Accent Group Limited

[2023] ATMO 80

TRADE MARKS ACT 1995

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

ReTrade mark application number 2246956 (10, 25) – ADAPTION – in the name of Accent Group Limited

Delegate:	Nicholas Smith
Representation:	Applicant: James Neil of Clayton Utz
Decision:	2023 ATMO 80 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 41 of the Act – section 41 considered – trade mark is not to sufficiently adapted to distinguish the designated services – negligible evidence of use supplied – trade mark application rejected

Background

1.       On 4 February 2022, Accent Group Limited (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (Cth) (‘Act’)

Application Number:	2246956
Filing Date:	4 February 2022
Goods:	Class 10: Articles of clothing for support purposes; articles of clothing for compression purposes; articles of clothing for recovery purposes Class 25: Clothing; sportswear; activewear; footwear including shoes and socks; inserts for footwear (other than orthopaedic); fittings of metal for footwear; heelpieces for footwear; non-slipping devices for footwear; parts of footwear; soles for footwear; tips for footwear; toe inserts for footwear (other than orthopaedic); headgear; belts (clothing); gloves; hosiery; underwear (‘Applicant’s Goods’)
Trade Mark:	ADAPTION	(‘Trade Mark’)

1. The Trade Mark was duly examined under s 31 of the Act and a ground for rejection was identified by the examiner under s 41 of the Act. The examiner stated (paraphrased), that the Trade Mark consisted of the ordinary word ADAPTION, which refers to an adaption or adjustment made to something. This word is used in relation to articles of clothing to indicate clothes that are adapted for use with disabilities or the elderly, commonly referred to as adaptive clothing. As such the Trade Mark is acting in a descriptive manner rather than as a badge of trade origin. Other traders may desire to be able to use the Trade Mark in connection with the Applicant’s Goods.

2. On 3 March 2022 the Applicant responded to the rejection, providing further submissions but little evidence of use. The submissions were insufficient to persuade the examiner, who issued a further examination report maintaining the s 41 ground for rejection in respect of the Applicant’s Goods. The Applicant then requested to be heard by the Registrar of Trade Marks under s 33 of the Act.

3. This matter was listed for hearing by written submissions on 2 May 2023.  As a delegate of the Registrar of Trade Marks I heard this matter on that day.  James Neil of Clayton Utz represented the Applicant filing written submissions on 14 April 2023 ('Applicant’s Submissions’). 

4. The present matter is a hearing under s 33(4) of the Act. As noted in MHFC Holdings Pty Ltd[1] as well as other decisions of the Registrar (Teraglow Pty Ltd[2] and TOM Organic Pty Ltd[3]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 41 ground for rejection under the Act as it applies to the Trade Mark.

   Legislative framework

   6. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[4] Regarding the present application, the only unresolved ground for rejection identified is under s 41 of the Act. The capacity of the Trade Mark to distinguish the Applicant’s Goods must be assessed at the filing date, being 4 February 2022 (‘relevant date’) however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.[5]

   [1] [2016] ATMO 96, [9] (Hearing Officer Wilson).

   [2] [2016] ATMO 32 (Hearing Officer Worth).

   [3] [2018] ATMO 46 (Hearing Officer Worth).

   [4] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

   [5] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

5. Section 41 of the Act provides:

   41 – 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).

6. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[6] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [6] (1998) 40 IPR 498, 505 (Branson J).

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The 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.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Goods] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Goods]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Goods] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Applicant’s Goods] 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 [Applicant’s Goods]. [that is, s 41(4) applies][7]

   [7] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).

7. In the present case the Applicant’s evidence of use is negligible, being two screenshots of what is apparently its website, taken after the relevant date and annexed to its response to the examination report. There are no other circumstances raised that may be relevant in my consideration of whether the Trade Mark could distinguish the Applicant’s Goods. As such, a ground for rejection under s 41 will apply if the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods from the goods and services of other persons, being the test in s 41(4). It is not necessary to conclude that the Trade Mark is not to any extent inherently adapted to distinguish, being the test in s 41(3).

8. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

   (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

   (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
   
   (3) The question of whether a trade mark is adapted to distinguish the services of the applicant 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
   
   (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

   
   (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
   
   (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
   
   (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
   
   (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
   
   (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
   
   (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
   
   (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
   
   (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[8]

   [8] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

9. The Applicant’s Submissions are unclear as to whether it seeks to challenge the conclusion of the examiner that the Trade Mark has an ordinary meaning, as they initially submit that the word ‘Adaption’ is non-standard and has been replaced by ‘Adaptation’ but then go into great detail about the meaning of ‘Adaption’.  In the event that the submission is made by the Applicant, I do not accept it; while ‘Adaptation’ may be the preferred form of the word (noting that the evidence of this is a single statement in the Oxford English Dictionary), ‘Adaption’ does not fall into the category of words that are so archaic that they lack any ordinary signification, rather the ordinary signification of the Trade Mark, to persons likely to purchase the Applicant’s Goods, is the same as ‘Adaptation’.  The fact that there is a preferred form of a word does not render an otherwise descriptive word distinctive.

10. The Applicant’s Submissions extract definitions of adaptation from the Oxford English Dictionary and Macquarie Dictionary; once the definitions that relate to biology or are otherwise inapplicable to the Applicant’s Goods (for example an amended version of a musical composition) are excluded, I find that the definitions broadly support the conclusion reached by the examiner that the ordinary signification of the Trade Mark is an adjustment made to something.  I further note that the Macquarie Dictionary definitions of adaptation include a) the act of adapting or b) something produced by adapting.

11. The Applicant’s Submissions criticise the examiner for raising an objection under s 41 on the basis that the word ‘can be defined’ as having a particular meaning and submits that a mere suggestion that one possible ordinary signification may be descriptive is not sufficient to support a s 41 objection. While this decision is not a review of the decision of the examiner, I reject the Applicant’s Submissions on this point. Words can have numerous meanings, both as defined and in the context of particular goods. The term adaptation has numerous definitions, some of which have no applicability to the Applicant’s Goods but some of which, the examiner has concluded, have applicability. When considering the ordinary signification of a word, context is crucial and it is entirely appropriate for an examiner to note that a word can be defined in a way (noting that there are other definitions) and to focus the examination on the definition and use of a word in a manner most relevant to the consumers of an applicant’s goods and services.

12. Once the ordinary signification of the Trade Mark is established, the next question is whether other traders might legitimately need to use the word in respect of the Applicant’s Goods.  I accept that there is a type of clothing known as adaptive clothing, which refers to a type of clothing designed around the needs and abilities of people with disability; indeed if the mark sought to be registered was ADAPTIVE I would find, in respect of the Applicant’s Goods, that the mark is not to any extent inherently adapted to distinguish the Applicant’s Goods from other goods.

1. I accept the Applicant’s Submissions that there is a significant difference between ADAPTIVE and ADAPTION and the existence of a type of clothing known as ‘adaptive clothing’ does not necessarily mean that other traders making adaptive clothing would legitimately need to use the word ADAPTION in relation to their goods.

2. However, notwithstanding the above conclusion, I find that the mark is to some to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons.  The Applicant’s Goods, and in particular clothing, are often adjusted or redesigned for specific use, either in the design process or in the tailoring process.  The product produced following the adjustment or redesign process can be described as an adaption; i.e. producer x has produced an adaption of product y for the Australian market, or producer x has, following consultation with its specialist customer base, produced an adaption of its product for its specialist customer base by adjusting y and z.  This can be both in respect of customers with disabilities as well as other classes of possible purchasers of the Applicant’s Goods.  The term adaption operates as a direct reference to an aspect of the Applicant’s Goods, namely that they are derived from or adapted from another similar product.  Other traders thus might legitimately need to use the Trade Mark in respect of their goods.

3. The Applicant submits that if other traders wish to use the Trade Mark there is no basis to suggest that such use will be in a manner which would infringe the Trade Mark.  This is a misreading of the test set out in Clark Equipment Co v Registrar of Trade Marks.[9]In that case Kitto J at 513 sets out the criteria for deciding whether a trade mark is inherently adapted to distinguish:

   … 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   It is important to note that in that same decision Kitto J said the following at 517:

   …it is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as ‘made in Michigan’ or in some other ways indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business. (emphasis added)

   [9] (1964) 111 CLR 511.

4. This language makes clear that what must be contemplated in assessing the inherent adaptation of a sign is any use a trader is likely to fairly desire to make of it, be it as a trade mark or to describe their goods and services.  Indeed, were the test to be limited to use as a trade mark then the test of inherent adaption to distinguish would have no meaning; one could register CAR for cars and argue, that such registration as a trade mark should be permitted as no other trader would desire to make use of it as a trade mark, but only to describe their goods and services, such use not being an infringement of their trade mark.  

5. To its credit the Applicant acknowledges this state of affairs but notes that there is no evidence before IP Australia that other traders wish to use the Trade Mark to describe the Applicant’s Goods. I note that once an ordinary signification of a word is established, in this case by reference to common dictionary definitions; it is not necessary for this office to provide proof of use in order for s 41(4) to be established – rather it is sufficient to conclude that other traders ‘might legitimately need to use the words’. In the present case the Trade Mark is not an allusive reference to the Applicant’s Goods, rather when using it in respect of clothing a trader is directly describing an aspect of clothing, namely that the clothing is derived from or adapted from a similar product. To clarify, for a mark to fall under s 41(4) it does not need to be a synonym for the goods, rather it needs to be descriptive of the goods such that other traders may wish to use the Trade Mark.

6. Finally, the Applicant notes that the the Trade Mark was accepted for registration by the Intellectual Property Office of New Zealand and refers to evidence of other marks that include (but do not consist solely of) ‘adaption’ on other registries. I am unpersuaded by this submission.  I note the statement by Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks that ‘[A]lthough consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not’.[10] While the existence of overseas marks is relevant and has been taken into account, it should not, in isolation, be the determining factor enabling the Registrar to ignore the other considerations in s 41.[11] 

   [10] (2000) 47 IPR 579, 590.

   [11] See KAMYR Inc, Re [1996] ATMO 14 (Hearing Officer Murray).

7. Accordingly, the Trade Mark is not sufficiently inherently adapted to distinguish the Applicant’s Goods. As such s 41(4) applies, and in the absence of evidence of use, intended use or other circumstances I find that the application to register the Trade Mark must be rejected under s 41 of the Act.

   Decision

   22. Section 33 of the Act relevantly provides:

   33Application accepted or rejected

   (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.

   (2)The Registrar may accept the application subject to conditions or limitations.

   (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.

8. As I am satisfied that there is a ground for rejection under s 41(4) of the Act, I reject the application to register the Trade Mark.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   20 June 2023