A difference in opinion does not equate to an error or omission

A recent decision by an Assistant Commissioner of the New Zealand Intellectual Property Office (“IPONZ”) considered the circumstances in which the acceptance of a trade mark application can later be revoked (Trade Mark Application No. 777058 APPLES 4 APPLES T24/2008, 18 August 2008).

In particular, the Assistant Commissioner’s decision examined whether a difference of opinion at the examination stage of an application constitutes an error or omission. The New Zealand Trade Marks Act provides that the acceptance of a trade mark application can be revoked prior to registration if the application was accepted because of an error or omission.

On 4 October 2007, the applicant – Apples 4 Apples Quoting Services Limited – filed an application to register the trade mark APPLES 4 APPLES in classes 35 and 37 for price comparison services and various consulting services. The application was accepted for registration shortly thereafter without objection.

IPONZ then notified the applicant that it intended to revoke the acceptance. The applicant requested a hearing on the matter.

It was established that the application was examined and recommended for acceptance by an examiner. The application was then checked and placed in the acceptance queue by a senior examiner. No objection was raised by the senior examiner and there was no indication on the IPONZ file to suggest that either examiner thought an error or omission occurred during the examination process. A Notice of Acceptance was then issued and sent to the applicant.

Prior to the application being published for opposition purposes, however, another IPONZ official formed the view that the APPLES 4 APPLES mark was ineligible for registration.

IPONZ argued that the application was accepted due to an error, in that the examiner had not conducted a full reference search and was not aware of the common usage of the term “apples for apples” in trade. IPONZ submitted that, had this information been available to the examiner, the mark would have been deemed ineligible for registration on the grounds that it is non-distinctive, descriptive of the services for which registration is sought, and customary in the current language.

The applicant contended that the discretion to revoke an acceptance can only be exercised where an examiner was mistaken as to or ignorant of pertinent facts. It cannot be exercised where an examiner has merely changed his or her opinion or interpretation of certain facts.

The Assistant Commissioner held that the conflicting views amongst IPONZ officials were the result of a difference of opinion rather than the result of an error or omission. Accordingly IPONZ had not discharged the onus of proving that the acceptance had wrongly occurred because there was no evidence that demonstrated that an error or omission had been made.

The Assistant Commissioner directed that the acceptance of the APPLES 4 APPLES application should stand.

Barbara Sullivan - October 2008