Re Honan Investments Pty Ltd

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the state of the register and the co-existence of "Kangaroo" marks when dealing with registration 277, and had withdrawn previous citation objections, there was no clear error or omission in relation to this mark.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.