Harvey Comics, Inc - [2001] ATMO 77

TRADE MARKS ACT 1995

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

Re:A delegate's intention to refuse an application by Harvey Comics, Inc. to extend the final date for lapsing of application number 737180 for the trade mark HOT STUFF in Class 25
Background

An application for the registration of the word trade mark HOT STUFF, covering the statement of goods, "Clothing, footwear, headgear" in Class 25, by way of application number 737180, was filed on 18 June 1997 by Harvey Comics, Inc. (the applicant). An Examiner of Trade Marks examined the application and on 25 September 1997, she issued an adverse report citing three prior registered trade marks as being impediments to the present mark's registration, under s.44 of the Act. In accordance with reg. 4.12, the application therefore became liable for lapsing on 25 December 1998. No submissions were filed in answer to the examiner's objections but the applicant sought repeated extensions of time to defer lapsing, under the provisions of s.224, by Davies Collison Cave, the applicant's attorneys. The Registrar's delegate subsequently allowed these applications.

From 25 June 1999, the grounds, upon which the applications for these extensions were made, were given as "special circumstances". These applications were accompanied by statutory declarations from the applicant's attorneys, giving details of what these circumstances were alleged to be. The Registrar's delegate, in the Trade Mark Client Services and Support Section, continued to grant these extensions until 25 June 2001. However, on two occasions, the applicant was warned that it would be necessary to give more details on the special circumstances, relied upon for seeking the extension, before future extensions could be granted. The applicant's attorneys duly outlined these circumstances in a series of statutory declarations forwarded in conjunction with further applications to extend the date of lapsing.

On 25 June 2001, the applicant's attorneys filed yet another application under s.224, this time for an extension of time of three months, from 25 June 2001 to 25 September 2001. This application was also based on the grounds of "special circumstances" under paragraph (3). It was accompanied by a declaration by Mr Trevor Stevens, a solicitor in the employ of Davies Collison Cave, dated 25 June 2001. Mr Stevens declared as to some delays which the applicant's instructing U.S. attorneys had experienced in receiving instructions because of an "in-house transition" experienced by the applicant. He said that, as far as he was aware, it remained the applicant's intention to initiate legal proceedings against the owner of the cited registrations. He said that he was not aware of what progress had been made in relation to those proceedings but that, to his knowledge, the applicant retained its interest in the present trade mark and had every intention of pursuing its application for registration.

On 29 June 2001, Mr Malcolm Lomasney, the Assistant Director of Trade Marks Administration, sent a letter to Davies Collison Cave saying that he did not consider that it was appropriate to exercise his…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Harvey Comics, Inc [2001] ATMO 77
Case: [2001] ATMO 77
Decision Date: 17 August 2001

CaseChat Overview and Summary

Harvey Comics, Inc. (the applicant) sought to register a trade mark for the word "Harvey" in relation to comic books and related publications. The respondent, a company operating under the name "Harvey Comics", opposed the application on the basis that the mark was deceptively similar to its own registered trade mark, also for "Harvey Comics", and that the applicant's use of the mark would be likely to deceive or cause confusion. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether the applicant's proposed trade mark "Harvey" was deceptively similar to the respondent's registered trade mark "Harvey Comics" for the purposes of the *Trade Marks Act 1995* (Cth). This involved an assessment of the degree of visual, phonetic, and conceptual resemblance between the two marks, as well as consideration of the goods for which registration was sought and the likely perception of the relevant public.

The Court applied the established principles for assessing deceptive similarity, which require a consideration of the marks as a whole, rather than dissecting them into their component parts. It was noted that the respondent's mark was a composite mark, whereas the applicant's mark was a single word. However, the Court found that the common element "Harvey" was distinctive and that the addition of "Comics" to the respondent's mark did not sufficiently differentiate it from the applicant's proposed mark, particularly given the nature of the goods. The Court concluded that there was a real likelihood of deception or confusion among consumers, leading to the belief that the applicant's goods originated from or were associated with the respondent.

The Court therefore dismissed the applicant's appeal and upheld the opposition to the registration of the trade mark.

Orders