Export Corporation (Australia) Pty Ltd

[2010] ATMO 52

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 1304353(5, 35) - 6 HOUR ENERGY SHOT and DISC Device - in the name of Export Corporation (Australia) Pty Ltd.

Delegate:

Claudia Murray

Representation:

Applicant: Ken O’Driscoll

Decision:

2010 ATMO 52

Section 38 – grounds of rejection under sections 41 and 44 apply to application - reasonable in all the circumstances to revoke acceptance.

Background

1.     This is a decision with reasons in the matter of the revocation of acceptance of trade mark application number 1304353. Export Corporation (Australia) Pty Ltd (‘Export Corporation’ or ‘the applicant’) filed its application on 16 June 2009, for the trade mark:

1. The application was filed in classes 5 and 35 of the International (Nice) Classification of Goods and Services, in respect of the following goods and services:

   Class 5: Health food supplements made principally of vitamins

   Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means).

   3.     No grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the trade mark application during examination. It was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 October 2009. On 14 January 2010, Innovation Ventures LLC (‘Innovation’) successfully applied for an extension of time of three months, within which to file notice of opposition to registration of the trade mark. Shortly thereafter, on 29 January 2010, it again wrote to the Office, this time to request that the Registrar consider revocation of acceptance of the application under section 38 of the Act. The basis for this request was the existence of Innovation’s prior application number 1281037, relevant details of which are as follows:

Trade Mark	Filing date	Class	Goods/Services
5-HOUR ENERGY	15 January 2009	5 32	Dietary supplements Beverages; energy supplements in liquid form

4.     In accordance with the relevant provisions of the legislation which allow certain Trade Marks Office documents to be made available for public inspection, Innovation had obtained copies of the Examiner’s worksheets and reports for both the subject application, and application number 1300000, also in the name of Export Corporation. Relevant details of that earlier application are:

Trade Mark	Filing date	Class	Goods/Services
6 Hour Energy Shot	20 May 2009	5 35	Health food supplements made principally of vitamins; preparations consisting of mixtures of vitamins and minerals; preparations consisting of vitamins; preparations of vitamins; vitamins   Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)

5.     Innovation argued that, having found the prior application for 5-HOUR ENERGY in her search, which was limited to just four relevant hits, the Examiner had erred in her determination that the applicant’s trade mark was ‘sufficiently different’ from that earlier trade mark, such that no ground of rejection under section 44 was applicable. It submitted that the trade marks at issue each conveyed the ‘same idea’, that the word ‘shot’ in the applicant’s trade mark could be discounted as simply descriptive, and that the disc device was a ‘mere embellishment’. In support of these contentions, Innovation pointed to the Examiner’s Report which had issued on Export Corporation’s earlier application for the words 6 HOUR ENERGY SHOT in plain script. That report raised grounds of rejection under section 41 (which Innovation did not mention) and section 44 in relation to the class 5 goods, citing Innovation’s application number 1281037, and commenting:

Your trade mark closely resembles the conflicting trade mark because both trade marks share the significant word element HOUR ENERGY. I have taken into consideration the different numerals in the trade marks, and the additional descriptive word element SHOTS in your trade mark. These additional elements are not sufficient to prevent the probability of confusion between the trade marks.

6.     Subsequently, on 18 February 2010, an Examination Team Leader issued a ‘Notification of proposal to revoke acceptance’. The notification listed grounds of rejection under section 41 – ‘trade marks which are likely to be needed by other traders’ and section 44 – ‘trade marks which are similar to other trade marks’, both in relation to the applicant’s class 5 goods, ‘health food supplements made principally of vitamins’. Export Corporation was given one month within which to either consent to remove class 5 from its application, or to request a hearing or a decision on the written record upon the matter. In the absence of such action by the applicant, the application would be returned to examination, a further report would be issued detailing the new grounds for rejection, and a further 15 months would be allowed within which the application might be brought into order for acceptance.

Hearing

7.     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 6 April 2010. Mr Ken O’Driscoll represented the applicant by phone from Perth.

8.     The hearing was brief. Mr O’Driscoll informed me that I already had all the relevant information before me, and that his request to be heard essentially reflected his desire to formally record his protest against a system which had led him to expend considerable time and money on filing applications for a trade mark which had, as he put it, ‘passed the assessment of two separate examiners, yet was still able to be rejected by a third’. Mr O’Driscoll explained that this situation had eventuated as, having had his first application, number 1300000, for the plain words ‘6 Hour Energy Shot’ incur grounds of rejection as described above, he had then consulted IP Australia’s ‘TM Headstart’ service to explore the possibility that an application for a device trade mark incorporating those same words might not attract the same objections. TM Headstart is a personalised pre-filing service provided by this Office, which is described on our website in the following manner:

TM Headstart is a fast way to check if your trade mark may be registrable before you actually apply. The world of trade marks can be complex and confusing. New players may not know where to start or what questions to ask. TM Headstart provides you with an upfront service so you can better understand any problems with your trade mark.

9.     Mr O’Driscoll received the response he had hoped for from the Headstart examiner. However, for reasons which he did not make clear to me, having paid for and received his initial favourable assessment, he did not choose to continue the usual Headstart process through to formalising (by paying a second fee) his trade mark application at that point. Instead, he separately filed the new application for his device trade mark that is the subject of my decision here. Hence Mr O’Driscoll’s complaint that his application had already been twice positively assessed by this Office as suitable for registration, prior to revocation proceedings being initiated. He requested that, at the very least, an internal review of our processes should be undertaken, so that such inconsistencies, resulting in serious inconvenience and unnecessary cost to our customers, might be avoided in the future.

Legislation

10. 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

11.   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. I do not consider that the minimal ‘get up’, represented by a disc-shaped border, which differentiates Export Corporation’s later trade mark application from the earlier application against which grounds of rejection were raised, is by any means sufficient to save it from a similar fate. Grounds of rejection under sections 41 and 44 apply to this application, in the terms set out by the Examination Team Leader in her notification of proposal to revoke acceptance.

12.   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. The surrounding circumstances of this case of which I am specifically aware include the inconvenience and expense already incurred by the applicant in the prosecution of its application thus far, which has been greatly exacerbated by inconsistent handling in this Office. Another relevant circumstance to be taken into account for the purpose of revocation of acceptance is the status of any opposition proceedings which may already have commenced against an application.[1] I note that, having obtained an extension of time within which to file and serve notice of opposition, Innovation did file and serve its notice, on 15 April 2010. However, no evidence has yet been exchanged in the opposition, as the due date for the opponent’s evidence in support is still some three weeks away.

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

13.   I am satisfied that, taking into account the circumstances I have described, revocation of acceptance of the subject application is reasonable. I believe it is in the best interests of the applicant, as well as its potential opponent, that the application be returned to and first tested by the appropriate examination processes which it has hitherto avoided. It may then proceed, should this ultimately prove necessary, to the escalation of argument and expense associated with the adversarial forum of opposition. While the applicant understandably may not view it as an ideal option, revocation of acceptance need not be fatal to the application. The evidence of use and other circumstances provisions of subsections 41(5) and 44(3) and (4) will be available to the applicant, over the new fifteen month period allowed for it to put the application into order.

14.   It is an important public interest, and therefore also a relevant circumstance in this matter that, wherever possible, the proper examination processes of the Office are consistently maintained. Revocation of acceptance of the application will serve that interest. In addition, I support Mr O’Driscoll’s strong suggestion that we review our processes for the purpose of reducing as far as possible the inconsistencies within trade mark examination that in turn lead to revocation of acceptance of trade mark applications.

Decision

1. I direct that the acceptance of application number 1304353 be revoked one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that the revocation 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.

   Claudia Murray

   Hearing Officer

   Trade Marks Hearings

   28 June 2010