Johnson & Johnson v Self Care Corporation Pty Ltd
[2014] ATMO 111
•21 November 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Johnson & Johnson to amendment of trade mark application 1493370(3) from ALFREE to AlFREE - filed in the name of Self Care Corporation Pty Ltd.
Delegate: | Claudia Murray |
Representation: | Opponent: Sean McManis of Shelston IP Applicant: Albert Terry of Terry Trade Mark Attorneys |
Decision: | 2014 ATMO 111 Opposition to amendment under s 65A – clerical error considered – obvious mistake considered – Registrar’s discretion considered – amendment allowed. (S 65(2) also considered.) |
Background
In this matter Self Care Corporation Pty Ltd (‘the applicant’) has requested an amendment to its application to register a trade mark under section 65A of the Trade Marks Act 1995 (‘the Act’). The proposed amendment was advertised for opposition purposes in the Official Journal of Trade Marks on 16 January 2014. Johnson & Johnson (‘the opponent’) filed a notice of opposition on 17 February 2014.
Following an opposition process in accordance with Part 6 of the Trade Marks Regulations 1995 (‘the Regulations’) the matter came to be decided by me, as a delegate of the Registrar of Trade Marks, in the form of a hearing on the basis of written submissions. The written record comprises several iterations of submissions from the opposing parties, and two statutory declarations which I will describe in more detail shortly.
Relevant legislation
Section 46
Rules relating to divisional applications
(1) A divisional application must:
(a) be for the registration of the trade mark to which the parent application relates; and
(b) specify the goods and/or services to which it relates; and
(c) specify the goods and/or services that are to remain in the parent application.
Note: For divisional application and parent application see section 45.
(2) When a divisional application is made, the Registrar must, unless the parent application has lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made.
Note: Section 204 requires the Registrar, where no time or period is specified for doing a thing, to do the thing as soon as practicable. However, it is possible that a parent application will lapse before it is practicable for the Registrar to amend it under subsection (2) of this section.
Section 65A
Amendment after particulars of application have been published—request for amendment advertised
(1) This section applies if:
(a) the particulars of the application have been published under section 30; and
(b) the amendment requested is not an amendment which could be made under section 65.
(2) The application may be amended to correct a clerical error or an obvious mistake in the application if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to make the amendment under this section.
(3) Subject to subsection (5), the Registrar must advertise the request for the amendment in the Official Journal.
(4) Subject to subsection (5), a person may, as prescribed, oppose the granting of the request for the amendment.
(5) If the Registrar is satisfied that a request for an amendment would not be granted even in the absence of opposition under subsection (4):
(a) the Registrar need not advertise the request in accordance with subsection (3); and
(b) the request cannot be opposed, despite subsection (4); and
(c) the Registrar must refuse to grant the request.
Section 65
Amendment after particulars of application have been published—request for amendment not advertised
(1) If the particulars of the application have been published under section 30, the application may be amended as provided in this section.
(2) An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published…
Relevant history
The applicant filed application 1493370 for registration of a trade mark on 28 May 2012 (‘the application’). It claims divisional status from earlier application 1392416 (‘the parent application’). The representation of the trade mark in the application is ALFREE. The representation in the parent application is AlFREE.
On 29 August 2012 the first examination report issued in relation to the application. It inter alia raised an objection that the application was not a valid divisional application for reasons relating to subsection 46(2) of the Act. This provision relates to the deletion of goods and services from the parent application.
A conversation between the examiner and a representative of the applicant took place on 12 November 2012. In a follow up email sent to the representative on the same day, the examiner indicated that the subsection 46(2) objection was withdrawn. The email also noted the difference in the representation between the application and the parent application and so raised, for the first time, an objection under paragraph 46(1)(a) of the Act. This provision requires that the trade mark subject of a divisional application be the same trade mark as is subject of the parent application.
On 6 December 2012 the applicant lodged a request for ‘a section 65A amendment’ to the representation of the application ‘to accord with the parent [application]’ (the amendment request’). The examiner acknowledged the amendment request and asked for a Statutory Declaration to support it on 17 December 2012.
On 11 March 2013 the applicant filed a request for a copy of the examiner’s report stating that the original had been misplaced. The file does not include a record of what was sent to the applicant, but based on what subsequently transpired it appears that only the first examination report (and regrettably neither of the follow up emails) was sent to the applicant.
On 15 March 2013 the applicant sent a response rebutting the section 46(2) objection as it appeared in the first examination report. In response, the examiner issued a second examination report on 26 March 2013. It stated that the section 46(1)(a) objection had not been overcome. The report did not acknowledge the fact that the amendment request had already been filed, nor did it refer to the fact that the examiner was waiting on a Statutory Declaration. In response, the applicant pointed to the amendment request it had filed the previous year.
The examiner issued a fourth examination report on 13 December 2013. The report drew the applicant’s attention to the examiner’s 17 December 2012 email. This was the first time since 17 December 2012 that the applicant had been told that a Statutory Declaration would be required in this case. The applicant then promptly filed a Statutory Declaration on 28 December 2013.
Evidence
In support of its amendment request, the applicant provided a statutory declaration executed by Tatiana Agafonova on 19 December 2013.
In support of its opposition to the amendment, the opponent provided a statutory declaration executed by Sean Francis McManis on 1 April 2014 with Exhibits SFM-1 to SFM-5.
The applicant did not provide evidence in response to the opponent’s evidence.
Grounds and onus
In its submissions the applicant has argued that the proposed amendment is:
To correct a clerical error or obvious mistake, and
Fair and reasonable in all the circumstances.
Under section 65A(5), the Registrar is not required to advertise a request for amendment, if she is satisfied that the amendment would not be granted even in the absence of opposition. Under those circumstances, the Registrar must instead refuse to grant the request. Following advertisement of the request for amendment, the opponent has exercised its right to oppose the granting of that request.
The relevant standard of proof is the ordinary civil standard of probabilities, and the relevant date is 6 December 2012, the date the amendment request was made.
Reasons
Clerical error or obvious mistake
Before addressing the grounds and discretionary factors in detail, I pause briefly to highlight the nature of section 65A, specifically whether it provides for one or two grounds for amendment. Some previous decisions of the Registrar have treated the words ‘clerical error or obvious mistake’ appearing in section 65A(2) as a singular ground for amendment. This is, in my view, not a correct reading of the provision.
As the applicant has pointed out, ‘clerical error’ is a separate and distinct ground from ‘obvious mistake’.[1] This is supported by the fact that R v Commissioner of Patents; Ex Parte Martin[2] (Martin) was concerned with the meaning and application only of ‘clerical error’, and that Allergy Standards was decided only on the basis of ‘obvious mistake’.
[1] Allergy Standards Limited [2008] ATMO 43 (Allergy Standards).
[2] (1953) 89 CLR 381.
I will now set out the principles of both grounds, and discuss their application to the facts in this case under separate headings below.
Clerical error
The opponent relies upon the reasoning of the Hearing Officer in Oddbins Limited v Oddbins Corporate Beverage Suppliers Pty Limited[3], and through it Williams ACJ in Martin that a clerical error comes about when a person intends to write one thing, and instead writes something else.
[3] [2001] ATMO 1.
The opponent’s submissions stress that Ms Agafonova intended to write ALFREE on the application form. This point was conceded by the applicant both in its submissions and also in evidence.[4]
[4] Statutory declaration by Tatiana Agafonova, dated 19 December 2013, paragraph 6.
If this intention were crucial to the application of this ground, the applicant’s concession would be determinative. However, I am hesitant to follow my colleague’s approach in adopting the reasoning of Williams ACJ, since his honour was in the minority in Martin 4:1. The majority judgment of Fullagar, Kitto and Tayor JJ offered the following construction of the term ‘clerical error’:
That expression is, no doubt, one of a somewhat elastic character ... In the New Oxford Dictionary one meaning attributed to the word "clerical" is "Of or pertaining to a clerk or penman: esp. in 'clerical error', an error made in writing anything out". According to Webster, one meaning of the word "clerical" is "Of or relating to a clerk or copyist", and an example given is "clerical error, an error made in copying or writing". Probably no one would deny that a clerical error may produce a significant, and even profound, effect as for example, in a case in which a writer or typist inadvertently omits the small word "not". But the characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing.[5]
[5] Martin (1953) 89 CLR 381, 406 (Fullagar J).
The Hearing Officer in Allergy Standards came to a similar conclusion to the High Court in Martin:
The phrase “clerical error” is not without ambiguity. The simplest, although not the only meaning, is that of an error make by a clerk, or the type of error made by a clerk.[6]
[6] Allergy Standards [2008] ATMO 43 [34].
There is, however, some authority that requires consideration of the state of mind of the drafter: ‘[a]n error in reasoning cannot amount to a clerical mistake.’[7] Ms Agafonova’s declaration states that she understands (or, at least, understood at the time the application was filed) that the ‘preferred’ way to represent a word trade mark is in all uppercase. It was this view that led her to file the application in all uppercase. There is very little information available that goes to explaining how Ms Agafonova came to form this point of view. She does not appear to have arrived at it here through any process of reasoning specific to the drafting of the application. Instead, it appears that Ms Agafonova made a general assumption in relation to filing any application for registration of a trade mark.
[7] Austal Ships Sales Pty Ltd v Stena Redri Aktiebolag (2009) 263 ALR 384, 391 [25].
The opponent also seeks to characterise a clerical error as ‘a very minor and an obvious error’. The words of Fullagar J above anticipate that a clerical error can have a profound effect. I do not consider that the significance of the error is relevant to whether it can be characterised as a clerical error. I also would not prefer a construction of clerical error that requires it be obvious for two reasons:
An error of omission can fall within the scope of clerical error.[8] An omission will often by its very nature not be obvious on the face of the record.
There is another ground for amendment in which the element of obviousness is wholly and singularly determinative.
[8] Martin (1953) 89 CLR 381, 406; Allergy Standards [2008] ATMO 43 [34].
In support of this ground, the applicant has submitted:
Ms Agafonova was aware that a divisional application must be filed for the same trade mark that is subject of the parent application. She believed that the trade mark ALFREE was the same trade mark that was subject of the parent application and was the preferred manner in which to file trade marks … She made an error “of the type made by a clerk” in her not recognising the significance of filing the divisional application with an upper case, rather than a lower case, letter “L”.
The opponent’s submissions in relation to clerical error all go to an absence of intention on the part of Ms Agafonova to write AlFREE on the application form. While such intention would lend force to a finding that this was a clerical error, for the reasons set out above I do not believe this is a crucial element of this ground for amendment.
What is crucial is that the error must have arisen in the ‘mechanical process of writing or transcribing’. The only definition of transcribe relevant to the present facts offered by the Macquarie Dictionary is ‘to make a copy of in writing: to transcribe a document.’[9]
[9] Susan Butler (ed), Macquarie Dictionary (Macquarie Dictionary Publishers, 6th ed, 2013) 1559.
In carrying out her instructions to file a divisional application Ms Agafonova had to ‘make a copy’ of the representation of the trade mark AlFREE appearing in the parent application, ‘in writing’ on the application form.
While it is my view that this ground has been made out, for completeness I will also address the obvious mistake ground.
Obvious mistake
To be an obvious mistake, the mistake itself must be plain on its face, and the proper correction that would remedy the mistake must also be obvious.[10] Both tests are considered from the point of view of ‘an instructed reader’.[11]
[10] General Tire and Rubber Company (Frost’s) Patent (1972) 12 RPC 259, 277-8.
[11] Ibid 277.
The representation of the trade mark in the parent application appears on the Trade Marks Database, as does the fact that the trade mark application at issue here purports to be a divisional of the parent application.
An instructed reader would have an understanding of the requirements for filing a divisional application, and so would see any inconsistency in the representation of the trade mark in the application when compared with the parent application as a mistake. Knowledge of section 46(1)(a) would then lead the instructed reader to the conclusion that the proper correction is to amend the representation in the application ‘to accord with the parent [application].’
I am satisfied that, given it purports to be a divisional of the parent application, the failure to represent the trade mark in the same manner in the application falls within the meaning of an obvious mistake.
Registrar’s discretion
Making out one or both grounds for amendment is not determinative as to whether the amendment request should proceed. Section 65A(2) requires that the Registrar also be ‘of the opinion that that it is fair and reasonable in all the circumstances of the case to make the amendment.’
Exercise of the Registrar’s discretion generally requires consideration and balance of the interests of the applicant, any third parties and the general public. Other considerations that appear to be relevant in the circumstances are the effect of the amendment if made, and the timing of the amendment request.
The opponent has led evidence that the applicant’s actual use of the mark is in all lower case, and so differs from the amendment sought. While the actual use of the trade mark is a factor that will generally be worth considering as part of the discretion, in the present case I have given it very little weight because such an alteration to the trade mark in use would not substantially alter its identity, permitting the applicant to rely on section 7 of the Act.
The applicant clearly intended to file a divisional application. This is reflected both in the detail on the application form as filed and the fact the application was recorded by the Trade Marks Office as a divisional application. At the time of filing the applicant had a right to apply for a divisional application, and giving effect to its intent to do so is clearly in its interest.
Anybody inspecting the Trade Marks Database would see that the application sought a priority date of 3 November 2010 based on that divisional status, and would be able to order their affairs accordingly. As such, there would be no harm to the public interest in allowing the amendment.
The opponent has submitted that the applicant is seeking this amendment in order to bolster the applicant’s opposition to Trade Mark Application Number 1429118. This, together with the fact it has opposed the amendment request implies that the interests of the opponent would be adversely affected by the amendment. However, disallowing the amendment is unlikely to resolve that other dispute entirely.
A search of the database has not turned up any potentially conflicting marks filed between the lodgement date of the application and today’s date, so third party interests other than the opponent’s would not be affected.
The effect of the amendment would be to cure a defect in the application permitting it to claim the priority date of the parent application. Allergy Standards stands for the proposition that, when an application was in fact filed as a divisional, section 65A can be used to cure this type of defect.
Turning now to timing, as should be clear from the relevant history set out above, the applicant appears to have acted reasonably promptly in seeking the amendment. The opponent has noted some delays but these are, in my view, adequately explained by the applicant. The delay of particular note is the failure to attend to the examiner’s email of 17 December 2012. Ms Agafonova does not offer a positive explanation for this in her declaration, but supposes that the email:
‘…was not processed due either to an oversight, the email being filing [sic] in “junk mail”, the fact the holidays were approaching, or a combination of these elements.’[12]
[12] Statutory declaration by Tatiana Agafonova, dated 19 December 2013, paragraph 13.
There is no legislated requirement that a Statutory Declaration be filed in support of a request under section 65A, nor does the manual impose such a requirement as a matter of practice. The manual anticipates that ‘section 65A amendments are likely to need to be supported by a declaration’,[13] but leaves the decision about whether one is required in any particular case up to the delegate. Given this framework, it is not reasonable to expect the applicant to anticipate such a requirement.
[13] Trade Marks Office Manual of Practice and Procedure (IP Australia, 2014) Part 9 [4.7.1].
I note in passing that there are differences in form and witnessing requirements between a declaration made under the Trade Marks Act 1995 and a Statutory Declaration - the latter being more onerous. It is unclear why the examiner decided to ask for a Statutory Declaration in this case, since a declaration made under the Trade Marks Act 1995 carries the same weight.[14]
[14] Trade Marks Regulations 1995 (Cth) sub-reg 21.19(1).
Of the four occasions when the Trade Marks office sent documentation to the applicant after 17 December 2012 in relation to examination, only the last (the fourth report of 13 December 2013) made clear that a Statutory Declaration in support of the amendment request was outstanding.
The applicant’s actions are consistent with a person who was not aware of the 17 December 2012 email, in particular the wasted effort of rebutting for a second time the objection under section 46(2), since it had already been withdrawn.
Section 65(2)
The opponent has raised the question as to whether section 65(2) should be considered ahead of section 65A. I do not think it appropriate to make a determination under that provision, since that is not what has been opposed. The examiner formed a view that the section 65A was applicable in this case, and so elected to advertise the proposed amendment for opposition purposes under section 65A(3). Section 65(2) does not include an equivalent provision for opposition, so had a determination been made under that provision, the present proceedings would not have taken place.
Were it open to me to make a determination under section 65(2), I do not believe the substitution of an uppercase letter L with its lowercase variant substantially affects the identity of the mark, as the mark as filed and the mark as amended are substantially identical.
Some of the reasoning of the opponent (and apparently, the examiner) in putting forward a view that the change would substantially affect the identity of the mark relies upon the fact that, in many fonts, the lowercase ‘l’ resembles the uppercase ‘I’ or the numeral ‘1’, meaning the mark if amended could be construed by some as ‘AIFREE’ or ‘A1FREE’. I see this risk as minimal for three reasons:
i. The Register of Trade Marks is kept by computer, so precisely what each character in fact is, is not really open to question.
The Register currently uses the Verdana font, which differentiates between lowercase ‘l’, uppercase ‘I’ and numeral ‘1’ as set out below:
Both uppercase ‘I’ and numeral ‘1’ are differentiated by the use of serifs, and lowercase ‘l’ extends above the top of the capital letters beside it.
The mark has always been indexed as ‘ALFREE’, and will continue to be after the amendment.
Decision and costs
I find that the opponent has not made its case, and that the amendment to the applicant’s trade mark should be allowed under section 65A. I direct that the amendment be so made a month from the date of this decision.
If the Registrar has been served with a notice of appeal from this decision before that time, I direct that amendment shall not occur until either the appeal is discontinued or a court so orders.
In the ordinary course costs follow the event. I see no reason to make an exception in this case. Accordingly, I award costs, according to the official scale, against the unsuccessful opponent.
Claudia Murray
Hearing Officer
Trade Marks Hearings
21 November 2014
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