Ladbrokes Digital Australia Pty Ltd - [2016] ATMO 116

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade mark application number 1755346 (41) - ODDS BOOST- in the name of Ladbrokes Digital Australia Pty Ltd

Delegate:

Robert Wilson

Representation:

Applicant: King & Wood Mallesons

Decision:

2016 ATMO 116

Trade Marks Act 1995 - section 38 – whether application should not have been accepted – trade mark not inherently adapted to distinguish the applied-for services – whether reasonable to revoke acceptance – acceptance revoked – application returned to examination

Background

This decision is pursuant to section 38 of the Trade Marks Act 1995 (‘the Act’). It arises from the Registrar of Trade Marks’ intention to revoke acceptance of trade mark application 1755346 (‘the Application’) in the name of Ladbrokes Digital Australia Pty Ltd (‘the Applicant’). Relevant details of the Application are:

Trade Mark:

ODDS BOOST (‘the Trade Mark’)

Priority Date:

26 February 2016

Services:

Class 41: Wagering services (‘the Claimed Services’)

The Application was examined as required by section 31 of the Act and no ground for rejection was raised. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 21 July 2016. However, before that, on 23 June 2016 and as a result of an internal review of the Application, a delegate of the Registrar issued a Notification of Proposal to Revoke Acceptance (‘the Notification’) which stated:
The Trade Mark was not appropriately considered in terms of section 41 of the Act. A ground for rejection should have been raised in this regard, as the Trade Mark is descriptive. The mark ODDS BOOST, applied to the specified services, indicates that those services will allow the consumer to boost or increase their odds of winning and/or increase the amount won.
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 s 38 of the Act].
You have one month from the date of this letter to apply to be heard on this matter or to submit a request for a decision on the written record.
The Applicant requested a hearing by way of written submissions. The Applicant’s representatives, King & Wood Mallesons, filed the Applicant’s written submissions on 31 October 2016. Annexed to the submissions was a Statutory Declaration made on 31 October 2016 by Patrick Brown, General Counsel and Corporate Affairs Manager of the Applicant (‘the Brown declaration’).
Rather unhelpfully, the following sentence appears at the bottom of the last page of the submissions: ‘This communication and any attachments are confidential and may be privileged.’ The Applicant has requested a hearing on the written record. Given the standing and experience of their representatives it is reasonable to assume that King & Wood Mallesons would be aware that this decision is destined to be published; or if not published, likely…

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: [2016] ATMO 116
Decision Date: 14 December 2016

CaseChat Overview and Summary

This decision concerns an application by Ladbrokes Digital Australia Pty Ltd for a trade mark. The applicant requested a hearing by way of written submissions, which were filed along with a statutory declaration. At the conclusion of these submissions, a general statement of confidentiality and privilege was included. The hearing officer, Robert Wilson, was tasked with determining whether to proceed with the application given this request for confidentiality and the need to consider the submitted documents.

The primary legal issue before the hearing officer was how to consider the applicant's submissions and statutory declaration when they were accompanied by a general claim of confidentiality and privilege, particularly in the context of a decision that was likely to be published. The hearing officer also had to consider the application of section 38 of the relevant Act, which outlines the grounds and process for revoking the acceptance of a trade mark application. This section requires the Registrar to be satisfied that the application should not have been accepted in the first place, considering all circumstances, and that it is reasonable to revoke the acceptance.

The hearing officer reasoned that it was not practical to decide the matter without discussing the applicant's submissions and the statutory declaration, despite the general claim of confidentiality. He assumed the applicant's representatives were aware the decision would likely be published and that the general confidentiality notice was included without specific consideration of its impact. The hearing officer stated he would take care to avoid discussing commercially sensitive information, noting that such information appeared to be limited to a single paragraph in the statutory declaration. He concluded that the applicant had brought the issue of potential disclosure upon itself by making a general, rather than specific, claim of confidentiality. Applying section 38, the hearing officer found that the application should not have been accepted and that it was reasonable to revoke its acceptance.

Accordingly, the hearing officer revoked the acceptance of trade mark application 1755346 and ordered that the application be returned to examination.

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

I am satisfied that it is reasonable to revoke acceptance of the Application and to return it to examination.Decision I am satisfied, in terms of s 38 of the Act, that the Application should not have been accepted and that it is reasonable to revoke its acceptance. Accordingly I revoke acceptance of trade mark application 1755346 and the Application will be returned to examination.Robert WilsonHearing OfficerTrade Marks & Designs Hearings14 December 2016.

Ratio Decidendi

Legal Principle Established

The Applicant requested a hearing by way of written submissions. The Applicant’s representatives, King & Wood Mallesons, filed the Applicant’s written submissions on 31 October 2016. Annexed to the submissions was a Statutory Declaration made on 31 October 2016 by Patrick Brown, General Counsel and Corporate Affairs Manager of the Applicant (‘the Brown declaration’). Rather unhelpfully, the following sentence appears at the bottom of the last page of the submissions: ‘This communication and any attachments are confidential and may be privileged.’ The Applicant has requested a hearing on the written record. Given the standing and experience of their representatives it is reasonable to assume that King & Wood Mallesons would be aware that this decision is destined to be published; or if not published, likely to be available to any party that might request a copy. To paraphrase the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd,[1] it is not clear to me how I could decide this matter without discussing the Applicant’s submissions or the Brown declaration. Seemingly barred from any discussion of those documents my hands would appear to have been effectively tied and the Applicant doomed to failure. This position is obviously extreme since the Applicant has filed the submissions and the declaration and must expect them to be discussed and considered. There appears to be little in the submissions which is commercially sensitive and that appears only in one paragraph the Brown declaration; that paragraph is specifically indicated to be confidential. [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Thompson). I will proceed on the assumption that the words appearing at the end of the Applicant’s submissions have been included, without any specific consideration as to their necessity and potential impact in this matter. I will take care not to discuss any information which may be commercially sensitive but if I do my consolation lies in the fact that the Applicant, in being so unhelpfully general in its request for confidentiality, has brought the problem on itself.Section 38 Section 38 of the Act provides:(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 necessary under section 31; and(c) sections 33 and 34 again apply in relation to the application. Accordingly, two factors must be satisfied before acceptance may be revoked. Firstly, the Registrar must be satisfied that the Application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the Application was accepted. Secondly, that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist. If acceptance is revoked, the Application is taken never to have been accepted and is returned to examination so that the Applicant may address the circumstances that should have prevented acceptance.

Trade Mark:	ODDS BOOST (‘the Trade Mark’)
Priority Date:	26 February 2016
Services:	Class 41: Wagering services (‘the Claimed Services’)