Ingenuity Systems Inc.

[2017] ATMO 104

TRADE MARKS ACT 1995

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

Re:Trade mark application 1450265 (9, 42) - IPA - filed in the name of Ingenuity Systems Inc.

Delegate:

Nicholas Smith

Representation:

Applicant: Michael Wolnizer of Davies Collison Cave

Decision:

2017 ATMO 104

Section 38 of the Trade Marks Act 1995 – revocation of acceptance – acceptance of Trade Mark not revoked - opposition proceedings to recommence

Background

1.  On 23 September 2011, Ingenuity Systems, Inc. (‘Applicant’) applied to register a trade mark under the provisions of the Trade Marks Act 1995 (‘Act’). The current details of the trade mark application appear below:

Application Number:	1450265
Filing Date:	23 September 2011
Goods and Services:	Class 9: Downloadable computer software for analyzing, modeling, building, populating, managing and accessing knowledge bases for use in the fields of biological, chemical and medical research Class 42: Application-service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the fields of biological, chemical and medical research; information services, namely, using a global computer network to provide information regarding biological, chemical and medical research and tools; providing technical information and technical support for users of online non-downloadable software for analyzing, modeling, building, populating, and accessing knowledge bases in the fields of biological, chemical and medical research (‘Applicant’s Goods and Services’)
Trade Mark:	IPA	(‘Trade Mark’)

1. The Trade Mark was examined as required under section 31 of the Act. On 20 January 2012 an adverse report was issued by this office, identifying a ground for rejection pursuant to s 44 of the Act (‘First Report’).  This ground specifically nominated trade mark number 1416096 being the combination word and device mark set out below (‘Cited Trade Mark’), owned by the Institute of Public Accountants Ltd (‘the Institute’).

1. Following various deferrals and extensions, the details of which are not necessary in this decision, on 18 August 2016 the Applicant filed a response to the First Report comprising a declaration of Laura Furmanski, Senior Vice President, Bioinformatics Business Area of the Applicant, with Exhibits LEF-1 to LEF-3 (‘Furmanski Declaration’) and supporting submissions requesting that the examiner apply the provisions of ss 44(4) of the Act (‘prior continuous use’) and accept the Trade Mark for possible registration.

2. On 31 August 2016, the Applicant was advised that the Application would be accepted under the provisions of ss 44(4) of the Act and on 8 September 2016, advertisement of the acceptance was published in the Australian Official Journal of Trade Marks.

3. On 7 November 2016, a Notice of Intention to Oppose was filed by the Institute .  This was followed by a Statement of Grounds and Particulars (‘SGP’) filed by the Institute on 7 November 2016 nominating grounds of opposition under s 44, 58A and 60 of the Act.

4. The Applicant subsequently filed a Notice of Intention to Defend on 18 July 2017.  Part of the Institute’s Evidence in Support was filed on 26 April 2017.

5. On 24 April 2017, the Institute’s legal representatives (MDP Lawyers and Commercial Advisors) wrote to this 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.

6. The request for revocation of acceptance was considered by this office and on 19 May 2017, a letter of intention to revoke was sent by the office to the Applicant. It read:

The acceptance of the application has been reviewed. It was noted that the decision to accept the trade mark was made on the basis of evidence. Upon review the evidence was found to not support the claim for prior and continuous use on all the goods and services claimed. The evidence merely shows that the applicant offers a software product that a range of different organisations pay for a licence to use. Furthermore, the evidence does not contain sufficient dated examples that demonstrate trade mark use of IPA. Rather it shows IPA being used as a product code which is subsidiary to the MILLENNIUM SCIENCE brand.

The examiner's decision that the provisions of section 44(4) had been met was incorrect.

In these circumstances I consider that it is reasonable to propose revocation of the acceptance of trade mark 1450265.

Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance in accordance with section 38 of the Trade Marks Act 1995.

1. On 19 June 2017, the Applicant requested to be heard on the intention to revoke acceptance. The opposition proceedings were suspended pending the outcome of the proposed revocation of acceptance.

2. I am a delegate of the Registrar of Trade Marks and this matter of the proposed revocation of acceptance was allocated to me to be heard and decided.  The hearing occurred on Wednesday 23 August 2017 in Canberra and the Applicant was represented by Michael Wolnizer of Davies Collison Cave.

The Law

1. Section 38 of the Act provides:

38Revocation 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.

1. Some broad principles summarising the operation of s 38 of the Act were set out by the Registrar’s Delegate in Globalscope Pty Ltd[1] and I extract them below (with footnotes removed):

   [1] [2016] ATMO 14, [12]-[16], [20]-[21]

   As a preliminary matter, I note that the application of section 38 is discretionary (that is: “…the Registrar may revoke the acceptance…”). That said, it would be difficult to imagine a scenario where, the requirements of both limbs having been satisfied, some other circumstance meant acceptance of the trade mark would not be revoked (given the provisions themselves take into account a consideration of “all the circumstances”).

   Most importantly, the provisions of section 38 require that both limbs of the test (i.e. ss 1(a) and 1(b)) must be satisfied before the Registrar of Trade Marks may revoke acceptance. For the avoidance of doubt, I would also add that these elements must be satisfied before the Registrar issues a letter of intention to revoke.

   However, on the face of it, there is an inference that both limbs of the test have not been fully considered in this matter. The letter of intention to revoke only uses the wording of the first limb and provides (my emphasis):  “[H]aving taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke…”. Although there is no requirement that the Registrar mention all possible circumstances to be considered, I note the letter also does not mention the status of the well-progressed opposition proceedings.

   The current section 38 was introduced via amendments to the Act in 2006. The Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 2006 noted that the previous section 38 had been interpreted too narrowly, with the result that the protection of the public interest in keeping invalidly accepted trade marks from becoming registered had not been fully realized. As a result, the Explanatory Memorandum provided (my emphasis in bold):

   Paragraph 38(1)(a) clarifies that the Registrar is able to take account of any circumstance that existed which should have prevented acceptance. It is not necessary that the Registrar knew or was in a position to know of the existence of the circumstances at the time the application was accepted for this paragraph to apply. This may include an error of judgement or omission on the part of the examiner, or information about the trade mark that was not available to the Registrar at the time of examination, for example:

   ·   the examiner may have overlooked or discounted information that would lead, if properly considered, to the examiner rejecting the application; or

   ·   an international application for a conflicting mark having an earlier priority date had not yet been filed in Australia.

   The Registrar is not limited in what he or she may consider.

   In relation to the second limb (section 38(1)(b)), the Explanatory Memorandum provided:

   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.

   …

   This type of scenario must considered in light of the guidance provided in the Trade Marks Office Manual of Practice and Procedure (“the Manual”)[2]:

   [2] At Part 38.2.4

   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

   As Hearing Officer Williams said in the decision of Re Jack Grieve:

   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.

Discussion

Section 44

1. The relevant provisions of s 44 are reproduced below:

44Identical 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 goods see subsection 14(1).

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.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

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.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

1. The Cited Trade Mark is set out below. It has an earlier priority date to the Trade Mark. The Applicant, in its response to the First Report, did not make submissions that the Cited Trade Mark was not deceptively similar to the Trade Mark. It did not argue that the Cited Trade Mark was not registered for goods that were similar/closely related to the goods and services the Trade Mark was sought to be registered. I reach the same conclusion as the examiner, namely that the Trade Mark is deceptively similar to the Cited Trade Mark and the goods and services for which the Trade Mark is sought to be registered are similar or closely related to the goods for which the Cited Trade Mark is registered, in satisfaction of ss 44(1) and 44(2) of the Act.

Number	Trade Mark	Priority Date	Goods and Services
1416096	4 April 2011	Class 9:  Computer software; computer software for accounting systems; computer software for business purposes; computer programs for financial management; computer programs for financial reporting; computer programs relating to financial matters Class 16: Journals (publications); periodical publications relating to consumer financial services; printed publications relating to financial services; promotional publications Class 36: Tax advice (financial); tax financial planning; financial advice; providing information, including online, about insurance, financial and monetary affairs and real estate affairs Class 42: Association services being the certification of goods or services provided by members of the association

1. The Applicant submits that the Furmanski Declaration successfully satisfies the requirements under s 44(4) of the Act, which in this case required the provision of evidence showing that the Applicant has continuously used the Trade Mark for a period beginning before 4 April 2011 in respect of the similar goods and closely related services.

2. The evidence in the Furmanski Declaration is best described as equivocal, in the sense that it required the Examiner to make certain inferences as to whether the Trade Mark was used in Australia as a trade mark prior to 4 April 2011. In particular, the evidence in LEF-3 that clearly shows use of the Trade Mark as a trade mark (in the manner set out in s17 of the Act) is undated and the evidence in LEF-1 and 2 shows use of the acronym ‘IPA’ in a manner that, depending on inferences made from the evidence in LEF-3, may or may not be categorised as use as a trade mark. While the evidence in LEF-1 shows the sale of a product described as IPA prior to 4 April 2011 evidence in the Furmanski Declaration does not unequivocally evidence use of the Trade Mark as a trade mark prior to 4 April 2011.

3. In other words, having taken into account the circumstances that existed at the time of acceptance, I find it arguable whether the decision to accept the Trade Mark was one that could not reasonably be supported by the accepted and defined tests. With this in mind, it is necessary to consider the second limb of the test under section 38.

Section 38(1)(b)

1. As mentioned earlier, s 38(1)(b) is not limited (as s 38(1)(a) is) to circumstances existing at the time of acceptance. The fact that there is an opposition afoot and the status of that opposition is therefore a relevant circumstance.

2. Cooley Investments Pty Ltd[3] is an example of a case where despite the s 38(1)(a) requirement being satisfied, by reason of the second limb of ss 38(1) not being satisfied the Delegate found that it was not reasonable to revoke the acceptance of that application. In that case, the Registrar’s Delegate noted that a relevant factor to be taken into account is the status of any opposition proceedings that may already have been commenced against an application and found that consideration of the s 44 ground for that trade mark application (which involved complex ownership issues outside the scope of examination) would be more closely considered and tested by opposition procedures.

   [3] [2011] ATMO 7, [14] - [16].

3. The circumstances of the present case are similar to Cooley Investments Pty Ltd. In the present case, the Institute has commenced opposition proceedings, raising as a ground of opposition the s 44 ground of opposition and relying on the Cited Trade Mark. Furthermore, the opposition has progressed to the stage where evidence in support of the Opposition has already been filed, Not only will the s 44 ground of opposition be considered in the opposition proceedings, but as part of those proceedings the Institute will have the opportunity to challenge any evidence of prior use filed by the Applicant and file evidence in reply to that evidence of use..

4. The Institute has also raised a ground of opposition under s 58A of the Act, indicating that even though the Trade Mark has been accepted pursuant to s 44(4) of the Act, the Institute may be able to establish use of the Cited Trade Mark which predates the Applicant’s earliest use of the Trade Mark. At the date of revocation the Institute had put on evidence in support of the s 58A ground of opposition, purporting to show use of the Cited Trade Mark prior to its priority date. As such, it may be the case that even if the Trade Mark is not rejected pursuant to s 44(4) of the Act, the Trade Mark may be rejected as a result of the Institute establishing the s 58A ground of opposition. I consider that in the circumstances where the Furmanski Declaration in respect of s 44(4) of the Act raises an arguable question but does not unequivocally establish prior use, the Institute has directly raised the issue of first use of the respective trade marks and has put on evidence purporting to establish earlier use of its trade mark the issues necessary to be canvassed with respect to the ground for rejection under s 44 would more effectively be canvassed in opposition where they would benefit from full adversarial testing.

Decision

1. After taking into account all the circumstances of the case, I am not satisfied it is reasonable to exercise the discretion of the Registrar of Trade Marks and revoke acceptance of the Trade Mark.  The opposition proceedings may therefore recommence.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

19 September 2017