Google LLC
[2020] ATMO 62
•22 April 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia number 1898339 (International Registration number 1383384) (class 9) - ACTIVE EDGE - in the name of Google LLC
| Delegate: | Adrian Richards |
| Representation: | Holder: Mindaugas Skavronskas of Gilbert + Tobin |
| Decision: | 2020 ATMO 62 Trade Marks Act 1995 (Cth) – examination of an International Registration Designating Australia – whether grounds for rejection under section 41 are established – ordinary meaning considered – the needs of other traders considered – mark inherently adapted to distinguish – International Registration Designating Australia accepted for possible extension of protection to Australia |
Background
On 15 November 2017, Google LLC (‘Holder’) requested extension of protection to Australia of an international registration. Details of that international registration designating Australia (‘IRDA’) follow:
Trade mark: ACTIVE EDGE
Specification of goods: Class 9: Electronic pressure and motion sensors for controlling mobile devices, namely, mobile phones, tablets, laptops, handheld computers, smart watches, wearable computer, and mobile peripherals; pressure measuring technology for creating touch or gesture-sensitive surfaces that interact with mobile devices and computer software (‘Goods’)
Priority date: 2 June 2017 (‘Relevant Date’)
International registration: 1383384
The IRDA was given application number 1898339. Regulation 17A.12 of the Trade Marks Regulations 1995 (Cth) require that the Registrar of Trade Marks (‘Registrar’) examine and report on any issues with an IRDA.[1] Accordingly, a delegate of the Registrar issued a first examination report to the Holder on 18 May 2018. The report asserted that there was a ground for rejection of the IRDA pursuant to s 41 of the Trade Marks Act 1995 (Cth).[2] The Holder responded on 27 July 2018. This office issued a second adverse examination report to the Holder on 31 July 2018. Both examination reports gave the Holder several options for addressing the grounds for rejection, including requesting a hearing. The Holder asked to be heard on 2 July 2019.
[1] All references below to a Regulation are to the Trade Marks Regulations 1995 (Cth).
[2] All references below to a Section are to are to the Trade Marks Act 1995 (Cth).
The hearing was set for 5 September 2019. I was allocated to hear and decide on the examination in my capacity as a delegate of the Registrar. I issued directions to the Holder in relation to the filing of evidence and submissions prior to the hearing, with which it complied. Mindaugas Skavronskas of Gilbert + Tobin represented the Holder at the hearing. Mr Skavronskas undertook to submit supplementary written submissions explaining ‘Google Trends’, an online tool referred to in the Holder’s primary submissions. Those supplementary written submissions were filed on 9 September 2019.
Nature of these proceedings
The Holder drew my attention to earlier decisions of this office which have held that at hearing the delegate is to assess the contentious ground of rejection anew.[3] To put it another way, I am neither bound to follow the examiner’s reasoning nor is my task to review the examination undertaken to date. Nevertheless, I have set out further below the basis for the objection taken as an aid in my discussion of the issue.
[3] See, eg, Re Sportsbet Pty Ltd (2019) 143 IPR 418, 419 [3] (Hearing Officer Walters).
Section 41
Aspects of this provision relevant to the present matter are extracted below:
41 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).
As can be seen from sub-ss (3)-(4) the central question in determining whether this ground for rejection is enlivened is to consider what extent the words ACTIVE EDGE are ‘inherently adapted to distinguish’ the Goods ‘from the goods or services of other persons’. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd[4] the High Court reemphasised that this enquiry is to be taken in two steps. The first is to determine the ordinary meaning (often referred to as the ‘ordinary signification’) of the words ACTIVE EDGE as they would be understood by consumers of the Goods.[5] The second is to ask whether:
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.[6]
[4] (2014) 254 CLR 337, 361-2 [70]-[71] (French CJ, Hayne, Crennan and Kiefel JJ).
[5] Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited (1946) 72 CLR 175, 184 (Dixon J).
[6] Clark Equipment Company v Registrar of Trade Marks (1964) 111CLR 511, 514 (Kitto J).
Step one: ordinary meaning of ACTIVE EDGE
The examination report asserts that the words ACTIVE EDGE indicate that ‘sensors and pressure measuring technology enable an active edge, meaning the edge of a mobile device is active or able to be used for performing tasks or sending commands.’
The research conducted by the examiner begins with definitions from the Macquarie Dictionary of each of the words. I note for now that there is of course no dictionary entry combining both words. ACTIVE is an adjective with 20 definitions, many of which are unlikely to come to mind in relation to the Goods. The entry for EDGE yields a similar number, but these are evenly divided between nounal and verbal definitions.
The Goods can be summarised as pressure and motion sensors for a variety of consumer electronics. The electronics listed in the specification being tangible, often angular, objects, the most apparent meanings of EDGE emerge as nouns. It could be ‘one of the narrow surfaces of a thin, flat object’, or perhaps ‘the line in which two surfaces of a solid object meet’. These two definitions can be readily aggregated to encompass the sense that the examination report took it to be. That is, a line representing the transition between two surfaces. However, given most of the listed electronics incorporate a display screen, it is at least as likely that this word would be taken to mean ‘the border or part adjacent to a line of division’. That is, the border of the screen abutting its housing. There are perhaps just three definitions of ACTIVE that could fit those meanings of EDGE when the Goods are borne in mind. Broadly, either this edge is capable of motion, capable of causing change or capable of acting/reacting. Any combination of the two definitions of ACTIVE and three of EDGE outlined above appears equally plausible.
So there are at least six[7] quite distinct, all equally plausible, meanings that the phrase ACTIVE EDGE might have in relation to the Goods. This plurality of meaning provides contrast to other decided cases which have found allusive words are to some extent but not sufficiently adapted to distinguish, where their meaning was obvious in relation to the goods or services. For example the word WHOPPER, while carrying several meanings in English (including, apparently, ‘one who whops’), was in relation to a hamburger held to ‘naturally only be understood as having one meaning, namely that the hamburger sandwich is uncommonly large.’[8] This same degree of certainty is not present when ACTIVE EDGE is considered in relation to the Goods.
[7] This number would be significantly higher since the ‘edge’ of the device or its screen might be ‘active’ in more than one sense. The edge of a phone could, for example, both register a command and provide haptic feedback.
[8] Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, 425 (Gibbs J).
The examination to date appears to have reasoned backward from the IRDA to the Goods, seeking to draw out a meaning along the way:
to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods.[9]
This is because the IRDA is not for, say, the words PRESSURE SENSOR but for a potential attribute of the Goods when in use:
A critical distinction must be drawn between the [Goods] themselves and the perceived attributes of those [Goods] as they may be insinuated by the Trade Mark. The latter does not provide the correct viewpoint from which to gauge ordinary signification since it is already one step removed from the [Goods] themselves.[10]
[9] Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190, 194 (Dixon J).
[10] Australian Postal Corp v Sendle Pty Ltd (2017) 128 IPR 130, 137 [26] (Hearing Officer Lyons).
Even without my inconclusive ‘search for meaning’ above, the uncertainty of the ordinary signification of ACTIVE EDGE in relation to the Goods is readily illustrated intuitively. At the outset of the hearing, Mr Skavronskas motioned as though he were handing me his mobile phone and said something along the lines of, ‘If I were to offer this to you and tell you it had “active edge”, how would you respond?’ I was left asking ‘What is that?’ While I was vaguely aware that this feature would likely pertain to the outside of the phone, and that it might do something, which part was involved and how it might perform were unclear.
Step two: the needs of other traders
This step was summarised by the majority of the High Court in the following terms:
When the “other traders” test…is applied to a word…the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical.[11]
[11] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337, 358 [59] (French CJ, Hayne, Crennan and Kiefel JJ).
As I have found earlier, the phrase ACTIVE EDGE is at most allusive to some potential feature of the Goods:
Often the answer to the first question, ie, what is the ordinary signification of the word mark will provide the answer to the second question, ie, is it the case that other traders might legitimately need to use the mark in respect of their goods.[12]
[12] Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2015) 237 FCR 388, 419 [126] (Besanko, Jagot and Edelman JJ).
The question is not whether other traders might see the IRDA and then desire to use it in relation to the Goods, but whether they legitimately need to use it in relation to the Goods. Such a situation would naturally lead other traders to independently, and honestly, think of using the same phrase (or some substantially identical expression):
Whilst there might be an element of chagrin in other traders – that in retrospect that they would like to use the Trade Mark – this does not amount to an honest desire to use the Trade Mark for the sake of its ordinary meaning.[13]
[13] Australian Postal Corp v Sendle Pty Ltd (2017) 128 IPR 130, 139 [35] (Hearing Officer Lyons).
In evidence are a number of articles that detail the precise nature of what the Holder refers to as ACTIVE EDGE. It has included in certain smartphones the ability for a user to squeeze the device in order to give it a command. Journalists and reviewers have referred to them as ‘squeezable phones’. This I would readily characterise as a clear and direct description. The Holder was apparently not the first to offer such a product. Its competitor has called their earlier offering of this feature EDGE SENSE. While I offer no opinion of that other mark in relation to s 41, I note that it was registered without objection some time ago.[14] From this it becomes clear that there are likely a handful of straightforward ways in which such a feature might be described and many more potential ways to allude it. This is a strong indicator that other traders do not need to use the phrase ACTIVE EDGE in relation to the Goods.
[14] Australian trade mark registration number 1843517.
Decision
Having found that the ordinary meaning of the IRDA alludes to a potential feature of the Goods, and that other traders do not need to use it, I find that ACTIVE EDGE is inherently and sufficiently adapted to distinguish the Goods of the Holder from the goods of others.
My findings above having resolved the sole issue remaining at examination, a final decision on the examination is necessary:
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.
Accordingly, I accept the IRDA for possible extension of protection to Australia.
Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
22 April 2020
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