General Motors Corporation

[1999] ATMO 35

TRADE  MARKS  ACT  1995

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

Re:Trade Mark Application No. 774124 in the name of GENERAL MOTORS CORPORATION

Background
Trade mark application 774124 seeks registration of the word satnav.  The application was made on 25 September 1998 and the applicant is General Motors Corporation, a Delaware company located in Detroit Michigan USA.

The applicant claims the following goods in class 9:

Electric and electric (sic) components and accessories including electric and electronic components and accessories for motor vehicles; computers and computer software including computers and computer software for motor vehicles; tracking and location devices including tracking and location devices for motor vehicles

The application was examined and the examiner of trade marks objected that the term Satnav is descriptive of the goods claimed.  In this regard the examiner found the words forming the trade mark are a known abbreviation of the words Satellite Navigating (or Satellite Navigator) which other traders are likely to need to use to describe their tracking and location devices.

It was the view at the examination stage that when used in relation to the designated goods, satnav describes them as a locating or tracking device utilising satellite signals for navigation. Accordingly, the examiner found there were grounds for rejecting this trade mark under the terms of section 41 of the Trade Marks Act 1995 (the Act).

At the applicant's request the trade mark application became the subject of a decision on the written record.

Submissions

The applicant made no submissions. 

Legal tests

Section 41 of the Act specifies registrability in terms of whether or not trade marks are capable of distinguishing an applicant's goods or services. Section 41(2) and (3) state:

(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.

(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.

Capacity to distinguish therefore is to be gauged by assessing the extent to which the trade mark is inherently adapted to distinguish.  The meaning of adapted to distinguish is explained in MICHIGAN[1], which continues as precedent under the Trade Marks Act 1995[2].

[1] Clark Equipment Company v Registrar of Trade Marks  111 CLR 511

[2] Blount Inc v The Registrar of Trade Marks  (1998) 40 IPR 498

In this regard Kitto's words in MICHIGAN[3] (adapted to the present case) would be:

[3] Clark Equipment Company v Registrar of Trade Marks 111 CLR 511 at 514

...the question of 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 … will think of the word and want to use it in connection with similar goods.

The essential question in the present case therefore is whether the term Satnav is a term other manufacturers are likely to wish to apply to their tracking and location devices.

Analysis

Navigation involves plotting or fixing a location relative to some object[4], and plotting or fixing a location may be accomplished with the aid of devices such as global positioning systems (GPS).  GPS is a satellite navigation system which provides coded satellite signals that can be processed to compute position, velocity and time.  GPS navigation receivers are made for aircraft, ships, ground vehicles, and for hand carrying by individuals.  Locating and tracking devices such as automatic vehicle tracking and location hardware (the designated goods) may rely on GPS satellite signals to navigate or identify position

[4] Oxford English Dictionary

Satellite navigation is a navigation system that provides an accurate geographical position fix.  Satellite navigation receivers are radio navigation aids that compute satellite signals to provide the user with a range and bearing display, or to provide a fix for a specific position. Satellite navigation receivers may be part of a computer system that stores a succession of signals to track position.

Satnav is a known abbreviation for satellite navigation, an ordinary word which, when used in relation to tracking and locating devices, would be understood by an ordinary member of the public to refer to devices that will provide a means of fixing an object's terrestrial location by means of a satellite.  In these circumstances other traders would need to use this word to describe their similar goods.  Details of the generic use of Satnav to describe locating and tracking devices of this sort were provided to the attorney with the examiner's first report.

Conclusion

Satnav has a known meaning in relation to tracking and locating devices, and accordingly the trade mark satnav is apt to describe the designated goods.

No submissions have been put forward by the applicant's attorney that the trade mark is factually able to distinguish, or that other circumstance exist that would allow the trade mark to be considered under the provisions of section 41(5) or (6).

I am satisfied therefore that the trade mark satnav is not capable of distinguishing the applicant's goods from those produced by other persons.  In these circumstances I am required by the provisions of subsection 41(2) to reject the application for registration of this trade mark.

TH Turner
A/Senior Examiner
Trade marks Hearings

12 April 1999