Re Clive Edward Butler Rice

[1993] ATMO 9

trade marks act 1955

decision of a delegate of the registrar of trade marks

Re:Application number 538396 to register a trade mark in the name of CLIVE EDWARD BUTLER RICE - Proposal to withdraw acceptance

Application number 538396, in the name of CLIVE EDWARD BUTLER RICE, was lodged on 19 July 1990 for the mark CRICKET SKINS to cover the services ultimately amended to read: "Educational, recreational, entertainment and sporting services, all in the nature of: organisation, staging, production, instruction, entertainments, and amusements; all associated with the game of cricket or to games related thereto or based thereon; and television and radio coverage services connected with the foregoing."  The mark was advertised as accepted in Part A of the Register, with a disclaimer of the exclusive rights to the word CRICKET, in the Official Journal of 20 February 1992.

The acceptance of the mark was subsequently considered for withdrawal on the basis that it had been accepted in error, namely that the acceptance officer was not aware, at the time of acceptance, of information which showed that CRICKET SKINS was an adaption, or modified version, of the game of GOLF SKINS, with prize money - "skins" - being offered at intervals.  Had that information been brought to the attention of the acceptance officer and taken into account, it was considered, then an objection to the mark's registration would have been taken under s.24 of the Act that the mark was descriptive of the services of the application.

The matter of whether or not acceptance of the mark should be withdrawn under paragraph 44(3)(a) became the subject of a hearing before me in Melbourne on 18 September 1992.  The applicant was represented by Mr John Gibbs of Phillips Ormonde and Fitzpatrick.
Mr Gibbs first drew my attention to the discretionary aspect of the sub-section of the Act under scrutiny where, if the Registrar was satisfied that an application was accepted in error, then he may withdraw acceptance (my emphases).  He also pointed to the section in Australian Law of Trade Marks and Passing Off (Second Edition) by D.R.Shanahan where it referred to withdrawal of acceptance.  Some factors which the Registrar might take into consideration before exercising this discretion included the public interest, the applicant's bona fides, the position in other jurisdictions, the balance of convenience and whether or not the mark's acceptance would be opposed.  He said that the Registrar should not decide to withdraw acceptance without considering the fact the applicant was a private individual and such a decision could prove expensive for him, that the trade mark had been advertised as accepted and had not been opposed, that the means to withdraw acceptance had been tantamount to back-door examination, and that the applicant had already achieved acceptance in Class 28 for the mark.

He said that, in the present instance, the proposal to withdraw acceptance appeared to be based on the assertion that the mark CRICKET SKINS had been shown to be descriptive.  It could be inferred from the Office's correspondence on the matter that the examiner had heard of the game of golf skins, that he and the acceptance officer had taken that knowledge into consideration when assessing the present mark's registrability and found no desciptiveness resident in it at the time of acceptance.  A note on the file by the examiner's Section Head obtained under Freedom of Information action said that, "A dialogue (sic) search was done on CRICKET SKINS in response to a query by one of the Senior Examiners.  He thought the mark was not acceptable because the game was just a version of 'golf skins'."  Mr Gibbs said that this indicated that the proposal to withdraw acceptance was based on the difference in judgment by the Senior Examiner mentioned and that of the original examiner (and acceptance officer) which ultimately prevailed.  However, the precedent cases indicated that a change of opinion was not a sufficient ground for withdrawal of acceptance.  He particularly referred here to an Office decision re Remington Inc's Appln (1990) AIPC 90-680 (the Smooth and Silky case), where the Registrar's delegate found that an error was different to a change of opinion.  He said that the implication in the present case was that the acceptance officer had considered the mark in relation to the term GOLF SKINS and had then had a change of mind.

Mr Gibbs also submitted declarations by Messrs. Kausman, Tadgell and Massie, all of whom attested to a good knowledge of both cricket and golf, and also to a lack of knowledge of the phrase CRICKET SKINS used in a descriptive sense.  He said that these declarations went towards the fact that the examiner (and acceptance officer) had made the correct decision initially.

Decision

Sub-section 44(3), as it relates to the matter in hand, reads as follows:

Where, after the acceptance of an application for registration of a trade mark but before the registration of the trade mark, the Registrar is satisfied-

(a) that the application has been accepted in error;...

the Registrar may withdraw the acceptance and proceed as if the application had not been accepted.

I am therefore required to decide, firstly, if the mark was accepted in error and, secondly, if the Registrar's discretion should be exercised to withdraw acceptance.

In the Smooth and Silky case, supra, the Hearing Officer said that there was a paucity of trade mark decisions relating to withdrawal of acceptance but, in applying decisions of the Deputy Commissioner of Patents in relation to a Patents matter and the High Court in relation to sub-section 44(3):

...'accepted in error' must thus be restricted to mean acceptance of a trade mark where the acceptance officer is either mistaken as to the facts or in ignorance of the facts.  It cannot be extended however to the reversal of a decision to accept when there is no more than a change of opinion as to the way the facts should be interpreted.

Mr D.R.Shanahan, in his book on trade marks says at p.62 regarding the Registrar's discretion to withdraw acceptance:

This power is used infrequently, but the Registrar will withdraw acceptance where it is found, for example, that the examiner has missed a relevant dictionary meaning or an earlier registration that is clearly in conflict

In the present case, it is evident from the case file that the examiner and acceptance officer knew about the game of GOLF SKINS but did not make the connection between that and the way a CRICKET SKINS game would work.  The mark was therefore accepted.  When advised by another Senior Examiner from Examination Section that he thought the mark was not acceptable because the game was just a version of GOLF SKINS, an online data-base search - DIALOG INFORMATION SERVICES - was instituted to ascertain the situation.  The search revealed a Reuter Newsagency report which explained the basis of a CRICKET SKINS game and how it had been adapted from the rules of the game of GOLF SKINS with prize money (skins) at intervals earned during a game of cricket.

On this basis, I think it is fair to say that the mark had been accepted "in error" as the acceptance officer had been ignorant of the facts which might have been used to determine the mark's registrability, one of the criteria mentioned in the Smooth and Silky decision, supra, and also in Shanahan's book.  In my opinion, it is not a case of a change of mind by the acceptance officer or of another examiner's judgment taking precedence.  It is the discovery of information, not previously available which created the situation of a possible objection to the mark's eligibility.  Mr Gibbs argued that a normal search did not usually include South African newspapers and also that one newspaper report did not indicate that the mark, allegedly coined by the applicant had become generic.  However, these are things best left to the examination process - except I will note here that the DIALOG search revealed a news item from Reuters Information Inc, an international news carrier which provides services in Australia.

Having established that the mark was accepted without the acceptance officer being fully aware of the facts and therefore in error, I now turn to the matter of whether the Registrar's discretion should be exercised to withdraw acceptance.  Mr Gibbs mentioned at the hearing the factors which I should consider in this regard such as the public interest, the potential cost to the applicant, the position in other jurisdictions and the fact that no opposition had been lodged despite the mark's advertised acceptance.

I have given the matter some deliberation and have come to the conclusion that the mark's acceptance should be withdrawn and the examination process restarted.  In my opinion, the public interest would best be served by a full disclosure of the facts, with the applicant able to argue his case.  It will, unfortunately, be of some cost to the applicant to continue the prosecution of the case but this is unavoidable in the circumstances.  The applicant will have a fresh 12 month period within which to overcome any objections raised in the examiner's report which will issue after acceptance is withdrawn and, should he prove successful in eventually regaining acceptance, the mark's registration will, because of the effect of section 53(2), extend from the date on which the application was lodged.  It is true that the mark has been registered in South Africa and perhaps in other jurisdictions.  However, the statutory requirements may differ in other countries and it is the Australian Register which is my concern here.  Additionally, the mark's Australian acceptance in other classes has no effect here as the mark may not be descriptive of the goods in question.  The fact that opposition has not been lodged is of no real consequence in determining the matter as it may be that, at this stage, no other providers of such services wish to use what may be a descriptive term in relation to those services.

In summary, then, I find that the mark was accepted in error and that the Registrar's discretion under s.44(30(a) should be exercised to withdraw the acceptance, and that examination of the mark be commenced afresh.

Ian Forno
Hearing Officer

4 February 1993