Aramis Inc

[2001] ATMO 57

TRADE MARKS ACT 1995

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

Re:Trade mark application number 784245 in the name of Aramis Inc. for the trade mark STOP SHINE in Class 3.

Background
The present application, for the registration of the words STOP SHINE and covering the statement of goods, 'Cosmetics including skin care preparations' in Class 3, was made on 29 January 1999. It is a divisional application, made under s.48 of the Trade Marks Act 1995 (the Act), and claiming some of the goods specified in the initial application number 720420 (the initial application). The initial application was for the same trade mark and included, in its specification, 'Soaps; perfumery, hair lotions and non-medicated hair preparations, cosmetics including skin care preparations, toiletries and essential oils' in class 3. Application number 720420 was a pending application at the time that the present application was filed. The present application therefore fulfils the requirements of s.48 and its filing date becomes that of the initial application, 25 October 1996, as per s.50.

The application was examined by a Principal Examiner of Trade Marks. In her first report, she raised an objection under s.41 of the Act, on the grounds that the trade mark was not capable of distinguishing the applicant's goods. This was because, she alleged, it had little, if any, inherent adaptation to distinguish. She said that the mark comprised words which were used to indicate that the cosmetics in the specification were made to an oil control formula and were intended to minimise or eliminate the shine produced on the face by oily skin. She said further that other traders were likely to need to use the words to indicate this feature of their similar goods.

The applicant's attorney, Mr Brett Doyle of Baker & McKenzie, responded with extensive argument to the contrary, saying that the relevant question to determine registrability was whether the words in the trade mark were the normal way to refer to the goods, or to some characteristic of them.  This, he said, was not the case here, as the combination of words was an unlikely grammatical construction and because it was not apt for normal description, the mark could distinguish the goods.

Because the mark had already been the subject of extensive correspondence between an examiner and the attorney during the prosecution of the initial application, the case was set down for a hearing by a delegate of the Registrar to decide the matter.  The matter duly came before Senior Examiner Michelle Edlington on 17 January 2001.  Mr Doyle put forward his client's case by telephone to Ms Edlington at the hearing.

On 14 February 2001, Ms Edlington wrote to Mr Doyle advising him that she had considered his submissions. She said that although she was of the opinion that the trade mark did not qualify for acceptance under s.41(3), she was willing to accept it for registration under the provisions of s.41(5) of the Act, subject to the applicant agreeing to an amendment of the statement of goods to read: 'Cosmetics, including skin care preparations, for men'. Mr Doyle replied on 28 February 2001, seeking reasons as to why the delegate was only prepared to accept the mark under s.41(5) for such a restricted range of goods. Ms Edlington wrote a response to that letter, giving detailed reasons as to her decision. She allowed 14 days from the date of her letter for a reply from Mr Doyle as to the applicant's intentions regarding acceptance under the conditions outlined, otherwise a decision would issue. She also allowed a free extension of time for acceptance until 28 April 2001. Ms Edlington's letter was dated 14 February 2001 - quite obviously in error, given it was dated before the letter to which it was responding. It would appear, from all of the indicators, that the letter was written in early to mid-March 2001.

At around this time, Ms Edlington experienced a death in her immediate family and went on extended leave.  Lyn McLachlan of Baker & McKenzie rang the Trade Marks Office in late April, asking to speak to Ms Edlington and I answered her call.  Given that it was unclear at that time when Ms Edlington would be returning to work, I allowed another free extension of time until 28 June 2001 to allow further time for the matter to be resolved.  However, Ms Edlington has now applied for and been granted further leave, and it is unclear when she will return to duty.  For that reason, the Deputy Registrar Hearings, Ms Helen Hardie, asked me to review the case as a delegate of the Registrar.

In the circumstances, especially because of the confusion as to dates, I extended the deadline, imposed by Ms Edlington for a response by the applicant to the conditions she outlined in her most recent letter, until 28 May 2001.  At that time, there was no reply from Baker & McKenzie on the official file.  Subsequently, Mr Doyle sent a letter to me, dated 17 May 2001, which attached a copy of an e-mail that had been sent to Ms Edlington on 3 April 2001.  She almost certainly never received that correspondence, which was addressed to her personally and post-dated her bereavement.  In any case, it was never been placed on the Official file on the matter.

Accordingly, as the delegate now charged with the carriage of the matter, I have listened to the audio tape of the hearing, read the submissions from Mr Doyle - including the contents of his e-mail of 3 April 2001 - and reviewed the reasons originally given for rejection of s41(3) acceptance by Ms Edlington. The following is my resultant decision and the reasons for it.

Submissions and discussion

Section 41 of the Trade Marks Act 1995, so far as it is relevant to this opposition, reads:

41. Trade mark not distinguishing applicant's goods or services

(1)...

(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.

(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.

Justice Branson considered this section of the legislation in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498. Her Honour observed, at 504, 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 or she 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.

Her Honour continued, that:

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 s33(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.

Section 33 states:

33 Application accepted or rejected

(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 for rejecting it.

(2) The Registrar may accept the application subject to conditions or limitations.

(3) If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

The structure of both ss.41 and 33 presumes registrability and the finding of French and Tamberlin JJ in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, confirms that a presumption of registrability underlies the policy of the new law. However, as I have said, the operation of the subsections of s.41 itself were comprehensively defined by Branson J in Blount v The Registrar, supra, and her Honour makes it perfectly plain, that once a ground for rejection is disclosed, section 41 is internally resolved and depends on the decision maker being satisfied that conditions of that section have been met.

The examiner's objection here was that the trade mark has little, if any, adaptation to distinguish because it indicates a function of the goods and thus might be required for use for use by others in the trade.  Mr Doyle has agreed that the mark's adaptation to distinguish would largely depend upon whether other traders were likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark closely resembling it and pointed to Lord Parker’s words in Du Cros (W&G) Ltd’s Appn (1913) 30 RPC 660 at 672. However, he said that, while there was some meaning in the words STOP SHINE in relation to the goods, this was not a bar to their registration as a trade mark, as it was not a term that was apt for description of the goods in the specification. He quoted the acceptance under s.41(3) of the words STOP AGE, also in Class 3, as an example of a trade mark, having some reference to the goods, which was seen to have had sufficient inherent adaptation to distinguish to qualify it for registration.  He further referred to a Trade Marks Office decision in the case of Effem Foods Pty Ltd v Unilever PLC - issued on 12 December 2000 and as yet unreported, where the Registrar's delegate concluded that the words SIZZLE & STIR, when used in relation to goods in Classes 29 and 30, did not appear to be a normal cooking term, despite having some allusion, and thus was not a phrase which other traders were likely to want to use.  He also cited the PRIVATE PLEASURES (Estee Lauder Cosmetics Limited v Warnaco U.S. Inc. - issued on 12 December 2000 and as yet unreported) and YIELD (2 IPR 353) decisions, in relation to imagined examples of descriptive use.

As per Branson J in the Blount case, supra, the tests under s.41 are simple ones. If a trade mark has, in the eyes of the decision maker, sufficient, prima facie, inherent adaptation to distinguish, then it is capable of distinguishing and thus registrable under s.41(3). The assessment of whether this is so is a subjective one. Mr Doyle obviously thinks the subject mark immediately qualifies for all of the goods sought to be covered.

However, as the delegate here, I have decided that it does not.  I believe, as did Ms Edlington, that the words STOP SHINE, when applied to the goods presently included in the specification, are ones that other traders might wish to use legitimately, in the ordinary course of their business.  Mr Doyle's claim that the phrase is grammatically incorrect fails at the first hurdle if one considers that a seller of cosmetics might wish to quite aptly say that his or her goods 'stop shine' on the wearer's face - the word 'shine' being one which I believe is widely used as a term of art in the trade.  In this way, I think that the present instance can be distinguished from such cases as STOP AGE (an impossible and thus fanciful claim in relation to cosmetics), SIZZLE & STIR (an uncommon union of ordinary words in relation to cooking), PRIVATE PLEASURES (a little-used allusion to the effect of perfumery) and YIELD (a term which does not "usefully or meaningfully" describe pesticides).

Ms Edlington's offer to accept the trade mark under the provisions of s.41(5) for a restricted range of goods, followed her assessment that although the words STOP SHINE have very little inherent adaptation to distinguish in relation to the wide statement of goods sought, if it was considered in relation to men's cosmetics, then other traders might not require to use the term - for the sake of its ordinary significance - to the same extent, apropos women's cosmetics.  I believe that this conclusion was predicated on her assumption that women would be more aware of the field of cosmetics than would be men.  However, despite agreeing with her to the extent that women have historically been the major users of these goods, I do not believe that men can be eliminated from the equation in the 21^st Century.  I am of the opinion that the term STOP SHINE would be equally required for use in the field of men's cosmetics.  It is not uncommon, in my experience, to see articles in men's magazines and other print media discussing cosmetics for 'today's man', and also to see references to the topic in television programmes.  I believe that contemporary Australian males, particularly those under 30 years of age, take more time with their appearance and grooming than did their forebears.  All of this indicates to me that those in the market for all of the goods in the specification possess a wide knowledge of and use various cosmetics, either in general, or those specifically designed for the male market - including those specifically designed to 'stop shine'.

For this reason, I find that the trade mark is not, to any great extent, inherently adapted to distinguish the designated goods or services from the goods or services of other persons.  However, there are other phrases which could also be used to describe the goods and, accordingly, I have decided that the words are, to some small extent, inherently adapted to distinguish the applicant's goods.  As per Justice Branson's test in the Oregon case, supra, at 504, if there is uncertainty, on the basis of the small degree of inherent adaptation to distinguish that I have found in the trade mark, then I should assess the combined effect of sub-paragraphs (i), (ii) and (iii) of paragraph 41(5)(a) of the Act in order to determine the trade mark's registrability for particular goods.  These considerations are, firstly, the extent that the mark is inherently adapted to distinguish; secondly, the use, or intended use, of the trade mark by the applicant; and, finally, any other circumstances.  On the first point, I have already said that I believe that the trade mark has a very small degree of inherent adaptation to distinguish.  However, for me to gauge the extent of the use, or intended use, of the mark, I must turn to any evidence to this effect submitted by the applicant.  Unfortunately, there is no evidence which has so far been filed which might assist me in this regard.  I am aware, through my own knowledge and research, that the applicant has certainly used the words STOP SHINE as a trade mark for men's cosmetics - although the scope of this use is not clear.

I will note here that, despite Mr Doyle's statements to the contrary, the applicant has no say under which part of s.41 a trade mark is accepted. It is either accepted for certain goods or services, or it is not. Endorsements relating to a mark's acceptance under subsections 41(5) or (6) are not voluntary disclaimers but endorsements entered by the Registrar to indicate the basis of the acceptance. Such endorsements are consistent with subparagraph 88(2)(d)(i) and paragraph 69(2)(c) of the Act, and paragraph 7.2(i) of the Regulations.

Conclusion
I have found that the trade mark STOP SHINE is to some extent inherently adapted to distinguish the designated goods but I am unable to decide, on that basis alone, that it is capable of distinguishing. Accordingly, because of the protracted and confused passage of the present matter, I am prepared, in the circumstances, to allow the applicant a further 21 days to provide evidence of the extent of the use of the mark applied for, or to point to any other circumstances which might assist its case. If this evidence or circumstances are sufficient to fulfil the requirements s.41(5), I will be then able to accept it under that subsection in respect of the goods for which sufficient use or circumstances are shown.

If the applicant does not agree to the preceding offer by the date allowed, I will refuse to register the trade mark, the subject of this application.

Ian Forno
Hearing Officer

9 July 2001