Re Jack Grieve

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Proposed revocation of acceptance of trade mark application number 1222669(21) - LA SORRENTINA ATOMIC COFFEE MACHINE- in the name of Jack Grieve.

Delegate: Terry Williams

Decision: 2010 ATMO 12
S 38: revocation of acceptance not appropriate in terms of s 38(1)(b) where opposition evidence advanced but incomplete and in need of further testing and submissions. Relevance of additional unsworn assertions.
Background

This matter has a complex and unfortunate history. At issue is the intention of a delegate of the Registrar of Trade Marks to revoke acceptance of an application for registration. Acceptance of applications for registration, and the revocation of acceptance, are governed by sections 33, 34 and 38 of the Trade Marks Act 1995 (“the Act”). In setting out now my reasons for deciding not to exercise that discretion and revoke the acceptance of this application, I need to traverse in some detail the history of the application itself.
Jack Grieve (“the applicant”) filed an application to register the trade mark LA SORRENTINA ATOMIC COFFEE MACHINE in respect of: “Non-electric apparatus for making coffee; non-electric coffee brewers; non-electric coffee makers; non-electric coffee percolators; non-electric coffee pots”. His application, no 1222669, was examined in the usual way and a ground for rejection of the application was found to exist under s 44 of the Act. That ground for rejection was said to be based on the existence of an earlier and conflicting registration, 791650 (“the cited trade mark”).
The cited trade mark is owned by Irene Notaras and consists of the word ATOMIC, registered in respect of “Non electric coffee percolators, espresso makers, coffee machines, and non electric cappuccino makers”.
The details of this were put to the applicant by way of an examiner’s report dated 28 Feb 2008. There is no clear explanation of why the application was subsequently accepted for registration. This was done, on 18 March 2008, by the same examiner, who is no longer with this office. From a brief file note, however, it appears that the examiner was swayed by the applicant’s assertion, made by telephone, that the element ATOMIC was “purely descriptive”. Such an assertion would perhaps not be inconsistent with the research results found by the examiner prior to the issue of her examination report in February.
However, without going too deeply into the matter at this point, another view of the research results would be that ATOMIC is descriptive of the goods in question in the same way TRIUMPH BONNEVILLE is descriptive of motorcycles. I reproduce, below, a portion of the research material located on the internet by the examiner:
The Atomic is stunningly beautiful classic design (kind of like a 1970 Triumph Bonneville motorcycle) and if one happened upon my door step at a "fair" price I would buy it for my mantle shelf...
My assessment of the merits of the situation as set out above is, at best, very tentative, for reasons that will become apparent shortly. Be that as it may, the application was accepted for registration.
On 9 September 2008 Ms Notaras filed a notice of opposition to registration of the applicant’s trade mark.
Thus far, the handling of this matter at the Trade Marks Office could fairly have been described as in need of improvement, in that a questionable decision had been made in the course of examination. There the matter rested while Ms Notaras prepared and, on 9 March 2009, after an extension of time of three months, filed her evidence in support of the opposition.
Thereupon, the applicant’s evidence in answer to the opposition became due. The applicant, too, sought and was granted extensions of time to prepare his evidence.
On 7 August 2009, however, the circumstances of the acceptance came to the attention of a Principal Examiner in the examination area of the office. She wrote to the applicant, as follows:
Trade mark application 1222669 was advertised as accepted in the Official Journal of Trade Marks on 12 June 2008. However, it has now come to my attention that the trade mark should not have been accepted.
After further research, it appears that on balance, the term ATOMIC is one which appears distinctive when used on coffee machines and related goods. It appears that the use of ATOMIC in the past has been primarily trade mark use and there is insufficient evidence to support your submission that it has become generic.
The submission that there have been numerous models, distributors and importers is of little relevance. That being said, your submission that there have been different manufacturers of 'Atomic' coffee machines may lend some weight to the argument that the mark is seen as descriptive in the relevant industry. However, due to the fact that we have no information as to under what circumstances this term was applied to the goods by other manufacturers (eg, was it by license?), this last point is far from persuasive. Furthermore, the fact that you state that 'no Italian Atomic type machines have been made or sold anywhere in the world since approximately 1987' seems to indicate that whatever 'descriptive' significance it may once have had has been further diminished over time.
The letter then sets out details of the cited trade mark, and continues:
Your trade mark application should therefore not have been accepted, taking account of all the circumstances that existed when the application was accepted. It is considered reasonable to revoke the acceptance, taking account of the circumstances (section 38 of the Trade marks Act 1995).
The applicant was informed of his entitlement to be heard before any decision was made. However, the applicant made direct contact with a Deputy Registrar of Trade Marks to discuss the merits of the application and to put, quite clearly, his displeasure at being disadvantaged in this way given that opposition proceedings were already on foot. According to the file note, he “suggested that there may have been collusion between the owner of the earlier mark and the office.” The file note continues:
I note that (i) Mr Grieve has just put in evidence in answer and (ii) a number of relevant issues were discussed in our conversation. In the circumstances I believe that it is appropriate for the matter to proceed through the opposition process rather than revocation.
This is not to be interpreted as a comment on the relative merits of the cases of either Mr Grieve or the opponent. It is an indication that at this stage it appears that the opposition process is the right vehicle for addressing the issue of competing rights.
On 17/8/09 I rang Mr Grieve to advise him of that the revocation issue would be put aside and this would allow the opposition process to continue as scheduled.
On 18 August, an examiner of trade marks wrote to the applicant, confirming that, following the applicant’s telephone submissions, “revocation of acceptance for the above mentioned trade mark 1222669 will not be proceeding”.
Ms Notaras also wrote to this office about the matter. On 20 July 2009, in protesting the grant of an extension of time to the applicant for serving evidence in answer, she asserted that the product in question “is made in Italy in an artisan method” and that she has been “marketing, selling and servicing” the relevant goods for 40 years. That claim is consistent with the evidence in support that she filed, which goes on to indicate that she is the exclusive Australian agent, by virtue of appointment from the principal of the Italian manufacturer. Again, by fax received 21 September, she made representations critical of the acceptance of the application and of the bona fides of the applicant. The letters in question were not addressed to any particular officer and were received and dealt with in the Trade Marks and Designs Hearings and Oppositions area (“hearings”). The first was answered by a Senior Examiner in the hearings area and resulted in a letter to Ms Notaras dated 5 August. The second, however, was passed to a Deputy Registrar in an examination section, in view of the questions the letter asked about how the application came to be accepted in the first place.
Subsequently, on 9 November 2009, Ms Notaras began a series of communications addressed directly to the examination area of this office. These commence with a set of assertions strongly critical of the bona fides of the applicant. On 11 November, Ms Notaras faxed to a Deputy Registrar of Trade Marks a set of extracts from her evidence in support of her opposition. Subsequently, on 12 November 2009, the Deputy Registrar sent the applicant a letter as follows:
Trade mark application 1222669 was advertised as accepted in the Official Journal of Trade Marks on 12 June 2008. Additional information has been brought to my attention which indicates that the trade mark should not have been accepted.
The term ATOMIC is a registered trade mark and its presence on the register should have been given greater weight in the examination of the present application. Although there have been claims by the applicant that the earlier mark is generic, it has been a registered trade mark for more than 8 years and has not been removed or cancelled in the courts.
If the applicant believes that the word ATOMIC is purely generic, it may be appropriate to consider filing a trade mark without that word or taking action in the courts to remove it.
Using the standard tests for comparing marks that have been supported by Federal Court decisions, there is a strong case for concluding that the two marks are deceptively similar and that application 1222669 should not have been accepted.
I am aware that this matter is currently under opposition and that revocation has been considered previously but believe that given the fact that the goods are identical, there is strong potential for deception and confusion and a section 44 ground for rejection should have been maintained at examination. The following ground for rejection is appropriate in relation to this trade mark:
Given the fact that the distinctive word ATOMIC is the entirety of the earlier registration, and the goods are identical, I think there is strong potential for confusion and a section 44 ground for rejection should have been maintained, and therefore the following ground for rejection is appropriate in relation to this trade mark:
The applicant again rang the office to express his intense frustration with the process that had, in his view, been unfairly and inappropriately inflicted upon him. Despite his vigorous and repeated protests, by phone and email, the Deputy Registrar held firm to his stated intention of revoking acceptance. Ultimately, and under protest, the applicant has requested a hearing. I have been assigned to conduct that hearing but, on reviewing the matter, I believe that this case has progressed to a point where, for a number of interlocking reasons, revocation of acceptance is not appropriate.
Before setting out my reasons for that conclusion, I will set out the relevant provision, s 38(1):
Revocation of acceptance
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.
As to the first paragraph of this subsection, it might well be that there was a basis for the Deputy Registrar’s intention to revoke the acceptance. Prima facie, there is material on file that might (and I use that word deliberately) satisfy an objective observer that the application should not have been accepted. It will not be helpful, necessary or reasonable for me to now express any considered opinion on that issue, however. Whatever view might be appropriate in terms of s 38(1)(a), the matter pivots critically on the terms of s 38(1)b. Those elements of s 38(1)(a) that might have otherwise clamored for attention will be dealt with more appropriately in another forum.
Section 38(1)(b) is posed as an essential stipulation. Acceptance must not be revoked unless I, as the delegate to whom the matter has devolved, am satisfied that revocation is appropriate. Matters here have progressed, however, to a point where the exact opposite is the case.
From the file, it is clear that the second proposal to revoke acceptance occurred after a consideration of both Ms Notaras’s evidence in support, and of the applicant’s evidence in answer to the opposition. The evidence traverses a significant issue, the core of the contention between the parties. Briefly, the applicant is of the strongly held view that the sign ATOMIC is within the scope of s 25(1) of the Act.
That section relevantly provides:
1) This section applies if:
(a) a registered trade mark consists of, or contains, a sign that describes or is the name of:
(i) an article or substance that was formerly exploited under a patent; or
(ii) a service that was formerly provided as a patented process; and
(b) it is at least 2 years since the patent has expired or ceased; and
(c) the sign is the only commonly known way to describe or identify the article, substance or service.
Relevantly, s 25(3) then provides:
(3) If the trade mark contains the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to:
(i) the article or substance or other goods of the same description; or
(ii) the service or other services of the same description; and
(b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased.
Therefore, argues the applicant, the rights given by the cited trade mark should be severely read down.
While it appears that s 25 is aimed primarily at infringement matters dealt with by the courts, this is not necessarily exclusively so. There is no reason to suggest that a sign within the scope of s 25 could not come to exist on the register: s 25 envisages that this may happen. If and when it does, the Registrar will have a difficult task. Section 44, which I will not set out, turns for present purposes on the definition of “deceptively similar” in s 10:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
I do not think that the Registrar, in such a case, could avoid consideration of the terms of s 25, which would suggest themselves as being, in principle, potentially relevant to a decision to be made under s 44. However, such things are not likely to arise as matters of routine examination. It is hard to see, beyond this, how s 25 could ever be given a great deal of weight in any ex parte matter unless supported by a convincing body of evidence and by the weight of other comparable registrations.
Conclusion
Having had the benefit of time to peruse the evidence, I think I can safely say that, with due respect to each party’s views to the contrary, the evidence in the present matter is by no means clear-cut. Much of the applicant’s evidence, in particular with regard to s 25, is either unsupported assertion or depends on analysis and interpretation of material he has provided. This material consists of, inter alia, partial extracts of publications, material taken from websites of uncertain standing, Google searches and the like. Any decision on the weight to be given to argument under s 25 would need full adversarial testing of the evidence. Moreover, the evidence stages are not yet complete.
Ms Notaras has yet to file her evidence in reply to that of the applicant and the due date for her to do so is held in abeyance pending my decision of the present matter. The person best able to set the applicant’s evidence in answer in its context, should this be necessary, is Ms Notaras. For me, as a delegate of the Registrar of Trade Marks, to now take on that role and act as an inquisitor in the revocation would inevitably compromise my primary role in the impartial assessment of this matter. It is utterly inappropriate for a delegate, in assessing the merits of revocation of an acceptance, to take on the role of a protagonist. Or, to put it another way, the case for revocation ought to stand on its own merits. If those merits need an advocate to lead evidence or counter-evidence, and to articulate the case for revocation, it is hard to see how this would be appropriate.
The problems with this matter, however, extend beyond the evidence in support and in answer. Both sides have relied on unsworn assertions made in various letters, faxes and emails. Those assertions go to matters which cannot all be dismissed as unsavoury and insubstantial name-calling. Yet they are, by being unsworn, outside the scope of regulation 21.17. Nor have those assertions been put squarely to the other party: procedurally, there has been no right of reply and therefore the weight that could be given to some assertions, those which go to apparently relevant statements of fact, is very questionable. Yet, if I am to make an ex parte assessment I must be expected to deal with them. Doing so would inevitably leave one or other party with a view that I am partisan to the cause of the successful side.
Such perceptions are sometimes unavoidable in the opposition forum, where by definition there must be as many losers as winners. Here, however, the matter is ex parte and the lack of procedural fairness, which cannot be remedied because of the structure of the process as it has so far developed, makes such perceptions both more likely and more justifiable in the eyes of an aggrieved party. This would tend to bring the hearing process into disrepute. I would not willingly do so.
It might be said that failure to revoke acceptance represents an abdication of the responsibility that s 38 places upon the Registrar in the first instance. I reject any such suggestion. The Registrar will, where necessary, deal resolutely with cases under the provisions of section 38. The complex turnings of the present matter have removed it from that range of cases.
Ms Notaras is on record as saying that she would prefer that the matter was dealt with by way of revocation, thus sparing her the expense of preparing evidence in reply. That view is understandable and quite proper. However, the fact needs to be faced that she herself has sought to conduct what might almost be called a covert opposition here. Thus, there is some irony in the fact that her conduct has contributed to the volume of controversial material on the file, directly adding to the elements that lean against revocation.
Decision
In view of the factors to be assessed in terms of s 38(1)(b), my decision is that the acceptance will not be revoked. Opposition proceedings may therefore recommence. I will write separately to the applicant and to Ms Notaras about this, proposing necessary directions to restart proceedings.
I also caution both parties to the effect that, in the opposition hearing that is to follow, the regulations governing the evidentiary stages will be strictly applied. Neither party should assume that any unsworn assertions they have made in correspondence and that have not been properly served as part of the evidence stages will be given significant evidentiary weight.
T. E. Williams
Hearing Officer
Trade Marks Hearings
25 January 2010

Delegate:	Terry Williams
Decision:	2010 ATMO 12 S 38: revocation of acceptance not appropriate in terms of s 38(1)(b) where opposition evidence advanced but incomplete and in need of further testing and submissions. Relevance of additional unsworn assertions.

[2010] ATMO 12

25 January 2010