Bombala Council Keeps its Platypus

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Case - Wilkshire v Registrar of Trade Marks [2009] FCA 1222.

I felt compelled to report this case because I often have to convince prospective clients of the dangers of self representation. This case shows what can go wrong with self-representation in an adversarial matter. Legal details and the need to check emotions at the door are often overlooked without proper representation.

This case dealt with two motions. One was an application for summary judgement against Wilkshire on his application to have Bombala Council's trade mark cancelled. The other was for Wilkshire's proceedings to be dismissed.

The court was satisfied that summary judgement should be given against Wilkshire.

I'm neither a lawyer nor a barrister, so this post focuses on the trade mark issues.

Wilkshire is the owner of a trade mark for education; providing of training; entertainment, sporting and cultural activities for people who are interested in fossicking for gold being services in class 41. The trade mark includes a platypus and has a registration date of 30 March 2001. In 2003, Bombala Council applied for registration of its mark in class 35 for tourism promotions and advertising. Wilkshire opposed the application by Notice of Opposition on 18 July 2003. He made a declaration alleging that a number of people giving evidence for the Council had colluded and fabricated evidence. Australian National Geographic had opposed registration of similar mark by the Council back in 1995. That dispute was settled and Nat Geo redesigned the Council's logo and assigned it to Council on 28 April 1997. This was disputed by Wilkshire.

In 2006, Wilkshire's opposition was dismissed and costs were ordered against him. The court noted that the Delegate found that the services performed by Wilkshire were not "the same kind of thing" as those for which Council sought registration. At that stage, the Act had not yet been amended to introduce the opposition ground of an application being made in bad faith. Wilkshire appealed to the Federal Court. In the appeal he raised lack of impartiality and collusion. Negotiations ensued. Council's solicitors made an offer of settlement. Wilkshire agreed to the terms. That appeal resulted in orders dismissing the appeal, ordering costs of $30 000 against Wilkshire. The Court then noted the undertakings made by Wilkshire.  Those undertakings were not to interfere with Council's application to register its trade mark and not to threaten the Council with any form of action (shortened).

Two days before the consent orders, Wilkshire filed five new trade mark applications. These were very similar to the trade mark referenced above.  The Council opposed the registrations. The Delegate refused to register the trade marks citing bad faith (the ground had by then been introduced). He observed that Wilkshire had previously recognised the trade marks as the property of another. In the meantime, Wilkshire had commenced proceedings to have Council's registered trade mark cancelled. Wilkshire's supporting affidavit was filled with allegations of lack of impartiality and collusion. It even raised possible corruption by extortion or bribery on the part of the Delegate.

Section 88 of the Trade Marks Act governs rectification of the register. Appositely, section 88(1)(a) sets out that rectification can be cancellation of a registration. Section 88(2) sets out that the application may be made on a number of grounds it enumerates and on no other grounds. Unfortunately for Wilkshire, his framing of the application did not include any of the grounds set out in Section 88(2). One of the grounds is that a registration can be cancelled on any of the grounds on which its registration could have been opposed. Wilkshire had attempted to rely on the bad faith provisions. At the time when the Council's application was accepted for registration, the bad faith ground was not available. As a result, it was a simple matter for the court to give a summary judgement against Wilkshire.

Clearly Wilkshire was highly emotional throughout the case. The Court made a number of pointed references to his allegations, hinting at their lack of verity. With proper counsel, Wilkshire could have avoided significant cost orders and possibly the wasted effort and emotion associated with legal proceedings. As far as the details of the case are concerned, it would have been readily apparent to legal counsel that the ground for cancellation was not available.

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"Skypal" deceptively similar to "Skypol"

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Patent Office Decisions - September 2009

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In Terumo Corporation v B.Braun Melsungen AG [2009] APO 17. Melsungen objected to a request for an extension of time by Terumo to lodge a Statement of Grounds and Particulars. The Statement had been sent by fax one day late. The assistant for the opponent's attorney forgot to fax a copy of the Statement to Melsungen.

One of the grounds for obtaining an extension is the occurrence of an error and that error must be the cause of the failure to meet the deadline. The Delegate held that "forgetting" was the most basic of errors and it was the cause of the delay. Thus, the extension was granted. For more information on extensions of time, see my post of 12 April 2008.

This case has a useful summary of the requirements of success in an extension of time application.

In Novozymes A/S v North Carolina State University and Bioresource International, Inc. [2009] APO 18 (9 September 2009) Novozymes opposed the grant of a patent application filed by the university for improving the growth of poultry.

It is possible to request re-examination of a patent application. A patent examiner will accept a patent application if he or she believes that the invention is patentable. Instead of opposing the application, you can request that the application be re-examined if you disagree with the examiner. Re-examination is discretionary.

Usually, the request would be met. However, in this case, the Delegate said that re-examination would just slow the opposition process down as that would have to be put on hold until the re-examination was complete. This delay would not be in the public interest, which is that opposition proceedings be as speedy and as cost-effective as possible. Please see my post of 23 June 2009.

In David Gerard Clark v Ronald Neville Langford [2009] APO 19 Mr Langford requested an extension of time to pay a 6th year renewal fee. Mr Clark opposed the extension.

Mr Langford instructed Mr Smith of PSL Management, a consultancy based in Singapore, to pay the renewal fee. Mr Smith said that he was verbally instructed to pay the renewal fee. However, due to health issues he inadvertently failed to pay the fee.

The Delegate emphasized that there must have been an intention to pay the renewal fee and that there must have been an "error or omission" that led to the failure to pay the renewal fee. In this case, Mr Langford managed to show that there had been an intention. However, Mr Smith's statement merely set out that he inadvertently omitted to arrange payment. No details of how this happened were supplied. The Delegate said that it was plausible that the failure to pay the renewal fee could have been in the absence of a relevant error. As a result, the Delegate was not satisfied that an extension of time was appropriate.

It is very important that if you are attempting to get an extension of time, you make it clear that there really was an error or an omission and that it was connected to the failure to meet the deadline.