Fry Consulting Pty Ltd v Sports Warehouse Inc

[2008] ATMO 21

TRADE MARKS ACT 1995

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

IN THE MATTER of Australian Trade Mark Application 1070835 in the name of SPORTS WAREHOUSE INC. for TENNIS WAREHOUSE in Class 35 and opposition thereto by FRY CONSULTING PTY LTD.

Delegate:	Debrett Lyons
Representation:	Opponent: Christopher Round of Middletons, Solicitors Applicant: Jurgen Bebber of Griffith Hack, Patent & Trade Mark Attorneys
Decision:	2008 ATMO 21 s. 52 opposition: sec. 41- trade mark lacking inherent ability to distinguish under s. 41(3); trade mark to be assessed for distinctiveness under s. 41(5); evidence of use lacking and unable to support requisite level of acquired distinctiveness. Ground of opposition established. Application refused. Costs: applicant to pay opponent’s costs

Background

1. Sports Warehouse, Inc. (“the applicant”) filed an application to register a trade mark, current details of which appear below:

   Application number:              1070835
   Priority date:  23 February 2005

   Goods specification:             Class 35:  online retail services featuring tennis clothing, tennis footwear, tennis gear, tennis equipment, tennis accessories, and tennis sports bags.

   Trade mark:  TENNIS WAREHOUSE

   (‘the trade mark’)

2. The trade mark was accepted for possible registration subject to an endorsement that “the provisions of section 41(5) apply” and publicly advertised for opposition purposes. Fry Consulting Pty Ltd (“the opponent”) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (“the Act”), objecting to the registration of the trade mark.

3. The parties served and filed evidence in accordance with the Trade Mark Regulations 1995 after which the matter was set down before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, for a hearing on 5 March 2008, in Melbourne.  The applicant was represented by Jurgen Bebber, Patent Attorney of Griffith Hack and the opponent was represented by Christopher Round, Solicitor, of Middletons.

   Notice of Opposition

4. The Notice of Opposition makes no reference to section numbers but can be readily interpreted as relying on grounds of opposition under sections 41, 42, 43, 44, 58, 60, 61 and 62 of the Trade Marks Act 1995 (‘the Act’). At the hearing, the opponent only pressed sections 41, 42 and 60.

   The Evidence

5. Evidence-in-Support

   Statutory Declaration by Wesley Fry dated 21 March 2007 with Exhibits A-J.

6. Evidence-in-Answer

   Statutory Declaration by Mark Sczbecki dated 20 June 2007 with Annexures A-F.

   Submissions and Reasoning

   Onus

7. The opponent bears the onus of establishing its grounds of opposition.  The opposition will succeed if one of those grounds is established.  The standard of proof is the balance of probabilities (Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521)

   Section 41 – the trade mark does not distinguish

8. Section 41 of the Act provides a scheme for the assessment of the inherent capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.[1]

   [1] Blount Inc v Registrar of Trade Marks [1998] 440 FCA

9. It is convention to first make an assay of the trade mark against section 41(3) of the Act, which states that:

   (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.

10. In Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511, at 513 Windeyer J observed:

    That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v W. and G. Du Cros Ltd. ((1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

11. The trade mark is a word mark with no visually distinctive features. It is a combination of the purely descriptive word, “tennis”, and the term, “warehouse”, being a place from which tennis goods might be stored, ready for their sale. The trade mark is the type of expression that another trader, actuated only by proper motive, might want to use to describe its like services. The trade mark does not qualify for registration under section 41(3) of the Act.

12. The trade mark examiner accepted the application under the provisions of section 41(5) of the Act. Sections 41(5) and 41(6) are set out below:

    (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 and services from the goods and 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 applicants goods or services from the goods or services of other persons.

    Note 1: For goods or 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 the goods or services; or

    (b)the time of production of the 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).

13. I do not consider the trade mark to be devoid of all distinctiveness and I believe that the examiner was correct to consider the application under the provisions of section 41(5). That said, I regard the inherent distinctiveness of the trade mark as very low and, as such, requiring proof of a concomitant degree of acquired distinctiveness in order to justify registration.

14. The opponent was critical of the evidence purporting to prove acquired distinctiveness and, in my opinion, justifiably so.  The criticism took two forms: that the evidence of use was not of the trade mark which is the subject of the application; secondly, that the use is not demonstrably use in Australia.

15. The bulk of the exhibits show the words, “Tennis Warehouse”, used in close association with a “TW” logo.  The TW logo is more prominent than the words in each case and is presently either above, or in front of, the words. There is one instance of use where the TW logo and the words are used together, but each carries its own ™ symbol, suggesting that at least the applicant regards the words as having trade mark significance, independently from the logo.  Nevertheless, there is no example of use by the applicant of the words, separated from the logo.  There are a handful of third party usages which use just the words, “Tennis Warehouse”, but I accept the opponent’s submission that they are references to the applicant itself (that is, the company name from which “Inc” has been omitted) rather than to the trade mark.

16. Although not the subject of submissions by either party, I remain conscious of section 7(1 ) of the Act, which states:

    If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark

17. I am not remotely tempted by the proposition that the trade mark shown in evidence is one which differs only insubstantially from trade mark of the application and I see no room for the application of section 7(1) in this case.

18. In short, the use shown in the evidence is not use of the trade mark of the application and does not lend support to a claim of acquired trade mark significance in those words alone.

19. With that finding, it is unnecessary to consider the opponent’s additional criticism of the evidence, or its alternative grounds of opposition.

20. I find that the section 41 ground of opposition has been established.

    Decision

21. The opposition succeeds since at least one ground of opposition has been established. 

    Costs

22. I order that the applicant pay the opponent’s costs according to the official scale.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    17 March 2008