Dualit Ltd

[2001] ATMO 6

TRADE MARKS ACT 1995

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

Re:Applications 769783(11) and 769784(11) - TOASTER SHAPES - in the name of Dualit Limited

Background

These issues arise out the filing on 11 August 1998 of two applications by Dualit Limited (‘the applicant’) to register the shapes, as shown below, of bread toasters in respect of goods specified as 'toasters'. The applications are made under the provisions of section 51 of the Trade Marks Act 1995 (the Act) – these provisions prescribe the conditions under which the registration of a series of trade marks may occur.

 

769783 - Rounded-end     769784 - Angled-end

The examiner’s first reports issued on 4 November 1998.  The examiner objected under the provisions of section 41(5) that the trade marks were not capable of distinguishing the applicant’s goods from those of other traders and invited the applicant to submit evidence of use of the trade marks addressing the provisions of subsection 41(5).  Following the elapse of some fifteen months, the applicant sought, and received, extensions of time till 4 May 2000 in which to make a response to the examiner’s reports.  On 28 March 2000, Phillips Ormonde & Fitzpatrick, the attorneys for the applicant, responded to the examiner’s first reports, enclosing two statutory declarations.  The first is by Lesley Alexander Gore-Barten, managing director of Dualit Limited, of England, and the second by John Ryan, managing director of ET Miller Pty Limited – Australian importer and distributor for the applicant’s goods.  The attorney’s accompanying letter argued briefly that “the evidence shows that as a result of the extensive use of the trade marks in Australia and overseas, the shapes have become design icons and are synonymous with the applicant Dualit Limited.” The examiner’s responses to the submission focused on the lack of capacity in the trade marks to distinguish, the shortcomings of the evidence and were supported by general observations concerning some toasters that the examiner had seen for sale in some shops. 

The applicant responded by leading evidence from a number of people who are involved in the sale of electrical appliances or kitchenwares – I will term these declarations the ‘pro forma’ declarations when referring to them as a group and individually as follows:

Declarant	Declaration Known as:	Made	Exhibits
Susan E Jenkins	Jenkins	26 June 2000	1
Peter Gialouris	Gialouris	23 June 2000	1
Susan Fiona Loudon	Loudon	22 June 2000	1
Stephen Panui	Panui	26 June 2000	1
Jill Braslin	Braslin	21 June 2000	1
Karen Lea Gubb	Gubb	23 June 2000	1

(I will note now that there are a number of problems with the pro forma declarations both regarding their prima facie provenance and regulation 21.6 which provides how declarations are to be made.  The Jenkins declaration refers to the declarant as both Susan E Jenkins and as Susan Anne Jenkins and bears no signature – only a hand printed name.  The Panui declaration merely identifies the place of execution of the declaration as the name of his employer.  The Braslin declaration has consistently identified the manufacturer of the toaster as being “DURALIT”; somebody has crossed out the letter “R” but it is not clear whom since the correction is not signed or initialled.  Further, the Braslin declaration, in response to questions which request the declarant to delete either the word ‘yes’ or ‘no’ to answer the question, has consistently circled the word ‘yes’ and left the word ‘no’ alone.  Thus, it is not clear whether Braslin intended to delete the word ‘yes’ or was answering affirmatively – although the latter seems to be more likely.  Finally, the Gubb declaration does not state the name of the person before whom it was made or the address of the declarant).

There followed an exchange of submission and response by attorney and examiner, the examiner’s culminating with the observation that, “It seems that we have reached an impasse and no further progress can be made at the examination level.  The only avenue open to the applicant for finalising this matter seems to be to present any further argument at a Hearing.  I therefore advise that I intend to refer any further submissions to the Hearings section where the matter will be set down for a Hearing.”  On the attorney’s further submission, the matter was set down to be heard.

The hearing was by video-conference on 26 October 2000 – the applicant being represented by Mr Russell J Waters of Phillips Ormonde & Fitzpatrick.  I heard the matter as a delegate of the Registrar of Trade Marks.

Some days prior to the Hearing, I brought a decision of the British Courts to the attention to Mr Waters and advised him that it would be appropriate that he address the observations of the Court in his submissions.  The decision of the British Court is of the High Court of Justice – Chancery Division and is reported as Dualit Ltd’s (Toaster Shapes) Trade Mark Applications [1999] RPC 890 (the Toasters Case).

The Evidence

It is convenient for me to include here a perspective picture of the round-ended toaster since it will enable my discussion of the issues to be more easily followed:

The Gore-Barten declaration attests that the declarant has been managing director of the applicant since 1980.  Mr Gore-Barten attests that the toasters the subject of application 769784 have been sold extensively throughout North America, Europe, Australia, New Zealand, Hong Kong, Singapore, other Asian countries and South America since 1986.  The round-ended toaster, the subject of application 769783, has been sold in the above countries since early 1995.  Mr Gore-Barten continues by stating that both shapes have a number of features in common which distinguish them from other toasters on sale for the last twenty years.  These are claimed to be: that they are of heavy solid construction, have a rounded upper profile as seen in end view, substantial end cast sections each banded at the base at its joint with the central section, an operating lever extending through a slit in a separate lower part of the central section, and a series of vertical parallel slots in each of the end faces.  The central sections, avers Mr Gore-Barten, of each of the models are exactly the same but the end castings have slightly different shapes, those of application 769783 having a rounded top in side view while those of 769784 have a more angled, or chamfered, shape.

I gather, from the evidence, that the toasters are primarily designed with a commercial application in mind but have become a desirable kitchen accessory for some cognoscenti.

The declaration elaborates on the development of these toaster shapes from the design developed in 1948 by Mr Gore-Barten’s father.

The declaration draws my attention to the amounts in pounds sterling charged by Dualit to its Australian distributor for supply of the toaster.  The amount ranges from some $22,000 in 1989/90 to a yearly average of some $120,000 till 1995/1996 for the angle-ended toaster.  If I understand the figures correctly, Australian sales of the angle-ended toaster, the subject of application 769784, ceased in 1995/1996 since the figures for that year are low and no subsequent figures are given in either of the main declarations.  Sales of the round-ended toaster, the subject of trade mark application 769783, started in 1995/1996 and averaged some $250,000 a year in charges by Dualit to its Australian distributor in the two subsequent financial years.  The exhibits to the declaration suggest that, in Britain, the toaster retailed at this time for around the equivalent of $240 – (the figures in this paragraph assume an exchange rate at the time of two dollars Australian per pound) – however, an advertisement attached to the Ryan declaration gives an Australian retail price of $595 for the round-ended toaster.

The Gore-Barten declaration draws my attention to two features in publications, one in the British Daily Mail newspaper dated 8 August 1997 and the other in Best magazine.  These magazines have short articles about two different toasters, the first a Littlewoods and the second a La Cuisine.  These articles both compare the toaster design being publicised to the Dualit toaster design, to which they both have a marked similarity.  The inference is, states the declarant, that the Dualit design is well known and recognised by the “advertiser” who uses it to describe the other toaster.  I would, however, take these writers to be journalists who either specialise in the kitchen or home-wares area or are writing with reference to copy provided to them by the makers of the toasters.  One would expect such persons to know of the Dualit toasters since this is their job or they are working from information provided to them.  Moreover, the journalists were writing in Britain, where the articles were circulated.  I do not believe that these articles succeed in showing any awareness of the Australian public of the shapes of the toasters.

The Gore-Barten declaration attaches a copy of a declaration made by a Mr Bryan Whittaker of the (British) Association of Catering Equipment Manufacturers and Importers.  Mr Whittaker affirms that he associates the shape with Dualit and that he is not aware of any other company selling toasters of a similar shape to that in question. 

I will interpose here to observe that Mr Whittaker had been replying to a question from the British trade mark firm prosecuting the corresponding shapes before the United Kingdom Trade Mark Office.  I find his references to the two different trade marks as being the one shape quite confusing and I cannot be certain to which sign he is referring, if he is referring to both or whether, indeed, he has actually realised that he has two different signs before him.  While it could be argued that the features in common to both signs have led to his observations, I am not at all sure whether it might not be the case that Mr Whittaker’s conclusions have arisen from observing the functional features of the toaster which are in common between the two differing shapes, (the placement of the light, knobs, levers and dials) on their own or in combination with the general shapes of the toasters.  Additionally, Mr Whittaker would be expected, in his position, to know of the products of his association’s members – thus his knowledge of the toasters cannot be seen as indicating any wider knowledge or recognition of the toaster shape by the public.  Further, he is attesting of his knowledge of the shapes in Britain – not Australia.  Accordingly, I view this declaration as being of low relevance to these issues.

The Gore-Barten declaration then goes on to detail at some length the advertising, promotion and publicity surrounding the toasters.  This consists of material published in the United Kingdom, details of British Trade Shows, British mail-order catalogues and the like.  This does not appear to be relevant to Australia and it is not shown that any of this material actually carried to Australia.  The toaster has also appeared in films and television: in 1994, the angle-ended toaster appeared in Star Trek: Generations within the kitchen in Captain Kirk’s retirement cabin.  The same toaster appeared in a film called Shallow Grave in 1994 where it “was the blunt instrument with which the villain was eventually despatched.”  However, this is the toaster that appears, from the evidence, to be no longer sold in Australia.  The toasters have also been props in the series Coronation Street, Eastenders, AbFab, Friends and an episode of Bread.  I think that for the shape of a prop in a television show or cinema film to be significant in issues such as these before me, the viewer would need to recognise its significance.  The argument that such exposure results in a shape which is unknown to Australians becoming well-known appears to be founded on a false premise since the significance of the shape of the prop may only be apparent when it is explained during the show, is previously known, or subsequently explained. 

I thus regard the content of the Gore-Barten declaration as being of relevance only insofar as it shows some of the background to these applications – apart from confirmation of export of goods to Australia and some figures to support this, the declaration is of negligible relevance to the Australia marketplace.

The Ryan declaration is by John Ryan who is managing director of E.T. Miller Pty Ltd, the Australian importer and distributor of the applicant’s toasters.  He says that the Dualit toasters’ shape and design render them worldwide traditional icons.  A Dualit toaster, avers Mr Ryan, “is easily recognised by its all metal finish and moulded slot ends.  The Dualit toasters’ robust design and long-term life expectancy stands them apart from all other toasters.”

Consistent with the Gort-Barten declaration, the sales figures given in the Ryan declaration for the angle-ended toasters (application 769784) come to an end in 1995/1996.  However, Ryan's figure for sales of this toaster in this year is so at variance with that of the Gore-Barten declaration that it can only be a mistake:  in the Gore-Barten declaration, the figure given for the 1995/1996 year is under one third the amount charged by the applicant to the distributor during the year 1994/1995 and yet the figure given in the Ryan declaration for 1995/1996 is nearly double that of 1994/1995 – the mismatch is thus by a factor of six.  The samples of the advertising of the toaster distributed in Australia all feature the round-ended toaster.  It could be safe to conclude on this evidence that the angle-ended toaster has not been distributed in Australia since 1995.  However, the Ryan declaration is at odds with this evidence, he attests that “toasters in accordance with application 769784 [the angle ended toasters] have been distributed in Australia since early 1986 and toasters in accordance with application 769783 [the round-ended toaster] have been distributed in Australia since 1995 (hereinafter ‘Dualit toasters’).”  [Parenthetical material adjusted].

Subsequently, the Ryan declaration makes statements using the defined term, 'Dualit toasters', such as “Dualit toasters are sold in two different markets,” or, “The Company has exhibited Dualit toasters at commercial trade shows”.  There follows the details of a trade show in 1997 and another in 1998 – both well after the import of the angle-ended toaster had apparently ceased.  This evidence is confusing since it suggests both a continuing sale of the angle-ended toaster and that the angle-ended toaster remained on sale and display in Australia after importation had seemingly ceased in 1995 – it invites conclusions which a more detailed consideration of the evidence suggests are not based in reality.  Accordingly, I am not inclined to put much reliance on the Ryan declaration.  It appears to contain a factual error concerning sales figures.  It tends to confuse the use of the two trade marks and to telescope the use of the two different trade marks into an amalgam.  Further, it might alternatively be viewed as being poorly drafted or less than fully frank.

I would estimate, to judge by the retail price of the toasters and the stated annual sales totals, that some three to four hundred of the round-ended toasters are sold within Australia each year.  I have some hesitation about this figure since this estimation relies on the figures supplied in the Ryan declaration that – as I have indicated – appear to be wrong for the 1995/1996 year.  The sales of the toasters occur through some 149 outlets.  If I am correct in my extrapolation from the figures supplied, each of these outlets might on average sell some three or four of the round-ended toasters a year. 

There has been no information supplied by Dualit about the size of the toaster market in Australia or the proportion of the market that it occupies.

Mr Ryan states that his company has advertised in Galley Magazine - 1996, Table and Kitchen Magazine - 1996, Vogue Entertaining - 1997, Info-Link Magazine - 1997 (3 times), Galley Magazine – 1997.  Copies of some of the advertisements are exhibited to his declaration and all show the round-ended toaster.

Mr Ryan avers that the Dualit toasters have been provided and promoted as prizes on two prime time Australian quiz shows, The Price is Right and Concentration.  It is not stated whether the toasters were provided to these shows on an ongoing or once off basis.  The dates of these shows are not provided; neither is it stated which shape of toaster was provided to these shows.

I return now to the pro forma declarations.  The questions that the declarants are answering are not well-framed and the answers confusing – for example, in response to a question about the angle-ended toaster “when [did] you first become aware of toasters having this shape (year)” the Gialouris declaration states “5+ years”.  The Jenkins declaration (which I must regard as being informally made for the reasons stated above) states that the declarant was aware of the angle-ended toaster in 1980 – this is well before 1986 when this model went on sale in Britain or Australia.  The Gubb declaration states that the declarant became aware of the angle-ended toaster two years ago (in 1998) – after the import of the angle-ended toaster had apparently ceased – she then indicates that she does not associate that shape with any particular manufacturer, whom she next indicates is Dualit.  As noted above, Ms Braslin, who has 10 years experience in household appliances, has indicated that she believes that the manufacturer is DURALIT – which has subsequently been corrected to DUALIT.  As the evidence shows that the word DUALIT appears prominently on the toasters made by the applicant, it might be inferred that the name of the toaster (by which it would presumably be known) was not well-known to this declarant.  Further, as the declarants all own, or are employed by, shops that specialise in kitchenware, they might be expected to know of the toaster shapes – as I have earlier mentioned, these shops sell three or four of the toasters each year.  Their statements, such of them as are validly brought into evidence, show nothing of the knowledge of the shape in the wider population.  These declarants are not the market for the toasters – they are part of the conduit to it.

I note the British attorneys who contacted Mr Whittaker for his declaration were careful not to indicate to him that they acted for Dualit.  Copies of their correspondence with him prior to his making his declaration are in evidence – they are careful to avoid any mention of their client.  There is no such evidence before me concerning the correspondence of the Australian attorneys with the pro forma declarants prior to their making these declarations.  I have no way of knowing, therefore, whether the declarations were made with the knowledge that they were being asked about Dualit products: if this was so, this knowledge may have materially affected their responses to the questions asked of them.

It is not clear to me whether the six declarations are a sample batch of people selected from the list of 149 distributors who all responded to the questionnaire or whether a wider group, or even all, were questioned and the ‘declarations’ which have been submitted is the extent of the response.

In summary, I find that the pro forma declarations are not helpful to me.  Of these declarations, the only one that has been made both in accordance with the regulations and is unambiguous is the Loudon declaration.  However, as I have indicated, the circumstances under which it was made are not clear.

The Submissions

Much of Mr Waters’ submission was sharply critical of the course of the administration of these applications.  I understand that these concerns are being addressed in correspondence between Mr Waters and the Office;  I will not address these concerns here since I do not believe that this is an appropriate forum – what I must rather address is the registrability of these signs.

Mr Waters drew my attention to the statutory and case-law framework that should guide my decision and drew my attention to the distinctions between the British and Australian Trade Marks Acts.  This distinction, he said, should allow registration of the trade marks in Australia whereas the British court in the Toasters Case, above, had found the signs not to be registrable.  I will discuss the detail of the submissions, and the evidence, as they relate to my Reasons, below.

Reasons

Sections 17 and 6 of the Act define:

17  What is a trade mark?

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.

Note:   For sign see section 6.

Section 6 of the Act provides the definition of sign:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

Section 41 of the Act provides:

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 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 approach to the application of section 41 was discussed by Justice Branson in Blount Inc v Registrar of Trade Marks, (1998) 40 IPR 498; AIPC 91-408 (The Oregon Case).

In deciding whether a trade mark is capable of distinguishing, the Registrar has three options, says Branson J.  The Registrar may 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 distinguishing the designated goods or services.

Branson J says:

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 paras  (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 paras  (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 subparas  (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 subparas  (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).

In determining the issues of s 41, Branson J directs that the first step is:

to take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons.

Her Honour then addresses the question of inherent adaptation and comments both in respect of the repealed Trade Marks Act 1955 (Cth) and the current law. In respect of word trade marks (and specifically geographic words) Branson J says:

The notion of a trade mark being inherently adapted to distinguish the designated goods was of primary significance under the 1955 Act.  There is no reason to think that the phrase “inherently adapted to distinguish the designated goods from the goods of other persons” appearing in s 41 (3) of the Act is not intended to be understood in the light of decisions under the 1955 Act, and comparable United Kingdom legislation which includes references to inherent adaptability.

Further, prior to the application of the above principles to the instant signs, it is appropriate to note that they are both shapes and to incorporate some of the reasoning that is relevant in such instances.

In Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA 876 (30 June 2000), Burchett J, with whom Branson and Hill JJ agreed, observed:

13 The nearest the appellants came, in argument, to finding an instance of a use of the goods as the trade mark, which could be supported by existing authority, was not the The Coca-Cola Company (for there the mark was something added by being impressed on goods that already had their identity as sweets of a particular flavour and texture, which remained unchanged); rather, it was in the example suggested by Branson J of a bottle of perfume. But in the case of a perfume or a drink, it is just because the bottle is only a container for the product the purchaser is going to apply or consume, that features of its shape are sufficiently variable to be capable of being made distinctive (see Philips Electronics NV v Remington Consumer Products at 290), and may therefore be used as a mark, though not if the capacity for distinctiveness is not exploited: Procter & Gamble Ltd's Trade Mark Applications [1999] RPC 673 at 680-681, per Robert Walker LJ (with whom Peter Gibson and Tuckey LJJ agreed). The point may be illustrated by imagining a case where the bottle became the essence of the commodity sold, being an expensive imitation gourd or reproduction of a particularly beautiful Grecian urn. In such a case, other traders might legitimately wish to produce like imitations or reproductions, and the use of the shape could not in itself distinguish the products of one person. Cf. the passage from the judgment of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 which Branson J cited in Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 55. Whether the question of fact under s 41(6)(a) of the Trade Marks Act 1995, which is discussed in the last mentioned decision, could ever properly be answered in favour of the manufacturer of a gourd or urn of the kind I have postulated, if he sought to register its shape as a trade mark, does not need to be determined in this case. But when it does come up for determination, consideration will need to be given to the meaning of the expression "it does distinguish" in s 41(6)(a). The word "distinguish", as a glance at the Shorter Oxford English Dictionary will confirm, implies something other from which a differentiation is, or is to be, made. Where, therefore, a sole manufacturer uses a particular name or shape for a product no one else produces, how do we say whether it does in fact distinguish? Is it relevant that, if anyone else were to produce the same product, the name or shape could not differentiate between the two? Does that mean it never did distinguish, though it may have named or embodied a kind of product of which there was but one example? Despite the differences between the 1995 Act and the English legislation, it may be that some light will be found to be cast on the matter by the reasoning of Aldous LJ in Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 at 817-820; and of Jacob J at first instance in Philips Electronics NV v Remington Consumer Products at 292-293.

Further, Burchett J stated:

16 It does not follow that a shape can never be registered as a trade mark if it is the shape of the whole or a part of the relevant goods, so long as the goods remain distinct from the mark. Some special shape of a container for a liquid may, subject to the matters already discussed, be used as a trade mark, just as the shape of a medallion attached to goods might be so used. A shape may be applied, as has been said, in relation to goods, perhaps by moulding or impressing, so that it becomes a feature of their shape, though it may be irrelevant to their function. Just as a special word may be coined, a special shape may be created as a badge of origin. But that is not to say that the 1995 Act has invalidated what Windeyer J said in Smith Kline. The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded. 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.

And:

20 Although the relevant Canadian statutory provisions are significantly different from the provisions of our Act, in terms of the general principles relating to trade marks, similar conclusions were stated by MacGuigan JA, speaking for the Federal Court of Appeal, in Remington Rand Corp v Philips Electronics NV (1995) 64 CPR (3d) 467. That case involved a Canadian registration of Philips' so-called three dimensional trade mark. MacGuigan J said (at 477):

"It is clear that every form of trade mark ... is characterized by its distinctiveness."

He went on to refer (at 478) to "the public policy basis [of trade marks] ... to distinguish wares from those of competitors, by monopolizing, not the wares, but the mark as used in relation to them." And he concluded (ibid):

"A mark which goes beyond distinguishing the wares of its owner to the functional structure of the wares themselves is transgressing the legitimate bounds of a trade mark."

In Re:  Trade mark application number 757596(5, 11) - Bottle shape - in the name of Saramar, LLC, unreported, I noted that:

It is apparent to me that the relevant principles I am to apply to this sign are:

·     The bottle shape should only be a container for the product - not a product in itself

·     The trade mark should be something extra which is added to the inherent form of the particular goods

·     The goods should have an existence independent of the trade mark

·     The features of its shape should be sufficiently variable to be capable of being made distinctive

·     The capacity for distinctiveness should have been exploited

·     The bottle should not be or become the essence of the commodity being sold (if so, the meaning of the phrase 'it does distinguish' should be considered); and,

·     Any functional features transgress the bounds of what is a trade mark.

I believe that a shape may pass any of the above criteria yet fail to be assessed as having any inherent adaptation if it fails one or more of the others.  However, having one or more functional features does not detract from the possibility that a shape trade mark does have inherent adaptation to distinguish provided that those features are not the 'something extra'[1] which is added to the goods or such that their prominence overwhelms the something extra which is added to the goods.

[1] Distinct from the trade mark itself in the sense of James Trade Mark (1886) 3 RPC 340 at 344 or in Coca-Cola Trade Marks [1986] RPC 421; (1986) 6 IPR 275 at RPC 457; IPR 276–7.

The question of whether a trade mark is adapted to distinguish the goods of one trader from those of another was considered by Kitto J in Clark Equipment Co. v Registrar of Trade Marks 111 CLR 511 at 513:

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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

And: 

… the applicant's chance of success … must, I think, largely depend on 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 connection with their own goods.

The shapes here are what might be called ‘retro’ or ‘art deco’ styling or design – such designs are popular, in my experience, among traders who wish to dress or embellish their goods in a way that is going to appeal to fashion conscious consumers.  It is plain from the evidence that Dualit has always made toasters in this style – however, fashion has come round in a circle and these designs are popular again.  Having said that, I must also keep in mind that the round-ended toaster has only been imported into Australia since 1995 and the angle-ended toaster was apparently imported from 1986 till 1995.  

Mr Ryan, in his declaration, calls attention to the toasters’ shape and design [which] “render them worldwide traditional icons”.  A Dualit toaster, says Mr Ryan, "is easily recognised by its all metal finish and moulded slot ends.  The Dualit toasters’ robust design and long-term life expectancy stands them apart from all other toasters.”  Mr Gore-Barten also calls attention to the iconic status of the toasters and says that they are of heavy solid construction, have a rounded upper profile as seen in end view, substantial end caste sections each banded at the base at its joint with the central section, an operating lever extending through a slit in a separate lower part of the central section, and a series of vertical parallel slots in each of the end faces.  The central sections, says Mr Gore-Barten, of each of the models is exactly the same but the end castings have slightly different shapes.  Viewed in the light of the comments of the Court in Remington, above, an all-metal finish, robust design, long term life expectancy, iconic status, heavy solid construction, operating levers and substantial end cast sections, are irrelevant to the question of the shapes’ inherent adaptation to distinguish the goods of the applicant.

I think that what we are left with when considering the signs’ inherent adaptation to distinguish the goods are the facts that, in end-on profile the toasters are rounded; in side-on profile they have one rounded end and are either asymmetrically rounded at the other end or have an angle cut in the asymmetrically rounded part.  There is a set of seven lines, ridges, slots or grooves set into either end of each toaster.  I do not believe that the other functional elements contribute to the shapes’ inherent adaptation in any way at all.  I note that the more pronounced end of the toaster is that with the controls built into it and I have some concern, which I have set to one side, that the form of the asymmetry was thus dictated by function.

I am aware that there are many toasters on the market with rounded ends; in manufacture, ribbing or grooving is often used to impart structural strength to pressed metals.  If these ribs are, in fact, slots, it may also be that they have a function in cooling the toasters.  However, I am here prepared to accept that the ribbing here is a part of the shape.  I also note that the retro design of the toaster is one which, as I have observed, is very popular.

It is, of course, immaterial to considerations here that a toaster has been nominated or displayed in London by an organization as being a design icon or classic.  I note that the same organization also nominated the Russian AK 47 assault rifle and a particular design of baby’s fold-up pushchair.  I would not expect the Australian public to have any familiarity with either of these particular products and do not consider that they should have any additional familiarity with a toaster on this basis.

I therefore conclude that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

I am certain that it does not matter in the end whether I decide the matters under subsections 41(5) or 41(6) as the evidence led by the applicant is wholly inadequate for either task.  However, I am prepared to accept the view of the examiner and the attorney that the grounds for rejection here are those under section 41(5).  The shapes have a marginal degree of adaptation to distinguish.

Accordingly, in terms of subsection 41(5), what I am now to consider is whether, because of the combined effect of the extent to which the trade mark is inherently adapted to distinguish the toasters; and the use, or intended use, of the trade mark by the applicant; and, any other circumstances, the trade mark does or will distinguish the designated goods or services as being those of the applicant.

I would assess the inherent adaptation of the toasters as being very low.  The shapes are not large deviations from that of any other retro-styled toaster.  Indeed the applicant’s own evidence shows at least two other manufacturers make toasters that are quite similar to the shapes here in question.  This accords with my own experience that tells me such styling is not uncommon.

On the basis of the evidence led by the applicant, I am not satisfied that that the shapes do, or ever will, distinguish the goods of the applicant from those of other traders.  The angle-ended trade mark can be discounted from consideration immediately since I think that it is fair to infer from the evidence that this toaster has not been sold in Australia for some five years and might indeed be a model superseded by the round-ended toaster.  If this is not the case, the evidence is framed so vaguely that it is impossible to assess what the prospects are that the angle-ended shape ever could distinguish the goods of the applicant.  There is apparently no current commercial exposure of this product to assess.

Mr Waters argued that the pro forma declarations were relevant since the declarants, in effect, constitute the market to which the goods are sold.  I do not accept this.  It is quite apparent that the stores stand in the supply chain to the market but are not the ultimate consumers of the goods.  Mr Waters approach reduces the ultimate purchasers of the goods to a nullity – without somebody to purchase and use the goods, the shops would not stock them.  This approach ignores the problem that such declarations show nothing more than the fact that shopkeepers know their goods.  However, if I were to accept this argument, it does not appear to help in any case since the applicant’s evidence shows that it supplies only 149 shops in Australia with no demonstrated growth of these outlets.  If I were to accept that this evidence demonstrates that 149 salespersons in Australia know of the applicant’s goods, this is not a basis for a conclusion that the trade mark does or will distinguish the goods of the applicant amongst the wider population of appliance salespeople, of whom there must be many thousands.  Additionally, as I have said, the declarations are such that only one of them can be accepted as being properly made and having any credence; and, further, it is not clear under what circumstances any of the declarations were made.

The declaration of Mr Gore-Barten is confined in a large part to the circumstances prevalent in the British Isles – the home market of the goods.  I note that, in the Toasters Case, above, the High Court found that the evidence did not show that the shape of either model had become distinctive through use in the United Kingdom.  Under the UK Trade Marks Act, marks which are found to lack inherent distinctiveness must be made distinctive through use before becoming registrable.  Under the provisions of section 41(5) of the Australian Act, a lower hurdle applies: I need only be satisfied that trade mark does or will ‘so distinguish the designated goods’.  I think that the term ‘will distinguish’ looks forward to a time when, through the use of the trade mark, it will be distinctive of the goods.  That is, that there will be a sufficient recognition of the shape among substantial numbers of the relevant public in the marketplace as designating the goods as being those of Dualit.

I am not satisfied that this will occur in relation to the applicant’s shape marks.  With the angle-ended toaster, this appears to be a serious practical difficulty because, apparently, it is not on the market.  With the round-ended toaster, there is no evidence that would support the proposition that a substantial number of relevant potential customers will identify the goods as originating from Dualit because of the shape alone.  There is no evidence that the toaster shape is now recognised among the Australian public; the pro forma declarations are no assistance for the reasons stated above.  I believe that if the British Court in the Toasters Case had found that the trade marks had become distinctive, it would be open to me to find that the trade marks might at some time in the future be distinctive in Australia if it were shown that the markets for toasters in Australia and Britain were comparable. 

The sales volume are low, there are only some three or four hundred sold in Australia each year – this amount does not, on the figures supplied in evidence, appear to be increasing.  Thus, there is no basis in the evidence on which I can be satisfied that I could safely extrapolate forward to a time when the round-ended toaster shape mark will distinguish the goods. 

Hence, I am not satisfied that either of these trade marks does, or will, distinguish the applicant’s toasters from those of other traders.

Decision

Accordingly, I reject applications 769783 and 769784.

Ian Thompson
Hearing Officer

19 January 2001