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

1. 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)

1. 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

2. 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 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).

3. The examiner took the position that the Trade Mark was only to some extent inherently adapted to distinguish the Goods and Services and therefore fell for consideration under s 41(4). In the first examination report (17 August 2022) reliance was placed on the Macquarie Dictionary definition of the word “can” as “to be able to”, and “pump” as “an apparatus or machine for raising, driving, exhausting, or compressing fluids”.  The report reasoned:

   In the context of your range of goods claimed in Class 7, this indicates the intended purpose of those goods is to be able to operate as an apparatus or machine for raising, driving, exhausting, or compressing fluids, as by means of a piston, plunger, or rotating vanes.

   In other words, your Class 7 goods CAN PUMP.

   In the context of your claimed services in Class 35, this indicates these services are in relation to goods that CAN PUMP. By this I mean your trade mark indicates your retail services are in relation to goods that CAN PUMP, or your advertising services are in relation to goods that CAN PUMP.

   Due to the ordinary signification of your trade mark, it is acting to describe your goods and services rather than act as a badge of trade origin for them.

4. The second adverse examination (15 September 2022) maintained the ground for rejection against all of the Goods and the Services after consideration of the Applicant’s response.

   Discussion

5. As a preliminary observation, I note that the ground for rejection must be considered afresh.[3]

   [3] MHFC Holdings Pty Ltd [2016] ATMO 96, [9] (Hearing Officer Wilson).

6. The Applicant’s position is that the Trade Mark is inherently adapted to distinguish the Goods and Services.  It relies in part upon the declaration of Behrouz Famil Sabzevari made 15 June 2023 (Sabzevari) which has been produced for my benefit and for the purpose of the hearing but was not seen by the examiner.  The contents of the declaration are claimed as confidential but, for reasons which follow, it is unnecessary to discuss that declaration in detail and the information of relevance I have extracted from it is not confidential. 

7. Sabzevari states that:

   ·     the Applicant is a Canadian company which is a supplier of pressure washing equipment principally, and parts and accessories for pumps.

   ·     the trade mark is coined from "Can" and "pump", the letters "Can" being a reference Canada, the origin of the Goods.

   ·     based on Mr Sabzevari’s years of experience in the pressure washing equipment retail business, the term 'canpump' has no industry meaning in relation to the Goods or Services.

8. Section 41 requires that the Trade Mark be assessed for its degree or level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Goods and Services, there is no ground for rejecting it under s 41.

9. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’), the High Court advanced a two-step process – first, determination of the ordinary signification of the sign to those who would purchase, consume or trade in the Goods or Services; and, having determined the ordinary signification, determination of the likelihood of the sign being desired for use by others.[4]   The majority of the High Court held that:

   It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable).[5]

   [4] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

   [5] Ibid [59].

10. The determination of “ordinary signification” is simple enough in the case of laudatory expressions such as the marks at issue in Cantarella, ORO and CINQUE STELLE, Italian words for “gold” and “five stars”, but the ordinary meaning of a term like the Trade Mark is ambivalent, certainly when it is taken in isolation, but also when considered within the context of the industry in which the mark will operate.  

11. I agree with the examiner who believed the Trade Mark would be understood as the two terms, “can” and “pump”, conjoined.   However, the ordinary signification will hinge on how  those terms are likely to be interpreted.  The examiner has understood them both as verbs, but they might also be seen as nouns (some type of “can” shaped or contained pump, or as the abbreviation for Canada plus the word, pump).

12. The Applicant’s submission is that “[p]ersons who purchase, consume or trade in pumps, would not ordinarily describe ‘pumps that can pump’.  Such use is redundant and extraordinary”.  I agree that it would be very odd for the Applicant to have intended that the Trade Mark convey this meaning.  The letters, CAN, are a well understood shorthand for Canada[6] and I can safely assume are commonly used in Canada in connection with all sorts of goods and services in much the same manner that the letters AUS are used in Australia.   For that reason, it is quite possible the examiner’s reading of the Trade Mark has taken the Applicant by surprise, but odd as it may be to describe “pumps that can pump”[7], I must accept that it is at least one of the significations of the sign. 

    [6] ISO 3166-1 alpha-3 codes are three-letter country codes defined in ISO 3166-1 and published by the International Organization for Standardization to represent countries, dependent territories, and special areas of geographical interest. “CAN” is the ISO 3166-1 three-letter code for Canada.

    [7] or, as the Applicant gave by way of example “BBQs that can BBQ” if the mark was CANBBQ.

13. If I limit the enquiry to the ordinary signification of the word in Australia, then absent some cue contained in the Trade Mark (for example, a maple leaf, or perhaps a limitation to red font) my assessment is that a significant number of people would, if they searched for a meaning at all, think of the Trade Mark in the way the examiner outlined.  Some fewer people may be prompted to think of pumps made in Canada.

14. That said, the enquiry is also referable to “the persons who will purchase, consume or trade in the goods” (Goods and Services) and I note that pumps do not feature in the Services in any manner and appear as only one of the listed Goods. 

15. The further assessment of whether the Trade Mark is inherently adapted to distinguish (originally set out in Clark Equipment Co v Registrar of Trade Marks) will “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”.[8]

    [8] (1964) 111 CLR 511, 514 (Kitto J).

16. My finding is that other traders could not hold a legitimate desire to use the Trade Mark for the Services.  As for the Goods, the letters, CAN, are a well understood shorthand for Canada but the Trade Mark does not limit other traders from otherwise indicating that their similar goods might also come from Canada.   Likewise, if the Trade Mark is understood to mean, “able to pump”, it is an oddity, effectively saying to potential purchasers: “here is a pump that is able to pump stuff”.  Its irregularity renders it distinctive.  Moreover, registration would not preclude other traders who wished to somehow use the words “can pump” in a non-trade mark sense to explain (if necessary) the function or purpose of their own goods.[9]

    [9] for example, “the product can pump water at a rate of …”.

17. With s 33(1)(b) in mind, I find the Trade Mark inherently distinctive and capable of registration.

    Decision

18. I am not satisfied that there are grounds for rejection and so I accept the Application.

    Debrett Lyons

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    8 September 2023