Andrea Gattini, Re

[1991] ATMO 16

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re: Application No. 493221 to Register a Trade Mark in the Name of ANDREA GATTINI

Application No. 493221 was lodged on 16 August 1988 in the name of ANDREA GATTINI, of 2 Peirse Way, Marmion, Western Australia, 6020.  It sought registration of the word mark ITALTOURS in respect of "tour operator" services in class 39.
          An examiner's report of 11 December 1989 objected to the mark's registrability in terms of paragraphs 24(1)(c), (d) and (e) of the Act on the grounds that the mark consists of a combination of the words ITAL and TOURS which has direct reference to the character or quality of the services specified by describing them as tours to Italy.  The applicant lodged some samples on advertising of the mark which confirmed the nature of the services as indicated.  In response to a report reiterating the initial objections the applicant pointed out that the mark is rendered as one word ItalTours, i.e. comprising upper and lower case letters thus distinguishing the mark from the two descriptive words 'Italy' and 'Tours'.  He also stated estimated revenue and advertising figures in relation to the mark for the financial year 1989 to 1990.  The examiner noted the applicant's comments on the actual appearance of the mark, but observed that the members

of the public would clearly see and understand the meaning conveyed by the mark, i.e. as services concerning tours to Italy.  As to the use of the mark in Australia, the examiner found it to be insufficient for considering registration of the mark in Part A or Part B of the Register.  Subsequently, two more reports were issued by the examiner explaining in more detail the reasons for maintaining the objections to the mark's registrability.  In a letter of 6 August 1990 the examiner provided further information on the mark's use.  These submissions, however, did not satisfy the examiner who reiterated the original objections asserting that the evidence of use did not assist the applicant in overcoming the objections.  Consequently, the applicant waived his right to a hearing and requested a decision on the written record.
          The word 'Ital' is defined in Webster's Third New International Dictionary, G. & C. Merriam Co, USA, 1976 ed. as "1. Italian 2. Italy" and in The Macquarie Dictionary, revised ed. of 1985 it appears as "ital- or italo- comb. form, usu. cap.: 1: Italian (Italamerican) 2: Italian and (Italo-Austrian)".  It seems to me therefore that very few persons concerned with the applicant's services would fail to recognize the mark ITALTOURS as directly describing the services in the manner pronounced by the examiner, i.e. as services relating to tours to or in Italy.  Even if they were not aware of the above dictionary definitions, the meaning conveyed to them by the mark represented as ITALTOURS or ItalTours would be perfectly obvious.  In this regard I recall the words of Dixon CJ on "direct reference to the character or quality of the goods [or services]" in Mark Foys Limited v Davies Coop and Company Limited (1956) 95 CLR 190 at page 195:

"The test must lie in the probability of ordinary persons understanding the words, in their application to the goods [or services], as describing or indicating or calling to mind either their nature or some attribute they possess."

I therefore agree with the examiner that the mark fails as a registrable particular in terms of paragraph 24(1)(d) which, inter alia, stipulates that a mark is registrable in Part A of the Register if it contains or consists of

"...

(d)a word not having direct reference to the character or quality of the goods or services in respect of which registration is sought ..."

The applicant argued that his mark consists of one word ITALTOURS, not two separate words ITALY and TOURS which, he acknowledged, should not be monopolized by anyone as trade marks.  It is well established, however, that such a combination does not constitute an invented word, in terms of paragraph 24(1)(c) of the Act, as propounded by Lord Shand in Eastman Photographic Material Company Ltd (1898) 15 RPC 476 at page 487:

"There must be invention, and not the appearance of invention only.  It is not possible to define the extent of invention required, but the words I think should be clearly and substantially different from any word in ordinary and common use.  The employment of a word in such use, with a diminutive or a short and meaningless syllable added to it, or a mere combination of two known words, would not be an "invented" word; and a word would not be "invented" which, with some trifling addition or very trifling variation, still leaves the word one which is well-known or in ordinary use, and which would be quite understood as intended to convey the meaning of such a word."

Thus, I consider that the applicant's mark does not qualify for registration as an invented word.  In view of the above observations, it also fails as a prima facie distinctive mark for the purpose of registration in Part A of the Register.
          Since there has been use of the mark, I must evaluate it under the provisions of sub-sections 24(2) and 26(2) of the Act.
          In order to qualify for registration in Part A of the Register a trade mark must be distinctive, i.e. adapted to distinguish the goods of the applicant from similar goods of other traders.  To determine whether a mark is of such nature, it is necessary to decide whether other traders would require it for their ordinary use, in connection with their goods, and without improper motive.  If the answer is in the affirmative, then registration of the mark will be denied (see Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511). In view of the dictionary definitions of the word 'Ital' in the mark, as observed earlier, as well as the fact that the combination of the words comprising the mark is most suitable for describing the purpose of the services specified and therefore is not adapted to distinguish, I believe the word ITALTOURS should not be appropriated as a trade mark by one particular proprietor.
          Registrability of a mark in Part B depends upon determining whether at some time in the future the mark will satisfy the requirements of section 26(2) of the Act concerning inherent distinctiveness and distinctiveness in fact (see Burger King Corp v Registrar of Trade Marks (1973) 12 CLR 417).
          The applicant's evidence of use of the mark has been incorporated in his letters as part of the submissions.  He advised that the mark has been used nationwide for two years in arranging tours to Italy as well as to Brazil.  The turnover for the fiscal year 1989 to 1990 is stated as $204,501.00, while the advertising expenditure for the same period has been estimated as $12,679.00.  Since the mark has been in use since lodgment of this application, its acceptance can be considered only in terms of section 25 of the Act as a mark capable of becoming distinctive.  However, the value of the turnover and advertising of the services is far too insignificant to conclude that the mark has been rendered distinctive in fact of the applicant's services.  I have also found the mark to be one which is not adapted to distinguish the services in question.  In this regard in Burger King, supra, Gibbs J enunciated at page 426:

"... the authorities show that the primary inquiry is whether the word is inherently adapted to distinguish the goods in respect of which registration is sought, and that if it is simply a laudatory or descriptive epithet registration will generally be refused even if there is evidence of such user as has in fact rendered the word distinctive of the applicant's goods."

Consequently, the mark does not qualify for registration under the provisions of section 25 of the Act.  Having considered the relevant factors I conclude that the applicant's mark is not suitable for registration in either Part A or Part B of the Register, and I refuse the application.

(V. ZARS)
Senior Examiner
18 February 1991