Trade Marks Office procedure

Revocation in the ATMO

We know that trade mark infringement proceedings commonly include a cross-claim for revocation of the relevant mark.  Attack is one of the best forms of defence.  Prescribed courts are empowered to remove a trade mark from the register by ss 86-88 and 92 of the Trade Marks Act 1995.  Aside from applications based on non-use, these provisions do not extend this power to the Registrar of Trade Marks.  Once a mark is on the register, you have to go to court to get it off, right?  Not quite.

The Intellectual Property Laws Amendment Act 2006 introduced a new provision to the TMA, s 84A, which permits revocation by the Registrar if the mark should not have been registered in the first place and revocation is reasonable in all the circumstances.  A mark cannot be revoked under this provision, however, unless the Registrar gives the owner notice of her intention to revoke within 12 months of registering the mark.  The owner has a right to be heard.

It appears that in nearly a decade of operation, the discretion conferred by s 84A has only been exercised once.

In FPInnovation Pty Ltd [2012] ATMO 74, a delegate of the Registrar found that 13 registered trade marks ought not to have been registered because they carried misleading or confusion connotations and therefore “a ground under s 43 exists” (don’t get me started on s 43 – the confusion used to have to be inherent in the mark or its application to the relevant goods – apparently no longer).  The delegate’s conclusion that revocation was reasonable in all the circumstances appears to have been primarily based on findings that the applicant had deliberately chosen the misleading marks.

In the recent case of Aleem Pty Ltd [2015] ATMO 33, the facts were that a third-party wrote to the ATMO seeking revocation of the mark REFUELLING SOLUTIONS which had proceeded through to registration unopposed in several classes including “retail and wholesale provisions of and supply of fuels” and “refuelling services.”  The examiner had considered that s 41 TMA presented an obstacle to registration and sought further evidence to support registration under s 41(5) TMA.  That evidence was provided and the mark was registered with a s 41(5) endorsement.  The third-party contended that the mark ought to have been rejected pursuant to s 41(6).  A deputy registrar agreed and wrote to the owner indicating an intention to revoke the registration.  The owner requested a hearing and successfully persuaded the hearing officer that the registration should not be revoked.

The following principles emerge from the decision:

  1. The power to revoke under s 84A must be exercised with “great caution”;
  2. A third-party does not have a right to have a competitor’s trade mark revoked even if the registration is as a result of the registrar’s error;
  3. different delegates reviewing exactly the same material and applying the same law have a different opinion about the appropriate outcome” (wait, what?) and a “change of opinion as to the registrability of a mark did not constitute a basis for revocation of acceptance“.

The hearing officer accepted the holder’s contention that it could not be shown that “the trade mark should not have been registered” and so she did not need to consider the second part of s 84A, i.e. that it is reasonable to revoke the registration, taking account of all the circumstances.

The take home lesson is that s 84A TMA is a very poor alternative to an opposition proceeding.  A third-party writing to the ATMO seeking revocation of a competitor’s wrongly registered mark has no right even to have their letter considered – there is no obligation on the Registrar to consider whether to revoke the registration:s 84A(4) – and no opportunity to be heard if revocation is considered.  Further, the Registrar must be convinced that the mark should never have been registered in the first place (not just that she might have a different view) and that revocation is reasonable in all the circumstances.

It is no wonder the discretion appears to have been exercised only once.

Case Notes, Classic Cases

Classic Case: The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407

Court: High Court of Australia

Bench: Dixon CJ, McTiernan, Kitto, Taylor & Owen JJ. (Appeal from decision of Windeyer J).

Date of judgment: 26 July 1963.

Facts: Esso was the owner of two registered trade marks consisting of a “grotesque drawing of a person with a head in the shape of a drop of oil which has just fallen from a container and by reason of its viscosity is drawn out to an asymmetrical peak at the top“.  See image below:

Esso-deluxe-3

The respondent, Shell, used an animated humanised oil drop in two short films advertising its petrol.  The trial judge, Windeyer J, observed that “[b]oth films demonstrate how much animated inanity can be packed into sixty seconds.”

First instance decision (Windeyer J):  It is interesting to note that despite being reversed 5:0 on appeal, it is Windeyer J’s comments at the trial level in relation to substantial identity and deceptive similarity, rather than the deliberations of the Full Court in relation to “use as a trade mark“, that are more often cited in modern trade marks litigation.

Substantial identity

In relation to the test for substantial identity, Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

His Honour found that while it may be that certain frames of the films may be substantially identical to Esso’s marks, the film “does not stand still” and the figure depicted does not hold its pose or expression for long enough to establish infringement by the use of a substantially identical mark.

Deceptive similarity

His Honour went on:

“On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.”

Windeyer J considered “that the oil drop man in each of the films is at various stages so similar in  body, build and expression to the plaintiff’s mark that confusion is likely to arise“.  Thus, he concluded the marks were deceptively similar.

Use as a trade mark

Windeyer J considered that use “in the course of trade, in relation to goods in respect of which the trade mark is registered” was sufficient to constitute “use as a trade mark” for the purposes of infringement. He considered that Shell’s use met this test and therefore infringement was made out.

The Full Court disagreed.  Kitto J (with whom the other judges agreed) assumed for the purposes of his judgment that, in the course of Shell’s advertising, its animated figure “takes on, at least for a moment or two now and then, an appearance substantially identical with that of the trade marks“.  He explained, however, that “the context is all-important, because not every use of a mark which is identical with or deceptively similar to a registered trade mark infringes the right of property which the proprietor of the mark possesses in virtue of the registration.”  The issue was whether Shell’s use was use “as a trade mark“.

His Honour  considered that the statutory  definition of the word “trade mark” in the Trade Marks Act 1955 (Cth) “may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?” (Emphasis added).

While accepting that Shell’s use of its oil man animation was to convey a particular message about its petrol, Kitto J did not consider that a viewer of Shell’s animation would consider that oil drop figure had been chosen to identify the brand source of the petrol in relation to which it was used.  Thus, he considered that the “purpose and nature” of the use complained of was not trade mark use and so the infringement action failed.