ACP Syme Magazines Pty Ltd

[1999] ATMO 95

Decision of a delegate of the Registrar of Trade Marks, with reasons

RE:Trade Mark Application 722187 in the name of ACP Syme Magazines Pty Ltd for the trade mark street machine in classes 16 and 41.

Background

The applicant's trade mark consists of the words street machine.  The application claims goods in class 16 (the designated goods) as:

Printed matter including books, magazines and newspapers; posters; photographs

and services in class 41 (the designated services) as:

Publishing; electronic publishing; organisation of competitions for education and/or entertainment; information services (including on-line information services) relating to education or entertainment

The trade mark was examined and at the third report grounds for rejection were maintained under section 41 of the Trade Marks Act1995 (the Act).  In this regard the examiner held that when applied to the goods or services the trade mark was not inherently adapted to distinguish because the words forming the trade mark have a commonly understood meaning.  In particular the examiner held that street machine is an expression that indicates high performance vehicles which may be used on public roads. Inherent in this finding was that acceptance of the trade mark for registration would be possible only under the provisions of s41(6).

Following issue of the examiner's report the applicant waived its right to a hearing and requested the matter be decided on the basis of material submitted by the applicant and held by the Trade Marks Office.  These submissions consisted of the applicant's attorney's submissions in response to the examiner's reports and a further submission made prior to the matter being decided.

In their response to the examiner's second report and in their later submission, the attorneys for the applicant offered to limit the designated goods and services if doing so would facilitate registration of the trade mark.  In this regard the class 16 goods would be restricted to Printed matter being magazines and similar periodicals, and the class 41 services would be restricted to Publishing of magazines and similar periodicals; electronic publishing of magazines and similar periodicals; organisation of competitions relating to modified vehicles.

Submissions

Attorney's submissions
In written submissions the attorney put forward the view that street machine was not the ordinary or natural way to describe publications about modified cars, or to describe the organisation of competitions relating to them. On this basis the attorney submitted the trade mark is therefore at least to some extent inherently adapted to distinguish the designated goods, and taking into account its use, the trade mark does distinguish those goods and services. In these circumstances the attorney maintained the trade mark is registrable under section 41(5) of the Trade Marks Act 1995 (the Act).

Applicant's evidence
The applicant relied on the declaration by Mr Colin Morrison, a director of the applicant company.  This declaration referred to use of the trade mark over the past 18 years in relation to a publication, and to its use in conjunction with sponsorship of specialist car festivals and competitions.  The declaration mentions substantial sales and circulation figures for the publication and expenditure on promotion.

The evidence in exhibits A and B show the trade mark has remained essentially unchanged since the first issue in December 1984 until the present.  These exhibits refer to a stylised version of the trade mark consisting of the word Street in lower case letters located above, at an angle to and partly superimposed over, the word Machine which is rendered in block style upper case letters.  This method of presenting the trade mark extends to the publication's web page.  I will refer to this version of the trade mark as Street machine.  On the other hand the trade mark as applied for consists of the words Street and Machine rendered in standard upper case letters without adornment.  I will refer to this version of the trade mark as street machine.  A representation of each trade mark appears below.

street machine

Legal test

This application attracted grounds for rejection under s41 of the Act. Section 41 says:

(1) …

(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.

(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.

(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.

Justice Branson in OREGON[1] observed, at 504, that in applying s41 and deciding whether a trade mark is adapted to distinguish the Registrar has three options. He (or she) may conclude:

[1] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498

(a) the trade mark is inherently adapted to distinguish the designated goods or services; or
(b) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services; or
(c) the trade mark is to some extent inherently adapted to distinguish the designated goods or services, but there is uncertainty, on that basis alone, if the trade mark is actually capable of distinguishing the designated goods or services.

Discussion

adaptation

The Oxford English Dictionary defines Street as meaning (loosely) the realm of the common people and in the sense of or pertaining to the streets.  As part of their submissions the applicant filed evidence of the trade mark's use which supports the view that the term Street has a meaning corresponding to that set out by Oxford.  That material contained numerous references to Street being used in relation to specialised motor vehicles, or to festivals and motor shows where they are paraded.

Thus there are references to a 'pro-street' and a 'super-street' Torana, to a 'street machine of the year' winner(s), a call to 'fellow street machiners to listen up', to a 'street-legal' tyre, and to 'industrious street machine engineering'.  Thus Street in these references conveys the idea defined by Oxford as 'something of the street' or in particular something that is derived from ordinary cars of the street or something that may be able to be driven on the street.

In this regard and of interest is the following description of the street machine magazine appearing on the applicant's web site which supports the view that street machine has a known meaning when used in relation to the goods and services claimed by the applicant;

'Street Machine is the country's biggest selling and most respected modified car magazine, combining great photography with accurate, expert coverage of the Australian street machining scene.'

While, as the applicant's attorney has submitted, there is no reference in standard dictionaries to Street Machine the term nevertheless is in current use and has a known meaning amongst the relevant public.  My view is supported by the applicant's evidence which includes the various instances cited above, where the applicant uses street machine, or some derivation of it, in a purely descriptive manner.  Consequently I find street machine is a word other traders would need to use to describe their similar goods and services and as such it is not inherently adapted to distinguish.
Having found the trade mark is not inherently adapted to distinguish the designated goods or services, the applicant must, in order for the trade mark to be accepted under s41(6), establish that because of its use the trade mark does distinguish.

use
The applicant made one declaration as to the mark's use.  This declaration indicates the trade mark was first used in Australia in 1985 in relation to a magazine about a particular type of modified motor vehicle.  Other use indicates the mark is used in the sponsorship of modified vehicle shows.  However the evidentiary material forming attachments to the declaration makes it quite clear this use refers only to the Street machine version of the trade mark and not to the street machine trade mark as applied for.

Ability to distinguish
The trade mark for which registration is sought therefore differs sufficiently from that which is shown in evidence as applied to the applicant's goods and services. For the purposes of s41(6) that use does not demonstrate that at the date of filing the trade mark (ie the trade mark as applied for) distinguishes either the designated goods or services specified in the original application, or the restricted goods and services offered by the applicant to facilitate registration.

Decision

I find street machine is not a combination of words that is inherently adapted to distinguish the designated goods or services. I find also that the extent of use of the trade mark does not establish it did distinguish those goods and services from the goods or services of other persons at the date of filing. I therefore reject the trade mark application under the provisions of s41(2) of the Act.

TH Turner
A/senior examiner
Trade Marks Hearings

20 September 1999