Ariat International, Inc

[2015] ATMO 111

TRADE MARKS ACT 1995

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

Re:Trade  mark  application  number  1554937(25)  -  DOUBLE  PIPED  POCKETS (Device) - in the name of Ariat International, Inc.

DELEGATE:

Nicole Worth

REPRESENTATION:

Applicant: Daniel Wilson of Spruson & Ferguson

DECISION:

2015 ATMO 111

Section 33 proceedings – s 41 – trade mark not capable of distinguishing Applicant’s goods – application rejected.

Background

1. This matter is an ex parte proceeding pursuant to section 33 of the Trade Marks Act 1995

   (‘the Act’) involving an application for the registration of the following trade mark:

Trade Mark No:                   1554937

Applicant:  Ariat International, Inc. (‘the Applicant’)

Filing Date:  2 May 2013

Convention Priority Date:    5 November 2012

Trade Mark:

(‘the Trade Mark’)

Endorsement:  Color is not claimed as a feature of the mark. The mark consists

of double-piped pockets, with the pockets being shown applied

to breeches which are shown in dashed lines and form no part of the claimed design.

Goods:  Class 25: breeches

1. These are the relevant details of the application as it currently stands.

1. The application was examined and a ground for rejection was identified under s 41 of the Act on the basis that the Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s goods from those of other traders.

1. To support its application the Applicant submitted the declaration of Terry Donohue (Managing Director of Just Country Australia Pty Ltd, the exclusive Australian distributor of goods bearing the Trade Mark) made on 12 November 2014 with Exhibits TD-1 to TD-10, TD-13 and Confidential Exhibits TD-11 to TD-12 (‘the Donohue Declaration’).

1. The examiner was of the opinion that the examples of use provided in the Donohue Declaration did not demonstrate use as a trade mark. The fourth examination report stated:

   I see no use of the trade mark claimed in the application as a trade mark. In some images I can see a stitching decoration on the pockets of riding jeans however no reference is made to it as being a trade mark. It is extremely common for traders to use decorative patterns on the pockets of their pants or jeans.

1. The Applicant then filed five supporting declarations from people within the equestrian industry (‘the Third Party Declarations’). However the examiner remained of the view that s 41(4) of the Act was applicable. The sixth examination report stated:

   While the supporting declarations refer to breeches with double-piped pockets, the five declarants do not attest to the decorative feature of the breeches as actually being a known trade mark in the industry. The declarants do attest to knowing that the applicant sells breeches with double-piped pockets however this is not a declaration supporting the use of a trade mark.

1. After the sixth examination report the Applicant requested to be heard. The matter came before me, a delegate of the Registrar of Trade Marks, in Sydney on Friday 14 August 2015. Daniel Wilson of Spruson & Ferguson made written and oral submissions on behalf of the Applicant.

Endorsement

1. As a preliminary matter I mention that there is some potential ambiguity as to what the trade mark is. The Trade Mark is described on the Australian Trade Mark On-line Search System (ATMOSS) as:

Color is not claimed as a feature of the mark. The mark consists of double-piped pockets, with the pockets being shown applied to breeches which are shown in dashed lines and form no part of the claimed design.

1. The trade mark application did not contain this (or any) endorsement at the time of filing. Subsequent to the first report being issued, the Applicant requested that the above endorsement be added as a means of clarifying the representation of the trade mark.

1. The endorsement plainly states that the Trade Mark is double piped pockets applied to breeches. To put it another way, the endorsement describes the Trade Mark as being pockets that are double piped as shown in the representation.

1. However in subsequent correspondence including the written submissions for the hearing, the Trade Mark is described as being ‘double-piped lining on the front pockets of breeches’.1 This less clearly references ‘double piped pockets’ and could indicate that the Trade Mark is intended to be the piping itself, rather than pockets that have double piping on them. Although the written submissions potentially introduce some ambiguity, it is the written description in the endorsement that forms part of the representation of the Trade Mark and which is to be considered in the assessment.

1. In any event as indicated in subsequent paragraphs of this decision, I do not consider that the description in the endorsement or the reference in the submissions would render the trade mark capable of distinguishing the designated goods.

Section 41

1. Section 41 of the Act relevantly provides:

   41  Trade 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

1 Written submissions for hearing, page 6.

the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

…

(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.

1. Pursuant to s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. As explained below, I agree with the Examiner of the application that the Trade Mark is to some extent, but not sufficiently, adapted to distinguish the designated goods. Accordingly, s 41(4) is applicable in this case and I am not entitled to reject the Trade Mark unless I am satisfied that it is not capable of distinguishing the designated goods having regard to the combined effect of its inherent adaptation to distinguish, any past or intended use and any other circumstances.

Inherent adaptation to distinguish

1. As outlined in the written submissions, the inherent adaptation of a trade mark is to be tested:

[B]y 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.2

1. Whilst the above passage was in relation to a word trade mark, I agree with the Applicant that it is the correct application of the law to apply this test in relation to other types of trade marks.3

2. I note that in applying this test, consideration is given to the likelihood of other traders desiring to use the mark, or some mark nearly resembling it, in connection with their own similar goods.4

3. The Trade Mark is not so distinctive that other traders are unlikely to wish to use the same or a similar trade mark without any improper motive.

1. Piping is ‘a tubular band of material, sometimes containing a cord, for trimming garments, etc., as along edges and seams’.5 It is not uncommon for piping to be applied to the pockets of pants. Seemingly it is also not unusual for varying decorative features to be applied to the pockets of riding breeches. The Applicant has provided examples, in Annexure 2 of its written submissions, of other traders’ equestrian breeches which demonstrate this. For example, the following all apply decorative features to pockets, by virtue of stitching, flaps,

   piping or contrasting colours: Peter Williams Pull On Breeches, Ladies, Brown/Beige and Navy/Red; Black Horse Clothing: Rain soft shell unlined jodds, Roz cotton bamboo full seat jodds, Carley Piped Breeches, Pinto Contrast Stitched Jodds and Edward silicon seat jodds. Similarly the Donahue Declaration contains examples of other traders’ breeches wherein

   piping is applied to the pockets, albeit not in contrasting colours, for example New Dublin Supa Slender Heritage Full Seat Breech and Classic Jodhpur.6

1. These examples illustrate that embellishments on the pockets of riding breeches are used by other traders as decorative features. I note that the Trade Mark is described in the written

2 Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, 63 (albeit both decisions in relation to word trade marks).

3 See for example BP plc v Woolworths Ltd (2004) 62 IPR 545; [2004] FCA 1362 [16] or Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494; [2002] FCAFC 273 [46].

4 W&G Du Cros Ltd’s Appn (1913) 30 RPC 660, 672.

5 Macquarie Dictionary, online edition, © Macmillan Publishers Group Australia 2015.

6 Exhibit TD-13.

submissions as merely a decorative flourish.7   There is nothing before me to make me think that the ordinary signification is anything other than decorative.

1. I consider that the Trade Mark is not prima facie capable of distinguishing the designated goods. However, for the ground for rejection under s 41(4) to apply, I must also be satisfied that the Trade Mark does not and will not distinguish the designated goods as being those of the Applicant having regard to the factors set out in s 41(4)(b) of the Act. Accordingly, I will now consider the Applicant’s evidence of use, intended use and any other circumstances that may be relevant.

Evidence of use and other circumstances

1. In the course of examination the Applicant provided evidence of use to support the application. The Donohue Declaration states that the Trade Mark has been used by JCA (an authorised user) in Australia since 2009. The estimated annual advertising expenditure of the Applicant is provided8 and it is significant. However it apparently does not relate to the Trade Mark alone nor the line of breeches to which it is applied, but rather to the Applicant as a whole (which is primarily promoted by way of the name ARIAT and/or a device of three interlocking horse shoes). Sales revenue for the years 2009 to 2013 is also provided9 and particularly up to 2012, I would characterise it as modest even accounting for the specialised nature of the goods.

1. The Applicant has also provided Third Party Declarations from individuals within the equestrian industry. The declarants attest to being aware that the Applicant sells breeches with double-piped pockets and that if they were to see a pair of breeches with double-piped pockets they would assume that those breeches were the Applicant’s goods.

1. The fact that the declarants associate the pocket detailing with the Applicant does not on its own demonstrate the capacity to distinguish one trader’s goods from those of another. It is necessary to establish that the association is because of the use of the piping upon pockets as a trade mark. In this regard I note the following quotation from Woolworths Limited v BP Plc (No. 2), which is referred to in the Applicant’s written submissions:

   It is necessary for BP to establish that the association is referrable to the use of the mark as a trade mark…to establish distinctiveness through use the proprietor must

7 Written submissions for hearing, page 6.

8 Donohue Declaration Confidential Exhibit TD-11.

9 Donohue Declaration Confidential Exhibit TD-12.

7

have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source.10

1. The matter is ultimately whether the evidence before me demonstrates that the Trade Mark is acting, in its own right, as a badge of origin for the Applicant when applied to its breeches.

1. Use of a particular sign by a trader will not necessarily constitute use as a trade mark. Trade mark use is:

   [U]se of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.11

2. Exhibit TD-6 of the Donohue Declaration contains examples of how the Applicant uses the Trade Mark. Page 7 of the Ariat Spring Catalogue 2013 within exhibit TD-6 is indicative: this page contains the image of a woman wearing breeches with the double piped pockets and is captioned: ‘Olympia Fashion Contrast Full Seat Breech’. There are two more images of breeches that have the double piped pockets. These images are accompanied by the following information:

3. There is nothing in the examples in Exhibit TD-6 to suggest that the double piped pockets have been promoted as something apart from the goods. The examples do not show a deliberate intent to educate the public as to the trade mark significance of the double piped pockets. As such, I am not convinced that upon seeing this promotional material that the double piped pockets would be perceived by the purchasing public as a trade mark. The Trade Mark is, in my consideration, likely to be taken as merely being decoration on the breeches.

1. The Applicant has also provided screenshots from promotional videos which were published on 27 June 2014.12 These screenshots show images of the Trade Mark and the phrase ‘slim-

10 Woolworths Limited v BP Plc (No. 2) [2006] FCAFC 132; (2006) 70 IPR 25 [117].
11 Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 47 IPR 481 [19].

fitting with unique double pocket detailing’. Whilst this phrase makes particular reference to the double pocket detailing, I am not convinced that it does so in such a way that the public would be educated as to the trade mark significance of the pocket detailing. The phrase describes key characteristics of the goods, i.e. the breeches are slim-fitting with double pocket detailing. It is highly likely that the public would view the phrase as a description of the goods rather than as a badge of origin. I note also that such promotion appears to have commenced only relatively recently.

1. The evidence before me does not sufficiently demonstrate that the Trade Mark has been used as a trade mark or that the purchasing public would recognise it as one. Therefore, having regard to the combined effects of the matters specified under s 41(4)(b) of the Act, I am not satisfied that the trade mark does or will distinguish the designated goods.

Decision

1. Section 33 of the Act provides:

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 under this Act for rejecting it.

Note:        For this Act see section 6.

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

Note:        For limitations see section 6.

(3)   If the Registrar is satisfied that:

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

(b)  there are grounds under this Act for rejecting it; the Registrar must reject the application.

Note:        For this Act see section 6.

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

Note:        For applicant see section 6.

1. I have found that the Trade Mark is not capable of distinguishing the designated goods. As such, I am satisfied on the balance of probabilities13 that there is a ground for rejecting the Trade Mark under s 41 of the Act.

12 Donohue Declaration Exhibit TD-10.
13 Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 [56].

1. In accordance with s 33(3) of the Act, I reject trade mark application number 1554937. However, if the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Nicole Worth Hearing Officer

Trade Marks Hearings 18 November 2015