Fodmapped Foods Pty Ltd

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1657469 (5, 29, 30, 31, 32) - FODMAPPED - in the name of Fodmapped Foods Pty Ltd.

Delegate:	Nicole Worth
Representation:	Applicant: Peter Creighton-Selvay of Counsel, instructed by Wadeson IP
Decision:	2015 ATMO 99 Section 38 – whether application should not have been accepted – trade mark sufficiently inherently adapted to distinguish goods – s38(1)(a) not established – acceptance not revoked – evidence stages of opposition may commence.

This decision is pursuant to section 38 of the Trade Marks Act 1995 (Cth) (‘the Act’). It arises from a notice of intention to revoke the acceptance of trade mark application 1657469, relevant details of which are below.
Trade Mark:            FODMAPPED (‘the Trade Mark’)
Application No.:         1657469
Filing Date:               11 November 2014
Applicant:Fodmapped Foods Pty Ltd (‘the Applicant’). The application was originally filed in the name of Sue Shepherd Foods Pty Ltd, and that entity changed its name to Fodmapped Foods Pty Ltd on 18 May 2015.
Goods:
Class 5: Dietetic food and substances adapted for medical or veterinary use; food for babies; dietary supplements for humans and animals.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; seafood; meat substitutes; tofu; stock; soups; sauces in this class; pesto; bean and dairy based dips; dips; dip mixes; fruit snacks; potato snacks; snacks in this class; frozen prepared meals; frozen and pre-packaged dinners; prepared and packaged meals, snacks and desserts (including soups and stocks); canned prepared salads; prepared food kits composed of meat, poultry, fish, seafood, and/or vegetables and optionally including sauces or seasonings, ready for cooking and assembly as a meal; ready-cooked meals consisting wholly or substantially wholly of meat.
Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; biscuits; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; gravy and sauces; sauces in this class; dipping sauces; sweet and savoury sauces; food dressings; salad dressings; savoury sauces, chutneys and pastes; pasta; pasta sauces; custard; custard mixes; custard powder; breakfast cereals, porridge and grits; cereal based liquid breakfasts; muesli; muesli bars; snacks manufactured from muesli; breakfast bars; fruit and nut snack bars; sweet and savoury biscuits, cookies and muffins; bread and wraps; snacks in this class; cereal based snacks; convenience food and savoury snacks; beans in sauce; canned pasta in tomato sauce; manufactured sweet and savoury snacks including cheese balls and puffs; dry and liquid ready-to-serve meals, mainly consisting of pasta; dry and liquid ready-to-serve meals, mainly consisting of rice; ready-to-eat puddings; ready-to-bake dough products; ready-made baking mixtures; meat pies (prepared); pizzas (prepared); prepared meals containing (principally) pasta or rice; prepared food kits in this class including wraps, tacos or burritos and sauces.
Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; fresh fruits and vegetables; seeds; natural plants and flowers; malt.
Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages
The application was examined as required by section 31 of the Act and no grounds for rejection or formalities objections were raised. In a notation within the trade mark application file the examiner of the application indicated that he had conducted searches for the Trade Mark in a number of sources, such as the Internet, dictionaries and various databases (the research itself does not appear upon the file) and commented that “[f]odmap is a kind of carbohydrate however ‘fodmapped’ is a made up play on the real word in a grammatically incorrect past tense verb form of the noun.”
The Trade Mark was accepted for possible registration on 16 December 2014.
On 16 February 2015 Clayton Utz, acting for Monash University, wrote to the Registrar of Trade Marks (‘the Registrar’) requesting revocation of the acceptance on the basis that the Trade Mark is not capable of distinguishing the claimed goods from those of other persons. Monash University alleged inter alia that: FODMAP is an acronym for “Fermentable Oligo-saccharides, Di-saccharides, Mono-saccharides and Polyols”, a group of carbohydrates which can have adverse effects upon people suffering conditions such as Irritable Bowel Syndrome; and that FODMAP has become the commonly used term around the world for describing the relevant group of carbohydrates. On this basis Monash University asserted that “The term FODMAPPED is merely the verb of the noun FODMAP (in past tense). It directly describes the relevant foods or beverages as having had their levels of FODMAPs assessed.”
Monash University has since commenced the process of opposing the application, although that process has been suspended pending the outcome of the revocation matter here.
On 2 March 2015 a delegate of the Registrar issued a Notification of Proposal to Revoke Acceptance which stated the following:
Trade mark application 1657469 will be advertised as accepted in the Official Journal of Trade Marks shortly. However, it has now come to my attention that the trade mark should not have been accepted.
FODMAP is an acronym for FERMENTABLE OLIGOSACCHARIDES, DISACCHARIDES, MONOSACCHARIDES AND POLYOLS. Collectively, FODMAPs are short chain carbohydrates and sugar alcohols found in foods naturally or as food additives. Low FODMAP diets are used in the treatment of irritable bowel syndrome. Research indicates that consideration of dietary FODMAP levels is a rapidly emerging area of interest to consumers and traders in the health and medical sectors.
Your trade mark FODMAPPED closely resembles the term FODMAP and the addition of the suffix –ED merely forms an adjective from the noun, indicating that the claimed goods have had their FODMAP levels examined and charted for consideration by consumers. Your trade mark therefore should have attracted a section 41(4) ground for rejection at first report.
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).

The referred-to research does not appear upon the trade mark application file.

The Applicant requested to be heard regarding the proposed revocation of acceptance. Prior to the hearing the Applicant filed a statutory declaration of Timothy Mottin, a director of the Applicant, made 9 July 2015. Broadly, the declaration relates to the use of the trade mark SUE SHEPHERD in relation to food products and the intended use of the Trade Mark in relation to food products.
The hearing took place on 20 July 2015 before me, as a delegate of the Registrar. Peter Creighton-Selvay of Counsel, instructed by Wadeson IP, prepared written submissions on the Applicant’s behalf and spoke for the Applicant at the hearing.

Section 38

Section 38 of the Act provides:
(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 necessary under section 31; and
(c) sections 33 and 34 again apply in relation to the application.
Accordingly two factors must be satisfied before acceptance may be revoked. Firstly the Registrar must be satisfied that the application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the application was accepted. The second is that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist. If acceptance is revoked, the application is taken never to have been accepted and is returned to examination so that the Applicant may address the circumstances that should have prevented acceptance.
The revocation provisions empower the Registrar to revoke the acceptance of an application that ought not to have been accepted. It is not necessary for the Registrar to identify a specific error that led to the acceptance or a special circumstance that warrants revocation.[1] The circumstances to which the Registrar may have regard are not limited in any way, the intention being “to put beyond doubt that the Registrar may take account of all circumstances when deciding whether to revoke the acceptance of a trade mark, and not just a limited sub-class of circumstances.”[2] As stated by the Deputy Registrar in Fpinnovation Pty Ltd[3]:
If a ground of rejection or refusal did exist then it may be possible to say there was an error but this is both unnecessary and unhelpful because if a ground existed then the trade mark in question should not have been accepted or registered. That change shifted the focus of the decision maker away from identifying and error or omission and towards the grounds of rejection or refusal.

At the same time revocation must be reasonable and the reasons for it amount to than a mere difference of opinion as to the registrability of a trade mark.[4]

[1] As was the case prior to amendments made to the Act in 2006. Those requirements were removed due to the revocation provisions being interpreted more narrowly than intended, as explained in Explanatory Memorandum, Intellectual Property Laws Amendment Bill 2006 (Cth) 25 [14].

[2] Explanatory Memorandum, Intellectual Property Laws Amendment Bill 2006, 25 [14].

[3] [2012] ATMO 74, [29].

[4] See for example Aceto Balsamico del Duca di Adriano Grosoli SrL v Registrar of Trade Marks [2008] ATMO 2; (2008) 75 IPR 400; Re Bobart [2010] ATMO 43; (2010) 88 IPR 357.

Examples of circumstances that may warrant revocation are in provided in a non-exhaustive list within the Trade Marks Office Manual of Practice and Procedure (‘the Manual’). They include:
- Appropriate searches were not carried out or were omitted during the course of examination;
- Relevant limitations or conditions of registrability were not applied when they were clearly warranted;
- A prior conflicting mark was not raised due to an indexing error or because it was filed later but claimed an earlier convention priority date;
- The research resources available to the Trade Marks Office did not provide the relevant information;
- The decision to accept is one that obviously disregards established authorities and is manifestly wrong.
Examples of circumstances wherein revocation has found not to be reasonable include:
- A ground not routinely analysed during examination and relevant to the matter would need full adversarial testing, and evidentiary stages were significantly underway;[5]
- Evidence sufficient to satisfy the Registrar in terms of subsections 41(5) or 41(4) was filed after acceptance;[6]
- Although prior conflicting marks should have been raised during examination, they related to complex issues of ownership over intellectual property rights which could be more effectively canvassed at an opposition hearing.[7]
The examples above are merely illustrative. It is for me to decide, as the delegate to whom determination of the matter has devolved, whether revocation is appropriate according to the merits of the case at hand.

Section 38(1)(a)

The basis for the proposed revocation of acceptance is that a ground for rejection under section 41 exists. Section 41 of the Act relevantly provides:
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
…
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)    the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)   the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)   the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
It has not been contended that the Trade Mark is devoid of inherent adaptation to distinguish, such that subsection 41(3) applies. Rather it is subsection 41(4) that has been asserted, being that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish. As pointed out by the Applicant, section 33 of the Act embodies a so-called “presumption of registrability” and amendments[8] were made to the Act to clarify that the presumption applies to section 41. Accordingly the Registrar must accept the application, including in circumstances where the Registrar is equally unsure as to whether or not the Trade Mark is capable of distinguishing, unless satisfied the ground for rejection exists.
[8] Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), s 113.
In Clark Equipment Co v Registrar of Trade Marks (‘Clark’)[9] Kitto J stated that whether a trade mark is adapted to distinguish is to be tested:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[9] [1964] HCA 55; (1964) 111 CLR 511, 514.
This test was applied in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’),[10] the majority of the High Court finding that the inherent adaptation of a word depended upon its “ordinary signification” to those that would purchase, consume and trade in the goods. The Applicant relies on Cantarella, particularly the majority’s finding that it is the ordinary signification of a word that permits a conclusion to be drawn as to whether it contains a direct reference or makes a covert and skillful allusion to the goods of interest, and that the “other traders” test[11] refers to the legitimate desire of other traders to use a word which is directly descriptive rather than allusive or metaphorical. The Applicant points to the dissenting judgment of Gageler J in which his Honour comments that a conclusion that a word does not have a direct reference to goods is not in itself a conclusion that a word is inherently adapted to distinguish. The Applicant submits that:
In light of the majority judgment in Cantarella, and the fact that Gageler J was in dissent on precisely this issue, it is quite clear that the view expressed by Gageler J does not represent the law in Australia with respect to the assessment of inherent distinctiveness. It is clear from the judgment of the majority in Cantarella that if a mark, such as the FODMAPPED TM, does not contain a “direct reference” to the goods, it is inherently adapted to distinguish and must be accepted for registration. It does not matter that the mark might contain a covert or skilful allusion to the goods or their qualities or characteristics, which other traders might wish to use. It was on this very issue that Gageler J dissented.
[10] [2014] HCA 48; (2014) 109 IPR 154
[11] Registrar of Trade Marks v W & G Du Cros [1913] AC 624
The Act itself recognises that there are degrees of inherent adaptation to distinguish, as reflected in the continuum between marks that are prima facie inherently adapted to distinguish, those that fall for consideration under subsection 41(4) (having some inherent adaptation to distinguish) and those that fall under subsection 41(3) (having no inherent adaptation to distinguish, under which category trade marks comprising wholly of a direct reference to goods or services are likely to fall). In Cantarella their Honours recognised (at [71]) that different categories of marks may not be registrable including because they comprise a laudatory epithet, a geographical name, a surname, or because they had lost distinctiveness or never had the requisite distinctiveness to start with. Such examples were given in addition to words which were not invented and had a direct reference to the goods. I therefore do not agree that Cantarella is authority for the proposition that in the absence of a “direct reference” to goods or services a trade mark is necessarily inherently adapted to distinguish.
I note that similar arguments were put before the delegates in Campbell Soup Company v Heinz Company Australia Limited (‘Campbell Soup’)[12] and Pacific Magazines Pty Ltd v Bauer Consumer Media Limited,[13] and were not considered persuasive. The comments of the delegate in Campbell Soup at [17]-[19] are apt here (footnotes omitted):
‘Direct reference’ in section 24(1)(d) of the Trade Marks Act 1955 meant apt for normal description. The meaning of the words ‘direct reference’ as they appeared in s 16(1)(d) of the 1905 Act, were considered in Mark Foy’s Ltd v Davies Coop & Co Ltd. That case made it clear that one should not embark on a search for meaning because to do so would indicate that the “words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods”. The words must convey a meaning or idea sufficiently tangible to amount to a ‘direct reference’. This does not mean that only those words which are the actual name of the product or services may lack inherent adaptation under section 41, but the word/expression must have a sufficiently tangible idea or meaning in Australia. The subsequent test is whether other persons will think of the word and wish to use it in relation to the same or similar goods.
The majority in Cantarella considered trade marks at both ends of the spectrum; those which were considered to convey an allusive, covert or metaphorical meaning (eg ‘TUB HAPPY’) and those which were considered to be directly descriptive of the goods (eg ‘Rohoe’).
A ‘direct reference’ to the goods therefore has particular historical meaning and is but one aspect of determining the ordinary signification of words.
[12] [2015] ATMO 73
[13] [2015] ATMO 69

I return then to the question of whether the Trade Mark is inherently adapted to distinguish. The examiner noted that FODMAP is a “kind of carbohydrate”, and the revocation proposal states that “FODMAP is an acronym for FERMENTABLE OLIGOSACCHARIDES, DISACCHARIDES, MONOSACCHARIDES and POLYOLS.” The evidence upon which those observations were based is not before me. Nonetheless the Applicant appears to acknowledge that FODMAP is a term used by those in the industry to describe said carbohydrates. For example the declaration of Mr Mottin states “In my experience, traders that manufacture or sell low FODMAP goods use terms like ‘low FODMAP’ or ‘FODMAP friendly’. Foods that are considered to be unsuitable for people with a FODMAP intolerance are often referred to as ‘high FODMAP foods’ in the industry.”
Additionally a Google® search of the term “FODMAP” reveals use of it to refer to the above described carbohydrates. Although internet searches conducted as at the time of writing this decision do not necessarily represent the state of the market as at the filing date of the application (nor the state of the market as at the time the application was accepted or the time revocation was proposed), a number of the references upon the internet are dated prior to the filing date. For example the Wikipedia® page dedicated to “FODMAP” references several articles including (other than those authored by Sue Shepherd or Monash University and dated before 11 November 2014):
·    "FODMAPs". King's College, London. Diabetes & Nutritional Sciences, Research Projects. Retrieved 18 March 2012.
·    Staudacher HM, Irving PM, Lomer MC, Whelan K (April 2014). "Mechanisms and efficacy of dietary FODMAP restriction in IBS". Nat Rev Gastroenterol Hepatol (Review) 11 (4): 256–66.
·    Reducing fermentable carbohydrates the low FODMAP way (PDF). London: Department of Gastroenterology and Department of Nutrition & Dietetics, Guy's and St Thomas' NHS Foundation Trust, and Nutritional Sciences Division, King's College, London. 2011. pp. 2–5 (sample pages).
·    Hou JK, Lee D, Lewis J (October 2014). "Diet and inflammatory bowel disease: review of patient-targeted recommendations". Clin. Gastroenterol. Hepatol. (Review) 12 (10): 1592–600. doi:10.1016/j.cgh.2013.09.063. PMID 24107394. "Even less evidence exists for the efficacy of the SCD, FODMAP, or Paleo diets. Furthermore, the practicality of maintaining these interventions over long periods of time is doubtful."
I therefore accept that FODMAP is a term used in the industry to refer to “fermentable oligosaccharides, disaccharides, monosaccharides and polyols”, and of itself would likely be considered to be part of the “common heritage” of words referred to in Clark. However it is FODMAPPED, not FODMAP, which is at issue here. The examiner who accepted the application did so reasoning that “Fodmap is a kind of carbohydrate however ‘fodmapped’ is a made up play on the real word in a grammatically incorrect past tense verb form of the noun”. On the other hand the delegate who proposed revocation did so having formed the view that:
…FODMAPPED closely resembles the term FODMAP and the addition of the suffix –ED[14] merely forms an adjective from the noun, indicating that the claimed goods have had their FODMAP levels examined and charted for consideration by consumers. Your trade mark therefore should have attracted a section 41(4) ground for rejection at first report.
[14] I note, as did the Applicant, that the suffix added is –PED rather than –ED, however this difference is not material to the outcome.
For its part the Applicant submitted, in summary, that (a) the Trade Mark is FODMAPPED not FODMAPs MAPPED, so to the extent the Trade Mark indicates anything has been mapped it indicates “FODs” have been mapped, not FODMAPs; (b) even if FODMAPPED suggests that FODMAPs have been mapped, the Trade Mark would still be inherently adapted to distinguish because it contains, at most, a covert and skillful allusion. One has to institute a search for meaning (per Mark Foy’s Ltd v Davies Coop & Co Ltd[15]), not explicitly conveyed by the Trade Mark, to deduce that FODMAPs have been mapped; (c) even if a customer derives the meaning that FODMAPs have been mapped, this is not a direct reference to the claimed goods nor does it convey any relevant characteristic. Without more it is uninformative to say that FODMAPs have been mapped: the Trade Mark does not convey whether the goods contain high, medium or low levels of FODMAPs; and (d) the Trade Mark is more distinctive than a number of other marks that have been held to be inherently adapted to distinguish including SARDOVY, TUB HAPPY, CLICK & ROLL, BABY-DRY, SIZZLE & STIR, AUDIOLINE and FREQUENT FLYER.
[15] (1956) 95 CLR 190; [1956] HCA 41
The concerns raised in the proposal to revoke acceptance appear to be that should the Applicant be granted a monopoly over FODMAPPED, then by virtue of its near resemblance to FODMAP others may be precluded from using the acronym – an acronym which is commonly used in a rapidly emerging industry relating to dietary treatment of digestive conditions; and/or that others may wish to use FODMAPPED because the expression signifies that the claimed goods have had their FODMAP levels examined and charted for consideration by consumers.
Without the evidence before me which led to those beliefs, I am not satisfied that either would be the case. FODMAPPED does visually and phonetically resemble FODMAP, however it is also clearly a play on words. The Trade Mark benefits from the happy coincidence that the second half of the acronym FODMAP is visually and phonetically equivalent to the word “map”, a word which lends itself to describing things which have been examined and charted. Accordingly, those familiar with FODMAPs are likely to understand the Trade Mark to mean that the FODMAPs contained in the goods have been examined, measured and recorded for perusal. However this is not to say that FODMAPPED would not be recognised as a syntactically incorrect play on words or, in Cantarella terms, a covert or skillful allusion. The conversion of the acronym to a past tense verb has impact, such that whilst FODMAPPED is visually and phonetically similar to FODMAP the concept conveyed by the two is different. I tend to agree that the meaning of FODMAPPED referred to above is not explicit and the Trade Mark does not convey a relevant characteristic.
Nor is there any evidence before me suggesting that others are likely to wish to use FODMAPPED in the sense described in the proposal to revoke acceptance. There is no research attached to the trade mark application file. My own internet search upon Google®, conducted as at the time of writing this decision, reveals in the first 30 results[16] a number of web pages relating to the Applicant or the Applicant’s goods; a number of web pages allowing users to check for business names, domain names, or trade mark applications relating to FODMAPPED; web pages relating to the subject trade mark application and opposition; a number of instances of #fodmapped (being a label to associate text or images with a particular subject) upon social media pages; and the use of FODMAPPED in a small number of blogs and forums about a low FODMAP diet.
[16] An arbitrary number of results, selected on the basis that it should be relatively apparent whether the term is commonly used descriptively in relation to the claimed goods.
Other than the last two circumstances described, I do not consider the majority of web pages to be relevant. In respect of the last two circumstances, #fodmapped is used as one of a number of variants of FODMAP (along with #fodmap, #fodmapper, #fodmapfiend, #fodmapdiet and so on) and not necessarily as a reference to goods that have had their FODMAP levels measured and charted. The use of FODMAPPED in blogs and forums are as follows:
- The title of a blog “FODMAPPED!” at “fodmapped.wordpress.com”; which does not use the Trade Mark sensibly - other than a general association with a low FODMAP diet no meaning can be derived from the word.[17]
- A member of “adelaidevegans.org” uses the term in a description of herself: “...vegan, gluten freed, FODMAPped, fructose malabsorber…”; which appears to be a play on words (as is “gluten freed”) relating to having adopted a low FODMAP diet.[18]
- The writer of a blog at “fodmishaps.blogspot.com.au” uses the term to describe foods she loves: “Sadly, my favourites are the fodmappiest fodmaps that ever fodmapped…”; which appears to be a reference to foods with high levels of FODMAPs.[19]
- A commenter in the discussion forum at “healthunlocked.com” states “Speak to your doctor about medicated changes or ask to have your diet FODMAPPED, it’s a new diet to help with i.b.s. [sic]”; which appears to be a reference to seeking advice about adopting a low FODMAP diet.[20]
- A person posting a comment upon the “crazyboards” forum states that “I’ve juiced, rawfooded, whole30ed, gluten freed, fodmapped…”; which again appears to be a play on words relating to having adopted a low FODMAP diet. Additionally this post is dated 5 September 2015, some time after the application was filed.[21]
The examples of FODMAPPED in use by the public are few, and it appears that there is no common meaning or application of the word. The instance “…have your diet FODMAPPED” appears to use the expression in the manner most closely resembling that asserted in the proposal to revoke acceptance, however even then it is not clear that the writer is referring to food and beverage products (as opposed to a dietary regime) which have had their levels of FODMAPs examined and charted. Considering the variation in use and meaning, I do not believe the examples described above establish that the Trade Mark should not have been accepted.
Although not determinative, I note further that none of the circumstances identified in the Manual as potentially giving rise to revocation appear to have occurred here. A record upon the file indicates that the examiner carried out appropriate research (although it was not attached to the file), and the examiner’s decision does not appear to be manifestly wrong or to obviously disregard established authorities.
Accordingly I do not consider that the resemblance of FODMAPPED to FODMAP, nor the asserted potential for others to wish to use FODMAPPED to refer to goods which have had their FODMAPs examined and charted, gives rise to a ground for rejection that ought to have prevented acceptance of the Trade Mark. The application was subjected to a standard examination process, and without having the information before me upon which revocation was proposed, it seems that the examiner made a reasonable decision.
I am not satisfied that the Trade Mark should not have been accepted, and the first hurdle of the revocation provisions in the Act has not been established. It is therefore not necessary to consider whether it is reasonable to revoke acceptance.
I decline to revoke acceptance of trade mark application 1657469.
I note that the Registrar’s delegate directed on 15 September 2015 that the opposition proceeding commenced by Monash University was suspended while awaiting the outcome of this revocation of acceptance matter. Given I have not revoked acceptance, the next stage of the opposition process may proceed (the Notice of Intention to Oppose, the Statement of Grounds and Particulars, and the Notice of Intention to Defend all having been filed).
Accordingly, Monash University has three months from the date of this decision in which to file its evidence in support. I refer the parties to the direction issued by the Registrar on 26 June 2014 entitled “Trade Marks (Filing Documents and Evidence – Opposition) Direction”, available upon the IP Australia website at and annexed to this decision.

Nicole Worth
Hearings Officer
Trade Marks Hearings
13 October 2015

Trade Marks (Filing Documents and Evidence—Opposition) Direction

Trade Marks Regulations 1995.

26 Jun 2014

Part 1 - Preliminary

1 Name of direction

This direction is the Trade Marks (Filing Documents and Evidence-Opposition) Direction 2014.

2 Commencement

This direction commences on 14 July 2014.

3 Authority

This direction is made under the Trade Marks Regulations 1995.

4 Revocation

This direction revokes any previous directions made by the Registrar under the Trade Marks Regulations 1995 in relation to the filing of documents or evidence for oppositions.

5 Definitions

In this direction:

Objective Connect means the electronic document management system known as Objective Connect.

Note: IP Australia provides access to Objective Connect.

Regulations means the Trade Marks Regulations 1995.

Part 2 - Form and means for filing documents

6 Form for filing documents-electronic filing using Objective Connect

(1) For paragraphs 5.3(1)(b), 9.3(1)(b), 17A.30(1)(b) and 17A.48A(1)(b) of the Regulations, this section sets out the form in which a document is to be filed if it is filed electronically using Objective Connect.

(2) The document is to be in one or more of the following electronic formats:

(a) JPEG;
(b) MP3;
(c) MPEG;
(d) PDF;
(e) PNG;
(f) Text;
(g) TIFF;
(h) Word;
(i) XML.

(3) The document is to be given a title in the following form:

(a) for evidence in support-"Part/balance evidence in support" or "All evidence in support";
(b) for evidence in answer-"Part/balance evidence in answer" or "All evidence in answer";
(c) for evidence in reply-"Part/balance evidence in reply" or "All evidence in reply";
(d) for a summary of submissions for oral hearing-"Summary of submissions for oral hearing" followed by a description of the party filing the summary;
(e) for a summary of written submissions-"Summary of written submissions" followed by a description of the party filing the summary;
(f) for a document that has been produced under the Registrar's discretion under section 202-"Produced document" followed by a brief description of the document being produced;
(g) for information available to the Registrar under regulation 21.19-"Available information" followed by a brief description of the information; and for oppositions commenced before 15 April 2013:
(h) for further evidence-"Further evidence";
(i) for further evidence in response-"Further evidence in response".

Example 1: For paragraph (b)-All evidence in answer.
Example 2: For paragraph (c)-All evidence in reply Part 1.
Example 3: For paragraph (e)-Summary of written submissions-opponent.

(4) If a document exceeds 1 GB in size:

(a) it is to be provided in more than one file, with each file less than 1 GB; and
(b) the title for each file is to:
(i) be in the form mentioned in subsection (3); and
(ii) briefly identify which part of the document is contained in the file.

Example: All evidence in answer-Jones declaration Part 1.

7 Form for filing evidence describing articles other than documents

(1) This section applies to evidence that describes an article other than a document if the article is not being filed.

(2) For paragraphs 5.3(1)(b), 9.3(1)(b), 17A.30(1)(b) and 17A.48A(1)(b) of the Regulations, the evidence is to be in the form of a declaration that:
(a) describes the article; and
(b) attaches a photograph or video recording of the article as an exhibit to the declaration.

Note 1: A declaration must be in the approved form: see regulation 21.6 of the Regulations.
Note 2: Section 6 sets out additional requirements relating to the form of the evidence if it is a document filed using Objective Connect.

8 Means for filing documents and evidence

Certain documents, and evidence in the form of a document

(1) For paragraphs 5.3(1)(c). 9.3(1)(c), 17A.30(1)(c) and 17A.48A(1)(c) of the Regulations, a document mentioned in subsection (2), or evidence in the form of a document, is to be filed using:
(a) Objective Connect; or
(b) if it is not practicable to file the document or evidence using Objective Connect-a means approved in writing, for the document or evidence, by the Registrar.

(2) For subsection (1), the documents are the following:
(a) a covering letter for evidence;
(b) evidence in support;
(c) evidence in answer;
(d) evidence in reply;
(e) a summary of submissions for an oral hearing;
(f) a summary of written submissions;
(g) a covering letter for a summary of submissions for an oral hearing;
(h) a covering letter for a summary of written submissions; and for oppositions commenced before 15 April 2013:
(i) further evidence;
(j) further evidence in response.

Other documents

(3) For paragraphs 5.3(1)(c), 9.3(1)(c), 17A.30(1)(c) and 17A.48A(1)(c) of the Regulations, any other document may be filed by:
(a) using the electronic system known as eServices channel maintained by IP Australia; or
(b) using the Alternate Lodgement Service maintained by IP Australia; or
(c) using IP Australia's emergency facsimile service; or
(d) delivering it to the Trade Marks Office either personally or by post.

6 Form for filing documents-electronic filing using Objective Connect

Note 1: For paragraph (a), the eServices channel could in 2014 be accessed.
Note 2: For paragraph (b), the Alternate Lodgement Service is a secondary eServices function accessed that can be invoked during outages of eServices.
Note 3: For paragraph (c), the IP Australia's emergency facsimile service may only be used under the conditions set out.

[2015] ATMO 99

14 October 2015