Abalner Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Proposal to revoke acceptance of trade mark application number 1633831 (35 & 37) – Blair’s Tyres – in the name of Abalner Pty Ltd

Delegate:

Michael Kirov

Representation:

Applicant: Jackson Rogers of Harris & Harris Solicitors

Decision:

2015 ATMO 51

Section 38: Whether reasonable to revoke acceptance – s 41 objection could have been overcome if raised at examination based on information provided by the Applicant following the revocation proposal – acceptance confirmed – Application to proceed to registration with s 41(4) endorsement.

Background

This matter arises following a request by Abalner Pty Ltd (“the Applicant”) to be heard in relation to a proposal by the Registrar of Trade Marks (“the Registrar”) to revoke acceptance of the trade mark application detailed below (“the Application”) pursuant to s 38 of the Trade Marks Act 1995 (“the Act”):
Application Number:  1633831
Trade Mark:  Blair’s Tyres  (“the Trade Mark”)
Filing Date:  11 July 2014  (“the Filing Date”)
Services:Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Retail services; Retailing of goods (by any means)
Class 37: Servicing of cars; Servicing of commercial vehicles; Servicing of vehicles; Vehicle servicing; Advisory services relating to the repair of motor vehicles; Advisory services relating to vehicle maintenance; Advisory services relating to vehicle repair; Garage services for vehicle maintenance; Garage services for vehicle repair
(“the Claimed Services”)
When initially examined under s 31 of the Act the Application was assessed as qualifying for registration and its official acceptance as such was advertised for opposition purposes in the Australian Official Journal of Trade Marks on 4 December 2014.
However, following an internal review, a delegate of the Registrar wrote to the Applicant on 30 January 2015 noting that a ground for rejection under s 41 of the Act should have been raised and thus that the Trade Mark should not have been accepted for registration. The letter indicated that revocation of acceptance pursuant to s 38 of the Act appeared reasonable in the circumstances and that this would take place in one month unless the Applicant sought to be heard on the issue. The nature of the s 41 ground of rejection was explained in the letter:
The trade mark is the plain words BLAIR’S TYRES. The word BLAIR’S is the plural or possessive form of the surname of many Australians.
People will often provide goods and/or services using their surname. The more common a surname is, the more likely it is that other traders may wish to use it.
Other traders with this surname should be able to use this word in connection with similar tyre goods or services similar to yours.
As a guide, a surname is considered a relatively common one if it has 750 or more entries on the Australian electoral roll. The surname in your trade mark occurs 3094 times. It is likely that a significant number of traders with this surname may need to use it in connection with their goods or services.
A ground for rejection under section 41 of the Act therefore should have been raised in the first instance.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the [Act]).
You have one month from the date of this letter to apply to be heard on this matter, [or] to submit a request for a decision on the written record. Please note that a request to be heard or for a decision on the written record must be accompanied by the appropriate fee. If you request a hearing, the Office will appoint a time and place for you to present your case. If you do not respond within this time, acceptance of the application will be revoked and the application will be returned to examination. A new report will then be sent to you detailing the precise nature of the ground for rejection in accordance with the reasons outlined above. You will then be given a further 15 months to bring the application into order for acceptance.
As mentioned, the Applicant requested to be heard on the proposed revocation and the matter came before me as a delegate of the Registrar in Sydney on 14 April 2015. The Applicant was represented by Jackson Rogers of Harris & Harris Solicitors, who supplemented his oral submissions with written submissions sent to me prior to the hearing in accordance with my directions.
Mr Rogers also relied upon a Statutory Declaration made by Peter Fitzpatrick on 8 April 2015, with Annexures A to AB, which was filed on 9 April. Mr Fitzpatrick has been Financial Controller of the Applicant since February 2000 and in the declaration he provides details of the Applicant’s claimed continuous use of the Trade Mark in the conduct of its tyre supply and motor vehicle repair business since 1983.
The Law
Section 38 of the Act is set out below:
Revocation of acceptance
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.
(2) If the Registrar revokes the acceptance:
(a) the application is taken to have never been accepted; and
(b) the Registrar must examine, and report on, the application as necessary under section 31; and
(c) sections 33 and 34 again apply in relation to the application.
The Application was filed after 15 April 2013, when the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. Accordingly, as Mr Rogers acknowledged, the newly worded section is applicable in this case and this is set out below:
Trade mark not distinguishing applicant's goods or services
(1) 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 (the 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.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) 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; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
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: For goods of a person and services of a person see section 6.
Note 3: 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 (5) and 7(3) and section 8).
(5) 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).
Discussion
At the hearing Mr Rogers acknowledged that, for the reasons set out in the Registrar’s letter of 30 January 2015 and reproduced in paragraph 3 above, the Trade Mark should on the face of it have attracted an objection under s 41 when initially examined. However, he submitted, had such an objection been raised at that time, the Applicant would have been able to overcome it by relying on evidence of use, intended use and/or other relevant circumstances as indicated by s 41(4). This, he submitted, was apparent based upon the information contained in the Fitzpatrick declaration now before me. Accordingly, in terms of s 38(1)(a), “taking account of all the circumstances that existed when the [A]pplication was accepted” (and notwithstanding the relevant circumstances were then unknown to the Registrar), the Application should indeed have been accepted for registration at that time.
In support of this submission Mr Rogers firstly noted that the Trade Mark as a whole was at least to some extent inherently adapted to distinguish the Claimed Services and thus that it was appropriate to consider it under s 41(4) rather than s 41(3) of the Act. I agree that this is consistent with the Registrar’s longstanding practice in relation to claimed trade marks which feature, (or indeed consist of), a relatively common surname[1] and accordingly I now turn to a consideration of the “combined effect” of the matters specified in s 41(4)(b).
[1] See the recent decision of Re Trade Mark Applications 1587494 GARRETT METAL DETECTORS and 1587495 GARRETT [2015] ATMO 48 (9 June 2015) for an historical overview of the Registrar’s practice in relation to trade marks featuring surnames.
Relevantly as far as s 41(4)(b)(i) of the Act is concerned, Mr Rogers submitted:
Analysis of the capacity to distinguish is often considered by reference to a “spectrum” or “continuum” with, at one end, marks with no such capacity and, at the other, marks which are perfectly capable of distinguishing.
In this regard I accept that a surname such as “Blair”, which occurs some 3094 times on the Australian electoral roll, is by no means as common as surnames such as, for example, “Smith” (114,997 times), “Jones” (56,698 times), “Wilson” (46,961 times) or “Nguyen” (29,798 times). In principle, therefore, the surname “Blair” contains relatively greater inherent adaptation to distinguish the Claimed Services than would many other more common surnames such as these.
I note in this context, too, that although the additional element TYRES contained in the Trade Mark is arguably directly descriptive in relation to all of the Claimed Services, the mark nevertheless does not consist of the surname “Blair” alone. Accordingly, the mark as a whole does to my mind contain some, albeit slight, further adaptation to distinguish the Claimed Services than would the bare surname “Blair” alone. In this regard I note that the word “tyres” is not necessarily the only, or indeed the most appropriate, word to describe all of the services in question.
On the other hand, as Mr Rogers acknowledged, there is on the face of it nothing particularly unusual or uncommon about the Claimed Services. Certainly the potential market for such services would include a significant proportion of the Australian population. Accordingly I do not consider the likelihood that one or more of the 3094 individuals on the electoral roll with the name “Blair” might want or need to use their name, or for that matter their name in conjunction with the word “tyres”, for their similar services or closely related goods, is necessarily low for that reason.
As far as use, or intended use, of the Trade Mark is concerned, Mr Rogers took me at some length through the information contained in the Fitzpatrick declaration. As mentioned, Mr Fitzpatrick has been Financial Controller of the Applicant since February 2000. He describes the Applicant’s business as that of a “tyre wholesaler, retailer and distributor, and garage owner offering automotive services and repairs” and attests to the Applicant’s continuous and growing use of the Trade Mark in relation to such services since March 1983. As at 8 April 2015 (when the Fitzpatrick declaration was made) the Applicant offered the services through five commercial sites in NSW (which it owns) and it also owned and operated wholesale warehouses in Riverwood and Newcastle in NSW and Hallam in Victoria from which it distributes tyres and automotive parts.
In addition, the Applicant operates a website at from which it “retails an extensive brand [sic] of tyres; offers advice about tyres and automotive services; and advertises [these] goods and services.” Apart from NSW and Victoria, this has to date attracted custom from both the ACT and South Australia. Mr Fitzpatrick says that the Applicant has recently updated its website and engaged a business named Reach Local “to increase its Internet presence”. In this regard he annexes statistics compiled by Reach Local which show the number of visits to the website on a monthly basis over the period February 2013 to March 2015, which number appears to me reasonably significant.
[2] According to the website the Applicant’s website dates from March 2010.
Mr Fitzpatrick provides figures for the Applicant’s turnover for each of the years 2008 to 2014 inclusive and further provides a breakdown as to how these figures relate to each of the Claimed Services. The amounts in question are on the face of it both significant and increasing.
Mr Fitzpatrick also provides figures for the same seven year period for the Applicant’s advertising and promotional activities featuring the Trade Mark, being in excess of $100,000 per annum. Again, I consider the amounts spent to be significant.
Annexed to the Fitzpatrick declaration are some 60 pages of supporting documentation confirming and illustrating the Applicant’s advertising and promotional efforts. These include prominent use of the Trade Mark on signage at the Applicant’s various business premises, on staff uniforms and vehicles, on stationery, business cards, stickers and the like and in Yellow Pages® entries over some two decades. As well as advertisements placed in newspapers, trade magazines and automotive enthusiast publications, the Applicant has advertised its services on radio and television in NSW and has been involved in sponsorship at events run by local schools in the Illawarra area of NSW and by organisations such as the Lions Club.
Mr Fitzpatrick mentions many other advertising, promotional and sponsorship activities undertaken by the Applicant during the 1980s and 1990s prominently featuring the Trade Mark, documented with photographs, testimonials, newspaper articles or relevant invoices. I do not think it necessary to describe all these activities in detail here. Suffice it to say that I am satisfied based on this material and the other information in the Fitzpatrick declaration discussed earlier that the Trade Mark had enjoyed relevant use for more than 20 years by the time the Application was filed in July 2014.
As regards s 41(4)(b)(iii) of the Act (“any other circumstances”), I note that Mr Fitzpatrick also provides details of the Applicant’s trade mark registration 831480, filed by the Applicant some 15 years ago, as set out below:
Registration Number:                   831480
Filing Date:  12 April 2000
Services:Class 35: Retail and wholesale of tyres
Trade Mark:
Finally I mention another matter raised by Mr Rogers in his submissions of general relevance to s 41, namely:
In considering revocation under s 41 of the Act it is important to note that, since the Raising the Bar amendments which came into effect on 15 April 2013, there is now a presumption in favour of registration on the part of applicants. As noted in the Explanatory Memorandum (at p.146) which accompanied the amendments, “[t]he intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.”
To conclude this discussion then, having regard to the combined effect of the matters specified under s 41(4)(b) of the Act, and particularly in light of the Applicant’s long and continuous use of the Trade Mark in relation to the Claimed Services, I am satisfied on the balance of probabilities that the Trade Mark does and will distinguish those services from the goods or services of others. I am moreover satisfied that this was the case on 30 January this year when the Registrar informed the Applicant of the then proposed revocation.
Decision
Given my above conclusion, I do not believe revocation of acceptance is reasonable in the circumstances. The required registration fee having already been paid on 14 January this year, I accordingly direct that the Application now proceed to registration bearing the following endorsement:
Evidence and/or other circumstances provided under s 41(4).
Michael Kirov
Hearings Officer
Trade Marks Hearings and Oppositions
18 June 2015

[2015] ATMO 51

18 June 2015