Australian Airlines Ltd v Registrar of Trade Marks
[1992] FCA 263
•11 May 1992
IN THE FEDERAL COURT OF AUSTRALIA ) No VG 301 of 1989
) No VG 302 of 1989
VICTORIA DISTRICT REGISTRY
)
No VG 303 of 1989 No VG 304 of 1989
GENERAL DIVISION
N; VG 249 of 1990 On appeal from the Registrar of Trade Marks
BETWEEN: AUSTRALIAN AIRLINES LIMITED
(Appellant)
AND : THE REGISTRAR OF TRADE MARKS
(Respondent)
Coram: Ryan J Date: 11 May 1992 Place : Melbourne
PINUTES OF ORDERS
THE COURT ORDERS THAT:
1. The appeal be dismissed.
2 . The appellant pay the respondent the costs of the appeal, including any reserved costs, to be taxed.
NOTE : Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA ) No VG 301 of 1989 1 No VG 302 of 1989 VICTORIA DISTRICT REGISTRY
1
NO VG 303 of 1989 No VG 304 of 1989
GENERAL DIVISION 1 No VG 249 of 1990 On appeal from the Registrar of Trade Marks
BETWEEN: AUSTRALIAN AIRLINES LIMITED
(Appellant)
AND: THE REGISTRAR OF TRADE MARKS
(Respondent)
Coram : Ryan J Date: 11 May 1992 Place: Melbourne
REASONS FOR JUDGMENT
Rvan J: On 6 June 1990, the appellant applied to the Registrar of Trade Marks for the registration of four marks in Part A of the register. Three of the marks consisted of the words "Australian Airlines" accompanied by a device, comprising a stylised triangle and kangaroo figure ("the logo"). The appellant sought registration of the marks in
respect of goods in classes 16, 39 and 42 respectively. The
fourth of the marks consisted of the words "Australian Cargo",
accompanied by the same device. The appellant applied for registration of this fourth mark in respect of goods in class
39. As a condition of the registration of each of the marks, the preliminary examiner of the applications required the appellant to disclaim exclusive rights to the words "Australian", "Airlines" and "Cargo". The appellant agreed to each of these conditions. However, the examiner also required the appellant to disclaim exclusive rights to the words "Australian Airlines" in combination and "Australian Cargo" in combination. The appellant indicated that it was not willing to accede to either of those requirements and the applications were as a consequence referred to a delegate of the respondent for submissions. The Delegate took the view that the words, "Australian Airlines" and "Australian Cargo" in combination, when not accompanied by the device, were non-distinctive and thus unregistrable in Part A of the register. He said, at page 5 of his reasons:
"The words AUSTRALIAN, CARGO and AIRLINES are all non-distinctrve and their comblnatlons equally so when applied to the goods and services specifled in the applications. Such comblnatrons are descrlptlve and non-dlstrnctive, and have no capacity to become drstinctive. I cannot lmagine a more apt term for an Austral~an cargo carrier or alrline to use in describing any services or goods related to its buslness. Registrat~on under the Trade Marks Act of the expressions "Australian Cargo" and "Australian Airlines" is therefore inappropriate."
The appellant also relied, in its submissions to the Delegate, upon s.25 of the Australian Airlines Iconversion to Public
Comuanvv) Act 1988 ("the Australian Airlines Act"), which provides : "(1) A person other than a protected body shall not:
(a)
use in connection with a buslness, trade, profession or occupation;
(b)
use as the name, or as part of the name, of any farm, body corporate, lnstrtution, premlaes, vehicle, vessel or craft (including aircraft);
(c)
apply, as a trade mark or otherwise, to goods imported, manufactured, produced, sold, offered for sale or let for hire; or
(d) use in relation to:
(L) goods or services; or
iii) the uromotion, by any means, of the supply or use
a protected name, or a name so closely resembling a protected name as
to be likely to be mistaken for it.
Penalty: $1,000.
(2) Nothing in subsection (1) limits the generality of anyth~ng
else in that subsection.''
Under s.5 of the Australian Airlines Act, "protected name" means a protected business name or a protected company name. "Protected business name" in turn is defined by the same section to include "Australian Airlines" and "Australian
Cargo " . The Delegate rejected the appellant's submission that the statutory protection afforded to the terms "Australian Airlines" and "Australian Cargo" by the Australian Airlines
renders those names distinctive for the purpose of registration in Part A of the register. In particular, the Delegate found that the protection afforded by the Australian Airlines Act was not a factor which could be taken into
account as constituting "other circumstances" rendering the terms distinctive pursuant to s.26 (2)(b) of the Trade Marks a. In its notice of appeal to this court, the appellant has relied on substantially the same grounds that were before the Delegate. In addition to those grounds, however, the appellant now seeks registration of its marks in Part B of the register, in the event that this court is- unwilling to permit registration in Part A.
| ,- | Section 24 of the Trade Marks Act provides: |
"(1) A trade mark is registrable in Part A of the Register if it
contains or consists of -
(a)
the name of a person represented in a specral or particular manner;
(b)
the signature of the applicant for regastration or of some predecessor in his business;
(C) an invented word;
(d)
a word not havang darect reference to the character or quality of the goods or services in respect of whrch registration is sought and not being, according to its ordrnary meaning, a geographrcal name or a surname; or
(e) any other dastinctrve mark.
(2) A name, signature or word (not being a name, signature or word described in paragraph (a), (b), (c) or (d) of the last preceding subsection) is not regastrable in Part A of the RegLater unless at is, by evidence, shown to be diatrnctive.
(3) A trade mark may be reg~stered in Part A of the Regrster in reapect of any goods or services notwithstanding the registration of the trade mark or of a part or parts of the trade mark in Part B of the Register, in the name of the same person, rn reapect of the same goods or services or other goods
or services. "
It is not disputed by the parties that if the appellant's marks are to be registered in Part A of the register without
Airlines" and "Australian Cargo", the appellant must satisfy disclaiming the exclusive right to use the terms "Australian the court that those terms are distinctive (s.24(l)(e), (2)). Section 26 of the Trade Marks Act defines distinctiveness for the purposes of registration. That section provides, in relevant part: " (1) For the purposes of this Act, a trade mark is not distinctive of the goods or services of a person unless rt is adapted to distinguish goods or servrces with which that person is or may be connected in the course of trade from goods in reapect of which no such connection subsists, either generally or, where the trade mark is sought to be registered, or is registered, sublect to conditions or limitations, in relation to use subject to those conditions or limitations.
(2) In determining whether a trade mark is distinctive, regard may
be had to the extent to which -
(a)
the trade mark 1s inherently adapted so to distinguish; and
(b)
by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish ..."
The appropriate weight to be given to each of the elements specified in s.26(2) was recently considered by a Full Court of this Court in Chancellor, Masters & Scholars of the Universitv of Oxford (trading as Oxford Universitv Press) v Reaistrar of Trade Marks (1990) 24 FCR 1 (the "Oxford Universitv Press case"). The appellant in that case had sought to register the word "Oxford" in Part A of the register. The Registrar refused to register the mark. Nevertheless, by his Counsel before the Full Court, he conceded that in respect of goods characterized as "printed publications", the word "Oxford" had acquired "100 per cent actual distinctiveness".
The Full Court agreed that the mark ought not to be registered. The judgment of each member of the Court is instructive on the concept of distinctiveness and merits
consideration in some detail.Lockhart J (at 5) made three points about the meaning of s.26: "First, the word "may" in subs (2) 1s used in the imperative, not the permissive or facultat~ve sense, so that regard must be had to both pars (a) and (b): the Tarzan Trade Mark case [l9701 RPC 450, per Salmon LJ (at 455); Buraer K ~ n q (supra), per Gibbs J (at 426). Secondly, the question of whether a mark is "adapted to distinguish" the goods of the applicant for registration-withm 8.26(1) involves a balancing process, a weighrng of the two elements stipulated in 8.26(2) in determining the ultimate question whether the mark is "adapted to distinguish" and therefore registrable under 8.26(1):
Clark E m i ~ m e n t CO (supra), per Krtto J (at 513) and Burqer Kinq, per
Gibbs J (at 426).The third point: is that although 8.26(2) does not itself stipulate that particular emphasis be given to par (a) (that the trade mark be inherently "adapted to distinguish") that is the effect of the
author~ties. "
His Honour went on to hold (at 6) that inherent adaptability was "the essential integer" going to distinctiveness and concluded (at 7):
"I reject the argument that a mark may become "adapted to diatingursh" by reason of extensive use or other circumstances
without its hav~ng any inherent adaptability."
Jenkinson J approached the problem in the Oxford Universitv Press case from a slightly different perspective. His Honour expressed the view that where the primary signification of a mark to be registered was a geographical location, the mark could only be said to have acquired distinctiveness if it had come to possess, when used in respect of relevant goods, a distinctiveness which eclipses "the minds of virtually all potential purchasers to that "primary signification"" (at 11).
As his Honour was of the opinion that there might be
circumstances in which trade competitors of the Oxford
University Press might legitimately wish to use the word "Oxford" in relation to the publication of books, his Honour agreed that the mark was not registrable.
Gummow J (at 18), agreed with Lockhart J that a mark could not be adapted to distinguish goods or services if it displayed no
inherent adaption to distinguish. His Honour went on to agree with Jenkinson J that "the question is whether the applicant in a particular case ought not to be allowed to obtain by registration a monopoly in what other traders may "legitimately desire to use"" (at 22).
It emerges clearly from the judgments of the members of the court in the Oxford Universitv Press case that inherent adaptability is the common denominator of registrable marks. For Lockhart and Gummow JJ, indeed, inherent adaptability was the sine uua non element of registrability. Even though the word "Oxford" when used in relation to printed material had become "100% distinctive" of goods produced by Oxford University Press, the word was so non-distinctive that no amount of user could render it sufficiently distinctive, in their Honours ' analysis, to justify registration. Furthermore, despite extensive evidence of sole, uninterrupted usage of the word "Oxford" by the applicant in relation to printed materials, all of the members of the Court were of the
view that there might be circumstances in which a trade competitor could legitimately desire to use the word "Oxford" in respect of printed goods. In the present case, M r Shavin, who appeared for the appellant, relied upon a considerable body of affidavit evidence to show the degree to which the words "Australian Airlines" and "Australian Cargo" had become synonymous with the appellant since it adopted those names- in 1986. I agree
' . with the observation made by Mr Clarke of Counsel for the
respondent, that the evidence relating to the use and acceptance of the words "Australian Airlines" is considerably more extensive than the evidence relating the words "Australian Cargo". However, it is clear that the two names have gained widespread acceptance since 1986 and I am prepared to find that they have acquired something approaching "100% per cent distinctiveness" when used in conjunction with the logo. When used without the logo the names are clearly identified by a smaller, but still substantial proportion of the population, with the appellant.
The degree of use of the words is, of course, a relevant factor in determining the distinctiveness of a mark;
(~.26(2) (b) - However, user will rarely, if ever, be of itself sufficient to render a mark "adapted to distinguish" as required by the Act. Some further element, usually deriving from the mark's inherent adaptability to distinguish, will need to be present. M r Shavin pointed to s.26(2) and
contended that the additional element necessary for distinctiveness in this case could be found from either an examination of "other circumstances" within the meaning of s.26(2)(b), or from the inherent adaptability of the words "Australian Airlines" and "Australian Cargo" taken in combination.
It is not inconsistent with anything said in the Oxford Universitv Press case to observe- that a mark may be
registrable in Part A of the register notwithstanding a lack of inherent adaptability if sufficient other circumstances of the type contemplated by s.26(2)(b) are present. Such circumstances will arise only rarely. An example might be an Act of the Commonwealth Parliament which has the effect of directing the Registrar of Trade Marks to register a mark which would otherwise be unregistrable. An example of that type of provision is s.6 of the Advance Australia Loao Protection Act 1984 which had an operation in the context of
the Co~vriaht Act 1968. Mr Shavin contended that s.25 of the Australian Airlines Act, which has the effect of prohibiting, inter alia, the use of the words "Australian Airlines" or "Australian Cargo" as part of the name of any body corporate, creates a statutory monopoly. He contended that "Parliament has clearly left it to the applicant to get its rights and remedies under the Trade Marks Act." With respect, I am unable to accept this as
an accurate statement of the effect of 9.25. In clear Australia Loao Protection Act, the legislature has not made contradistinction to the approach taken in the Advance any reference to the purposes for which it enacted s.25 within the context of the Australian Airlines Act. Section 25 has a clear operation on its face which is apparent without reference to any other legislative enactment. That operation is to prohibit the use of certain names in particular, specified, circumstances and to prescribe a penalty for contravention. Instead of leaving it to the appellant to
. pursue remedies under the TradeMarks s.25 itself prescribes the appropriate remedy available to the appellant
| r , | if some other entity should use a protected name in prohibited circumstances. | |
| It does not follow from what I have just said that s.25 is not an "other circumstance" for the purposes of s.26(2) (b) of the Trade Marks Act. The statutory protection afforded to the names "Australian Airlines" and "Australian Cargo" by the Australian Airlines Act is a relevant factor to be weighed in considering whether or not those names are "adapted to distinguish" the appellant. I am of the opinion for the foregoing reasons, however, that s.25 is not of itself a sufficient "other circumstance" to render the words distinctive, even when combined with evidence of user, in the absence of evidence of inherent adaptability to distinguish. | ||
| This case, therefore, turns on the sole issue of whether the terms "Australian Airlines" and "Australian Cargo", when taken | ||
| ||
| adaptability when viewed in conjunction with evidence of user and other circumstances, such as s.25 of the Australian Airlines Act, renders the terms distinctive and therefore registrable. | ||
| In the course of oral submissions, Mr Shavin sought to distinguish this case from the Oxford Universitv Press case on | ||
| the grounds that the adjectival use of a geographical name in combination with a noun describing the nature of the business "adapts the phrase inherently away from simply being something that denotes a geographical significance to being something which is capable, with use, of in fact distinguishing ...". Ingenious though this argument is, it is not an inevitable consequence of using two words in combination, each of which has itself no inherent adaptability to distinguish, that the resulting phrase is inherently adapted to distinguish. This is a point which was recognised by Kitto J in Clark Eauipment CO v Resistrar of Trade Marks (1964) 111 CLR 511 at 515 where his Honour said: |
"The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to drstingursh one person's goods from the goods of others when used srmvlicrter or with no addrtion save a description or designation of the goods, if goods of the kind are produced at the place or rn the area or if it is reasonable to suppose that such goods may rn the future be produced there. In such a case, the name is plarnly not inherently, i.e. rn its own nature, adapted to distinguish the applrcant'a goods; there is necessarrly great drfficulty in proving that by reason of use or other circumstances it does in fact drstinguish hrs goods; and even where that difficulty rs overcome there remarns the vrrtual if not the complete impossrbilrty of satisfying the Registrar or the Court that the effect of grantrng regrstratron will not be to deny the word to a person who is likely to want to use it, legrtrmately, in connexion with his goods for the sake of the geograph~cal reference which it is inherently adapted to
make. "
I agree with the comment of the Delegate that it is difficult to imagine more apt terms to describe an Australian airline or cargo carrier than the names in issue in this case.
In conclusion, therefore, I am of the view that the words "Australian Airlines" and "Australian Cargo" when each used in combination, have no inherent adaptability to distinguish the appellant in the sense in which those words are used in s.26(2)(a) of the Trade Marks Act. Were it not for s.25 of the Australian Airlines Act, indeed, there might have been circumstances in which another business could legitimately desire to operate under a name which included the words "Australian Airlines" or "Australian Cargo".
The appellant's remedy for use of the names "Australian Airlines" or "Australian Cargo'' by a trade competitor is provided solely by the Australian Airlines Act, and not the Trade Marks Act. The names are simply not distinctive for the purposes of the latter Act, and they are not distinctive because, notwithstanding evidence of user, they have no inherent adaptability to distinguish.
With respect to the appellant's alternative submissions relating to registration in Part B of the register, I note only that the names "Australian Airlines" and "Australian Cargo", when used without the logo, have no capacity to become
the same reasons that they are not distinctive for the distinctive as required by s.25 of the Trade Marks Act, for purposes of registration in Part A of the register. Further user of the marks by the appellant, no matter how extensive, will be unable, in my view, to overcome the total lack of inherent adaptability of those terms.
The appeal must therefore be dismissed with costs.
I certify that this and the preceding twelve (12) pages are
a true copy of the Reasons for
Judgment of his Honour
M r Justice Ryan.
Associate: *-
Date: ~ r 1 ~ 1 q 1
Counsel for the Appellant: M r D Shavin Solicitor for the Appellant: Blake Dawson Waldron Counsel for the Respondent: M r G Clarke Solicitor for the Respondent: Australian Government
Solicitor
0
2
0