Douglas Fredrind Treharne v Petsmart, Inc

[1996] ATMO 57

TRADE MARKS ACT 1955

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

Re:      Trade mark application numbers 599868(5) and 599869(42) in the name of Douglas Fredrind Treharne and opposition by Petsmart, Inc

Trade mark applications 599868 and 599869 were lodged by Douglas Fredrind Treharne in April 1993.  Each trade mark consist of the word petsmart. On 10 March 1994 the Registrar of Trade Marks advertised that both of these applications were accepted for registration.  599868 stood accepted in class 5 for

pharmaceutical, veterinary and sanitary preparations, and all other goods in this class,

and 599869 in class 42 for

provision of food and drink; medical, hygienic and beauty care; veterinary and agricultural services; retailing/wholesaling of pet care and veterinary products.

Petsmart, Inc, a Delaware corporation located in Arizona USA, opposed both trade marks on grounds citing sections 40, 33 and 28 of the 1955 Trade Marks Act.  The Trade Marks Act1995 came into force on 1 January 1996.  The transitional provisions of the 1995 Act provide that a pending application which was accepted immediately before 1 January 1996, proceeds in accordance with the terms of the 1955 Trade Marks Act.  At 1 January 1996, both 599868(5) and 599869(42) were pending and accepted. The terms of Part VI of the 1955 Trade Marks Act therefore govern these oppositions.

Evidence supporting the Petsmart, Inc opposition and Mr Treharne’s evidence in answer was duly served.  There was no evidence in reply, and in August 1996, Ms Catherine Hustwick of Madderns, patent and trade mark attorneys of Adelaide, acting on behalf of  Mr Treharne, asked that the opposition be set down for a hearing.  Ms Hustwick said that her representations at the hearing would be in writing.  Petsmart, Inc’s agent, Mr Trevor Stevens of Davies Collision Cave, patent and trade mark attorneys of Sydney, advised the Office that he would attend the hearing.

The hearing was set down for Sydney on 15 October 1996 at 10:00 am.  Shortly after 9:00 am, however, Mr Stevens called at the Office and filed a notice withdrawing Petsmart Inc’s opposition on both trade marks.

As per the provisions of section 50(1) and particularly in regard to public interest, the Registrar needs to consider the grounds raised by the opponent, before allowing these applications to proceed.  I turn then to Petsmart, Inc’s grounds of opposition.

Section 40

Proprietorship depends on the opponent establishing a better claim to ownership than the applicant. Petsmart, Inc, however, has withdrawn its claim and any allegations in the notice of opposition appear to be unsupported.  I see no reason why the Registrar should pursue this matter any further.

Section 33

A conflict with a prior registration in terms of section 33 of the Act constitutes a matter of public interest.  The opponent cited its own trade mark application.  This is the trade mark PETSMART in class 42.  It was lodged on 21 May 1993. It carries no claim for a propriety date in terms of divisional status or through a convention application. 21 May 1993 is more than a month later than the date on which the application trade marks were lodged. There is therefore no ground for an objection under the provisions of section 33.

Section 28

The opposition does not gives rise to any objection under section 28 of the Act. 

Decision

I find nothing in the opposition or supporting evidence which constitutes a reason for not allowing these trade mark applications to proceed to registration, and I direct that at the appropriate time, they may proceed.

Costs

Ms Hustwick has made an application for Mr Treharne’s costs.  Petsmart, Inc withdrew its opposition and did so, moreover, at the very last minute. In accordance with findings in Application (No. 30275) to Register a Trade Mark (dagger brand) (1923) 18 AOJP 48, the withdrawal action places Mr Treharne in the position of the successful party.  The delays in taking this action, and the prolonged period of uncertainty to which he was subjected, no doubt added to Mr Treharne’s inconvenience. 

I have no hesitation in awarding Mr Treharne his costs.

Helen R. Hardie
Deputy Registrar

7 November 1996