Den Norske Stats Oljeselskap as, Re

[1999] ATMO 7

TRADE  MARKS  ACT  1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

WITH REASONS

Re:Application number 732283 in the name of Den Norske Stats Oljeselskap AS to register the trade mark  InstanSeal

Background
Trade mark application 732283 seeks registration of the word InstanSeal.  The application was made on 16 April 1997 and the applicant is Den Norske Stats Oljeselskap A.S, a Norwegian company located in Stavanger, Norway.

Den Norske Stats Oljeselskap A.S (the applicant) applied to register this trade mark for goods in class 1 described as:

Chemical products for industrial purposes; chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

goods in class 17 described as:

Sealing agents and materials; chemical components for sealing of leakage; rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal,

and services in class 37 described as:

Repair services.

At the applicant's request the trade mark application became the subject of a decision on the written record.

Issue

The application was examined and the examiner of trade marks objected that the term InstanSeal is descriptive.  In this regard the examiner found the words forming the mark are the phonetic equivalent of words, Instant Seal, which other traders are likely to need to use to describe their seals or repair services. It was his view that, when used in relation to the designated goods, InstanSeal describes them as chemical products and sealing agents that create an instant or immediate seal. In relation to repair services he pointed out that these services were similarly described by the trade mark InstanSeal, as services which were provided quickly or immediately. Accordingly, the examiner found there were grounds for rejecting this trade mark under the terms of section 41 of the Trade Marks Act 1995 (the Act).

In the course of examination the applicant offered to limit the designated goods and services. However, as the offered limitation would not, in the opinion of the examiner, overcome the section 41 objection the amendment was not made. No other material was provided to demonstrate the mark's ability to distinguish the designated goods and services

Submissions

The attorney's submissions on behalf of the applicant were that the trade mark, InstanSeal, is entirely adapted to distinguish; and its ability to distinguish was borne out by acceptance of the trade mark for similar goods and services in the United Kingdom, and in other jurisdictions.  There is no evidence that the trade mark has been used in Australia.

Analysis

Section 41 of the Act specifies registrability in terms of whether or not trade marks are capable of distinguishing an applicant's goods or services.

Section 41 states:

(1)…

(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.

(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.

(6) 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.

Section 41 of the Act has been considered in the OREGON case (Blount Inc v The Registrar of Trade Marks (1998) 40 IPR 498), where Branson, J observed, that in deciding whether a trade mark is capable of distinguishing, the Registrar has three options.  He (or she) may conclude:

(a) the trade mark is inherently adapted to distinguish the designated goods or services; or
(b) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services; or
(c) the trade mark is to some extent inherently adapted to distinguish the designated goods or services, but there is uncertainty, on that basis alone, if the trade mark is actually capable of distinguishing the designated goods or services.

As per sub-paragraph 41(5)(a)(i) of the Act, capacity to distinguish is to be gauged by assessing the extent to which the trade mark is inherently adapted to distinguish.  The meaning of this term is explained in Clark Equipment Company v Registrar of Trade Marks, the MICHIGAN case, 111 CLR 511. As per Justice Branson's judgment mentioned above, this precedent continues as good precedent under the Trade Marks Act 1995.

Adapting Justice Kitto's words in MICHIGAN (at p514) to the present case, his Honour's direction is:

... the question of whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons trading in [goods or services] of the relevant kind and … will think of the word and want to use it in connection with similar [goods or services]….

The essential question here therefore is, whether the term InstanSeal is a term other manufacturers or service providers are likely to wish to apply to their own sealing agents, seals or seal repair services.

Legal tests

In the present circumstances therefore I am first to decide whether InstanSeal either has, or has not, an inherent adaptation to distinguish the designated goods or services, or whether, InstanSeal is to some extent inherently adapted to distinguish those goods and services.

Instant is a common word meaning happens immediately, and Seal is a word meaning, inter alia, a proofing agent (Macquarie Dictionary).  Instant and Seal are therefore both ordinary and well-used words understood by all English speakers.  When these words are used for sealing materials and repair services, an ordinary member of the public would understand them to refer to goods that will provide an instant seal, or to refer to repair services that will provide an instant seal.  The words are apt for normal description and are not therefore inherently adapted to distinguish

However, the words used in this trade mark are not the exact words Instant and Seal. They are instead a variation created by the omission of the letter "T" from Instant and the joining together of the two parts of the trade mark to form a single word, albeit with an upper case letter "S" within that word.  These variations are claimed by the attorney to provide the mark with an inherent capability to distinguish.

Phonetically and visually, InstanSeal is very close to the rendition Instant Seal, and it is clear it comprises a misspelling of Instant Seal.  A misspelt word is not a term other traders would use for normal description.  However, the modification brought about by the elision and misspelling constitutes only a minor variation of the ordinary descriptive term.  InstanSeal looks and sounds very much like the ordinary descriptive term Instant Seal.

The trade mark, InstanSeal is therefore only to a minor degree adapted to distinguish and as a consequence I am satisfied it comes within the terms of subsection 41(5).

Subsection 41(5)(a) contains three criteria on which I am to assess the registrability of a trade mark which I find comes within the terms of subsection 41(5).  They are the combined effect of; the extent to which the mark is inherently adapted to distinguish; the use made of that mark; or the existence of any other circumstances that may demonstrate the mark does, or will, distinguish the designated goods or services.

I consider that because InstanSeal is so close to the ordinary description Instant Seal, it has only a low level of inherent ability to distinguish.  This being the case any use, or the significance of any other circumstances, which the applicant chose to rely on would need to be of some weight.

There is no evidence of use so the provisions of subsection 41(5)(a)(ii) do not apply.

Turning to the provisions of subsection 41(5)(a)(iii), 'any other circumstances'.  The attorney has provided a copy of a page from the United Kingdom Trade Marks Journal No 6194 of 24 September 1997, which shows acceptance of a trade mark InstanSeal, owned by the present applicant, for similar goods and services to the present application in classes 1, 17 and 37.  The attorney argues that the mark's acceptance for registration in the United Kingdom is a relevant 'other circumstance' in deciding the capacity of the mark to distinguish the designated goods and services in Australia.

Acceptance in another relevant jurisdiction may in some cases be a consideration. However, standing alone as a special circumstance, I do not consider that in this instance the existence of a United Kingdom registration is sufficient reason for me to be satisfied that this mark, in Australia, is capable of distinguishing.  In this regard I am unaware firstly of the actual circumstances under which the trade mark was accepted, or whether in fact it was subsequently registered in the UK.  Further, I do not believe the evidence provided of an acceptance in the UK can be the sole factor outweighing the mark's inability to distinguish the designated goods.

Given the trade mark's low level of inherent ability to distinguish, I find that insufficient other circumstances have been demonstrated for the purposes of this section of the Act.

Conclusion

Weighing up the tests as specified under 41(5)(a), I find that the circumstance of a United Kingdom acceptance is not enough for me to be satisfied the trade mark InstanSeal is capable of distinguishing the applicant's goods or services from Instant Seals produced, or provided by, other traders.

Accordingly, as per the directives contained in Justice Branson's decision referred to above, I am obliged to apply the provisions of subsection 41(2) and reject the registration of this trade mark application.

Harry Turner
A/Senior Examiner

27 January 1999