KJ Ince Pty Ltd - [2023] ATMO 139

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReProposed revocation of trade mark registration 2263689 (31, 35, 39, 41, 44) – FLOWERS FOR ALL – in the name of KJ Ince Pty Ltd

Delegate: Robert Wilson
Representation: Applicant: Adam Nakat of Nakat Law

Decision: 2023 ATMO 139
Trade Marks Act 1995 (Cth) – ex parte hearing – whether registration of trade mark should be revoked – presumption of registrability under s 41 – not satisfied error during examination – registration not to be revoked

Background

This decision concerns a proposal by a delegate of the Registrar of Trade Marks to revoke registration of the trade mark detailed below. The owner of the registration is KJ Ince Pty Ltd (‘Applicant’).

Registration Number:

2263689

Priority Date:

14 April 2022

Specification of goods and services:

Class 31: (including) Bouquets of dried flowers; Bouquets of fresh flowers

Class 35: Retail sale of natural and synthetic flowers and flower arrangements

Class 39: Flower delivery

Class 41: Flower shows

Class 44: (including) Floral arrangement design services

(The full specification of goods and services appears in the Annexure to this decision)

(‘the Applicant’s Goods and Services’)

Trade Mark:

FLOWERS FOR ALL

(‘the Trade Mark’)

On 14 April 2022 the Applicant filed an application to register the Trade Mark. The application was examined as required by s 31[1] following which the examiner issued an adverse report. The adverse report concerned only a formality issue regarding legal personality of the Applicant. The formality issue was addressed by the Applicant and the application to register the Trade Mark was accepted on 22 November 2022. Registration of the Trade Mark was not opposed and on 31 January 2023 the Trade Mark was registered.
[1] References to sections or regulations in this decision, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.
By correspondence dated 15 March 2023, a third party submitted that registration of the Trade Mark ought to be revoked and requested that the Registrar do so. That request was considered and on 23 March 2023 a delegate of the Registrar issued a Notice of Intention to Revoke Registration (‘Revocation Notice’). The Revocation Notice indicated that a ground for rejection of the application under s 41 ought to have been raised during examination, that the Trade Mark should not have been registered, and that it was reasonable in the circumstances to revoke registration. The notice gave the Applicant an opportunity to comment and/or request to be heard on the intention to revoke. On 24 April 2023, the Applicant filed a request to be heard. Also on 24 April, the Applicant filed submissions and material to support its view that registration ought not be revoked.
By notice dated 1 May 2023, the Applicant was informed that the matter had been set down for a hearing. By correspondence dated 24 May…

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

Case: [2023] ATMO 139
Decision Date: 14 September 2023

CaseChat Overview and Summary

The matter before the Hearing Officer, Robert Wilson, concerned an application by KJ Ince Pty Ltd to prevent the revocation of its registered trade mark. The Registrar of Trade Marks had issued a notice of intention to revoke the registration, alleging that an error had occurred during the initial examination process, specifically that the trade mark should have been rejected under section 41 of the *Trade Marks Act 1995* (Cth).

The central legal issue was whether the trade mark was not capable of distinguishing the applicant's goods and services from those of other persons, as contemplated by section 41 of the Act. This required the court to consider whether the trade mark was inherently adapted to distinguish the designated goods and services, and if not sufficiently so, whether its use had resulted in it actually distinguishing those goods and services. The court also had to determine if any perceived deficiency in the initial examination constituted an error warranting revocation.

The Hearing Officer approached the matter by undertaking a fresh assessment of the trade mark in light of section 41. He noted that the delegate's view was that the trade mark was only to some extent inherently adapted to distinguish the applicant's goods and services, and that this deficiency had not been overcome by use. However, the Hearing Officer concluded that it was unlikely other traders would wish to use the trade mark for its ordinary signification in relation to the applicant's goods and services without improper motive. Consequently, he was not satisfied that the trade mark was incapable of distinguishing the applicant's goods and services, nor that an error had been made during examination.

As the Hearing Officer was not satisfied that the trade mark should not have been registered, he ordered that the trade mark remain registered.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Its ordinary signification notwithstanding, for the reasons just discussed, I am of the view that it is unlikely that other traders would, without improper motive, wish to use the Trade Mark for that ordinary signification in respect of goods and services such as those of the Applicant. Because of this, I am not satisfied that the Trade Mark ‘is not capable of distinguishing [the Applicant’s Goods and Services] from the goods and services of other traders’. Given the presumption of registrability, I would need to be satisfied of this before forming the view that a s 41 ground for rejection should have been raised during examination. As I am not so satisfied, I am also not satisfied that there was an error made during examination which means that the Trade Mark should not have been registered. Accordingly, I am not satisfied that registration of the Trade Mark should be revoked.Decision I am not satisfied that there was an error made during examination which means that the Trade Mark should not have been registered. Accordingly, the Trade Mark is to remain registered.Robert WilsonHearing OfficerDelegate of the Registrar of Trade Marks14 September 2023AnnexureThe Applicant’s Goods and ServicesClass 31: Floral decorations (natural); Floral decorations (fresh); Floral decorations (dried); Arrangements of dried flowers for decorative purposes; Arrangements of natural flowers; Bouquets of dried flowers; Bouquets of fresh flowers; Cut flowers; Dried flowers; Edible flowers, fresh; Flower bulbs; Flower seeds; Flowering plants; Flowers, dried, for decoration; Flowers, natural; Fresh flower arrangements; Fresh flowers; Gilded flowers; Live flowers; Natural flowers; Wreaths of natural flowersClass 35: Retail sale of natural and synthetic flowers and flower arrangementsClass 39: Flower deliveryClass 41: Flower showsClass 44: Floral arrangement design services; Floral display hire services; Flower arrangement design services; Flower arranging; Rental of flower arrangements; Rental of flowers

Ratio Decidendi

Legal Principle Established

Section 84C concerns the effect of revocation. That section provides that if registration is revoked the Trade Marks Act 1995 (Cth) generally applies as if the registration had never occurred. Section 84C(5) has effect if the Registrar revokes acceptance of the application for registration of a trade mark after revoking the registration. In this circumstance the Registrar may, but need not, examine the application again under section 31 before rejecting the application.Section 84A consideration The Revocation Notice indicated the delegate’s view that during examination of the application to register the Trade Mark the examiner ought to have raised a ground for rejecting the application under s 41. This reflects the delegate’s view that this constituted an error that led directly to the registration of the Trade Mark. A reference to s 41(4) in the notice indicated the delegate’s view was that the Trade Mark:(a) is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods and Services from the goods or services of other persons; and(b) does not and will not distinguish the Applicant’s Goods and Services as being those of the Applicant having regard to the combined effect of the following:(i)the extent to which the Trade Mark is inherently adapted to distinguish the Applicant’s Goods and Services from the goods and services of other persons;(ii)the use, or intended, use, of the Trade Mark by the Applicant;(iii)any other circumstances. Prior to receipt of the Revocation Notice, the Applicant had not been given an opportunity to address the factors listed above. Such an opportunity is routinely given to applicants during examination should an examiner consider there is a ground for rejecting an application for reasons as described in the Revocation Notice. As indicated in the background to this matter, the Revocation Notice provided the Applicant with an opportunity to address those factors. The Applicant’s response did not alter the delegate’s view regarding the inherent adaptation to distinguish of the Trade Mark; however, the response did persuade the delegate that the Applicant had used the Trade Mark to a sufficient extent in a restricted geographical area (Melbourne) that it would not be reasonable to revoke registration if the registration was restricted to the State of Victoria. As also indicated above, the Applicant chose not to so restrict the registration. I am not bound by the delegate’s view on any of the matters just discussed. It is incumbent upon me to take a fresh look at the matter and consider all aspects of the intention to revoke. As a starting point, this requires that I consider whether there was, indeed, an error made during examination. This requires a consideration of the Trade Mark in the light of s 41.The Law in Respect of s 41 Section 41 of the Act provides:41 – Trade Mark not distinguishing applicant’s goods or services(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.Note: For goods of a person and services of a person see section 6.(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.(3)This subsection applies to a trade mark if:(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.(4)This subsection applies to a trade mark if:(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;(ii)the use, or intended use, of the trade mark by the applicant;(iii)any other circumstances.Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or(b)the time of production of goods or of the rendering of services.Note 2: For goods of a person and services of a person see section 6.Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.Note 1: For applicant and predecessor in title see section 6.Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

Registration Number:	2263689
Priority Date:	14 April 2022
Specification of goods and services:	Class 31: (including) Bouquets of dried flowers; Bouquets of fresh flowers Class 35: Retail sale of natural and synthetic flowers and flower arrangements Class 39: Flower delivery Class 41: Flower shows Class 44: (including) Floral arrangement design services (The full specification of goods and services appears in the Annexure to this decision) (‘the Applicant’s Goods and Services’)
Trade Mark:	FLOWERS FOR ALL	(‘the Trade Mark’)