Re Haig Street Wholesalers Pty Ltd

[1998] ATMO 21

Trade marks act 1995

decision of a delegate of the registrar of trade marks with reasons

Proposal to Withdraw Acceptance of Trade Mark Application No 721876 in the Name of HAIG STREET WHOLESALERS PTY LTD

Background

Haig Street Wholesalers Pty Ltd, a Victorian company (“the applicant”), applied on 15 November 1996 to register the trade mark

in respect of the goods “Pet and aquarium products”, being goods in International Class 31.

A first examiner’s report was issued on 27 April 1997 raising objections to registration of the trade mark under s41 of the Act, that the trade mark was not capable of distinguishing the goods of the applicant from similar goods of other persons being of excellent quality, and also under s44 of the Act, that the trade mark was substantially identical with, or deceptively similar to, the trade mark

PETS CHOICE

registered in respect of the goods “Pharmaceutical, veterinary, sanitary preparations; disinfectants and fungicides”, being goods in International Class 5.  The specification of goods of the application was also queried on the basis that some pet and aquarium “products” could fall into classes other than 31.

The applicant responded to the examiner’s report on 7 May 1997 alleging that it did not manufacture or sell any pharmaceutical, veterinary, sanitary preparations or disinfectants or fungicides under its trade mark.  It further explained that it supplied only animal foodstuffs being: rabbit and guinea pig food, shell grit and sand products for birds, rat and mouse mix and fish food under the trade mark.  Some examples of the packaging used by the applicant was enclosed to illustrate the use of the trade mark..

The examiner replied on 24 June 1997 withdrawing both the objections under s41 and s44 and requiring the applicant to amend the specification of goods of the application to “Pet and aquarium products including pet food” (my emphasis).

The applicant agreed to the suggested amendment and the application was advertised accepted on 11 September 1997.  Meanwhile, on 3 September 1997 a letter was received from a Brenda Lesley Robinson, the registered proprietor of the originally cited trade mark in Class 5, above, complaining that she had come across products identical to her own in the market place and thence discovered the present application.  She requested that the Registrar revoke acceptance of the application.

On the instructions of the acceptance officer the examiner then replied by fax to Ms Robinson stating that: “ We do not believe that there is a conflict  However, if you think there is, you should seek legal advice to arrange opposition by 11.12.97”.

The casefile was reviewed by an acting Deputy Registrar on 30 September 1997.  In his opinion the examiner had not considered the possible scope of “pet and aquarium products including pet food” and that therefore the application was accepted in error.  The proposed specification could include, for example, food additives and special food items which could conflict with the goods of the earlier registration.  As a result both the applicant and Ms Robinson were advised that it was proposed to withdraw acceptance of the application in accordance with s38 of the Act.  The applicant was allowed one month to request a hearing of the proposed revocation and on 14 November 1997 it did so.

The hearing was set down for 2 February 1998 in Melbourne.  Mr Rick Wells of counsel appeared for the applicant.

Submissions

Mr Wells referred to cases decided under s44(3) of the repealed Act of 1955 and submitted that a mere change of mind or reconsideration of the acceptance of an application was not sufficient to justify “withdrawal” (the term used in the 1955 Act) or “revocation” (the expression used in the current Act) of acceptance of an application as being due to an “error or omission”.  He referred in particular to Re Remington Products, Inc.: In the Matter of Trade Mark Application No B460713 (1990) AIPC ¶90-680 (the Smooth and Silky case) in support of the proposition that a mere change of mind or judgment was not enough to constitute an “error” in the relevant sense.  He argued that in the present case there had been nothing but a change of mind on the part of another officer of the Trade Marks Office.

Discussion

It is appropriate here to set out the terms of the relevant provisions of the 1955 and 1995 Acts as they relate to the withdrawal or revocation of acceptance.

Section 44(3) of the 1955 Act provided as follows:

(3) 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; or

(b) that, in the special circumstances of the case, the trade mark should not be registered or should be registered subject to conditions or limitations or to additional or different conditions or limitations,

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

The corresponding section in the 1995 Act, s38, reads as follows:

Revocation of acceptance

38.(1) If, before a trade mark is registered, the Registrar is satisfied:

(a)that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or

(b)that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations;

the Registrar may revoke the acceptance of the application.

(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.

It will be noted that in contrast to the words of the 1955 Act “accepted in error” the 1995 Act refers to “error or omission” thus bringing the provision into line with other provisions of the Act where the same wording is used.

In the Smooth and Silky case, supra, the Hearing Officer referred to the concept of “error or omission” in considering a proposal for withdrawal of acceptance under the earlier Act.  She said, at 36,343-36,344:

I have found no other decisions dealing with the interpretation of s44 (3)(a). Section 160 of the Patents Act 1952 (Cth) however which provides for extensions of time in the circumstances of “errors or omissions” on the part of the applicant, has been considered. While interpretation of this section clearly cannot be directly adopted as an interpretation of what constitutes an error on the part of the Registrar, the following comments from the Deputy Commissioner’s decision in the matter of an application for a patent by CSIRO provide some guidance: “I do not think that there has been any error or omission within the meaning of sub-s160 (2). I do not think that that sub-section can be used to change a course of action deliberately chosen by an attorney to a different course of action providing a different application which, with hindsight, the attorney now believes to be more appropriate” : (1978) 48 AOJP 3019.
By analogy it can be reasoned that the “error” specified in s44 (3) (a) does not entitle the Registrar to apply the provisions of the section merely on the reconsideration of an acceptance and the conclusion that the judgment to accept ought to have been exercised in a different way. (Emphasis added).

This view is confirmed by the High Court’s interpretation of the word “mistake”. Isaacs and Gavin Duffy JJ, in finding that a mistake does not include ignorance, quote with approval these words from Fletcher Moulton LJ and Buckley LJ ex Roles v Pascall & Sons [1911] 1 KB 982 at 987: “A mistake exists when a person erroneously thinks that one state of facts exists when, in reality, another state of facts exists” : Murray v Baxter (1914) 18 CLR 622 at 631 “Mistake”, I note, is given by Websters Third New International Dictionary as a synonym for “error”.

Applying the view of the Deputy Commissioner and the High Court to the interpretation of s44 (3) (a), “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.

This interpretation is consistent with the view expressed by Mr D R Shanahan in Australian Trade Mark Law and Practice, p57 of the 1982 edition, where examples of “accepted in error” are confined to situations where it is found “that the examiner has missed a relevant dictionary meaning for the mark or an earlier registration that is clearly in conflict”.

Decision

The only difference in the current 1995 Act to the relevant provision under the earlier Act is the addition of the words “or omission”.  It has not been contended on behalf of the Registrar that any omission occurred, rather reliance has been placed on the fact that the application was accepted in error.  Therefore I believe that the Smooth and Silky case and the cases that have since been decided in accordance with that decision are directly in point in the present case.  All of those cases concerned an error involving failure to locate a relevant dictionary meaning of the word or words contained in the trade mark or the overlooking of a relevant registration or pending application.  It cannot be said that the examiner in the present case either missed a relevant meaning of the words contained in the trade mark or an earlier registration that was clearly in conflict with the application.  On the contrary, the earlier registration was raised as an objection and the objection was on reconsideration subsequently withdrawn.  It was even then asserted by the examiner, over the objection and the request for revocation by the owner of the earlier registration, that the Registrar considered that no conflict between the respective marks existed.  In view of the subsequent assertion to the registered owner of the cited mark that there was no conflict between the trade marks I must conclude that the matter had at that stage been thoroughly considered by the acceptance officer.  In light of that conclusion I cannot find that there was an error of fact in the decision to accept the application.  The Deputy Registrar stated that it was his belief that the examiner had not considered the full scope of the specification.  I cannot agree.  It seems to me that in the terms of Smooth and Silky and subsequent decided cases there was no more here than a different point of view as to the possibility of conflict between the two marks.  In those circumstances I cannot find that there was any error in the acceptance of the application 721876.

Conclusion

I have found that there was no error or omission involved in the acceptance of application 721876 but rather a difference of opinion between officers of the Trade Marks Office responsible for the acceptance of applications.  I therefore decline to revoke acceptance of the application under s38 of the Act.

Michael Homann
Hearing Officer

14 May 1998