BSkyB granted last gasp extension to oppose trademark registration


In British Sky Broadcasting Limited v The Registrar of Trademarks, the Federal Court of Australia has ordered the registrar of trademarks to consider the late application for an extension of time to oppose a trademark registration. The court held that the registrar's practice of refusing to consider such extensions was based upon an incorrect interpretation of Section 68(1) of the Trademarks Act.

Australian company SkyNet Global Limited applied to register the mark SKYNET GLOBAL in Australia. The opposition period expired and on February 19 2002 SkyNet paid the required registration fee. The next day British Sky Broadcasting Limited (BSkyB) filed at the Sydney sub-office of the Trademarks Office an application for an extension of time to oppose registration of the mark. It also faxed a copy of the application, out of office hours on the same day, to the central office in Canberra. The registrar refused to consider the application and on February 21 2002 registered SKYNET GLOBAL. BSkyB's application for reconsideration was refused so it appealed to the Federal Court.

BSkyB argued that (i) Regulation 5.2(3) of the Trademarks Regulations allows an extension of time application to be made at any time before a mark is registered, and (ii) Section 213(1) of the Trademarks Act states that a document filed at a sub-office is taken to be filed at the central Trademarks Office.

The registrar argued that, pursuant to the Trademarks Office's practice direction of February 6 1997, only extension of time applications filed prior to the registration of a mark must be considered. BSkyB, contended the registrar, had filed the application outside of the central Trademarks Office's working hours, so consideration was not required. The registrar further argued that Section 68(1) of the Trademarks Act mandates registration of a mark if the registration fee is paid and there is no opposition. An extension of time application is not an opposition, argued the registrar, so the Trademarks Office was required to register the mark.

The court rejected the registrar's arguments, ordering that BSkyB's extension of time application be considered. It reasoned that the practice direction of February 6 1997 places "impermissible gloss" on Regulation 5.2(3) and should not be relied upon. The court also approved the decision in Stadium Sports Franchising Pty Limited v Stadium Australia Management Limited in which the deputy registrar stated that Section 68(1):

"does not oblige the registrar to register a paid-up application as soon as the opposition period has expired. Nor does it oblige the registrar to disregard the merit of any late application for an extension to file opposition which may be filed before the registration is effected."

Lisa Ritson and Brian Elkington, Blake Dawson Waldron, Sydney

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