Wyrallah Holdings Pty Ltd v Cargo Road Wines

[2003] ATMO 30

TRADE MARKS ACT 1995

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

Re:CARGO ROAD WINES application for extension of time in which to serve evidence in support of opposition to registration of trade mark application 883834(33) - WINE WITH ALTITUDE - filed in the name of WYRALLAH HOLDINGS PTY LTD.

Background

1. In this matter Cargo Road Wines, ("Cargo"), opposes registration of the above mentioned trade mark in the name of Wyrallah Holdings Pty Ltd ("Wyrallah").  The circumstances that led to this opposed application for extension of time to serve evidence in support are set out in paragraphs 2 to 6, below.

2. A Notice of Opposition ("NOO") was initially 'filed' on 19 March 2002 in the name of Charles Lane of 227 Old Canterbury Road, Dulwich Hill, New South Wales.  This NOO was on Form P/00/038, a NOO under the Patents Act 1990 and Mr Lane appears to have agreed that it was not validly filed.  The ground stated on the NOO was that, "Over two years prior use.  Some evidence attached, more can be provided."  Appended to the NOO are three photocopied pages purporting to show an interaction between Cargo and a wine and bar accessory provider.  These three pages are not sworn - ie, if the NOO had been properly filed, the pages would not comply with Trade Mark Regulation 21.17 which states, inter alia:

   21.17  Evidence in proceedings

   (1)Evidence that is given in writing in any proceedings before the Registrar must be in the form of a declaration.

3. Mr Lane appears, as I have said, to have agreed that this was not a validly filed NOO.  Subsequently, on 28 March 2002, Cargo filed a NOO ("the second NOO") on the correct form under The Trade Marks Act 1995, ("the Act") which is in the name of Cargo Road Wines, of Orange. This NOO cites three grounds, these being under sections 58, 60 and subsection 44(1)(a)(ii) of the Act stating, in regard to the latter, that, "Trade mark will be sought by Cargo Road Wines".

4. The time allowed for service of evidence in support of the opposition elapsed on 28 June 2002.  Wyrallah, the applicant for registration, did not serve or file evidence in answer by its due date of 28 September 2002.  Thereafter, Mr Lane initiated a telephone conversation with an officer the Trade Marks Office and discovered that what he, Mr Lane, had regarded as being evidence in support of the Cargo opposition had not been so regarded by the Office.  Subsequently, a Senior Examiner of the Hearings Section wrote to Cargo stating, inter alia, that, "Somebody should have advised you that your material was not in the proper form for evidence and therefore would not be taken into consideration when the opposition came to be decided."  The Senior Examiner outlined some opposition procedures and advised Cargo of its capacity to apply for an extension of time in which to serve and file evidence in support.  Cargo was also advised by the Senior Examiner that a statutory declaration should be provided explaining why it had not applied for an extension of time before the final date of 28 June 2002 had passed and that fees in respect of the extension of time would be waived as the need for an extension of time was the result of an error or omission by a trade marks officer.

5. Cargo elected to apply for an extension of time in which to serve evidence in support and Wyrallah has opposed allowance of the extension.  I heard the matter as a delegate of the Registrar of Trade Marks, in Canberra on 14 March 2003.  Mr James Swift, a principal of Wyrallah, appeared for Wyrallah.  Cargo did not appear, was not represented and did not put in written submissions.  The statutory declaration put in, in support of the application for extension of time, is by Charles Lane and his relationship with Cargo is not stated. 

6. Cargo has subsequently put in a statutory declaration as evidence in support, dated 23 January 2003, which attempts to rectify the defects in the material attached to the first NOO.

   Submissions

7. It was the thrust of Mr Swift's submissions that Cargo had shown a blatant disregard of the Act and regulations and its behavior comes within the ambit of the hearing officer's observations in Intencity Pty Ltd v O'Mahoney - 40 IPR 514.

   Discussion

8. Regulation 5.15 provides:

   5.15      Extension of period to serve evidence and service of further evidence

   (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).

9. Guidelines upon the issues to be determined have been laid down in cases such as Vangedal-Nielsen v Smith (Cmr of Patents) (1980) 3 ALN N21; 33 ALR 144; 1A IPR 731 and Lyons (t/as Mitty's Authorized Newsagency) v Registrar of Trade Marks (1983) 50 ALR 496; 1 IPR 416. I must consider and balance whether:

   ·the length of time is appropriate;

   ·there is a serious opposition in train;

   ·sufficient reasons have been provided;

   ·a proper case has been made out justifying the extension; and,

   ·the relative inconvenience to the parties concerned and the public interest.

10. In relation to the second of the 'dot-points', above, Hearing Officer Forno observed in Intencity Pty Ltd v O'Mahoney - 40 IPR 514 at 521:

    In the same vein, in the recent case of A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213; AIPC 91-330, the court found that it was necessary for the commissioner to consider the nature of the evidence an opponent sought to adduce and the significance of the evidence for the opposition proceedings. That was not to suggest that the evidence had to be scrutinised in the same way as would occur at a hearing on the merits but merely to make some sort of a determination as to its relevance to proceedings.

11. I think that the length of time, some seven months, is, in these circumstances, inappropriate.  The second NOO was filed on 28 March 2002 - evidence in support of its opposition was due by 28 June 2002.  Since then, Cargo has received a number of official notices advising it of the progress of the opposition.  Most notably, it should have received, shortly after 28 June 2002, an official notice stating that time allowed for evidence in support of the opposition had elapsed.  It is surprising, in view of Cargo's obvious inexperience in these matters, that this notice did not invoke any query.

12. The conduct of Cargo in this matter does not strike me as being that of a serious opponent; its approach has been slipshod: relationships have not be explained, the opponent is not obviously 'a person' in terms of section 52 of the Act, the authority of the declarant to speak on behalf of Cargo is not stated, it has not ensured that documents, when sworn, have been fully executed and it has obviously made no attempt to inform itself of the requirements of the Act and regulations.

13. I would not wish to prejudice the substantive matter with which this is connected.  However, it appears to me that the evidence which the opponent wishes to now submit will not be of great relevance to the outcome of the proceedings.  The declaration which has been filed does not reveal the relationship between the declarant and Cargo, the length of time that this relationship has existed or his knowledge of the operations of Cargo.  Further, the material appended to the declaration is photocopied, rather being original documentation - the photocopies are not sworn and witnessed, either in the declaration or on themselves, to be true copies of the originals and should be seen as being of low probative value.  The event which the photocopies attempt to demonstrate does not observably fall on any particular date.  Leaving the substantive matters to which the declarant attests to one side, the declaration might be therefore be properly viewed as being of little weight.  The substantive issue to which the declaration adverts appears to be in relation to alleged (but not demonstrated) slight use, at times which are uncorroborated, of a non-identical trade mark on goods unrelated to those which are specified on the opposed application.  The relevance of the evidence to grounds under either sections 58 or 60 thus appears to be, prima facie, not strong.  I also observe that, by the way it is put, the relevance of the section 44 ground is also questionable since the way in which the ground is worded reveals that Cargo has no application or registration with an earlier priority date than that of the opposed trade mark.  There is, in any event, no application or registration specified in the declaration in support of this ground.

14. Cargo appears to have made a series of mistakes in relation to its opposition and now seeks to rectify one of them.  In his declaration which seeks to support the application for extension of time, Mr Lane states the material which was appended to the first NOO was also appended to the second NOO: in this he is mistaken - there is no additional material attached to the second NOO which was received by the Trade Marks Office by facsimile letter dated 28 March 2002.  The second NOO has no wording on it (as did the first NOO) which would signify that any material was intended to accompany it.  The material appended to the first NOO was obviously not served and filed in relation to these proceedings, as they were filed prior to the commencement of these proceedings and in the name of a different 'opponent'.  It is difficult to understand how a mistake might exist other than it might be the failure of Cargo to serve and file sworn material in support of the second NOO.  While Mr Lane has acknowledged the first of these failures, I do not consider that acknowledgement of that failure adequately explains how it came to arise or its relationship to the second of the failures in connection with evidence in support of the second NOO.  He says in his declaration, "Hence, the reason for my request for an extension of time is that I was unaware until recently (late Dec 2002) that that my original material was not in proper form.  Had I known this, I would have addressed the error within the usual time frame."  This begs the question as to why the material was not in the proper form and not furnished when a valid NOO was filed in the name of a different opponent.

15. Subject to my observations and qualifications in paragraphs 17 - 26, I will state now that the most obvious reason to me why the material appended to the first, invalid, NOO, was not considered by the TMO to be evidence in relation to these proceedings is that it was not filed in relation to these proceedings: it was invalidly filed prior to the commencement of these proceedings and in the name of a different person.

16. I think that the balance of conveniences as regards the parties, the public and the Registrar obviously militate against Cargo.  There are obvious interests in the smooth running of the administration of the register of trade marks and the applicant has also endured a considerable delay occasioned by Cargo's disregard for the regulations.  In essence, Wyrallah has not served and filed evidence in answer as there is nothing to answer.  If the present application for an extension of time is allowed, there remains, in practical terms, very little to answer and nothing will be gained but further delay.  Neither will Cargo's interests be served by delaying proceedings to admit evidence of so little weight.

    Office Mistake

17. Nor do I agree with the view that Cargo's situation arises because of error or omission by a trade marks officer, in terms of regulation 21.24, as might be implied from the senior examiner's letter to Cargo.  Regulation 21.24 allows:

    21.24  Refunds etc of fees

    (1)If, because of an error or omission by a trade marks officer, a person becomes liable to pay a fee for which the person would not otherwise have been liable, the Registrar may:

    (a)remit the whole or part of the fee; or

    (b)if the fee has been paid — refund the whole or part of the fee to that person.

    (2)If:

    (a)the acceptance of an application for registration of a trade mark; or

    (b)the registration of a trade mark;

    is delayed because of an error or omission by a trade marks officer, the period that the Registrar reasonably believes to be equal to the period of the delay resulting from the error or omission is not to be taken into account for the purposes of calculating the amount of the fee for the matter in relation to which the error or omission was made.

18. In opposition proceedings, officers of the hearing section who receive evidence do, when they notice that evidence submitted in proceedings manifestly does not adhere to the forms prescribed in the Act and regulations, occasionally communicate some of the deficiencies to the party or parties concerned on the filing of that evidence. This is done as a courtesy, on an as-and-when-noticed basis, and not as the result of an obligation on the part of those officers to do so which is imposed by the Act or regulations. The officers who check such material when it arrives at the Office look at it to ensure that it is all physically present - that, for example, exhibits referred to in declarations are all at hand.

19. An alleged failure of an officer of the hearing section to notice, or to communicate, a party's lack of adherence to the prescribed regulations in its evidence does not constitute an error or omission as there is no obligation prescribed under the Trade Marks Act 1995, or the regulations, for any officer of the hearings section to check documents when they are filed as evidence by parties for compliance with the Act and regulations. In Lyons and Another (trading as Mitty's Authorized Newsagency) v Registrar of Trade Marks and Another - 1 IPR 416, Beaumont J stated, at 429:

    In my opinion, an "error or action" within the meaning of s 131 (1) (b) must be confined to things done or omitted to be done under the Act. In other words, if an officer or employee embarks upon a course of conduct which is gratuitous or voluntary in the sense that it falls outside the duties and functions imposed by the Act upon the officers and employees charged with administration of the Trade Marks Office, that conduct, in my view, falls outside s 131 (1) (b), whatever may be the consequences of the conduct at common law.

    The same must, in my consideration, be true of the non-performance of a voluntary or gratuitous act by a trade mark officer. Such non-performance is not an error or omission within the meaning of the Act.

20. Critique of documents is well left to the parties, or their representatives, or the Registrar's delegate at a hearing, or in written reasons.  The relevance and probative weight of such documents is then a matter for assessment by the Registrar's delegate on submissions made at a hearing of the matter, or, if the matter is not heard, in consideration of written submissions or in the delegate's own assessment.

21. Obviously, there may be a fine line between procedural comment by trade marks officers on adherence of evidence to the prescriptions of the Act and regulations on the one side and matters of substance on the other. For example, it is apparent that this opposition has not been filed in accordance with subsection 52(1) which provides, inter alia, 'a person may oppose the registration' of a trade mark.  It is apparent that Cargo, prima facie, is not a person since it is not, by the second NOO, obviously either incorporated, a body of persons or a real person.  This could be a matter of form or it might be a matter of substance.  The relevance of this fact is thus a matter to be addressed by evidence in answer and evidence in reply; and its effect the subject of debate at a hearing of the matter rather than in pre-hearing comment by a trade marks officer.

22. Further, it is possible that if trade marks officers of the hearing section routinely included in their duties the examination of evidence for deficiencies in its adherence to the prescribed forms, this could be perceived by either of the parties as a sign of partiality or official bias.  For example, the evidence submitted by professional legal representatives regularly runs into many hundreds of pages of material whereas that led by self-representers is generally short.  Obviously, it would be onerous for trade mark officers to check in detail very lengthy material and any focus on short material could mistakenly lead to a perception of an official bias towards a particular group.  Or, a compliance of the evidence with the regulations that had been initiated by comment from a trade marks officer might be incorrectly taken by a party as a sign that the substance of the evidence had also met with official approbation.

23. The proper preparation of documents as evidence is thus a matter which is the responsibility of the party to proceedings - if a person is to become a party to proceedings, it is for that person to inform themselves of the requirements of the Act and regulations. A brochure is provided by trade marks hearings to unrepresented parties for this purpose and some guidance and forms might additionally be found on the Internet (as the NOO provided by the Trade Marks Office to Cargo indicates) at where there are hyperlinks to relevant legislation and recent decisions of the trade marks hearing section can also be found. This is consistent with the Trade Marks Office's obligations to provide timely and relevant information under IP Australia's Customer Service Charter which can also be found on Of course, it is also open (and advisable) for a person to seek qualified legal representation by a solicitor or trade mark attorney.

24. The offer of a waiver of fees to Cargo is therefore inappropriate since there was no error or omission on the part of an officer of the Trade Marks Office.  Notwithstanding my finding that there was no error or omission by a trade marks officer, I would also observe that (if there had been such an onus on a trade mark officer) the second NOO, which is the relevant NOO for the purposes of this opposition, had no material attached to it.  It is not clear to me how an officer might have apprehended from the absence of any material appended to a relevant document (the second and valid NOO in the name of one opponent) that material appended to an irrelevant document (the first and invalid NOO in the name of a different opponent) might not comply with the trade mark regulations or how this fact was of relevance to an issue in relation to which it was not properly filed, had no obvious relationship and had never resulted in proceedings.  Even if this had been apprehended, and the relationship (whatever it might be) between Cargo and Mr Lane as putative opponents had been comprehended, it is not clear how a trade marks officer might have understood that Cargo had overlooked including this material on the second NOO (which did not mention it) and had not, alternatively, intended to rectify problems with the original material by properly filing it in declaratory form within the time allowed.  It is unusual, (though not unheard of) in my experience, for evidence to be appended to a NOO and its absence is not at all noteworthy.

1. As I have indicated, in my consideration the correct view is that the material appended to the first NOO was not served and filed in relation to these proceedings and the fact that a trade marks officer did not canvas the issue with Cargo is, hence, unsurprising.  It was not, in the event that the defective material had been filed in relation to these proceedings, a duty or function of a trade marks officer, under the Act, to canvas that issue with Cargo. When such information is given by trade marks officers, it "is gratuitous or voluntary in the sense that it falls outside the duties and functions imposed by the Act upon the officers and employees charged with administration of the Trade Marks Office".

2. Inasmuch as regulation 21.24 might have applied to the circumstances before me, there has been no error or omission on the part of a trade marks officer.

   Decision

3. I refuse to extend the period of time in which to serve evidence in support.

   Costs

4. Wyrallah requested its costs should it be successful in these proceedings.  I explained to Mr Swift at the hearing that most costs relate to professional expenses incurred in relation to proceedings, as set out in Schedule 8 to the regulations.  Wyrallah has, in essence, represented itself and has not incurred professional expenses and might, subject to my comments in paragraph 29, below, therefore, only claim its costs in relation to Division 2 of Schedule 8 to the regulations which provides:

   Division 1    Expenses

   1.    A person who has paid a fee prescribed in these regulations in relation to proceedings before the Registrar may be paid the amount of the fee.

   2.    A person attending proceedings before the Registrar must be paid:

   (a)a reasonable amount for allowances for transport between the usual place of residence of the person and the place that he or she attends for that purpose; and

   (b)if the person is required to be absent overnight from his or her usual place of residence — a reasonable amount for allowances up to a daily maximum of $405 for meals and accommodation.

5. However, the need for a hearing resulted from, inter alia, an officer's incorrect conclusion that an office error had arisen, consequent to a misapprehension that material irrelevant to these proceedings did, in fact, form a part of them. This factor, combined with a misattribution of responsibilities, vis-à-vis the conformity of evidence with the regulations, may constitute, in the circumstances of this matter, an official error and the issue before me has directly resulted from this. It would further compound that error were I to order costs against Cargo since an arguable error which gave rise to the hearing was an official one: it would be manifestly unfair to Cargo if it were ordered to pay Wyrallah's costs in circumstances which arguably resulted from Cargo's actions in acting upon errant official advice. An order as to costs is, in terms of section 221 of the Act, a discretionary power of the Registrar and the word 'must', used in item 2 of Div 1 to Schedule 8, above, thus refers only to what may be claimed and must be paid after an order as to cost has been made. I do not, therefore, order costs against Cargo. Wyrallah might, in all of these circumstances, equitably seek a refund of the hearing fee from the Trade Marks Office and, if it applies for the refund, it will be refunded. There is no mechanism provided under the Act or regulations by which Wyrallah may seek recompense for its other expenses.

   Ian Thompson
   Hearing Officer
   Trade Marks Hearings

   8 May 2003