Gucchio Gucci SpA

[2008] ATMO 46

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1149870(18) - STRIPES DEVICE- in the name of Guccio Gucci SpA.

Delegate:	Iain Thompson
Representation:	Applicant: Tim Allen of Corrs Chambers Westgarth
Decision:	2008 ATMO 46 Section 33 proceedings – s33 – application not complying with regulations – application rejected.

Background

1.   In this matter, Guccio Gucci SpA of Firenze, Italy, applied to register a trade mark, under the Trade Marks Act 1995 (‘the Act’).  Current details of the application are shown below:

Appn Number:           1149870

Priority Date:             29 November 2006

Goods:Class: 18 Briefcases, suitcases, attache cases, overnight cases, shirt-cases, sportsbags, duffel-bags, shoe-cases and bags, box-calf bags, handbags, purses, change purses, jewel cases, jewel purses, wallets, toilet-cases, make-up cases and purses; hatboxes, shoulder-bags; stationery-holders, billfolds, key cases, portfolios, document cases, travel bags, agenda cases, brief cases

Trade Mark:               (No pictorial representation provided with the application)

Endorsement:             The trade mark consists of three stripes applied to goods with the three stripes being parallel and contiguous and with the two outer stripes being coloured green and of equal width and the central stripe being coloured red and of a width no less than the width of each green stripe and no more than double the width of each green stripe, and the combined width of the three contiguous stripes being no greater than the length of the contiguous stripes.

1. An examiner raised the following concerns:

   The endorsement provided is not accurate enough in that it allows for stripes of variable widths.  This would allow for a number of different versions of the trade mark.

   The endorsement does not demonstrate the nature of the trade mark sufficiently.

2. The first request relates to the examiner’s perceptions of variability – and hence, presumably, uncertainty in what is being registered.  The second request concerns uncertainty as to the nature of the trade mark – hence an inability to properly examine the trade mark.

3. The applicant requested to be heard.  As a delegate of the Registrar of Trade Marks, I heard Tim Allen of Corrs Chambers Westgarth make submissions on behalf of the applicant at a hearing in Melbourne on 17 September 2007.

4. At the close of the hearing, I undertook to write to the applicant and state under what conditions I thought the trade mark could be further progressed and subsequently examined.

5. In my letter, of 2 October 2007, I indicated that I thought the following amendments would put the application in order:

   The amendment of the application by the addition of a single coloured representation of the trade mark; preferably the colours should be clearly labeled so as to clearly depict the features of the trade mark on the advertisement and any registration which might ensue.

   And the amendment of the endorsement to read:

   The trade mark consists of three stripes applied to goods with the three stripes being parallel and contiguous and with the outer stripes being coloured green and of equal width and the central striped being coloured red, as shown in the representation attached to the application form.

6. The solicitor relied by letter dated 16 November 2007 saying:

   We will simply note that your difficulty in apprehending the nature of the Applicant's mark appears to underpin your objection.

   You suggest, for example, that:

   "it is not apparent that the red band is actually applied within the green stripe — it could, for example, be a red stripe that lies between the two green bands but not necessarily adjacent to them".

   We note that the endorsement describes the green and red stripes as being "contiguous". The Oxford English Dictionary defines "contiguous" as meaning to "share a common border". This necessarily means that the green and red stripes must be adjacent to one another. This appears to be symptomatic of the difficulties you encountered in conceptualising the mark in the absence of visual representations.

   On the assumption that your objection is based on your concern that some members of the public may have difficulties envisaging the mark without the aid of visual representations, we enclose sample representations of the mark to be attached to the application form.

   We submit that the endorsement as amended below is in order for acceptance under the provisions of Regulation 4.3(8):

   The trade mark consists of three stripes applied to goods with the three stripes being parallel and contiguous and with the two outer stripes being coloured green and of equal width and the central stripe being coloured red and of a width no less than the width of each green stripe and no more than double the width of each green stripe, and the combined width of the three contiguous stripes being no greater than the length of the contiguous stripes. Examples of the trade mark are shown in the representations attached to the application form.

7. I note now that the endorsement does not, as the above submissions suggest, describe the “red and green stripes” as being contiguous.  Rather, the endorsement refers to the “three stripes being parallel and contiguous,” and the “combined width of the three contiguous stripes being no greater than the length of the contiguous stripes.”

8. I have considered these submissions in some detail and at considerable length and, as a result, have concluded that, unfortunately, I have little alternative but to reject the application in terms of section 33 of the Act.

   The Hearing

   10.  At the hearing, Mr Allen showed me a prior registration by the applicant of what is said to be the same trade mark.  Details of this registration are:

   Reg Number:              1078515
   Priority Date:             03 October 2005

   Goods:Class: 18 Briefcases, suitcases, attache cases, overnight cases, shirt-cases, sportsbags, duffel-bags, shoe-cases and bags, box-calf bags, handbags, purses, change purses, jewel cases, jewel purses, wallets, toilet-cases, make-up cases and purses; hatboxes excluding lime green coloured hat boxes, shoulder-bags; stationery-holders, billfolds, key case, portfolios, document cases, travel bags, agenda cases, brief cases excluding lime green coloured brief cases

   Trade Mark:               

   Endorsement:             The trade mark consists of three stripes applied to goods with the three stripes being parallel and contiguous and with the two outer stripes being coloured green and of equal width and the central stripe being coloured red, as shown in the representation of the trade mark attached to the application form.

9. At the hearing, Mr Allen submitted:

   Gucci submits that the description of the Trade Mark set out in the endorsement:

   (a)       demonstrates the nature of the Trade Mark and each of its features sufficiently to allow proper examination of the Application; and

   (b)       complies with Regulation 4.3(8) despite allowing for a central red stripe of variable width (albeit the variation is within well defined parameters).

   Gucci accordingly requests that the objection under Regulation 4.3(8) be withdrawn.

   Applicable legislation and case law

   Legislation

   Section 27(2) provides that an application to register a trade mark must be in accordance with the Regulations and must be filed, together with any prescribed document, in accordance with the Regulations.

   Section 27(3) provides:

   Without limiting the particulars that may be included in an application, the application must:

   (a)       include a representation of the trade mark; and

   (b)       specify, in accordance with the Regulations, the goods and/or services in respect of which it is sought to register the trade mark.

   Section 40 provides that an application to register a trade mark must be rejected "if the trade mark cannot be represented graphically".

   Regulation 4.3(8) provides:

   If the Registrar reasonably believes that the description or representation of a trade mark in an application for registration of the trade mark does not

   (a)       demonstrate the nature of the trade mark sufficiently; or

   (b)       show each feature of the trade mark sufficiently;

   to permit proper examination of the trade mark, the Registrar may require the applicant to give to the Registrar:

   (c)       a description, or further description, of the trade mark; and

   (d)      a specimen of the trade mark.

   Case law

   Gucci refers to the joint judgment of the Full Court of the Federal Court in Woolworths Limited v BP plc [2006] FCAFC 132, in which the Court noted that a mark that is essentially visual in nature can be properly represented by a written description without requiring visual depictions:

   The ordinary meaning of the word "representation" is not confined to pictures or diagrams that might be appended to an application. In ordinary parlance a representation can consist solely of a picture or diagram, or solely of textual descriptions, or it can comprise both a picture or diagram and textual descriptions or explanations that are intended to be read together.

   The Court further explained that, in the context of section 40, the word "graphically"

   "can refer to a representation by means of diagram, pictures or the like, but it can also refer to a representation by means to writing, or by means of a combination of diagrams, pictures and writing". (para 35)

   Sufficiency of endorsement

   Gucci submits that the Application is in accordance with Regulation 4.3(8) because it contains, by way of endorsement, a written description of the Trade Mark which demonstrates the nature of the trade mark and shows each feature of the Trade Mark sufficiently to permit proper examination of the Application.

   The description set out in the Endorsement defines the Trade Mark as consisting of 3 stripes applied to goods with the 2 outer stripes being coloured green and the central stripe being coloured red. The description goes further to define the relative width of the stripes: the 2 green stripes are of equal width whilst the central red stripe is between 1 and 2 times the width of the green stripes. Even the concept of "width" of the stripes as opposed to their length is prescribed by the restriction that the combined width of the 3 contiguous stripes is no greater than the length of the contiguous stripes. Thus, the mark is delineated in a manner which:

   (a)       can be readily understood by any person searching the Register of Trade Marks; and

   (b)       accords with the use of the mark as established by the evidence filed by Gucci in support of the earlier application number 1078515.

10. Mr Allen went on to give various examples of past acceptances and registrations in the names of other traders which are said to support argument for the further progress of the application.  In conclusion he observed:

    Gucci refers to the decision in Unilever plc [2001] ATMO 39 in which the Hearing Officer stated:

    "It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant. It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience."

    13.  The converse is obviously true too – every application should be considered on its own particular merits and on its own circumstances: in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 Wilcox J observed:

    The second matter mentioned by Ms Baird is that Ocean Spray adduced evidence of other registered marks that contain, or consist wholly of, the word "classic". That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar at 305:

    "Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence."

    I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

    Reasoning and Decision

    14.  Perhaps the most convenient starting point in this discussion is consideration of the endorsement on 1149870 and an attempt to comprehend exactly what it means.  The endorsement reads:

    The trade mark consists of three stripes applied to goods with the three stripes being parallel and contiguous and with the two outer stripes being coloured green and of equal width and the central stripe being coloured red and of a width no less than the width of each green stripe and no more than double the width of each green stripe, and the combined width of the three contiguous stripes being no greater than the length of the contiguous stripes.

11. The endorsement describes what is applied for as “the trade mark.”  Thus there is one trade mark which is sought to be registered.  The endorsement further describes the trade mark as being three stripes which are applied to the goods.  The central stripe is some shade of red and is of indeterminate proportion (within wide parameters) to the outer two stripes which are some shade of green in colour.  However, all three stripes are stated to be parallel and contiguous.  I must state unequivocally that, on the basis of the above description, I have the very greatest difficulty in forming any picture in my mind of the trade mark.  Indeed, the applicant itself has pointed this out to me.

12. I will initially note that I am aware what the word ‘contiguous’ means.  The Macquarie Dictionary gives:

    1. touching; in contact.

    2. in close proximity without actually touching; near.

13. The second definition is the source of my concern alluded to by Mr Allen that if the stripes are not touching there is no information as to what any intervening colour might be. 

14. However, the alternate meanings of the word ‘contiguous’ are integral to puzzlement as to the nature of the trade mark.

15. For example, the external two members of three parallel stripes cannot be contiguous with each other as do not they share (or nearly share) a border with each other – even though the endorsement states, in effect, that (being contiguous) they do touch, nearly touch, or share a border.  However, when the description is considered carefully there are ways in which the outer green stripes could share a border with each other.  This could occur if the trade mark was in fact a repeated pattern over the surface of a label, or the goods – the outer green bands would then each touch another green band.  Contiguity of the green bands could also occur if the trade mark were applied to the handles of handbags, folded over longitudinally so that green bands met at the back of the handle, or indeed, if it is applied to the whole of the goods so that the greens bands meet at the sides of, for example, a handbag.

16. The word ‘contiguous’ is thus ambiguous in the endorsement and might be best regarded as being open to interpretation in that context.  This uncertainty as to the meaning of the word ‘contiguous’ is the first of my difficulties as to what is meant by the description which comprises the representation of the trade mark.

17. The fact that the width of the central red band is described as being variable also introduces some doubt as to how it varies.  If what is being described is in fact a ‘series’ of trade marks, there are a large number of possible variations – however, the application has not been filed as a series application, nor has the appropriate fee been paid, and the provisions of section 51 which regulates series applications are such that the application (if properly made and described) might not anyway qualify as a series.  Moreover, if what is sought to be registered is ‘a trade mark’ it is difficult to understand how the central red stripe can be of a variable width, and be parallel and contiguous with the other stripes.

18. I requested a sample of the trade mark from the applicant as further consideration shows that without some pictorial rendition of the trade mark, any sense of what the trade mark might actually be is most difficult to grasp.  For example, the endorsement, if taken literally as it should be, seems to describe the trade mark as being a pattern of three bands of varying colours – the outer two being any shade of green and the inner one being any shade of red, in a number of potentially different proportions to each other.

19. As observed, this description or representation extends to all hues or shades of the colour red, and to all hues or shades of the colour green.  And on the basis of the description, the two green bands might not necessarily be of the same shade or hue – neither, as noted, can the green bands be contiguous if they do not share a border.

20. In short, the endorsement seemingly describes the trade mark as being a colour trade mark of indeterminate properties and proportions and a potentially indefinite description, the precise nature of which is uncertain.

21. I must confess that, at the hearing and subsequently, I fell into the trap of knowing what the applicant had intended by the description because of the examples put in by the applicant and did not immediately appreciate the extreme vagueness of the description of the trade mark.  It was only when the applicant pointed out my misunderstanding that I apprehended that, considered on its own, the description of the trade mark is the source of uncertainty as to the exact nature of the trade mark.

22. Appended to the submissions of the applicant are various examples of how the trade mark is actually used.  For example:

23. Although one might readily apprehend once the above picture is seen what the trade mark is, this apprehension only becomes possible, to my mind, once one has actually seen the trade mark in use.  The fact that one can only properly understand what the trade mark is once one has seen it strongly suggests that a pictorial element is a necessary part of the representation of the trade mark, along with more precise verbal description of the trade mark.

24. I will reiterate now, that the trade mark, as described in the application, might be in any shade of red and green, with the red and green stripes in various different proportions to each other.  There is little evidence in the picture, above, of the exterior green stripes adjacent to the central red band being contiguous with each other.  There thus appears to me to be little, if any, direct correlation between the description or representation of the trade mark and the picture of it, above, or the representation put in by the applicant.  Or, put another way, there seems to me to be potential difficulties that a trade mark examiner, the Courts, or other traders, might able to ascertain the nature of the trade mark on the basis of the verbal description alone.  The verbal description, when applied to the sample provided by the applicant is inaccurate as the sample shows a central red stripe of a fixed width whereas the description is of a red stripe of variable width.  The application, is not, as discussed above, for a series of trade marks; the application is for a single trade mark and the endorsement describes the red band both as being of variable width and parallel to the other stripes.

1. To remove any doubt, I observe that the representation of a trade mark may be in words if those words adequately define the trade mark so that it may be examined within the Trade Marks Office in the usual way, and so that the scope of the limited monopoly to be granted may be adequately and readily comprehended by other traders who search the register and by the Courts should the applicant enforce its trade mark rights.

2. In a very limited number of applications to register a colour as a trade mark, a verbal description of the trade mark alone might be adequate – for example, if the goods are ‘passenger vehicle tyres’ and the trade mark is the colour pink applied to the whole of the visible surface of the goods, an acceptable description might read:

   The trade mark is the colour bright pink (Pantone 298 PC) applied to the whole of the visible surface of passenger vehicle tyres.

3. Reference to an objective standard, such as the Pantone chart, enables the Registrar’s staff, other traders, and the Courts (if need be) to establish exactly what has been registered in the absence of a coloured representation which shows the colour.  Obviously, in this hypothetical case of the car tyres, if some other colour as well as bright pink were to be used, a verbal description of the trade mark would probably prove to be inadequate.  Thus, for example, if the colour yellow were also to be applied to the sidewall of the tyres adjacent to the rim and the colour pink were to be applied to the balance of the visible surface, the applicant would be required to file a pictorial explanation as a part of the representation with schematic views of how the trade mark is applied to the goods.  And the greater the number of variables or parameters to be described and the more uncertainties in how such a trade mark might function in relation to the goods, the more unlikely it is that the verbal description alone will prove to be sufficient to allow a proper understanding of the trade mark and the scope of the monopoly which is to be claimed.

4. Regulation 4.3(8) provides:

   (8)If the Registrar reasonably believes that the description or representation of a trade mark in an application for registration of the trade mark does not:

   (a)demonstrate the nature of the trade mark sufficiently; or

   (b)show each feature of the trade mark sufficiently;

   to permit proper examination of the trade mark, the Registrar may require the applicant to give to the Registrar:

   (c)a description, or further description, of the trade mark; and

   (d)a specimen of the trade mark.

5. The applicant has proved unwilling to more closely define the trade mark to demonstrate its nature – the offer of a tighter description in my letter has been rejected by the applicant.

6. Further, the Full Court of the Federal Court in Woolworths Limited v BP plc (No 2) [2006] FCAFC 132 had the following to say at paragraph 42 of their decision:

   Regulation 4.3 recognises that difficulties may arise in providing a sufficient representation of a trade mark in pictorial or diagrammatic form.  Exactly that kind of problem arose in Levi Strauss & Co v Kimbyr Investments Ltd [1994] 1 NZLR 332; see also Ty Nant Spring Water’s Application [1999] RPC 392; [2000] RPC 55; “Creola” Trade Mark [1997] RPC 507 and Antoni and Allison’s Application [1998] ETMR 460. Hence, reg 4.3(7) provides that the applicant must include a concise and accurate description of the trade mark where registration is sought for a sign that contains, or consists of, a colour, scent, shape, sound, or aspect of packaging or any combination of those features. Regulation 4.3(8) makes it clear that the description is intended to serve the same purpose as the representation of the trade mark, namely to demonstrate the nature of the trade mark or to show each feature of the trade mark sufficiently. If the Registrar is not satisfied as to the sufficiency of the description or representation that has been provided, reg 4.3(8) gives him or her the power to require a further description and a specimen of the trade mark. Nothing in the regulations excludes the provision of a representation that contains pictorial or diagrammatic elements, coupled with textual descriptions, notes or explanations that are intended to be read with the diagram or picture. More generally, we consider that ordinary English words such as “description”, “particulars” and “representation”, which are not defined in the Act, should be construed flexibly so as to give effect to the purpose and policy of the Act.

7. Of course, the same observations flow equally in the opposite direction where the representation of the trade mark consists of a verbal description only.  The verbal description here is vague or open to interpretation:

   ·     There is no ready way to ascertain what shades of the colours red and green are referred to or whether the two green bands are the same colour of green

   ·     Difficulties introduced to an understanding of the trade mark by the use of the word ‘contiguous’ which might be open to interpretation.

   ·     The relative proportion of widths of the bands of colour is also variable.

   ·     The written description on this application for registration of a single trade mark implies that the red stripe is both parallel and of variable width comparative to the green stripes.

   ·     The representation of the trade mark supplied by the applicant does not appear to be consonant with the description.

8. However, it is in the applicant’s, other traders’, the Courts, and the Registrar’s interests that the trade mark be properly and precisely described and defined as a part of the representation.

9. The applicant has declined my request to amend the application so as to address the above concerns.

10. Accordingly, I reject the application in terms of section 33 of the Act which states:

    33Application 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.[1]

    [1] Section 6 provides: this Act includes the regulations.

    (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.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    26 June 2008