A2 Corporation Ltd

[2014] ATMO 94

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1494889 (5, 44) - TRUE A2- in the name of A2 Corporation Limited

Delegate:	Nicole Worth
Representation:	Applicant: Brian Elkington of Adams Pluck Patent & Trade Mark Attorneys.
Decision:	2014 ATMO 94 Section 33 proceedings – section 41 – trade mark not capable of distinguishing Applicant’s goods and services – application rejected.

Background

1. This is a decision pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’). On 6 June 2012 A2 Corporation Limited (‘the Applicant’) applied to register the trade mark detailed below:

   Trade Mark:  TRUE A2   (‘the Trade Mark’)

   Goods & Services:              Class 5: Semen products; animal breeding products and materials, genetic testing kits.

   Class 44: Veterinary services; animal breeding services; animal testing services for breeding purposes.

   Convention Priority:          10 May 2012 (New Zealand)

2. The application was examined and grounds for rejection were raised under sections 41[1] and 44 of the Act, and clarification of the goods and services was sought. The basis of the ground for rejection under section 41 is as follows:

   Your trade mark is, or has as its main feature, TRUE A2.

   A2 is a common allele (variant) of the beta-casein gene found in bovines. The beta-casein alleles dictate what types of beta-casein proteins a cow produces in its milk. Each cow can carry a maximum of 2 alleles. A cow with both an A1 and A2 allele for example, can produce both A1 and A2 proteins in its milk.

   The term TRUE A2 indicates that on a genetic level, the bovine carries two copies of the A2 allele (is a TRUE A2 bovine).

   As such, your trade mark indicates that the goods you claim are for use in breeding and testing for TRUE A2 bovines; and the services you claim are in relation to TRUE A2 bovines.

   Other traders should be able to use TRUE A2 in connection with goods or services similar to yours.

   [1] That is, section 41 as it was at the filing date. Section 41 was amended pursuant to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into effect on 15 April 2013. Applications filed prior to then are governed by the previous version of section 41; see Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.

3. Over the course of a subsequent three examination reports the goods “genetic testing kits” in class 5 were amended to “genetic testing kits for veterinary purposes”, and the ground for rejection under section 44 was reconsidered and withdrawn. The ground for rejection under section 41, however, was maintained and a Notice of Intention to Reject the Trade Mark was issued in the following terms:

   An application for registration of a trade mark must be rejected under section 33 of the Trade Marks Act 1995 if the Registrar is satisfied there are grounds for rejecting it.  I am satisfied that grounds for rejecting your application exist for the following reasons:

   SECTION 41 - TRADE MARKS NOT CAPABLE OF DISTINGUISHING

   The applicant’s trade mark TRUE A2 is descriptive of a quality of the applicant’s goods and services and is not sufficiently inherently adapted to distinguish.

   True breeding is a kind of breeding in which the parents with a particular phenotype produce offspring only with the same phenotype. The acronym A2, in the context of the broad claims for goods in class 5 and services in class 44, is widely used to refer to one of the most common beta-casein genetic variants in dairy cattle.

   As a whole the term TRUE A2 describes animals that have been tested and found to have the A2 beta-casein genetic variant, and therefore produce offspring only with the same phenotype.

   The final decision on whether the applicant’s trade mark is capable of distinguishing their services depends on the nature of the trade mark and the evidence of Australian use. As the applicant has not provided any evidence of use in Australia, the overseas registrations do not assist their case.

   The applicant has had the option to restrict their claims to services where the trade mark would be inherently adapted to distinguish, being:

   Class 44: Veterinary services excluding those related to genetics and breeding.

   As it appears there are no prospects for overcoming these objections during the course of examination I intend to reject your application.

   Subsection 33(4) of the Trade Marks Act 1995 gives you the opportunity to be heard.  You have until 5pm AEST on 13 May 2014 (two months from the date of this Notice) to request a Hearing or a decision on the written record.

4. As a consequence the Applicant exercised its right to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, on 22 July 2014. Brian Elkington, of Adams Pluck Patent and Trade Mark Attorneys prepared written submissions and spoke at the hearing on the Applicant’s behalf.

Evidence and Submissions

1. In support of the application the Applicant filed a statutory declaration of Dr. Andrew Clarke, Chief Scientific Officer of the Applicant. In it, Dr. Clark states that the term TRUE A2 has no meaning in livestock breeding (other than indicating the goods of the Applicant) and that “the industry standard term used to denote bovine livestock and semen as being guaranteed to pass on the A2 variant gene is A2A2...This is standard industry nomenclature and is universally employed when referring to homogenous or heterogeneous alleles (in this case a heterogeneous animal would be referred to as A1A2)”.

2. Dr. Clarke also declares that in Australia an entity named ABS Australia first began using the trade mark, with the consent of the Applicant, in July 2012. ABS Australia is declared to be a leading supplier of bovine genetics and herd improvement services in Australia, and extracts from its website and catalogues are exhibited.[2] Below are examples of the way the Trade Mark is used. The second example states “The TRUE A2 The logo stands for bulls tested by the A2 corporation and identified as A2/A2 sires. Only sires with this logo are accredited by the A2 corporation”. The reference to “the logo” appears to be a reference to the way TRUE A2 is presented graphically in the website and catalogue material, wherein the word TRUE appears above A2, is in slightly smaller font, and all letters are italicized and coloured blue. The reference to “the A2 corporation” I take to be a reference to the Applicant.

[2] The website extract is undated, and the catalogues are dated “Autumn/Winter 2013” and “Spring/Summer 2013/2014”.

1. There is no other information relating to extent or volume of use, although Dr. Clarke does declare that the Trade Mark has been accepted for registration in New Zealand, the European Union, the United States, China and Korea in respect of goods and services the same or similar to those in the subject application, and that in none of those jurisdictions was the distinctiveness of the Trade Mark challenged.

2. The submissions made on behalf of the Applicant assert that the Trade Mark is inherently adapted to distinguish the Applicant’s goods and services from those of other traders, and that failing that a combination of use, intended use and other circumstances make acceptance of the Trade Mark proper. Specifically, they state that TRUE A2 is used only by the Applicant and that others in the industry would not use that term to describe “animals that have been tested and found to have the A2 beta-casein genetic variant” (as contended by the examiner) unless improperly motivated[3] because standard nomenclature is “A2A2”. They state further that it has never been required that a trade mark be absolutely unsuggestive[4] and provide details of 33 other accepted or registered trade marks which comprise the combination of TRUE or TRU with a descriptive or allusive element, none of which were supported by evidence of use (including TRUBOLT for bolts, TRUEALARM for sound alarms or TRU POWER for diesel generator sets).

   [3] Per Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd (1913) AC 624 at 635, who observed that the question to be asked was whether other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the same mark or some mark nearly resembling it, in relation to their own goods and services.

   [4] The Applicant gives Southcorp Ltd v Barwick Wines Pty Ltd [2006] ATMO 68 as an example, wherein the word CRUSH was found to be inherently distinctive of goods in class 33.

3. In respect of the provisions of subsection 41(5) the submissions assert that although there is no information concerning the volume of trade under the Trade Mark, the Trade Mark has been used for at least two years by one of the largest traders in the industry and that given the registration of it in numerous other countries one may conclude that the Applicant intends to use it “on a virtual global basis”. The other circumstances said to be relevant are the absence of use of the term in the industry and consequent lack of examples of such, the examiner’s purported lack of evidence of descriptiveness and the acceptance of the trade mark in five other major jurisdictions without objection.

Section 41

1. The now repealed form of section 41 of the Act relevantly provided:

   (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.

2. Subsection 41(4) stated that if the Registrar was unable to decide, on the basis of inherent adaptation alone, that a trade mark was capable of distinguishing designated goods or services then subsections 41(5) or 41(6) apply. Subsection 41(5), as is relevant here, contemplated acquired distinctiveness on the basis of use or intended use of a trade mark, or other circumstances which made acceptance proper, as follows:

   (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.

Inherent adaptation

1. Inherent adaptation to distinguish is “something which depends on the nature of the trade mark itself”[5] and remains unaffected by either use or intended use. Drawing upon the words of the previously cited Lord Parker in Registrar of Trade Marks v W & G Du Cros Limited[6] Kitto J, in Clark Equipment Co v Registrar of Trade Marks[7], described the test for inherent adaptation as:

   [T]he question whether a mark is adapted to distinguish [is] to 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 the 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [5] Burger King Corp v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417.

   [6] Supra.

   [7] [1964] HCA 55; (1964) 111 CLR 511.

2. I am not persuaded that, in the context of animal breeding goods and services, the Trade Mark is sufficiently inherently adapted to distinguish the Applicant’s goods and services to qualify for registration on that basis alone. “True” is defined by the Macquarie Dictionary as, inter alia:

   1. being in accordance with the actual state of things, conforming to fact…2. real or genuine…5. being or indicating the essential reality of something…7. exact, correct, or accurate…10. Properly so called; rightly answering to a description…

According to the examiner’s research “A2” is a type of protein found in many types of milk, including cow’s milk. Included in the research is an extract from ‘ which states “a2 Milk^TM comes from cows specially selected to produce A2 beta-casein protein rather than A1. Because a2 Milk^TM is rich in A2 beta-casein protein, it may assist with your digestive wellbeing”. An article in the research contains an excerpt from “a 2004 report to the New Zealand Food Safety authority by Professor Boyd Swinton, professor of public heal nutrition, Deakin University, Melbourne”[8] which states:

There are several genetically-determined variants of B-casein, the protein which constitutes about 25-30% of cows’ milk proteins. One variant, A1 B-casein, has been implicated as a potential etiological factor in type 1 diabetes mellitus (DM‑1), ischaemic heart disease (IHD), schizophrenia and autism. Another variant (A2 B-casein) has not been implicated in these diseases…

Another article, on the website ‘ states:

Practically all NZ bulls are typed as to their A2 status. Farmers wanting to convert to A2 should only use bulls typed as A2A2. These are the bulls that can be guaranteed to pass on the A2 variant of the gene in their semen. A bull that is A1A2 can pass on either variant, and a bull that is A1A1 is guaranteed to pass on the A1 variant.

[8] From Beta-casein A1 and A2 in milk & health, ‘The Bovine’, published on ‘ (accessed by the examiner on 19 June 2012).

[9] Accessed by the examiner on 19 June 2012.

1. Accordingly, the expression TRUE A2 relates to that which is genuinely A2, or properly called A2. Considered in the context of the specified goods and services the expression denotes animal breeding products and services that genuinely contain or pass on only the A2 genetic trait, rather than a heterogeneous or A1 trait. It is not necessary to institute a search for meaning to reach this conclusion[10], rather it is reached by applying the commonly understood meaning of “true” to the reference to the characteristic, being “A2”.

   [10] Per Mark Foy’s Ltd v Davies Coop and Co Ltd [1956] HCA 41; (1956) 95 CLR 190.

2. Although the nomenclature used for the specific genotype is A2A2, this does not negate the common meaning of the collocation “true A2”. Given the inherent meaning of the Trade Mark is readily apparent, I consider it likely that other traders will think of and desire to use it (or something closely resembling it) to indicate animals or livestock that genuinely contain only the A2 genetic trait, and accordingly to indicate breeding products and services designed to pass that trait on. It is not necessary that the expression be in use by other traders to conclude so, but rather that it be likely. Additionally should interest in potential health concerns relating to A1 protein increase, then it is also likely that interest in A2 protein will increase (and, commensurate with that, trade relating to livestock with the A2 genetic variant and expressions that describe them as such would also be likely to increase).

3. I find the existence of the 33 other marks on the Register, which were accepted without evidence of use or other circumstances, is not compelling. Aside from principles already expounded by the Courts,[11] I note that there are more than 1500 other trade marks beginning with “TRUE” or “TRU” that never achieved registration. Not all of them will have been objected to on the basis of distinctiveness nor is it reasonable to investigate that many; however a brief perusal of those applied for in the last five years shows that (for example) TRUECOURSE, TRUECOUNT, TRUE TIME, TrueFIT, TRUE CHARACTER and TRUECOLOR never achieved registration in the face of distinctiveness objections, and these are but a few examples amongst many more. In addition, none of those raised by the Applicant appear to have been opposed and thus never underwent the “closer adversarial scrutiny” referred to by French J in Registrar of Trade Marks v Woolworths Limited.[12] As such, I consider they do little “save perhaps to confirm that this is the sort of word in which traders would like a monopoly”.[13]

   [11] Including that the state of the Register does not necessarily indicate market realities, the circumstances which led to other registrations are unknown, and although consistency is desirable the Registrar is not bound to perpetuate an error on the Register. See for example British Sugar Plc v James Robertson & Sons [1996] RPC 281 at 305 and Ocean Spray Cranberries v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579 at [35].

   [12] [1999] FCAFC 1020l; (1999) 45 IPR 411 at 377.

   [13] As stated by Jacob J in British Sugar, supra.

4. I am satisfied that the expression TRUE A2 has a readily apparent meaning in respect of the specified goods and services, and is one likely to be desired for use by other traders. Consequently, I am unable to decide whether the Trade Mark qualifies for registration on the basis of inherent adaptation to distinguish alone. In accordance with subsection 41(4) I turn now to a consideration of any acquired distinctiveness or distinctiveness that may be acquired through intended use, or any other circumstances that would render acceptance of the Trade Mark proper.

Provisions of subsection 41(5)

1. The evidence of use or intended use is scant. Other than that the Trade Mark has allegedly been used since July 2012 in Australia by a leader in the relevant industry, there is no other information from which to infer that the trade mark has become distinctive in the mind of the public. No sales are documented, there is no indication of how many of ABS Australia’s catalogues were distributed (nor even how large its customer base is), nor is there any indication of how many people visited the website. Similarly there is little basis for concluding the Trade Mark will become distinctive. Registrations in foreign jurisdictions are but one factor to take into account, and here they do not make up for the lack of evidence which might provide a sound basis for acceptance.

2. I am not satisfied that the Applicant has or will use the Trade Mark in a manner and to the extent necessary that the expression “TRUE A2” will no longer convey its inherent descriptive meaning but instead distinguish the Applicant’s goods and services from those of other traders. Accordingly the provisions of subsection 41(5) of the Act should not be applied in this case.

Decision

1. As at the filing date section 33 of the Act provided:

   (1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)  the application has not been made in accordance with this Act; or
                 (b)  there are grounds under this Act for rejecting it.

   Note: For this Act see section 6.
   …
   (3) If the Registrar is satisfied that:

   (a)  the application has not been made in accordance with this Act; or
                 (b)  there are grounds under this Act for rejecting it;
              the Registrar must reject the application.

   Note: For this Act see section 6.

1. I have found that the Trade Mark is not sufficiently inherently adapted to distinguish the Applicant’s goods from those of others. I have further found that the Applicant has not made out a case for application of subsection 41(5) of the Act. I accordingly reject trade mark application number 1494889. If, however, the Registrar has been served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Nicole Worth
Hearings Officer
Trade Marks Hearings
1 October 2014