Glendon Hardware Pty. Limited

[2010] ATMO 105

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1323621 (Classes 37 and 42) - DOCTOR LOCKSMITH AND DEVICE - in the name of Glendon Hardware Pty. Limited and Proposal to revoke acceptance of same.

Delegate:

John Spence

Representation:

Applicant : Mr. Christopher Lawrence of Counsel, instructed by Mr. Dan Siveguru, Solicitor, of DTA Lawyers

Decision:

2010 ATMO 105

Section 38 – proposed revocation of acceptance – grounds of rejection pursuant to Section 44 apply to application – reasonable in all the circumstances to revoke acceptance.

Background

1.     These proceedings involve the proposed revocation of acceptance in respect of the following trade mark application, namely:

This application was filed by Glendon Hardware Pty. Limited (“the Applicant”) on 6 October 2009 in Classes 37 and 42 of the International (Nice) Classification of Goods and Services and in respect of the following items, namely:

Class 37:

Locksmithing services being the installation, repair and maintenance of  locks and locking systems.

Class 42:  

Locksmithing services being the design of locks and locking systems.

2.     In the course of examination the sole objection which was raised required clarification as to the name of the owner as it appeared in the application document. Upon that issue being satisfied, this application was accepted for possible registration on 23 October 2009 and advertised as such in the Official Journal of Trade Marks dated 4 February 2010.  

3.     On 23 March 2010, Mr. Nathan do Rozario on behalf of the business known as “DR LOCK LOCKSMITH” sent an e-mail to IP Australia raising objections to the  acceptance of the present application No. 1323621 and seeking a review of the situation. In particular Mr. do Rozario drew attention to the prior existing registration No. 1160453 “Dr Lock” (word mark) in Classes 37 and 45 which is held in his name and which has the earlier filing date of 11 February 2007. In addition Mr. do Rozario explained that his business is generally referred to as “Dr Lock Locksmith” and he sought to provide instances where confusion had allegedly occurred.

4. On 30 March 2010 IP Australia forwarded correspondence to the Applicant indicating that it intended to revoke the acceptance of application No. 1323621 pursuant to the provisions of Section 38 of the Trade Marks Act 1995 (“the Act”). Revocation was proposed because the prior conflicting registrations Nos. 669422 “DOCTOR LOCK” and 1160453 “Dr Lock” in respect of similar services had not been identified by the examiner during the course of initial examination, and therefore grounds for rejecting the application existed by virtue of Section 44 of the Act.

5. Pursuant to the provisions of Section 203 of the Act, the Applicant exercised its right to be heard in relation to the revocation proposal. The matter was duly set down for a hearing which took place in Canberra on 8 July 2010 before me as the delegate of the Registrar. On that occasion, the Applicant was represented by Mr. Christopher…