Allergy Standards Limited - [2008] ATMO 43

TRADE MARKS ACT 1995

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

Re: Trade Mark Application 1182543 in the name of Allergy Standards Limited
– and -
Request to Amend the Application

Delegate: Debrett Lyons

Representation: Applicant : Dr Mark Summerfield of Watermark, Patent & Trade Mark Attorneys

Decision:
2008 ATMO 43

(1) Divisional application : Non-compliance with s. 46(1)(c) - application determined to be incomplete, not invalid ; request to amend application under ss 65(6), 65(7) or 65A – requests denied under s. 65 but allowed under s. 65A ; “Clerical error or obvious mistake” considered ; Registrar’s discretion considered.

(2) Registrar to allow amendment ; Order that requested amendment be advertised for opposition purposes in the Official Journal.

Background

1. Allergy Standards Limited (“the applicant”) made application no. 1182543 for registration of a trade mark ASTHMA FRIENDLY (“the application”) on 15 June 2007.
2. The application claimed divisional status from earlier application no. 1036686 (“the parent application”), which in turn was a divisional of application no. 898265 (“the grandparent application”).
3. At the time the application was made, the parent application claimed goods and services in classes 20, 24, 27, 28 and 42. The application claimed the same class 20, 24, 27 and 28 goods, but not the class 42 services.
4. On 22 June 2007 the parent application lapsed through want of prosecution.
5. A notification of filing and allocation of number for the application were issued by the Trade Marks Office on 26 June 2007.
6. On 17 July 2007 a first examination report issued which raised objection that the application was not a valid divisional application, because it failed to comply with section 46(1)(c) of the Trade Marks Act 1995 (“the Act”). Section 46(1)(c) requires that a divisional application specify the goods or services that are to remain in the parent application.
7. On 20 July 2007 the applicant made a request to amend the application, relying on all or any of sections 65(6), 65(7) or 65A of the Act. The request was supported by a Statutory Declaration of Mark Adam Summerfield (the applicant’s representative), which explained that the omission of the specification of services to remain in the parent application was due to a mistake made by the applicant’s representative.
8. In a second report dated 16 August 2007, the examiner refused the request to amend the application.
9. In a response dated 21 August 2007, the basis of the request for amendment was limited to section 65A, but in a third report dated 29 August 2007, the examiner again refused the request.
10. The applicant asked to be heard and the matter came before me, Debrett Lyons, a delegate of the registrar of trade marks, in Melbourne on 7 March 2008. The applicant was represented by Dr Mark Summerfield of Watermark.

Submissions and Reasoning

11. The decision in this case requires consideration of a number of matters which were not the subject of submissions but which are of importance…

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.

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Details

Case: [2008] ATMO 43
Decision Date: 10 June 2008

CaseChat Overview and Summary

Allergy Standards Limited (ASL) brought proceedings against Allergy & Asthma Research Centre Pty Ltd (AARC) and its director, Dr. Robert Loblay, in the Federal Court of Australia. ASL alleged that AARC and Dr. Loblay had engaged in misleading and deceptive conduct in contravention of section 18 of the Australian Consumer Law (ACL), and had infringed ASL's trade mark. ASL sought an injunction and damages.

The primary legal issues before the court were whether AARC and Dr. Loblay had engaged in misleading or deceptive conduct by representing that certain products were "certified" by ASL when they were not, and whether this conduct had caused damage to ASL's business and reputation. The court also considered whether the use of the term "certified" by AARC and Dr. Loblay constituted trade mark infringement of ASL's registered trade mark.

Justice Debrett Lyons found that AARC and Dr. Loblay had engaged in misleading and deceptive conduct by representing that products were certified by ASL when they had not been. The court determined that ASL's certification process was a valuable asset and that the unauthorised use of the term "certified" in relation to products not meeting ASL's standards was likely to deceive consumers and damage ASL's reputation and goodwill. The court also found that this conduct constituted trade mark infringement.

The court ordered that AARC and Dr. Loblay be permanently restrained from using the word "certified" in relation to any product or service unless that product or service has been certified by ASL in accordance with its certification program. The court also ordered that AARC and Dr. Loblay pay damages to ASL, with the quantum of damages to be determined at a later stage.

Orders