Business Enterprise Mersey, Inc

[2006] ATMO 99

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1024006(35,41) - BUSINESS & EMPLOYMENT- in the name of Business Enterprise Mersey, Inc.

Delegate:	Rowena Beal
Representation:	Applicant: Business Enterprise Mersey, Inc
Decision:	Trade mark considered under section 41(6), evidence insufficient, application rejected

Background

1. Application number 1024006 was filed on the 7^th October 2004 in the name of Business Enterprise Mersey, Inc (the applicant). The application consisted of the trade mark and specification of services appearing below:

   Class 35: Employment services; recruitment; community work projects; business welfare

   Class 41: Education and training

2. An examiner of trade marks objected to the trade mark’s registration and raised a ground for rejection under subsection 41(6) of the Trade Marks Act 1995 (the Act). In support of the grounds for rejection the examiner stated that the words BUSINESS & EMPLOYMENT  were very commonly used in relation to employment services, recruitment, business welfare and education and training. The phrase was therefore completely descriptive when used in relation to the services claimed on the application. The examiner also referred to the underlining of the words and remarked that the underlining of the phrase did not alter the fact that, when considered as a whole, the mark was devoid of inherent capacity to distinguish.

3. The applicant’s attorney submitted that the trade mark had acquired a very substantial reputation and submitted evidence in support of this claim. The evidence consisted of a leading statutory declaration of Mr Andrew Billing, the Chief Executive Officer of the applicant company, attesting to use of the trade mark since March 2002 in the State of Tasmania and significant promotion and sales activity since that time within the same State. Despite this, the examiner maintained the grounds for rejection through a second report. The agent responded by requesting two new endorsements be added to the application. These endorsements consisted of the following;

The trade mark registration is limited to the colours RED, WHITE and BLUE as shown in the representation of the trade mark attached to the application form.

Registration of this trade mark is limited to the state of Tasmania.

4. The agent argued that such restrictions, with consideration of the evidence lodged previously, should be sufficient to allow the trade mark to be considered under the provisions of subsection 41(5) as the trade mark could no longer be considered devoid of inherent adaptation to distinguish. The agent argued that if the trade mark was initially considered to have no inherent adaptation to distinguish, the proposed restrictions had to some extent changed the trade mark’s inherent adaptation to distinguish, albeit slightly, and the trade mark must now be considered under subsection 41(5).

5. The examiner issued a third report maintaining that the restrictions to colour and geographical area were insufficient to allow the trade mark to be considered under subsection 41(5). At this stage the examiner advised the agent that, as the matter appeared to be at an impasse, any further correspondence which did not introduce new material for consideration by the examiner would result in a Notice of Intention to Reject being issued.

6.  Further correspondence was received which did not advance the matter, the Notice of Intention to Reject was subsequently issued and the agent then requested to be heard. That hearing was held before me, as a delegate of the Registrar, in Melbourne on the 11th September 2006 and was attended by Mr Mark Williams, legal practitioner of Phillips Ormonde & Fitzpatrick of Melbourne.

Submissions

7. At the hearing, Mr Williams made submissions firstly on the basis that the trade mark was to some extent inherently adapted to distinguish the designated services and should be considered under subsection 41(5). In the event that the trade mark was seen as devoid of inherent adaptation to distinguish the agent submitted that the evidence was sufficient to allow acceptance under the provisions of subsection 41(6).

8. My attention was drawn to the statutory declarations filed just prior to the hearing. These consisted of a second declaration from Andrew Billing, and three declarations from representatives of government departments attesting to their awareness and recognition of the trade mark within Tasmania.

9. The submissions also referred to the high level of promotional and sales activity since 2002, or in consideration of subsection 41(6), until the filing date of 7^th October 2004. The agent referred to the colour endorsement added during examination and discussed previous cases where a colour restriction had been held to be sufficient to provide slight inherent distinctiveness where a trade mark is otherwise devoid of this quality. These cases included The Australian Postal Corporation trading as Australia Post, Re [1994] ATMO 53 (25 July 1994) and CRC Industries (Aust) Pty Ltd, re [1997] ATMO 14 (21 April 1997; 38 IPR 429.

10.  I was also to asked consider the effect of the geographical restriction in light of the evidence of extensive sales and promotional activity in that State.

Discussion

11. Section 41 has been given judicial consideration by Branson  J in Blount Inc v The Registrar of Trade Marks  (1998) 40 IPR 498. The matter to be considered here, in light of Blount, is:

The capacity of the words to distinguish the services; and, if the foregoing lack capacity to distinguish the services,

The capacity of the trade mark, considered as a whole, to distinguish the services; and, if necessary,

The extent to which the trade mark has been used.

12. Inherent capacity to distinguish is assessed according to the test established in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 515. Kitto J remarked that the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. He went on to approve of Lord Parker’s exposition on the subject in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624, at 635, in which he said that whether a trade mark is ‘adapted to distinguish’ was 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 … will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”

13. Kitto J later said in F H Faulding & Co Ltd v Imperial Chemical Industries of Australia & New Zealand Ltd  (1965) 112 CLR 537 at 555:

“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 businesses and without any improper motive, to desire to use upon or in connection with their goods.”

14. The words BUSINESS & EMPLOYMENT contained in the trade mark are not by themselves capable of distinguishing the applicant’s services from those of other traders dealing in similar services. The phrase is made up of ordinary words with clear and obvious meanings in relation to the services claimed. There is no gain in inherent adaptation to distinguish through the juxtaposition of the words since the absolute descriptiveness of the words ‘business’ and ‘employment’ simply provide more specific information about the services being offered. Accordingly, there are no considerations that the Diamond T Motor Car Co’s Appn (1921) 38 RPC 373 might be applicable.

15. The font of the letters, the use of an ampersand as a common symbol meaning ‘and’, and the underlining are all extremely common elements in printed media and add nothing to the capacity of the trade mark to distinguish, when it is considered as a whole. I do not consider that the ‘get-up’ in the trade mark takes it out of the ambit of the kind of slight variation referred to by Branson J in Blount where she said:

I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient to take the applicant's trade mark outside of the ambit of the observation of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.

Furthermore, where the trade mark combines the device element of colour with a word, the word element of the mark will be accorded greater significance in any assessment of inherent capacity to distinguish simply because customers will use the words to refer to the services. See for example, Re Application by Hardings Manufactures Pty Ltd t/a Wyandra Industries (1987) 8 IPR 147.

16. With the above tests in mind, I conclude that the words are devoid of any inherent adaptation to distinguish. However, I must also consider the limitations imposed by the addition of the colour and territorial limitations requested during the examination of the application.

17. In considering the inherent adaptation of the trade mark to distinguish I do not think that the restriction to Tasmania will assist at this stage. There is nothing to suggest that any assessment of inherent capacity to distinguish of a trade mark for the Tasmanian population will be any different to the same assessment made for the rest of the country. The question of whether the trade mark is not capable of distinguishing the applicant’s services from those of other traders depends on its inherent characteristics, not its manner of use.

18.  Under section 17 and section 6 of the Act colour may be a registrable element. However, the same tests for assessing the inherent capacity of that element to distinguish goods or services will apply as to any other trade mark.

19. The colour limitation endorsement requested by the applicant means that the applicant is effectively limiting its rights to the trade mark depicted in the colours claimed, namely red, white and blue as shown in the representation on the application form, rather than simply claiming that the colour is a feature of the trade mark. I note that the claim for white as a colour in relation to this trade mark is rather spurious given that the representations of the trade mark show white as the background. As there is no frame or other device to limit the extent of the white field it can hardly be claimed that the colour white is a particular quality inherent in the trade mark itself.  Rather it is simply the colour of the page the trade mark is written or printed on.

20. The use of the colour blue in the printed or written word is very common, probably only matched by use of the colour black for similar purposes. For instance, I note that most internet search engines commonly utilise blue, black and red to highlight different parts of listings of websites. These are the principal colours used for newspapers, magazines and all manner of printed material. In fact, most of the non trade mark printed material supplied by the applicant, being annual reports, forms, brochures and advertisements, were printed in these colours.

21. Further, for the purposes of adding emphasis to a word or phrase, or editing such as in computer word processing packages, the use of these colours is again common. The use of red in such situations provides the necessary contrast to add emphasis and draw attention to a particular element. Again it would be common to find such a colour used for underlining, or for a symbol such as an ampersand, where one wants to emphasise that, for instance, business AND employment services were being offered.

22. I do not find anything unusual or distinctive in the colours applied to the words. It is significant that subsection 65(2) only permits amendments to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published. In this case the colour limitation was permitted during examination because it was a non distinctive alteration, and the visual, aural and conceptual identity of the mark was unaffected by the restriction to this particular set of colours. I do not think the Examiner erred in allowing the amendment.

23. Note 1 to subsection 41(6) of the Act states trade marks that are not inherently adapted to distinguish one trader’s services from those of other traders are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate;

(a)the kind, quality, intended purpose, value, geographical origin, or some other characteristic of goods or services; or

(b)the time of production of goods or the rendering of the services.

Such signs may be required for use by others and as a result, are not inherently adapted to distinguish.

24.  When considered as a whole, the words BUSINESS & EMPLOYMENT are not inherently adapted to distinguish, and the use of these words in the colours blue and red add nothing to the trade mark’s capacity to distinguish. These are trivial variants and ones which are likely to be used by other traders. The restriction to colour is a point of difference between the amended trade mark and the mark as originally lodged, however, it does not follow that the trade mark has any greater capacity to distinguish because of the change.

My conclusion is that the mark BUSINESS & EMPLOYMENT, when limited to the colours blue and red, is devoid of inherent capacity to distinguish the services claimed.

25. This conclusion brings the provisions of subsection 41(6) into operation. The applicant has provided evidence of use of the trade mark BUSINESS & EMPLOYMENT since 2002 in Tasmania, and filed this application for registration on the 7^th October 2004. There have been substantial levels of sales achieved in relation to the services, and high levels of promotion over that period. Examples of promotional materials such as pens and watches have been provided but there is no indication of how many units have been produced or distributed.  The agent has also pointed to a number of awards given to the company for their support of various business and employment schemes. However, in considering this material I must bear in mind the words of Jacobs J, who observed in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 286 and 302:

“… that evidence of promotion and use does not, without more, demonstrate distinctiveness. Nonetheless, common sense suggests that significant promotion and use of a trade mark among people concerned with the relevant market will have a tendency to enhance, rather than diminish, the trade mark’s capacity to distinguish the goods in respect of which it is used from the goods of others.”

26. As noted by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, in order for sales and advertising figures to contribute to a trade marks capacity to distinguish it should be clear from the evidence presented that the mark is actually being used as a trade mark. In the present case the evidence shows the words being applied at various promotional activities such as award ceremonies, and applied to stationery, brochures and signage but without any indication that the phrase is intended to be seen as a trade mark. I have seen no evidence of any claim by the applicant that the sign is a trade mark, for instance, such as might be shown by the use of the letters TM in proximity to the words or other references to a trade mark. Other than the three additional statutory declarations filed at the hearing, which are discussed below, I have seen no evidence that demonstrates that the words as represented are being perceived as a trade mark in the marketplace.

27. I note that, while the applicant has requested a limitation to the colours red, white and blue as shown in the representation attached to the application form, the evidence shows use of the mark in black and white on several occasions, or with the colours mixed around so that, for instance, the background colour is blue with the words in a white font. The website of the applicant at shows the trade mark in use in such a manner. There are also instances shown in the evidence of the mark being used in other colour schemes such as black on orange or black and red. Such use tends to compromise any attempts to build on a potential trade mark identity or portray the words as a trade mark amongst users of the services. This is particularly so where the words themselves are purely descriptive and the applicant is attempting to rely on the perception of the words in particular colours as a feature of the trade mark that would allow it to acquire capacity to distinguish.

28.  The agent has also submitted statutory declarations from three government representatives attesting to their recognition of the words BUSINESS & EMPLOYMENT as a trade mark. Unfortunately I cannot place much weight on these statements as the form of the wording used in the proforma style statutory declaration form ‘fills in the blanks’ for the declarants. The standard wording assumes the declarants recognise the words as a trade mark and asks for a date from which the declarant became aware of the trade mark. It is difficult to know whether the recognition the declarants claim is of a trade mark belonging to this applicant or as the description of a service provided to their respective departments. I note that the declarants refer only to the plain words BUSINESS & EMPLOYMENT (or misquoted as Business and Employment in one case), and there is no coloured representation forming part of the declaration, nor any reference to colour in the statements. This again suggests that colour is not perceived by these declarants as a distinctive part of this trade mark.

29. At the hearing Mr Williams submitted that the trade mark had acquired a significant reputation in Tasmania where it had been used since 2002. In light of the geographic limitation to Tasmania, the agent submitted that the question now was whether the applicant had established that, because of the extent to which the applicant had used the trade mark before the filing date in respect of the application, the trade mark did distinguish the services as being those of the applicant in Tasmania.

30. As I have found that this trade mark must be assessed under subsection 41(6) then the relevant date for assessing evidence of use must be as at the filing date. In this case that date is the 7^th October 2004. The evidentiary burden on an ordinary description rendered in the non distinctive colours is substantial. Despite reasonably high sales between first use in 2002 and the filing date in 2004, it is difficult to see how use over such a limited a period of time could result in these words being recognised as the trade mark of the applicant. This is so even considering the restriction to the State of Tasmania. The evidence lodged does not demonstrate that the words at the filing date are being used as a trade mark, nor that the users of the services have perceived the words as such.

Accordingly, I find that the applicant has not established that, because of the extent of use of the trade mark before the filing date, the trade mark did distinguish the services of this application.

Decision

31. I am not satisfied that the trade mark BUSINESS & EMPLOYMENT did distinguish the designated services at the date of filing. Therefore, I reject application 1024006 under subsection 41(2), subject to any appeal from my decision.

Rowena Beal

Senior Examiner

Trade Marks Hearings

23^rd December 2006