Trade mark application 2084024 (35,36) - reddebtor (stylized) - filed in the name of Litigation Manage Pty Ltd.
[2020] ATMO 184
•1 December 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application 2084024 (35,36) - reddebtor (stylized) - filed in the name of Litigation Manage Pty Ltd.
Delegate:
Debrett Lyons
Representation:
Applicant: Rose Prendergast of Accomplish Legal
Decision:
2020 ATMO 184
Section 38 of the Trade Marks Act 1995 – revocation of acceptance – whether reasonable to revoke acceptance – acceptance not revoked
Background
Litigation Manage Pty Ltd (‘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:
2084024
Filing Date:
29 April 2020
Services: Class 35: business information; compilation of directories for publishing on the internet; searches relating to company information; providing business information via a web site; compiling indexes of information for commercial or advertising purposes; computerised business information services; compilation of business information; commercial information services provided by access to a computer database
Class 36: collection of debts; debt collecting; debt recovery; debt recovery agency; national debt collection; organising of debt collections; recovery of debts; debt collection agency services; debt collection agencies; bailiff services (debt collection)
·
Trade Mark:
(‘Trade Mark’)
The application was filed via the assisted filing service[1] and, after the Applicant elected to file it under pt 4 of the Act, the Trade Mark was examined as required under s 31 of the Act. The application passed examination without an adverse report and on 14 May 2020 was accepted for registration. Publication of acceptance in the Australian Official Journal of Trade Marks occurred on 30 September 2020.
[1] Trade Marks Regulations 1995 (Cth) pt 3A.
On 10 August 2020, this Office received correspondence from King & Wood Mallesons, Solicitors, requesting revocation of acceptance on the basis of s 44 of the Act (earlier conflicting trade mark on the Register), that letter drawing the Registrar’s attention to their client’s application (now registration) 1496548 for the trade mark, RED. I note here that yesterday, 30 November 2020, a Notice of Intention to Oppose final registration of the Trade Mark was filed by King & Wood Mallesons, Solicitors.
The request for revocation of acceptance was considered by this Office and on 25 August 2020, a notice of intention to revoke acceptance (‘NOIR’) was sent to the Applicant. In the NOIR an examiner states that ‘it has come to our attention that the trade mark should not have been accepted’. The NOIR then recites s 38 of the Act concerned with revocation of acceptance, provides a precis of s 44, and goes on as follows:
I have attached details of trade marks:
Registration no.1496548 - RED (filing date 15 June 2012)
Your client’s trade mark is REDDEBTOR Stylised, with the stylisation showing that the words RED and DEBTOR are distinct, albeit conjoined, elements. Given the descriptive connotations of “debtor” in the context of the services claimed, RED is the dominant and distinctive component of your client’s mark; it is also identical to the earlier registered mark. RED and REDDEBTOR have therefore been considered to be deceptively similar trade marks. This registration covers, inter alia, “business administration”, “compilation and provision of online directories”, “compilation of directories for publishing on the Internet” and “business and commercial information services” in class 35. These services are considered identical and similar to your client’s business information and information compilation services, also in class 35. Further, the earlier registration covers a range of financial services, including financial services provided as part of, or in conjunction with or in relation to the supply of wholesale and retail gas and electricity in class 36. These services could encompass and are therefore identical and similar to debt recovery and debt collection services, as included in your client’s application in class 36.
Application no.1771232 – RED (filing date 17 May 2016)
This application also covers RED solus and as such, the considerations for deceptive similarity are the same as those set out above. This application covers inter alia, service such as “business management”, “business administration”, “advertising, promotion, marketing, business management and business consultancy” and “business information provided online from a computer database for the Internet” in class 35. These services are identical and similar to your client’s business information and information compilation services in class 35. Further, this application covers broad terms in class 36 such as “monetary affairs” and “financial services” which encompass and are therefore identical and similar to debt recovery and debt collection services as covered by your client’s application in class 36. Given the similarity of the trade marks and the identity and similarity of the services, there is a risk that consumers would be confused as to the trade origin of services bearing those marks. Therefore, a Section 44 ground for rejection should have been raised against your client’s mark at examination.
What will happen next:
You have one month to respond to this letter. If you do not respond within one month, acceptance of the application will be revoked and the application will be returned to examination. A new report will then be sent to you detailing the precise nature of the grounds for rejection in accordance with the reasons outlined above. You will then be given a further 15 months to bring the application into order for acceptance. Alternatively, you have one month from the date of this letter to apply to be heard on this matter, to submit a request for a decision on the written record. A request to be heard or for a decision on the written record must be accompanied by the appropriate fee.
The Applicant requested to be heard and paid the appropriate fee. 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 4 November 2020 where the Applicant was represented by Rose Prendergast of Accomplish Legal. Prior to the hearing I received written outline submissions from the Applicant’s representative which I have also taken into account in coming to my decision.
Discussion
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.
By its wording, s 38 is a discretionary power. Both limbs of the test in s 38(1) must be satisfied before the Registrar may revoke acceptance. Further, as the Registrar’s Delegate in Globalscope Pty Ltd stated: ‘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’.[2]
[2] [2016] ATMO 14, [12]-[16], [20]-[21].
The current iteration of s 38 was the result of amendments to the Act heralded by the Intellectual Property Laws Amendment Bill 2006. The Explanatory Memorandum to that Bill stated that
Paragraph 38(1)(a) clarifies that the Registrar is able to take account of any circumstance that existed which should have prevented acceptance. … 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 …
Further, the Trade Marks Office Manual of Practice and Procedure states that it may be reasonable to revoke acceptance 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 and clearly not just a difference of opinion.[3]
[3] At Part 38.2.4.
Taking account of all the circumstances, I find that it is not reasonable to revoke acceptance of the Trade Mark. In other words, I find that s 38(1)(b) has not been satisfied. In reaching my decision I consider that the examiner was not manifestly wrong in accepting the application. The opposition period is running and the owner of a purportedly conflicting mark has filed a Notice of Intention to Oppose the Trade Mark.
The examiner’s original search report located registration 1496548 for the trade mark ‘RED’, against which was annotated: ‘different goods and/or services’. However, the search also located application 1771232 (‘RED’) against which was annotated: ‘marks sufficiently different’. Incongruous as these annotations may appear, they should be understood in context. The examiner’s search strategy located 895 active records for the exact word ‘red’ in classes 35, 36 and related classes. The report shows that the examiner did not investigate those records. I would think that was for good reason – they were indicative of the commonality of this term for relevant services. I observe then that though the letter from King & Wood Mallesons only cited registration 1496548 (against which the examiner’s entry concerned a goods/services comparison) the examiner’s search also considered the exact same mark under application 1771232 and from the perspective of direct comparison of the trade marks. That consideration thus applies to both marks.
The NOIR shows a reversal of attitude from that which taken during the original examination of the application, but the reason why is unclear. I cannot identify any record explaining the reversal of attitude towards the Trade Mark in the NOIR. All the relevant circumstances were known to the examiner. While the NOIR indicates a view that ‘debtor’ is a descriptive term in relation to the relevant services, the ‘red’ element is declared as distinctive. Putting to one side the implication of the 895 active records for ‘red’ in relevant classes, the two statements in the NOIR are hard to reconcile since to be in debt is to be, colloquially, ‘in the red’.
I find that the examiner’s original decision to accept the Trade Mark was one that was reasonably supported by the accepted and defined tests under s 44. Certainly, it was not manifestly wrong. While there is certainly some scope for differences of opinion to arise under the particular assessments of s 44 that took place at examination, that is not a good basis to find it reasonable to revoke acceptance now.
Decision
For these reasons I exercise my discretion not to revoke acceptance of application 2084024. The application will not be returned to examination.
Debrett Lyons
Hearing Officer
Oppositions and Hearings
1 December 2020
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