Telstra Corporation

[2006] ATMO 31

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 940393(9) SUPER BUZZ and 940394(9, 38) - SUPER BUZZ CARD and device - in the name of Telstra Corporation.

Delegate:	Alison Windsor
Representation:	Michael Wolnizer and Sally Foreman of Davies Collison Cave, Patent and Trade Mark Attorneys
Decision:	Ex parte: proposed revocation of acceptance – section 38 not made out – opposition proceedings to continue.

Background

1. Telstra Corporation (“the applicant”) filed the two trade mark applications shown in the table below on 16 January 2003.  The goods/services were amended during the course of examination, and those shown here are as ultimately amended.

Number	Trade mark	Class/es	Goods/services
940393	SUPER BUZZ	9	Telephone cards; publications and communications in electronic form; associated parts and accessories and fittings in this class
940394	9 38	Telephone cards; publications and communications in electronic form; associated parts and accessories and fittings in this class Telecommunication services including local, long distance and international voice services; messaging services

1. In the first examination report the applicant was advised that trade mark application 932498 was a ground for rejection under the provisions of section 44 of the Trade Marks Act 1995 (“the Act”).  In response the applicant provided evidence of use to support acceptance under either subsections 44(3) (honest concurrent use) or 44(4) (prior use).  The examiner was not persuaded by the evidence and maintained the objection.  The applicant made further submissions but the ground for rejection was maintained in a third report.  In response to further submissions by the applicant the file was reviewed by a Principal Examiner who advised the applicant in a fourth report that in order to make out a case for ‘prior use’ it would have to show use of the trade marks prior to the priority date of the cited application.

2. The applicant responded with further submissions and another statutory declaration, following which the applications were accepted for possible registration under the provisions of subsection 44(4) by the Principal Examiner (hereinafter known as ‘the acceptance officer’).  Registration was then opposed by United Wholesale Communications Pty Limited (“the opponent”). 

3. During the evidence in support stage of the opposition the opponent requested the Registrar to revoke acceptance of both applications. Its request was considered by a different Principal Examiner who advised the applicant that she intended to revoke acceptance under the provisions of section 38. The applicant asked to be heard and the matter came before me in Canberra on 10 March 2006. The applicant was represented via video link by Michael Wolnizer and Susan Foreman of Davies Collison Cave, patent and trade mark attorneys.

   The Law

   Revocation of acceptance

4. Section 38 relevantly provides:

   38.(1) If, before a trade mark is registered, the Registrar is satisfied:

   (a) that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or
   (b) that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations;

   the Registrar may revoke the acceptance of the application.

   Submissions

5. In its letter the opponent says there is a case for revocation as the applicant’s evidence does not establish prior trade mark use and the final examination report includes an erroneous date reference.  This is relevant, the opponent says, as the report refers to a date in October 2003 at which prior use had to be established whereas the relevant date is actually 29 October 2002, the date on which cited application 932498 was filed.

6. The opponent says all four examination reports stated there was insufficient evidence and information to apply the provisions of either subsection 44(3)(a) or 44(4). It submits the additional information supplied after the 4^th report did not add anything to what was already on file and that the trade mark applications were accepted:

   “1.        Due to error, including a failure to ensure Telstra’s final evidence and submissions addressed the key issue raised in the 4^th report, or a misunderstanding of the relevant date because of the typographical error in the 4^th report; or

   2.           By omission, including omitting to ensure the statements made in Telstra’s submissions were substantiated by Telstra’s evidence.”

7. The matter of the relevant date, whether it was a true misunderstanding as to the appropriate date or an inadvertent typographical mistake, appears prominently in the Principal Examiner’s letter proposing the revocation.  She said:

   The examiner/acceptance officer commented on the assessment form prior to accepting the application that “use prior to Oct 2003 established through definite steps to bring into trade mark use”.  In his fourth report the acceptance officer again referred to the relevant date as October 2003.  It would appear the decision to accept was influenced (in part at least) by reference to this date.  Unfortunately, the date is not correct and the correct date for considering prior use was October 2002”.

8. The Principal Examiner also referred to acceptance of the trade marks under the provisions of subsection 44(4), and says her review of the information on file shows that it does not firmly establish that prior use had taken place. She found that despite the volume of information on file, the date of first use was not able to be established.

9. The applicant submitted at the hearing that the references to the incorrect date on the two documents mentioned in the Principal Examiner’s letter do not constitute an error or omission for the purposes of section 38, and were mere typographical errors. It said it is clear the acceptance officer was under no misapprehension about the correct priority date and submitted the typographical error did not influence his acceptance of the applications. This was clear, the applicant said, from the other references to the correct date on documents included in the file.

10. The applicant submitted it had clearly established use of both trade marks before the priority date of the cited trade mark. They argued their evidence was also sufficient to establish honest concurrent use, allowing the provisions of paragraph 44(3)(a) to be applied as an alternative. They said they has developed a significant reputation in the trade marks through considerable use and that this would support acceptance under the provisions of paragraph 44(3)(b) - other circumstances. They said that if the trade marks were to be rejected, they could simply reapply and almost certainly obtain registration on the basis of their use up to the relevant filing dates. They pointed to the acceptance of two subsequently filed applications for the same trade marks, 1054793 and 1054794, pursuant to subsection 44(3) of the Act.[1]

    [1] These applications were advertised as accepted in the Australian Official Journal of Trade Marks dated 23 March 2006.

    Discussion

11. The matter to be determined in deciding whether acceptance of a trade mark application should be revoked is whether an error omission occurred during the course of examination so that the trade mark under consideration was improperly accepted.  Alternatively, consideration must be given to whether there are special circumstances peculiar to the case which mean the trade marks should not be registered.

    Error or omission in the course of examination

12. In Re Application by Remington Products Inc,[2], the Smooth and Silky case, the delegate concluded that the reconsideration of acceptance, or the conclusion that the judgment to accept ought to have been exercised in a different way, does not entitle revocation on the basis of “error”.  If the objection 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 is not appropriate.

    [2] (1989) 18 IPR 251

13. The Macquarie Dictionary (on-line version) defines an error as being, inter alia, a mistake, or a belief in something that is untrue.  In the Smooth and Silky case[3], the delegate referred to the High Court’s earlier interpretation of the word ‘mistake’ being that “a mistake exists when a person erroneously thinks that one state of facts exists when, in reality, another state of facts exists”. 

    [3] supra, at page 253

14. In the instant case the Principal Examiner proposing to revoke the acceptances believed the acceptance officer had made his decision to accept on the basis of an incorrect date.  If he did accept on the basis of use up until October 2003, rather than use up until October 2002, then there is a definite error.  This would be a case where the acceptance officer had “erroneously thought one state of facts existed when, in reality, another state of facts existed”.

15. However, I cannot say definitely that this error did occur.  The examination file includes several references to the correct date.  I have to assume the acceptance officer made himself familiar with the whole file before accepting the applications for registration, and this assumption is borne out by his comments in the fourth report.  If he was familiar with the contents of the file, then he was familiar with the appropriate date.  I cannot be satisfied the references to the date in 2003 are anything more than typographical errors.  There is simply not enough information on the file to be definite about the import of this incorrect date in the final decision.

16. The Principal Examiner also said the date of first use could not be clearly established from the information on the file.  She said ”the applicant has provided a great deal of information for consideration but despite this wealth of information, the date of first use is not able to be established”.  This is her opinion, and it differs from that of the acceptance officer, who appeared to be satisfied that the date of first use was defined in the evidence.  As noted in Smooth and Silky a difference in opinion is not sufficient to warrant revocation.  The Principal Examiner has not pointed to anything on the official file which showed, in her opinion, when trade mark use did commence, nor did she describe the deficiencies in the applicant’s evidence which meant she was not satisfied that use had occurred by October 2002. In other words there is nothing before me to show the acceptance officer’s evaluation of the evidence was clearly wrong.

17. For these reasons I am not satisfied from the material before me that the acceptances were made because of an error or omission made in the course of examination.

    Special circumstances

18. Now I must consider whether there are special circumstances peculiar to this case which would demand I revoke the acceptances.  Any action contemplated in this regard must take note of the fact that the Registrar has already accepted the applications for possible registration.  Special circumstances in the case must therefore be of sufficient weight to overturn this original decision.

19. Special circumstances as they apply to the Act are to be given a liberal interpretation. In Re Nike International Ltd[4] the delegate said:

    The phrase “special circumstances” where it appears in the Act, is generally given a liberal interpretation. That is, what constitutes “special circumstances” is determined on a case by case basis and there is no rigid demarcation between what circumstances are special and what circumstances are not. However, “special circumstances” is not intended to be a ‘catch-all phrase and the status of ‘special circumstances” must not be readily applied.

    [4] (2000) AIPC 91-645

20. The Trade Marks Manual of Practice and Procedure offers some assistance in the matter of what can be regarded as “special circumstances” for the purpose of section 38 of the Act. It cites incorrect indexing resulting in a missed citation, problems with researching the mark, or convention documents being received late, resulting in identification of a relevant citation post acceptance. Obviously, none of these scenarios fit the situation here.

21. “Special circumstances” in respect of section 38 were considered most recently in Re Command Staffing LLC[5]. In discussing the circumstances which might qualify an error or omission in the course of examination to be regarded as “special circumstances” for the purpose of section 38, the delegate said:

    The special circumstances provision in section 38 of the Act exists exactly for cases such as the subject application – clear cut examples of an apparent disregard for the accepted authorities and the defined tests that apply to trade mark examination, causing an entirely unreasonable exercise of delegation, having the final effect of potentially allowing two deceptively similar trade marks to co-exist on the Register.

    [5] (2005) 33 IPR 403

22. In the instant case, there is no “clear cut example of an apparent disregard for the accepted authorities”.  The information on the file is ambiguous, and I am unable to identify whether or not there was error, let alone whether or not this error would qualify as a special circumstance.  Accordingly I am not satisfied that the provisions of paragraph 38(1)(b) are applicable to this case.

    Discretion

23. I have found that no ground for revocation existed. Accordingly, there is no possible basis for revocation. However, it might be useful to note here that the opposition proceedings in this matter are well advanced, with the evidence in answer due to be served. Accordingly, I will state that, had I found a ground for revocation was established, I would have used the discretion allowed me under section 38, and declined to revoke the acceptances.

    Decision

24. As I am not satisfied the provisions of section 38 of the Act have been made out, I refuse to revoke acceptance. Applications 940393 and 940394 therefore retain their status of “opposed”, and the opposition proceedings are to continue.

    Alison Windsor
    Hearings Officer
    Trade Marks Hearings
    IP Australia

    10 April 2006