Eli Lilly and Company
[2024] ATMO 184
•27 September 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2399323 (class 44) - >HAIR - in the name of Eli Lilly and Company
Delegate: | Benjamin Goldsworthy |
Representation: | Applicant: Spruson & Ferguson |
Decision: | 2024 ATMO 184 Trade Marks Act 1995 (Cth) – s 33 proceeding – s 41 ground for rejection considered – not sufficient inherent adaptation to distinguish – evidence not sufficient – s 41 ground for rejection established – trade mark rejected. |
Background
This matter is an ex parte proceeding under s 33 of the Trade Marks Act 1995 (Cth)[1] regarding an application for registration of a trade mark with the following details:
Trade mark number: 2399323
Owner: Eli Lilly and Company (‘Applicant’)
Trade mark: >HAIR (‘Trade Mark’)
Services: class 44: Medical information services in the field of autoimmune diseases (‘Designated Services’)
Filing date: 19 October 2023
Priority date: 10 August 2023
[1] In these reasons, any references to sections or regulations are references to sections of the Trade Marks Act 1995 (Cth) and regulations of the Trade Marks Regulations 1995 (Cth).
Convention details
Date: 10 Aug 2023
Number: 98126656
Country: UNITED STATES OF AMERICA
Specification: Class 44: Medical information services in the field of autoimmune diseases
After examination under s 31 a delegate of the Registrar of Trade Marks (‘Registrar’) raised a ground of rejection under s 41. The examiner articulated the ground of rejection under s 41 in the following manner:
[T]he symbol > does not add a sufficient degree of adaptation to your applicant’s trade mark. As you have acknowledged, there are multiple interpretations of the meaning of the symbol “>” combined with HAIR. However, without additional context… no meaning is immediately evident, and consumers are therefore not immediately struck with any one clear meaning derivable from this combination upon encountering the trade mark. Indeed, … “>” is likely to be viewed as a decorative chevron, and HAIR dominates the overall impression of the trade mark.
…
…I consider the trade mark >HAIR to simply denote that your applicant’s services are providing medical information in the field of autoimmune diseases that are related to hair. I believe a reasonable consumer of such services would assume the same and that the “>” is mere embellishment. … The absence of meaning for the trade mark cannot be inferred from a lack of established usage. It is akin to saying that HAIR or HAIR^ do not have a meaning because that specific combination has no established usage. These are mere embellishments to the word HAIR that do not substantially alter the impression of the trade mark. Therefore, >HAIR can be said to so nearly resemble HAIR and other traders are likely to desire to use HAIR.
The Applicant responded with submissions and the examiner maintained the ground of rejection under s 41. The Applicant requested to be heard by written submissions. On 6 August 2024 the Applicant filed written submissions prepared by Julia Caunt from Spruson & Ferguson.
I note that this is not a review the examiner’s decision and rationale and the ground for rejection will be considered afresh. In deciding this matter, I have considered all the submissions and evidence provided by the Applicant in respect of this application, including those made during examination. I have decided the matter as a delegate of the Registrar of Trade Marks.
Consideration
Section 41
Section 41 relevantly provides:
41Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
In deciding whether a s 41 ground of rejection exists, I must ask whether the Trade Mark is capable of distinguishing the Designated Services as those of the Applicant from those of other traders. If I am satisfied that the Trade Mark is not so capable, s 41 requires that the Trade Mark be rejected.
Relevant to the assessment of capability to distinguish is whether the Trade Mark has ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Designated Services, a s 41 ground for rejection does not exist. However, if I am not satisfied that the Trade Mark has sufficient inherent adaptation to distinguish, the next question will be whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that it did not distinguish the Designated Services at its filing date, taking account of the extent of the Applicant’s use.[2] If the Trade Mark has some inherent adaptation to distinguish, it should be rejected only if I am satisfied that, after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant’s use, and other relevant circumstances, the Trade Mark did not or would not distinguish the and Designated Services.[3]
Ordinary signification
[2] Section 41(3).
[3] Section 41(4).
The ordinary signification is the ordinary meaning of the sign >HAIR to persons in Australia who purchase, consume or trade in the Designated Services.
The word ‘HAIR’ clearly refers to the ‘natural covering of the human head’ and ‘one of the numerous fine, usually cylindrical filaments growing from the skin and forming the coat of most mammals.’[4] The word refers to the collection of those growths from the skin, whether on the head or body, of a human being or animal. In the context of autoimmune diseases as a subject matter of information services, the word ‘hair’ appears to be particularly relevant. Human hair is a topic about which patients with autoimmune conditions and those treating them would have concerns. I am satisfied that there are autoimmune diseases which relate to or have an impact on human hair whether as a direct impact of the disease or as a side effect of treatment. The word ‘hair’ in the context of Designated Services, refers to information about hair in the field of autoimmune diseases. The word designates the subject matter of the information offered.
[4] Macquire Dictionary (Online, accessed 16 August 2024) ‘hair’.
The symbol ‘>’, when placed between two numbers, words or concepts, is sometimes referred to as the ‘greater than sign’, especially when used in mathematical contexts. In in the case of the Trade Mark there is nothing appearing prior to the ‘>’ symbol. The appearance of the symbol ‘>’ in the overall Trade Mark has little impact. It appears to be of little more effect on the overall combination than a bullet point or a border device. The ‘>’ symbol here amounts to no more than an embellishment of the word ‘hair’.
Branson J in Blount Inc v Registrar of Trade Marks noted:
In Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285, Kitto J was required to consider “a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter “Y” is common to both, the whole being enclosed within a circle.” His Honour said of this cross device that it:
...merely provides a fancy method of presenting the name “Bayer”, and it has no greater aptitude than has the name itself for distinguishing the proprietor’s goods from those of other people who happen to be known as ‘Bayer’. It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which ... “would strike the eye and fix in the recollection.”
On appeal to the Full Court of the High Court, Taylor and Owen JJ expressly agreed with the above approach of Kitto J to the Bayer cross device. No member of the Court criticised his Honour’s approach.
By analogy, it seems to me that I must conclude that the particular manner in which the applicant’s trade mark presents the word “Oregon” does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient.... These aspects of the trade mark whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber. I find that the applicant’s trade mark is not inherently adapted to distinguish the designated goods from the goods of another person.[5]
[5] [1998] FCA 440; (1998) 40 IPR 498, 507.
The Trade Mark is an example of a composite mark consisting of a word alongside additional material, being the ‘>’ symbol, that has little effect on the word of the Trade Mark overall.[6]
[6] Primary Health Care Limited v Commonwealth of Australia [2016] FCA 313 (Jagot J).
I am satisfied that in the context of the Designated Services, the sign >HAIR refers medical information services in the field of autoimmune diseases related to or about hair.
Legitimate desire to use
I must now determine the desire of other traders to legitimately make use of the Trade Mark to refer to similar goods and services for the sake of its ordinary signification. The Applicant asserts that other traders are not likely to desire such use of the Trade Mark.
The word ‘HAIR’ in the Trade Mark is dominant and the effect of the addition of the symbol ‘>’ does not take the Trade Mark beyond the descriptive significance that inheres in the word ‘hair’. The total combination of features in the Trade Mark, including the ‘>’ symbol would not, ‘strike the eye and fix in the recollection’.[7] It is likely that other traders of the Designated Services may desire to use a trade mark with the same word combined with a similar symbol or embellishment such as the ‘>’. Overall, I consider it likely that a person may desire to use a trade mark so nearly resembling the Trade Mark for the sake of its ordinary signification.
[7] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 162 (Greene MR).
The Applicant’s Submissions refer me to the fact that the Trade Mark was registered in the United Kingdom, Switzerland and New Zealand and has been published in Brazil. The Australian system for registration of trade marks has its own principles and the findings, if any, of these offices do not alter my decision. Regardless, if I am satisfied on application of the principles that a ground of rejection exists then this information does not change the outcome.
I consider the Trade Mark does not have sufficient inherent adaptation to the distinguish the Designated Services. The Applicant has provided no evidence of its use of the Trade Mark. Therefore, I cannot reasonably apply s 41(3) or (4).
Accordingly, a s 41 ground of rejection is established.
Decision
Section 33 of the Act provides:
33 Application 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.
I am satisfied that there is a ground for rejecting the Trade Mark under s 41. In accordance with s 33(3), I reject trade mark application number 2399323.
If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
27 September 2024
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