Channel 4 Television Corporation

[2007] ATMO 6

TRADE MARKS ACT 1995

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

Re:Proposal to revoke acceptance of trade mark application number 1042282

(9, 16, 35, 38, 40, 41, 42) – MORE 4- in the name of Channel Four Television Corporation.

Delegate:	Alison Windsor
Representation:	Celia Davies of Freehills Patent and Trade Mark Attorneys of Melbourne
Decision:	Section 38(a) – error or omission in examination – acceptance to be revoked.

1. On 16 February 2005, Channel Four Television Corporation (“the applicant”) filed an application to register a trade mark in seven classes.  The trade mark is the word/number combination MORE 4.

2. Following receipt of a letter from a third party, EMAP Consumer Media Limited[1], (“Emap”) a delegate of the Registrar has proposed revocation of the acceptance of this application, according to the provisions of section 38 of the Trade Marks Act 1998 (“the Act”).  The applicant invoked its right to be heard in the matter of the proposed revocation.  I was delegated to hear the matter which came before me on 17 January 2007.  Celia Davies of Freehills Patent Trade Mark Attorneys in Melbourne appeared for the applicant by video conference.

   [1] Emap and Meredith Corporation have separately opposed this application.  The oppositions have been suspended pending the decision on the revocation matter.

History

1. The application file shows the trade mark was researched and reported on in the normal fashion.  No substantive matters were raised, and the application was accepted for possible registration following minor amendments to the goods and services specifications.  During his examination the examiner performed searches for conflicting trade marks, and the search strategy used, at first glance, appears to be thorough and all encompassing.  However, closer scrutiny of the strategy indicates that the examiner did not look at all the results of his searches.  He only looked at the results of three searches in the strategy, all of which consisted of variations of the word MORE in combination with a number.  He did not consider the word MORE on its own.

2. Emap’s letter received on 28 July 2006 pointed to the shortcomings in the examiner’s consideration of conflicting trade marks, and requested the acceptance be revoked because of errors or omissions in the course of examination.  In particular, the letter pointed to the following trade marks which would not have been considered by the examiner.  Emap considered the failure to consider these earlier trade marks pointed to an omission in the course of examination. 

Trade mark registration:             722232

Owner:   EMAP Consumer Media Limited

Goods Specification:  Class 16: - A practical weekly magazine for women

Trade mark:  Series: 

Trademark registration:              731114

Owner:   EMAP Consumer Media Limited

Goods specification:  Class: 16 Printed matter, printed publications, magazines, newsletters, books and periodical publications; none of the above being or relating to business forms and/or business stationery including direct marketing material and associated mailing material and related business communications

Trade Mark:  Series:  MORE!  more!

1. Emap’s letter was assessed by a Principal Examiner, who reconsidered the application.  He wrote to the applicant proposing revocation because of an error or omission during the original examination, on the basis that the search strategy did not cover the word MORE on its own.  As well as the above two trade marks, the Principal Examiner raised the two following registrations as trade marks with earlier priority dates which should have been considered by the acceptance officer:

Trade Mark Registration:            646921

Owner:   CANWEST RADIOWORKS LIMITED

Service specification:     Cl 38:  Radio broadcasting

Trade Mark:  MORE FM

Trade Mark Registration:            845158

Owner:   ING Australia Limited

Service specification:     Cl 41:  Education, training and the conduct of seminars in the financial field, including such services provided on-line

Trade Mark:  

The four trade marks quoted in the principal examiners letter all have earlier priority dates than that of the application, and the goods and services specifications are in conflict with at least a part of the applicant’s wide ranging goods and services claim.

Applicant’s submissions

1. The applicant’s submissions at the hearing were based on the supposition that these trade marks, and any others which may be relevant, had been revealed to the examiner because of the very thorough search strategy he used.  Ms Davies referred to the decision in Re Application by Honan Investments Pty Ltd (1998) 43 IPR 193, where the Delegate stated “the fact that the mark was not extracted and included in the extract list does not mean that it was not considered”. She submitted there was thus no ground for revocation under paragraph (a) of section 38 of the Act.

2. Ms Davies also referred to the issue of “special circumstances”, raised in Emap’s letter, though not mentioned by the Principal Examiner when proposing revocation.  She submitted that the situation was not one analogous to that in the Command Staffing decision[2], as suggested by Emap, and therefore the provisions of paragraph 38(1)(b) were not relevant.  Again, her reasoning was based on the assumption that the examiner had considered all the trade marks revealed by the various searches included in his search strategy. 

   [2] Re: application no 978728Command Staffing (2005)66 IPR 403

3. On receipt of my explanation about the searches actually considered, and the effect of this on the applicant’s submissions, Ms Davies drew to my attention the Registrar’s discretion in revocation matters.  She pointed out that the application was already under opposition by two separate parties, and suggested there was an opportunity to closely scrutinise the application during the opposition process.  She pointed to the number of coexisting trade marks containing the word MORE already present on the Register in relevant classes, and suggested such a crowded field meant small differences between trade marks would be enough to distinguish between them.  She reiterated her view that the appropriate forum for a review of the acceptance was during opposition.  

Supplementary submissions

1. Ms Davies provided supplementary submissions following the Hearing, as my explanation of the actual examination of the trade mark had resulted in much of her original submissions being irrelevant to the present situation.  She submitted that acceptance of the application was appropriate in any event.  When there is any doubt, she said, discretion should be exercised in favour of the applicant, and any further scrutiny of the section 44 issue is more appropriately dealt with in opposition proceedings.  Her submissions then went into a fairly exhaustive comparison of the applicant’s trade mark with those raised in Emap’s letter and that of the Principal Examiner.  This exercise was based on the submission that the number 4 appearing in the trade mark is a dominant and intended feature of the mark, and that the word MORE is not a distinctive element in any context because of its common usage, especially on the Register.

The law

1. Revocation of acceptance is covered by section 38 of the Act, which reads as follows:

   (1) If, before a trade mark is registered, the Registrar is satisfied:

   (a) that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or

   (b) that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations;

   the Registrar may revoke the acceptance of the application.

   Note: For limitations see section 6.

   (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.

2. My decision in this matter goes only to the issue of whether the original acceptance was unsound because of the circumstances surrounding it, in so far as they are covered by section 38.  Should I find the acceptance was unsound, as a delegate of the Registrar I do have the discretion not to revoke, but to allow the oppositions already mounted to proceed.  It is important to note that I will not be considering the merits of the registrations mentioned above under the provisions of section 44, or whether there are others on the Register which should also be considered.  Such a consideration will be part of an examiner’s review of the application should I decide to revoke.

Discussion

1. It is not possible to ascertain from the file why the examiner devised a thorough search strategy, but then chose only to consider those trade marks consisting of the word MORE in combination with a number.  It is clear from Emap’s letter that their legal representative was familiar with the annotation on the examiner’s search strategy indicating which searches the examiner had scrutinized.  It is likewise clear from the applicant’s submissions, that that their legal representative was not familiar with the matter. 

2. For information, I note here that it is currently office practice to expect that examiners will clearly annotate their search strategies to show which searches were looked at.  This practice is a direct result of the increasing size of the Register, and the concomitant likelihood of search results being large.  It is standard practice for an examiner, in the interests of efficiency, to refine the searches so that it is not necessary to scroll through a very large number of records.  Because the process of refining the search to reduce “hit” numbers increases the number of entries on the search strategy, it has become necessary for examiners to indicate which searches within the strategy were looked at, as the practice means not all searches are likely to be scrutinized.  In this case, the examiner, rather than highlighting the relevant searches, had marked each with an asterisk.  The annotation does not stand out particularly well, and could be easily missed.  Nevertheless, it is there, and its presence completely alters the significance of the search strategy as far as the question of “error or omission” is concerned.

3. However, whether or not the indication of the searches considered is clear to anyone other than the examiner who devised the strategy, any examiner researching an application for the purposes of section 44 would be expected to consider the main component of the trade mark involved.  Despite the applicant’s submissions, it must be accepted that the major part of this trade mark is the word MORE.  Of a five character construction, filed with the office in a plain uppercase font, the word MORE comprises the initial four.  These four characters are a known word, and form that portion of the trade mark which people exposed to it are most likely to retain in their minds.  It is therefore the portion which must be most closely considered when comparing the trade mark with others on the Register.  By not considering the bulk of trade marks which include this word, the examiner omitted the most important part of his expected comparison exercise.  The examiner, who has the Registrar’s delegation to accept an application, therefore did not have before him all the relevant information he required to make a sound acceptance decision.

4. In the Smooth and Silky case[3], the hearing officer decided that:

   ...'accepted in error' must thus be restricted to mean acceptance of a trade mark where the acceptance officer is either mistaken as to the facts or in ignorance of the facts. 

The facts of this case clearly point to a situation where the acceptance officer was not in possession of all the facts he needed to be aware of in order to make a sound acceptance decision.  An error having been clearly identified in the examiner’s consideration of the section 44 research, the acceptance is unsound and the provisions of paragraph 38(1)(a) apply.

[3] Re Application by Remington Products Inc (1990) 18 IPR 251

Registrar’s discretion

1. Subsection 38(1) embodies within its wording a discretion in the matter of revocation – “… if the Registrar is satisfied … the Registrar may revoke …”.  This discretion may be, and has in the past been, used to allow an application to proceed, even though an error or omission in the course of examination has been identified[4].  It is relevant in this case that two oppositions have been mounted against registration of this application, and it is open to me to decline to revoke the acceptance, and allow the oppositions to run their course.  As the applicant submitted, the trade mark will be thoroughly scrutinized during the opposition process.  Ms Davies also directed me to the Woolworths Metro case[5] and its comments on the presumption of registrability when the Registrar is in doubt over a matter, as a further argument supporting her contention that I should not revoke acceptance. 

   [4] See Re:  Application by Pacific Access Pty Ltd (1996) 27 IPR 417

   [5] Registrar of Trade Marks v Woolworths Limited 45 IPR 411

2. However, the error in examination in this case was fundamental, and I am in no doubt about the matter.  The examination completely omitted a comparison of this trade mark with the majority of other possibly conflicting trade marks on the Register.  This is not a case of a minor omission – the examiner simply did not effectively scrutinize the Register for pre-existing trade marks as is required by the provisions of section 44.  It is in the public interest that this application be returned for re-examination so that those trade mark owners who have trade marks incorporating the word MORE may be satisfied that their pre-existing registrations have been suitably considered, and their prior rights taken into account.  I consider it to be appropriate in this case to revoke acceptance and have the application re-examined. 

Decision

1. I therefore direct that the acceptance of application 1042282 be revoked one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that the revocation shall not occur until the appeal has been discontinued or revocation is otherwise ordered by the court.

Alison Windsor

Hearings Officer

Trade Marks Hearings

IP Australia

31 January 2007