Bluescope Steel Limited v Spanline Weatherstrong Building Systems Pty Ltd

[2019] ATMO 35

TRADE MARKS ACT 1995

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

Re:      Opposition by Bluescope Steel Limited to registration of trade mark application no.

1671057 – shape of a roofing sheet - in the name of Spanline Weatherstrong Building Systems Pty Ltd

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Sam Hallahan of counsel instructed by Adam Sears of Davies Collison Cave

Applicant: Daniel Wilson of Spruson & Ferguson

DECISION:

2019 ATMO 35

Trade Marks Act 1995 (Cth) - Section 52 opposition: section 41argued – section 41(3) established for all goods – evidence insufficient - trade mark registration refused.

Background

1. Spanline Weatherstrong Building Systems Pty Ltd (‘the applicant’), filed trade mark application number 1671057 on 28 January 2015 in class 6 of the International Classification of Goods and Services. Current details of the application are set out below.

1. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 5 January 2017. Subsequently Bluescope Steel Limited (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars1.

2. The applicant then filed its Notice of Intention to Defend. Thereafter the parties filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 20 September 2017. The applicant was represented by Daniel Wilson of Spruson & Ferguson. The opponent was represented by Sam Hallahan of counsel instructed by Adam Sears of Davies Collison Cave.

Grounds of Opposition

1. The Notice nominated two grounds of opposition under the Trade Marks Act 1995 (‘the Act’) being sections 41 and 62A but only section 41 was pursued at the hearing. The onus is upon the opponent to establish one ground of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd2 affirmed the approach of Pfizer Products Inc. v Karam3 where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence in this matter consists of the following declarations being:

Evidence in Support

·Declaration of Adam Sears (‘Sears’), Solicitor with Davies Collison Cave, dated 11 August 2017, Annexures AMS-1 and AMS-2

·Declaration of Matthew Lloyde  (‘Lloyde’), National Manager of Marketing and Innovation for Bluescope Steel Limited, dated 19 August 2018, Annexures ML-1 to ML-3.

1 which together constitute ‘the Notice’

2 [2015] FCAFC 156, [133]

3 [2006] FCA 1663, [26]

Evidence in Answer

·Declaration of Daniel James Wilson (‘Wilson’), Attorney with Spruson and Ferguson, dated 20 December 2017, Exhibits DJW-1 to DJW-6.

Evidence in Reply

·Declaration of Cheryl Hrvoj (‘Hrvoj’), Solicitor with Davies Collison Cave, dated 1 March 2018, Exhibits CH-1 and CH-2.

Discussion

Section 41 - Trade mark not distinguishing applicant’s goods or services

1. Section 41 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.

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

iii)  any other circumstances.

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:                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 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. Section 41 of the Act provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods and services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. Therefore, the opponent must establish that the applicant’s trade mark is not capable of distinguishing the goods in question.

1. Turning to the relevant consideration of whether a trade mark is inherently adapted to distinguish, in the case of Clark Equipment Co v Registrar of Trade Marks Kitto J found:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

   …

[T]he question [is] whether a mark is adapted to distinguish 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, 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. 4

1. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks5  French discussed the inherent adaptation of shape trade marks; stating:

It is necessary to inquire what the Act requires of shapes that would be trade marks. To be a trade mark, a shape must 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. That definition is entirely consistent with the idea of "shape" as an attribute of goods which distinguishes them from others. It is not to be read down to cover only some aspect of the physical configuration of goods. The shape which distinguishes the goods may be their shape taken as a whole. The inclusion of "shape" in the definition of "sign" stands against the suggestion that it can never be an attribute separate from the goods to which it relates. It mandates consideration of shape as a distinctive attribute although not a necessary feature of the particular goods. Where shape serves function, then it may not bear that character of a distinctive attribute. Like the three headed shape of the Philips Rotary Shaver it would not be capable of registration - Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd6. As Stone J observes in her reasons for judgment, the separation issue in that case was at least in part an element of the capacity to distinguish. I respectfully agree with the observations of Burchett J in Philips that a shape that goods possess because of their nature or the need for a particular technical result could not operate as a trade mark. I respectfully also agree with the analysis of Stone J in this regard and with her Honour's conclusion that there is no suggestion

in this case that the shape of the millennium bug has any functional significance other than aesthetic.

1. And in Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd7  (‘the Fence Dropper Case’) Greenwood J observed:

Having regard to Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks [1967] HCA 42; (1967) 116 CLR 628 at 639-640 and an acceptance of the proposition put by Lehane J at first instance in Koninklijke Philips Electronics NV & Anor v Remington Products Australia Pty Ltd [1999] FCA 816; (1999) 91 FCR 167 that the 1995 Act’s introduction of shape signs (although

4 (1964) 111 CLR 511 [513–14].

5 [2002] FCAFC 273; 122 FCR 494; [2002] AIPC 91-817; 56 IPR 30 at [45].
6 [2000] FCA 876; (2000) 100 FCR 90.

7 [2008] FCA 27; (2008) 166 FCR 312; [2008] AIPC 92-277; (2008) 75 IPR 102 at [64].

intended to effect the result that a shape trade mark would find embodiment in goods or a part of goods), did not bring about a radical change of long accepted principle concerning functional use, Burchett J concluded that there has been no abandonment of the idea that goods have an existence, as goods, and a shape trade mark has an existence in relation to goods. As a result, the shape of goods (or of a part of goods) embodied by reason of the nature of the goods or a technical or functional result to be achieved by the goods could not distinguish the goods of one trade source from similar goods of another. The shape might distinguish or differentiate the goods as goods but not the trade source. Dealing in goods of that shape is thus use of the goods not use of the shape of those goods as a trade mark. Burchett J observed at [16]:

The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded [Windeyer J in Smith Kline]. For they are cases where the shape that is a mark is ‘extra’, added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J’s words, ‘an existence independently of the mark’ which is imposed upon them.

In Kenman Kandy, Stone J observed that:

The ‘inherent form’ of goods, in my view, can only refer to those aspects of form that have functional significance. Were the 1995 Act to enable the registration of a trade mark that would give the owner a monopoly over functional features, it would indeed have made a radical change to trade mark law.

1. At the hearing, Daniel Wilson, representative for the applicant, explained that whilst some of the features of the Trade Mark may perform functions that are common to all roof cladding, that the shape is more complex and is distinctive of the applicant’s goods and has been extensively promoted as a trade mark over the course of some 30 years.

1. Sam Hallahan, counsel for the opponent, submitted the opponent’s case on the section 41 ground is based upon:

·The shape of the applicant’s goods is purely functional and functional shapes are not capable of distinguishing goods which is supported by Mr Lloyde’s evidence as an engineer with 20 years experience who explains that the applicant’s goods have the following functional effects:

ØReducing the temperature of the roofing;

ØReducing the heat absorption and radiation;

ØManaging water flow;

ØProviding improved strength and rigidity;

ØAllowing for fewer support beams.

·Evidence of use of functional shapes as trade marks means that the applicant must satisfy the Registrar that it has 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 served as being those of the applicant;

·The applicant has a fundamental problem in seeking to satisfy the Registrar that is has used the shape of its goods as a trade mark since a functional shape does not operate as a trade mark.

·The shape of the goods cannot be used as a trade mark and there is no ‘use’ of the trade mark through which the mark could become distinctive of the applicant’s goods regardless of how many products the applicant sells or how many times it reproduces images of its goods in its advertising materials.

1. Mr Hallahan argues that the shape of the applicant’s goods is purely function and as a functional shape it is not capable of acting as a badge of origin for the opponent. He referred me to Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 where Sundberg J quoted the following from the decision of Jacob J in Unilever plc’s Trade Mark Applications [2003] RPC 35:

Putting the other products to the side for a moment, there can be no doubt that the product appearance has achieved considerable recognition on its own as denoting Walls “Viennetta” – the product of a particular manufacturer. Is that enough to give it “distinctive character” within the meaning of Art 3(3)? For what has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognize it but do not treat it as a trade mark.

There is a bit of a sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so.

He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no one is deceived or misled.

I do not think that is what the European Trade Mark system is for. It is a system about trade marks, badges of origin. For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognizes them as the product of a particular manufacturer. It must be proved that consumers regard the

shape alone as a badge or trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.

1. Mr Hallahan also referred me to a number of examples in the opponent’s evidence which supported the opponent’s claims that other traders in the marketplace were using similarly shaped roof cladding due to the functionality of the shape.

1. Mr Wilson argued the opposite view. He stated that the shape of the roof cladding is, at least to some extent, inherently adapted to distinguish the applicant’s goods from those of other traders because:

·At the time of adoption, the applicant’s Trade Mark was a unique roofing profile; and

·The applicant has, over the course of 30 years, educated the Australian marketplace that the shape of its Trade Mark is an indicator of trade source, that is, that the shape of the applicant’s roofing profile it unique to the applicant; and

·The totality of the applicant’s Trade Mark and its use by the applicant demonstrates that there is ‘something extra’ to the Trade Mark beyond the mere inherent shape.

1. When considering whether or not the Trade Mark is capable of distinguishing the applicant’s goods from those of another trader, I am influenced by the fact that the shape of the roof cladding is due to the functional aspects and improvements it provides over other types of roof cladding. The design of the roof cladding was not something that the applicant came up with to act as a badge of origin for their goods, the shape was incidental and a byproduct of functional engineering benefits it provided. The ‘double u’ shape of the goods is a functional rather an aesthetic feature.

1. Given all of the above, I am satisfied that the section 41(3) ground of opposition has been established. However, establishing a section 41 ground of opposition need not be fatal to the application. Section 41(3) provides for the registration of trade marks where it can be shown that the Trade Mark does distinguish the designated goods as being those of the applicant. Therefore, I must consider the applicant’s evidence of use of the Trade Mark.

Application of section 41(3)

1. The applicant’s Trade Mark is for the shape of roof cladding and this matter is ultimately one of whether or not the applicant’s evidence establishes that the Trade Mark is currently acting, in its own right, as a badge of origin for the applicant when applied to its roof cladding goods.

1. Exhibit DJW-1 accompanying the Wilson declaration is the declaration of Lisa Oakley (the ‘Oakley declaration’). Ms Oakley is the General Manager of the applicant and she avers that the applicant has been in operation for more than 30 years engineering and  producing building systems for home additions. She states that a core commercial aspect of the applicant’s business is its roofing products and that it is one of Australia’s largest home additions builders and a market leader in the roofing field.

1. Exhibit LO-1 accompanying the Oakley declaration contains numerous examples of how the applicant has promoted its roof cladding goods. Such examples include:

1. I note the majority of the applicant’s examples of advertising its Trade Mark and the goods emphasizes the functional aspects given to the roof cladding due to its shape. Further to this, there are other trade marks such as SPANLINE and DOUBLE-U being closely used in conjunction with the Trade Mark. While the applicant may use the Trade Mark in conjunction with other trade marks, this can also make it much more difficult to determine if  the consumer actually identifies the Trade Mark, solus, as a badge of origin for the applicant. I do not believe that there is enough evidence before me which establishes that the Trade Mark is acting as a badge of origin, on its own, for the applicant’s goods. The applicant asserts that it has spent considerable money in educating the public that the shape of the goods is a Trade Mark but this is not reflected in the evidence. I turn to the words of Greenwood J in the Fence Dropper Case:

The shape might distinguish or differentiate the goods as goods but not the trade source. Dealing in goods of that shape is thus use of the goods not use of the shape of those goods as a trade mark.

1. The applicant’s evidence does not satisfy me that the Trade Mark distinguishes the goods of the applicant from the similar goods of other traders. I therefore take the Trade Mark to be not capable of distinguishing the goods of the applicant. The opponent has established the section 41(3) ground of opposition and the evidence before me is insufficient to overcome it.

Decision

1. Section 55 of the Act provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:       For limitations see section 6.

1. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 41. Accordingly I refuse to register trade mark application no. 1671057.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer

Oppositions and Hearings 7 March 2019