Ex Parte Hearing into proposed revocation of acceptance of the Industrial Knitted applications for EXCELNET and
covering ‘elastic and non-elastic netting for meat packaging; strings for tying purposes; packing string and nets; article made from string; packaging materials’ in Class 22.
After initial acceptance, the applicant received notice that the Registrar intended to revoke acceptance as the below prior trade mark covering ‘netting; rubber’ in Class 17 should have been raised as a citation objection.
The would be cited mark was originally filed in the following form, but later amended to its current state (also shown below)
The amendment to the would be cited mark was made after the issuance of the notice of acceptance of the Industrial Knitted application.
First, the applicant argued that what must be taken into account during a matter of revocation is the state of play ‘at the time acceptance was granted’, that is, the cited mark as it appeared initially. This, the applicant argued, meant that the trade marks are issue were not deceptively similar.
On this point the Hearing Officer noted his consideration that both the applicant’s trade mark and the original would be cited mark were deceptively similar. So, the applicant’s first argument was not successful.
Having found that the trade marks were deceptively similar, the Hearing Officer turned to the question of whether the goods covered were similar (or closely related). The Hearing Officer found that the purpose and trade channels of the goods was likely the same, so the goods themselves should be considered similar, if not the same.
Finally, the Hearing Officer turned to whether revocation was reasonable (as provided for under the act). On this point, the Hearing Officer noted that the would be cited mark was listed in the Examiner’s initial search but not listed for further review, a mistake that was an ‘obvious error’.
Accordingly, the grounds for revocation of acceptance had been met and the application is to be revoked.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team