Amazon Technologies, Inc.
[2017] ATMO 44
•16 May 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:In the matter of Australian Trade Mark Application No. 1647857 for ASAP in classes 9, 38, 41 and 42 in the name of Amazon Technologies, Inc.
Delegate: Hearing Officer: Debrett Lyons Representation: Applicant: Vineetha Veerakumar, of King & Wood Mallesons, Solicitors Decision: 2017 ATMO 44
Trade Marks Act 1995: Sec. 33: refusal to register; sec. 41: adaptation to distinguish; trade mark to be registered.Background
In this matter Amazon Technologies, Inc. (“the Applicant”) has applied under the Trade Marks Act 1995 (“the Act”) to register the trade mark detailed below:
Application No: 1647857
Filing Date: 18 September 2014Priority Date: 02 Apr 2014 (from US 86239782)
Goods / Services: Class 9:
Software tool and feature for downloading, uploading and streaming of multimedia content and audio and video recordings; software tool and feature for storage and playback of personalized multimedia content and audio and video recordings
Class 38:
Electronic data transmission; electronic transmission and streaming of digital media content for others via global and local networks; communication services for transmitting, storing, accessing, receiving, downloading, streaming, broadcasting, sharing, displaying, formatting, mirroring and transferring electronic data and multimedia content, namely voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works, via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; wireless broadband communication services; providing telecommunication services in relation to the electronic transmission of messages among computer users concerning reviews, ratings and recommendations related to voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works, via an Internet forum, online chat rooms and online communities; providing access to online directories, databases, current events websites and blogs, and on-line reference materials in the entertainment and literary fields; providing access to auxiliary devices or electronic devices in the nature of providing telecommunication connectivity services for the transfer of images, messages, audio, visual, audiovisual and multimedia works among e-readers, mobile phones, smartphones, portable electronic devices, portable digital devices, or computers; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; providing telecommunication services in relation to the electronic transmission of photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works via online chat rooms, Internet forums and online communities; transmission of podcasts; transmission of webcasts; distribution services, namely, delivery of electronic data and multimedia content
Class 41:
Entertainment services, namely providing nondownloadable playback of multimedia content and audio and video recordings via global communications network
Class 42:
Computer services, namely providing non-downloadable software tool for steaming and delivery of multimedia and audio and video recordings; computer services, namely providing non-downloadable software tool for storage and playback of personalized multimedia content and audio and video recordings; storage of electronic data and multimedia content.
(“the Specification”)
Trade Mark: ASAP
(“the Trade Mark”)
The application was examined as required by section 31 of the Act. A ground for rejecting the Trade Mark was raised under section 41 for reasons outlined shortly. After correspondence between the examiner and the attorneys for the Applicant failed to overcome the objection, the Applicant requested to be heard.
As a delegate of the Registrar of Trade Marks I heard this matter on 20 April 2017. The Applicant, represented by Vineetha Veerakumar of King & Wood Mallesons, Solicitors, made oral representations via telephone after having earlier provided me with her outline of written submissions in accordance with the pre-hearing directions I have given.
Legislative framework
Section 33 of the Act provides that:
(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.
…
(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.
Since the application was made after the amendments to section 41 introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 came into effect[1] it is section 41 as it is now found which regulates this matter.
[1] which took effect from 15 April 2013.
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).
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).
Section 33 embodies a “presumption of registrability” under which the Registrar must accept an application for registration of a trade mark unless satisfied there are grounds for rejecting it. Prior to the amendments brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, if the Registrar was not satisfied that a trade mark was inherently adapted to distinguish, then rather than applying the presumption of registrability he or she was required to follow the decision making process under the former subsections 41(5) and/or 41(6)[2]. Those subsections effectively shifted the onus to an applicant. To address that inconsistency, section 41 was amended:
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.[3]
[2] Per Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) FCR 50.
[3] Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, p 146.
Accordingly, I am not entitled to reject the Trade Mark unless satisfied that the Trade Mark is not inherently adapted to distinguish and the use of it has not rendered, or will not render it, distinctive (whether that use is considered by itself, as is the case for trade marks under section 41(3), or considered in combination with a degree of inherent capacity to distinguish, as is the case for trade marks under section 41(4)).[4]
[4] The amendments brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act have not changed the relevant standard. As stated in the Explanatory Memorandum to the Bill, “…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”, p 146.
Accordingly, the initial step is to consider whether the Trade Mark is not capable of distinguishing the Specification from the goods or services of other persons.
Discussion
The classic test for inherent adaptation to distinguish is laid out in Clark Equipment Co v Registrar of Trade Marks[5] (‘Clark Equipment’) where Kitto J stated:
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.
[5] [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5].
When that passage was more recently considered by a differently constituted High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[6] (‘Cantarella’) the majority uncovered a two-step process. They stated:
It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (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. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[7]
[6] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Crennan and Kiefel JJ.
[7] Ibid., [50].
Accordingly directed, the first step is to determine the ordinary signification of the words comprising the Trade Mark in respect of the Specification. The High Court in Cantarella continued:
Once the “ordinary signification” of a word … is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[8]
[8] Ibid., [71].
So, by way of example how that two-step process works, the High Court found that according to their ordinary significations, ORO and CINQUE STELLE were merely allusive of the relevant goods and so there was no need to go on to consider the needs of other traders.
Ordinary signification
The process I am required to make is not in the nature of a review of the examiner’s reasoning. However, it is useful in this instance to understand how this matter reached me.
In a first report, the examiner reasoned that the:
trade mark is, or has as its main feature, the word ASAP. This is defined in the Macquarie Dictionary as extremely quickly. It indicates that the goods and services are ones which operate extremely quickly or which will deliver or transmit electronic products extremely quickly. Other traders should be able to use the word ASAP in connection with goods or services similar to [those of the Applicant].
Maintaining the section 41 objection through later reports, the examiner reasoned following Cantarella that “the term [ASAP] is descriptive in relation to and has a normal signification in relation to any goods or services, including those of this application.” (my emphasis)
The reports went on, but I find that is as far as I need consider them. The Applicant’s submissions, with which I am in agreement, are that:
The critical and decisive error made by the examiner is in considering the inherent adaptation of the subject Trade Mark to distinguish in the abstract, rather than by reference to the specification of Goods and Services. The Applicant submits that the examiner has considered the issue by reference to a perceived (but irrelevant) function of the Goods and Services, rather than the ability of ASAP to function as an indicator of source for the Goods and Services. …
Once the Trade Mark is assessed against the Goods and Services, it is immediately apparent that it is not directly descriptive in its ordinary signification, and that it can function (and would be recognized) from the outset as a trade mark. Taking the class 9 goods by way of example, it is quite apparent that ASAP does not – in its ordinary signification – directly describe computer software. No consumer would refer to a computer software product directly as ASAP. The same comment can be made in respect of (e.g.) storage of electronic data and multimedia content in class 42.
…
Even if the Trade Mark is perceived as an abbreviation for “as soon as possible”, the examiner has not considered the ordinary signification of the Trade Mark in respect of the Goods and Services. We submit that there is an important distinction to be drawn between:
(i) speed as a function - “I need this software ASAP”; and
(ii) the product itself - e.g. ASAP software (which could clearly be seen as a source signifier on the face of it, notwithstanding that some consumers would recognize that ASAP has a dictionary meaning).
This distinction has presumably allowed for acceptance and registration of:
· AU TM 865367 RAPID in respect of certain kinds of computer software (in each case without an endorsement).
· AU TM 603747 for QUICKEN in respect of computer software;
· AU TM 721427 and AU TM 1731806 for PRONTO, each in respect of computer software in class 9 (and in the latter case in respect of a broad range of goods and services in classes 9, 16, 35, 41 and 42);
· AU TM 1546964 PRESTO in respect of a broad range of goods and services in classes 9, 35, 38 and 41.
Each of these words has a clear connotation of speed.
The highest point of the examiner’s objection would appear to be that ASAP indicates a function or desired attribute of the Goods and Services. Again, we submit that this is not the correct viewpoint from which to consider ordinary signification, because it is one step removed from the Goods and Services themselves.
The Applicant therefore, submits that on the basis of the 1st limb of Cantarella, the mark is prima facie distinctive. That conclusion is sufficient to allow for acceptance of the application.
In Unilever Australia Ltd v Societe Des Produits Nestlé S.A., Bennett J wrote:
The more apt the word or expression is to describe the goods, the less it is inherently apt to distinguish them as the goods of a particular manufacturer (Clark Equipmentat 515). The setting or context in which the use occurs is relevant in determining whether the use is descriptive or for the purpose of indicating a connection in the course of trade between the product and the trade mark applicant, as a badge of origin (Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 424–5; Johnson & Johnson Australia Pty Ltd v SterlingPharmaceuticals Pty Ltd (1991) 30 FCR 326 at 350–1).
… A word descriptive of one category of goods may not be descriptive of a different category and thereby have a capacity to distinguish with respect to that different category. [9]
[9] [2006] FCA 782, [30,33].
Similarly, in Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited (‘Rohoe’) Dixon J observed[10]:
But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements.
[10] [1946] HCA 15; (1946) 72 CLR 175 at 184.
I refer to the recent decision of this Office in Australian Postal Corporation v Sendle Pty Ltd 2017 [ATMO] 42 where it was noted that:
A critical distinction must be drawn between the Services themselves and the perceived attributes of those Services as they may be insinuated by the Trade Mark. The latter does not provide the correct viewpoint from which to gauge ordinary signification since it is already one step removed from the Services themselves. That warning was sounded by the High Court in Mark Foy's Limited v Davies Coop and Company Limited (‘Tub Happy’) where Dixon CJ stated[11]:
It is, I think, a mistake first to assume that words like “Tub Happy” do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.
The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.
I accept that the Trade Mark, itself, might not fall into the same class of marks as TUB HAPPY but, nevertheless, Dixon CJ’s reasoning applies equally. … The Trade Mark might be suggestive of (some, not all) the Services but the ordinary signification of the words would in my assessment entail exactly the type of reflection or wonderment described by Dixon CJ in Tub Happy.
[11] [1956] HCA 41; (1956) 95 CLR 190 at 194.
I find that the ordinary signification of the Trade Mark is not a direct reference the Specification. There, according to the direction given by Cantarella, the section 41 enquiry ends with my decision that the ground for rejection has not been established.
Decision
Section 33 of the Act has been set out earlier. For the reasons given I therefore direct registration of trade mark application number 1647857.
Debrett Lyons
Hearing Officer
Trade Marks Hearings16 May 2017
Key Legal Topics
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Intellectual Property
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Statutory Interpretation
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