Myer Stores Limited

[2001] ATMO 104

TRADE MARKS ACT 1995

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

Re:Defensive trade mark application number 815926 (Classes 3, 5, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33) - grace bros - in the name of Myer Stores Limited.

Background

The applicant, Myer Stores Limited of 295 Lonsdale Street, Melbourne, Victoria lodged an application to register the abovementioned defensive trade mark on 2 December 1999.  The application relied on trade mark application 629908.  Both the defensive and original trade mark applications were for the word trade mark grace bros.  629908 related to services, and the defensive application related to goods.

As at the date of lodgement of the defensive trade mark application, 629908 had not yet progressed to registration, despite having been originally filed on 16 May 1994.  It was eventually registered with a sealing date of 26 May 2000.

The Trade Marks Office issued three reports, each rejecting the defensive trade mark application on the grounds set out below.  At the invitation of the Trade Marks Office, the applicant's attorneys, Phillips Ormonde Fitzpatrick, then requested a hearing.  The matter came before me for video-link hearing on 25 July 2001.  Mr John Gibbs of Phillips Ormonde Fitzpatrick appeared on behalf of the applicant.

The Legislation

As a result of the effect of s.72 of the Trade Marks Act 1995 (the Act), the registration is taken to have had effect from and including the filing date.  Accordingly, 629908 is taken to have been registered from 16 May 1994.

Section 185 provides for the registration of defensive trade marks.  Section 187 sets out the grounds upon which such registration may be refused.  The relevant parts of ss.185 and 187 are as follows:

185  Defensive trade marks

(1)If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods or services.

Note:For registered trade mark and registered owner see section 6.

...

187  Additional grounds for rejecting application for registration or opposing registration

In addition to any other ground on which:

(a)an application for the registration of a trade mark as a defensive trade mark may be rejected;

...

the application must be rejected or the registration may be opposed:

(c)if the trade mark is not registered as a trade mark in the name of the applicant

Relevantly therefore, ss.185 and 187 operate so as to require that there be a registered trade mark and a registered owner before an application for a defensive mark can be accepted for registration. 

As I have already mentioned, the Trade Marks Office (the Office) issued three reports.  Each report indicated that the Office was unable to accept the application for 815926 because s.185 was clear - without a registered trade mark on which to base the defensive application, the application did not comply with the requirements of the Act.

The applicant on the other hand, submitted that the operation of s.72 meant that registration of 629908 was taken to have been effective from 16 May 1994. Therefore, at the time of first examination by the Trade Marks Office on or about 9 August 2000, which was after the date 629908 had been accepted for registration, there was a registered trade mark. The Trade Marks Office position was that, as there was no registered trade mark as at the date of application, the application did not qualify as a validly filed defensive application.

The question for determination is therefore: must there be a registered trade mark and a registered owner as at the date the application is filed OR as at the date on which the application is examined for compliance with the Act?

Case Law

The applicant relied on the decision of the High Court in Hunter Douglas Australia Pty Limited v Perma Blinds (1970) CLR 49.

I have spent some time considering that decision.  Shortly stated, the High Court found that in relation to somewhat comparable provisions under the Trade Marks Act 1955, the registration, for the purposes of the calculation for a period of non-use, was taken to be from the date of filing.  This had the effect that, notwithstanding that some considerable time had passed between application and acceptance, that time was to be taken into account in determining the non-use period.  In other words, the required three year non-use period commenced prior to actual acceptance of the mark.  In the circumstances of that case, the applicant was therefore obliged to use their trade mark, notwithstanding that they did not, during the relevant three years, have the protection of registration under the Act.

Hunter Douglas related to the calculation of time, for the purposes of determining when a certain time period would commence running.  That is not the issue in the present case. Rather, the issue here is whether, at a particular point in time, there existed both a registered mark and a registered owner.  In Hunter Douglas terms, this would only have been relevant if the Court had been asked to adjudicate on the following issue: whether, in circumstances where the examination process had taken more than three years, could the removal applicant file a valid application for removal of a registered mark prior to the mark being accepted, and if they could not, could the defect be overcome by the later deeming of registration duration?  Clearly, this was not the issue that the Court was asked to adjudicate on.  The application for removal in Hunter Douglas had been filed after the date the trade mark was accepted for registration.  Therefore, there was no doubt that a registered trade mark existed at the relevant date.  Accordingly, I am not satisfied that Hunter Douglas is on point. 

Statutory Interpretation

The applicant submits that the date of examination is the appropriate date.  In making this submission, the applicant relies on the words "is not registered" in s.187 and states that, as they are in present tense and s.187 is a section which comes into play at the examination stage, this must mean that it is the date of examination which is relevant.

This may be so.  However, to adopt this approach to determine the matter would be to ignore the words of s.185.  Section 185 contains a threshold - there must be a valid application before the application can proceed to examination, and, by necessary implication, before s.187 can operate.

In the circumstances, I am not satisfied that the threshold has been met.  I am not satisfied that there was ever a valid application.  Further, I am not satisfied that a deeming provision which states that registration is to be taken as effective from a certain date can remedy a fatal defect in an application of this sort.  My reasons for my findings are as follows.

It is well established that minor defects in applications can be overcome - for instance, missing filing fees can be provided later, without the need to re-file the application, or supporting documentation which was inadvertently omitted from an application can be supplied at a later date without the need to re-date and re-file the application.  However, in such circumstances, the filing date may be the date on which the application is ultimately filed in its complete form - for example, Regulation 4.2 of the Trade Marks Regulations 1995.

However, it is also well established that applications and pleadings can contain fatal errors.  A lack of standing as at the date the application was filed is one such fatal error.  In the present case, the proprietorial interest that gives an applicant standing to file the application was absent on the date that the application was filed.  Section 185 is clear in its language: "...the trade mark, may, on the application of the registered owner, be registered as a defensive trade mark..." (emphasis added).  Accordingly, in order to have standing to bring the application, the applicant must have been the registered owner of the trade mark at the exact time at which the application is filed.  This is confirmed by the recent Full Federal Court decision in Byers v Overton Investments Pty Limited [2001] FCA 760. That case concerned the deeming and relation back provisions contained in ss. 61 and 44(1) of the Wills, Probate and Administration Act 1898 (NSW) (the WPA Act). Section 61 provides that, from the date of death until the grant of probate, the deceased's property vests in the Public Trustee. However, s.44(1) then provides that, upon the grant of probate or letters of administration, all real and personal property shall, as from the date of death, pass to and become vested in the executor or administrator to whom probate or administration has been granted. Section 44(1) is similar to s.72 of the Trade Marks Act which states:

72     Date and term of registration

(1)Subject to subsection (2), the registration of a trade mark in respect of the goods and/or services in respect of which the trade mark is registered is taken to have had effect from (and including) the filing date in respect of the application for registration.

The issue in Byers v Overton was whether legal proceedings commenced by the executrix of the estate prior to the grant of probate, were valid. The Court said that they were not.  As set out in the joint judgment of the Full Court, the judge at first instance:

concluded that Ms Byers was not competent to commence the proceeding. Not only did she not have title to the relevant causes of action at the critical times but, despite now having been granted probate, is not assisted by s44(1). (paragraph 9 of the joint decision of the Full Federal Court)

The Full Court considered that there were two issues in the case, namely:

The first issue concerns the vesting effected by s61 of the WPA and, in particular, the meaning of the phrase "deemed to be vested" in that section. The second issue concerns the effect of the statutory relation back under s44(1) and, in particular, whether once probate has been granted any defect in an executor's title to commence proceedings is cured by the retrospective operation of s44(1). (paragraph 10)

Further, the Court stated:

It is trite law that proceedings to vindicate a chose in action can be pursued only by the person who has title to that chose in action or who is entitled to sue in the name of that person; Norman v Federal Commissioner of Taxation (1963) 109 CLR 9 at 27. (paragraph 22)

...

In our opinion Ms Byers had no title to the relevant chose in action until grant of probate.  It therefore follows that at the time this proceeding was commenced and at the time the application was amended she had no standing to commence proceedings such as this and the proceedings were therefore a nullity.  It then only remains to consider whether the statutory relation back in s44 is able to cure the defect. (paragraph 23)

...

[Section 44(1)] operates retrospectively so that on the grant of probate to an executor, the deceased's property vests in the executor "as from the death of such person". (paragraph 24)

...

It is, however, a separate question whether statutory relation back can validate proceedings incompetently commenced. (paragraph 25)

...

[The Court then detailed a line of authorities dealing with the issue]

...

S44(1) retrospectively vests the property of the deceased in the executor.  However, it does not, either in its own words or by implication retrospectively give the executor standing in relation to proceedings commenced when the executor-elect had no title to the property.  The authorities are against such an interpretation and it would need a very clear statement of legislative intention to justify this Court departing from the positions supported by [Norman and Bone] concerning standing to sue (emphasis added). (paragraph 28)

When Ms Byers commenced this proceeding...she had not been granted probate. The effect of s61 of the WPA Act is that she did not at that time have title to the relevant property, namely the chose in action that the estate now seeks to pursue against the respondents. Being without the title to the chose in action, she was not competent to commence proceedings to pursue that right. For reasons given above, the statutory relation back under s44(1) does not cure that defect. The weight of authority and reason leads to the conclusion that this proceeding was incompetently commenced and therefore is, was and remains a nullity. (paragraph 29)

In the present case, the applicant did not hold the relevant title at the time the application was lodged - it was not the registered owner.  Further, Byers v Overton is clear - provisions such as s.72 cannot have the effect of remedying the original defect. In particular, it cannot be read so as to retrospectively grant the applicant the proprietorial interest which is necessary to lodge a valid application, without the very clear statement of legislative intent to which their Honours referred. I do not believe that the situation is altered by the fact that Byers v Overton related to legal proceedings and the present case relates to an application for registration - each are an attempt to exert a legal right.

Accordingly, I am not satisfied that the application was validly brought, nor has the defect been remedied due to the operation of s.72.

Therefore, the decision of the examiner is affirmed, and the application cannot proceed to examination. 

In relation to the filing fee of $3,600, I am bound by Regulation 21.24 of the Trade Marks Regulations 1995 which states that refunds can only be made where there has been an error or omission by a trade marks officer.  There has been no such error in the present case, and therefore, the fees cannot be refunded.  Nor can they be applied to a subsequent application.

Geoff Purvis-Smith
Hearing Officer
25 October 2001