Sealite Ltd

[2009] ATMO 99

TRADE MARKS ACT 1995

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

Re:Proposal to revoke acceptance of trade mark application number 1087290 (9, 18, 22, 25, 28) - TABOU- in the name of Sealite Ltd

Delegate:

Bianca Irgang

Representation:

Applicant – Written submissions from Joanne Martin of F B Rice & Co.

Decision:

2009 ATMO 99

s 38 – Revocation of acceptance – should not have been accepted – revocation reasonable in all the circumstances - Acceptance revoked.

Background

1. Sealite Ltd (‘the applicant’) filed application number 1087290 for the word “TABOU” on 23 November 2005 in classes 9, 18, 22, 25 and 28 of the International Classification of Goods and Services (‘Nice’ classification). The application proceeded to be examined and was eventually accepted with the following details:

Trade mark:   TABOU

Trade mark registration:             1087290

Priority Date:  23 November 2005

Owner:   Sealite Ltd

Goods Specification:  Class: 9 Protective apparatus in this class for divers; diving suits, diving masks

Class: 18 Bags and luggage; bags for transport of surfboards and sail boards; sport bags, beach bags

Class: 22 Sails, sails for sailboards

Class: 25 Clothing, swimming clothing, swim wear, bathing trunks, bathing suits, bath robes, bath sandals, bath slippers, surfski (snowboard) clothing; wet suits for windsurfing, kiteboarding and surfing; sportswear, leisurewear, wet suits, gloves for windsurfing, gloves for divers

Class: 28 Sporting apparatus; surfboards, as sailboards, as surfskis (snowboards), as well as boards for surf riding, masts for sailboards, masts for surfboards, straps for sailboards, straps for surfboards, bags for the transport of surfboards and sailboards and for sailboard and surfboard accessories, surfbags, bags for the transport of surfskis (snowboards), skateboards, surf kites and kiteboards; windsurfing goods, kiteboarding goods not covered under other classes; kites, kites accessories and windsurfing accessories

Endorsements:  Convention priority claimed: 27 May 2005, European Communit, No. 004458451 in respect of diving suits, diving masks in class 09, sport bags, beach bags in class 18, sails, sails for sailboards in class 22, clothing, swimming clothing, swim wear, bathing trunks, bathing suits, bath robes, bath sandals, bath slippers, surfski (snowboard) clothing; wet suits for windsurfing, kiteboarding and surfing; sportswear, leisurewear, wet suits, gloves for windsurfing, gloves for divers in class 25 and surfboards, as sailboards, as surfskis (snowboards), as well as boards for surf riding, masts for sailboards, masts for surfboards, straps for sailboards, straps for surfboards, bags for the transport of surfboards and sailboards and for sailboard and surfboard accessories, surfbags, bags for the transport of surfskis (snowboards), skateboards, surf kites and kiteboards; windsurfing goods, kiteboarding goods not covered under other classes; kites, kites accessories and windsurfing accessories in class 28.

1. Examination of the application was expedited at the request of the applicant. The official file shows that trade mark application 1087290 “TABOU” was examined in the normal fashion. One adverse report was issued on 23 June 2004. In that adverse report the examiner raised six trade marks, including 1044874 “Tabu (stylized)” and 1068921 “Tabu” (the two TABU trade marks), as grounds for rejection under s. 44 of the Act. All of the citations were eventually withdrawn and trade mark 1087290 “TABOU” was accepted for registration on 3 December 2008. Acceptance was advertised on 18 December 2008.

2. Following a conversation with the representatives of a third party, Frostbland Pty Ltd (“Frostbland”)[1], on 17 June 2009 a delegate of the Registrar proposed revocation of the acceptance of this application on the basis of the s. 44 and a perceived conflict with the two TABU trade marks, the details which are as follows:

   [1] On 18 March 2009 Frostbland Pty Ltd applied for an extension of time in which to lodge a Notice of Opposition to the registration of trade mark 1087290.

Trade mark:  

Trade mark registration:             1044874

Priority Date:  3 November 2004

Owner:   JEAN-MARC LA BAYSSE

Goods Specification:  Class: 22 Sacks and bags, tents

Class: 24 Textiles and textiles goods

Class: 28 Games and playing things gymnastic and sporting goods, surfboards, bodyboards, skateboards

Class: 32 Beers, mineral and aerated waters and other non alcoholic drinks, fruit juices, fruit drinks, soda waters

Class: 35 Advertising

Class: 38 Telecommunications

Class: 41 Film and DVD production

Class: 42 Design and development of computer hardware and software

Trade mark:  Tabu

Trade mark registration:             1068921

Priority Date:  9 August 2005

Owner:   FROSTBLAND PTY LTD

Goods Specification:  Class: 18 Bags: cosmetic bags/cases, handbags, travel bags/goods, toiletry bags and wetpacks, backpacks and shoulder bags; overnight bags; leather and imitaions of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and travel bags, umbrellas, parasols and walking sticks; whips, harness or saddlery

1. The applicant was given the opportunity to be heard but elected not to do so and, instead, filed submissions and requested a decision on the written record. I have been delegated to decide whether the proposed revocation of acceptance for the above trade mark is appropriate.

The Law

1. Revocation of acceptance is governed by s. 38 of the Act, as amended by the

Intellectual Property Laws Amendment Act2006, and reads as follows:

(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.

1. The amended s. 38 clarifies that the Registrar is able to take account of any circumstances that existed which should have prevented acceptance of a trade mark. Contrary to previous provisions, it is important to note that there is nothing in the amended legislation that limits the Registrar in what she may consider. Previously the legislation focused on those cases involving ‘error and omission’ or ‘special circumstances’, however, this is no longer the case.

2. The scope of my decision in this matter concerns firstly the issue of whether the original acceptance was unsound taking account of all the circumstances that existed when the application was accepted. Should I find that the acceptance was unsound, as a delegate of the Registrar, I have the discretion to revoke acceptance, but only if I am satisfied that this is reasonable.

Applicant’s submissions

1. The applicant’s submissions addressed the two arms of s. 38, being firstly whether the application should have been accepted, and secondly, whether it is reasonable to revoke, considering all the circumstances. The representative of the applicant, Joanne Martin, claimed that the examiner was correct in withdrawing the two TABU trade marks as grounds for rejection due to the applicant gaining ownership of prior registration 1003164. The details of trade mark registration 1003164 “T Tabou and device” are as follows:                 

Trade mark:  

Trade mark registration:             1003164

Filing Date:  20 May 2004

Goods Specification:  Class: 18 Bags, including travel bags, bags for the transport of surfboards and sailboards

Class: 28 Sporting and sporting articles including sailboards and surfboards

Endorsements:   Convention priority claimed: 21 November 2003, France, No. 03 3 258 294 in respect of sailboards and surfboards; travelling bags, bags for the transport of surfboards and sailboards.

1. Ms Martin argued that a simple change of opinion was insufficient to allow revocation. Ms Martin’s submissions went on to assert that the acceptance and registration of the two TABU trade marks in the face of the applicant’s earlier registration for trade mark 1003164 “T tabou and device” indicates that all the trade marks are sufficiently distinguishable from each other to be able to coexist. This view was presumably based on the supposition that registration 1003164 was considered by the examiners when they accepted the two TABU trade marks.

2. Ms Martin’s submissions then went on to the second arm of s. 38, that is, that revocation must be reasonable given the present circumstances. Ms Martin asserts that there is no clear basis for the revocation of acceptance of the applicant’s trade mark due to the prior rights established by virtue of registration 1003164 and the overall differences between the two TABU trade marks and the present application.

3. Ms Martin also noted that an extension of time in which to file a notice of opposition had been requested by Frostbland and allowed by a delegate of the Registrar. As a consequence of the potential opposition by Frostbland, Ms Martin has argued that the proper course of proceedings would be to allow the owners of the two TABU trade marks to put forward their cases in opposition proceedings and have the validity of the respective parties’ rights resolved in that forum.

Discussion

1. Section 38 indicates that all the surrounding circumstances must be taken into account when determining whether it is reasonable for the Registrar to revoke acceptance. I have reviewed the examination file of the present application in detail. In order to discuss the issues surrounding the proposal to revoke acceptance of this application, it is important that I outline the normal practice of an examiner in relation to the conduct of searches of the register for the purposes of s. 44.

2. Firstly, an examiner builds a search strategy by entering different parameters into various fields of the search facility. Each search request will return a certain number of ‘hits’. These ‘hits’ are the number of trade mark records that match the search criteria. The examiner then reviews each record one by one, extracting those that immediately appear similar to the trade mark of the application or that require further consideration. Once the search is completed the examiner will then look more closely at the list of extracted trade marks which have been saved onto the electronic application file. These extracts are then annotated to show the outcome of the consideration - for example, that the trade mark has been raised as a ground for rejection, or that it has been considered but not cited with a brief reason as to why not.

3. In the present case, the search strategy used by the examiner meant that trade mark registrations 1003164 “T tabou and device” and the two TABU trade marks were extracted for consideration under s. 44. The official file shows that trade marks 1003164 “T tabou and device” and the two TABU trade marks (along with three other trade marks that have since either lapsed or been removed from the register) were raised as grounds for rejection of this application under s. 44 of the Act.

4. On 16 October 2008 the agents for the applicant responded to the first adverse report stating that the present application was no longer in conflict with the six citations raised because:

• The applicant was now the owner of trade mark 1003164 “T tabou and device”; and

• By virtue of gaining ownership of trade mark 1003164 “T tabou and device”, the applicant now had rights pertaining to the use of the word “TABOU” which preceded the priority dates of the two TABU trade marks.

• The remaining citations had either lapsed or been removed from the register.

1. In support of its second claim the applicant pointed to the acceptance of the two TABU trade marks in the face of trade mark 1003164 “T tabou and device”. The applicant asserted that the Trade Marks Office had already determined that the two TABU trade marks were distinguishable from 1003164 “T tabou and device” for the same goods. The applicant further asserted that its prior rights in 1003164 which incorporated the word “TABOU”, extended to the present application 1087290 for the plain text word “TABOU”. The examiner accepted this premise and accepted the present application for registration.

2. I, however, do not accept this reasoning.

3. In this case, it is probable that the examiner did not consider why the two TABU trade marks were accepted for registration in the face of the pre-existing registration for trade mark 1003164 “T tabou and device”. A close inspection of the official files for the two TABU trade marks reveals that the search strategies employed by those examiners would not have located trade mark 1003164. As a consequence of this, the examiners did not extract or apparently consider trade mark 1003164 before accepting the two TABU trade marks for registration.

4. It is not possible to ascertain whether the examiners ever assessed registration 1003164 “T tabou and device” against the two TABU trade marks in terms of s. 44 but it is very likely that this was simply not done. Therefore, I cannot agree with the applicant’s argument that the acceptance of these two TABU trade marks means that the present application is not deceptively similar to either of the TABU trade marks.

5. Each case must be assessed on its merits - with regard to the relevant judicial tests - not with regard to the state of the register. I refer to the comments of Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) AIPC 91-539 at paragraph 35:

   I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.  It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

6. I note the applicant’s submissions that having gained ownership of trade mark registration 1003164 “T tabou and device”, the applicant now has rights pertaining to the use of the word “TABOU”. However, I do not agree with this argument. While it is true that trade mark registration 1003164 does incorporate the word “TABOU”, it also includes a number of other elements including additional words and a very striking and prominent device element. It is the combination of this device element along with the letter “T” in a shaded box preceding the stylized word “tabou” that the applicant is now the registered owner of. This previous registration does not necessarily grant the applicant ownership or rights in the single word “TABOU” and it is not a sufficient reason for the withdrawal of the s. 44 ground for rejection.

7. In the present case, the examiner did initially determine that the two TABU trade marks (as well as 1003164) were deceptively similar to the present application. For the sake of determining if revocation of the present application is appropriate under s. 38, I will assess the two TABU trade marks against the present application for the purposes of s. 44 of the Act to determine if a ground of rejection exists under s. 44.

Deceptive Similarity

1. The crucial consideration for this trade mark application is that of “deceptive similarity” under the provision of s. 44 of the Act. It involves a comparison of the applicant’s trade mark “TABOU” with the two TABU trade marks already on the Register.

2. The test for deceptive similarity is stated in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (per Dixon and McTiernan JJ at 658):

   ‘the marks ought not … be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.’

3. The term “TABOU” is a distinctive term for sporting goods and bags. If a “mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection”, (Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 162 (HL) this can cause confusion. In this case the only feature of the applicant’s trade mark is the simple text word “TABOU”.

4. In fact, all the trade marks consist of a single word which begins with the prefix ‘TAB-’ and end with the letter ‘U’. The applicant’s trade mark “TABOU” differs from the two TABU trade marks by only one letter. The addition of the letter ‘O’ towards the end of the applicant’s trade mark is not enough to sufficiently differentiate it from the cited trade marks. Such spelling can be interchangeable and phonetically equivalent especially when located towards the end of a word. This form of modern substitution is common practice and it is likely that a casual observation by the general Australian consumer would not make a distinction between the trade marks. In Rysta Limited’s Application[2], Luxmoore LJ held at 108 that:

   It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

   The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

   [2] (1943) 60 RPC 87

5. Applying the relevant tests and with reference to Re Application by the Pianotist Co Ltd[3] I accept that the visual and aural similarities between “Tabu” and “TABOU” only serve to emphasise that it is probable that all the trade marks would be pronounced as phonetic equivalents by the Australian customer. This is particularly likely given the tendency in the English language to slur the termination of words[4].

   [3] Re Application by the Pianotist Co Ltd  (1906) 1A IPR 379

   [4] London Lubricants (1920) Limited Application (1995) 42 RPC 264

6. In the instance of one of the TABU trade marks (1044874) being a stylized version of the word “TABU”, customers will most likely refer to the word “TABU” when ordering the product or services without reference to the particular stylized font it is depicted in. Despite the spelling and font being different, the visual and phonetic similarities between applicant’s mark and the two TABU trade marks are still likely to give rise to confusion, if not outright mistake.

The respective goods

1. For me to find that a ground for rejection applies under s. 44 I must also consider the goods to which the trade marks will be applied. The goods in trade mark 1044874 “Tabu (stylized)”, in part, read:

Class 28: Games and playing things gymnastic and sporting goods, surfboards, bodyboards, skateboards

- which are the same goods as:

Class 28: Sporting apparatus; surfboards, as sailboards, as surfskis (snowboards), as well as boards for surf riding, masts for sailboards, masts for surfboards, straps for sailboards, straps for surfboards, bags for the transport of surfboards and sailboards and for sailboard and surfboard accessories, surfbags, bags for the transport of surfskis (snowboards), skateboards, surf kites and kiteboards; windsurfing goods, kiteboarding goods not covered under other classes; kites, kites accessories and windsurfing accessories in the current application.

1. The same can be said for the goods in trade mark 1068921 “Tabu” which, in part, read:

Class 18: Bags: cosmetic bags/cases, handbags, travel bags/goods, toiletry bags and wetpacks, backpacks and shoulder bags; overnight bags; leather and imitaions of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and travel bags…

- and are also the same goods as:

Class 18: Bags and luggage; bags for transport of surfboards and sail boards… in the current application.

1. The applicant has claimed a convention priority date of 27 May 2005 for sport bags and beach bags. This convention claim predates the priority date for trade mark 1068921. Therefore, the applicant’s claim for sport bags and beach bags is claiming an earlier priority date than the cited mark for the purposes of this decision. However, the applicant’s other goods mentioned above are the same as the goods contained in the specifications of the previously registered trade marks.

Section 38

1. Taking all of the aforementioned tests and facts into account I am satisfied that the applicant’s trade mark should not have been accepted. Therefore, the first limb, that is, ss 38(1)(a) of the Act, is satisfied.

2. Turning now to the second limb of the s. 38 provisions, ss 38(1) (b), is whether the Registrar is satisfied that it is reasonable to revoke the acceptance, taking into account all of the circumstances. Under the previous s. 38 legislation and Re Application by Remington Products Inc (1990) 18 IPR 251, if the objection to acceptance is the result of nothing more than a difference in opinion between trade mark officers, or a change of mind on the part of a trade mark officer, then revocation of acceptance was not appropriate. In the present matter, however, the question clearly goes beyond one of a difference of opinion. I am satisfied that a valid ground for rejection does in fact exist. Prima facie, but subject to anything else that might be relevant to my consideration, this suggests that revocation is appropriate.

3. Ms Martin’s submissions address the point that clearly the examiners of the two TABU trade marks knew of the existence of registration 1003164 “T tabou and device” but decided against raising a ground for rejection. It is asserted this gives rise to the inference that the marks are not “deceptively similar” or “substantially identical” under s. 44 of the Act. As mentioned earlier, I am unsure as to how she came by this view of events as there is nothing on the examination files of the two TABU trade marks to indicate that this is what occurred. I have already discussed the applicant’s previous trade mark registration 1003164 “T tabou and device” and the circumstances surrounding the examination and acceptance of the two TABU trade marks.

4. I have also discussed the applicant’s arguments regarding their prior rights in trade mark 1003164 “T tabou and device”. However, this previous registration does not mitigate the error in withdrawing the s. 44 grounds for rejection against the present application such that revocation is not necessary.

5. The Registrar is not restricted in respect of the information she considers relevant in her assessment of whether to revoke. Clearly revocation on the basis of a change of opinion is utterly inappropriate, and to be avoided at all costs. However, the current case involves more than a simple change of opinion. The facts of the matter support the view that an examiner has overlooked or discounted information that, had it been properly considered, would not have resulted in a ground for rejection being withdrawn. Under the legislation as it stands, it is not necessary to identify where or how the error has occurred, only to establish that the application should not have been accepted considering all the circumstances and that it is reasonable for the Registrar to revoke acceptance of trade mark.

6. I note Ms Martin’s view that the dispute between the parties is better served by the opposition forum. However, I do not agree with this view. This may have been a consideration if evidence had already been served by the opponent and/or the matter was more advanced. However, in this case only an extension of time to file a Notice of Opposition has been granted. No Notice of Opposition has been filed. This potential opposition is only in its very early stages and, where revocation is correct and reasonable, I see this as the preferable course of action.

7. Certainly, an action under s. 38 must be carefully considered as one of the Registrar’s delegates has already exercised the delegation to accept the application for possible registration. Therefore, the facts of the matter must be of sufficient weight to overturn the existing decision. While any revocation of acceptance should not be proposed lightly, I have taken into account that there are other actions and avenues which an applicant may consider to overcome the grounds for rejection under s. 44. I am satisfied that a clear ground for rejection exists under s. 44, and the presumption of registrability is not applicable in this matter.

8. Balancing of the inconvenience to the applicant caused by the revocation, and the need to ensure the trade mark register is as consistent and accurate as possible, I am satisfied that it is reasonable to revoke acceptance under s. 38 of the Act, and return the trade mark to examination, allowing the applicant the opportunity to appropriately overcome any grounds for rejection.

9. The applicant has not brought to my attention any formal evidence of use that would allow acceptance of its trade mark under the provisions of s 44(3)(a) or s 44(4).  I am not aware of any other circumstances that would allow acceptance of the mark under the provisions of s 44(3)(b).

Decision

1. I therefore revoke the acceptance of application 1087290 “TABOU”. In due course, after the allowance of an appropriate period for any appeal from this decision, the application will be sent to an appropriate examination section for re-examination and reporting. If the Registrar has been served with a notice of appeal before that time, I direct that the re-examination shall not occur until the appeal has been discontinued, or in the event of a decision of the court, that the application be subject to that order. 

Bianca Irgang

Hearing Officer

Trade Marks Hearings

30 November 2009