Garrett Electronics Inc - [2015] ATMO 48

TRADE MARKS ACT 1995

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

Re:International Registrations Designating Australia 1587494 – GARRETT METAL DETECTORS – and 1587495 - GARRETT – held by Garrett Electronics, Inc.

Delegate:

Deirdre O'Brien

Representation:

Hearing by written submission

Decision:

2015 ATMO 48

Reg 17A.24: final decision on examination - considered ordinary signification of trade mark for persons concerned with the goods – no s 41 ground for rejection – IRDA accepted.

Background

Garrett Electronics, Inc (‘the holder’) has requested that the protection of its international registrations for the trade marks GARRETT METAL DETECTORS and GARRETT (‘the Trade Marks’) in relation to metal detectors be extended to Australia. The Trade Marks are the subjects of International Registrations Designating Australia (‘IRDA’) 1587494 and 1587495 respectively.
The IRDA were examined by a delegate of the Registrar as required by r 17A.12 of the Trade Marks Regulations 1995. The examiner reported to the holder that the Trade Marks are not capable of distinguishing the holder’s metal detectors from those of other traders as Garrett is a common surname in Australia and other traders in metal detectors with the same surname might want to use their surname in connection with their goods. The holder’s legal representative provided submissions in answer but the examiner was not persuaded. After four reports had been sent to the holder in which the objection was maintained, the holder asked to be heard by way of written submission.
The matter has been given to me, a delegate of the Registrar of Trade Marks, for decision. I am to decide whether to accept or to reject IRDA 1587494 and 1587495 as provided by r 17A.24:
Final decision on examination
(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it.
(2) The Registrar may accept the IRDA subject to conditions or limitations.
(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it, in whole or in part.
The grounds for rejecting an IRDA are set out in r 17A.28 which provides:
Grounds for rejecting IRDA
(1) The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).
(2) Sections 39 to 44 apply in relation to an IRDA as if:
(a) a reference in those sections:
(i) to an application for the registration of a trade mark were a reference to the IRDA; and
(ii) to an applicant were a reference to the holder of the IRDA; and
(b) the reference in paragraph 41(3)(b) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and
(c) each reference in subparagraphs 44(1)(a)(i) and (2)(a)(i) to a trade mark registered by another person included a protected international trade mark held by another person; and
(d) each reference in subparagraphs 44(1)(a)(ii) and (2)(a)(ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.
(3) The ground set out in section 177 of the Act is a ground for rejecting an IRDA that is for a certification trade mark.
In this matter the ground for rejecting the IRDA is that pursuant to s 41 of the Trade Marks Act 1995 (‘the 1995 Act’).

Discussion

Section 41 provides:

Trade mark not distinguishing applicant's goods or services

(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services ) from the goods or services of other persons.

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

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3) This subsection applies to a trade mark if:

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4) This subsection applies to a trade mark if:

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.
Note 3: 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 (5) and 7(3) and section 8).

(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

In the second report the holder was advised that the Trade Marks were to some extent inherently adapted to distinguish and that they were being considered under s 41(4). It was invited to provide evidence of use.
The holder’s submissions in response to all reports were to the effect that (a) there was no legal basis for objecting to the Trade Marks because they were surnames which occurred a certain number of times in the Australian population[1]; and (b) there was little likelihood of any person with the surname Garrett wanting to go into the business of manufacturing metal detectors in Australia.
[1] In support of this submission the holder cited Companhia Souza Cruz Industria e Comercia v Rothmans of Pall Mall (Australia) Ltd (1998) 41 IPR 497
The reasons given in the final examination report for maintaining the s 41 ground are as follows:
You have submitted that the Office’s determination is based on mere speculation and assumptions, namely that 1983 ‘Garrett’s’ in Australia would want to trade rather than be employed, that they will use their surname in their trade and would wish to trade in metal detectors. As stated in the previous report, the test of inherent adaptability outlined in Clark Equipment [2003] FCA 1502 does not depend on a probability of other traders wishing to use the name, but rather whether other traders might wish to do so (at [33], relying on Burger King (1973) 128 CLR 417, 425). While the probability of such events occurring may not be high, the test of inherent adaptability serves to ensure that common surnames (ie. surnames with an SFAS count of 750 or more) are left unfettered and free from monopolisation by one trader. The Office cannot make the assumption that, despite the fact that there are 1983 Australian residents with the surname ‘GARRETT’, only a few or none of them might wish to use their surname in their ordinary course of trade. Accordingly, the ground for refusal is not based on mere speculation and assumptions, but rather the long-held principles and tests that have been derived from case law.
The case law referred to in the report appears to be the statement by Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) that whether a trade mark consisting of a word 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.[2]

and by Gibbs J in Burger King Corp v Registrar of Trade Marks (‘Burger King’) that:

The word ‘whopper’ is not inherently adapted to distinguish the goods of a particular trader, but is a word which a trader might, without any improper motive, want to use to describe his goods if they were of unusual size. [3]
[2] (1964) 111 CLR 511, 514
[3] (1973) 1A IPR 504, 509

However, in light of recent observations by the High Court of Australia in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd[4] (‘Cantarella’) on those cases, I think it appropriate to consider whether the appropriate test for surname trade marks is, as the examiner stated, whether other traders with that surname might wish to use it as a trade mark.
[4] (2014) 109 IPR 154
Cantarella is an appeal from the finding by the Full Federal Court that the test to be applied when deciding whether a trade mark is inherently adapted to distinguish certain goods is whether other traders would want to use the word constituting the trade mark in connection with the same goods.[5] The majority of the High Court held that in accordance with the principles established in Clark Equipment, Burger King and other cases, that a determination of whether a trade mark is ‘inherently adapted to distinguish’ first requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.[6] Once the ‘ordinary signification’ is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[7]
[5] Modena Trading Pty Ltd v Cantarella Bros Pty Ltd (2013) 102 IPR 382, 397 [91].
[6] (2014) 109 IPR 154, 170 [70]
[7] Ibid [71]
The trade marks considered in Cantarella are Italian words used in connection with coffee and the majority of the court held that they did not convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods.[8] They put into context the words of Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd that the registrability of a trade mark as ‘distinctive’ should:
… largely depend upon whether other traders are likely, in the ordinary course of their business 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.[9]

and held that:

Lord Parker was not referring to the desire of traders to use words, English or foreign, which convey an allusive or metaphorical meaning in respect of certain goods. What Lord Parker’s ‘other traders’ test means in practice is well illustrated by the fate of the marks considered in Faulding, Clark Equipment and Burger King. Like ‘TUB HAPPY’ in respect of cotton goods, ‘ORO’ and ‘CINQUE STELLE’ were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods.[10]
[8] Ibid 171 [73]
[9] Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624
[10] (2014) 109 IPR 154, 171 [73]

In coming to their decision the majority took the approach (at [22]) that the introduction of the 1995 Act effected significant changes to Australian trade mark law and the provisions which specify the applications for registration which must be rejected cannot be understood fully without some reference to the interpretation of provisions in the Trade Marks Act 1905 (‘the 1905 Act’) and the Trade Marks Act 1955 (‘the 1955 Act’). In the present matter I have taken the same approach to the interpretation of provisions in the earlier legislation for surname trade marks.
Under the 1905 Act only distinctive trade marks could be registered and a surname was inherently not a distinctive trade mark. Section 16(1)(d) of that Act provided that a registrable trade mark must consist of ‘A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname.’ Rich J in Mangrovite Belting Ltd v J C Ludowici & Son Ltd explained:
[N]o surname according to its primary meaning can be distinctive. For according to its primary meaning it seems to identify every individual so called.[11]

A surname could, however, be deemed ‘distinctive’.[12]

[11] (1938) 61 CLR 149, 159-160

[12] Daimler Co Ltd v Registrar of Trade Marks [1914] HCA 91, (1914) 18 CLR 446, 20 ALR 348

The 1955 Act introduced the two part register: part A for trade marks which were inherently distinctive and part B for trade marks which were capable of becoming distinctive. A surname was specifically excluded from registration in part A by s 24(d) which provided that a trade mark is registrable if it is ‘a word not having direct reference to the character or quality of the goods or services in respect of which registration is sought and not being, according to its ordinary meaning, a geographical name or a surname’. However, the provisions of s 25(1) meant it could be registered in part B if the Registrar was satisfied it was capable of becoming distinctive.[13]
[13] See, for example, Cassini v Golden Era Shirt Co Pty Ltd (1985) 6 IPR 247.
The 1995 Act was drafted following the 1992 report by the working party to review the trade marks legislation.[14]One recommendation in the report was that the definition of a trade mark be expanded to include any sign that is capable of distinguishing the goods or services of one person from those of other persons. Another recommendation was that ‘the legislation should be expressed in terms which make it clear that there is to be a presumption of registrability when examining an application for registration.’ Thus, in the 1995 Act there is no provision that a surname is prima facie not a distinctive trade mark. Rather the list of signs which may be used as trade marks[15] includes a ‘name’. And the applicant does not have to satisfy the Registrar that a surname trade mark is ‘capable of becoming distinctive’. Instead a surname, being a name, is taken to be a sign which is capable of distinguishing unless the Registrar finds that it is not.[16]
[14] Recommended Changes to the Australian Trade Marks Legislation, Commonwealth of Australia 1992
[15] According to s 6 a sign includes ‘the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
[16] I note that the report considered (at page 43) that ‘… common surnames would still require factual distinctiveness to qualify for registration.’
The present matter is not on all fours with Cantarella as a surname does not have ‘a direct reference to the character or quality of the goods’.[17] However the principle to be taken from Cantarella is that ‘inherent adaption to distinguish’ requires examination of the word itself, in the context of its proposed application to particular goods in Australia[18] in order to determine whether it is part of a ‘common heritage’. That involves a practical evaluative judgment[19] of what those words will signify to persons who will purchase, consume or trade in the goods.[20] In order to make that judgment it may be necessary to consider evidence of what other traders in the same goods are doing.[21] In Cantarella the court held that the evidence did not, as was submitted, demonstrate that other traders used (or desired to use) the disputed trade marks.[22]
[17] (2014) 109 IPR 154, 168 [59]
[18] Ibid
[19] See Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30, 44 [47]
[20] (2014) 109 IPR 154, 168 [59]
[21] See Chocolaterie Guylian N V v Registrar of Trade Marks (2009) 82 IPR 13, 30 [54].
[22] (2014) 109 IPR 154, 172 [75]
Thus I need to determine the signification of the word Garrett to persons who will purchase, use or trade in metal detectors. Its identity is that of a surname and prima facie a surname is capable of functioning as a trade mark as it indicates to consumers that a person with that surname is the source of the goods. However, if the surname is shared by other traders in the same goods, the source of the goods cannot be identified from the surname alone. In other words that particular surname will be regarded as a word in general use and part of the common heritage rather than a word unique to one trader. Consequently, the reference in the final examiner’s report to common surnames, should in my view, mean surnames that are common to the trade, that is, are part of the common heritage in relation to the applied-for goods.
The judgment cited in the holder’s submissions, Companhia Souza Cruz Industria e Comercia v Rothmans of Pall Mall (Australia) Ltd, was made in relation to s 25 of the 1955 Act and whether the applied-for trade mark was ‘capable of becoming distinctive’. Wilcox J said:
I gather from [the delegate’s] reasons there is a policy document issued by the Registrar of Trade Marks that decrees a mark, to be registrable, should not comprise or include a name that occurs more than 400 times in the Australian Electoral Register. The policy document is not before the court, so I do not know what rationale it advances for this dictat. Why 400? The answer does not matter. The policy has no foundation in the Act; so it is devoid of any legal justification. It is not for the registrar to impose non-statutory restrictions on the words that may be registered as trade marks. To the extent Mr Homann paid any attention to this aspect of the case, he erred in law.[23]
[23] (1998) 41 IPR 497, 501.
That statement has to be put into the context of the applied-for trade mark in that decision which is depicted below:

It is immediately obvious that the above trade mark as a whole is, to use the language of the 1955 Act, capable of becoming distinctive in relation to cigarettes but the delegate held it was not registrable.[24] Thus the statement by Wilcox J is not to be taken as meaning that the Registrar should not take into account how many Australians have a particular surname but rather that the Registrar should not base a decision to reject a trade mark solely on the fact that it contains or comprises a surname which appears an arbitrary number of times among the Australian adult population.
[24] The delegate said at 499-500: The trade mark at issue was evidently accepted on the basis that it was a composite mark consisting of the word ``Free'’ and the pictorial elements above and below that word. Thus the disclaimer of the word ``Free'’. However, in the context in which the mark is used or proposed to be used, ie on cigarette packets, it seems to me that the crest device is so extremely common that it would register with the ordinary purchaser as no more than a blur, to the extent that it is totally insignificant as a distinguishing factor. Likewise, the so-called ``panels'’ seem to me, in the same context, to perform no trade mark function whatever but to be merely part of the get-up of the packet. The trade mark is on that view of the matter nothing more in effect than the word ``Free'’. In accordance with the established guidelines for the acceptance of marks in Pt B of the register of words which are surnames but have a well known other meaning the number of occurrences of such a word in the SFAS search ought not to exceed 400. The word ``free'’ occurred almost double that number of times (732) when the examiner conducted the surname search. I therefore consider that the trade mark is not registrable in Pt B of the register.

There has been no judicial consideration under the 1995 Act of whether a surname is not capable of distinguishing although in Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd Wilcox J said, in relation to the name Harry Potter:[25]
I agree with Mr Burley that, having regard to the comparative rarity of the combination name “Harry Potter”, it is statistically unlikely that a person bearing that combination name would wish to use it in connection with the sale of clothing. If Kitto J is to be understood as requiring, by the word “likelihood” in Clark, a probability that some other trader would wish to use the name, it can be said there is no such probability in the present case. However, I do not think his Honour should be so understood. In Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424; [1972–73] ALR 1361 at 1365; (1973) 1A IPR 504, Gibbs J described the mark in issue in that case as not inherently adapted to distinguish the appellant’s goods because it was “a word which a trader might, without any improper motive want to use to describe his goods”.
I think the delegate was correct to take into account the possibility of a trader named Harry (or Harold or Henry) Potter wishing to deal in clothing under his own name.[26]
[25] Interestingly the case did not involve a trader named ‘Harry Potter’ who desired to use his name as a trade mark. Rather both parties chose to use as a trade mark the name of a fictitious character.
[26] (2004) 59 IPR 343
However, given the interpretation in Cantarella of the Clark Equipment test by the majority of the court, I consider their finding that the relevant test is the ordinary signification of the proposed trade mark to be the binding authority.
The current guidelines provided by the Registrar in relation to the examination of surname trade marks[27] state that any decision must be made in the context of how many adult persons in Australia have that surname and how common the goods or services are in relation to which the trade mark will be used.[28] In light of the need identified in Cantarella to determine the ordinary signification of the trade mark, these are all relevant facts. I consider regard should also be had to the practices in the trade, namely whether it is common for traders in those goods or services to use their surname as a trade mark.
[27] Part 22.16 of the Trade Marks Office Manual of Practice and Procedure
[28] This, according to the guidelines, is for the purpose of determining ‘the likelihood that a trader with that name would wish to use the name in connection with his or her goods or services’.
In the present matter 1983 adult Australians have the surname Garrett. To put that into perspective 114997 persons have the surname Smith and 29798 have the surname Nguyen.
In order to determine how common is the business of manufacturing metal detectors in Australia, I conducted a Google search for ‘metal detector manufacture australia’. The search found three Australian based manufacturers, Minelab, TSS Co and ABM Metal Detectors.
As to whether it is common for traders in a particular industry to use their surname as a trade mark, for goods with which I am familiar such as clothing and wine, it is not uncommon for clothing designers and winemakers to do so although it appears to be more common for them to use their full name.[29] I am not familiar with the goods of the present application and research was required on my part to find out what is common to the trade. An article on metal detection at identified 23 manufacturers of metal detectors located in various parts of the world. Five of the US based manufacturers, namely White’s Electronics, Fisher Lab, Garrett Metal Detectors (the holder), A.Gavalas & Co and Tesoro Electronics, use a trade mark containing a surname. The surnames are those of the founders of the respective businesses.
[29] In my experience it is more common for traders who offer a personal service to the individual, such as lawyers, doctors, accountants, to use their surname as a trade mark.
Thus my determination of the ordinary signification of Garrett for those persons who purchase, use or trade in metal detectors is based on the following facts:

there are approximately 2000 adult Australians with the surname Garrett;
the manufacture of metal detectors is not a common business in Australia;
some of the manufacturers of metal detectors based in the United States use the surname of the founder of their business as a trade mark but this does not appear to be common practice in Australia for this industry.

I consider it highly unlikely that a person or persons with the surname Garrett will be manufacturing metal detectors in Australia and consequently I am satisfied that for those who purchase, use or trade in those goods the ordinary signification of Garrett is that of the name of a specific provider of those goods. In other words, Garrett is not a surname that is common to the trade or part of the common heritage. It is an indicator of trade source and capable of distinguishing the holder’s metal detectors from those of other traders.

Decision

Pursuant to r 17A.24(1) I accept the IRDA.

Deirdre O’Brien

Delegate of the Registrar of Trade Marks

09 June 2015