Nike International Ltd

[2000] ATMO 91

TRADE MARKS ACT 1995

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

Re:Trade mark application number 628674(3) - NIKE - in the name of NIKE INTERNATIONAL LIMITED.

Background

Trade Mark Application number 628674 was filed on 29 April 1994. Nike International Limited ("the applicant"), a Bermuda corporation of the USA, sought registration of the word nike, as a defensive trade mark, for all goods in class 3. The statement of goods was amended during examination of the application and the statement now reads as follows: Soaps, perfumery, essential oils, cosmetics, hair lotion, deodorants and dentifrices. The defensive application is based on trade mark registration 355648.

The application was examined and grounds for rejection were raised under section 44 of the Trade Marks Act 1995 ("the Act"), involving trade mark registrations 451283 and 585204. The cited registrations exist in the name of Campomar Sociedad Limitada ("Campomar"), for the trade mark nike, in respect of the following goods in class 3:

451283 - Perfumery products of all kinds and essential oils;

585204 - Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps being goods in class 3.

For the purposes of section 44, the applicant's trade mark is identical to the trade mark the subject of the cited registrations and the goods claimed by the applicant are the same or similar to those goods covered by the cited registrations. Both of the cited registrations have an earlier priority date than that of the subject application, being 29 August 1986 (451283) and 25 August 1992 (585204).

The first examination report, in respect of the subject application, issued on 19 January 1995. On the 22 July 1998, whilst the application remained under examination, the cited trade mark registrations were removed from the Register. The registrations were removed subject to an Order from the Federal Court, per Justice Sheppard, of 20 August 1996[1]. Campomar appealed the decision of Justice Sheppard, but that was dismissed by the Full Bench of the Court - Justices Burchett (dissenting), Sackville and Lehane, of 7 July 1998[2].

[1] Nike International Ltd & Anor v Campomar Sociedad Limitada; United Pharmaceutical Industries (Australia) Pty Ltd & Anor 35 IPR 385.

[2] Campomar Sociedad Limitada & Anor v Nike International Ltd & Anor 41 IPR 252.

The details of the Orders are as follows:

TM 451283 - Expunged by order no. 241 of 1994 of the Federal Court of Australia dated 20 August 1996;

TM 585204 - Expunged by order no. 333 of 1994 of the Federal Court of Australia dated 20 August 1996.

The removal of the cited registrations from the Register allowed withdrawal of the grounds for rejection, which existed under section 44 of the Act, of the subject application. The application was accepted and its acceptance advertised in the Australian Official Journal of Trade Marks on 20 August 1998.

On the 4 August 1998, however, the owner of the preceding cited registrations - Campomar - applied for Special Leave to Appeal the whole judgement of the Full Federal Court. The appeal to the High Court proceeded and a judgement, allowing the appeal, was handed down on 9 March 2000[3]. The trade marks, the subject of registrations 451283 and 585204 (in the name of Campomar), were subsequently reinstated to the Register on 27 April 2000.

[3] Campomar Sociedad Limitada v Nike International Limited [2000] HCA (9March 2000).

Following the reinstatement of the Campomar registrations, the acting Deputy Registrar of Trade Marks informed the applicant (by letter of 8 May 2000) that special circumstances now existed to justify the revocation of application 628674. Before the revocation was to be effected, the applicant was allowed one month from the date of the Deputy Registrar's letter in which to apply to be heard or to request a decision on the written record. On the 8 June 2000, the applicant requested a decision on the written record. The applicant, in regard to the matter of revocation, filed no submissions or evidence.

The Law

Section 38 of the Act deals with the revocation of acceptance of an application and reads as follows:

Revocation of acceptance

38.(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.

The grounds for the proposed revocation of this application fall within paragraph (b) of subsection 38(1) of the Act. This provision allows for the revocation of an application on the basis that, in the special circumstances of the case, the trade mark should not be registered (or registered subject to conditions or limitations). The decision to be made by the Registrar, under the provisions of section 38 of the Act, is a discretionary one.

The first matter for my consideration involves the question of whether there are special circumstances of the kind contemplated by paragraph 38(1)(b). The expression in the special circumstances of the case reflects the wording of paragraph 44(3)(b) of the 1955 Trade Marks Act (as it related to 'withdrawal' of acceptance). The phrase "special circumstances", where it appears in the Act, is generally given a liberal interpretation. That is, what constitutes "special circumstances" is determined on a case by case basis and there is no rigid demarcation between what circumstances are special and what circumstances are not. However, "special circumstances" is not intended to be a 'catch-all' phrase and the status of "special circumstances" must not be readily applied.

The Trade Marks Office Draft Manual of Practice and Procedure ("the Manual") gives some guidance as to what may constitute special circumstances, as provided for by paragraph 38(1)(b). Part 38, item 2.5 of the Manual distinguishes "special circumstances" from instances of "error or omission during the course of examination" (re paragraph 38(1)(a)). "Special circumstances", it says, would apply to situations where errors or omissions have occurred at stages outside the examination process. The examples provided include errors or omissions in the indexing and recording of information (in regards to trade mark applications), which may cause a citation to be missed, and instances where relevant information was not available to the Trade Mark Office at the time of examination.

In the context of section 38, regard must be had to the fact that the Registrar has already accepted the application for registration. The "special circumstances", therefore, must be of sufficient weight to reverse the acceptance delegation, which has already been exercised by the Registrar.

Discussion

In attempting to register the subject trade mark, the applicant was faced with what I consider to be valid grounds for rejection under section 44 of the Act. The basis of the objection under section 44 was eliminated upon the removal of the Campomar registrations from the Register on 22 July 1998, by order of the Federal Court. The subsequent acceptance of the applicant's trade mark proceeded on the basis that the two cited registrations no longer stood on the Register.

However, following the judgement emanating from the High Court appeal sought by Campomar, the trade marks the subject of the cited registrations were reinstated to the Register on 27 April 2000. Upon the reinstatement of a trade mark, the Registrar considers the trade mark never to have been removed. For the purpose of this case, therefore, I must consider only the status of each of the trade mark registrations as it existed prior to removal.

As I have already stated, the subject application was accepted on the basis that the cited registrations no longer stood on the Register. However, as matters stand since the reinstatement of the Campomar trade marks, the cited registrations should now be treated as if their removal from the Register never occurred. On this basis, the acceptance of the application is no longer justifiable and, in my opinion, registration of the applicant's trade mark cannot proceed.

In light of the foregoing, I am satisfied that in the special circumstances of the case, the subject application, as it currently stands, should not be registered in the face of existing trade mark registrations 451283 and 585204.

I shall now consider whether the application can be registered subject to conditions or limitations, as prescribed by paragraph 38(1)(b). I note that the applicant's trade mark is the subject of a defensive application and, as such, the provisions of paragraph 44(3)(a) and subsection 44(4) cannot be considered as a means of overcoming grounds for rejection under section 44.[4] The only possible avenue to overcoming the cited registrations under section 44 is on the basis of other circumstances, provided for by paragraph 44(3)(b). However, at present I cannot see any circumstances under which I could apply the provisions of paragraph 44(3)(b), in the face of the cited registrations. Further, I can see no other viable conditions or limitations under which the applicant's trade mark could be registered.

[4] Re Applications by Mobil Oil Corporation, 32 IPR 535 (1995).

Decision

I find that the removal and subsequent reinstatement of cited registrations 451283 and 585204 constitute special circumstances of the kind contemplated by paragraph 38(1)(b) of the Act. In light of the special circumstances of the case, I find that the applicant's trade mark should not be registered. I therefore revoke acceptance of this application under the provisions of paragraph 38(1)(b) of the Trade Marks Act 1995 and direct that the application be referred to the examiner for re-examination.

Michelle Edlington
Senior Examiner

16 August 2000