Carl-Orff-Stiftung

[2023] ATMO 40

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia 2191094 (International Registration No. 1599484) (classes 9, 16, 41) – Orff-Schulwerk – held by Carl-Orff-Stiftung.

Delegate:	Bianca Irgang
Representation:	Holder: Michael Koch of Koch IP Pty Ltd
Decision:	2023 ATMO 40 Trade Marks Regulations1995 (Cth) - regulation 17A.24 – consideration of section 41 of the Trade Marks Act 1995 (Cth) – ground for rejecting the IRDA exist – extension of protection refused.

Background

1. This matter is an ex parte proceeding involving the International Registration Designating Australia 2191094 (International Registration No. 1599484) (‘IRDA’) of the following trade mark under the Trade Marks Act 1995 (Cth) (‘the Act’):

   Trade Mark No: 2191094

   Trade Mark: Orff-Schulwerk (‘the Trade Mark’)

   Filing Date: 26 March 2021

   Holder: Carl-Orff-Stiftung (‘the Holder’)

   Specification of Goods and Services:

   Class 9: Apparatus for recording, transmission or reproduction of sound or images; scientific apparatus and instruments, teaching apparatus and instruments; image and sound carriers of all kinds, in particular compact discs, records, magnetic recording media, video cassettes, video tapes, digital recording media; metronomes.

   Class 16: Paper and cardboard; stationery; printed matter; books; music books; music sheet; office requisites (except furniture); instructional and teaching material (except apparatus); decorative objects made of paper; artists' and drawing materials; bags [envelopes, pouches] of paper, cardboard or plastics, for packaging and wrapping; stuffing of paper or cardboard; parts and accessories for all the aforesaid goods, included in this class.

   Class 41: Education; training, also in the form of distance learning; entertainment; cultural activities; providing music schools; providing music academies; education at music schools and music academies; publication of books, publication of music collections, publication of books, publication of music collections, publication of texts [other than publicity texts]; organization of exhibitions for cultural purposes, in particular for musical purposes; arranging and conducting training workshops; providing boarding schools services; composing music; conducting live events, in particular music festivals, musical performances; organizing and arranging conferences, congresses and symposiums; production of shows; theatrical performances; providing recording studio services; performing sound recordings; museum services.

2. The IRDA regulation 17A.12 of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’) and a provisional refusal was raised under regulation 17A.16 in respect of all the goods and services. The basis of the provisional refusal was a ground for rejection under section 41(3) of the Act. The first report provided:

   To be protected in Australia, your trade mark must be capable of distinguishing your goods/services from the similar goods/services of other traders in the market place. (For more details, see Section 41 of the Trade Marks Act 1995.)

   Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark is ORFF-SCHULWERK. ORFF-SCHULWERK word is the name of a particular approach to education. This indicates that your services use the ORFF-SCHULWERK approach, and that your goods relate to the ORFF-SCHULWERK approach.

   Other traders should be able to use ORFF-SCHULWERK in connection with goods or services similar to yours

3. The Holder was then given the option of providing additional submissions, evidence of use to overcome the ground for rejection or to request a hearing. The Holder’s legal representative responded by submitting that the Trade Mark was prima facie capable of distinguishing the Holder’s goods and services and that the Holder was the registered owner of Protected International Trade Mark 1166304 (PITM 914058) (‘PITM 1166304’) ORFF in classes 9, 16 and 42.

4. The examiner maintained the ground for rejection under section 41(3) of the Act. The second report from the examiner focused on the use of the expression by other traders and that the Trade Mark was not inherently adapted to distinguish. The report read:

   “…The reason that the trade mark has been found to have no inherent adaptation to distinguish is that it directly describes a particular method or approach to music education, as well as goods related to, or for use in providing or using such services. As such, it is a term that others are likely to desire to use in relation to their own similar goods and services, and in fact are using. Research shows that this term is used in Australia by multiple entities, as seen on websites and Regardless of how the term came about, or the registrability of individual components of the trade mark, as the trade mark as a whole is purely descriptive of the goods and services, and is being used by other traders as a description of those goods and services, it is not inherently adapted to distinguish. I have considered your submissions that as the word ORFF is a registered trade mark of the holder, other traders cannot use it in relation to their own goods and services. However, this is not a specific consideration of section 41. Rather, I must consider the trade mark as a whole, and whether that meets the tests, therefore the requirements of the Act. In this case it does not.”

5. A further examination report, which included escalation to IP Australia’s Quality and Practice section, was issued by the examiner after more submissions from the Holder’s representative failed to persuade the examiner to withdraw the section 41(3) ground for rejection.

6. Subsequently, the Holder requested to be heard on the matter. Once the hearing was set down the Holder filed additional submissions prepared by Michael Koch of Koch IP Pty Ltd along with its evidence being:

• The declaration of Rainer Kotzian dated 6 February 2023 and accompanied by exhibits RK-1 to RK-8 (the ‘Kotzian’ declaration)

1. The hearing then took place on 2 March 2023 before a delegate of the Registrar of Trade Marks. That delegate is not presently available and the matter has been handed to me to decide, in my capacity as a delegate of the Registrar of Trade Marks. I have carefully reviewed the entire file and hearing. My following decision and reasons reflect a consideration of section 41 of the Act afresh and are not a review of the decision of the examiner.

The Law

1. Section 41 of the Act 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.

1. Mr Koch argued that the Trade Mark was prima facie inherently adapted to distinguish the designated goods and services and should be accepted. He also argued that the Holder is the registered owner for PITM 1166304 ORFF in classes 9, 16 and 41 and that this prior right in the word ORFF needs to be given significant weight when assessing the present Trade Mark under section 41. He stated that consistency, justice and fairness dictate that section 41 be applied consistently to all trade mark applicants and referred to trade mark registrations that he believed were analogous to the present situation.

2. The ground for rejection was based on the research before the examiner that ORFF-SCHULWERK is the name of a particular approach to education which is recognised by the general Australian customer and used by other traders on the same goods and services. The Trade Mark was, therefore, descriptive of the Holder’s goods and services indicating that the designated services use the ORFF-SCHULWERK approach, and that the designated goods relate to the ORFF-SCHULWERK approach.

3. Mr Koch argued that the Trade Mark is not directly descriptive of the designated goods and services in classes 9, 16 or 41. Mr Koch points out that ORFF has no dictionary definition and is an uncommon German surname and that SCHULWERK means schoolwork in German. He states that the particular combination of ORFF-SCHULWERK has no dictionary meaning, is a phrase coined in the 1930’s by Carl Orff and his colleague, Gunild Keetman[1] and is inherently capable of distinguishing the Holder’s goods and services from the goods and services of other traders.  As such, Mr Koch says it is not reasonable to suggest, that the ordinary signification of the words in Australia contains a direct reference to any of the designated goods or services.

   [1] Exhibit RK-1 to RK-3 accompanying Kotzian declaration

4. Mr Koch argued that the Trade Mark represents no more than a “covert and skillful allusion” to the designated goods and services and that the Trade Mark is prima facie registrable. He went on to state that the Trade Mark is not likely to be used by other traders without improper motive and that the traders identified by the examiner in raising the section 41 ground for rejection were former authorised users with whom relations had soured[2]. He states the Trade Mark is not part of the vernacular utilised within the industry for any of the goods or services and there is no basis for its rejection particularly when the Holder’s prior rights in ORFF solus are considered given its prominent position within the Trade Mark and at the beginning of the expression.

   [2] The Kotzian declaration

5. These are a lot of arguments and assertions to assess and discuss. Firstly, I focus on the core requirements of section 41 concerning the question of whether a trade mark is inherently adapted to distinguish, Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark’) said:[3]

   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. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question 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.

   [3] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at 345–6, (‘Clark’)

6. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[4] noted the followed part of Kitto J’s test:

   "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"

   [4] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.

7. Considering this passage the majority of the High Court explained that the inherent adaptability of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, which may be characterised as “the target audience”[5]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade marks to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[6].

   [5] Ibid [28], [30] .

   [6] Ibid [73]

8. Superimposed on this test for inherent adaptability is the so called ‘presumption of registrability’ (which was formulated under the Trade Marks Act 1955 (Cth)), whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it. A trade mark that has an obscure reference to the Holder’s goods or services is not a word or phrase that is likely to be understood by others as a description/direct reference.

9. The expression “Orff-Schulwerk” is generally and universally understood to be:

   a developmental approach used in music education. It combines music, movement, drama, and speech into lessons that are similar to a child’s world of play.

10. Considering the goods and services claimed in the specification I am satisfied that the Trade Mark is descriptive of the fact that the goods and services are provided in relation to the developmental approach used in musical education. More than that, I find that other traders trading in the same goods and services are likely to think of this expression and want to use it without improper motive.

11. Mr Koch vehemently argued to the examiner that no other traders within the Australian marketplace would want to use the Trade Mark without improper motive stating:

    It has to be noted that the applicant is also the owner of Australian Registered Trade Mark 1166304 (IR914058) “Orff” in classes 09, 16, and 41, which was registered without an objection under Section 41. In our submission, this serves as prima facie evidence that the word ORFF has sufficient inherent capability to distinguish the applicant’s goods and services from similar goods and services of other traders in the market place. In our further submission, the part ORFF is a distinctive and dominant aspect of the trade mark “Orff-Schulwerk” for the claimed goods and services.

    In our further submission, it follows that even if the addition of SCHULWERK would be considered to be merely descriptive of the claimed goods and services, the applicant’s mark, at least, retains the sufficient inherent capability to distinguish by virtue of the distinctive and dominant aspect of the part ORFF.

    In our further submission, and with reference to Part 22.3 of the Trade Marks Manual of Practice and Procedure, In F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 at 555 (‘Barrier Cream Case’), Kitto J summarised the appropriate inquiry for determining inherent capability to distinguish as follows:

    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.

    In our submission, given the fact that at the filing date of the present application “Orff” was (and continues to be) a registered trade mark in Australia (owned by the present applicant), a trader was/is not at liberty to use ORFF-.SCHULWERK in relation to the claimed goods and services, without authorisation. In our submission it follows that, should a trader nevertheless wish to use ORFF-SCHULWERK without such authorisation, then the trader would do so with improper motive – namely, to (wrongfully) imply a connection to/authorisation by the owner of the registered mark “Orff”, i.e. the present applicant. In our submission, therefore, the answer to the above inquiry for the applicant’s mark is “No”, and hence the applicant’s mark has sufficient inherent capability to distinguish.

12. Mr Koch has essentially suggested that because the Holder is the registered owner of the trade mark ‘ORFF’ that the addition of the word ‘SCHULWERK’ to the end of ORFF is descriptive and therefore has no real significance when assessing the Trade Mark. He states:

    It is submitted that the Prior Mark (‘ORFF’) was rightfully registered on the basis that it is sufficiently) inherently adapted to distinguish, and that there is no reason to come to a different conclusion for the Trade Mark. The Prior Mark is wholly contained in the Trade Mark and therefore, in our submission, should be registered as being (sufficiently) inherently adapted to distinguish for at least the same reasons as for the Prior Mark, which claims the same, or substantially the same, goods and services as the Trade Mark

13. I disagree. Unlike section 44, the tests for section 41 do not require the assessment of previous trade mark registrations. However, Mr Koch additionally referred me to Clark as set out by Kitto J at paragraph 8:

    [T]he question 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

Mr Koch stated:

In Clark at paragraph 8, Kitto J also paraphrased being actuated only by proper motives, at several instances, as legitimate(ly). It is submitted that the test in Clark referred to in paragraph above requires a consideration of “actuated only by proper motives” or “legitimate(ly)” in relation to other traders wanting to use the word(s). It is submitted that consideration of “actuated only by proper motives” or “legitimate(ly)” in relation to other traders wanting to use the word(s) inherently includes consideration whether the use of the word(s) by other traders would infringe existing trade mark rights.

1. Therefore, Mr Koch claims that all traders using expression ORFF-SCHULWERK in the Australian marketplace are doing so with improper motive as the Holder is the owner of the prior trade mark ORFF. Mr Koch argues that this prior registration for ORFF automatically extends the Holder’s ownership rights to the current Trade Mark because the addition of the word SCHULWERK is not a substantial alteration of the original ORFF trade mark.  I do not agree with this argument. A comparison of ORFF solus to Orff-Schulwerk reveals a considerable number of differences between the trade marks which preclude the possibility of them ever being considered substantially identical. These differences preclude previous rights granted by the registration of the ORFF trade mark to potentially transfer to later applications including the Trade Mark. I turn to the authority of “Esso” Trade Mark (‘Esso’)[7] that Mr Koch referred me to.

   [7] [1972] RPC 283

2. In Esso at page 288, Whitford J stated, in considering whether a trade mark is registrable, “the registrations which the applicants already have but also the circumstances in which these registrations were secured, which it is I think rightly suggested are relevant to be considered. Justice Whitford went on to emphasize that, in the case-in-suit, while the very first ESSO word/image mark registration (in 1937 in Register B of the UK register at the time) was secured upon evidence of use, starting with the ESSO word mark A.585,313 (in 1938 in Register A of the UK register at the time), all later applications were secured upon the basis of advertisement upon acceptance, i.e. without any evidence being considered.

3. Mr Koch argued Esso is analogous to the current situation. I once again disagree. Not only were the Esso trade marks substantially identical, but evidence of use was provided in order to secure the first registration. Neither of which is applicable to the current situation.    Turning to the Holder’s PITM 1166304, I note that it was accepted without the Holder ever having to provide evidence in order to obtain protection. Mr Koch has argued that this is indicative that ORFF (and by extension ORFF-SCHULWERK) is prima facie registrable as the trade marks are unique and distinctive for the claimed goods and services. The file for PITM 1166304 reveals a different story.

4. While the Holder is the owner of PITM 1166304, I remind them that each case must be assessed on its merits having regard to the applicable legislation and the relevant judicial texts. In Ocean Spray Cranberries Incv Registrar of Trade Marks[8] at [35] where, after approving the reasoning of Jacob J. in British Sugar plc v. Robertson & Sons Limited[9] to the effect that a comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, Wilcox J observed:

   ‘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’

   [8] (2000) 47 IPR 579; (2000) AIPC 91-539

   [9] [1996] RPC 281 at 305

5. Mr Koch’s argument that the current situation is in line with Esso falls short of having any comparable similarities. Instead, a more appropriate example that would fit the current situation is if a party registered the word/surname TINY for architectural services and then later sought to rely on that registration in order to gain a registration for the commonly understood expression TINY HOMES for architectural services without having to provide any evidence. In this situation, extending the registration rights of TINY to include TINY HOMES would unduly extend the rights of the original registration. The exact same can be said for ORFF and ORFF-SCHULWERK.

6. In consideration of all of the above, it is clear that the Holder’s previous registration for ORFF does not preclude the current Trade Mark from being subjected to the normal tests required under section 41 of the Act. The addition of the word SCHULWERK is an alteration which significantly affects the perception and meaning of the Trade Mark as a whole.

7. While the Holder claims that the Trade Mark was coined in the 1930s by Carl Orff  and his colleague Gunild Keetman according to Exhibit RK-3 of the Kotzian declaration, the research conducted by the examiner and placed on the official file shows that other traders within the Australian and international education industry are using the expression ORFF-SCHULWERK to describe a developmental approach used in music education that combines music, movement, drama, and speech into lessons. While Carl Orff and Gunild Keetman may have coined the phrase and developed the initial developmental approach to music, the current prolific use of the expression in the Australian marketplace by numerous different, and apparently unrelated, traders makes it highly likely that the Australian end-consumer receiving the education has never heard of the Holder. Nor would they associate the education they are receiving under the ORFF-SCHULWERK approach to be in any way related to the Holder. ORFF-SCHULWERK is not acting as a badge of origin for any particular trader but rather, as a more ubiquitous approach within the Australian (and international) musical education marketplace.

8. Having taken into account the presumption of registrability, I am nevertheless satisfied that a ground for rejection exists under section 41(3) of the Act with regard to all the designated services. However, this need not be fatal to the IRDA if the Holder is able to provide sufficient evidence of use which is able to overcome the ground for rejection.

The Kotzian evidence

1. To this end, I turn to the Kotzian declaration. Paragraph two of the Kotzian declaration states that the Holder is a non-profit private foundation under civil law and was established on May 17, 1984 with the following statutory purpose that “the foundation has to preserve Carl Orff's artistic and educational legacy and to preserve and disseminate his intellectual and artistic legacy."

2. Mr Kotzian declares that the Orff Institute was founded in 1961 as the centre for the “Orff-Schulwerk brand at the Mozarteum in Salzburg. It was intended that the international dissemination of the brand Orff-Schulwerk was to take place from there. According to Mr Kotzian international courses took place there and basic training was developed and teachers from all countries - including Australia - were trained at the Orff Institute, who in turn founded companies in their own countries on the advice of the Orff Institute.

3. Mr Kotzian states that since advising and maintaining contacts with the international Orff-Schulwerk associations was taking up more and more time, the "Orff-Schulwerk Forum" association[10] was founded in Salzburg in 1983 by Hermann Regner. The task of the association was to advise the international Orff-Schulwerk societies. From that point on, the Orff Institute itself was primarily responsible for the training, further education and further training of teachers, and the forum was responsible for advising international organisations.

   [10] re-named in 2014 as " International Orff-Schulwerk Forum Salzburg"

4. According to the Kotzian declaration the first Orff-Schulwerk related companies/organisations in Australia emerged in the 1970s. Mr Kotzian avers these organisations/companies are structured as state associations under the umbrella of a national "Australian National Council of Orff Schulwerk Association". Since that time representatives of the Australian Orff-Schulwerk companies/organisations took part in the international summer courses of the Orff Institute in Salzburg, including the "Special Course for English Speaking People".

5. Mr Kotzian states the relationship between the Holder and the International Orff-Schulwerk Forum in Salzburg ended and after the disintegration of this relationship, the Australian organisations/companies were informed by the Orff Institute in Salzburg that they no longer required a license to use the Orff-Schulwerk brand[11].

   [11] Exhibit RK-8 accompanying the Kotzian declaration

6. While this history is interesting, most of it is unsubstantiated assertions put forward by the Holder and not helpful to the Holder for the purposes of section 41. Exhibits RK-1 to RK-5 accompanying the Kotzian declaration contain a number of print outs from Australian companies/organisations which demonstrate that ORFF-SCHULWERK is a musical education method developed by Carl Orff and Gunild Keetman. However, what those same Exhibits do not actually demonstrate is the expression ORFF-SCHULWERK being used as a trade mark or somehow acting as a badge of origin for the Holder. Instead, ORFF-SCHULWERK is used to describe the particular musical education style developed by Carl Orff and Gunild Keetman. Indeed, none of the evidence provided demonstrates ORFF-SHULWERK acting as a trade mark for the Holder within the Australian marketplace.

7. I am not satisfied that the Holder has provided sufficient evidence to overcome the section 41(3) ground for rejection.

8. Having taken into account the presumption of registrability, I am nevertheless satisfied that a ground for rejection exists under section 41(3) of the Act with regard to all the designated goods and services.

Decision

1. Under reg 17A.24(3)(b) of the Regulations, I refuse to extend protection to IRDA 2191094 in respect of all the goods and services listed.

Bianca Irgang
Hearing Officer
Trade Marks Hearings & Opposition
29 March 2023