Daimler AG

[2017] ATMO 116

TRADE MARKS ACT 1995

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

ReInternational Registration Designating Australia number 1714073 (12) – AIRPANEL - in the name of Daimler AG

Delegate:	Nicholas Smith
Representation:	Holder: Blake Knowles, of Cullens Patent and Trade Mark Attorneys
Decision:	2017 ATMO 116 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA accepted for possible extension of protection to Australia

Background

1. On 8 July 2015, Daimler AG. (‘Holder’) applied to extend protection to Australia of International Registration 1260755 under the provisions of the Trade Marks Act 1995 (‘Act’) and Trade Marks Regulations 1995 (‘Regulations’).. Such an application is referred to as an International Registration Designating Australia (‘IRDA’) The current details of the IRDA appear below:

Application Number:	1714073
International Reg.	1260755
Filing Date:	8 July 2015
Priority Date	6 February 2015
Goods:	Class 12: Motor vehicles and parts thereof (included in this class) (‘Holder’s Goods’)
Trade Mark:	AIRPANEL	(‘Trade Mark’)

2. The IRDA was examined as required under Reg 17A.12 of the Regulations. On 31 August 2015 IP Australia issued a first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA, identifying a ground for rejection pursuant to s 41 of the Act (‘First Report’).  The examiner stated (paraphrased) that as a variety of other traders are using the words AIR PANEL or AIR PANELS in reference to several vehicle parts, including panels that allow air to flow through the front or side of the vehicle  other traders should be able to use AIRPANEL or something nearly resembling this in connection with goods and services similar to the Holder’s Goods.

3. After further correspondence between the examiner and the attorneys for the Holder failed to overcome the objection, the Holder requested to be heard by the Registrar of Trade Marks under reg 17A.17 of the Regulations.

4. As a delegate of the Registrar of Trade Marks I heard this matter on 19 September 2017.  Blake Knowles of Cullens Patent and Trade Mark Attorneys, representing the Holder, made oral submissions after having earlier provided me with an outline of written submissions in accordance with the pre-hearing directions I had given.

Legislative framework

5. Reg 17A.24 of the Regulations provides that:

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

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it.

…

(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it, in whole or in part.

6. Since the application to extend protection was made after the amendments to s 41 introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 came into effect on 15 April 2013 it is s 41 as it is presently constituted which is relevant in this case.

7. 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.

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: For goods of a person and services of a person see section 6.

Note 3: 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.

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).

8. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act, which corresponds to Reg 17A.24:

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[1] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

[1] (1998) 40 IPR 498, 505.

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered.  Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] 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 [Applicant’s Services]. [that is, s 41(4) applies][2]

[2] [2017] ATMO 25, [38]-[40].

9. The test for inherent adaptation to distinguish is set out in Clark Equipment Co v Registrar of Trade Marks:

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 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. [3]

[3] (1964) 111 CLR 511, [5].

1. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[4] (‘Cantarella’) considered that the process of considering whether a mark was inherently adapted to distinguish involved a two-step process.  They stated:

   It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable).  When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods.  The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[5]

   [4] (2014) 254 CLR 337.

   [5] Ibid., [50].

1. Accordingly directed, the first step is to determine the ordinary signification of the words comprising the Trade Mark in respect of the Holder’s Goods.  The High Court in Cantarella continued (emphasis added):

   As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with.  Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.  If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly.  However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.  Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish [6]

[6] Ibid., [71].

Ordinary signification

1. The process I am required to undertake is not a review of the examiner’s reasoning.  However, it is useful to understand how the examiner considered the question of inherent adaption to distinguish in respect of the Trade Mark.

2. In the First Report, the examiner reasoned that:

   Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods. This is because your trade mark is the word AIRPANEL, the joining together of the words AIR and PANEL.

   The Macquarie Dictionary relevantly defines AIR as a mixture of oxygen, nitrogen and other gases, which surrounds the earth and forms its atmosphere; motor vehicles - air conditioning and PANEL as a distinct portion or division of a wall, ceiling, door, shutter, etc., or of any surface sunk below or raised above the general level, or enclosed by a frame or border; a surface or section of a machine on which controls, dials, etc., are mounted.

   When used as a whole AIRPANEL indicates that your goods are, or have as a feature, a panel through which air (fresh or other) may be controlled, accessed, directed or otherwise maneuvered. Research shows a variety of other traders using the words AIR PANEL or AIR PANELS in reference to several vehicle parts, including panels which allow air to flow through the front or side of the vehicle to ventilate and/or cool the engine bay of the vehicle, and the control panel on a vehicle dashboard which operates the air conditioning system.

3. In maintaining the objection, the Examiner has also reasoned:

   the term AIRPANEL and variant AIR PANEL describe an aspect of the vehicle designed to improve aerodynamics by adjusting airflow through the engine. This is an ordinary meaning of ordinary words AIR and PANEL. Merely removing the space between the words is not inventive or fanciful’.

4. In the interests of clarity, I refer to the characterisations of the ordinary signification of the Trade Mark provided by the examiner (‘goods are, or have as a feature, a panel through which air (fresh or other) may be controlled, accessed, directed or otherwise maneuvered’ and ‘an aspect of the vehicle designed to improve aerodynamics by adjusting airflow through the engine’) as the ‘proposed signification’.  As part of their research to determine whether the Trade Mark had an ordinary signification and what it is, the examiner also relied upon (and I have been provided with) results of a search using the Google search engine for “‘air panels’ car parts” (‘Search Results’).

5. The Holder’s submissions include that:

   The Examiner has not looked at the ordinary signification of the trade mark. Instead, the Examiner appears to have arrived at a meaning for the trade mark by dissecting the mark into components, attributing meaning to the individual components and then with hindsight of the goods, drawing an allusion between selected meanings and the goods. …

   AIRPANEL is an invented word. As a composite whole, it has no dictionary meaning. The word AIR is well understood to refer to the invisible gaseous substance surrounding the Earth. The term PANEL has various meanings including:

   a flat or curved component, typically rectangular, that forms or is set into the surface of a door, wall, or ceiling.

   a flat board on which instruments or controls are fixed.

   The most obvious interpretation of AIRPANEL, having regard to the literal meaning of the words AIR and PANEL, is a component or board made of air.

   …

   Air does not pass through a panel. A panel by definition is a solid object that would not permit the flow of air. Air may however pass through a vent or opening, and a panel may incorporate a vent or opening. Therefore, AIRPANEL is at least one step removed from being descriptive of goods through which air may pass.

The Examiner’s objection may hold more weight if the mark under consideration was AIR VENT, or even VENTED PANEL. However, AIRPANEL is at most a suggestive and allusive reference to the goods. It is a combination of two common words into an unusual whole. To find meaning in AIRPANEL requires a search for meaning of the kind prohibited by the Court in TUB HAPPY.

…

The Examiner’s statement that the mark ‘describe[s] an aspect of the vehicle designed to improve aerodynamics by adjusting airflow through the engine’ is a clear instance of interpretation impermissibly going beyond the obvious or literal meaning of the words, into the realms of examining why a term may have been coined.

The trade mark clearly says nothing about aerodynamics, airflow or a vehicle’s engine. It may allude to these things, but allusion or suggestion is not sufficient to support rejection under section 41. The reliance on such reasoning indicates that an objection needs to be constructed rather than explained, and that maintenance of the objection under section 41 is not justified.

1. In oral submissions, the Holder took the Hearing Officer through the Search Results and submitted that very little regard should be had to them since:

• the search results included references to uses that occurred (or may have occurred) after the filing date;

• the search results were predominantly of sites based overseas, which does not definitively show an ordinary signification in Australia;

• Many of the uses of ‘air panel’ were use in connection with the Holder;

• Other uses of ‘air panel’ were descriptive references to panels that are part of the Chevrolet Bel Air vehicle (i.e. the Chevrolet Bel Air panel);

• None of the uses of ‘air panel’ were uses by a manufacturer (other than the Holder); rather they were uses by ebay sellers and the like.  This suggests that no traders in the Holder’s Goods need to use the term ‘air panel’ in respect of the Holder’s Goods or similar goods. 

1. I note that in Mark Foy's Limited v Davies Coop and Company Limited (‘Tub Happy’), Dixon CJ stated that:

   It is, I think, a mistake first to assume that words like “Tub Happy” do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is.  Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.

   The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude. [7]

   [7] [1956] HCA 41; (1956) 95 CLR 190, 194.

2. I broadly accept the Holder’s submissions set out in paragraphs 16 and 17 above.

3. AIRPANEL is an invented word with no dictionary meaning.  Combining the dictionary terms ‘air’ and ‘panel’ could result in a word that signifies a panel made of air, or a panel made to stop or control air.  Neither of these significations amount to a direct reference to the character or quality of the Holder’s Goods.  Nor is it apparent that these significations could be a covert and skillful allusion to the Holder’s Goods.  I find there is nothing inherent in the dictionary definitions of the words ‘air’ and ‘panel’ either separately or in combination that leads me to reach the conclusion that the ordinary signification of ‘AIRPANEL’ is (or is similar to) the proposed signification.

4. I accept the submissions made by the Holder that the Search Results do not definitively identify an ordinary signification for the Trade Mark.  Indeed, as noted by the Holder, they do not show any use of the Trade Mark by other vehicle manufacturers, rather it appears at best that isolated use of the Trade Mark is made by third party resellers of parts.  I cannot discern a specific product, or even type of product that would readily be identified as an ‘air panel’ (indeed the proposed signification itself does not identify such a product).  

5. In order to reach the conclusion that the Trade Mark has the proposed signification, I would have to view the Search Results, conclude that because certain traders have used the term ‘air panel’ in respect of car parts, that it must have an ordinary signification and then synthesize the proposed signification from that (very limited and apparently diffuse) use.  This assumption is precisely the error identified in Tub Happy.

6. I do not accept that the Trade Mark has the proposed signification.  I cannot, either through the use of ordinary dictionary definitions or the Search Results, identify any particular ordinary signification of the Trade Mark, and certainly not one that would amount to a direct reference to the character and quality of the Holder’s Goods.  As such, I do not need to consider the second of the two steps established by Cantarella, and I find that the ground for rejection has not been established.

Decision

1. Regulation 17A.24 provides:

17A.24Final decision on examination

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

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it.

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

(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it, in whole or in part.

1. As I am not satisfied that there is a ground for rejecting the IRDA under section 41 of the Act I must accept the IRDA for possible extension of protection in Australia. As a delegate of the Registrar, I now do so.

Nicholas Smith
Hearing Officer
Oppositions and Hearings
17 October 2017