Re Kabushiki Kaisha Nikken Sohonsha (Trading as Nikken Sohonsha Corporation)

[1994] ATMO 25

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Proposal to withdraw acceptance of application numbers 550519, 550523 and 550529 to register trade marks in the name of KABUSHIKI KAISHA NIKKEN SOHONSHA (trading as NIKKEN SOHONSHA CORPORATION)

Application numbers 550519, 550523 and 550529, in the name KABUSHIKI KAISHA NIKKEN SOHONSHA (trading as NIKKEN SOHONSHA CORPORATION) -(the applicant) - were lodged on 18 February 1991.  The marks for which registration is sought comprise the word DUNALIELLA in the case of 550519, or contain that word, as shown below, in the case of 550523 and 550529.  The statement of goods common to the three applications reads, "Food supplements including natural beta carotene tablets made from algae and all other goods in Class 5".  Following examination, the applications were advertised as accepted in Part A of the Register in the Official Journal of 15 July 1993.

550523  550529

The applicant was then advised in an Official letter of 20 September 1993 that:

All the normal examination procedures were carried out using the resources available to the examiner at the time of the initial examination.  No meaning was found for the word DUNALIELLA and so no objections were raised.  A translation was requested to which the applicant replied that "to the best of their knowledge, the word DUNALIELLA has no meaning in a language other than English".

New information has been brought to the attention of the examiner which shows the word DUNALIELLA to be the botanical name of an alga which is used as a source of beta carotene.  A dialogue (sic) search of databases was conducted and numerous articles about beta carotene and the algae DUNALIELLA were uncovered.  A sample of these is attached.

As the goods for which registration is sought include FOOD SUPPLEMENTS INCLUDING NATURAL BETA CAROTENE TABLETS MADE FROM ALGAE, the word DUNALIELLA refers directly to the character or quality of the goods, describing them as food supplements containing or consisting of the DUNALIELLA alga.  Other traders may desire to use the word DUNALIELLA to describe their similar goods.

The implication was that, had this information been brought to the attention of the acceptance officer and taken into account, then objections to the marks' registration would have been taken under paras.24(1)(c), (d) and (e) of the Act.

The applicant asked to be heard on the matter as to whether, or not, acceptance of the applications should be withdrawn under paragraph 44(3)(a) of the Act and it became the subject of a hearing before me in Melbourne on 8 February 1994.  The applicant was represented by Mr John Hawker of Griffith Hack & Co.

Mr Hawker submitted that the issues relating to the proposed withdrawal of the three applications were essentially the same.  He said that it was his understanding that such proposals to withdraw acceptance were only made in cases where a reasonable search for information had not disclosed a meaning for a word and new information, i.e. published after the mark had been accepted, disclosed a situation where acceptance should be withdrawn so that an objection could be raised.  In the present case, the information relating to any meaning for the word DUNALIELLA had been available at the time of examination and proper research should have brought to light any meaning.  The examiner had requested that the applicant advise the Office if that word had a meaning in any other language than English and the response had been that, to the applicant's knowledge, it did not.  Mr Hawker said that the question was not asked as to whether it had a meaning in English and the applicant had answered the query truthfully.  It had made the assumption that the examiner had sufficient information regarding any possible botanical meanings already.  There was a great deal of data available from many sources regarding such a meaning of the word in relation to the goods of the applications.  This was not new material and it should have been uncovered during examination.  On this basis, he said, the examiner did not now have a proper basis to propose withdrawal of acceptance.

Decision

Sub-section 44(3), as it relates to the matter in hand, reads as follows:

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;...

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

I am therefore required to decide, firstly, if the applications for the marks were accepted in error and secondly, if they were, if the Registrar's discretion should be exercised to withdraw acceptance.  I should note here that Mr Hawker sought to pursue the matter of the marks' registrability at the hearing.  However, as I have stated, the issue of the hearing was to decide whether an error had occurred in acceptance and, if it had, whether I should exercise the Registrar's discretion to withdraw it.  Any submissions regarding registrability should more properly be made in response to an examiner's report which would detail the objections, or at a hearing specified to decide the matter.

In the Office decision re Remington Inc's Appln, (1990) AIPC 90-680 (the Smooth and Silky case), the Hearing Officer said that there was a paucity of trade mark decisions relating to withdrawal of acceptance but, in applying decisions of the Deputy Commissioner of Patents in relation to a Patents matter and the High Court in relation to s.44(3):

...'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.

Mr D.R.Shanahan, in his book on trade marks says, at p.62, regarding the Registrar's discretion to withdraw acceptance:

This power is used infrequently, but the Registrar will withdraw acceptance where it is found, for example, that the examiner has missed a relevant dictionary meaning or an earlier registration that is clearly in conflict

In the present instance, it is evident from the case files that the examiner's search for a possible meaning for the word included a number of texts which comprised Webster's Third New International Dictionary, The Macquarie Dictionary, Thorsons Guide to Alternative Living, Plants for Medicines and several language texts - all of the foregoing being held within the Trade Marks reference library.  The word DUNALIELLA was not found, in that search, to have a meaning in relation to the goods.  The applications were presented to the acceptance officer on that basis and duly accepted.  It was only after the marks had been advertised as accepted, that a colleague, with a more comprehensive botanical knowledge, alerted the examiner to a possible objection and suggested that a search of on-line services such as DIALOG should be made in order to ascertain whether the word DUNALIELLA might have a meaning in relation to the goods of the applications.

Having now had the opportunity to view the original search made during examination and then the DIALOG search conducted post-acceptance, I am of the opinion that all of the pertinent information had not been placed before the acceptance officer at the time of the first report and subsequent acceptance.  Thus there was an "error" in acceptance, as contemplated by sub-section 44(3), in that the acceptance officer was not in possession of all the facts at the time of acceptance.  I do not think it is significant that, as submitted by Mr Hawker at the hearing, a "proper" initial search should have located a meaning for the word and that it was only after a more intensive exploration that an objection was found.  It does not follow that acceptance should not now be withdrawn because of an objection suggested by a subsequent search of a wider data base.  Examiners cannot be expected to have an in-depth knowledge of all of the material that comes before them and must rely upon a search of reference material - in this instance initially without finding a meaning - or from advice from colleagues more expert in a particular field - here unfortunately not obtained until after acceptance - to ascertain the registrability of marks.  The fact that the information showing that, prima facie, the word DUNALIELLA has a descriptive meaning in relation to beta-carotene had not been made available to the acceptance officer until after the marks had been accepted, does not mean that the acceptances cannot be now said to have been in error.  Without wishing to pre-empt any re-examination of the applications, I believe it would be wrong to allow the registration of marks which appear at the first instance to contain a botanical term.  This would prevent other members of the community from using what was previously a freely used term in relation to beta-carotene.

Thus, the first part of the question referred to in s.44(3) has been answered; that I, as the Registrar's delegate, am satisfied that the applications were accepted in error.  I must now turn to the question of whether, having found that they were accepted in error, the Registrar's discretion should be exercised adversely to the applicant and acceptance withdrawn.  I have come to the conclusion that it should.  The weight of the evidence produced by the DIALOG search shows, in my opinion, that a prima facie objection should have been taken in the first instance.  I believe that acceptance should now be withdrawn and the applications re-examined.  Should an objection then be raised on the grounds of the descriptiveness of the word DUNALIELLA in the marks, the applicant would have the opportunity to make submissions in the matter.  I believe that such a course is in the public interest, which is my primary concern.

Conclusion

As a consequence of the foregoing, I find that application numbers 550519, 550523 and 550529 for trade marks which comprise or contain the word DUNALIELLA have been accepted in error and that the Registrar's discretion should exercised by withdrawing acceptance.  I therefore order that acceptance be withdrawn and, following this, the applications returned for re-examination.

Ian Forno
Hearing Officer

31 March 1994