AT & T Corporation
[2001] ATMO 96
•17 October 2001
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 771849 (1,2,7,9,10,11,12,14,16,28,35,36,37,38,39, 40,41,42) - at&t- in the name of AT&T CORPORATION.
Background
AT&T Corporation ("AT&T"), a New York company, applied on 1 September 1998 to register the trade mark at&t, under the Trade Marks Act 1995 ("the Act"), as a defensive trade mark. It applied for the protection of a defensive registration in respect of the following goods and services:
Class: 1 Chemical products used in industry, science, photography, agriculture, horticulture, forestry; artificial and synthetic resins; plastics in the form of powders, liquids or pastes, for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving stuffs; tanning substances; adhesive substances used in industry
Class 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; coloring matters, dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators
Class 7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators
Class 9 Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counterfreed apparatus; talking machines; cash registers; calculating machines; fire extinguishing apparatus
Class 10 Surgical, medical, dental, and veterinary instruments and apparatus (including artificial limbs, eyes and teeth)
Class 11 Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes
Class 12 Vehicles; apparatus for locomotion by land, air or water
Class 14 Precious metals and their alloys; goods in precious metals or coated therewith (except cutlery, forks and spoons); jewellery, precious stones; horological and other chronometric instruments
Class 16 Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; bookbinding material; photographs; stationery, adhesive materials (stationery); artists' materials; paint brushes; typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; printers' type and cliches (stereotype)
Class 28 Games and playthings; gymnastics and sporting articles (except clothing); ornaments and decorations for Christmas trees
Class 35 Advertising and business services
Class 36 Insurance and financial services
Class 37 Construction and repair services
Class 38 Communication services
Class 39 Transportation and storage services
Class 40 Material treatment services
Class 41 Education and entertainment services
Class 42 Leasing access time to a computer database; computer programming; updating of computer software; computer software design; intellectual property consultancy; professional consultancy, non-business; consultancy in the field of computer hardware; copyright management; construction drafting; engineering drawing; engineering; licencing of intellectual property; patent exploitation; lithographic printing; offset printing; printing; computer rental; rental of computer software; research and development for others; technical research
The application was allocated number 771849, and in due course was examined as provided in the Act and Regulations. The first report issued on 23 November 1998. The examiner pointed out that the requisite evidence, in terms of reg 17.1, had not been filed, so the application could not be properly assessed. Besides that omission, she wrote, the application was not in accordance with the Act because the registration on which it was based had not been nominated. There were two other matters raised in the report. One was an objection in terms of s 44, that there were two conflicting trade marks on the register. These were 591505 and 627070, for the trade mark pictured below, in respect of goods in classes 7 and 8.
The other was that the services nominated in class 41 were unacceptably broad. At a later stage, the registered trade marks were reconsidered and the citations were withdrawn. The requirement to restrict the services was also later withdrawn.
The applicant nominated four registrations, thus complying with the requirements of the Act, and filed evidence. However, the evidence it filed was not considered by the examiner to justify the grant of the registration it sought. He pointed out that the scope of the application was extremely broad, extending far beyond the specialised telecommunications goods and services in relation to which its mark had been used. At the fourth report, a Principal Examiner advised the applicant to seek a hearing in the matter.
Through its attorneys, Spruson & Ferguson, of Sydney, AT&T then sought a hearing. As delegate of the Registrar, I heard the matter in Sydney on 15 March 2001. Mr Michael Kirov, of Spruson & Ferguson, represented the applicant.
Evidence
The evidence consists of two declarations, which are tabulated below:
| Declarant details | Date made | Exhibit details |
| Frank L Politano General Attorney, AT& T | 17 May 2000 | FLP1 - AT & T product catalogue FLP2 - AT & T Foundation activity description |
| Michael James Kirov, Legal Practitioner, Spruson & Ferguson | 15 March 2000 | MJK1 - a brief history of AT&T MJK2 - brief details of registrations on which application is based |
The declarations and exhibits indicate that AT&T is a global voice and data communications company. In May 2000, it was serving more than 90 million customers in over 250 countries and territories worldwide. These customers included governments, as well as businesses and individual consumers. Its annual revenues were in excess of $US51 billion and it had some 128,000 employees.
AT&T has traded in Australia for over 100 years. At the time of filing, it had two wholly owned subsidiaries in Australia. AT&T Easylink Services Australia Ltd, which has traded under the AT&T name and mark since 1992, provides a wide range of communications services. AT&T Communications Services Australia Pty Ltd commenced trading in 1996. It provides electronic transmission of voice, data, facsimile, video and information under the trade mark.
Through AT&T Foundation, the company also invests worldwide in education, environmental, civic and community services, arts and culture. Its mark appears to be used in association with the indicia of the organisations it sponsors. In Australia, its beneficiaries include the Fred Hollows Foundation and the Royal Melbourne Institute of Technology.
AT&T was formerly known as the American Telephone and Telegraph Company. It has been in existence for 116 years. It was originally incorporated in 1885 in New York as a subsidiary of the American Bell Telephone Company, founded by the inventor of the telephone, Alexander Graham Bell. Its business was long-distance calls. In 1899, there was a corporate reorganisation whereby it became the parent company of Bell.
Both by direct export and through another subsidiary, the Western Electric Company, and its affiliated and allied companies around the world, AT&T was involved in manufacturing equipment to meet the needs of the world's nascent telephone companies. By 1914, a branch of the Western Electric Company was located in Sydney.
AT&T, through its subsidiary Bell, came to concentrate on the Bell System in the USA, operating it as a regulated domestic enterprise. It provided the bulk of telecommunications there until 1984. However, because its goals included providing a global telephone service for its American customers, it retained a significant international presence even after it sold its manufacturing subsidiary, the then International Western Electric Company, to the newly-formed International Telephone and Telegraph Company (ITT) in 1925, for $US33 million.
The business eventually grew so big that AT&T faced prosecution under American laws against monopolies. An anti-trust suit filed in the US in 1949 led, in 1956, to restriction of its activities. A second, begun in 1974 and finally settled in January 1982, led to divestiture but also to the lifting of the 1956 decree. Divestiture took place on 1 January 1984 and drastically reduced the size and scope of the company.
From 1984 until 1996, AT&T was an integrated provider of communications services and products, network equipment and computer systems. Again, its success led to a split-up, announced in 1995. Its current incarnation provides communication services only. Lucent Technologies inherited the communications products side of the business, and NCR Corp the computer business.
In summary, I could say that the evidence shows that the trade mark has been extensively used world-wide by a long-lived corporate giant, whose field of interest may have shrunk over the years to a narrower focus, sometimes through forcible and intensely publicised legal restraint, but whose trade mark and activities have persistently remained in the public view.
Submissions
Mr Kirov made comprehensive submissions in support of the application. Rather than detailing them here, I will refer to them in the context of my Reasons, below.
Reasons
The Law
I think it may be useful to begin with a brief outline of the evolution of the provisions for defensive registration, their application by the Registrar, and the effect of the Registrar's practice.
In cases such as Eastman Photographic Material Co Ltd v Griffiths Cycles Corp Ltd 15 RPC 105 (Ch.D.), in the UK in 1898, and Southern Cross Refrigerating Co v. Toowoomba Foundry Pty Ltd 91 CLR 592, in Australia in 1954, the courts upheld the right of the owner of a well-known trade mark to prevent registration of that trade mark, by others, on goods unrelated to the goods sold under the well-known trade mark. As often has happened, the principles enunciated in the case law were codified into statutory provisions.
Defensive registrations came into Australian trade marks law with the Trade Marks Act (C'wealth) 1955. The Dean Committee had recommended (Report of the Committee Appointed by the Attorney General of the Commonwealth to Consider what Alterations are Desirable in the Trade Marks Law of the Commonwealth, 1954, para 136) their inclusion in the legislation in order to afford broader protection to the owners of extensively-used trade marks, and as a means of avoiding the deception or confusion of the purchasing public. The wording of the Act was deliberately designed to make it easier to obtain such registration in Australia than was the case under the equivalent provisions under the Trade Marks Act (UK) 1938.
No case concerning registrability in Part D came before the Australian courts during the term of the 1955 Act.
In practice, the interpretation placed on the provisions by the Registrar under the 1955 Act relied heavily on guidelines laid down in British decisions, despite the differences in the wording of the provisions. No doubt for this reason, not many defensive trade mark applications achieved registration under that Act. Those that were registered were, in the main, confined in scope to goods and services related to those on which the trade mark had been used in the course of trade. However, having achieved registration, the existence on the Register of those defensive trade marks subsequently blocked the registration of deceptively similar or substantially identical trade marks for which other traders sought protection in respect of similar goods or services. By their presence on a publicly available document, the registrations also served to alert other traders that, if they proposed to use a similar trade mark, it might confuse or deceive, although used on different goods from those on which the registered owner used its own trade mark.
I turn now to the provisions of the present Act.
Applications for the registration of defensive trade marks fall within the scope of Part 17. This Part contains six provisions which I set out here so far as they affect this decision.
184 Object of Part
This Part
(a) provides for the registration of certain trade marks as defensive trade marks; and
(b) provides to what extent, and subject to what modifications or additions, the provisions of this Act relating to trade marks apply to defensive trade marks.
185 Defensive trade marks
(1) If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it will be likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods and services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods or services.
(2) A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if the registered owner does not use or intend to use the trade mark in relation to those goods or services.
(3) A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if it is registered otherwise than as a defensive trade mark in the name of the applicant in respect of those goods or services.
......
186 Application of Act
Subject to this Part, the provisions of this Act (other than subsection 20(1), paragraph 27(1)(b), sections 41 and 59, paragraph 88(2)(d), sections 121 and 127, Part 9 - Removal of trade mark from Register for non-use and Part 16 - Certification Trade Marks) apply to defensive trade marks and so apply as if reference to a trade mark included a reference to a defensive trade mark.
187 Additional grounds for rejecting application for registration ...
In addition to any other ground on which:
(a) an application for registration of a trade mark as a defensive trade mark may be rejected; ....
the application must be rejected ...:
(c) if the trade mark is not registered as a trade mark in the name of the applicant; or
(d) in the case of a registered trade mark - if it is not likely that the use of the trade mark in relation to the goods or services in respect of which its registration as a defensive trade mark is sought will be taken to indicate that there is a connection between those goods or services and the registered owner.
188 Amendment or cancellation of registration by order of court
Section 88 applies in relation to a defensive trade mark as if "or under section 187" were added at the end of paragraph (2)(a).
Note:
Paragraph 88(2)(a) provides that an application to a prescribed court for the rectification of the Register may be made on "any of the grounds on which the registration of the trade mark could have been opposed under Division 2 of Part 5". Section 187 provides additional grounds on which the registration of a trade mark as a defensive trade mark may be opposed.
189 Cancellation of registration by Registrar
The Registrar may cancel the registration of a trade mark as a defensive trade mark if the trade mark is not otherwise registered in the name of the registered owner of the defensive trade mark.
Succinctly put, s 184 simply serves to introduce the ensuing provisions and does not otherwise state the purpose of registrations of this kind; s 185 sets out the circumstances in which a trade mark owner is entitled to a defensive registration under the Act; s 186 specifies the other provisions of the Act that apply to defensive registrations, including the grounds for rejection of a defensive application; s 187 provides, at (c) and (d), for two additional grounds for rejection that are peculiar to defensive applications; and ss. 188 and 189 allow for the cancellation and amendment of such registrations.
There are two important differences between the present Act and its predecessor so far as defensive applications are concerned. Firstly, the application may be made on the basis of any registration, other than a certification trade mark (excluded by s 186). Secondly, there has been a change in onus.
Under the 1955 Act, a defensive registration could only be obtained on the basis of an existing registration in Part A. That Act created a four-part register. Part A was restricted to those categories of trade marks listed in s 24(1), and to those trade marks which were shown to be distinctive by evidence in accordance with s 24(2). Trade marks registered in Part B, which had only to be "capable of becoming distinctive" in terms of s 25 of the 1955 Act, could not be the basis for a defensive registration. The meaning of "distinctive" was defined by s 26(1) as "adapted to distinguish" the goods or services of a trader from those of others. The effect of this definition, as interpreted through the courts, was that a trade mark had to be to some extent inherently adapted to distinguish for it to achieve registration in either Part A or Part B.
Under the 1995 Act, the Register is no longer divided into parts and a trade mark may, in theory, be registered even if it is not at all inherently adapted to distinguish. The trade mark or marks eligible to be nominated, in terms of s 187(c), as the basis for a defensive application, may have achieved registration in Part B only under the 1955 Act, or have achieved registration more recently as merely "capable of distinguishing" under the provisions of s 41(3), (5) or (6).
Nevertheless, it remains the case that the inherent nature of a trade mark will affect an applicant's ability to demonstrate that there is a likelihood of association between goods claimed in defensive application and itself. Clearly, the more ordinary and commonplace a trade mark is, the less likelihood there is that any association built up in the marketplace will extend very far beyond the goods or services on which the trade mark has actually been used.
The onus in the 1955 Act was always on an applicant for registration to justify the grant of the registration. Although an applicant must still show that, because of the extensive use of its registered trade mark or marks, it is entitled to registration as a defensive mark, the operation of the onus is now reversed. Section 33 of the present Act provides as follows:
Application accepted or rejected
33.(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.
Note: For the grounds on which an application may be rejected see Division 2.
(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 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.
Note: For applicant see section 6.
The effect of this section on the Registrar's practice has recently been judicially considered. In Registrar of Trade Marks v Woolworths 45 IPR 411 at 413, his Honour Justice French observed:
The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.
In the ensuing paragraph, his Honour also referred to "..the preliminary screening nature of the acceptance process and the presumption of registrability.."
Although Woolworths concerned the application of s 44, the principle is a general one. While there may be exceptions to its operation, as Branson J showed to be the case in respect of s 41 (see Blount Inc v Registrar of Trade Marks 40 IPR 498), there does not appear to be any reason why s 33 should not apply with full force to an application for defensive registration.
Therefore, if the Registrar is satisfied that there is no ground for rejection under the provisions allowed for under s 186, nor under the special provisions of s 187, s 185 is shown to apply. The application must consequently be accepted.
Turning now to the meaning of the term "satisfied", which is key to the application of s 33, it was considered in Blount, at 504:
Each of ss 33(1) and 41 involves the concept of the registrar being "satisfied". Where the Act requires the registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities: Rejfek v McIlroy (1965) 112 CLR 517 at 521. That is, that the registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matters are more probable than not.
One of the factors to be considered in an application for defensive registration is the evidence that an applicant provides. Her Honour, in the same decision at 509, observed
In each case the evidence relied on by the applicant is to be evaluated in the light of any evidence tending to the contrary effect and having regard to the evidence which the applicant might reasonably be expected to be able to obtain in all the circumstances of the case. [Emphasis added.]
As discussed earlier, the nature of the trade mark is one of the circumstances of the application. Also relevant will be whether there exists on the Register any conflicting application or registration. If the nature of the trade mark is such that it is altogether unlikely that honest traders will wish to use the same or a similar sign in relation to their own goods or services, and if a search of the Register has revealed no substantially identical nor deceptively similar trade marks, a lesser quantum of evidence would suffice than where the circumstances are otherwise.
Discussion
The present application for defensive registration of at&t is based on the following registrations of the identical trade mark:
| Registration details | Specification of Goods/Services |
| 587914 Priority date 07/10/1992 Endorsement: The provisions of sub-section 26(2) applied. | Electronic apparatus relating to computers; telecommunications equipment; radio apparatus; computers; electronic data processing apparatus; computer programs; magnetic discs, tapes and cards; encoded discs, tapes and cards; electrical, electromagnetic, electronic magnetic, optical and opto-electronic apparatus and instruments; optical fibres; printed circuits; semi-conductor devices; electric cables; facsimile encryption devices; parts and fittings for all the aforesaid goods; all included in class 9 |
| 587915 Priority date 07/10/1992 Class 38 Endorsement: The provisions of sub-section 26(2) applied. | Telecommunications services; transmission broadcast and diffusion of radio and television programmes; all included in this class |
| 623793 Priority date 01/03/1994 Class 35 Class 37 Class 42 | Inks, ink pads and ribbons for use in business and computer equipment; paper sheets, paper rolls, printed forms, and record forms having magnetic storage means thereon; coated paper and printed forms on coated paper; printed materials relating to computers, computer peripheral equipment, automated teller machines and data processing equipment; printed material in the form of statements or instructions to be used directly in a computer or in data processing equipment in order to bring about a certain result; instructional and teaching material relating to computers, computer peripheral equipment, automated teller machines and data processing equipment Business information management services, namely, the conversion of printed material into microforms, microfiche, and ultrafiche film and the publications of material in microforms, microfiche and ultrafiche film Services of installation, maintenance and repair of computer hardware and software Computer hardware, software and systems support services, namely, computer consulting, installation, programming, maintenance and repair |
| 643210 Priority date 14/10/1994 | Electronic apparatus and instruments relating to computers and telecommunications equipment; telecommunications installations and apparatus; radio apparatus; telephone pagers; computers; electronic data processing apparatus, computer programs; magnetic disks, tapes and cards; encoded disks, tapes and cards; electronic magnetic, optical and opto-electronic apparatus and instruments, optical fibres; printed circuits, all being goods related to computers or telecommunications apparatus and equipment; semi-conductor devices; electric cables; automated teller machines; self service terminals; change dispensing machines; security and alarm apparatus; parts and fittings in this class for all the aforesaid goods |
Being based on these four registered trade marks, the application meets the threshold test required by s 187(c).
There is no barrier to the application in terms of s 186. The two trade marks identified by the examiner as being most similar to at&t, initially cited against this application, were withdrawn in the course of examination. I see no reason to reinstate them as obstacles to registration, and I see no other ground for rejection in terms of s 186.
My task now, as I understand it, is to decide pursuant to s 187(d) whether, if the trade mark at&t is used by any trader other than the registered owner, AT&T Corporation, in relation to any of the goods or services nominated in the application, there is a "likelihood" that this use will be taken as indicating a "connection" between the goods and AT&T. If I find there is not such a likelihood, I must reject the application. If there is such a likelihood, s 185 applies.
"Likelihood" is, I think, to be understood in the sense of probability rather than of possibility (cf Woolworths). In assessing the likelihood that use of the trade mark will be taken to indicate a connection with the applicant, I think I must look first at the registrations on which the application is based. However, I am inclined to accept Mr Kirov's submission that I may also take into account the degree of notoriety or familiarity which the trade mark has over and above the relatively narrow extent and short duration of the nominated registrations. This approach is in line with that adopted in relation to the operation of s 44 by French J in Woolworths, supra, at 431. Such an approach is, I think, also indicated by Branson, J in the passage I have already quoted from Blount, supra. The degree of notoriety or familiarity that the trade mark has acquired through long and/or extensive use is one of the circumstances of the case. I believe I am reasonably entitled to take account of this in my assessment of the application.
The term "connection" in s 185 is not modified in any way. I think it is to be understood in the broad sense ascribed to it by the Macquarie Dictionary Version 2.0.2, Macquarie Multimedia, of "association, relationship". I agree with Mr Kirov's submission that it does not only mean "connection in the course of trade", though it would include that meaning.
I note that the authoritative textbook by Mr D.R. Shanahan, in the entry commenting on the similar provisions of the 1955 Act, laments the narrow interpretation of them by the Registrar, observing D.R. Shanahan, Australian Law of Trade Marks and Passing Off, The Law Book Company, Sydney, 1990, page 23:
Section 93 of the Australian Act requires only that the unauthorised use be such as to indicate a "connection" with the registered proprietor and it is thus arguable that the indication of some lesser form of connection [than "connection in the course of trade"] should suffice. Defensive registration might be granted, for instance, when all that would be indicated by unauthorised use would be the existence of some form of authorisation from, or association with, the registered proprietor, and approached in this way, the potential reach of the defensive provisions of the Act is very wide indeed. Certainly it should not be essential under the Australian Act that the Part A and defensive products be "analogous" or "related" as seems to be the case in the United Kingdom.
It appears to me that this passage, although written in terms of the previous Act, expresses neatly the approach to "connection" that the Registrar should take under the 1995 Act. If I am correct in this approach, then the likelihood of a connection with the registered owner may be found to exist in a variety of circumstances. Without suggesting that the following examples are either prescriptive or exhaustive, a likelihood of connection could be found
where the use of the trade mark in connection with the goods or services might be authorised use, or
where the registered owner might be sponsoring those goods or services, or
where the registered owner might be endorsing the goods or services, or
where the registered owner might have entered into a strategic alliance with another company, body or entity in order to produce the goods or to offer the services in question.
It is with these considerations in mind that I approach the present application.
The scope of the application as filed is very broad. It extends to most goods and services in each of the classes nominated. Clearly, if granted, the defensive registration would allow the registered owner statutory rights far beyond the scope of its nominated registrations, which specify only goods and services in, or connected with, the field of computers and telecommunications.
Against that, there are the three particular circumstances of the application. Firstly, as I have indicated above, it may be too narrow an interpretation of the provision to look only at the four registrations on which it is based. The evidence of use provided and the submissions at the hearing suggest, I think, that the trade mark at&t is well known. While the applicant has provided neither supporting declarations nor survey evidence, I note that AT&T does merit an individual entry in the Encyclopaedia Britannica. I accept the attorney's submission that the lack of evidence of some of the kinds specified in Part 34 the Trade Marks Office Draft Manual of Practice and Procedure, does not, in the particular and rather unusual circumstances of this trade mark, thereby compromise the applicant's case.
Secondly, there is the nature of the trade mark at&t. I note that it is an acronym, comprising two letters conjoined to a third by an ampersand. While acronyms are not uncommon on the Register, I am satisfied that this particular combination is not a sign ordinarily used to indicate anything about any of the goods or services nominated, and that it is a sign which is capable of distinguishing any of those goods or services. I further note that the applicant's registered trade marks were found to be distinctive under the higher test required for registration in Part A under the previous Act. I therefore consider that the nature of the trade mark tends to militate in its favour.
Thirdly, it does not appear that any other registered owner would be adversely affected by registration of the application. This circumstance also favours the applicant.
As the trade mark is well-known, is not one that others would ordinarily and honestly wish to use; and as no other registered owner's rights seem to be compromised by the application, it appears to me that my approach to the quantum of evidence required, and its nature, should be somewhat less stringent than would otherwise be the case. While the applicant could no doubt provide survey evidence and supporting declarations if required, I do not think it would be reasonable to require it to do so.
I am reasonably satisfied, on the basis of the evidence, that AT&T uses its trade mark in relation to a global megabusiness, greater in size, influence and buying power than most sovereign states. The trade mark has a long history. It has been associated with such landmark events as the first experimental transmission of the human voice across the Atlantic Ocean via radio in 1915, the inauguration of a commercial transatlantic telephone service using two-way radio in 1927, and the placement of the first commercial telecommunications satellite, Telstar 1, into orbit in 1962. It appears to me, from the evidence, that AT&T continues to conduct fundamental research and to patent the consequent technological inventions. This activity has commercial and cultural impacts extending far beyond its immediate and present fields of commercial interest. I also note that AT&T features quite frequently in media reports, especially in financial and business reportage, but also in general news. In addition to this exposure, the trade mark is exposed to the general public through the activities of AT&T Foundation in making monetary grants and otherwise sponsoring worthy endeavours, and through the company's philanthropic policy of allowing its employees a day's leave each year to engage in community activities.
On the basis of these factors, I think I may be satisfied that the trade mark has been placed before the public in contexts well beyond the field of commercial interest indicated by its registrations. I am inclined to think it is likely that at&t is generally recognised and connected with its registered owner by a majority of people, many of whom may never have had cause to use its products or services, and might know only vaguely what its current interests are.
Having considered this matter, I wrote on 29 June 2001 to the attorneys for the applicant. I stated that, on the balance of probabilities, I thought connection in terms of s 185 would be likely for many of the goods and services claimed, but not for the full range in all classes applied for. For some of the goods and services nominated, I was of the opinion that connection (in the broad sense) would be possible, but not probable. For those goods and services, I was not satisfied that connection would be likely, as likelihood requires probability rather than possibility. I consequently proposed restrictions to the specifications in classes 1, 2, 7, 11, 12, 14, 16, 28, 35, 36, 37, 39, 40, 41 and 42. The applicant agreed to amend its application by letter dated 2 August 2001. The amended specification is set out below, and it is in respect of the amended application that I am to make this decision.
Class: 1 Chemical products used in industry, science, photography; artificial and synthetic resins; plastics in the form of powders, liquids or pastes, for industrial use; fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving stuffs; adhesive substances used in industry
Class 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; coloring matters, dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators
Class 7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; all the foregoing for use in relation to telecommunications equipment, infrastructure and installations
Class 9 Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counterfreed apparatus; talking machines; cash registers; calculating machines; fire extinguishing apparatus
Class 10 Surgical, medical, dental, and veterinary instruments and apparatus (including artificial limbs, eyes and teeth)
Class 11 Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; all the foregoing for use in relation to telecommunications equipment, infrastructure and installations
Class 12 Vehicles; apparatus for locomotion by land, air or water; all the foregoing for use in relation to telecommunications services
Class 14 Precious metals and their alloys for use in relation to telecommunications equipment; precious stones for use in relation to telecommunications equipment
Class 16 Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; photographs; stationery, adhesive materials (stationery); typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; printers' type and cliches (stereotype); all the foregoing for use in relation to telecommunications services, equipment, infrastructure and/or installations, or for use in relation to computers
Class 28 Games and playthings; gymnastics and sporting articles (except clothing);
Class 35 Advertising and business services related to telecommunications or computer services
Class 36 Insurance and financial services related to telecommunications or computer services
Class 37 Construction and repair services being ancillary services to telecommunications or computer services
Class 38 Communication services
Class 39 Transportation and storage services being ancillary services to telecommunications or computer services
Class 40 Material treatment services being services related to the production of telecommunications equipment, computers, computer peripherals, computer hardware and software
Class 41 Education and entertainment services provided electronically
Class 42 Leasing access time to a computer database; computer programming; updating of computer software; computer software design; intellectual property consultancy; consultancy in the field of computer hardware; copyright management; construction drafting; engineering drawing; engineering; licensing of intellectual property; patent exploitation; lithographic printing; offset printing; printing; computer rental; rental of computer software; research and development for others; technical research
Whilst I appreciate that the evaluation process set out in Part 19 may be "a preliminary screening process" in the sense used his Honour French J in Woolworths, supra, and clearly subject to a presumption of registrability, I am well aware that an unduly liberal approach may result in a monopoly wider than that to which AT&T would be entitled by the infringement provisions of s 120(3).
I am reasonably satisfied that the amended specification now encompasses only goods and services that would, because of the extent of use of the trade mark, be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade marks on which the application is based.
Decision
Being satisfied in terms of s 33 that there is no ground for rejection of the application, I therefore accept trade mark application 771849.
Arminel Ryan
A/Hearing Officer
17 October 2001
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