1-800-Flowers.Com, Inc

[2011] ATMO 97

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1396655 and 1396656 (31, 35, 38, 39) - 1800 - FLOWERS.COM (and device) - in the name of 1-800-Flowers.Com, Inc.

Delegate:	Heath Wilson
Representation:	Applicant – Kenneth McInnes of Hodgkinson McInnes Patents.
Decision:	2011 ATMO 97 Section 38 – Whether reasonable to revoke acceptance in all the circumstances – whether a difference of opinion – acceptance revoked.

Background

1. On 10 December 2010, 1-800-Flowers.Com, Inc (‘the Applicant’) applied to register the following trade marks (‘the Trade Marks’):

Trade Mark No. 1396655:  Trade Mark No. 1396656:

Classification of Goods and Services:

Class 31: Cut flowers; dried flowers; flowers, dried, for decoration; flowers, natural; fresh flowers; live flowers; natural flowers; floral decorations (dried); floral decorations (fresh); floral decorations (natural); bouquets of dried flowers; bouquets of fresh flowers; wreaths of natural flowers; plants; floral arrangements and bouquets, wreaths and trees

Class 35: Advertising; promotion (advertising) of business; intermediary business services relating to the commercialisation of goods; retail sale of natural and synthetic flowers and flower arrangements; advertising by mail order; compilation of advertisements for use as web pages on the Internet; telephone order services for goods; administrative processing of purchase orders; advertising and business services being the taking of orders for, and arranging delivery of, flowers and floral arrangements, fresh and/or dried, natural and/or artificial, plants, natural and/or artificial, chocolates, other confectionery, massage oils, aromatherapy candles, oils and equipment, fruit baskets, hampers, alcoholic and non-alcoholic beverages, day spa gift certificates, massage gift certificates, other gifts, and other gift certificates via a telephone network, VOIP (Voice Over Internet Protocol) network, other voice network and via the Internet, WAP (Wireless Application Protocol) network, SMS network and/or any other data network; retail store services, mail order, catalogue services, world-wide web sales services and online sales services

Class 38: Computer data transmission services; data transmission; data transmission services over telecommunications networks; VOIP (voice over internet protocol) services; wireless broadcasting; wireless communication services; including all such services for the receipt and dispatch of orders for flowers, plants, floral arrangements and gifts

Class 39: Transportation of goods; security storage services (transport); storage services for goods; storage; storage of goods for transportation; storage of goods prior to delivery; delivery and transshipping of floral products, flowers, chocolates, perfumes, fruit, gifts and gift orders; including all such services relating to floral products, flowers, chocolates, perfumes, fruit, gifts and gift orders

1. No grounds for rejection were identified during the examination stage and the Trade Marks were accepted on 7 and 17 January 2011.

2. A letter from a third party, FlowersCorp Pty Ltd (‘FlowersCorp’) was received by IP Australia on 3 February 2011, regarding a possible inconsistency in the examination of the Trade Marks. FlowersCorp referred to its own earlier trade mark applications which it alleged were deceptively similar under section 44 of the Trade Marks Act 1995 (‘the Act’). The trade mark applications identified by FlowersCorp were nos. 1058591, 1274023, 1274020, 1345718, 1345719, 1295712, 1295714, 1295716, 1346947 and 1346948. I will provide the relevant details of conflicting trade marks later in my reasons, suffice to say that these particular trade marks contain the words “1300 Flowers” or similar.

3. FlowersCorp submitted that examination of the Trade Marks and the “1300 Flowers” trade marks had been inconsistent. All of the “1300 Flowers” trade marks had had grounds for rejection raised under section 44 on the basis of these earlier trade marks owned by the Applicant:

TM No.	Trade Mark	Classification of Goods and Services
1085074	1-800-FLOWERS.COM	Classes 31, 35 and 38.
1085078	Classes 31, 35 and 38.

1. Part 38.2.1 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) states:

   If information is received from examination staff, third parties or others with specialised knowledge that calls into question the acceptance of the trade mark the delegate can act on this information to begin the revocation process but should not institute revocation proceedings merely because another party is requesting revocation. 

2. Prompted by the letter from FlowersCorp a review of the examination process for the Trade Marks was conducted and on 28 March 2011 an additional refined search strategy identified seventeen conflicting trade marks including those referred to by FlowersCorp. The conclusion was that the Trade Marks should not have been accepted. On 28 March, the Applicant was sent a notice of intention to revoke acceptance (‘the notice’) which provided details of those trade marks. The notice stated that as the trade marks should have been raised as a ground for rejection under section 44, the intention of the Registrar was to revoke acceptance.

3. The notice gave the Applicant an opportunity to be heard on the matter. The Applicant subsequently requested a hearing which took place in Canberra on 14 July 2011. I heard the matter as a delegate of the Registrar of Trade Marks and Kenneth McInnes of Hodgkinson McInnes Patents, appeared on the Applicant’s behalf.

4. In the interim acceptance of the Trade Marks had been advertised in the Australian Official Journal of Trade Marks on 7 April 2011. This signaled the start of the statutory three month period allowed for opposing registration. In order to preserve its position in case the acceptances are not revoked, FlowersCorp has requested and paid for an extension of that period.

   The Law

   Section 38: Revocation of acceptance

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)it is reasonable to revoke the acceptance, taking account of all the circumstances.

   (2)If the Registrar revokes the acceptance:

   (a)the application is taken to have never been accepted; and

   (b)the Registrar must examine, and report on, the application as necessary under section 31; and

   (c)sections 33 and 34 again apply in relation to the application.

   Discussion

5. The notice referred to an ‘error or omission’ on the examiner’s part and this wording was understandably adopted by the attorney for the Applicant. However, section 38 of the Act no longer refers to an ‘error or omission’ as a requirement for acceptance to be revoked. If it is demonstrated that the trade mark application should not have been accepted and it is reasonable to revoke in all the circumstances – section 38 is applicable.

6. An assessment of the initial ATMOSS (Australian Trade Marks Online Searching System) search strategy undertaken by the examiner indicates that the “1300 Flowers” trade marks would have been included in those searches but were not put on the extracted list of trade marks. The same examiner did not conduct the initial searches on the Applicant’s earlier trade marks 1085074 and 1085078, but did issue a second report on 1085074 raising a late section 44 ground for rejection on the basis of application no. 1058591 (1300 FLOWERS). I further note that during the examination of the Trade Marks, the examiner referred to the examination of the Applicant’s prior trade mark no. 1085078. I am therefore satisfied that the examiner was aware of the existence of the “1300 Flowers” trade marks when making the initial decision to accept the Trade Marks.

7. In order to assess whether the Trade Marks should not have been accepted, it is necessary to consider whether the grounds for rejection under section 44 are justified. However, that is not the end of the matter. Even if the grounds are justified, it must still be reasonable to revoke, taking into account all of the circumstances. The Registrar is not limited in what she may consider but some guidance is provided by Part 38.2.4 of the Manual which provides:

   It may also be reasonable to revoke acceptance in the circumstances where the decision to accept is one that cannot reasonably be supported by the accepted and defined tests and the decision made by the examiner is:

   ·     manifestly wrong,

   ·     clearly not just a difference of opinion, and

   ·     obviously disregards established authorities

8. Mr McInnes cautioned against revoking acceptance on the basis of a simple difference of opinion between examiners, implying that this was the case here. After being given the opportunity to do so, Mr McInnes declined to address the issue of deceptive similarity between the trade marks in any detail. He believed it would compromise his client’s position should the matter progress to an opposition under section 52 of the Act. However, in order to decide whether it is reasonable to revoke acceptance I find that I must assess the proposed grounds for rejection.

   Section 44 of the Act:

9. For section 44 to be established, there must be an earlier pending or registered trade mark owned by another party that is substantially identical or deceptively similar to the Trade Marks and is for similar/closely related goods and services. For the purposes of comparison, I have reproduced the Trade Marks here:

1396655: 1396656:

1. The trade marks identified in the notice (‘the cited trade marks’) are:

TM No.	Trade Mark	TM No.	Trade Mark
1026254	1274020	1300FLOWERS
1030784	1295712
1036703	1295714
1041228	1295716
1041229	1345718	1300 FLOWERS
1041230	1345719	1300FLOWERS
1043955	1346947
1058591	1300 FLOWERS	1346948
1274023	1300 FLOWERS

1. It is worth noting that the majority of the cited trade marks (1058591 to 1346948 inclusive) are currently pending and either the subject of opposition proceedings or a ground for rejection under examination. However, all of the cited trade marks have earlier priority dates than the Trade Marks and are for similar/closely related goods and services in classes 31, 35, 38 or 39.

2. On a side-by-side comparison none of the cited trade marks are substantially identical to the Trade Marks due to the slight differences in numbering, the addition of a domain name identifier (‘.com’) and/or the flower device in the Trade Marks. The issue I need to consider is whether they are deceptively similar. That consideration requires me to estimate the effect or impression created by each trade mark in accordance with the reasoning of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658):

   …the marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

3. In assessing the overall impression of the Trade Marks, one consideration is the relative distinctiveness of the elements that comprise them. In relation to the numeric element of the trade marks (e.g. ‘1-800’ and ‘1300’) part 22.14.4 of the Manual provides:

   A section 41 ground for rejection will apply in relation to trade marks that simply consist of 13/1300/1800/197 and other descriptive or non distinctive elements (in the same way that those elements on their own would attract a ground for rejection). Examiners will need to consider if the material in the trade mark, apart from the 13/1300/1800/197 element, has any inherent adaptation to distinguish. For example, 1800 RABBIT is not considered to be prima facie capable of distinguishing “the sale of pet rabbits” and a section 41(6) ground for rejection would be appropriate.

4. The Trade Marks and the cited trade marks all comprise elements that would be unlikely to be registrable as trade marks on their own. Those elements include variations on the prefix of a telephone number followed by the word “Flowers” for (amongst other things) the sale of flowers.[1] The remaining elements are the presence of a flower device and the “.com” suffix in the Trade Marks. Combining these elements may mean that the trade marks have a sufficient degree of ‘get-up’ or stylization to be registrable under section 41, but it is the impression or recollection that the consumer will have of the trade marks that must be considered for section 44. As in Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D):

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.

   [1] With regard to the section 41 issue, see the decision of the Registrar’s delegate in 1300 Australia Pty Ltd v 1800 Blinds Pty Ltd [2008] ATMO 57.

5. The Registrar has considered the deceptive similarity of trade marks including a telephone number on previous occasions. In 1300 Repair Pty Ltd v 1300 Phonewords Australia Pty Ltd [2009] ATMO 58, Hearing Officer Williams found that and “1300 REPAIR” were not substantially identical for the purposes of section 58 of the Act. However, in the course of his decision he observed that “…it is hard to imagine that the trade marks in question are not deceptively similar.” In Fresh Intellectual Properties Inc v Goldman (2006) 69 IPR 337[2], Hearing Officer O’Brien found for the purposes of section 60 that all four of the opponent’s trade marks were deceptively similar to the applicant’s trade mark. The trade marks considered in that case were: 

   [2] A decision involving the Applicant’s predecessor in title of trade marks 1085074 and 1085078 (Fresh Intellectual Properties, Inc).

Applicant’s trade mark	Opponent’s trade marks
	First	Second	Third	Fourth
1-800-FLOWERS	800-FLOWERS

1. While there are some points of dissimilarity between the trade marks before me, those differences are only evident on a side-by-side comparison. Luxmoore LJ considered the notion of ‘imperfect recollection’ in Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 and said (at 108):

   It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution.

2. As none of the elements comprising the Trade Marks are particularly memorable by themselves consumers are likely to recall the combination of phone number, the word “Flowers” and the device of a flower in relation to the designated goods and services. The “general effect of the respective wholes[3]” or the net impression make the trade marks deceptively similar.   

   [3] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (Supra).

3. I find that the cited trade marks containing the expression “1300 Flowers” are deceptively similar to the Trade Marks and I am satisfied that applications 1396655 and 1396656 should not have been accepted in the face of those trade marks. Having made that finding, I now turn to whether it is reasonable to revoke in all the circumstances.  

   ‘Reasonable to Revoke’

4. I noted earlier that the same examiner handled the latter stage of the examination of trade mark nos. 1085074 and 1085078. For trade mark no. 1085078 a citation was not raised in relation to earlier application 1058591 (1300 FLOWERS) and the unopposed application 1085078 is now registered. The Applicant then drew my attention to an attempt by FlowersCorp to cancel that registration under section 88 of the Act. The Deputy Registrar of Trade Marks was not satisfied that it was desirable in the public interest for an application to be made to the Court to rectify the register by cancelling that registration.

5. Those circumstances are not analogous to my decision as there are clear differences between sections 38 and 88 of the Act. The application of section 38 (for example) takes into account all the circumstances that existed at the time of acceptance. The provisions for an application for the cancellation of a trade mark registration under section 88 are more onerous than that required for the revocation of the acceptance of a trade mark.

6. I note that FlowersCorp has sought extensions of time to oppose the Trade Marks if these acceptances are not revoked. However the fact that an opposition is likely has little relevance as to whether it is reasonable to revoke in these circumstances. A potential opponent may not press the section 44 ground at all. Alternatively, section 44 may be the only tenable opposition ground and effectively addressing that section during examination may obviate the need for an opposition under section 52 of the Act. In the latter instance, neither party would have been put to the unnecessary time and expense in gathering and/or responding to evidence for a contested hearing.

7. Mr McInnes submitted that the examiner of the Trade Marks is highly experienced and has demonstrated total consistency in examination of the Applicant’s four “1800 Flowers” trade marks.  While both of these submissions may be true, I am of the view that they also provide no guidance for whether it is reasonable to revoke. The submission that there is a need for consistency on the Register can either support or oppose revocation of acceptance of these Trade Marks. On one hand, the Trade Marks were assessed consistently with the examination of the Applicant’s prior trade marks (1085074 and 1085078). On the other hand, the examination of the trade marks owned by FlowersCorp has resulted in objections being raised due to the existence of the Applicant’s prior trade marks. Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579; [2000] FCA 177 observed (my emphasis included):

   …although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

8. An examiner may, for example, be consistent in persisting with errors. While consistency on the trade marks register is a consideration in whether or not to revoke acceptance, I have already decided that there was an error in the examination of the Trade Marks. My role is not to further perpetuate errors but effectively answer the question under section 38 of the Act. I am satisfied that it is reasonable to revoke the acceptance of the Trade Marks. The Applicant’s arguments were confined to whether there was an error and the reasonableness of revoking acceptance. As a result, whether the Trade Marks can be accepted under prior use, honest concurrent use or other circumstances will be a matter for examination.

   Decision

1. I am satisfied that trade mark application nos. 1396655 and 1396656 should not have been accepted and that it is reasonable in all of the circumstances to revoke their acceptance. I direct that one month from the date of this decision the acceptances of applications 1396655 and 1396656 be revoked and the applications re-examined as provided by s38 (2) (b) of the Act.

2. If the Registrar is served with a notice of appeal on or before that time, I direct that the re-examination of the applications shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the applications be subject to that order.

   Heath Wilson
   Hearing Officer
   Trade Marks Hearings
   6 October 2011