Australiana Group Holdings Pty Ltd

[2003] ATMO 32

TRADE MARKS ACT 1995

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

Re:Trade mark application 808736 (32) - Bottle Shape - filed in the name of Australiana Group Holdings Pty Ltd.

Background

1. In this matter, Australiana Group Holdings Pty Ltd, ('the applicant') filed application on 29 September 1999 ('the priority date') to register the bottle shape appearing below in respect of a specification of goods which now read, "Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages".

1. The horizontal lines on the above rendition of the bottle do not appear on the bottle as it appears in use and appear to have been added by the drafter to define the shape.  A letter from the solicitors who act for the applicant shows perspectives of the bottle appearing substantially as above but without the horizontal lines which appear above.

2. In the examiner's report, the examiner stated that grounds for rejection existed in terms of subsection 41(6) of the Trade Marks Act 1995, ('the Act') as the shape is one that other traders might wish to use in respect of their similar goods.

3. After some correspondence with the examiner in the course of which the applicant filed evidence of the use of the sign and the examiner did not resile from her position, the applicant requested a hearing.

4. As a delegate of the Registrar of Trade Marks, I heard the matter in Melbourne on 20 February 2003.  Mr James Samargis of Cornwall Stodart, the applicant's solicitors, represented the applicant.

5. Mr Samargis focussed in his arguments on the applicant's view that there is sufficient inherent adaptation to distinguish within the bottle shape to bring my considerations within the provisions of subsection 41(5) of the Act.

   Section 41

   Statutory background

6. Section 41 of the Act provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:For applicant and predecessor in title see section 6.

   Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   (2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   Note:For goods of a person and services of a person see section 6.

   (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account 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.

   (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:For goods of a person and services of a person see section 6.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6)If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)  the time of production of goods or of the rendering of services.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

7. The structure and operation of section 41 was analyzed by Branson J in Blount Inc v Registrar of Trade Marks [1998] 440 FCA (1 May 1998). More recently, the application of section 41 to shape marks was considered by French, Lindgren and Stone JJ in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273

8. In Blount,  Branson J said:

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered ("the designated goods or services"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account 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 taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

   10. Branson J also stated, concerning section 33(1) and the 'presumption of registrability' of trade marks:

   The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken into account 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, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so "establish" by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.

   It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant's goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.

   11.     In the light of the above, my consideration of the issue starts at subsection 41(3): I am to consider 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.  In Kenman, above, Stone J referred to the test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 and posited the test in relation to shapes thus (applied to the Bug shape):

   Applied here, the question is whether, if the bug shape were to be registered as a trade mark, other persons trading in confectionery and "being actuated only by proper motives" would think of this shape and want to use it connection with their goods in any manner that would infringe the appellant's trade mark. That question must be answered bearing in mind that infringement would include using as a trade mark in relation to confectionery, not only the bug shape but also any "sign that is substantially identical with, or deceptively similar to" the bug shape; s 120 of the 1995 Act. A subsidiary and difficult question is whether the appellant's bug shape, by virtue of it being recognisable as a "bug", has associations that deprive it of the inherent capacity to distinguish the appellant's confectionery from that of other traders.

   12.     This test must, of course, be read in the context of the caution sounded by French   J in Kenman, at para 43:

   The Working Party also recommended that signs not be registered which consist "... wholly or principally of elements, such as shape, which necessarily result from the nature of the specified goods or which are necessary to obtain a technical result" (Rec 6A(8) p 48). This was reflected in s 39 of the short-lived 1994 version of the Act. However, as Stone J observes, that provision, which does not appear in the 1995 Act, would have been rendered otiose by s 41(2) which requires that an application for registration of a trade mark be rejected if the trade mark is not capable of distinguishing the applicant's goods or services from those of other traders. A shape dictated by the nature of or function of the goods would not be capable of distinguishing between one trader and another in those goods.

   Application to the bottle shape

   13.     The bottle, the shape of which is the subject of this application, is a 250 ml bottle which holds the fruit juice that the applicant makes.  The target market for this fruit juice is children.  In a statutory declaration made on 22 June 2001, Frank Karan, a director of the applicant states at paragraph 13 of the declaration:

   In about May 1999, I set about designing a bottle that I believed needed certain features, namely, to hold 250 ml of drink, have a 'pop top' lid and have a distinctive shape that would stand out in the market.  Whilst thinking about the shape, I also wanted the shape to be ergonomically designed for children's hands.  I achieved this with a contour in the bottle that was further refined with the help of plastics engineers.

   14.     It is apparent that the 'waist' on the bottle is functional: it is to enable the bottle to be gripped more easily.  Although I have remarked that this functional aspect of the bottle's shape relates to a 250 ml bottle which contains goods for children, I will, for the sake of completeness, state that this functionality would also extend to other bottle sizes.  The functionality would be apparent, for instance, if the bottle were one of 375 ml containing beer and marketed to adults - such goods are still contained within the specification of the application.

   15.     It is apparent that there are many bottles on the market with tapered waists.  Such bottles were shown to me by the applicant at the hearing: the applicant argued that the waist on its own bottle shape is different and unique.  I do not agree.  The waist on the applicant's bottle appears to me to be a straightforward design solution to improve the ergonomic performance, the 'holdability' of a bottle.  Such adaptions of bottle shapes are ones which might be needed by other traders to use in relation to their similar goods.  Indeed, the only difference between the applicant's bottle and at least one of the exhibits appears to be only its size.  Size is not a parameter which would be apparent in the registration of this sign as a trade mark.

   16.     The test in Clark Equipment, above at 514, stated by Kitto J is that the question of whether a mark is inherently adapted to distinguish must:

   "...be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and be actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

   17.     An adaptation of this test to shape marks appears within paragraph 11 of these reasons.  I consider that, as other traders have a quite obvious and legitimate need to market drinks within bottles contoured or 'waisted' for the drinkers' hands (and in fact do this), the sign which the applicant has applied to register as a trade mark lacks any inherent distinctiveness.

   18.     In accordance with the analysis of Branson J in Blount, above, the inquiry thus becomes one under subsection 41(6). It falls on the applicant to establish whether because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant. If the applicant establishes this, I am then to take the trade mark to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   19.     The applicant has not stated when it first used the sign in relation to goods.  I note that Mr Karan does state that he started the design of the bottle in May 1999 but it is not apparent from any of the three declarations on file when use of the sign started.  I would infer that use of the sign started sometime in the second half of 1999.  The priority date of the application is 29 September 1999.  It appears unlikely that the applicant used the trade mark to any large extent before application was filed.  The sign did not therefore distinguish the applicant's goods at the filing date of the application and I therefore do not take the trade mark to be capable of distinguishing the applicant's goods.

   20.     I reject application 808736.

   Ian Thompson
   Hearing Officer
   Trade Marks Hearings

   16 May 2003