Australian Postal Commission (Trading as Australia Post), Re

[1991] ATMO 47

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTER OF TRADE MARKS ACT

Re:Application No 492851 to Register a Trade Mark in the Name of AUSTRALIAN POSTAL COMMISSION trading as AUSTRALIA POST

Application No 492851 was lodged on 9 August 1988 by AUSTRALIAN POSTAL COMMISSION trading as AUSTRALIA POST (the applicant), a Statutory Authority of the Commonwealth of Australia, of 71 Rathdowne Street, Carlton South, Victoria, 3053.  It sought registration in respect of a statement of goods subsequently amended to "Postal services and mail services, not including electronic postal services or mail services" in class 38 of the mark shown below:

An examiner's report of 28 November 1989 objected to the mark's registration under paras 24(1)(c), (d) and (e) of the Act on the grounds that the mark directly referred to worldwide postal and mail services being a part of Electronic Mail System (EMS) and that the manner of representation of the mark was not sufficient to render it distinctive as a whole.  In reply, the applicant's attorneys Griffith Hack & Co requested to transfer the application to Part B of the Register and to enter an endorsement disclaiming rights to the exclusive use of the words INTERNATIONAL EXPRESS POST, WORLDWIDE POSTAL COURIER NETWORK and the letters EMS, submitting that the presentation of the mark justified its acceptance as a mark capable of becoming distinctive.  These proposals did not satisfy the examiner who argued that the whole mark was directly descriptive

and therefore lacked inherent adaptability to distinguish.  The attorney responded by lodging a Statutory Declaration attesting to
use of the mark and expressing a view that the mark's extensive use, together with the offered disclaimers, placed the application in order for registration of the mark in Part B.  He also referred to the applicant's mark of application A492128 which contains the letters EMS and has been accepted in Part A in respect of identical specification of services without a disclaimer of the letters.  In light of this acceptance, the applicant withdrew its consent to disclaim the exclusive use of the letters EMS.  In a further report the examiner advised the attorney that the evidence showed use of the mark in conjunction with the mark of application A492128, and that the manner of its use demonstrated the descriptive and non-distinctive nature of the mark.
          This contention was not acceptable to the attorneys Griffith Hack & Co, trade mark and patent attorneys of Melbourne.  Consequently, having waived the right to a hearing on behalf of the applicant, the attorney requested a decision on the written record.
          To evaluate registrability of a mark in Part B of the Register, it must be determined whether the mark would at some time in the future satisfy the requirements of sub-section 26(2) concerning inherent distinctiveness and distinctiveness in fact.  In Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 471 Justice Gibbs said at page 424:

"... the two matters that fall for consideration in deciding whether a trade mark is distinctive, and in deciding whether a trade mark is capable of becoming distinctive it becomes necessary to consider whether the trade mark is capable of meeting in the future the tests stated in s.26(2).  That sub-section requires two matters to be considered, inherent adaptability to distinguish and distinctiveness in fact acquired by use or otherwise."

The question of the mark's adaptability to distinguish will be resolved by applying to the mark the well recognized test of deciding whether the nature of the mark is such that other traders would not desire to adopt the mark, without improper motive, for use in connection with the same or similar goods or services (see Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511).
          The applicant's mark comprises a lower case word INTERNATIONAL followed by upper case bold type words EXPRESS POST, all these words rendered prominently in common type form.  In a black bar underneath appear additional words A PART OF EMS - THE WORLDWIDE POSTAL COURIER NETWORK, also in ordinary upper case letters.  The words in the mark clearly convey certain information about the nature of the services provided by the applicant.  Its meaning is expressed in concise, unambiguous terms which would be readily comprehended by the interested members of the public.
          By disclaiming right to the exclusive use of the words INTERNATIONAL EXPRESS POST and WORLDWIDE POSTAL COURIER NETWORK the applicant has acknowledged non-distinctiveness of those words.  On the basis of acceptance in Part A of application A492128 the applicant has withdrawn its consent to the disclaimer in the subject mark of the letters EMS.  However, the mark of that application clearly belongs to the category of pronounceable three upper case letters constituting an invented word and therefore registrable in Part A (see Practice Note in A.O.J.T.M. of 4 February 1991), whereas in the context in which the particular EMS appears in the mark under consideration, that is, A PART OF EMS, it would be construed as consisting of the letters EMS.  According to the Acronyms, Initialisms & Abbreviations Dictionary, 1988 ed. and Dictionary of New Information Technology Acronyms, the letters EMS represent a recognized acronym for the words Electronic Mail System.  Consequently, every component part in the mark comprises descriptive and non-distinctive elements not registrable in themselves.  The only redeeming feature in trade marks of this sort would reside in the manner in which these non-distinctive components are combined and represented.  In Diamond T Motor Car Co's Appn (1921) 38 RPC 373, the combination of elements common to the trade was held to be distinctive. I do not believe the same finding may be applied to the applicant's mark, since the mark consists of non-distinctive particulars not represented in any striking or unusual manner, and the arrangement and composition of those particulars fail to add any characteristics to the mark, whereby the mark could be pronounced to be distinctive as a whole or capable of becoming distinctive.
          In view of these observations the applicant's offered disclaimers do not assist in removing the objections to the mark's registrability.  In this regard I will refer to the passage from Bausch and Lomb Inc v Registrar of Trade Marks (1980) 28 ALR 537, which was quoted by the examiner, where Lee J enunciated at p.549:

"Disclaimer undoubtedly has a place in registration (e.g. s.32 of the Act) but it is not a device to be used to permit registration of a word that should be regarded as unregistrable."

Considering distinctiveness in fact, I turn to the evidence lodged which comprises a Statutory Declaration with exhibits by Anil Sacher, manager, product development and promotions of Australian Postal Corporation, who declares that the mark has been continuously used since October 1988.  The revenue derived by the services under the mark is given as:
  1988/89 -  $6.5m
  1989/90 -  $8.0m
  1990/91 - $9.9m

(fcst)

Advertising expenditure has amounted to over $1 million each year.  "Exhibit 1" displays printed matter, including advertising material illustrating the mark in use.  Five out of six of the samples show the mark being used in conjunction with the mark of application A492128.  Given the purely descriptive nature of the subject mark, I agree with the examiner's opinion that such use would considerably decrease the likelihood that the members of the public will distinguish two marks in the representation.
          Whilst I concede that the value of the applicant's services and advertising costs are not insubstantial, irrespective of the lack of indisputable evidence of the mark's use in the form in which the applicant is seeking registration, I am obliged to take into account the principle in law that any evidence of momentary factual distinctiveness is to be weighed against the mark's inherent non-distinctiveness as expounded in Burger King, supra, by Gibbs J at p.426:

"... but the authorities show that the primary inquiry is whether the word is inherently adapted to distinguish the goods [or services] in respect of which registration is sought, and that if it is simply a laudatory or descriptive epithet, registration will generally be refused even if there is evidence of such user as has in fact rendered the word distinctive of the applicant's goods [or services]: Yorkshire Copper Works Ltd's Application; Samuel Taylor Pty Ltd v Registrar of Trade Marks.  In accordance with this approach, registration under Part B was refused in respect of a word which was not inherently adapted to distinguish the goods [or services], notwithstanding that it had been extensively used: Clark Equipment Co v Registrar of Trade Marks.  The words there had a geographical signification but Kitto J pointed out, that a descriptive word would be in like case."

In conclusion then I find that the words chosen for the applicant's mark aptly describe the purpose for which they are intended, and therefore are lacking any adaptability to distinguish.  Since the combined effect of the composite mark fails to create any novelty in the get-up, the proposed disclaimers do not alter the situation concerning the mark's incapability of becoming distinctive.  As indicated earlier, it is well established that
trade marks of this nature do not qualify for registration even in Part B despite demonstration of substantial use.
          Accordingly, I refuse the application in Part B of the Register.

(V. ZARS)
Senior Examiner
4 July 1991