Court holds Trade Marks Office should presume registrability during examination

Court holds Trade Marks Office should presume registrability during examination

Full Federal Court holds that under Australia's new Trade Marks Act there is a presumption of registrability when a trade mark application is examined by the Trade Marks Office.

The Full Federal Court so held in Registrar of Trade Marks v. Woolworths Limited in its decision handed down on 29 July 1999. This means that, unlike the position under the previous Act, if there is any doubt as to whether a ground exists for rejecting a trade mark application, the Trade Marks Office must accept the application. Indeed, the court goes so far as to suggest that it is only in clear cases of non-registrability that the Trade Marks Office should reject an application, recognising that this means many marks may pass scrutiny at examination stage but be refused registration at the opposition stage. The decision confirms the generally held view that there is a presumption of registrability under the new Act at the examination stage, but goes further in suggesting that examination is merely a preliminary stage. A greater onus is thus put upon trade mark owners to police what trade mark applications are being accepted by the Trade Marks Office in order to ensure that they do not miss the opportunity to oppose the registration of any offending marks. If the opportunity to oppose is lost, the only alternative is to have the offending registration removed by commencing rectification proceedings. Unlike opposition proceedings, rectification proceedings must be brought in a court, a more complex and expensive procedure with possibly more limited invalidating grounds. Davies Collison Cave offers a watching service policing trade marks accepted for registration by the Trade Marks Office.

In the case Woolworths Limited sought registration of the mark depicted below for "retailing and wholesaling services in the nature of supermarkets, department stores, variety stores, boutiques, speciality product stores, liquor outlets and discount stores".

Thirteen prior registrations and one application were cited against the application all effectively being for the word METRO. Thirteen of the citations were for goods including meat of all kinds; various items of men's, women's and children's clothing; confectionery; all goods in class 34; games, toys and playthings; and combs and hairbrushes. The fourteenth citation was for "distribution of goods for all classes with the exception of class 6, 12, 34 and 35". The issues for determination were whether the Woolworths mark was deceptively similar to the cited marks and, in relation to the citations covering goods, whether those goods are closely related to the services for which Woolworths was seeking registration. A majority of the Full Court held that the Woolworths mark was not deceptively similar, largely because of the presence of the word WOOLWORTHS. This word was likely to be inherently noted and remembered as it is a name widely understood in the Australian community to refer to a well-known chain of retail stores. It was therefore unnecessary for the majority judges to decide the question of whether the goods are closely related, but it appears the answer to this question could differ among the decision makers involved in the 3 stages of the case.