Global Creatrix Pty Ltd

[2020] ATMO 38

TRADE MARKS ACT 1995

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

ReTrade mark application number 1865808 (41, 44) – INSTITUTE OF WOMEN – in the name of Global Creatrix Pty Ltd

Delegate:                 Robert Wilson

Representation:       Applicant: Blake Knowles of Spruson and Ferguson

Decision:                   2020 ATMO 38

Trade Marks Act 1995 (Cth) – ex parte hearing – whether acceptance of application ought to be revoked under s 38 – not reasonable to revoke acceptance

Background

1. On 14 August 2017 Global Creatrix Pty Ltd (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:

1865808

Services:

Class 41: Mentoring (education and training); Life coaching services (training or education services); Career counselling (education or training advice); Conducting instructional courses; Conducting training seminars; Conducting workshops (training); Education services; Personal development courses; Practical training (demonstration); Providing courses of instruction; Vocational guidance (education or training advice)

Class 44: Provision of information relating to behavioural modification; Provision of information relating to psychology; Lifestyle counselling (psychological); Health counselling; Psychological counselling; Complementary medical services; Meditation services; Therapy services

Trade Mark:

INSTITUTE OF WOMEN

(‘the Trade Mark’)

Endorsements:

Evidence and/or other circumstances provided under subsection 41(4).

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

1. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’) and on 30 November 2017 the examiner issued an adverse examination report. The report indicated that the examiner considered that there were grounds for rejecting the application under ss 41 and 44 of the Act. The report also indicated that the Applicant might overcome the grounds for rejection if it supplied relevant evidence of use of the Trade Mark.

2. Following a deferment of acceptance, the Applicant filed a response to the report on 25 June 2019. The Applicant’s response was prepared and filed by the Applicant’s representatives, Spruson & Ferguson. The response included evidence of use of the Trade Mark and other similar signs. The examiner assessed the evidence and was satisfied that it demonstrated use which was sufficient to overcome both grounds for rejection. On 15 July 2019, the application was accepted and the appropriate endorsements entered on the Register. In line with usual practice, on the day the application was accepted the Office sent correspondence to the owner of the trade marks which were cited in the adverse report under the s 44 ground for rejection.

3. On 13 August 2019 correspondence was received from IP Wealth Pty Ltd, a law firm acting for the owners of the marks cited under s 44 in the adverse report, in which it submitted that the acceptance ought to be revoked under s 38 of the Act. The application and evidence were reviewed by a senior examiner, and on 28 August 2019 the Applicant was informed that ‘it was found the evidence provided was not sufficient to establish use of the mark as applied [for]’ and that ‘it is considered reasonable to revoke the acceptance’ of the application. The Applicant was given an opportunity to respond by either providing written submissions or requesting a hearing. On 6 September 2019 the Applicant requested an oral hearing. The matter was set down to be heard on 4 March 2020.

4. In the meantime, on 13 September 2019, a Notice of Intention to Oppose was filed by the owner of the cited trade marks, Karen Jane Phillips. That opposition proceeding remains on foot and is suspended pending the present decision. The opposition is at the start of the evidence stages.

5. As a delegate of the Registrar of Trade Marks, I heard the Applicant regarding the intention to revoke acceptance on 4 March 2020. Blake Knowles of Spruson & Ferguson presented oral submissions on behalf of the Applicant.

   Discussion

6. Section 38 of the Act gives the Registrar the power to revoke acceptance of an application to register a trade mark. That section reads as follows:

   Section 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.

7. The correspondence from the senior examiner explained the basis of the intention to revoke as follows:

   Upon review of the evidence you have submitted in relation to the grounds for rejection raised it was found that the evidence provided was not sufficient to establish use of the mark as applied. Nearly all of the examples of use provided were significantly stylised and accompanied with other elements mostly the term 'international'. For this reason it was found that this evidence was not sufficient to apply the relevant provisions of section 41(4) and 44(4)

   It has been found on a number of occasions that a mere difference of opinion between the original examiner and a more senior examiner is not a sufficient reason to revoke acceptance.[1] A significant thrust of the Applicant’s submissions was that there was a mere difference of opinion and that the examiner’s acceptance on the basis of the evidence was entirely reasonable. The Applicant submitted that the examiner was justified to have considered use of the two trade marks shown below to be use of the Trade Mark with additions or alterations that do not substantially affect the identity of the Trade Mark.[2] The Applicant referred to the relevant case law to support its view.[3]

INSTITUTE OF WOMEN INTERNATIONAL

[1] See for example: Aceto Balsamico Del Duca di Adriano Grosoli Srl [2008] ATMO 2; Telstra Corporation [2006] ATMO 31; Enviroderm Australia Pty Ltd [2002] ATMO 38. I note that the latter two decisions were decided under s 38 in an earlier form.

[2] See s 7 of the Act.

[3] For example: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6.

1. The Applicant also submitted that as there is an opposition proceeding on foot ‘the registrability of the mark should be determined in the opposition forum’.

2. I am persuaded by the Applicant’s submissions. I am not satisfied that the examiner’s decision was manifestly wrong and that there is any more than a mere difference of opinion between the examiner and the senior examiner who reviewed the evidence. Additionally, that there is an opposition on foot is a relevant consideration.[4] An opposition proceeding is an appropriate forum for the registrability of the Trade Mark to be tested in this instance. On balance, I am not satisfied that it is reasonable to revoke the acceptance of the application.

   [4] Cooley Investments Pty Ltd [2011] ATMO 7, [14].

   Decision

3. I am not satisfied that it is reasonable to revoke acceptance of the application, accordingly, I decide not to revoke the acceptance.

   Robert Wilson
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   13 March 2020