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& Associates, Patent & Trade Mark Attorneys, representing the applicant, the citations were subsequently withdrawn and on 19 August 1997 the application was accepted for registration by the examiner who was also the acting acceptance officer.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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1998] ATMO 39
Decision Date: 25 August 1998

CaseChat Overview and Summary

This matter concerned a proposal by the Registrar of Trade Marks to revoke the acceptance of trade mark application number 723342, KANGAROO, filed by Honan Investments Pty Ltd for goods in International Class 30. The application had been accepted by an examiner, but subsequently, the Office proposed to revoke this acceptance on the grounds that the application had been accepted in error due to the existence of prior registered trade marks. A notice of opposition had also been lodged by George Weston Foods Limited.

The delegate was required to determine whether the acceptance of the trade mark application had been made in error, as contemplated by section 38(1)(a) of the *Trade Marks Act 1995* (Cth). This involved considering whether the examiner had made an error or omission in the course of examination that led to the acceptance of the application, or if the acceptance was merely the result of a change of opinion or a different interpretation of the facts. The delegate also had to consider the relevance of two specific prior registered trade marks, numbers 277 and 265084, in relation to the applicant's goods.

The delegate reasoned that for an acceptance to be considered "in error" under section 38(1)(a), it must stem from a mistake as to facts or ignorance of facts, rather than a mere change of mind or a different interpretation of existing facts. The delegate found that while the examiner had considered the state of the register and the co-existence of "Kangaroo" marks when dealing with registration 277, and had withdrawn previous citation objections, there was no clear error or omission in relation to this mark. However, regarding registration 265084, the delegate determined that there was a clear overlap in the goods between the applicant's specification (flour, starch, gluten) and the goods covered by registration 265084 (rice and edible rice products), particularly when considering dictionary definitions of "starch" and "rice products" which were not available to the examiner at the time of acceptance. This lack of awareness of the overlap constituted an error or omission in the examination process.

Consequently, the delegate found that the application had been accepted in error due to the failure to appreciate the relevance and overlap in goods with registration 265084. Therefore, under section 38(1)(a) of the *Trade Marks Act 1995*, the delegate revoked the acceptance of application 723342 and directed that the application be referred back to the examiner for re-examination.

Orders