W Industries Limited v Virtual Reality and Reality

[1994] ATMO 101

TRADE MARKS ACT 1955.
REASONS FOR A DECISION OF A DELEGATE OF THE
REGISTRAR OF TRADE MARKS.

Re:Opposition by Virtual Reality and Reality to an application by W Industries Limited for an extension of time to serve evidence is support of opposition to the registration of Trade Mark Application 571111.

Background
Trade mark application 571111 was lodged by Virtual Reality and Reality ("the applicant") on 23.1.92.  That firm seeks to register the series of trade marks VIRTUALITY and Virtuality in respect of all goods in class 9 including computers, computer software and peripherals. 

After the grant of an extension of time, notice of opposition to registration was lodged by W Industries Limited ("the opponent") on 4 November 1992.  I will note that the extension to lodge notice of opposition was itself opposed by the applicants and granted only after a hearing.

Evidence in support of the opposition was due to be served on the opponent by 4 February 1993, but since then the opponent has sought and been granted extensions of time.  One of these is of a remarkable nature, and was obtained at a hearing.  The decision of that extension required the balancing of admittedly poor prosecution by the opponent's former patent attorneys on the one hand with, on the other, what the Hearing Officer perceived, from the fairly unambiguous written submissions of the applicant, to be the applicant's intention to shut out critical evidence in support of the opponent's case.  That decision, given in June 1993, was favourable to the opponent, whose attorney (not to be confused with the former attorneys) was T. G. Ahearn of the attorney firm Ahearns. 

Time has passed since then, though there has been no service of evidence in support.  It is clear from the submissions of the two parties that there is a serious issue to be resolved here.  It also appears that some evidence has been obtained.

Also, from material on the official file, it is apparent that there have been some moves to open discussion of a commercial settlement of the opposition.  On 3 August 1993, Mr Ahearn wrote to the applicant asking "whether you are interested in pursuing the matter of possible discussions".  It is also common ground between the parties that on 3 November 1993 Mr Ahearn received a "without prejudice" letter from the applicant's newly appointed solicitor, Mr John Andrews.  That letter, as a without prejudice document, is privileged and is not in evidence.  Whatever its terms may be, it left Mr Ahearn with the view that negotiation was still a viable option.  It is, however, common ground that the letter of 3 November raised other matters which required Mr Ahearn's "checking with our principals on evidence aspects which might be different from what had previously been presented to us as established facts.  An extension of time of no longer than one month should be ample for clarification purposes."  The opponent thus sought an extension of time for service of evidence in support up to 4 December 1993.  To this the applicant acceded.

Extension
On 4 December 1993, Mr Ahearn requested another month of extension on the stated ground that:

"due to health aspects making travel a problem during the last few weeks, the writer deferred setting a date during that period with the applicants' (sic) solicitor to discuss the reaching of an amicable settlement, a result to which both parties have indicated they would not be adverse.  The writer will now be able to visit Sydney (where the applicant is located) next Friday 10 December, or shortly thereafter to meet the applicants' convenience, and we are seeking confirmation of the suitability of such a meeting time from the applicants' solicitor, Mr Andrews."

"While we appreciate the applicants' concern over the delays in this matter, we are anxious to pursue the course instructed by our principals and which is thought will also be beneficial to the applicants.  The extension is therefore sought with a view to settling the matter in the requested period or alternatively Evidence in Support can be served." 

The applicant, informed of this extension, objected.  The matter was heard in Canberra on 7.1.94.  The applicant was represented by its solicitor, Mr Andrews, and by two of its principals, Mr Giorgiou and Mr Maniatis.  The opponent did not appear but relied on written submissions prepared by its attorney, Mr Ahearn.

The applicant argues that the opponent has simply not done enough, in the time available to it, to serve evidence in support of the opposition. 

Little more can be said as to the facts in this matter.  A critical letter is not in evidence because of its privileged status, and I am left to judge, from the observable actions of the parties, what the state of proceedings is between them.  In this case I must do so in order to decide if the required good reason has been shown to authorise the grant of an extension of time.

I should note, though, that Mr Ahearn has stated, in written submissions supporting the grant of the extension, that in discussions with one of the principals of the applicant company, and again with the applicant's solicitor on 6.12.93, the possibility of a negotiated settlement was left open.

Having had the opportunity to hear the applicant's solicitor's submissions, with some additional information supplied by two of the principals of the applicant company, I am satisfied that there has been at least some ambiguity in the way the applicant has dealt with the opponent's attorney.  On the other hand, I can appreciate that the applicant is frustrated by what it sees as the unduly lax prosecution of the matter by the opponent. 

With this I must agree.  Mr Ahearn has been involved with the prosecution of this matter, as an employee of the former attorney firm and now as the principal of Ahearns, since the opposition commenced.  Having assured the applicant that no more than a month would suffice to clarify the opponent's evidence, which was suddenly found, in November last year, wanting in some apparently critical area, no evidence has yet been served.  Either the opponent or its attorney has, from the submission I have quoted above, apparently assumed that the possibility of a future meeting on nebulous terms can take precedence over finalising evidence and serving it.  Such a belief that something might be done in the future is by no means the sort of serious negotiation that has justified, in many decisions of this office, extensions of time.  Nor is it clear why Mr Ahearn left the matter until the last day of the evidence period to ring the applicant's solicitor and suggest an in-person meeting.  Given the history of the matter I think Mr Ahearn cannot be absolved from the applicant's criticism of the lack of progress.  If the matter is one for serious negotiation, why has it not been reduced by the opponent to a clear, written proposal?

On the other hand, I must accept that there is some ambiguity in the way dealings between the parties have been understood.  It seems to me that the applicant is prepared to negotiate but will not allow those negotiations to take precedence over the service of evidence in support.  The applicant is entitled, as it has pointed out, to expect that the evidence, which has been in preparation for over twelve months, will be served forthwith.

Decision
At the hearing, I allowed the extension of time, sought initially to 4.1.94.  I reserved my decision on what further extension might be justified given that the matter was not even heard until after the end of the period as sought to be extended.

The opponent has in fact sought an additional extension to 4.2.94 on the basis that the present hearing has intruded on the time formerly sought.  I do not grant that second extension, on which the applicant has reserved its right to comment and to be heard.  However, I recognise that the date of hearing of the matter will rob the extension to 4.1.94 of any usefulness unless it is compensated for.  I therefore further extend the period for service of evidence in support to a date 21 days from the date shown below. 

I leave the question of costs in the present extension matter to be decided at a later date.

The later extension will be left in abeyance and, subject to any other advice from the opponent, dealt with as being for an additional month starting from a date 21 days from the date of this decision.  Further, I put the opponent on notice that, if the time I have so far allowed is not sufficient for the service of the evidence in support, it should, within ten days of the date of this decision, provide further explanation of why this is so.  This should be in the form of a statutory declaration lodged with this office, and a copy should be served on the applicant at the same time.  The declaration should make clear what information has been obtained in support of the opposition, what form it is in, and when it is proposed that evidence be served on the applicant. 

I will allow the applicant seven days, starting on the day after the declaration is served on them, to comment on the latest extension, and I warn the opponent that it should not expect a liberal exercise of the Registrar's discretion if the opponent finds that, contrary to its protestations, further time is needed.

T. Williams
Hearing Officer

13 January 1994