Re Bobart

[2010] ATMO 43

TRADE MARKS ACT 1995

DECISION OF A DEPUTY REGISTRAR OF TRADE MARKS

WITH REASONS

Re:Proposed revocation of trade mark registration number 1201807
CAMEL TANKS and device - in the name of Lorne Bobart.

Deputy Registrar:

Michael Arblaster

Representation:

Trade mark owner:  Dr Robert Burrell of Trademark Central, Registered Trade Mark Attorneys

Decision:

43 2010 ATMO

Section 84A: Registrar not obliged to consider revocation; Factors to be taken into account; Importance of use of the trade mark. Trade mark should not have been registered. In light of the use of the trade mark Deputy Registrar is not satisfied that revocation would be reasonable.

Background

1.     On 28 September 2007, Mr Lorne Bobart lodged an application for registration of the composite trade mark CAMEL TANKS with device, shown below and which I will hereafter refer to as “the Trade Mark:

2.     The application was allocated number 1201807 and following examination it was advertised as accepted for possible opposition on 31 January 2008. There being no opposition, the Trade Mark was entered onto the Register on 12 May 2008, in relation to the following goods in class 19:

Non-metallic tanks (structures); non-metallic water tanks (structures)

3. On 18 September 2008, the Registrar received correspondence requesting her to exercise her discretion, under the provisions of section 84A of the Trade Marks Act 1995 (‘the Act’), to revoke the registration of the Trade Mark.

4.     The request was made on behalf of Mr Lester Ferry, the owner of trade mark 1117417, registered in respect of “rainwater tanks made of plastic” in class 20.  Mr Ferry’s trade mark, which I will refer to as CAMEL or “the Prior Trade Mark”, has a priority date of 26 June 2006. It is shown below:

5.     On 10 October 2008 a delegate of the Registrar wrote to Mr Bobart, the owner of the Trade Mark, giving notice of an intention to revoke registration. That letter indicated that, in the delegate’s view, the Trade Mark should not have been accepted or registered because it was deceptively similar to CAMEL, with an earlier priority date for similar goods and services. The letter invited Mr Bobart to make submissions about the acceptability and registrability of the Trade Mark and to identify any other circumstances which would make it unreasonable for the Registrar to proceed with revocation. After some unacceptably long delays in the Office, and a number of iterations of correspondence, the owner requested to be heard on the question.

6.     As Deputy Registrar, I have statutory powers in relation to the matter and it came before me at hearing in Canberra on 12 March 2010.  Dr Robert Burrell, a trade marks attorney from Trademark Central in Brisbane, appeared on behalf of Mr Bobart. In light of my questions at hearing, Dr Burrell requested that he be allowed to re-present, in declaratory form, some of the material submitted at hearing. I allowed him a further two weeks, which period he complied with.

Statutory Framework

7. The relevant provisions of the Act are as follows:

S84A Registration may be revoked

(1)  Power to revoke

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.

(4)  Prerequisites to revocation decision

The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations 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.

(6)  No duty to consider whether to revoke

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.

8.     Clearly, in the present case, the Registrar has not only considered revoking registration of the trade mark, but has decided to issue a notice indicating her intention to do so.  However, the matter is now before me as the result of a hearing.

The structure and context of section 84A

9. Section 84A is a discretionary provision in the sense that it gives the Registrar the power to revoke the registration of a trade mark where the relevant circumstances exist. The authority to make such a decision is not triggered by a request by another person to do so but exists ex officio.

10.   The construct of the section itself suggests that revocation is not a decision to be taken lightly. The decision to be made is not simply a question of whether a mistake was made in examining the trade mark. Rather, the Registrar must take account of all the circumstance surrounding the registration, whether or not they were known to her at the time. Furthermore, even if she concludes that the trade mark should not have been registered, she must also satisfy herself that “in all the circumstances” it is reasonable to revoke the registration. The need for restraint is reinforced by subsection 84A(4). This imposes a twelve month time limit within which the Registrar is able to effect revocation.

11.   As we have seen, the Registrar is not obliged to consider revocation of registration even if requested to do so (subsection 84A(6)). This latter is an unusual provision, because although

An applicant who seeks review of a failure to decide must establish that the relevant decision-maker had a duty to decide.[1]

it is typically enough to establish that a discretionary power exists because:

the repository of that discretionary power is usually under a duty to consider its exercise, when an appropriate request is made. [2]

[1] See The Laws of Australia, TLA [2.4.139], Legal Online, Thompson Reuters, However, failure to decide, where there is a mere power without a duty, cannot amount to a breach of duty. See Brownsville Nominees Pty Ltd v Federal Commisioner of Taxation (1988) 82 ALR 409.

[2] Aronson and Dyer, Judicial review of Administrative action.

12.   Where there is an express power, even when expressed as permissive, an administrative decision maker may be forced to decide whether or not to exercise that discretion according to the relevant considerations.[3] This is perhaps because a decision maker cannot refuse to exercise a discretion on arbitrary grounds and because a failure to make a decision could be construed as an unreasonable delay.[4] Thus in the absence of subsection 84A(6) a decision not to consider revocation under subsection 84A(1) may amount to an arbitrary decision not to exercise the discretion and as such would be subject to the Administrative Decision (Judicial Review) Act 1997 (the ADJR Act).[5]

[3] Whether by a writ of mandamus under S39B of The Judiciary Act 1903 or by virtue of section 3 of The Administrative Decision (Judicial Review) Act 1997

[4] See section 7 of the ADJR Act of 1977.

[5] The Federal Court may also have jurisdiction under S39B of the Judiciary Act 1903. Similarly the High Court may have original jurisdiction under s75 (v) of the Constitution.

13.   However subsection 84A(6) makes it clear that, in giving the Registrar this discretionary power, it was not Parliament’s intention to establish a corresponding duty[6], nor was its Parliament’s intention that the Court compel the Registrar to consider whether or not to exercise the power under S84A.[7] Thus a prior right holder does not have a right to have a competitor’s trade mark revoked even where this has been registered as a result of the Registrar’s error.

[6] This provision follows similar provisions in the Migration Act 1958 (see for example S417(1) & (7).

[7] In the closest parallel situation, at least in terms of effect, there is a duty to consider removal if a request is appropriately made.

14. At this point it is also appropriate to take account of the status that the Act gives to a registered trade mark. It is personal property (section 21), the owner has the power to deal with the trade mark (section 22) and equities in respect of it may be enforced in the same way as equities in other personal property. The rights arising out of registration include the right to use and to exclude others from use (section 20) and these rights date from the filing date because the registration:

is taken to have had effect from (and including) the filing date in respect of the application for registration. (section 72)

15. Thus, from the moment of entry onto the Register, the registered owner has property rights dating back to the filing date. This gives rise to a further reason for restraint. Although the power to remove a trade mark from the Register (whether for non-use or by revocation) is administrative because the Registrar administers the Act which governs the creation and continuance of trade mark rights, it is a power which has traditionally been held only by the Courts. Moreover, as the High Court of Australia noted in The Queen v Quinn[8], the exercise of these powers bears many of the concomitant features of judicial power. Such a decision requires the determination of both legal and factual questions, has an impact on existing statutory rights, arises out of a dispute between parties[9] and is final in the sense that it has binding force.[10] The decision in The Queen v Quinn was in the context of a non-use action but each of the elements also applies to revocation of registration under section 84A.[11]

[8] The Queen v Quinn; Ex parte Consolidated Food Corporation. 1977. HCA 62; (1977) 138 CLR 1.

[9] In the case of a removal action this is explicit. However, in relation to revocation of registration, where there is a request for revocation, the dispute is only implict while the proceedings themselves are exparte.

[10] Justice Jacobs in Quinn; at [11]. See also Isaacs J in Federal Commissioner of Taxation v Munro (1926) 38 CLR 153 “… the Trade marks Act empowers the Registrar to decide very important controverted facts and law” and to decide “between contestants, questions of fact and discretion, and in doing so with the effect in some way of binding the rights of one or more of the contestants” at [30].

[11] There are two main differences in the effect of the decision, while the effect of revocation may be to enliven the application, it also acts retrospectively so that the registration becomes a nullity.

16. Apart from the sections 84A and 84B[12], the Act only gives the Registrar the power to extinguish rights adhering to registered trade marks in situations where the owner requests it[13] or does not contest it or where there has been non-use.

(i)Even in the case of a non-use situation, where the matter to be decided is a question of fact, the Registrar may refer the matter to the Court (section 94) and, even where there has been no use of the trade mark in the relevant period, the Registrar has discretion not to remove the trade mark from the Register.[14]

(ii)For the reasons outlined above it is not surprising that apart from the factual situation of non-use, the Act envisages that the rights pursuant to the registration of a trade mark may only be cancelled by the Court (Part 8, Division 2).

[12] Section 84B provides that the Registrar must revoke registration of a registered trade mark if within one month of the entry on the Register it becomes apparent to her that a Notice of Opposition (or extension of time to lodge a Notice of Opposition) was overlooked despite being received prior to the entry onto the Register of the trade mark.

[13] The Registrar must remove a trade mark from the Register if requested to do so by the owner, s84

[14] When non-use application is dealt with by the Court it too has discretion not to remove the trade mark even if grounds for removal are established (s 101(3)).

17.   In non-use proceedings the rights cease as and from the date the trade mark is removed from the Register. The decision is a factual one which has the effect of denying the owner rights in the future. Similarly, the date of effect of the cancellation provisions is the date on which the decision to rectify the Register is made, or where cancellations is at the owner’s request the date of that request. In these situations there is no retrospective effect of the decision. On the other hand, section 84C stipulates that revocation of registration applies as if the registration had never occurred. The application is not necessarily forfeit as it may be returned to examination and still have an opportunity to achieve registration. 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.[15] This is not a step that the Registrar can take lightly. Its effect is akin (or perhaps only almost so) to that of a decision that the mark had been invalidly entered onto the Register[16] so that the decision to register is “no decision at all”[17] and can be set aside. In fact, section 84B, which was introduced into the legislation at the same time as section 84A, deals with marks which are registered in the face of a validly lodged Notice of Opposition (or request for an extension of time to oppose). In such a situation (where the Registrar had received a late application for an extension of time to lodge Notice of Opposition) Justice Jacobsen said that “the registration of the trade mark involved an error of law”[18] and ordered that the decision be set aside so that the extension request could be processed and the opposition dealt with.

[15] Although 84C protect the owner and the Comptroller of Customs against a claim of wrongful action based on a right that they reasonably believed to exist, it does nothing to protect the owner’s investment in building its brand or implementing its business plan.

[16] Minister for Immigration and Multicultural and Indigenous Affairs v Bhardwaj (2002) 209 CLR 597. By contrast in the normal course a decision once made will not be open for reconsideration. The Registrar is functus officio and while the decision is open for review or appeal, unless it is quashed or set aside it stands as final. Thus even where a delegate has made a mistake, the ensuing registration is valid.

[17] As per Bhardwaj at [631].

[18] British Sky Broadcasting Limited v The Registrar of Trade Marks [2002] FCA 1556 at [46]

18.   However, even in this straight-forward fact situation, where the entry on the Register was made without the requisite conditions for registration having been met[19], where the facts are all in the Registrar’s knowledge and not in contention, the Registrar has only one month in which to effect revocation. After that time, even where an entry on the Register was clearly invalidly made, section 84A must be used to rectify the entry. Presumably this is because even when a trade mark is clearly invalidly registered, Parliament recognised that in light of use since filing or registration (or other circumstances) it may not be reasonable to revoke that registration.

[19] That is, there was a jurisdictional error of fact arising from a Notice of Opposition, which was lodged with the Registrar prior to registration, but not acted on by her.

19.   The Explanatory Memorandum[20] was written in terms that are consistent with the note of caution. It identifies circumstances where the power of section 84A is not intended to be used. In particular the power should not be regarded as an alternative to the dispute settlement mechanisms otherwise provided by the Act, for resolving competing claims to ownership.

[20] The Intellectual Property Laws Amendment Bill, 2006; Explanatory Memorandum.

20. 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.

21. Inevitably, the Registrar will receive third party letters, requesting revocation of registration, and complaining about the Office’s administration of the Act. In line with her obligations for the proper administration of the Act[21], she will cause such complaints to be investigated.  She does not however have an obligation to consider revocation, and in light of the discussion above she is unlikely to do so where any of the following circumstances exist:

[21] Ensuring due process is followed, that relevant considerations are set out in policy documents and that the Office meets the Government’s expectations about its dealings with the public.

(i)the registration was made as a result of, or subsequent to, opposition or court proceedings, or

(ii)the trade mark was accepted on the basis of use; or

(iii)the matter is a dispute between competing claims to ownership, in which it is clear that the core issue is a matter of contention between the parties and in which evidence will need to be tested by reference to a contradictor,

unless there is:

(i)a strong public interest imperative to do so,

(ii)a suggestion that the registration is contrary to our international treaty obligations,

(iii)clear evidence of obvious maladministration or procedural failure,

(iv)a prima facie case that the trade mark was invalidly registered, or

(v)there was another form of jurisdictional error.

22. Regardless of whether the Registrar chooses to consider revocation, a third party who makes a request of her to do so has no standing in the matter. As previously discussed, the Act expressly stipulates that the Registrar has no obligation to consider the request[22]. If the Registrar chooses to consider revocation of a trade mark then it becomes an ex parte matter between the Registrar and the owner of that trade mark. Similarly, if after applying the tests set out in section 84A the Registrar decides not to revoke registration of the trade mark the third party has no right of review in respect of that decision. This is not a denial of due process, or more generally of natural justice, because that party has forgone the opportunity for review or appeal (either by way of opposition or ADJR) and retains recourse to the Courts for cancellation in the usual way.

[22] S84A(6)

Considerations

23. In the current case, although she had no obligation to do so, the Registrar has considered revocation of the subject trade mark. In doing so, section 84A(1) stipulates that she may revoke registration only where she is satisfied that the trade mark should not have been registered, and only where it is reasonable to do so. Sections 84A(2) and (3) stipulate circumstances the Registrar must consider in deciding these questions. sections 84A(4) and (5) establish as prerequisites for this decision that both the registered owner and any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark, receive notice within a specified period and be given an opportunity to be heard. I note that there is no person recorded under Part 11 in relation to this trade mark.

Relevant date for the purposes of subsection 84A(4)

24. Section 84A(4) requires that notice be sent “within 12 months of registering the trade mark”. Dr Burrell submitted that this pre-requisite had not been met and that revocation would therefore be ultra vires because:

(i)The phrase “within 12 months of registering the trade mark” refers to the “date of registration of the trade mark”;

(ii)The 12 month time period has to be read subject to the general provision in section 72(1)[23];

(iii)Therefore the trade mark is taken to have been registered from the filing date; and

(iv)Paragraph 41 of the Explanatory Memorandum (which refers to entry of particulars of the trade mark onto the Register under the provisions of section 69 of the Act) provides a general and manifestly inaccurate statement of when a trade mark is considered to be registered.

[23] Section 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.

25. I agree with Dr Burrell that the date of filing, which becomes the date of registration once a trade mark is registered, carries particular significance in the scheme set out in the Act. It is the date on and from which the relevant facts are generally considered in making an assessment of registrability[24] and it is the date from which the registration, if granted, takes effect.

[24] Following Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465 (HC); Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd 61 IPR 257 at [30] and more recently Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [54].

26. However, I do not agree that we can simply equate, “the date of registration” which is a defined term under the Act[25] with “the date of registering the trade mark”. On their face the two terms are different and mean different things. I accept that it is arguable that the ordinary meaning of “date of registration” is the date the trade mark is registered. On this reasoning, the two terms are similar. However, sections 6 and 72 of the Act expressly remove this congruence by defining the “date of registration” as the date from which the right, if granted, “is taken to have had effect”, and prescribe that this is the filing date unless there is an earlier claim to priority under the Paris Convention. Moreover, it cannot be argued that the section 6 definition of the phrase “date of registration” should also apply to other similar phrases (such as “the date of registering”).

[25] Section 6 and see also s 72: date and term of registration. The language in question should be contrasted with s 53(2) of the 1955 Act, which created a powerful deeming provision and ensured a different result in Hunter Douglas v Perma Blinds (1969) 122 CLR 49

27. This distinction between the terms is reinforced by the language and structure of the Act elsewhere. Section 11 defines a trade mark as pending from the day it is filed until (relevantly) it “is registered under section 68”. Subsection 68(1) requires the Registrar to register the mark and subsection (2) requires that “on registering the trade mark” the Registrar must give it a number. It matters not that in practice the Registrar allocates a number at filing which is retained if the trade mark is registered. The obligation is that if the requisite conditions are met the Registrar must register the trade mark and, “on registering” it, must allocate a number by which to identify it. Section 69 then describes how the registration is to be effected, namely by entering the particulars onto the Register. These particulars include, by virtue of subsection 69(2)(b), the number which was allocated “on registering the trade mark” under subsection 68(2).

28.   It seems clear to me from the forgoing that “the date of registering the trade mark” is to be understood as the date on which the registration was given effect, and the details entered on the Register, not the date from which from the rights are taken to have had effect. In the event that Dr Burrell is right that the provision is not clear, I consider that the Explanatory Memorandum properly understood also supports this interpretation. Dr Burrell refers to paragraph 41 as presenting a “manifestly inaccurate” view of when a trade mark is considered to be registered.

29.   That paragraph relevantly says:

A trade mark is considered to be registered on the day on which the particulars of the trade mark are entered onto the Register under the provisions of section 69 of the Trade Marks Act.

To my mind this draws clear reference to the operation described above of registering a trade mark under section 68 and giving it effect under section 69 by entering particulars on the Register.

30. If there were uncertainty arising from the Act itself, which I do not concede, I consider that the Explanatory Memorandum itself is clear unless one approaches it with the assumption that it is “manifestly wrong”. If however, one approaches it with an assumption (as I think I must do) that the explanation is correct, then Parliament intended that the 12 month period within which the Registrar must give notice of an intention to revoke commence from the date of the decision to enter a trade mark on the Register.

31. In summary, I consider that the phrase “within 12 months of registering the trade mark” means within 12 months of giving effect to the decision to register the mark under section 68 by entering the particulars on the Register under section 69.

32. Accordingly, the starting date for the relevant period is 12 May 2008, the date on which the Trade Mark was entered onto the Register. Section 84A(4) specifies that the period ends “within” 12 months “of” that date. Section 36 of the Acts Interpretation Act1901 (the AIA) determines the reckoning of time in all Commonwealth legislation. “Within” and “of”, in this context, indicate that the section does not have a contrary intention to the AIA. Therefore the period ends on 12 May 2009, a Tuesday, (which, to be clear, is the last day the Registrar could have given notice). The notice of intention to revoke the registration, issued pursuant to section 84A(4), was dated 10 October 2008. The Registrar therefore met the requirements of the Act by giving the registered owner notice of the revocation proposal well within the statutory time limit.

Should the trade mark have been registered?

33.   Subsection 84A(1)(a) requires a consideration of whether the Trade Mark should have been registered. This does not require a finding that the Trade Mark was “invalidly” registered.[26] It is not a review of the decision, nor a decision about whether jurisdictional error occurred. Rather, it is a straightforward judgment, de novo, in light of the facts now known, about whether the Trade Mark should have been registered.

[26] See the discussion at paragraph 14 above and the citations at footnotes 16 – 18.

34. The notice of intention to revoke cited section 44 of the Act as the basis for the delegate’s view that the Trade Mark should not have been accepted or registered. That section provides relevantly that an application for registration of a trade mark with a later priority date must be rejected if it is deceptively similar to a trade mark registered in respect of similar goods.[27]

[27] I note that s 14(1) defines similar goods as follows:

35.   Are the goods of the Trade Mark “of the same description” as those of the CAMEL trade mark?

(i)The Trade Mark 1201807 is registered for goods in class 19 being:

Non-metallic tanks (structures); non-metallic water tanks (structures)

(ii)The Prior Trade Mark 1117417 is registered for goods in class 20 being:

Rainwater tanks made of plastic.

36.   Dr Burrell argued that the registrations were not in respect of similar goods.[28] He submitted that the specification should be taken as “a considered statement where the description of the goods must be read in light of the rest of the class”. Viewed from this perspective and when considering the differences in the marks, it is, he said unlikely that there is a risk of confusion about the origin of the goods.

[28] The classic tests are set out in Jellinek's Application (“Panda”), 63 RPC 59, Beck, Koller & Company's Application (“Plio”), 64 RPC 76 at page 78, John Crowther & Sons (Milnsbridge) Ltd's Appln (1948) 65 RPC 369 at 372

37.   I accept that the two trade marks are registered for goods in different classes and that the Trade Mark’s specification includes reference to “structures” in line with the class heading of that class.[29] However, the classification is not decisive as to whether two sets of goods are “of the same description”[30]. Moreover, I am required to give consideration to the full range of goods for which the Prior Trade Mark is registered. Rainwater tanks made of plastic are made in a wide range of sizes. To my knowledge some of these are very large and require a concrete base. Both sets of goods, “non-metallic water tanks (structures)”, which have been entered in class 19 and “Rainwater tanks made of plastic”, which have been entered in class 21 are for the purpose of storing water.[31] In fact, the connotation of the Trade Mark itself and the evidence suggest that the use of the Trade Mark is predominantly, if not entirely, in relation to water tanks. Thus even if not, exactly, the same thing, I consider that the goods covered by the two specifications are the same kind of thing and that they are therefore “similar goods”.

[29] Class 19 contains non-metallic building materials and structures.

[30] From re an Application by John Crowther & Sons (Milnsbridge) Ltd. [(1948) 65 RPC 369 at 372]. quoted with approval in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) , at 606–7

[31] It appears that the classification of non-metallic water tanks is a vexed question internationally as well as domestically as this has been the subject of discussion in the NICE working group. On its face the NICE classification system is open to interpretation, even by experienced professionals. Non-metallic water tanks (structures) is listed in class 19; Non-metallic water storage tanks (containers) is listed in class 20 and Tanks (containers) for household use is listed in class 21. I am advised that in general the Office practice is that the three classes can be considered in descending order of size with class 19 being characterised by concrete structures that feed town water supplies, class 20 characterised by large farm or outdoor garden tanks and class 21 characterised by indoor (household) tanks.

38. The second element of section 44 is the similarity of the trade marks. Dr Burrell suggested that the marks were not deceptively similar, that the resemblance between the devices was slight and that caution should be exercised before characterising words which form part of a composite mark as an “essential feature”.[32] It is enough to note that both trade marks contain the word “camel”, an unusual word for a trade mark, although evocative in relation to the storage of water. It is indeed the only word appearing in the Prior Trade Mark and thus must be considered a significant element of that mark (and it is of course reinforced by the device). When considering the words alone, the element CAMEL TANKS clearly contains the distinctive element of the earlier mark CAMEL. Moreover, the later trade mark involves only the additional word “tanks” which adds little distinctiveness to the Trade Mark as a whole when it is to be used in relation to “water tanks”. I thus consider that the hypothetical word marks, CAMEL and CAMEL TANKS alone, would be substantially identical. Although the device element of the later trade mark is slightly stylised it is merely an illustration of the word and does very little to alter the identity of the trade mark as a whole.[33] Word and device carry the same essential idea and impression. This is less true of the second device. As far as I am aware there is no such thing as a “camel tank” so the device does add somewhat to the identity of the mark. That said, when the Trade Mark is used as a badge of origin for water tanks the words, device and goods combine to form a single idea. Similarly although the two devices depict different camels and one has a water tank on its back, they are both clearly recognisable representations of a camel. This is the overriding impression left by the two trade marks. This impression is strongly reinforced by the combination with the words and further reinforced in relation to the relevant goods. The variation between the two marks, in respect of both device and word elements, is such that the marks as a whole convey similar impressions in relation to the relevant goods. Moreover, although large water tanks can be relatively expensive, justifying a certain amount of care in their purchase, I am satisfied that a significant number of people would be given cause to wonder whether the origin of the goods was the same or be confused as to origin of the goods. Following the well established tests, although the marks are not substantially identical I am satisfied that there is a real and tangible danger of confusion. They are clearly deceptively similar.

[32] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAC 196.

[33] E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 (19 May 2010) [at 69]

39.   I conclude that the trade marks are deceptively similar for the same kind of goods. The Registrar was therefore correct in indicating, in the notice of intention to revoke, that the presence of the Prior Trade Mark on the Register should have acted, at least at first instance, as a barrier to registration of the Trade Mark.

40. It is not enough however, for me to conclude that there was an error in examination, whether of process or judgment. Section 84A(1)(a) requires that in order to be satisfied that the Trade Mark should not have been registered I must take account of all the circumstances that existed when the Trade Mark became registered (whether or not the Registrar knew then of their existence).

Surrounding circumstances

41. Sections 84A(1)(a) and 84A(1)(b) both require the Registrar to make her decision “taking account of all the circumstances”. This does not mean that the Registrar must be an active protagonist seeking to discover relevant circumstances to consider. That would be inappropriate in ex parte proceedings. It does mean however, that although the Registrar may take account of any material in her knowledge (such as material on file from examination)[34], the onus rests clearly with the owner and any third parties with an interest to draw relevant information to the Registrar’s attention. The need for procedural fairness means that the Registrar must advise the owner of the trade mark which is proposed for revocation about any third party information on which she intends to rely[35] and must also give the owner an opportunity to raise any other circumstances which they wish the Registrar to consider. That is not to say that the Registrar should take no role in the process. Where material is provided, whether by the owner or a third party, it would be appropriate for the Registrar, if she felt that it was warranted, to seek clarification of any information before acting on it. But this is not activity akin to “discovery”, it is a process by which the Registrar can satisfy herself as to the veracity, relevance and weight to be given to material before her.

[34] Minister for Aboriginal Affairs v Peko-Wallsend (1986) 162 CLR 24 [at 45]. However, in Opposition proceedings although the Registrar is not bound by the rules of evidence, she may discount the weight of material, presented in examination, that was not sworn.

[35] Reg 21.19

42.   During the course of these proceedings Mr Bobart provided a range of evidence.  This includes:

(i)a declaration attesting to the genesis of his trade mark, and to his lack of knowledge of the Prior Trade Mark when applying for his trade mark.

(ii)evidence of use of the Trade Mark dating back to mid-to late 2007.

43.   Dr Burrell argued that it would be unreasonable to revoke registration of the Trade Mark because :

(i)of the passage of time;

(ii)of the nature of this dispute;

(iii)there was no procedural error leading to registration; and because

(iv)the owner has honest use of the Trade Mark.

Protracted delay

44. Dr Burrell cited “protracted delay” as a circumstance which should be taken into account under s 84A(3)(d) mitigating against revocation. He outlined a series of protracted delays between first receiving notice of the Registrar’s intention to revoke and receiving the subsequent advice that their submissions had not been accepted. He argued that during this period his client had continued to use the Trade Mark in the belief that he had a validly registered mark, and even a belief that the Registrar had accepted his client’s submissions. I agree that the more time that has passed between registration and giving notice of an intention to revoke the less likely it is that the Registrar will think that it is reasonable to revoke. However, from the moment that an owner is put on notice that the Registrar intends to revoke registration they are aware of a risk attendant on continued use of the trade mark and aware at least of the possibility of the loss of their registration. If the owner had actively sought speedy resolution of the issue a protracted delay may have worked to make revocation unreasonable. However, that is not the situation here. The owner was, apparently, content to meet the timeframes set by the Registrar and await any further correspondence from her.

45.   The owner of the CAMEL mark on the other hand was not content to wait. Their legal representative was keen to have the Registrar resolve the matter as soon as possible and made numerous representations to this effect. Both stances are perhaps understandable because Mr Ferry was attempting to change the status quo, while Mr Bobart was seeking to maintain it. That said, Mr Bobart’s representatives were not in any sense tardy or unreasonable in the timing of their responses to the Registar, they were simply content to wait upon her. The record is clear that there were protracted delays by the Registrar in finalising this matter. It appears that these arose at least in part out of a desire by the delegate to deal appropriately with the first significant exercise of this power, in a situation that was untested in law and complex in fact. There was an issue as to what process to follow so as to ensure procedural fairness for the owner of the mark in question. Several different attempts were made to gain information both about any circumstances going to the question of whether the mark should have been registered and about circumstances which might not make it reasonable to revoke. All this occurred in the absence of any established process for dealing with requests of this kind, for eliciting the requisite information or any accepted policy against which to assess the information received. None of this provides any mitigation for the Registrar, the delays were unacceptable. It does however suggest the need for such a policy and practice to be developed.

46.   In the case of revocation of registration where the contention is that a prior registered right exists, the relevant circumstances to be considered must include the rights of, and balance of inconvenience to, both parties. In such a case there is another owner with claims whose interests also need to be considered. In this case it was the owner of the first registered mark who was most active in seeking to have the matter resolved and on the balance of inconvenience a protracted delay most inconveniences the party seeking revocation. However, the delay was not in any way due to the behaviour of Mr Bobart or his representative and it would also be unreasonable to penalise him because of the Registrar’s tardiness. That said, because Mr Bobart was on notice of the intention to revoke, I cannot agree with Dr Burrell that the delay alone is sufficient to decide against revocation. Nor, in the context of protracted delays, would I be prepared to accord much weight to use which commences only after the date on which notice of intention to revoke is given.

47. As to Mr Ferry, the owner of the Prior Trade Mark, I accept that it is clearly in his interests for the matter to be resolved expeditiously. There is the continuing uncertainty attendant on having a potential competitor able to use a similar mark, and claim a defence against infringement by virtue of section 122(1)(e) of the Act. If the delay had been caused in some way by Mr Bobart this would weigh heavily. However, that is not the case here and I note that the most expeditious way for Mr Ferry to have had the matter resolved would have been through opposition. Moreover, the conduct of these proceedings did not in any way prevent Mr Ferry from taking action in the court to resolve the matter.[36] There was no obligation to await the outcome of these proceedings nor could he have had any valid expectation of what the outcome would be. Action before the Court may have resolved a wider range of issues than will be resolved in this case. This is not to say that I consider that Mr Ferry should have commenced court proceedings. Rather, it is to note that in the context of inconvenience caused by protracted delays in the Office, in proceedings to which he was not a party, there were other remedies open to him.

[36] I note that it is well established practice for practitioners before the Office, in seeking revocation of acceptance, where a third party may make a request, and the Registrar does have duty to consider it, that third party will, nonetheless, attend to the Opposition process. Although, there is no equivalent time constraint, the cost differential may be decisive but court action was an alternative remedy particularly as a third party has no standing in respect of revocation, even to make a request.

48.   On balance, as a circumstance, special or otherwise I think that the delay makes little difference to whether or not it is reasonable to revoke the registration of the trade mark in question.

The nature of the dispute

49.   Dr Burrell submitted that it was unreasonable to revoke registration because of the nature and origin of the dispute. He indicated that there was ongoing disputation between the parties but that this “was on hold” and that whatever the outcome of the current matter it was likely that there would be court proceedings where the validity and status of the rights will be tested. He indicated that the complainant had not availed itself of the opposition process and despite sending a “cease and desist letter”[37] had taken no other action to prevent his client from using the mark. Dr Burrell asserted that the appropriate place for resolving what amounts to a dispute of ownership, requiring evidence to be properly tested, was the courts.

[37] This letter is dated 27 August 2008, more than 3 months after Registration and at least 15 months after first use of the trade mark by Mr Bobart?

50. Section 84A(3) stipulates that one of the circumstances that must be considered by the Registrar is “any past, current or proposed legal proceedings relating to the trade mark”. If there had been evidence of proceedings such that a Court had, was or would deal with the central issue in this case it is likely that that information would influence the outcome of my decision. In the event, the material presented does nothing more than suggest a possibility of further legal action. There is also a suggestion of “bad blood” between the parties but it is not clear what form this takes nor how it has arisen. It would not be surprising, for example, if the owner of the CAMEL trade mark thought that he had good cause to feel aggrieved. If there were evidence of a long-standing ownership dispute between the parties this would point towards a need to have the matter dealt with in an inter partes environment where sworn evidence can be properly tested. However, that is not the case here.

51.   This raises a further issue about the nature of the question before me. As I have indicated above the proceedings are ex parte and, while I need to be satisfied about the veracity of material before me, it is not appropriate in making that assessment that I assume the role of an advocate for either case. Thus, where the case for revocation of registration is not self evident and needs the presentation and testing of evidence to establish the ownership of the trade mark it could not be said to be reasonable to revoke the registration of the trade mark.

52. It could be argued at this juncture that such a position represents an abdication of the Registar’s proper function; that in considering the issue the Registrar must decide it and cannot abrogate responsibility by leaving the matter for a Court to decide. While I agree with the principle, I reject such a construction of the argument that I have outlined. I have decided the matter, on the basis of the evidence before me, and suggested that no decision should be taken to revoke where the nature of the proceedings is not adequate to deal with the nature of the evidence. In such a circumstance the Registrar could not be satisfied as to the facts and a decision to revoke would not be reasonable. Moreover, section 84A(3) expressly says that in deciding whether it is reasonable to revoke registration of a trade mark the Registrar must consider both legal proceedings relating to the mark and any use that has been made of it. The Explanatory Memorandum stipulates that the provision is not intended to be used to settle ownership disputes or in lieu of other available proceedings whether opposition or cancellation. In the context of ex parte proceedings, any other approach would amount to a breach of procedural fairness.

53.   It might be said that, on the contrary, procedural fairness dictates revocation so that the trade mark can be re-examined and, if warranted, reaccepted so that the issues in question could be dealt with in the opposition process. I reject this argument also. The mark in question was advertised accepted and the owner of the Prior Trade Mark had opportunity to seek to prevent its registration. Mr Ferry could have made a request of the Registrar to revoke acceptance of the Trade Mark, which request the Registrar would have had a duty to consider, and which, in all likelihood, would have succeeded. Furthermore, Mr Ferry also had an opportunity to formally oppose registration, proceedings in which he could have submitted evidence and challenged the evidence tendered by Mr Bobart. For whatever reason, Mr Ferry did neither, but his failure to do so cannot, I think, be the basis of an argument for revocation of registration based on procedural fairness. Where evidence and counter-evidence need to be led and tested, and where the matter needs a contradictor, an ex parte proceeding is not the appropriate forum for resolving the issues.

The validity of the registration – the nature of the “error”

54.   A third circumstance Dr Burrell asked me to consider was that there had been neither procedural error nor error of judgment leading to the registration. He submitted that the mark was properly classified and that ordinary Office practice had been followed. That practice did not consider the two classes to be related and so they were not cross-searched. Dr Burrell is correct about Office practice as far as he goes. However the guidelines for examination also recognise that the cross class references are simply a tool and that there may be instances of confusion even between similar trade marks outside of the related classes.[38] They also dictate an all class search for identical trade marks. Thus Office practice dictates that examiners consider each case on its merits and conduct as much searching as necessary in the circumstances of the case. This issue of Office practice or the seriousness of an error of judgment, if any, is not relevant to the question (under section 84A(1)) of whether a trade mark should have been registered. There, the question is an objective one, about whether the mark should have been registered, in light of the circumstances at the time, whether or not they were in the Registrar’s knowledge. However, I agree that this issue may be a relevant consideration in deciding whether or not it is reasonable to revoke.

[38] See Chapter 4 of the Examiners manual and the ECO-POP decision, 2010 ATMO 09 [at 32 – 38].

55.   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[39] that “a change of opinion as to the registrability of a mark” did not constitute a basis for revocation of acceptance.[40] There is a continuum between a mere change of opinion as to registrability on the one hand and an error of unreasonableness[41] or jurisdictional error (whether of fact or law) on the other hand. In light of my comments [at 11 – 21] above it would not be reasonable, without there being other compelling factors, for the Registrar to revoke registration if the question was only one of a change of opinion. For a decision to revoke registration to be reasonable the fault would need to be towards the other end of the spectrum. In this case, the two trade marks are, if not substantially identical, then almost so. Similarly, although the goods have been categorized in different classes they are clearly the same kind of thing. Finally, while the classes are not cross-searched there is an obligation on examiners to conduct an all class search for identical trade marks and in any case each application must be considered on its merits. While this may not be a matter in which the decision is so egregious that it amounted to an invalid decision it is certainly towards that end.

[39] The provisions of section 38 were changed in 2006 when section 84A was introduced. Previously they required an error or omission or special circumstances to be established.

[40] See Haig Street Wholesalers [1998] 42 IPR 463.

[41] An error of unreasonableness is one to which no reasonable authority could ever have come. See Associated Provincial Picture Houses Ltd v Wednesbury Corporation [1948] 1 KB 223.

Use of the trade mark

56. The fourth circumstance that Dr Burrell asked me to consider was the use that has been made of the mark. To my mind this must carry significant weight. Not only is it the first circumstance that the Registrar must take account of under section 84A(3) but Australia’s trade mark system is a use-based system[42] through which a party can acquire rights. It is not within the power of an administrative officer to make a determination as to rights[43]. Moreover, as we have seen, the only other circumstance where the Registrar may remove a trade mark from the Register, against the owner’s will, is where there has been no use of the trade mark[44] Thus, in the context of revocation under section 84A, where the owner can establish use of a trade mark this will carry significant weight. This is especially where it would have been sufficient to persuade an examiner to accept the application under the provisions of sections 44(3) or (4),[45] or where it would be sufficient as a defence against non-use. In the former case it would be difficult for the Registrar to be satisfied that registration should not have occurred. In the latter, the owner has established at least a prima facie claim that they have rights to ownership. I consider that use post-filing should not be discounted, as it would be in a consideration of honest concurrent or prior continuous use in examination. In that situation the applicant has to establish use sufficient to justify a conclusion by the examiner that, at the date of filing, the applicant already has some rights in the trade mark. In the context of revocation proceedings, the registration itself is prima facie evidence of those rights. Thus at revocation, while use prior to filing must be considered in deciding whether or not the mark should have been registered, in deciding whether it is reasonable to revoke use after filing must also be considered. In this context the question of use goes to whether the rights conveyed by registration have been confirmed or consolidated by use.[46] To the extent that those rights are supported by extensive or at least significant use it would be unreasonable to revoke those rights.

[42] Use (or intention to use) is required for a sign to meet the definition of a trade mark, use by someone other than the owner is the basis for infringement, and non-use can be the basis of removal. Moreover the owner of a trade mark in Australia is the first person to use it, or the first person to apply to register it whichever is the earlier.

[43] As per The Queen v Kirby; Ex parte Boilermaker’s Society of Australia (1956) 94 CLR 254.

[44] In the relevant period.

[45] Which relate to, inter alia, honest concurrent or prior continuous use.

[46] This is the point made by paragraph 51 of the Explanatory Memorandum.

57.    The use must be genuine and in the course of trade. In the context of a recent removal matter[47] the High Court gave this summary:

Whilst a single act of sale may not be sufficient to prevent removal in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine" use judged by commercial standards. It has been recognised by the Court of Justice of the European Communities, dealing with the expression "genuine use" as used in Arts 10 and 12 of Directive 89/104 of the Council of the European Communities, that use of a mark "need not ... always be quantitatively significant for it to be deemed genuine".

In the same decision the Court said:

There was no suggestion in the evidence that the offering for sale and selling ... was for any purpose other than making profit and establishing goodwill in the registered trade mark. It was not contended that the use was fictitious or colourable. In all the circumstances the use was genuine and sufficient to establish use in good faith.[48]

[47] E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 “Gallo” [at 64]

[48] Gallo  [at 65].

58.   In summary:

(i)It must be “bona-fide use”[49], which is genuine commercial use[50], with the primary intention of earning a profit or generating goodwill.[51]

(ii)For use to resist an application for removal it must not be either token nor a charade,[52] but neither does it have to be extensive. Although a single bona fide use may be sufficient to resist removal[53] I consider that it would not by itself be sufficient to make revocation of registration unreasonable in a situation where the trade mark should clearly not have been registered. This will depend on other factors including its honesty, when it began, and whether it can be demonstrated to be part of a genuine intention to make use of the trade mark thereafter in the course of trade.[54]

[49] Woolly Bull Enterprise Pty Ltd v Reynolds [2001] FCR 166 [at 17], Gallo (op cit per Flick J at [189]), Kefir Culture Natural Pty Ltd v Societe Des Produits Nestle SA [2002] ATMO 58 (3 July 2002),

[50] Imperial Group Ltd v Philip Morris & Co [1982] FSR 72 “Imperial”

[51] Imperial [at 52]

[52] Imperial [at 52]; Liquideng Farm Supplies Pty Ltd v Liquid Engineering Pty Ltd [2009] FCAFC 7 (13 February 2009).

[53] Woolly Bull, supra, at paragraph 17, Gallo (op cit per Flick J at [189]),

[54] Imperial [at 53]

59.   In a defence against removal, “good faith” does not involve any element of “honesty or subjective good intentions”.[55] However, to support an argument that revocation would be unreasonable I consider that the use must also be “honest”.[56] In this regard post-registration use should carry significant weight, as long as it commences before the notice of intention to revoke issues. Such use must, I think, be considered to be honest unless there is clear evidence to the contrary. The Act incorporates a presumption of registrability[57] and once registered implicitly contains a presumption of validity. It is reasonable in this circumstance for the owner to note the Registrar’s implicit view that there were no prior registered or pending rights, and the fact that there was no opposition declared, and therefore to rely on its registration. On the other hand use that commences only after the notice of intention to revoke is issued[58], or after a date when it is clear that the owner knew of the other trade mark, or even that continues after those dates, will carry significantly less weight as its “honesty” must then be at least in doubt.[59] Such a situation would significantly discount the value of the use, especially where the use was slight.

[55] Liquid Engineering

[56] The tests that apply to the question of honesty in the context of S43 and S92 also seem applicable here.

[57] Section 33

[58] Use which continues after this may also carry less weight if the

[59] However, even in these circumstances an owner may be able to satisfy the requirements of honesty if they can document intent well before a notice issues.

60.   In the current case Mr Bobart provided evidence of use[60] dating back to mid-to-late 2007, some 18 months before he was informed that the request to consider revocation had been received by the Office. Although the use may have begun prior to filing I am not satisfied that it would have been sufficient to gain acceptance. However, at least from the date of filing the evidence does show significant and increasing use. The evidence, which is in declaratory form, includes both sales and advertising figures associated with the  since that time. Sales revenue, before the notice of intention to revoke was issued, was in the order of millions of dollars, with commensurate expenditure on advertising. The evidence also includes a series of exhibits evidencing a large number of invoices and purchase orders, together with a wide range of promotional and advertising material using the Trade Mark. Together, this material provides a convincing number of examples of the mark in use and I am satisfied that substantial sales have been achieved. The use has been genuine and clearly directed to earning a profit, establishing goodwill and building the business. I also note evidence of sales ranging widely over Queensland and NSW and stretching down into Victoria.

[60] That use was by Camel Tanks Pty Ltd of which Mr Bobart is a director. I am satisfied that the use constitutes “authorised use” for the purposes of the Act and therefore that for the requisite purposes it can be taken as use by the owner (sections 7 & 8 of the Act)

61.   As a result of the evidence I am satisfied that there has been a substantial level of use of the Trade Mark. Although it is not clear that any of this use pre-dates the filing date for the Trade Mark, I accept Mr Bobart’s declaration that he adopted the Trade Mark in good faith, without knowledge of the other trade mark. Because of the confusion over classification I am not satisfied that he must have known of the other trade mark at filing. I note that the evidence is untested and that some of these facts may be disputed by Mr Ferry. However, the appropriate venue for such scrutiny was either opposition proceedings (of which Mr Ferry did not avail himself) or cancellation proceedings through the Court. In the latter forum the evidence from both parties could be suitably tested and the dispute about a claim to ownership could be properly resolved, with both parties having an opportunity to fully present their case.

Other circumstances

62. For the sake of completeness I note that no other circumstances have been brought to my attention for consideration under section 84A(1).

Decision

63.   I have concluded that the Trade Mark is deceptively similar to another trade mark with an earlier priority date for similar goods and services. Because of its timing, there is no use that would have justified its acceptance or registration under the provisions of subsections 44(3) or 44(4). I therefore find, taking account of all the circumstances, that the Trade Mark should not have been accepted or registered.

64.   However, in light of the other circumstances set out in paragraphs 9 – 20 and 49 – 60 above, and especially in light of the continuous and increasing use that has been made of the Trade Mark, I am not satisfied that it would be reasonable for me to revoke the registration.

65. As I am not satisfied that it would be reasonable to revoke registration of trade mark number 1201807 section 84A(1) of the Act does not permit me to do it and I refuse to do so.

Michael Arblaster

Deputy Registrar

Trade Marks

12 June 2010

(1)         For the purposes of this Act, goods are similar to other goods:

(a)         if they are the same as the other goods; or

(b)         if they are of the same description as that of the other goods.