Angel Gowns Australia Incorporated v Angel Gowns for Australian Angel Babies Inc

[2017] ATMO 130

TRADE MARKS ACT 1995

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

Re:Opposition by Angel Gowns Australia Incorporated to registration of trade mark applications 1708250 and 1706628(39) - Angel Gowns (Words and Logo) - in the name of Angel Gowns for Australian Angel Babies Inc.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Written submissions of David Larish of Counsel instructed by Carina Yap of Phang Legal. Applicant: self represented.
Decision:	2017 ATMO 130 Trade Marks Act 1995 Section 52 opposition to registration: section 41 established – subsections 44(3) and 44(4) - Trade Marks have insufficient inherent adaptation to distinguish the services of the Applicant. Registration refused

Background

1. These proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) are oppositions to the registration of the two trade marks in the name of Angel Gowns for Australian Angel Babies Inc (‘the Applicant’) which appear below:

Application No:         1706628
Priority Date:             12 July 2015

Services:Class 39: Charitable services, namely distribution of goods such as foodstuffs, toys, clothing, furniture and household items

Trade Mark:               Angel Gowns for Australian Angel Babies Australia

(‘the Word Trade Mark’)

Application No:         1708250
Priority Date:             19 July 2015

Services:Class 39: Charitable services, namely distribution of goods such as foodstuffs, toys, clothing, furniture and household items

Trade Mark:               

(‘the Logo Trade Mark’)

1. For convenience I will also refer to the above as ‘the Trade Marks’, to the specified services as ‘the Services’ and to the priority dates as ‘the Relevant Dates’.

2. The Word Trade Mark and the Logo Trade Mark were accepted for possible registration and were respectively advertised in the Australian Official Journal of Trade Marks on 3 December 2015 and 10 December 2015.

3. On 3 February 2916 (the Word Trade Mark) and 10 February 2016 (the Logo Trade Mark) Angel Gowns Australia Incorporated (‘the Opponent’) filed Notices of Intention to Oppose the registration of the Trade Marks.

4. Subsequently, both oppositions have followed the same course. On 29 February 2016 the Opponent filed its Statements of Grounds and Particulars which (as now amended) detail grounds under sections 41, 58, 60, 42, and 62(A) of the Act. On 11 April 2016 the Applicant filed Notices of Intention to Defend.

5. On 22 July 2016 the Opponent filed its Evidence in Support being a declaration, with exhibit A, made on 21 July 2016 by Fiona Julia Kirk, founder of the Opponent.

6. On 27 October 2016 the Applicant filed its Evidence in Answer being a declaration, with attachments, made on 27 October 2016 by Sarah Kathleen McVeigh director of the Applicant.

7. On 6 January 2017 the Opponent filed its Evidence in Reply being a further declaration, with attachment B, made on 3 January 2017 by Fiona Julia Kirk.

8. I am a delegate of the Registrar of Trade Marks and am to decide these matters on the basis of the written record which includes the written submissions of the Opponent prepared by David Larish of Counsel.

Onus & Relevant Dates

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]-[26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].

2. The Relevant Dates at which the grounds under section 52 of the Act must be considered are the priority dates of the opposed applications[2].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence

1. Having reviewed the evidence of the parties, I consider it appropriate to decide these matters under section 41 of the Act. I will therefore discuss the evidence of the parties insofar as it is relevant to my decision under section 41.

2. The dispute is centred on the charitable provision of funereal clothing (‘the Clothing’) for deceased babies and infants.  The Clothing is fashioned by the parties (and their volunteer helpers) out of wedding dresses which are donated to them for this purpose.  I infer from the evidence that the parties appear to have derived the idea for this activity from seeing a video recording or newspaper article about the similar third party offerings in the United States of America under the sign ‘Angel Gowns’.

The Opponent

1. Ms Kirk states:

   In early 2014, I decided to set up an organisation that provided charitable services which involved the collection of wedding dresses so as to create and distribute christening or funerary gowns for stillborn babies or infants. Around that time, I did a search on multiple online platforms including Facebook, Google, Twitter and Instagram to see if there were any other organisations within Australia that performed this function. I did not find any. [3]

   Upon not discovering a similar organisation, on 27 March 2014 I created a Facebook page known as “Angel Gowns Australia”. I was not aware of any entity which had that name, or a name featuring those words.

   [3] I note that the signs ‘Facebook’, ‘Google’, ‘Twitter’, and ‘Instagram’ are registered trade marks.

2. The material within exhibit A to Ms Kirk’s declaration show that from early April 2014 wedding dresses were being donated to the Opponent.  The Clothing was first produced by the Opponent on 6 April 2014.

3. In April 2014 the Opponent affiliated with Invocare Australia and Guardian Funerals and in August 2014 the Opponent affiliated with NICU Helping Hands of Texas, United States of America.

4. The Opponent’s fundraising activities raised in excess of $76,000 in its first year of operation and free services from a major transport company.

5. The Opponent had at the Relevant Dates, charitable activities in most Australian States (and New Zealand) making and supplying the Clothing – primarily to hospitals and funeral parlours.

The Applicant

1. Ms McVeigh states that she is the founder of the Applicant and:

   … had the idea to start a group up to transform donated wedding gowns into funeral outfits after watching on 27 March 2014 a video about a group in the USA [Enclosure C].

   On that day 1 27 March 2014, I conducted searches online and did not find any Australian pages for "Angel Gowns". I decided to call the group "Angel Gowns for Australian Angel Babies" and set up a Facebook page.

2. Ms McVeigh does not state the scope of her online searches but presumably this included Facebook.  A Facebook activity log dated from 27 March 2014 is attached to her declaration but this appears to be from an organisation called ‘Heartfelt’ whose relationship with the Applicant is unclear.  I further note that for some unspecified reason Ms McVeigh appears to have restricted public access to the Facebook page that she created.

3. Significantly, concerning the derivation and function of the expressions ‘Angel Gowns’ and ‘Angel Babies’ Ms McVeigh states:

   The name is long but descriptive – Angel Babies is a well-recognised term internationally and I believe it is necessary to prevent confusion over the purpose of Angel Gowns given that it is such a delicate subject. 

   …..

   The use of ‘angel baby’ to describe a stillborn or neonatal[4] death is traceable online back to 2001, and the term ‘angel gowns’ as a descriptor for angel baby clothing has been in use, in the US particularly, since 2012. In and of itself, including the title ‘angel gowns’ in a trademark is a product description not dissimilar to including the phrase ‘bridal gowns’.

   [4] Merriam-Webster Dictionary:

Section 41

1. Section 41 of the Act 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).

2. Although Ms McVeigh has conceded in her declaration that the words ‘Angel Gowns’ are descriptive of the nature of the services, a discussion of the inherent adaptation of the Trade Marks is not otiose as they must be considered as wholes.[5]

   [5] Diamond T Motor Car Company [1921] 2 Ch 583.

3. The nature of ‘inherent adapted’ was recently discussed in Moroccanoil Israel Ltd v Aldi Foods Pty Ltd[6] by Katzmann J who stated:

   [6] [2017] FCA 823 at [637] – [640].

   The question of whether a trade mark is inherently adapted to distinguish one trader’s goods from another’s depends on the “ordinary signification” of the mark, that is to say, what it means (or more accurately what it would have meant at the time the applicant filed its application for registration) to anyone ordinarily purchasing, consuming or trading in the relevant goods: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; (2014) 254 CLR 337 at [28], [30], [70], [71]. […].

   There is a continuum of distinctiveness — from highly descriptive trade marks to highly distinctive trade marks. There is a distinction between a trade mark that contains a “direct reference” to the relevant goods (prima facie not registrable) and one that makes a “covert and skilful allusion” to the relevant goods (prima facie registrable): Cantarella at [58]-[59]; Flexopack at [214], [216]. As the Full Court (Gummow, French and Hill JJ) put it in Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd [1993] FCA 259; (1993) 26 IPR 261 at 269:

   There is, of course, a range of classes of commercial designation from the purely descriptive with no identifying elements to a unique identifying designation with no descriptive element. Between these poles are hybrid terms such as “motorcharge” used to designate a petrol credit and purchase system: Motorcharge Pty Ltd v Motorcard Pty Ltd [1982] FCA 90; (1982) 42 ALR 136. In Equity Access Pty Ltd v Westpac Banking Corp [1989] FCA 506; (1989) 16 IPR 431; 12 ATPR 40–994; Hill J said at IPR 448; ATRP 50,956:

   Just as the distinction between descriptive and fancy names is not a distinction of law so too it is wrong to see the distinction in black and white terms. The reality is that there is a continuum with at the extremes purely descriptive names at the one end, completely invented names at the other and in between names that contain ordinary English words that are in some way or other at least partly descriptive. The further along the continuum towards the fancy name one goes, the easier it will be for a plaintiff to establish that the words used are descriptive of the plaintiff's business. The closer along the continuum one moves towards a merely descriptive name the more a plaintiff will need to show that the name has obtained a secondary meaning, equating it with the products of the plaintiff (if the name admits of this — a purely descriptive name probably will not) and the easier it will be to see a small difference in names as adequate to avoid confusion.

   A mark may have a descriptive flavour but still be inherently capable of distinguishing a trader’s goods. As Lockhart J observed in Johnson & Johnson at 335–336:

   If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.

   A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (supra) (at 857–858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.

   Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the identity (scil.) of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source[.]

   A geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstances from carrying its prima facie geographical signification, and for that reason it may be held to be adapted to distinguish the applicant’s goods: Clark Equipment at 514; Yarra Valley at [58], [59]. A trade mark that contains a geographical element, like all marks, must be considered as a whole: Bavaria NV at [74].

4. The initial question to be asked, therefore, is ‘what is the ordinary signification of the Trade Marks when considered as wholes?’

The Word Trade Mark

1. The signification of the words ‘Angel Gowns for Australian Angel Babies Australia’ must be considered in the context of the Services, the market for the Services, and the words used by others to describe their similar services within the market. 

2. The signification of the expressions ‘Angel Gowns’ and ‘Angel Babies’ is conceded by Ms McVeigh as, ‘The use of ‘angel baby’ to describe a stillborn or neonatal  death is traceable online back to 2001, and the term ‘angel gowns’ as a descriptor for angel baby clothing has been in use, in the US particularly, since 2012.  In and of itself, including the title ‘angel gowns’ in a trademark is a product description not dissimilar to including the phrase ‘bridal gowns’’. 

3. The significance of the words ‘Australia’ and ‘Australian’ are well known and hardly merit discussion – the words describe the place of the market and the composition of that market for the Services.

4. The test for inherent adaptation to distinguish is the familiar one oft quoted from Clark Equipment Co v Registrar of Trade Marks[7] 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.

   [7] [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5]

1. The evidence establishes that the expressions ‘Angel Babies’ (or ‘Angel Baby’) and ‘Angel Gowns’ are used by at least three organisations in Australia for the sake only of their ordinary significance to accurately describe the services that those organisations offer.  The evidence also establishes that the term is similarly used by organisations in countries other than Australia: Larry John Powell v Glow Zone Products Pty Limited.[8]  In my consideration, the addition of the words ‘Australian’ and ‘Australia’ to those expressions to form the Word Trade Mark adds no inherent adaptation to those expressions whatsoever: the words only refer to the place and composition of the marketplace for the services. 

   [8] [1996] FCA 1899.

2. I therefore conclude that the Word Trade Mark lacks any inherent adaptation to distinguish the Services in terms of subsection 41(3) of the Act.

The Logo Trade Mark

1. The Logo Trade Mark differs from the Word Trade Mark in the addition of the graphical devices of wings and a halo to the alphabetical letter A at the beginning of the word ‘Angel’.

2. In Diamond T Motor Car Co’s Appn[9] it was observed by Lawrence J of the Diamond T (Logo) trade mark below the quote that:

   In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves.

[9] (1921) 38 RPC 373.

1. Here what may be termed the ‘cognitive cues’ of the halo and wings within the Logo Trade Mark are thematically linked to the words ‘Angel Gowns’ and in that sense may be viewed as adding very slight, if any, inherent adaption to the dominant words ‘Angel Gowns’.  An analogy can be drawn here with the instance of the trade mark involved in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[10] where that Court found of the device of a bare foot that:

   The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word.

   [10] [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 at [69].

2. Thus the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the Services from similar services of other persons. This view may be affirmed by the considerable confusion between the services offered by the parties of which they both complain: if the device elements add so little to the Logo Trade Mark that the marketplace fails to distinguish between the Logo Trade Mark and another trader’s generic use of the words ‘Angel Wings’, that trade mark may be assessed being unadapted to distinguish and as falling for consideration under subsection 41(4) of the Act.

3. The assessment of the use or intended use of the Logo Trade Mark by the Applicant presents difficulties since the Applicant is a charity run by volunteers which donates the Clothes to hospitals and the bereaved.  In the usual sense, the Applicant is not ‘in trade’ and thus the standard indicators (such as details of sales, advertising and promotional figures, etc) of the Logo Trade Mark’s capacity to become distinctive of the Services are unlikely to apply and have not, in any event, been provided by the Applicant.

4. Here, the Applicant has provided insufficient other detail such as the amounts of donations to it and corroborated details of the numbers of Clothing provided by the Applicant for any assessment of whether the Logo Trade Mark will distinguish the Services of the Applicant.

5. I therefore conclude that the Logo Trade Mark does not and will not distinguish the Services.

Conclusion

1. The Opponent has established its opposition to the registration of the Trade Marks under section 41 of the Act.

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 applications 1708250 and 1706628.

Costs

1. The Opponent has requested its costs in this matter.  It is usual to award costs to the successful party and I accordingly award costs against the Applicant at the official scale in Schedule 8 to the Trade Mark Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
31 October 2017

of, relating to, or affecting the newborn and especially the human infant during the first month after birth ·neonatal mortality
 ·neonatal intensive care unit