National Cancer Foundation Limited
[2023] ATMO 28
•28 February 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2086028 (class 36) – BROWN NOSE DAY - in the name of National Cancer Foundation Limited.
Delegate: | Nicholas Butson |
Representation: | Luke Merrick of Counsel from List G Barristers, instructed by Greg and Isabelle Tye of Richards & Evans Commercial Lawyers |
Decision: | 2023 ATMO 28 Trade Marks Act 1995 (Cth) – Hearing on intention to revoke registration under section 84A – Trade mark should not have been registered or accepted – Reasonable to revoke upon considering all circumstances – Trade mark to be revoked and returned to examination |
Background
This matter is in relation to a proposal by the Registrar of Trade Marks to revoke the registration and acceptance of registered trade mark number 2086028. National Cancer Foundation Limited (‘the Registrant’) is the owner of the registered trade mark, relevant details of which are reproduced below:
Trade Mark: Brown Nose Day (‘Trade Mark’)
Number: 2086028
Priority Date: 7 May 2020 (‘Relevant Date’)
Specification: Class 36: Charitable fundraising (‘Claimed Services’).
The application for the Trade Mark was filed on 7 May 2020 and examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’).[1] No statutory grounds for rejection were identified during examination and the application was accepted for possible registration. It was advertised as such in the Australian Official Journal of Trade Marks on 8 October 2020.
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
A notice of opposition to registration was not filed during the opposition period and the Trade Mark was entered onto the Register of Trade Marks on 15 December 2020.
On the 25 October 2021, a 3rd party letter was received by IP Australia, requesting the Registrar to consider revocation of the registration of the Trade Mark.
On 16 November 2021,[2] a Deputy Registrar of Trade Marks issued a written Notice of Intention to Revoke Registration (‘Revocation Notice’) to the Registrant. The Revocation Notice stated the Trade Mark should not have been registered and, taking into account all of the circumstances, it was reasonable to revoke the registration. The following rationale was provided:
Section 44 of the Trade Marks Act 1995 prevents the registration of trade marks that are substantially identical with or deceptively similar to an earlier filed trade mark, in respect of similar to closely related goods and services.
Your trade mark is similar to earlier trade mark 490285 530371 909947 1022837 because each contains or consists of the words NOSE DAY and a colour reference.
AND
Your registration contains claims relating to charitable fundraising which are similar to the claims in the earlier registrations relating to fundraising and charitable fundraising.
Given the similarity of the trade marks and the services claimed, there is a risk that consumers would be confused as to the trade origin of services bearing those marks. Therefore, a Section 44 ground for rejection should have been raised against your mark at examination.
[2] Which, being approximately 11 months after the particulars of the Trade Mark were entered onto the Registrar, is compliant with the statutory time limit of 12 months imposed by s 84A(4) of the Act.
The relevant details of registered trade mark numbers 490285, 530371, 909947 and 1022837 (‘Earlier Marks’), of which Red Nose Limited[3] is the registered owner, are listed below:
[3] At the time of examination, SIDS and Kids Limited was the registered owner of each of the Earlier Marks.
Number: 490285
Trade Mark:
Priority Date: 30 June 1988
Specification: Class 36: Charitable services and fund raising services included in this class
Number: 530371
Trade Mark: NOSE DAY[4]
[4] This is a series application made under s 51.
RED NOSE DAY
WHITE NOSE DAY
BLACK NOSE DAY
BLUE NOSE DAY
YELLOW NOSE DAY
GREEN NOSE DAY
Priority Date: 8 March 1990
Specification: Class 36: Fund raising
Number: 909947
Trade Mark:
Priority Date: 18 April 2002
Specification: Class 36: Charitable fund raising services
(This registration also includes claims in classes 16, 20, 24, 25, 28, 30, 35, 41).
Number: 1022837
Trade Mark: RED NOSE DAY
Priority Date: 29 September 2004
Specification: Class 36: Financial services; distribution of funds; chartiable fund-raising services
(This registration also includes claims in class 45).
The Revocation Notice outlined several response options. These included commenting on the proposal, informing the Registrar of any use or circumstances supporting the continued registration of the Trade Mark, and/or requesting to be heard on the matter.
On 13 October 2022, the Registrant informed the Registrar that it wished to exercise its right to be heard in accordance with s 84A(5). In the days prior to the scheduled hearing, the Registrant filed the following material for consideration:
•Declaration of John Thompson, Chief Executive Officer of the Registrant, dated 28 November 2022 with Annexures JT-1 to JT-5 (‘Thompson Declaration’); and
• Registrant’s summary of submissions.
I heard the matter in Canberra on 5 December 2022. The Registrant was represented by Luke Merrick of Counsel, instructed by Greg and Isabelle Tye of Richards & Evans Commercial Lawyers.
I have decided this matter in my role as delegate of the Registrar of Trade Marks.
The relevant provisions
Section 84A relevantly provides:
Registration 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 notification of the proposed revocation to each of the following persons 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.
Section 44(2) relevantly provides:
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Discussion
The Registrar’s powers to revoke the registration of a trade mark were introduced into the Act by the Intellectual Property Laws Amendment Act 2006 (Cth). Their intended purpose was to provide a straightforward avenue of redress by which to keep invalidly registered trade marks off the Register.[5]
[5] Explanatory Memorandum, The Intellectual Property Laws Amendment Bill 2006 (Cth), sch 1, [9] - [10].
The power to revoke under s 84A has been held to be exercised with great caution and not to be taken lightly. It has been stated that revocation of registration is a ‘serious matter’[6] and the act of revocation may be characterised as an ‘extreme course’.[7] To this point, in Mr Lorne Bobart,[8] the Deputy Registrar observed:
But an owner can quite properly assume that the Registrar will only register trade marks where there are no prior rights and, short of bad faith, can quite properly expect that their registration is valid. Thus, following revocation, the rights, which a good faith owner could justly assume were presumptively valid, are undone. This is not a step that the Registrar can take lightly.
…
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.[9]
[6] Aleem Pty Limited as trustee for The Mini-Tankers IP Trust. [2015] ATMO 33, [27] (Hearing Officer Murray).
[7] Mt Shadwell Pty Ltd [2018] ATMO 25, [39] (Hearing Officer Wilson).
[8] [2010] ATMO 43 (Deputy Register Arblaster).
[9] Ibid [17]-[20] (citation omitted).
Should the Trade Mark have been registered?
The first limb of s 84A(1) requires me to be satisfied that the Trade Mark should not have been registered, taking into account all the circumstances that existed when the Trade Mark became registered.
The Act provides that a relevant circumstance includes any error or omission that led directly or indirectly to the registration of the trade mark.[10] In this instance, the failure to identify the Earlier Marks as being deceptively similar to the Trade Mark and containing claims for similar services to the Claimed Services under s 44 was asserted by the Deputy Registrar as constituting such a circumstance.
[10] Section 84A(2)(a) of the Act.
The Registrant has submitted there is no basis for concluding the Trade Mark should not have been registered as this was ‘a mere difference in opinions’, as it has been previously held that a ‘change of opinion as to the registrability of a mark’ does not constitute a basis to justify revocation.[11]
[11] Mr Lorne Bobart [2010] ATMO 43, [55] (Deputy Register Arblaster); Aleem Pty Limited as trustee for The Mini-Tankers IP Trust. [2015] ATMO 33, [26] (Hearing Officer Murray).
It is clear from the evidence of the initial examination, that the examiner did view and identify the Earlier Marks in their examination of the Trade Mark, noting them to be ‘sufficiently different’ on their search report. The Registrant has submitted that the Deputy Registrar considering the same issue and reaching a different conclusion, must mean that the later conclusion is nothing more than a change of opinion. I find this unpersuasive. Simply because different decision makers consider the same facts and come to a finding that contradicts the other, does not mean that there is merely a difference of opinion. An examiner may, upon considering legal tests and requirements under the Act, still reach an incorrect conclusion and fall into error.[12]
[12] Mt Shadwell Pty Ltd [2018] ATMO 25, [20] (Hearing Officer Wilson).
Regardless, s 84A is not concerned with difference of opinion 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.[13] To answer this question I must consider whether the Earlier Marks constitute a valid ground for rejection under s 44 to determine whether the Trade Mark should not have been registered. The consideration undertaken for present purposes is not a review of the original decision made during the examination stage, rather it is independent and made anew.
[13] Ibid [21].
To establish that the Trade Mark should not have been registered, at least one of the Earlier Marks must:
(a)be held in the name of a person other than the Registrant and have an earlier priority date than the Relevant Date; and
(b)be substantially identical with, or deceptively similar to, the Trade Mark; and
(c)be in relation to services that are similar to the Claimed Services; and
(d) there had been insufficient prior use or honest concurrent use of the Trade Mark, and no other circumstances existed which would warrant the acceptance of the application for the registration of the Trade Mark.
(a) Earlier priority date
The Earlier Marks all have an earlier priority date than the Relevant Date and are held in a name other than that of the Registrant. Therefore, this requirement is satisfied.
(b) Substantially identical or deceptively similar
The test for whether trade marks are substantially identical is set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[14]
[14] (1963) 109 CLR 407, 415 (Windeyer J).
In a side by side comparison of the trade marks, I would think the differences of the stated colour, as well as the differing colloquial meaning of ‘brown nose’, as I will discuss further below, create a total impression of dissimilarity rather than resemblance. As such I do not find the Trade Mark to be substantially identical with any of the Earlier Marks. I now turn to consider whether they are deceptively similar.
The term ‘deceptively similar’ is relevantly defined in s 10:
[A] trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
What is meant by ‘likely to deceive or cause confusion’ has been discussed in various decisions. To ‘deceive’ requires the creation of false belief that the goods/services are provided by the same trader. Whereas to ‘cause confusion’ only needs to go so far as to cause a consumer to wonder whether they may come from the same trader.[15] Under these tests, if something is deceptive, it is also almost certainly confusing. But something that is confusing may not also be deceptive.
[15] Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423 (Richardson J).
The test for deceptive similarity requires there to be a real tangible danger of confusion occurring.[16] Unlike substantial identity, this is not a side by side comparison. It involves a consideration as to the impression or recollection that a person of ordinary intelligence and memory would have of the trade marks,[17] in their entirety,[18] informed by the look, sound and ideas they convey.[19]
[16] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
[17] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).
[18] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[19] Re Pianotist Co Ltd’s Application (1906) 23 RPC 774, 777 (Parker J).
In comparing the Trade Mark and the Earlier Marks, I find they contain significant similarities, namely sharing a word component which is structured as the name of a colour, plus NOSE DAY, or simply NOSE DAY solus. Some of the Earlier Marks contain additional content, however, this component is still a significant and memorable part of each of them.
While I do note that the colours mentioned in the Earlier Marks and the Trade Mark are not the same, it is well established that if a trader has adopted a ‘family’ of trade marks, there is an increased likelihood of another trade mark containing similar elements being seen as coming from the same trade source.[20] I would think, that the Earlier Marks which are all owned by the same trader, form such a ‘family’ of trade marks, following the aforementioned structure of a colour plus NOSE DAY or simply NOSE DAY solus. As the Trade Mark follows this same formula, albeit with a differing colour, I would think there is a strong likelihood of confusion occurring.
[20] McDonald’s Inc v Future Enterprises PTE LTD [2007] ATMO 22 (Hearing Officer Williams).
This likelihood is compounded in my opinion, by the doctrine of imperfect recollection.[21] Since in the test for deceptively similarity, the trade marks are not being viewed side by side, it must be considered whether a person who has seen the Earlier Marks before (but may have only their recollection of it to go on), would upon seeing the Trade Mark, be confused as to whether the services offered in relation to it, come from the Earlier Marks’ registered owner or a related trade source.[22] I think considering the imperfect recollection a person may have of each and all of the trade marks and due to the Earlier Marks forming a ‘family’ of trade marks as I have discussed above, there is a real and tangible danger of such confusion occurring.
[21] Re Rysta Ltd’s Application (1943) 60 RPC 87, 108 (Luxmoore LJ).
[22] Arista Ltd v Rysta Ltd (1943) 60 RPC 87, 108 (Luxmoore LJ).
The Registrant has put forward some arguments to the contrary, including that the term ‘brown nose’ has a colloquial meaning of someone who is subservient in order to gain favor from another,[23] and that this would deter people from being confused between the Trade Mark and the Earlier Marks. While I appreciate that some may interpret this meaning from the Trade Mark, I do not agree that it would substantially alter the likelihood of confusion when considering the similarities with the ‘family’ of Earlier Marks. I would think it likely that consumers would still be confused as to whether it is related to the trade source of the Earlier Marks, whether they understand this colloquial meaning or not.
[23] Collins Dictionary (online at 22 February 2023) ‘Brown Nose’.
The Registrant has also noted that it is common for other traders to use colours, devices, days or other measurements of time in trade marks for fundraising and charitable services. Examples are provided of a number of charitable fundraising and awareness campaigns, such as Teal Ribbon Day, Pink Ribbon Day, White Ribbon Day, Wet Nose Day, and Hairy Nose Day. Notably, none of the examples provided consist of a colour in combination with the words ‘NOSE DAY’. Considering the examples provided, I am not satisfied that trade marks featuring the name of colours plus ‘NOSE DAY’, are so common place or the co-existence is to such an extent, that a consumer would not assume a connection between trade marks containing a colour in combination with the words ‘NOSE DAY’.
In light of the above, I find that all the Earlier Marks are deceptively similar to the Trade Mark and therefore this requirement has been made out.
(c) Similar services
In assessing the similarity of the services, the established test is to consider their nature, use and trade channels.[24] There is little doubt that the services are similar here, as all the trade marks have a variety of claims for fund-raising or charitable fund-raising services. As such, I find the Claimed Services to be similar to those of the Earlier Marks in class 36.
(d) Prior use, honest concurrent use, or other circumstances
[24] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).
Submissions have not been made by the Registrant in relation to the exceptions under s 44(3) or s 44(4), however, it is appropriate to consider them briefly.
The exception under s 44(4) ‘prior use’, would require the Registrant to demonstrate use of the Trade Mark prior to the priority date of the Earlier Marks which range from 1988 to 2002. From the submissions and evidence provided, it appears the Registrant has only recently started using the Trade Mark. As such I find this exception is not made out.
The exception under s 44(3)(a) for ‘honest concurrent use’ requires the Registrant to demonstrate a substantial duration and/or volume of use to satisfy me of co-existence of the trade marks in the marketplace from before the Relevant Date.[25] As most of the use put forward in the Thompson Declaration appears to have occurred after the Relevant Date, I do not find this exception is made out either.
[25] John Fitton & Co Ltd.’s Application (1949) 66 RPC 110, 115-116 (Assistant-Comptroller Chisholm).
The exception for ‘other circumstances’ under s 44(3)(b) provides me with the discretion to accept the Trade Mark if because of some other circumstances, it is proper to do so. As no submissions have been provided in relation to this exception, and no relevant circumstances are obvious to me, I do not find this exception to be made out.
Conclusion
I am satisfied that the Earlier Marks constitute a ground for rejection under s 44. Accordingly, having considered all the circumstances that existed when the Trade Mark became registered I am satisfied that the Trade Mark should not have been registered.
I now turn to the second limb of s 84A(1), namely, whether it is reasonable in all circumstances to revoke the registration of the Trade Mark.
Reasonable in all the circumstances to revoke registration
The Registrar is required to consider all the circumstances before her when determining if it is reasonable to revoke registration.[26] Subsection 84A(3) sets out a non-exhaustive list of circumstances that may be considered. These include any use that has been made of the Trade Mark, any legal proceedings involving the registered Trade Mark and/or any special circumstances.
[26] Explanatory Memorandum, The Intellectual Property Laws Amendment Bill 2006 (Cth) sch 1, [35].
Both prior and post filing use of the Trade Mark may be taken into account when considering the reasonableness to revoke registration.[27] As such, the fact that the Registrant’s evidence was not sufficient to justify the application of s 44(3) ‘honest concurrent use’, does not exclude it from establishing that its subsequent use makes it unreasonable to revoke registration of the Trade Mark.
[27] Mr Lorne Bobart [2010] ATMO 43, [56] (Deputy Register Arblaster).
The Registrant contends that there are several circumstances that make it unreasonable to revoke registration of the Trade Mark. Broadly, these may be distilled as follows:
(a) The Registrant relied upon the registration of the Trade Mark and proceeded on the basis that it may act as the registered owner which included investment and marketplace use in relation to the Trade Mark.
(b) That the intention to revoke was brought about by the intervention of the owner of the Earlier Marks and that the revocation process is not the appropriate mechanism to resolve such proprietorship disputes between parties.
(c) That it is not appropriate to revoke due to the process undertaken by IP Australia in relation to the revocation.
(a) Investment, development and future plans relating to the Trade Mark.
The Registrant has submitted that they relied upon the registration of the Trade Mark and proceeded on the basis that it may act as the registered owner which included investment and marketplace use of the Trade Mark. In support of this, the Registrant provided a variety of submissions and/or evidence which I will now consider.
Firstly, the Registrant has submitted that they applied for various web domain names related to the Trade Mark, as well as trade mark registrations featuring the Trade Mark in other jurisdictions. While I appreciate that these are an investment of some kind in the Trade Mark, they are far from a substantial investment and many are for overseas jurisdictions, rather than showing a reliance upon the registration of the Trade Mark in Australia.
The Registrant has submitted evidence of an agreement dated 21 May 2021, with another party relating to licensing agreements. This agreement was an update of a prior agreement from 2015. The Registrant has requested this to be confidential, so I will not discuss it in any specific detail. Notably, only one page of the agreement has been submitted into evidence. From what is before me, the agreement appears to be primarily in relation to how general intellectual property rights (including the Trade Mark) and related finances will be handled by the parties in respect of future activities. While I agree that this shows some planning in relation to the use of the Trade Mark, I am not satisfied it demonstrates a significant investment or development in the use of the Trade Mark itself, nor is it clear that the agreement relates to the Claimed Services.
The Registrant has also submitted that it engaged a 3rd party to create a marketing strategy including a slogan and a logo in September 2021. The Registrant has again requested confidentiality, so I will avoid specific details. The only evidence of this marketing strategy is a slogan and two photographs of an object. Details of the marketing strategy, such as future marketing or advertising activities have not been provided. On the information before me, there does not seem to have been any kind of substantial investment in this marketing strategy.
The Registrant submits it also accepted a proposal with a contractor relating to a website redesign and upgrade on 18 November 2021. The monetary number provided which was paid to the contractor is not insignificant. However, this appears to also have included a redesign of the Registrant’s entire website, not specifically in relation to the Trade Mark itself. In my opinion, upon considering the evidence of the website provided, while it is mentioned, the evidence appears to show very little use of the Trade Mark appearing on this redesign.
The last piece of evidence is that the Registrant engaged a brand agency to assist with establishing its brand as a fundraising organisation. This occurred in May 2022, approximately six months after the Revocation Notice was sent by the Deputy Registrar. I do not think it is appropriate to give this evidence significant weight, as this was entered into well after the Revocation Notice was sent and the Registrant was clearly aware of the intention to revoke, having corresponded with the Deputy Registrar. Regardless, no real or detailed evidence has been provided in relation to what this involved, or how significant the investment costs were.
The potential revocation being an inconvenience to future plans was also mentioned in the Registrant’s submissions. Revocation of registration will always be an inconvenience to the owner of a trade mark and this is why the decision is made with caution and not taken lightly. However, the inconvenience by itself cannot be a deciding factor in determining whether or not it is reasonable to revoke, otherwise the power to revoke would serve no practical purpose.[28]
[28] Mt Shadwell Pty Ltd [2018] ATMO 25, [38] (Hearing Officer Wilson).
In my opinion, the aforementioned evidence does not demonstrate a substantial investment in, or demonstrate notable use of the Trade Mark by the Registrant. Some of the submissions are also vague in detail and as such, I am unable to give them considerable weight.
(b) Appropriate forum
The Registrant has submitted that it is not reasonable to revoke, as in its opinion, the revocation matter was brought abought by the intervention of the owner of the Earlier Marks and that this is not the appropriate forum or mechanism to resolve such disputes between parties. In doing so, the Registrant is referring to the 3rd party letter sent to the Deputy Registrar, as well as the fact other trade marks it owns are currently being opposed by the owner of the Earlier Marks.
To clarify, the current proceeding is ex parte, and the Registrar is not an advocate for either parties case, meaning the revocation should stand on its own merits.[29] The mere fact that the Deputy Registrar was originally made aware of this matter due to a letter from another party, is not in my opinion, a sufficient argument that this matter was, or is, being used to resolve a dispute between parties. Nor is the fact that other trade marks owned by the Registrant are involved in legal disputes, relevant in my opinion, to the focus of the current matter.
(c) The revocation process
[29] Ibid [35], referring to Mr Lorne Bobart [2010] ATMO 43, [51] (Deputy Register Arblaster) and Jack Grieve [2010] ATMO 12, [25] (Hearing Officer Williams).
The last issue relates to submissions by the Registrant that the process was handled incorrectly and as such, it is not appropriate to revoke.
The Registrant submits that the intention to revoke registration of the Trade Mark was only made by the Deputy Registrar, rather than that of a panel. For the sake of transparency and clarification, generally only revocation of acceptance matters are considered by a panel of principal examiners. Revocation of registration matters which carry, as I have previously discussed, a much more serious weight, are generally decided by a Deputy Registrar and others with a higher level of delegation. Regardless, the Act is clear that the Deputy Registrar has the power to revoke registration, having all of the powers of the Registrar herself, with the exception of powers of further delegation.[30]
[30] Section 205(2) of the Act.
The Registrant also submits that the Revocation Notice did not in its opinion, contain sufficient reasoning or information relating to the revocation. The information provided in the Revocation Notice is sufficient to explain the intention to revoke registration due to s 44 grounds for rejection, including the identification of the Earlier Marks and an explanation of the similarities between the Trade Mark and the Earlier Marks, as well as the similar nature of the services. It also set out that the Registrant could provide evidence and/or taking the matter to a hearing. While I appreciate that the Registrant may have preferred a longer explanation, I find the reasoning and information provided was sufficient.
The Registrant also submits that it is inappropriate to revoke due to delays in responding to its further correspondence by the Deputy Registrar. The Registrant was provided with the options in the Revocation Notice of supplying evidence or taking the matter to a hearing by a specific date, but elected to seek an extension of time and also sent correspondence to the Deputy Registrar seeking further information in relation to the matter. While I appreciate that the response times in relation to some of these requests may have been delayed, I am unconvinced this impacts the reasonableness to revoke. The Registrant in my opinion, had sufficient information on the Deputy Registrar’s intention from the Revocation Notice and from then forth, had the option, as set out in the notice, of providing evidence or requesting a hearing.
Conclusion
In coming to a conclusion, I must consider all the above relevant factors and evidence in this matter and balance the seriousness of the error leading to acceptance and registration on one hand, with the use conducted of the Trade Mark, along with the surrounding circumstances relating to the reasonableness to revoke. The similarities between the trade marks and the claimed services are, in my opinion, very strong and the danger of confusion is significant. Furthermore, the evidence of actual use, planning and investment in the Trade Mark, is minimal and lacking in detail. In the context to the established intent of s 84A, my decision is that it is reasonable in the circumstances for the Registrar to revoke registration of the Trade Mark.
Decision
I have found that the Trade Mark should not have been registered and I am satisfied that it is reasonable to revoke registration given all the circumstances.
Section 84C(5) provides that in revoking registration, the Registrar may also revoke acceptance and if she does this, need not re-examine, but may reject the application outright. While it is unlikely considering the evidence that has been supplied that the Registrant may be able to overcome the s 44 ground for rejection, it is conceivable that they may have additional evidence of use that they did not provide to me in this matter. In addition, the error relating to acceptance and registration of the Trade Mark was not made through any fault of the Registrant. As such, I find it is appropriate to revoke registration and acceptance of the Trade Mark, but I do not consider it reasonable to reject the Trade Mark outright. The Trade Mark should be returned to the examination stage.
In accordance with reg 4.12(1)(b) the examination process will start afresh and the period for lapsing will be calculated from the date of the next examination report.
Nicholas Butson
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
28 February 2023
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