Birkenstock IP GmbH

[2024] ATMO 124

TRADEMARKSACT1995

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

ReTrade Mark application numbers 2048974, 2048966, 2048979, 2048935, 2048953 and 2048960 (all 25) – Each being a Shoe (Shape) – in the name of Birkenstock IP GmbH

DELEGATE:  Nicholas Smith REPRESENTATION:             Applicant: Griffith Hack DECISION:  2024 ATMO 124

Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to grounds for rejection under section 41 of the Act – each of the marks is insufficiently adapted to distinguish the designated goods – evidence of use sufficient for some of the trade marks and insufficient for others – a subset of the

trade marks to be accepted for possible registration  

Background

1. On 6 May 2019, Birkenstock IP GmbH (‘Applicant’) applied to register the trade marks detailed below under the Trade Marks Act 1995 (Cth) (‘Act’).

Application Number:         2048935

Goods:Class 25: Soles; inner soles; shoe inserts, not for orthopaedic purposes; footwear

(‘Applicant’s Goods’)

Trade Mark:

(‘2048935

Mark’)

Endorsements:                   The Trade Mark consists of the shape of a shoe as shown

in the representations attached to the application form.

Application Number:         2048953

Goods:  Applicant’s Goods

Trade Mark:

(‘2048953

Mark’)

Endorsements:                   The Trade Mark consists of the shape of a shoe as shown

in the representations attached to the application form.

Application Number:         2048960

Goods:  Applicant’s Goods

Trade Mark:

(‘2048960

Mark’)

Endorsements:                   The Trade Mark consists of the shape of a shoe as shown

in the representations attached to the application form.

Application Number:         2048966

Goods:  Applicant’s Goods

Trade Mark:

(‘2048966

Mark’)

Endorsements:                   The Trade Mark consists of the shape of a shoe as shown

in the representations attached to the application form.

Application Number:         2048974

Goods:  Applicant’s Goods

Trade Mark:

(‘2048974

Mark’)

Endorsements:                   The Trade Mark consists of the shape of a shoe as shown

in the representations attached to the application form.

Application Number:         2048979

Goods:  Applicant’s Goods

Trade Mark:

(‘2048979

Mark’)

Endorsements:                   The Trade Mark consists of the shape of a shoe as shown

in the representations attached to the application form.

1. The trade marks sought to be registered pursuant to the applications set out above are collectively referred to as the ‘Trade Marks’.

2. The applications were duly examined under s 31 of the Act and grounds for rejection were identified by the examiner under s 41 of the Act for all the Trade Marks.

3. In the examination report, the examiner stated (paraphrased), that each of the marks consists of the shape of a particular type of footwear, which, with or without minor variations, is commonly used in relation to the Applicant’s Goods. Other traders may desire to be able to use each of the Trade Marks in connection with the Applicant’s Goods.

4. The Applicant responded to this rejection by providing further submissions in respect of each trade mark, each of which was supported by a separate declaration of use by Steffen Schaeffner, Director of Global IP of the Applicant dated 9 January 2024 (‘Schaeffner declaration’ or ‘Schaeffner declarations’ as appropriate noting that much of the evidence provided is common to each declaration) In response on 7 February 2024 this office issued a further adverse report maintaining the ground for rejection under s 41(3).

5. On 21 March 2024, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. As a delegate of the Registrar of Trade Marks I heard this matter on 4 June 2024. Emma Mitchell and Sara Pearson of Griffith Hack appeared for the Applicant. In addition, in accordance with the pre-hearing directions I had given, the Applicant filed written submissions.

1. The present matter is a hearing under s 33(4) of the Act. As noted in MHFC Holdings Pty Ltd1 as well as other decisions of the Registrar (Teraglow Pty Ltd2 and TOM Organic Pty Ltd3), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the grounds for rejection, in this case the ground for rejection under s 41. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 41 ground for rejection under the Act as it applies to the Trade Marks. In arriving at my decision, I have taken into account the material identified above as well as the oral submissions made on 4 June 2024.

2. A further relevant matter is that on 19 September 2023, a delegate of the Registrar issued an unpublished Statement of Reasons (‘Earlier Decision/Earlier Matter’) allowing the registration by the Applicant of the shape mark (‘Earlier Mark’) depicted below. While the Earlier Mark is not the same as the marks the subject of this decision, there are obvious similarities in that it is a similar shape mark sought to be registered by the Applicant for the Applicant’s Goods. Equally while the level of use of the Earlier Mark in Australia is different and greater than for any of the marks the subject of the decision, much of the evidence filed in the Earlier Matter is similar to or identical to the evidence filed in connection with the present applications. While, for the reasons outlined above, I am not bound by the Earlier Decision, noting the importance of consistency and clarity, I intend to extract parts of the Earlier Decision when relevant and if I reach a conclusion that is different to that of the Earlier Decision, will clearly explain where and why I differ.

Application Number:         2048947

Goods:  Applicant’s Goods

¹ [2016] ATMO 96, [9] (Hearing Officer Wilson).
² [2016] ATMO 32, [5] (Hearing Officer Worth).

³ [2018] ATMO 46, [5] (Hearing Officer Worth).

Trade Mark:  (‘Earlier Mark’)

Endorsements:                   The Trade Mark consists of the shape of a shoe as shown

in the representations attached to the application form.

Legislative framework

1. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.4 The date at which the Trade Marks must be assessed is the filing date, being 6 November 2019 (‘relevant date’) however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.5

   Section 41

2. Section 41 of the Act provides:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)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 (the 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.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

⁴ Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

5 Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

(3)This subsection applies to a trade mark if:

(a)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; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

(iii)any other circumstances.

Note1: 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: For goods of a person and services of a person see section 6.

Note 3: 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 (5) and 7(3) and section 8).

(5)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).

1. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks6 (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(1) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Goods] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Goods]; [that is, neither s 41(3) nor s 41(4) applies] or

(2) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Goods] from the goods or services of other persons; [that is, s 41(3) applies] or

⁶ (1998) 40 IPR 498, 505 (Branson J).

⁽³⁾     that the [Trade Mark] is to some extent inherently adapted to distinguish the [Applicant’s Goods] 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 [Applicant’s Goods]. [that is, s 41(4) applies]7

1. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

   (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

   (2)  In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon 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 goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3)  The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4)  Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5)  The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

⁷ [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).

(6)  In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7)  In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8)  Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9)  Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11)  Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as

a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].8

1. The Applicant has not submitted that any of the Trade Marks are inherently adapted to distinguish the Applicant’s Goods, rather that because each mark has unique characteristics beyond the minimum required for footwear, when considered in combination each of the marks are to some extent inherently adapted to distinguish (that is s 41(4) applies). In the Earlier Decision the unique characteristics of the Earlier Mark were set out in the following manner [at 20]:

   The Applicant concedes that there is a functional aspect to the Trade Mark which is necessary for the Goods to have commercial value and utility but argues that the features have been selected for other reasons as set out below:

   -a wide footbed and thick outer and inner sole has been chosen to create a striking ‘chunky’ aesthetic. In particular, the sole is accentuated which the Applicant contends is a unique visual feature;

   -the thickness of the straps adds to the ‘chunky’ appearance when a wide variety of straps could be chosen ranging from very thin leather string to a complete covering, any of which would meet the functional requirements of footwear;

   -the aesthetic choice to use double straps made from one piece of leather or fabric, which the Applicant claims is unique, when straps are typically separate and any number of straps could be used;

   -the use of large square buckles on the straps to exaggerate the chunky aesthetic and visual appeal of the footwear when Velcro or other fastening items could be adopted;

   -the moulded sole which includes toe bars, footbed rims and heel cups which add to the comfortable aesthetic (shown below). The Applicant submits that shoes can support the foot in other ways including, for example, (1) using various types of materials in the footbed to create padding which provides support and (2) using invisible moulding in the innersole which lies underneath layers of material;

⁸ [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

-the choice of a unique ‘squiggly’ grid pattern on the outer sole (shown below).

The Applicant acknowledges that the use of patterns on outer soles assist with grip but various shapes and patterns can be used such as simple stripes or ridges; and

-the silhouette or outline of the footwear from a top or bottom view is distinctive.

One of the aspects of the silhouette referred to by the Applicant is the fact that from a side view, it can be seen that the outer sole is patterned.

1. The delegate in the Earlier Decision, at [22] assessed the Earlier Mark’s distinctiveness as follows

   There are aspects of the Trade Mark which are common for footwear with numerous sandals available in Australia having two straps (including 2 wide straps), the use of buckles and a chunky appearance to the shoe. Although each of these features can be rendered in numerous ways, it is apparent that many traders have adopted one or more of these common features for their own footwear. However, other features such as the particular patterned sole which is evident on a side view of the footwear and the particular rendering of the deep insole are less common. The Trade Mark is a combination of all of these features and the fact that the mark contains some common elements does not prevent the combination of features from being distinctive. A shape mark which contains some common elements is no different from a word mark which contains one or more common words. The relevant question is whether the mark as a whole is capable of distinguishing the owner’s goods.

2. At [26]-[27] the delegate reached the following conclusion:

Whilst I agree with the Applicant that other traders do not need to use the exact combination of elements comprising the Trade Mark, I consider there to be some likelihood that other traders, without improper motive, will wish to use a shape so nearly resembling the Applicant’s mark.

In my opinion, the combination of features is such that the Trade Mark has some inherent adaptation to distinguish and falls for consideration under s 41(4).

1. In considering the Trade Marks, I note that of the seven distinct features identified by the Delegate as applicable to the Earlier Mark, that in combination were sufficient to provide that mark with some inherent adaption to distinguish, five of those features are replicated on all the Trade Marks before me. I note that some but not all the Trade Marks replicate the thickness of the straps that exist in the Earlier Mark. In addition, the aesthetic choice to use double straps made from one piece of leather is not repeated in all the Trade Marks. Specifically, the 2048974 Mark uses separate straps and the 2048966 and 2048979 Marks use single straps. However, to the extent that these two distinct features (the thickness of the straps and the use of double straps made from one piece of leather) are not replicated, or there are any other design choices made, the alternate design choices made for each of these marks are in my judgement as distinctive as the unreplicated features in the Earlier Mark. I conclude that, with respect to the Applicant’s Goods, the level of distinctiveness of each of the Trade Marks is similar to that of the Earlier Mark. For that reason, I do not find that any of the Trade Marks are not to any extent inherently adapted to distinguish, nor is there a basis to find that any of the Trade Marks, when evaluated as a whole, are more distinctive than the Earlier Mark. As such I conclude that each of the Trade Marks has a similar level of distinctiveness as the Earlier Mark and hence has some inherent adaption to distinguish and falls for consideration under s 41(4).

2. It is therefore necessary to consider the provisions of s 41(4) for each Trade Mark and in particular the combined effect of the use of that Trade Mark by the Applicant, the intention to continue using that Trade Mark in a similar manner, and the extent that the particular Trade Mark is inherently adapted to distinguish the Applicant’s Goods.

3. In the Earlier Decision the Delegate found that, taking into account the factors set out in s 41(4), the Earlier Mark should be registered. The Delegate reached this conclusion based on the evidence before her including the evidence of long-time use, significant promotion, celebrity endorsement and the manner in which the Earlier Mark was used. Much of the evidence of

promotion, endorsement and manner of use that was before the Delegate in the Earlier Decision is similar to the evidence that is before me here. Furthermore, I have found above that each of the Trade Marks is of a similar level of inherent distinctiveness as the Earlier Mark. I also adopt the reasoning in paragraphs [31] to [34] of the Earlier Decision set out below regarding the acquisition of reputation of a shape mark when used with a separate word mark as well as commenting on evidence of use which is similar to the evidence before me.

In the case of a word mark, this sort of longstanding use on a significant scale would often result in the owner acquiring a reputation in the trade mark. However, in the case of a shape mark, it is more difficult to attribute consumer recognition to the shape alone because invariably another mark, usually a word mark, is used with or in close proximity to the shape mark. Here, the mark BIRKENSTOCK appears on the inner sole of the footwear as well as on the buckles and ‘BIRK’ is debossed into some of the shapes of the outersole. The Applicant argues that the Goods are often promoted in a manner in which the word mark BIRKENSTOCK is only partially visible or cannot be seen at all, such as when the footwear is being worn by a model, and it is necessary to refer to the article or accompanying text to ascertain the brand and model of shoe. Further, footwear is typically sold in stores by displaying the goods rather than in a box and hence consumers are exposed to the footwear itself. The Applicant refers to following comments of the delegate in Cadbury Schweppes Pty Limited, Effem Foods Pty Ltd v Societe des Produits Nestle SA:

…whether or not embossing forms part of a shape trade mark in use will depend on the relative size of the embossing and the relative size and strength as a trade mark of the shape on which it is embossed. This view is a logical corollary of the provisions of subsection 7(1) of the [TMA] which provides:

If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

For example, a bottle might be a shape that is inherently capable of distinguishing the goods of a trader and have on it an unrelated embossed trade mark which is independent of the shape and otherwise also inherently capable of distinguishing the goods of the owner. There, there are no problems. However, a bottle shape which is not inherently capable of distinguishing the goods it contains and has a distinctive trade mark embossed onto it is perceived as nothing more than a carrier for the embossed trade mark and a container for goods. It may be difficult for the second bottle shape per se to gain distinctiveness in fact through use but the bottle

itself might yet, prima facie, achieve registration if the embossing on it is inherently capable of distinguishing.9

The Applicant also notes that the fact a coffee plunger was sold by displaying the product outside of the packaging was a significant consideration in finding that coffee plunger had acquired secondary reputation in Peter Bodum A/S v DKSH Australia Pty Ltd (‘Bodum’).10 The type of advertising undertaken of the coffee plunger in this case is not dissimilar to the advertising undertaken by the Applicant in that the image of the Goods is featured such that the relevant word mark cannot be seen or is barely visible on the product itself but does appear somewhere in close proximity to the product image. It was further found by the primary judge in Bodum11 that although other traders’ ‘copycat’ coffee plungers had been available from time to time, this had not diluted Bodum’s reputation.

In any event, the Applicant contends that multiple marks are commonly used in relation to goods and a shape can be recognised as indicating the goods of one trader even if the products also feature a word mark. By way of example, the Applicant notes the shape of the Coca-Cola bottle and the Crocs shoe shape which is the subject of registration 1823877 which shape qualified for registration under s 41(4) despite the word mark CROCS appearing on the footwear in use.

The cases recognise that the get-up, shape or other features of a product can acquire a reputation independently of trade names used in connection with the goods.12 Furthermore, brand recognition, and hence reputation, can be acquired through indirect advertising.13…

1. However, a key difference between the evidence of use of the Earlier Mark and the evidence of use of each of the Trade Marks is the level of sales and the date of first use in Australia. The 2048974 Mark was first used in Australia in 2008, the 2048979 and 2048935 Marks were first used in 2002 and the remaining Trade Marks have been used in Australia since the early 1990s, similar to the Earlier Mark. Notwithstanding the later commencement date for the 2048974, 2048979 and 2048935 Marks I am satisfied that each of the Trade Marks had been in use in Australia for a substantial period at the relevant date.

⁹ [2003] ATMO 74, [17]-[18] (Hearing Officer I. Thompson).
¹⁰ [2011] FCAFC 98 (Greenwood and Tracey JJ).

¹¹ Ibid, [196].

¹² Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136 (Sundberg, Emmett and Hely JJ), [41]; Reckitt & Colman Products Ltd v Borden Inc. [1990] RPC 341; Bodum, n10, [185].

¹³ Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181; 171 FCR 579, [60]-
[64] (Finkelstein J); Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252,

[336] and [438] (Dodds-Streeton J); Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 [84(h)] (O’Bryan J).

1. A more significant difference is in the level of sales of footwear under each of the Trade Marks between 2012 and the relevant date. This is ultimately the clearest measurement of the different level of use of each of the Trade Marks compared with the Earlier Mark. The exact figures are confidential, but it is apparent that sales in that seven-year period of the Applicant’s Goods bearing the Earlier Mark were over twice that of any of the Applicant’s Goods in the shape of any of the Trade Marks (counted separately). Furthermore, sales of footwear bearing the 2048935 and 2048960 Marks were very limited during that time. There were significant sales of footwear in the shape of the remaining Trade Marks between 2012 and 2019, but significantly fewer units than those sold under the Earlier Mark.

2. Given these factors, including level of sales, distinctiveness, length and manner of use and level of advertising and promotion I am not persuaded, noting the presumption of registrability, that the ground of rejection at s 41(4) applies for the 2048974, 2048966, 2048979 or 2048953 Marks; namely I am not satisfied that these trade marks do not and will not distinguish Applicant’s Goods as being those of the Applicant. Rather given the significant ongoing use of each of these marks and the level of distinctiveness in each of the 2048974, 2048966, 2048979 or 2048953 Marks, the presumption of registrability should apply and the applications to register the 2048974, 2048966, 2048979 or 2048953 Marks should not be rejected under s 41(4) of the Act.

3. I do not reach the same conclusion with respect to the 2048935 and 2048960 Marks. While there has been a significant period of use in Australia and there is some advertising of footwear by reference to these marks (mostly in the Applicant’s catalogues, websites and sales and social media) the level of sales (in particular the level of sales of footwear by reference to the 2048935 Mark, which over a seven-year period verges on de minimis) are not sufficient to support a finding that either of these Trade Marks distinguished the Applicant’s Goods at the relevant date. There is also no evidence before me that the extent of the Applicant’s intended use of the 2048935 Mark or the 2048960 would result in those trade marks becoming distinctive. I am satisfied that these marks do not and will not distinguish Applicant’s Goods as being those of the Applicant. I find that the applications to register the 2048935 and 2048960 Marks should be rejected pursuant to s 41(4) of the Act).

Decision

1. Section 33 of the Act relevantly provides:

33 Application accepted or rejected

(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 under this Act for rejecting it.

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

(3)If the Registrar is satisfied that:

(a)    the application has not been made in accordance with this Act; or

(b)    there are grounds under this Act for rejecting it; the Registrar must reject the application.

1. As I am not satisfied that there are grounds for rejection under s 41 of the Act, I accept the applications to register the 2048974, 2048966, 2048979 or 2048953 Marks for the Applicant’s Goods subject to the relevant endorsement/s.

2. As I am satisfied that there is a ground for rejection under s 41(4) of the Act, I reject the applications to register the 2048935 and 2048960 Marks.

Nicholas Smith Hearing Officer

Delegate of the Registrar of Trade Marks 9 July 2024