Australian Rugby Union Limited

[2000] ATMO 111

TRADE MARKS ACT 1995

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

Re:Trade mark application number 784319(25) - colours and devices applied to clothing- in the name of AUSTRALIAN RUGBY UNION LIMITED.

Background

The Australian Rugby Union Limited ("ARUL") applied on 1 February 1999 to register a trade mark.  It was allocated application number 784319.  The trade mark consisted of a coloured representation and a description defining the scope of the rights claimed.  A black and white version of the representation is reproduced below:

The description that is part of the application now reads as follows:

The trade mark consists of the combination of the devices of GREEN STARS, GREEN SHIELD and GREEN AND WHITE STRIPES applied to a GOLD BACKGROUND and arranged on the items of clothing specified, all of which items have a white collar, as depicted in the representations attached to the application form.

The trade mark is proposed to be registered in respect of:

Football jerseys; shirts, T-shirts, polo shirts; tracksuits; waterproof jackets

The application was duly examined in terms of the Trade Marks Act 1995 ("the Act"). The examiner advised the applicant that the trade mark had no inherent capacity to distinguish because it was a representation of the goods themselves. Evidence in terms of s41(6) was requested. The applicant provided evidence of use of the trade mark since the filing date. It was not sufficient to persuade the examiner that the trade mark was capable of distinguishing. In response to the examiner's second adverse report, ARUL's attorney argued that

"the particular colour, pattern and ornamentation does distinguish the goods of the applicant from the goods of other traders and if any other trader were permitted to use a similar colour, pattern or ornamentation applied to garments, then consumers would naturally believe that such a garment was produced or authorised by the applicant."

He also drew the examiner's attention to the applicant's prior series registration, No 713,912, covering the goods football jerseys. Like the proposed trade mark, this registered trade mark consists of a representation and a description, which are set out below:

The first trade mark in the series is depicted in the colours WHITE, GREEN and GOLD. The body is predominantly GOLD with a WHITE and GREEN diagonal inset, the sleeves are  GREEN. The second trade mark in the series is depicted in the colours WHITE, GREEN and GOLD. The body is predominantly WHITE with a GREEN and GOLD diagonal inset. The sleeves are GOLD. The third trade mark in the series is depicted in the colours WHITE, GREEN and GOLD. The body is predominantly WHITE with a GREEN and GOLD diagonal inset. The sleeves are GREEN.

The examiner responded that the proposed trade mark was simply an identifier of the Australian Rugby Union Team, and not an indication of the trade origin of the goods. She also stated that she did not intend to follow the precedent set by the earlier acceptance and registration of 713912 under the provisions of s 41(5).

ARUL sought a hearing under the provisions of s 33(4). 

The matter was set down to be heard in Sydney on 20 July 2000.  Appearing for ARUL was Mr James Maxwell, of the attorney firm of Peter Maxwell and Associates.  As delegate of the registrar, I heard the submissions and received the additional evidence tendered.  I am now to decide whether to accept or reject the application.

The evidence

The evidence consists, firstly, of a statutory declaration by Ashley Selwood, the General Manager Finance of ARUL ("Selwood 1").  This is dated 11 October 1999.  It attests to the very substantial sales of goods bearing the trade mark since its first use in 22 February 1999; to the use being via a licensee; to the availability of those goods Australia-wide through major sporting stores, department stores, football shops and souvenir and duty-free shops; and to the exposure of the trade mark, via Australian and global television, to millions of viewers.  The exhibits include a sales brochure produced by the licensee, Reebok, showing various garments bearing the trade mark, match programs, a sample of goods bearing the proposed trade mark, and a sample of goods bearing the first of the trade marks subject of series registration 713912.

At the hearing, a second declaration by Mr Selwood, dated 19 July 2000, was submitted ("Selwood 2").  It provided updated information about the sales of the goods bearing the trade mark, about the current licensing arrangements, and about additional exposure of the trade mark to the public.  As well as this exposure being via live and televised matches where players are dressed in garments bearing the trade mark, Australia Post sold 28 million stamps featuring the trade mark, Gatorade produced figurines under license which also featured the trade mark, and Dairy Farmers affixed the trade mark, under license, to milk cartons circulated throughout Australia. 

Also at the hearing, a declaration by James Vernon Maxwell, likewise dated 19 July, was submitted.  Mr Maxwell's declaration gives details of his interrogation of the Trade Marks data base and of the samples of similar trade marks, attached as exhibits to the declaration, which had been registered under the 1955 and 1995 Acts.

In addition, 28 statutory declarations from members of the relevant public (that is, rugby supporters) in all states were submitted.  I note that the trade mark shown to these people was not precisely the same as that for which ARUL has applied under 784319, as it lacked the shield device.  However, the declarants all attest to their recognition of the other features of the trade mark as being of themselves indicative of the applicant.

Submissions

Having canvassed the outstanding formality matters and reviewed the examination history of the application, Mr Maxwell referred me to the relevant provisions of the Act. These were, he said, ss 17, 33 and 41. I will refer to his submissions in the course of reviewing those provisions, and applying them to the circumstances of this case.

Reasons

The Act defines a trade mark as follows:

17. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:  For sign see section 6.

A sign is defined at s 6 as follows:

"sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent".

This definition, being inclusive, does not confine what a trade mark may be. 

There is no prima facie reason to assume that a proposed trade mark which falls within the categories of sign enumerated in s 6 does not comply with s 17.

To be registrable, applications must also be capable of graphical representation.  The legislation provides

40. An application for the registration of a trade mark must be rejected if the trade mark cannot be represented graphically.

The interpretation of s 40 is expanded in the Regulations.  Reg 4.3 relevantly provides

4.3.

(7) If a trade mark for which registration is sought contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration of the trade mark must consist of a concise and accurate description of the trade mark.

(8) If the Registrar reasonably believes that the description ... of a trade mark in an application for registration does not:

(a)     demonstrate the nature of the trade mark sufficiently..

to permit proper examination of the trade mark, the Registrar may require the applicant to give to the Registrar:

(c)      a description, or further description of the trade mark; and

(d)     a specimen of the trade mark

In the present case, a specimen of the trade mark was provided as exhibit BJT4 to Selwood 1. 

I am satisfied that the present application now complies with all these provisions.  However, I will note in passing that determining an accurate and concise description of the trade mark, so as to permit proper examination, occupied much of the time and energy devoted to the matter both before and after to the hearing.  Difficulties with the description are not uncommon in applications of this ilk.

The second question to address is whether this trade mark is registrable. 

The Act, at s 33, establishes 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.

The meaning of this provision, and its interaction with the provisions of s 41, have been judicially considered in Blount Inc v Registrar of Trade Marks [1].  In that decision, Branson J said:

Section 33(1) provides that the Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or that there are grounds for rejecting it. The 1955 Act, by s 44, required the Registrar to accept the application only if satisfied that there was no lawful ground of objection to it. The terms of s 33(1) of the Act are presumably intended to reflect the recommendation of the Working Party that the Act "should be expressed in terms which make it clear that there is to be a presumption of registrability when examining an application for registration" (p 42 of the Report). However, by reason of the terms of s 41 of the Act, it is doubtful that s 33(1) can have any practical effect so far as the specific question of capacity to distinguish is concerned.

Each of s 33(1) and s 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 (Rejfeck v McElroy (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 matter is more probable than not.

Her Honour then proceeded to analyse the process by which the Registrar is to reach a conclusion as to whether or not a trade mark is capable of distinguishing. The key issue in this process is "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."  Having considered this, the Registrar can reach one of three possible conclusions, each of which entails its own specific consequences.  These conclusions, and their consequences, are:

[1] 40 IPR 498 at 503

1. That the trade mark has sufficient inherent adaptation to distinguish to be capable of distinguishing. No ground for rejection under s 41 then exists and s 33(1) binds the Registrar to accept the trade mark.

2. That the trade mark has no inherent adaptation to distinguish. The onus is then on the applicant to demonstrate to the Registrar's satisfaction that the trade mark nevertheless does distinguish the designated goods or services by reason of use. If this is demonstrated, the Registrar must find that the trade mark is capable of distinguishing in terms of s 41(6). If so, s 33(1) binds the Registrar to accept the trade mark. An applicant's failure to demonstrate this means that the Registrar must reject the application in terms of s 41(2) and s 33(2).

3. That the trade mark has some inherent adaptation to distinguish, but insufficient to be capable of distinguishing on that basis alone. The onus is then on the applicant to demonstrate to the Registrar's satisfaction that, by the combination of the extent to which it is inherently adapted to distinguish, and/or the use or intended use of the trade mark by the applicant, and/or any other circumstances, the trade mark does or will distinguish the designated goods or services in terms of s 41(5). If so, s 33(1) binds the Registrar to accept the trade mark. An applicant's failure to demonstrate this means that the Registrar must reject the application in terms of s 41(2) and of s 33(2).

In trade mark terms, inherent adaptation to distinguish means the qualities possessed by a trade mark that cannot be changed or altered.  As expressed by Gibbs, J, in Burger King Corporation v Registrar of Trade Marks[2]:

[2] [1973] 128 CLR 417 at 424

"Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co. v Registrar of Trade Marks - and is therefore not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise."

Mr Maxwell argued that the present trade mark had sufficient inherent adaptation to distinguish, and should be accepted on that basis alone.  He pointed out that it consists of a combination of colours and devices, and that combinations of colours and devices were registrable under the 1955 Act.  Trade marks that would have been registrable under that Act must, he said, be registrable under the present Act.  He drew my attention to several comparable registered trade marks.  He also stated that colour played an important part in modern marketing, as helping to identify the source of the product, and that considerable creative input was required to develop such a trade mark

I agree with the general thrust of Mr Maxwell's arguments, but not with his conclusion as to the extent of inherent adaptation that the trade mark possesses. 

Composite marks consisting of commonplace elements are indeed registrable, as they were under the 1955 Act, in accordance with the principle enunciated in Diamond T. Motor Co.'s Appn [3].   Trade marks considered registrable under the previous Act are indeed registrable under the present Act, which sets the standard for prima facie acceptance lower than did the 1955 Act[4]. 

[3] (1921) 38 R.P.C. 373 at 380

[4] cf Branson, J in Blount, supra at 497: "Under the [1995] Act, it is sufficient in this regard for the trade mark to be “capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered”: s 41 (2). The test under the 1955 Act was more demanding."

There are on the Register trade marks of a similar nature, some of which were placed there under the previous Act. To my mind, those which are closest in nature to the present application are the various registered shoe flashes, stripes applied to clothing, and pocket markings registered under the 1955 Act.  However, I observe that these only gained acceptance on the basis of evidence of use.  Their presence on the Register does not necessarily mean that, even under the more lenient requirements of the 1995 Act, they would necessarily qualify for prima facie acceptance.  

I also agree with the attorney's contention that today's marketplace is a sophisticated one, exposed to much colour advertising, particularly through television, and that colour helps consumers in this market to distinguish one trader's products from another's.   Moreover, the description of the present application limits the extent of the rights claimed.  I note that the Registrar continues, as under the previous Act, to regard a limitation as to colour as enhancing the chance of registration of a trade mark[5]. 

[5] Cf Trade Marks Office Draft Manual of Practice & Procedure, Part 25, para 1.4.

Finally, I am prepared to see in the arrangement of the elements of the trade mark a degree of creativity.

However, despite all that, the trade mark faces the difficulty common to such marks, which was succinctly put by D.R. Shanahan in Australian Law of Trade Marks and Passing Off [6].  Speaking of course of the previous Act, he stated

[6] The Law Book Company Limited, 1990 p 117

Where the alleged trade mark involves the very shape or colouring of the goods, there will be the initial problem of deciding whether it even falls within the definition of "mark" provided by s. 6(1).  [Due to the Coca Cola decision] it is now most unlikely that the shape of the product or of its container will be regarded as a mark, but a colour scheme may constitute a mark, as perhaps may some aspect of shape that might be regarded as something "additional" to the product or container.  However, to be registrable the mark must also be distinctive, and prima facie at least such features may appear to have no trade mark significance, particularly when at all decorative or functional in nature. (Emphasis added.)

It is because the features of the proposed trade mark do not appear, at first instance, to have trade mark significance that I consider that the trade mark does not have sufficient inherent adaptation to distinguish for prima facie acceptance, even when allowance is made for the lower standard set by the 1995 Act and for the differences between the definitions of a trade mark in the two Acts.  I am therefore unable to decide the matter on the basis of the extent of inherent adaptation to distinguish alone.

Mr Maxwell, in his submissions, strongly argued that if I came to this conclusion, it was the provisions of s 41(5) rather than s 41(6) that should be applied to a consideration of the evidence. I agree with him. Although the features of the trade mark appear at first instance and out of any context of use to be merely decorative, and although I recognise that they are also functional in the sense that these markings serve to differentiate a team (and its supporters) from other teams (and their supporters), I nevertheless do not consider that the trade mark falls within the scope of "trade marks that are not inherently adapted to distinguish goods or services".

Devices and colours that are applied to clothing as part of a uniform or livery appear to me to constitute a special case, because, unlike other kinds of decoration on clothing, their well-recognised purpose is to distinguish and to indicate a connection with the source of the devices and colours.  In this respect, I refer to two relevant entries in the Oxford English Dictionary , 2^nd Edition:

LIVERY

A suit of clothes, formerly sometimes a badge or cognizance (e.g. a collar or hood), bestowed by a person upon his retainers or servants and serving as a token by which they may be recognized; in wider sense, a distinctive badge or suit worn by a servant or official, a member of a company, etc.;  formerly, the uniform of a soldier or sailor. In generalized use, the distinctive uniform style of dress worn by a person’s servants, etc. (now only men-servants). in livery: wearing a particular livery. out of livery: (of a servant) not dressed in livery; wearing plain clothes.  In early use also, a set of distinctive badges or suits; in first quot. = garments, clothes.

UNIFORM

A distinctive dress of uniform cut, materials, and colour worn by all the members of a particular naval, military, or other force to which it is recognized as properly belonging and peculiar.

Moreover, it is a matter of common knowledge, I think, that such devices and colours, particularly if somewhat unusual in their arrangement and combination, are not freely available for others to use in the course of trade.  Use in the course of trade by anyone other than the originating body responsible for the team would, Mr Maxwell submitted, be rather likely to suggest an improper motive.

Adaptation to distinguish is a well-established concept in trade mark law.  Its interpretation was conveniently summarised by Kitto, J in F. H Faulding & Son v Imperial Chemical Industries of Australia and New Zealand Ltd [7] . His Honour's words, slightly changed to reflect the circumstances of this application, were:

[7] (1965) 112 CLR 537 at 555

...the question to be asked in order to test whether a [trade mark] is adapted to distinguish one trader's goods from the goods of all others is whether the [trade mark] is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods: Registrar of Trade Marks v W. & G. Du Cros Ltd; Eclipse Sleep Products Inc. v Registrar of Trade Marks; Clark Equipment Co v Registrar of Trade Marks.

Because it is a combination of devices and colours which are not entirely commonplace, the proposed trade mark is not devoid of inherent adaptation to distinguish. So far as I can see, it is not a sign which other traders will desire to use in the ordinary course of their business. 

The applicant's previously registered trade mark, No 713912, to which I have referred earlier, proceeded to acceptance under the provisions of s 41(5). That registration should be regarded, I believe, as constituting a relevant precedent. In my view, the present application should be considered under that same provision, because both the application and the registration appear to me to have a similar degree of inherent adaptation to distinguish. While the state of the register does not bind the registrar,[8] still less any court,[9] to follow a particular course of action, it is appropriate that the registrar, as an administrator, should strive for consistency[10].

[8] See, for example, Lazarus Rosenfeld Pty Ltd's Appn (1941) 11 AOJP 1047

[9] See, for example, British Sugar Plc v James Robertson & Sons Ltd [1966] RPC 281 at 305

[10] See Shanahan, supra, at page 59.  I also note the comment made in this regard by Wilcox, J in Ocean Spray Cranberries, supra, at paragraph 35.

I accept Mr Maxwell's submission that sport is a business and that the marketing of clothing carrying a team's identifying colours and devices is a major source of income for sporting organisations.  This submission accords with what is, I believe, common knowledge.  It is also borne out by the evidence, which shows very substantial sales of goods bearing the trade mark.

In this regard, it is perhaps appropriate that I mention a matter which led to some difficulty prior to the hearing.  It is clear from the evidence that the trade mark is used in association with other trade marks.  Some are trade marks of the applicant, but not all.  It is also used in conjunction with the trade marks of other entities.  Exhibit BJT4 to Selwood 1 bears a logo incorporating the applicant's well-known wallaby device trade mark, which appears near the stars.  The well-known trademark vodafone, with its logo, is emblazoned across the front of the garment bearing the proposed trade mark. The same garment also carries the well-known trade mark reebok, which appears on the sewn-in label, again on the front of the garment, and again on a black label attached to the front of the garment  near the hem.  This last label bears additional information.  It shows the registered trade mark Wallabies, together with a logo based on the same ARUL wallaby device, and the words OFFICIAL MERCHANDISE.

The examiner found this plethora of trade marks confusing, and possibly indicating a connection in the course of trade with Reebok and Vodafone, rather than with ARUL.  However, the evidence makes clear that the connections with these entities do not undermine the applicant's case. 

A manufacturer, in this case Reebok, is authorised  by the applicant to use the trade  mark and produces the goods under licence.  However, the original source and authorship of the trade mark is acknowledged on the garments by the licensee.  Such use is trade mark use by the owner of the trade mark in terms of Section 8 (Definitions of authorised user and authorised use) of the Act.

The evidence also makes clear that Vodafone was, at the time, the official sponsor of the ARUL.  What is shown by the association of the trade marks of a sponsor, a clothing manufacturer, and ARUL on the one garment is the fact that this sporting organisation, like so many, relies upon income from sales of garments made under its aegis and bearing its trade marks, and upon subsidies from commercial entities wishing to associate themselves with the glory of the game, by which they gain exposure for their own trade marks and goodwill for their products.  This is a commonplace situation and, in my observation, well-understood in the marketplace.  The separate identity of each, and its connection with its own trade mark or marks, is preserved in that association and in use on the goods offered for sale and bearing the trade marks. 

It is therefore my view that the applicant has satisfied the requirement for there to be a "connexion in the course of trade", as defined in Aristoc Ltd v Rysta Ltd[11] and applied in W.D. & H.O. Wills (Aust) Ltd v Rothmans Ltd[12] , with the proposed trade mark, despite the presence of the trade marks of other commercial entities on the goods when in use.

[11] (1945) 62 RPC 65

[12] (1956) 94 CLR 182

I am satisfied from all the above that, because of the combined effect of the extent to which the trade mark is inherently adapted to distinguish the designated goods, the evidence of very substantial use and promotion of the trade mark, and the circumstances peculiar to the trade mark, (that is, the nature of team identifiers and the characteristics of trade by major sporting entities), the trade mark distinguishes the applicant's goods from the goods of others.

Decision

Having found that the trade mark distinguishes the goods in terms of s 41(5)(b), I find that there is now no reason in terms of s 33 to reject the application. I therefore accept the trade mark for the range of goods sought.

Arminel Ryan
Senior Examiner

18 October 2000