Ferngrove Pharmaceuticals Australia Pty Ltd.

[2016] ATMO 74

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1756747(1,3,5,29,30,31) – AUSTRALIA MADE/AUSTRALIA OWNED Logo - in the name of Ferngrove Pharmaceuticals Australia Pty Ltd.

Delegate:

Debrett G. Lyons

Representation:

Applicant: Sue Rennie

Decision:

2016 ATMO 74

Trade Marks Act 1995 - section 38 – whether application should not have been accepted – trade mark not inherently adapted to distinguish the applied-for goods – whether reasonable to revoke acceptance – acceptance revoked – application returned to examination.

Background

1. This decision is pursuant to section 38 of the Trade Marks Act 1995 (‘the Act’).  It arises from the Registrar of Trade Marks’ intention to revoke acceptance of trade mark application 1756747 (‘the Application’) in the name of Ferngrove Pharmaceuticals Australia Pty Ltd (‘the Applicant’), relevant details of which are below.

Priority Date:

11 March 2016

Goods:

Class 1: Acids for use in the preparation of animal foodstuffs; Alcohol for pickling foodstuffs; Alginates for the food industry; Antioxidants for use in the manufacture of food supplements; Bacterial cultures for addition to food products; Carrageenin for use in the manufacture of food; Casein for the food industry; Chemical additives for food; Chemical additives for foodstuffs; Chemical additives for use in the manufacture of animal foodstuffs; Chemical ingredients for use in the manufacture of foods; Chemical preparations for preserving foodstuffs; Chemical preparations for use as ingredients for foods; Chemical preparations for use in the food industry; Chemical products for preserving foodstuffs; Chemical products for stabilising foodstuffs; Chemical products for use in maintaining the freshness of food; Chemical products for use in the food preparation industry; Chemical products for use in the food processing industry; Chemical products for use in the manufacture of foods; Chemical products for use in the manufacture of synthetic foods; Chemical seasonings (for food manufacture); Chemical substances for preserving foodstuffs; Chemical substances for use as food ingredients; Chemicals for preserving foodstuffs; Chemicals for use in coating food products; Common salt for preserving (other than foodstuffs); Cream of tartar for the food industry; Emulsifiers for food preparations; Emulsifiers for use in the food processing industries; Enzyme preparations for the food industry; Enzymes for the food industry; Enzymes for use in foodstuffs; Flavour improvers for foodstuffs; Food esters, other than for pharmaceutical purposes; Food preservatives; Food protein as a raw material; Glucose for the food industry; Gluten for the food industry; Lactic cultures for the food industry; Lactose for the food industry; Lecithin for the food industry; Milk ferments (bacteria preparations) used in making foodstuffs; Milk ferments for the food industry; Mineral preparations for use as nutritional foodstuffs for plants; Monosodium glutamate for use in the manufacture of food; Oils for the preservation of food; Pectin for the food industry; Plant foods; Polydextrose for use in low- calorie foods; Polysaccharides for use in the manufacture of foodstuffs; Preservatives for food (chemical); Products for use in food preservation (other than salt); Protein for use in the manufacture of foodstuffs; Proteins for the food industry; Proteins for use in the manufacture of food supplements; Salt for preserving, other than for foodstuffs; Sea salt for preserving, other than foodstuffs; Seaweed plant food; Sodium chloride, other than for medical use or preserving foodstuffs; Stabilising agents for use in food; Tea extracts for the food industry; Vitamins for the food industry; Vitamins for use in the manufacture of food supplements

Class 3: Almond oil; Aromatherapy oil; Aromatic oil; Aromatics (essential oils); Baby oil; Bath oil concentrates, not medicated; Bath oils, not medicated; Bergamot oil; Blended essential oils; Body oil; Body oil spray; Cake flavorings (essential oils); Cake flavourings (essential oils); Cleaning oils; Cleaning oils for cosmetic purposes; Cleansing oils; Combing oil; Cosmetic oils; Cosmetics in the form of oils; Cuticle oil; Degreasers based on citrus oil, for household purposes; Distilled oils for beauty care; Edible essences for foodstuffs (etheric substances and essential oils); Emulsified essential oils; Essential oils; Essential oils for cosmetic purposes; Essential oils for personal use; Essential oils for the manufacture of flavourings; Essential oils for the manufacture of perfumes; Essential oils for the production of perfumes; Essential oils for toilet use; Essential oils for use foods; Essential oils for use in air fresheners; Essential oils for use in bleaches; Essential oils for use in cosmetics; Essential oils for use in deodorants; Essential oils for use in detergents; Essential oils for use in eau de colognes; Essential oils for use in fabric softeners; Essential oils for use in toilet articles; Essential oils of cedarwood; Essential oils of citron; Essential oils of lemon; Ethereal oils; Evening primrose oil (essential oil), other than for medical use; Flavorings for beverages (essential oils); Flavour enhancers for food (essential oils); Flavourings for beverages (essential oils); Flavourings for cakes (essential oils); Flavourings for foodstuffs being essential oils; Food flavorings (essential oils); Food flavourings (essential oils); Food flavourings (essential oils); Fractions of essential oils; Gaultheria oil; Hair fixing oil; Hair oil; Jasmine oil; Lavender oil; Massage oils, not medicated; Mineral oils (cosmetic); Mint essence (essential oil); Natural oils for cleaning purposes; Natural oils for cosmetic purposes; Natural oils for perfumes; Non-medicated bath oils; Non- medicated oils; Non-medicated suntanning oils; Oil for cleaning purposes; Oil for cosmetic use; Oil for the body; Oil of turpentine for degreasing; Oils being perfumed lathering products for use in the bath; Oils for babies; Oils for cleaning purposes; Oils for cosmetic purposes; Oils for moisturising the skin after sun bathing; Oils for perfumes and scents; Oils for the body (cosmetics); Oils for the breasts (cosmetics); Oils for the hair; Oils for the skin (cosmetics); Oils for toilet purposes; Oils for use in suntanning; Perfume oils; Pine needle oil; Pine oil; Preparations for removing oil (household purposes); Preparations for the removal of oil (household use); Rose oil; Scented oils; Skin care oils (cosmetic); Sun blocking oils (cosmetics); Sun protection oils (cosmetics); Suntan oils (cosmetics); Tanning oils (cosmetics); Tea-tree oil; Terpenes (essential oils); Textile finishing oils; Toilet oils; Vegetable based oils for use on the skin

Class 5: Effervescent vitamin tablets; Ginseng preparations incorporating vitamins and minerals; Pharmaceutical preparations containing vitamins; Preparations of vitamins; Stimulants made of vitamins; Vitamin C preparations; Vitamin drinks; Vitamin preparations; Vitamin preparations for human consumption; Vitamin preparations in tablet form; Vitamin preparations in the nature of food supplements; Vitamin supplements; Vitamin supplements for foodstuffs for human consumption; Vitamin supplements for use by lactating women; Vitamin supplements for use by pregnant women; Vitamin tablets; Vitamins; Albumin dietary supplements; Alginate dietary supplements; Antioxidants (dietary supplements); Bee glue (propolis) dietary supplements; Carbohydrate based dietary supplements; Casein dietary supplements; Collagen based medicated supplements; Colostrum supplements; Dietary food supplements; Dietary nutritional supplements; Dietary protein supplements; Dietary supplements; Dietary supplements for infants; Dietetic food supplements adapted for medical purposes; Energy drinks (dietary supplements); Enzyme dietary supplements; Fibre supplements; Food supplements (dietary supplements); Food supplements for medical purposes; Glucose dietary supplements; Herbal dietary supplements; Lecithin dietary supplements; Linseed dietary supplements; Linseed oil dietary supplements; Maltodextrins (nutritional supplements); Medicated food supplements; Medicated preparations for use as supplements for food; Medicated supplements for food; Medicated supplements for foodstuffs for human consumption; Medicinal food supplements; Mineral dietary supplements for humans; Mineral food supplements; Mineral preparations for use as supplements to drinking water; Non-carbohydrate dietary supplements; Nutritional supplements; Nutritional supplements for medical use; Plant compounds for use as dietary supplements (medicinal); Plant compounds for use as dietary supplements (veterinary); Plant extracts (dietary supplements); Pollen dietary supplements; Propolis dietary supplements; Protein dietary supplements; Protein supplements for humans; Royal jelly dietary supplements; Supplements (trace element) for foodstuffs for human consumption; Wheat germ dietary supplements; Yeast dietary supplements; Dried colostrum milk; Dried milk being food for infants; Dried milk powder being food for babies; Dried milk preparations being food for babies; Dried milk products being food for babies; Milk calcium concentrate (nutritional supplement); Milk foods for infants; Milk powder for alimentary purposes (for babies); Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Milk sugar (nutritional supplement); Milk sugar for pharmaceutical purposes; Milking grease; Perfumed milks for medical use; Powdered milk foods for infants; Powdered milk for babies; Powdered milk*; Sun milk for medical purposes; Suntan milk for medical use

Class 29: Aerated beverages (predominantly of milk); Aerated drinks (predominantly of milk); Albumin milk; Anhydrous milk fats; Artificial milk based desserts; Baked custard made with eggs and milk; Beverages consisting principally of milk; Beverages having a milk base; Beverages made from milk; Beverages with a milk base; By-products of milk; Canned milk; Coconut milk for cooking; Condensed milk; Cows' milk; Cream preparations containing milk and fruits; Curdled milk; Curdled milk products; Dried milk; Dried milk powder; Dried milk products; Drinks based predominantly on milk; Drinks made wholly or principally with milk; Fermented milk; Flavoured milk; Flavoured milk powder for making drinks; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods made from milk products; Foods prepared from milk; Goat's milk; Half-fat milk products; Imitation milk; Instant desserts having a milk base; Koumiss (kumiss) (milk beverage); Kumys (kumyss) (milk beverage); Long life milk; Low fat milk products; Malted milk beverages (milk predominating); Malted milk for culinary purposes; Milk; Milk based beverages (milk predominating); Milk based drinks (milk predominating); Milk based products (milk predominating); Milk beverages (milk predominating); Milk cream; Milk curd preparations; Milk curds; Milk drinks; Milk ferments for culinary purposes; Milk jam; Milk of almonds for culinary purposes; Milk powder (other than for babies); Milk powder replacers; Milk products; Milk protein; Milk protein products; Powdered milk; Preparations for making milk beverages; Preparations for making milk shakes; Preparations made from milk; Prepared desserts (milk based); Prostokvasha (soured milk); Protein milk; Rice milk (milk substitute); Semi skimmed milk; Skimmed milk; Skimmed milk powder; Sour milk products; Soya milk; Soya milk (milk substitute); Spreads derived from milk; Whole milk; Yoghurt made from goats milk; Cream (dairy products); Dairy based beverages and powders; Dairy desserts (except ice cream or frozen yoghurt); Dairy produce; Dairy products; Dairy products in powder form; Dairy puddings; Dairy spreads; Dairy-based dips; Desserts made wholly or principally of dairy products; Drinks made from dairy products; Food spreads consisting principally of dairy products; Imitation dairy spreads; Low fat dairy spreads; Soya based dairy substitutes; Spreads consisting wholly or principally of dairy products; Spreads made from dairy products; Algae prepared for human foods; Animal marrow for food; Banana based snack food products; Chilled foods consisting predominantly of fish; Chilled foods consisting predominantly of game; Chilled foods consisting predominantly of meat; Chilled foods consisting predominantly of poultry; Cocoa butter for food; Colza oil for food; Edible essences for foodstuffs (oils); Edible oils for use in basting foodstuffs; Edible oils for use in cooking foodstuffs; Egg-based foodstuffs; Extruded potato products for use in food; Flowers and leaves, being dried, cooked or preserved foodstuffs; Food pastes made from fish; Food pastes made from game; Food pastes made from meat; Food pastes made from poultry; Food preparations consisting principally of meat; Food preparations consisting principally of meat products; Food preparations having a base of vegetables; Food preparations made from meat; Food preparations with a vegetable base; Food preserves; Food products consisting principally of fish; Food products derived from fish; Food products derived from meat; Food products derived from seafood; Food products made from cooked fruits; Food products made from cooked nuts; Food products made from cooked vegetables; Food products made from dried fruits; Food products made from dried nuts; Food products made from dried vegetables; Food products made from eggs; Food products made from meat; Food products made from nuts; Food products made from preserved fruits; Food products made from preserved nuts; Food products made from preserved vegetables; Food products made from seaweeds; Food products made of fish; Food products made of shellfish; Food protein for human consumption; Food spreads being a blend of edible oils and edible fats; Food spreads consisting principally of edible fats; Food spreads consisting principally of edible oils; Food spreads consisting principally of vegetables for sandwiches; Foods made from fish; Foodstuffs consisting of poultry; Foodstuffs consisting of sausage meat; Foodstuffs consisting of sausages; Fruit based snack food; Fruit- based snack foods; Gelling agents for use in foods; Isinglass for food; Jellies for food; Nut products for food; Olive oil for food; Palm kernel oil for food; Palm oil for food; Pollen prepared as foodstuff; Potato based snack food products; Potato snack foods; Prepared foods consisting principally of cheese; Prepared foods consisting principally of fish; Prepared foods consisting principally of fruits; Pulses (foodstuffs); Pulses (for food); Rape oil for food; Seaweed extracts for food; Smoked food products; Snack food products made wholly or principally of potatoes; Snack foods consisting principally of meat; Snack foods made from dehydrated vegetables; Snack foods made from dried vegetables; Snack foods made from eggs; Snack foods made from extruded vegetables; Snack foods made from meat; Snack foods made from potatoes and wheat (potatoes predominating); Snack foods made from pre-cooked vegetables; Soya beans, preserved, for food; Suet for food; Sunflower oil for food; Terrines (foodstuff); Vegetable food products

Class 30: Aromatic preparations for food; Aromatic preparations for the food production industry; Auxiliaries (other than essential oils) for the improvement of the flavour of food; Cereal based food bars; Cereal based snack food; Cereal breakfast foods; Cereal snack foods flavoured with cheese; Crisp snack food products made from cereals; Curried food pastes; Dressings for food; Dried pasta foods; Essences for food (other than essential oils); Essences for foodstuffs (except etheric essences and essential oils); Essences for use in food preparation (other than essential oils); Extracts of cocoa for use as flavours in foodstuffs; Extracts of coffee for use as flavours in foodstuffs; Extruded food products made of maize; Extruded food products made of rice; Extruded food products made of wheat; Extruded savoury snack foods; Farinaceous food pastes; Farinaceous foods; Flavour enhancers for food (other than essential oils); Flavourings for snack foods (other than essential oils); Flour concentrate for food; Food dressings (sauces); Food essences (except etheric essences and essential oils); Food flavourings, other than essential oils; Food mixes for making bakery products; Food pastes (seasonings); Food pastes (spices); Food preparations for making puddings; Food products consisting of cereals; Food products containing cereals; Food products containing flour; Food products for making nachos; Food products for making tacos; Food products having a pastry base; Food products made from potato flour; Foods produced from baked cereals; Foods produced from puffed cereals; Foods with a chocolate base; Foods with a cocoa base; Foodstuffs made from cereals; Foodstuffs made from corn; Foodstuffs made from dough; Foodstuffs made from farinaceous products; Foodstuffs made from maize; Foodstuffs made from oats; Foodstuffs made of rice; Foodstuffs made of sugar for making a dessert; Foodstuffs made of sugar for sweetening desserts; Foodstuffs made with cereals; Foodstuffs made with flour; Fructose syrup for use in the manufacture of foods; Glazes for food; Glazing for food products; Glazing products for application to food; Gluten prepared as foodstuff; Groats for human food; Malt extract for food; Malted food drinks; Mineral salts for preserving foodstuffs; Mixes for making breakfast foods; Molasses for food; Oat-based food; Organic thickening agents for cooking foodstuffs; Pickling preparations for foodstuffs; Pickling salt for pickling foodstuffs; Polysaccharides for use as food for culinary purposes; Potato flour based snack food products; Potato flour for food; Preparations for preserving foodstuffs (salt); Preparations for use as rising agents in food; Preservatives for food (salt); Processed grains for use in food; Products for use in food preservation (salt); Rice based snack foods; Salt for flavouring food; Salt for preserving foodstuffs; Salt pellets for preserving foodstuffs; Sea salt for preserving foodstuffs; Snack food products consisting of cereal products; Snack food products made from cereal flour; Snack food products made from cereals; Snack food products made from maize flour; Snack food products made from potato flour; Snack food products made from rice; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods consisting principally of bread; Snack foods consisting principally of confectionery; Snack foods consisting principally of extruded cereals; Snack foods consisting principally of grain; Snack foods consisting principally of pasta; Snack foods consisting principally of rice; Snack foods made from cereals; Snack foods made from corn; Snack foods made of wheat; Snack foods made of whole wheat; Snack foods prepared from cereals; Snack foods prepared from grains; Snack foods prepared from maize; Snack foods prepared from potato flour; Sodium chloride for preserving foodstuffs; Starch for food; Synthetic thickeners for foodstuffs; Tapioca flour for food; Thickeners for cooking foodstuffs; Thickening agents for cooking foodstuffs; Turmeric for food; Wafers (food)

Class 31: Animal foodstuffs; Animal foodstuffs for the weaning of animals; Bird food; Canned foods for animals; Canned foods for cats; Canned foods for dogs; Cat food; Cattle food; Cereal based foodstuffs for animals; Dog food; Dry processed food for cats; Dry processed food for dogs; Fish food; Food for animals; Food for aquarium fish; Food for birds; Food for cats; Food for dogs; Food for fish; Food for insects; Food products for animals; Food substances for animals; Milk for use as foodstuffs for animals; Milk substitutes for use as foodstuffs for animals; Milk-based foodstuffs for animals; Milled food products for animals; Nutrients (foodstuffs) for fish; Oat-based food for animals; Pelleted pet food; Pet food; Protein foodstuffs for animal consumption; Pulses (foodstuffs for animals); Rabbit food; Roots for food; Stall food for animals; Vegetable protein foodstuffs for consumption by animals; Wheat protein foodstuffs for animals

(‘the Goods’)

Trade Mark:

(‘the Trade Mark’)

1. The Application was examined as required by section 31 of the Act and, aside from some classification adjustments, no formal ground for rejection was raised.

2. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 4 August 2016. 

3. However, before that, on 16 May, 2016 and after an internal review of the Application, a delegate of the Registrar issued a Notification of Proposal to Revoke Acceptance (‘the Notification’) which stated, essentially:

   “Trade mark application 1756747 will be advertised as accepted in the Official Journal of Trade Marks shortly. However, it has now come to my attention that the trade mark should not have been accepted.

   …

   Your trade mark has as its main feature the word elements AUSTRALIAN OWNED; AUSTRALIAN MADE. The trade mark also features a depiction of a leaping kangaroo with an accompanying rounded corner shaped device.

   The word AUSTRALIAN can be defined as ‘relating to Australia’. The word OWNED can be defined as ‘belonging or relating to oneself or itself’ and the word MADE can be defined as ‘made in a particular place or way’. The leaping kangaroo symbol is a recognisable symbol of Australia.

   This indicates that your goods are provided by a trader who is AUSTRALIAN OWNED and the goods they offer are AUSTRALIAN MADE. That is, goods of the kind/quality provided by a trader who has possession of the company in Australia and performs some process of work in relation to the goods in Australia. The kangaroo device is commonly used to indicate that goods are either Australian owned or made.

   When considering the ordinary signification of the mark, it is clear it intends to purvey the nature and quality of the goods provided; the applicant provides goods that are Australian own and made. This is emphasised by the kangaroo device, the use of which clearly supports the idea of the goods being in relation to Australia. Although this is a combination mark, it is an ordinary arrangement of non-distinctive elements. Given that it is an ordinary arrangement, other traders may want to use this mark (or one so nearly resembling it) in connection with their goods, to indicate the quality and nature of those goods. This is not a case where the arrangement and appearance of the mark is sufficiently unusual that it (or something that so nearly resembles it) is unlikely to be needed to be used legitimately by other traders.

   The present trade mark application has also been considered to be deceptively similar to an earlier filed trade mark on the register which claims for the same goods. Where a trade mark falls into this category, it must be rejected under section 44 of the Trade Marks Act 1995 (Cth).

   Under section 44, an application for a trade mark must be rejected if the applicant's trade mark is substantially identical with or deceptively similar to:

   ·    a trade mark registered by another person in respect of similar goods or closely related services, or similar services or closely related goods;

   ·    a trade mark whose registration is being sought by another person in respect of similar goods or closely related services or similar services or closely related goods; and

   ·    the priority date of the applicant's trade mark is not earlier than the priority date of the other trade mark in respect of the similar goods or closely related services, or the similar services or closely related goods.

   The present application closely resembles the earlier filed trade mark:

   451318 (KANGAROO,STYLISED IN TRIANGLE,ROUNDED-CORNERS)

   Both trade marks contain as a main identifying element a leaping kangaroo device surrounded with a shape featuring rounded corners. Consumers would think that same/similar or closely related goods/services being provided under these marks come from the same trade source. I acknowledge that the trade marks do have some differences however these differences are insufficient to overcome the deceptive similarity generated by the leaping kangaroo device featuring a shape with rounded corners.

   The application has been accepted in error and a section 41 and 44 ground for rejection should have been raised.

   Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).

   You have one month from the date of this letter to apply to be heard on this matter or to submit a request for a decision on the written record. …”

1. The Applicant requested to be heard.  A hearing then took place in Canberra on 18 August, 2016 before me, a delegate of the Registrar.  Ms Sue Rennie, an employee of the Applicant, spoke at the hearing on the Applicant’s behalf.  Prior to the hearing Ms Rennie filed written submissions in support of the Application.

Section 38

1. Section 38 of the Act provides:

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)    the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)    it is reasonable to revoke the acceptance, taking account of all the circumstances.

   (2)If the Registrar revokes the acceptance:

   (a)    the application is taken to have never been accepted; and

   (b) the Registrar must examine, and report on, the application necessary under section 31; and

   (c) sections 33 and 34 again apply in relation to the application.

2. Accordingly, two factors must be satisfied before acceptance may be revoked.  Firstly, the Registrar must be satisfied that the Application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the Application was accepted.  Second, that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist.  If acceptance is revoked, the Application is taken never to have been accepted and is returned to examination so that the Applicant may address the circumstances that should have prevented acceptance.

3. The specific error that led to the acceptance or the cause for that error do not require identification.  As stated by the Deputy Registrar in Fpinnovation Pty Ltd[1]:

   If a ground of rejection or refusal did exist then it may be possible to say there was an error but this is both unnecessary and unhelpful because if a ground existed then the trade mark in question should not have been accepted or registered. That change shifted the focus of the decision maker away from identifying and error or omission and towards the grounds of rejection or refusal.

   [1] [2012] ATMO 74, [29].

4. Nevertheless, the revocation must be reasonable and the reasons for it more than a mere difference of opinion as to the registrability of a trade mark.[2]

   [2] See for example Aceto Balsamico del Duca di Adriano Grosoli SrL v Registrar of Trade Marks [2008] ATMO 2; (2008) 75 IPR 400; Re Bobart [2010] ATMO 43; (2010) 88 IPR 357.

Section 38(1)(a)

1. The Notification states that grounds for rejection exist under sections 41 and 44 of the Act. Section 41 relevantly provides:

   (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.

   …

   (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.

2. Section 41 must be assessed having regard to section 33 of the Act, which embodies a so-called ‘presumption of registrability’.[3]  Accordingly the Registrar must accept the application, including in circumstances where the Registrar is equally unsure as to whether or not the Trade Mark is capable of distinguishing, unless satisfied the ground for rejection exists.

   [3] Amendments were made to the Act to clarify that the presumption applies to section 41: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), s 113.

3. In Clark Equipment Co v Registrar of Trade Marks (‘Clark’)[4] Kitto J stated that whether a trade mark is adapted to distinguish is to be tested:

   [B]y 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.

   [4] [1964] HCA 55; (1964) 111 CLR 511, 514.

4. This test was applied in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd,[5] the majority of the High Court finding that the inherent adaptation of a trade mark depended upon its ‘ordinary signification’ to those that would purchase, consume and trade in the goods.

   [5] [2014] HCA 48.

5. The Applicant’s submissions in respect of section 41 are, essentially:

   Everyday words should remain available for all to use.  This means a word or phrase is hard to register if other people are likely to need to use it.  A word or phrase is easier to register if other people are likely [sic] to need to use it.

   Whilst I accept the reasoning in Section 41 IP Australia has made reference to some of these words for eg. Reference was made specifically to the word AUSTRALIAN, there are 10,777 trademarks registered using the work [sic] Australian. Also the word OWNED has 324 trademarks registered and 3,804 trademarks using the word MADE.  Reference was also made to the kangaroo symbol there are 729 trademarks using the word kangaroo with many of them using the leaping kangaroo symbol.  In addition the words AUSTRALIAN MADE has 329 trademarks and 220 using OWNED.

   In this notice reference is also made that the logo indicates that our goods are provided by a trader who is AUSTRALIAN OWNED and the goods they offer are AUSTRALIAN MADE.  This is correct all of the goods using this logo are in fact all manufactured in Australia under Australian standards in a manufacturing facility which is Australian owned.

6. It is very likely that other traders will wish to use the terms AUSTRALIAN OWNED and AUSTRALIAN MADE to indicate the origin of their goods.  The high incidence of those terms as parts of trade marks already on the Register is testament to that.  As stated in Oxford University Press v the Registrar of Trade Marks:

   The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[6]

   [6] [1990] FCA 175, [41].

7. I add here that ‘Note 1’ to section 41 of the Act states:

   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.

8. I have taken full account of the fact that the expressions, AUSTRALIAN OWNED and AUSTRALIAN MADE, do not wholly constitute the Trade Mark and I expect that the Examiner of the Trade Mark took her direction from Part 22.26 of the Trade Mark Examiner’s Manual (‘the Manual’) concerned with composite trade marks.  It states that:

   “Trade marks comprising any combination of words, devices, shapes, sounds, scents and/or colour elements must satisfy the requirement that, when taken as a whole, they are capable of distinguishing designated goods or services in the marketplace.  It could be said, however, that combinations are likely to have a higher capacity to distinguish and are more likely to be prima facie capable of distinguishing.”

   “On the other hand, composite trade marks consisting of a prominent feature in itself not registrable, such as a geographical name or a surname, and surmounted by mere embellishments such as scrolls or a plain geometric device, would not qualify for prima facie acceptance as a composite trade mark.”

9. I find – the finding being more than a mere difference of opinion – that the Examiner incorrectly assessed those competing considerations in deciding to accept the Trade Mark.  The Manual goes on to state that:

   “A composite trade mark will not necessarily be capable of distinguishing simply because it contains a registrable element or even a trade mark which is already registered.  The relative proportions of the elements within the trade mark will affect the ability of the trade mark, taken as a whole, to distinguish the applicant’s goods or services. The overall impact of the trade mark on the potential purchaser should be considered.”

10. The Trade Mark is comprised entirely of integers which, individually, are without any distinctive value.  The only important assessment is whether their combination somehow results in something more distinctive.  I find that it does not and I am in agreement with the Notification where it states that “[a]lthough this is a combination mark, it is an ordinary arrangement of non-distinctive elements”.

11. I am satisfied that a ground of rejection under section 41 of the Act exists.

12. As stated, the Notification also referred to section 44 and, in particular, to registration 451318 for the mark shown below:

1. The registration is for a so-called “Certification” mark, in this case being the widely known “Australian Made” mark. The registration covers all the goods in 34 classes and broad overlap of the compared goods can, for the purposes of section 44, be accepted. The only issue for determination is whether the compared marks are “deceptively similar” and in that respect the Applicant’s submission were that:

   “On the IP Australia website our trade mark 1756747 is referred to as having the wording

   AUSTRALIAN MADE OWNED  and the Image as ANIMAL, DIAMOND, FOUR-SIDED, KANGAROO, LEAPING, SIGNBOARD, STYLISED.

   Were as (sic) trade mark 451318 has no wording reference at all and the image details are ANGLED, ANIMAL, CHEVRON, HOOKED, KANGAROO, LEAOING, ROUNDED-CORNER, STRIPE, STYLISED, TRIANGLE, WAVY .

   These two trademarks have a different shape, different colours, different shaped animals,  one with words, one with none

2. I do not think that the section 44 objection is well taken. The manner in which this Office describes trade marks for the purposes of searching of the Register is not determinative of whether two marks are similar or not. In this case, the only points of commonality are the use of stylised renditions of a kangaroo within the framing of a geometric shape. The shapes are different, the stylisations different and the choice of a kangaroo commonplace in context. The overall resemblance is quite low and I do not find there to be a likelihood of confusion.

3. I am not satisfied that a ground of rejection under section 41 of the Act exists. Nonetheless, for the reason given earlier, I am satisfied that the Application should not have been accepted. The first limb of s 38 is accordingly established.

Section 38(1)(b)

1. The second limb of s 38 requires a consideration of whether revocation is reasonable, taking into account all of the circumstances existing at the time of the decision whether to revoke. The only additional submissions made by the Applicant were that:

   In conclusion, we designed this trade mark with the Australian manufacturer in mind so that we can leverage and support Australian Manufacturing in a tough economic climate.  We at no time tried to imitate another trade mark or confuse consumers. 

   We have been using this trademark when exhibiting and promoting Australia in China and it has been well received and is now a respected Trade mark in China.

2. I do not find that those considerations influence me.  In fact, it is not clear to me that any respect the Trade Mark might enjoy would be more than as an endorsement of the Goods coming from Australia, rather than as emanating from any particular trader.  To the extent that the Trade Mark may in fact be performing a “trade mark function”, I am mindful of the remarks of the delegate in Henkel AG & Co KGaA.[7] where it was said that:

   Arguably, it is in the best interests of the [applicant], as well as its potential opponent, that the [applications] be returned to, and tested by, the appropriate examination processes which have hitherto been omitted. They may then proceed, should this ultimately prove necessary, to the escalation of argument and expense associated with the adversarial forum of opposition. While the [applicant] understandably may not view it as an ideal option, revocation of acceptance need not be fatal to the [applications]. The provisions of [s 41] will be available to the [applicant], over the new fifteen month period allowed for it to put the [applications] into order.

   Finally, it is an important public interest, and therefore also a relevant circumstance in this matter that, wherever possible, the proper examination processes of the Office are consistently maintained. Revocation of acceptance of the [applications], allowing the valid ground for rejection to be raised, will serve that interest.

   [7] [2015] ATMO 13, and bearing in mind that there are no opposition proceedings in this case at present.

3. That being the case, I consider it is reasonable to revoke acceptance of the Application and return it to examination.

Decision

1. I am satisfied, in terms of s 38 of the Act, that the Application should not have been accepted and that it is reasonable to revoke its acceptance. Accordingly I revoke acceptance of trade mark application 1756747 and the Application will be returned to examination.

Debrett Lyons

Hearings Officer

Trade Marks Hearings

20 September 2016