Re Honan Investments Pty Ltd

[1998] ATMO 39

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS
 WITH REASONS

Re:-Proposal to Revoke Acceptance of Trade Mark Application No. 723342 in the name of Honan Investments Pty Ltd.

Background
Honan Investments Pty Ltd, (“the applicant”), applied on 4 December 1996 to register the trade mark KANGAROO in respect of the goods 'Flour, starch including modified starch and wheaten starch, gluten including vital wheat gluten', being goods in International Class 30.

A first examiner's report was issued on 12 May 1997 raising objections to registration of the trade mark under s44 of the Act, that the trade mark was substantially identical with, or deceptively similar to, the trade mark numbers 660729 and 660732. These trade marks are for the words GEEKAY THE GOLDEN KANGAROO for 'all goods in this class' in International Class 30 ' (667029) and 'retailing services in respect of a wide range of classes including coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle, yeast, baking powder, salt, mustard; vinegar; sauces (condiments); spices; ice in class 30' (660732). Following correspondence between the examiner and Anderson-Taylor & Associates, Patent & Trade Mark Attorneys, representing the applicant, the citations were subsequently withdrawn and on 19 August 1997 the application was accepted for registration by the examiner who was also the acting acceptance officer.  The application was subsequently advertised as an accepted trade mark in the Australian Official Journal of Trade Marks on 4 September 1997.

On 29 October 1997 the examiner wrote to the attorneys for the applicant to advise that the Office was proposing to revoke acceptance of the trade mark under s 38 of the Trade Marks Act 1995. The reasons for the revocation of acceptance were to raise the citations of trade mark registrations 277 and 265084 under the provisions of s 44 of the Trade Marks Act 1995. Both these registrations are in respect of goods falling in International class 30. The applicant was allowed one month to request a hearing on the proposed revocation.

I note that on 3 December 1997 a notice of opposition to the registration of the trade mark was lodged on behalf of George Weston Foods Limited by Spruson & Ferguson, Patent & Trade Mark Attorneys of Sydney.

The hearing in respect of the revocation of acceptance was set down for 9 March 1998 in Sydney. Mr. Brett Doyle of Baker & McKenzie appeared for the applicant.

Submissions
Mr. Doyle began his submissions by observing that this matter would be one of the first cases concerning revocation of acceptance under the Trade Marks Act 1995. He commented that there did not appear to be any significant differences between s 38 of the Trade Marks Act1995 and s 44 of the Trade Marks Act 1955. He then referred to cases decided under s 44(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 revocation of acceptance of an application as being due to an 'error' . He referred in particular to Re Remington Products, Inc.: In the matter of Trade Mark Application No B460713 (1990) AIPC 90-675 (the Smooth and Silky case) in support of the proposition that a mere change of mind or judgement was not enough to constitute an 'error' in the relevant sense. He also referred me to Re: Application by Shop-Vac Corporation : In the matter of Trade Mark Application No. 470686 (1991) AIPC 90-730 ( the Power Vac case) which states at p. 37101

“ 'Acceptance in error' must thus be restricted to mean acceptance of an application 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 not more than a change of opinion as to the way the facts should be interpreted."

Mr. Doyle then referred me to the letter from the Office dated 29 October 1997, which advised that the trade mark had been accepted in error on the basis of the examiner not being aware of two registered trade marks which constituted valid citations. These were trade mark registration  277 in the name of George Weston Foods Limited and trade mark registration  265084 in the name of Ricegrower's Co-op Ltd.

As far as 265084 was concerned Mr. Doyle said that the mark had been included on the extract list for this case and therefore the examiner had been aware of its existence and its relevance. He said that all the relevant facts were there for the examiner to draw a conclusion and whether the examiner may have been wrong is not a question of fact but a matter of opinion.

In respect of the other citation 277, Mr. Doyle referred to the examiner's workbook on the file.  This included a note on the clear report form which stated 'Withdraw citation - many other 'Kangaroo' marks co-exist in classes 29 and 30; no other grounds for rejection.' This note, Mr. Doyle said, reflected the consideration that the examiner had given to the state of the Register and she had then exercised her judgement in accepting the application. Mr. Doyle also commented that the search strategy used by the Examiner was not on the case file. He then went on to discuss the search strategies that the Examiner may have used to arrive at the extract list on the examiner's work file. In doing this, Mr. Doyle said, the examiner has considered the state of the Register, identified relevant marks, had looked at various kangaroo marks that co-existed and had reviewed matters in relation to the submissions received from the attorney. Following this she had recommended the mark for acceptance and, as she has the delegation to accept applications for registration, subsequently accepted the mark herself.

Mr. Doyle contended that the statement in the letter of 29 October 1997 that 'Trade mark no 277 ... did not appear in the search' was incorrect as it may have appeared in the search but was not extracted. He also referred to the fact that the person accepting the application was an experienced officer who had been given the delegation to perform the acceptance of trade mark applications' function and she had exercised her judgement in so doing. He also pointed out that in previous revocation (1995 Act) or withdrawal of acceptance (1955 Act) matters, the acceptance officer had always been a different person from the examiner.

Finally Mr. Doyle submitted that the Registrar has the discretion to revoke acceptance and where there is any doubt this should be resolved in favour of the applicant. The public interest and any special circumstances should be considered.

Legislation and case law
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.

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”.'

Discussion
The reason for the proposed revocation of acceptance given in the examiner's letter of 29 October 1997 is as follows:-

'The acceptance officer was not aware that trade mark no 277 in the name of George Weston Foods Limited and the trade mark no 265084 in the name of Ricegrowers' Co-op Ltd should have been raised as grounds for rejection since both of them constitute valid citations. The trade mark no 277 did not appear on the usual examiner's search.  The trade mark no 265084 was extracted during the search, but the examiner was not aware that the goods specified in the applicant's specification included goods which would conflict with the goods covered by the registration no 265084.'

The marks in question are, 277:

which is registered for 'Flour semolina wheaten meal and other products of cereals', and 265084:

which is registered for 'Rice and edible rice products being goods included in this class .'

I have had the opportunity to review the file, in particular the extract list and relevant marks extracted by the examiner. It is usual for examiners to conduct a search of the Trade Marks data base by entering various search terms and then looking at the results of the searches on-line. The information available to the examiner appears on the computer screen as an entry showing the trade mark number, the trade mark, class and status of the mark. From this information the examiner can make a choice to extract the entry and add it to a list of trade marks which are then retrieved as an extract list in paper format. The extracted marks contain all the details of registrations/applications including the specification of goods covered by the application or registration. From the extract list the examiner will then decide which marks may be considered as citations under s 44 of the Trade Marks Act 1995.  It is usual practice for examiners to conduct a number of searches of the data to ascertain various spellings and combinations that may exist for a given mark.  Details of the searches conducted are printed out as a record. This is referred to as the search strategy. This document would normally be placed on the examiner's work file with the extract list and details of the marks which appear on the extract list. In this case, however, the search strategy is missing from the file. As the application was for the word KANGAROO, it would have been normal practice to search on the word KANGAROO and also search the device of a KANGAROO.

As Mr. Doyle said, the extract list contains 11 trade marks including one in class 42. This application was for goods in class 30, one of the food classes. It would be extremely unlikely that the examiner would have searched only in class 30 as the goods would often overlap with classes 29, 31 and 32. The examiner did extract registration 265084 . The examiner did not cite this registration and there is no indication on the file to show that it was considered as a possible citation. 

Following acceptance of the present application, another application for a KANGAROO mark was being examined by a different examiner. The examiner queried the acceptance of application  722342 and the case was subsequently reviewed. The review of the application revealed that the examiner had not been aware of the overlap in the goods of 723342 which were:- 'Flour, starch including modified starch and wheaten starch, gluten including vital wheat gluten', being goods in International Class 30. Registration 265084 was registered for 'rice and edible rice products'. A photocopy from the second edition of the Macquarie Dictionary, Macquarie University, NSW, 1991, page 1706 indicates that the word 'starch' has a definition of

' a white, tasteless solid, chemically a carbohydrate ….. occurring in the form of minute grains in the seeds, tubers, and other parts of plants, and forming an important constituent of rice, corn, wheat, beans, potatoes, and many other vegetable foods; amylum. Starch is separable into amylose and amylopectin fractions.'

There is also an extract from The Larousse Gastronomique The World's Greatest Cooking  Encyclopedia; Paul Hamlyn; London 1989, which, at page 886, gives information about rice and various rice products including :-

'rice semolina, ground rice, and rice flour - these are made by grinding fragments of very white rice; they are used in making cakes and pastries to thicken sauces. '

These photocopies had been attached to the file of the subject application subsequent to its acceptance.

It appears that, given these definitions there is a clear overlap in the goods of this application and the cited mark 265084.

The question of dictionary definitions which are not apparent or available to the acceptance officer is discussed in other trademark cases concerning withdrawal of acceptance (1955 Act) and the revocation of acceptance (1995 Act), including Power Vac case, supra, and Re: Application by Penneys Pty Ltd (Strathspey case) 31 IPR 652. It is important to ensure that the scope of an application is correct and to this end the examiner conducts a check of the goods/services of each application. The checking can take the form of determining precisely the items to be covered by a particular term. Dictionaries and other reference material may be consulted for this purpose. In this case the relevant dictionary meanings of 'starch' and 'rice products' were not on the file at the time of examination and acceptance and hence not available to the acceptance officer.

Given the above, it appears that this application was accepted in error under the terms of s 38 (1)(b) of the Trade Marks Act1995 as,when the overlap in the goods is considered, registration 265084 should have been raised as a citation in terms of s44 of the Act.

I turn now to registration 277 which was also raised as a citation after acceptance. It is evident from the documentation on file that the examiner did conduct a search of the Register and extracted relevant trade marks. During this process she considered the state of the Register and noted the occurrence of various 'Kangaroo' marks on the Register. It is clear from her note on the 'Clear Report' recommendation for acceptance that she was aware of the co-existence of these type of marks. Also, during the examination of the application she had written reports raising, maintaining and subsequently withdrawing citation objections. All these actions would have involved reviewing the state of the Register. The statement in the letter advising of the intention to revoke acceptance states that  'The trade mark no 277 did not appear on the usual examiner's search'. There is nothing before me to indicate that there was an 'error or omission' involved in not extracting the mark. It may well have been that the mark was considered during the searches conducted by the examiner.  I agree with Mr. Doyle that the fact that the mark was not extracted and included in the extract list does not mean that it was not considered. As I can find no 'error or omission' in the examiner's action regarding this matter, there is no reason to revoke acceptance because of registration 277.

Conclusion
I find that there was an error during the course of examination in not appreciating the relevance and overlap in the goods between registration 265084 and this application. I consider that this resulted in application 723342 being accepted in error. Under the provisions of s38(1)(a) of the Trade Marks Act 1995 I revoke acceptance of this application and direct that the application be referred to the examiner for re-examination.

Sandra Jarvis
Senior Examiner
25 August 1998