AMBI Inc

[1999] ATMO 46

TRADE MARKS ACT 1995

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

Re:Trade mark application 702416 in the name Ambi Inc

Background

Application 702416 in the name of Ambi, Inc was lodged on 14 February 1996.  The applicant seeks registration of the trade mark THE ONE STEP COW PREP for "Antimicrobial pre-moistened towel" in Class 5.

An examiner of trade marks issued a report stating that, as a ground for rejection exists in terms of section 41 of the Trade Marks Act 1995 (the Act), the application should not be accepted for registration. Section 41 of the Act allows:

Trade mark not distinguishing applicant's goods or services

41.(1) 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).

(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.

Note:For goods of a person and services of a person see section 6.

(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.

Note 1:For goods of a person and services of a person see section 6.

Note 2: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 (1) and 7(3) and section 8).

(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.

Note 2: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 (1) and 7(3) and section 8).

The report stated, inter alia, that the phrase THE ONE STEP COW PREP "describes the goods as being anti-microbial pre-moistened towels which can be used in a ONE STEP procedure to PREP or prepare COWS for milking etc"

The attorney for the applicant, Ian Tannahill of Pizzey & Co of Brisbane, made three submissions - each of which was met with a report from the examiner stating that the grounds for rejection remained. The examiner invited the applicant to submit evidence of the use of the trade mark so that any acquired distinctiveness of the trade mark could be assessed or other circumstances considered.  Such evidence was not forthcoming and the applicant requested a hearing of the matter.

The hearing was before me in Canberra by telephone on 22 March 1999.

Mr Tannahill referred me to the presumption of registrability in the Trade Marks Act 1995. He submitted that the trade mark THE ONE STEP COW PREP does not reveal any intelligible information about the goods as to their nature, origin or intended purpose, whether it be for milking cows, operating on cows or the nature of the operation. Mr Tannahill stated that he thought that the dicta in Keystone Knitting Mills Ltd's Appn (1928) 45 RPC 421 was relevant. In that case, Lord Hanworth stated that the trade mark should be looked at "not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and form an opinion as to what it connotes."

Mr Tannahill then quoted from the Trade Marks Office Draft Manual of Practice and Procedure (the Draft Manual) where it is stated at Part 22 :

Trade marks not inherently adapted to distinguish goods or services of applicants will mostly be those that consist wholly of a sign ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the goods or services or the time of production of goods or of the rendering of services.

(This is, in fact, a paraphrase of Note 1 to subsection 41(6) of the Act, supra).

Mr Tannahill stressed that the note uses the word 'wholly' and said that he thought that there was no word in the sign that could be used to designate the goods to which the sign was to be applied, or their nature or intended purpose.

In his reference to the Draft Manual, Mr Tannahill also referred to paragraph 5.1 of Part 22 where various examples of registrable trade marks are given and submitted that the phrase was an unlikely grammatical expression and not one that other traders would wish to use.  He went on to quote:

Subsection 41(4) provides that if the Registrar cannot decide that the trade mark is capable of distinguishing just on the extent to which it is inherently adapted to distinguish the applicant's goods and/or services another step must be taken. This is that the Registrar, under subsection 41(5), is to consider whether the combination of any or all of:

·    the level of inherent adaptation to distinguish,

·    the use or intended use of the trade mark, and/or

·    any other circumstances

would lead to the conclusion that the trade mark does distinguish or will distinguish the applicant's goods and/or services from those of other traders. If it does, it is taken to be capable of distinguishing and there is no ground for rejection under section 41.

Registration of this instant trade mark in other jurisdictions, was, Mr Tannahill said, relevant 'other circumstance' in terms of section 41(5). He referred me to notifications of allowance from Canada, France and the United States of America which had been submitted to the examiner for consideration and also to a text that deals with the differences between tests for registrability in these jurisdictions.

These factors, said Mr Tannahill, should be sufficient to raise doubt in my mind to the registrability of the trade mark and, in the view of this doubt, the trade mark should be accepted for registration.

Discussion
I think that it is appropriate to deal with the submission that I should consider each word in the trade mark THE ONE STEP COW PREP as separate integers early in my discussion of this issue.

The trade mark that is the subject of this decision is 'the sign' for the purposes of section 41 of the Act. The sign consists wholly of the words THE ONE STEP COW PREP and it must, accordingly, be considered as a whole. As Mr Tannahill observed, as per Keystone, supra, the trade mark must be looked at as to what it would denote to the public at large, so I will consider that next in relation to the expression as a whole.  This process is one of taking 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 in terms of subsection 41(3) of the Act.

I note that, in my consideration of the meaning of the trade mark, I am entitled to rely on dictionaries or other authority to determine the denotation of the trade mark and can also rely on my own general knowledge: "Heavenly" Trade Mark Appn [1967] RPC 306.

In the dairy industry in Australia, as well as elsewhere in the world, it is common to prepare cows for milking by cleaning and massaging their teats.  This has a dual purpose of sanitising the teats and getting the cow ready to let down its milk.  Very often, the preparation is two step, as described, with the teats being dipped into some disinfecting solution which is then wiped off with a cloth - the cleaning massages the teat for milk let-down.  The problem with this approach is that it is slow - whereas dairy farmers are concerned to move their cattle through the milking stalls as rapidly as possible.

Obviously, being able to prepare the cow for milking as rapidly as possible, in a one step procedure is highly desirable, and, if there were goods to make this possible, would be a most attractive attribute or use to which such postulated goods could be put.

The Oxford English Dictionary gives the following definition of the word PREP.

prep (prEp), n. and a. slang (orig. School and College).
1. n. Short for preparation.

prep (prEp), v.2 slang (orig. U.S.).
[f. prep n. 1, or shortening of prepare v.]
a. trans. To prepare (someone or something);

Thus, I think that, since the meaning of the shortform PREP is so well known, it is appropriate that I treat the terms THE ONE STEP COW PREP and THE ONE STEP COW PREPARATION as being interchangeable.

I quote now from the reasons of Deputy Registrar Hardie in her decision in Re Application By Babcock & Wilcox Company (1998) 41 IPR 147:

The operation of s 41 is spelt out by Branson J in the recent Federal Court decision of Blount Inc v Registrar of Trade Marks, (1998) 40 IPR 498, the Oregon case.

Her Honour observes that, in applying the provisions of s 41, and in deciding whether a trade mark is capable of distinguishing, the registrar has three options. He may conclude:

(a)      that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b)      that 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; or
(c)      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 there is uncertainty, on that basis alone, that the trade mark is actually capable of distinguishing the designated goods or services.
Branson J says:

The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41 (2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33 (1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41 (4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s 41 (6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar will not reject the application pursuant to s 41 (2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33 (1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar must reject the application pursuant to s 41 (2).

If the registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s 41 (5) are brought into operation. If the registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s 41 (5) (a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41 (2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33 (1). If the registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41 (5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the registrar must reject the application: s 41 (2).

Further, while Mr Tannahill submitted that because there may be some doubt in terms of section 33 of the Act as to the registrability of the trade mark, the application should be accepted, this doubt only exists up to the point that a consideration of the trade mark has occurred in terms of subsection 41(3) of the Act.  If, in terms of the analysis in Oregon, supra, I am not satisfied as a delegate of the Registrar that the trade mark does or will distinguish the goods of the applicant, I must go on and apply the balance of section 41 of the Act.

It seems to me that the expression THE ONE STEP COW PREP falls into the category of trade marks referred to within paragraph (b), above.  There is very obviously a two step preparation of cows for milking - the one step cow preparation has distinct advantages and these are such that any other trader would want to laud, and need to laud, in very similar language to that expressed in the trade mark, in relation to their own goods.  I do not agree with Mr Tannahill that the language used is grammatically incorrect.  While there is euphony and rhyme in the trade mark, this does not approach artifice - the expression is a natural and normal part of language.

The structure of section 41(6) is such that I should now go on and consider any evidence that the applicant has submitted. However, there is no evidence.
I note that there are the notices of allowance from other jurisdictions that the applicant has submitted for my consideration.  However, as these may go to a consideration under 'other circumstances', their potential applicability (if any) is limited to grounds of rejection under subsection 41(5) of the Act.

Consequently, I am bound to reject the application in terms of subsection 41(2) of the Act.

Accordingly, I reject the application in terms of section 41(2) of the Act.

Ian Thompson
A/Hearing Officer

5 May 1999