Mt Shadwell Pty Ltd
[2018] ATMO 25
•20 February 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1730618 (35, 45) - CAREER NAVIGATOR- in the name of Mt Shadwell Pty Ltd.
| Delegate: | Heath Wilson |
| Representation: | Owner: Victor Ng of Cooper Mills Lawyers. |
| Decision: | 2018 ATMO 25 Hearing on intention to revoke registration under section 84A of the Trade Marks Act 1995 – Not reasonable in all the circumstances to revoke registration – Revocation of registration refused. |
Background
The above matter concerns a hearing on a proposal to revoke the registration and acceptance of a trade mark under the provisions of sections 84A and 38 (respectively) of the Trade Marks Act 1995 (‘the Act’). The details of the trade mark registration the subject of the proposed revocation are:
Trade Mark No. 1730618
Trade Mark: CAREER NAVIGATOR (‘the Trade Mark’)
Owner: Mt Shadwell Pty Ltd (‘the Owner’)
Priority Date: 27 October 2015
Specification of Services:
Class 35:
Career counselling (employment advice and information); Career planning services; Job placement services; Vocational guidance (employment advice and information); all of the foregoing being services provided to individuals
Class 45:
Life coaching (personal mentoring and support services)
After the trade mark application was filed by the Owner on 27 October 2015, the Trade Mark was examined as required under section 31 of the Act. In the first examination report, grounds for rejection were raised by the examiner under sections 41(4) and 44 of the Act, but it is only the section 41 ground that is relevant to the current matter. In relation to that ground, the report provided:
Your trade mark is, or has as its main feature, CAREER NAVIGATOR.
This indicates that your services are in the nature of guiding, directing, or otherwise counselling on the direction of a client’s career. CAREER NAVIGATOR is, or so closely resembles, a commonly used and understood term that describes the nature of the services you have claimed or the provider of the services you have claimed.
Other traders should be able to use CAREER NAVIGATOR or something so nearly resembling it in connection with goods or services similar to yours.
The legal representative for the Owner responded to the first examination report, arguing that the Trade Mark was inherently adapted to distinguish its services from those goods/services of other persons. From the information on file, it appears the examiner reconsidered the research conducted and the ground for rejection in light of the submissions made. A clear report was issued, accepting the Trade Mark for possible registration and advertisement of that acceptance appeared in the Australian Official Journal of Trade Marks (‘the Journal’) on 5 May 2016.
The opposition period passed, there was no opposition to registration, and the Trade Mark was entered into the Register of Trade Marks on 13 July 2016 (with advertisement of the registration appearing in the Journal on 21 July 2016).
Approximately nine months later, on 3 April 2017, a third party wrote to the Registrar of Trade Marks requesting the revocation of the registration of the Trade Mark under section 84A of the Act on the basis that it was not inherently adapted to distinguish its services from those of other persons (that is, section 41 of the Act).
The letter from the third party prompted a review of the examination of the Trade Mark along with the circumstances leading to its registration and, on 23 May 2017, a Deputy Registrar of Trade Marks sent a Notice of Proposed Revocation of Registration to the Owner. The notice provided that the Trade Mark should not have been registered, and taking into account all of the circumstances, it was reasonable to revoke the registration. The reasons provided were:
It has been drawn to my attention that the ground for rejection in terms of section 41 raised in the examiner's first report should not have been withdrawn. The words CAREER NAVIGATOR may be considered to some extent adapted to distinguish the Owner's services. However, given their descriptive nature, and the wide ranging use of the words in connection with those services in the marketplace, the words alone are not sufficiently inherently adapted to distinguish. In terms of section 41(4), evidence of use, or intended use of the trade mark or any other relevant circumstances are required in order for acceptance and registration to occur. This kind of supporting documentation was not provided in this instance. In terms of the first point raised above, it appears that the trade mark should not have been accepted and registered.
Further, it is reasonable to revoke the registration, and also to revoke acceptance, taking account of all the circumstances of this case.
On 19 June 2017, the Owner’s representative sent submissions in response and also filed the declaration of Peter Pick (director of the Owner) made 19 June 2017 with annexures PP-1 to PP-11 for consideration by the office.
On 4 July 2017, a Deputy Registrar of Trade Marks maintained the proposal to revoke registration stating:
The term Career Navigator is widely used by other traders in the same or similar industries as your client to describe a characteristic of the services which they provide being career navigation services. This would also appear to be the case in the evidence submitted which appears to show the words being used to describe the subject of programs being career navigation or, in other words, a way in which job seekers can more easily navigate employment options available to them based on their skill sets, experience etc. This is also the ordinary signification of the words Career Navigator.
I note your submissions in respect of a difference of opinion, however this is not a matter of a difference of opinion. The ordinary signification of the words should have been taken into account as well as a correct interpretation of the research, and additional research conducted, as to how the words were being used in the relevant marketplace before the original s41 grounds for rejection were withdrawn.
I further note your submissions in regards to the third party. However, the consideration to revoke registration is not based on their submissions but on the aforementioned reasons. The question of infringement proceedings or the possibility of infringement proceedings have been considered, however the decision to revoke registration is based on the Registrar being satisfied that the trade mark is not capable of distinguishing the services of the registrant from those of other traders, not in respect of competing claims to ownership.
Under section 84A(5) of the Act, the Owner requested to be heard on the proposed revocation. Subsequently, the matter was set down to be heard and allocated to me, a delegate of the Registrar of Trade Marks, to hear and decide and the Owner was given an opportunity to provide written submissions and any additional evidence it wished to rely upon. The Owner took advantage of the opportunity, filing:
· Declaration of Peter Pick made 15 January 2018 with annexures PP-1 to PP-19 (‘Pick declaration’).
· Declaration of Victor Wei-Cho Ng (director of Cooper Mills Lawyers and attorney for the Owner) made 15 January 2018 with annexures VWN-1 to VWN-4.
· Owner’s Outline of Submissions.
I heard the matter on 22 January 2018 in Canberra and Mr Ng of Cooper Mills Lawyers made submissions on behalf of the Owner.
The Law
Section 84A of the Act relevantly 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.
Section 38 of the Act relevantly provides:
38Revocation of acceptance
(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.
Section 41 of the Act relevantly provides:
41Trade 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.
(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)…
(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).
Discussion
Section 84A
Since the introduction of section 84A to the Act in 2006,[1] there have been few published decisions[2] addressing revocation of registration and the outcome of only one of these decisions was to revoke a trade mark’s registration. The dearth of published decisions exercising the power is unsurprising, as then Deputy Registrar of Trade Marks Michael Arblaster put it, in the ‘Camel Tanks’ decision:
[E]ven when a trade mark is clearly invalidly registered, Parliament recognised that in light of use since filing or registration (or other circumstances) it may not be reasonable to revoke that registration.
The Explanatory Memorandum was written in terms that are consistent with the note of caution. It identifies circumstances where the power of section 84A is not intended to be used. In particular the power should not be regarded as an alternative to the dispute settlement mechanisms otherwise provided by the Act, for resolving competing claims to ownership.
Thus the structure of the section itself, its context within the Act, the nature of the rights affected, and the effect of revocation all require that great caution be used in the Registrar’s exercise of this discretion.[3]
[1] Intellectual Property Laws Amendment Act 2006 (Cth).
[2] Method Constructions Pty Ltd [2009] ATMO 9; Mr Lorne Bobart [2010] ATMO 43 (‘Camel Tanks’); Mr Bruce Larter [2010] ATMO 103; FPInnovation Pty Ltd [2012] ATMO 74; Aleem Pty Ltd [2015] ATMO 33.
[3] Mr Lorne Bobart [2010] ATMO 43, [18]-[20].
At the hearing, Mr Ng also pointed out the analogous comments of Hearing Officer Murray in Re Aleem Pty Ltd:
Revocation of registration is a serious matter. As a delegate of the Registrar, I am tasked with deciding whether a valuable intellectual property right which the Registrar has willingly given, and which hitherto no party has appropriately challenged, should nevertheless be taken away.[4]
[4] [2015] ATMO 33, [20].
It is clear both from office precedent and the Explanatory Memorandum that the Registrar’s exercise of power to revoke a trade mark registration is not a decision that will be made lightly. Further, there is recognition that there are likely to be circumstances existing both before and after a trade mark was entered into the Register that will affect the consideration of whether or not to revoke, despite a finding that a trade mark (on the face of it) should not have been registered.
The Registrar is not obliged to consider revocation (section 84A(6)), and it should not be concluded that, without the submissions of the third party, the proposed revocation of registration would not have occurred. Such a letter has prompted a review of the circumstances leading to registration of the Trade Mark, but third party submissions do not guide the decision of the Registrar on whether or not to revoke registration. If that were the case, revocation would impermissibly act as a de facto opposition to a trade mark. As mentioned in previous decisions, neither revocation of registration nor revocation of acceptance should be used as dispute resolution mechanism especially when there is an opposition process available for that purpose. Further, it is also open to a third party to seek cancellation of the registration of the Trade Mark by application to a prescribed court.
Should the Trade Mark have been registered?
For the first limb of the test under section 84A(1), the relevant circumstance here is that under section 84A(2)(a), namely, ‘any errors (including errors of judgment) or omissions that led directly or indirectly to the registration’. The circumstance identified by the Deputy Registrar was that the ground for rejection under section 41(4) should not have been withdrawn as the ‘ordinary signification’[5] of the Trade Mark should have been taken into account along with a correct interpretation of the research.
[5] See relevant discussion in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48.
Mr Ng pointed out that the examiner for the Trade Mark did consider the application of section 41 (which evidently entails a consideration of the ‘ordinary signification’ of the Trade Mark) as it was raised as a ground for rejection in the first instance. Mr Ng then argued that the fact the Deputy Registrar apparently considered the same issue and reached a different conclusion must mean that the latter conclusion is nothing more than a change of opinion as to the registrability of the Trade Mark (which is not a valid ground upon which to base revocation).
I am not convinced by the argument. It should not be assumed that a scenario where different decision makers consider the same facts and presumably the same legal issues, that a finding which contradicts the other must amount to a mere difference of opinion. An examiner may, upon considering the established legal tests and requirements of the relevant sections of the Act, nevertheless reach an incorrect conclusion and fall into error. This would amount to an error of judgement that led directly (or indirectly) to the registration of the Trade Mark and is precisely the scenario envisaged in section 84A(2)(a).
For the avoidance of doubt, section 84A (or section 38 for that matter) is not concerned with differences of opinion or cases where, upon a proper consideration of fact and law, reasonable minds might differ. It is focused on whether acceptance and registration of the Trade Mark should not have occurred. To answer the question it is necessary to consider whether a ground for rejection existed under the Act such that the Trade Mark should not have been registered.
Section 41
Under section 41 of the Act, a trade mark must be rejected if it is not capable of distinguishing its goods or services from the goods/services of other persons. To answer the threshold question of a trade mark’s inherent capacity to distinguish, Kitto J in Clark Equipment Co v Registrar of Trade Marks explained:
[T]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[6]
[6] [1964] HCA 55; (1964) 111 CLR 511 at 514; [1964] HCA 55; [1965] ALR 344, (346).
The majority judgment of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’) endorsed the above test, stating (emphasis added):
The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from [Registrar of Trade Marks v W & G Du Cros Ltd [1913] UKHL 588; [1913] AC 624 (‘Du Cros’)]... is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[7]
[7] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 4, [59].
In the current matter, the Trade Mark is not ‘a covert and skillful allusion’[8] to the nature of the designated services. The relevant Australian purchaser, consumer or trader would not need to embark upon a search for meaning to understand the ordinary signification of ‘Career Navigator’ in relation to career counselling or life coaching services. While it has an element of originality, the Trade Mark does not constitute a covert or skillful allusion as to the characteristics of the services. To put it simply, the ordinary signification of the Trade Mark to other persons in Australia is evident.
[8] Mark Foy’s Ltd. v Davies Coop & Co. Ltd. [1956] HCA 41; (1956) 95 CLR 190 at p201.
The second element of the test as explained in Cantarella is whether other traders (operating without improper motives) would desire to use the Trade Mark (or some mark nearly resembling it) for that sake of that ordinary signification.
In terms of the likelihood that other traders desire to use the same mark, or some mark nearly resembling it[9], upon or in connection with their own services, the Full Bench of the Federal Court explained that the two questions under section 41 are interrelated and:
Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required. Burger King appears to be such a case (see Gibbs J at 425). In other cases, evidence might be called on the issue of the ordinary signification of the word mark as happened in Faulding. Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse v Fry Consulting”) at 543544 [102] per Kenny J), but would be considered in light of all of the evidence in the case.[10]
[9] Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) A.C. 624, 635.
[10] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [126].
As I have said, despite the clear ordinary signification or meaning of the Trade Mark, the Trade Mark does have some originality to it. Relevant research indicates that despite its meaning it is not the most apt or common way to refer to the intended purpose or some other characteristic of the designated services[11]. However, research also demonstrates that it is a term desired to be used by other traders for the sake of its meaning. In that context, it is appropriate to assess the Trade Mark under the provisions of section 41(4) of the Act. It follows that the decision to accept the Trade Mark absent evidence of use or other circumstances constituted an error of judgement which led directly to registration.
[11] See Re the Application of J P Coats Ltd (1936) 53 RPC 355, 380.
I am satisfied on the facts that the Trade Mark should not have been accepted and registered without evidence of use, intended use or other circumstances. That conclusion has been reached, not as a change of opinion as to the Trade Mark’s registrability, but on a finding that there has been a jurisdictional error on the facts as presented or a proper application of the law. The second element of section 84A is whether it is reasonable to revoke registration and the nature and strength of the objection is also a relevant circumstance in making that decision.
‘Reasonable in all the circumstances to revoke registration’
The circumstances that may be taken into account in deciding whether it is reasonable to revoke registration of a trade mark are not limited, but section 84A sets out some particular circumstances that may be considered. To summarise the relevant circumstances before me, I have taken into account the use that has occurred to date of the Trade Mark, in combination with the proposed legal proceedings and actions taken in relation to the Trade Mark as registered. Against that background, a decision maker should keep in mind the aforementioned cautious application of section 84A of the Act and the nature of the error that led to registration.
Mr Ng submitted that any use of the Trade Mark is relevant in determining whether or not it is reasonable to revoke registration. I agree that such use need not be extensive or substantial as to, say, overcome a ground for rejection under section 41 of the Act, but it must nevertheless amount to Trade Mark use. In other words, use which is not use as a ‘badge of origin’, ‘in the course of trade’ and by the Owner or upon or in relation to the designated services cannot be relevant to the consideration.
The Owner’s evidence indicates that since June 2014, the Owner has been using the Trade Mark in relation to its outplacement and career planning services. Between 2014 and 2017, the Owner’s revenue for services marketed under and by reference to the Trade Mark has increased annually. The Pick declaration annexes examples of stationery, brochures, workbooks (a ‘Career Navigator Workbook’), signage on the Owner’s business premises and monthly reports that bear the Trade Mark. The invoices bear the business name ‘Nine Lives Consulting’ with the words comprising the Trade Mark appearing directly underneath. Other examples include ‘Career Navigator: Essentials Program’ with a later descriptive statement: ‘This is where professional career navigation comes into its own with our Essentials Program’. Further examples of related programs are described as ‘Career Navigator- Return Program’ and ‘Career Navigator: Insight Program (Vocational Guidance)’. It is also evident that the Owner has similarly named programs such as the ‘Executive Navigator Program’, ‘Team Navigator program’ and ‘Lifestyle Navigator’ program.
The above evidence of use from the Owner is pertinent to the consideration before me as section 84A(3)(a) of the Act mentions any use that has been made of the trade mark. On this point, I note that the monthly reports at annexure PP-6 indicate use of the Trade Mark in relation to the Owner’s programs from mid-2016 to early 2017 which fall after the particulars of the Trade Mark were entered into the Register.
A fair and reasonable assessment of the evidence is sufficient to identify instances which are arguably not use as a ‘badge of origin’[12] due to the context[13] in which the Trade Mark appears. As mentioned earlier for the purposes of this decision, such use need not be at the requisite level for the Trade Mark to have demonstrated distinctiveness. Having said that, there is nevertheless demonstrated bona-fide use of the Trade Mark and it follows that associated property rights would be adversely affected should the registration be deemed a nullity.
[12] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721.
[13] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874.
The evidence also indicates that additional relevant actions have been taken in relation to the registered Trade Mark. Section 84A(3)(b) of the Act also mentions that ‘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’ should be taken into account.
It is important to note that the third party that wrote the letter requesting revocation of registration had the opportunity to oppose registration of the Trade Mark (and argue the ground of opposition under section 41 of the Act) and did not. As I have said, there was no opposition to the Trade Mark by any party. To emphasise the significance of this fact, I mention that this matter is ex parte and in that context, the Registrar is not to be an advocate for either case.[14] In other words, the case for revocation should stand on its own merits.[15]
[14] Mr Lorne Bobart [2010] ATMO 43, [51].
[15] Jack Grieve [2010] ATMO 12, [25].
According to Mr Pick, in early 2017 (after registration of the Trade Mark), the Owner became aware of a company named Barque Capital Pty Ltd (‘Barque’) using the name ‘CAREER NAVIGATOR CO’ in relation to similar services as the Owner’s specification of services. The letter of demand sent by the Owner to Barque on 20 March 2017 put Barque on notice of an alleged infringement of the Trade Mark. The timing of the revocation request has not escaped the notice of Mr Ng due to the fact that following the Owner’s two letters of demand concerning the Trade Mark were sent to Barque on 20 March 2017 and 9 May 2017, and the third party letter that was sent to the office was dated 3 April 2017. As I have mentioned, this subsequently prompted a review and the notice of proposed revocation that followed was sent by the office on 22 May 2017.
The letters of demand foreshadow legal proceedings between the Owner and Barque. Most likely due to the current revocation proceedings, there was been no further developments in relation to any trade mark infringement actions before the court. Regardless, these actions by the Owner are highly relevant to the consideration before me.
Revocation of registration will always be an inconvenience to the owner of a trade mark. This inconvenience by itself cannot be a deciding factor in determining whether or not it is reasonable to revoke, otherwise the power to revoke would be otiose. It is yet another reason why revocation of registration is a power that should be exercised with an abundance of caution.
I have considered the relevant factors in this matter - balancing the seriousness of the error leading to acceptance and registration on the one hand, and on the other, the timing of the third party request to revoke registration, and the use conducted to date of the Trade Mark along with the surrounding circumstances involving proposed actions for infringement. In the context of the established intent of section 84A of the Act, my decision is that it is not reasonable in the circumstances for the Registrar to take the extreme course of revoking registration of the Trade Mark.
Decision
I refuse to revoke registration of trade mark no. 1730618.
Heath Wilson
Supervising Hearing Officer
Oppositions and Hearings
20 February 2018
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