Enviroderm Australia Pty Ltd

[2002] ATMO 38

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 892808(3) - FreshlyPure- in the name of ENVIRODERM AUSTRALIA PTY LTD.

Background

Trade mark application 892808 was filed on 23 October 2001 by Enviroderm Australia Pty Ltd for the trade mark FreshlyPure.  The trade mark was accepted on 29 January 2002 at the first report, and was scheduled to be advertised as accepted on 21 February 2002, in respect of Cleaner/sanitiser preparations in Class 3. The trade mark was subsequently considered for revocation by a Principal Examiner on the basis that it had been accepted in error, namely that the Acceptance Officer had failed to conduct adequate research and take into account the meaning of the words that comprise the trade mark. The applicant was advised on 6 February 2002 that in accordance with the provisions of subsection 38(1) of the Trade Marks Act 1995 (the Act), revocation of acceptance was proposed.  On 15 February 2002 the applicant applied to be heard.  The Hearing was set down for 19 April 2002 in Canberra, before me, as a delegate of the Registrar.  The applicant relied upon written submissions.

Submissions

The applicant provided a brief history of the trade mark since 1999 and attached evidence showing the trade mark in use.  It was stated that no objections to the use of the trade mark had been received from any outside parties.  The applicant believes that FreshlyPure is capable of distinguishing the goods as claimed, and that no confusion would be created between the trade mark and the common usage of the separate words "freshly" and "pure".  Further, the applicant submitted it was highly unlikely that the two words as used in the trade mark format would need to be used by other traders to describe their own similar goods.

Discussion

Revocation of acceptance is governed by Section 38 of the Act which reads:

Revocation of acceptance

38.(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.

In this case it was proposed that paragraph 38(1)(a) and the ground of "error" constituted reasons to revoke acceptance.  Mr D R Shanahan in Australian Law of Trade Marks and Passing Off, Second Edition, 1990, p62 considers the term "error" and its application in relation to revocation of acceptance.  The view expressed therein is that examples of error are confined to those situations where "the examiner has missed a relevant dictionary meaning or an earlier registration that is clearly in conflict".  In Re Application by Remington Products Inc (1990) 18 IPR 251 (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.

Whilst these references were considered under the repealed Trade Marks Act 1955, the principles concerning withdrawal of applications pursuant to Subsection 44 (3) in that legislation, correspond to the provisions of Subsection 38 in the current Act regarding revocation.  It can be noted though, that the terminology of the Trade Marks Act 1955 reads as "accepted in error", while "error or omission" is referred to in the Act, bringing the provision into line with other provisions of the Act where the same wording is used.

An error is something that is fundamentally wrong, a mistake.  "Mistake" is listed as a definition for the word 'error' in the Macquarie Concise Dictionary Third Edition.  In the Smooth and Silky case, supra at page 253, Deputy Registrar Hardie referred to the High Court's earlier interpretation of the word 'mistake', being that "a mistake exists when a person erroneously thinks that one state of facts exists when, in reality, another state of facts exists".  A point of view, which may be changed or challenged upon further information or argument, is not fact and should not be treated as such.  However, that there can exist different judgements relying upon different points of view, but nevertheless originating from the same set of facts, does not necessarily show either judgement to be in error, or that one should be displaced by the other.  It was alleged that the examiner and acceptance officer, one and the same, failed to conduct adequate research and failed to take into account the meaning of the words that comprise the trade mark.  The Principal Examiner believed that it was due to this failure or "error" that a ground for rejection in accordance with Section 41 of the Act was not raised.  The Principal Examiner expressed this ground for rejection as "the trade mark describes an effect achieved by the goods and that other traders are likely to need to use these words to describe their own similar products". 

The subject trade mark is for the term FreshlyPure.  Clearly this is a joining of the words "freshly" and "pure" in a manner that does not amount to invention.  However, it is long established that a trade mark must be considered in its entirety and there is a minuscule amount of "get up" in the way the words are joined with capitals for the F and P.  Additionally, the use of 'freshly' as opposed to the use of 'fresh' makes for an odd grammatical combination, and is not one that directly or immediately describes any goods.  Irrespective of this, the acceptance officer conducted research on the word 'freshly' and the term 'FreshlyPure' through the trade mark research facility.  Research was then conducted on Internet search engines for combinations of the words 'freshly' and 'pure' in forms that included "FreshlyPure" and "freshly pure".  Whilst a dictionary definition was not obtained for the word 'freshly', I do not believe this constitutes the omission of a relevant dictionary meaning as referred to by Mr D R Shanahan detailed above.  In order for this to constitute an error I would need to believe that the word 'freshly' was uncommon in the English language, not used in everyday speech or could be construed in this case as having a meaning other than its primary well-known and accepted definition.  In other words, I would need to be convinced that the acceptance officer did not understand the primary meaning of the word 'freshly', and I am simply not convinced that this is the case.  I believe the word 'fresh' and its adverb 'freshly' are sufficiently common in the English language that the acceptance officer would have known the definition of the word and applied the appropriate tests using that known definition.  The work-file for this case clearly shows the acceptance officer considered the trade mark and the meaning of the words it contains, as the "comments" field on this file is filled out with the following: This trade mark is not an apt term for the goods.  This belief was certainly supported by the lack of relevant results from the Internet research.  I conclude from this that the trade mark has been adequately researched and considered, and an opinion about its acceptability reached only after due contemplation on the part of the acceptance officer.

The Smooth and Silky case, supra, offers a good parallel in deciding whether or not the research had been appropriately considered.  Deputy Registrar Hardie said at page 254:

It is quite clear from the record that the dictionary meanings of the words "smooth" and "silky" were both located and duly considered not only by the examiner but also by the acceptance officer.  Had the acceptance officer not been fully appraised and the mark accepted without regard to relevant material, the acceptance must be held to be in error.  In this case, however, I find no evidence that the examiner's research was less than adequate and I find no evidence that the facts of the research were not laid before the acceptance office and subject to full consideration.

Similarly, the FreshlyPure case does not contain an error involving failure to locate a relevant dictionary meaning of a word or words contained in a trade mark or the overlooking of relevant legislation.  I can find no evidence that the research conducted was less than adequate or that the results of the research were not understood and considered.  I conclude that there is no basis to the belief that the acceptance of the application proceeded on an error of fact in relation to the meaning of the words 'freshly' and 'pure'.  In light of this conclusion I can not find that there was an error of fact in the decision to accept the application.

Conclusion

I have found that there was no error or omission involved in the acceptance of application number 892808, but rather a difference of opinion between the acceptance officer/examiner and a Principal Examiner.  I therefore decline to revoke acceptance of the application under subsection 38 of the Act.  The application should now be advertised as accepted according to subsection 34(b) of the Act, and may proceed to registration upon payment of the necessary sealing fee and in the absence of any opposition proceedings.

Rachel Dunn
Senior Examiner
Trade Marks Hearings
13 May 2002