FEDERAL COURT OF AUSTRALIA Australian Olympic Committee Inc v Calder [2000] FCA 943 AUSTRALIAN OLYMPIC COMMITTEE INC v ALAN ARCHIBALD CALDER N 603 of 2000 SACKVILLE J 12 JULY 2000 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 603 OF 2000 BETWEEN: AUSTRALIAN OLYMPIC COMMITTEE INC APPLICANT AND: ALAN ARCHIBALD CALDER RESPONDENT JUDGE: SACKVILLE J DATE OF ORDER: 12 JULY 2000 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The time for lodging of an appeal from the decision of the delegate of the Registrar of Trade Marks, in relation to Trade Marks application 775469(39) filed in the name of Alan Archibald Calder, be extended until 4 pm on 14 July 2000. 2. The solicitors for the applicant pay the respondent's costs of the motion, as taxed or agreed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 603 OF 2000 BETWEEN: AUSTRALIAN OLYMPIC COMMITTEE INC APPLICANT AND: ALAN ARCHIBALD CALDER RESPONDENT JUDGE: SACKVILLE J DATE: 12 JULY 2000 PLACE: SYDNEY REASONS FOR JUDGMENT The Application 1 This is an application by the Australian Olympic Committee Inc ("AOC"), made pursuant to Federal Court Rules ("FCR") O 58, r 4(3), to extend the time for the filing of a notice of appeal from a decision of a delegate of the Registrar of Trade Marks given on 14 April 2000. By that decision, the Registrar's delegate directed that an application by Alan Archibald Calder (the respondent to the application in this Court) to register a trade mark in respect of travel arrangements and tours in class 39 of Schedule 1 to the Trade Marks Regulations, proceed to registration. Mr Calder's application had been opposed by the AOC on the ground that the mark was deceptively similar to the Olympic symbol, an outline of which is set out in the Schedule to the Olympic Insignia Protection Act 1987 (Cth). By s 5(1) of that Act the AOC is taken to be the owner of the copyright in the Olympic symbol. 2 FCR O 58 provides for an appeal from a decision of the Registrar of Trade Marks. Any such appeal must be instituted within twenty-one days after the date of the decision appealed from or within such further time as the Court, on application, fixes: O 58 r 4(2). FCR O 58 r 4(3) provides as follows: "Application may be made to the Court to extend the time for filing, by notice of motion: (a) made at any time – unless a law of the Commonwealth provides otherwise; and (b) supported by affidavit showing special circumstances." No Commonwealth law "provides otherwise" for the purposes of FCR O 58 r 4(3). The Course of Events 3 The AOC's solicitors, Browne & Co, were notified of the delegate's decision by a letter dated 14 April 2000 which, for some reason, was not received by them until 19 April 2000. The letter was read by Mr Raymond, an employed solicitor with Browne & Co, who had responsibility for carriage of the matter. 4 At about the time he received the letter, Mr Raymond consulted the Trade Marks Act 1955 (Cth) and the Trade Marks Regulations with a view to determining the time limit within which an appeal had to be brought. As Mr Raymond correctly observed in his affidavit, both are silent on the question. Mr Raymond apparently referred to a loose leaf service but could find no reference to a time limit for appeals. So far as the evidence goes, he seems to have made no further inquiries and, in particular, to have made no inquiries of the solicitor supervising him. 5 On 2 May 2000, Mr Raymond wrote to the Director of Marketing of the AOC, Mr Grover notifying him of the delegate's decision. The letter, which Mr Raymond himself signed, advised that the AOC should seriously consider an appeal. The letter noted that the Trade Marks Regulations were silent as to the time period for an appeal but recommended that advice be obtained from counsel. On 4 May 2000, Mr Raymond received written instructions from Mr Grover to file an appeal. The letter from Mr Grover indicated that the AOC did not consider it necessary to seek advice from counsel. 6 According to Mr Raymond, he had a number of conversations with Mr Grover between 4 May 2000 and 18 May 2000, but Mr Grover continued to be reluctant to brief counsel. Ultimately, on 24 May 2000, Mr Raymond became aware of the twenty-one day period for appeals prescribed by FCR O 58 r 4(2). He realised then that the period prescribed for the filing of an appeal had expired and that the AOC would have to apply for an extension of time within which to file an appeal. 7 On 25 May 2000, Mr Raymond sent a facsimile to Mr Calder advising that instructions had been received from the AOC to appeal against the decision of the delegate of the Registrar of Trademarks. The letter did not specify that an application seeking an extension of time within which to file an appeal was to be lodged. On the same day, Mr Raymond wrote to the Registrar of Trademarks advising that instructions had been received from the AOC to appeal against the decision of the delegate. 8 At about the same time (the affidavit is not precise on this point), Mr Raymond briefed counsel to prepare a motion to extend the time in which to appeal and an affidavit in support. Counsel's advice was received on 1 June 2000. The motion and supporting affidavit were filed on 7 June 2000. No reason was given for the further delay of six days in filing the motion. The Principles 9 The principles governing an application for an extension of time in a case such as the present were summarised by Branson J in Kabushiki Kaisha Universal v Aristocrat Leisure Industries Pty Ltd [1998] AIPC 91-396, at 37,127-37,128. I am content to adopt her Honour's summary: "The terms of O 58 r 4(3)(b) indicate that an extension of time pursuant to O 58 r 4(2) is only to be granted where special circumstances are shown. Special circumstances are circumstances which take the case out of the ordinary so as to justify departure from the general rule that an appeal is to be instituted within twenty-one days from the date of the decision (cf. the discussion by the Full Court of the expression 'for special reasons' appearing in O 52 r 15(2) in Jess v Scott (1986) 12 FCR 187 at 195). The power given by O 58 r 4 to grant an extension of time within which to file an appeal is a grant of a flexible discretionary power which, although it is only to be exercised in a particular case when circumstances exist which justify departure from the usual rule, is not otherwise confined except by the dictates of the justice of the case. Factors appropriate to be taken into account in the exercise of the discretion include: (a) the length of the delay (Jess v Scott at 195); (b) the explanation for the delay, and in particular, whether the plaintiff is personally blameless for the delay (cf. Stollznow v Calvert [1980] 2 NSWLR 749 at 753); (c) any prejudice to the respondent or to other persons, arising out of the delay (cf. Douglas v Allen (1984) 1 FCR 287 at 294-5; Hunter Valley Developments Pty Ltd v Cohen (1984) 3 FCR 344 at 349); (d) actions taken by the applicant to alert the respondent to the fact that the decision is, or may be, contested (cf. Hunter Valley Developments Pty Ltd v Cohen at 348-9); (e) the merits of the proposed appeal (cf. Hunter Valley Developments Pty Ltd v Cohen at 349; Seiler v Minister for Immigration (1994) 48 FCR 83 at 98); (f) alternative avenues of relief, if any, available to the applicant (cf. Re Envirotech Australia Pty Ltd (1989) 14 IPR 108 at 116); and (g) questions of public interest, if any, in the subject matter of the appeal (cf. Johns v Australian Securities Commission (1992) 108 ALR 277)." Reasoning 10 In my opinion, the AOC has established special circumstances which take it out of the ordinary so as to justify departure from the general rule that an appeal must be instituted within twenty-one days of the delegate's decision. The initial delay in filing a notice of appeal seems to have been due to the failure of Mr Raymond (and of those who should have been supervising him) to ascertain the prescribed period for an appeal. Once notified of the delegate's decision, the AOC promptly gave instructions for the institution of an appeal. Those instructions were conveyed within the period prescribed for filing an appeal. 11 Further delays occurred before the application for an extension of time was filed. These delays were not, however, extensive and the application was ultimately filed some 32 days after the date for filing the notice of appeal had passed. The further delays again seem to be attributable primarily to the solicitors' lack of urgency after Mr Raymond became aware of the provisions of FCR O 58 r 4(2), although part of the delay is accounted for by the decision to brief counsel. 12 I think that, in the circumstances of the case, I should exercise my discretion in favour of extending the time for filing a notice of appeal. The delay was regrettable and avoidable had appropriate diligence been shown by the AOC's solicitors (I do not mean only Mr Raymond). But it was not substantial. The AOC itself was not responsible for the failure to comply with the requisite time limits and, indeed, it seems to have acted promptly once its instructions were sought. Mr Calder was notified of the AOC's intention to appeal (although not specifically in terms of the necessity for the AOC to seek an order for an extension of time) very soon after Mr Raymond became aware that the time for filing a notice of appeal had expired. Unless an extension of time is granted, the AOC has no other avenue of relief available to it. 13 Mr Calder did not point to any significant prejudice that he might sustain by reason of the AOC's failure to file an appeal within the specified time. Doubtless his expectations were disappointed, but there is no evidence of any prejudice other than that necessarily attendant on an extension of time being granted for the filing of an appeal. 14 It is of course necessary in the ordinary course for an applicant seeking an extension of time to demonstrate that there is an arguable case on the appeal. It is inappropriate that I deal in detail with the arguments that might be made on the hearing of the appeal. It suffices to say that the ground of appeal identified by the AOC raises issues that are sufficient to warrant the attention of the Court. This conclusion, of course, is not to be taken as the expression of any view as to the merits of the appeal. It is enough to conclude that the appeal raises genuine issues. 15 I therefore order that the time for lodging an appeal from the decision of the delegate of the Registrar of Trade Marks, in relation to Trade Marks application 775469(39) filed in the name of Alan Archibald Calder, be extended until 4 pm on 14 July 2000. 16 The solicitors for the applicant have offered personally to pay the respondent's costs of the motion. Having regard to the course of events I have described, I think that this is appropriate. I order that the solicitors for the applicant pay the respondent's costs of the motion, as taxed or agreed. I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sackville. Associate: Dated: 12 July 2000 Counsel for the Applicant: Ms M Painter Solicitor for the Applicant: Browne & Co The Respondent appeared in person. Date of Hearing: 12 July 2000 Date of Judgment: 12 July 2000