Eco Bin (Aust) Pty Ltd. - [2024] ATMO 74

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2238206 (21) – ECOBIN - in the name of Eco Bin (Aust) Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Rachael Lopez of Griffith Hack
Decision:	2024 ATMO 74 Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection under section 41(4) – evidence insufficient - application rejected.

Background

This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (Cth)(‘the Act’):
Trade Mark No: 2238206
Trade Mark: ECOBIN (the ‘Trade Mark’)
Filing Date: 21 December 2021
Applicant: Eco Bin (Aust) Pty Ltd
Specification of Goods:
Class 21: Refuse bins; waste paper bins for domestic or office use; waste bins (other than furniture); pedal bins (dustbins); plastic bins (dustbins); sanitary disposal bins; bins for collection of recyclable materials, including bins for paper, plastics, metal, mixed recyclables and organic waste
The application was examined as required under section 31 of the Act and a ground for rejection was raised under section 41(4). The examiner’s first report provided:
Your trade mark consists of the phrase ECOBIN. This combines the dictionary words ECO and BIN, and the lack of spacing does not affect this.
ECO is (adjective) of, relating to, or employing environmentally friendly practices, materials, technology, etc. eg. eco baby products; eco shoes.
A BIN is (noun) 1. a box or enclosed space used for storing grain, wool as it is shorn, coal, refuse, etc. 2. a container for rubbish or waste material.
As such, your trade mark simply indicates that the goods you have claimed in Class 21 consist of, or relate to, environmentally friendly bins. Other traders should be able to use ECOBIN, and similar terms, in connection with goods or services similar to yours.
The applicant was given the option of providing evidence of use of the Trade Mark to overcome the ground for rejection. The applicant’s legal representative responded by submitting evidence of use by the applicant.
The examiner maintained the ground for rejection under section 41(4). The second report from the examiner focused on a lack of detail in the evidence and considered the limited instances of the Trade Mark being used in the evidence provided.
The applicant requested to be heard on the matter as allowed by section 33(4) of the Act. Once the hearing was set down the applicant filed additional submissions prepared by Rachael Lopez of Griffith Hack along with its evidence being:

Declaration of John Engelander, Chief Executive Officer of the applicant, accompanied by annexures JE-1 to JE-13 including confidential annexures. (the ‘Engelander’ declaration); and
Declaration of Emma Kate Mitchell, Principal at Griffith Hack, dated 29 February 2024 accompanied by annexures EKM-1 and EKM-2 (the ‘Mitchell’ declaration).

The hearing took place on 1 March 2024. Rachael Lopez of Griffith Hack made representations on behalf of the applicant. I conducted the hearing and the following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

The Law

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 personand services of a personsee 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).

The first step, in terms of subsections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the goods of the applicant from the similar goods and/or services of other persons.
The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks[1] where Kitto J said:
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.
[1] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ;
The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their services” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[2]
[2] (1965) 112 CLR 537) [6].
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[3] noted the following part of Kitto J’s test:
"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"
[3] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.
Considering this passage the majority of the High Court explained that the inherent adaptability of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, which may be characterised as “the target audience”[4]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade marks to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[5].
[4] Ibid [28], [30] .
[5] Ibid [73]
Superimposed on this test for inherent adaptability is the so called ‘presumption of registrability’ (which was formulated under the Act), whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it. A trade mark that has an obscure reference to the applicant’s goods is not a word or phrase that is likely to be understood by others as a description/direct reference.
The ground for rejection as stated by the examiner is that the Trade Mark has limited inherent adaptation to distinguish the designated goods as the expression ECOBIN indicates that the goods claimed in Class 21 consist of, or relate to, environmentally friendly bins. Other traders should be able to use ECOBIN, and similar terms, in connection with goods or services similar to those claimed by the applicant in class 21.
In terms of the ‘other traders’ test in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[6] the likelihood of other traders desiring to use the Trade Mark in relation to the designated services may be tested by appropriate examples from the marketplace. On that point I note that there are a number of examples on the Official File of other traders using the term ECO when it comes to informing the public that their goods and/or services are environmentally friendly.
[6] (1913) AC 624, [634].
The Cambridge Online Dictionary defines ECO- prefix and BIN as meaning:
ECO-: 1. (prefix) Connected with the environment
BIN: 1. (noun) a container for waste:
·A litter bin
·A rubbish bin
·Recycling bins for old newspapers, bottles, and cans.
When I consider the basic meaning and understanding that is attributed to the prefix ECO- and the word BIN, I am not only influenced by the above definitions but also by the basic understanding of the words ECO and BIN which can simply be understood by the general Australian consumer to be an environmentally friendly bin or aiding in environmentally friendly practices. I note that these words are descriptive and indicate that the goods offered by the applicant consist of, or relate to, environmentally friendly bins.
Ms Lopez argued that the Trade Mark was prima facie inherently adapted to distinguish the designated goods and should be accepted. She stated that consistency, justice and fairness dictate that section 41 be applied consistently to all trade mark applicants and referred to trade mark registrations in the Mitchell declaration that she believed were analogous to the present situation.
In the TUB HAPPY case[7] which “described the test for a word having ‘direct reference to the character or quality of the goods’ as lying ‘in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess’. His Honour considered ‘TUB HAPPY’ to be allusive such that it did not convey a meaning or idea ‘sufficiently tangible’ to amount to a ‘direct reference’ to the character or quality of the goods”.[8]
[7] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41
[8] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 [52] (French CJ, Hayne, Crennan and Kiefel JJ).
The applicant has argued:
The trade mark consists of a single invented word ECOBIN. While the ordinary signification of the word “bin” on its own is of course clear in the context of the Goods, that is not the trade mark to be considered. The examiner considers the prefix ECO to mean “relating to or employing environmentally friendly practices”. We submit that this is not the ordinary signification of the trade mark ECOBIN. The prefix ECO can have more than one meaning, including for example, economic. Even taking the examiner’s definition of ECO at face value, a bin cannot itself employ environmentally friendly practices. Any environmental aspects of a bin depend on what waste the user actually puts in the bin and how the waste is disposed or recycled. At best, the trade mark ECOBIN is a skillful allusion to an aspirational aim of participating in environmentally friendly practices. This is one step removed from the Goods themselves.

However, I disagree with the applicant on its characterization of its bin goods or the basic understanding that the average Australian consumer is likely to have when faced with the Trade Mark. The goods for which the Trade Mark seeks registration are bins which include recycling bins which are very much a part of environmentally friendly practices. There is no real need for academic exercise or cognitive leap for the average consumer to conclude that the applicant provides goods that are intended to be environmentally friendly. While I acknowledge that ECO can also mean economic, I am not satisfied that the average Australian consumer would ignore the more obvious meaning of ECO when applied to the goods, in favour of a much more fanciful definition.
The meaning of ECO BIN is not analogous to TUB HAPPY as it is not metaphorical, covert or allusory but rather it carries a direct and clear explanation of the purpose of the goods consists of, or relates to, environmentally friendly bins either in the materials used to manufacture the bins and/or the uses the bins are put to ie. recycling. Other traders should be able to use ECOBIN, and similar terms, in connection with goods or services similar to the applicant.
Having taken into account the presumption of registrability I am nevertheless satisfied that the first element of the ground for rejection exists under section 41(4)(a) of the Act with regards to all the goods in the application. I acknowledge that the Trade Mark has a an element of distinctiveness to it and this provides the Trade Mark with some inherent adaptation to distinguish the designated goods from those of other traders which is why I am satisfied that a ground for rejection exists under section 41(4).
However, a ground for rejection under section 41(4) need not be fatal to the application, I must also be satisfied that the Trade Mark does not and will not distinguish the designated goods as being those of the applicant having regard to the factors set out in section 41(4)(b). Accordingly, I will now consider the applicant’s evidence of use, intended use and any other circumstances that may be relevant in the consideration.
To this end, the applicant has provided evidence of use in the form of the Engelander declaration. Mr Engelander states that the developed the ECOBIN concept and brand in 2008. At that time (and still today) he was the CEO of Planet Earth Cleaning Company which he avers was Australia’s first eco-friendly commercial cleaning company. Mr Engelander identified a need for a product to make the sustainable disposal and recycling of waste an easier task, particularly for businesses. To meet that need, he developed a series of colour coded bins for separation of waste into categories at the point where waste is discarded, for the purpose of recycling, composting, or disposal.
According to Mr Engelander the Trade Mark and series of bins were launched on World Environment Day on 5 June 2008, at the Going Green Expo at the Melbourne Exhibition Centre which is supported by Annexure JE-1a. Since that time the applicant’s goods bearing the Trade Mark were available for purchase and the product range has grown over time. Mr Engelander states that the primary market for the applicant’s goods is Federal, State and Local governments and government departments, schools and universities, offices and other workplaces where businesses have been slower to adopt separation and recycling of their waste[9].
[9] Confidential Annexures JE-13 accompanying the Engelander declaration
The evidence establishes that the applicant has sold its goods bearing the Trade Mark throughout Australia via the website by phone as well as through third party retailers such as Officeworks, Melbourne Cleaning Supplies, Rapid Clean Newcastle and Abco. In addition to its website, the applicant has used the Trade Mark on its Facebook and Instagram accounts[10]. Additional third party publications have also mentioned Mr Engelander and the Trade Mark[11] in relation to the applicant’s colour coded recycling bin system.
[10] Annexures JE-5 and JE07 accompanying the Engelander declaration
[11] Annexures JE-9a, JE-9b, JE-9c and JE-9d accompanying the Engelander declaration
Confidential annexures JE-11 and JE-12 outline the applicant’s revenue and marketing expenses from 2009 until the present day. Both exhibits demonstrate that the sales of the applicant’s goods are growing as are the costs it is incurring from its marketing. However, both of the sets of figures provided are modest given the size of the Australian marketplace when it comes to bins. Arguably the whole of the Australian population would use bins and/or recycling bins. While I acknowledge that the applicant’s evidence demonstrates that it tends to market its goods towards businesses rather than individual consumers, the specification of goods claimed by the Trade Mark is not limited to a certain demographic but rather to bins which covers every Australian consumer.

I turn to the Treat decision[12] where Jacob J of the UK High Court of Justice considered the evidence provided in the action between the parties. He said:
I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.
[12] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
Justice Jacob then went on to say the following:
It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.
The applicant has provided a number of examples of how it uses its Trade Mark both in composite trade marks and the plain text Trade Mark. There has been considerable argument presented that use of the composite trade marks is use of the Trade Mark. Even if I am to accept this argument, I am not satisfied from the evidence provided that the expression ECOBIN has come to distinguish the applicant’s goods from those of other traders.
I consider, from the evidence provided, that while the applicant has demonstrated it has used the Trade Mark since 2008, the use is modest and has not sufficiently demonstrated that ECOBIN has acquired a meaning related to the applicant’s goods which overshadows its descriptive meaning. The applicant’s evidence does not satisfy me that the trade mark is capable of distinguishing the applicant’s goods from the similar goods of other traders in the same field.
Ms Lopez drew my attention to the Mitchell declaration and the number of ‘ECO-‘ trade marks on the Register which had obtained registration without objection under section 41. Ms Lopez asserted that the applicant accepted that each application is determined on its own merits but argued that rejection of ECOBIN in light of registration of other ECO- trade marks without objection is inconsistent and impacts the integrity of the Register. I agree with the applicant that each case must be assessed on its merits with regard to the relevant judicial tests. However, I do not agree that each case should also be assessed in regard to the state of the register. I refer to the comments of Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) AIPC 91-539 at paragraph 35:
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
I am not satisfied that the applicant’s evidence is sufficient to overcome the section 41(4) ground for rejection.
Having taken into account the presumption of registrability, I am nevertheless satisfied that a ground for rejection exists under section 41(4) of the Act with regard to all the designated goods.

Decision

Section 33 of the Act relevantly provides:

33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.

(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.
Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:For applicant see section 6.

A valid ground for rejection of the application exists under subsection 41(4).
I reject trade mark application no. 2238206 in its entirety.

Bianca Irgang
Hearing Officer
Trade Marks Hearings & Opposition
26 April 2024