Clipsal Australia Pty Ltd

[2005] ATMO 64

TRADE MARKS ACT 1995

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

Re:      Application 982758 in the name of Clipsal Australia Pty Ltd.

Date of Decision:

8 November 2005

Delegate:

Ian Thompson

Representation:

Applicant

Bruce Caine instructed by Madderns, Adelaide

Decision:

Shape of dolly switch and objections in terms of s41(6) – relevant trade and customers to be considered in assessment of whether the trade mark is taken to be capable of distinguishing the designated goods.

Background

1.    The details of trade mark application 982758 are as follows:

Appn Number:            982758

Owner:  The Clipsal Australia Pty Ltd (‘the owner’)

Priority Date:              19 December 2003

Goods:Class: 9  Electrical wiring accessories which incorporate a rocker switch; electric switches including dimmer switches; and switched power outlets

Trade Mark:                “Switch Dolly” (Shape mark)

The trade mark appears thus:

2.    The application has been the subject of three adverse examination reports on the dates set out below:

8 April 2004;

16 November 2004;

20 May 2005.

3. In the third examination report, the Examiner maintained the objection that the owner’s shape mark does not relevantly distinguish the owner’s goods within the meaning of section 41 of the Act

4. In the wake of the third examination report, the owner exercised its right to be heard pursuant to sub-section 33(4) of the Trade Marks Act 1995 (Cth) (“the Act”). The hearing was before me, as a delegate of the Registrar of Trade Marks, in Adelaide on 16 August 2005. The owner was represented by Mr Bruce Caine, instructed by Madderns, Trade Mark Attorneys.

Evidence

1. The evidence relied upon by the owner in support of its application is contained in the following statutory declarations which were sworn on the dates set out below:

   From Clipsal  Date

   1.           John Harris  22/12/03

   2.           Maxwell Alexander Goodwin  22/12/03

   3.           Gary Busbridge  18/12/03

   4.           John Gerard  18/12/03

   5             James Osborne #1  18/12/03

   5a.         James Osborne #2  13/07/04

   Wholesalers

   6.           John Rhigas (SA)  16/01/04

   7.           Stephen Robert Howe (NSW)  15/01/04

   8.           Wayne Sampson (NSW)  22/01/04

   Contractors

   9.           Frank Russo (SA)  29/01/04

   10.         Vincent Michael Bibby (VIC)  07/01/04

   11.Brett Nash (QLD)  13/01/04

   12.James Moles (WA)  02/02/04

   13.Glen Primrose (WA)  03/03/04

   14.Stephen Griffiths (NSW)  19/03/04

   15.Kelvin Smith (NSW)  28/02/04

   16.Anthony Carlesso (NT)  04/05/04

   17.Ian Mansfield (TAS)  18/03/04

   Engineer

   18.Peter Reedy (NSW)  16/01/04

   6.    It is Mr Caine’s submission that these declarations show that the owner’s shape mark is inherently adapted to distinguish the Applicant's goods. He says the owner’s shape mark:

   1.is an original shape;

   2.is a shape that is striking to the eye;

   3.is a shape that is not dictated by any function or requirement, but rather is purely aesthetic;

   4.is unique to the goods in respect to which registration is sought;

   5.is a shape which other traders are not likely without an improper motive to want to use.

   See Re Freshfood Holdings Pty Ltd (2005) AIPC 92-074 (I Thompson)

   7.    Mr Caine observed that the owner’s 30 series Dolly Switch was first designed in April 1970.  In June 1970 it was redesigned to a more rounded shape.  The resulting “oval” shape of the owner’s Dolly Switch was a significant departure from the shape of switch mechanisms then in the marketplace. It is this shape which is the subject of the present application.  The owner’s Dolly Switch was first manufactured in September 1970.  The shape of the owner’s 30 series Dolly Switch has not altered since June 1970.

   8.    The design of the owner’s 30 series Dolly Switch was deliberately intended to move away from the square shape which characterised the products of the owner’s competitors and to arrive at a shape which was highly distinctive of the owner’s products.  The shape of the owner’s 30 series Dolly Switch soon became and has remained instantly recognisable as the owner’s product.

   9.    Further, Mr Caine stated that the evidence shows that the rounded shape of the owner’s 30 series Dolly Switch was chosen wholly for aesthetic reasons.  The shape has nothing to do with the function of the product.  The switch could have been any shape including round, rectangular or octagonal.  It would perform in exactly the same way provided the Dolly shape fitted the modular square at the rear that supports the Dolly.  

   10.   Less than one percent of sales of the owner’s sales of goods bearing the trade mark are to the general public via retail stores and two percent of all sales are to the general public – 98% of the sales are to the electrical trade which consists of electrical contractors, builders and architects.

   11.   The owner’s 30 series Dolly Switches are packaged in boxes which bear the name CLIPSAL (which is the owner’s house mark) along with a pictorial image of the actual product which depicts the owner’s shape mark. 

   12.   Since about August 2002, the owner has used labels and packing which bear a graphical representation of the owner’s shape mark together with the words “the shape of the Dolly Switch is a trade mark of Gerard Industries Pty Ltd” (the applicant’s predecessor in business). In that time, the owner’s has sold well in excess of $100 million of products which incorporate the owner’s shape mark.

   13.   The word mark CLIPSAL is normally printed on the inner surface on the face plate of each product.  The owner has never put a brand name or other identifying feature on the front of the switch.  A suggestion by Mr Harris, when he was marketing director of the owner, that the owner’s name be put on the front of the Dolly Switch was rejected by the Board as unnecessary because they believed that the unique shape of the Dolly Switch clearly indicated its trade source.  When the products are installed, there are no visible markings or indicia which enable a person to identify the source of the product other than the trade mark.

   14.   It is routine amongst those in the electrical trade to rely on the shape of the owner’s Dolly Switch in order to identify the owner as the manufacturer of the switch product.  This includes service personnel who are used to identifying the trade source of the apparatus to which the trade mark is affixed as the owner’s product by looking at the shape of the switch on the face plate.

   15.   Sales under the trade mark in the thirty five year period in which it has been used have been considerable with over 1500 million dollars worth of sales under the trade mark.

   16.   During the 33 year period 1971 to June 2003, the owner has extensively promoted its 30 series Dolly Switch incorporating the shape mark.  The owner has expended nearly 48 million dollars on promotion under the trade mark in the following forms:

   1.    product catalogues and bulletins;

   2.    mail-outs to the electrical trade;

   3.    trade shows;

   4.    flyers;

   5.    signage;

   6.    customer briefings;

   7.    videotapes;

   8.    sponsorships;

   9.    trade promotions.

   Reasoning

   17. Section 41 of the Act provides a scheme for the registration of trade marks which are capable of distinguishing goods or services; or trade marks which are shown by evidence either to have the capacity to distinguish the goods or services or to in fact distinguish them.

   18.   This process has been judicially explained by Branson J in Blount Inc v. Registrar of Trade Marks (1998) 40 IPR 498 at page 504:

   Sub-sections (3-6) 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 [pursuant to]: s.41(2). [Parenthetical material added]

   19.   The standard to be applied is that explained by Lander J in Kowa Company Ltd v N V Organon [2005] FCA 1282 from paragraph 118, culminating in 139, where he said:

   Both Registrar of Trademarks v Woolworths[1] and Lomas[2] stand for the proposition that the Court as well as the Registrar should approach the question of registration with the presumption of registrability in mind and when on appeal to this Court the Court should consider whether the trade mark should clearly not be registered.

   I think I am bound to follow Woolworths and Lomas, and I should as a matter of comity follow Torpedoes[3] because it has been followed by other judges of this Court.

   Therefore, I would proceed on the basis that the onus lies on the respondent to establish the grounds of opposition it relies upon and that I should not uphold those grounds unless I am satisfied that the trade mark should clearly not be registered.

   [1] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365

   [2] Lomas v Winton Shire Council [2002] FCAFC 413

   [3] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 204 ALR 90

   20.   Although the final paragraph mentions opposition proceedings, I note that Woolworths was an ex parte matter (both before the Registrar and the Courts) and that the principles enunciated thus apply here.

   21. It is also appropriate to confirm at this juncture that I do consider the sign which is the subject of the application to be a trade mark. Section 17 of the Act defines a trade mark as follows:

   A trade mark is a sign used, or intended to 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.

   22.   The evidence shows that the sign is used by those in the electrical trade to distinguish the owner’s goods from the similar goods of other traders.  It is of assistance in reaching this conclusion that the trade mark is unique and of the owner’s own design – although this is by no means determinative of the issue.  Several different traders, for example, may use the word TITAN as a trade mark for differing goods or services, which word is hardly either unique or an invention by its users.  

   23.   I note that when the goods are affixed to walls as a part of electrical installations, they have essentially passed out of trade and the word trade mark CLIPSAL is not visible, being on the ‘wall side’ of the goods – however, the evidence suggests that the shape of the dolly switch is used by those in the trade to identify the trade source of goods whatever the orientation of the goods.

   24. The initial part of my considerations of the inherent qualities of the applied for trade mark is in terms of section 41(3):

   (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.

   25.   In Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, Kitto J at pages 513-514 encapsulated the test to be applied in determining whether a mark was inherently adapted to distinguish the applicant's goods as follows:

   “[The] 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 … the question whether a mark is adapted to distinguish [is 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 – 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.”

   26.   Mr Caine submitted that in considering whether, in the ordinary course of their business, competitors might legitimately want to manufacture products of the same kind in the same (or very similar) shape as that applied for, it is useful to consider the following:

   (i)is it an ordinary or commonplace shape for the goods in question?

   (ii)is it a minor variation of an ordinary or commonplace shape for the goods in question?

   (iii)is it a shape that is essential to the use or purpose of the article?

   (iv)is the shape needed to achieve a technical result?

   (v)is it a shape which has an engineering advantage, resulting in superior performance?

   (vi)does the shape result from a comparatively simple, cheap method of manufacture?

   (vii)does the shape facilitate the manufacture, distribution or storage of the goods?

   See paper presented to IPSANZ by Mr Michael Arblaster in August 1999; Re Application by Effem Foods Pty Ltd (2000) 49 IPR 139 at 144 (H.R. Hardie); Re Application by Adcock (2000) 48 IPR 389 at 393-394 (T.E. Williams)

   27.   The approach and reasoning that I will adopt in relation to this question is somewhat oblique.  I acknowledge that the owner’s shape trade mark is unique – however, it is striking to me that the fact this particular shape is being used as a trade mark is an educative process.  Even those in the trade have to be educated that it is a trade mark and is being used as such and that it serves to indicate the owner’s goods.  While I acknowledge that the owner has undertaken an extensive programme of education of the purchasers of the goods, the fact that the owner has had to do this must necessarily lead to the conclusion that the trade mark lacks inherent capacity to distinguish the goods.

   28.   While the dolly switches of other traders in evidence are not the same shape as that of the owner, they may, to the uneducated eye, appear to be similar.  The trick – that of recognizing the trade origin of these switches – is simple; by the end of the hearing, I apprehended it absolutely and would recognize the owner’s goods without inspecting the backplate.  However, the trick requires explanation and education – as a trade mark the shape is thus without any inherent distinctiveness.

   29.   The considerations thus move to subsection 41(6) which provides:

   If the Registrar finds that the trade mark is not 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.

   30.   As observed above, two percent or less of the owner’s goods bearing the trade mark are sold to the general public.  The rest of the goods are sold within the trade.  The vast majority of those in the trade do (or can) distinguish the owner’s goods by reference to the shape of the switch on the faceplate of the owner’s goods.

   31.   Revenue from the goods has been in excess of $1500 million over thirty five years – and while sales per se do not equate to distinctiveness in fact,[4] the sales, along with the owner’s advertising expenditure over the same period combined with declarations from those in the trade, are a good indication of the extent within the trade that the shape has become recognized as a trade mark of the owner which is thus distinctive in fact.

   [4] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

   Decision

   32.   I will accept the application for possible registration.

   Ian Thompson

   Hearing Officer

   7 November 2005