Aleem Pty Limited as Trustee for the Mini-Tankers IP Trust.
[2015] ATMO 33
•21 April 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1441623 (4, 35, 37, 39) - REFUELLING SOLUTIONS - in the name of Aleem Pty Limited as trustee for The Mini-Tankers IP Trust.
Delegate:
Claudia Murray
Representation:
Applicant: Mr Chris Burgess of Counsel, instructed by Thomson Geer, Lawyers, of Sydney.
Decision:
2015 ATMO 33
Sections 84A, 38 and 41 – Registrar not obliged to consider revocation – factors to be taken into account – gravity of decision to be made – must be satisfied that trade mark should not have been registered. Significance of use of trade mark demonstrated prior to acceptance considered - no error or omission leading directly to registration identified in terms of ground for rejection taken under section 41 – no need to consider whether reasonable in all circumstances to revoke - revocation of registration refused.
Background
1. This is a decision with reasons in the matter of the revocation of registration of trade mark number 1441623. Aleem Pty Limited as trustee for The Mini-Tankers IP Trust (‘Aleem’ or ‘the owner’) filed its application on 9 August 2011, for registration of the trade mark:
Refuelling Solutions
The application was filed in classes 4, 35, 37 and 39 of the International (Nice) Classification of Goods and Services, in respect of the following goods and services:
Class 4: Industrial oils and greases; fuel; diesel fuel; bio-diesel fuel; petrol fuel; mineral fuel; non-mineral fuel; fuel for motor vehicles; fuel mixtures; fuel oil; gases for use as fuel; industrial fuel oil; mineral fuel; motor fuel; oil; vehicle oil; oil for industrial purposes; mineral oil; synthetic oil; oil based lubricants; grease; industrial grease; lubricating grease; lubricants; automotive lubricants; industrial lubricants; lubricants for industrial apparatus; lubricants for machines; lubricants in the nature of oils; synthetic lubricants
Class 35: The retail and wholesale provisions of and supply of fuels, oils, lubricants and greases; retailing and wholesaling of goods; retail and wholesale services; administration of the business affairs of franchisees; business advisory services relating to the establishment of franchises; business advisory services relating to the operation of franchises; business assistance relating to the establishment of franchises; provision of assistance in the establishment of franchises; provision of assistance in the operation of franchises; advice relating to business management; business advisory services; business management; business management assistance; management advice; management of logistics services
Class 37: Refuelling services; mobile refuelling services; refuelling of motor vehicles; refuelling of construction machinery; refuelling of land vehicles; transport refuelling services for construction equipment; vehicle service stations (refuelling and maintenance); service station services for construction equipment; mobile service station services including vehicle lubrication, greasing and refuelling
Class 39: Transportation services; transportation of fuel, oil, greases, lubricants and other industrial goods; advisory services relating to transport; container transport services; distribution of goods; logistics services; transport; logistics services; storage of goods; storage of fuel, oil, greases, lubricants and other industrial goods; services relating to the disposal of goods; services relating to the disposal of fuel, oil, greases and lubricants; hire of transport vehicles; rental of tankers; rental of fuel tanks
3. A ground for rejection under section 41 of the Trade Marks Act 1995 (‘the Act’) was raised against the trade mark application during examination. However, Aleem provided significant evidence of use of its trade mark and, after the second report, the ground for rejection was withdrawn. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks (‘the Journal’) on 3 October 2013, subject to the following endorsement:
Provisions of subsection 41(5) applied.
4. No opposition was filed against the application, and its registration was duly advertised in the Journal on 19 December 2013. Then, on 18 June 2014, IP Australia received a letter written on behalf of WA Refuelling Solutions Pty Ltd (‘WA Refuelling’). The letter sought revocation of registration of the subject trade mark, and also Aleem’s trade mark registration number 1441919. The trade mark of that registration, which covers the same goods and services as trade mark number 1441623, and which was also accepted under the provisions of subsection 41(5), is:
5. On 18 July 2014, (within the timeframe set by subsection 84A(4)) a Deputy Registrar of Trade Marks wrote to Aleem’s (then) representative, about the subject trade mark. I note here that, despite also being objected to by WA Refuelling in their letter, the owner’s other word and (minimal) device trade mark, no. 1441623, pictured above, was not mentioned in the Deputy Registrar’s letter, or otherwise made the subject of revocation proceedings. The Deputy Registrar explained that a third party communication had been received, and continued:
A review of the file indicates that a ground for rejection under section 41(6) of the Act should have been raised during the examination of the above trade mark. Therefore, any evidence provided would have to satisfy the provisions of section 41(6) not section 41(5). A review of the file does not support acceptance of the plain word mark REFUELLING SOLUTIONS under the provisions of section 41(6) and therefore the trade mark should not have been registered.
The words REFUELLING SOLUTIONS indicate that your fuel related goods and services facilitate the resupply of fuel, that is provide REFUELLING SOLUTIONS. Other traders should be able to use REFUELLING SOLUTIONS in connection with goods or services similar to yours.
In respect of the second point:
Section 84A(2)(a) of the Act states that the circumstances that are to be taken into account in the Registrar’s consideration of whether to revoke registration include “any errors (including errors of judgment) or omissions that led directly or indirectly to the registration”. Trade mark 1441623 did not have the appropriate ground for rejection raised and therefore the appropriate provisions were not applied.
In view of all the circumstances described above, and in accordance with the provisions of section 84A and section 38 of the Act, the Registrar proposes to (i) revoke registration of your trade mark, and (ii) revoke acceptance of your trade mark, and (iii) return the application to examination, at which stage an examiner will issue a report on the application raising grounds for rejecting it.
6. Aleem firstly took up the Deputy Registrar’s invitation, also included in the letter, to provide written submissions and evidence ‘supporting the registration of the trade mark [and] making it appropriate not to revoke registration’. A declaration by Aleem’s Managing Director, Tony Hartin, dated 16 October 2014 and supported by exhibits, was filed. However, that material was not found to be sufficient to allow reconsideration of the proposal to revoke registration.
Hearing
7. Aleem changed its legal representation and exercised its right to be heard in relation to the revocation proposal. The hearing was held in Canberra before me, as a delegate of the Registrar of Trade Marks, on 21 January 2015. Mr Chris Burgess of Counsel, instructed by Thomson Geer, Lawyers, of Sydney, represented Aleem. Mr Peter Le Guay from Thomson Geer attended as instructing solicitor. Mr Matthew Parsons and Mr Dave Simmons, both from Aleem, also attended.
Evidence
8. The evidence relied upon by Aleem at the hearing comprised:
·Declaration by Tony Hartin, with Exhibits 1 to 16, (including Confidential Exhibits 9 and 10), dated 16 October 2014.
·Declaration by Matthew Parsons, with Exhibits MP-1 and MP-2, dated 14 January 2015.
·Declaration by Tony Hartin, with Exhibits TH-1 to TH-11 (including Confidential Exhibits TH-9 and TH-10), dated 14 January 2015.
·Statutory declaration of Don Stein dated 15 December 2014.
·Statutory declaration of Graham Ragg dated 18 December 2014.
·Statutory declaration of Paul Burton dated 22 December 2014.
9. Mr Hartin is Aleem’s Managing Director. His October 2014 declaration, relied upon at the hearing, is an updated and expanded version of an earlier declaration dated 31 July 2013 which was considered by the examiner. Mr Hartin explains that Aleem is part of a group of companies that trades under the name and trade mark ‘Refuelling Solutions’. He declares that it is the ‘number one national supplier and manager of on-site fuel in Australia’[1], providing goods and services such as the supply of fuel to equipment on-site, the supply of equipment for fuel supply, fuel transport services and supply of industrial oils and lubricants. It also provides services that assist in management of fuel use, such as fuel consumption and efficiency reporting.[2]
[1] Declaration by Tony Hartin, dated 16 October 2014, para 14.
[2] Ibid., paras 14-16.
10. Mr Hartin further explains that Refuelling Solutions provides its fuel related goods and services in all states and territories of mainland Australia. It holds over 4,000 trading accounts with 2,700 customers in the earthmoving, building and construction, demolition, equipment rental, power generation, mining, marine, fleet and transport and rail industries. The customers of Refuelling Solutions include companies such as Woolworths, CSR, Asciano, Leighton, Hanson, Toll, Smorgan Steel, Transfield Services, Jon Holland and Renfry Plant Hire.
11. Mr Hartin declares that his company’s predecessor in interest ‘introduced the concept of the on-site direct to equipment supply of fuel to Australia in 1987’.[3] In 2005, the name ‘Refuelling Solutions’ was adopted as a business name and trade mark to be used by the group of companies, ‘Refuelling Solutions Group Pty Ltd’, which together provide the full range of goods and services included under the ‘Refuelling Solutions’ umbrella.[4] Of the name chosen, Mr Hartin explains:
[3] Declaration by Tony Hartin, op. cit., para 1.
[4] Ibid., para 21.
It is not a coincidence that the examples of use of the verb "refuel" relate only to aircraft. The terms "refuel" and "refuelling" are used for vehicles such as aircraft that are continually "en route" and where a journey is interrupted to acquire more fuel. The term "refuel" is not usually used by consumers to describe the act of supplying fuel to vehicles, or any other type of machinery that relies on fuel to operate. Whatever words consumers may use when describing a need for fuel for vehicles, it seems clear that consumers do not say they must "refuel" their cars, or lawnmowers. There is evidence of this usage in the form of the common experience of speakers of English in Australia and I believe that my experience in this respect is similar to the majority of Australians and confirms that the term "refuel" is not commonly used to describe the purchase of fuel for vehicles other than as a specialised use for aircraft when they are en route. When I decided to adopt the term REFUELLING as part of Trade Mark, I was aware that it was not a term in common usage to describe the supply of fuel for industrial and construction purposes. I believe for this reason that the term has an element of distinctiveness such that Refuelling Solutions' existing and potential customers would recall the term REFUELLING as identifying its goods and services and not merely as a description.
I was not aware of any other company in Australia using the term REFUELLING as a trade mark or as a description in relation to Refuelling Solutions' goods and services when I decided to adopt REFUELLING SOLUTIONS as a trade mark. The appearance of the term "refuelling" in the statement of services subject of Registration 1441623 results from the knowledge of Refuelling Solutions' advisors of the nature of the Applicant's business and is not the result of any knowledge of those advisors of use of the term as a description.
The relevant definition for SOLUTION in the Oxford Dictionary is:
A means of solving a problem or dealing with a difficult situation
Acquiring fuel on any scale in Australia is a commercial transaction. There are many suppliers, sufficient supply and many purchasers with funds. In the context of the Australian economy, acquiring fuel or providing fuel does not require "solving a problem" and is not "a difficult situation". For this reason, I believe that the term SOLUTIONS in the Refuelling Solutions' Trade Mark will be recalled by consumers as indicating the source of the Refuelling Solutions' Goods and Services and not as a mere description.
It follows from the above that in adopting the trade mark REFUELLING SOLUTIONS I created a distinctive combination that would not be perceived as a description but as a trade mark. The reputation acquired in the Trade Mark since it was adopted…has confirmed that my view was correct.[5]
[5] Declaration by Tony Hartin, op. cit., paras 7-11.
The legislation
12. The revocation provisions of the Act relevant to this decision are:
84A Registration may be revoked
Power to revoke
(1) The Registrar may revoke the registration of a trade mark if he or she is satisfied that:
(a) the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the registration, taking account of all the circumstances.
(2) The circumstances to be taken into account under paragraph (1)(a) include the following:
(a) any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;
(b) any relevant obligations of Australia under an international agreement;
(c) any special circumstances making it appropriate:
(i) not to register the trade mark; or
(ii) to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.
(3) The circumstances to be taken into account under paragraph (1)(b) include the following:
(a) any use that has been made of the trade mark;
(b) any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;
(c) other action taken in relation to the trade mark as a registered trade mark;
(d) any special circumstances making it appropriate:
(i) to revoke the registration; or
(ii) not to revoke the registration.
Note: For use of a trade mark see section 6.
Prerequisites to revocation decision
(4) The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark:
(a) the registered owner of the trade mark;
(b) any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.
Note: For registered owner see section 6.
(5) The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard:
(a) the registered owner of the trade mark;
(b) any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.
Note: For registered owner see section 6.
No duty to consider whether to revoke
(6) The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.
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.
13. Section 41 of the Act is a ground of rejection and opposition that deals with a trade mark’s capacity to distinguish an applicant’s goods or services. The section relevantly[6] provides:
[6] The Intellectual Property Laws Amendment (Raising the Bar) Act2012 came into full effect on 15 April 2013. The Act repealed section 41 of the Trade Marks Act 1995 and substituted it with a new section 41. However, the repealed provisions continue to apply in this case, because the subject application was filed prior to 15 April 2013.
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
Submissions
14. Mr Burgess succinctly summarised Aleem’s case against revocation as comprising the following three aspects, all of which were supported with detailed and persuasive submissions in written form and at the hearing. He argued:
a) The power to revoke a trade mark under s 84A must be exercised with ‘great caution’. It is not to be exercised lightly, for example, because the Registrar merely has a change of opinion about the registrability of a mark.
b) The present case is not one in which it is apparent that the trade mark should not have been registered.
c) Even if the Hearing Officer forms the view that the trade mark should not have been registered, it is not reasonable to revoke the registration now, in all of the circumstances.
15. For reasons which will soon become apparent, it will not be necessary to canvass all of Mr Burgess’s supporting arguments, several of which were presented to me as viable alternatives, depending upon my earliest conclusions as I progressed through the criteria set out in section 84A. However, his earliest points are directly relevant to my conclusions, so I will reproduce them in some detail here.
16. Firstly, Mr Burgess dealt generally with the nature of the power to revoke under section 84A. He said:
Section 84A confers a discretion on the Registrar that may be exercised, if it is appropriate in all of the circumstances, to revoke a trade mark.
An inquiry as to whether a registered trade mark should be revoked may be initiated by a third party request, but the Registrar has no duty to consider and rule upon any such requests: Act, s 84A(6). Thus, a third party “does not have a right to have a competitor’s trade mark revoked, even where this has been registered as a result of the Registrar’s error”: Bobart (2010) 88 IPR 357; [2010] ATMO 43 at [13].
The nature of the power to revoke a trade mark under s 84A was considered in detail by Hearing Officer Arblaster in Bobart at [9] to [22]. The Hearing Officer concluded, at [20]:
“... the structure of [s 84A] itself; its context within the Act, the nature of the rights affected, and the effect of revocation all require that great caution be used in the Registrar's exercise of this discretion.”
Great caution is needed when exercising the power under s 84A, because:
a) The effect of revoking a registered trade mark under s 84A is to extinguish personal property and other rights enjoyed by the trade mark that date back to the priority (filing) date: See the Act, ss 20 to 22 and Bobart at [14]-[15].
b) Unlike the other (limited) removal or cancellation powers conferred on the Registrar by the Act, the power to revoke a trade mark under s 84A operates retrospectively. The act of registration is treated as if it were a nullity, i.e., an act that was never done at all: s 84C; Bobart at [16]-[17]. It thereby affects both past and future property rights.
c) Trade mark owners are fairly entitled to structure their business and affairs in reliance upon the registration of a trade mark as an indication the registered rights are valid and subsisting. See further Bobart, at [17]:
“... an owner can quite properly assume that the Registrar will only register trade marks where there are no prior rights and, short of bad faith, can quite properly expect that their registration is valid. Thus, following revocation, the rights, which a good faith owner could justly assume were presumptively valid, are undone. This is not a step that the Registrar can take lightly. Its effect is akin (or perhaps only almost so) to that of a decision that the mark had been invalidly entered onto the Register so that the decision to register is ‘no decision at all’ and can be set aside.”
As the above passage indicates, the decision to revoke a trade mark under s 84A is therefore not a step that can be taken lightly. The decision involved “is not simply a question of whether a mistake was made in examining the trade mark”: Bobart at [55]. A mere “change of opinion as to the registrability of a mark” is not a circumstance that justifies, without other compelling factors, the exercise of the power: Bobart at [55]. Something more, such as an error of unreasonableness, jurisdictional error (whether of fact or law) or bad faith, will typically be required: Bobart at [55]. Even then, as Bobart’s case shows, it is necessary to ask whether revocation is reasonable, in all of the surrounding circumstances.
The limitations of determining the matter in an ex parte forum further constrain the manner in which the power under s 84A is exercised. See again Bobart at [51]:
“... the proceedings are ex parte and, while I need to be satisfied about the veracity of material before me, it is not appropriate in making that assessment that I assume the role of an advocate for either case ...”
Since s 84A was introduced into the Act in 2006,[7] the power to revoke appears to have been exercised only once after an ex parte hearing: Fpinnovation Pty Ltd [2012] ATMO 74. The apparent absence of other examples of revocation is consistent with the statement in the Trade Marks Office Manual of Practice and Procedure (the Examiner's Manual) that “It is expected that revocation [under s 84A] will be a rare occurrence”: Pt 62.1.
[7] By the Intellectual Property Laws Amendment Act 2006 (Cth).
17. Mr Burgess then moved on to the requirement set out in section 84A(1)(a) that, before revoking registration, the Registrar must be satisfied that the trade mark should not have been registered. He submitted:
The first matter that must be considered under s 84A(l)(a) is whether the trade mark should not have been registered, taking account of all of the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence).
The Registrar has notified Aleem that the trade mark should not have been registered, because it should have been assessed under s 41(6), instead of s 41(5). Further, the Registrar has indicated the evidence Aleem has filed is insufficient to satisfy s 41(6).
The Registrar has not given notice of any other circumstance that would warrant revocation. For example, the Registrar has not suggested the evidence filed by Aleem is insufficient to satisfy the requirements of s 41(5).
In summary, Aleem contends the Hearing Officer ought not be satisfied the Refuelling Solutions Trade Mark should not have been registered, for the following reasons:
It was open (Aleem submits, correctly) for the Examiners to have examined the Refuelling Solutions Trade Mark by applying s 41(5), instead of s 41(6): Act, s 84A(2)(a). No error of the kind suggested by the Deputy Registrar occurred.
The Registrar has not given notice to Aleem of any other circumstances said to warrant the conclusion that the Refuelling Solutions Trade Mark should not have been registered: Act, s 84A(2)(b) and (c).
If (contrary to the above) the Hearing Officer concludes that s 41(6) should have been applied during examination, the evidence supports a finding that, because of the extent to which Aleem has used the Refuelling Solutions Trade Mark, it distinguishes the designated goods or services as those of Aleem: Act, s 41(6).
Discussion
The gravity of the decision to be made and the significance of third party letters
18. Mr Burgess made some important points about the nature of the power to revoke under section 84A, which I have quoted above. He, in turn, has relied upon many of the perspicacious observations upon the subject made by Deputy Registrar Michael Arblaster in Mr Lorne Bobart.[8] I agree with those points already quoted. I would add the following observations made by Mr Arblaster, which relate to the receipt by the Registrar of third party letters requesting revocation of registration, such as the letter received from WA Refuelling. Under the provisions of subsection 84A(6), reproduced above, the Registrar has no duty to consider these requests:
[8] (2010) 88 IPR 357; [2010] ATMO 43 (12 June 2010).
The Explanatory Memorandum[9] was written in terms that are consistent with the note of caution. It identifies circumstances where the power of section 84A is not intended to be used. In particular the power should not be regarded as an alternative to the dispute settlement mechanisms otherwise provided by the Act, for resolving competing claims to ownership.
[9] The Intellectual Property Laws Amendment Bill, 2006; Explanatory Memorandum
…
Inevitably, the Registrar will receive third party letters, requesting revocation of registration, and complaining about the Office’s administration of the Act. In line with her obligations for the proper administration of the Act[10], she will cause such complaints to be investigated. She does not however have an obligation to consider revocation, and … she is unlikely to do so where any of the following circumstances exist:
[10] Ensuring due process is followed, that relevant considerations are set out in policy documents and that the Office meets the Government’s expectations about its dealings with the public.
(i) the registration was made as a result of, or subsequent to, opposition or court proceedings, or
(ii) the trade mark was accepted on the basis of use; or
(iii) the matter is a dispute between competing claims to ownership, in which it is clear that the core issue is a matter of contention between the parties and in which evidence will need to be tested by reference to a contradictor,
unless there is:
(i) a strong public interest imperative to do so,
(ii) a suggestion that the registration is contrary to our international treaty obligations,
(iii) clear evidence of obvious maladministration or procedural failure,
(iv) a prima facie case that the trade mark was invalidly registered, or
(v) there was another form of jurisdictional error.[11]
[11] Mr Lorne Bobart, op. cit., at [19]
19. In the circumstances of the Bobart decision, which was also initiated by a third party letter to IP Australia, Deputy Registrar Arblaster ultimately found that the acceptance and registration of trade mark no. 1201807 in the face of a deceptively similar trade mark with an earlier priority date and in respect of similar goods, satisfied him that the trade mark should not have been registered. No ground for rejection had been raised at all during examination. Despite this conclusion, Mr Arblaster also found, under the second limb of section 84A(1), that revocation of registration would not be reasonable, in light of the applicant’s use of his trade mark. Because of the circumstances of error which were found to have prevailed during examination, the delegate was required to proceed to the second part of the question raised by section 84A. However, at that critical point, the compelling existence of bona fide trade mark use became the deciding factor in his decision not to revoke registration.
20. Although I am also faced with other somewhat different considerations here; the gravity of the decision to be made, the demonstration (in this case, prior to acceptance) of considerable trade mark use, and indications of a dispute in which competing claims could only be properly tested with reference to a contradictor, are important elements this matter shares with Bobart. However, unlike Bobart, the ‘Refuelling Solutions’ trade mark did not pass speedily through the examination process because a potential ground for rejection had been entirely overlooked. Instead, a ground was raised by the examiner under section 41. Two iterations of submissions and evidentiary material occurred before the trade mark was accepted for possible registration, duly endorsed as having been accepted under the provisions of subsection 41(5). An opposition period then ensued, but no opposition was forthcoming. Having successfully run the gamut of the entire registration process, the trade mark finally became registered over two years after it was originally filed. At registration, in accordance with the provisions of the Act, it became entitled to protection backdated to the original filing date of 9 August 2011. Therefore, as at the date of this decision, and after having used the trade mark for ten years, Aleem has had available to it all of the benefits of registration of its ‘Refuelling Solutions’ trade mark for over three and a half years.
Whether circumstances existed that should have prevented registration
21. Against the background of a process that should be approached with ‘great caution’, a revocation request from a party that had the opportunity to oppose registration but did not do so, and an already established history of trade mark use, I must consider de novo under the first limb of section 84A(1), whether I am satisfied that the trade mark should not have been registered at all. And as Mr Burgess has observed, the single issue that my decision must turn on is whether the ground for rejection which was raised in examination should rightly have been under subsection 41(6), not 41(5). No other circumstance was identified by the Deputy Registrar in her letter proposing revocation and, indeed, I do not believe there exists any other to be found.
22. Mr Burgess referred me in his submissions on this point to Mr Hartin’s description of Aleem’s choice of trade mark, part of which I have quoted earlier. He also reminded me of several instances where the Courts, and also delegates of the Registrar, have found that there existed in a trade mark a ‘scintilla’ of inherent capacity to distinguish, such that it qualified for registration in terms of subsection 41(5) rather than 41(6).[12]
[12] For example, Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; Audioline Pty ltd v Moss (1999) 44 IPR 241; Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 209 ALR 93; Berenger Blass Wine Estates v Andrew Harris [2009] ATMO 52.
23. Recently, in Gregory Paul Roebuck v News Limited,[13] discussing what I described as the ‘faintest whiff’ of inherent capacity to distinguish present in the trade mark ‘CARSGUIDE’, I quoted the earlier observations of Hearing Officer Iain Thompson when he described this phenomenon as:
… the barest scintilla or spark of inherent capacity to distinguish the applicant’s goods from those of other traders … that glimmer, be it ever so faint, saves the trade mark from consideration under subsection 41(6).[14]
[13] (2014) 105 IPR 459; [2014] ATMO 19 at [24].
[14] Freelife International Holdings LLC [2009] ATMO 45 (30 June 2009) at [20].
24. It is true that the question of whether a highly descriptive trade mark falls just to one side or the other of the subsection 41(5) - (6) divide can sometimes be fraught with ambiguity and subject to vigorous debate. Mr Arblaster remarked in Bobart, upon the question of a ‘change of opinion as to the registrability of a mark’:
There will be occasions when different delegates reviewing exactly the same material and applying the same law have a different opinion about the appropriate outcome. It was well established under the provisions of section 38 as they previously existed[15] that “a change of opinion as to the registrability of a mark” did not constitute a basis for revocation of acceptance.[16] There is a continuum between a mere change of opinion as to registrability on the one hand and an error of unreasonableness[17] or jurisdictional error (whether of fact or law) on the other hand.[18]
[15] The provisions of section 38 were changed in 2006 when section 84A was introduced. Previously they required an error or omission or special circumstances to be established.
[16] See Haig Street Wholesalers [1998] 42 IPR 463.
[17] An error of unreasonableness is one to which no reasonable authority could ever have come. See Associated Provincial Picture Houses Ltd v Wednesbury Corporation[1947] EWCA Civ 1; [1948] 1 KB 223.
[18] Mr Lorne Bobart, op. cit., at [55]
25. And of course, although Mr Arblaster’s point was that revocation of acceptance has also (rightly) not been taken lightly by decision makers in the past, that process, solus, does not carry with it the same potentially dire consequences associated with the revocation of registration to be decided here.
26. In this matter, there has been an expectation that a delegate may conclude the ‘Refuelling Solutions’ trade mark should not have been registered, because an examiner identified a ‘scintilla’ of inherent capacity to distinguish which was not apparent to the next decision maker, required to review the case in the course of responding to a third party letter. Taking into account all of the surrounding circumstances of this case, I am unable to satisfy myself that this is the correct conclusion to be drawn. I believe the circumstances here reflect the kind of ‘change of opinion’ described above. As such, they are not ‘errors (including errors of judgement) or omissions that led directly or indirectly to the registration’ of the type referred to in the Deputy Registrar’s letter, and required by section 84A(2)(a). Accordingly, they cannot justify a conclusion that the trade mark should not have been registered.
Decision
27. Revocation of registration is a serious matter. As a delegate of the Registrar, I am tasked with deciding whether a valuable intellectual property right which the Registrar has willingly given, and which hitherto no party has appropriately challenged, should nevertheless be taken away. Fortunately, the requirements of section 84A are clear. I cannot make such a grave decision unless I am firstly satisfied that trade mark number 1441623 should not have been registered. For the reasons I have discussed above, I cannot be so satisfied. The enquiry therefore falls at the first hurdle, and I am not required to consider whether or not it would in any event have been reasonable to revoke the registration, taking account of all the circumstances which were eloquently laid out by Aleem’s counsel, at the hearing.
28. I refuse to revoke the registration of trade mark number 1441623.
Claudia Murray
Hearing Officer
Trade Marks Hearings
21 April 2015
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