Endeva Pty Ltd.

[2014] ATMO 107

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 1597007  –

TASMAN - in the name of Endeva Pty Ltd.

DELEGATE:

Bianca Irgang

REPRESENTATION:

Applicant: Van Linh Vo

DECISION:

2014 ATMO 107

Section 38: Whether reasonable to revoke acceptance – error made by examiner in not raising earlier trade mark as citation – marks deceptively similar – goods of the same description – acceptance revoked.

Background

1. Endeva Pty Ltd (‘the applicant’) filed application no. 1597007 (‘the  application’) to register the following trade mark (‘TASMAN’):

ApplicationNumber:	1597007
PriorityDate:	18 December 2013
Goods:	Class 25: Apparel (clothing, footwear, headgear) (‘the Applicant’s Goods’)
Trade Mark:	TASMAN

1. The Application was examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’).

1. A clear report was issued in respect of application 1597007 on 16 January 2014 indicating that the application was accepted for possible  registration  of  the  trade mark and the acceptance was advertised in the Australian  Official  Journal  of Trade Marks on 8 May 2014. A Notice of Intention to Oppose was made by Winterworth Pty Ltd (‘the opponent’) on 8 July 2014. Subsequently the opponent filed its Statement of Grounds and Particulars on 8 August 2014.

1. Notice of intention to revoke the acceptance of the application (‘the notice’) was sent to the applicant on 9 July 2014. The basis of the revocation was trade mark number 1452777. The notice stated:

In examining the trade mark, the Examiner did not take into consideration earlier registration 1452777

The trade marks both include the term TASMAN as a prominent and memorable element. The additional material in the applicant’s trade mark is not sufficient to differentiate between this trade mark and the earlier registration. Further, both 1597007 and the earlier mark claim the same or similar goods in class 25.

Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance,  (section 38 of the Trade Marks Act 1995).

1. The applicant was advised that it had one month from the date of the notice to apply to be heard or to submit a request for a decision on the written record. The applicant elected to be heard. I was delegated to hear and decide the matter. The applicant came before me in Sydney on Wednesday 12 August 2014.

Discussion

1. Section 38 of the Act relevantly reads:

Section 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.

1. It can be seen from the wording of s 38 that two factors must be satisfied before the Registrar may revoke the acceptance of an application. In broad terms, these are firstly, that the application should not have been accepted, and secondly, that it is reasonable to revoke acceptance. Both factors require the Registrar to take account of all the circumstances that existed when the application was accepted. Logically, however, the Registrar can only take account of circumstances of which the Registrar is aware at the time the decision of whether to revoke is made.

1. A typical situation where the first factor would be satisfied is where there was a valid ground for rejecting the application which was not raised (for whatever reason) during the examination process. For example, that there existed on the Register a trade mark which was deceptively similar to the trade mark applied for, but this was not cited by the examiner.

1. A common approach taken in earlier decisions when assessing whether it is reasonable to revoke acceptance (the second factor) has been to  consider  the  circumstances which led to the application being  accepted  in  error.  Where,  for  example, there was an obvious error or oversight that occurred during the examination process, this has often been found to warrant revocation. This approach is reflected in the Trade Marks Office Manual of Practice and Procedure (‘the Manual’). Part 38, para 2.3 of the Manual, provides a number of examples of ‘where it may be reasonable  to consider revocation’. The examples  include:

·    the appropriate research was not carried out, or where an inappropriate search strategy was used

·    an application is accepted because a citation was missed due to an indexing error.

1. Therefore, it is for me to determine if the application should not have been accepted taking into account the circumstances and the time and if is reasonable to revoke acceptance.

1. I have reviewed the examination file of the present application in detail. In order to discuss the issues surrounding the proposal to revoke acceptance of this application, it is important that I outline the normal practice of an examiner in relation to the conduct of searches of the register for the purposes of s. 44.

1. Firstly, an examiner builds a search strategy by entering different parameters into various fields of the search facility. Each search request will return a certain number of ‘hits’. These ‘hits’ are the number of trade mark records that match the search criteria. The examiner then reviews each record one by one, extracting those that immediately appear similar to the trade mark of the application or that require further consideration. Once the search is completed the examiner will then look more closely at the list of extracted trade marks which have been saved onto the electronic application file. These extracts are then annotated to show the outcome of the consideration - for example, that the trade mark has been raised as a ground for rejection, or that it has been

considered but not cited with a brief reason as to why not.

1. In the present case, the search strategy used by the examiner meant that trade mark no. 1452777 should have been located and extracted for consideration. However, the official file does not indicate that trade mark no.1452777 was ever assessed against the applicant’s TASMAN trade mark and it is very likely that this was simply not done.

A potential s 44 ground for rejection

1. The Notice did not refer explicitly to any particular provision of the Act which might support a ground for rejecting the application. However, the wording of the Notice strongly suggests that the Examination Team Leader that issued it considered that grounds for rejection pursuant to s 44 of the Act should have been raised during the examination process. Details of the earlier trade mark registration raised in the Notice are as follows:

Trade MarkRegistration:	1452777
PriorityDate:	7 October 2011
Goods:	Class 25: Footwear
Trade Mark:

1. In order for me to decide whether the acceptance should be revoked it is necessary that I firstly assess whether the application should not have been accepted: in this case, whether there was a valid ground for rejection pursuant to s 44 which was not raised by the examiner. I will consider this question in respect of both the Original Earlier Trade Mark and the Amended Earlier Trade Mark. The relevant sections of the Act are reproduced below:

44 - Identical etc. trade marks

(1)   Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:\

(a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)   a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)    a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)   the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10. Note 2: For similar services see subsection 14(2). Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. It is clear from the wording of the Act that for s 44(1) to apply: the priority date of the earlier application must be earlier than that of the application; the applicant’s goods must be similar to (at least some) of the goods for which the earlier application is sought; and, the respective trade marks must be, at least, deceptively similar. The priority date of the earlier application is earlier than that of the applicant’s trade mark therefore the first requirement is satisfied. . The goods covered by the registered trade mark are footwear which is also claimed in the applicant’s application so I am satisfied that the goods are the same. I now consider whether the trade marks are deceptively similar.

Are the trade marks deceptively similar?

1. The principle authority for guidance in determining whether trade marks are deceptively similar comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd1:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from [use of the defendant’s trade mark].

2. According to the authorities2 any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark.

1. The applicant stated in his submissions:

I believe my trade mark ‘TASMAN’ is sufficiently different from UGG TASMAN AUSTRALIAN SHEEPSKIN. Anyone looking at my opposition’s trade mark will immediately notice the term “UGG” with its distinctive font style, larger font size and highlighting art work, is the prominent and memorable part of the trade mark. The term “UGG” is also so common and recognizable in Australia it overshadows all other components of my opposition’s trade mark. This is in stark contrast to my trade mark where “TASMAN” is the only term and therefore, is the most significant component of the trade mark.

Furthermore, I believe that the term TASMAN is used differently between the two trade marks. I believe that the reception of the term TASMAN is dependent on context. For example, where it is used in the phrase TRANS TASMAN or UGG TASMAN AUSTRALIAN SHEEP SKIN the use of the

term TASMAN is likely suggestive of a products geographical origin. However, when used in singular form, and especially for gender-specific

1 (1963) 109 CLR 407, 414-15.

2 Clark v Sharp (1898) 15 RPC 141 at 146; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774;

Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

product lines, eg. Men’s industrial protective footwear, “TASMAN” is likely to be seen as a compounded term ie a portanteau of the words “Tasmania” and “Man” to produce the word TASMAN.

1. I am not convinced by these submissions. The decisive question is whether the use of the applicant’s TASMAN trade mark on the goods in class 25 given the previous registration for UGG TASMAN AUSTRALIAN SHEEPSKIN (‘UGG TASMAN’) for goods in class 25 would result in a tangible danger of confusion or deception. I am satisfied it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered

   mark.’3

1. Comparing the respective trade marks shows that both contain the word TASMAN which is distinctive of the goods claimed in class 25. While there are additional words and graphic devices in the registered trade mark, I do not believe that this is enough to sufficiently differentiate the trade mark from each other. In this case the applicant’s TASMAN trade mark is contained wholly within the former registration. The word TASMAN is the common striking element between the respective trade marks and the only element in the applicant’s trade mark. There is additional material in the registered trade mark but this is unlikely to prevent the respective trade marks from being seen, recalled and referred to by using the term TASMAN.

1. Although the trade marks look different when viewed side by side, marks are often imperfectly remembered by prospective purchasers. They may have a general impression, in this case of the trade mark registration incorporating the word TASMAN, and consequently become confused as to the origin of the goods when faced with the applicant’s TASMAN trade mark, particularly when the marks are applied to the same footwear goods in class 25.

1. The applicant has put forward an additional argument that a number of trade marks containing the word TASMAN co-exist on the Register so the applicant’s TASMAN application cannot be deceptively similar to the previously registered trade mark. I do not accept this reasoning.

3 Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

1. The applicant drew my attention to the following trade marks:

Trade MarkRegistration :	557102
Prioritydate:	4 June 1991
Goodsspecification:	Class 25: All goods in class 25
Trade Mark:	TASMAN

Trade MarkRegistration :	931106
Prioritydate:	17 October 2002
Goodsspecification:	Class 25: Clothing and footwear
Trade Mark:	TASMAN

Trade MarkRegistration :

931509

Prioritydate:

21 October 2002

Goodsspecification:

Class 16: Paper including writing pads and cardboard, instructional and teaching materials, plastic materials for packaging, stationery including writing instruments such as pens, pencils, pen cases; paperweights, rulers, erasers, school supplies

Class 25: Clothing, footwear and headgear

Class 28: Games and playthings including board games, playing cards, dolls; sporting articles including balls

Class 35: Advertising; business information; organization of exhibitions

Class 41: Educational services including arranging and conducting conferences, seminars, workshops,

conduct of training programs; entertainment services including provision of entertainment, film production, organisation of entertainment competitions; organisation of sporting competitions, physical education, providing sports facilities including rental of stadium facilities, sport camp services, rental of sports equipment

Trade Mark:

Trade MarkRegistration :

1500663

Prioritydate:

6 July 2012

Goodsspecification:

Class 16: Periodical publications relating to sporting activity; printed publications relating to outdoor sporting activities

Class 18: Bags for use in sports for carrying sports clothing

Class 25: Clothing for sports; sports caps; sports jackets; sports jerseys; sports jumpers; sports shirts; sports sweaters; sportswear

Class 41: Arranging of sporting events; arranging of sports competitions; organisation of sporting competitions; organisation of sporting events

Trade Mark:

1. Of the above trade marks I am aware that trade mark nos. 557102, 931106 and 931509 have been removed from the Register due to not being renewed. I note that trade mark

registration 1500663 is still registered and does contain the word TASMAN. However, I note that the word TASMAN has been qualified with the preceding word  TRANS. TRANS TASMAN is an adjective used primarily in Australia and New Zealand which signified an interrelationship between both countries. Its name originates from the Tasman sea which lies between the two countries. The meaning which may be attributed to this expression within the above trade mark registration is very different to the use of TASMAN within the applicant’s trade mark. I do not believe it is likely that given all of these additional words and graphic devices that the above TRANS TASMAN TEST SERIES trade mark would be deceptively similar to either the applicant’s TASMAN trade mark or the previously registered trade mark UGG TASMAN trade mark.

1. However, I do note that trade mark no. 931106 for the word TASMAN was registered for the same goods at the priority date of the prior trade mark registration for UGG TASMAN. However, the official file demonstrates that trade mark registration no. 931106 was raised as a ground of rejection against trade mark no. 1452777 UGG TASMAN during examination. It was only when trade mark no. 931106 was not renewed and removed from the Register that trade mark no. 1452777 UGG TASMAN proceeded to registration.

1. I consider the applicant’s trade mark is deceptively similar to trade mark registration no. 1452777 UGG TASMAN.

Is it reasonable to revoke acceptance?

1. Taking all of the aforementioned tests and facts into account I am satisfied that the applicant’s trade mark should not have been accepted. Therefore, the first limb, that is, ss 38(1)(a) of the Act, is satisfied.

1. Turning now to the second limb of the s. 38 provisions, ss 38(1) (b), is whether the Registrar is satisfied that it is reasonable to revoke the acceptance, taking into account all of the circumstances. Under the previous s. 38 legislation and Re Application by Remington Products Inc4, if the objection to acceptance 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

4 (1990) 18 IPR 251

trade mark officer, then revocation of acceptance was not appropriate. In the present matter, however, the question clearly goes beyond one of a difference of opinion. I am satisfied that a valid ground for rejection does in fact exist. Prima facie, but subject to anything else that might be relevant to my consideration, this suggests that revocation is appropriate.

1. The Registrar is not restricted in respect of the information she considers relevant in her assessment of whether to revoke. Clearly revocation on the basis of a change of opinion is utterly inappropriate, and to be avoided at all costs. However, the current case involves more than a simple change of opinion. The facts of the matter support the view that an examiner has overlooked or discounted information that, had it been properly considered, would have resulted in a ground for rejection being raised. Under the legislation as it stands, it is not necessary to identify where or how the error has occurred, only to establish that the application should not have been accepted considering all the circumstances and that it is reasonable for the Registrar to revoke acceptance of trade mark.

1. I note the applicant’s view that the dispute between the parties is better served by the opposition forum. However, I do not agree with this view. This might have been a consideration had evidence already been served by the opponent, or the matter was more advanced, or both. However, in this case the opposition is only in its very early stages and, where revocation is correct and reasonable, I see this as the preferable course of action.

1. Certainly, an action under s. 38 must be carefully considered as one of the Registrar’s delegates has already exercised the delegation to accept the application for possible registration. Therefore, the facts of the matter must be of sufficient weight to overturn the existing decision. While any revocation of acceptance should not be proposed lightly, I have taken into account that there are other actions and avenues which an applicant may consider to overcome the grounds for rejection under s. 44. I am satisfied that a clear ground for rejection exists under s. 44, and the presumption of registrability is not applicable in this matter.

1. Balancing of the inconvenience to the applicant caused by the revocation, and the need to ensure the trade mark register is as consistent and accurate as possible, I am satisfied that

it is reasonable to revoke acceptance under s. 38 of the Act, and return the trade mark to examination, allowing the applicant the opportunity to overcome any grounds for rejection appropriately.

1. The applicant has not brought to my attention any formal evidence of use that would allow acceptance of its trade mark under the provisions of s 44(3)(a) or s 44(4). I am not aware of any other circumstances that would allow acceptance of the mark under the provisions of s 44(3)(b).

Decision

1. I therefore revoke the acceptance of application 1597007 “TASMAN”. In due course, after the allowance of an appropriate period for any appeal from this decision, the application will be sent to an appropriate examination section for re-examination and reporting. If the Registrar has been served with a notice of appeal before that time, I direct that the re-examination shall not occur until the appeal has been discontinued, or in the event of a decision of the court, that the application be subject to that order.

Bianca Irgang Hearing Officer

Trade Marks Hearings 30 October 2014