MG Kailis (Holdings) Pty Ltd

[2003] ATMO 76

TRADE MARKS ACT 1995

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

Re:Application 947833 and proposed revocation thereof and the applicant's objections thereto.

Delegate:	Ian Thompson
Representation:	Applicant: Stephen Krouzecky - Wray & Associates
Decision:	Section 38 - revocation - error or omission -.

Background

The details of trade mark application 947833 are as follows:

Appn Number:           947833
Owner:  M G Kailis (Holdings) Pty Ltd
Priority Date:             21 March 2003

Goods:Class: 29  Seafood, including prepared and frozen crayfish and lobster; and fish products

Trade Mark:               

Description:                The mark comprises the depiction of two substantially corresponding and elongated crustacean portions, symmetrically arranged in a crossed formation one portion surmounting and inverted relative to the other.

A Deputy Registrar has proposed revocation of the acceptance of the application for registration. The applicant invoked its right to be heard in the matter of the proposed revocation in terms of section 203 of the Trade Marks Act 1995 ('the Act').  As a delegate of the Registrar of Trade Marks, I heard the applicant's arguments in a hearing by teleconference in Canberra on 13 October 2003 - Mr Stephen Krouzecky of Wray & Associates of Perth represented the applicant.

History

Trade Mark examiners now work in an environment of a 'paperless' office: examination files come to the examiners 'online' and their reports, recommendations and proposals for acceptance are performed 'online'.  Many applications for registration are filed 'online' and those which are not filed 'online' are scanned when they are received by the Trade marks Office and forwarded to the examiners for examination.

This application was filed on behalf of the applicant by Wray & Associates on 21 March 2003.  The details of the application are at the head of this decision.  The representation as filed is a colour representation of the trade mark such as might appear in a brochure.  The application was scanned and the original retained.  The scanned image which was before the examiner looks like this:

The words "Top" and "Bottom" are present on the application and seemingly form a part of it.  The examiner apparently took the representation at its face value and both recommended and accepted the application for acceptance without noticing the description of the trade mark which explains that the representation of the trade mark is, in fact, two opposingly oriented crustaceans, one superimposed on the other, which are split ready for serving or preparing.

A Deputy Registrar has now, as explained above, proposed revocation of the acceptance of the application.

Submissions

The applicant's submissions are that, as all of the relevant information was before the examiner when the trade mark was recommended and accepted, there can have been no error or omission in terms of the Act. The behaviour of the examiner, so the argument goes, might constitute an error of judgement, but this, per se, is not an error or omission.

Mr Krusecky drew my attention to the judgment in a New Zealand case Levi Strauss & Co v Kimbyr Investments Ltd 28 IPR 249 where Williams J said:

“Accepting that it is permissible in appropriate cases to enter words upon the register to define a trade mark, the question then becomes whether the words or the pictorial representation govern the delineation of the trade mark in this case. In my view the answer is plain. The opening words of the written description state that “the mark consists of”. In the absence of any other words explicitly stating what the pictorial representation is to govern, those words are decisive”.

This being arguably so, the examiner can have had no doubt about the trade mark which was proposed for acceptance: it is plain from the verbal description.  Further consideration of the merits of the application itself, in terms of section 41, by me is, submits Mr Krusecky, inappropriate since that would involve informing my own judgment as to whether the examiner was correct in her judgment.

Reasons

Section 38 of the Act provides:

38  Revocation of acceptance

(1)If, before a trade mark is registered, the Registrar is satisfied:

(a)that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or

(b)that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations;

the Registrar may revoke the acceptance of the application.

Note:For limitations see section 6.

(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 as necessary under section 31; and

(c)sections 33 and 34 again apply in relation to the application.

I agree with Mr Krousecky in his comments about the operation of section 38(1) - it does not permit revocation of acceptance where the judgment of an officer in accepting an applicant has been errant and is designed to capture circumstances where there has been an error or omission in the acceptance.

However, I think that the examiner did make both an error and an omission in the processing and acceptance of the application. It is quite plain to me that, for some inexplicable reason, the examiner considered only the representation as filed and did not look at or consider the written description of the trade mark. It is inconceivable to me that an examiner who is of sufficient experience to function as the Registrar's delegate in accepting trade marks for registration would have accepted the application if the examiner had seen the verbal description of the trade mark. The thing, to my mind, speaks for itself - sections 41 and 44 are issues that go to the core of an examiner's training and the function of a delegate of the Registrar. If the examiner had seen the verbal description of the trade mark, which Mr Krousecki stresses, is or may be of some primacy, I am certain that the application would have not been accepted for registration. And, leaving the provisions of section 41 or section 43 of the Act to one side, it is patent that, if the examiner had seen the verbal description of the trade mark, she would have requested a pictorial representation of the trade mark which better reflected the verbal description.

Adequate representations of the trade mark are essential in order that the Registrar know what is being registered and that other traders can see what has been registered.  It is arguably here of some great importance that the representations be absolutely clear since the representation is of the goods in respect of which it is to be used.  Leaving, as I have said, the provisions of sections 41 or 43 to one side, it is notorious that traders in the same field of trade use depictions of similar goods.  Representations of such goods on the Register thus need to be of uttermost clarity in order that any monopoly is clearly delineated. 

I would hasten to add that I do not think that any great blame or dereliction attains to the examiner in this.  The examiner, it must be remembered, is working with an on-line system where not all information about a trade mark appears on the one page.  Not all information about an application is necessarily before the examiner unless the examiner remembers to look for it.  In this instance, the description of the trade mark appears on the one page and the representation of the trade mark on another.  How the examiner, acting as the Registrar's delegate, could have overlooked the description is probably explained by the delegate assuming that s/he knew the application and so did not look for it.   It is unusual to have a verbal description filed with a trade mark which is not a shape, colour, smell or taste; so, the oversight, while regrettable, is perhaps understandable.

There remains the problem that the description is not couched in the clearest of language - this too is a problem that may be resolved in examination.  It is of some concern to me that the applicant looks to a verbal description for the delineation of its rights - a picture is axiomatically worth a thousand words and in these circumstances where the trade mark is capable of visual appreciation an accurate graphical representation should render the words otiose.

Decision

I therefore direct that if there be no appeal from these reasons and decision, acceptance of application 947833 be revoked one month from the date of the decision and returned to an examiner.

Ian Thompson
Hearing Officer

2 December 2003