Pennys Pty Limited, Re

This matter concerned an application by Pennys Pty Limited for registration of the trade mark STRATHSPEY in class 33, which was initially accepted but subsequently proposed for withdrawal of acceptance. The dispute arose after the examiner became aware that STRATHSPEY is a well-known valley in Scotland associated with whisky production, suggesting the mark might be a geographical name and thus objectionable under paragraph 24(1)(d) of the relevant Act. The applicant sought a hearing to argue against the withdrawal of acceptance, which was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine two primary issues: firstly, whether the application for the trade mark STRATHSPEY had been accepted in error, and secondly, if an error was found, whether the Registrar's discretion should be exercised to withdraw the acceptance. The delegate noted that submissions regarding the registrability of the mark itself would be considered separately in response to an examiner's report or a hearing on that specific aspect. The delegate also considered the meaning of "accepted in error" as being limited to a mistake as to facts or ignorance of facts, rather than a mere change of opinion on interpretation.

The delegate reasoned that the acceptance officer had not been in possession of all relevant facts at the time of acceptance, specifically the significance of STRATHSPEY in relation to whisky production, which was not evident from the reference materials consulted by the examiner at that stage. Information subsequently provided by a third party, highlighting the geographical significance of STRATHSPEY as a whisky-producing region, was deemed pertinent and not to be ignored. The delegate concluded that the application had indeed been accepted in error, as the acceptance officer lacked crucial information. The delegate further exercised discretion to withdraw acceptance, finding that a prima facie objection under paragraph 24(1)(d) should have been raised, and that the absence of opposition and consent from The Scotch Whisky Association did not outweigh the potential for future objections or the public interest. Consequently, acceptance was withdrawn, and the application was referred back for re-examination.