United Distillers & Vintners (Australia) Ltd v Kingswood Distillery Pty Ltd

[2001] ATMO 44

TRADE MARKS ACT 1995

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

Re:A delegate's intention to refuse an application for extension of time to serve evidence in answer to an Opposition by United Distillers & Vintners (Australia) Ltd to registration of trade mark application 779661(33) - LIMONSKI- filed in the name of Kingswood Distillery Pty Ltd.

BACKGROUND

Kingswood Distillery Pty Ltd ("the applicant") filed trade mark application 779661 on 27 November 1998. The application was advertised as accepted in the Australian Official Journal of Trade Marks on 25 March 1999. United Distillers & Vintners (Australia) Ltd ("the opponent") filed a notice of opposition on 25 June 1999. Following two extensions of time granted by this office, the opponent served all its evidence on 25 March 2000. Evidence in answer was due to be served on the opponent by the applicant by 25 June 2000. However, despite a notice of overdue evidence being sent to the applicant, no evidence was served within the statutory timeframe.

On 2 March 2001, Messrs J.J. Wheeler & Co, Solicitors, wrote to this office advising that they were acting for the applicant in this matter and seeking an extension of time to serve evidence in answer. On 5 March 2001, this office advised the applicant's solicitors that the application could not be considered because no late fee had been filed, and that even if the application was considered, it was unlikely to be granted. After further correspondence from the applicant's solicitor and the fees being paid, on 7 March 2001this office advised its intention to reject the application for extension of time.

The applicant requested a hearing in relation to the application for extension of time. The matter came before me in Canberra on 6 April 2001. The applicant was represented by Mr Richard Perrignon of Counsel, instructed by J.J. Wheeler & Co. Solicitors. The opponent was not represented at the hearing and relied on brief written submissions, which supported this Office's position in our letter of 7 March 2001.

EVIDENCE

The applicant tendered statutory declarations by Ms Graziella Prestipino, a director of the applicant. The evidence shows that the director was unaware of the opposition to the registration of the trade mark, and all subsequent procedural matters. The failure to provide evidence in answer to the opposition was due to inaction by the solicitors acting for the applicant in the period 9 December 1999 until 2 March 2001, when the applicant's current solicitors commenced acting for them. The evidence is that once the applicants became aware of the opposition proceedings, they acted promptly to provide evidence in answer.

SUBMISSIONS

Mr Perrignon's submissions were to the effect that when the Registrar considers whether or not an application is appropriate, the Registrar should consider the public interest favours both parties to an opposition being heard. This is particularly so when deception is in issue. He submitted that when the dilatory conduct is that of the applicant's advisor and not the applicant itself, the public interest in court/tribunal efficiency should not override a party's right to be heard. In support of his proposition he cited a number of cases, including:

• Cohen v McWilliams (1995) 38 NSWLR 476

• Solido v Nominal Defendant (1993) 32 NSWLR 524

• Lyons & Anor v Registrar of Trade Marks (1983) 1 IPR 416

• Rollbits Pty Ltd v Rowntree Mackintosh plc (1985) 6 IPR 292

Mr Perrignon indicated that the applicant was in a position to serve evidence in answer, and there would be no delay beyond the extended time sought.

The opponent had relied on the original reasons this office intended to refuse the application. Briefly, the delegate in that instance was not satisfied that there were sufficient reasons to explain the lateness of the application and that the proposed evidence would not materially affect the outcome of the matter. In those circumstances it was thought that extension of time would impose unwarranted delay, inconvenience and expense to the opponent.

DECISION

Having regard to the evidence and submissions in support of the application and to the submission by the opponent, I find that it is appropriate to grant the extension of time to serve evidence in answer. Since the date of this decision is after the date for which the extension was sought, I extend the time which evidence in answer is to be filed and served to 11 June 2001.
I find that the lateness of the provision of evidence in answer is not due to the applicant personally, but rather by the solicitors previously acting for the applicant. In such circumstances I consider that natural justice and the public interest in both parties being heard in this matter overrides the public interest in efficient disposition of matters by this office.

The opponent will be allowed three months from the date upon which it is served evidence in answer to serve evidence in reply.

Jock McDonagh
Hearing Officer

28 May 2001