Re: Trade mark application 2030672 (29, 30) Yumbo filed in the name of Hungry Jack's Pty Limited

[2020] ATMO 174

TRADE MARKS ACT 1995

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

Re:Trade mark application 2030672 (29, 30) - YUMBO - filed in the name of Hungry Jack’s Pty Limited

Delegate:

Nicholas Smith

Representation:

Applicant: Helen Kavadias of HWL Ebsworth Lawyers

Decision:

2020 ATMO 174

Section 38 of the Trade Marks Act 1995 – revocation of acceptance – whether reasonable to revoke acceptance – acceptance revoked – application returned to examination

Background

1. On 15 August 2019, Hungry Jacks Pty Limited. (‘Applicant’) applied to register a trade mark under the provisions of the Trade Marks Act 1995 (‘Act’). The current details of the trade mark application appear below:

Application Number:	2030672
Filing Date:	15 August 2019
Goods:	Class 29: Burgers containing ham and cheese; sandwich fillings, being ham or cheese based Class 30: Hamburgers and burgers (sandwich and filling); bread buns containing ham and cheese; sandwiches containing ham and cheese (‘Applicant’s Goods’)
Trade Mark:	YUMBO	(‘Trade Mark’)

1. The Trade Mark was examined as required under s 31 of the Act. On 25 October 2019 an adverse report was issued by this office, identifying a ground for rejection pursuant to s 44 of the Act. This ground specifically nominated trade mark number 1090608 being the mark set out below (‘Cited Trade Mark’), owned by the Starman Entertainment Pty Ltd (‘Cited Owner’).

Filing Date:	14 December 2005
Goods:	Class 30 Hamburgers in buns; sandwiches; toasted sandwiches; pitas including filled pitas; cheese burgers; cheesesteaks; chicken burgers; fish burgers; hot dogs; pizzas; pizza rolls; rolls including filled rolls; baked products; snack food consisting principally of pasta, beverages in this class including coffee, tea, cocoa (‘Cited Goods’)
Trade Mark:	YUMBO	(‘Trade Mark’)

1. On 20 December 2019 the Applicant filed a response to the adverse report comprising a declaration of Michelle Lam, Senior Product Manager at the Applicant, with Exhibits ML-1 to ML-5 (‘Lam Declaration’) and supporting submissions requesting that the examiner apply the provisions of ss 44(4) of the Act (‘prior continuous use’) and accept the Trade Mark for possible registration.

2. On 16 January 2020, the Applicant was advised that the Application would be accepted under the provisions of s 44(4) of the Act and on the same date, advertisement of the acceptance was published in the Australian Official Journal of Trade Marks.

3. On 13 March 2020, a Notice of Intention to Oppose was filed by the Cited Owner. On 5 June 2020, the Cited Owner’s legal representatives wrote to this office requesting revocation of acceptance of the Trade Mark under s 38. The basis of the request was a ground for rejection under s 44.

4. The request for revocation of acceptance was considered by this office and on 12 June 2020, a letter of intention to revoke was sent by the office to the Applicant.  Relevant portions of the letter are extracted below:

Trade mark application 2030672 (YUMBO) was advertised as accepted in the Official Journal of Trade Marks. However, it has now come to my attention that the trade mark should not have been accepted.

…

Trade mark registration no.1090608, YUMBO, covers inter alia, burgers, sandwiches, pizzas and beverages in class 30. This mark is identical to that of your client, and it protects identical and similar goods.

As you will recall, your client’s trade mark was accepted under the provisions of s44(4), in the face of TM 1090608 for YUMBO, on the basis of prior and continuous use.

Upon review, however, it is considered that your client’s use of YUMBO does not meet the criteria for prior and continuous use. Specifically, your client’s declaration notes that the use of YUMBO has not been continuous, with use since 1990 being intermittent.

Furthermore, the declaration provided identifies that your client’s use of YUMBO was in relation to burgers only, whilst the application has been accepted on a broader range of products which conflict with the claims of the earlier trade mark.

1. On 24 August 2020, the Applicant requested to be heard on the intention to revoke acceptance. The opposition proceedings were suspended pending the outcome of the proposed revocation of acceptance.

2. I am a delegate of the Registrar of Trade Marks and this matter of the proposed revocation of acceptance was allocated to me to be heard and decided.  The hearing occurred on Wednesday 6 October 2020 in Canberra and the Applicant was represented by Helen Kavadias of HWL Ebsworth Lawyers.  In addition to the Lam Declaration, and the written submissions filed on 9 July 2020, the Applicant also filed written submissions on 28 September 2020 which contained various documents marked as ‘annexures’.

3. One of the annexures to the 28 September submissions was the Statutory Declaration of Jacqueline Susan Hansen, District Manager Hungry Jack’s WA, confirming that when she started working with Hungry Jacks in 1975, the YUMBO sandwich was being sold and was continued to be sold until 1984 and the business sold 400 YUMBOs per week.  I have had regard to this material.

4. Section 8 of the Trade Marks (Means and Form of Filing Documents and Evidence) (Opposition and Other Proceedings) Instrument 2019, made under ss213C(1) of the Act (replacing reg 21.17(1) of the Regulations), states that evidence given in writing in any proceedings before the Registrar must be in the form of a declaration. As each of the remaining annexures to the 28 September submissions were not in the form of a declaration, nor were they appended to a declaration, these documents are not evidence that the Registrar can consider. However, with respect to the annexures that consist of correspondence between the Applicant and the Registrar, I can have regard to such material as it is already on the record. With respect to the annexures that were already exhibited to the Lam Declaration, I can have regard to such material to the extent it was exhibited to the Lam Declaration.

5. Finally during the hearing, the Applicant sought to adduce ‘evidence from the bar-table’ regarding the sales figures of its Yumbo burger in 2019.  For the reasons outlined in the paragraph above, I have not had regard to such evidence since it was not in the form of a declaration.  The Applicant has had ample opportunity, since the letter indicating an intention to revoke was sent to the Applicant on 12 June 2020, to properly file evidence in this matter and has provided no explanation for its failure to comply with the requirements.  I note that the failure by the Applicant to file the additional evidence in a proper form was not determinative of the outcome of this proceeding.  

   The Law

6. Section 38 of the Act provides:

   38Revocation 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.

   (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.

7. Some broad principles summarising the operation of s 38 of the Act were set out by the Registrar’s Delegate in Globalscope Pty Ltd[1] and I extract them below (with footnotes removed):

   [1] [2016] ATMO 14, [12]-[16], [20]-[21]

   As a preliminary matter, I note that the application of section 38 is discretionary (that is: “…the Registrar may revoke the acceptance…”). That said, it would be difficult to imagine a scenario where, the requirements of both limbs having been satisfied, some other circumstance meant acceptance of the trade mark would not be revoked (given the provisions themselves take into account a consideration of “all the circumstances”).

   Most importantly, the provisions of section 38 require that both limbs of the test (i.e. ss 1(a) and 1(b)) must be satisfied before the Registrar of Trade Marks may revoke acceptance. For the avoidance of doubt, I would also add that these elements must be satisfied before the Registrar issues a letter of intention to revoke.

   However, on the face of it, there is an inference that both limbs of the test have not been fully considered in this matter. The letter of intention to revoke only uses the wording of the first limb and provides (my emphasis):  “[H]aving taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke…”. Although there is no requirement that the Registrar mention all possible circumstances to be considered, I note the letter also does not mention the status of the well-progressed opposition proceedings.

   The current section 38 was introduced via amendments to the Act in 2006. The Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 2006 noted that the previous section 38 had been interpreted too narrowly, with the result that the protection of the public interest in keeping invalidly accepted trade marks from becoming registered had not been fully realized. As a result, the Explanatory Memorandum provided (my emphasis in bold):

   Paragraph 38(1)(a) clarifies that the Registrar is able to take account of any circumstance that existed which should have prevented acceptance. It is not necessary that the Registrar knew or was in a position to know of the existence of the circumstances at the time the application was accepted for this paragraph to apply. This may include an error of judgement or omission on the part of the examiner, or information about the trade mark that was not available to the Registrar at the time of examination, for example:

   ·   the examiner may have overlooked or discounted information that would lead, if properly considered, to the examiner rejecting the application; or

   ·   an international application for a conflicting mark having an earlier priority date had not yet been filed in Australia.

   The Registrar is not limited in what he or she may consider.

   In relation to the second limb (section 38(1)(b)), the Explanatory Memorandum provided:

   This consideration is not limited to the circumstances as they existed when the trade mark was accepted. Further, the Registrar is not limited in what he or she may consider.

   The new provision will allow the Registrar to revoke acceptance of a trade mark only when this course of action is reasonable, taking account of all of the circumstances. The intention of this provision is to focus attention on the reasonableness of the Registrar's actions, and not on whether or not an `error or omission' or a `special circumstance' preceded the registration of the trade mark.

   This provision ensures that the Registrar will be in a better position to effectively keep invalidly accepted trade mark applications from becoming registered, thus protecting the public interest.

   …

   This type of scenario must considered in light of the guidance provided in the Trade Marks Office Manual of Practice and Procedure (“the Manual”)[2]:

   [2] At Part 38.2.4

   It may also be reasonable to revoke acceptance in the circumstances where the decision to accept is one that cannot reasonably be supported by the accepted and defined tests and the decision made by the examiner is:

   ·     manifestly wrong,

   ·     clearly not just a difference of opinion, and

   ·     obviously disregards established authorities

   As Hearing Officer Williams said in the decision of Re Jack Grieve:

   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.

   Discussion

   Section 44

8. The letter of intention to revoke states that the Trade Mark should not have been accepted as a ground of rejection under s 44 exists. The relevant provisions of s 44 are reproduced below:

   44Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar goods see subsection 14(1).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:For predecessor in title see section 6.

   Note 3:For priority date see section 12.

   15. The Cited Trade Mark has an earlier priority date to the Trade Mark and it is identical to the Trade Mark. The Applicant has not made submissions that the Cited Trade Mark was not registered for goods that were similar to the goods for which the Trade Mark was sought to be registered. I reach the same conclusion as the examiner, namely that the Trade Mark is substantially identical to the Cited Trade Mark and the goods for which the Trade Mark is sought to be registered are similar to the goods for which the Cited Trade Mark is registered, in satisfaction of ss 44(1) of the Act.

   16. The Applicant had, in response to the examiner’s report, initially submitted that the Lam Declaration satisfied the requirements under s 44(4) of the Act, which in this case required the provision of evidence showing that the Applicant has continuously used the Trade Mark for a period beginning before 14 December 2005 in respect of the similar goods. At the hearing the Applicant indicated that it no longer pressed that submission, rather it stated that that the evidence of use is satisfactory for the Application to be accepted on the basis of honest concurrent use pursuant to s 44(3)(a) of the Act or other circumstances pursuant to s 44(3)(b).

   17.     The evidence in the Lam Declaration (supported by the Statutory Declaration of Jacqueline Susan Hansen) indicates that the Applicant had used the Trade Mark to describe a ham and cheese sandwich using a burger bun, which was sold as a regular menu item between 1974 and 1990.  Since 1990 it has been sold intermittently in a small number of locations, being for a period in 1998 in Victoria, in 2006 in WA, in 2007 in Bunbury, WA and for a limited period in 2014.  The Lam Declaration does not indicate the number of YUMBO products sold since 1990.  It includes examples of advertising material but this material is mostly undated and there is no evidence of the breadth of this advertising.  Its evidence of reputation consists of a petition to ‘bring back the yumbo’ signed by 21 people, a Facebook page on a similar topic created in 2008 with 2000 followers and a single article in 2019 by the Daily Mail. 

   18. In order for s44(4) of the Act to apply, I would have to be satisfied that there was evidence of continuous use of the YUMBO mark since before 14 December 2005 and ending on 15 August 2019. I agree with the Applicant’s concession that the Lam Declaration shows intermittent use and hence the requirements under s 44(4) of the Act are not satisfied.

   Subsection 44(3)(a): Honest Concurrent Use

   19.     In McCormick & Co Inc v McCormick[3] Kenny J stated:

   [3] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, [30].

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the marks in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

9. The first McCormick criterion concerns the honesty of adoption of the Trade Mark.   In the present case, the Applicant has provided clear evidence that it chose to adopt the Trade Mark honestly and without awareness of the Cited Mark; indeed the Applicant first used YUMBO prior to the creation of the Trade Mark. 

10. When considering the degree of confusion likely to ensue (the third McCormick criterion) I note that this is a case where the respective trademarks fall into the category of ‘triple identity’, which the Trade Marks Office Manual of Practice and Procedure defines as those cases involving ‘trade marks which are identical or substantially identical, and used for the same goods/services in the same geographical area’. There is therefore a high risk of confusion.

11. With respect to the second McCormick criterion, the Trade Mark has been used for 3 limited periods after 14 December 2005, two of those in limited geographical locations.  I am provided with very little evidence of the extent of sales or advertising featuring the Trade Mark since 2005.  The Applicant’s use of the Trade Mark prior to 2005 is of little relevance to my consideration, since it was not concurrent with the existence of the Cited Mark.

1. With respect to the fourth McCormick criterion, there is no evidence before me of any instances of confusion between the marks though given that this is not an opposition proceeding, I do not have the benefit of any evidence from the Cited Owner as to whether any such confusion exists.  Nor, given the limited use of the Trade Mark, can I place weight on the lack of confusion since the use of the Trade Mark was limited to particular locations and limited time periods. 

2. With respect to the relative inconvenience to the parties if the Trade Mark were to proceed to the registration (the final McCormick criterion), I have no evidence before me of any inconvenience to the owners of the Cited Mark if the Trade Mark were to proceed to registration though I note that the Cited Mark has been registered for 15 years and as such it may be assumed that the inconvenience to the owners of the Cited Mark may be significant.[4]  Given the limited evidence of use of the Trade Mark by the Applicant since 1990, I am not satisfied that the failure to register the Trade Mark would result in any greater inconvenience then that suffered by any unsuccessful applicant.  In particular, the evidence of use of the Trade Mark before me does not support the Applicant’s submissions that the Applicant has a strong reputation in the Trade Mark.  

   [4] See Ex parte v Richard Peter Jefferies [2018] ATMO 161, [28].

3. While the process of assessing honest concurrent use is not a mechanical calculation of the five factors set out in paragraph 17, I find that while the Applicant’s use of the Trade Mark has been honest the fact that the Trade Mark is identical to the Cited Mark, covers identical goods and there is limited evidence of concurrent use persuades me that this is not a case where it is appropriate to apply the provisions of s 44(3)(a)

   Subsection 44(3)(b): Other Circumstances

4. The Applicant submits that the Trade Mark should be accepted pursuant to s 44(3)(b) of the Act. I note that the ‘other circumstances’ referred to in s 44(3)(b) of the Act typically refer to circumstances such as the owner of an earlier registered mark providing a valid letter of consent or an applicant already having a registered trade mark for similar goods and services, though it is not limited to those particular matters. In order for a mark to be registered by reason of s 44(3)(b) I must be satisfied that the circumstances outlined by the Applicant justify acceptance of the application to register the Trade Mark, notwithstanding the real risk of deception or confusion.

5. The Applicant’s submits that this provision should apply on the basis of 45 years of use of the Trade Mark in Australia and the United States and the significant advertising undertaken in the United States since 2014.  The evidence supporting the reputation of the Trade Mark in the United States consists of three newspaper articles from 2014 (each of which notes that the YUMBO sandwich was taken off Burger King menus in 1974 and relaunched in 2014) and 2 pages of Facebook posts from 2014 surrounding the relaunch of the YUMBO sandwich.  

6. The minimal evidence of use of the Trade Mark in the United States is manifestly insufficient to show spillover reputation such to support acceptance under s 44(3)(b) of the Act. Equally, I am unpersuaded that the prior use of the Trade Mark in Australia between 1974 and 1990 is a relevant consideration to justify acceptance of the application to register the Trade Mark, given the real risk of deception or confusion referred to in paragraph 21 above.

7. The Applicant also suggests that the fact that it has amended the specification of the Trade Mark and that there is limited evidence of use of the Cited Mark by the Cited Owner are relevant considerations under s44(3)(b). The recent amendment is of no relevance; the Applicant still seeks to register an identical mark for essentially identical goods to the Cited Mark. The Cited Owner’s purported lack of use is also not relevant. This is an ex parte application. I would not make a finding of non-use without the Cited Owner having the opportunity to put on evidence, furthermore the proper procedural steps that an Applicant should take in this case is to file an application for removal for non use, which the Applicant has done (and will be determined in good time).

8. Finally the Applicant argues that as it was the first user of the Trade Mark in Australia the Cited Owner was not entitled to register the Cited Mark in 2005. This is an irrelevant consideration to the Application of s 44(3)(b). If the Applicant wishes to revoke the Cited Mark it may make such an application under s 84A of the Act; this is not the proper forum for consideration of such a question.

9. In circumstances where there is little evidence of use of the Trade Mark and a real risk of deception I am unpersuaded that the circumstances identified above justify registration under s 44(3)(b) of the Act.

10. Having taken into account the circumstances that existed at the time of acceptance, I find that the decision to accept the Trade Mark was one that could not reasonably be supported by the accepted and defined tests. With this in mind, it is necessary to consider the second limb of the test under section 38.

    Section 38(1)(b)

11. The second limb of s 38 requires consideration of whether revocation is reasonable, taking into account all the circumstances. As mentioned earlier, s 38(1)(b) is not limited (as s 38(1)(a) is) to circumstances existing at the time of acceptance. The fact that there is an opposition afoot and the status of that opposition is therefore a relevant circumstance.

12. Cooley Investments Pty Ltd[5] is an example of a case where despite the s 38(1)(a) requirement being satisfied, by reason of the second limb of ss 38(1) not being satisfied the Delegate found that it was not reasonable to revoke the acceptance of that application. In that case, the Registrar’s Delegate noted that a relevant factor to be taken into account is the status of any opposition proceedings that may already have been commenced against an application and found that consideration of the s 44 ground for that trade mark application (which involved complex ownership issues outside the scope of examination) would be more closely considered and tested by opposition procedures.

    [5] [2011] ATMO 7, [14] - [16].

13. However Cooley Investments Pty Ltd does not establish a firm rule that when an opponent has commenced opposition proceedings it will not be reasonable to revoke acceptance. It is not appropriate to require an opponent to incur costs by continuing opposition proceedings in circumstances where it is clear, following receipt of evidence and submissions from the Applicant, that the decision to accept the Trade Mark was one that could not reasonably be supported by the accepted and defined tests. To put it another way; when the Registrar is not satisfied, on the evidence and submissions before her, that the provisions of s 44(3) should be applied, there is no benefit in requiring an opponent to provide further evidence and submissions in such a case.

14. The Applicant has referred to the history of the use of the Trade Mark as a relevant factor however I have discussed those factors when considering the s 44 ground above and am not persuaded that they suggest that the decision of the Registrar to revoke registration is not reasonable in the circumstances. The Applicant also submits that revocation would be a waste of the Registrar’s resources. I would consider requiring an opponent and the Registrar to determine an opposition in the present circumstances to be a bigger waste of the Registrar’s resources. I am equally unpersuaded that the claims of purported inconvenience to the Applicant would justify the Registrar accepting a mark whose acceptance was not one that could reasonably be supported by the accepted and defined tests. I am satisfied that it is reasonable to revoke acceptance of the Application and return it to examination.

    Decision

15. I am satisfied, in terms of s38 of the Act, that the application should not have been accepted and that it is reasonable to revoke its acceptance. Accordingly I revoke acceptance of trade mark application 2030672 and the application will be returned to examination.

    Nicholas Smith

    Hearing Officer

    Oppositions and Hearings

    10 November 2020