Fastrack Racing Pty Limited, Re

[1994] ATMO 21

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade Mark Application Number 541326  in the name of Fastrack Racing Pty Limited

History of the application

Trade mark application number 541326 was filed on 3 September 1990 in the name of Fastrack Racing Pty Limited, a Victorian company now of Calder Highway, Keilor, Victoria.  The application was for a series of seven separate trade marks four of which have since been deleted. The remaining three marks are

fastrack
FASTRACK
FAST TRACK. 

Application 541326 nominated goods and services from eight (8)  separate classes.  Briefly, the claim included

1. driving, sun and other glasses, car alarms. car radios, instructional and electronic apparatus for vehicles in class 9

2. vehicles and accessories in class 12

3. pens, pencils, advertising material and printed matter in class 16

4. cases and bags in class 18

5. footwear, driving and sportswear in class 25

6. smokers accessories in class 34

7. motor vehicles design, construction maintenance and repair, industrial design including engineering drawing and preparation of specifications, and other services in class 37 relating to motor vehicles

8. all services in class 41 relating to motor vehicles

Where an application nominates goods and services from more than one class, it is Office practice to enter the first class mentioned, for the purpose of advertising application and recording it on the Office data base.   Confirmation, or if necessary clarification, is then sought from the applicant or agent. The application was thus advertised as an application in class 9.  Fastrack Racing Pty Limited's agent, Mr Mark J. Callinan, then notified the Office that the application was to proceed in class 37. 

The examiner's first report issued on 10 January 1992. In this report the Examiner, Mr Peter Dark, explained that, in line with Mr Callinan's earlier instruction, the details of the Office data base had been corrected to the class 37 specifications.

The report raised 2 substantive objections: first, under section 24 of the Trade Marks Act, that the words constituting the series are in essence the words FAST TRACK and that in relation to design, construction, maintenance and repair services in class 37, these words are directly descriptive - FAST TRACK simply states that services are performed with unusual speed. The second objection, under section 33, was that this mark is substantially identical or deceptively similar to three earlier marks namely

B210331(12)FASTRACK       Registered      for  tires for vehicles, tire casings and  inner-tubes for use therewith; tire repairing materials not being cement or india-rubber solutions being goods included in class 12

A474319(39) FAST TRACK     Registered      for   transportation services including road, rail and air transportation services, including passenger and freight services being services included in class 39

B505078(9)FastTRACK         Registered     for  computer software products in [class 9] for numerically controlled machine tools

Three formality matters were also raised, principal amongst which was the examiner's objection to the numerous goods and services recited in the Application Form.  The examiner, Mr Peter Dark,  said

Your application included specifications of goods and services in a number of different classes.....  a trade mark application must be limited to goods falling in a single class .

Having considered the applicant's description of class 37 services, and objecting that various of them did not belong there, the examiner proposed an amendment so that the services read simply

motor vehicle construction, maintenance and repair services in this class, and all other services in class 37 relating to motor vehicles

Mr Callinan replied that the section 24 objection should be withdrawn; first, because FAST TRACK had a variety of meanings, not all of which could be descriptively applied to the services, and second, because the cited marks testified to the fact that FAST TRACK was a good mark. He objected to the application being restricted to one class and, contrary to his earlier advice that the application was to proceed in class 37, he now sought amendment to class 25 with a statement of goods reading:

caps, boots, shoes, other foot wear, overalls, driving suits, driving jackets, sports jackets, driving trousers, other sports wear, driving gloves, and all other articles in Class 25 for use by motorists and/or other motor vehicle drivers.

As Mr Callinan pointed out, this amendment would eliminate the section 33 objection based on the above mentioned class 9, 12 and 39 registrations.

The examiner's second report,  issued on 8 February 1993, advised that a number of formality matters had been finalised, and then addressed the substantive matters.

By this stage it can accurately be said that the issue of amending the application to class 25 had become a substantive matter. The amendment had been vigorously argued in Mr Callinan's submissions, and had, inter alia,  been the subject of an interim correspondence between Mr Callinan and the Deputy Registrar of Trade Marks.  In the second report the examiner  made a careful attempt to explain the Official position.  It is useful again to quote some of his report.  He said

Sub-section 40(3) of the Act states that "An application shall not be made in respect of goods  or services comprised in more than one class" and therefore in specifying class 37, the application was limited to services falling in this class, although goods and services identified as falling in several other classes were also included in the application.

To now transfer the application to a class other than class 37, for goods not being class 37 services, clearly would substantially affect the identity of the trade mark as originally specified, and this is not allowable under either sub-section 42(3) or sub-section 127(3) of the Act, both of which deal with allowable amendments to applications. 

...... you have referred to sub-section 43(3) of the Act , and have claimed this authorises applications covering more than one class. ...  This portion of the Act gives the Registrar   a discretionary power, and allows for cases of reasonable error. It does not, for example, override the provisions of sub-section 40(3)

The section 24 objection that FAST TRACK was a descriptive term was maintained. Mr Dark distinguished the application from the cited marks via the time honoured doctrine that meanings must be considered in the context of the goods or services. He also drew attention to the fact that FAST TRACK was a comparatively modern term, being listed in the Macquarie Dictionary of New Words (1990 edition).

The section 33 objection re B505078(9) was withdrawn  but maintained against B210331(12), A474319(39). Mr Dark said, however, this objection also would be withdrawn if the subject services were restricted to exclude services related to tyres and tyre repairs, and services for  towing and transportation of motor vehicles.

On receipt of this report, Mr Callinan again wrote to the Deputy Registrar, claiming principally that the Office stand on multiple class applications was wrong, and submitting that all of the goods and services now deleted from the application qualified for divisional status under the provisions of section 43.  The Deputy Registrar replied to Mr Callinan on 22 February 1993 and again on 7 July 1993, by which stage,  and as conveyed to Mr Callinan,

no advance had been made in relation to the section 24 objection of descriptiveness

the section 33 objection could be withdrawn if the exclusions proposed by Examiner Dark were given effect;

the amendment to class 25 was not allowable

the provisions of section 43 did not extend to the goods and services nominated variously in this application document in classes 9, 12, 16, 18, 25, 34 and 41.

Mr Callinan responded with an argument that goods in class 25 and services in class 37 were closely related and that the amendment of the application to clothing in class 25 was, he claimed, in order and should be allowed.

To answer these submissions, the application file was handed to one of the principal examiners.  Principal examiners are very senior examiners with long experience and extensive expertise.  Their role in the Examination Sections is, inter alia, to handle complex cases, and those which have reached an impasse.  In view of the exceptional fact that at this stage in proceedings

the application had been reviewed three times by the Deputy Registrar , 

argument was still being directed to an amendment request which had been fully addressed  in these reviews,  and

no advance had been made in respect of the section 24 objection and no prospects for overcoming this objection were apparent

it was appropriate for any further action to be handled by senior examiner staff.

The third examiner's report was issued on 15 October 1993 by principal examiner, Ms Judy Thompson.  Her report confirmed the findings previously notified by the examiner's report and the Deputy Registrar's letters, and advised that as no progress was being achieved, she proposed handing the case to the Hearings Section so that a time for hearing could be arranged.  

Mr Callinan protested that a hearing was not what he had in mind. He withdrew the request to amend the application to clothing in class 25 and he reiterated previous argument in respect of the section 24 objection, principally on the grounds that consistency is a compelling factor and, on this count, the cited marks provided proof of registrability.

The fourth examiner's report replied that although FAST TRACK was directly descriptive of class 37 services, the principal examiner could concede that some services within the subject claim may not be likely to be promoted as fast track services. Should the application be restricted back to these services, FAST TRACK appeared to have a capacity to become distinctive. Ms Thompson identified these services which, as it happened, all belonged not in class 37, but in class 42.  On restriction to these services and on amendment of the class,   Ms Thompson was prepared to withdraw the outstanding section 33 objection, and accept the mark in Part B. She did not countenance accepting the mark, however, while construction, maintenance and repair services remained in the specification.  In respect of these services, she said, FAST TRACK functions as an ordinary descriptive term and is used to indicate that the service is delivered on a priority basis.  Moreover, as the restrictions of services proposed by Mr Dark had not been implemented, the section 33 objection would continue to obtain. 

In this fourth report Ms Thompson again referred to the high level reviews that had taken place, and reaffirmed that in order to resolve matters the case would, on further debate, be referred to the Assistant Registrar in Hearings, for a time and place for a hearing to be appointed.

Mr Callinan replied to this  letter on 22 November 1993.  He did not take up the principal examiner's offer for a Part B acceptance for the class 42 services, but opted in the alternative to restrict the application to the class 37 services.

The statement of services at this point read

Motor vehicle design, construction maintenance and repair, industrial design including engineering drawing and preparation of specifications, and all other services in class 37 relating to motor vehicles

Mr Callinan now asked for fresh amendments:  first he requested deletion of the services identified Mr Dark as belonging in class 42;   and second he requested deletion of  the services nominated by Mr Dark as raising conflict (per section 33)  with cited trade marks B210331(12), A474319(39).  This amendment was carried out and the statement of services now reads

Motor vehicle design, construction maintenance and repair, and all other services in class 37 relating to motor vehicles but excluding towing and transportation of motor vehicles, tyre retreading and tyre repair services and other services in this class relating to tyres and tyre repairs.

In respect of the section 24 objection however, Mr Callinan recapitulated his earlier argument that the subject marks are acceptable in Part A by virtue of the principles of consistency. This took matters no further forward as regards the main point at issue.

The case was therefore handed to the Hearing Section to deal with.

Mr Terry Williams, at the time acting Assistant Registrar, Hearings, wrote to Mr Callinan on 7 December 1993, advising that although the Registrar had no power to compel an applicant to attend a hearing, the Registrar was obliged to provide an opportunity to be heard should he intend to exercise a discretionary power adverse to that person's interest. Mr Williams advised that with the present impasse the delegate intended to refuse this application, and therefore, in compliance with the provisions of section 128, this application would be scheduled for hearing and the intended time and place would be Melbourne at the February 1994 trade marks hearings session. Should the applicant not avail itself of this opportunity a hearing officer would review the application and decide the question. Mr Williams reminded Mr Callinan of the applicant's further option to have the matter decided on the written record, subject to an agreement to waive the right of a hearing.

Mr Callinan's response to Mr Williams' letter was not helpful.  In a letter dated 28 December 1993, he asked for some further explanation from both Ms Thompson and Mr Williams, but it is not clear just what information he expected. 

On 27 January 1994  Mr Williams wrote once more, confirming that the matter was set down for the Melbourne session, but assuring Mr Callinan that the option of a decision on the written record was still available, and that in the event of no person appearing for the applicant at the scheduled hearing, the history of the application, including all written submissions on the file, would in any case be fully reviewed.  

On 27 January Mr Callinan also wrote.  His letter was to the Registrar,  challenging the Registrar's right to commence the hearings process, and advising that he would not be attending any hearing on the appointed day. He also advised that a decision on the written record was not sought.

Indeed, neither the applicant nor its agent appeared before me at the appointed time  which, as advised to Mr Callinan, was at the Melbourne State Office of the Trade Marks Office on 7 February 1994.

I am obliged therefore to decide the matter of this application from the material available to me from the file. At the outset, I should say that I agree with Ms Thompson that the only remaining objection is that raised under section 24. However, in view of the protracted arguments that have taken place concerning first, the Registrar's right to bring on a hearing and second, the consequences of filing an application claiming goods and services across numerous classes, I intend also to address these matters.

I will deal with these issues under the headings of

the Registrar's authority to set the matter down for hearing;

the consequence of filing an application across multiple classes and the effect of sub-section 40(3);

requests to change an application for services to an application for goods

the limited operation of section 43 in relation to wrongly filed applications,

and finallythe section 24 objection.

The Registrar's authority to set the matter down for hearing

Sub-section 44(1) of the Trade Marks Act provides the Registrar with the discretionary power to accept or refuse a trade mark application

Section 128 of the Trade Marks Act states

Where a discretionary power is, by this Act, given to the Registrar, he shall not exercise that power adversely to a person applying for the exercise of that power without (if so required by that person within such time as is specified by the Registrar) giving to that person an opportunity to be heard.

In the normal course of events ex parte hearings are set down in response to a request from an applicant or an applicant's agent.  The most usual circumstances are that proceedings have reached an impasse at the examination level. 

The option to move to a hearing, however, does not lie solely with the applicant. Where all profitable avenues appear to have been fully canvassed and the Registrar, or his delegates, see no prospect for resolution, he is fully within his right to proceed to exercise his power to refuse the application. In taking such action, however, he must have regard to the provisions of section 128 and in complying with these provisions he may elect to schedule a hearing time. I note, however, that compliance does not require the Registrar to go so far. He is required to do no more than specify a time and, within that time, advise the applicant that it may apply for a hearing. In the present case, the Registrar advised Mr Callinan of the applicant's right to a hearing, and, moreover, scheduled a time and place when the Registrar's delegate would be available to hear the matter. Mr Williams assured and reassured Mr Callinan that attendance or no at the hearing was a matter at the applicant's election, and reminded him once more that the option of a decision on the written record was a further alternative open to his client.

Prior to any move to refuse this trade mark, the application had been extensively and repeatedly reviewed. The original examiner, Mr Dark, had issued 2 very comprehensive reports; the Deputy Registrar had issued 3 reviewing letters; Ms Thompson, a principal examiner, had issued 2 further reports; and finally Mr Williams, as acting section head in Hearings, and as a hearings officer, provided 2 detailed letters setting out the Registrar's authority in this matter, his reason for proceeding with the hearing course of action, and the alternatives available to the applicant at this point. Considering that after some 4 formal reports and 3 reviewing letters, the substantive section 24 objection had not progressed in any degree, except via Ms Thompson's proposal, and that the agent had taken immediate steps to eliminate that option by deleting the services proposed by Ms Thompson for acceptance in Part B; the most appropriate course open to the Registrar was to draw the proceedings to a conclusion and to advise an intention to refuse. Having advised Mr Callinan of this intention and reminding him of the provisions of section 128, the Office then made available a final opportunity for submissions to be heard and appointed a time for a hearing, arranging it in Mr Callinan's home State.

The Registrar's authority for action of this kind should be exercised  with a mind to the public interest (see Shanahan, D.R.  Australian Law of Trade Marks and Passing Off, The Law Book Company, 2nd edition, page 80). He must in instances such as this be prepared to call a stop to unproductive interchanges and, where a refusal is clearly indicated, take steps to conclude proceedings, having regard to section 128. In my view, the Office had gone to unusual lengths to accommodate Mr Callinan in the matter of this application and the time had arrived when the contending public interest had to be given consideration.

The consequence of filing an application across multiple classes and the effect of Sub-section 40(3)

As explained in Examiner Dark's second report, sub-section 40(3)  states

An application shall not be made in respect of goods or services comprised in more than one class.

Trade mark application number 541326 clearly contravened this provision. 

The Office customarily allows some latitude where applications  initially  nominate more than one class.  As Mr Callinan has pointed out,  applicants and agents do not always have expert knowledge of the 4th Schedule to the Trade Marks Regulations where the 42 classes of goods and services are defined, let alone of the intricacies of Nice International Classification of Goods and Services which backs up the 4th Schedule.  In view of this the Registrar  tends to allow an opportunity for applicants to retrieve situations brought about by uncertainty or lack of experience, and, where more than one class is mistakenly nominated, he will tolerate corrective amendments so long as they are sought within very early days after filing.  Once the details of the application become public information, however, the interests of others must equally be considered and the operation of the condition that amendments must not substantially affect the identity of the mark becomes overriding.

The Registrar's willingness to tolerate, at lodgment, a degree of inaccuracy or uncertainty, and thereby initially allow applicants broad prerogatives to correct  classification, meets many of those difficulties with which an agent must contend and which were mentioned by Mr Callinan in his arguments.  Those concessions however do not and should not extend to applications which blatantly disregard the requirement of sub-section 40(3) by  nominating a succession of different classes.  When the provisions of sub-section 40(3) are so obviously contravened, and the information of the application Form 1 falls so far short of substantial compliance, the Registrar is quite within his rights to apply the provisions of sub-regulation 5(3)  and treat the application as not having been lodged.

Requests  to change an application for services to an application for goods

From the 1978 introduction of provisions for the registration of trade marks for services, it has been consistent Trade Marks Office policy not to allow amendment of an application from the nomination of services and a service class,  to a nomination of goods and a goods class.  This policy is directed by the provisions of sections 42 and 127, both of which specify that an amendment is not allowed if it substantially affects the identity of a trade mark. 

Application 541326,  as detailed above, was initially entered on the Official database as a class 9 application.  On prompt advice from the agent that the application was to proceed in class 37, the Registrar allowed this correction.  The application then became a matter of public record, and when in September 1992 Mr Callinan  applied to redefine the scope of the claim to clothing in class 25,  the public record of the class 37 claim had been extant for some 2 years.  Mr Callinan has now withdrawn that amendment request, but I take this opportunity to comment that the request to change the application from class 37 services to class 25 goods would have fundamentally changed any future rights arising from the application, and is well outside the bounds of any permissible amendment (Elgas Ltd.'s Application (1989) A.I.P.C. 90-552).

The limited operation of section 43 in relation to wrongly filed applications

One further matter bearing on the multiple classes claimed in this application, is the issue of divisional filings under the provisions of section 43 of the Act.  Section 43 provides that part of a trade mark which is under application for registration may be made subject of a separate registration and granted the same application date as its parent.  Mr Callinan in various submissions drew attention to sub-section 43(3) and claimed a right of divisional status for goods and services nominated in the original application. Sub-section 43(3) does indeed allow  the division of goods and services from a parent application.  However, as noted by Examiner Dark in his second report, this is a discretionary power, which will not be exercised in favour of an application which is held to have blatantly disregarded the classification system (Elgas Ltd.'s Application (1989) A.I.P.C. 90-552).  It could also be remarked that to allow a divisional lodgment of this kind would be tantamount to allowing an amendment which substantially extended and changed the scope of the parent.

The section 24 objection

The objection under section 24 obtains under paragraph (1)(d). FAST TRACK is a commonly used term with a recently acquired adjectival meaning indicating that a service is provided with greater promptness than would be the norm. As quoted in Mr Dark's report as per the Macquarie Dictionary of New Words, to fast track is "to bring something about with unusual speed".  In relation to a great many services this meaning is pertinent and significant.  It would be ordinary and everyday usage to say, for example, that motor maintenance was available at the normal rate, but that a fast track service was available for emergencies or for a special price.  The trade mark must then be regarded as a word which has direct descriptive reference to the services and which therefore fails to qualify for registration.

Mr Callinan has made repeated references to the desirability of consistency in trade marks registrations and in support cites the National Box Co Ltd.'s Application (1934) 4 A.O.J.P. 273.  I agree that consistency is highly desirable.  Of greater force however, is the obligation upon the Registrar to consider every application on its own merit:  he is not bound by previous registrations (Lazarus Rosenfeld Pty Ltd.'s Application  (1941) 11 A.O.J.P. 1047; 11 A.O.J.P. 1889). I should also comment that the significance of earlier registrations diminishes further if there has been a development in descriptive or colloquial use of the words constituting those  marks.

The Delegate's Decision

Having considered the situation as fully as I may, I have reached the conclusion that for the services nominated in this application, the word FAST TRACK is both directly descriptive and apt for normal description.  I therefore do not consider fastrack FASTRACK and FAST TRACK  fit for registration in either Part A or Part B of the Register.

Therefore, despite the fact that after considerable effort, the matter of the multiple class objection has been brought to resolution and, with the most recent amendment to the services, the section 33 objection has been overcome, the section 24 objection remains as a fatal impediment. I have no choice but to refuse this application.

Helen R. Hardie

Assistant Registrar

10 March 1994