Industrial Knitted Products Pty Ltd

[2014] ATMO 77

TRADE MARKS ACT 1995

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

Re:Proposal to revoke acceptance of trade mark applications numbers 1571419 – EXCELNET, and 1571822 – EXCELNET logo - in the name of Industrial Knitted Products Pty Ltd.

Delegate:	Robert Wilson
Representation:	Applicant:
Decision:	2014 ATMO 77 Section 38: Whether reasonable to revoke acceptance – error made by examiner in not raising earlier trade mark as citation – marks deceptively similar – goods of the same description – acceptances revoked.

Background

1. Industrial Knitted Products Pty Ltd (‘the Applicant’) filed applications (‘the Applications’) to register the following two trade marks (‘the Applicant’s Trade Marks’):

Application Number:

1571419

Priority Date:

29 July 2013

Goods:

Class 22: Elastic and non-elastic netting for meat packaging; strings for tying purposes; packing string and nets; article made from string; packaging materials

 (‘the Applicant’s Goods’)

Trade Mark:

EXCELNET

Application Number:

1571822

Priority Date:

31 July 2013

Goods:

Class 22: Elastic and non-elastic netting for meat packaging; strings for tying purposes; packing string and nets; article made from string; packaging materials

 (‘the Applicant’s Goods’)

Trade Mark:

1. The Applications were examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’).

2. A clear report was issued in respect of application 1571419 on 2 September 2013 indicating that the application was accepted for possible registration of the trade mark and the acceptance was advertised in the Australian Official Journal of Trade Marks (‘the Journal’) on 19 December 2013.

3. A first adverse report was issued in respect of application 1571822 on 2 September 2013. The report indicated that there was a minor issue with the representation of the trade mark. The Applicant provided a replacement representation of the trade mark and a clear report was then issued. The acceptance was advertised in the Journal on 9 January 2014.

4. Notices of intention to revoke the acceptance of the Applications (‘the Notices’) were sent to the Applicant on 20 December 2013. The basis of the revocation was trade mark number 1569610. Details of 1569610 appear in the text quoted below. The Notices were similarly worded in the following terms:

   During the examination of your trade mark, a conflicting trade mark was not identified. A review of the trade mark details has found that it is deceptively similar to earlier trade mark 1569610 which claims similar goods.

   …

   1569610 - - 18 July 2013

   Class: 17 Netting; rubber

   Both trade marks contain claims for ‘Netting’ in classes 17 and 22 which are goods of a similar description. Both trade marks also contain EXCELNET which is a prominent and distinctive feature. Consumers viewing goods bearing each of the trade marks would believe the origin of the goods to be the same.

   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).

5. Trade mark 1569610 was originally the subject of an application (‘the Earlier Application’) which had as the representation of the trade mark that shown below (‘the Original Earlier Trade Mark’):

1. Following its examination, the examiner of the Earlier Application issued a first adverse report on 4 September 2013 which concerned the representation of the trade mark. Prior to issuing the adverse report the examiner contacted the applicant of the Earlier Application (‘the Earlier Applicant’) by telephone. The record of conversation on IP Australia’s file shows that the Earlier Applicant indicated ‘that the representation was incorrect due to submitting the wrong image provided by his graphic designer’. In the first adverse report the examiner indicated that it might be an option for the Earlier Applicant to amend the representation of its trade mark pursuant to s 65A of the Act. Section 65A allows an application to be amended correct a clerical error or obvious mistake. The Earlier Applicant requested such an amendment and provided, as a replacement, the representation of its trade mark shown below (and in the Notices):

(‘the Amended Earlier Trade Mark’)

The amendment to the representation of the trade mark in the Earlier Application was made on 4 September 2013.

1. It is to be noted that at the time of issuing the first reports for the Applications the representation of the trade mark in the Earlier Application had not yet been amended. The examiner of the Applicant’s Trade Marks did not raise the Original Earlier Trade Mark as an impediment to the acceptance of the Applications.

2. The Notices indicated that the Applicant had one month from the date of the Notices to request to be heard on the intention to revoke the Applications. The Applicant initially responded to the Notices via written submissions dated 20 January 2014 (‘the Applicant’s first submissions’). Subsequently, the Applicant requested to be heard on the issue, and provided additional submissions dated 15 May 2014 (‘the Applicant’s second submissions’).

10.  I am a delegate of the Registrar of Trade Marks and this matter has come to me for decision.

Discussion

11. Section 38 of the Act relevantly reads:

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.

12. It can be seen from the wording of s 38 that two factors must be satisfied before the Registrar may revoke the acceptance of an application. In broad terms, these are firstly, that the application should not have been accepted, and secondly, that it is reasonable to revoke acceptance. Both factors require the Registrar to take account of all the circumstances that existed when the application was accepted. Logically, however, the Registrar can only take account of circumstances of which the Registrar is aware at the time the decision of whether to revoke is made.

13.  A typical situation where the first factor would be satisfied is where there was a valid ground for rejecting the application which was not raised (for whatever reason) during the examination process. For example, that there existed on the Register a trade mark which was deceptively similar to the trade mark applied for, but this was not cited by the examiner.

14.  A common approach taken in earlier decisions when assessing whether it is reasonable to revoke acceptance (the second factor) has been to consider the circumstances which led to the application being accepted in error. Where, for example, there was an obvious error or oversight that occurred during the examination process, this has often been found to warrant revocation. This approach is reflected in the Trade Marks Office Manual of Practice and Procedure (‘the Manual’). Part 38, para 2.3 of the Manual, provides a number of examples of ‘where it may be reasonable to consider revocation’. The examples include:

• the appropriate research was not carried out, or where an inappropriate search strategy was used

• an application is accepted because a citation was missed due to an indexing error.

15.  Other circumstances which have been found to be relevant to the reasonableness of revocation include:

• that there is a public interest in maintaining a consistent and accurate Register;[1]

• the ease by which a citation raised following revocation might be overcome;[2]

• the balance of the inconvenience to the applicant caused by revocation, as against the need to ensure a consistent and accurate Register;[3]

• any inconvenience and expense incurred by the applicant in prosecution of its application up to the date of the consideration of whether to revoke;[4]

• the status of any opposition proceedings which may already have commenced against an application.[5]

  [1] See for example: Glendon Hardware Pty Limited [2010] ATMO 105; Aceto Balsamico Del Duca di Adriano Grosoli S.r.l [2008] ATMO 2; 1-800-Flowers.Com Inc [2011] ATMO 97.

  [2] See for example: J H Fenner and Company Limited [2009] ATMO 7; Re Sealite Limited [2009] ATMO 99.

  [3] See for example: Re Jack Greive [2010] ATMO 12.

  [4] See for example: Re Application by Export Corporation (Australia) Pty Limited [2010] ATMO 52.

  [5] Ibid.

16.  The Applicant stated in the Applicant’s first submissions that:

We understand that revocation of acceptance of [the Applications] is on the basis that a conflicting trade mark was not identified during the examination of these applications, namely [the Amended Earlier Trade Mark]. However, we submit that [the Amended Earlier Trade Mark] is not a valid citation objection and it is not reasonable for acceptance of [the Applications] to be revoked. [The Earlier Application] was amended in its form on 17 October 2013. Before the amendment, the word EXCELNET was a minor and insignificant component of the overall totality of [the Original Earlier Trade Mark]. Prior to its amendment [the Original Earlier Trade Mark] comprised of a mark that was not deceptively similar to the [Applicant’s Trade Marks] and therefore [the Amended Earlier Trade Mark] was properly not identified as a conflicting trade mark.

17. The Applicant also provided submissions which averred that the amendment to the representation of the Amended Earlier Trade Mark should not have been made, and the balance of the Applicant’s first submissions largely addressed this point. The Applicant further submitted in its second submissions that, in summary, even if the amendment to representation of the trade mark in the Earlier Application is valid, the Registrar is not able to consider the Amended Earlier Trade Mark as a circumstance for a decision to revoke acceptance. The basis of this argument being that the wording of s 38(1)(a) allows consideration only of circumstances that existed at the time the Applications were accepted. Given, says the Applicant, that the Original Earlier Trade Mark was the representation of the trade mark at the time of acceptances of the Applications the Amended Earlier Trade Mark is not a relevant consideration.

18. The Applicant’s submissions centre upon its assertion that the Applicant’s Trade Marks are not deceptively similar to the Original Earlier Trade Mark. Secondary, are submissions that the Earlier Application should not have been amended pursuant to s 65A, and that even if it were to be a valid amendment the wording of s 38(1)(a) does not permit the Amended Earlier Trade Mark to be a consideration. It is unnecessary that I consider either of the secondary issues as it is my view that both the Original Earlier Trade Mark and the Amended Earlier Trade Mark are deceptively similar to the Applicant’s Trade Marks; my decision does not turn on a determination of the secondary issues.

A potential s 44 ground for rejection

1. The Notices did not refer explicitly to any particular provision of the Act which might support a ground for rejecting the Applications. However, the wording of the Notices strongly suggests that the Examination Team Leader that issued them considered that grounds for rejection pursuant to s 44 of the Act should have been raised during the examination process. The Notices referred only to the Amended Earlier Trade Mark and made no reference to the Original Earlier Trade Mark. However, as noted above, the Applicant has chosen to address only the deceptive similarity of the Original Earlier Trade Mark to its trade marks.

2. In order for me to decide whether the acceptance should be revoked it is necessary that I firstly assess whether the application should not have been accepted: in this case, whether there was a valid ground for rejection pursuant to s 44 which was not raised by the examiner. I will consider this question in respect of both the Original Earlier Trade Mark and the Amended Earlier Trade Mark.

3. The relevant sections of the Act are reproduced below:

44 - Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. It is clear from the wording of the Act that for s 44(1) to apply: the priority date of the Earlier Application must be earlier than that of the Application; the Applicant’s goods must be similar to (at least some) of the goods for which the Earlier Application is sought; and, the respective trade marks must be, at least, deceptively similar. The priority date of the Earlier Application is earlier than that of the Applicant’s Trade Mark therefore the first requirement is satisfied. I now move to consider whether the trade marks are deceptively similar.

Are the respective trade marks deceptively similar?

1. The principle authority for guidance in determining whether trade marks are deceptively similar comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from [use of the defendant’s trade mark].[6]

   [6] (1963) 109 CLR 407, 414-15.

24.  As noted above, the Applicant has not addressed the deceptive similarity of its trade marks to the Amended Earlier Trade Mark, however, in respect of the Original Earlier Trade Mark the Applicant has submitted:

At the time applications No’s 1571822 and 1571419 were examined, No. 1569610 comprised of a trade mark consisting of numerous elements of which the word ‘EXCELNET’ is a minor component. The house mark DEVRO appears in this mark, clearly distinguishing it visually and orally from the Applicant’s trade marks. The overall impression of the compared marks is one of dissimilarity.

25.  I am not convinced by these submissions. The existence of a house mark alongside other distinctive material does not prevent a finding of deceptive similarity where there is a trade mark which consists solely or largely of that other distinctive material. In any event, the element DEVRO in the Original Earlier Trade Mark is significantly smaller than the EXCELNET element. EXCELNET is distinctive of the goods claimed in the Earlier Application and is likely to be perceived as a badge of trade origin even when appearing amongst the many other elements of the Original Earlier Trade Mark. The EXCELNET element is likely to be seen and recalled as a significant indicator of trade source. The Applicant’s Trade Marks are simply EXCELNET (with perhaps the minor exception of the large ‘E’ in trade mark number 1571822). The Applicant’s Trade Marks are likely to be seen and remembered as EXCELNET. I am satisfied that the Applicant’s Trade Marks are deceptively similar to the Original Earlier Trade Mark.

26.  The Amended Earlier Trade Mark includes, as an element, the word EXCELNET rendered in a form which is almost identical to how it is rendered in trade mark number 1571822. There is additional material in the Amended Earlier Trade Mark but this is unlikely prevent the trade mark being seen, recalled and referred to as EXCELNET. The Amended Earlier Trade Mark is deceptively similar to the Applicant’s Trade Marks. I now move to consider whether the goods are similar.

Are the respective goods similar?

1. In the words of the Act, goods are similar to other goods if they are the same as the other goods, or if they are goods of the same description as that of other goods.[7] ‘Goods of the same description’ is a term of art and has a long history dating back to the Patents, Designs and Trade Marks Act 1883 (UK). The matter falls to be judged in a ‘business sense’ and the phrase:

   ought not to be given too restrictive a construction – not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives one for the other.[8]

   [7] Trade Marks Act 1995 s 14(1).

   [8] J Lyons & Co Ltd’s Application [1959] RPC 120, 128 (Evershed MR).

2. The factors to be considered when considering whether goods are similar are well established. The nature of the goods, their uses, and the trade channels through which they are sold require consideration. While these factors are not necessarily determinative they are important.[9]

   [9]Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606-7; Jellinek’s Application (1946) 63 RPC 59 (Ch); J Lyons & Co Ltd’s Application [1959] RPC 120, 128.

3. The Earlier Applicant’s goods are described as ‘netting; rubber’ in class 17. In respect of netting Class 17 includes only very few, specific types (being adhesive coated plastic netting other than for household, medical or stationery use). Otherwise netting falls within a range of classes depending either upon the material from which it is comprised or its purpose, which the Earlier Applicant has not specified. Alternatively, it could reasonably be supposed that the netting specified is of a type that might be incorporated within broader Class 17 terms such as ‘insulating materials made of plastics’ or ‘plastics for use in manufacture’ (although I note that such goods could equally fall in Class 22 under the description ‘plastic nets and netting not for packaging and wrapping’).

4. In any event, that goods or services fall in different classes is not determinative of whether they are of the same description.[10] The division of goods and services into the various classes of the International Classification of Goods and Services is primarily an administrative tool which simplifies search for trade marks. It is often the case that similar goods appear in different or multiple classes. Additionally, where a product has multiple purposes it may be classified in all classes that correspond to them.[11]

   [10] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372 which was quoted with approval in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606-7.

   [11] ‘General Remarks’, Nice Classification, 10^th Edition.

1. Notionally the netting specified in Class 17 includes plastic netting used for insulation and/or manufacturing, (which could also rightly be specified in Class 22), and such netting may well be for the insulation and/or manufacturing of food stuffs. The purpose of the parties’ goods therefore, notionally at least, coincides. Nor is it difficult to envisage that the trade channels for such goods would also coincide, the main difference being only the material from which the netting is comprised (being plastic on the one hand and various types of string and elastic or non-elastic materials on the other).

2. Accordingly, I am satisfied that the Earlier Applicant’s netting comprises goods of the same description as those specified by the Applicant.

3. The Earlier Application also includes a claim for rubber in Class 17. Rubber is an item which appears in the G&S database in Class 17. Class 17 also includes large numbers of items which are made from rubber, such as, rubber hose and check valves of rubber. However, a claim for simply rubber is correctly interpreted as rubber, say, as a raw material, rather than encompassing any or all items that might happen to be made of rubber. Items in Class 17 which fall within this claim include items such as:

• crumb rubber;

• granules of rubber;

• India rubber;

• latex (rubber);

• liquid rubber;

• natural rubber;

• recycled rubber;

• semi-finished rubber in the form of cuttings; and

• treated rubber powder as a raw material.

1. There is nothing before me to indicate that the Earlier Application’s claim for rubber is similar to any of the Applicant’s Goods.

2. I am satisfied that the Applicant’s Trade Marks are deceptively similar to both the Original Earlier Trade Mark and the Amended Earlier Trade Mark. Given the earlier priority date of the Earlier Application, and the similarity in the goods, in either case, therefore, there is a valid ground for rejection pursuant to s 44. Therefore, taking account of all the circumstances, that existed when they were accepted, the Applications should not have been accepted, thus satisfying the requirements of s 38(1)(a) of the Act. It remains now to be decided whether it is reasonable to revoke the acceptance.

Is revocation reasonable?

1. In respect of whether it is reasonable to revoke the acceptances of the Applications the Applicant has drawn my attention to parts of the Manual:

   [T]he Trade Marks Office Manual of Practice and Procedure (‘the Manual’) provides examples where it may be reasonable to consider revocation under Part 38 paragraph 2.3. The current case does not we submit, fall within any of the examples provided. Further, paragraph 2.4 of Part 38 provide guidelines of when it may be reasonable to revoke acceptance, namely, a decision made by the Examiner is:

   ·    manifestly wrong;

   ·    clearly not just a difference of opinion; and

   ·    obviously disregards established authorities.

   In this case, we submit that the Examiner’s decision to not cite [the Amended Earlier Trade Mark] against [the Applicant’s Trade Marks] was not ‘manifestly wrong’, ‘a difference of opinion’ or in ‘disregard for established authorities’.

2. The Applicant has also submitted that:

   The Examiner’s Manual states that it may be reasonable to consider revocation where an application is accepted because the citation was missed. However this is not a case where a citation was ‘missed’. Trade Mark no 1569610 was valuably [sic] not considered because at the time of examination the application Nos. 1571822 and 1571419, No. 1569610 did not comprise of a mark deceptively similar to these applications.

3. As was seen in the discussion above regarding the deceptive similarity of the respective trade marks, I do not agree with this assertion. The Applicant further submitted:

   A review of the Examiner’s search strategy for [the Applicant’s Trade Marks] shows that the Examiner properly cross checked applications/registrations filed in classes 6 and 22. To this extent, we submit that at the time of examination of Nos. 1571822 and 1571419 the Examiner acted in accordance with defined tests and established authorities. The failure to cite No. 1569610 was not manifestly wrong.

4. The standard search strategy undertaken by examiners includes an initial search for trade marks which are potentially similar to the trade mark being examined in all classes and having all statuses: this is commonly known as an All/All search. The examiner in this case undertook such a search in respect of both of the Applicant’s trade marks. The search appears in the ATMOSS Extract Lists found in IP Australia’s files for the Applications as follows:

   Words: exc (Part word) AND net (Part word); Status: All; Search Data: Live

5. It can be seen from the ATMOSS Extract Lists, that the All/All search returned 42 ‘hits’. These consisted of all trade marks which included amongst the indexing terms words which included both ‘exc’ and ‘net’ as part of the word: EXCELNET is such a word. Prior to trade mark applications being examined they are ‘indexed’. This is a process whereby a list of terms is created (‘the indexing terms’), which are used by examiners when searching the Register for similar trade marks. There is a separate list of terms for words (if any) within a trade mark and another which relates to the images within a trade mark (if any).

6. It is apparent from the ATMOSS searches undertaken by the examiner of the Earlier Application that EXCELNET was included amongst the indexing terms for the Original Earlier Trade Mark. The search strategy undertaken by the examiner of the Applications would, therefore, have resulted in the Original Earlier Trade Mark appearing amongst the 42 hits. It is usual practice for an examiner to ‘extract’ trade marks of relevance from the results of their searches. Details of extracted trade marks appear in the ATMOSS Extract Lists. In the case of the All/All searches undertaken in respect of the Applications, the examiner would have looked through the list of 42 hits, considered each trade mark in turn and if a relevant trade mark was discovered ‘extracted’ it to appear in the ATMOSS Extract Lists.

7. The Original Earlier Trade Mark does not appear in the ATMOSS Extract List associated with either of the Applications. Given that the Original Earlier Trade Mark is deceptively similar to the Applicant’s Trade Marks this oversight is an obvious error on the part of the examiner. As the Original Earlier Trade Mark did not appear in the ATMOSS Extract List, and is not discussed in the Examiner’s Worksheet for either of the Applicant’s Trade Mark it is not possible to draw a conclusion that the examiner perhaps considered the Original Earlier Trade Mark and then decided that it was sufficiently different to the Applicant’s Trade Marks.

8. It is my view that the failure to cite the Original Earlier Trade Mark was manifestly wrong. While this, alone, is sufficient to a finding that it is reasonable to revoke the acceptances of the Applications, considerations of the public interest in maintaining a consistent and accurate Register further support the view that revocation is reasonable. Given that both the Original Earlier Trade Mark and the Amended Earlier Trade Mark are deceptively similar to both of the Applicant’s Trade Marks my decision does not turn on the issue of the validity or otherwise of the amendment to the representation of the Amended Earlier Trade Mark.

Decision

1. I am satisfied that the applications for the Applicant’s Trade Marks should not have been accepted and that it is reasonable to revoke the acceptances of trade mark applications numbers 1571419 and 1571822. I direct that one month from the date of this decision the acceptances of applications 1571419 and 1571822 be revoked and the Applications be re-examined as provided by s 38(2)(b) of the Act.

2. If the Registrar is served with a copy of an application for an order of review pursuant to the Administrative Decisions (Judicial Review) Act 1997 within the required time, I direct that the re-examination of the applications shall not occur until the application has been discontinued, or in the event of decision from the court, that the applications be subject to that order.

Robert Wilson
Hearings Officer
Trade Marks Hearings and Oppositions
25 August 2014