Cooley Investments Pty Ltd

[2011] ATMO 7

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1344650(39) - AQUADUCK- in the name of Cooley Investments Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Applicant: Susan Anderson of counsel, instructed by TVP Law
Decision:	2011 ATMO 07 S 38: revocation of acceptance not appropriate in terms of s 38(1)(b), in this instance due to opposition proceedings on foot.

Background

1. This is a decision with reasons in the matter of the revocation of acceptance of trade mark application number 1344650. Cooley Investments Pty Ltd (‘the applicant’) filed its application on 10 February 2010, for the trade mark:

1. The application was filed in class 39 of the International (Nice) Classification of Goods and Services, in respect of the following  services:

   Class 39: Arranging, conducting, providing, organising amphibious vehicle sightseeing tours (tourism and transport), cruises, and other transportation services of persons both on land and on water.

2. A ground for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) was raised against the trade mark application during examination[1]. The ground was overcome with evidence of prior use. The trade mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 10 June 2010.

   [1] I note that the cited application was filed by a third party with no apparent connection to any of the matters that I will refer to below.  The cited application was accepted for registration but this was opposed by Cooley Investments Pty Ltd, the applicant in the present matter and the cited application has since been withdrawn

3. On 22 September 2010, an assistant director of Trade Marks Examination wrote to the applicant’s lawyers advising that he had considered it reasonable to revoke acceptance of the trade mark under section 38 of the Act, and proposed to do so. The bases for this proposal were:

   ·     The trade mark is identical to or closely resembles earlier-filed trade marks for similar services: 829799, 1296445 and 1297524;

   ·     The trade mark closely resembles the conflicting trade mark because all contain the device of an amphibious vehicle with a duck’s beak at the front; and

   ·     The services are similar because all are for transportation and sightseeing services.

   Hearing

4. The applicant exercised its right to be heard in relation to the revocation proposal. The hearing was held in Canberra before me, as delegate of the Registrar, on 8 December 2010. Susan Anderson of counsel, instructed by TVP Law, represented the applicant by video link.

5. Ms Anderson referred me to declarations filed on 19 February 2010 and 23 November 2010[2] by Jeffrey Phillip Cooley, a director of the applicant, which gives a detailed history of the applicant and the relationship with the proprietor of the prior marks cited against the application.

   [2] The first of these declarations was filed  by the applicant to support expedition of the examination of its application.  The second declaration was filed for the purpose of seeking removal of trade marks 1296445 and 1297524 from the Register.

6. The applicant purchased Aquabus Safaris Pty Ltd, operating on the Gold Coast in Queensland, whose directors were Thomas and Mabel McIntyre and Mitch McIntyre. Thomas and Mabel’s son, John, was an employee and amphibious vehicle captain. The McIntyres were not employed by the applicant after the sale of the business.

7. John McIntyre relocated to Noosa in Queensland and commenced operating amphibious vehicle tours in the area as “Noosa Amphibious Safaris Pty Ltd”. Mr McIntyre obtained title to trade mark registration 829799, and applied for trade marks 1296445 and 1297524, which are now registered.

8. Ms Anderson, for the applicant, submitted that John McIntyre acted in bad faith in registering and acquiring ownership of trade marks which are similar to those owned and used by the applicant. The applicant is seeking removal of registration 829799 for non-use and opposing the registration of the other cited trade marks.

9. She noted also that John McIntyre had filed a notice of opposition to registration of the applicant’s trade mark.

10. Ms Anderson submitted that in the circumstances it was inappropriate to revoke acceptance of application number 1344650.

    Legislation

11. The decision I must make here is governed by Section 38 of the Act, which provides:

    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.

    Discussion

12. For the purposes of the requirement set out in paragraph 38(1)(a), I must firstly be satisfied that the circumstances that existed when the subject application was accepted should indeed have prevented its acceptance. I am so satisfied. Earlier-filed trade marks for similar services - 829799, 1296445 and 1297524 – were not considered by the examiner. Prima facie, grounds of rejection under sections 44 apply to this application, in the terms set out by the assistant director in his notification of intention to revoke acceptance.

13. However, the second limb of subsection 38(1) requires me to be also satisfied that, taking into account all of the circumstances, it is reasonable for me to now revoke acceptance of the application. A relevant circumstance to be taken into account for that purpose is the status of any opposition proceedings which may already have commenced against an application.[3] I note that, John McIntyre has lodged a notice of opposition to this application; however, he has filed no evidence in support. The applicant has until 17 March 2011 to serve evidence in answer to the opposition.

    [3] See, for example, Jack Grieve [2010] ATMO 12 (25 January 2010).

14. In my opinion, the consideration of the section 44 ground will be more closely considered and tested by opposition procedures. There appear to be quite complex issues relating to the ownership of intellectual property rights of the business taken over by the applicant. Such issues are beyond scope of the examination process, but can be effectively canvassed at an opposition hearing.

15. I am not satisfied that, taking into account the circumstances I have described, revocation of acceptance of the subject application is reasonable.

    Decision

16. In view of the factors to be assessed in terms of s 38(1)(b), my decision is that the acceptance will not be revoked. Opposition proceedings may therefore continue.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    20 January 2011