Well-timed letter to registrar may be first step in preventing another party's registration


The decision of the Federal Court of Australia in 1-800-Flowers.com Inc v Registrar of Trademarks ([2012] FCA 209, March 12 2012) demonstrates that the registrar has a broad power, under Section 38 of the Trademarks Act 1995, to revoke the acceptance of an application, and wide discretion with respect to what factors to take into account in deciding whether to exercise that power. The decision also demonstrates the difficulty in successfully applying for judicial review of a decision made under that section, and suggests that writing to the registrar in support of revoking acceptance of an application may be an effective tool for prospective opponents.

The case involved two applications for composite trademarks consisting of '1-800-flowers.com' and an image of a tulip:

The applicant was initially informed by an examiner (in response to a TM Headstart service request) that each of the applications was suitable for registration. However, in February 2011, after the applications had been accepted, the solicitors for a third party, Flowerscorp Pty Ltd, wrote to IP Australia complaining that the applications had been accepted without the examiner having raised any citations of that company’s own applications for 1300 FLOWERS (examples below):

As a result of the letter from Flowerscorp, the applicant was advised that, having identified an error in the examination process, the registrar intended to revoke acceptance of its applications. A hearing took place before a delegate of the registrar, after which the delegate decided to revoke the acceptance of both the applicant’s applications under Section 38.

While the act does not provide a right of appeal from decisions made under Section 38, the applicant applied for a review of the delegate’s decision under the Administrative Decisions (Judicial Review) Act 1977 (ADJR Act). The primary grounds relied upon by the applicant were:

  • a failure to take into account relevant considerations; and
  • gross unreasonableness.

The applicant argued that the delegate had failed to take into account its own earlier trademarks, which were substantially identical or deceptively similar to the applications. The Federal Court found that, because the delegate did refer to one of the applicant’s prior marks (albeit not in the context of his reasons for finding that the applications should not have been accepted), the applicant had not established that these matters had not been taken into account.

Further, the applicant argued that the delegate, having formed the view that the applications were deceptively similar to Flowerscorp’s prior applications, should have taken into account Sub-sections 44(3) and (4), which allow for registration despite a prior citation where there has been 'honest concurrent use' or 'prior continuous use'. The delegate considered that Section 38 (as amended by the Intellectual Property Laws Amendment Act 2006) did not require the registrar to take Section 44(3) and (4) into account. As the court found, “the delegate was not considering whether or not the applications for registration should be rejected, but where there was error in accepting them”.

The court rejected the applicant’s argument that the delegate’s decision was grossly unreasonably, because:

  • the delegate could not have drawn conclusions as to whether Flowerscorp’s prior applications should be registered; and
  • it was reasonable for the delegate to consider Flowerscorp’s applications.

Significantly, the court further stated (in obiter) that, even if the applicant had succeeded to establish a ground of review, it would exercise its discretion under the ADJR Act to refuse relief for the applicant, because the effect of a revocation is that the application is considered afresh, taking into account all relevant evidence. Therefore, if the application is ultimately rejected, the applicant will have a right to a de novo appeal under the Trademarks Act.         

This decision is a reminder of the extent of the registrar’s discretion in revoking an application under Section 38, and strongly suggests (due to the court's obiter comments) that courts are likely to refuse relief to applicants seeking to challenge Section 38 decisions under the ADJR Act. 

From a more practical perspective, this decision demonstrates how a well-timed letter to the registrar could be a first step in preventing another party’s registration. For a potential opponent, it is a 'no loss situation' to write to the registrar requesting revocation of an application if it believes its prior application/mark ought to have cited. If the application is revoked, the application begins afresh and the applicant may decide to abandon the application, or at least reconsider the prospects of successfully registering the mark. If it is not revoked, it is still open for the third party (the potential opponent) to oppose the application.

David Fixler and Simon Frauenfelder, Corrs Chambers Westgarth, Melbourne

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