Victron B v v Tandy Corporation

[1991] ATMO 43

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application by TANDY CORPORATION for an Extension of Time in which to Oppose Trade Mark Application 513150 in the Name of VICTRON B.V.

Background
Trade mark Application 513150, for the registration of the trade mark VICTRON in respect of various uninterruptable power systems and other electronic components, was advertised as accepted for registration on 6.12.90, and section 49(1) of the Trade Marks Act 1955 provides that:

49.(1)A person may, within 3 months after the date of the advertisement of the acceptance of an application, or within such further period, not exceeding 3 months, as the Registrar, on application made to him within the first-mentioned period, allows, by notice in writing specifying the grounds of opposition and lodged at the Trade Marks Office, oppose the registration of the trade mark.

Any extension of that time other than by way of the above provision must be by way of section 131, as per Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks, 1987 7 IPR 551.
          Accordingly when on 15.3.91 Messrs Arthur S. Cave, patent attorneys, sought on behalf of the prospective opponent (whom I will now refer to as Tandy) an extension of the opposition period by way of section 130, they were advised that this was an incorrect procedure and that, moreover, the facts set out in the statutory declaration accompanying the extension request did not support the application of the provisions of section 131, which provides that:

(1)Where, by reason of -

(a)circumstances beyond the control of the person concerned; or

(b)an error or action on the part of an officer or

person employed in the Trade Marks Office,

an act or step in relation to an application for the registration of a trade mark 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 Registrar may extend the time for doing the act or taking the step and permit the act to be done or the step to be taken.

(2)The time required for doing an act or taking a step may be extended under this section although that time has expired.

On being advised that the extension was therefore to be refused, Tandy requested that the matter be heard.  However, Mr Cumming subsequently waived that right, and has relied instead on written submissions.
Supporting Circumstances
          These are listed at first instance in the Statutory Declaration of Hector Cumming, a partner  of Messrs A.S. Cave & Co, Patent and Trade Mark attorneys.  The facts to which Mr Cumming declares are that:

.on 11.3.91 (5 days after the deadline) his firm received a fax from the prospective opponent;

.this fax advised that Tandy's usual attorney, which I will refer to from this point as "the other attorney firm", had advised Tandy that they, the other attorneys, could not act for Tandy in any opposition which might arise out of the present matter because of a conflict of interest;

.Mr Cumming has "noted" that Tandy received this advice from the other attorneys on 8.3.91, i.e. 2 days after the deadline;

.Mr Cumming advised Tandy in general terms of the likelihood of success in the opposition matter on the same day as Tandy contacted his firm;

.Four days later, on 15.3.91, Tandy instructed Mr Cumming to proceed with the opposition.

In addition to these facts, Mr Cumming has asserted various supporting circumstances to exist.  These circumstances involve dealings between Tandy and its overseas searching body and between Tandy and the other attorney film, and involve also some claims about the circumstances in which that firm failed to advise Tandy of the deadline before that date had passed.
          It appears from Mr Cumming's assertions and the material which accompanies them that Tandy was not advised of the acceptance of this application until 23 days before the deadline, i.e. with less than one third of the statutory period still remaining, and that Tandy's own in-house attorney was on vacation for an unstated part of the remaining time until 20.2.91.
          Mr Cumming has lodged a copy of a letter from the other attorney firm to Tandy.  This, he asserts, is the letter which those attorneys intended Tandy to receive before the deadline, and indeed it is dated 28.2.91 and marked "Facsimile".   It is this letter which Tandy evidently received by conventional mail on 8.3.91, as per Mr Cumming's declaration.  The other attorney firm had indicated:

"If you wish any action to be taken before 6 March 1991 please let me known.  We can, if necessary, seek an extension of time for lodgement of a Notice of Opposition but any other action should be initiated by another attorney and I would be happy to make a recommendation in this regard."

They also provided Tandy with advice as to the likelihood of

confusion between the VICTRON trade mark and Tandy's own VICTOR.
          Mr Cumming has lodged a copy of the initial notification to Tandy from their independant firm of trade mark searchers, a body located in Antwerp.  That advice to Tandy was, as Mr Cumming has noted, apparently received by Tandy on 11.2.91, but it is dated 1.2.91.  I will also note that the advice, when it was received by Tandy, contained the clear advice "Deadline 06 MAR 1991".

Mr Cumming has also drawn my attention to an apparent delay or reluctance on the part of Tandy's own management in applying for an extension of time under section 49. This, he says, is because of a policy to obtain "management approval as was required on all possible trade mark infringement matters before requesting work be performed by Tandy's foreign Associates".
Decision
          At the outset, I must say for the sake of the record that I do not find Tandy has demonstrated that any case can be made under section 131 but that I have very little hard evidence as to Tandy's actual intention before it commenced to deal with Mr Cumming's firm.  What follows as the substance of my decision is made from inference and from the pieces of correspondence which I have been selectively shown, and in another case where I was able to conclude that an extension might possibly be granted I would be forced to consider in addition the lack of hard evidence before proceeding. 
          It is in the first instance for a party seeking an extension to show why the time so far allowed has been insufficient (Lyons v Registrar of Trade Marks 1983 1 IPR 416), and it is clear from the material lbefore me that Tandy was aware of the acceptance of the present application and that it had made tentative enquiries of an Australian patent attorney. I therefore dismiss the initial inconvenience of a delay of some 66 days in learning of the acceptance as being insufficient to in itself give rise to an application of section 131. The lack of any claim that such a delay in advising a search result is unusual combined with the transmission of the advice by ordinary mail suggest strongly that there is nothing particularly out of the ordinary in this aspect of the matter.
          Nor do I find any assistance to Tandy in the absence of their in-house attorney on vacation.  This also appears to be nothing out of the ordinary and accounts for only "part", to quote Mr Cumming, of the time between receipt of the search advice by Tandy and the date on which Tandy first consulted an attorney in this country.
          In the principal case of Atomic Skifabrik (supra) Jenkinson J noted that section 131(1)(a) designates - and designates only -

"occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent.  The operations of nature and the activities of strangers may result in such occurrences.  So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed.  But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in s.131(1)(a), in my opinion.  Nor, in my opinion, are the acts or omissions of that agent's servants.  The section is, I think, correctly described as a force majeure provision.

The two factors which I have considered above do not either separately, or even taken together, constitute a circumstance that would justify the application of a force majeure provision. 
          Tandy could have prevented this present situation either by directing the other attorney firm in concrete terms (eg to seek an extension under section 49) or by ensuring that the matter was followed through within the time available.  Instead, and knowing that by the time they even contacted that other attorney firm 2½ months had gone by, they chose to do nothing more until, more than a fortnight later, they received legal advice in the ordinary mail.
          I do not dispute that the failure of the other attorney firm to issue legal advice in a timely way was an event which Tandy could not control.  Nonetheless, the manner in which Tandy has conducted its affairs is such as to invite such a problem, and the final event was, as I have said, as avoidable as were the unfortunate consequences of a routine absence on vacation of a staff member and the equally unfortunate but predictable consequences of Tandy's own management policies.  These elements do not allow Tandy to now invoke section 131.
The provisions of section 49 of the Trade Marks Act have allowed 3 months to cover those events and circumstances the consequences of which a prospective opponent cannot escape via section 131 (Atomic Skifabric, supra).
The effect of section 49, without section 131 as a backstop, is that as a would-be opponent Tandy is required to manage its affairs so that necessary advice is obtained and/or necessary management decisions made within the statutory period. This period was set so as to give a reasonable margin to prospective opponents. Tandy had allowed itself to be placed in a position where, at the end of that period, it was still awaiting legal advice, and it must accept the consequences.
          Accordingly, I refuse the extension of time to lodge notice of opposition.  Subject to any appeal from this decision, trade mark application 513150 is able to proceed to registration on payment of the appropriate fee.

(T. WILLIAMS)
  Delegate of the Registrar of Trade Marks
  19 June 1991