TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1616273(25) - CRAZY BUFFALO (and Device) in the name of Globalscope Pty Ltd.
Delegate: | Heath Wilson |
Representation: | Applicant: Peter Whitehead of Hazan Hollander |
Decision: | 2016 ATMO 14 Section 38 of the Trade Marks Act 1995 – revocation of acceptance – acceptance of Trade Mark not revoked - opposition proceedings to recommence. |
Background
On 8 April 2014, Globalscope Pty Ltd (‘the Applicant’) applied to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’), being:
Trade Mark No: 1616273
Trade Mark:
(‘the Trade Mark’)
Specification of Goods: Class 25: Apparel (clothing, footwear, headgear)
The Trade Mark was examined as required under section 31 of the Act. No grounds for rejection were identified by the examiner and the Trade Mark was accepted for possible registration.
On 28 August 2014, advertisement of the acceptance was published in the Australian Official Journal of Trade Marks.
On 16 October 2014, a Notice of Intention to Oppose was filed by the opponent 1724982 Alberta ULC. This was followed by a Statement of Grounds and Particulars (‘SGP’) filed by the opponent nominating grounds of opposition under sections 42(b) (contrary to law), 58 (Applicant not the owner), 59 (no intention to use the Trade Mark), 60 (deception or confusion arising from reputation in another trade mark) and 62A (application was made in bad faith).
The Applicant subsequently filed a Notice of Intention to Defend. Evidence in Support and Evidence in Answer was also filed.
On 22 September 2015, the opponent’s legal representatives (Davies Collison Cave) wrote to the office requesting revocation of acceptance of the Trade Mark under section 38. The basis of the request was a ground for rejection under section 44 of the Act.
Evidence in Reply was then filed by the opponent for the opposition proceedings.
The request for revocation of acceptance was considered by this office and on 8 October 2015, a letter of intention to revoke was sent by the office to the Applicant. It read:
In accepting your application the examiner did not fully consider the existence of several conflicting trade marks already on the Register. The following trade marks all have the word BUFFALO as the major distinguishing element, claim similar goods and/or closely related services to the goods you are claiming, and have an earlier priority date:
319948, 751719, 902013, 917466 and 1145319
Although your trade mark has the additional word CRAZY and the device of a buffalo head, this is not considered sufficient to differentiate it from the earlier trade marks. There is a real likelihood that customers will assume a common trade source. Grounds for rejecting your trade mark should have been raised under section 44 of the Trade Marks Act 1995.
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…
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- AGLC
- Globalscope Pty Ltd [2016] ATMO 14
- Case
- [2016] ATMO 14
- Decision Date
CaseChat Overview and Summary
The court was required to determine whether the Registrar had acted reasonably in revoking the acceptance of Globalscope Pty Ltd's trade mark application, particularly in light of the Registrar's consideration of existing, conflicting trade marks. The court also considered the proper interpretation and application of section 38(1)(b) of the relevant Act, which governs the revocation of trade mark acceptance.
The court found that the examiner had indeed considered the conflicting trade marks, as evidenced by the examination file and the examiner's worksheet. However, the court clarified that the examiner's consideration of conflicting marks, while a relevant circumstance, was not determinative. The court applied the principle that acceptance could be revoked if the decision to accept was manifestly wrong, clearly not a mere difference of opinion, and obviously disregarded established authorities, as guided by the Trade Marks Office Manual of Practice and Procedure. The court emphasised that the case for revocation must stand on its own merits.
The court ultimately found that the Registrar's decision to revoke acceptance was reasonable, notwithstanding the examiner's initial consideration of the conflicting marks. The court's reasoning focused on the overall reasonableness of the Registrar's actions, taking into account all circumstances, rather than solely on whether an error or omission preceded the decision.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
In relation to the second limb (section 38(1)(b)), the Explanatory Memorandum provided:[3]This consideration is not limited to the circumstances as they existed when the trade mark was accepted. Further, the Registrar is not limited in what he or she may consider.The new provision will allow the Registrar to revoke acceptance of a trade mark only when this course of action is reasonable, taking account of all of the circumstances. The intention of this provision is to focus attention on the reasonableness of the Registrar's actions, and not on whether or not an `error or omission' or a `special circumstance' preceded the registration of the trade mark.This provision ensures that the Registrar will be in a better position to effectively keep invalidly accepted trade mark applications from becoming registered, thus protecting the public interest.[3] At paragraphs 17 and 18. At the hearing of the above matter, Mr Whitehead drew my attention to the fact that the examiner did fully consider the existence of the conflicting trade marks (despite the apparently contrary explanation provided in the letter of intention to revoke). On behalf of the Applicant, Mr Whitehead requested aspects of the examination file and found that the examiner’s extract list from the Australian Trade Marks Online Search System (‘ATMOSS’) listed each of the conflicting trade marks and marked them “Mark Sufficiently Different”. Furthermore, the examiner’s worksheet on file provided the examiner’s view that:…Addition of distinctive cartoon image in combination with CRAZY appearing at the start of the mark presents an overall different meaning and impression. It is an informed consumer for the goods who spends more time and care inspecting the items. Under the current provisions, the fact that the examiner did consider the conflicting trade marks is a circumstance existing at the time of acceptance which may be taken into account. Having said that, it is not a determinative factor, because despite all best efforts and due consideration of the authorities an examiner may nevertheless come to a conclusion that is incorrect in law. Section 38(1)(a) of the Act, when seen in light of the legislative intent, clearly envisages such a scenario. This type of scenario must considered in light of the guidance provided in the Trade Marks Office Manual of Practice and Procedure (“the Manual”)[4]:It may also be reasonable to revoke acceptance in the circumstances where the decision to accept is one that cannot reasonably be supported by the accepted and defined tests and the decision made by the examiner is:· manifestly wrong,· clearly not just a difference of opinion, and· obviously disregards established authorities[4] At Part 38.2.4 As Hearing Officer Williams said in the decision of Re Jack Grieve[5]:It is utterly inappropriate for a delegate, in assessing the merits of revocation of an acceptance, to take on the role of a protagonist. Or, to put it another way, the case for revocation ought to stand on its own merits. If those merits need an advocate to lead evidence or counter-evidence, and to articulate the case for revocation, it is hard to see how this would be appropriate. [5] [2010] ATMO 12 at [25].