1300 Australia Pty Ltd v 1800 Blinds Pty Ltd - [2008] ATMO 57

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by 1300 Australia Pty Ltd to registration of trade mark application 992065(35) - 1800-BLINDS, 1800BLINDS (Series) - filed in the name of 1800 Blinds Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Celia Davies of Freehills Patent & Trade Mark Attorneys

Applicant: Ed Heerey, counsel, instructed by Gilbert + Tobin

Decision:

2008 ATMO 57

Section 52 opposition – section 41 – 1800-BLINDS has no inherent adaptation to distinguish the applicant’s services – only slight evidence of prefiling use – application rejected, registration refused.

Costs awarded to opponent.

Background

In this matter, 1800 Blinds Pty Ltd of Minto, New South Wales, (‘the applicant’) has applied to register a trade mark, under the Trade Marks Act 1995 (‘the Act’), current details of which appear below:

Application No: 992065

Priority Date: 7 March 2004

Goods:Class: 35 Sales of vertical blinds, venetian blinds, holland blinds, timber venetians, timber verticals, canvas awnings, aluminium awnings, roman blinds, security doors, flyscreens, curtains, pleated blinds, louvre blinds, timber shutters, metal shutters, aluminium shutters

Trade Mark: 1800-BLINDS (series)

1800BLINDS

After examination of the application, it was accepted and advertised for possible registration in the Australian Official Journal of Trade Marks on 13 October 2005.
On 13 January 2006, 1300 Australia Pty Ltd, of Yarraville, Victoria, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice includes the following grounds of potential relevance:
(b) The trade mark is not capable of distinguishing the applicant's services in respect of which the Trade Mark is sought to be registered, or any of them, from the goods or services of other persons, and the trade Mark was not distinctive in fact of the Services (or any of them) as at the priority date of the Opposed Application.
(d) The Trade Mark or some sign contained within the trade mark has some connotation such that use of the Trade Mark in relation to the Services, or any of them, would be likely to deceive or cause confusion.
Of the above grounds, the opponent relied on that under section 41 of the Act at a hearing before me, as a delegate of the Registrar of Trade Marks on 19 June 2008. For the sake of completeness I find that the grounds other than section 41 mentioned in the Notice (which appear to include most grounds available under the Act) have not been established by the opponent.
I conducted the hearing as a delegate of the Registrar of Trade Marks in Melbourne on 19 June 2008. Celia Davies of Freehills Patent & Trade Mark Attorneys represented the opponent. Ed Heerey, counsel, instructed by Gilbert + Tobin, represented the applicant.
At the end of the hearing I reserved my decision which I now provide along with my written reasons.

Evidence

There are two declarations in evidence: one in support of the opposition and one in answer.
The declaration in support of the opposition is by Roanne Karla de Menezes, a legal practitioner with Freehills Patent & Trade Mark Attorneys. This declaration is quite short and exhibits the following passage from the Trade Marks Manual of Practice and Procedure:
A section 41 ground for rejection will apply in relation to trade marks that simply consist of 13/1300/1800 and other descriptive or non distinctive elements (in the same way that those elements on their own would attract a ground for rejection). Examiners will need to consider if the material in the trade mark, apart from the 13/1300/1800 element, has any inherent adaptation to distinguish. For example, 1800 RABBIT is not considered to be prima facie capable of distinguishing “the sale of pet rabbits” and a section 41(6) ground for rejection would be appropriate.
The ground for rejection applies irrespective of whether the trade mark is a valid phoneword. Ownership or authorised use of the mark is not sufficient on its own to justify the withdrawal of the section 41 ground for rejection. However, if the owner has been using the phoneword for a sufficient period of time to have enabled it to acquire a secondary meaning indicating trade origin, evidence provisions may support acceptance of the mark.
The evidence in answer is a declaration by Geoffrey Phillip Munro who is Director and Secretary of the applicant.
Mr Munro’s declaration makes the following claim as to confidentiality:
The information concerning the Applicant's business, commercial or financial affairs which is disclosed in this Statutory Declaration (particularly in relation to sales information, details of advertising and promotional activities as well as details of past, present or potential customers of the Applicant's services, and including the information set out in Confidential Exhibits A and B) is information which is commercially sensitive and confidential to the Applicant. Disclosure would cause significant damage and harm to the Applicant.
On the face of it, all of the information included in the declaration is information concerning the applicant’s business. Thus, at one level, I am requested by the applicant to give my reasons in this matter without any reference to the declaration in this decision. I could do this, but the reasons for my decision would be opaque. However, the fact that the applicant has put the declaration in suggests that this is not what the applicant intended. I will therefore be as circumspect as necessary in giving my reasons but will need to refer to some information concerning the opponent’s business in the course of making my decision.
The Confidential Exhibits A and B are not in evidence as the opponent did not agree to be bound by the confidentiality agreement which related to those exhibits. While the applicant has some dissatisfaction with this, I consider that such agreements should only be entered into where immediacy of commercial damage to a party is demonstrated and not merely asserted and that it is preferable for matters such as these to be fully ventilated in as open and transparent a manner as possible. The interests of a particular trader must be weighed against the interests of all traders – in particular the opponent, the Courts if there should be an appeal, the Registrar in being able to discuss issues freely and openly, and the public in having matters before the Registrar conducted as transparently as is possible.
Here, I observe, that it would seem that the opponent is apparently not a trade rival of the applicant in its blind selling business but is seemingly a purveyor of personalized telephone numbers. Of course, I have no knowledge of the content of the confidential exhibits but it is difficult to see how the opponent could benefit from the information in them.
Mr Munro attests:
The Applicant is a manufacturer, supplier and installer of window furnishings. The Applicant registered the company name 1800-Blinds Pty Ltd (ACN 103 478 468) on 23 January 2003. The Applicant has also registered the following company names:
• 1800-BLINDS Services Pty Limited (ACN 111 049 453) on 21 September 2004; and
• 1300-BLINDS Pty Limited (ACN 110 220 776) on 27 July 2004.
The Applicant developed the 1800BLINDS trade mark (the Trade Mark) in 2002 as we believed this was an original and unique concept for the Australian market. Both the name and telephone number equivalent to 1800BLINDS were available and we believed that both the telephone number and the tagline “Know the Name, Know the Number” would distinguish the Applicant from other traders in the marketplace.
The Applicant commenced use of the Trade Mark in Australia on or around 23 January 2003. The Trade Mark was initially used in New South Wales and is currently used in Sydney, Brisbane and Melbourne as well as the Central Coast and South Coast of New South Wales. The Applicant plans to expand use of the Trade Mark to all states of Australia.
I note here that the priority date of the application is 7 March 2004 and that the applicant thus states it had some fourteen months of use of the trade mark before that date. I will also assume that the first use of the trade mark in Brisbane and Melbourne and the Central and South Coasts of New South Wales was after the priority date and before the statutory declaration was sworn. As it is obviously in the applicant’s interests to be specific about the use of the trade mark before the priority date, and the evidence taken as a whole suggests that the trade mark was used in or near Sydney before the priority date, I will (in the absence of better and more specific evidence) assume that such was the case.
Mr Munro goes on to aver:
The Applicant offers a range of services relating to the manufacturing, supplying and installation, of blinds under the Trade Mark. As far as I am aware, the Applicant is the only company which manufactures vertical blinds at the client's premises.
Again, I will assume that the only services the applicant performs is the manufacture, supply and installation of blinds. If the applicant in fact performs the range of services in respect of which trade mark registration is sought, it is obviously in the applicant’s interests to attest to these services more fully and specifically.
Mr Munro attests to the advertising of services under the trade mark – again this part of his declaration is expressed in extremely general terms. At the hearing, Ms Davies submitted that there is no advertisement which could be confidently said to be antecedent to the priority date. This part of the evidence is expressed in terms that certain advertisements appeared within the period of time 2003 to 2004. The problem is that the advertisements in evidence do not have any date ascribed to them and there is no way of ascertaining whether they appeared before or after the priority date. Once more, as it is very obviously in the applicant’s interests[1] to affirmatively demonstrate which advertisements appeared before the priority date, one is left to wonder whether the applicant may not have demonstrated this because it cannot.
[1] See also paragraph 42 of these reasons – in proceedings under subsection 41(6) the onus is on the applicant to establish its entitlement to registration.
The other problem with such general statements within statutory declarations is that, while they may be true, they are no truer than other generalized statements such as, “The first advertisements of the services offered under the trade mark appeared within the period 1980 to 2008.” If the first advertisement appeared in 2007, there is nothing overtly wrong in the claim yet the lack of precision in the claim makes any ascertainment of the exact facts impossible.
A similar observation extends to the applicant’s evidence of its Internet website. The declaration attests that this was established in the period 2004 to 2006 and includes ‘screen shots’ of pages from its website as an exhibit. These screen shots include reference to the services being offered in Sydney, Wollongong, South Coast, Central Coast, Melbourne, Peninsula, Brisbane and surrounding areas. One might gain the impression that this evidence accurately reflects the applicant’s website and hence the extent of its services at the time it was created in the period 2004 to 2006. However, the Internet archive, web.archive.org/web, shows that a quite different version of the webpage was first created in 2005 and that the sole reference to any geographical area is shown as Campbelltown, New South Wales.
The declaration also exhibits a number of responses to questionnaires about the trade mark. These are unsworn responses to a proforma questionnaire containing leading questions and are from an area in and around Sydney. I weight them accordingly.
An example of the applicant’s trade mark in use appears below. I will assume that any use of the applicant’s trade mark antecedent to the priority date was in similar form.

Finally, Mr Munro attests:
The Opponent has filed and served, as its only Evidence in Support of its Opposition, a copy of IP Australia's new Phonewords Policy as set out in Part 22 of the Trade Marks Examiners' Manual. In the present case, the Applicant has already proved to the satisfaction of the Registrar that it owns the phone number associated with the Trade Mark and the evidence of use filed in support of the Application enabled it to be accepted under the provisions of sub-section 41(5) of the Trade Marks Act 1995. In the circumstances, the Applicant believes that the Application has already been examined and accepted in a way which is consistent with the new Phonewords Policy.
In any event, as the new Policy has come into effect well after the acceptance of the Application, the Applicant believes that the new Policy should not be applied retrospectively to trade marks which have already been accepted for registration.
The Trade Mark’s Manual of Practice and Procedure (‘the Manual’) is, of course, a set of administrative guidelines, rather than ‘policy’ or law. The Manual does not create law. Hopefully, sections such as that quoted above accurately reflect law, rather than create it. There is no question, therefore, than the statement, or any principle, in the above passage might be applied retrospectively – the quoted passage reflects the law as it has always prevailed to such trade marks. The reason that such sections appear in the Manual is for the guidance of examiners, applicants and practitioners in the field who may be contemplating the registrability of such indicia.
And, of course, the evidence of the entry in the Manual is not evidence as to a ‘fact’ that existed at, or after, the priority date of the application but reflects a state of law which has always existed. As such, it was sufficient to put the applicant on notice about the ground that was to be pursued in the matter and the nature and type of evidence which would be required during proceedings.
There is also, of course, no question that, in considering this matter, I am or may be reliant on the Manual as a source or cause for my reasons and decision.
I will discuss the submissions of the parties as they become relevant to my discussion of the issues under section 41 of the Act.

Section 41

Section 41 of the Act provides:
Trade mark not distinguishing applicant's goods or services
41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
The scheme and operation of section 41 were discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440 where she said:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (“the designated goods or services”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

The start point in my considerations is thus subsection 41(3) and an assessment of the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons.
The inherent adaptation of the trade mark is to be assessed according to the tests in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 (‘the Michigan case’) at 513:
The applicant's chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives — in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess — will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
Mr Heerey at the hearing submitted that the applicant has a monopoly in the phone number and expression 1800-BLINDS and that no other trader can therefore have an honest need to use it. However, I think this argument does not carry much weight for two reasons.
Firstly, there are a few ‘monopolies’ that traders might enjoy in indicia that they might regularly use in trade – as in, for example, company names or business names. Such monopolies have no basis in the consideration of whether a trade mark is inherently adapted to distinguish and such monopolies can transpire to be ephemeral. Hearing Officer Forno addressed the question of inherent adaptation in a similar context to that of the subject application in Australian National Airlines Commission's Application (1989) 16 IPR 270.[2] Mr Forno cites, at 274, the following passage from the Michigan case, above, (at 513) and observed with some prescience regarding the trade mark (Australian Airlines) in question:
It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose, because its natural signification is against a notion that goods to which it is applied are the goods of the applicant and of no one else, may yet come by actual use or by virtue of special circumstances to be so closely associated with applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks.
[2] And see Telecommunications Industry Ombudsman [1999] ATMO 82; Re Application By Australian Postal Corporations (t/as Australia Post) (2000) 50 IPR 103.
In interpreting his Honour's comments, Mr Forno continues at 274:
What his Honour there said in relation to a passing off action is equally applicable, I think, to any other remedy to which a plaintiff is entitled to have recourse in order to protect its rights, including any statutory remedy which the Parliament may see fit to confer. The general inference to be drawn from the passage above cited is that a mark must qualify for registration under the Trade Marks Act by virtue to its own inherent nature without reference to “special circumstances” which may lead to the achievement of distinctiveness in fact.
The second problem with a hypothesis that, as the applicant has a monopoly in the phone number, no other trader can have an honest need to use it, is that the proposition does not address the heart of the question in the test posited by Kitto J in Michigan. That test is not by reference to whether other traders might honestly want to use an identical word, for the sake of its ordinary significance, to the trade mark proposed for registration, but whether other traders might, in the normal course of trade, want to use a word for the sake of its ordinary significance that so nearly resembles the trade mark that it would prima facie (if used by those other traders) give rise to an action for infringement. While there might be defenses to such an action, (for example, that the allegedly infringing use was not use of a trade mark) or a counterclaim for expungement, the process under section 41 is designed to prevent the very great inconvenience and expense to other traders of such actions (and defenses or counterclaims) occurring where the sign relied on by the owner of a trade mark registration ought not to have been registered: Sports Break Travel Pty Limited v P & O Holidays Limited [2000] FCA 924 (the SCHOOLIES trade mark); Larry Powell v Glow Zone [1997] FCA 1401 (the CAPS THE GAME trade mark).
Therefore, I turn now to a discussion of the inherent nature of the trade mark.
The nature and operation of personalised or vanity telephone numbers was discussed at some length by Jacob J, in Phonenames Ltd v 1-800 Flowers Inc [2000] FSR 697, and to the best of my knowledge, such telephone numbers operate in Australia in the same way:
It is fair to assume at the date of the application, early 1993, the return of letters to telephones was clearly both foreseeable and intended. And so it has been. Modern telephones all have letters on their number buttons. I suspect that most people who have had a new phone in the last few years do not yet make use of the letters: some [may] have wondered why they are there and others may not even have noticed them. But there can be no doubt that alpha-numeric buttons are here to stay and that people will gradually make more and more use of them for telephone number purposes (they have other uses too).....
Technical developments in the phone industry have meant that telephone numbers no longer have as much “locality” about them. In particular freephone numbers have none. This makes it possible to run a nation-wide franchising business using just one number. You can have a central operator system to take “orders” or to put you in contact with the local franchisee. It is also possible for the telephone company to arrange that its system itself detects the locality of a caller and routes the phone call to the nearest centre using that number (“origin dependent routing”). In that way the “owner” of the number can license the number to a variety of different users.....
In his decision, which was upheld on appeal at 1-800 Flowers Inc v Phonenames Ltd [2001] EWCA Civ 721, Jacob J went on to find:
Although the applicants claim some use in the UK before their date of application they do not suggest that by reason of that use their mark acquired any factual distinctiveness. So the question is whether the mark is ‘capable of distinguishing’ having regard to its inherent nature.
I have come to the conclusion that it is not. Consider first the position if the mark had been 0800 FLOWERS. At the time of application the number 0800 was, as Mr Hobbs QC for the applicants, conceded “freighted with telephonic significance”. That does not mean, however, that the general public would at the time have realised that the whole mark was something that you could actually dial. At that time the use of letters on buttons had only just commenced and there can have been few telephones which carried letters. Nor had there been any education of the public about the letters. So at the time of application the public would have been puzzled by the mark – 0800 says something about freephone, but FLOWERS would have little meaning, so somewhat “de-freighting” the mark as a whole. The mark would, however, not have been a puzzle to anyone who knew of the coming return of letters to phone buttons. He or she would have understood at once that 0800 FLOWERS was an encoded phone number – and particularly so in relation to the specification of services, namely receiving and transmitting orders for flowers.
[The Hearing Officer] accepted that 0800 FLOWERS did not have any inherent capacity to distinguish in 1993.... He was right because, anyone knowing the facts would say, correctly, that the mark had a direct reference to the character of the service to be provided under the mark. Section 10 in its reference to “capacity” to distinguish must include within its scope the foreseeable future. In the future, as perceived in 1993, 0800-FLOWERS would very likely be taken by anyone knowing the facts to be a phone number for ordering flowers. That would be so, whether or not anyone actually used that number for that purpose in the future – it would be the future growth in the practice of traders generally to use 0800 (word) which would have that effect. So the mark would convey a clear descriptive meaning in the future, irrespective of any use by the mark owner.”
I agree. I will add that the trade mark 1800-BLINDS is not completely lacking in adaptation to distinguish the applicant’s services because it is a telephone number; rather, it is so lacking because it is a generic telephone number. Consider the position of another seller of blinds who wishes to use a very similar telephone number, such as 1801-BLINDS or 1800-BLINDZ. That trader has an honest need to use this generic number in the normal course of trade, for the sake only of the significance of the telephone number, and yet might find itself in peril of an action for infringement.
However, the situation is, of course, entirely different for vanity phone numbers that do not employ generics such as hypothetical examples of 1800-WOMBAT for a roofing service, or 1815-WATERLOO for plumbing services. Although such trade marks might be little more than mnemonics for the number which lie behind them, they do appear to be functioning as trade marks which have sufficient inherent adaptation so as to be capable of distinguishing.
Thus, as I observed at the hearing, the grounds for rejection of this trade mark should properly be regarded as falling within section 41(6) as the trade mark is one without any inherent adaptation to distinguish the services of the applicant.
By the language of subparagraph 41(6)(a),[3] the onus is on the applicant to satisfy me that the trade mark does distinguish the services of the applicant by virtue of the use of the trade mark before the priority date.
[3] … if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant …
I have already adverted to the considerable difficulties that the applicant’s evidence presents in attempting to establish an accurate picture of the applicant’s use of the trade mark before the priority date of the application. The evidence of the applicant is much too general for any such picture to be established.
The evidence, considered as a whole, suggests that use before the priority date was confined to an area in or close to Sydney and that use was relatively slight and had been for a period of only fourteen months.
The use of the trade mark that did take place was in the form shown above in my discussion of the evidence. The examples in evidence, like that shown above, make no claim for a trade mark status of the expression 1800-BLINDS but appear to stress its status as a vanity telephone number by use of the expression “Know the name, know the numbers.” Radio advertising before the priority date is mentioned but no examples, scripts, or copy, are given. While I agree with Mr Heerey that some advertising at least can be inferred before the priority date, such inferences, while the onus is quite clearly on the applicant, are not appropriate from evidence which is so vague, particularly in the instance of an opposed application. In my consideration, such inferences would be guesses rather than logical inferences. Such material and information as is required is within the applicant’s control, and if it is to establish its entitlement to registration, such information and material, expressed in an accurate and explicit manner, with attention to specifics, is central to any prospects of success for the applicant.
What I am to consider, in terms of subsection 41(6), is whether because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it did distinguish the designated services as being those of the applicant. Jacob J considered a similar provision under the British Act in the “Treats Case”, British Sugar Plc v. James Robertson & Sons Ltd. [1996] R.P.C. 1 at page 34:
Take a very descriptive or laudatory word. Suppose the proprietor can educate 10% of the public into recognising the word as his trade mark. Can that really be enough to say it has a distinctive character and so is enough to let the proprietor lay claim to the word as a trade mark altogether? The character at this stage is part distinctive but mainly not. I do not think it would be fair to regard the character of the word as distinctive in that state of affairs. But if the matter were the other way round, so that to 90% of people it was taken as a trade mark, then I think it would be fair so to regard it. This all suggests that the question of factual distinctive character is one of degree. The proviso really means “has the mark acquired a sufficiently distinctive character that the mark has really become a trade mark.” In the case of common or apt descriptive or laudatory words compelling evidence is needed to establish this. And in particular mere evidence of extensive use is unlikely to be enough on its own. Of course the power of advertising may be able to turn almost anything (save a pure description) into a trade mark, but it must be shown in a case of this sort that the mark has really become accepted by a substantial majority of persons as a trade mark - is or is almost a household word.
Perhaps, in view of the comments of, for example, Branson J in Blount, above, the above observations of Jacob J about the trade mark achieving the status of a ‘household word’ are capable of some adjustment to, ‘a household word in the particular trade’ as it is difficult to see how, for example, OREGON as a trade mark on a chainsaw could become a household word. Such a trade mark might more readily achieve a similar status to a household word, however, amongst those who use and sell chainsaws.
Factual distinctiveness is thus achieved when a trade mark has transcended the lack of adaptation in its origins to the extent that public recognition of the trade mark is such that when it is seen by the public, its origins are not (or are hardly) considered, as in, for example, SMITHS (for potato crisps) or OXFORD (for dictionaries and other reference works). Such trade marks have developed a secondary meaning as denoting the goods or services of their owners.
Such is not the case here. Not only had the use of the trade mark 1800-BLINDS been very slight before the application date but it had been in a manner which reinforces its status as only being a generic telephone number. There has been no education of the public that it is considered to be a trade mark via the use of the symbol ™ or similar. And the main use of the trade mark that was antecedent to the priority date had apparently been confined to a geographical area on the outskirts of Sydney.
Thus, in term of subparagraph 41(6)(b), the trade mark is taken not to be capable of distinguishing the designated services from the services of other persons.
Accordingly, in terms of subsection 41(2), I reject the application because the trade mark is not capable of distinguishing the applicant’s services in respect of which the trade mark is sought to be registered from the services of other persons.
It follows that the opponent has established its opposition to the registration of the trade mark.

Decision

Section 55 of the Act provides:
Decision
55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
I refuse to register application 992065.

Costs

The opponent has established its opposition to the registration of the trade mark and is thus entitled to its costs at the scale set out in the regulations – I therefore order such costs against the applicant.

Iain Thompson

Hearing Officer

Trade Marks Hearings

03 July 2008