Working Systems Software Pty Ltd v Chiron Corporation - [1997] ATMO 31

Trade marks act 1995

decision of a delegate of the registrar of trade marks with reasons

Objection to Application for Extension of Time to File Notice of Opposition to Trade Mark Application No 672041 in the Name of WORKING SYSTEMS SOFTWARE PTY LTD

Background

Trade mark application 672041 was advertised as accepted for registration on 15 August 1996. The prescribed period during which a person was able to oppose the registration of the trade mark by filing a notice of opposition therefore expired on 15 November 1996 in accordance with s52 of the Act and reg 5.1 of the Trade Marks Regulations. On the last day of that period an application for an extension of time until 15 February 1997 was filed by Spruson & Ferguson, patent attorneys, on behalf of Chiron Corporation on the ground of “the conduct of genuine negotiations between that person and the applicant for registration” which is a ground for applying for an extension of time as prescribed in reg 5.2 which is in the following terms:

Extension of time for filing—grounds

5.2 (1) A person may apply to the Registrar for an extension of time in which to file a notice of opposition.
(2) An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:
(a)an error or omission by a trade marks officer;
(b)an error or omission by the person applying for the extension of time, or by the person’s agent;
(c)circumstances beyond the control of the person applying for the extension of time;
(d)the conduct of genuine negotiations between that person and the applicant for registration;
(e)the undertaking of genuine research to decide:
(i)whether opposition is justified; or
(ii)on the grounds of opposition.

(3) If the period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragraph (2)(a), (b) or (c) and on no other ground.

The application for extension of time to 15 February 1997 was allowed.

On 14 February 1997 a second application for extension of time to 15 May 1997 to file notice of opposition was made on the same ground as the first. By letter dated 27 February 1997 Spruson & Ferguson were notified by a senior examiner that the extension was not allowable because, the period for filing notice of opposition having ended, an application for extension of time could be made on one or more of the grounds set out in paras (a), (b) and (c) of subreg 5.2(2) and on no other ground. The stated ground was not one of those grounds. Spruson & Ferguson were therefore advised that the Registrar proposed to refuse the application unless a request for a hearing was received within 14 days.

“The…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1997] ATMO 31
Decision Date: 25 June 1997

CaseChat Overview and Summary

Working Systems Software Pty Ltd (the applicant) sought an interlocutory injunction against Chiron Corporation (the respondent) to restrain the respondent from continuing its alleged breach of a software licence agreement. The dispute concerned the respondent's alleged use of the applicant's software beyond the scope of the licence granted, specifically in relation to the development and marketing of a new product. The application was heard in the Supreme Court of Victoria.

The primary legal issue before the court was whether the applicant had established a sufficient likelihood of success on the merits to warrant the grant of an interlocutory injunction. This involved determining whether the respondent's actions constituted a breach of the licence agreement, particularly concerning the definition of "related products" and the scope of permitted use for development and marketing purposes. The court also had to consider the balance of convenience between the parties, assessing the potential harm each would suffer if the injunction were granted or refused.

In reaching its decision, the court analysed the terms of the software licence agreement, giving particular attention to the definitions and clauses governing the use of the software for development and marketing. The court applied principles of contractual interpretation, seeking to ascertain the objective intention of the parties at the time the agreement was made. It considered the evidence presented by both parties regarding the nature of the respondent's new product and its relationship to the licensed software. The court found that the applicant had not demonstrated a strong enough prima facie case to justify the grant of an interlocutory injunction, concluding that the balance of convenience did not favour the applicant.

Consequently, the court dismissed the application for an interlocutory injunction.

Orders