in reply could be served to respond to the applicant's evidence in answer. In the normal course of events for opposition matters of this kind, the file is directed to a Delegate of the Registrar for a decision on the written material held on file. This occurred on 30 June 1998 or shortly thereafter.

Given the foregoing circumstances that I have outlined, it is my opinion that the prosecution of the opposition action has been less than diligent. Repeated requests by Officers of IP Australia to the opponent for clarification of various matters and supporting documentation were ignored.

Decision

From the foregoing, I have found that no evidence to support this opposition was properly filed. This being the case, there is no support for the grounds raised by the opponent in the Notice of Opposition. Thus, the opposition fails on all three grounds listed under sections 58, 43 and 41. Therefore, in my capacity as a delegate of the Registrar, I dismiss this opposition. Subject to an appeal from this decision, and on payment of the appropriate fee, this application may proceed to registration. I award costs in the matter to the trade mark applicant.

Don Nancarrow

Senior Examiner
18 August 1998.