Cartier International AG

[2019] ATMO 124

TRADE MARKS ACT 1995

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

Re:Trade mark  application number  1887783 (14) (Divisional from Trade Mark   No. 1728394) –SHAPE OF A BRACELET - in the name of Cartier International AG.

DELEGATE:

Bianca Irgang

REPRESENTATION:

Luke Merrick of counsel instructed by Corrs Chambers Westgarth

DECISION:

2019 ATMO 124

Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection under section 41(4) – evidence insufficient –

  application rejected.  

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No: 1887783

Divisional of Trade Mark No: 1728394

Trade Mark:     

(‘the Trade Mark’) Priority date: 15 October 2015 Applicant: Cartier International AG

Specification of Goods:

Class 14: Jewelry; jewelry products; precious stones; precious metals and their alloys; pearls (jewelry); cuff links; tie clips; rings (jewelry);

bracelets  (jewelry);  earrings;  necklaces  (jewelry); broaches (jewelry); charms; key rings of precious metal; works of art of precious metal; jewelry cases (caskets); boxes of precious metal; timepieces and chronometric instruments; watches; chronometers; wall clocks; small clocks; cases or presentation cases for timepieces; none of the aforementioned including watch straps (‘the designated goods’)

Endorsements:      The Trade Mark is a shape mark. It consists of the shape of a bracelet with a recurring head of screw device around the outer side of the bracelet and a hinge and locking clasp mechanism on opposite sides of the bracelet as shown in the representations attached to the application form.

1. The application was examined as required under section 31 of the Act and a ground for rejection was raised under section 41(4). The examiner’s first report provided:

Your trade mark is, or has as its main feature, an ordinary or commonplace representation of the goods in your application.

Other traders should be able to use this ordinary or commonplace representation in connection with goods similar to yours.

1. The applicant was then given the option of providing evidence of use to overcome the ground for rejection. The applicant’s legal representative responded by submitting evidence for the examiner to consider.

1. The examiner maintained the ground for rejection under section 41(4). The second report from the examiner focused on the common representation of the goods claimed by the applicant and the proposition that any shape which is commonplace for the goods in question will need to have been promoted as something apart from the goods. To meet the provisions of section 41(4), the examiner advised that the use should show examples of how the applicant has referred, promoted or demonstrated to potential purchasers that the shape being claimed is a trade mark, that is, how it is intended to have a trade mark function. The examiner concluded that the use provided did not show that the shape is being used or promoted as a trade mark.

1. Duly, the applicant requested to be heard on the matter as allowed by section 33(4) of the Act. The hearing took place in Canberra on 17 June 2019. Luke Merrick of counsel instructed by Corrs Chambers Westgarth made representations on behalf of the applicant. I conducted the hearing and the following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

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.

(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.

Note1:     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.

Note3:     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 (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.

Note2:     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. Mr Merrick argued that the Trade Mark was prima facie inherently adapted to distinguish the designated goods and should be accepted. He also argued that the Examiner’s contention that the applicant’s shape mark is an ordinary depiction of the designated goods was simply not the case and is an unsupported assertion.

2. The first step, in terms of subsections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the goods of the applicant from the similar goods of other persons.

1. The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks1(‘Clark Equipment’) where Kitto J said:

   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

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

it, upon or in connexion 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.

1. The ground for rejection as stated by the examiner is that the Trade Mark has limited inherent adaptation to distinguish the designated goods as the shape of the Trade Mark is functional and commonplace for the goods the Trade Mark has sought registration for.

2. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks2 (‘Kenman Kandy’) 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 Ltd3. As Stone J

2 [2002] FCAFC 273; 122 FCR 494; [2002] AIPC 91-817; 56 IPR 30 at [45] (‘Kenman Kandy’).

3 [2000] FCA 876; (2000) 100 FCR 90.

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 Ltd4 (‘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 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.

4 [2008] FCA 27; (2008) 166 FCR 312; [2008] AIPC 92-277; (2008) 75 IPR 102 at [64].

1. Mr Merrick has explained that whilst some of the features of the Trade Mark may perform a function, the bracelet contains a screw and clasp by which a screwdriver is required to ‘lock’ the bracelet onto a consumer’s wrist, the screw device which is repeated at intervals around the circumference of the bracelet is a distinctive, prominent and memorable feature of the Trade Mark. He goes on to state that with the exception of one functioning screw which acts as the clasp, the screw device is a visual, non-functioning feature.

2. Mr Merrick referred me to the principles set out in Clark Equipment, Cantarella5 and Kenman Kandy and argued that taking the Trade Mark on its face, the screw device imbues the Trade Mark with the capacity to distinguish the goods of the applicant from the goods of other traders for the following reasons:

(1)    First, the ordinary signification of the screw device is industrial and utilitarian, it is evocative of firmly fastening two objects together. The screw device does not allude to, or bring to mind, the nature of the Goods (broadly, jewellery and related goods).

(2)    Secondly, the screw device is not dictated by the form or use of the Goods. Nothing about the form or use of the Goods necessitates, or would typically involve, screws distributed around the circumference of a bracelet.

(3)    Finally, there is no legitimate reason why other traders would wish to use the Trade Mark as a trade mark in respect of the designated goods. The use of the utilitarian and industrial screw device on jewellery (and related goods) is, in itself, unusual and visually striking. There is no reason to suppose that other traders would legitimately wish to adopt the Trade Mark and use it as a trade mark on the relevant goods. Indeed, if other traders were to seek to adopt the Trade Mark for use as a trade mark, the more likely explanation for them doing so would be to attempt to benefit from the very extensive and valuable reputation that the applicant has developed in the Trade Mark. In light of the applicant’s registration for the screw device (a standard trade mark registration for the graphic depiction of a circular shape described as a screw head rather than a shape trade mark), other trader which sought to use the Trade Mark are likely to infringe the applicant’s rights – such conduct could not  be regarded as legitimate in the relevant sense.

1. I do not agree. In my view the Trade Mark has a very limited capacity to distinguish the goods of the applicant from the similar goods of other traders and a

5 Cantarella Bros Trading Pty Ltd v Moderna Trading Pty Ltd (2014) 109 IPR 154 (‘Cantarella’)

ground for rejection under section 41(4) applies. In saying this, I turn to the Trade Mark and observe that it is an oval shape which is a common shape for a bracelet and that one of the screws is functional and intended to be as such – the bracelet is supposed to be affixed to the wrist by opening it up and then screwing it closed to snap onto the wearer’s wrist in a fitted way which is to provide a sleek fit to the wrist and prevent the bracelet from being easily removed. The reason why I am satisfied that a ground for rejection under section 41(3) does not apply is because of the even spacing of the ‘screw head’ devices around the bangle which do not appear to have a functional purpose but rather an aesthetic purpose.

1. Mr Merrick provided additional submissions in the event of my finding that a section 41(4) ground for rejection applied and directed my attention to the evidence of use and reputation filed by the applicant.

1. The evidence put forward by the applicant is in the form of:

(1)  Declaration by Arlene Marce, the Maison Lead Intellectual Property Counsel at Richemont International SA, dated 21 April 2017 (‘Marce declaration’) accompanied by Annexures AM-1 to AM-14; and

(2)    A survey report prepared by Dr David Bednall of Heatherdale Consulting Group dated February 2019.

1. The Marce declaration states that the ‘Love Bracelet’ was designed in 1967 and has been promoted and sold in Australia since at least 2011. Below is an image of the Cartier Love Bracelet:

1. Ms Marce provided evidence of the applicant’s promotion of its Love Bracelet in Australia through the following means:

(1)    In-store activities at its Australian boutiques;

(2)    Print media advertising including advertisements through magazines including Vogue, Harpers Bazaar, Marie Claire and the Sydney Morning Herald;

(3)    Cartier website (including an Australian specific website)6

(4)    Cartier’s Facebook ® page7

(5)    Cartier’s Instagram® page8

(6)    Cartier’s YouTube® channel9

(7)   Cartier’s Twitter® account10

(8)    Cartier’s Pinterest® account11

1. Ms Marce explains that in 2010, the applicant launched a global advertising campaign, including Australia, called “How far would you go for LOVE” (the Love Campaign) which aimed to exclusively promote the Love Bracelet. The Love Bracelet was depicted prominently in the images used in the Love Campaign. The word “Love” in the Love Campaign was depicted as  shown below, with the letter “O” represented using the shape of the letter “O” with a horizontal line, as it appears on the Love Bracelet.

1. Ms Marce also provides confidential sales numbers of the ‘Love’ Bracelets in Australia from 2010 until 201512. Without revealing the detail of those sales, the average cost of the Love Braclet is most likely an influencing factor when considering the number of sales demonstrated by the applicant.

6 Annexure AM-3 accompanying the Marce declaration 7 Annexure AM-4 accompanying the Marce declaration 8 Annexure AM-5 accompanying the Marce declaration

9 Annexure AM-6 to AM-8 accompanying the Marce declaration
10 Annexure AM-9 accompanying the Marce declaration

11 Annexure AM-10 accompanying the Marce declaration

12 Confidential Annexure AM-1 accompanying the Marce declaration.

1. When I consider the applicant’s evidence, I am faced with the difficulty in determining how much of the evidence actually demonstrates that the functional shape of the bracelet is acting as a badge of origin for the applicant. To this end the applicant did provide the survey evidence of Dr David Bednall. The key details of the survey are as follows:

(1)    156 interviews were conducted.

(2)    Surveys were conducted of the target market for the Love Bracelet, being females aged 18 and over who were residents of Australia.

(3)    The surveys were carried out in the Melbourne Central Business District on Bourke and Collins Streets in October 2018.

(4)    The surveys were conducted by paralegals from the applicant’s lawyers who did not know on whose behalf the survey was being carried out and had never carried out any work for the applicant.

1. According the to the representatives for the applicant, the respondents to the survey were shown the Love Bracelet with the word “Cartier” removed from the bracelet as well as a control bracelet which was a Love Bracelet with all markings removed. Overall 30% of the respondents said that the company, product or brand indicated to them when they were shown the Love Bracelet with all its ‘screw head’ markings was “Cartier”. Whilst, the control bracelet only garnered 1% of respondents saying that the bracelet indicated the applicant as the trade source.

1. The applicant has argued that the survey results demonstrate that the Love Bracelet with its screw head marking, being the shape which is the subject of the current application, s functioning as a badge of origin for the applicant. However, I do not agree.

1. When it comes to this survey evidence I am cautious to accept it as representative of the general Australian population. The survey was only carried out with female respondents when I note that the designated goods in the application are ‘jewellery’ and related goods which are goods which both sexes may purchase. I also note from the applicant’s evidence that the bracelet was initially intended to be a unisex jewellery item.

1. More notably, the survey was carried out on the same street where the applicant’s Cartier flagship store is located in Melbourne.

1. While I am unaware of the advertising of the applicant’s goods that may have been present in the area at the time, I suspect that a female walking  down the street and observing the applicant’s store before answering a survey a few minutes later on the same street could potentially influence the results of the survey. With such a likelihood, this survey evidence does not satisfy me that the shape is functioning as a trade mark for the applicant.

1. While the evidence provided shows that the applicant’s goods have been widely advertised and that a number of them have been sold in Australia, the evidence does not show that the shape has acquired recognition as a trade mark. The evidence shows that the shape is used in advertising but it does not clearly demonstrate that this is likely to be seen as anything other than a representation of the goods. The applicant has provided a lot of evidence which demonstrates that the bracelet is referred to as the “Love Bracelet” or the “Cartier Love Bracelet” and the goods are often shown in the advertisements with the word “Cartier” engraved inside or are very prominently displayed alongside the trade mark Cartier ®. I am not satisfied that the shape is being recognised by consumers as a Trade Mark of the applicant rather than a product that is produced by the applicant.

1. Additionally, as pointed out by Burchett J in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd13:

   In my opinion, merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark (here the marks do depict, one more completely than the other, a working part of a triple rotary shaver) is not to engage in a "use" of the mark "upon, or in physical or other relation to, the goods" within s 7(4), or to "use" it "in relation to the goods" within s 20(1). "Use" and "use", in those contexts, convey the idea of employing the mark, (first) as something that can be "upon" or serve in a "relation" to the goods, (and secondly) so as to fulfil a purpose, being the purpose of conveying information about their

13 [2000] FCA 876; (2000) 100 FCR 90; 177 ALR 167; [2000] AIPC 37,643; 48 IPR 257 at [12].

commercial origin. The mark is added, as something distinct from the goods. It may be closely bound up with the goods, as when it is written upon them, or stamped into them, or moulded onto them (see The Coca- Cola Company v All-Fect Distributors Limited trading as Millers Distributing Company (2000) AIPC 91-534), or, in the case of a liquid, it may be sold in a container so formed as to constitute at once both container and mark. But in none of these cases is the mark devoid of a separate identity from that of the goods. The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as the trade mark. The reason is plain: it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately wish to produce similar goods (unless, of course, there are, for the time being, subsisting patent, design or other rights to prevent them from doing so), and it follows that a mark consisting of nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a mark […]

1. Given all of the above and in light of a valid section 41(4) ground for rejection against the Trade Mark, I have no recourse except to reject the Trade Mark.

Decision

1. Section 33 of the Act provides:

33  Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:       For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:       For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)    the application has not been made in accordance with this Act; or

(b)    there are grounds under this Act for rejecting it; the Registrar must reject the application.

Note:       For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:       For applicant see section 6.

1. I am satisfied that there is a ground under section 41(4) of the Act for rejecting trade mark application no. 1887783 and I hereby reject it.

Bianca Irgang Hearing Officer

Trade Marks Hearings & Opposition 19 August 2019