Blu-Ray Disc Association

[2011] ATMO 51

TRADE MARKS ACT 1995

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

Re:Trade Mark Application number 1232812(9) (International Registration Designating Australia 955774A) - BLU-RAY- in the name of Blu-ray Disc Association.

Delegate:

Heath Wilson.

Representation:

Holder: Celia Davies of Freehills Patent and Trade Mark Attorneys.

Decision:

2011 ATMO 51

Ex parte – section 41(5) – inherent adaptation to distinguish at filing date - “generic” trade marks – evidence insufficient - IRDA protection not extended to Australia.

Background  

1. On 21 December 2007, Koninklijke Philips Electronic N.V. applied to extend the protection to Australia of International Registration Designating Australia (‘IRDA’) number 955774A: “BLU-RAY” for the following goods:

   Class 9: Optical and magneto-optical disc players and recorders for audio, video and computer data; blank optical and magneto-optical discs, recorded optical and magneto-optical discs featuring music, image, text, data, still images and motion pictures; television apparatus; video cameras; digital cameras; personal computers

2. The application was examined under section 31 of the Trade Marks Act 1995 (‘the Act’) on 16 May 2008 and a Notification of Provisional Refusal was issued in respect of all the goods claimed, raising grounds for rejection under the provisions of subsection 41(5). The examiner’s primary objection was that the trade mark had a limited inherent capacity to distinguish its goods from those of other traders because: “BLU-RAY is the name of a large capacity optical disc format that operates with a high frequency blue-violet laser to enable recording, rewriting and play-back of high definition video as well as storing large amounts of data.”

3. The primary objection under subsection 41(5) was not that Blu-ray technology involves the use of a blue-coloured laser (or a “blue ray”) to play back video or data, but that the term BLU-RAY, due to the marketing and use by traders and the public since it was first adopted, had become the ordinary description of a feature of the goods, or of the goods themselves.

4. The subsequent responses from the Holder’s Australian attorneys did not satisfy the examiner that the objection should be withdrawn. After the examiner’s third report on 17 February 2010, the attorney for the Holder requested a hearing pending the examiner’s decision on whether to maintain the objection. I note that the ownership of the trade mark was changed to the Blu-ray Disc Association (‘the Holder’) on 14 October 2010.

5. A fourth examiner’s report was generated on 18 January 2011 maintaining the section 41(5) ground as the examiner remained unconvinced by either the attorney’s arguments regarding BLU-RAY’s inherent adaptation to distinguish or by the contents of the declaration of Roel Kramer (President of the Holder) dated 15 December 2010 with exhibits RK-1 to RK-4 (‘the Kramer declaration’).

6. Subsequently, the Holder produced further evidence in the form of a statutory declaration made by Ms Celia Davies (attorney for the Holder) dated 3 March 2011 with attached exhibits CJD-1 to CJD-6 (‘the Davies declaration’). This declaration was not before the examiner, and has been submitted for consideration in this decision along with the previous evidence and submissions.   

7. On 15 March 2011, I heard the matter in Canberra as a delegate of the Registrar of Trade Marks. Ms Celia Davies of Freehills, Patent and Trade Mark Attorneys appeared on behalf of the Holder.

The Law

1. Section 17 of the Act defines a trade mark as:

   [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.

2. Section 41 of the Act relevantly provides:

   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).

Reasons

‘Inherently Adapted to Distinguish’

1. In the case of F.H. Faulding & Son Ltd[1] Justice Kitto said:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   [1] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555.

2. Subsection 41(3) of the Act clearly states that in deciding subsection 41(2), “the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish...” Subsections 41(3) to (6) of the Act “govern entirely”[2] the process by which the subsection 41(2) is made out or negatived.[3]

   [2] Blount v Registrar of Trade Marks (1998) 40 IPR 498

   [3] Finn J in Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 209 ALR 93 at [6].

3. The primary submissions from Ms Davies went to the Holder’s claim that BLU-RAY was inherently adapted to distinguish its claimed goods under subsection 41(3). The first issue in deciding on that claim concerns the relevant date for determining whether or not the trade mark had the capacity to distinguish. Ms Davies referred to the case of Blount Inc v Registrar of Trade Marks[4] (‘Oregon’) in support of the proposition that the relevant date must be the date of filing (in this case, 21 December 2007).  

   [4] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 and also Arnott Biscuits Ltd’s Application (1998) 42 IPR 218.

4. The only reference to the filing date in section 41 appears under subsection 41(6) relating to the requirement that the use of the trade mark occur before that date. Justice Branson in the Oregon decision also referred to that requirement under subsection 41(6) when she discussed “the extent to which the applicant has used the trade mark before the filing date of the application.” However, the elements of 41(6) do not become relevant until a determination under s41(3) has been made.

5. Both subsections 41(3) and 41(5) are framed in the present tense and make no reference to the filing date. When a Registrar’s delegate is unable to answer the question of whether the trade mark has an inherent adaptation to distinguish, either subsection 41(5) or 41(6) then become relevant. Once that happens, a determination under subsection 41(5) may contemplate use and/or intended use occurring after the filing date.

6. Justice Kitto in Southern Cross Refrigerating Co[5] noted that “The rights of the parties are to be determined as at the lodgement date” and in Sports Warehouse Inc v Fry Consulting Pty Ltd[6] Kenny J stated that:

   Whether or not the mark is inherently adapted to distinguish the designated services is to be considered objectively as at the lodgement date… 

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [at 595].

   [6] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664 [at 75].

7. The focus at this point is on the trade mark itself and not whether other traders would wish to use the sign and find themselves precluded from doing so due to its registration. It is true that the required capability to distinguish must be possessed by the trade mark at the priority date.[7] and in Burger King Corp v Registrar of Trade Marks[8]:

   Inherent adaptability is something which depends on the nature of the trade mark itself …and therefore is not something that can be acquired… the inherent nature of the trade mark itself cannot be changed by use or otherwise. 

   [7] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (Supra) [at 30].

   [8] Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417 at 424.

8. Ms Davies submits that references to current use of BLU-RAY (or use during the examination stage) are therefore irrelevant to the question of inherent distinctiveness under subsection 41(3). While inherent adaptation is determined as at the filing date, I do not believe it follows that later events are entirely irrelevant to the determination. The capability of a sign to distinguish under subsection 41(3) and (5) has been described as a “fitness for a future role”[9]. In addition, Justice Sundberg made it clear in Chocolaterie Guylian N.V. v Registrar of Trade Marks[10] that:

   In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the “evaluative judgment” (see French J in Kenman Kandy [2002] FCAFC 273; 122 FCR 494 at [47]) required under s 41(3).

   [9] Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 586.

   [10] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [at 54]

9. Evidence of subsequent use is therefore admissible, but only to the extent that it supports an inference that the trade mark was capable of distinguishing at the priority date. The evidence would not be relevant to subsection 41(3) if all it demonstrated was a capacity to acquire its distinctiveness in the future, or that the Australian public has since been educated to view the mark as a ‘badge of origin’. That evidence is more appropriate for the application of subsection 41(5).

10. Similarly, if a trade mark has become less distinctive over time, this subsequent use should also not be ignored. Descriptive use of the trade mark after filing would be of assistance in resolving the issue of whether there existed a limited inherent adaptation to distinguish at the lodgement date.

11. General authority for taking into account post-filing events is not new. In Conde Nast Publications Pty Ltd v Virginia Taylor[11] Burchett J made the observation that:

    …it is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.

    [11] Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 509).

12. Similarly, in relation to the intention to use a trade mark, the Full Federal Court in Food Channel[12] found that while that intention was determined at the date of filing, “use (or non use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application.”

    [12] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [at 74].

13. As with the above cases, later evidence of use has limited application for subsection 41(3) and should be approached with caution. If (for example) a trade mark was clearly inherently adapted to distinguish at the priority date and only through its later use was it revealed to be descriptive, that evidence would be irrelevant for the purposes of the assessment under subsection 41(3). However, that is not the case here. The examiner of this application was unable to decide the question of whether the trade mark had the capability to distinguish the claimed goods. I am satisfied that this approach was appropriate for the following reasons.

A ‘Generic’ Trade Mark

1. While BLU-RAY is not yet a registered trade mark in Australia, it is worth noting that section 24 of the Act provides that “if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article…” then the registered owner does not have any exclusive rights in relation to the use of the sign. Subsection 72(1) provides that the ‘date of registration’ is the filing date of the application.

2. I accept that BLU-RAY was a coined or invented expression when first adopted between 2002 and 2004 and that it may have had a capacity to distinguish its goods at that time. Around three to five years later, the Holder applied for the extension of the trade marks protection to Australia. In the interim, a number of factors have influenced the general perception of BLU-RAY as a trade mark.

3. The Holder was founded in 2004 and consisted of the founders of the BLU-RAY optical disc format technology and voluntary members. The trade mark was first officially used in Australia in November 2006. In one of the articles exhibited to the Davies declaration, there is reference to the high definition DVD format war in Australia between Blu-ray disc and Toshiba’s HD-DVD format. During this period there was a rapid expansion of the Holder’s marketing and sales. BLU-Ray was ultimately successful and production of HD-DVD players and discs ceased production in around February 2008 making BLU-RAY the name of the only high definition DVD format in Australia.  

4. There have been a number of decisions in the past where a proprietor’s monopoly in a product led to a situation where the word used on that product became its name and therefore was incapable of being registered.[13] This is the obstacle that the Holder faces. In Johnson & Johnson Australia v Sterling Pharmaceuticals,[14] the Full Federal Court affirmed:

   The submission of the respondent that the word “Caplets” is used “as a descriptor” contains within it the hidden premise that a mark cannot be used as a trade mark if it is also used in a descriptive way. That premise is incorrect both as a matter of construction of the Act and as a matter of authority …

   The word “Caplets”, like the word “Vapo Rub” considered by the Privy Council in De Cordova v Vick Chemical Co, clearly has a descriptive element. It is obviously an amalgam of two ordinary English words “capsule” and “tablet”, and was no doubt chosen for the purpose of suggesting to the reader the characteristics of the tablets contained in the applicant's packaged products.

   It is true that the word has a capacity to pass into the language as a generic word, but it has not so far done so.

   [13] See (Siegert v Findlater (1878) 7 Ch. D. 801 ('Angostura Bitters'); Linoleum Manufacturing Co v Nairn (1878) 7 Ch. D 834 ('Linoleum'); Shredded Wheat Co Ltd v Kellogg Co (G.B.) (1940) 57 RPC 137 ('Shredded Wheat'); Portagram Radio Electrical Company Limited's Appn. (1952) 69 RPC 241 ('Portagram'); James A Jobling Co Ltd v James McEwan & Co Pty Ltd [1933] V.L.R. 168 ('Pyrex'); Elliott Optical Company Limited's Appn. (1952) 69 RPC 169 ('Synoptophore'); New York Yacht Club's Appn (1987) AIPC 90-399 ('America's Cup'); Burberrys v J.C. Cording & Co Ltd (1909) 26 RPC 693 ('Slip-on')).

   [14] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 [at 29-30].

5. It is possible for a trade mark to perform more than one function but it must still operate as a trade mark as found in Cheezy Twists[15]:

   It is well established that there is not a true dichotomy between words capable of being used as a badge of trade origin and words that are descriptive: see Johnson & Johnson at 347 per Gummow J and at 339 per Lockhart J.

   [15] Aldi Stores Ltd Partnership v Frito Lay Trading Company GmbH [2001] FCA 1874.

6. Occasional use by traders or the Australian public in an unapproved form would be insufficient to determine that a term or expression has moved into common parlance.  However, despite the best efforts of the Holder, it is clear that the expression BLU-RAY is not operating as “a trade mark” and is unlikely to be viewed as one by the ordinary consumer. I am not satisfied that this is an instance where a trade mark has been carelessly used by the public[16] who clearly know and appreciate that BLU-RAY is a trade mark rather than the word describing the product.  

   [16] See Levi Strauss & Co v Amco Clothing Co Pty Ltd (1968) 38 AOJP 1581 at 1585

7. To allow the prima facie acceptance of a trade mark that has potentially become accepted as sign describing the relevant goods (even if some of that use has occurred post-filing) would be contrary to the intention of the Act. At examination, the examiner believed that BLU-RAY had only a limited inherent adaption to distinguish, but was unable to decide on that basis alone whether it was capable of doing so.

8. If I were satisfied that BLU-RAY was generic at the priority date, an objection under subsection 41(6) would be more appropriate. I am not satisfied that this is the case. I do believe, however, that this coined expression had attained an element of genericism as at the priority date such that it had a limited inherent adaptation to distinguish. Accordingly, I find myself unable to decide the question at the priority date and I am satisfied that the ground for rejection under subsection 41(5) is the appropriate finding for this application. The Holder now bears the onus of satisfying me that due to its demonstrated use and/or other circumstances, the provisions of subsection 41(5)(b) can be applied to its IRDA application.

Evidence of Use and Other Circumstances

1. Whether or not a trade mark is capable of distinguishing is a question of fact. The Kramer and Davies declarations contain the Holder’s evidence of BLU-RAY as applied to the goods in class 9. By the time the high definition DVD format known as Blu-Ray officially entered the Australia market, it had been in use in the United States for a number of years. In November 2006, BLU-RAY products were officially launched in Australia by licensees of the Holder.

1. The Kramer declaration indicates that the right to use the Holder’s trade mark comes from being an authorised licensee of the Holder. While there are numerous members and large companies licensed by the Holder to use BLU-RAY as a trade mark, the licensees have been granted different rights in relation to the format technology. The licensed trade marks include: BLU-RAY and (the “BD Logo”).

2. One of the difficulties is whether the exhibited use amounts to use as a trade mark in Australia. The exhibited catalogues and advertisements (‘RK-4’) from major electronic appliance retailers indicate various uses of the expression “BLU-RAY”:

   “SONY BLU-RAY PLAYER”,

   “Samsung 7.1 Channel Blu-Ray Home Theatre Package”,

   “PANASONIC Blu-Ray Recorder”,

   “Bonus Blu-Ray Player”,

   “Hot Priced Blu-Ray Players!”

   “On Blu-Ray and DVD”

3. Mr Kramer declares that:

   BLU-RAY is not the name of the products in relation to which it is used. The products are generally and normally known as discs or players.

4. The above examples contradict this assertion and display the descriptive nature of the expression. As different ‘discs’ and ‘players’ exist in the industry, traders must invariably describe the format in the course of advertising and marketing.  If the term BLU-RAY is removed as a descriptor, the statements become nonsensical or the products are insufficiently described. Such use is therefore not use as an indicator of the origin of the goods to which it is applied.[17] The sign on the products that does appear to perform that function is the BD Logo, which is applied to all products which are sold to Australian consumers via the Holder’s licensees.

   [17] As in Aristoc Ltd v Rysta [1945] AC 68 at 96 (per Lord MacMillan).

5. Exhibited articles and press releases refer to the growth of BLU-RAY as a format both internationally and in Australia. One of the articles refers to it as: the “Blu-ray format” and also “Globally, Blu-ray continues to grow as the natural choice, next generation format.” A report from July and October 2010 refers to “DVD and HD Blu-ray technology” and the “DVD and Blu-ray” retail market. In relation to the statistics, the word “Bluray” appears alongside the formats DVD, HD DVD, and VHS. While the figures represent sales of the product itself, it is clear that the report is referring to BLU-RAY as the digital medium, rather than as the trade mark of the Holder.

6. As addressed earlier, the Holder is an association comprising a number of competing major corporations. As a consequence, current annual sales and revenue data comprises commercially sensitive information and is not before me. The Davies declaration does include publicly available sales data from 2006-2009, a report detailing sales of BLU-RAY format discs from 2006-2008, and statistics concerning the adoption of BLU-RAY goods in Australia. Much of the remaining evidence of sales in press releases relates to rental and sales globally rather than specifically in Australia.

7. In relation to the overseas trade mark registrations of BLU-RAY, this evidence is never irrelevant but should be given due weight according to the surrounding circumstances. I note that many of the registration dates are earlier than this application. In addition, an assessment of an Australian trade mark should comply with Australian legislation which can be very dissimilar to other jurisdictions in both content and application. The existence of those international registrations has limited relevance to the outcome of this particular matter.

8. I find it likely that sales of BLU-RAY movies and players have grown significantly in Australia since the filing date. Despite this finding, the Holder has provided little evidence to demonstrate the growth as ‘a trade mark’. A sign that has become known as the name of the product must clearly demonstrate an ability to distinguish. I am not satisfied that the Holder has discharged this onus.  

9. Most importantly, the use that has been demonstrated reinforces the descriptive nature of BLU-RAY rather than its capacity to function as a badge of origin distinguishing the trade mark from that used by other traders in the ordinary course of trade. From the evidence supplied, I am not satisfied that the use sufficiently demonstrates that the sign BLU-RAY does (or will) distinguish the claimed goods.

Decision

Regulation 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.

1. A ground for rejection exists under subsection 41(5) of the Act. I therefore refuse to extend protection in Australia in respect of all goods listed in the IRDA 1232812: BLU-RAY (IR: 955774A).

Heath Wilson

Hearing Officer

Trade Marks Hearings

17 June 2011