AM Corporation Limited, Re

[1993] ATMO 24

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application number 527202 to register a trade mark in the name of AM CORPORATION LIMITED

AM Corporation Limited, the applicant for trade mark application 527202, sought registration of the mark Cashback Pension for superannuation pension services.

The examiner's report on 10 May 1991 raised objection to the registration of the mark under paragraphs 24(1)(c)(d) and (e) of the Act on the grounds that the words made a direct reference to the character or quality of the services included in the specification, that is, they referred to them as being a superannuation pension service which provides a cash return.  The examiner further commented that she did not consider the mark registrable even with extensive evidence.  An objection to registration was also raised under section 33.  However, the mark cited has now lapsed and no longer constitutes an objection.

In the event, the applicant did lodge evidence for consideration.  The applicant was advised that the mark had no inherent adaptability to distinguish its services and that, despite the provision of evidence, the mark could not be recommended for acceptance in Part A or Part B of the Register.  To finalise the matter, the applicant, waiving its right to be heard, requested a decision on the written record.

For the purposes of this decision, I must consider the registrability of the mark in Part A in terms of paragraphs 24(1)(c)(d) and (e) and sub-sections 24(2) and 26(2) and then, for the sake of completeness, I will consider the registrability of the mark in Part B.

The mark consists of the words Cashback Pension.  "In order to qualify as an invented word under s24(1)(c) of the Act, a word must be both newly coined and ... convey no obvious meaning to ordinary Australians": Advanced Hair Studio (America) Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 at 4. The word Pension is obviously not an invented word.  However, the mark does contain the word Cashback.  While it is not a dictionary word and may qualify as being "newly coined", the meaning of the combination of the two well known words would be obvious to ordinary Australians.  In the context of the services specified, the word Cashback would be readily understood to convey that the superannuation pension service would take the form of giving cash back to the contributor/recipient.  Even without considering the word in the context of the particular services, I believe it would be understood to mean that a person could expect to get cash back as a result of engaging in some enterprise, venture or endeavour.  Thus the mark does not contain or consist of an invented word.

With regard to paragraph 24(1)(d), it has been said that the term "direct reference corresponds to aptness for normal description": American Screw Cos. Appn [1959] RPC 433 at 346. The question to be asked therefore, is, are the words comprising the mark an apt description of a superannuation pension service? In very basic terms, participants in a superannuation scheme make contributions during their working life to a superannuation fund which is managed and invested. On retirement, contributors expect the return of their investment either as a lump sum or as a pension. If the pension is returned in cash, then the words Cashback Pension would be a very apt description of how the service operates.  Therefore, I find the mark consists of words that do make a direct reference to the character or quality of the services in respect of which registration is sought.

Since the mark is rendered in plain script without the addition of any other features that would render it distinctive, the mark, prima facie, is not registrable in terms of paragraph 24(1)(e).  Therefore I consider the mark is not, prima facie, registrable in Part A of the Register.

However, paragraph 24(1)(e) admits to registration in Part A, inter alios, marks which meet the requirements of sub-section 24(2), that is, marks which contain or consist of words that, though not prima facie distinctive, are shown by evidence to have become distinctive.  In determining whether a mark has become distinctive, consideration must be given to the requirements of sub-section 26(2).  "That sub-section requires two matters to be considered, inherent adaptability to distinguish and distinctiveness in fact acquired by use or otherwise": Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424.

Whether a mark is inherently adapted to distinguish has been said to "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 a mark closely resembling it": W. & G. du Cros Ltd's Appn (1913) 30 RPC 660 at 672. The more apt the words are for normal description, the more likely it is that other traders will want to use them in the normal course of business. Since giving cash back to contributors in the form of a pension is a major part of a superannuation scheme's operation, it is highly likely that other traders in that field would wish to use the words in the course of their business. Therefore I consider that the mark has little, if any, inherent capacity to distinguish the applicant's services.

The more likely it is that other traders would wish to use the words comprising the mark, the greater the onus on the applicant to provide evidence that is sufficiently convincing to establish that the mark has, in fact, become distinctive.  The applicant has provided evidence which claims use of the mark since October 1986.  The statutory declaration made by David Smith states that Cashback Pension refers to allocated pensions which were devised by the applicant to refund to the family of a member, any amounts not received by the member as a pension before their death.  Allocated pensions are one of four types of return to contributors under the applicant's Lifetrack Rollover Pension Plan.  The evidence provided shows there is a very strong tendency to use the word Cashback descriptively rather than as a trade mark.  It is used to describe a type of pension in the same way that the word "life" is used to describe a type of pension.  The supporting trade declarations, in prepared questionnaire form, list what appear to be a number of the applicant's trade marks.  When the declarants claim that:

"I was aware of this mark ....",
          "I am aware that this mark ....", and

"In my opinion the mark is distinctive of AM Corporation Ltd's goods..."

it is not clear, except in one instance, to which of the marks the reference is made.  There is no certainty that their comments refer to Cashback Pension.

The figures provided to the time of lodgement, for funds raised and money spent on advertising, refer to the plan as a whole and give no indication of the level of public interest in, or the exposure of, the mark Cashback Pension.  At the time of lodgement of the application there appears to have been assets of approximately $12.5 million funding the Cashback Pension.  This figure does not suggest that a large number of contributors were involved in the pension scheme at that time.  However, the figure has grown substantially since then.

Overall, the evidence does not establish that the applicant had built up a significant reputation in the mark at the time of lodgement.  Given the highly descriptive character of the mark, and thus its lack of inherent adaptability to distinguish, the evidence is not sufficient to establish that the mark had become distinctive at the time of lodgement.  The applicant has not discharged its onus in terms of sub-sections 24(2) and 26(2) and I find the mark not registrable in Part A of the Register.

Although the applicant has not indicated that it wishes the application to be considered for registration in Part B, for the sake of completeness I will do so.  In considering whether the mark is capable of becoming distinctive and registrable in Part B of the Register, it must be considered in the light of the principles elucidated in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 and Burger King supra, namely, whether the mark will at some time in the future satisfy the requirements of sub-section 26(2) of the Act concerning inherent adaptability to distinguish and distinctiveness in fact.  Even though the evidence figures show a substantial increase after lodgement, given my comments above on the mark's lack of inherent distinctiveness, I do not consider the evidence sufficient to outweigh that deficiency and establish that the mark is capable of becoming distinctive.  Therefore I do not consider the mark registrable in Part B of the Register.

In conclusion, I do not find the mark meets the requirements of section 24 or section 25 of the Act and I refuse the application.

Linda Sullivan
Senior Examiner
12 March 1993