Boddingtons Limited

[2011] ATMO 57

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1308235(19) – GRASSPROTECTA – and 1308236 – TURFPROTECTA - in the name of Boddingtons Limited.

Delegate:	Alison Windsor
Representation:	Applicant:  Fabiola dos Santos and Jennifer McEwan of EKM Patents
Decision:	2011 ATMO 57 Ex-parte decision – section 41 – trade marks minor phonetic and spelling variations of descriptive words – evidence insufficient to support acceptance under 41(5) – applications rejected.

Background

1. Boddingtons Limited, formerly Boddingtons Brandco Pty Ltd (‘the applicant’), applied to register two trade marks, current details of which appear below:

   Application number:              1308235
   Filing date:       7 July 2009

   Class and goods  Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; plastic meshes for ground reinforcement; plastic grids having open cells and for use for grass and ground reinforcement and protection

   Trade Mark     GRASSPROTECTA

   Application number:              1308236
   Filing date:       7 July 2009

   Class and goods  Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; plastic meshes for ground reinforcement; plastic grids having open cells and for use for grass and ground reinforcement and protection

   Trade Mark     TURFPROTECTA

2. The applications were examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and in both cases grounds for rejecting the trade mark application were raised under the provisions of subsection 41(5) of the Act.

3. The grounds for rejection were articulated as follows:

   • 1308235 – GRASSPROTECTA

   The word PROTECTA is phonetically similar to the word PROTECTOR.

   Research indicates that GRASS PROTECTOR is commonly used by other traders in relation to the class 19 building materials, meshes and grids claimed on your mark, to denote a product used to protect grass from damage.

   Please note the alternation (sic) in the spelling of the word PROTECTA and the joining of the words GRASS and PROTECTA is not significant enough to alter the nature of your trade mark when viewed as a whole. The meaning and pronunciation of the words remain the same, and the main feature of your trade mark remains the words GRASS PROTECTOR.

   Other traders should be able to use GRASS PROTECTA in connection with goods or services similar to yours.

   • 1308236 - TURFPROTECTA

   The articulation of the objection is identical to the above, differing only in relation to use of the words TURF and TURFPROTECTA replacing the words GRASS and GRASSPROTECTA.

4. The applicant did not agree with the examiner’s assessment of the trade marks submitting that the words were not those that would ordinarily be used in the trade to describe similar goods.  The applicant said that the more likely term would be ‘grass or ground reinforcement mesh’.

5. The examiner maintained the objection, and after the third adverse report, the applicant provided evidence in support of the applications, being the declarations of Campbell Mackintosh, managing director of Boddingtons Australia Pty Ltd, a company which is wholly owned by the applicant. 

6. The declarations are essentially the same.  Mr Mackintosh states that both trade marks were first used in Australia in 2008.  He says that GRASSPROTECTA is used for ‘a high quality plastic mesh product used to protect grass or turf areas’.  TURFPROTECTA is used for ‘a high quality, innovative and cost effective extruded plastic mesh product used for the protection and reinforcement of grass and turf’.  He says that the goods have been extensively advertised on a national scale via a wide range of advertising media.  He says the two products have proven to be successful ones, and has provided advertising expenditure and sales figures for both.

7. Despite this evidence of use, the examiner was not satisfied that it was sufficient to meet the requirements of subsection 41(5). She made some suggestions about additional evidence which she said might assist the applicant, and advised that if further evidence did not overcome the ground for rejection, it was likely that she would instigate the rejection process.

8. The applicant responded with a further declaration, being that of Jennifer Joan McEwan.  This declaration provided a list of the countries in which the goods to which the relevant trade marks had been applied as well as a break down of sales and advertising figures for those countries.  Ms McEwan stated that she had been informed that the market for the goods was a niche market and that sales in Australia were made to specialist retail customers (who order online or by direct enquiry), landscape contractors, civil contractors and end users such as schools, churches and local councils.  She said that the goods are not sold through wholesalers or retail shopping chains such as Bunnings and sales are to a very specific market.  The declaration also provided information showing that the applicant has a very significant market share for the goods sold under both trade marks in the UK, USA and Australia.

9. The examiner did not find this additional evidence of use persuasive and on 13 January 2011 issued formal notices of her intention to reject the trade mark applications.  The applicant asked to be heard, and the matter came before me for hearing in Melbourne on 4 May 2011.  The applicant was represented by Fabiola dos Santos and Jennifer McEwan of EKM Patents.

   Discussion and Reasons.

10. These applications are to be decided under the provisions of section 41 of the Act. However, before moving on to a discussion of the provisions of section 41 as they apply to these applications, there are some matters raised by the applicant which require comment. These are the presumption of registrability, the standard of proof, and the state of the register.

    Presumption of registrability and standard of proof

11. Ms dos Santos submitted that the Registrar does not need to be convinced beyond doubt of an application’s capacity to distinguish before she can accept it for registration.  She said that the presumption of registrability inherent in the wording of the legislation means that if there is any doubt about whether a trade mark should be registered, that doubt will be resolved in the favour of the applicant. 

12. Sundberg J considered the matters of the presumption of registrability and the standard of proof in the Guylian Seahorse decision[1].  He said, after considering various decisions from the courts:

    [20] There is a tension between the operation of the presumption and the text and structure of s 41. Section 41(3) requires the Registrar to “take into account” the extent to which a mark is inherently adapted to distinguish in deciding whether or not it is “capable of distinguishing” the applicant’s goods. Section 41(4) then directs the decision-maker to s 41(5) and (6), if they are “still unable to decide the question”. Section 41(5) will be applicable if there is a finding that the mark is to some extent inherently adapted, but the Registrar is “unable to decide, on that basis alone, that the mark is capable of … distinguishing”. Accordingly, where there remains some doubt after considering s 41(3) about a mark’s capability to distinguish, rather than resolving that doubt in favour of an applicant (by operation of a presumption), the statute expressly directs the decision-maker to consider the criteria in s 41(5) or (6) (whichever is applicable).

    [21] Reconciling s 41(4) and Branson J’s decision in Blount[2], with the presumption and French J’s decision in Kenman Kandy[3], is not entirely free from difficulty. The matter is further complicated by the fact that the onus is reversed under s 41(5) (the Registrar must be “satisfied” that the mark does or will distinguish) and s 41(6) (the applicant must “establish” that the mark does distinguish). In its submissions, the Registrar accepts that the presumption applies in relation to s 41(3), but says that the use of the term “satisfied” in s 41(5) suggests that the presumption no longer applies once the inquiry moves to s 41(5). I agree. Section 41(3)–(6) contemplate that there are degrees to which a mark might be inherently adapted to distinguish: see Kenman Kandy at [82] per Lindgren J; Austereo[4] at [35] per Finn J. The ultimate question under s 41(3) is whether the mark is inherently adapted to a sufficient degree to conclude that it is “capable of distinguishing”. In my view, the effect of the presumption of registrability on s 41(3) is that, in considering whether a mark is capable of distinguishing by reason of the “inherently adapted” criteria, it should be presumed that the mark is sufficiently adapted unless the Registrar is satisfied otherwise on the balance of probabilities. If the Registrar is otherwise satisfied, then he or she will be “unable to decide the question” (see s 41(4)) whether the mark is capable of distinguishing on the basis of any inherent adaptation alone, and must then proceed to consider s 41(5) or (6). Under those provisions, the presumption no longer has any operation, as the applicant is then required to either “satisfy” the Registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria set out therein is met. As Branson J said in Blount at FCR 56; IPR 504, referring to Rejfek v McElroy (1965) 112 CLR 517 at 521 ; [1966] ALR 270 at 272, a test of satisfaction requires the Registrar to “be persuaded of the matter according to the balance of probabilities”.

    [1] Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13

    [2] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 504

    [3] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30

    [4] Austereo Pty Ltd v DMG Radio Australia Pty Ltd (2004) 61 IPR 257

13. I will decide this matter on the basis of my satisfaction of the matter on the balance of probabilities.

    The state of the Register  

14. Ms dos Santos also made reference to the current state of the Register and the prima facie acceptance of earlier trade marks. She provided a list of entries from the Register which she stated all cover goods and/or services that have a direct reference to the trade mark concerned. She noted that none of the trade marks referred to carry an endorsement noting that the provisions of subsection 41(5) had been applied. She also submitted that there is clearly a precedent in the Trade Marks Office practice that shows that trade marks similar in composition to the applicant’s trade marks under consideration have been registered. She submitted that the practice should be followed as the Register should be homogeneous in its exercise.

15. Wilcox J in Cranberry Classic[5] made comments relevant to this matter.  He said:  

    [35] The second matter mentioned by Ms Baird is that Ocean Spray adduced evidence of other registered marks that contain, or consist wholly of, the word ``Classic'’. That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar[6] at 305:

    Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word ``Treat'’. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see eg Re ``Madame'’ Trade Mark [1966] RPC 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.

    I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.”

    [5] Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (at 590)

    [6] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 303 (‘TREATS’)

16. Jacobs J in Treats made a further relevant comment at 303:

    Adherence to prior precedence is secondary to the question of adaption to distinguish.

17. I do not intend to consider the trade marks the applicant has put before me for the reasons set out above.  These applications will be considered on their own merits according to the legislation and with the assistance and direction of relevant case law.

    Section 41 – trade marks not distinguishing applicant’s goods or services

18. Section 41 relevantly provides:

    (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 to any extent 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 to any extent 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).

19. The application of s 41 was analysed by Branson J in Oregon as follows:

    Subsections (3)–(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.

20. The first matter to be decided therefore is the amount of inherent adaptation to distinguish present in the two trade marks.  In the case of F.H. Faulding & Son Ltd[7] 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.

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

21. Ms dos Santos submitted that:

    [T]he applicant’s trade marks are misspellings of what could be considered commonly used words and as such they should be acceptable as trade marks because the average consumer would perceive the difference between the trade mark and the descriptive word.

    …

    [T]he applicant’s deliberate misspelling found in its marks is what differentiates them from other marks used in the marketplace, and consumers are likely to identify the words ‘GRASSPROTECTA’ and ‘TURFPROTECTA’ as trade marks because of the added ‘A’ element at the end of each mark.

    Such added ‘A’ element not only renders the marks in suit visually different from other products in the marketplace, but it also renders them aurally different.  While other marks may include the word ‘protector’ in them, the applicant’s marks include the element ‘protecta’.  We submit that ‘PROTECTOR’ and ‘PROTECTA’ are sufficiently dissimilar in appearance and in pronunciation.  Thus, we do not believe … that GRASSPROTECTA and TURFPROTECTA are obvious phonetic equivalents of GRASS PROTECTOR and TURF PROTECTOR.

1. Despite these submissions, I am satisfied that the two trade marks consist of minor phonetic and spelling variations of the expressions GRASS PROTECTOR and TURF PROTECTOR, terms which are direct descriptions of the goods the applicant is producing.  The substitution of the letter A for the suffix -OR does not alter the pronunciation of the words as they would be spoken by most Australians.  In Australian parlance, the –OR suffix is usually articulated as a short A sound (for example, as at the end of the word ‘alumina’) than as the longer OR sound (as in the word ‘force’).  Unless the articulation of the suffix –OR was purposely exaggerated and strengthened, the most common Australian pronunciation of ‘protector’ is, in fact, ‘protecta’. 

2. The misspelling of the word ‘protector’ in the way it has been done is not an unusual variation.  The change consists only of replacement of the two letter suffix by the single letter which is its common phonetic equivalent.  Misspellings of this kind are not uncommon, especially for words ending in the suffixes –ER and –OR.  I am satisfied that the second word in the applicant’s trade marks will be pronounced and understood as the word ‘protector’.

3. In the context of the goods in respect of which the trade marks are used, the words are clearly descriptive.  Indeed, Mr Mackintosh describes his goods as being plastic mesh products for reinforcement and protection of grass and turf surfaces.  The goods specification clearly claims ‘plastic grids having open cells and for use for grass and ground reinforcement and protection’. The descriptive nature of the word PROTECTA is both obvious and direct. The trade marks are clearly lacking in inherent adaptation to distinguish as they consist of slight spelling and phonetic variations of words descriptive of the nature of the relevant goods. Following Justice Branson’s analysis, I find that the provisions of subsection 41(5) thus apply to both the trade marks.

4. As I am satisfied that the trade marks are not prima facie capable of distinguishing the applicant’s goods, I now move on to a consideration of the evidence of use the applicant has provided. 

5. The applications were both filed in July 2009.  The applicant said, in the Mackintosh declarations, that both trade marks were first used in Australia in 2008.  Sales figures have been provided for the financial years 2007-2008, 2008-2009 and for half the 2009-2010 period.  Advertising figures have been provided for three years – 2007 to 2009.

6. The sales and advertising figures form Confidential Exhibits CM-6 and CM-7 to both Mackintosh declarations.  Exhibits JJM-1 and JJM-2 to the McEwan declaration are also declared as confidential.  I am thus not able to specify actual sales and advertising amounts.  However, I can say that the sales figures in Australia for the goods being sold by reference to both trade marks are very small indeed, despite the applicant’s claim to a substantial portion of the relevant market.  Advertising figures similarly amount to only a few thousand dollars per year despite a claim for extensive advertising on a national scale.

7. I note the comment in the McEwan declaration that the applicant operates in a niche market.  This may indeed be so, but to be registrable a trademark must still meet the needs of the legislation even in that kind of narrow market.  Given the descriptive nature of the trade marks the evidence provided does not satisfy me that the applicant’s trade marks were capable of distinguishing its goods at the filing date.  The evidence after the filing date, which can provide assistance in deciding the matter, does not satisfy me that the trade marks have since developed the required capacity to distinguish.  

8. The applicant submitted that its use of the trade marks in overseas countries and its registration of them in the UK and in New Zealand provided other circumstances which should allow the applications to be accepted. I do not find these arguments persuasive because of the extremely descriptive nature of the trade marks themselves, and the small volume of sales to which the applicant has attested. While there has been a much larger volume of sales overseas than in Australia, this is simply not sufficient for me to be satisfied that the trade marks meet the requirements of the Australian legislation. I find that neither trade mark therefore meets the requirements of section 41 of the Act.

   Decision

9. I reject trade mark application numbers 1308235 and 1308236.

   Alison Windsor
   Hearing Officer
   Trade Marks and Designs Hearings
   30 June 2011