Victorian Conveyancers Association- Australian Institute of Conveyancers (Victorian Division) Inc
[2009] ATMO 48
•30 June 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark registration number 758563(42) - CERTIFIED PRACTISING CONVEYANCER and Device - in the name of the Victorian Conveyancers’ Association -Australian Institute of Conveyancers (Victorian Division) Inc.
Delegate: | Jock McDonagh |
Representation: | Mark Summerfield and Victoria Chan of Watermark Patent & Trade Mark Attorneys |
Decision: | 2009 ATMO 48 Request to extend time under s224 to renew registration under s75. Registration already removed under s78. Request refused, removal final. |
Background
The Victorian Conveyancers’ Association - Australian Institute of Conveyancers (Victorian Division) Inc (“VCA”) was the registered proprietor of the expired trade mark registration 758563 for the certification trade mark CERTIFIED PRACTISING CONVEYANCER and Device, shown below:
The trade mark was filed on 31 March 1998, advertised as accepted on 11 April 2002 and advertised as registered on 9 August 2002. The registration would be from 31 March 1998.
Watermark Patent & Trade Mark Attorneys (“Watermark”) is the registered address for service of VCA.
Pursuant to section 75 of the Trade Marks Act 1995 (“the Act”) and regulation 7.3 of the Trade Marks Regulations 1995 (“the Regulations”), the registration became due for renewal within the prescribed period beginning on 31 March 2007 and ending on 31 March 2008.
Pursuant to section 79 of the Act, in the absence of request for renewal of registration during the prescribed period, there follows a “grace period” of six months whereby the registration may be renewed upon payment of a surcharge on the renewal fee.
According to evidence filed by Watermark, that firm sent reminder letters to VCA on 17 July 2007 and 19 February 2008 regarding the need to renew registration; however, no response or returned mail was received by Watermark.
The grace period expired on 30 September 2008 and the expired registration was removed from the Register pursuant to section 78 of the Act.
Watermark advises that on 7 October 2008, a principal of the firm telephoned the Chief Executive Officer of VCA to discuss the situation. VCA advised the Watermark principal that VCA was using the mark and wished to continue to do so. Further, VCA advised that it had changed its address some five years earlier, but had not advised Watermark.
Following this revelation, Watermark sought to extend the time to request renewal of the registration pursuant to section 75 of the Act, such extension being sought under section 224 of the Act. The Trade Marks Office refused to do and returned the fee filed with the request.
Watermark attempted to seek an extension on 30 October 2008 and 10 November 2008; however, this office on both occasions refused to extend time on the basis that section 224 of the Act is not available for renewal of an expired trade mark beyond the grace period provided by section 79 of the Act.
On 27 November 2008, VCA requested a hearing and the matter came before me as a delegate of the Registrar of Trade Marks, in Melbourne, on 27 March 2009. The VCA was represented at the hearing by Mark Summerfield and Victoria Chan of Watermark Patent & Trade Mark Attorneys.
Matters to be Decided
VCA, through Watermark, submits that as a matter of law, section 224 of the Act is available to renew a trade mark registration under section 75 of the Act even after the grace period under section 79 has expired. Such extension of time, it was submitted, is available even when the registration has been removed from the register.
Section 224 of the Act provides:
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).
For the purposes of section 224(8), a prescribed act is defined in regulation 21.18 of the Regulations and relevantly includes in regulation 21.28(1):
(k)requesting renewal of the registration of a trade mark under sections 79, 80D or 80G of the Act;
Counsel for VCA correctly pointed out that section 75 is not prescribed and is, therefore, a relevant act. Therefore, it was submitted, section 224 is available in appropriate circumstances to extend the time to renew a trade mark registration under section 75.
VCA submits that if the circumstances required under section 224 arose prior to the section 75 renewal deadline, then an extension of that deadline is available if warranted by the circumstances. However, if the circumstances arose during the section 79 grace period, VCA argues, then an extension is prohibited by regulation 21.28(1)(k).
Counsel for VCA drew my attention to the provisions of the Patents Act 1990, which included at section 223 extension of time provisions substantially the same as section 224 of the Act. It was submitted that Patents Office practice as at April 1997 (when the Patents Act 1990 was in force) allowed for extensions of time in which to pay a renewal fee where a relevant error or omission had occurred during the prescribed renewal period but not within the grace period. The Patents Examiners’ Manual referred to Paracel Holdings Pty Limited v Commissioner of Patents [1994] AATA 58 as authority for this approach.
Also brought to my attention was [my] Trade Marks Office decision Insfin Insurance + Finance Group Pty Ltd [2008] ATMO 80 (19 September 2008). That decision allowed for the extension of time to lodge an opposition to a removal application under section 92 of the Act even though the registration had been removed from the Register.
Notwithstanding the well researched and well presented submissions of VCA’s attorneys, I consider that the removal of the registration pursuant to section 78 of the Act is final and consequently fatal to any application to extend time under section 224.
Division 2 of Part 7 of the Act sets up a scheme whereby the Register is kept free of unwanted registrations, yet provides a mechanism to allow valued marks to be retained. The provisions require the Registrar to notify a registered owner of the requirement to renew the registration. The provisions also require the Registrar to remove the registration if the renewal is not effected six months after the registration expires. There are no provisions with regard to reviving a registration after removal from the Register pursuant to section 78.
The Patents Act 1990 provisions applicable at the time referred to by counsel for VCA were quite different. Indeed, the Paracel Holdings decision referred to specific legislative provisions allowing for the renewal of a lapsed patent if certain circumstances arose during the original prescribed renewal period. The Act contains no such provisions.
Part 9 of the Act, providing for removal of a trade mark for non-use and relevant to the decision in Insfin Insurance + Finance referred to above, at section 98 provides specific legislative provisions requiring restoration of a removed trade mark if time has been extended to file notice of opposition. That factor distinguishes the present matter.
I consider that the Act is silent with respect to restoration of a trade mark that has been removed pursuant to section 78 because the legislative intent is that such removal is final. Consequently, I refuse to extend the time in which to renew trade mark registration 758563.
Attention is drawn to section 224(7), which provides for the right of review of this decision by the Administrative Appeals Tribunal.
Jock McDonagh
Hearing Officer
Trade Marks Hearings
30 June 2009
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