TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application numbers 2235432 (classes 35, 38 and 42) betcloud and 2238971 (class 41) betcloud NEXT LEVEL WAGERING TECHNOLOGY with device and trade mark registration number 2208084 (classes 35, 38 and 42) betcloud NEXT LEVEL WAGERING TECHNOLOGY with device - all in the name of Betcloud Holdings Pty Ltd.
Delegate: | Timothy Brown |
Representation: | Applicant: Peter Creighton-Selvay of Counsel instructed by Harwood Andrews. |
Decision: | 2022 ATMO 212 Trade Marks Act 1995 (Cth) – sections 38 and 84A – whether to revoke acceptance and registration – not reasonable in all circumstances to revoke acceptance and registration. |
Background
This decision concerns the proposed revocation of acceptance under section 38 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) of trade mark applications 2235432 and 2238971 (‘Trade Mark Applications’) and the proposed revocation of registration under s 84A of trade mark registration 2208084 (‘Trade Mark Registration’). Betcloud Holdings Pty Ltd (‘Owner’) is the applicant of the Trade Mark Applications and owner the Trade Mark Registration, the relevant details of which are reproduced below:
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Trade Mark Applications
Trade Mark Number: 2235432
Trade Mark: betcloud (‘Application 2235432’)
Priority Date: 17 December 2021
Specification: See Annexure A
Trade Mark Number: 2238971
Trade Mark: (‘Application 2238971’)
Priority Date: 23 December 2021
Specification: Class 41: providing event wagering, betting and gambling services that facilitate event wagering, betting and gambling service providers excluding the provision of event wagering, betting and gambling facilities
Trade Mark Registration
Trade Mark Number: 2208084
Trade Mark: (‘Registration 2208084’)
Priority Date: 10 September 2021
Specification: See Annexure B
(Collectively, ‘Trade Marks’)
The applications to register the Trade Marks were examined as required by s 31 of the Act. No grounds for rejection were identified during examination. The Trade Mark Registration was entered onto the Register of Trade Marks on 20 April 2022. Application 2235432 was accepted on 10 January 2022 and Application 2238971 on accepted 7 February 2022.
On 31 May 2022 a Delegate of the Registrar of Trade Marks issued notices proposing to revoke registration of the Trade Mark registration pursuant to s 84A and acceptance of the Trade Mark Applications pursuant to s 38 of the Act (‘Revocation Notices’). The basis for the proposed revocations was a potential ground for rejection under s 44 of the Act. The notices relevantly stated:
Your trade mark is similar to earlier trade mark 2111103 because the earlier mark consists entirely of the words CLOUDBET which closely resembles the essential identifying feature of your mark, BETCLOUD.
Whilst I note the differences in the marks, being the reversal of word order, this is not sufficient to avoid a real and tangible risk for confusion amongst consumers. BETCLOUD…
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- AGLC
- Betcloud Holdings Pty Ltd [2022] ATMO 212
- Case
- [2022] ATMO 212
- Decision Date
CaseChat Overview and Summary
The legal issues before the Registrar were whether the trade mark registration should not have been registered, considering all circumstances existing at the time of registration, and whether it was reasonable to revoke the registration, again considering all circumstances. These issues were to be determined by applying the provisions of sections 84A and 38 of the *Trade Marks Act 1995* (Cth).
The Registrar's reasoning was guided by a two-limbed test under section 84A. The first limb required satisfaction that the trade mark should not have been registered, taking into account all circumstances at the time of registration, irrespective of whether the Registrar was aware of them then. The second limb required satisfaction that revoking the registration was reasonable, considering all circumstances. The Owner argued that the proposed revocation was merely a difference of opinion, highlighting that no administrative error was identified and that the similarity of the trade marks had been previously considered by the Registrar's delegates in relation to other trade marks filed by the Owner.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
Section 84A relevantly provides:Registration may be revokedPower 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. Section 38 relevantly provides: 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. Section 84A affords the Registrar with the discretion to revoke registration of a trade mark registration if satisfied that the registration in question should not have been registered, taking into account all the circumstances that existed when the trade mark became registered, and it is reasonable to revoke registration, taking into account all circumstances. The effect of revocation of registration is that the Act applies as if the trade mark had never been registered.[2] Consequently, the Registrar may revoke the registration of a trade mark and then revoke acceptance of the application so it may be re-examined under s 31.[3][2] Trade Marks Act 1995 (Cth) s 84C(2).[3] Ibid s 84C(5). Section 38 provides the Registrar with discretionary power to revoke acceptance of a trade mark application if satisfied that the application in question should not have been accepted and it is reasonable to revoke acceptance, taking into account all the circumstances. Both provisions set out a two limbed test. Firstly, I must be satisfied that the trade mark application or registration should not have been accepted or registered considering all the circumstances that existed at that time. Secondly, I must be satisfied that is it reasonable to revoke acceptance or registration taking into account all of the circumstances. The Owner contends that the proposed revocation amounts to a mere difference of opinion, noting that no administrative error was identified in the Revocation Notices, the earlier trade mark was expressly considered by examiner, and that the similarity of the trade marks was previously considered by delegates of the Registrar in relation to previous trade marks filed by the Owner that contain the words ‘Betcloud’.