Green Canpump Inc. - [2023] ATMO 135

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2291383 (Classes 7 and 35) – CANPUMP – in the name of Green Canpump Inc.

Delegate:

Debrett Lyons

Representation:

Applicant: Lance Scott of Gestalt Law Pty Ltd

Decision:

2023 ATMO 135

Request to be heard under s 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – s 41 considered – trade mark accepted.

Background

This is a decision following examination of trade mark application number 2291383 (Application) filed by Green Canpump Inc. (Applicant) on 4 August 2022 for CANPUMP (Trade Mark) in respect of the following goods and services:

Class 7

Machinery; machine tools; high-pressure pumps; pumps (machines); high pressure cleaning machines; electric motors (other than for land vehicles); parts and fittings for all the aforesaid goods (Goods)

Class 35

Distribution of goods (not being transport services) and wholesale of goods; retail services; advertising, marketing, promotional and business services (Services)

The Trade Mark was examined as required by s 31 of the Trade Marks Act 1995 (Cth).[1] The examiner raised a ground for rejection which the Applicant was unable to overcome during correspondence with the Office and so the Applicant requested a hearing by videoconference. The matter was heard by me, a delegate of the Registrar, on 6 September 2023. Lance Scott of Gestalt Law Pty Ltd appeared on behalf of the Applicant.
[1] All references to sections are references to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’),
Legislative framework and ground for rejection
Under s 33(1)(b), the Registrar must accept the Application unless satisfied there exists a ground for rejecting it.[2] The examiner raised a ground for rejection under s 41, the provision being set out below:
[2] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).
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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 135
Decision Date: 8 September 2023

CaseChat Overview and Summary

The applicant, Green Canpump Inc., sought registration of a trade mark. The delegate of the Registrar of Trade Marks considered a request to be heard under s 33(4) of the *Trade Marks Act 1995* (Cth) concerning a ground for rejection under s 41 of the Act.

The primary legal issue before the delegate was whether the trade mark was inherently distinctive and capable of registration, having regard to the provisions of s 41 of the *Trade Marks Act 1995* (Cth).

In reaching the decision, the delegate considered s 33(1)(b) of the Act. The delegate found that the trade mark was inherently distinctive and therefore capable of registration. Consequently, the delegate was not satisfied that there were grounds for rejection.

The delegate accepted the Application for registration of the trade mark.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

With s 33(1)(b) in mind, I find the Trade Mark inherently distinctive and capable of registration.Decision I am not satisfied that there are grounds for rejection and so I accept the Application.Debrett LyonsHearing OfficerDelegate of the Registrar of Trade Marks8 September 2023

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Class 7	Machinery; machine tools; high-pressure pumps; pumps (machines); high pressure cleaning machines; electric motors (other than for land vehicles); parts and fittings for all the aforesaid goods (Goods)
Class 35	Distribution of goods (not being transport services) and wholesale of goods; retail services; advertising, marketing, promotional and business services (Services)