Bioengineering AG

[2014] ATMO 14

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1479055 (6, 7, 9) (International registration number 568734) - BIONENGINEERING (STYLISED)- in the name of Bioengineering AG.

Delegate:	Hearing Officer: Nicole Worth
Representation:	Holder: Siobhan Ryan of Counsel, instructed by Sally Shrimpton of Griffith Hack Patent & Trade Mark Attorneys
Decision:	2014 ATMO 14 Ex parte proceedings – section 41 - trade mark not capable of distinguishing Holder’s goods – proposed disclaimer does not permit registration – extension of protection to Australia refused.

Background

1. Bioengineering AG (‘the Holder’) has requested protection in Australia for the following International Registration Designating Australia (‘IRDA’):

Application Number:             1479055 (International Registration 568734).

Priority Date:    21 November 2011[1]

Goods:Class 6: Metal valves.

Class 7: Agitators, mixing machines, filters (parts of machines).

Class 9: Machines and apparatus as well as their spare parts for biotechnological and chemical processes; fermenting installations, sensors, installations for taking samples, electrical apparatus for measuring, checking, recording and control and their spare parts for biotechnological and chemical processes

Trade Mark:              

(‘the Trade Mark’)

[1] I note that the application form claims a Convention priority date of 29 November 1990 based upon a Swiss registration, however such claims must be made within 6 months of the application for registration in the Convention country (regulation 17A.15 of the Trade Marks Regulations 1995).

1. The IRDA was examined and a Notice of Provisional Refusal in respect of all of the goods was issued. The ground for rejecting the IRDA was raised under the provisions of subsection 41(5)[2] of the Trade Marks Act 1995 (‘the Act’), in the following terms:

   Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark is, or has as its main feature, BIOENGINEERING.

   Bioengineering is the application of the principles of engineering to any of the biological or medical sciences. When applied to the goods claim, the trade mark indicates the goods are used for bioengineering applications. Other traders should be able to use BIOENGINEERING in connection with goods or services similar to yours.

   Please note, the way the trade mark is represented is not significant enough to alter the nature of your trade mark when viewed as a whole because the meaning and pronunciation of the word remains the same. The main feature of your trade mark remains the term BIOENGINEERING.

   [2] Section 41 was repealed and replaced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into effect on 15 April 2013. Given the filing date of the IRDA predates the change to section 41, it is the earlier form of section 41 that applies to this matter. See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50. Regulation 17A.28 applies the provisions of section 41 to IRDAs.

2. The Holder nominated Griffith Hack Patent and Trade Mark Attorneys as its address for service in Australia, who provided written submissions on the Holder’s behalf. The examiner maintained the ground for rejection in a further two reports, after which the Holder requested that the matter be heard.

3. I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 12 December 2013. Siobhan Ryan, of Counsel, instructed by Sally Shrimpton of Griffith Hack, prepared written submissions and spoke at the hearing on the Holder’s behalf.

Section 41

1. Section 41, as at the priority date, relevantly provided:

Trade mark not distinguishing applicant's goods or services

41.(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).

1. The operation of section 41 was analysed by Branson J in Blount Inc v Registrar of Trade Marks (‘Michigan’)[3]:

   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.

   [3] [1998] FCA 440; (1998) 40 IPR 498, at 504.

2. It is for me to arrive, then, at one of the above conclusions taking into account the inherent adaptation of the Trade Mark to distinguish the Holder’s goods from those of other traders. Inherent adaptation to distinguish is “something which depends on the nature of the trade mark itself”[4] and remains unaffected by either use or intended use. The test of a trade mark’s inherent adaptation to distinguish was described by Lord Parker of Waddington, in Registrar of Trade Marks v W and G Du Cros Ltd (1913) AC 624 at 634, 635 cited by Kitto J in Michigan, as:

   The applicant’s chance of success in this respect (ie in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend on whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.

   [4] Burger King Corp v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417.

3. The Holder submitted that the Trade Mark was inherently adapted to distinguish its goods and that it therefore qualified for registration pursuant to subsection 41(3). The main thrust of its argument is evident in the following submission:

   The Trade Mark comprises a striking and unusual combination of letters and graphic devices. Although an assumption has been made by the Office by the Examiner [sic] that together these elements signify the word “bioengineering”, that is not at all clear from the face of the mark as applied for.

   On first glance, the marks reads (nonsensically) as B  OENG  NEER  NG. This nonsense word is not apt for ordinary description of anything and would not be used by other traders without improper motives: Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513. The remainder of the mark consists of an artful arrangement of dashes and dots which, on closer inspection, could complete the word “BiOENGiNEERiNG”.

   It is submitted that the combined effect of the letters and graphics in this instance imbues the mark with sufficient inherent distinctiveness to distinguish the designated goods from those of other traders and thereby qualified it for acceptance under 41(3). It is well accepted that a mark’s capacity to distinguish requires a consideration of the mark as a whole: Diamond T Motor Car Co’s Ltd Application (1921) 28 RPC 373 at 380.

4. The Holder also submitted that, if necessary, it would consent to the entry of the disclaimer “No claim is made to the exclusive right to use ‘bioengineering’ apart from the mark as shown”.

5. The ordinary meaning of the word BIOENGINEERING is, according to the Oxford English Dictionary[5], “the application to biological processes of techniques derived from engineering; (also) the use of any advanced technology, esp. genetic engineering, to alter or augment biological systems and materials; biotechnology”. The ordinary word is therefore likely to be one that other traders would think of and want to use to describe or refer to the purpose of their goods: namely, that their valves, agitators, machines, apparatus and so on are for use in applying engineering techniques to biological processes, or for using advanced technology to alter or augment biological systems and materials.

   [5] Online edition, © 2014 Oxford University Press.

6. The question is therefore whether the stylisation of the Trade Mark renders it inherently adapted to distinguish the Holder’s goods from those of other traders, notwithstanding the ordinary meaning of BIOENGINEERING.

7. I consider that the contrasting stylisation of the lower case letter “i” imbues the Trade Mark with a degree of distinctiveness. The strokes and dots of the letters “i” are solid whereas the remaining letters are outlined. Additionally the gap between the strokes and the dots of the letters “i” is larger than usual, such that the dots are placed well above the horizon of the remaining letters. It is therefore possible that, at first glance, the Trade Mark might be seen to incorporate dashes and dots as graphical elements. Nonetheless I consider such an impression, if made, is unlikely to be any more than fleeting. Very quickly the reader recognises that despite their stylisation the dashes and dots comprise the letter “i” by virtue of their placement amongst the other letters, and that the word is BIOENGINEERING.

8. The letter “i” is commonly presented in a special or particular manner in brands and trade marks. The Register of Trade Marks contains a wealth of such examples, a short selection of which is below:

Given their placement in the words within which they appear and the generally vertical alignment of the characters representing them, the letters “i” are readily discernible despite being in forms which, in isolation, would not necessarily be recognised as “i”.

1. Taking into account the simplicity of the stylisation of the mark at hand, and the frequency with which the letter “i” is presented in a special or particular manner, I consider it likely that other traders will, in good faith, desire to use a mark nearly resembling the Trade Mark. Accordingly, whilst I consider that that the Trade Mark has a degree of inherent adaptation to distinguish the Holder’s goods, I am not satisfied that it is capable, on that basis alone, of so distinguishing the Holder’s goods from those of other traders.

2. Having considered the extent of inherent adaptation to distinguish in accordance with subsection 41(3), 41(4) then directs me to consider the provisions of 41(5) (or, if it were applicable, 41(6)). The Holder has not provided any evidence of use, intended use or any other circumstances to support the application of subsection 41(5). It did however, as stated previously, propose the entry of a limitation disclaiming the exclusive use of the word BIOENGINEERING apart from the mark as shown. Section 74 of the Act provides for such disclaimers.

3. I do not consider that the entry of the disclaimer would make registration of the Trade Mark appropriate. The Holder would not, in any event, be entitled to the exclusive use of the word BIOENGINEERING. Registration is for a trade mark as a whole. Additionally I note that Lee J, in Bausch & Lomb v Registrar of Trade Marks[6], considered the effect of a disclaimer upon the distinctiveness of a trade mark and commented:

   It seems to me that whether a word is registrable or not is a matter that must first be determined in accordance with the principles laid down in regard to the registration of trade marks, and a word which does not pass the tests established by those principles ought not to be registered. Disclaimer undoubtedly has a place in registration…but it is not a device to be used to permit registration of a word that should be regarded as unregistrable.

   [6] 42 FLR 459; (1980) 28 ALR 537.

4. Accordingly I am not persuaded that registration should be permitted on the basis of the proposed disclaimer.

Decision

1. Regulation 17A.24 provides:

   17A.24 Final decision on examination

   (1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

   (a)   it is not in accordance with this Division; or

   (b)   there are grounds for rejecting it.

   (2)The Registrar may accept the IRDA subject to conditions or limitations.

   (3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   (a)   it is not in accordance with this Division; or

   (b)   there are grounds for rejecting it, in whole or in part.

2. I refuse to extend protection in Australia to application 1479055 (International Registration 568734) in respect of all of the goods listed in the IRDA.

Nicole Worth
Hearing Officer
Trade Marks Hearings
21 February 2014