Gram Engineering Pty Ltd.

[2017] ATMO 101

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1783715 (6) – Shape of a slat of indefinite length - in the name of Gram Engineering Pty Ltd.

DELEGATE:

Bianca Irgang

REPRESENTATION:

John Hogan of FB Rice

DECISION:

2017 ATMO 101

Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection under section 41(3) – application rejected.

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No: 1783715

Trade Mark:

(‘the Trade Mark’)

Filing Date: 15 July 2016

Applicant: Gram Engineering Pty Ltd

Specification of Goods:

Class 6: Latticework of metal; Trellis of metal

Endorsements: The Trade Mark consists of the  shape  of  a  slat  of indefinite length as shown in the representation(s) attached to the application form

1. The application was examined as required under section 31 of the Act and a ground for rejection was raised under section 41(3). The examiner’s first report provided:

Your trade mark is the shape of a lattice or trellis strut.

This shape is an ordinary representation of a lattice or trellis strut. The additional feature of “rolled edges” is predominantly functional in nature, and is not enough to overcome this ground for rejection.

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

1. The applicant was then given the option of providing evidence of use to overcome the ground for rejection. The applicant’s legal representative responded by submitting that the Trade Mark was prima facie capable of distinguishing the applicant’s goods.

1. The examiner maintained the ground for rejection under section 41(3). The second report from the examiner focused on the common representation of the goods claimed by the applicant and the proposition that any shape which is commonplace for the goods in question is likely to be legitimately needed by other traders concluding that the Trade Mark was not inherently adapted to distinguish.

1. Duly, the applicant requested to be heard on the matter as allowed by section 33(4) of the Act. The hearing took place in Canberra on 5 June 2017. John Hogan of FB Rice made representations on behalf of the applicant. I conducted the hearing and the following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

The Law

1. Section 41 of the Act provides:

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.

Note1:     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.

Note3:     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.

Note2:     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).

1. Mr  Hogan  argued  that  the  Trade  Mark  was  prima  facie  inherently  adapted  to distinguish the designated goods and should be accepted. He also argued that the

Examiner’s contention that the applicant’s shape mark is an ordinary depiction of the claimed goods was simply not the case and is an unsupported assertion.

1. The first step, in terms of subsections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the goods of the applicant from the similar goods of other persons.

1. The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks1 where Kitto J said:

   That ultimate question must not be misunderstood. 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. & G. Du Cros Ltd. (1913) AC 624, at pp 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 (i.e. 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 connexion 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. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 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 connexion

1 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at

345–6, (Kitto J)

with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

1. The ground for rejection as stated by the examiner is that the Trade Mark has no inherent adaptation to distinguish the designated goods as the shape of the Trade Mark is purely functional.

2. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks2 French=discussed the inherent adaptation of shape trade marks; stating:

It is necessary to inquire what the Act requires of shapes that would be trade marks. To be a trade mark, a shape must be used to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. That definition is entirely consistent with the idea of "shape" as an attribute of goods which distinguishes them from others. It is not to be read down to cover only some aspect of the physical configuration of goods. The shape which distinguishes the goods may be their shape taken as a whole. The inclusion of "shape" in the definition of "sign" stands against the suggestion that it can never be an attribute separate from the goods to which it relates. It mandates consideration of shape as a distinctive attribute although not a necessary feature of the particular goods. Where shape serves function, then it may not bear that character of a distinctive attribute. Like the three headed shape of the Philips Rotary Shaver it would not be capable of registration -  Koninklijke  Philips

Electronics NV v Remington Products Australia Pty Ltd3. As Stone J observes in her reasons for judgment, the separation issue in that case was at least in part an element of the capacity to distinguish. I respectfully agree with the observations of Burchett J in Philips that a shape that goods possess because of their nature or the need for a particular technical result could not operate as a trade mark. I respectfully also agree with the analysis of Stone J in this regard and with her Honour's conclusion that there is no suggestion in this case that the shape of the millennium bug has any functional significance other than aesthetic.

1. And in Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd4 (‘the Fence Dropper Case’) Greenwood J observed:

Having regard to Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks [1967] HCA 42; (1967) 116 CLR 628 at 639- 640 and an acceptance of the proposition put by Lehane J at first instance in Koninklijke  Philips  Electronics  NV  &  Anor  v  Remington  Products

2 [2002] FCAFC 273; 122 FCR 494; [2002] AIPC 91-817; 56 IPR 30 at [45].

3 [2000] FCA 876; (2000) 100 FCR 90.

4 [2008] FCA 27; (2008) 166 FCR 312; [2008] AIPC 92-277; (2008) 75 IPR 102 at [64].

Australia Pty Ltd [1999] FCA 816; (1999) 91 FCR 167 that the 1995 Act’s introduction of shape signs (although intended to effect the result that a shape trade mark would find embodiment in goods or a part of goods), did not bring about a radical change of long accepted principle concerning functional use, Burchett J concluded that there has been no abandonment of the idea that goods have an existence, as goods, and a shape trade mark has an existence in relation to goods. As a result, the shape of goods (or of a part of goods) embodied by reason of the nature of the goods or a technical or functional result to be achieved by the goods could not distinguish the goods of one trade source from similar goods of another. The shape might distinguish or differentiate the goods as goods but not the trade source. Dealing in goods of that shape is thus use of the goods not use of the shape of those goods as a trade mark. Burchett J observed at [16]:

The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded [Windeyer J in Smith Kline]. For they are cases where the shape that is a mark is ‘extra’, added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J’s words, ‘an existence independently of the mark’ which is imposed upon them.

In Kenman Kandy, Stone J observed that:

The ‘inherent form’ of goods, in my view, can only refer to those aspects of form that have functional significance. Were the 1995 Act to enable the registration of a trade mark that would give the owner a monopoly over functional features, it would indeed have made a radical change to trade mark law.

1. Mr Hogan has explained that whilst some of the features of the Trade Mark may perform a function, the shape of the Trade Mark is not dictated by function such as the sidewalls of a bottle, and that the rolled edges of the metal slat are a variation from the generic form of a slat or from the forms or slats other traders use of may want to use without improper motive.

1. In my view of the Trade Mark, it is only functional and a ground for rejection was under section 41(3) applies. I note the photographic examples provided by Mr Hogan in his written submissions and that the rolled edges of the metal slat in the Trade Mark are not similar to the photographs supplied. However, I also note that the rolled edges of the applicant’s slats provide the strength to the slat so that it is fit for purpose and that if the slat did not contain the rolled edge, the thin metal slat would bend and be incapable of being a slat. While the rolling of the edges is not the norm, and other

traders could have square edges instead of rolled round edges, the fact of the matter is that the rolled edges of the Trade Mark are a functional rather than an aesthetic feature.

1. I also note that Mr Hogan argues that the rolled edges of the metal slats is unique to it and that the marketplace shows that only the applicant uses this shaped slat. However, this argument does not hold good in establishing the rolled edge metal slat shape as being a trade mark of the applicant: I reiterate the words of Greenwood J in the Fence Dropper Case:

The shape might distinguish or differentiate the goods as goods but not the trade source. Dealing in goods of that shape is thus use of the goods not use of the shape of those goods as a trade mark.

1. Additionally, as pointed out by Burchett J in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd5:

In my opinion, merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark (here the marks do depict, one more completely than the other, a working part of a triple rotary shaver) is not to engage in a "use" of the mark "upon, or in physical or other relation to, the goods" within s 7(4), or to "use" it "in relation to the goods" within s 20(1). "Use" and "use", in those contexts, convey the idea of employing the mark, (first) as something that can be "upon" or serve in a "relation" to the goods, (and secondly) so as to fulfil a purpose, being the purpose of conveying information about their commercial origin. The mark is added, as something distinct from the goods. It may be closely bound up with the goods, as when it is written upon them, or stamped into them, or moulded onto them (see The Coca- Cola Company v All-Fect Distributors Limited trading as Millers Distributing Company (2000) AIPC 91-534), or, in the case of a liquid, it may be sold in a container so formed as to constitute at once both container and mark. But in none of these cases is the mark devoid of a separate identity from that of the goods. The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as the trade mark. The reason is plain: it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately wish to produce similar goods (unless, of course, there are, for the time being, subsisting patent, design or other rights to prevent them from doing so), and it follows that a mark consisting of nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a mark […]

5 [2000] FCA 876; (2000) 100 FCR 90; 177 ALR 167; [2000] AIPC 37,643; 48 IPR 257 at [12].

1. I note that the applicant has asserted that is has produced its metal slats since 1999. However, no evidence of the Trade Mark has been provided by the applicant. During the examination stage the applicant was invited to provide evidence of use and it chose not to do so. Prior to the hearing the applicant was again invited to file evidence for consideration and again the applicant declined to provide evidence. At the hearing the applicant was invited to provide evidence by way of witness testimony and the applicant again declined the opportunity to provide evidence of use of its Trade Mark. The applicant has been provided every opportunity to demonstrate use of the Trade Mark and it may well have that evidence. However, unless it is before the Registrar it has no bearing on the current matter. Under these circumstances and in light of a valid section 41(3) ground for rejection against the Trade Mark, I have no recourse except to reject the Trade Mark.

Decision

1. Section 33 of the Act provides:

33  Application accepted or rejected

(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 under this Act for rejecting it.

Note:       For this Act see section 6.

(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 under this Act for rejecting it; the Registrar must reject the application.

Note:       For this Act see section 6.

(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 am satisfied that there is a ground under section 41(3) of the Act for rejecting trade mark application no. 1783715 and I hereby reject it.

Bianca Irgang Hearing Officer

Trade Marks Hearings & Opposition 13 September 2017