Viacom International, Inc v the Unplugged Cafe Pty Ltd

[2000] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by Viacom International, Inc. to extension of time to file evidence in answer in relation to opposition to trade mark application 676869(25) - UNPLUGGED CAFÉ- filed in the name of The Unplugged Café Pty Ltd.

Background

In this issue, application to register the trade mark UNPLUGGED CAFÉ for goods in Class 25 was filed on 2 November 1995 by The Unplugged Café Pty Ltd ('Unplugged').  At the same time, Unplugged applied to register the identical trade mark for services in Class 41 - this is application 676870 and is of interest in these proceedings.  Following examination of the instant application, it was advertised as accepted on 8 January 1998 in the Australian Official Journal of Trade Marks.  On 25 February 1998, Viacom International, Inc. ('Viacom') filed notice of opposition to registration of the above-mentioned trade mark and its companion Class 41 application.

Between 25 February 1998 and 16 August 1999, Viacom made seven applications for extensions of time in which to serve its evidence in support of this opposition, which may be summarised thus:

Seq	Date	Action	Office Action Date	Result
1	25/02/98	Notice of opposition filed
2	22/05/98	Extension to serve evidence in Support	25/08/98	Approved
3	24/08/98	Extension to serve evidence in Support	25/11/98	Approved
4	24/11/98	Extension to serve evidence in Support	25/02/99	Approved
5	24/02/99	Extension to serve evidence in Support	25/05/99	Approved
6	24/05/99	Extension to serve evidence in Support	25/06/99	Approved
7	25/06/99	Extension to serve evidence in Support	25/07/99	Approved
8	23/07/99	Extension to serve evidence in Support	25/08/99	Approved
9	16/08/99	Evidence in Support Filed        (All)	16/08/99	Served

Each of these applications for extension was matched by a similar application on the co-opposed application. 

On 22 September 1999, Unplugged made application to amend the specification of services of application 676870 - the co-opposed application.  At that time, the specification of services read:

Providing on-line information in the field of entertainment transmitted through cable subscription television or through a Web site via interconnected computer networks linked by common protocols

The amendment requested was so that the specification read:

Musical booking agency services; agency services for musicians, composers, arrangers and others in the performing arts; organising and conducting festivals relating to dance; services in relation to organising and running musical theatres, cafes and restaurants; securing and contracting musical performance; presenting live musical performances, music festivals and music publishing; discotheque services; recording studios and night clubs; entertainment services including services provided by groups of musicians, vocalists and entertainers, and orchestras; production of films, videos sound recordings, computer recordings, shows, concerts, radio and television programmes; interlinked and interactive entertainment, computer and video services in the nature of providing on-line information in the field of entertainment transmitted through cable subscription television or through a Web site via interconnected computer networks linked by common protocols

After an ex parte hearing in the issue of the amendment, Hearing Officer Vija Zars allowed the amendment by Reasons which are, at present, unpublished - Re: Amendment of the statement of services on application number 676870 in the name of THE UNPLUGGED CAFÉ PTY LTD, dated 16 November 1999.

Through a combination of circumstances, which I will detail later in my discussion of a statutory declaration filed in support of the application for extension, Unplugged's legal representatives missed the deadline for lodging evidence in answer or for requesting an extension of time in which to do so.  Viacom now opposes the late application for extension of time.

This matter was the subject of a teleconference hearing before me as a delegate of the Registrar of Trade Marks in Canberra.  Ben Fitzpatrick of counsel, instructed by Griffith Hack & Co, Patent and Trade Mark Attorneys of Melbourne appeared for Viacom.  Sophie Goddard, also of counsel, instructed by Lyndon Sayer-Jones & Associates, (LSJ), solictors of Sydney, appeared for Unplugged.

Prior to detailing the submissions, I will first mention the statutory declaration filed in support of the late application for extension.

The declaration

The statutory declaration is by Michael Edward Cossetto (Mr Cossetto) who is a solicitor in the employ of LSJ and has the care and conduct of this opposition proceeding on behalf of Unplugged.

Mr Cossetto avers to his belief that, since the date of filing the applications, they have, in effect, been dealt with and treated together. 

Viacom filed notices of opposition to both applications on the same day and the notices are couched in near identical grounds. 

On 16 August 1999, Viacom filed and served its evidence in support of the oppositions: the evidence relates to both notices of opposition and both applications. 

Mr Cossetto then details the request for amendment and hearing that I have previously mentioned.  Subsequent to the hearing of the issue, on 9 November 1999, Mr Cossetto states he had a conversation with the Hearing Officer, Vija Zars, in which she allegedly advised that the Hearing Section Deputy Registrar had agreed to suspend opposition proceedings until the request for amendment was determined.  Mr Cossetto states that it was his understanding that both the application in class 25 and the application in class 41 were being suspended pending the Hearing Officer's decision.  Therefore, Mr Cossetto did not seek an extension of time within which to file its evidence in answer in relation to both applications.

On 26 November 1999, LSJ received a letter from the Trade Marks Office stating that the time for filing its evidence in answer in relation to trade mark application 676869 expired on 16 November 1999.  On 6 December 1999, Mr Cossetto had a telephone conversation with the Hearing Section Deputy Registrar who advised him that it was the official view that the suspension of opposition proceedings only related to application 676870.

On 15 December 1999, LSJ received another letter from the Trade Marks Office advising that the opposition proceedings in relation to the services application (676870) had been suspended but declining Mr Cossetto's request to suspend proceedings in relation to the goods application (676869).

On 10 January 2000, Unplugged applied for an extension of time.

Other material

I will state now that Hearing Officer Vija Zars' ex parte decision concerning application 676869 allowed:

I intend to allow the requested amendment.  However, given the current opposition to registration of the subject mark, the amendment can be effected only subject to a procedure, whereby the Registrar is to give a direction in terms of regulation 5.16.  The various steps foreshadowed in the procedure are the following:

1.Before giving a direction, pursuant to reg.5.16(3), the Registrar will allow the opponent, Viacom International, Inc., two weeks from the date of my decision to make representations in writing on the proposed direction, or seek a hearing in relation to the direction. 

2.      The Registrar proposes to direct that:

¨   the acceptance of the application be re-advertised in the Australian Official Journal of Trade Marks

¨   the opposition in train be suspended

¨   the present opponent be allowed to amend its notice of opposition and, if necessary, serve additional evidence in support to that served and filed on 16 August 1999

¨   in view of the opposition being suspended, the Registrar will set a new date for the service of the evidence in answer on the present opponent, once the new opposition period has elapsed.

After receiving the request for the extension of time to serve evidence in answer, the Trade Marks Office wrote to LSJ on 13 January 2000.  In part, this letter said:

… I am not satisfied that your statutory declaration shows why this application [for extension] has been made so very late.  Your confusion as to the different processing requirement for this application and for 676870 may have existed up until the time of your conversation with [the Deputy Registrar] on 9 December 1999, but why did it take until 10 January 2000 for the extension application to be filed?

In response, Mr Cossetto wrote to the Trade Marks Office stating:

1.      Our client's sole director has other business interests and December is one (1) of his busiest times of the year.  As a result some delay was caused in obtaining proper instructions in relation to this matter;

2.      Michael Cossetto, the solicitor who has carriage of this matter was on leave from 23 December 1999 to 9 January 2000 inclusive.  While proper instructions were obtained from our client on or about 7 January 2000 (ie. while Mr Cossetto was absent), the Application for Extension of Time was lodged (sic) immediately upon his return (ie. on 10 January 2000).

Submissions

Mr Fitzpatrick opened his submissions by drawing my attention to the factual background which I have outlined above.  He then outlined the relevant regulations to the Act under which this issue should proceed - this being regulation 5.15 by virtue of the operation of subsection 224(8) and also by virtue of regulation 21.28(1)(f).  As authority for this proposition, Mr Fitzpatrick referred me to Intencity Pty Ltd v O’Mahoney (1997) 40 IPR 514. Mr Fitzpatrick submitted that regulation 5.15(3) provides that the registrar must not grant an application unless the registrar is satisfied that the extension is appropriate. It is the submission of Viacom that the evidentiary onus is on Unplugged to make out a proper case for its late application for an extension of time. Here Mr Fitzpatrick referred me to the decisions in Vangedal-Neilsen and Ors v Commissioner of Patents and Anor (1980) 33 ALR 144 and Lyons (trading as Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 50 ALR 496; 78 FLR 217 and argued that Unplugged had wholly and completely failed to discharge this evidentiary onus and has not fully explained the circumstances of the delay. Mr Fitzpatrick quoted part of the Intencity decision in which Hearing Officer Forno said:

All of this supports the general principle that, if there is a time period in the Act or regulations by which something must be done then, if it is not, the full circumstances of the delay should be given to the Registrar to enable him or her to be reasonably satisfied that it is appropriate to grant the extension, despite its lateness.

Next Mr Fitzpatrick referred me to the decision of Jenkins J in Kimberly-Clark Ltd v Commissioner Of Patents And Another (No 2) (1988) 13 IPR 551 and his comments concerning the requirement for the applicant to provide a full and frank disclosure of all of the facts. The declaration by Mr Cossetto fails to meet this standard, said Mr Fitzpatrick.

I will mention now that the decision in Kimberly-Clark, supra, was in relation to section 59(1) and 160 of the Patents Act 1952. Subsection 59(1), inter alia, provides:

The Minister or a person interested may, at any time within 3 months after the date of the advertisement of the acceptance of an application for a standard patent and complete specification, or within such further period, not exceeding 3 months, as the Commissioner, on an application made to him within the first-mentioned period, allows, by notice in writing lodged at the Patent Office, oppose the grant of the patent on one or more of the following grounds, but on no other ground:

Section 160 provides:

“ (1) Where, by reason of an error or omission on the part of an officer or person employed in the Patent Office, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner shall extend the time for doing the act or taking the step.

(2) Where, by reason of —

(a)      an error or omission on the part of the person concerned or of his agent or attorney; or

(b)      circumstances beyond the control of the person concerned,

an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step.

(3) The time for the doing of an act or the taking of a step may be extended under sub-section (1) or (2) although that time has expired.

(4) Where an application is made under sub-section (2) for an extension of time for more than 3 months, the Commissioner shall advertise the application in the Official Journal.

(5) A person may, as prescribed, oppose the granting of the application.

(6) Where an extension of time is granted under this section, such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention the subject of the application for the patent concerned by reason of the act or step in relationto which the extension was granted not having been done or taken within the time allowed.

(8) This section does not apply in relation to the doing of an act of the taking of a step under section 47, section 47A, section 47B, section 47Cor sub-section 52B (1).”

Mr Fitzpatrick then referred me to the Mr Cossetto declaration where Mr Cossetto averred as to his conversation of 9 November 1999 with the Hearing Officer Vija Zars whereby he (Mr Cossetto) had concluded that the suspension of opposition proceedings had applied to both applications.  This appears to have partly contributed to Mr Cossetto's failure to act when the deadline of 16 November 1999 came around.  Inasmuch, submitted Mr Fitzpatrick, as there is an inference in this that it was the Hearing Officer's advice that proceedings in relation to both oppositions had been suspended - there is no corroborative evidence of this conversation and its import in the way of file notes taken by Mr Cossetto at the time which might support his reported assumption that he need not file for an extension by 16 November 1999.

Mr Fitzpatrick went on to submit that it is surely not the case that the two applications had been dealt with by either this Office or LSJ as a unity.  Mr Fitzpatrick suggested that an examination of the correspondence on both files should show that each application had its own correspondence, its own official notices and LSJ's responses to such.  In any event, says Mr Fitzpatrick, Unplugged has not supplied any material in support of its affirmation of this viewpoint.  The fact that the specification of services had been amended individually on 676870 (and subsequently rectified after a hearing) was a sign that it was dealt with individually.  Both the applicant and its agent were able to distinguish between the applications on the occasions of the amendment request and the related hearing.

Mr Fitzpatrick submitted that even if I accepted that it was the case that Mr Cossetto and Unplugged believed that the applications were being dealt with as a unity, this belief should have been dispelled on 26 November 1999, when LSJ received a letter from the Trade Marks Office stating that the time for filing its evidence in answer in relation to trade mark application 676869 expired on 16 November 1999. 

Next Mr Fitzpatrick quoted the words of Hearing Officer Ian Forno from the Intencity decision, supra.  Mr Forno quoted Gordon & Rena Merchant Pty Ltd v Barrymore Pty Ltd, (1993) 28 IPR 71:

There, the hearing officer found (at 75) that:

Here, unlike Genentech, above, the applicant has not acted with despatch but has continued with a haphazard approach. It will not assist the applicant in such a case to point to any one single factor and say “there I made a mistake” …

It has been said many times in decisions of this Office that it is not open to a party to seek an extension of time simply to make good a careless oversight or a mere casual regard for the times prescribed by the Act and the regulations.

These comments, said Mr Fitzpatrick, are apposite since they characterise the behaviour of Unplugged which has been a casual approach to the requirements of the Act and regulations.

The declaration by Mr Cossetto does not, submitted Mr Fitzpatrick, reveal any information about the systems installed by LSJ for the monitoring of deadlines, nor is there any relevant information about either LSJ or Mr Cossetto's backgrounds which would enable me to assess the context against which their decisions were made.

Next Mr Fitzpatrick turned to the additional delay on the part of Unplugged in seeking the extension of time once official notification was received that such time had passed.  Mr Cossetto had known of this deadline on 26 November 1999.  It was not until 10 January 2000 that an application for extension was filed.  Viacom says that Unplugged has completely failed to provide any satisfactory reasons as to why it took eight weeks (sic) to do anything about the matter, even after it had been notified of the failure by this office.  Mr Cossetto phoned the Trade Marks Office some two weeks after 26 November 1999 and was told again that the relevant date was 16 November 1999.  There is, submitted Mr Fitzpatrick, no explanation by Mr Cossetto as to why he took two weeks to phone the Deputy Registrar, having been officially notified.  It is again, said Mr Fitzpatrick, incumbent upon Unplugged to explain why there was such a delay in taking any action at all, let alone filing the application for extension. 

Mr Fitzpatrick submitted that there is no evidence about what steps Mr Cossetto took to notify the principals of Unplugged about the situation or whether Mr Cossetto delegated his duties to some other person whilst he was on leave over the Christmas period.

Further, Mr Fitzpatrick submitted there is no evidence as to what steps have been taken by Unplugged to collect the evidence in answer or the further steps that it wishes to take should the application for extension be granted.

In response, Ms Goddard stated that Unplugged's submission is not based solely on error. Unplugged's submission is that it would be more expedient to have both cases proceed together, she said.

Viacom filed its oppositions to each mark simultaneously on 25 February 1998 and supplied the same particulars of grounds in support of the Opposition in each case.

Viacom made seven applications for extensions of time to file its evidence in support of the Opposition to each mark during the period from 25 February 1998 until 16 August 1999 when it filed its evidence.  The grounds relied on in support of each application for an extension of time were the same for both applications each time an extension was required..

The entirety of the evidence served by Viacom in support of the Opposition to each of the marks is in one statutory declaration of Robin E. Silverman declared 12 August 1999.  This was served in Opposition to both applications.

The Opposition in respect of each application has been treated by both parties as the one Opposition proceeding.

On 22 September Unplugged requested an amendment be made to the statement of services specified in the services application.

After a hearing on this issue, the Trade Marks Office granted the amendment on condition that the services application as amended be re-advertised and a further opportunity be given to file opposition to the mark.  Viacom was also given a further opportunity to file any further evidence in support of the opposition.

Ms Goddard stated that this necessitated an application by Unplugged to Trade Marks Office to suspend the Opposition proceedings to allow the process of re-advertisement and any new opposition to be made.

The TMO stayed or suspended the Opposition but it now appears only in relation to the services application, 676870.

Unplugged requests that the Trade Marks Office grant an extension of time to serve its evidence in answer in the goods application and, effectively stay the opposition in respect of the goods application such that the Oppositions continue to be heard together.

Ms Goddard submitted that to do otherwise would result in there being two separate oppositions involving-

(a)     the same mark;

(b)     the same parties;

(c)     the same evidence - at least in so far as it relates to Mr Silverman's statutory declaration,

on foot at the same time.

This would, said Ms Goddard, result in an unnecessary duplication of proceedings which have otherwise been treated as one by all the parties.

The Registrar has power to control the conduct of opposition proceedings generally under regulation 5.16.  Ms Goddard submitted that the Registrar should direct that the proceedings in respect of Trade Mark Application No 676869 be stayed or suspended pending the lodgment by 20 April 2000 of any opposition to Australian Trade Mark No 676870 and the service of any evidence in support of that opposition and the service of any additional evidence by the Opponent.

Unplugged submits that it is in the public interest for the Registrar to have all information available when a decision is made on the Opposition: see e.g. Pioneer Hi-Bred Corn v Hy-Line Chickens Pty (1979] RPC 410 at 435. If the Application is refused, the Unplugged will have served no material before the Registrar in answer to the opposition to this oppostion.

Ms Goddard submitted that Unplugged also relies on the following:

(a)     The length of time already allowed.

In the present case, the Applicant has not applied for any extensions of time.

(b)     The reasons put forward to justify the grant of the extension.

The time for Unplugged to serve its evidence in answer to the opposition began to run on 16 August 1999 when the Opponent served its evidence in support.  The evidence support is one statutory declaration of Robin E Silverman declared 12 August 1999.

As discussed above the grounds for opposition for the goods mark and the services mark are the same and the evidence faced in support of the oppositions is the same.

Unplugged mistakenly believed that the goods opposition had been stayed or suspended along with the services opposition.

It would be in the interests of all the parties and in the interests of justice in the efficient disposal of Opposition proceedings before the Office, to have these two trade mark applications continue to proceed together and to have the opposition to each trade mark be heard together.

(c)     The inconvenience suffered by both parties

Viacom has not put forward any evidence of prejudice to it.  In the light of the seven extensions of time over a 17-month period granted to Viacom, the extension of time sought by the Applicant is fair in all the circumstances.

(d)     The Public Interest.

Discussion

Regulation 5.15 allows:

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).

Regulation 21.25 provides:

Extension of time—application

21.25   For the purposes of subsections 224 (2) and (3) of the Act (which deal with extensions of time), an application for an extension of time for doing a relevant act:

(a)       must be in an approved form; and

(b)       must be accompanied by a declaration stating:

(i)the facts on which the grounds specified in the application are based; and

(ii)if the period for doing the relevant act has ended—the reason why the application was not made before the period ended.

And section 224 of the Trade Marks Act 1995 allows:

Extension of time

224.(1) If, because of an error or omission by a trade marks officer, 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 must extend the time for doing the act.

Note:  For trade marks officer see section 6.

(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.

(5) If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal.

(6) A person may, as prescribed, oppose the granting of the application.

(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.

(8) In this section:

relevant act means:

(a)       any act (other than a prescribed act) done in relation to a trade mark; or

(b)       the filing of any document (other than a prescribed document); or

(c)       any proceedings (other than court proceedings).

By the terms of regulation 5.15(3)(c), I must not allow the application for extension unless I think that it is appropriate. There are a number of factors that I might balance in determining whether the extension is appropriate and I note that, as section 224 of the Trade Marks Act 1995 corresponds to section 160 of the Patents Act 1952, above, Kimberly-Clark Ltd v Commissioner Of Patents And Another (No 3) (1988) 13 IPR 569 applies. For the sake of brevity and convenience, I quote from the headnotes to that case concerning the requirements that should be discharged by Unplugged in the circumstances of its request for extension:

(ii) The phrase “error or omission” should not be restricted to accidents or inadvertences. Although errors or omissions of those kinds would have been what the draftsman had principally in mind when the Patents Act was amended in 1960 to include errors or omissions on the part of the person concerned or his agent as enlivening the s 160 discretion, the same wording appears in s 160 (1) in relation to problems occurring in the Patent Office and it would be difficult to suppose that errors caused by faulty reflection on the part of those in the Patent Office should not fall within s 160 (1).

Lehtovaara v Acting Deputy Commissioner of Patents (1981) 39 ALR 103, referred to.

(iii) It was sufficient for a finding that the failure to lodge was “by reason of” the errors or omissions in question if the errors or omissions had contributed to cause the failure to lodge the notice.

Lyons (trading as Mitty’s Authorised Newsagency) v Registrar of Trade Marks (1983) 50 ALR 496;; 78 FLR 217, applied.

(iv) The fact of an application for an extension of time under s 59 (1) having been made but not finally determined constituted no obstacle to Kimberly-Clark’s application under s 160 (2) (a). Until the s 59 (1) decision was given the time allowed for lodging notice of opposition was the basic three month period under s 59 (1). It is only the decision of an application under s 160 (2) (a) which should be deferred until a decision has been given on an application under s 59 (1).

(v) The considerations identified by Bowen CJ in Vangedal-Nielsen v Commissioner of Patents (1980) 33 ALR 144 at 150 as relevant to the exercise of the power of extension conferred by s 59 (1) are relevant also to the exercise of the power conferred by s 160 (2) (a) in relation to an application for an extension of the time for lodging notice of opposition, although the relative weight of each consideration may well be different in the two different discretionary judgments.

(vi) Section 160 (2) (a) confers a power so conditioned that its operation is not lightly to be granted, and a power to be invoked only upon a prompt, frank, comprehensive and clear disclosure of all the circumstances relevant to the weighing of the discretionary considerations upon which the grant or refusal of an application for an extension of time depend.

(vii) On the evidence before the Commissioner’s delegate he could not reasonably have exercised his discretion in favour of Kimberly-Clark.

(a) The material before the delegate did not disclose the identity, occupation or situation of the person by whom the decision whether to lodge the notice of opposition was taken.

(b) Nothing was clearly disclosed in the statement of the grounds for the application, or in the statutory declarations in support thereof, of the way in which any of the circumstances specified as errors or omissions in the application and declarations affected the mind of the person whose responsibility it was to decide whether to lodge the notice of opposition.

(c) No material was placed before the delegate concerning the knowledge, or lack of knowledge, of Australian patent law and practice possessed by those of Kimberly-Clark’s officers and servants who were responsible for deciding what instructions should be given to the Australian patent attorneys.

(d) In order to make out a proper case justifying an extension an applicant would have to go beyond a mere disclosure of the processes by which an agent’s errors or omissions 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 a corporation, its officers and 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.

I would add to the above criteria, in the circumstances of this late application for extension to file evidence in answer, that the applicant has an onus to reveal the nature of the proposed evidence, the proposed declarant(s), its relevance, when it is expected to be filed, what steps have been put in train to arrange for it, and so forth.  This is in order that the delegate of the Registrar might balance the relevance and immediacy of the evidence in the question of whether it is reasonable to allow the extension.

I have decided not to allow the application for extension of time as I have insufficient material before me to enable me a reasonable exercise of my discretion in favour of Unplugged.  Again, for the sake of brevity, I will simply list what I see as the defects and problems in Unplugged's application.

¨I believe that the import of Ms Zars written decision, above, was clear and its relevance solely to application 676870 was explicit.

¨It should have been clear by both this Offices' and Unplugged's handling of the applications that they were being dealt with individually.  For example:

Þ    The applications were made individually despite the possibility (at the time of the filing of the applications) of filing a single multi-class application.

Þ    The examiner's reports issued individually on each application.

Þ    A standard notice acknowledging filing of the application and a standard notice concerning acceptance of the application issued to Unplugged concerning each application.

Þ    Each opposition had approximately 16 standard notices sent to Unplugged concerning administration of the opposition process.  These were generated in relation to each individual opposition.

Þ    The amendment requested was for an individual application.

Þ    The hearing and subsequent decision involved only one application.

Þ    The amendment was effected for a single application.

¨If the singularity of the oppositions was not clear, any doubt should have been removed on 26 November 1999 on LSJ's receipt of the official letter stating that the time allowed for lodging evidence in answer had elapsed.  This was some six weeks before the late application for extension was filed at this office.

¨Further, if this was not clear, the explanations of how the misapprehensions arose and persisted fall short of showing that the misunderstandings were, in the circumstances, reasonable.

¨There is no explanation as to why Mr Cossetto did not phone the Deputy Registrar till some ten days had elapsed from his receiving the official letter informing him that that the time to serve evidence in answer had expired.

¨There is no adequate explanation as to why it was more than a month after this conversation until the request for extension was filed.

¨There are no file notes or records of conversation exhibited as evidence to the declaration to support the contention of Mr Cossetto that he based his alleged erroneous assumption during his conversation with Hearing Officer Vija Zars on that conversation.

¨I have been given no information as to the experience or knowledge of the Trade Marks Act 1995 of Mr Cossetto, LSJ or their client.

¨I have been given no information as to Mr Cossetto or LSJ's diarising or policing practices in relation to trade marks issues.

¨There is no statement as to the nature of the proposed evidence in answer, its relevance or when it might be filed.

¨There is no evidence as to what steps Mr Cossetto took on or after 26 November 1999 to inform his client of the immediate necessity of addressing this matter.  If there is evidence in the way of records of conversation or correspondence showing the steps taken by Mr Cossetto, this has not been filed.

¨Although it is stated that the principal of Unplugged had pressing business commitments over December, it is not stated what these were or why they prevented him from addressing this matter.

¨There is no information as to the "conduct, knowledge, beliefs and mental processes of the applicant or, in the case of a corporation, its officers and 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". (As per Kimberly-Clark, supra)

¨The declaration filed in support of the application does not clearly identify the identity, occupation or location of the principal of Unplugged by who the decision to seek the extension of time was made.

¨The impression gained from the declaration of Mr Cossetto is of a "haphazard" or "casual" approach to this matter (as per Intencity, supra), particularly in view of the delay in seeking extension of approximately six weeks once Unplugged was informed that the extension of time was essential.

In regard to the latter 'dot-point', and should the delay be thought to be one due to error or mistake on the part of LSJ, I note the remarks of Assistant Registrar Susan Farquhar in Dimtsis And Another v Agricultural Dairy Industry Authority Of Epirus, Dodoni SA (1989) 17 IPR 273:

I find the comments of the Federal Court in Jess v Scott (1986) 70 ALR 185 at 188 that “the modern view is that ‘a failure by a solicitor to take the proper steps could itself be regarded as establishing sufficient cause for an extension of time’", and of Lord Denning in R v Secretary of State for the Home Department; Ex parte Mehta [1975] 1 WLR 1087 at 1091 that, “One of the special circumstances here was the fact that the omission was the mistake of Miss Mehta’s solicitors…. We never let a party suffer because his solicitors make a mistake and are a day or two late in giving notice of appeal. We always treat it as a ground for extending the time… ", of particular support for this conclusion. Of relevance also is the fact that the delay in seeking the extension was not undue, and thus not indicative of a mere casual disregard for the procedural requirements.  [Emphasis added]

In the instant issue, the delay in seeking the extension both appears to have been undue and  the explanation casual, not being properly or fully explained.

I will also remark that there was an implication in submissions to me that the seven extensions of time granted to Viacom in which to serve its evidence in support somehow counterbalance Unplugged's extreme lateness and casualness in seeking the extension.  To this submission I merely note that it was open to Unplugged to oppose to any extension of time and that the issue before me here is not the sufficiency of the time allowed to a party.

Finally, I respond to Ms Goddard's submission that it is open for me to direct, in terms of regulation 5.16, that the applications both be suspended from opposition in order that they might proceed together.  I do not believe that, in these circumstances, it is appropriate to do so.  It is not the issue before me and was not argued by Viacom at the hearing of the extension of time issue.

Decision

I refuse to allow the extension of time to file evidence in answer in relation to this application.  I do not believe that in the circumstances of this issue it is reasonable for me to allow the extension as I have insufficient information before me to enable me to exercise my discretion affirmatively to Unplugged.

Costs

Costs may follow the event and Viacom is entitled to its costs which I award against Unplugged.

Ian Thompson
Hearing Officer

14 July 2000