Half Price Blinds Pty Ltd - [2020] ATMO 46

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2032599 (classes 6,19,20,24,35) – HALF PRICE BLINDS - in the name of Half Price Blinds Pty Ltd.
And
Trade mark application number 1879894 (classes 6,19,20,22,24,35) – HALF PRICE BLINDS - in the name of Half Price Blinds Pty Ltd.

Delegate: Louise Tuohy

Representation: Applicant: Rohan James Wallace of Golja Haines & Friend

Decision: 2020 ATMO 46
Ex-parte matter pursuant to s33(4) of the Trade Marks Act 1995 (Cth) – Section 41 trade marks inherently adapted to distinguish – trade mark applications rejected.
Background

This decision follows from an ex parte hearing at the request of Half Price Blinds Pty Ltd (‘the Applicant’) pursuant to section 33(4) of the Trade Marks Act 1995 (‘the Act’) in relation to Australian Trade Mark applications 1879894 and 2032599, current details of which appear below:
Application No:         2032599
Trade Mark:               HALF PRICE BLINDS (‘Trade Mark 1’)
Filing date:                 28 September 2010 (‘the ‘filing date’)
Goods and Services:    Class 6: Blinds of metal for external use; clamps of metal for fixing blinds; metal fittings for blinds; awnings of metal; clamps of metal for fixing awnings; metal fittings for shutters; metal shutters; sun screens (outdoor) of metal
Class 19: Non-metallic blinds for exterior use; outdoor blinds, not of metal or of textile; non-metallic shutters; wooden shutters; non-metallic screen wall components; plastic screen wall components; screens for use as screen walls (non-metallic structures); sun screens (outdoor), not of metal or textile
Class 20: Holders for use in securing blinds; non-electric, non-metallic operating devices for shutters; screens in the nature of blinds (indoor); sun screens (indoor), not of metal or textile; sun screens (indoor), of metal; sun screens (slatted indoor); sun screens (slatted outdoor); furniture for doors (non-metallic); screens (furniture); overhead suspension tracks of non-metallic materials for use with doors; non-metallic window furniture; interior textile window blinds; blind pulls of non-metallic materials; blinds (indoor); holders for use in securing blinds; slatted blind connectors; slatted blind controls (non-electric); curtain drawing devices, other than electrically operated; curtain hooks; curtain pins; curtain poles; curtain rails; non-electric, non-metallic operating devices for blinds; curtain rings; curtain rods; curtain runners; curtain suspension fittings; curtain tie-backs; curtain tracks; non-metallic articles for hanging curtains; plastic hardware for blinds; pulleys of plastics for blinds; roller blinds for use indoors; slatted indoor blinds; window shades (blinds); non-metallic clamps for fixing awnings
Class 24: Blinds (outdoor), of textile; roller shades (outdoor) of textile; textile goods, excluding textile goods being artwork; textile materials for use as window coverings; textile materials for use in manufacture of awnings; textile materials for use in the manufacture blinds; window covering products made of textile material; curtain fabrics; coverings for windows; roller blinds of textile for external use; roller screens in the nature of blinds; sun screens (indoor), of textile; curtains; curtains of textile or plastic; door curtains; curtain holders of textile material; curtain loops made of textile materials
Class 35: Retail services, excluding retailing…

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: [2020] ATMO 46
Decision Date: 26 March 2020

CaseChat Overview and Summary

This matter concerned trade mark applications by Half Price Blinds Pty Ltd that had been rejected by the Registrar. The applicant requested a hearing pursuant to section 33(4) of the *Trade Marks Act 1995* (Cth). The hearing was conducted by Louise Tuohy.

The court was required to determine whether the trade marks in question were inherently adapted to distinguish the applicant's goods or services, as provided for under section 41 of the Act. This involved considering the legislative framework surrounding trade mark registration and the criteria for a mark to be capable of distinguishing.

The court noted that amendments to section 41 of the Act were not intended to alter the fundamental concepts of "inherently adapted to distinguish" or "capable of distinguishing." The court applied the established judicial tests for these concepts, which require an assessment of whether a trade mark is inherently capable of differentiating the applicant's goods or services from those of other persons. The court considered the evidence presented, including declarations from various individuals associated with the applicant and its advertising and creative agencies, as well as written submissions. The court's reasoning focused on the inherent distinctiveness of the trade marks themselves, in accordance with the statutory provisions.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

On 6 December 2019 the Applicant requested a Hearing on the matter as provided by section 33(4) of the Act.Evidence·Declaration by Mark Brice, Director of Half Price Blinds Pty Ltd, dated 6 August 2019 (‘Brice’).·Declaration by Tony Scampoli, Managing Director of Gatecrasher Advertising Pty Ltd, dated 16 August 2019 (‘Scampoli 1’).·Declaration by Tony Scampoli, Managing Director of Gatecrasher Advertising Pty Ltd, dated 31 January 2020 (‘Scampoli 2’).·Declaration by Tony Scampoli, Managing Director of Gatecrasher Advertising Pty Ltd, dated 4 February 2020 (‘Scampoli 3’).·Declaration by Miles Burke, Managing Director of Bam Creative Pty Ltd, dated 31 January 2020 (‘Burke’).·Declaration by Gareth Lane, Founder and Director of Concise Digital Pty Ltd, dated 31 January 2020 (‘Lane’).·Declaration by Rohan James Wallace, Attorney for Half Price Blinds Pty Ltd, dated 3 February 2020 (‘Wallace’).Additional Material·Written submission by Golja Haines & Friend dated 3 February 2020 (‘GHF’).Legislative background The filing dates for Trade Mark 1 and Trade Mark 2 cross with legislative changes to the Act and a preliminary point when dealing with the old and new provisions under section 41 of the Act is that the amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others[1].[1] Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, page 146. Section 41 of the Act as at 28 September 2010 being the filing date of Trade Mark 1 relatively provides: 41 Trade mark not distinguishing applicant’s goods or services (1) 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. (2) 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 (designated goods or services) from the goods or services of other persons. (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. (4) Then, if the Registrar is still unable to decide the question, the following provisions apply. (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: (a) the Registrar is to consider whether, because of the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances; the trade mark does or will distinguish the designated goods or services as being those of the applicant; and (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons. (6) If the Registrar finds that 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, the following provisions apply: (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons; (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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Delegate:	Louise Tuohy
Representation:	Applicant: Rohan James Wallace of Golja Haines & Friend
Decision:	2020 ATMO 46 Ex-parte matter pursuant to s33(4) of the Trade Marks Act 1995 (Cth) – Section 41 trade marks inherently adapted to distinguish – trade mark applications rejected.