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

1. 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’)

1. 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.

2. 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.

3. 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 2023, the delegate of the Registrar sent correspondence to the Applicant indicating that he had considered the Applicant’s 24 April correspondence but, nevertheless, remained of the view that registration ought to be revoked. The correspondence also indicated that if the Applicant were to provide further detail regarding its use of the Trade Mark this might be sufficient for the delegate to withdraw the proposal to revoke. In response, the Applicant provided further information, which satisfied the delegate that should the Applicant agree to restricting its registration to the State of Victoria the proposal to revoke could be withdrawn. On 26 July 2023, the delegate sent correspondence to the Applicant indicating that if it agreed to amend the registration to limit it accordingly, he would withdraw the proposal to revoke. The delegate gave the Applicant until 31 July 2023 to request the amendment and indicated that if no request or response was received by that date the matter would proceed to a hearing. The Applicant did not respond within the time allowed and a hearing was scheduled.

4. I heard the matter as a delegate of the Registrar of Trade Marks on 11 September 2023. Adam Nakat, Principal of Nakat Law, appeared on behalf the Applicant. Mr Nakat’s submissions were supplemented by written submissions filed prior to the hearing. The Applicant also relied upon ‘all correspondence and submissions lodged via the IP Australia Portal to date with regards to the Proceeding and the letter sent to IP Australia on 25 August 2023 including the attachments’. It is noted that there are multiple copies of various documents filed at various times. Amongst the documents filed are correspondence containing submissions regarding the proposed revocation, and a Statutory Declaration made on 14 July 2023 by Michael Ince, the Director and Secretary of the Applicant.

   The Law in Respect of Revocation

5. Part 8, Division 1, Subdivision C deals with revocation of registration. Section 84A provides that the Registrar has a discretionary power to revoke the registration of a trade if 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 registration, taking account of all the circumstances.

6. Section 84A provides that the circumstances to be taken into account under (a), above, include any errors (including errors of judgement) or omissions that led directly or indirectly to the registration. The circumstances to be taken into account under (b), above, include:

   (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 registration; or

   (ii)not to revoke registration.

7. 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

8. 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.

9. 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.

10. 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

11. 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).

12. The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

    The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire.[2]

    [2] (1913) AC 624, 634-5.

13. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

    [W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[3]

    [3] [1964] HCA 55, [5] (‘Clark Equipment’).

14. More recent authority is to be found in Cantarella Bros v Modena Trading.[4] In that case the High Court indicated that the test for distinctiveness is a two step process. The first step being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods, then having determined the answer to that question to consider the likelihood of the sign being needed by other traders.

    [4] [2014] HCA 48.

15. It is important to bear in mind in any consideration of s 41 that there is an associated presumption of registrability. I must be satisfied, here, that the Trade Mark is not capable of distinguishing before the failure to raise it is a ground for rejection during examination can be considered an error for the purposes of s 84A. If I am in doubt, that doubt must be resolved in the Applicant’s favour.

    The ordinary signification of the Trade Mark

16. Mr Nakat’s submissions in respect of the ordinary signification of the Trade Mark can be summed up by this sentence from his written summary of submissions, ‘“Flowers For All” does not apply an ordinary meaning for the relevant goods and services uses of the classes put forward as it is not exclusively used by my client for the sale of flowers’(sic).

17. The Trade Mark is composed of simple English words with readily understood meanings: it is not, for example, an invented term. The Trade Mark as a whole appears to have a fairly obvious ordinary signification in respect of the Applicant’s Goods and Services, that is, that they concern the goods of flowers for all people, or the provision of services concerning flowers to all people. The ‘For All’ component of the Trade Mark has an apparent meaning similar to the relatively well-known phrase that concludes the Pledge of Allegiance (to the flag of the United States of America), being, ‘with liberty and justice for all’; this is undoubtedly a reference to ‘all people’ (of the United States, presumably).

18. Mr Nakat submitted that the ‘For All’ element of the Trade Mark has a broader meaning than ‘for all people’. Mr Nakat submitted that ‘all’ is ‘used to refer to the whole quantity or extent of a particular group or thing’ and that

    using the plain meaning of all it is a reference to a myriad of uses, the extent of a particular group or thing under classes, 31, 35, 39, 41 and 44 which are not purely in relation to the sale of flowers including intended uses (and current incidental uses) of the brand …

19. I am not persuaded by Mr Nakat on this point. While ‘all’ can be used in many contexts to refer to all sorts of things, in the context of the Trade Mark as a whole I am satisfied that the ordinary signification is as I have indicated above. Having determined the ordinary signification of the Trade Mark it is now necessary to consider the second limb from Cantarella.

    The likelihood other traders will need to use the Trade Mark

20. Under the second limb of the test from Cantarella it is necessary to consider the likelihood of the Trade Mark being needed by other traders for its ordinary signification in connection with goods and services similar to those of the Applicant. The use of ‘for all’ to refer to ‘all people’ or ‘all persons’ is unusual. Indeed, the absence of the word ‘people’ or ‘persons’ from the Trade Mark is important. In this day and age, the use of ‘for all’ could possibly even be considered archaic. The Pledge of Allegiance, referred to above, for example, was originally coined in the late 1800s. Another example of the use of ‘for all’ to refer to all people, or persons, of a group, is to be found in the reasonably well-known quote, ‘All for one and one for all, united we stand divided we fall’. This quote comes from the The Three Musketeers, a book written by French author, Alexandre Dumas, and first translated into English in 1846.

21. It would be unusual, in common parlance in Australia today, for people to use the term ‘for all’ to refer to all people. It is far more likely that the expression ‘for everybody’ or ‘for everyone’ would be used. If a person today were, in everyday conversation, to use the term ‘flowers for all’—especially without the additional ‘people’ or ‘persons’—it likely to strike the listener as odd, or be taken as an intentional attempt to use this (potentially) archaic terminology for effect.

22. 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

23. 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 Wilson
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    14 September 2023

    
    

    Annexure

    The Applicant’s Goods and Services

    Class 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 flowers

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

    Class 39: Flower delivery

    Class 41: Flower shows

    Class 44: Floral arrangement design services; Floral display hire services; Flower arrangement design services; Flower arranging; Rental of flower arrangements; Rental of flowers