Allshelter Pty Ltd v Price and Speed Containers Pty Limited

[2015] ATMO 113

TRADE MARKS ACT 1995

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

Re:Opposition by Allshelter Pty Ltd to registration of trade mark application 1557292(19) - igloo shelters - filed in the name of Price and Speed Containers Pty Limited.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Peter Dummer of Wallington-Dummer Applicant: Kevin Malouf and Joe Caruana
Decision:	2015 ATMO 113 S52 opposition: section 41 – Trade Mark lacked inherent adaptation to distinguish the Goods at the filing date; opposition successful; registration refused

Background

1. Price and Speed Containers Pty Limited (‘the Applicant’) has applied (‘the Application’) for registration under the Trade Marks Act 1995 (‘the Act’) of the trade mark appearing below:

Application No:  1557292
Priority Date:  16 May 2013
  (‘the filing date’ or ‘the relevant date’)
Goods:  Class 19: Non-metallic shelters
  (‘the Goods’)
Trade Mark:  igloo shelters

(‘the Trade Mark’)

1. The Application was examined as is mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 10 October 2013. 

2. On 14 November 2013 Allshelter Pty Ltd (‘the Opponent’) filed Notice Intention to Oppose the registration of the Trade Mark. On 13 December 2013 the Opponent filed its Statement of Grounds and Particulars detailing grounds under sections 41, 44, 58, 60, 42 and 62A of the Act.

3. On 13 February 2014 the Applicant filed an application for extension of time in which to file a late Notice of Intention to Defend.  This application for extension was granted by a delegate of the Registrar.

4. The parties duly filed their evidence as I further discuss below.

5. The matter came before me for a hearing in Sydney on 14 October 2015.  Peter Dummer of Wallington-Dummer represented the Opponent.  Kevin Malouf and Joe Caruana, officers of the Applicant, attended the hearing and made representations on the Applicant’s behalf.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26].

2. The relevant date at which the grounds must be considered is the filing date of the Trade Mark.[2]

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The evidence in this matter comprises the following declarations:

   Evidence in Support

   Peter Chamberlayne Dummer made on 18 September 2014 with exhibits PCD-1 to PCD-5 (‘Dummer 1’); and

   Peter Chamberlayne Dummer made on 18 September 2014 with exhibits PCDD-1 to PCDD-2 (‘Dummer 2’)

   Tim Reddel made on 18 September 2014 with exhibits TR-1 to TR-9 (‘Reddel 1’)

   Evidence in Answer

   Joe Caruana made on 16 December 2014 with Exhibits 1 to 10 (‘Caruana 1’)

   Evidence in Reply

   Tim Reddel made on 27 March 2015 with exhibits TR-1 to TR-15 (‘Riddel 2’)

   Jennifer Yun-Jung Seo made on 30 March 2105 with exhibits JS-1 to JS-9 (‘Seo’)

2. The parties also requested that I consider the following information under regulation 21.19:

   Information (Applicant)

   Joe Caruana made on 9 June 2015 with Addendums A to F (‘Caruana 2’)

   Information (‘Opponent’)

   Tim Riddel made on 1 October 2015 with exhibits TR-1 to TR-11 (‘Reddel Declaration’)

3. Put briefly, the Opponent’s evidence is couched in terms of showing both its alleged prior use of the terms ‘igloo’ or ‘igloo shelters’ in relation to the Goods or of establishing that the terms ‘igloo’ or ‘igloo shelters’ are not inherently adapted to distinguish when used in relation to the Goods.

4. The Applicant’s evidence is couched in terms of demonstrating both its use of the Trade Mark and of establishing its distinctiveness.

5. It is convenient to discuss the detail of the evidence as it becomes relevant to the ground under which I will decide this matter.

Section 41

1. Section 41 provides:

41Trade 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).

1. The initial step in considering this ground is to assess the inherent adaptation of the Trade Mark to distinguish the goods of the Applicant and to then consider whether it falls under the purview of subsections 41(3) or (4) and consequently be taken taken not to be capable of distinguishing the designated goods and accordingly be rejected in terms of subsection 41(1).

2. The test for inherent adaptation to distinguish is that stated by Kitto J in Clark Equipment Co v Registrar of  Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at [5]:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. 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 connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." 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. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

3. The principle operates so as to prevent traders from depriving others in the same trade of the use of ordinary words which they need to describe their goods or to use in the normal course of trade in relation to their goods.  So, for example, a trader who makes ‘wheelbarrows’ should not be able, via the registration of the corresponding trade marks, to prevent others who make ‘wheelbarrows’ from using the words ‘garden’, ‘green’, ‘rust-proofed’ or ‘cheapest’.

4. In the recent case of Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 the High Court discussed the historical application of this principle at [36]-[44] (footnotes omitted):

   After stating that “[w]ealthy traders are habitually eager to enclose part of the great common of the English language” (which echoed their Lordships in the Solio Case), Cozens-Hardy MR explained why no monopoly could be granted under s 9(5) for laudatory epithets used as adjectives. Words such as “good” or “best” are incapable of developing a secondary meaning as indicating only an applicant’s goods. Accordingly “Perfection” was not registrable as a trade mark for soap as it was a word which should be open to use by both other traders and members of the publichttp:// - .

   Equally, no monopoly could be granted to words consisting of geographical names if their “ordinary signification” described the place of the manufacture or sale of goods. If, however, a geographical name was part of a composite mark, identified by long use as associated only with the goods of an applicant, it could be registered (as exemplified by “California Syrup of Figs” for an aperient medicine).

   No monopoly could be granted to trade marks which were merely phonetic equivalents of directly descriptive words, such as “Orlwoola” for textile fabrics. [See also Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 at 36].

   In explaining those disparate circumstances in which the “ordinary signification” of a word affected a grant of a monopoly of its use, their Lordships recognised that any word in English could prima facie be used as a trade mark but would not necessarily qualify to be registered as one. In drawing their conclusions in respect of the three trade marks under consideration, their Lordships indicated that the determination of whether a word has “direct reference” to goods (prima facie precluding a monopoly of its use) depends critically on the goods themselves, because a word containing a direct reference to goods in one trade may not convey any such direct reference to goods in another trade. An example given later was the use of the words “North Pole” for bananas.

   It was thus established early in the development of trade mark law in the United Kingdom that the “ordinary signification” of any word, or words, constituting a trade mark is important, whether a challenge to the registrability of a trade mark is based on the word having a laudatory or directly descriptive meaning, or on the word being, according to its “ordinary signification”, a geographical name (or, in those times, a surname).

   In Du Cros, Lord Parker’s speech was also directed to s 9(5) of the Trade Marks Act 1905 (UK). Lord Parker was not dealing with a word but with two applications for registration of a trade mark consisting of two letters of the alphabet joined by an ampersand. The question was whether those marks were registrable under s 9(5), being “adapted to distinguish” certain goods, as letters of the alphabet were not included in the “essential particulars” in sub-ss (1), (2), (3) or (4) of s 9. Lord Parker said that the registrability of a trade mark as “distinctive” should:

   “largely depend upon whether other traders are likely, in the ordinary course of their business 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.”

   As Lord Parker explained when applying the principle (since much relied upon), even though a mark may have acquired some distinctiveness through use, a person should not be given a monopoly of letters of the alphabet, which other traders may legitimately desire to use because they have the same initials.

   Earlier that same year, a similar point had been made in respect of s 9(5) and the distinctiveness of a surname, which others may share and wish to use. In In re R J Lea Ltd’s Application (“R J Lea”) Hamilton LJ said:

   “Further the Act says ‘adapted to distinguish’; the mere proof or admission that a mark does in fact distinguish does not ipso facto compel the judge to deem that mark to be distinctive. It must be further ‘adapted to distinguish,’ which brings within the purview of his discretion the wider field of the interests of strangers and of the public.”

   The requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business (Lord Parker), and from the wider point of view of the public (Hamilton LJ), has been applied to words proposed as trade marks for at least a century, irrespective of whether the words are English or foreign. The requirement has been adopted in numerous decisions of this Court dealing with words as trade marks under the 1905 Act and the 1955 Act. Those decisions show that assessing the distinctiveness of a word commonly calls for an enquiry into the word’s ordinary signification and whether or not it has acquired a secondary meaning.

5. The ‘ordinary signification’ of a trade mark is assessed in relation to the goods or services in respect of which registration is sought.  If other than in relation to the goods and/or services of interest, traders would be able to ‘enclose’ such words as ‘London’ in respect of ‘gin’ because the ordinary signification of the word ‘London’ is as a geographical name used in respect of a place, rather than a particular description of a type of alcoholic beverage.[3]

   [3] London gin is obtained exclusively from ethanol of agricultural origin with a maximum methanol content of 5 grams per hectolitre of 100% ABV equivalent, whose flavour is introduced exclusively through the re-distillation in traditional stills of ethanol in the presence of all the natural plant materials used, the resultant distillate of which is at least 70% ABV. London gin may not contain added sweetening exceeding 0.1 grams of sugars per litre of the final product, nor colorants, nor any added ingredients other than water. The term London gin may be supplemented by the term "dry" - Wikipedia.

6. And so it is with the assessment of the words ‘igloo shelters’ used in relation to the Goods.  The word ‘igloo’ has a ordinary meaning as defined by the Macquarie Dictionary:

   igloo

   /ˈɪglu/ (say 'iglooh)

   noun (plural igloos)
   1.  a dome-shaped Inuit hut, built of blocks of hard snow.
   2.  an excavation made by a seal in the snow over its breathing hole in the ice.
   3.  a light folding shelter for use as a windbreak on the beach.

   [Inuit: house]

7. At the hearing Mr Dummer, for the Opponent, submitted that the third denotation of the word ‘igloo’, above, brought the Trade Mark within the ambit of subsections 41(3) or (4) because ‘light folding shelters’ fall within the Goods.  However, I am not satisfied that this is so for the following reason.  The wares referred to within the third denotation appear to me to be in the nature of tents or similar shelters.  In the International (Nice) Specification of Goods and Services (‘Nice’) (which governs the classification of the goods and services in respect of which trade marks may be registered) tents are categorised in the following way:

   Goods and Services with Key : TENTS

   Mark Cls   Item          2     Match(es) Found                   Page  1

   _      28                 TENTS (PLAY -)

   _      22 T00159    TENTS

8. Thus ‘light folding shelters for use as windbreaks on the beach’ do not, as goods or wares, fall within Class 19 of Nice where the Application is made.

9. Accordingly, the Trade Mark cannot here refer to the character or quality of ‘light folding shelters for use as windbreaks on the beach’ as those particular wares do not occur within the Goods.

10. On this basis the opposition is not established.

11. However, the Opponent also points to other material that it has submitted in evidence and submits that this establishes that the Trade Mark is not adapted to distinguish the Goods from those of other traders.

12. Exhibit PCD-2 to Dummer 1 is the first page of ‘hits’ resulting from a Google® search for the words ‘Igloo Shelters’.  There are approximately 192,000 results: of course, many of these results will not be of the words ‘Igloo Shelters’ but most of the ‘hits’ on the first page of the Google® search results at PCD-2 contain at least the word ‘igloo’ used, apparently, in relation to large steel-framed and canvas-covered demountable sheds shaped like Quonset or Nissan huts.

13. At PCD-2 a print-out found under the heading ‘Igloo Shelters’ contains the following offering on eBay®:

14. The seller of the above is not apparently connected with either of the parties.  I further note my own search on eBay® reveals a somewhat larger structure, as below, offered as Igloo Dome Shelter 6m W x 6m L Container Roof Shelter by Torto:

1. Torto appears to be connected in some way with the Opponent who owns the trade mark TORTO for the above goods.

2. In his evidence in support, Mr Riddel who is financial director of the Opponent says:

   [The Opponent] was established in or around 1999 in the central-western New South Wales township of Lake Cargelligo by my father Douglas Reddel with the mission to consistently provide high quality weather protection systems to cover the widest imaginable range of assets and has since grown to be the Australasian market leader successfully supplying its products as far away as Brazil, South Africa, Papua New Guinea, New Caledonia, Vanuatu, Indonesia, England and Canada.

   Now shown to me and marked exhibit TR-1 is our current company brochure which sets out the extent of our present activities marketed generally under the Allshelter brand.

1. Concerning the Opponent’s history and use of the term ‘igloo’ or ‘igloo shelters’ Riddel 1 continues:

   The core initial business involved the selling of shelter structures which could be prepackaged then delivered to site for assembly. The product offering has expanded substantially over the years with structures now being offered across a number of applications and areas.

   Now shown to me and marked exhibit TR-3 is a screenshot of the current homepage of the [Opponent’s] website found at in this instance with the dropdown menu enabled for the "Shelters" designation. It will be seen that the shelters available come under the broad headings of "Container Shelters'', "Agriculture Shelters", "Aviation Shelters'', "Towable Shelters", "Relocatable Shelters'', "Walkway Shelters", "Post Mounted Shelters", and "COLA Shelters''. There is an alternative designation by industry nominating "Construction Shelters", "Mining Shelters", "Industrial Shelters", "Agricultural Shelters", and "Aviation Shelters".

   Specifically in relation to the "Relocatable Shelters" designation, now shown to me and marked exhibit TR-4, is the landing page which is presented to a customer if they click on the "Relocatable Shelters" designation.

   As outlined in exhibit TR-4, these "Relocatable Shelters" are provided in kit form so that they can be taken to one location, assembled, used, then at a later time disassembled and relocated to another location for reassembly. The size of these relocatable shelters can vary markedly but they all have the portability/relocatability characteristic.

   It will be noted in exhibit TR-4 that there is a subheading "Alternative Names" which lists alternative designations/names that can be used in the industry and by our customers to designate these relocatable shelters. The alternative names listed in exhibit TR-4 are Igloos, Arches, Covers, Shelters, Domes, Igloo Shelters, Arch Covers, Fabric, Dome Shelters, Container Shelters, Workshops, Temporary Facilities, Containers, Site Huts, Fabric Structures, Post Shelters, Dome Structures, Fabric Buildings, Fabric Shelters, Equipment Buildings, Shelters, Storage, Site Offices & Dongas.

   [The Opponent] has consistently over the years on its website included the "Alternative Names" listing shown in TR-4. Whilst the listing may not have always been exactly as show in the exhibit TR-4, the terms "Igloos" and "Igloo Shelters" have always appeared in the listing, at least since 2 December 2011.

   Now shown to me and marked exhibit TR-5 is a printout of the Allshelter webpage stored by the internet archive Way Back Machine as of 2 December 2011 showing what would have appeared to a prospective customer as of that date when they clicked on the "Relocatable Shelters" designation. It also includes the "Alternative Names" listing referred to in exhibit TR-4 and particularly includes the terms "Igloos" and "Igloo Shelters".

   Now shown to me and marked exhibits TR-6, TR-7, and TR-8 are printouts for the same webpage from the internet archive Way Back Machine for the dates 28 April 2012, 20 October 2012, and 8 April 2013 respectively. It will be observed that all show similar reference to the terms "Igloos" and "Igloo Shelters".

2. The evidence thus far discussed therefore suggests that the term ‘igloo’ or ‘igloo shelter’ is a standard description in the trade within which the parties operate for the type of shelter that they both sell.

3. In his evidence in answer Joe Caruana, who is Operations Manager of the Applicant, states:

   As early as August 2006 P&S began using the trademark Igloo Shelter in marketing material. Attached to this declaration is a copy of the flyer printed (Exhibit 1). A copy of correspondence with Mascot Printing's director, verifies a printing run executed for Igloo Shelters in August 2006 (Exhibit 2).

4. Exhibit 1 features prominent use of the Trade Mark on a flyer.  This flyer also contains the following explanation:

5. It is apparent in the above passage that the term ‘Igloos’ may be viewed as being used as a description of the nature of the goods rather than as a trade mark.  Additionally, the fact that, at the commencement of its manufacture of the goods and its use of the term ‘igloos’, the Applicant could state that ‘Igloos are currently being used in locations all over Australia and New Zealand …’ strongly suggests that, at the time that the Applicant commenced the use of the term ‘Igloos’, it was also being used by others.

6. In evidence in reply Riddel 2 states:

   As stated in my declaration dated 18 September 2014, I understand that the Applicant was a reseller and/or authorised distributer of the goods of the Opponent from around 2005 to October 2011.

   Now shown to me and marked exhibit TR- 1 is a copy of an order confirmation, tax invoice and signed "Allshelter Standard Terms & Conditions of Contract" transmitted from the Opponent to the Applicant dated 26 February 2007.

   Now shown to me and marked exhibit TR- 2 is a printout of a letter emailed from the Opponent to the Applicant titled "Price Adjustment 0 1.06.2009" dated 2 1 May 2009.

   Now shown to me and marked exhibit TR-3 is a printout of a letter sent from the Opponent to the Applicant dated 13 October 2009 (Letter). The Letter is marked with a "Quotation Reference" and a "Reseller Number" corresponding to the Applicant.

7. While none of the above documents contains the Trade Mark, they do show a relationship between the parties.

8. Riddel 2 also shows that the Opponent instructed its website designer to include the word ‘igloos’ as an embedded[4] term on its website as a part of the following suite of terms:

   Allshelter, Shelter, Cover, COLA, Container Mounted, Igloo, Workshop, Shade, Relocatable, Structure, Sail, (and in plural too)

   [4] That is, text which is not visible on the website which might be thought of as ‘white text on a white background’.

9. Of course, the term ‘igloo’ might only appear on the Opponent’s website in embedded text because it is the Applicant’s trade mark and, additionally, the term ‘Allshelter’ appearing at the beginning of the list is a registered trade mark of the Opponent.  Therefore, the appearance of the term ‘igloos’ in the above passage does not necessarily suggest that it lacks inherent adaptation to distinguish.

10. In a similar vein I note that currently a website associated with the Opponent contains the following:

    Whatever you call it, whether it be a Site Shelter, Container Domes, Dome Shelter, Site Shelter, Igloo Shelter, Container Shelter, Container Cover, Dome Container Shelter, Shipping Container Roof, All Shelter, Shelter Station, Container Shed or just a Shelter Thingo that goes on Containers...  Siteshelter® has you covered.

11. When it is considered that Siteshelter and Allshelter are registered trade marks of the Opponent, one might posit that if the Opponent does not appreciate the implications of treating its own trade marks in a quasi-generic manner, it also might not appreciate the nature of its allegations in relation to this ground.

12. I also note that the force of the Opponent’s arguments in relation to this ground might also be viewed as being somewhat blunted by its own filing under application 1584342 to register the trade mark IGLOO SHELTERS for goods similar to the Goods.

13. Jennifer Yun-Jung Seo is a solicitor employed by Wallington-Dummer, attorneys for the Opponent. The Seo declaration brings into evidence further searches performed to support the ground under section 41. It states:

    Now shown to me and marked exhibit JS-1 is a printout of a screenshot taken on 30 March 2015 of the Facebook landing page of "Global Fabric Structures" including a post dated 25 September 2012 which includes the statement as follows: "Extensive range of Truss Profiles including: Arched, Curved, Straight, Tall and Igloo".

    Now shown to me and marked exhibit JS-2 is a printout of a screenshot taken on 30 March 2015 of the website prominently and frequently showing use of the words "Igloo Shelters", "Igloo" and "Igloos" (Webpage) including as follows: "Igloo Hire and Sales, we hire and sell portable shelters we call Igloos". It is also stated at the bottom of the Webpage as follows: "Copyright Igloo Hire and Sales 2015 ". I conducted an ASIC search for the "Igloo Hire and Sales" business name and enclose a printout of the screenshot of the search result conducted on 30 March 2015 as part of this exhibit JS-2. Similarly, I also conducted an ABN Lookup of the "Igloo Hire and Sales" business name and enclose a printout of the result of the search as part of this exhibit JS-2, also conducted on 30 March 2015.

    Now shown to me and marked exhibit JS-3 is a printout of a screenshot taken on 30 March 2015 of the "contact us" page of the Global Fabric Structures website at (Contact Us Page). On the right hand side of the Contact Us Page is a contact phone number, namely, "[phone]'' for "Australasia" and an email address, namely, "[e-mail] ".

    Now shown to me and marked exhibit JS-4 is a printout of a screenshot taken on 30 March 2015 of a Wayback Machine result of the website as at 12 April 2013 showing a diagram of a "Supa-Span Igloo".

    Now shown to me and marked exhibit JS-5 is a printout of a screenshot taken on 30 March 2015 of a Wayback Machine result of the page under the "latest news" tab of the website as at 2 July 2013 showing a link to "The Fifth Element APG Newsletter Issue 3 February 2013" (February 2013 Newsletter). I accessed a pdf copy of the February 2013 Newsletter via this link on 30 March 2015 and enclose the second page of the February 2013 Newsletter as part of this exhibit JS-4 (Second Page). The following is stated under the first heading of the Second Page: "Extensive Range of Truss Profiles Including: Arches, Curved, Straight, Tall and Igloo".

    Now shown to me and marked exhibit JS-6 is a printout of a screenshot taken on 30 March 2015 of the website of an advertisement for an "Igloo Shelter".

    Now shown to me and marked exhibit JS-7 is a printout of a screenshot taken on 30 March 2015 of the website showing a description of the "Shelter Station Australia Pty Ltd" (Company) stating that the Company is a supplier of the "Igloo Shelter".

    Now shown to me and marked exhibit JS-8 is a printout of a screenshot taken on 30 March 2015 of a page titled "Plastic tunnel Green Houses (Igloos, Polytunnels, Hoop Houses, Hot Houses)" from the "Sage Horticultural" website at shown to me and marked exhibit JS-9 is a printout of a screenshot taken on 30 March 2015 of the first page (part thereof) of the result of a Google search for the words "igloo shelter" (Google Result). On the right hand side of the Google Result, the words "Igloo Shelters" are being used to advertise the website and the advertisement states as follows:

    "Igloo shelters and fabric structres at Taurus. Call today for a quote!" In addition, the Google Result also shows the words "Igloo Sheds" being used to advertise the website.

14. The Applicant has adduced further information couched in terms of regulation 21.19 in order to show that it had first use of the term ‘igloo shelters’ as a trade mark and that the references to the term ‘igloo shelters’ at [42] above are after it adopted the term as a trade mark. However, the date of adoption as a trade mark is not the relevant date at which the question of the inherent adaption of the Trade Mark must be considered – the relevant date is the filing date of the Application. This information is thus not relevant to my considerations.

15. The Opponent has responded with its own regulation 21.19 information showing that it widely used the term ‘igloo’ or ‘igloo shelters’ in relation to what might be termed tarpaulin shelters with light steel frames (which may or may not be container mounted) (‘tarpaulin shelters’) before the filing date of the Application.  Again, this adds little to my considerations and must be viewed as being of relatively low relevance.

16. The regulation 21.19 information filed by the parties must be regarded as not adding any information which would impact in a major way on my considerations in relation to the matter.  I therefore do not think that it is appropriate to consider it in relation to this matter.

17. I am satisfied that the evidence, taken as a whole, shows that at the relevant date the terms ‘igloo’ or ‘igloo shelters’ were used within the parties’ trade to indicate that their goods are tarpaulin shelters.  I am satisfied by the Opponent’s evidence that traders other than the parties used the term ‘igloo’ or ‘igloo shelters’ in relation to the Goods before the priority date only to state that those goods are tarpaulin shelters.  While use of the Trade Mark by traders other than the parties before the priority date was not widespread, it must also be noted that this is a very specialised field of trade in Australia with not many traders within it.

18. As such, at the relevant date, the Trade Mark lacked inherent adaptation to distinguish the goods of the Applicant from those of other traders. Accordingly, the Trade Mark falls under the purview of section 41(3) and I am now to consider whether:

    the applicant has 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.

19. In other words, the question is whether, before the filing date of the Trade Mark, the Applicant had used the Trade Mark to such an extent that, when viewing the Trade Mark, the relevant public thought only of the Goods of the Applicant and not the similar goods of other traders?  Had the Trade Mark through use by the Applicant before the filing date changed its meaning from also denoting the similar goods of other traders to signifying only those of the Applicant?

20. I consider that the answers to these questions are in the negative.  Obviously, the term ‘igloo’ or ‘igloo shelter’ was being used by traders other than the parties at the filing date and therefore it was not a term solely associated with the Applicant’s goods.

21. The ground under section 41 has therefore been established.

Decision

1. Section 55 of the Act relevantly provides

   55Decision

   (1)Unless subsection (3) applies to the proceedings, 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.

2. I refuse to register application 1557292.

Costs

1. Having been successful the Opponent is entitled to its costs which I award against the Applicant at the scale set out in Schedule 8 to the Trade Mark Regulations 1995. 

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
26 November 2015