Trade mark application number 1948343 (5, 32, 35) – BROC SHOT - in the name of Benjamin Silver and opposition to registration by Brocshots Australia Pty Ltd AND Request by Benjamin Silver to amend the owner name...

[2021] ATMO 41

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1948343 (5, 32, 35) – BROC SHOT - in the name of Benjamin Silver and opposition to registration by Brocshots Australia Pty Ltd

AND

Request by Benjamin Silver to amend the owner name under section 65 or 65A and opposition to that amendment by Brocshots Australia Pty Ltd

Delegate:	Bianca Irgang
Representation:	Applicant: David Larish of counsel instructed by Legal Vision Opponent: Written submissions by Mark My Words Trademark Services Pty Ltd
Decision:	2021 ATMO 41 Request by Benjamin Silver to amend the owner name under section 65 allowable. Owner name to be amended. Objection dismissed.

Background

1. This decision is in relation to a request (‘the request’) made by the attorneys of Mr Benjamin Silver, on 16 June 2020 under section 65 of the Trade Mark Act 1995 (Cth) (‘the Act’) to amend the owners name on trade mark application no. 1948343 (‘the Trade Mark’). IP Australia reviewed the amendment application and changed the owner’s name from Cellex Holdings Limited (‘Cellex’) to Benjamin Silver (‘the applicant’).

2. On 28 July 2020, IP Australia wrote to the applicant stating “I confirm that the amendment was required under s65(8) of [the Act]. However, on review of the declaration provided it was determined that this amendment should be processed under s65A…”

3. On the 22 July 2020 and pursuant to section 65A the opponent, Brocshots Australia Pty Ltd (‘the opponent’), opposed the amendment to the owner name. The opponent opposed the amendment arguing that:

• the application to amend the name of Cellex to that of Mr Silver is not an application within the terms of s 65, and it was rightly considered under s 65A; and

• having regard to the terms of section 65A, the amendment ought not be allowed as it does not meet the requirements of s 65A, namely:

  i.the application is not made to “correct a clerical error or an obvious mistake” within the meaning of s 65A of the TMA; and

  ii.ii. the allowing of such an amendment would not be “fair and reasonable in all the circumstances of the case”.

1. The applicant has naturally argued the opposite to the opponent stating that:

• The amendment should have been allowed under section 65 of the Act and there is no option to oppose an amendment under that provision; and

• Even if the amendment were to be considered under section 65A of the Act, the requirements under that section have been met.

1. Additionally, the opponent has argued against the applicant being able to provide the declaration of Brigit Rubinstein dated 20 January 2021 as support for its reasons as to why the request for the amendment was delayed. The reasons provided for this objection are essentially that the Registrar should not consider it or allow it into proceedings because it has no weight and will not change the outcome of this matter. I am allowing the declaration into evidence for consideration of this matter of the amendment. The declaration provides additional information surrounding the reasons for the delay in requesting the amendment which have already been raised by both parties in their respective submissions.

2. Both parties have met the various procedural requirements in prosecuting their respective roles in this matter and the opposition in general, including the filing of the required forms and evidence as prescribed in the Act and the Trade Mark Regulations 1995 (‘the Regulations’). Subsequent to the opponent’s objection to the amendment the applicant requested a hearing in the matter. Duly the parties provided their written submissions and the legal representative for the applicant, David Larish of counsel instructed by Legal Vision, appeared at the hearing on 2 February 2021.

Evidence

1. The Evidence in Support of the amendment consists of:

• declaration of Benjamin Silver dated 1 September 2020 with Annexure A (Silver 1); and

• the declaration of Brigit Rubinstein dated 31 August 2020 with Annexure BR1 and BR2 (Rubinstein 1).

1. The Evidence in Answer consists of:

• declaration of Catherine Macneil dated 21 September 2020 with annexures CM1 through CM5 (Macneil).

1. The Evidence in Reply consists of:

• declaration of Benjamin Silver dated 1 September 2020 with Annexure A (Silver 2); and

• declaration of Brigit Rubinstein dated 30 October 2020 (Rubinstein 2)

1. The Further Evidence consists of:

• declaration of Brigit Rubinstein dated 20 January 2021 (Rubinstein 3)

Relevant provisions

1. The following provisions of the Act and Regulations are relevant to the request:

65  Amendment after particulars of application have been published—request for amendment not advertised

(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 an application to which section 51 applies to remove one or more trade marks from the application.

(4)  An amendment may be made to correct an error in the classification of goods or services specified in the application.

(5)  An amendment may be made to add to the class or classes of goods or services specified in the application one or more other classes of goods or services if the Registrar is of the opinion that it is fair and reasonable in all the circumstances to do so.

(6)  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).

(7)  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.

(8)  Without limiting subsection (7), if the application specifies an applicant without legal personality, an amendment may be made under that subsection to change the reference to the specified applicant to a reference to a person with legal personality if that person can be identified as having made the application.

65A  Amendment after particulars of application have been published—request for amendment advertised

(1)  This section applies if:

(a)  the particulars of the application have been published under section 30; and

(b)  the amendment requested is not an amendment which could be made under section 65.

(2)  The application may be amended to correct a clerical error or an obvious mistake in the application if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to make the amendment under this section.

(3)  Subject to subsection (5), the Registrar must advertise the request for the amendment in the Official Journal.

(4)  Subject to subsection (5), a person may, as prescribed, oppose the granting of the request for the amendment.

(5)  If the Registrar is satisfied that a request for an amendment would not be granted even in the absence of opposition under subsection (4):

(a)  the Registrar need not advertise the request in accordance with subsection (3); and

(b)  the request cannot be opposed, despite subsection (4); and

(c)  the Registrar must refuse to grant the request.

Discussion

1. The opponent contends that this matter may be determined swiftly in its favour because the Trade Mark owner name was amended contrary to the Act. This is because at the time the application was filed on 15 August 2018, the entity which was named as the owner on the trade mark application did not exist. The company listed on the original Trade Mark application was Cellex Holdings Ltd and as of 15 August 2018, was not incorporated.

2. The timeline of events leading up to the amendment is as follows:

   ·     2014 – the Applicant, Mr Silver, commenced a business selling broccoli sprout health beverages.

   ·     2015 – Mr Silver came up with the Trade Mark for use on the goods his business is selling.

   ·     2018 – On the advice of his accountant Mr Silver decided on a corporate structure that would entail Cellex being the owner of the Trade Mark.

   ·     15 August 2018 – Mr Silver instructed and paid his legal firm to file the Trade Mark application in the name of Cellex which he mistakenly believed had already been incorporated on the advice of his accountant.

   ·     15 August 2018 – Trade Mark application was filed.

   ·     24 August 2018 – Cellex was incorporated in Hong Kong.

   ·     15 March 2019 – The opponent filed its Notice of Opposition and thereafter statement of grounds in particulars in regards to the Trade Mark. The statement of grounds and particulars under section 58, noted among other things, that Cellex was not a legal entity at the time of filing.

   ·     Thereafter the parties filed the Evidence in Support, Evidence in Answer and Evidence in Reply.

   ·     10 June 2020 – the parties were advised that a Hearing on the substantive issue was scheduled for 5 August 2020.

   ·     16 June 2020 – the applicant requests the amendment to the owner name.

   ·     18 June 2020 – the amendment was advertised in the Australian Official Journal for Trade Marks under section 65A for opposition.

   ·     20 July 2020 – the parties were advised of the change the owner name

   ·     22 July 2020 - pursuant to section 65A the opponent applied under section 224 for an extension of time in order to oppose the amendment to the owner name.

   ·     28 July 2020 - IP Australia wrote to the applicant stating “I confirm that the amendment was required under s65(8) of [the Act]. However, on review of the declaration provided it was determined that this amendment should be processed under s65A…”

3. The opponent asserts that because of the above information, the entity purporting to file the application had no recognizable legal status at the time the application was filed, however, did become a legal entity some days later. The opponent submits that the Registrar’s decision to amend the name of the owner from Cellex to Benjamin Silver was an amendment made contrary to the Act and as it is a substitution of now one legal person for another. However, I do not believe this is the case and the argument by the opponent requires discussion.

4. Firstly, I will consider the opponent’s argument that section 65 is not appropriate to make the amendment under and has not been complied with in any event.

Section 65

1. In order to determine whether or not the amendment can be made under section 65, I look at the filing of this Trade Mark and turn to section 27 of the Act.

2. Section 27 of the Act states:

   27 Application—how made

   (1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

   (a) the person claims to be the owner of the trade mark; and

   (b) one of the following applies:

   (i) the person is using or intends to use the trade mark in relation to the goods and/or services;

   (ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

   (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

   Note: For use see section 7.

   (2) The application must:

   (a) be in accordance with the regulations; and

   (b) be filed, together with any prescribed document, in accordance with the regulations; and

   (c) be made by a person or persons having legal personality.

   Note: For file see section 6.

   (2A) Despite paragraph (2)(c), an application for registration of a collective trade mark need not be made by a person or persons having legal personality.

   Note: For collective trade mark see section 162.

   (3) Without limiting the particulars that may be included in an application, the application must:

   (a) include a representation of the trade mark; and

   (b) specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark.

   (4) Regulations made for the purposes of paragraph (3)(b) may apply, adopt or incorporate any matter contained in any listing of goods and/or services published by the Registrar from time to time and made available for inspection by the public at the Trade Marks Office and its sub‑offices (if any).

   (5) An application may be made in respect of goods and services of one or more of the classes provided for in regulations made under subsection 19(3).

3. As detailed above, section 27 of the Act sets out how a person may apply for the registration of a trade mark in respect of goods and/or services. Significantly, a person may apply if they ‘claim to be the owner of the trade mark’ (section 27(1)(a)). A ‘person’ for the purposes of the Act is defined, subject to contrary intention, to include an unincorporated body of persons (section 6 of the Act).

4. An entity will have legal personality if the legal system confers rights and imposes duties on it. Natural persons and bodies corporations (such as corporations) have separate legal personality as per section 124 of the Corporations Act 2001. However, in the case of partnerships and trusts, the individual partners and the trustee are generally regarded as the ‘persons’ having legal personality. As such, business names are merely trading names which are not usually separate legal entities and cannot make an application for the registration of a trade mark.

5. Having said that, the issue before me is in answering whether an application purportedly made by a trade mark application purportedly made by an entity that at the time did not have legal personality can be amended into the name of a legal person without being considered substitution. In The King v The Commissioner of Patents and Others[1], the High Court considered the case where a notice of an objection to a patent, which was required to be made by a person, was made in the name of a firm, ie a mere trading name. Dixon J stated[2]:

   [1] (1939) 61 CLR 24

   [2] at 259-260

   To make an objection in the firm's name was irregular. The firm-name is the description of the partners acting in conjunction for the purposes and within the scope of the partnership. It may be conceded that, not only does it insufficiently identify the individuals constituting the partnership, but it indicates an association of persons acting in a particular capacity or right. But I do not think that the misdescription or misnomer involved in the use of the partnership name makes the notices of opposition mere nullities. Under the power to make regulations contained in sec. 108, it would, I think, be possible to authorize the use of the firm-name in a notice of opposition. In fact the regulations prescribe a form requiring the full names of the opponents. But the regulations also confer a power of amendment. A firm-name is, after all, a reference to persons, and, notwithstanding its inadequacy and the limitation of capacity or legal relationship implied, it notifies a real intention to oppose by real persons. In my opinion it forms a sufficient foundation to entitle the commissioner to proceed. It is needless to add that in a proper case irregularity in a notice may justify dismissal of the opposition. In the present case, however, it has been thought right to allow an amendment and thus to make the notice regular. (Emphasis added.)

6. Rich J in the above case held[3]:

   [3] at 253

   In these days the objection is overcome by amendment and not by the defendant pleading in abatement and offering a better writ or proceeding to the plaintiff. Accordingly I think that the commissioner acted rightly in amending the notice of opposition.

7. I believe that an analogy may be drawn between the circumstances discussed above and with the present case regarding an application for the registration of a trade mark. Where an application is made in the name of a firm or in a business name which lacks a legal personality and it is possible to show a real intention by a person or persons with legal capacity to make the application, I do believe that an amendment can be made.

8. As the opponent has argued that the Registrar should not have amended the application and cannot amend the application under section 65 to ‘substitute a new legal personality’, it raises the question of whether the application was able to be amended to reflect the real applicant. This requires me to consider the relationship between section 27(2)(c) of the Act and regulation 4.2(d) of the Regulations.

9. Regulation 4.2 of the Regulations states:

Application in approved form—requirements for filing

(1) To be taken to be filed, an application for registration of a trade mark that is in an approved form must:

(a) state that the application is for registration of the trade mark, or contain a clear indication to that effect; and

(b) include a representation of the trade mark that is sufficient to identify the trade mark; and

(c) specify the goods and/or services in relation to which the application is made; and

(d) include sufficient information to enable the Registrar to establish the identity of the applicant; and

(e) contain sufficient information to enable the Registrar to contact the applicant.

(2) If an application does not meet a requirement set out in paragraph (1)(a), (b), (c) or (d), the Registrar must give to the applicant written notice of the requirement.

(3) If the applicant meets the requirement within a period of 2 months from the date of the notice, the application is taken to be filed on the day on which the requirement is met.

(4) If the applicant does not meet the requirement within that period, the application is taken not to have been filed.

1. Regulation 4.2(1)(d) requires the application include ‘information that allows the identity of the applicant to be established’ and does not contain a requirement that the application specify the name of the applicant. This regulation determines that an application which identifies the applicant in such a way may still be treated as filed. In contrast, section 27 forms part of the suite of requirements that an application must meet prior to registration.

2. In the present case, the fact that Cellex was not a legal entity at the time of filing does not mean that the application did not meet the filing requirements. From the evidence it is clear that there was always a single person involved in the development of the Trade Mark, directions to accountants and legal representatives, and the care, conduct and financial responsibilities of all matters pertaining to the Trade Mark application, namely, Mr Silver. It is clear that Mr Silver always had a real intention to make the application to protect the Trade Mark that he developed for his business and that sufficient information was provided for him to be contacted/identified regarding the application. I am satisfied that the filing requirements under section 27 have been met.

3. As for the opponent’s argument that the Registrar amended the applicant’s owner name contrary to the Act, I am also in disagreement. The opponent put forward the case of Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited[4] (’Crazy Ron’s) as an authority that the substitution of the name of an application is not an amendment which is permissible under section 65(8) of the Act. The opponent contended that if such an amendment was made under section 65(8) of the Act then it invokes the opposition ground under section 62(a) and that the amendment is not otherwise permissible by reason of any other sub-section in section 65 of the Act. Section 65(8) states:

   [4] [2004] FCAFC 196

   65 Amendment after particulars of application have been published—request for amendment not advertised

   (8)  Without limiting subsection (7), if the application specifies an applicant without legal personality, an amendment may be made under that subsection to change the reference to the specified applicant to a reference to a person with legal personality if that person can be identified as having made the application.

1. Crazy Ron's is authority for the proposition that the amendment provision is not available where one 'person' or legal entity is to be substituted for another 'person' or legal identity, as where an individual lodges an application for a trade mark and later realises that the application should have been lodged in the name of a company with which he or she is associated. As the court said in Crazy Ron's, the appropriate course in such a case would be to withdraw the application and file a new one.  

2. However, the current case is distinguishable from Crazy Ron’s. In this case, as the opponent went to such great pains to prove to the Registrar and has repeatedly pressed in its arguments before me, Cellex was not a ‘person’ or legal entity at the time of filing but did become one a few days afterward so that any amendment to the owner name after Cellex became a legal entity would be a “substitution”. However, I do not believe that this argument holds water. The status of the owner at the time of filing is the date for us to consider. If an applicant does not have legal personality at the time of filing, this is not a self-correcting error that changes with time. Many sections of the Act and Regulations are in place to offer parties the ability to correct, amend, object and assign based upon the situation they find themselves in.

3. As in the same instance where a business name is tendered, there is explicit scope for section 65(8) to operate to permit an amendment to the application to indicate the person who caused the application to be filed, as the applicant. This is formally noting the identity of the original applicant rather than substituting one legal entity for another (as was the case in Crazy Ron’s). That is, the amendment to the application will not change who is applying for the registration of the trade mark but will correctly identify the person with legal personality who in fact filed it. I am satisfied that section 65(8) was the appropriate section to use for the amendment and I allow the amendment under section 65(8).

4. Having found that the amendment is allowable under section 65(8) there is no need for me to consider the amendment under section 65A.

Decision

1. The amendment to the owner name of trade mark application 1948343 is to be allowed.

Costs

1. As this is an administrative decision, I direct that each party will bear its own costs in this matter.

Bianca Irgang

Hearing Officer

IP Australia

25 May 2021