Xiying Susan Guo v David Bilanycz

[2010] ATMO 123

TRADE MARKS ACT 1995

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

Re:Late application by Xiying Susan Guo for extension of time to file notice of opposition to registration of trade mark application 1325114(10) - KINGYIELD - filed in the name of David Bilanycz.

Delegate:	Alison Windsor
Representation:	Potential Opponent:  Written submissions from Madhu Jogia, patent and trade mark attorney Applicant:  Written submissions by David Bilanycz
Decision:	2010 ATMO 123 Regulation 5.2:  Late application for extension of time to file notice of opposition – insufficient reasons provided for failure to apply within statutory period – Registrar not reasonably satisfied that application should be allowed – application refused.

Background

1. David Bilanycz filed an application to register a trade mark on 11 October 2009.  The trade mark is the word KINGYIELD, rendered on the application form in lower case, and is for the following goods in class 10:

   • Blood pressure monitors; electronic blood pressure monitors (for medical use)

2. The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and as no grounds for rejecting it were identified, it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks (‘AOJT’) dated 11 February 2010.

3. The statutory opposition period provided by regulation 5.1 of the Trade Mark Regulations 1995 (“the Regulations”) expired on 11 May 2010.  Mr Bilanycz paid the appropriate registration fee on 31 May 2010.  Following receipt of the fee, the application was entered onto the Register on 1 June 2010.

4. Shortly following registration of the trade mark, it became apparent that on the same day as the registration fee had been paid, Xiying Susan Guo (‘Ms Guo’) had lodged an application for an extension of time to file a Notice of Opposition.  This correspondence had not been brought to the attention of the relevant staff member before the registration fee was processed and the trade mark was entered onto the Register. 

5. Via a letter dated 22 June 2010, a Deputy Registrar of Trade Marks advised Mr Bilanycz that because of the provisions of section 84B of the Act, the Registrar had no option but to revoke the registration. He further advised that the revocation would be advertised in the AOJT on 29 June 2010. He informed Mr Bilanycz that if the application for an extension of time was allowed, the application would be subject to the usual opposition provisions that would have applied if the notice had been received during the statutory opposition period.

6. In the meantime, IP Australia was also considering Ms Guo’s application.  The application for an extension of time had been filed after expiry of the statutory opposition period, and was therefore a late application.  Ms Guo was advised of the requirements which she needed to meet, and after some discussion with staff members, she provided the documentation required to support a late application for an extension of time to file a Notice of Opposition.  Ms Guo filed the notice on 11 June 2010, within the time allowed by her one month extension fee.

7. On 30 June 2010, IP Australia officially notified Mr Bilanycz of Ms Guo’s application for an extension of time to file the notice, and that the Office considered it reasonable to allow the application.  As is required by reg 5.15 in such matters, Mr Bilanycz was given the opportunity to make representations as to the granting of the extension. 

8. On 9 July 2010, Mr Bilanycz filed an application for a hearing along with the relevant fees, on the understanding that he intended to be heard on the matter if the extension of time was allowed despite his arguments against it.  He said that his submissions and arguments were to follow in a subsequent letter, which he filed with IP Australia on 14 July 2010.

9. After considering the arguments against allowance, by letter dated 23 August 2010 IP Australia notified Ms Guo that Mr Bilancyz’ submissions appeared to have merit and therefore her application for an extension of time was to be refused.  Ms Guo was advised of her right to make submissions to support her case, and of her right to be heard on the matter.  Ms Guo elected to make further submissions in support of her case, and these were received by IP Australia on 6 September 2010.

10. After some delay, on 1 November 2010 an officer of IP Australia wrote to Mr Bilanycz and said:

    I have carefully considered the extension application in light of submissions received from both parties.  I am reasonably satisfied as to the ground under regulation 5.2(2)(b).  Consequently, I now intend to grant the extension of time.  However as you have requested to be heard on the matter if the extension is not refused, a hearing has been set down for 24 November 2010.   

11. I was delegated by the Register to hear the matter in Canberra on 24 November 2010.  In the end, both parties elected not to appear, but to provide written submissions to support their respective cases.  Mr Bilanycz provided written submissions on his own behalf.  Written submissions for Ms Guo were provided by Madhu Jogia of Jogias Patent and Trade Mark Attorneys

    The law

12. Section 52 of the Act provides for a trade mark which has been accepted for possible registration to be opposed within a time frame set out in the regulations.

13. Regulation 5.1 provides that the period for filing a notice of opposition (‘the statutory period’) is three months from the day on which the acceptance of the application is advertised in the Official Journal.  Regulation 5.2 makes provision for this period of time to be extended but subregulation 5.2(3) provides that an application for an extension of time to oppose which was filed after the statutory period has elapsed may only be made on only the following grounds[1]:

    (a)  an error or omission by an employee;

    (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;

    [1] Chiron Corporation v Registrar of Trade Marks (1998) 42 IPR 75

14. Regulation 5.3 sets out the specific requirements for applications for extensions of time.  Regulation 5.4 refers to the grant of the extension of time, and subregulation 5.4(2) provides that the Registrar must not grant the extension of time unless the Registrar:

    (a)  is reasonably satisfied that the person applying for the extension of time has served a copy of the application, and the accompanying declaration, on the applicant for registration of the trade mark; and

    (b)  has given to both the person applying for the extension of time and the application for registration of the trade mark a reasonable opportunity to make representations concerning the application for extension of time.

15. If the application for an extension of time has been filed after the end of the statutory period, subregulation 5.4(4) provides:

    …(4)    If an application for extension of time is made after the period for filing a notice of opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period.

    Submissions and Discussion

16. The previously quoted extracts from the regulations make it clear that Ms Guo’s application for extension of the statutory period to file a notice of opposition must not be granted unless I am ‘reasonably satisfied that there is sufficient reason for the application not being made before the end of that period’.  Both parties have provided comments and submissions which I must consider and balance in order to reach a decision.

17. Ms Guo has given details of events which she says have caused her to be unable to keep a reasonable watch on the trade marks Register, a practice she says was her standard practice at least up until December 2009.  She says that these events resulted in her failure to file a notice of opposition within the statutory period.  In December 2009, Ms Guo says, a number of events in her personal life, including purchase and renovation of an old house as well as loss of her laptop computer because it broke down, and problems with her internet connection all interfered with her ability to undertake her normal monitoring of the Register.  She says that her priority during the months between December 2009 and May 2010 was operating her eBay® business (her only income) via use of borrowed computers.  In late May 2010, she again checked the Register and noticed Mr Bilanycz’ application was about to be registered.  She says she immediately contacted IP Australia for information, resulting in her filing the application for extension of time which is under consideration here.

18. Mr Bilanycz says that in May 2010, after the opposition period for his application has expired, he sent a letter of demand to Ms Guo.  The next day, he says, he paid his registration fee, and Ms Guo filed her application for an extension of time.  He also says:

    Having registered several trademarks previously I felt it would be nearly impossible for Mrs Guo to oppose the trade mark at such a late stage. 

    I realised I may have sent a letter of demand a little early but my knowledge of the trademark system told me that Mrs Guo would not be able to get any extension to oppose and I did not expect that I may need to go to a hearing since the reasons available for an extension of time were very limited.

    I strongly view that the unnecessary delays outlined by Mrs Guo resulted in dire consequences, for which the person concerned must bear responsibility. 

19. Ms Guo states that it had been her practice to check the Register of trade marks, by which I assume she means IP Australia’s database of pending and registered applications, every one or two months to see whether a trade mark the same or similar to KINGYIELD had been applied for.  She does not state when she became aware that the trade mark application had been filed.  From December 2009 and up until May 2010, she does not appear to have made any checks of the Register at all.

20. Ms Guo has given information about major disruptions to her work and family life which she maintains prevented her from adhering to her usual practices, and ultimately resulted in her failing to notice the status of Mr Bilanycz’ trade mark application until after the statutory opposition period had expired.  It appears to me that, rather than becoming aware of the status of a trade mark over which she was keeping watch, albeit intermittently, she was completely unaware of the trade mark application until Mr Bilanycz sent her a letter of demand late in May 2010.  The vagueness of her references to any knowledge of the existence of the trade mark application prior to May 2010 do not, to my mind, point to a person who has made an error and inadvertently, through misfortune or misadventure, missed a deadline which she should have met. 

21. Nor can I seriously consider a claim for any omission having occurred because of Ms Guo’s claimed inability to search the trade marks database.  Ms Guo has simply omitted to check the trade marks database during that time for some of the reasons she has already supplied.  In this case, however, the application was filed on 11 October 2009, and was advertised as accepted on 11 February 2010.  The statutory opposition period ended on 11 May 2010.  The application for an extension of time to file a notice of opposition reached IP Australia on 31 May 2010.  There is thus a period of almost 8 months between the date on which the application was filed and the date of Ms Guo’s application for an extension of the Statutory period.  Ms Guo appears to have been ignorant of the existence of the application for the whole of that time.  I do not believe it is possible to omit to do an action if you are unaware that the action needs to be done, and this is what seems is the case here.

22. From the information put before me, I am aware that Ms Guo and Mr Bilanycz have crossed paths in their businesses before.  Some of the information I have been provided with allows an inference that Mr Bilanycz’ motives for registering KINGYIELD are not necessarily above board, so to speak, especially in the face of Ms Guo’s claims to pre-existing use. 

23. However, Ms Guo has failed to provide persuasive information which would allow me to be reasonably satisfied that she had sufficient reasons for not making her application before the end of the statutory period.  The provisions of subregulation 5.4(4) do not allow me any discretion in this matter, and therefore I must not grant the late extension of time to file a notice of opposition. 

    Decision

24. I have decided that the late application for an extension of time to file a notice of opposition to trade mark application 1325114 – KINGYIELD – cannot be granted.  The trade mark may therefore proceed to registration after one month from the date of this decision.  If the Registrar is notified of an appeal before that time, the registration shall not proceed until such time as the appeal is discontinued, or in the case of a decision from the Court, the application shall be subject to the Court’s direction.  

    Alison Windsor
    Hearing Officer
    Trade Marks and Designs Hearings
    8 December 2010