TRADE MARKS ACT 1995 DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS Re Objection by Ozdaq Research Pty Ltd to appl by axv16798

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									                             TRADE MARKS ACT 1995

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

Re:    Objection by Ozdaq Research Pty Ltd to applications by The Nasdaq Stock
       Market, Inc for extensions of time to serve evidence in support of its
       oppositions to registration of trade mark applications 812101, 812103,
       844338, 844339 and 844340 filed in the name of Ozdaq Research Pty Ltd

Background
This decision relates to objections by Ozdaq Research Pty Ltd ('Ozdaq') to
applications for extensions of time by The Nasdaq Stock Market, Inc ('Nasdaq') to file
evidence in support of its oppositions to Ozdaq's trade mark applications 812101,
812103, 844338, 844339 and 844340. For convenience, I have listed background
information relating to the five trade mark applications in the following table.

Trade Mark No   Trade Mark                   Class            Date filed   Date advertised
                                                                           accepted      in
                                                                           Official Journal
                                                                           of Trade Marks
812101          WORLDAQ HI TECH 16, 35, 36, 42                01/11/99     14/09/00
                INDEX
812103          OZDAQ    HI     TECH 16, 35, 36, 42           01/11/99     12/10/00
                INDEX
844338          OZDAQ and dot device 16, 35, 36, 42           31/07/00     30/11/00
844339          OZDAQ       HI  TECH 16, 35, 36, 42           31/07/00     30/11/00
                INDEX and dot device
844340          OZDAQ SECURITIES 16, 35, 36, 42               31/07/00     30/11/00
                and dot device

Nasdaq opposed registration of each of the trade mark applications. With the
exception of that in respect of trade mark application 812103, Notice of Opposition
was filed within the three months allowed under regulation 5.1 of the Trade Marks
Act and Regulations 1995 ('the Act', 'the Regulations'). Again for convenience, I have
set out the relevant date information in tabular form.
                                                 2

Trade          Mark    Date     Notice      of       Date     Notice    of   Date     Evidence   in
Application No         Opposition due                Opposition filed        support due
812101                 14/12/00                      14/12/00                14/03/01
812103                 12/01/01                      24/01/01 following 24/04/01
                                                     allowance of late
                                                     extension of time
844338                 28/02/01                      21/02/01           21/05/01
844339                 28/02/01                      21/02/01                21/05/01
844340                 28/02/01                      21/02/01                21/05/01


As provided by regulation 5.7(1), evidence in support of each opposition was due to
be served three months from the date of filing Notice of Opposition.


On each application, the opponent applied for, and was granted, a three-month
extension of time to serve evidence in support under regulation 5.15. Ozdaq did not
object to allowance of the extension in respect of trade mark application 812101, but
did object to the granting of extensions in respect of the other applications. Despite
these objections, a delegate of the Registrar granted the extensions. A second three-
month extension of time was requested in each case, and Ozdaq again objected. All
extensions were subsequently granted. Nasdaq then requested a third extension of
time. Relevant extension dates are set out below.


Trade Mark No     Evidence        in   1st Extension of        2nd Extension of   3rd Extension of
                  support due          time approved to        time approved to   time requested to
812101            14/03/01             14/06/01                14/09/01           14/12/01
812103            24/04/01             24/07/01                24/10/01           24/01/02
844338            21/05/01             21/08/01                21/11/01           21/01/02
844339            21/05/01             21/08/01                21/11/01           21/01/02
844340            21/05/01             21/08/01                21/11/01           21/01/02


The practice of the Registrar as set out in an Official Notice in the Official Journal of
Trade Marks dated 18 November 1999 ('the Official Notice') is to require declaratory
support for an extension of time for serving evidence in support, where that extension
takes the total time beyond nine months. Declaratory support did not accompany the
third extension request in respect of trade mark application 812101, although the
                                            3

extension would take the total time to serve evidence to 12 months. A delegate of the
Registrar advised Nasdaq of the deficiency, and the supporting statutory declaration
of Wendy Susan Burnett, solicitor of Allens Arthur Robinson, dated 23 October 2001
('the first Burnett declaration') was filed on 23 October 2001. The applications were
processed, and Ozdaq allowed 14 days in which to object to, or to request to be heard
in relation to, the extensions of time.


On 16 and 30 November 2001, Ozdaq filed submissions objecting to the extension of
time in each case, and requested to be heard. A hearing was scheduled for 4 February
2002.


Prior to the hearing, the opponent filed with the Trade Marks Office ('TMO') and
forwarded to Ozdaq four statutory declarations which it said constituted its evidence
in support in respect of the oppositions. Those declarations are:


                    Declarant                   Dated               Filed
           John Wall, President of        23 October 2001 21 November
           Nasdaq International, Ltd                      2001
           John Wall, President of        3 January 2002  9 January 2002
           Nasdaq International, Ltd
           Michael Jon Greig, Partner     21 January 2002   21 January 2002
           of Allens Arthur Robinson
           Mark Christopher Malinas,      21 January 2002   21 January 2002
           Articled Clerk of Allens
           Arthur Robinson

A request for a fourth two-month extension of time was filed on 14 December 2001 in
respect of trade mark application 812101. That request was supported by a statutory
declaration of Wendy Susan Burnett, dated 14 December 2001 ('the second Burnett
declaration'). The opponent advised that this statutory declaration was also relevant to
the third applications for extensions of time in respect of trade mark applications
812103, 844338, 844339 and 844340, and to the hearing on those matters. This was
confirmed by a third statutory declaration of Wendy Susan Burnett, ('the third Burnett
declaration') dated 9 January 2002.
                                           4

The hearing was conducted in Canberra on 4 February 2002. Mr Andrew Crowe of
Counsel, instructed by Walker Smith & Breen, Solicitors, appeared on behalf of
Ozdaq. Mr Colin Oberin of Allens Arthur Robinson, Patent & Trade Mark Attorneys,
appeared on behalf of Nasdaq.


At the hearing, Mr Oberin addressed some of his submissions to allowance of the
fourth extension of time Nasdaq requested in respect of trade mark application
812101. However, Ozdaq requested the hearing in relation to the third extensions of
time and I did not indicate at the hearing that I was prepared to consider the fourth
extension request at the same time. I will therefore confine my decision to the third
extension requests.

Submissions

On behalf of Ozdaq
Mr Crowe argued that the reasons provided to support the extension requests were
simply not sufficient to justify allowance of extensions of time at this stage of
proceedings. He said it was inappropriate for Nasdaq to seek to rely on the fact that
evidence had now been put forward in order to have those extensions allowed. The
nature of that evidence, he said, showed that it could have been obtained much earlier.
He submitted that Nasdaq had always waited until the deadlines to file its extension
requests and the overall delays in the proceedings had caused serious inconvenience
to Ozdaq's business.    To support this contention, Mr Crowe filed the statutory
declaration of Emmanuel George Cassimatis, Director of Ozdaq, dated 1 February
2002. Mr Crowe then challenged the seriousness of the oppositions, and suggested
the public interest would best be served by refusing the extensions.

On behalf of Nasdaq
Mr Oberin made quite extensive submissions on behalf of Nasdaq. Pointing to earlier
decisions of the courts and the Registrar, he submitted that the extensions would not
make the total time allowed excessive. He said that Nasdaq had made out a proper
case for needing extra time, the reasons put forward being supported by the Burnett
declarations. He then expanded on the reasons put forward in those declarations. He
argued that Nasdaq had demonstrated its opposition was serious and refusal of the
extensions would cause it considerable inconvenience. The public interest, he said,
                                              5

was best served by allowing available evidence in, and Nasdaq had now finalised its
evidence.
I will refer to these submissions later under the heading Reasons.

The law
Regulation 5.7(1), which provides for the service of evidence in support in opposition
proceedings, reads as follows:
        Evidence in support
         5.7 (1) If the opponent intends to rely on evidence in support of the
         opposition, the opponent must serve a copy of the evidence in support on the
         applicant within 3 months from the day on which the notice of opposition is
         filed.

The 3-month statutory period thus allowed may be extended as provided by regulation
5.15. In so far as it is relevant, that regulation reads:

Extension of period to serve evidence and service of further evidence
        5.15 (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).
                                               6

Reasons
Regulation 5.15(3) requires that before granting an extension of time, I must be
reasonably satisfied that the extension is appropriate, that service requirements have
been met, and that both parties have been allowed an opportunity to make
representations.

Service Requirements and Opportunity to make representations.

On 16 November 2001 Ozdaq requested to be heard in relation to the extension of
time requests on trade mark applications 812101 and 812103. On 30 November 2001
Ozdaq acknowledged that it had been served with copies of the extension applications
in respect of trade mark applications 844338, 844339 and 844340, and requested to be
heard on those extensions. Both parties were represented at the hearing that was
conducted before me on 4 February 2002.


I am therefore satisfied that service requirements were met and both parties had a
reasonable opportunity to make representations in relation to the extension
applications (reg 5.15(3)(a) and (b)).


Whether the extension is appropriate
The criteria to be applied, when deciding whether an extension of time to serve
evidence in an opposition proceeding is appropriate, have been established in cases
such as Vangedal Nielsen and Others v Smith (Commissioner of Patents) and Another
(1980) 33 ALR 144 and Lyons (trading as Mitty's Authorised Newsagency) v
Registrar of Trade Marks (1983) 1 IPR 416. In Australian Olympic Committee v
Brennan (1994) 30 IPR 44 Deputy Registrar Hardie set out those criteria as the:
    •   amount of time so far allowed
    •   reasons put forward for needing the extension of time
    •   seriousness of the opposition
    •   relative inconvenience to the parties, and the
    •   public interest.
                                           7

The amount of time so far allowed
The opponent has requested, and been allowed, two three-month previous extensions
of time in respect of each application. If the current extensions are granted, the total
times allowed for preparation and service of evidence in support will be as follows:
                   812101 and 812103                      12 months
                   844338, 844339 and 844340              11 months
Mr Oberin submits these amounts of time are not excessive. To support his argument
he referred me to Bundy American Corp v Rent-A-Wreck (Vic) Pty Ltd (1985) 5 IPR
307 ('Bundy American v Rent-A-Wreck'), Yo-Merry Todd v Turner Entertainment Co
[2001] ATMO 69 (7 August 2001), and three other cases where similar or larger
amounts of time were allowed.


I agree with Mr Oberin on this point. While 12 months is beyond the benchmark limit
set out in the Official Notice, it is not an excessive amount of time. The Registrar has
regularly allowed extensions at the 12-month stage of proceedings if the reasons are
sufficiently compelling and there are no countervailing circumstances.

The reasons put forward for needing the extensions of time
Nasdaq's reasons for seeking the extensions are that it needed further time to review,
settle and serve draft statutory declarations which had been provided to US principals
by the Australia attorneys. It expected further delays in finalising the evidence due to
the shutdown of services in the United States resulting from the terrorist attacks on 11
September 2001. In particular, Nasdaq expected delays due to the partial collapse on
12 September of its New York headquarters.


The first, second and third Burnett declarations have been provided in support.


Mr Crowe argued that the 11 September reasons advanced by Nasdaq are simply
inadequate. He pointed out that Nasdaq has provided no explanation of how the
terrorist attacks, or the closure of Nasdaq's headquarters led to delays in the gathering
and completion of the Australian declarations of Greig and Malinas, or the
declarations of Mr Wall, who resides in Washington. He reminded me of the rising
onus on an extension applicant to support each successive extension application with
sufficiently compelling reasons - Dermatech Laboratories Pty Ltd v Johnson &
                                            8

Johnson (2000) 49 IPR 419. In requesting its second extension of time, he said,
Nasdaq indicated that the gathering of evidence had commenced and a questionnaire
had been sent to its United States attorneys for completion.


I take Mr Crowe's point on this issue. There is a rising onus on an extension applicant
to show progress in the preparation of evidence and there was some paucity in the
case originally put forward by Nasdaq.          The first Burnett declaration gave 11
September as the reason for expected delays but gave no detail. The link between the
closure of Nasdaq's premises and the delay in finalising evidence was not explained.
Nor was it explained whether Nasdaq needed further time to collect evidence or
simply to have already-prepared evidence executed. More information at the outset
would have been helpful.


The second Burnett declaration addresses the deficiencies to some extent but leaves it
to one's imagination to determine how the building closure led to the evidence being
delayed.


Mr Oberin explained that the events of 11 September, and the closure of Nasdaq's
building, had placed considerable pressure on Mr Wall. Although the declarations of
Greig and Malinas were prepared in Australia, he said, they needed to be sent to the
United States for approval.     Similarly, the Wall declarations needed review and
execution in the United States. He reminded me of the layers of complexity added to
proceedings where a party is domiciled overseas as discussed in Apple Computer v
Imac Support Services (2001) AIPC ¶91-718 ('Apple Computer v Imac'), and pointed
to the fact that all evidence had now been completed. I consider Mr Oberin has
provided an adequate explanation of the situation, and I am satisfied Nasdaq has
satisfied the onus placed upon it to provide sufficient reasons.


Taking into account the Burnett declarations, and Mr Oberin's explanation, I am
satisfied that the reasons provided are sufficiently compelling to justify allowance of
the extensions.
                                            9

The seriousness of the opposition
Mr Crowe questioned the seriousness of the opposition. Pointing out that Nasdaq had
not instigated any court proceedings in the matter, Mr Crowe said the opponent
appeared to be content to stretch out the opposition time for as long as possible
without doing anything to prevent Ozdaq carrying on its business in the challenged
marks. He reminded me that I must be satisfied that the opposition was serious and
that the extension application was not simply an attempt to delay - as per Australian
Food & Beverage Group Pty Ltd v Cadbury Schweppes Pty Ltd (1997) 39 IPR 100. I
agree with Mr Crowe on the latter point, but I do not think it relevant that Nasdaq has
not commenced court proceedings against Ozdaq.

Nasdaq's Notice of Opposition lists various grounds, including issues of deception
and confusion which have been addressed in the four statutory declarations now put
forward as evidence in support. As argued by Mr Oberin, Nasdaq's actions in this
regard are sufficient to demonstrate that the opposition is of a serious nature.

Relative inconvenience to the parties
Both parties made strong submissions on this point. The Cassimatis declaration
points to the considerable inconvenience, stress and loss of potential revenue Ozdaq
has suffered as a result of the opposition proceedings. Mr Crowe confirmed this, and
commented also on the inadequate compensation the relevant dates of registration, if
granted, would be likely to provide. I accept Mr Crowe's submissions in this respect,
and the evidence of Mr Cassimatis.

Conversely, Nasdaq has indicated that its evidence in support has been delayed as a
result of disruptions caused by damage to, and subsequent temporary closure of, its
New York premises. Since requesting the extensions of time, it has demonstrated
good faith by completing and putting forward its evidence. Refusal of the extension
applications would, as Mr Oberin submits, shut out that evidence and would
effectively terminate the opposition proceedings. This would cause considerable
inconvenience to Nasdaq.


I am mindful, also, that all of the extension periods sought by Nasdaq had elapsed
prior to the hearing being conducted.        Taking this into account, I consider the
                                            10

inconvenience Ozdaq is now likely to suffer if the extensions are allowed is
considerably less than the inconvenience a refusal will cause Nasdaq.

Public interest
I agree with Mr Oberin's argument that the public interest is paramount in matters
where likelihood of deception and confusion is alleged, and is best served if both
parties are able to present their evidence and arguments fully. Cases such as Bundy
American v Rent-A-Wreck, supra, and Pioneer Hi Bred Corn Co v Hy-Line Chicks Pty
Ltd [1979] RPC 410 support his argument in this respect. Mr Oberin also argued that,
as per Apple Computers v Imac, supra, the Registrar should be reluctant to deny a
party an extension where there is a reasonable prospect that evidence will be served.


Mr Crowe, on the other hand, urged me to consider the nature of the evidence Nasdaq
has put forward before deciding whether or not to allow the extension - A Goninan &
Co Limited v The Commissioner of Patents and Anor (1997) AIPC ¶91-330. He
suggested that the declarations comprising the evidence in support now provided by
Nasdaq are very simple and do not say anything of great import.

I am not prepared to comment on the amount of weight the four statutory declarations
comprising Nasdaq's evidence should be given in any eventual decision on the
substantive issues of these cases. I think it is sufficient for me to note that issues of
deception or confusion are addressed in those declarations. As full investigation of
the substantive issues is desirable, I am satisfied the public interest lies in granting the
extensions of time, thus allowing the available evidence into proceedings.

Conclusion
Having considered the relevant criteria, I am reasonably satisfied that the extensions
of time are appropriate, and the requirements of regulation 5.15(3)(c) have been met.

Decision
As registrar's delegate, I am satisfied the requirements of regulation 5.15(3)(a), (b)
and (c) have all been met. I therefore grant the requested extensions of time as
follows:
                         11

Trade Mark Application    Extension of time granted to
812101                    14 December 2001
812103                    24 January 2002
844338                    21 January 2002
844339                    21 January 2002
844340                    21 January 2002




Frances Aarnio
Senior Examiner

26 March 2002

								
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