Brock Beauty Inc - [2016] ATMO 44

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia no. 1674033 (3 and 5) – BROCKBEAUTY - in the name of Brock Beauty Inc.

Delegate:	Heath Wilson
Representation:	Holder: Angus Lang of Counsel instructed by Schweizer Kobras Lawyers.
Decision:	2016 ATMO 44 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA accepted for possible extension of protection to Australia.

Background

The following reasons arise from an application to be heard on the examination of an International Registration Designating Australia (‘IRDA’), the current details of which are extracted below:
IRDA No. 1674033
International Registration No: 1234384
Trade Mark: BROCKBEAUTY
Priority Date: 9 October 2014
Holder: Brock Beauty Inc. (‘the Holder’)
Specification of Goods:
Class 3: Non-medicated skin care preparations; non-medicated skin care preparations, namely, creams, lotions, gels, toners, serums, cleaners and peels; cosmetic preparations; cosmetics; hair care preparations; hair shampoos and conditioners; cosmetic oils; essential oils; hair oils; oils for toiletry purposes; body and beauty care cosmetics; soaps for body care; facial cleansers; non-medicated serums for use on eyelash enhancement

Class 5: Hair vitamin supplement; skin vitamin supplements; medicated bath preparations; medicated cosmetics; medicated skin care preparations
On 13 April 2015, IP Australia issued a first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA. The basis of the provisional refusal was a ground for rejection under subsection 41(4) of the Trade Marks Act 1995 (‘the Act’).
The adverse examination report provided, inter alia,:
Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark has as its main feature the word BROCK. This word is also the surname of many Australians.
People will often provide goods and/or services using their surname. The more common a surname is, the more likely it is that other traders may wish to use it.
Other traders with this surname should be able to use it in connection with goods or services similar to yours.
As a guide, a surname is considered a relatively common one if it has 750 or more entries on the Australian electoral roll. The surname in your trade mark occurs 1261 times. It is likely that a significant number of traders with this surname may need to use it in connection with their goods or services.
The provisional refusal applied to all the goods for which protection is sought to be extended. The Holder did not directly respond to the examiner but, on 6 May 2016, requested to be heard by the Registrar of Trade Marks under reg 17A.17 of the Trade Marks Regulations 1995 (‘the Regulations’).
The matter was allocated to me to be decided in my capacity as a delegate of the Registrar of Trade Marks and subsequently set down to be heard in Canberra on 7 June 2016.
On 24 May 2016 I set out a timetable for the Holder’s written submissions and any evidence it sought to rely upon. As a consequence, IP Australia received the following material from the Holder on 3 June:

Statutory declaration of Tymeka Lawrence (President of the Holder) made 1 June 2016 with exhibits TL-1 to TL-43.
Written submissions dated 3 June 2016.

I conducted the hearing on the scheduled date. Angus Lang of Counsel (accompanied and instructed by Fiona Henderson of Schweizer Kobras Lawyers) made oral submissions via teleconference.

Discussion

Section 41 of the Act relevantly provides:

41Trade 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)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.

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. [1]
[1] (1964) 111 CLR 511 [513–14].
Regulation 17A.24 provides that the Registrar must accept an IRDA unless satisfied that there are grounds under the Act for rejecting it. Speaking of the equivalent provision for national trade mark applications[2] French J in Registrar of Trade Marks v Woolworths[3] said: “the decision to reject an application regularly made must now be based upon positive satisfaction that a ground for rejecting it is made out” and “if the matter is left in doubt, then the application should be accepted”[4] and finally “the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.”[5]
[2] Section 33 of the Act.
[3] [1999] FCA 1020 [47] (French J) (‘Woolworths Metro’).
[4] Ibid [33].
[5] Ibid [34].
In other words trade marks or signs[6] are taken to be capable of distinguishing their designated goods/services unless the Registrar of Trade Marks finds that they are not. The Registrar can find that such a trade mark does not distinguish by virtue of section 41(3) or section 41(4).
[6] See section 6 for the definition of a ‘sign’ and section 17 for the definition of a ‘trade mark’.
The objection taken in examination was that under subsection 41(4) of the Act, that is, the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods from the goods or services of other persons.
With the above in mind, it is worth setting out the current practice of the office as it appears in the Trade Marks Office Manual of Practice and Procedure (‘the Manual’). The Manual relevantly provides:
The SFAS value gives a measure of the commonness of the surname and therefore of the likelihood that a trader with that name would wish to use the name in connection with his or her goods or services. The more common the surname, the less inherent adaptation to distinguish it will have. As a general rule, an SFAS value of 750 or more will tend to indicate that the surname is sufficiently common to warrant raising a ground for rejection. However, the nature of the goods and/or services must be taken into account, that is whether they are specialised, commonplace or somewhere between these extremes. [7]
[7] Part 22.16.1.
The wording of the Manual then makes it plain that there is nuance to this consideration. A value of over 750 in the SFAS (‘Search for Australian Surnames’) only “tends to indicate” that a surname is sufficiently common to warrant raising a ground for rejection. Mere indication that a ground for rejection may apply clearly falls short of the required “positive satisfaction” mentioned by French J in Woolworths Metro. As the Manual provides, the specific nature of the designated goods/services must also be taken into account.
It has also been recently affirmed in a decision of this office that “the Registrar should not base a decision to reject a trade mark solely on the fact that it contains or comprises a surname which appears an arbitrary number of times among the Australian adult population.”[8]
[8] Garrett Electronics Inc. (2015) 114 IPR 155; [2015] ATMO 48 [22]
To do so would fall foul of precisely the situation highlighted by Wilcox J in the case of Companhia Souza Cruz Industria e Comercia v Rothmans of Pall Mall (Australia) Ltd. His Honour made the following comments with regard to SFAS results at a time when office policy referred to a limit of 400 rather than 750 Australian surnames:
I gather from Mr Homann's reasons there is a policy document issued by the Registrar of Trade Marks that decrees a mark, to be registrable, should not comprise or include a name that occurs more than 400 times in the Australian Electoral Register. The policy document is not before the Court, so I do not know what rationale it advances for this dictat. Why 400? The answer does not matter. The policy has no foundation in the Act; so it is devoid of any legal justification. It is not for the Registrar to impose non-statutory restrictions on the words that may be registered as trade marks. To the extent Mr Homann paid any attention to this aspect of the case, he erred in law.[9]
[9] (1998) 41 IPR 497 [501].
In the current matter there is no suggestion that the examiner raised this ground for rejection solely on the basis of the SFAS results. However, as the examination did not progress past the first report before coming to a hearing, there had been no further elaboration of the ground for rejection. I will therefore assess the Trade Mark on its own merits and the particular material before me.
With regard to the Trade Mark BROCKBEAUTY itself, Mr Lang submitted that:
[A]lthough “BROCK” appears more than 750 times on the SFAS, it is not particularly common. According to the provisional refusal, it appears 1261 times. By contrast, ‘SMITH”, for example, appears 114,997 times.
This type of analysis and comparison with other more common Australian surnames has occurred in previous decisions of the office. In particular I note that ‘Brock’ is also not even as prevalent as surnames such as ‘Garrett’[10], ‘Lancaster’[11] or ‘Blair’[12]. The goods in the current specification being skin care preparations, cosmetics and vitamin supplements are not as uncommon as goods/services in specifications of the aforementioned precedent. On the other hand, neither are the designated goods as commonplace as (for example) items such as foodstuffs.
[10] Garrett Electronics Inc. (2015) 114 IPR 155; [2015] ATMO 48 (1983 occurrences on SFAS for the surname GARRETT).
[11] Tchen Kil Tchun [2014] ATMO 28 (2012 occurrences on SFAS for the surname LANCASTER).
[12] Abalner Pty Ltd [2015] ATMO 51 (3094 occurrences on SFAS for the surname BLAIR in the trade mark ‘Blair’s Tyres’).
Turning to the second element of the Trade Mark, I refer to the comments made in Diamond T Motor Car Co’s Application[13] (where the goods concerned were motor vehicles):
In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves…
[13] (1921) 38 RPC 373 [380] (Lawrence J).
In other words, in order to properly assess the Trade Mark under this provision it must be considered in its entirety. The Trade Mark is not simply the name ‘BROCK’ but the expression ‘BROCKBEAUTY’. In the context of the designated goods, the word ‘Beauty’ no doubt refers to beauty products but it cannot be so easily discounted as might the latter words in expressions such as: ‘BROCK SKIN CARE PREPARATIONS’ or ‘BROCK VITAMIN SUPPLEMENTS’. The lack of a space between the words in the Trade Mark is another (admittedly trivial) consideration. None of those observations by themselves would be sufficient to render the Trade Mark inherently adapted to distinguish. Having said that, in the overall consideration, they cannot be entirely overlooked.
I have also considered the research conducted by the examiner to determine whether the Trade Mark (or an expression like it) was being used in the marketplace for these particular goods. After having heard the Holder’s submissions and perused its evidence (which was not before the examiner) it is clear to me that the examples of use in the marketplace identified by the examiner are in fact use by the Holder.
The overriding consideration is whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the expression BROCKBEAUTY, or some mark nearly resembling it, upon or in connection with their own skin/hair care preparations and supplements.[14]
[14] Adapted from the comments in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 [635].
My observations concerning the second word in the Trade Mark when considered in light of the strength of the objection to the surname ‘BROCK’ for the designated goods lead me to the conclusion that the Trade Mark is, prima facie, inherently adapted to distinguish the designated goods. Section 41 of the Act therefore does not apply.
If there were any doubt in this regard, that doubt would be resolved in the Holder’s favour. As it is, I find that the Trade Mark is inherently adapted to distinguish the designated goods and it is not necessary to consider in any detail the evidence of use that the Holder has placed before me.

Decision

Regulation 17A.24 provides:

17A.24Final 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.

As I am not satisfied that there is a ground for rejecting the IRDA under section 41 of the Act I must accept the IRDA for possible extension of protection in Australia. As a delegate of the Registrar, I now do so.

Heath Wilson
Hearing Officer
Oppositions and Hearings
30 June 2016