Ecospecifier Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1375007(2, 3, 6, 9, 11, 17, 19, 20, 22, 24, 27, 42) - GREEN TAG SERIES- in the name of Ecospecifier Pty Ltd.

Delegate: Alison Windsor

Representation: Applicant: Shaun Creighton and Kim Crow of Buchanan Law

Decision: 2011 ATMO 63
Section 51 – whether trade marks comprise a valid series – consideration of material particulars – allowable additions to form a valid series – clarification as to which trade marks will form valid series – application to be amended to a valid series as suggested or to be rejected.
Background

This matter concerns an application by Ecospecifier Pty Ltd (‘the applicant’) for a certification trade mark filed under the provisions of the Trade Marks Act 1995 (‘the Act’). The application was filed on 29 July 2010 for a broad range of goods and services in a total of 12 classes. It is for a series of trade marks, as provided for by section 51 of the Act, and the original application includes 32 separate trade marks. These trade marks are shown in full at the Annexure to this decision. However, the four trade marks upon which the full series is based are shown below:
The application was examined as required by section 31 of the Act and the first official report advised the applicant that the series of trade marks applied for did not meet the requirements of section 51 of the Act. The examiner requested that the applicant restrict the application to a single trade mark and remove all reference to a series. She did point out that the words ‘platinum’, ‘gold’, ‘silver’ and ‘bronze’ can be used to indicate levels of quality in relation to some services. As the applicant has not provided the certification rules, she said, she was unable to determine whether these words were quality statements in respect of the goods and services claimed.
The applicant responded providing detailed submissions in rebuttal and submitted a document entitled ‘Global Green Building Product LCA Rating Certification Program Standard’ (‘the Program Standard’).[1] The examiner reiterated that the trade marks applied for did not meet the requirements of section 51 as they did not resemble each other in material particulars and differed in ways not provided for by section 51. She made suggestions as to which combinations of trade marks would meet the legislative requirements and advised that in any event the application would be subject to a colour endorsement which specified the colours relevant to the chosen combination.
[1] While this document sets out the program standards relevant to application of the certification trade marks, it does not appear to include the formal rules for use. Requirements for these rules may be found in paragraph 3 of Part 35 of the Trade Marks Office Manual of Practice and Procedure.
The applicant asked to be heard and I was delegated to hear the matter in Canberra on 23 June 2011. The applicant was represented by Shaun Creighton and Kim Crow of Buchanan Law.
Legislative framework
Section 51 of the Act provides:
Section 51. Application-series of trade marks
(1) A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of goods and/or services if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:
(a) statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;
(b) statements or representations as to number, price, quality or names of places;
(c) the colour of any part of the trade mark.
(2) If:
(a) the application meets all the requirements of this Act; and
(b) the Registrar is required (under section 68) to register the trade marks;
he or she must register them as a series in one registration.
Section 51 was amended in 2007 on proclamation of the Trade Marks Amendment Act 2006. The amendment made allowance for series applications to become multi-class applications and clarified the matter which would constitute an allowable series application. For comparison, the previous provisions were as follows:
51 Application—series of trade marks
(1) A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of similar goods or similar services within a single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:
(a) statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;
(b) statements or representations as to number, price, quality or names of places;
(c) the colour of any part of the trade mark;
(d) any matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks.
(2) If:
(a) the application meets all the requirements of this Act; and
(b) the Registrar is required (under section 68) to register the trade marks;
he or she must register them as a series in one registration.
Note that paragraph 51(1)(d) did not transfer into the amended section. The matter allowable in a series since the amendment is thus arguably more restricted than it was previously.
Trade Marks Office practice
Office practice in determining the validity of a series of trade marks is set out in Part 13 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’). The following paragraphs from the relevant part of the Manual set the scene for the decision which I must make.
2.Material Particulars
Section 51 presents two areas for consideration in determining the validity of a series. Resemblance of material particulars is the first of the two considerations in determining the validity of a series application. The other consideration is whether the provisions of paragraphs 51(1)(a), (b) and (c) have also been met.
To qualify as a series the trade marks must first resemble each other in material particulars. That is, the identifying feature or features in each trade mark of the series must be essentially the same and any differences minor. In many cases the identifying feature/s entirely comprises the distinctive elements of the trade mark. However, it should be noted that in some cases descriptive/non-distinctive material can form part of the material particulars of a trade mark – particularly if its size and presentation within the trade mark are dominating features. Any differences between the material particulars must be such that they do not substantially affect the identity of the trade marks when each member of the series is compared to each of the others.
3.Provisions of paragraphs 51(1)(a)(b) and (c)
Subsection 51(1) provides the second consideration in determining the validity of a series.
The wording of subsection 51(1) emphasises that the trade marks in the series must differ only in respect of one or more of the ways specified in paragraphs (a), (b) and (c).
Subsection 51(1) places substantial restrictions on what sort of trade marks can form a valid series. It does this by specifying in paragraphs (a), (b) and (c) a narrow range of ways in which the trade marks can differ. It also requires that series trade marks differ only in respect of the ways specified. It does however allow the trade marks to differ in one or more of these ways.
This means that even if the material particulars resemble each other, the validity of a series will be quickly determined on the basis of whether differences between the trade marks are within those specified in the three paragraphs of subsection 51(1).
Discussion and reasons
Material particulars
This matter will largely be decided by a determination as to what constitutes the ‘material particulars’ of the trade marks. The term ‘material particulars’ is not defined in the Act, and finding a definition specific to trade mark practice presents some challenges.
In criminal law a ‘material particular’, in relation an allegation that a statement is false or misleading, is a particular which is of significance and not trivial or inconsequential.[2] In respect of obtaining financial advantage via a false statement, the same source defines a ‘material particular’ as an important particular or detail. The word ‘material’ is defined as meaning important, essential or relevant.[3]
[2] Encyclopaedic Australian Legal Dictionary, provided on-line via LexisNexis.AU
[3] Butterworths Concise Australian Legal Dictionary, 1997, Eds Dr Peter Nygh and Peter Butt
The Registrar’s delegate, in the Swarmees decision[4] discussed the meaning of ‘material particulars’ and said:
I think, by its construction, the words "if the trade marks resemble each other in material particulars" within section 51(1) applies a threshold test that, if satisfied, allows the application of subparagraphs (a) to (d). At one level, the expression 'material particulars' denotes that portion of the trade mark in which other traders, the public and the courts will regard the trade mark rights as residing. In other words, that part of the sign which has trade mark significance. On another level, the words 'material particulars' denotes all of the component parts that contribute to the identity of the trade mark.
[4] Application by Effem Foods Pty Ltd (1999) ATMO 80
A ‘material particular’ in respect of a trade mark must therefore be a feature which is important, essential and non-trivial and which is also that portion of the trade mark likely to be recalled as being a trade mark. Paragraph 2 of Part 13 of the Manual (quoted previously in paragraph 8 of this decision) defines ‘material particular’ as the identifying feature or features of the trade mark. Deciding exactly what these features are is crucial to determining whether the series claimed in this matter is a valid series.
Mr Creighton argued that the identifying feature of all the trade marks is ‘clearly the circular medallion device which dominates in size and presentation, sitting front and centre’ of all the trade marks. Added to that, he said, to complete the identification of the trade marks are the words ‘ecospecifier global GREEN TAG CERTIFIED’. I agree with Mr Creighton that these features form the ‘material particulars’ of the trade marks, shown below in grayscale:
I am of the opinion, contrary to that expressed by the examiner, that the colours within the trade marks are not material particulars of the trade marks, even though the representations on the application are coloured. Even when shown in grayscale, it is clear that the words and the medallion device form the memorable portion of the trade mark, and thus are the material particulars.[5]
[5] This situation differs from that which would occur if the subject of the trade mark application consists of a colour or colour combination. In those cases, the colour/s claimed form the material particulars of the trade mark, and a change to the colour/s would mean there is a change to the material particulars of the trade mark.
Paragraph 51(1)(c) - colour
The next question to be answered is whether the various changes and additions to the material particulars of the trade mark meet the requirements of section 51 as it now exists. Paragraph 51(1)(c) specifies that the trade marks within a series may differ in respect of the colour of any part of the trade mark. The medallion devices in these trade marks contain two segments which are always shown in two different shades of green. Which segments are coloured green does not appear to have any effect on the overall recognition of the medallion device, and thus the material particulars of the trade mark. Therefore, the four versions of the trade marks where the remaining two sections of the trade marks shown at paragraph 1 (and appearing as pale grey in the image immediately above) are altered to a bronze, gold, silver or platinum colour do form an allowable series. The only change to the appearance of the trade mark is a change in the colour of two of the four divisions of the medallion device. The material particulars of the trade mark have not been changed.
Paragraph 51(1)(b) – representations as to quality
Paragraph 51(1)(b) makes allowance for the trade marks within a series to differ in respect of one or more of the following: statements or representations as to number, price, quality or names of places. The examiner queried the addition of the words BRONZE, SILVER, GOLD and PLATINUM (‘the metal words’) stating that without seeing the rules for use of the certification trade marks, she could not determine if the words were statements as to quality in respect of all the goods and services claimed.
The question as to whether the quality statements are relevant to all the goods and services claimed has arisen as a result of the amendments to section 51. The previous version of the section allowed applications for series in a single class only, and within that class the goods/services were restricted to those regarded as similar to each other. As series applications may now be made in multiple classes, the reference to similar goods/services no longer exists. However, this may create another problem for the applicant.
Paragraph 5 of part 13 of the Manual raises this matter and reads as follows:
5. Restrict to Accord
Series applications can be filed for a wide range of goods/services within a single class, or across multiple classes (Section 27). The nature of the goods/services claimed in these class/es may have a bearing on the validity of the series claim.
In deciding whether the material particulars of the trade marks in a claimed series resemble each other, it is important to consider the nature of the goods/services to which the trade marks are to be applied. For example, the trade marks IDAK TV and IDAK TELEVISION would represent a series in classes 9 and 38 if the goods and services claimed were items such as “televisions” and “television broadcasting”. In this example, the words TV and TELEVISION are statements as to the goods and services as provided for under paragraph 51(1)(a). However, the same could not be said if the goods also included items with which the words TV or TELEVISION had no connection, such as “fire extinguishers” or “facsimile transmission services”. Then the differences between the trade marks, namely the words TV and TELEVISION, would not be statements as to those goods or services. It should also be noted that if the trade marks were to be used on fire extinguishers or facsimile services, the difference between IDAK TV and IDAK TELEVISION would be a substantial variation in material particulars.
This type of consideration is highly likely to be relevant to many multiclass series applications because they provide the greatest potential for an applicant to claim a diverse range of goods and services. Such diversity reduces the likelihood of a valid series application where the trade marks differ in statements as to the goods or services. In such cases, applicants will usually have to amend their goods or services to conform to the description within the trade marks in order to satisfy section 51.
It is important to remember that this application is for a series of certification trade marks. The trade marks will be applied to quite a broad range of goods when they meet the requirements of the relevant certification process. How the certification process will function is set out in the Program Standard which the applicant provided to IP Australia after it had received the first official report.
The relevant part of the Document Abstract reads as follows:
This Standard specifies environmental performance requirements of products under the ecospecifier Global Green Tag Ecolabel Program. The Global Green Tag Ecolabel program complies [with] ISO 14024: “Environmental labels and declarations – Guiding principles” which requires environmental labelling specifications to include criteria that are objective, reasonable and verifiable. All GreenRate Assessments also comply with AS NZS ISO 14021:2000, “Environmental labels and declarations – Type II Self declared environmental claims”.
The scope of the document is described as follows:
This standard sets out essential rules under which the ecospecifier Global Green Tag Ecolabel Program will assess and certify products and its various elements in Australia and Internationally. This standard also establishes the sustainability indicators and procedures in awarding the label.
It is clear from the document that the metal words are indicators of different tiers of a rating system for the goods concerned. They can thus be seen as an indicator of quality in that they identify the level of compliance with the certification standard applicable to any particular item in the goods/service specification. I am satisfied that the four trade marks shown in the first paragraph of this decision meet the requirements of section 51 of the Act as they differ only in colour and in reference to a quality standard for the goods.
These four trade marks are, however, four out of 32 representations which the applicant has claimed as a series. The remaining 28 representations contain material additional to those features already considered. It is necessary now to determine whether any or all of this material meets the requirements of section 51.
Is the word PLUS a reference to quality?
A number of the representations include the word PLUS and four of these are shown below:
Paragraph 3.03 of the Program Standard describes the rating system as follows:
Label Rating Tiers
The 4 rating tiers from lowest to highest are Bronze, Silver, Gold and Platinum. ….
PLUS: where the product has undergone a site-based, third party audited assessment process, by ecospecifier and an accredited third party agent, the Tier Award level achieved will be modified by the issuing of a Licence to use the ‘PLUS’ recognition in addition to the Tier Award recognition on the label.
Paragraph 4.9 further explains the PLUS level assessment:
PLUS ratings
PLUS level Assessment requires manufacturer and product specific audited life cycle inventory.[6] The LCI is required to be relevant to the applicant procedure and processes, manufacturing plant/s, administrative procedures and/or supply chain as required by the Program Director to determine the compliance with this standard, the designator PLUS will be included in the rating award.
[6] Life cycle inventory – quantifying the energy and raw material inputs and environmental releases associated with each stage of production.
The meaning of the preceding paragraph is not entirely clear, but it is sufficiently certain that I am able to see that the PLUS rating is a reference to another level of quality certification, in this instance to do with life cycle inventory. This further level appears to be additional to the metal word ratings, and appears to be an optional rating. Its presence in the representations does not have any effect on the material particulars of the trade marks or the identity of the trade marks. Under those circumstances I am satisfied that the four representations including the word PLUS form a series when added to the four representations shown in paragraph 1 of this decision.
The Greenrate trade marks
The remaining 24 representations in the claimed series all contain additional features to those in the trade marks already discussed. These additional features are the expression ‘GreenRate’ and the terms ‘Level A’, ‘Level B’ and ‘Level C’.
Mr Creighton submitted that the GreenRate level in the applicant’s trade marks is a specific indication of quality unique to the building industry. He said that it refers to the Ecospecifier product assessment which assesses a product’s compatibility to various Green Building Rating schemes, specifically the Green Star ™ scheme in Australia and New Zealand. He said that the purpose of the GreenRate level ratings (Levels A, B and C) is to describe the quality of the product to which the GreenTag will attach, and that they are descriptive of the product’s quality level.

Paragraph 2 of the Program Standard explains the GreenTag program as follows:
Ecospecifier Global Green Tag is a voluntary, multi-criteria, tiered award, product rating conformance certification process and label that includes two components: an ‘LCARate component that assesses products using life cycle assessment processes and a ‘GreenRate’ Assessment process directed at Certification within Green Building Rating Schemes in Australia and Internationally.
…
GreenTag is assessed using 2 pathways …:
a) The LCA Rate program is used for all product assessments to award the Green Tag Label;
b) The GreenRate program is used in parallel to the LCA Rate pathway for products relevant to green building rating systems and is displayed independently within the GreenTag label.
I can see that the GreenRate system is indeed a quality accreditation or certification system. But the word GreenRate is not a mere statement as to the quality of the goods. It is not a recognized quality indicator, such as the metal words or indeed the Levels A, B and C which are added to it in the 24 trade mark representations. It is a reference to another quality assessment program quite apart from the basic systems already considered. It is thus a particular which falls outside the range of additions allowable in creating a series of trade mark.
In addition, once Green Rate is added to the basic trade mark its material particulars change. They change from ‘Green Tag Certified + medallion’ to ‘Green Tag Certified + medallion + GreenRate’. This change occurs because GreenRate is arguably a registrable particular in its own right and has no obvious connection, without educating the public as to its purpose, with the other quality indicia which are applied to the certification services. While the addition of the metal words and the word ‘plus’ can be seen as additions allowed for by the provisions of paragraph 51(1)(b), the same cannot be said for GreenRate.
This reasoning then brings me to the issue of which trade marks amongst the 32 provided on the application form can be regarded as valid series.
Valid series
There are a number of valid series contained within the 32 representations provided with the application. The four representations shown in paragraph 1 of this decision form a valid series (SERIES 1). I have already defined a series of eight trade marks out of the 32 provided as forming a valid series. I will refer to these as SERIES 2, and they are as follows:

The remaining 24 trade marks, all of which include the word GreenRate may be identified as SERIES 3. Rather than show them here, they may be found in the Annexure under the heading ‘GreenRate trade marks’.
The separate series I have identified all include the four metal words as the basic quality indicators. It would be possible to form other groups of trade marks into series, but none of them would include all four metal words, and I make the assumption that these options would be even less likely to meet the applicant’s requirements than are the valid series I have identified.
I have therefore found that the 32 trade marks claimed on the application do not form a valid series as provided for by section 51 of the Act. In order for the application to proceed, the applicant must agree to amend its application to include a valid series.
Decision
I will allow the applicant one month from the date of this decision to request amendment of its application so that it consists of one only of SERIES 1, SERIES 2 or SERIES 3 as described above and to delete all other representations from the application. If the applicant fails to request amendment within the month allowed, I will reject the application.
If the Registrar is notified of an appeal from this decision before that time, any actions on the application shall not proceed until the appeal is discontinued, or in the case of orders issuing from the Court, the registration will be subject to those orders.
Alison Windsor
Hearing Officer
Trade Marks Hearings
15 July 2011
Annex 1

GreenRate trade marks

[2011] ATMO 63

15 July 2011

Key Legal Topics

Areas of Law

Intellectual Property

Legal Concepts

Statutory Construction

Remedies

Appeal

Delegate:	Alison Windsor
Representation:	Applicant: Shaun Creighton and Kim Crow of Buchanan Law
Decision:	2011 ATMO 63 Section 51 – whether trade marks comprise a valid series – consideration of material particulars – allowable additions to form a valid series – clarification as to which trade marks will form valid series – application to be amended to a valid series as suggested or to be rejected.