Allergy Standards Limited
[2008] ATMO 43
•10 June 2008
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 to the operation of the filing system for divisional trade mark applications. The first is the unexamined assumption made by both Dr Summerfield and the examiner that sections 45 and 46 apply to the application. Those sections were introduced into the current law by the Trade Marks Amendment Act 2006 (“the Amendment Act”). Item 68 of the Amendment Act repealed all of Division 3 of Part 4 of the Act and replaced it with sections 45 and 46.
12. Section 45 of the Act states:
Divisional applications
(1) If a single application for the registration of a trade mark in respect of certain goods and/or services is pending ( parent application ), the applicant may make another application ( divisional application ) for the registration of the trade mark in respect of some only of the goods and/or services in respect of which registration is sought under the parent application.
Note: For applicant and pending see section 6.
(2) To avoid doubt, the parent application may itself be a divisional application.
13. Section 46 of the Act states:
Rules relating to divisional applications
(1) A divisional application must:
(a) be for the registration of the trade mark to which the parent application relates; and
(b) specify the goods and/or services to which it relates; and
(c) specify the goods and/or services that are to remain in the parent application.
Note: For divisional application and parent application see section 45.
(2) When a divisional application is made, the Registrar must, unless the parent application has lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made.
14. The new provisions came into effect on 27 March 2007, almost three months before the application was lodged. Nonetheless, section 6 of the Act defines the “filing date” of an application to be:
(a) in relation to an application for the registration of a trade mark other than an application referred to in another paragraph of this definition--the day on which the application is filed; or
(b) in relation to a divisional application for the registration of a trade mark--the filing date of the application that is the parent application (within the meaning of section 45) in relation to the divisional application.
15. Reading section 6(b) in conjunction with section 45(2) means that the filing date of the application is the filing date of the grandparent application, 17 December 2001, which pre-dates the operation of section 46(1)(c). Were that the extent of the matter, the application would be properly made, however the Amendment Act includes various “Application” or “Application and saving” or “Transitional” items which explain when certain provisions come into force. Item 69, an “Application” provision, states that “the amendments made by items 66 and 68 apply to applications made after the commencement of this item”.
16. Accordingly, applications made after 27 March 2007 are distinguished from applications filed after 27 March 2007, with the result that section 46(1)(c) does in fact apply to the application.
17. Clearly, the application did not meet the requirement of section 46(1)(c) and so a number of subsidiary questions flow. The first and fundamental question is whether compliance with section 46(1)(c) is required in order to create a valid divisional trade mark application. Put another way, was the application invalid, or incomplete?
Invalid or incomplete?
18. The issue of whether the application was invalid or incomplete has a surviving influence on the post-filing requests for amendment, since only a pending application could be amended. Accordingly, what is critical in this case is how the application made on 15 June 2007 is to be characterised – was it void ab initio or was it a valid but imperfect application? In this discussion I will treat the word, invalid, to mean void, in the knowledge that the word has been used by the Office in different ways to mean quite different things.
19. Plainly, the Office did not treat the application as invalid. The application was accorded a filing date and an application number. No formalities objections were raised in relation to the omission of a specification of goods or services to remain in the parent application. The application was published and the published particulars (to this day) indicate that the application is a divisional of application no. 1036686. The application was then substantively examined.
20. In practice, the new provisions were not trouble free. On 26 July 2007 (notably, within the same timeframe as the filing and examination the application ) the Office published an official notice entitled “Legislation and Examination Practice in Relation to Divisional Applications”, set out in full in the appendix to this decision. The notice states that divisional applications filed after 27 March 2007 which do not comply with section 46(1)(c) are invalid, but goes on to say that an applicant may amend the invalid application by forfeiting the divisional priority claim. Clearly, the notice does not use the word “invalid” to mean void.
21. Moreover, the wording of the notice implies a distinction between the validity of the application and the validity of the divisional claim. It suggests that an application under Division 3, Part 4 can be converted to an ordinary trade mark application by forfeiture of the divisional priority claim. That position would appear to be supported by section 65 of the Act which is concerned with amendment of an application after particulars of the application have been published. In particular, section 65(6) states that “an amendment may be made to change the type of registration sought in the application (for example, an application for the registration of a trade mark as a certification trade mark may be amended to an application for registration as a collective trade mark)”.
22. Additionally, the Trade Marks Office Manual of Practice and Procedure (“the Manual”) suggests in many places that if the minimum filing requirements are met, an application will be treated as incomplete and the applicant given the opportunity to perfect the application.
23. I turn to the regulatory framework. Regulation 4.2 of the Trade Marks Regulations 1995 (“the Regulations”) states:
Application in approved form -- requirements for filing
(1) To be taken to be filed, an application for registration of a trade mark that is in an approved form must:
(a) state that the application is for registration of the trade mark, or contain a clear indication to that effect; and
(b) include a representation of the trade mark that is sufficient to identify the trade mark; and
(c) specify the goods and/or services in relation to which the application is made; and
(d) include sufficient information to enable the Registrar to establish the identity of the applicant; and
(e) contain sufficient information to enable the Registrar to contact the applicant.
(2) If an application does not meet a requirement set out in paragraph (1) (a), (b), (c) or (d), the Registrar must give to the applicant written notice of the requirement.
(3) If the applicant meets the requirement within a period of 2 months from the date of the notice, the application is taken to be filed on the day on which the requirement is met.
(4) If the applicant does not meet the requirement within that period, the application is taken not to have been filed.
24. Regulation 4.2AA states:
Divisional application -- additional requirement for filing
A divisional application must contain the following information:
(a) a statement that the application is a divisional application;
(b) a statement identifying the parent application.
25. The application met all the filing requirements of Regulation 4.2 and 4.2AA. I observe that Regulation 4.2AA does not list as a specific filing requirement what is set out in section 46(1)(c).
26. I therefore decide that the application was not invalid, but incomplete.
Was the application in time?
27. Section 45(1) states that if the parent application is pending, the applicant may make another application (divisional application) for the registration of the trade mark in respect of some only of the goods or services in respect of which registration is sought under the parent application. Section 11(1)(a) states that an application for the registration of a trade mark under this Act is pending from the time it is filed until it lapses, is withdrawn or is rejected.
28. The parent application lapsed on 22 June 2007. The application was incomplete until 20 July 2007 when the applicant’s attorneys requested that the class 42 services remain in the parent application. The question which arises is whether the application must have been completed during the pendancy of the parent application?
29. As before in relation to the transitional provisions, I note that section 45(1) uses the word, make. I have already found that on 15 June, 2007 a valid, but incomplete, application was made and so I decide that the application complied with section 45(1), albeit that the request to amend the application to comply with section 46(1)(c) was lodged after the parent application had lapsed.
The amendment provisions – section 65(7)
30. Dr Summerfield pointed to section 65(7) of the Act which provides that “[a]n amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted.” Dr Summerfield submitted that:
… subsection 65(7) is applicable because an amendment to the goods/services to remain in the parent application has no effect upon the rights that the applicant would have under a registration in respect of the divisional application, once granted.
The examiner considered that the amendment would have the effect of providing the trade mark, if registered, with an earlier date of registration, which would have the effect of extending the applicant’s rights in respect of such registration. We disagree. The applicant was entitled to file a divisional application, and the application was filed and entered into the Trade Marks Office records as a divisional application. The sole effect of the requested amendment will be to correct the application in relation to the services to remain in the parent application (which has now, in any case, lapsed). This will not result in any extension of rights.
31. In my opinion, section 65(7) has no application to the facts. The application was imperfect because of an omission to specify the goods/services to remain in the parent application. Section 65(7), by its terms, only permits amendment to a “particular specified in the application”. It is not concerned with omissions and so has no operation in this case. It is for that reason to be contrasted with section 65A, the consideration of which follows.
The amendment provisions – section 65A
32. Section 65A states, so far as relevant:
Amendment after particulars of application have been published—request for amendment advertised
(1)This section applies if:
(a)the particulars of the application have been published under section 30; and
(b)the amendment requested is not an amendment which could be made under section 65.
(2)The application may be amended to correct a clerical error or an obvious mistake in the application if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to make the amendment under this section.
33. Section 65A was introduced into the Act by Item 77 of the Amendment Act. Item 77 does not carry an “Application” or other type of transitional provision. It is found in Part 2 of Schedule 1 of the Amendment Act and so commenced on the date of proclamation, 27 March 2007. It therefore has potential impact on this application.
34. The phrase “clerical error” is not without ambiguity. The simplest, although not the only meaning, is that of an error make by a clerk, or the type of error made by a clerk. Clearly, that could be an error of omission. Dr Summerfield could not kindly be described as a clerk. Nonetheless, he might, on occasion, make the types of errors made by a clerk, or perform clerical tasks and in doing so make a clerical error. Nevertheless, for the reasons which follow, I prefer to discuss the omission as an “obvious mistake” rather than as a clerical error.
The amendment provisions – section 65A – obvious mistake?
35. The phrase “clerical error or obvious mistake” appeared previously only in Section 64 of the Act, which permits limited amendment to an application prior to publication of the particulars of the application. Dr Summerfield submitted that amendments under Section 64 are readily allowed and include changes to the applicant name, to the specification of goods/services, even to the trade mark itself. He reasoned that if those types of amendments could be made under section 64 because they were the result of a clerical error or an obvious mistake, then the same types of corrections should be permitted under section 65A since the phrase “clerical error or obvious mistake” cannot have a different meaning in the two sections.
36. I agree with that argument. What is an obvious mistake can not change in its essential character. What does change, before and after publication, is how the Registrar must exercise discretion in allowing the amendment or not. That said, I have no trouble in characterising the failure to comply with section 46(1)(c) as an obvious mistake. The Official Notice issued on 26 July 2007 suggests that the Office was aware of a number of cases in which this same mistake had been made. The applicant’s attorneys were seemingly not the only firm which failed to properly conform to the change in practice and so I conclude that, not only was the omission a mistake, but that it was a common mistake at that time. Accordingly, I see no reason not to regard it as an obvious mistake.
The amendment provisions – section 65A – Registrar’s discretion?
37. Section 65A(2) underscores the discretionary nature of the provision by stating that the power to amend the application exists if the registrar believes that it is fair and reasonable in the circumstances of the case to make the amendment. Exercise of the registrar’s discretionary powers under the Act generally requires consideration and balance of the interests of the applicant, the general public and any third parties. That exercise subsumes considerations of what is fair and reasonable. I also take note of what is written at paragraph 4.7.2 of the Manual, entitled, “kinds of amendments that could be made under section 65A”:
It will not be appropriate to limit the Registrar’s discretion under this section by comprehensively listing the kinds of amendments that may be “in” or “out” of this provision. The amendment must be to “correct a clerical error or obvious mistake”, but it must also be the Registrar’s opinion that “it is fair and reasonable in all the circumstances of the case to make the amendment”. Considerations would include:
(i) the timing of an amendment request in the life of an application (a request many months after filing would be unlikely to be allowed);
(ii) whether a search locates conflicting marks whose rights may be affected by the change. In this last scenario it may be necessary to notify those trade mark owners, in line with processes used for notification of owners of cited marks in section 44(3) and 44(4) acceptances.
38. The applicant clearly intended to file a divisional application. It has done so previously and validly in relation to the same trade mark (the parent application). For the purpose of the exercise of any discretionary favour, the applicant is in my view entitled to rely on the presumption of validity entailed by the fact that the application was approved on 22 June 2007 and was accorded a filing date and application number.
39. So far as the public interest is concerned, there is no harm. The application has been entered, and its particulars published, as a divisional application. An inspection of the Trade Marks Office database by a member of the public would show that the application is a divisional of application no. 1036686, and is entitled to a priority date of 17 December 2001. That person would make the same assumptions based on those facts, or be given the same advice by his professional advisors, as he would were this matter decided in the applicant’s favour.
40. The question of the potential impact of the requested amendment on third party applicants has two aspects. The first stems from the consideration set out in the Manual of whether a search of the Trade Marks Office database “locates conflicting marks whose rights may be affected by the change”. A primary example might be where the requested amendment is to the trade mark itself. In this case, however, the procedural omission to identify the services to remain in the parent application has no impact on the rights given by the application, were it to proceed in its current form. Its class coverage remains as it did when the application was filed and, as just noted, the register has always indicated the priority date of the application to be that of its grandparent, 17 December 2001. It has to be assumed that date has been applied by examiners of later filed applications for conflicting trade marks when making their section 44 search. Accordingly, were the amendment allowed, the application would stand as no greater bar to those potential applicants as it might at this point in time.
41. The second aspect to the consideration of the position of third party trade mark right holders stems from the fact that two registered trade marks have been cited by the examiner as a result of the alleged loss of priority. Dr Summerfield submitted that the requested amendment would have no adverse impact because both of the cited trade marks were registered over the grandparent application which had an earlier priority date than either one, and in any event, the two cited marks are already registered.
42. Weighing these considerations, I find that it is a fair and reasonable exercise of the registrar’s discretion to allow the requested amendment. In reaching that conclusion I am influenced by the safeguard built into the provision by subsections 65A(3) and (4) which are set in my Decision.
Decision
43. For these reasons I decide that the application should potentially be able to retain its status as a divisional application. That would require amendment under s 65A with the application being amended to indicate that the class 42 services described as, “Certifying and promoting the goods and services of others that meet prescribed standards”, remain in the parent application.
44. Sections 65A states in part that:
(3)Subject to subsection (5), the Registrar must advertise the request for the amendment in the Official Journal.
(4)Subject to subsection (5), a person may, as prescribed, oppose the granting of the request for the amendment.
45. Accordingly, I direct that the advertisement proceed. If at the end of the opposition period there has been no such opposition, I direct that the application be amended and treated thereafter as a divisional application under Division 3 of Part 4 of the Act.
46. The parent application having lapsed, there would be no action to be taken in relation to it.
47. In the event of an opposition, further action on the amendment must await the outcome of the opposition process.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
10 June 2008
Appendix
Official Notice
TRADE MARKS OFFICE
Legislation and Examination Practice in Relation to Divisional Applications
New provisions for divisional applications came into effect on 27 March 2007. The intent of the amended legislation was for the goods/services of the divisional application to be clearly divided from those of the parent and to avoid duplication.
Some divisional applications filed on or after 27 March 2007 have been invalid.
The most common problems are those divisional applications where the goods and/or services that are to remain in the parent have not been specified or where an overlap exists between the goods and/or services of the parent and the divisional.
To avoid submitting an invalid divisional, you must inter alia:
•Specify the goods and/or services to remain in the parent [section 46(1)(c)] on the divisional application at the time of filing; and
•Ensure that there is no overlap between the goods and/or services of the parent and the divisional. According to section 46(2), when a divisional application is made, the Registrar must exclude the goods/services of the divisional from the goods/services of the parent. In cases of overlap the Registrar must therefore exclude goods and/or services from the parent that the applicant has specified to remain in the parent.
For example, a divisional application is filed for “headgear” where the goods of the parent are “clothing, footwear and headgear”. The divisional application specifies “clothing, footwear, caps” as the goods to remain in the parent. There is an overlap with “caps” and “headgear”. Since the Registrar must exclude the goods of the divisional from the goods of the parent there is no option under section 46(2) for “caps” to remain in the parent. If the application is to proceed with the divisional priority date, the parent specification will be amended by the Registrar to read “Clothing and footwear”. Alternatively, the applicant may retain the overlapping goods by forfeiting the divisional priority claim.
A list of questions follows (see next page) to assist applicants and agents when filing divisional applications.
FILING DIVISIONALS ON OR AFTER 27 MARCH 2007
·Is the applicant of the divisional application the same as the applicant for the parent application?
·Was this application filed while the parent application was still pending? (pending includes status “accepted”)
·Is the trade mark for this application the same as the trade mark on the parent application
·Are the goods/services of the divisional some only of the goods/services of the parent?
·Does the application specify the goods/services that are to remain in the parent application?
·Are the goods/services of the divisional clearly distinct from the goods/services to remain in the parent? (NB. There should be no overlap in the goods/services of the parent with the goods/services of the divisional.)
Please contact IP Australia if you have any queries regarding divisional applications.
Queries: Tanya Duthie and Shirley Harris
Technical Policy and Projects
+61 2 6283 2838 and +61 6283 2946
For publication in the Australian Official Journal of Trade Marks on Thursday 2 August, Thursday 9 August and Thursday 16 August 2007.
0
0