Method Constructions Pty Limited

[2009] ATMO 89

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark registration number 1183255(37) - METHOD & LOGO- in the name of Method Constructions Pty Limited and proposed revocation of registration.

Delegate:

Ian Thompson

Representation:

Registrant: Mr Daniel Shields, a director of the trade mark owner

Decision:

2009 ATMO 89

Section 84A – factors to be taken into account before a decision as to whether revocation of a registration is reasonable in the circumstances. Delegate not satisfied that revocation is reasonable in the circumstances of this case.

Background

1. On 21 June 2007, Method Constructions Pty Ltd of Richmond, Victoria, applied to register the trade mark appearing below in respect of “building construction services” in Class 37 of the International (Nice) Classification of Goods and Services.

1. On 2 November 2007, the application was advertised as accepted for possible registration and advertised as such in the Australian Official Journal on 22 November 2007.  There was no opposition filed and the application was put onto the Register of Trade Marks on 3 March 2007.

2. On 9 January 2009, the Trade Marks Office wrote to the owner of the abovementioned trade mark in the following terms:

   nTrade Mark No. 1105903 for the word METHOD for Class 37 Building and construction services was filed on 29 March 2006.  This trade mark was cited as a ground for rejection in the examination of your Trade Mark No. 1183255.

   nTrade Mark No.1105903 lapsed on 2 November 2007, and your Trade Mark No. 1183255 was accepted on 2 November 2007 and registered on 3 March 2008.

   Current situation

   nAfter reviewing the examination on Trade Mark No. 1105903 it is clear that it should not have lapsed.

   nAfter further consideration Trade Mark No. 1105903 has now been revived, and will be accepted.

   nAs Trade Mark No. 1105903 has an earlier priority date than Trade Mark No. 1183255, and is deceptively similar, acceptance and registration of Trade Mark No. 1183255 must now be revoked.

   nThe trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Proposed action

   nThe Registrar intends to:

   nrevoke acceptance and registration of Trade Mark No. 1183255.

   nYou 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.

   nIf you request a hearing, the Office will appoint a time and place for you to present your case.

   nIf you do not respond within this time, registration and acceptance of the application will be revoked and the application will be returned to examination.

3. The owner of the registered trade mark exercised its right to be heard and (as a delegate of the Register of Trade Marks) I heard the submissions of the owner of the trade mark presented by Daniel Shields, a director of the owner of the registered trade mark.

4. Before discussing the issues, I will observe that the address for service of the owner of the other trade mark is at an address in French’s Forest, New South Wales.

Discussion

1. It was apparent to me at the hearing that Mr Shields was at a loss to understand the basis for the proposed official action.  It is not immediately apparent to me from the materials on the official file of registration 1183255 why registration is proposed to be revoked in that, while it is obvious that application 1105903 was revived, the reason for this revival is not clear as there is no mention of subparagraph 82A(2)(a).  In the absence of such information, cogent argument from the owner of the registered trade mark becomes difficult.

2. Official reticence in admitting to official error is understandable; however, revocation of a registration is a serious step to take and one which potentially affects the business of the owner.  Before such a step is taken, the owner of the registered trade mark ought to be informed of, and understand, the full reasons for the step which is proposed to be taken.

3. Further, while the source of the Registrar’s power to revoke a registration under section 84A of the Trade Marks Act 1995 (‘the Act’) is not in dispute, the owner was not told the section of the Act from which the power to revoke a registration derives and the relevant subsection which applies or, alternatively, told of the possible factors which are to be taken into account which an owner may argue should be taken into official consideration under the Act in deciding if the step is appropriate.

4. Thus, I have some reservations as to whether the proposed course of action accords with the principles of natural justice and procedural fairness.  The owner of the proposed trade mark has not been given the full reasons for the proposed official action and thus has not been sufficiently informed to be able to argue the merits of the proposed action.  These are circumstances (amongst others) which I must take into account in deciding whether I am satisfied that the revocation is reasonable in the circumstances.

5. Section 84A provides:

   84ARegistration may be revoked

   Power 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.

   Note:For use of a trade mark see section 6.

   Prerequisites to revocation decision

   (4)The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark:

   (a)the registered owner of the trade mark;

   (b)any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.

   Note:For registered owner see section 6.

   (5)The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard:

   (a)the registered owner of the trade mark;

   (b)any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.

   Note:For registered owner see section 6.

   No duty to consider whether to revoke

   (6)The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.

6. The owner of the trade mark was not invited before the decision to revoke to provide evidence of the use of the registered trade mark – nor was the owner asked whether there were any special circumstances which ought to be taken into account in the process of making the decision to revoke.  It is only possible, however, to revoke registration of a trade mark if I am satisfied it is reasonable to revoke the registration, taking account of all the circumstances: one such circumstance is any use which has been made of the trade mark (subparagraph 84A(3)(a)). I think it is necessary to inquire of an owner as to whether any use has been made of the trade mark so that appropriate consideration can be given to the issue or to direct the owner’s attention to the relevant section of the Act so that the owner can fully inform itself of the options open to it.

7. At the hearing of the matter, I asked Mr Shields whether the trade mark had been used – and most specifically whether it had been used before the priority date of the revived application – Mr Shields stated that it had and that such use had continued up to the present – and, subsequent to the hearing he provided me with well documented evidence of that use. The use of the trade mark is not extensive but does not have to be to establish either (for example) an entitlement to registration under subsection 44(4) or ownership of the particular trade mark in terms of the tests applied under, for instance, section 58 of the Act. The use of the trade mark was a factor to be considered when the trade mark became registered. While not necessarily conclusive in a decision whether it is reasonable to revoke, such factors are mentioned within the Act as factors to be considered.

8. This, then, is information which was not before the Registrar when the decision to propose revocation of the registration was made.

9. Further, there are two sets of interests to be balanced in this circumstance.  There are the interests of the traders involved and there is the public interest.

10. The interests of the traders involved can, in all likelihood, be assessed in the light of the owners’ apparent decisions not to oppose each others’ trade marks at the respective acceptance phases of the application process.  One might infer that the registration of each other’s trade mark is not regarded as problematical by the respective owners.

11. Additionally, in terms of the public interest, the owners of the respective trade marks reside in different States (New South Wales and Victoria) and use their trade marks in relation to ‘construction services’.  These are services which tend to be localized and not usually high volume and it is not as likely that confusion or deception would arise from the concurrent use of the trade marks as would be the case, for example if the goods were mass-marketed consumer items that commonly occur in supermarkets.

12. In summary, the Act requires that, to revoke a trade mark, I be satisfied that the trade mark should not have been registered.

13. For the reasons set out above, I am not so satisfied.

14. Even if I was satisfied that the trade mark should not have been registered, it is not clear (taking account of the above circumstances) that it would be reasonable to revoke.

15. I refuse to do so.

Iain Thompson

Hearing Officer

Trade Marks Hearings

6 November 2009