Trade mark application number 2110501 (class 9) – INX TMX – in the name of INX Software Pty Ltd

[2021] ATMO 160

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2110501 (class 9) – INX TMX – in the name of INX Software Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Applicant: Griffith Hack
Decision:	2021 ATMO 160 Trade Marks Act 1995 (Cth) – section 33 proceeding – sections 44 and 46 considered – ground for rejection under section 44 not established – valid divisional – trade mark application accepted.

Background

1. INX Software Pty Ltd filed the following divisional application on 10 August 2020 (‘Current Application’):

   Trade Mark:               INX TMX (‘Trade Mark’)

   Owner:  INX Software Pty Ltd (‘Applicant’)

   Application no.:         2110501

   Priority Date:             9 March 2015

   Specification:             Class 9: personnel travel logistics and management software for management of personnel travel, accommodation and work rosters; personnel travel booking software; software for management and booking of flights and accommodation; computer software for data collection, storage, management analysis and reporting; document management software; computer software for managing and recording compliance requirements for businesses and employee/contractor operations; computer software for management and logistics relating to human and equipment resources; human resource management, logistics and analytical software tools including software tools for acquisition of real-time data across human logistics functions; human resource logistics and management software tools to optimise the use of people in their operation and monitor operations including software tools to identify areas of potential improvement or potential hazards; computer software providing access to off line and real-time data across human logistics functions; human resource and logistics management software delivered via an online environment; computer software downloadable via an online intranet or extranet environment for use in relation to human logistics and management, including spreadsheets for personnel travel, work roster and accommodation management; computer programs and software sold, rented or distributed on-line; computer programs (downloadable software) (‘Goods’)

2. The Current Application is a divisional application from trade mark application number 1934939 (‘Parent Application’). As contemplated by the Trade Marks Act 1995 (Cth) (‘Act’), the Parent Application was a divisional of trade mark application number 1829633 (‘Grandparent Application’), which in turn was a divisional of trade mark application number 1679786 (‘Great Grandparent Application’).[1]

   [1] Act s 45(2). Relevant details of the Parent, Grandparent and Great Grandparent Applications are listed in Annexure A to this decision.

3. At the outset, it is convenient to set out the application history of the Trade Mark. A ground for rejection under s 44 of the Act was initially raised against the Great Grandparent Application. The citation identified was earlier trade mark registration 852981 for the plain word ‘TMX’ in respect of ‘computer software’ (‘Cited Mark’).[2] The Applicant did not lodge submissions or evidence to overcome the ground for rejection. Instead, it filed a divisional application, being the Grandparent Application, and allowed the Great Grandparent Application to lapse. The Applicant adopted a similar approach with respect to the Grandparent and Parent Applications insofar as the Cited Mark was raised as a ground for rejection, a divisional application was filed and the pending application was allowed to lapse.

   [2] Relevant details of the Cited Mark are listed in Annexure B to this decision.

4. The Current Application was examined as required by s 31 of the Act. Given the Applicant’s history of filing successive divisional applications without addressing the ground for rejection, a notice of intention to reject (‘Notice’) was issued to the Applicant on 11 September 2020.[3] The Notice identified the Cited Mark as a ground for rejection under s 44 of the Act and raised an objection under s 46 of the Act asserting:

   This divisional application does not divide the goods claimed from those claimed in the parent. It is therefore not a valid divisional. If you intend to continue with the application, please delete any references to a divisional application. The new priority date would be 2020-08-10.

   [3] Ordinarily, a first examination report would issue to the Applicant after the examination of a divisional application. However, the first examination report issued in respect of the Parent Application warned the Applicant that ‘further divisional applications will likely initiate the rejection process’.

5. The Notice provided the Applicant with the option of requesting a hearing, withdrawing the application or applying for a decision on the written record. On 2 November 2020, the Applicant applied for a decision on the written record and responded to the Notice with two submissions. First, it claimed that the Current Application should be deferred as the Cited Mark was expired but still within the renewal grace period,[4] and second, it submitted that the Current Application was a valid divisional application because the Goods omitted the claim for ‘business process and workflow management software’ in the Parent Application. Unpersuaded by either submission, the examiner maintained their intention to reject the Current Application pending the Applicant’s request for a decision on the written record.

   [4] Act s 79.

6. A nominal hearing date was scheduled and, despite an invitation to do so, the Applicant did not file any further submissions and/or evidence. The matter has now been allocated to me for determination as a delegate of the Registrar of Trade Marks. In doing so I take account of the above detailed material. This material comprises the written record.

7. As a preliminary observation, the ground for rejection and objection raised must be considered afresh. Furthermore, s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration, unless it is satisfied that there are grounds under the Act for rejecting it or the application has not been made in accordance with the Act.

   Discussion

   Section 44

8. The Cited Mark was removed from the Register of Trade Marks on 13 April 2021. As such, the s 44 ground for rejection listed in the Notice no longer constitutes a barrier to acceptance of the Current Application.

   Sections 45 & 46

9. Section 45 of the Act relevantly provides:

   Divisional applications

   (1)  If a single application for the registration of a trade mark in respect of certain goods and/or services is pending (parent application), the applicant may make another application (divisional application) for the registration of the trade mark in respect of some only of the goods and/or services in respect of which registration is sought under the parent application.

   Note: For applicant and pending see section 6.

   (2) To avoid doubt, the parent application may itself be a divisional application.

10. Section 46 of the Act relevantly provides:

    Rules relating to divisional applications

    (1)  A divisional application must:

    (a)  be for the registration of the trade mark to which the parent application relates; and

    (b)  specify the goods and/or services to which it relates; and

    (c)  specify the goods and/or services that are to remain in the parent application.

    Note: For divisional application and parent application see section 45.

    (2)  When a divisional application is made, the Registrar must, unless the parent application has lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made.

11. The Parent Application was a single application in the Applicant’s name and was pending when the Current Application was filed.[5] The Current Application seeks to register the trade mark to which the Parent Application relates and specifies the goods to remain in the Parent Application. In this context, the central issue is whether the Goods constitute ‘some only’ of the goods in the Parent application.

    [5] Act s 223A.

12. The expression ‘some only’ is not defined in the Act. However, on its ordinary meaning, the expression plainly indicates that the divisional application will only contain some of the claims in the parent application. That is, the specification of a divisional application must not encompass every single good and/or service in the parent application, and the former must be narrower in scope than the latter. To interpret the expression ‘some only’ otherwise would effectively render the time limit imposed for prosecuting a trade mark application redundant given an applicant could prosecute an application for the exact same goods and/or services in perpetuity. With that said, s 45(1) of the Act does not prohibit the claims made in a divisional application’s specification from being similar to the goods and/or services in the parent application. For example, a claim for ‘red wine’ constitutes some only of a claim for ‘wine’ despite being similar goods.

13. Here, the Parent Application contains the following goods (‘Parent’s Goods’):[6]

    Class 9: Personnel travel logistics and management software for management of personnel travel, accommodation and work rosters; personnel travel booking software; software for management and booking of flights and accommodation; computer software for data collection, storage, management analysis and reporting; business process and workflow management software; document management software; computer software for managing and recording compliance requirements for businesses and employee/contractor operations; computer software for management and logistics relating to human and equipment resources; human resource management, logistics and analytical software tools including software tools for acquisition of real-time data across human logistics functions; human resource logistics and management software tools to optimise the use of people in their operation and monitor operations including software tools to identify areas of potential improvement or potential hazards; computer software providing access to off line and real-time data across human logistics functions; human resource and logistics management software delivered via an online environment; computer software downloadable via an online intranet or extranet environment for use in relation to human logistics and management, including spreadsheets for personnel travel, work roster and accommodation management; computer programs and software sold, rented or distributed on-line; computer programs (downloadable software)

    [6] Emphasis added.

14. The only difference between the Goods and the Parent’s Goods is that the former does not contain the claim for ‘business process and workflow management software’ (‘Excluded Goods’). The Excluded Goods, being unqualified, would include both downloadable business process and workflow management software as well as recorded business process and workflow management software.[7] Evidently, the Excluded Goods, whilst potentially similar, are not wholly encompassed by any of the particularised claims in the Goods such as ‘document management software’ or ‘computer software for management and logistics relating to human and equipment resources’.

    [7] The term ‘recorded’ means software recorded on a tangible medium such as a digital versatile disc.

15. However, the Goods retain two broad claims which require closer scrutiny – namely, ‘computer programs (downloadable software)’ and ‘computer programs and software sold, rented or distributed on-line’. In my assessment, neither claim has a broader scope than the Excluded Goods. With respect to the claim for ‘computer programs (downloadable software)’, this claim is expressly restricted to downloadable software. As such, it does not wholly encompass the Excluded Goods which, for the reasons explained in the above paragraph, contains recorded business process and workflow management software.

16. Meanwhile, the claim for ‘computer programs and software sold, rented or distributed on-line’ can be deconstructed to a claim for computer programs and software which is ‘sold on-line’, ‘rented on-line’ or ‘distributed on-line’. In other words, this claim is delimited to downloadable computer programs and software and does not include recorded business process and workflow management software. It follows that this claim, whilst encompassing part of the Excluded Goods, does not wholly encompass the Excluded Goods.

17. For the above reasons, the Goods therefore constitute ‘some only’ of the Parent’s Goods. Pursuant to s 46(2) of the Act, amendment of the Parent’s Goods to exclude the Goods is not required as the Parent Application has lapsed. Accordingly, the objection under s 46 of the Act no longer constitutes an obstacle to the acceptance of the Current Application.

    Decision

18. Section 33 of the Act relevantly provides:

    Application accepted or rejected

    (1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

    (a)  the application has not been made in accordance with this Act; or

    (b)  there are grounds under this Act for rejecting it.

    Note: For this Act see section 6.           

    (2) The Registrar may accept the application subject to conditions or limitations.

    Note: For limitations see section 6.

    …

    (4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

19. I am satisfied that the Current Application has been made in accordance with the Act and that no grounds for rejecting it exist. Accordingly, I accept trade mark application number 2110501.

    Nicholas Barbey
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    22 December 2021

    
    

    Annexure A

    Parent Application:

    Trade Mark:               INX TMX

    Owner:  INX Software Pty Ltd

    Application no.:         1934939

    Priority Date:             9 March 2015 (divisional)

    Lapsed:  9 August 2020

    Specification:             Class 9: personnel travel logistics and management software for management of personnel travel, accommodation and work rosters; personnel travel booking software; software for management and booking of flights and accommodation; computer software for data collection, storage, management analysis and reporting; business process and workflow management software; document management software; computer software for managing and recording compliance requirements for businesses and employee/contractor operations; computer software for management and logistics relating to human and equipment resources; human resource management, logistics and analytical software tools including software tools for acquisition of real-time data across human logistics functions; human resource logistics and management software tools to optimise the use of people in their operation and monitor operations including software tools to identify areas of potential improvement or potential hazards; computer software providing access to off line and real-time data across human logistics functions; human resource and logistics management software delivered via an online environment; computer software downloadable via an online intranet or extranet environment for use in relation to human logistics and management, including spreadsheets for personnel travel, work roster and accommodation management; computer programs and software sold, rented or distributed on-line; computer programs (downloadable software)

    Grandparent Application:

    Trade Mark:               INX TMX

    Owner:  INX Software Pty Ltd

    Application no.:         1829633

    Priority Date:             9 March 2015

    Lapsed:  20 June 2018

    Specification:             Class 9: personnel travel logistics and management software for management of personnel travel, accommodation and work rosters; personnel travel booking software; software for management and booking of flights and accommodation; computer software for data collection, storage, management analysis and reporting; business process and workflow management software; document management software; computer software for managing and recording compliance requirements for businesses and employee/contractor operations; computer software for management and logistics relating to human and equipment resources; human resource management, logistics and analytical software tools including software tools for acquisition of real-time data across human logistics functions; human resource logistics and management software tools to optimise the use of people in their operation and monitor operations including software tools to identify areas of potential improvement or potential hazards; computer software providing access to off line and real-time data across human logistics functions; human resource and logistics management software delivered via an online environment; computer software downloadable via an online intranet or extranet environment for use in relation to human logistics and management, including spreadsheets for personnel travel, work roster and accommodation management; computer programs and software sold, rented or distributed on-line; computer programs (downloadable software); software for use via desktop, web browser tools and mobile devices

    Great Grandparent Application:

    Trade Mark:               INX TMX

    Owner:  INX Software Pty Ltd

    Application no.:         1679786

    Priority Date:             9 March 2015

    Lapsed:  4 March 2017

    Specification:             Class 9: personnel travel logistics and management software for management of personnel travel, accommodation and work rosters; personnel travel booking software; software for management and booking of flights and accommodation; computer software for data collection, storage, management analysis and reporting; business process and workflow management software; document management software; computer software for managing and recording compliance requirements for businesses and employee/contractor operations; computer software for management and logistics relating to human and equipment resources; human resource management, logistics and analytical software tools including software tools for acquisition of real-time data across human logistics functions; human resource logistics and management software tools to optimise the use of people in their operation and monitor operations including software tools to identify areas of potential improvement or potential hazards; computer software providing access to off line and real-time data across human logistics functions; human resource and logistics management software delivered via an online environment; computer software downloadable via an online intranet or extranet environment for use in relation to human logistics and management, including spreadsheets for personnel travel, work roster and accommodation management; computer programs and software sold, rented or distributed on-line; computer programs (downloadable software); kits comprising recorded materials (discs, software, tapes, recordings) and electronically or optically stored instructional manuals, sold together as a unit; software for use via desktop, web browser tools and mobile devices

    Annexure B

    Trade Mark:               TMX

    Owner:  IMX Software Group

    Application no.:         852981

    Priority Date:             3 October 2000

    Status:  Removed – Not Renewed

    Specification:             Class 9: computer software