Federal Express Corporation

[1999] ATMO 51

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR
OF TRADE MARKS, WITH REASONS

Re: Trade mark applications number 716051 and 716052 in the name of FEDERAL EXPRESS CORPORATION

Background
Federal Express Corporation has filed two applications to register trade marks.

• Application number 716051 is for the trade mark ABSOLUTELY, POSITIVELY. 

• Application number 716052 is for the trade mark WHEN IT ABSOLUTELY, POSITIVELY HAS TO BE THERE OVERNIGHT.

Both applications have been filed for services in a single class, class 39.  The services now specified are:

For 716051:Transportation and storage of goods including transporting goods from one place to another by land and air; the pick-up, transportation, delivery and storage of documents, packages and cargo; tracking services in relation to the transportation of documents, packages and cargo

For 716052:Transportation and storage of goods including transporting goods from one place to another by land and air; the pick-up, transportation, delivery, tracking and storage of documents, packages and cargo.

For my purposes, the difference in the wording of the statements of services is irrelevant but I note that the applicant has now twice been told, by an examiner of trade marks, that "tracking services" fall in class 35.  Since the application has been filed for only a single class, class 39, it cannot at present proceed with those tracking services remaining.

My own concern is with another aspect of the examination of these applications, one that goes to the existence or otherwise of substantive grounds for rejection of the applications.  Before turning in more detail to the legislation itself, it will be helpful to set down the relevant part of the examiner's last report, which dealt with both applications.  At the last report, the examiner wrote:

There are many instances where customers need to be absolutely positively certain that a product, document, or spare part will be delivered within a certain time frame or indeed overnight as in the other slogan intended to be used as a trade mark by the applicant.  Traders who can guarantee these services with such clear statements would clearly have a competitive advantage.

The words ABSOLUTELY, POSITIVELY should be free for others providing similar services to use, unless it can be clearly demonstrated that the trade mark, by virtue of extensive use, distinguishes the applicant's services from those of other traders.

I have attached a photocopy of an advertisement in the Yellow Pages of the Telephone Directory for delivery services by TNT Limited.  As you will see, the words "Absolutely, Positively" have been used in the normal course of promoting the owner's delivery services.

[This advertisement is reproduced below]

[The examiner's report continues]

Section 31 of the Trade Marks Act 1995 states that the Registrar must, in accordance with the regulations, examine and report on:

(a) whether the application has been made in accordance with this Act

and

(b) whether there are grounds, under Division 2 for rejecting it.

Section 41(2) states:  "An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's services in respect of which the trade mark is sought to be registered from the services of other persons."

There is as yet no evidence of use or intended use that could assist in determining whether the mark is capable of distinguishing the applicant's services.  In the absence of evidence I consider the section 41 ground for rejection should be maintained.

The applicant then asked to be heard.  I conducted that hearing under delegation from the Registrar of Trade Marks.  At the hearing, the applicant was represented by Tracey Savage, solicitor, of the firm of Baker & McKenzie.

Submissions and issues
Given that the examiner has already referred to the terms of s 41(2), I will now set down the remainder of the provisions of s 41, leaving aside some explanatory notes that are not relevant to the current matter:

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so  distinguishing the designated goods or services:

(a)       the Registrar is to consider whether, because of the combined effect of the following:

(i)  the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
    (ii)  the use, or intended use, of the trade mark by the applicant;
   (iii)  any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)       if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c)       if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)       if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)       in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

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.

From this, taken with the terms of the last report, it can be seen that the examiner is maintaining that the trade mark ABSOLUTELY, POSITIVELY has some inherent adaptation to distinguish.  The other trade mark, on the examiner's stipulation that it must proceed under s 41(6), has been found to have no inherent adaptation.  This can only be because the spark of inherent adaptation said to be inherent in application 716051 has been extinguished by incorporating that trade mark into the expression WHEN IT ABSOLUTELY, POSITIVELY HAS TO BE THERE OVERNIGHT. 

The recent case of Blount v Registrar of Trade Marks (1998) 40 IPR 498 shows that the relevant issue under the old act, that of adaptation to distinguish, translates into the language of the new act. The well-known definition of "adapted to distinguish" is set down by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

... the question whether a mark is adapted to distinguish [is to] 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.

As the law examined by Justice Kitto shows, that in turn relied on a balance of inherent adaptation to distinguish and acquired distinctiveness.  Under the old legislation, if the former was entirely lacking, the application could not proceed.  This is now remedied by the inclusion of the provisions of s 41(6), which specifically allows the acceptance of such a trade mark in certain tightly specified situations.

The correct approach is that I must be satisfied that acceptance is appropriate.  As Branson J held in Blount, supra at 505, this is done where an applicant places before me, "material upon which (I am) persuaded, on the balance of probabilities" that a case has been made.  As the judge held:

The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the registrar is satisfied of certain matters or the applicant establishes a certain matter…

In approaching the necessary questions, the only material to which I can have regard is the applications themselves.  This applicant has not used the trade marks in Australia. 

At the hearing, Ms Savage stressed that there were many other ways in which the services could be described.  Moreover, she argued that it was not appropriate to view the mark simply as being a combination of two words that, individually, might have problems.  She conceded that the words ABSOLUTELY and POSITIVELY suggest some positive attributes about the applicant's services.  However, it has never been required that a trade mark should be meaningless.  As Ms Savage argued, even under the more rigorous standard of Part A of the 1955 act, a degree of reference to the goods, short of being a "direct reference", was allowable.  That Part A test was, as is said in Oregon, supra, "more demanding" than the present one.

She argued that, as a whole, the mark was capable of distinguishing and that the individual failings of the two components POSITIVELY and DEFINITELY should not be fatal to the trade mark applications.  She noted the SHEEN case, J and P Coats Ltd's Appn (1936) 53 RPC 355, and the decision in the CHARM case, Keystone Knitting Mills Ltd's Trade Mark (1928) 45 RPC 421. In that case, at 426, Lord Hanworth noted:

"the mark must be looked at not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and form an opinion as to what it connotes".

Together, she argued that the two words took on an added layer of significance.  She relied on the INSTANT DIP case, application by Otto Seligmann, (1954) 71 RPC 52 at 54, where it was said:

For my own part, had the matter come before me at first instance, I am not sure that I should have arrived at the conclusion that an unusual association of this adjective with this noun would be overlooked by the representative members of the purchasing public, and that they would be astute to apply to each of the words the meaning which undoubtedly the two words in isolation plainly connote".

Although the applicant's marks do not consist of an adjective with a noun, Ms Savage submitted that, because of the unusual association of the words ABSOLUTELY and POSITIVELY, the marks are eligible for registration.  This combination was not, she argued, the normal, natural or only combination available to indicate that the services of the type offered by the applicant can be relied on for speed and efficiency.  The marks therefore were not ones that were likely to prejudice innocent traders in the normal mode of conducting their business (per Lord Shaw in W&G case, W & G du Cross Ltd's application, (1913) 30 RPC 660. She argued that traders may use other slogans such as "Overnight delivery guaranteed" or "definitely guaranteed".

Decision
As to inherent adaptation and the initial test proposed under s 41(3), I am required to decide if, of themselves, the trade marks at issue are utterly devoid of the ability to distinguish one trader's goods from another's. 

I appreciate Ms Savage's argument that, together, the words "absolutely, positively" have no clear meaning when taken in isolation.  In isolation, they invite the question "Absolutely, positively what?"  However, trade marks must be seen in the context of the relevant goods or services, not in isolation.  It seems to me that these two words invite the addition of other linking words.  Because of this, these particular words are not, of themselves, sufficiently inherently adapted to distinguish as to be capable of distinguishing the applicant's goods.  I will now explain why this is so.

In Registrar of Trade Marks v Muller (1980) 144 CLR 37, the High Court said, of the trade mark LESS, at 40:

What must be regarded is the application of the word "Less" to the goods in connexion with which it is sought to be registered.  The question is therefore whether in phrases such as "Less analgesic" or "Less aspirin", " Less" refers directly to the character or quality of the pharmaceutical product with which it is paired.

It seems to us that when it is so linked, "Less" does convey something about the character or quality of the product.  Admittedly, an additional word such as "used" or "requiring" has to be inserted into the phrase for the meaning to be clear and grammatically complete.  But this is no different from "charm" in relation to "hosiery" (Keystone [supra]) or "health" in relation to "cocoa" (Thorne & Co Ltd. v. Sandow [(1912) 29 RPC 440], which were held to have a direct reference to the character or quality of the goods and where link words would have been necessary to make the meaning perfectly clear.

On the authority of the LESS case, I believe that I am entitled to postulate such uses as "ABSOLUTELY, POSITIVELY overnight transport services".  Is the mark, so used, possessed of some inherent adaptation to distinguish?  The examiner has already conceded that it is.  I agree with that conclusion, that the tautology used in devising the mark is the thing that bestows a measure of inherent adaptation.

However, in postulating such linking words, I have already assumed the worst for the purposes of testing the trade mark ABSOLUTELY, POSITIVELY.  The link words are not that much different to the expanded expression WHEN IT ABSOLUTELY, POSITIVELY HAS TO BE THERE OVERNIGHT.  I believe that if the words ABSOLUTELY, POSITIVELY, when used in such a context, have a measure of inherent adaptation then there is also a measure of this, albeit small, about the trade mark WHEN IT ABSOLUTELY, POSITIVELY HAS TO BE THERE OVERNIGHT.  For the record, then, I state my conclusion that both trade marks have a measure of inherent adaptation to distinguish.

In saying this, I make no comment about the fact that TNT Limited ("TNT") is, or was, as the examiner has shown, using the expression "ABSOLUTELY, POSITIVELY - the largest network".  At the hearing, Ms Savage stated that there was no connection between the applicant and TNT.  It is not appropriate or necessary for me to speculate, in an ex parte matter, about how such a thing may come to be.  Whatever the situation, I certainly doubt that TNT would view the expression they have used as common property, mere descriptive matter open to use by one and all. Perhaps it may be that a trade mark identity is already being carved out by TNT.  That need not intrude on the present matter, which is being dealt with ex-parte.  Only if that hurdle is overcome can any conflict in the marketplace be dealt with as an opposition to registration.

That does not, however, advance the present applicant's case.  All that I can say of the prima facie merits of the relevant trade marks is that, as a matter of probability, it is not altogether likely or reasonable that another trader will wish to use a mark like either of those now at issue.  I cannot conclude, on that basis alone, that the trade mark will distinguish the present applicant's services.  The degree of inherent adaptation is simply insufficient unless augmented with some evidence of actual use.

Under s 41(5)(a)(ii), I am entitled to allow for the effect of "intended use" as well as actual use.  However, I cannot predict how the mark will actually be used and it seems to me that postulated use, in this case, is no substitute for actual use.  It is only actual use and promotion that brings reputation and it is reputation that will reduce the likelihood that another trader, acting honestly, will wish to use these marks or one closely resembling them.

Accordingly, the present trade marks being neither used nor promoted in Australia, I am not satisfied that they will distinguish the applicant's services. 

I have considered Ms Savage's argument that six other marks, which she said were entirely comparable, have been accepted.  Having looked at the details of those marks, I find some have more inherent merit than the marks now at issue.  Others were supported by evidence - Ms Savage may well have been misled by one instance where the existence of that evidence was not reflected on our database.  All in all, while the acceptances do not lend themselves to cut-and-dried analysis, I do not see anything in their pattern to lead me to doubt my own application of the relevant tests in the present case.  That in turn being so, I do not think it is appropriate to add to this matter by going into the details of those other acceptances.

Nor am I prepared to give significant weight to the fact that the applicant has apparently registered related trade marks in the United States.  While I accept that international consistency is a desirable thing, it is not sufficient, alone, to tip the scales in the judgement that I am required to make under the terms of our own legislation.

At the end of my analysis, on the facts of the present case I am required by s 41(2) to reject the applications, and this I do.

T. E. Williams
Hearing Officer
14 May 1999