Allied Mills Pty Ltd
[2015] ATMO 57
•25 June 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1433253 (30) - SUPERB- in the name of Allied Mills Pty Ltd.
Delegate: | Nicole Worth |
Representation: | Applicant: Andrew Fox of Counsel, instructed by Gadens Lawyers |
Decision: | 2015 ATMO 57 Section 38 proceedings – provisions of s 41(6) applied in accepting application – acceptance not unreasonable – basis for revocation not sufficiently explained – acceptance not revoked |
Background
This decision concerns s 38 of the Trade Marks Act 1995 (‘the Act’). It arises from the Registrar’s notice of intention to revoke the acceptance of trade mark application 1433253, which was accepted under the provisions of s 41(6).[1] The current details of the application are below:
Trade Mark: SUPERB (‘the Trade Mark’)
Applicant: Allied Mills Pty Ltd (‘the Applicant’)
Filing Date: 27 June 2011
Divisional date: 25 November 2004 (per parent application 1031691) [2]
Goods:Class 30: Flour including wheat and maize (corn) flour, pea flour, rice flour, soya flour, flour from other millable grains, legumes, pulses and bakery mixes and premixes, that are sold to bakeries and other manufacturers on a wholesale basis and not on a retail basis to end-consumers.
[1] The application was also accepted under the provisions of s 44(3)(b), however the matters under s 44 are not at issue here.
[2] A divisional application, in brief, is one based upon a previously-filed application (a ‘parent’ application) but in respect of some only of the previously-specified goods or services. The parent application may itself be a divisional (and there may be several generations of parent applications as is the case here). See s 45 of the Act.
The application initially claimed a broad range of goods in class 30 that were not limited to those “sold to bakeries and other manufacturers on a wholesale basis and not on a retail basis to end-consumers”. The application was examined and grounds for rejection under, inter alia, s 41 were raised on the basis that the Trade Mark had no inherent adaptation to distinguish. The Applicant filed evidence of use of the Trade Mark (discussed in more detail later in this decision) however the examiner found it insufficient for the provisions of s 41(6) and maintained the ground in the second examination report.
The Applicant then filed further evidence which provided more examples of the Trade Mark in use, and also limited its goods to “flour including corn and masa flour, pea flour, rice flour, soya flour, bakery mixes and pre-mixes”. The ground for rejection was again maintained on the basis that the evidence showed the Trade Mark was used with other material that identified origin or was used in what appeared to be a descriptive context. The examiner noted that the evidence provided did not include any independent evidence that supported the Trade Mark having become distinctive in its own right. To that end the examiner cited Part 22.6 of the Trade Marks Examiner’s Manual wherein it is stated:
In general, in addition to evidence of the extent of use of the trade mark and advertising in connection with it, declarations from persons of experience in the trade should be required. Due weight is to be given to statements by such persons that consumers of the goods generally associate the trade mark with the applicant [Examiner’s emphasis]
and suggested that “It would be more advantageous for the applicant to provide supporting documentation which is independent and unbiased, demonstrating that the trade mark was overwhelmingly identified with the claimed goods at the time of filing the application”.
In response the Applicant filed four declarations from members of the commercial baking and flour milling industry, including one in the form of an expert report, attesting to the respective declarants’ recognition of SUPERB as the name of a flour product produced by the Applicant. The examiner maintained the ground for rejection. In his explanation the examiner stated that although the declarations from members of the trade were fairly persuasive of distinctiveness in a large-scale commercial context, the relevant buying public for the goods (as they stood at that time, being “flour including corn and masa flour, pea flour, rice flour, soya flour, bakery mixes and pre-mixes”) was very broad - including most Australian households - and the evidence did not support that the general buying public would consider the word SUPERB to be a trade mark.
In response, in order to “obviate any doubt that SUPERB is a wholesale product”, the Applicant indicated that it was willing to limit the goods specified in the application to:
Flour including wheat and maize (corn) flour, pea flour, rice flour, soya flour, flour from other millable grains, legumes, pulses and bakery mixes and premixes, that are sold to bakeries and other manufacturers on a wholesale basis and not on a retail basis to end-consumers.
The amendment was made and the application was accepted under the provisions of, inter alia, s 41(6). The acceptance was advertised in the Australian Official Journal of Trade Marks on 11 December 2014.
On 11 February 2015, after an internal review of the application, the Registrar issued a notice of intention (‘the Notice’) to revoke the acceptance. The Notice gave the following reasons:
Prior to accepting the application the examiner considered the four supporting declarations provided by the applicant together with the restricted class 30 claim offered and formed the opinion that this together with the earlier evidence supplied would satisfy evidence requirements for section 41(6) of the Trade Marks Act, 1995. Unfortunately, this decision was incorrect. The examiner failed to give adequate consideration and weight to the other evidence of use which had been previously reported to the applicant as being quite inadequate as it did not prove sufficient use of the plain word SUPERB as a trade mark. The supplementary evidence is not sufficient to compensate for the flaws of the earlier evidence and allow acceptance. The examiner has overlooked these serious flaws when considering the evidence in its entirety and accepting the application.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).
The Notice also informed the Applicant of its right to be heard, which it exercised.
The hearing took place before me, as a delegate of the Registrar of Trade Marks, in Sydney on 15 April 2015. Andrew Fox of counsel, instructed by Mario Sindone of Gadens Lawyers, made submissions on the Applicant’s behalf.
Evidence filed in support of the application
The evidence filed in support of the application comprises statutory declarations by:
· Nikki Town (Town 1), (then) Company Secretary of the Applicant, with Confidential Annexure XX-1 and Exhibit XX-2, dated “February 2012”;
· Nicole Town (Town 2), (then) General Manager and Company Secretary of the Applicant and which I understand to be the same person as above, with Tabs 1 to 25, dated 20 January 2014;
· Mario Sindone, Special Counsel for Gadens law firm, dated 1 October 2014;
· Lindsay Shane Weber, a Director of Homestyle Bakeries Pty Ltd, with attachment “A”, dated 19 May 2014;
· Oliver Ferns, Category Procurement Manager – Commodities, Arnott’s Biscuits Limited, dated 13 June 2014;
· Alex Krzanic, Group Procurement Manager – Commodities & Ocean Freight, Goodman Fielder, dated 23 June 2014;
· John Walton Packham, an expert witness, to which is annexed a report written by him (‘the Packham report’) containing his opinion on a number of matters regarding the Trade Mark, with Appendices A to H; and
· Stephanie Vass, General Manager of Corporate Services and (now) Company Secretary of the Applicant, dated 20 November 2014.
The Applicant is a leading flour miller and manufacturer of pre-mixed baking ingredients, and it operates seven milling facilities and four specialty mixing sites across Australia. It, and its predecessors, have used the Trade Mark for more than 100 years in Australia.
The Trade Mark was first used in 1904 by Mungo Scott Limited, a predecessor of the Applicant. The examples of use up to 1983 are voluminous. The table below shows the various formats and various publications in which the Trade Mark was used over time.
| The Bakers’ & Confectioners’ Journal 1904 | |
| Rockhampton Morning Bulletin 1906-1909 | Mungo Scott’s “Superb” Flour |
| The Australasian Baker 1908-1909 | |
| The Australasian Baker 1910-1922 | |
| The Australasian Baker 1922-1925 | |
| The Australasian Baker 1925-1931 | |
| The Australasian Baker 1931-1935 | |
| The Australasian Baker 1935-1943 | (The word above “SUPERB” is ‘Celebrated’) |
| The Australasian Baker and Millers’ Journal 1943-1955 | (The word above “SUPERB” is ‘Celebrated’) |
| Advocate 1949 | (in the text above ‘BEST SYDNEY FLOUR’ are the words ‘Mungo Scott’s “Superb” Brand’) |
| The Australasian Baker and Millers’ Journal 1960-1969 | (as part of full page advertisements about Mungo Scott mills) |
| The Australasian Baker and Millers’ Journal 1973-1980 | (as part of full page advertisements about Mungo Scott mills) |
| The Australasian Baker and Millers’ Journal 1982 | (the word SUPERB appears in a rectangular box beneath the image of a unicorn upon some of the sacks) |
| The Australasian Baker and Millers’ Journal 1983 | (the word SUPERB appears in a rectangular box beneath the image of a unicorn upon the stylised representation of the Mungo Scott sack of flour) |
The examples of use then move into what I will refer to as “present day use” of the Trade Mark (there are no examples of use for the years between 1983 and 2010). Rather than Mungo Scott it is the name “Allied Mills” which appears with the Trade Mark in the present day use, as per the following packaging:
Samples of actual packaging are provided, as are images of the packaging which appear in the Applicant’s product catalogues, upon the Applicant’s website ‘alliedmills.com.au’, and in three other entities’ food service catalogues dated between 2010 and 2013. Generally, images of this packaging appear alongside images of the Applicant’s other packaged flour products, such as those below:
These images of the Applicant’s flour products often appear in catalogues, or pages of catalogues, that also display the Applicant’s ‘umbrella’ brand:
(‘the Allied Mills logo’)
The evidence relating to present day use also includes a number of invoices which are headed with the Allied Mills logo and itemise “AM SUPERB BAKERS FLOUR 25” in the description of the item sold.
Confidential sales data for the years 2002 to 2012 indicates the Applicant sells vast amounts of flour under the Trade Mark each year, generating impressive sales revenue.
The Applicant’s customer distribution list and a spreadsheet of sales by customer are also in evidence. This data is confidential and I will therefore not discuss its detail, although I make the following observations: it shows sales of the Applicant’s goods under the Trade Mark are made Australia-wide and they are made to bakeries, food shops, food companies, wholesalers and distributors in scales (of dollar amounts) that range from what are clearly commercial amounts to minimal amounts.
The Weber, Ferns, Krzanic and Packham declarations are made in the respective declarants’ capacity as representatives of the trade. Both Mr Weber and Mr Krzanic had, at the time of making their declarations, been involved in the flour milling and commercial baking industries for substantial periods of time (39 years and 25 years respectively). Mr Weber is a director of Homestyle Bakeries Pty Ltd and Mr Krzanic is a procurement manager of Goodman Fielder. Although they do not specifically address their knowledge as at the parent application’s filing date approximately 10 years prior, both attest to regularly encountering many of the products made by the Applicant and to seeing the brand SUPERB on the packaging of the Applicant’s particular type of flour for the entire time they have been involved in their industry. Both declarants also state:
I recognise the brand name “SUPERB” to be that of a particular flour product by Allied Mills and I associate that brand immediately with flour produced by Allied Mills.
Mr Ferns is a procurement manager for Arnott’s Biscuits Limited, and he also attests to his knowledge and recognition of the brand SUPERB. However he commenced working in the industry only in 2007, some time after the filing date of the ultimate parent application, and his statements are made in respect of the seven years between 2007 and 2014. His declaration is therefore of limited assistance in determining the acquired distinctiveness of the Trade Mark as at 2004
Mr Packham’s declaration annexes the Packham report.[3] Mr Packham outlines his extensive experience starting in 1951 as an apprentice baker, through various positions including as an advisor to the Commonwealth Colombo Plan assisting in the establishment of modern bakeries in India; test baker and then Director of the Bread Research Institute of Australia; General Manager of Allied Mills’ factory in Kirrawee; Assistant to the Managing Director of Bunge (Australia) Pty Ltd (a large flour milling and bakery operation in Australia); various board positions of bread manufacturer associations; and membership of American, Australian and British bakery societies.
[3] The report appears to have been prepared in compliance with the Federal Court’s Practice Note CM 7 regarding the preparation of expert evidence, provided to Mr Packham in accordance with Rule 23.12 of the Federal Court Rules 2011.
In response to questions posed by the Applicant’s lawyers, the Packham report goes on to describe how Mr Packham worked in a bakery as a schoolboy and states:
For as long as I can remember, even before I officially started as an apprentice [in 1951] at Packham’s Bakery Pty Ltd, I was aware that SUPERB was a type of flour specific to Mungo Scott (and later Allied Mills)…
I also recall that part of my role as an apprentice was to record each bag of flour that came into the store. Each different type of flour was stacked separately. I knew that the stack of SUPERB flour came only from MUNGO SCOTT.
In terms of an association of SUPERB with a particular type of flour, he explains that white flour which contains a higher content of protein (10%-12%) makes a lighter and fluffier dough, and that:
Mungo Scott (and later Allied Mills) produced this particular type of white flour. Throughout my working life, Mungo Scott (and later Allied Mills) only ever used the name “SUPERB” for this product.
When I purchased SUPERB flour, I knew it:
(a) Came from Mungo Scott (and later Allied Mills); and
(b) Contained a higher and consistent level of protein.
…
SUPERB flour has a consistent fine grain quality, colour and protein content range. This type of flour is to be distinguished from the more common cake flour, which has a lower protein content (6%-9%) made from soft winter wheat.
It is this particular flour quality, made by Mungo Scott (and later Allied Mills) that carries the name SUPERB.
With regard to whether other flour manufacturers or millers use SUPERB, Mr Packham states that none do, either in respect of other types of flours or in respect of high protein flour. He explains further:
This is so because, over the years, other flour mills have used different names to distinguish their own equivalent to Allied Mills SUPERB. Examples of these are: [“Diamond”, “Waratah”, “Best”, “Excelsior”, “Brilliant”, “Invincible”, and “Finest”. Advertisements of these are annexed to the Packham report].
From my knowledge of each of these ‘brands’ of flour and my experience in the industry, it is my opinion that the brand “SUPERB”:
(a) Is much more well known than each of the brands listed [above];
(b) Has been used continuously as a brand of flour for a much longer time than the brands listed [above]; and
(c) Is the only brand still being used to designate the particular type of flour made by Allied Mills.
…
Although it has been a relatively common occurrence in the industry for flour millers to ascribe a name to high protein flours, only the brand “SUPERB” has survived the years to continue to be applied to Allied Mills’ particular product.
Lastly, in terms of SUPERB being a brand of flour synonymous with Allied Mills, Mr Packham states:
…[It] is my understanding, and the understanding of any competent buyer of flour, that the name “SUPERB” is a particular brand of flour that was made by Mungo Scott and from the 1970’s by Allied Mills.
…
Throughout my working life as a baker, whenever I ordered high protein flour from Mungo Scott (and later from Allied Mills), I simply used the word SUPERB when making the order. Both I and the flour salesman understood exactly what that term meant.
In the course of undertaking my many positions with Industry Associations, whenever the term “SUPERB” was used in conversation, it was known as a term of the trade known as being the white high protein flour made by Mungo Scott.
His closing statement is that:
When the word “SUPERB” is used in the flour milling industry, either written or oral, it means the high protein white flour produced by Allied Mills. This particular meaning of the word is known industry wide and is used and understood by bakers and other flour millers throughout Australia.
The remaining declarations filed in support of the application outline the prosecution history of the application and make submissions regarding the acquired distinctiveness of the trade mark.
Section 38
Section 38 of the Act provides for revocation of acceptance and is reproduced below:
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.
The decision to revoke acceptance is therefore reliant upon two factors, broadly being that the trade mark in question should not have been accepted and that it is reasonable to now revoke acceptance, taking into account the circumstances existing at the relevant times.
The purpose of s 38 is to remedy acceptances that have been made in error. If the error is realised before a trade mark proceeds to registration, the Registrar has the power to revoke the acceptance and examine the trade mark once again, thus providing a simple procedure for remedying deficiencies in a trade mark before it proceeds to registration. The effect of revocation under s 38 is that the application is taken to have never been accepted, the application is returned to the examination phase of the application process, and there is no provision for an appeal (noted in 1-800-Flowers.Com, Inc. v Registrar of Trade Marks[4] and reiterated in FPInnovation Pty Ltd v Registrar of Trade Marks[5]).
[4] [2012] FCA 209; (2012) 201 FCR 488.
[5] [2013] FCA 826.
Prior to 2006, revocation of acceptance required that the acceptance be due to error, omission or special circumstances, however in practice this requirement was interpreted more narrowly than originally intended. Section 38 was accordingly amended in 2006 to make clear that the Registrar could take account of any circumstances (whether known or not) that should have prevented acceptance, without the need to identify a specific error or omission, and that the Registrar must have regard to all circumstances when deciding whether revocation is reasonable. The focus of the inquiry is therefore upon the reasonableness of the Registrar’s actions, and not on whether an error, omission or special circumstance preceded the trade mark’s acceptance.[6]
[6] As explained in the Intellectual Property Laws Amendment Bill 2006, Explanatory Memorandum, Item 1 of Schedule 1.
At the same time it is to be borne in mind that revocation on the basis of a change of opinion is inappropriate, as noted by the delegate in Aceto Balsamico del Duca di Adriano Grosoli SrL v Registrar of Trade Marks[7]:
Clearly revocation on the basis of a change of opinion is to be avoided at all costs. A delegate of the Registrar has already exercised their discretion to accept and, in addition, the validity of all acceptances would be more tenuous if they could be overturned so readily.
[7] [2008] ATMO 2; (2008) 75 IPR 400.
In this context I turn to the first leg of s 38, namely whether the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted. No additional or other circumstances existing at the time the application was accepted have come to light, and so my determination is based upon the same information as that before the delegates who accepted the application and proposed revocation.
Section 38(1)(a)
In order to answer the question of whether the application should not have been accepted it is necessary to have regard to the relevant provisions of s 41, upon which the proposal for revocation was based. As at the filing date of the application the relevant provisions were:[8]
[8] Section 41 was amended in 2013, but it is the form in which it existed prior to then that applies here (the amended form applies to applications filed on or after 15 April 2013, see Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50).
41 Trade mark not distinguishing applicant's goods or services
(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.
…
(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.
…
(6) If the Registrar finds that the trade mark is not 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).
The Applicant did not seek to open the question of the degree to which the Trade Mark is inherently adapted to distinguish its goods. It accepts that the Trade Marks falls for consideration under s 41(6). I too consider this to be so: the ordinary signification of the word SUPERB is “admirably fine or excellent”.[9] It falls within the category of marks that consist wholly of a sign ordinarily used to indicate quality, referred to in Note 1 of s 41(6). Accordingly, the Trade Mark has no inherent adaptation to distinguish the Applicant’s goods.
[9] Per definition no. 2 in the Macquarie Dictionary online edition, © Macmillan Publishers Group Australia 2014.
That being the case, I turn to a consideration of the evidence filed and the restriction made to the goods which led to the acceptance of the Trade Mark.
To satisfy the provisions of s 41(6)(a) the Applicant must have established that because of the extent to which it used the Trade Mark prior to 25 November 2004[10] the Trade Mark did, by that date, distinguish the specified goods as being those of the Applicant. The length of use and volume of trade under the Trade Mark are vast, and of themselves do not contribute to any potential deficiencies of the evidence. However, it is well established that use does not necessarily equate to distinctiveness[11] and it is clear that the manner in which the Trade Mark has been used has evolved over time. It is relatively apparent that the word SUPERB was more clearly presented as a trade mark in the earlier years of the twentieth century than from around the 1960s onward, albeit always in combination with the word Mungo Scott. In those earlier years, the size and position of the word SUPERB, the use of inverted commas, the references to “Superb” Brand Flour and Celebrated “Superb” Flour, and to an extent its inclusion within the unicorn logo are likely to have had considerable impact in educating the market that SUPERB was not merely a laudatory claim but a signifier of origin.
[10] Section 6 of the Act defines “filing date” in respect of divisional applications as the filing date of the parent application (within the meaning of s 45), and the filing date of the ultimate parent of this application is 25 November 2004.
[11] British Sugar Plc v James Robertson & Sons [1996] RPC 281.
Then, judging from the evidence presented, from the 1960s the primary identifier for the goods was either the name Mungo Scott or the device of a unicorn. Whilst reference was still made to SUPERB, it was in a manner less clearly intended to be a signifier of origin (as opposed to a description of quality); such as in the advertisements below.
Nor was the unicorn device devoted only to SUPERB flour such that it too may have become exclusively associated with the Trade Mark. The image below shows that that the unicorn device was also used on, at least, kibbled wheat.
The “present day” use, exemplified in the image below, shows SUPERB to be used still less clearly as a badge of origin. In addition to the house brand ‘Allied Mills’ and the Allied Mills logo, the Applicant’s packaging uses a range of words in precisely the same manner to identify various types of flour. Some of those words are purely descriptive, such as SELF RAISING or WHOLEMEAL, some are terms of art, such as SOFT or CONTINENTAL, and some convey, on their face, only laudatory claims such as PERFECTION and SUPERB.
The Applicant’s explanation for the change in the manner of use is that the Applicant believed, rightly or wrongly, that the market for its goods was so well educated that SUPERB flour was made only by it, it no longer needed to emphasise the word in the same manner. Whatever the Applicant’s belief was regarding the strength of its Trade Mark, it must be acknowledged that the evidence shows the Applicant has never relied upon the Trade Mark as the sole badge of origin for its goods. Whilst I accept that more than one trade mark may be used to identify source, the result here is that the acquired distinctiveness of SUPERB must be assessed from evidence which shows it to have always been used with other material identifying origin.
The Weber, Krzanic and Packham declarations were made by people with extensive experience in positions of authority within the commercial baking or flour industries. Although some of the statements made are identical they are not merely “proforma” declarations with different signatories. The Packham report also carries significant weight. It provides an expert view of matters within the large-scale, commercial sector of the baking and flour milling industry – a sector with which the Registrar and her delegates are likely to have little knowledge. Accordingly the Packham report and the declarations from other members of the trade are of considerable assistance.
Whilst the declarations described above carry significant weight they only support acquired distinctiveness within the large-scale, commercial sector of the market, not the entirety of the market falling notionally within the scope of the goods specified in the application at that time (being “flour including corn and masa flour, pea flour, rice flour, soya flour, bakery mixes and pre-mixes”). The entirety of the market for the various flours then specified includes almost all Australian consumers - flour being a basic foodstuff. The examiner pointed out as much in the fourth examination report maintaining the ground for rejection.
The amendment of the goods to that shown below does better reflect what is shown in the evidence of the Trade Mark’s acquired distinctiveness:
Flour including wheat and maize (corn) flour, pea flour, rice flour, soya flour, flour from other millable grains, legumes, pulses and bakery mixes and premixes, that are sold to bakeries and other manufacturers on a wholesale basis and not on a retail basis to end-consumers
However the restriction to a certain sector of the market as opposed to certain goods, as a mechanism by which to achieve acceptance, does raise some doubt. It is difficult to foretell the practical effect of the restriction if faced with a similar trade mark in respect of flours sold in supermarkets and shops on a non-wholesale basis, given that the monopoly (if granted to the Applicant) would be on the basis of distinctiveness acquired only in the wholesale sector of the market. Nonetheless, though I hold some reservations regarding the effectiveness of the restriction, it is not altogether unreasonable and is supported by the evidence. Moreover it is perhaps a concern that would be better tested in an adversarial setting, such that it is more appropriate to give the Applicant the benefit of that doubt at the examination stage.
On the one hand, therefore, there is evidence of extensive use of the Trade Mark spanning more than 100 years as well as statements and an expert report from members of the commercial sector of the baking and flour market attesting to their recognition of the Trade Mark as the name of a product of the Applicant. There is also the restriction to the specified goods, although its practical effect remains uncertain. On the other hand there are weaknesses in the evidence, primarily that the examples of use show the Trade Mark is always used with another badge of origin, that over time the Trade Mark has been less clearly used as a badge of origin, and that there is a significant gap in the examples of use (being between the years 1983 and 2010) which encompasses the 2004 filing date of the ultimate parent.
In looking at the question of whether the Applicant has satisfied the provisions of s 41(6), there are factors each way. Weighing them up, the acceptance of the application does not appear to have been unreasonable. The Applicant has addressed the deficiencies raised by the examiners at each step of what has been a lengthy and comprehensive examination process, ultimately leading to acceptance of the application under the provisions of s 41(6). Whilst it is possible that different delegates may come to different conclusions about the strength of the evidence filed (about which more discussion follows), the acceptance of the application was not baseless.
With that in mind I turn to consider the second limb of s 38, being a consideration of all the circumstances that exist at the time of the decision to revoke
Section 38(1)(b)
The second limb of s 38 requires a consideration of whether revocation is reasonable, taking into account all of the circumstances existing at the time of the decision whether to revoke. The Applicant focused its submissions upon this second limb, in particular that a “full review” process had taken place[12] and that there was no “chink in the armour” of that process. It was pointed out that four examination reports were issued each of which identified further evidence that would be required in order for the application to proceed, and the Applicant submitted it met those requirements each time. It was also pointed out that the fourth examination report did not convey to the Applicant any of the evidentiary deficiencies described in the Notice, and that the proposal to revoke stood in contrast to the chronology of the examination process. Considering the “rigorous and thorough” examination process to which the application was subjected, the apparently idiosyncratic decision to revoke and paucity of reasons given was submitted to be unreasonable.
[12] In the sense of the “full review” referred to in Aceto Balsamico del Duca di Adriano Grosoli SrL v Registrar of Trade Marks, supra.
The reasons given in the Notice were:
Prior to accepting the application the examiner considered the four supporting declarations provided by the applicant together with the restricted class 30 claim offered and formed the opinion that this together with the earlier evidence supplied would satisfy evidence requirements for section 41(6) of the Trade Marks Act, 1995. Unfortunately, this decision was incorrect. The examiner failed to give adequate consideration and weight to the other evidence of use which had been previously reported to the applicant as being quite inadequate as it did not prove sufficient use of the plain word SUPERB as a trade mark. The supplementary evidence is not sufficient to compensate for the flaws of the earlier evidence and allow acceptance. The examiner has overlooked these serious flaws when considering the evidence in its entirety and accepting the application.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).
The Applicant submitted that it appeared an internal review had taken place and a decision had been made that revocation ought to be proposed. If that decision was to be used as the impetus to revoke acceptance, so the argument went, then it was a decision for which so little reasons had been given that it was unreasonable, per Minister for Immigration v Li wherein the High Court held:
Even where some reasons have been provided, as is the case here, it may nevertheless not be possible for a court to comprehend how the decision was arrived at. Unreasonableness is a conclusion which may be applied to a decision which lacks an evident and intelligible justification.[13]
[13] [2013] HCA 18; (2013) 249 CLR 332.
The Applicant also submitted that the lack of reasoning in the proposal for revocation suggested a change of opinion, as opposed to any error being unveiled (although in this respect I note that the unveiling of an error is not required). Whilst the Applicant accepts that the Registrar has a broad discretion, it submitted that s 38 does not bestow upon the Registrar an idiosyncratic discretion to revoke at any time because upon further reflection it was felt that the application ought to be returned to exam (particularly after a “rigorous and thorough” examination process).
Lastly, the fact that no trader or competitor has come forward to oppose the application since its acceptance is submitted to corroborate the Applicant’s view of the industry that no competitor has any intention of, or interest in, using the Trade Mark in respect of the specified goods. Additionally if a competitor did come forward, it was argued, then an opposition would enable the ground under s 41 to be more closely tested in light of an opponent’s contradicting evidence.
I agree that the reasons are extremely brief, particularly given the lengthy and involved process that preceded the Notice. They do not identify why the “supplementary evidence” does not compensate for the flaws of the earlier evidence, such as an insufficient quantity of supporting declarations, insufficient expertise amongst the declarants, or that the matter was one in which the opinion of an expert was of little assistance. Nor do the reasons identify any concerns with the restriction made to the goods. The reasons state only that the supplementary evidence does not compensate for the flaws of the earlier evidence (which had not shown “sufficient use of the plain word SUPERB”) and that the examiner failed to give adequate weight to that earlier evidence.
It is not clear to me what is meant by “sufficient use the plain word SUPERB”. Given the word is itself is generally presented in an unstylised form, I infer that what is meant by the statement is that the delegate considered the evidence did not show sufficient use of the Trade Mark absent other material which also signified origin. Whilst use of the Trade Mark as a sole badge of origin would certainly assist the Applicant’s case, it is not clear to me why the lack of such evidence outweighs the combination of supporting statements from experienced persons in positions of authority in the industry, the restriction to the goods and the evidence that has been provided. From reading the Notice it might be reasonably be supposed that in the exercise of weighing up the evidence, the delegate proposing revocation considered that the scale tipped in the opposite direction to that considered by the delegate who accepted the application.
In the context of acceptance not being without basis, and in the absence of reasons clearly explaining why that acceptance was defective, this does on its face appear to be the sort of “change of opinion” referred to Aceto and echoed in Re Bobart[14], wherein the Deputy Registrar observed:
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. [Footnotes original]
[14] (2010) 88 IPR 357; [2010] ATMO 43, at [55].
[15] The provisions of s 38 were changed in 2006 when s 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 [1948] 1 KB 223.
As a last circumstance to take into account, I note that the application had been advertised for opposition purposes for two months before revocation was proposed. No party opposed the application in that time, nor has any party come forward since.
Decision
Taking into account all of the circumstances under which the application was accepted and those that exist now, I do not consider that acceptance of the application under the provisions of s 41(6) was unreasonable nor that the examiner’s finding should be disturbed.
Accordingly I am not satisfied that the acceptance of the application should be revoked, and the application may proceed to registration upon payment of the registration fee.
Nicole Worth
Hearings Officer
Trade Marks Hearings
25 June 2015
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