Command Staffing LLC

[2004] ATMO 46

TRADE MARKS ACT 1995

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

Re:Proposed revocation of acceptance of trade mark application number 978728(35) - COMMAND STAFFING- in the name of Command staffing LLC.

Delegate:	Mary Skivington
Representation:	Mr Lance Scott of Spruson & Ferguson Patent and Trade Mark Attorneys.
Decision:	Section 38 –proposed revocation of acceptance –error or omission in the course of examination - error or omission not established – registration allowed.

Background

1. Command Staffing LLC, (‘the applicant’), filed trade mark application number 978728, to register the trade mark, COMMAND STAFFING, for services in class 35 on 17 November 2003. The application claims a convention priority date of 26 September 2003. In accordance with office practice for convention applications, it became the subject of an expedited examination. In the examiner’s first report which issued on 27 November 2003, pending application number 917995, for the trade mark STAFFING.COM.AU was cited. The examiner reported that the applicant’s trade mark is confusingly similar to the cited trade mark and that the services of both parties are similar. Subsequently the cited trade mark lapsed and as, in the judgement of the examiner, there were no longer any impediments to the acceptance of the application, she accepted it.

1. The acceptance was advertised in the Australian Official Journal of Trade Marks, on 19 February 2004. On 16 March 2004, a Principal Examiner proposed that the acceptance should be revoked under the provisions of subsection 38(1)(a) of the Trade Marks Act 1995, (‘the Act’). She advised the applicant that revocation was proposed on the basis of an error or omission in the conduct of the examination of the application. The error or omission occurred, she said, because the acceptance officer failed to give full consideration to all of the details of trade mark number 832807, depicted below, which is registered for similar services.

1. The Principal Examiner observed that the earlier trade mark would be referred to as COMMAND RECRUITMENT while the subject application would be referred to as COMMAND STAFFING. She said that as both trade marks share the same distinctive element, COMMAND, consumers would be deceived or confused into a belief that the trade marks share a common origin. She said that a ground for rejection under subsection 44(1) of the Act should have been raised in examination because the applicant’s trade mark is deceptively similar to registered trade mark 832807 and claims similar services.

1. The applicant invoked its right to be heard on the matter under the provisions of section 203 of the Act. As a delegate of the Registrar of Trade Marks, I heard the matter in Sydney, on 22 July 2004. The applicant was represented by Mr Lance Scott of Spruson & Ferguson, Patent and Trade Mark Attorneys.

The Law

1. Subsection 38(1)(a) of the Act provides that 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; 

   the Registrar may revoke the acceptance of the application.

1. I note that subsection 38(1)(b)of the Act additionally provides that if the Registrar is satisfied:

   (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.

However, the Principal Examiner expressly relied on subsection 38(1)(a) only.

Submissions

1. Mr Scott noted that in this case the revocation was proposed only on the basis of an error or omission in the course of examination. He submitted that an error or omission contemplates situations where an examiner has missed a relevant dictionary or other meaning: Remington Products Inc’s Appn, (1990) 18 IPR 251, (Smooth and Silky trade mark); Shop-Vac Corp’s Appn, (1990) 18 IPR 523, Power Vac; or where an examiner has missed an earlier application or registration that is clearly in conflict: Haig Street Wholesalers Pty Ltd’s Appn, (1998) 42 IPR 463. Mr Scott submitted that in defining the issue of error or omission Deputy Registrar Hardie said in Smooth and Silky, supra,

   ….’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.

1. Mr Scott noted that in Sartek Pty Ltd’s Appn, (1991) 22 IPR 317, the Registrar’s Delegate said,

   ….it is clear that there would be no basis for arguing that the subject mark was accepted in error had the acceptance officer considered trade mark No A503863 prior to accepting the subject application, yet not raised it as a citation.

2. Mr Scott argued that the examiner, who was also the acceptance officer, had all the necessary facts and information before her, upon which to exercise her judgement as to the registrability of the trade mark. He said that the examiner had extracted details of prior trade mark registration 832807 for consideration in her examination and exercised her judgement in determining that the marks were sufficiently different for the purposes of section 44 of the Act. He said the database extract with the trade marks details was marked mrksdiff, an obvious abbreviation for marks different and by contrast the extract details for trade mark 917995 were marked cite. Mr Scott said that these annotations confirm that the examiner considered the similarities in the trade marks and exercised her judgement in her decision not to cite trade mark 832807. He submitted that the critical issue is not whether the standard of consideration was adequate but whether the examiner had all the relevant materials to conduct a proper examination.

Discussion

1. The online version of the Macquarie Dictionary defines an error as,

2. a deviation from accuracy or correctness; a mistake,

3. belief in something untrue,

Thus an error is something that is incorrect, a mistake.  In the Smooth and Silky case, supra, Deputy Registrar Hardie referred to the High Court's earlier interpretation of the word 'mistake', where Isaacs and Duffy JJ cited with approval the words of Fletcher Moulton LJ and Buckley LJ in ex Roles v Pascall & Sons [1911] 1 KB 982 at 987,

’A mistake exists when a person erroneously thinks that one state of facts exists when, in reality, another state of facts exists’. 

1. Different people, from the same facts, may come to different points of view. However, a judgement or point of view arrived at after a consideration of the facts, is not a fact and should not be confused with the facts upon which it is based.

2. The facts of this matter are that the acceptance officer had all the relevant materials before her in order to reach an informed judgement. She had conducted an adequate search of the Australian Trade Mark Online Search System database, (ATMOSS), and extracted full details of relevant trade marks including number 832807. She considered trade mark number 832807 as a possible citation in terms of section 44 of the Act and decided that these two trade marks could co-exist on the Register. This is evidenced by the fact that she marked the relevant extract mrksdiff. Clearly this was not a case of overlooking a conflicting registration or application. There is nothing on the file to indicate that the acceptance officer subsequently came to believe that she had overlooked some aspect of this section of the Act and that as a consequence she had not fully considered the trade mark in terms of section 44.

3. In the Smooth and Silky case Deputy Registrar Hardie reasoned that the reconsideration of acceptance, or the conclusion that the judgement to accept ought to have been exercised in a different way, does not entitle revocation on the basis of ‘error’.  If the objection is the result of nothing more than a difference in opinion between trade mark officers, or a change of mind on the part of a trade mark officer, then revocation of the application is not possible.

1. As the acceptance officer was in full possession of the relevant facts on which to base a decision either to accept or to reject the trade mark I cannot find that an error or omission occurred in the course of examination of the trade mark.

2. It may well be the case that if the proposed revocation had been based on the provisions of subsection 38(1)(b) of the Act I would have determined that the revocation should proceed because of the special circumstances of the case, these being that the acceptance officer, in not citing trade mark 832807, chose to disregard the accepted authorities who have discussed and defined the tests for determining deceptive similarity in cases such as Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, Berlei Hestia Industries Ltd v The Bali Company Inc, 129 CLR 353, de Cordova v Vick Chemical Co, (1951) 68 RPC 103, Jafferjee v Scarlett, (1937) 57 CLR 115 and Pianotist Co.'s Appn, (1906) 23 RPC 774.

Decision

1. As I have found that in terms of subsection 38(1)(a) of the Act there was no error or omission in the course of examination of this application and I note that the registration fee has already been paid, I direct that the application may proceed to registration one month from the date of this decision providing registration of the application is not opposed.

Mary Skivington

Hearing Officer

Trade Marks Hearings

27 August 2004