Proposed revocation of acceptance of trade mark application number 2074402 (classes 35, 37, 39, 41, 42, 43, 44 and 45) – VALIANT GLOBAL DEFENSE SERVICES and device – in the name of Valiant Integrated Services LLC.
[2021] ATMO 45
•27 May 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReProposed revocation of acceptance of trade mark application number 2074402 (classes 35, 37, 39, 41, 42, 43, 44 and 45) – VALIANT GLOBAL DEFENSE SERVICES and device – in the name of Valiant Integrated Services LLC.
Delegate: Nicole Worth
Representation: Lynne Lewis and Shariqa Mestroni, Bird & Bird law firm
Decision: 2021 ATMO 45
Trade Marks Act 1995 (Cth) – s 38 – whether acceptance of application ought to be revoked – s 44 – similarity of services – cannot conclude application should not have been accepted – acceptance not revoked.
Background
1. On 9 March 2020 Valiant Integrated Services LLC (‘Applicant’) filed application number 2074402 to register the trade mark detailed below. Note that the services listed below were amended prior to acceptance, which will be shown later.
(‘Trade Mark’)
Class 35: Facility Management.
Class 36: Contingency Contracting.
Class 39: Supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of documents, packages, goods, raw materials, and other freight for others by air, rail, ship or truck; transportation and delivery services, namely, providing warehousing of goods and supply chain logistics and reverse logistics services, namely, receipt, handling, storage and shipment of goods; transport, delivery, packaging, and storage of food; Subsistence and Commodity Supply Chain; Expeditionary Infrastructure.
Class 41: Live and individual training namely ground LVC training; exercise support in the field of sea and air LVC training.
Class 42: Construction Management; engineering and analysis in the field of component and combatant command and other government Agency analytical services, force modernization and protection, human intelligence, logistics, course design and development, and crisis and deliberate planning.
Class 43: Providing of food and drink in aid missions to persons in need worldwide; emergency relief services, namely, emergency shelter services and providing temporary housing accommodations; missions support services.
Class 45: Providing information in the field of emergency and disaster planning and preparedness to ensure health, safety and survival; security guarding of facilities.
2. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’). The examiner issued an adverse examination report raising several issues relating to the specification of services as well as a ground for rejection under s 44 of the Act. The basis for the ground for rejection was prior trade mark registration 1686565 comprising the word VALIANT in plain text. The full services of prior registration 1686565 are given later in this decision, for now it is sufficient to note that it specifies broad ranges of business services in class 35 and financial services in class 36. In order to overcome the ground for rejection the examiner suggested amending the services so that any similarity to those of the prior registration was removed. The examiner further suggested that the deletion of class 36 would overcome the problem.
3. The Applicant responded by requesting several amendments to its services, including the deletion of class 36.
4. The examiner issued a second adverse report explaining that some of the requested amendments were also vague or contained services outside of the class claimed, and that further information regarding their nature was required. In respect of prior registration 1686565 the examiner stated that whilst class 36 had been deleted and the s 44 ground for rejection overcome, it could be reinstated depending on the clarification of other services of the Applicant.
5. The Applicant responded by providing further information about its services and requesting several amendments which it considered put its application in order for acceptance.
6. The examiner made the requested amendments and accepted the Trade Mark on 26 November 2020 in respect of following services.
Class 35: Facility Management; Subsistence and commodity supply chain services being in the field of demand forecasting order management and analysis, purchasing management and strategic sourcing, and inventory management and asset management; Procurement of contracts (for others); procurement services for persons in need, namely purchasing food and non-food items and services such as transportation and warehousing of the aforementioned items for persons in need.
Class 37: Expeditionary infrastructure services being equipment maintenance, expeditionary construction management.
Class 39: Supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of documents, packages, goods, raw materials, and other freight for others by air, rail, ship or truck; transportation and delivery services, namely, providing warehousing of goods and supply chain logistics and reverse logistics; services, namely, receipt, handling, storage and shipment of goods; transport, delivery, packaging, and storage of food; distribution, and freight forwarding; Expeditionary infrastructure services being air and ground transportation, and logistics services.
Class 41: Live and individual training namely ground LVC (Live, Virtual and Constructive) training; exercise support in the field of sea and air LVC (Live, Virtual and Constructive) training; interpretation and translation services.
Class 42: Construction Management; engineering and analysis in the field of component and combatant command and other government Agency analytical services, force modernization and protection, human intelligence, logistics, course design and development, and crisis and deliberate planning.
Class 43: Providing of food and drink in aid missions to persons in need worldwide; emergency relief services, namely, emergency shelter services and providing temporary housing accommodations; missions support services, namely, operations support being the provision of temporary accommodation and catering; expeditionary infrastructure services being in the field of food services.
Class 44: Expeditionary infrastructure services being life support services.
Class 45: Providing information in the field of emergency and disaster planning and preparedness to ensure health, safety and survival; security guarding of facilities.
7. As a result of an internal review, on 14 December 2020 a senior examiner issued a Notice of Intention to Revoke Acceptance (‘Notice’). The Notice stated:
Trade mark application 2074402 was advertised as accepted in the Official Journal of Trade Marks on 26 November 2020. However, it has now come to my attention that the trade mark should not have been accepted.
This is because the application was accepted following the withdrawal of grounds for rejection under s 44 of the Trade Marks Act 1995 (‘the Act’) which had been raised in relation to the earlier trade mark 1686565, as a result of amendments made to remove conflicting services in class 36. However, at the time that these amendments were made, changes were also made to class 35 which had the effect of clarifying that the application also contained additional conflicting services in this class. That is, the broad business advisory and consultancy services claimed in class 35 by the earlier trade mark conflict with the applicant’s various claims in class 35 such as their claims for procurement and their subsistence and commodity supply chain services.
Given that the earlier trade mark consists only of the word VALIANT and this word is wholly contained within your trade mark as the leading and most memorable word element, and the applications contain similar services in class 35, there is a high likelihood of consumer confusion between the trade marks, and the ground for rejection under s 44 of the Act should have been maintained.
8. The Applicant was given an opportunity to respond by either providing written submissions or requesting a hearing. It requested a hearing and so on 2 March 2021 I, as a delegate of the Registrar of Trade Marks, heard the Applicant regarding the intention to revoke acceptance. Lynne Lewis and Shariqa Mestroni of Bird & Bird law firm represented the Applicant, making verbal and written submissions on its behalf.
The Law
9. Section 38 of the Act gives the Registrar a discretionary power to revoke the acceptance of an application to register a trade mark. That section is as follows:
Section 38 – Revocation 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.
(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 decision to revoke acceptance is therefore reliant upon two factors, broadly being that the application in question should not have been accepted and that it is reasonable to now revoke acceptance, taking into account the circumstances existing at those times.
The Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 2006 explains that the purpose of s 38 is to remedy acceptances that have been made in error. If the error is realised before a trade mark proceeds to registration, the Registrar has the power to revoke the acceptance and examine the trade mark once again, thus providing a simple procedure for remedying deficiencies before a trade mark proceeds to registration. Under s 38(1)(a) the Registrar is to take account of any circumstance that existed, known or unknown at the time, which should have prevented acceptance. This may include an error of judgement or omission on the part of the examiner, or information about the trade mark that was not available to the Registrar at the time of examination. The consideration under s 38(1)(b) is not limited to circumstances as they existed when the trade mark was accepted, and the Registrar is not limited in what he or she may consider. The only requirement is that the Registrar be satisfied revocation is reasonable, taking account of all of the circumstances. This provision ensures that the Registrar will be in a better position to effectively keep invalidly accepted trade mark applications from becoming registered, thus protecting the public interest.
The effect of revocation under s 38 is that the application is taken to have never been accepted and the application is returned to the examination phase of the application process.
Section 38(1)(a)
The first limb of s 38 is a consideration of whether the application should not have been accepted, taking into account all of the circumstances that existed at that time.
A number of principles have been borne out of various decisions of Registrar. The delegate in Globalscope Pty Ltd noted:
[T]he fact that the examiner did consider the conflicting trade marks is a circumstance existing at the time of acceptance which may be taken into account. Having said that, it is not a determinative factor, because despite all best efforts and due consideration of the authorities an examiner may nevertheless come to a conclusion that is incorrect in law. Section 38(1)(a) of the Act, when seen in light of the legislative intent, clearly envisages such a scenario.[1]
[1] [2016] ATMO 14, [19].
This is to be balanced with the delegate’s comments in Aceto Balsamico Del Duca di Adriano Grosoli S.r.l.:
Clearly revocation on the basis of a change of opinion is to be avoided at all costs. A delegate of the Registrar has already exercised their discretion to accept and, in addition, the validity of all acceptances would be more tenuous if they could be overturned so readily.[2]
[2] [2008] ATMO 2, [33].
The delegate in Mr. Lorne Bobart further elaborated (references omitted):
There will be occasions when different delegates reviewing exactly the same material and applying the same law have a different opinion about the appropriate outcome. It was well established under the provisions of section 38 as they previously existed that a ‘change of opinion as to the registrability of a trade mark’ did not constitute a basis for revocation of acceptance. There is a continuum between a mere change of opinion as to registrability on the one hand and an error of unreasonableness or jurisdictional error (whether of fact or law) on the other hand.[3]
[3] [2010] ATMO 43, [55].
Additionally, the delegate in Re Jack Grieve articulated the principle that:
It is utterly inappropriate for a delegate, in assessing the merits of revocation of an acceptance, to take on the role of a protagonist. Or, to put it another way, the case for revocation ought to stand on its own merits. If those merits need an advocate to lead evidence or counter-evidence, and to articulate the case for revocation, it is hard to see how this would be appropriate.[4]
[4] [2010] ATMO 12, [25].
Bearing these principles in mind I turn to s 44 of the Act. The basis for the proposed revocation is that the ground for rejection under s 44 should have been maintained. That section states, relevantly for present purposes:
44 Identical etc. trade marks
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 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.
Subsections (3) and (4) of s 44 deal with acceptance of trade marks on the basis of honest concurrent use, prior continuous use or other circumstances making registration proper, none of which have been asserted here.
The details of prior registration 1686565 are as follows:
Trade Mark: VALIANT
Priority Date: 13 April 2015
Class 35: Collecting business information; Compilation of business information; Computerised business information services; Providing business information via a web site; Provision of business information; Arranging price quotations (for others); Cost price analysis; Price analysis services; Price comparison services; Business consultancy; Business consultancy services relating to the marketing of fund raising campaigns; Business consultancy services relating to the promotion of fund raising campaigns; Business advisory services
Class 36: Advice regarding credit; Advisory services relating to credit; Consultancy services relating to credit; Consultations relating to credit; Credit (financing); Credit character investigations and reporting; Financial credit services; Insurance services relating to credit; Preparation of credit rating reports; Preparation of credit reports; Provision of credit; Provision of credit facilities; Provision of credit information; Provision of credit rating; Provision of credit rating reports; Revolving credit securities; Revolving credit services; Advisory services relating to (financial) risk management; Advisory services relating to banking; Advisory services relating to finance; Advisory services relating to financial matters; Advisory services relating to financing; Advisory services relating to insurance; Advisory services relating to loan services; Debt advisory services; Financial advisory services; Financial advisory services for companies; Financial management advisory services; Advice regarding lending services; Commercial lending; Corporate lending; Financial lending; Loans (financing); Administration of financial affairs; Brokerage services relating to financial instruments; Collection of financial information; Computerised financial services; Conducting of financial transactions; Consultation services relating to financial matters; Consultations (Financial); Financial advice; Financial analysis; Financial assessments; Financial banking; Financial brokerage; Financial consultancy; Financial consultation services; Financial evaluation (insurance, banking, real estate); Financial exchange services; Financial information services; Financial intermediary services; Financial services; Financial transaction services; Preparation of financial analyses; Providing financial information via a web site; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Provision of financial information; Provision of financial information via an online calculator; Provision of information relating to financial services; Provision of online financial calculators; Brokerage services relating to debt instruments; Commercial mortgage brokerage; Money brokerage; Corporate financing; Financing services; Loan financing; Consultancy services relating to finance; Corporate finance consultancy.
In my estimation the crux of the matter here is whether and to what extent the services of each party are similar.
Similar services are defined in s 14(2) of the Act as services that are the same, or of the same description, as the other services. The term ‘of the same description’ casts a wider net than ‘the same’: it is a term of art to be understood ‘in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to deception or confusion’.[5]
[5] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265, [27], cited in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, discussing the ‘term of art’ at [275]-[286].
Principles for the comparison of goods, subject any necessary qualification, apply also to the comparison of services.[6] The Full Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) described them in the following terms:
[6] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) [2017] FCAFC 56; MID Sydney Pty Ltd v Australian Tourism Company Ltd [1998] FCA 1616.
As to whether impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:
(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence…
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumer of the services perceive the services…[7]
[7] Accor, ibid. [339].
The Applicant referred me to Singtel Optus Pty Limited v Optum Inc[8] wherein these principles, particularly the first, were applied. There the comparison of services was somewhat similar to that here: between broad business and management consultancy services and various specific services in class 35, in that case related to a healthcare business. Davies J found that services described as, for example, ‘business consultation in the fields of healthcare, health benefits and healthcare systems’ were of the same description as ‘General business consultancy services’ and ‘Management consulting in this class [class 35]’, stating:
[I]t can be concluded from the language used that the inherent character of the services is the same or at least of the same description, namely that of business consultancy and management consulting services. In respect of Optum’s services [the former example given above], the fact that those services are more prescriptive and specific than the OPTUS registered services [the latter example given above] does not gainsay the inherent character of such services as business consultancy and management consulting services.[9]
[Emphasis added]
[8] [2018] FCA 575, [148]-[186].
[9] Ibid. [157].
On the other hand, Davies J also found that the specific services ‘medical cost management’, ‘medical and healthcare cost/price analysis’ and ‘organizing and administering networks of healthcare providers’ were not of the same description as ‘General business consultancy services in [class 35]’ and ‘Management consulting in [class 35]’:
It cannot be concluded just from the language used that the inherent character of the services is the same or of the same description. Singtel argued however that “medical cost management” and “medical and healthcare cost/price analysis” services are the same because such services are encompassed by the broadly described general business consultancy services and management consulting services.
It does not follow that the services are to be characterised as the same because of the scope of the broadly described OPTUS registered services.
…
In the present case, it is not evident as a matter of language that “medical cost management” and “medical and healthcare cost/price analysis” services would ordinarily be described as “general business consultancy” and “management consultancy” services. Nor can it be said, in my view, that “medical cost management” and “medical and healthcare cost/price analysis” services have the same inherent character as “general business consultancy” and “management consultancy” services just because such services might be encompassed within the broad specifications of the OPTUS services. Furthermore, the evidence does not enable that conclusion to be drawn.
…
Likewise, it is not evident as a matter of language that the service listed as “organizing and administering networks of healthcare providers” would ordinarily be described as “general business consultancy” and “management consultancy” services and such services are not to be regarded as having the same inherent character for the reason alone that such services might be encompassed within the broad specifications of the OPTUS services. Furthermore, it is not able to be concluded on the evidence that such services are the same or of the same description as “business consultancy” or “management consultancy” services.[10]
[Emphasis added].
[10] Ibid. [162]-[167].
Similarly, the Full Court in Accor commented, regarding the similarity between ‘commercial real estate agency services’ and various apartment rental and letting services:
We do not accept that it is open to conclude as a matter of judicial knowledge, absent any evidence, that the relevant services, in fact, “plainly overlap”. One imagines that there is some degree of overlap between “commercial real estate agency services” and aspects of some of the other services but the degree, boundaries and measure of the overlap are unclear. It seems to us that the resolution of any ambiguity about that matter would necessarily require evidence going to the degree, boundaries and measure of any overlap.[11]
[11] Accor, [190], although in that case their Honours found no reason to disturb the finding that, in effect, registration in respect of ‘commercial real estate agency services’ gave rights also in respect of the various rental and letting services as services of the same description.
Against this backdrop I turn to the services at issue here. The services described in the Notice are shown in the table below. I note that the Notice does not limit the class 35 services of the Trade Mark said to conflict with the prior registration and so all of them are listed here.
| Prior registration 1686565 | The Trade Mark |
| Class 35 Business consultancy. Business advisory services. | Class 35 Facility management. Subsistence and commodity supply chain services being in the field of demand forecasting order management and analysis, purchasing management and strategic sourcing, and inventory management and asset management. Procurement of contracts (for others). Procurement services for persons in need, namely purchasing food and non-food items and services such as transportation and warehousing of the aforementioned items for persons in need. |
Both ‘business consultancy’ and ‘business advisory services’ are extremely broad descriptions. They are difficult to demarcate because a vast array of services and subject matters could be said to be of the type a person in business might wish to receive advice upon. There is no evidence before me, either in the examination file or in the Applicant’s submissions, that goes to what is ordinarily understood to be encompassed by those services. Having said that their inherent characteristics would seem to be, as a function of the language used to describe them, general in nature.
In contrast, the Applicant’s services are very specific, and also relatively unusual (with the exception perhaps of ‘facility management’). The following information sheds some light on their nature. The Applicant describes itself as:
[A] mission support organisation renowned for delivering the full continuum of support services to U.S. Government agencies and allied organisations engaged in defence, aerospace, national security, intelligence or civil missions.
In its request to amend its specification the Applicant gave the following insight into its services:
(a) on reflection, the Applicant believes that “subsistence and commodity supply chain services being in the field of demand forecasting order management and analysis, purchasing management and strategic sourcing, and inventory management and asset management” in class 39 more appropriately belongs in class 35. The services that are intended to be covered relate to the Applicant’s services as a food distributor responsible for the supply and delivery of semi perishable and perishable items. As such, the aforementioned services require the Applicant to forecast the demand of those items and ensure that certain level of the items are maintained at the Applicant’s warehouse facilities at all times. In doing so, the Applicant engages in inventory and warehouse management function. Further, the Applicant must determine how and where to obtain products as well as forecast delivery of those items via sea, air and land;
(b) the Applicant agrees to delete the following items in class 39: “Expeditionary infrastructure services being in the field of food services, life support services, equipment maintenance, expeditionary construction management and supply, procurement”, which are dealt with below. The aforementioned services relate to the Applicant being required to rapidly supply food, life support, infrastructure, construction management and procurement services when contingencies or unforeseen events occur;
…
(d) the Applicant proposes to move “supply and procurement” from class 39 to class 35 and amend the description to: “procurement of contracts (for others); procurement services for persons in need, namely, purchasing food and non-food items and services such as transportation and warehousing of the aforementioned items for persons in need”. Having regard to (b) above, the Applicant believes that the aforementioned services more appropriately belong in class 35.
I bear in mind that the assessment under s 44 is made according to the notional use to which the Trade Mark may be put, and so the above context given by the Applicant does not limit the services to those provided by like entities. Nonetheless, adopting the ‘common sense business view’ espoused in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd[12], I consider it unlikely that a person seeking the very specific services of ‘subsistence and commodity supply chain services being in the field of demand forecasting order management and analysis, purchasing management and strategic sourcing, and inventory management and asset management’ and ‘procurement services for persons in need, namely purchasing food and non-food items and services such as transportation and warehousing of the aforementioned items for persons in need’ would approach a general business consultant or advisor in order to obtain them.
[12] supra, note 3.
In regard to ‘facility management’ and ‘procurement of contracts (for others)’ I am not satisfied that the inherent nature of general ‘business consultancy’ or ‘business advisory services’ are so clearly inclusive of the aforementioned services that the revocation could be said to stand on its own merits. I find that in order to positively satisfy myself that the respective services were indeed similar I would need evidence (either by my own hand, which would be contrary to the principle noted at paragraph 15, or the Applicant’s), of which there is none.
In my estimation the decision of the examiner to accept the application was not unreasonable, and there is no further information on the examination file to support the contentions made in the Notice. For the reasons discussed above, I am not satisfied that the application should not have been accepted, taking account of all the circumstances existing at that time. Accordingly, the first limb of s 38 is not satisfied.
Decision
I am not satisfied that the application should not have been accepted and, accordingly, I decide not to revoke the acceptance.
Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks
27 May 2021
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