The Unplugged Cafe Pty Ltd

[1999] ATMO 117

TRADE MARKS ACT 1995

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

Re:Amendment of the statement of services on application number 676870 in the name of THE UNPLUGGED CAFÉ PTY LTD. 

Background
The applicant, The Unplugged Café Pty Ltd, filed application number 676870 on 2 November 1995 to register the trade mark THE UNPLUGGED CAFÉ in class 41, for the following services:

Musical booking agency services; agency services for musicians, composers, arrangers, and others in the performing arts; organising and conducting festivals relating to dance; services in relation to organising and running musical theatres, cafes and restaurants; securing and contracting musical performance; presenting live musical performances, music festivals, and music publishing; discotheque services; recording studios and night clubs; entertainment services including services provided by groups of musicians, vocalists and entertainers, and orchestras; production of films, videos, sound recordings, computer recordings, shows, concerts, radio and television programmes; interlinked and interactive entertainment, computer and video services in relation to games, and musical and vocal performances and all other goods (sic) in this class. 

After examination of the application, the trade mark was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks of 8 January 1998.  The statement of services in the acceptance advertisement appeared as follows:

Providing on-line information in the field of entertainment transmitted through cable subscription television or through a Web site via interconnected computer networks linked by common protocols.

On 25 February 1998, Viacom International, Inc. (the opponent) filed a notice of opposition to registration of the mark and, following several periods of extension of time granted to it for the purpose, it served the evidence in support on 16 August 1999.  The applicant's evidence in answer was therefore due to be served by 16 November 1999.

On 23 September 1999, a letter, accompanied by a statutory declaration and exhibits, was received from Lyndon Sayer-Jones & Associates, the solicitors acting for the applicant, requesting that, pursuant to the provisions of s.65(3), the statement of services be amended to the original form as filed, with the exception that the words at the end of the statement "in relation to games, and musical and vocal performances and all other goods in this class" be substituted by "in the nature of providing on-line information in the field of entertainment transmitted through cable subscription television or through a Web site via interconnected computer networks linked by common protocols".

The grounds for amending the statement of services were based on the claim that the solicitors, who had acted for the applicant during examination of the subject application, had mistakenly sought an amendment that related to the services queried by the examiner in the first report, which resulted in omitting the rest of the statement.  There had been no requirement by the examiner, nor was it the applicant's intention, that the services be limited only to those in respect of which the mark was accepted and advertised.  For those reasons, it was submitted that there had been a mistake of fact and/or error in relation to the amendment and, consequently, in acceptance of the applicant's mark.  A declaration, with exhibits by Timothy Eaton, a director of the applicant company, supported the request for amending the services on the application. 

In a letter of 27 September 1999, a senior examiner advised the applicant that the sought amendment could not be allowed, because such an amendment would extend the rights of the applicant and would unfairly prejudice the rights of other applicants, who would have searched the Trade Marks Office records since the amendment was effected on 10 December 1997.  The senior examiner also referred to the notice of acceptance of the mark of 16 December 1997 and a form listing the acceptance details, both sent to the applicant's solicitors.   

The applicant applied for a hearing in the matter, which was held in Sydney on 12 October 1999.  Mr Sophie Goddard of Counsel, instructed by Lyndon Sayer-Jones & Associates, appeared for the applicant.  Mr Timothy Eaton, of the applicant company, was also present.

Submissions
Referring to s.65 of the Act, Ms Goddard said that it provided for amendments of the particulars of a trade mark application after publication and acceptance of the application but before registration.  She submitted that the present case concerned a clear mistake of the particulars relating to the services covered by the application for registration, i.e. a mistake in the statement of the particulars in support of the application, being an omission of a very large part of the services applied for.  The applicant was therefore of the opinion that the mistake of fact could be rectified pursuant to s.65(3) of the Act.  In acquainting me with the circumstances of the case, Ms Goddard led me through Mr Eaton's declaration and the exhibits, stressing that it was evident from the material that neither the applicant nor the then solicitors, were required by the Trade Marks Office to consider abandoning the first portion of the services as originally specified.  The error, at least for the first part, had been made by the applicant's solicitors, Ms Goddard submitted.  She conceded that Mr Eaton had received, some time after the event, the statement in the amended form, but, having left the application in the hands of his solicitors, and believing they were properly conducting his affairs, he had not checked the particulars.  For that reason, he had not perceived, at that time, that a very significant portion had been omitted from the statement.  As the current applicant's solicitors were not aware of the precise circumstances of how the omission occurred, one needed to "do a little detective work" travelling through the exhibited copies of the correspondence, annexed to Mr Eaton's declaration.

Ms Goddard submitted that the application, as advertised, contained a mistake of fact, being the accidental omission of the services which were uncontested in the examiner's report.  David Securities Pty Ltd and Others v Commonwealth Bank of Australia (1991-1992) 175 CLR 353 was a case, Ms Goddard said, where the High Court had looked at the distinction between the mistake in fact and mistake in law, expressing the view that the distinctions were not nearly as defined as they had been in the past. That case was important simply for the proposition that, nowadays, the Courts and the Office ought not to treat the two with the same absolute rigorous distinctions. The alternative approach, Ms Goddard said, was to consider the omission as an error. An error could be something in the nature of a clerical error as, in the present case, it was the omission by the solicitor to carry over all the services. Here Ms Goddard relied on R v Commissioner of Patents: Ex parte Martin (1953) 89 CLR 381.

According to Ms Goddard, the applicant acknowledged the policy of the amendment provisions under the current Act not to extend the rights, the subject of an application, at any time after filing the application, after advertising of its acceptance, or post registration of the mark.  However, the fetter on broadening the application did not apply in circumstances where a clear mistake of fact had been made in the application, or an error had occurred in the classification of goods or services.  S.65(3) made it clear, Ms Goddard submitted, that, in circumstances of a mistake, an amendment may be made, irrespective of whether the result would be to broaden the application.  In addition, it did not impose any time constraints.  As to the latter, Ms Goddard said that the senior examiner had been wrong in determining that, due to the time that had elapsed since the services of the application were amended in December 1997, it was too late for seeking the amendment under consideration.  

Ms Goddard then turned to other factors which, she said, might affect the exercise of discretion to allow the requested amendment.  The applicant's solicitors had conducted a search of the Trade Marks Office records to enquire as to any other trade mark applications which included the word UNPLUGGED, or any otherwise similar marks to the applicant's mark.  The search had revealed no such marks other than those of the applicant and the opponent.  After presenting the search details to me, Ms Goddard noted, however, that a number of applications for a mark containing the word UNPLUGGED had been withdrawn, or had lapsed.  As a result, she submitted, any prejudice caused to the public, in the event of the amendment being granted, would be minimised.  By contrast, should the request be denied, the prejudice suffered by the applicant would be considerable.   

As a further factor in favour of the amendment, Ms Goddard submitted that the evidence, served by Viacom International, Inc. in support of its opposition, covered use of the mark for the broad range of services which the applicant had requested to be reinstated in the statement of services of the subject application.  In that regard, Ms Goddard referred to the statutory declaration by Robin E. Silverman, dated 12 August 1999.  If, however, the opponent desired to provide further evidence in relation to the services relating to the amendment, then the applicant would agree to have such evidence presented.  Accordingly, Ms Goddard submitted, the opponent would suffer little, or no prejudice, if the application for the amendment was successful.  In contrast, a refusal of the amendment would severely prejudice the applicant, given its decision to use the mark in connection with a business venture, which was to include the sort of services mistakenly omitted from the accepted application. 

At the conclusion of Ms Goddard's submissions, I explained that, if I were to find that the requested amendment was to proceed, then the subsequent actions would involve additional expenses to the opponent.  In such circumstances, the applicant would be expected to cover any expenses in relation to the actions.  Ms Goddard replied that the applicant accepted that costs would be a factor in the granting of the amendment. 

Discussion
In seeking to amend the statement of the services of the application, the applicant has relied on the provisions of s.65(3) of the Act.  S.65 prescribes that -

65.(1)         If the particulars of the application have been published under section 30, the application may be amended as provided in this section.

(2)       An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published. 

(3)      An amendment may be made to correct a mistake of fact or an error in the classification of any goods or services specified in the application.

(4)       An amendment may be made to change the type of registration sought in the application (for example, an application for the registration of a trade mark as a certification trade mark may be amended to an application for registration as a collective trade mark).

(5)       An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment ) the applicant would have under the registration if it were granted.

In the first report on the subject application, dated 2 October 1996, the examiner of trade marks stated:

1. I will consider your trade mark for acceptance if you meet the following requirements:

   As this application has not been accepted, the provisions of the Trade Marks Act 1995 apply. Under regulation 4.4 the expressions "all goods", "all services", "all other goods" or "all other services" are not allowed.

   Please specify the services for which registration is sought.

   Additionally, the following services may not fall in the class you have nominated: COMPUTER AND VIDEO SERVICES IN RELATION TO GAMES, AND MUSICAL AND VOCAL PERFORMANCES.

   Please provide more information so I can determine the correct class.  Trade pamphlets or illustrated brochures would be helpful."

This report was addressed to Gilbert & Tobin, solicitors of Sydney, who were then acting for the applicant.  In advising the requirements contained in the report to the applicant, in a letter of 23 October 1996 shown in the applicant's exhibit, the solicitors explained that, to comply with the objections, it was necessary to amend the statement of services by deleting the words "all goods in this class".  The solicitors had set out a revised statement of services in their letter, requesting the applicant to read it carefully so as to ensure that all the services were covered in the statement.  This statement reads as it was originally filed, but without the words "and all other goods in this class" at the conclusion of the statement.  The examiner's query relating to "computer and video services in relation to games and musical and vocal performances" was also brought to the applicant's attention.

In a further letter of 28 November 1997, the solicitors note that the revised statement of services is acceptable to the applicant.  The issue concerning the queried services is pursued again by suggesting an appropriate amendment.  This amendment, according to Mr Eaton, was discussed with Annick Vincent of Gilbert & Tobin, on or about 5 December 1997, whereupon Mr Eaton had instructed her to amend it in the manner in which it subsequently appeared in the advertisement of acceptance of the mark.  In a follow-up letter to the applicant, Ms Vincent advises the applicant that she had responded to the examiner's report by requesting that the statement of services be amended as instructed.  

It is clear from the examiner's first report that the objections did not concern the whole statement of services as it was filed, but only a small part at the end of the statement.  The communications between Mr Eaton and his solicitors indicate that the first objection regarding "all other goods in this class" was to be overcome simply by deleting this phrase from the original statement.  Both Mr Eaton and the solicitors then concentrated on the remaining examiner's requirement to clarify and re-word certain services, which the examiner had identified in the report in upper case letters.  In focussing her attention on only these services, the solicitor handling the application apparently had lost sight of the fact that the applicant was claiming a range of many other services confirmed in the solicitors' letter of 23 October 1996 and, consequently, an amendment was sought in relation to the queried portion of the services.  There is no evidence whatsoever to the effect that Mr Eaton had considered to restrict the services in such a manner 

Mr Eaton states in his declaration that he had been advised of the final amendment, but he had not realised that a significant part of the services, which was critical to his company's business concept and the main reason for seeking registration of the mark, had been deleted.  In instructing his solicitors on the amendment, he had understood that there was no doubt about the major part of the services remaining in the statement.  Mr Eaton does not say whether he was shown a copy of the notice of acceptance of the application, which is normally accompanied by a form containing the details of the accepted mark, including the statement of goods/services.  From the statement in his declaration, it can be assumed that, in advising him of the processed amendment and the date when acceptance of the mark was to advertised, the solicitors had simply referred to the amendment as previously discussed with Ms Vincent.  In exercising more care, Mr Eaton might have detected the omission in the solicitor's facsimile of 5 December 1997, where the solicitor informs the applicant that a request had been made to have the services "amended as follows" and sets out the wording of the statement.  However, allowances must be made for the fact that the applicant would have relied on the competency of his legal representatives to whom he had entrusted prosecution of his application, as, I suspect, many persons would do in a similar situation.  It appears that the drastic omission of the services came to Mr Eaton's attention upon receiving the evidence in support, served on the applicant on 16 August 1999.  Since the end of April 1999, another firm of solicitors has been and still is acting on behalf of the applicant - Lyndon Sayer-Jones & Associates.

Decision
Having regard to the circumstances as recounted and Ms Goddard's persuasive submissions, I consider that the amendment before acceptance of the applicant's mark, which unintentionally omitted a large portion of the statement of services from the application, constitutes a mistake of fact within the meaning of s.65(3) of the Act.  Denying a correction of the mistake in these circumstances would, I believe, be unjust and improper.  Consequently, I intend to allow the requested amendment.  However, given the current opposition to registration of the subject mark, the amendment can be effected only subject to a procedure, whereby the Registrar is to give a direction in terms of regulation 5.16.  The various steps foreshadowed in the procedure are the following:

1. Before giving a direction, pursuant to reg.5.16(3), the Registrar will allow the opponent, Viacom International, Inc., two weeks from the date of my decision to make representations in writing on the proposed direction, or seek a hearing in relation to the direction. 

1. The Registrar proposes to direct that:

   ·the acceptance of the application be re-advertised in the Australian Official Journal of Trade Marks

   ·the opposition in train be suspended

   ·the present opponent be allowed to amend its notice of opposition and, if necessary, serve additional evidence in support to that served and filed on 16 August 1999

   ·in view of the opposition being suspended, the Registrar will set a new date for the service of the evidence in answer on the present opponent, once the new opposition period has elapsed.  

Vija Zars
Hearing Officer
16 November 1999