British Sky Broadcasting Limited v The Registrar of Trade Marks [2002] FCA 1556

FEDERAL COURT OF AUSTRALIA

British Sky Broadcasting Limited v The Registrar of Trade Marks [2002] FCA 1556

TRADE MARKS –application for an extension of time to file a notice of opposition – proper construction of s 68(1) of the Trade Marks Act 1995 (Cth). Administrative Decisions (Judicial Review) Act 1977 (Cth), ss 5(1)(f), 16(1)(a) and 16(1)(d) Judiciary Act 1903 (Cth), s 39B Trade Marks Act 1995 (Cth), ss 52(2), 68(1), 213(1), 213(3) and 223(3) Trade Mark Regulations 1995 (Cth),regs 5.1, 5.2, 5.3, 5.4 and 7.1 Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 referred to Craig v The State of South Australia (1995) 184 CLR 163 referred to Stadium Sports Franchising Pty Limited v Stadium Australia Management Limited (1997) 37 IPR 345 followed British Sky Broadcasting Limited v The Registrar of Trade Marks N227 of 2002 JACOBSON J SYDNEY 13 DECEMBER 2002

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N227 of 2002

BETWEEN: BRITISH SKY BROADCASTING LIMITED

APPLICANT

AND: THE REGISTRAR OF TRADE MARKS

RESPONDENT

JUDGE: JACOBSON J

DATE: 13 DECEMBER 2002

PLACE: SYDNEY

REASONS FOR JUDGMENT Introduction

1 This is an application under the Administrative Decisions (Judicial Review) Act 1977 (Cth) ("the ADJR Act") for the review of three "decisions" made by the respondent ("the Registrar") in relation to the registration of the trade mark SkyNet Global("the Trade Mark"). I have put the word "decisions" in quotation marks because the Registrar contends that two of the decisions were not decisions to which the ADJR Actapplies.

2 The first decision which is challenged is the registration of the Trade Mark which took place on 21 February 2002. The Registrar concedes that this decision is reviewable under the ADJR Act provided, of course, that one or more of the grounds of review contained in s 5 of the ADJR Actare enlivened. I will refer to this decision as "the First Decision". 3 The second decision in question was made on 22 February 2002. On that date the Registrar declined to consider an application made by the applicant ("BSB") for an extension of time to file a notice of opposition to the registration of the Trade Mark. I will refer to this as "the Second Decision". 4 The third decision was made on or about 5 March 2002 when the Registrar refused to reconsider the second decision. I will refer to the refusal to reconsider as "the Third Decision". 5 It is unnecessary for me to consider whether the Second Decision and the Third Decision are decisions to which the ADJR Actapplies; as to which, see Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at 337. This is because the Registrar concedes that if the decisions involved an error of law there would be jurisdictional error within the well-known principle stated in Craig v The State of South Australia (1995) 184 CLR 163 at 179. In that event, I would have power to review the Second Decision and the Third Decision under s 39B of the Judiciary Act 1903 (Cth). The Facts 6 On 31 March 2000, SkyNet Global Limited ("SkyNet") lodged with the Registrar an application for registration of the Trade Mark. The application sought registration within classes 9 and 38 which cover telecommunications apparatus and telecommunications services. The application number for the Trade Mark was 830112. 7 On 8 November 2001, the Trade Marks Office ("the TMO") advertised acceptance of the application for registration of the Trade Mark. The effect of Reg 5.1 of the Trade Mark Regulations 1995 ("the Regulations") was that the period for filing a notice of opposition to the registration expired on 8 February 2002. 8 On 19 February 2002, the TMO received a letter from the solicitors for SkyNet Global enclosing payment of the prescribed fee for registration of the Trade Mark. At 1:42 pm on that day, the receipt of payment was logged on to the TMO's computer system. 9 The effect of s 223(3) of the Trade Marks Act 1995 (Cth) ("the Act") is that, until payment of the fee, the Registrar was prohibited from registering the Trade Mark. Thus, as from 19 February 2002, the impediment to registration resulting from s 223(3) of the Act was removed. 10 On 20 February 2002, BSB's solicitor, Ms Jacqueline O'Brien of Allens Arthur Robinson had a conversation with Mr Robert Macrae of the TMO. Ms O'Brien stated that BSB intended to file an application for an extension of time to oppose registration of the Trade Mark ("the Late Application for Extension of Time"). 11 Mr Macrae made a note of the conversation which recorded his advice to Ms O'Brien that the application should be made quickly because the registration fee had been paid and the Trade Mark could be registered the next day. 12 At 5 pm on 20 February 2002, Ms O'Brien lodged the Late Application for Extension of Time with the Sydney State Office of the TMO together with the prescribed fee. 13 At 7:32 pm on the same day, Ms O'Brien faxed a copy of the Late Application for Extension of Time to the TMO in Canberra. The TMO's practice direction, which appeared in the Australian Official Journal of Trade Marks on 6 February 1997, states as follows:- "So long as a late application for an extension of time to file notice of opposition reaches the Hearings Support Unit before the subject trademark is registered, the application will be assessed in accordance with the provisions of regulation 5.2." 14 The TMO database records the fact that the Late Application for Extension of Time was logged on to the database as having been received on 20 February 2002. The evidence does not disclose whether the document reached the Hearings Support Unit before the Trade Mark was registered. However, it seems likely that it was not seen by the Hearing Support Unit prior to registration on 21 February 2002. 15 The Late Application for Extension of Time was signed by Ms O'Brien. She stated in paragraph 3 that the ground upon which the application was made was that due to an error or omission by the potential opponent's agent, Messrs Allens Arthur Robinson, the application for an extension of time was not filed within the prescribed period. 16 The Late Application for Extension of Time was accompanied by a statutory declaration made by Ms Joycia Young, a senior associate with Allens Arthur Robinson, who is assisting Ms O'Brien in this matter. The effect of Ms Young's statutory declaration is that the reason for the delay was that Ms Young inadvertently omitted to enter the deadline of 8 February 2002 in her electronic calendar. Ms Young set out the reason in detail in paragraphs 8 to 17 of her statutory declaration. In my view, Ms Young's statutory declaration established that the failure to file an application for extension within the prescribed period was caused by her error or omission. 17 On 22 February 2002, the TMO wrote to Messrs Allens Arthur Robinson in response to the Late Application for Extension of Time. The letter was not received by Allens Arthur Robinson until 28 February 2002. The letter annexed a copy of the practice direction dated 6 February 1997 to which I referred in paragraph [13] above. The letter stated that the faxed application to the Canberra office of the TMO was received outside normal business hours and could not be acted upon until after the TMO opened on 21 February 2002. The letter also stated that the Trade Mark was registered early on the morning of 21 February 2002 before the Late Application for Extension of Time could be acted upon. The letter stated that the First Decision could not be reversed. 18 On 28 February 2002, Allens Arthur Robinson wrote to the TMO requesting a reconsideration of the matter. The letter referred to s 213(1) of the Act which provides that a document is taken to be filed at the TMO if it is filed at a sub-office. The letter also referred to Reg 5.2(3) of the Regulations which provides that an application for extension of time may be made at any time before the Trade Mark is registered. 19 On 5 March 2002, the TMO notified Allens Arthur Robinson that the Deputy Registrar would not reconsider the Second Decision. 20 On 22 March 2002, BSB filed its application for an order of review in this Court. The Submissions 21 Mr D M Yates SC appeared with Mr D B Studdy for BSB. Mr G Johnson appeared for the Registrar. Counsel for both parties filed helpful written submissions in advance of the hearing. These submissions were further refined in oral argument. 22 Mr Johnson relied on s 68(1) of the Act which is as follows:- "(1) The Registrar must, within the period provided under the regulations, register a trade mark that has been accepted for registration: (a) if there has been no opposition to the registration; or (b) if there has been an opposition – if the Registrar's decision, or (in the case of an appeal against the Registrar's decision) the decision on appeal, is that the trade mark should be registered.