Re: Trade mark application number 1970295 (class 41) - NSW Young Guns in the name of Australian Karting Association Ltd

[2020] ATMO 95

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1970295 (class 41) – NSW YOUNG GUNS- in the name of Australian Karting Association Ltd.

Delegate:	M.Cooper
Representation:	Applicant: Australian Karting Association Ltd Opponent: Northern Rivers Kart Club Incorporated
Decision:	2020 ATMO 95 Trade Marks Regulations 1995 (Cth) – reg. 5.12 – request to amend statement of grounds and particulars to substitute s 58 for s 58A – request allowed – SGP amended.

Background

1. The application by Australian Karting Association Ltd (‘the Applicant’) to register trade mark application no. 1970295 has been opposed, under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’), by the Northern Rivers Kart Club Incorporated (‘the Opponent’). This decision concerns the Opponent’s request that the Registrar amend the Statement of Grounds and Particulars it filed (‘SGP’) under r.5.12(1)(a) of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

2. On 5 August 2019, the Opponent filed a Notice of Intention to Oppose and on 27 August 2019 it filed its Statement of Grounds and Particulars (‘SGP’). It nominated s 58A as its sole ground of opposition, completing the particulars as follows:

   Opposition to registration of the name ‘NSW Young Guns’ We originated the name ‘YOUNG GUN TITLES’ 23 yrs ago + registered the name ‘YOUNG GUN TITLES’ with ASIC in 2006. It has been the name of annual major event since 1996.

3. The Trade Marks Office wrote to the Opponent on 3 October 2019 advising that the SGP was inadequate, relevantly stating in respect of s 58A:

   To proceed with this ground you must:

   Provide an earlier trade mark application or registration number.

   Provide the goods and/or services in respect of which the trade mark has been used.

   …

   Please note the Regulations allow for amendment to the statement of grounds and particulars if an error has been made. For example, if section 58A has been chosen instead of section 58 which allows for common law provisions.

   What you need to do now. You have 14 days from the date of this letter to his letter to file more information to rectify this inadequacy.

4. Accordingly, on 8 October 2019 the Opponent’s secretary wrote to the Trade Marks Office seeking to amend its SGP. She claimed

   I am writing to inform you I have made an error when choosing the section form [sic]we needed to lodge regarding our Opposition to a Trademark. I have chosen a section 58A when I should have chosen a section 58 as we do not Have a Trademark and we want to protect our Common Law provisions.

   Your email has stated that if an error has been made, we can ask for an amendment, would we please be able to apply for this so my error can be corrected.

5. On 15 November 2019, the Trade Marks Office responded, declining the request on the basis that the particulars listed under the s 58A ground were inadequate for s 58. It was further noted that if the Opponent wanted to amend the particulars to replace s 58A with s 58 a detailed explanation was required and that a change of mind is not an ‘error’. The Opponent was allowed until 29 November 2019 to provide a response.

6. On 17 November 2019, the Opponent’s President responded, noting the Opponent is a club run by volunteers and as such did not have the funds to seek legal advice. They had registered their name with ASIC and thought this would be enough to protect their trade mark. She outlined the history of the club and attached several documents showing the Opponent’s use of ‘Young Guns Titles’ over several years.  She said there had not been a change of mind but that they had been given ‘wrong information as to what form we were to use.’

7. The Trade Marks Office replied on 30 January 2020 noting that the Opponent did not have a trade mark to support its s 58A ground and had not claimed a s 58 ground in its SGP. Referencing the reg. 5.12 provisions regarding amendment of an SGP, it was noted that for the s 58A ground to be amended to s 58 an actual error or omission had to be demonstrated and no information had been provided to indicate that an error or omission had occurred. The correspondence noted that the correct form had been filed. It advised that a new opposition ground could be added under reg. 5.12(1)(c) only if the Registrar was satisfied that it related to information of which the Opponent could not reasonably have been aware at the time of filing the SGP. The Opponent had not provided any new information. An intention to refuse the application was advised and 14 days were allowed for the Opponent to make a request for a hearing in relation to the amendment request. On 12 February 2020 the Opponent requested a hearing. On 20 March 2020 the Applicant and Opponent were advised of the hearing scheduled for 8 May 2020.

8. As a delegate of the Registrar of Trade Marks, I heard the matter by video conference on 8 May 2020. The Opponent’s President, Ms Diana Smith, appeared for the Opponent. The Applicant did not appear or seek to make any submissions.

   Submissions at hearing

9. Ms Smith outlined the Opponent’s lengthy history in running and promoting the karting event ‘Young Guns Titles’ in NSW and the ongoing dispute between various NSW karting clubs and the Applicant. She explained that the Opponent opposed registration of the Trade Mark on the basis that it was the first user of the Trade Mark, or one very similar to it. The Trade Marks Office correspondence of 5 October 2019 alerted her to the error and she said the Opponent immediately wrote into the office seeking to amend the SGP so that it reflected the s 58 ground. She said it was not a ‘change of mind’ but a simple error that, as soon as she was advised, she sought to correct. She explained that as a volunteer organisation the Opponent, while it had attempted to get legal advice, had been unable to afford it.

10. I noted the Trade Marks Office correspondence of 15 November 2019 which had drawn the Opponent’s attention to the particulars required for the s 58 ground to be assessed as adequate. They included the identification of a trade mark, a list of the goods and/or services provided under the trade mark, identifying when it was first used and any other reasons why the Applicant is not the true owner. Ms Smith relevantly responded that the Opponent’s trade mark was identified in the SGP as YOUNG GUN TITLES, which it claimed the Opponent had first used; that the services provided under the trade mark were the services relating to that karting event and it had been used in respect of that event for 23 years with the name having been registered with ASIC in 2006.

    Legislation

11. Regulation 5.12 relevantly provides as follows:

    Amendment of statement of grounds and particulars

    (1)  An opponent may request the Registrar to amend the statement of grounds and particulars to:

    (a)  correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or

    (b)  amend a ground of opposition; or

    (c)  add a new ground of opposition; or

    (d)  to amend the facts and circumstances forming the basis for the grounds.

    (2)  The Registrar may grant the request on terms that the Registrar considers appropriate

    (3)  However, the Registrar may grant a request to:

    (a)  amend a ground of opposition; or

    (b)  add a new ground of opposition.

    only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.           

    (4)  If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.

12. Assessment of the Opponent’s claims in this regard relevantly requires the identification of an error or omission and then consideration whether to exercise the Registrar’s discretion to allow the amendment (r.5.12(1)(a) and (2)). It was clear that the Opponent did not seek to add a ground to its SGP but to correct the error in its SGP insofar as it refers to the s 58A ground of opposition when it should reflect s 58.

    Consideration and Reasons

    Error or omission

13. Many of the authorities which relevantly concern an ‘error or omission’ in the Trade Marks or Patents legislation were decided in the context of an application for an extension of time to file a notice or pay a fee however they are also pertinent to an assessment of ‘error or omission’ under reg. 5.12(1)(a) of the Regulations.

14. Kimberly-Clark v Commissioner of Patents[1] is generally regarded as the leading authority concerning the meaning of the statutory phrase ‘error or omission’ in this area of the law. The observations of Jenkinson J were relevantly paraphrased by the delegate in Crown & Andrews Pty Ltd v All American Fremantle International Inc as follows:

    It appears from this part of Jenkinson J's judgment that the words " error or omission" should be given their plain, ordinary meaning and are not to be taken as a term of art. They should not be restricted by construction to certain categories of aberration of thought or behaviour such as misunderstanding, ignorance of the law, confusion or deception etc, or to mere inadvertences or accidental slips. Moreover, the error or omission must be obvious.[2]

    [1] (1988) 84 ALR 685 [694]

    [2] [1997] ATMO 36; 38 IPR 595 (18 July 1997).

15. In the circumstances of this application the relevant error is characterised as the Opponent’s nomination of s 58A instead of s 58 as the relevant ground of opposition. Section 58A only applies if the Trade Mark has been accepted for registration under s 44(4) (or a similar provision under Part 17A) which it was not. Furthermore, the particulars as completed by the Opponent are clearly applicable to a s 58 ground, not s 58A. The error is obvious. I also note that the heading for the s 58A ground (the words beside the tick box) states ‘Opponent has earlier use of the same/similar trade mark – section 58A’. To a lay person completing the form claiming earlier use of the Trade Mark, and unassisted by attorney or legal advice, this would at first glance seem to be the appropriate ground. As noted above ‘ignorance of the law’ and ‘inadvertence’ are relevantly included as a type of error or omission embraced by the legislation. On this basis I am satisfied that the Opponent has identified an ‘error’ within the meaning of r 5.12(1)(a) in nominating s 58A instead of s 58 in its SGP.

    Registrar’s discretion

16. Having established a relevant error, I must now determine whether to grant the request for the amendment of the SGP.

17. As the delegate observed in K-Tec Inc v Healthy Foods LLC [2016] ATMO 2016 at 23:

    The factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP are the likely prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment. In the present matter the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment are also relevant.

18. In relation to prejudice to the parties, the Applicant, although invited, has elected not to participate in the hearing or provide any submissions. There is no evidence that the amendment of the SGP would cause it any prejudice. As the evidence stages have yet to commence, it will have ample opportunity to know and respond to the Opponent’s claims. Conversely, a failure to amend the SGP would cause the Opponent significant prejudice because, as s 44(4) was not the basis on which the Trade Mark was registered as required by s 58A, its opposition would inevitably fail. Consequently, this factor weighs in favour of granting the Opponent’s request to amend the SGP.

19. With reference to the public interest, it is generally stated to lie in several factors. While these include the efficient and predictable conduct of opposition proceedings, they also include ensuring the accuracy of the Register and the desirability of ensuring the true owner of a trade mark at common law is able to prevent it being registered by another party. The material provided with the Opponent’s correspondence of 18 November 2019 demonstrated its lengthy use of “Young Gun/s Titles” for its events and their promotion. I note that the Trade Mark is strikingly similar to this promotional material, featuring stylised words, a person in a kart and various similar elements such as chequered flags on either side of the kart. On the face of it, the Opponent has an arguable case. In this context, I consider that the public interest weighs in favour of granting the Opponent’s request.

20. In relation to the adequacy of the particularisation of the ground, while the Regulations do not specify precisely what an SGP is to contain, I note that the Trade Marks Office Manual of Practice and Procedure relevantly provides as follows in relation to s 58 SGP particulars:

    There are broadly two factual settings that will adequately particularise this ground:

    Prior use of the same (or substantially the same) trade mark. The details required here will typically be:

    a characterisation of the first used trade mark,

    a description of the goods/services in respect of which the trade mark is used, and

    an assertion that the first use was before the priority date of the opposed application.

    The delegate assessing the adequacy of the particulars should not consider the similarity (or otherwise) of the first used trade mark to the opposed trade mark.[3]

    [3] Part 47, paragraph 1.2.5.

21. In the Opponent’s SGP it has identified the first used mark and the services provided under it. The assertion is also made that the Opponent first used it. In the circumstances I am satisfied that the particulars meet the requirements for the s 58 ground.

22. In relation to timeliness, the Opponent responded promptly and diligently, within five days of being notified on 3 October 2019 of the inadequacy of the grounds, in seeking the amendment. It has on each occasion responded promptly to the Trade Marks Office correspondence. This also weighs in favour of the grant of the amendment request.

23. Having regard to all the relevant circumstances, I am satisfied that the evidence weighs in favour of allowing the amendment to the SGP.

    Decision

24. For the above reasons I am satisfied that the Opponent has made an error in the grounds it nominated in its SGP and that its request to amend that ground should be granted.

25. Accordingly, under reg. 5.12(2), as delegate of the Registrar, I direct that the SGP be corrected to reflect s 58 as the ground of opposition to which the existing particulars refer.

26. As required by reg. 5.12(4), a copy of the amended SGP should be given to the Applicant and the opposition should then proceed in accordance with Part 5 of the Trade Mark Regulations 1995 (Cth).

    Mary-Ann Cooper
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    29 May 2020