Apple Inc

[2015] ATMO 25

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1480025(9) - Rectangle Device – (International Registration No 1108661) in the name of Apple Inc.

Delegate:

Iain Campbell Thompson

Representation:

Holder: Apple Inc

Decision:

2015 ATMO 25

Ex parte – s41 – inherent adaptation of trade mark to distinguish goods – the provisions of subsection 41(5) to be applied

Background

1.  In these proceedings under the Trade Marks Act 1995, (‘the Act’) Apple Inc, (‘the Holder’) has an International Registration Designating Australia (‘IRDA’) which requests extension of protection to Australia of the trade mark (‘the Trade Mark’) that appears hereunder:

Application No: 1480025

Int Registration: 1108661

Convention:  11 July 2011, 85368339, United States of America

Filing Date:  11 January 2012

Goods:Class 9: Electrical connectors, wires, cables, chargers, and adapters, all for use with computers, computer peripherals, consumer electronics, portable and handheld digital electronic devices, digital media players, handheld computers, tablet computers, mobile phones, electronic book readers, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (GPS) devices

Trade Mark:  

(‘the Trade Mark’)

Endorsements:                Mark Description: The mark consists of a horizontal line surrounded by a rectangle with rounded corners; the broken lines are not a part of the mark and serve only to show the position of the mark

2. Section 189A of the Trade Marks Act 1995 (‘the Act’) governs the consideration of IRDAs.  This section makes provision for the Trade Marks Regulations 1995 (‘the Regulations’) to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

3.  The Trade Mark was examined as mandated by 17A.12 of the regulations (‘the Regulations’).

4.  Regulation 17A.28 provides:

17A.28Grounds for rejecting IRDA

(1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).

(2)Sections 39 to 44 apply in relation to an IRDA as if:

(a)a reference in those sections:

(i)to an application for the registration of a trade mark were a reference to the IRDA; and

(ii)to an applicant were a reference to the holder of the IRDA; and

(b)the reference in paragraph 41 (6) (a) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and

(c)each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark registered by another person included a protected international trade mark held by another person; and

(d)each reference in subparagraphs 44 (1) (a) (ii) and (2) (a) (ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.

5. And so it was that an examiner of trade marks came to cite a ground for refusal of protection under section 41 of the Act on the basis that:

To be protected in Australia, your trade mark must be capable of distinguishing your goods/services from the similar goods/services of other traders in the market place.

Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services.

The trade mark consists of the sort of geometric design that is commonly used as (i) simple underlining, (ii) simple patterning/background, or (iii) part of simple, basic identification of where to place electronic connections.

It does not prima facie meet the requirements of the Act and it would be necessary for the applicant to provide significant evidence of use showing this basic commonplace device had generated a secondary meaning and was now operating in the market place as a trade mark.

6.  Over the course of five reports (during which the Holder filed evidence of use) the examiner maintained the ground for rejection.  The fifth report states, inter alia:

Your submissions talk about the Functional Significance of [the Trade Mark]. The response raises perceived similarities between the use of [the Trade Mark] and QANTAS as trade marks. I do not agree with these points as QANTAS is a trade mark with inherent capacity to distinguish. The application for [the Trade Mark] has been examined and a ground for rejection under section 41 established.

The response contains a submission that

•The device is used as differentiating the connector as coming from a particular origin. AND

•         Many alternate brands of the 30 PIN connectors do not bear this icon.

Both of these issues have been addressed in previous reports. Those devices containing [the Trade Mark] and indicator of which way to insert the connector do this as a courtesy to the user as the device may be inserted one way.

The attorney states that in response to no independent [sic] or any advertising or education of staff or consumers of the device, that hundreds of thousands of products bearing the [Trade Mark] in a location with prominence that is typical of TM use on such products, may be an equal or better way of doing this.

I agree with the attorney that the position of [the Trade Mark] and its positioning on the 30 pin device hold a higher level of distinctiveness. The evidence supports this. However the application is not for the combination of these elements. In fact the applicant disclaims the shape.

[…]

The attorney states that the evidence supports that the trade mark is or will become distinguishable and as such is acceptable under section 41(5).

The majority of use shows the device being used on the 30 pin device with little to no use provided on any of the other goods. Internet research shows that the 30 pin device as shown in the evidence is being discontinued by the applicant.

information indicates that the evidence does not support the principles of future use under Section 41(5). Evidence supporting how [the Trade Mark] will be used in the future would be needed to support the claim of future use due to the low inherent capacity to distinguish.

The supporting evidence by Ms Gurney demonstrates that while not all producers of 30 pin devices utilise [the Trade Mark] there are a number of producers who do.

The Survey results provided do not assist the trade marks [sic] claims for acceptance. An example of the survey conducted was provided. The 1st question provided a representation of different connector plugs. Contained within these examples was an image of the Applicant’s 30 pin device. The evidence supports that the level of distinctiveness of [the Trade Mark] increased when positioned on the 30 pin shape. As the applicant has disclaimed the shape the survey has the potential to lead the participant to a desired outcome. 

The results of the survey are also unconvincing particularly due to the small sample size, exposure to the shape of the 30 pin connector which has been disclaimed and the results.

The attorney has summarised that out off [sic] all of the participants sampled who owned an Apple Device (311) that 32% (99) people identified an association with the applicant. This is a relatively low number of people and identifies only that they can recall seeing [the Trade Mark] on a device not that they identified it as a trade mark. These figures also identified that more participants, even those that owned Apple products did not identify an association or badge of origin with the applicant.

I am satisfied that the evidence provided does not support or demonstrate that [the Trade Mark] has the capacity to distinguish any of the goods claimed in class 9 to the applicant. As this has now reached the 5th report without progression any further submissions with the same or similar responses will not further the claim for acceptance under section 41(5).

7.  There being an impasse, the Holder applied to be heard.  The hearing was before me in Sydney on 12 February 2015.  Mr Ross McLean, a partner of Baker & McKenzie, represented the Holder.   Mr McLean made oral submissions and provided me with a written summary thereof.

8.  Put simply: on behalf of the Holder Mr McLean disagreed (as I do) with the examiner.  

Section 41

9. At the filing date of the Trade Mark section 41 relevantly provided:

41Trade mark not distinguishing applicant’s goods or services

(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).

10. The structure and operation of section 41 was discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241 (‘Blount’):

Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "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". Having taken such matter into account, it is theoretically open to the Registrar to 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 so distinguishing the designated goods or services.

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 paragraphs (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 paragraphs (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 subparagraphs (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 subparagraphs (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)).

11.  The first step here in terms of Branson J’s analysis is, in terms of subsection (3), to "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".  

12.  The term ‘inherently adapted to distinguish’ was discussed in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 (‘Clark’) by Kitto J at [5]:

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.

13.  While Kitto J made the above observations in relation to word marks, the same is also true of devices or graphical elements such as the Trade Mark.

14.  It would seem that the examiner’s ground for rejection is, at least in part, taken on the basis that the more ‘simple’ a trade mark is, the more likely it is that another trader would, actuated only by proper motives, require to use that trade mark.  I do not consider that this necessarily holds true and does not address the real issue which is enunciating why another trader, actuated only by proper motives, would need to use the Trade Mark.  Simplicity is often the essence of a good trade mark.  To drawn an analogy, the word trade mark OXO, used in relation to beef cubes or beef concentrate for cookery, is obviously an extremely simple, yet effective, trade mark – it contains oblique reference to the nature of the goods, it is a palindrome and may even be inverted or read in a reflection and yet it still reads OXO.  Obviously, that trade mark is very simple but its simplicity does not prevent it acting as a very effective trade mark.

15.  In the examiner’s first report, the ground was stated in terms that the Trade Mark consists of:

(i) simple underlining, (ii) simple patterning/background, or (iii) part of simple, basic identification of where to place electronic connections.

16.  I consider that the first two of these objections can be readily dismissed for the following reasons.  Where a border forms a frame for an element which is prominent and for which registration is obviously sought, the border is not viewed as contributing to the inherent adaption of the trade mark.  Thus, in Blount, Branson J observed:

In Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285, Kitto J was required to consider "a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter "Y" is common to both, the whole being enclosed within a circle." His Honour said of this cross device that it:

"...merely provides a fancy method of presenting the name `Bayer', and it has no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as `Bayer'. It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which ... `would strike the eye and fix in the recollection.'"

On appeal to the Full Court of the High Court, Taylor and Owen JJ expressly agreed with the above approach of Kitto J to the Bayer cross device. No member of the Court criticised his Honour's approach.

By analogy, it seems to me that I must conclude that the particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient to take the applicant's trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.

17.  Here, however, the rectangle in the Trade Mark does not only form a border for the line within it, it is a part of the Trade Mark – indeed, the endorsement affirms that the rectangle forms a part of the Trade Mark and it thus contributes to whatever inherent distinctiveness that the Trade Mark might have.  It is not clear why other traders would want, without improper motive, to use the Trade Mark in either of objections (a) or (b) stated by the examiner.

18.  In regard to the third element of the grounds, that the Trade Mark merely indicates the correct orientation of the plug vis a vis a socket: The pictorial examples given by the examiner illustrate the fact that other traders use their trade marks on the upper side of similar plugs without detracting from whatever inherent adaption to distinguish that their trade marks might have.  It does not appear to be suggested that the Trade Mark is otherwise used in the trade by other traders only as a symbol for indicating ‘this side up’ on plugs in relation to sockets and thus be needed by other traders (without improper motive) for use on their similar goods.

19.  Thus, regarding the grounds stated by the examiner, it is not obvious why other traders would, without improper motive, need to use the Trade Mark on their similar goods.  In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494; [2002] AIPC 91-817; 56 IPR 30 (‘Kenman’) at [145] (concerning a shape trade mark) the Full Court said:

Signs that are descriptive of the character or quality of the relevant goods or which use a geographical name in connection with them cannot be inherently distinctive because the words have significations or associations that invite confusion and because registration of a trade mark using such words would preclude the use by others whose goods have similar qualities or which have a connection with the relevant areas. This concern is to any of the elements referred to in the definition of sign and involves the courts in policy considerations inherent in trade mark law. In Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 at 635 Lord Parker said,

"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."

Lord Parker's comment was quoted in Clark Equipment by Kitto J who added, at 514:

" ... 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."

Kitto J was referring to word trade marks because that was the issue before him, but there can be no doubt that his Honour's test would equally apply to shapes or other signs forming "part of the common heritage".

In my opinion it is the absence of these associations and significations that makes a sign inherently adapted to distinguish one trader's goods from those of another. In other words the concept is negative not positive.

20.  In my consideration, the objections stated by the examiner do not give rise to these associations: there is no obvious reason under these grounds why other traders would (without improper motive) require to use the Trade Mark.

21.  As Mr McLean observed in the hearing, the highest that the ground could be put is that the Trade Mark is a graphical depiction of the frontal view of the end section of the plug.  I consider that this view of the Trade Mark is correct and that this does give rise to an association of the type referred to in Kenman.  It is by no means clear, however, whether this association is such that other traders would, without improper motive, need to use the Trade Mark on their similar goods.  In other words, the inquiry leads back to the passage quoted from Blount, above:

(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 so distinguishing the designated goods or services.

22.  This in its turn indicates a consideration of the Trade Mark in terms of subsection 41(5).  Accordingly, I am now 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;

23.  The examiner’s research does not clearly indicate that the Trade Mark is used by other traders in respect of their similar goods.  There is some suggestion in the research of similar uses but these appear to be on imitations of the Holder’s goods which are made without license by unscrupulous traders and which use the Trade Mark to support or lend spurious verity to the imitations.  The fact that the Trade Mark is not used without improper motive by other traders supports the proposition that whatever the Trade Mark’s inherent adaptation might be, it is not particularly low.  I also note that the Trade Mark is figurative or nonliteral rather than representational of the cross-section of the end view of the plug.

24.  The evidence I referred to earlier is a decaration by Thomas R La Perle who is a director in the legal department of the Holder.  Mr La Perle states that the Holder:

… designs, manufactures and markets mobile communication and media devices, personal computers, and portable digital music players, and sells a variety of related software, services, peripherals, networking solutions, and third-party digital content and applications. Apple's products and services include iPhone, iPad, Mac, iPod, Apple TV, a portfolio of consumer and professional software applications, the iOS and OSX operating systems, iCloud, and a variety of accessory, service, and support offerings. Apple also sells and delivers digital content and applications through the iTunes Store, App Store, iBooks Store, and Mac App Store. Apple sells its products in Australia and worldwide through its online stores, retail stores, cellular network carriers, and third-party wholesalers, retailers, and value-added resellers. In addition, Apple sells a variety of third-party iPhone, iPad, Mac and iPod compatible products, including application software, and various accessories through its online and retail stores. Apple sells to consumers, small and mid-sized businesses, and education, enterprise and government customers, as well as small and mid-sized business, education, enterprise, government and creative markets.

25.  The plug on which the Trade Mark appears is used with several of the Holder’s goods.  The Trade Mark is used not only on the plug but also on the dock for the Holder’s iPad tablet, the iPad nano dock, its universal dock, the digital AV adaptor and so on.

26.  The level of sales of the Holder’s goods are, by any measure, remarkable and, until recently, the plug has been sold with many of the Holder’s goods.  The goods on which the Holder uses the Trade Mark are not only sold with the Holder’s goods but also as an after-market accessories not only through the Holder’s twenty-one stores in Australia but also through major retailers such as David Jones, Myer, Dick Smith Electronics and JB Hi-Fi.  These sales, as accessories, continue.

27.  The examiner nevertheless noted that “Internet research shows that the 30 pin device as shown in the evidence is being discontinued by the applicant.”  However, that observation is not germane to the question of whether the Trade Mark was, at the filing date, capable of distinguishing the goods.  Further, while the recognition rate of 32% in the survey might be regarded as low, there is no requirement that a trade mark be 100% recognised in order for the provisions of subsection 41(5) to be applied – such a high extent of recognition looks rather to reputation (or to the requirements of subsection 41(6)) rather than the capacity to become distinctive.

28.  In the circumstances of this application, subsection 41(5) requires a balancing of the extent to which the Trade Mark was, at the filing date, inherently adapted to distinguish and the extent to which the Trade Mark had then been used.  To paraphrase the words of Kitto J in Clark at page 513:

… if the mark is to any extent inherently unadapted for the purpose that fact shall be weighed in the scales against the degree of acquired distinctiveness in determining the ultimate question whether the trade mark is registrable as being "capable of distinguishing" the applicant's goods

29.  I have indicated that I do not consider the inherent adaptation to distinguish within the Trade Mark as being particularly low; it had, at the filing date, been extensively used and a good proportion of the relevant public then identified it with the Holder’s goods.

30.  In now balancing these factors, I am satisfied that the Trade Mark does so distinguish the designated goods and that therefore the Trade Mark is taken to be capable of distinguishing the Holder’s goods from the goods of other persons

31.  I will therefore apply the provisions of subsection 41(5) and accept the Trade Mark for possible protection.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

12 March 2015