TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1886650 (classes 9, 16, 35, 38, 41) – STACK - in the name of JB Hi-Fi Limited.
Delegate: | Nicholas Barbey |
Representation: | Applicant: Christopher Doidge of counsel instructed by Jane Brown of ChoyBrown |
Decision: | 2019 ATMO 115 Trade Marks Act 1995 (Cth) – Hearing on intention to revoke registration under section 84A of the Trade Marks Act 1995 – Not reasonable in all the circumstances to revoke registration – Revocation of registration refused. |
Background
This matter is in relation to a proposal by the Registrar of Trade Marks to revoke the registration and acceptance of registered trade mark number 1886650. JB Hi-Fi Limited (‘the Registrant’) is the owner of the registered trade mark, relevant details of which are reproduced below:
Trade Mark: STACK (‘the Trade Mark’)
Number: 1886650
Filing Date: 12 November 2017
Goods & Services: See Annexure 1 (‘the Goods and Services’)
The application for the Trade Mark was filed on 12 November 2017 and examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’). No statutory grounds for rejection were identified during examination and the application was accepted for possible registration. It was advertised as such in the Australian Official Journal of Trade Marks on 5 April 2018.
A notice of opposition to registration was not filed during the opposition period and the Trade Mark was entered onto the Register of Trade Marks on 13 June 2018.
On 25 October 2018,[1] a Deputy Registrar of Trade Marks issued a written Notice of Intention to Revoke Registration (‘Revocation Notice’) to the Registrant. The Revocation Notice stated the Trade Mark should not have been registered and, taking into account all of the circumstances, it was reasonable to revoke the registration. The following rationale was provided:
Your trade mark attracts a section 44 ground for rejection.
Your mark is STACK, claiming goods and services in Classes 9, 16, 35, 38 and 41. Your mark is deceptively similar to earlier mark 955451, as the dominant element in both marks is STACK.
Further, there are overlaps between the claims in both marks. Your class 35 claims for advertising and business services overlap with similar claims in class 35 and 41 of the earlier mark. Your class 41 claims for education and sporting services also overlap with class 41 claims of the earlier mark. Your class 9 claims for computers and software are closely related to the claims for education and training services in class 41, and, design and development of hardware and software claim in class 42, of the earlier mark.
Therefore, the earlier mark 955451 should have been raised as a citation against your mark at examination, on the basis that they are deceptively similar, and the claims in both marks are closely related.
[1] Which, being approximately 4.5 months after the particulars of the Trade Mark were…
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- AGLC
- JB Hi-Fi Limited [2019] ATMO 115
- Case
- [2019] ATMO 115
- Decision Date
CaseChat Overview and Summary
The primary legal issue before the court was whether the Registrar erred in rejecting JB Hi-Fi Limited's trade mark application. This required the court to consider the application of section 44(1) of the Act, which mandates rejection of an application where the proposed mark is substantially identical or deceptively similar to an existing registered mark for similar goods or services, and the applicant's priority date is not earlier than the other mark's priority date. The court also had to consider whether any exceptions under section 44(3) applied, specifically whether there had been honest concurrent use or if other circumstances made it proper to accept the application.
The court analysed the evidence regarding the similarity between the trade marks and the goods and services in question. It found that the marks were indeed substantially identical or deceptively similar. Furthermore, the court considered the provisions of section 84A of the Act, which grants the Registrar power to revoke a registration if it should not have been registered or if it is reasonable to revoke it, taking into account various circumstances including errors, international obligations, and use of the mark. However, the central focus remained on the grounds for rejection under section 44. The court determined that the circumstances did not satisfy the requirements for honest concurrent use under section 44(3)(a), nor did they present other compelling reasons under section 44(3)(b) to depart from the general rule of rejection.
The court dismissed the appeal, upholding the Registrar's decision to reject the trade mark application.
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
Section 84A of the Act relevantly provides:Registration may be revokedPower to revoke(1)The Registrar may revoke the registration of a trade mark if he or she is satisfied that: (a) the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and(b) it is reasonable to revoke the registration, taking account of all the circumstances.(2)The circumstances to be taken into account under paragraph (1)(a) include the following:(a) any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;(b) any relevant obligations of Australia under an international agreement;(c) any special circumstances making it appropriate:(i)not to register the trade mark; or(ii)to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.(3)The circumstances to be taken into account under paragraph (1)(b) include the following:(a) any use that has been made of the trade mark;(b) any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;(c) other action taken in relation to the trade mark as a registered trade mark;(d) any special circumstances making it appropriate:(i)to revoke the registration; or(ii)not to revoke the registration. Section 44 of the Act relevantly provides: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) it 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(j)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.(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.(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.