Fin Control Systems Pty Ltd

[2013] ATMO 75

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1347689(28) - PAIRS OF DOTS ON A SURFBOARD - in the name of Fin Control Systems Pty Ltd.

Delegate:

Nicole Worth

Representation:

Applicant: Phillip Macken of Halfords IP

Decision:

2013 ATMO 75

Section 33 ex parte proceedings: section 41 – trade mark not inherently adapted to distinguish – use does not show sign has acquired, or will acquire, distinctiveness as a trade mark – application rejected.

Background

1. On 26 February 2010 Fin Control Systems Pty Ltd (‘the Applicant’) filed an application to register a trade mark, relevant details of which appear below:

   Trade Mark:

(‘the Trade Mark’)

Endorsement:  The trade mark consists of a pattern of three pairs of circular dots located in the rear portion of the underside of a surfboard as shown in the representation of the trade mark attached to the application form. The outline of the surfboard shown in broken lines does not form any part of the trade mark.

Divisional Priority Date:  11 July 2008

Goods:  Class 28: Surfboards; parts, fittings and accessories for surfboards but excluding leashes for surfboards.

1. The application claims a priority date of 11 July 2008 by virtue of a claim to divisional status under section 45 of the Trade Marks Act 1995 (‘the Act’). It was divided out of now-lapsed application 1251196 which faced a ground for rejection similar to that considered in this decision.

2. In accordance with section 31 of the Act the application was examined and a ground for rejection under subsection 41(5) was raised on the premise that:

   [The] trade mark consists of a pattern of three pairs of dots located on the rear portion of the underside of a surfboard.

   The dots indicate the positions in which fins should be attached to the board and the holes or plugs through which the fins are attached. This pattern of dots is purely functional in nature, and does not appear to function as a trade mark.

   Other traders should be able to use this pattern of dots in connection with goods or services similar to yours.

3. Despite evidence of use and submissions from the Applicant the ground for rejection was maintained. On 3 April 2013 a principal examiner indicated that “further submissions which do not result in the progression of this application will result in initiation of the rejection process”, in response to which the Applicant requested to be heard.

4. I heard the matter as the Registrar’s delegate in Sydney on 20 June 2013. Mr. Philip Macken of Halfords IP prepared written submissions for the Applicant and spoke at the hearing on its behalf.

Evidence

1. The evidence filed in respect of the application comprises:

   Statutory declaration of John Dummett, Chief Executive Officer and Managing Director of SHI Holdings Pty Ltd and its subsidiary, the Applicant, with Annexures JD-1 to JD-14 dated 10 October 2012.

   Statutory declaration of Thomas Carroll, professional surfer and “employee/ambassador for Quicksilver, one of the leading surf industry brands in the world”, dated 2 February 2012.

   Statutory declaration of Layne Beachley, former professional surfer and a company director of Layne Beachley Holdings Pty Limited, dated 20 January 2012.

   Statutory declaration of Brodie John Carr, Chief Executive Officer of the Association of Surfing Professionals (ASP) International Limited, dated 6 January 2012.

   Statutory declaration of Mark Richards, Proprietor of Richards Surf, a manufacturer and seller of surfboards, with exhibits MR-1 to MR-4 dated 22 September 2009.

   Statutory declaration of Richard Lovett, former professional surfer and “Brand Ambassador for two Australian-based multinational surf companies”, with Annexure RL-1 dated 3 September 2009.

   Statutory declaration of Philip Macken, attorney with Halfords IP, with exhibit PJM-1 dated 20 June 2013.

2. The Dummett declaration outlines the nature and development of the Applicant’s product. In the early 1990’s, former officers of the Applicant’s parent company “were involved in the acquisition of rights in, and the commercialisation of, a particular, novel surfboard fin system, incorporating surfboard fin plugs and surfboard fins, enabling surfboard fins to be removeably attached to a surfboard. This system was launched under, and has ever since been sold under, the trade mark, ‘FCS’, and consequently the system has become known as the ‘FCS System’ ”. The Applicant was incorporated in 1992 and since then the FCS system has been manufactured and sold by it, or on its behalf, throughout Australia and the world.

3. Prior to the FCS system, surfboard fins were generally integrally formed within a surfboard and thus permanently affixed to it. The FCS system provided surfers with the ability to alter the characteristics of their surfboards by allowing for surfboard fins of varying size, shape and rigidity to be attached and removed. This was achieved by providing anchor points in the surfboard, referred to as ‘fin plugs’, and a corresponding range of surfboard fins which had protruding tabs, ‘fin tabs’, that could be inserted into the fin plugs. ‘Fin tabs’ and ‘fin plugs’ are illustrated below.

   A surfboard fin with two protruding ‘fin tabs’.

   A ‘fin plug’ into which each ‘fin tab’ is inserted (note that the perpendicular bars protruding from the fin plug are not visible once the fin plug is fitted).

4. The fin plugs of the FCS system are cylindrical in shape and embedded into the surfboard, so that once incorporated they appear as circular ‘dots’ on the surfboard’s surface (although if one were to look closely a cavity for receiving fin tabs would be visible). Their arrangement reflects the position of the fins and the tabs which each fin has. Each pair of fin plugs is aligned so as to receive the two tabs of each fin, and placed in a generally triangular orientation near the tail of the surfboard where the tail fin and two lateral fins would be positioned (consequently forming the Trade Mark).

5. Surfboards incorporating three fins, where the surfboards are ‘short boards’ that are typically less than eight feet in length, are known as ‘thrusters’ and are the most common[1]. The Dummett declaration claims that in the mid 1990’s the FCS system became the world standard for removable fin systems and is now the most widely used in the word, such that approximately 80% of all thruster surfboards manufactured in Australia and 55% of those manufactured throughout the world use the FCS system. The declaration further estimates that approximately 60,000 surfboards incorporating the FCS system are manufactured in Australia each year and 900,000 have been manufactured since the FCS system was launched in the mid 1990’s. The total retail value of these is in the order of several hundred million dollars.

   [1] According to the Carroll declaration.

6. The FCS system is used widely by professional surfers competing in the World Championship Tour, including four of the last six men’s world champions (as at the date of declaration in 2012) and such household names as Kelly Slater, Layne Beachley, CJ Hobgood, Stephanie Gilmore, Mark Occhilupo and Sunny Garcia. It is promoted in print media, including in Waves, Tracks, Australian Surfing Life, Australian Surf Business and Stab magazines, in product catalogues, online via the Applicant’s own website and third party surfing websites, and via “brand ambassadors”, sponsorships and give-aways. A substantial monetary amount is spent on promotion in Australia each year.

7. In order to ensure proper installation (and thereby the good name and reputation of the FCS system) the Applicant provides an installation instruction book and/or CD-Rom to all surfboard manufacturers who install the FCS system.

8. The Dummett declaration also provides examples of surfboard fins from four other manufacturers, all of which use a single, elongated fin tab rather than two short fin tabs, and infers that their corresponding fin plugs would have very different appearances from the pairs of circular dots in issue here. The declaration further asserts “In light of the vast number of thruster surfboards which have been sold in Australia, containing [the Applicant’s] FCS System and which therefore exhibit the subject arrangement of three pairs of dots (being the subject trade mark), I am firmly of the view that the subject trade mark has become distinctive of my company and my Company’s relevant products”.

9. The Carroll, Beachley, Carr, Richards and Lovett declarations are made in support of the application (and I will therefore refer to them collectively as ‘the supporting declarations’) and contain statements such as:

   ·     “The FCS triangular pairs of dots arrangement is, in my view, readily recognised by surfers (or at least a majority of surfers) and those involved in the surf industry, as indicating that the relevant surfboard incorporates the FCS System of Fin Control Systems. … Accordingly, I regard the FCS triangular pairs of dots arrangement of the FCS system as highly distinctive of the fin plug system of Fin Control Systems and, when seeing this arrangement on a surfboard, I invariably assume that the surfboard incorporates the FCS System”, as declared by Thomas Carroll. (I note that all of the supporting declarations contain the same concluding sentence.)

   ·     “I have for many years associated the FCS triangular pairs of dots arrangement with Fin Control Systems. As a result, when I see a surfboard having the FCS triangular pairs of dots arrangement, I always assume that the surfboard incorporates the FCS System”, as declared by Layne Beachley,

   ·     “In my view, the FCS Fin Plug Arrangement, appearing on the underside of 3-fin surfboards has become synonymous with Fin Control Systems. … In light of the very large number of surfboards which have, over many years, incorporated this fin plug system of Fin Control Systems, the FCS Fin Plug Arrangement has, in my view, become exclusively associated with Fin Control Systems”, as declared by Brodie Carr,

   ·     “From my extensive knowledge of, and experience in, the Australian surf industry, I am of the view that the vast majority of (if not all) surfboard shapers and manufacturers, as well as most experienced surfers, would also regard the FCS triangular pairs of dots arrangement of the FCS System as highly distinctive of the fin plug system of Fin Control Systems”, as declared by Mark Richards, and

   ·     “Although the positioning of the fins (and therefore the fin plugs) in any fin plug system for ‘thruster’ surfboards will be essentially the same, the use of dark (usually black) cylindrical fin plugs, which when positioned in a surfboard form a set of three pairs of dots (in triangular orientation), is highly distinctive of the FCS System”, as declared by Richard Lovett.

10. Lastly, the Macken declaration presents images of various fin and plug systems by the Applicant and by other producers of such systems. The images show that a range of shapes and colours are used for fin plugs and fin tabs.

Submissions

1. The Applicant submits that the Trade Mark functions as a trade mark and is capable of distinguishing, and indeed does distinguish, the Applicant’s goods from those of other traders. It claims that the Trade Mark is not functional because the functional features, submitted to be the cavity in the fin plug into which a fin tab is inserted and a screw used to secure the fin tab, are not visible in the Trade Mark. Rather, the Applicant asserts, the visible features of the Trade Mark are arbitrary and discretionary. In particular the discretionary features are listed as:

   ·     The contrasting colour of the dots (fin plugs) on the (typically) white surfboard;

   ·     The circular shape of each fin plug (where numerous alternative shapes could have been used and may have had greater functional effectiveness); and

   ·     The use of a ‘pair’ of fin plugs to secure each fin (whereas a single fin plug for each fin is claimed to be more intuitive and simpler to install).

2. It is submitted that the Trade Mark meets the established tests of distinctiveness, and the Applicant also makes particular reference to a paper presented by the then Acting Registrar of Trade Marks, Michael Arblaster, to an IPSANZ conference in 1999 regarding the considerations relevant to the distinctiveness of shape trade marks.[2] According to the Applicant, when the considerations articulated in the paper are applied to the Trade Mark, one can comment that:

   ·     the Trade Mark is not an ordinary or commonplace shape or arrangement for the goods in question, and other traders can and do adopt alternative arrangements,

   ·     the Trade Mark is not a shape or arrangement that is essential to the use or purpose of the relevant article, nor it is needed to achieve a technical result,

   ·     the Trade Mark is not an arrangement which has an engineering advantage, resulting in superior performance (in fact non-circular or single fin plugs may be more effective or easier to install),

   ·     the Trade Mark does not result from a comparatively simple, cheap method of manufacture (there are a number of non-visible features of the fin plugs, including cavities and ridges, which require special equipment to manufacture),

   ·     there is no indication that the Trade Mark facilitates the manufacture, distribution or storage of the goods.

   [2] ‘Shape as a Trade Mark’ by Michael Arblaster, Acting Registrar of Trade Marks, published in the Intellectual Property Forum, Issue 40, 1999.

3. Similarly, the considerations which led to the Registrar’s acceptance for registration of the shape of an electrical switch[3] and a jar[4] are submitted to apply to the subject Trade Mark, they being (it is submitted): that despite apparent functionality the shape was sufficiently distinctive to qualify for registration under subsection 41(5), that the shape was chosen for an aesthetic rather than functional purpose, that the goods are relatively specialised and that the market is relatively narrow.

   [3] Clipsal Australia Pty Ltd [2005] ATMO 64.

   [4] Re Freshfood Holdings Pty Ltd (2000) AIPC 92-074.

4. In addition to the shapes referred to above, the Applicant points to a number of registered shape trade marks which it contends have greater degrees of functionality than the subject mark. For the purposes of consistency and fairness it is submitted that the Registrar should likewise accept the Trade Mark for registration.

Section 41 Trade Mark not Distinguishing Applicant’s Goods

1. The now repealed form of section 41 of the Act, which applies to this application, relevantly provided[5]:

   [5] Section 41 was amended pursuant to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into effect on 15 April 2013. Applications filed prior to then are governed by the previous version of section 41; see Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.

   (2) 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 (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.

   (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.

   Note 1:  For goods of a person and services of a person see section 6.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (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.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

2. Drawing upon the words of Lord Parker in Registrar of Trade Marks v W & G Du Cros Limited[6] Kitto J, in Clark Equipment Co v Registrar of Trade Marks[7], stated the test for inherent adaptation as:

   [T]he 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 the 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.

   [6] (1913) RPC 216.

   [7] [1964] HCA 55; (1964) 111 CLR 511.

3. Sundberg J, in Chocolaterie Guylian NV v Registrar of Trade Marks[8], described further the steps the Registrar must take in considering a trade mark under section 41:

   [8] [2009] FCA 891 at [9]; (2009) 82 IPR 13.

   (a) The Registrar must first “take into account the extent to which the trade mark is inherently adapted to distinguish” the relevant goods from the goods of others: subs 41(3);

   (b) If that consideration leads to a conclusion that the trade mark is capable of distinguishing the goods from those of others, then, so long as the Registrar is not satisfied that any other grounds for rejecting the [trade mark] exist, she must accept the [trade mark]…

   (c) However, if the Registrar is “unable to decide” whether the trade mark is capable of distinguishing the goods by the “inherently adapted” consideration alone, then either subs 41(5) or subs 41(6) applies: see subs 41(4). Subsection 41(5) will apply if the Registrar finds that the trade mark “is to some extent inherently adapted to distinguish the ... goods ... from the goods ... of other persons but is unable to decide, on that basis alone, that the trade make is capable of so distinguishing the ... goods”. By contrast, subs 41(6) will apply if the Registrar finds that the trade mark “is not to any extent inherently adapted to distinguish”.

   (d) If the Registrar finds the trade mark is to some extent inherently adapted (subs 41(5)), the Registrar is then required to consider whether the trade mark “does or will distinguish the ... goods as being those of the applicant”, by taking into account the combined effect of the following three matters (par 41(5)(a)):

   ·the extent to which the trade mark is inherently adapted to distinguish;

   ·the use, or intended use, of the trade mark by the applicant; and

   ·any other circumstances.

   (e) After taking those matters into account, the trade mark is “taken to be capable of distinguishing the applicant’s goods ... from the goods ... of other persons” only if the Registrar is “satisfied” that the trade mark in fact does or will so distinguish the goods: par 41(5)(b). If the Registrar is not so satisfied, then the trade mark is taken not to be capable of distinguishing (see par 41(5)(c)), a ground for rejecting the [trade mark] will thereby exist and the Registrar is then required to reject the [trade mark]…

   (f) In the alternative scenario that the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish (subs 41(6)), then the trade mark is taken not to be capable of distinguishing the goods unless the applicant “establishes” that, because of the extent to which the applicant has used the trade mark prior to the relevant filing date of the application, the trade mark does in fact distinguish the goods as being those of the applicant: pars 41(6)(a) and (b).

1. Applied here, the question before me is whether the Trade Mark is inherently adapted to distinguish the Applicant’s goods in terms of subsection 41(3) such that other traders are unlikely to wish to use it without improper motive, or if it is not, whether it has acquired or will acquire distinctiveness through use (or in the case of subsection 41(5) whether there are other circumstances which may support a positive finding of such).

2. I do not consider that the inherent qualities of the Trade Mark are such that I am able to decide it is capable of distinguishing the Applicant’s goods in terms of subsection 41(3). What the Applicant describes as discretionary and arbitrary features I consider to be largely functional, and consequently that they are likely to be desired for use by other traders without any improper motive.

3. I note firstly that the contrasting colour of the dots is not explicitly claimed to be part of the trade mark (it can only be inferred from the words “as shown in the representation of the trade mark attached to the application form”). Nonetheless, even assuming that a contrasting colour is part of the Trade Mark, this does not to my mind lend it distinctiveness. Colouring fin plugs so that they are highly visible seems to me to be a very useful mechanism for drawing the eye, a function that other traders who design and manufacture fin systems are likely to wish to use. Indeed, the examples of other traders’ fin plugs show them to be produced in a range of colours including black, blue, white, red and yellow, most of which would contrast against a typically white or light surfboard.

4. It is true that the circular shape of the fin plugs is but one shape which may be used. As pointed out by the Applicant other shapes, such as triangular or hexagonal, may be less prone to rotating out of alignment. However the likelihood of other traders wishing to use circular shapes is heightened by the fact that a drill, a readily available piece of equipment which is used to create the cavity into which the fin plug is fitted, creates circular holes. I consider the risk of slippage is also likely to be the very reason the dots appear in pairs. A single circular fin plug into which a fin with a single tab is inserted may rotate out of position – there are no corners or angles to help stop it from doing so. By virtue of having more than one anchor point into which fin tabs are inserted, the fin plugs are less able to rotate out of position. As such I consider both the shape and arrangement of the dots to be largely functional and consequently something other traders are likely to think of and desire to use.

5. Being therefore unable to decide that the Trade Mark is inherently adapted to distinguish the Applicant’s goods, the next matter for determination is whether subsection 41(5) or 41(6) apply. The examiner considered the Trade Mark under subsection 41(5) and the Applicant’s responses, including its evidence, have been framed around those requirements. To my mind a ground for rejection under subsection 41(6) may be more appropriate, however I will determine the matter under 41(5) noting that if the Applicant cannot satisfy the requirements of 41(5) then by default it will not satisfy 41(6) either.

6. I am satisfied that the Trade Mark has appeared upon surfboards extensively since the mid 1990’s, the Applicant’s system being the dominant fin system used in the manufacture of surfboards. I am not, however, satisfied that the use has been as a trade mark. The vast majority of advertising examples show ‘FCS’ (usually in an elliptical logo) to be the badge of origin. Although a number of advertisements show surfboards with the pairs of dots arrangement, or depict the system of interchangeable fins, none of them rely upon the Trade Mark to identify the source of the goods nor do they attempt to educate the market that the pairs of dots arrangement is intended to be a trade mark. I refer here to the comments of Jacob J in British Sugar Plc v James Robertson & Sons Ltd (‘British Sugar’)[9]:

   There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods.

Despite the lengthy and widespread use of the Applicant’s fin system I am not satisfied that such use has resulted in the Trade Mark, in its own right, being recognized as a trade mark and capable of distinguishing the Applicant’s goods. This is so even accounting for the relatively narrow market for the Applicant’s goods (the market being compared, for example, to that for cakes or clothing which includes almost all Australians).

[9] [1996] RPC 281.

1. The supporting declarations do indicate an association between the Trade Mark and the Applicant. The difficulty facing me however is that there are only five such declarations and they are made by people who would rightly be described as experts in their field (and therefore not necessarily representative of the average surfer).

2. I bear in mind also the ‘Viennetta’[10], ‘BP Green’[11] and ‘Chocolate Seahorse’[12] decisions, all of which considered evidence showing an association of a sign with a trader, but nevertheless concluded that the association did not amount to recognition or use as a trade mark. I take particular note of certain comments in those decisions such as:

   …what has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognize it but do not treat it as a trade mark. There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself has not relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled (in Viennetta at 662),

   It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark…to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source (in BP Green at 117),

   …I am of the view that this association on the whole is likely to be referable to Guylian’s sale of the sea shell and seahorse shaped chocolates, over a long period of time, under the banner of the distinctive “Guylian” and “G” trade marks, rather than to the shape itself being used as a trade mark. The cases confirm that association evidence on its own does not prove distinctiveness; the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods (in Chocolate Seahorse at 100).

   [10] Unilever plc’s Trade Mark Applications [2003] RPC 35.

   [11] Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; (2006) 70 IPR 25.

   [12] Chocolaterie Guylian N.V. v Registrar of Trade Marks, supra.

3. Taking into account the level of inherent adaptation to distinguish, I am not satisfied that the supporting declarations are a sufficient basis upon which to apply the provisions subsection 41(5).

4. In respect of the other registered shape trade marks which arguably have a greater or lesser degree of functionality, I refer again to British Sugar in which Jacob J commented:

   Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word ``Treat'’. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see eg Re ``Madame'’ Trade Mark [1966] RPC 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.

The circumstances of those other marks’ registration are not before me, and on their face none appear to be on all fours with the matter at hand. Whilst I agree that a consistent and predictable trade mark registration system is desirable, I am unable to glean any relevant information from the fact of the registration of the other shape trade marks.

1. In summary, although there is evidence before me of an association between the pairs of dots arrangement and the goods of the Applicant, at least by experts in the surfing industry, I do not consider that the Applicant has established it has educated its relevant market that its sign is a trade mark, nor has it established that it is likely the relevant market will recognise it as such, to the extent that the provisions of subsection 41(5) can be applied. As stated previously, given the provisions of subsection 41(5) cannot be satisfied, the provisions of subsection 41(6) would not be satisfied either.

Decision

1. Section 33 of the Act provides:

Application accepted or rejected

33.(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 for rejecting it.

Note:  For the grounds on which an application may be rejected see Division 2.

(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 for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:  For applicant see section 6.

1. I reject trade mark application no. 1347689.

Nicole Worth

Hearing Officer

Trade Marks Hearings

12 September 2013