Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Clearlight Investments Pty Ltd to extension of protection of international registration designating Australia 1345062(9,42) - SANREMO – (International Registration 1027184) filed in the name of Sandvik Mining and Construction Oy

Delegate: Debrett Lyons

Representation: Opponent: Adrian Ryan of counsel, instructed by Piper Alderman
Holder: Christopher Doidge of counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys

Decision: 2013 ATMO 50
Reg 17A.29 opposition: ss 41, 42 and 60 pressed – s41 established - opposition successful – refusal of extension of protection to Australia.
Costs: costs awarded against Holder
Background

This is an opposition brought by Clearlight Investments Pty Ltd (‘the Opponent’) pursuant to Reg 17A.29 of the Trade Marks Regulations 1995 (‘the Regulations’) to extension of protection to Australia of the trade mark SANREMO (‘the Trade Mark’), the subject of international registration designating Australia (‘IRDA’) number 1345062 in the name of Sandvik Mining and Construction Oy (‘the Holder’).
The IRDA has a lodgement date of 8 October 2009 with the International Bureau (‘the filing date’) and, after examination, extension of protection to Australia was proposed in relation to the following goods and services:
Class 9: Remote and tele-monitoring apparatus, remote controls and remote control devices and instruments
Class 35: Technological services and consultancy related to remote controls and remote monitoring of operation of devices, machines and working processes; remote monitoring, remote control and remote adjustment of operation of devices, machines and working processes and/or operational reporting through Internet, Extranet and/or any other global computer and telecommunication networks.
On 1 December 2010 the Opponent filed a Notice of Opposition to the IRDA.
As provided by the Regulations, the parties filed and served evidence. In particular, the Opponent’s evidence in support consists of the statutory declaration of Maurice Aldo Crotti made 25 October 2011. The Holder’s evidence in answer consists of the statutory declaration of Jacob Eisenberg made 16 February 2012. Finally, the Opponent’s evidence in reply consists of a further statutory declaration of Maurice Crotti made 28 May 2012.
The matter was set down for hearing on 27 May 2013 in Melbourne. As a delegate of the Registrar of Trade Marks I took oral submissions that day from both parties. The Opponent was represented by Adrian Ryan SC, instructed by Piper Alderman, Solicitors. The Holder was represented by Christopher Doidge, also of counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys. Counsel had submitted outline summaries of their submissions prior to the hearing and in accordance with my directions. Those submissions are also taken into account.
Discussion
The Notice of Opposition lists a number of grounds of opposition but Mr Ryan made it plain that the Opponent pressed only those grounds dependent on sections 41, 42(b) and 60 of the Trade Marks Act 1995 (‘the Act’). By application of the Regulations, those sections are also grounds for opposition to an IRDA.
I treat the remaining grounds listed in the Notice of Opposition as abandoned.
In order to succeed in its opposition the Opponent bears the onus of establishing at least one of the grounds pressed on the balance of probabilities.
The greater part of the evidence in support of the opposition consists of material aimed primarily at establishment of the Opponent’s reputation in the trade mark, SAN REMO, in Australia. Nonetheless, it was plain from Mr Ryan’s submissions that section 41 was the main basis for the Opponent’s objection to registration of the Trade Mark and so I turn to it first.
Section 41
I must initially address a point of difference in the submissions of Counsel as to which form of wording should be applied in this case having regard to the fact that section 41 has recently been amended.
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into effect on 15 April 2013. It repealed section 41 of the Act and substituted a new section 41.
The Registrar’s position is that the new iteration of section 41 applies to trade mark applications with a filing date on or after 15 April 2013 and that the repealed provisions continue to apply to trade mark applications with a filing date before 15 April 2013.
Mr Ryan submitted that the Registrar’s position is the correct one. He reasoned that was so “because the Sandvik mark was applied for prior to 15 April 2013 and thus consideration of s41 took place by the examiner when the section was in its former state.”
Mr Doidge (correctly) replied that the hearing in this matter was not an appeal from the examiner’s decision. He submitted (again correctly) that Schedule 6 to the Intellectual Property Laws Amendment (Raising the Bar) Act does not contain any ‘Application’ and savings provisions in relation to item 113 (the item amending section 41 of the Act). He therefore reasoned that the form of section 41 that applies in these proceedings is the section in its amended form.
I cannot agree with Mr Doidge. It is true that the amendment to section 41 is without any application or savings provision. Nonetheless, in line with my reasoning in Apple Computer v TodayTech Group Pty Ltd [2007] ATMO 40 (17 July 2007) I am in agreement with Mr Ryan’s further submission that in the absence of an application or savings provision the matter is regulated by section 8 of the Acts Interpretation Act 1901. I regard the filing date of the application to be the critical date and since it predated the commencement date of the operation of the amended section 41 I therefore find that the applicable form of section 41 is the form it took prior to 15 April 2013.
Section 41 as it then stood is reproduced below:
41Trade mark not distinguishing applicant’s goods or services
(1)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.
Note 2: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).
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)   if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)   if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)   if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)   in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
The nature and operation of section 41 was discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440 where she said:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered ("the designated goods or services"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).
The Opponent’s argument is that:
“San Remo” is, of course, the name of a city in Italy and is also the name of a number of towns including a town in Victoria at the bridge to Phillip Island, a popular holiday destination.
Clearlight submits that as the mark SANREMO is a geographical indicator, it has no or very little inherent capacity to distinguish the goods and services of the applicant. That being so, the applicant must rely upon distinctiveness acquired through use in Australia. The evidence of Mr Eisenberg goes no way towards establishing such distinctiveness. That evidence relevantly consists of one sentence, viz, “in Australia, Sandvik has used the trade mark SANREMO since 2009.” This kind of assertion is not evidence of use in Australia, far less is it evidence of the extent of use which would be necessary to demonstrate that the mark is capable of distinguishing Sandvik’s goods and services from those of other persons. Clearlight respectfully submits that this should be the end of the matter.
I must first consider the extent to which the Trade Mark is inherently adapted to distinguish the designated goods and services from those of other traders, a matter to be:
‘[t]ested by reference to the likelihood that other person, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise … 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’.[1]
[1] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 514 (Kitto J).
Mr Eisenberg’s evidence is that the Trade Mark was coined in 2006 from a combination of the words Sandvik, Remote and monitoring. Mr Doidge submitted that:
The Application is for SANREMO, not SAN REMO. SANREMO, in whatever combination of lowercase and uppercase letters is not the English name for an Italian city or any town in Australia. The proper question in relation to a word alleged to be a “geographical name” is, what is the “ordinary signification” of the word to an ordinary Australian, or put another way, “what is the general and popular meaning of the word”.
The first question which arises for consideration is that of the way in which the Trade Mark would be perceived. I consider that a consumer of ordinary intelligence and education would either know of the Italian city, San Remo, or if not, would, on an application of simple linguistic rules, deconstruct the Trade Mark into the elements “san” and “remo”, or perhaps, “san”, “re”, “mo”. I therefore consider it more likely than not that an ordinary member of the Australian public would have reason to think that the Trade Mark was a simple coalescence of SAN REMO.
Notwithstanding the Holder’s evidence that the Trade Mark was coined from a combination of the words “Sandvik”, “remote” and “monitoring” (which I have no cause to question), I am satisfied that the conclusion I have reached is supported by other parts of the Holder’s evidence which consistently shows that in practice the trade mark is used in the form “SanRemo”. I would summise that the Holder has deliberately chosen not to capitalize the letter “m” in use because that stylization is somehow more memorable (if not more elegant) than “SanReMo” and the reason for this is simply because it plays on the “ordinary signification” or the “general and popular meaning” of the word as a known geographical placename.
Mr Doidge went on to argue that:
The Office would appear to have a practice of considering that a coined word, that consists of the two words of a place name put together into a single word, is not a geographic name. For example, the Trade Mark “SansSouci” appears to have been recognized as inherently adapted to distinguish the goods and services of Registration No. 1267465 despite the well known suburb of Sydney, “San Souci”.
I do not think there is any such practice. To the contrary, I am reminded of the case of Re Application by Cedarapids Inc 13 IPR 297; [1989] AIPC 38,885 where it was found that CEDARAPIDS, being the conjoining of two constituent words of a place name and the elision of one letter, was no better qualified to distinguish the applicant's goods than was, CEDAR RAPIDS, the normal rendering of the geographical name.
So far as is relevant, part 22, paragraph 15 of the Trade Marks Office Manual of Practice & Procedure states that:
The "geographical origin" of goods or services is referred to in Note 1(a) included in section 41. Although many geographical names have a degree of inherent adaptation to distinguish, traders will generally not be able to obtain a monopoly on the name of a place or region with a reputation for the designated goods or services unless overwhelming evidence of use is forthcoming. These trade marks have no inherent adaptation to distinguish and registration could only be achieved on the basis of evidence. The evidence would have to show that, because of the extent to which the trade mark has been used before the date of filing, it does distinguish the applicant’s goods or services. In practice, however, it would be very difficult to provide evidence that such a trade mark does distinguish, particularly where the trade mark is for the name of larger, more significant cities, towns and rural areas.

15.1

Geographical names which have no inherent adaptation to distinguish

The following geographical names have no inherent adaptation to distinguish:

· Geographical names with some obvious or potential connection with the goods or services. This would include big cities where the likelihood of a connection with most goods or services is high but also tourist destinations with very small populations where the goods or services relate to tourism.

15.2

Names of Australian towns or localities

Trade marks which contain or consist of the names of Australian towns or localities are to be considered on the basis of their connection or potential connection to the designated goods or services. A ground for rejecting the application exists if the trade mark indicates geographical origin, particularly if the town or locality has a reputation for certain specialised goods or services, or if the goods or services claimed are of a general nature frequently found in all towns irrespective of population size.

15.3

Names of foreign towns, localities and other geographic references

Names of foreign towns or localities are to be considered on the basis of their connection or potential connection to the designated goods or services. In the case of applications for service trade marks such as Cherbourg Drycleaners or Shaftesbury Car Wash where provision of the service from outside Australia is unlikely, no ground exists for rejecting the application. An obvious exception to this would be "travel services". However in the case of applications for goods, registration could be more difficult to attain if the items are regularly imported from overseas or marketed on the basis of a foreign style.

Other words may suggest a geographic relationship and this should be given appropriate consideration at examination. For instance the word Kiwi can indicate an inhabitant of New Zealand and therefore a ground for rejection may be required where Kiwi is a dominant part of the mark and no extenuating circumstances allowing for acceptance exist.

The Holder contended that:
No evidence has been led to establish that either the Italian San Remo or the Victorian equivalent fit into either of these categories. However, the Italian San Remo is a small tourist town, with a population a little over 55,000, well outside the top 100 Italian cities in terms of population. It is therefore not a big city. It is a tourist destination with a small population, but the Designated Goods and Services bear no relationship to tourism. The same is true, but even more so, for the Victorian town. …There is no evidence that the Designated Goods are produced in, or Designated Services provided from, either foreign or local “San Remos” and no basis for a reasonable supposition that they ever would be. … There is just no evidentiary basis for concluding that the Designated Goods or Services are or ever would be produced in the Italian or Victorian San Remo, or that there are any other connotations or significations of the towns that other traders might want to use in relation to the Designated Goods and Services.
I do not need to say anything of the small Victorian seaside township of San Remo or of any other little known place in Australia by that same name since it is enough for me to take account of the place in Italy by that name. It is in my appreciation a large town or small city of over 55,000 inhabitants on the Mediterranean coastline of Italy just over the border from France. No doubt it is a popular tourist and holiday destination. Nonetheless, it is a sizeable place in its own right and somewhere the designated goods and services might be made or offered.
I do not consider that the Trade Mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons such that it is acceptable for registration under section 41(3).
On the other hand, the Trade Mark is to some extent inherently adapted to distinguish the goods and services and might have been accepted for possible registration under section 41(5) had there been evidence of its use. In that regard, Mr Ryan’s assessment of the Holder’s evidence is correct – there is nothing more than a bald assertion that the Trade Mark has been used in Australia since 2009. Without more, I cannot apply section 41(5).
Mr Doidge asserted that any objection to the Trade Mark as a geographical placename based on my own general knowledge or from my own research would require me to give the Holder an opportunity to respond.
I do not think that in the circumstances I am under any such obligation either by operation of law or by reason of procedural fairness. As Mr Ryan correctly responded, section 41 was listed in the Notice of Opposition as a ground which might be pressed. The Opponent’s outline submissions made available to the Holder prior to the hearing did in fact press that ground and so there is no argument that the Holder was not on notice of the objection. There was no application by the Holder to file further evidence. There is every indication that the Holder made its own study of the geographical significance of the Trade Mark.
My decision is that the ground of opposition under section 41 has been established.
Decision and Costs
The Opponent has established a ground of opposition. Under Regulation 17A.34 I refuse to extend protection of the IRDA to Australia. This decision is subject to an appeal under section 56 of the Act.
I award costs against the Holder.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
24 June 2013

Delegate:	Debrett Lyons
Representation:	Opponent: Adrian Ryan of counsel, instructed by Piper Alderman Holder: Christopher Doidge of counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys
Decision:	2013 ATMO 50 Reg 17A.29 opposition: ss 41, 42 and 60 pressed – s41 established - opposition successful – refusal of extension of protection to Australia. Costs: costs awarded against Holder

15.1	Geographical names which have no inherent adaptation to distinguish
The following geographical names have no inherent adaptation to distinguish: · Geographical names with some obvious or potential connection with the goods or services. This would include big cities where the likelihood of a connection with most goods or services is high but also tourist destinations with very small populations where the goods or services relate to tourism.
15.2	Names of Australian towns or localities
Trade marks which contain or consist of the names of Australian towns or localities are to be considered on the basis of their connection or potential connection to the designated goods or services. A ground for rejecting the application exists if the trade mark indicates geographical origin, particularly if the town or locality has a reputation for certain specialised goods or services, or if the goods or services claimed are of a general nature frequently found in all towns irrespective of population size.
15.3	Names of foreign towns, localities and other geographic references
Names of foreign towns or localities are to be considered on the basis of their connection or potential connection to the designated goods or services. In the case of applications for service trade marks such as Cherbourg Drycleaners or Shaftesbury Car Wash where provision of the service from outside Australia is unlikely, no ground exists for rejecting the application. An obvious exception to this would be "travel services". However in the case of applications for goods, registration could be more difficult to attain if the items are regularly imported from overseas or marketed on the basis of a foreign style. Other words may suggest a geographic relationship and this should be given appropriate consideration at examination. For instance the word Kiwi can indicate an inhabitant of New Zealand and therefore a ground for rejection may be required where Kiwi is a dominant part of the mark and no extenuating circumstances allowing for acceptance exist.

[2013] ATMO 50

24 June 2013