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

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

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

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading 1-800-Flowers.Com, Inc

Details

AGLC: 1-800-Flowers.Com, Inc [2011] ATMO 97
Case: [2011] ATMO 97
Decision Date: 6 October 2011

CaseChat Overview and Summary

This decision concerned trade mark applications numbered 1396655 and 1396656, filed by 1-800-Flowers.Com, Inc. The dispute arose from the acceptance of these applications, which the Hearing Officer, Heath Wilson, was asked to review. The core of the matter was whether the initial examination process had resulted in an error, and if so, whether it was reasonable to revoke the acceptance of the trade marks.

The legal issue before the Hearing Officer was to determine if there had been an error in the examination of the trade marks and, consequently, whether it was reasonable to revoke their acceptance under section 38 of the relevant Act. The applicant's arguments were limited to these two points.

The Hearing Officer found that an error had indeed occurred during the examination of the trade marks. While acknowledging that consistency in the trade marks register can be a factor, the Hearing Officer stated that their role was not to perpetuate errors but to address the question under section 38. The Hearing Officer was satisfied that revoking the acceptance was reasonable in the circumstances. The question of whether the trade marks could be accepted under grounds such as prior use or honest concurrent use was deferred to the re-examination process.

The Hearing Officer directed that the acceptances of applications 1396655 and 1396656 be revoked one month from the date of the decision, and that the applications be re-examined. Provisions were also made for the re-examination to be stayed if a notice of appeal was served within that month, pending the outcome of any appeal.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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 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. 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 WilsonHearing OfficerTrade Marks Hearings6 October 2011

Ratio Decidendi

Legal Principle Established

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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.