Re Atomic Skifabrik Alois Rohrmoser v the Registrar of Trade Marks [1987] FCA 22 (5 February 1987)

FEDERAL COURT OF AUSTRALIA

Re: ATOMIC SKIFABRIK ALOIS ROHRMOSER
And: THE REGISTRAR OF TRADE MARKS
No. VG218 of 1986
Trade Marks

COURT

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY GENERAL DIVISION
Jenkinson J.

CATCHWORDS

Trade Marks - Failure to lodge notice of opposition within prescribed period - Application for extension of time for lodging notice of opposition - Failure to apply for order of review of decision not to extend time for making application for allowance of further period for lodging notice of opposition.

Words and phrases - "Circumstances beyond the control of the person concerned".

Trade Marks Act 1955 - ss. 49, 130, 131, 135. Patents Act 1982 - s.160. Administrative Decisions (Judicial Review) Act 1977 - s.11.

The King v. The Registrar of Trade Marks; Ex parte J.S. Staedtler

[1936] HCA 27; (1936) 55 C.L.R. 271

Lyons v. Registrar of Trade Marks (1983) 50 A.L.R. 496, 1 I.P.R.
416

Frazers' Patent (1981) 1 R.P.C. 53.

Re Application by Aerovac Co. (Aust.) (1964) 34 A.O.J.P. 1104.

Re Application by Getz Bros. (Australia) Pty. Ltd. (1965) 35
A.O.J.P. 67.

Re Application by Alan Worth (1980) 50 A.O.J.P. 3237.

Roger David Stores Pty. Ltd. v. Sportsgirl Pty. Ltd. (1984)
A.I.P.C. 39266.

HEARING

MELBOURNE
5:2:1987

Counsel for the Applicant: Mrs. S.M. Cameron

Solicitors for the Applicant: Phillips Fox

Counsel for the Respondent: Mr. D. Shavin

Solicitor for the Respondent: Australian Government Solicitor

ORDER

The application be dismissed with costs.

(Note: Settlement and entry of orders is dealt with in O.36 of the Federal Court Rules.)

DECISION

Application for an order of review in respect of a decision of an Assistant Registrar of Trade Marks that extension of the time for lodging notice of opposition to the registration of a trade mark be refused.

2. Section 49(1) of the Trade Marks Act 1955 provides:

"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."

3. Sections 130 and 131 of the Act provide:

"130. Where, by this Act, a time is specified
within which an act or thing is to be done,
the Registrar may, unless otherwise expressly
provided, extend the time either before or
after its expiration."

"131. (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."

4. Acceptance of an application by Sasador Pty. Ltd. for registration of a trade mark was advertised, pursuant to s.47 of the Act, on 11 July 1985. On 31 October 1985 notice of opposition by the applicant Atomic Skifabrik Alois Rohrmoser to registration of the mark was lodged at the Trade Marks Office. On the latter date application was also made to the Registrar to extend the time for lodging that notice of opposition. That application was heard by an Assistant Registrar, Mr. T. Williams, in April 1986. His decision, the subject of the application for an order of review, was made on 2 May 1986.

5. It was contended on the applicant's behalf before the Assistant Registrar that the power conferred on the Registrar by s.131 to extend the time for lodging notice of opposition to registration of a trade mark was exerciseable because the condition specified in paragraph 131(1)(a) had been fulfilled. The time for lodging that notice had expired on 13 October 1985, but sub-section 131(2) preserved the power thereafter. In case the Assistant Registrar should be of opinion that the condition specified in paragraph 131(1)(a) had not been fulfilled, the applicant sought, in the alternative, exercise of the power which it was contended that s.130 conferred on the Registrar to extend the time specified by s.49(1) as that within which application is to be made to the Registrar for allowance by him of a "further period, not exceeding three months", within which to lodge notice of opposition under the latter section. Application for the exercise of that suggested power was first made at the hearing before the Assistant Registrar. The Assistant Registrar considered that the condition specified by paragraph 131(1)(a) had not been fulfilled, and for that reason he concluded that s.131 did not afford power to extend the time prescribed by s.49 for lodging notice of opposition. He considered that the particular provision made in s.49(1) concerning the time within which application might be made to the Registrar for extension by him, pursuant to the provisions of that section, of the time for lodging notice of opposition operated to preclude s.130 from affording the Registrar a source of power to extend the time within which such an application might be made. Accordingly he refused to extend either of the times prescribed by s.49.

6. The originating application in writing to this court specified "the decision ...... refusing to grant an extension of time for the lodgment of Notice of Opposition against trade mark application No. A402509 pursuant to Section 131(1)(a) of the Act" as that in respect of which an order of review was sought. And nothing else in that document suggested that an order of review was sought in respect of the decision not to extend the time prescribed by s.49 for making application for allowance by the Registrar of a further period within which to lodge notice of opposition. Mrs. Crennan, of counsel for the applicant, submitted that she was free to support the application for review, in its unamended form, by a submission that the conclusion of the Assistant Registrar against granting an extension of the time for making the application contemplated by s.49 was erroneous, for that erroneous conclusion was one of several which had prevented the Assistant Registrar from reaching what in the applicant's submission was the correct decision of the question whether extension should be granted of the time for lodging notice of opposition. But the evidence of what occurred before the Assistant Registrar shows that his decision on each of two quite distinct matters, arising under two different statutory provisions, was formally invited in writing by the applicant and was given. The application in writing by which this proceeding was instituted specifies only one of those two decisions and assigns, in the grounds of the application, error only in respect of the Assistant Registrar's consideration of one of the two matters. The latter deficiency might have been cured, for an applicant for an order of review is not limited to the grounds set out in the application : Administrative Decisions (Judicial Review) Act 1977, s.11(6). But in my opinion there were two quite different administrative decisions made by the Assistant Registrar and the making of the decision identified in the originating application could not in my opinion have been influenced by the other decision. The decision identified in the originating application is, and is therein expressed to be, one concerning the exercise of a power conferred by s.131. But if the other decision had been, as the applicant desires to submit that it should have been, in favour of extending the time prescribed by s.49 for making the application contemplated by that section, that favourable decision would not have enabled any consideration to have been given to the exercise of power conferred by s.131. It would have enabled only a consideration of the exercise of power conferred by s.49.

7. Mrs. Crennan sought leave, if the court should consider - as I do - that only by amendment could both decisions be made subject to review in this proceeding, to amend the originating application by adding as a subject of application for an order of review the decision to refuse extension of the time prescribed by s.49 for the application allowed by that section.

8. If the amendment be not allowed, the applicant will not be able to institute any fresh application for an order of review in respect of that decision unless the court exercises in the applicant's favour the power conferred by s.11(1)(c) of the Administrative Decisions (Judicial Review) Act 1977 to allow an extension, until the time when such a fresh application might hereafter be lodged, of the period prescribed by s.11(3)(a) of that Act. That period expired at the beginning of June 1986. Application for leave to make the amendment was made at the hearing on 19 November 1986. No explanation was offered of the applicant's failure to make application for an order of review in respect of the decision either within the time prescribed by s.11(3) of the Administrative Decisions (Judicial Review) Act 1977 or, thereafter, while this proceeding was pending in the Court. Although the respondent would suffer no prejudice by the grant of the amendment which could not be compensated by an order with respect to costs, Sasador Pty. Ltd. would suffer substantial impairment of the considerable benefit, which the provisions of s.11 are designed to confer on those "interested in a decision" (to borrow a phrase from s.12(1)), of reasonably prompt resolution of a doubt concerning the legal efficacy of an administrative decision. My conclusion is that I should not grant the application for amendment of the originating document.

9. At the hearing of this proceeding submissions were made, against the possibility that leave to amend the originating application might be granted, by counsel for the parties for and against the ground on which the applicant sought to base an application for an order of review in respect of the decision not to extend the time prescribed by s.49 for making an application of the kind for which that section makes provision. That prescription, by the phrase "on application made to him within the first-mentioned period", answered the description contained in s.130, according to Mrs. Crennan's submission, and neither in s.49 nor elsewhere in the Trade Marks Act 1955, she contended, was provision made which would displace the grant of power that s.130 confers on the Registrar "unless otherwise expressly provided". This submission was said to be not inconsistent with what the High Court decided in The King v. The Registrar of Trade Marks; Ex parte J.S. Staedtler [1936] HCA 27; (1936) 55 CLR 271, on the ground that in that case no application had been made for extension of the time prescribed for the making of an application for extension of the time for lodging notice of opposition, but only an application of the latter description. But in my opinion the reasons for judgment of Dixon J., of Evatt J. and of McTiernan J. make clear the conclusion of each that neither of the times specified in what is now s.49 as "a time ... within which an act or thing is to be done" is susceptible of extension by resort to what is now s.130. In particular Evatt J. rejected the very reasoning which underlies the submission advanced on the applicant's behalf. Speaking of the provision in what is now s.49 that the notice of opposition may be lodged within "such further time not exceeding three months as the Registrar on application made within the first period of three months allows", his Honour observed (55 C.L.R. at 275) : "This added provision includes interrelated matters and should be regarded as a unit and not analyzed into separate and independent powers." If the Assistant Registrar's decision to refuse extension of the time prescribed for an application under s.49 had been made, by amendment, a subject of application for review, I would have affirmed the correctness of the decision.

10. I turn to consider the application for review of the decision that the condition specified by s.131(1)(a) had not been fulfilled and that therefore the power which that section might have conferred was not available. The application for exercise of that power had been presented to the Assistant Registrar on the footing that in the circumstances disclosed by the evidence before him the patent attorney who had been instructed by the applicant to lodge notice of opposition was to be regarded as the person indicated by the expression "person concerned" in s.131(1)(a). The Assistant Registrar dealt with the application on that footing, influenced to that course not only by the submissions on behalf of the applicant, but also by the reasoning in several reported applications of the same kind. (See Re Application by Aerovac Co. (Aust.) (1964) 34 AOJP 1104; Re Application by Alan Worth(1980) 50 AOJP 3237; Re Application by Getz Bros (Australia) Pty. Ltd. (1965) 35 AOJP 67; Roger David Stores Pty. Ltd. v. Sportsgirl Pty. Ltd. (1984) AIPC 39266) But one of the grounds of the application for review was contradictory of what had been submitted on the applicant's behalf before the Assistant Registrar. The ground numbered 4 stated:

"In reaching his decision the Respondent
wrongly acted on the basis that the 'person
concerned' within the meaning of Section
131(1)(a) of the Act was not the Applicant."

And Mr. Shavin, of counsel for the Respondent, supported the submission advanced before me by Mrs. Crennan that the expression "person concerned" in s.131(1)(a) designates the person indicated by the Act as him by whom the "act or step in relation to an application for the registration of a trade mark in proceedings under this Act (not being proceedings in a court)" is to be taken. Reliance was placed on the terms of sub-sections (1), (2) and (3) of s.160 of the Patents Act 1952 as indicating that the expression "person concerned" did not comprehend, as it had been assumed before the Assistant Registrar that it did comprehend, an agent of the person in whose name such an "act or step" was to be taken where responsibility for taking the step or doing the act had devolved upon the agent. Those three sub-sections of s.160 of the Patents Act 1952 provide -

"(1) Where, by reason of an error or omission
on the part of an officer or person employed
in the Patent Office, an act or step in
relation to an application for a patent 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 Commissioner shall extend
the time for doing the act or taking the step.
(2) Where, by reason of -

(a) an error or omission on the part of
the person concerned or of his
agent or attorney; or

(b) circumstances beyond the control of
the person concerned,

an act or step in relation to an application
for a patent 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 Commissioner may,
upon application by the person concerned, but
subject to this section, extend the time for
doing the act or taking the step.

(3) The time for the doing of an act or the
taking of a step may be extended under
sub-section (1) or (2) although that time has
expired."

11. Connections between the histories of the Patents Act and the Trade Marks Act, to some of which Beaumont J. referred in Lyons v. Registrar of Trade Marks (1983) 50 ALR 496 at 504-506; 1 IPR 416 at 424-426, strengthen the case, which the similarities between s.131 of the Trade Marks Act and s.160 of the Patents Act suggest, for according to the expression "person concerned" the same meaning in the two Acts. If the same meaning is adopted, then the exegesis of that meaning which s.160(2)(a) of the Patents Act supplies compels the conclusion that in s.131(1)(a) of the Trade Marks Act there is indicated only the person in whose name the step is to be taken or the act done. That is the conclusion which I have reached. It is, I think, confirmed also by the use, in paragraphs 135(1)(f) and (g) of the Trades Marks Act 1955, of the expressions "applicant ... concerned" and "opponent concerned", who in s.135 are distinguished from those who may act as their agents.

12. So far Mrs. Crennan and Mr. Shavin were at one. But they differed as to what the conception was to which paragraph 131(1)(a) gave expression.

13. A patent attorney had been engaged by the applicant to lodge notice of the applicant's opposition. An employee of the patent attorney negligently failed in the performance of her duty. But for that failure the notice would have been lodged in time. None of the applicant's officers or servants had, or could have been expected to have had, any means of detecting that failure at any relevant time. Therefore, in Mrs. Crennan's submission, it was "by reason of circumstances beyond the control of the" applicant that the notice was not lodged in time. She was able to cite in support of her submission a decision (Frazer's Patent (1981) R.P.C.53) of the Patents Court upon s.28(3) of the English Patents Act 1979, which provides:

"If the comptroller is satisfied that -

(a) the proprietor of the patent took
reasonable care to see that any renewal
fee was paid within the prescribed period
or that that fee and any prescribed
additional fee were paid within the six
months immediately following the end of
that period, and

(b) those fees were not so paid because of
circumstances beyond his control,

the comptroller shall by order restore the
patent on payment of any unpaid renewal fee
and any prescribed additional fee."

A proprietor, one Frazer, having engaged a firm of solicitors to act on his behalf in relation to a patent, the solicitors failed either to pass on to Mr. Frazer a reminder from the Patent Office that the renewal fees were due or to pay the fees themselves. The Assistant Comptroller concluded ((1981) R.P.C. at 55): "That the fees were not paid was because of circumstances which were within the solicitor's control and hence paragraph (b) is not complied with." But the Deputy Judge (Anthony Walton, Q.C.) reasoned to a contrary conclusion. He found that it was an exercise of reasonable care on the part of the proprietor to entrust the renewal of his patent to a solicitor and that the requirements of paragraph (a) of s.28(3) had been satisfied. He concluded ((1981) R.P.C. at 56):

"For the purposes of section 28(3) of the
Patents Act 1977 in my judgment the ordinary
rule that a principal stands in the shoes of
his agent does not apply. The agent is the
system that he sets up and however many agents
he sets up they are all part of the system.
The only question is whether those agents
constitute a reasonable system. I am
satisfied that in this case the solicitor did.
It is an unusual case, as Mr. Jacob rightly
concedes; but in the circumstances of this
particular case, I am satisfied that for a
patentee of Mr. Frazer's type, in the
situation in which Mr. Frazer was, this
solicitor in those circumstances did
constitute a reasonable system. It having
broken down, in my judgment, the Assistant
Comptroller should be satisfied that
nevertheless the proprietor of the patent took
reasonable care and the fees were not paid
because of circumstances beyond his control."

14. It might be thought that the reasoning of the Deputy Judge finds support, in relation to paragraph 131(1)(a), in the distinction which s.160(2) of the Australian Patents Act 1952 draws between "the person concerned" and "his agent or attorney." But Mr. Shavin's submission was in contradiction of that reasoning, and in support of his submission he sought to make quite a different use of s.160(2).

15. Mr. Shavin's basic submission was that s.131 was, as it has been described by Beaumont J. in Lyons v. Registrar of Trade Marks (1983) 50 ALR 496 at 507, "a force majeure provision", and that the circumstances to which reference was intended by paragraph 131(1)(a) were those of which it could be predicated that they stood outside the spheres of action available to the person interested and his servants and agents. It was only circumstances which neither he nor any person acting on his behalf could "control" by changing them that answered the description contained in the paragraph, according to Mr. Shavin's submission. It is not enough, if that construction of paragraph 131(1)(a) be correct, to show that the circumstances were such that the exercise by the person concerned of reasonable care, to ensure that the "act or step ...... required to be done or taken within a certain time" would be so done or taken, had failed to achieve that object.

16. One of the arguments advanced by Mr. Shavin in support of that construction of paragraph 131(1)(a) was that s.160(2) of the Patents Act 1952 demonstrated, so Mr. Shavin contended, that error or omission on the part of an agent or attorney could not fall within the conception expressed by the phrase "circumstances beyond the control of the person concerned" in paragraph 160(2)(b), and so not in paragraph 131(1)(a) either. Paragraphs (a) and (b) of s.160(2) were alternatives, Mr. Shavin said, and that which fell within (a) was not within (b).

17. I do not think that (a) and (b) of s.160(2) can be seen, before the proper construction of paragraph (b) has been ascertained, to state wholly exclusive categories in its two lettered paragraphs. Turning to s.131(1), there seems good ground for thinking that, whatever be the correct construction of the phrase in paragraph (a), virtually every case within paragraph (b) would fall also within paragraph (a).

18. In the context in which it is found, the expression"circumstances beyond the control of the person concerned" does in my opinion designate - 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 paragraph 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.

19. If those conclusions be correct, the decision under review was correct, whatever error may have attended its making The application will be dismissed with costs.