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

1. 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 of goods (by any means) being artwork, wallpaper, awnings in class 22 and ladder tapes for venetian blinds; retailing of goods (by any means), excluding retailing of goods (by any means) being artwork, wallpaper, awnings in class 22 and ladder tapes for venetian blinds

   Divisionals:                1385786, 1639896, 1743473, 1879890

   And

   Application No:         1879894

   Trade Mark:               HALF PRICE BLINDS (‘Trade Mark 2’)

   Filing Date:                12 October 2017

   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; Insect screens of metal; Insect screens of metal for doors; Sun screens (outdoor) of metal; Window furniture of metal; Metal fittings for curtains

   Class 19:Non-metallic blinds for exterior use; Outdoor blinds, not of metal and not 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:  Blinds (indoor); Holders for use in securing blinds; Interior textile window blinds; Non-electric, non-metallic operating devices for blinds; Plastic hardware for blinds; Pulleys of plastics for blinds; Roller blinds for use indoors; Screens in the nature of blinds (indoor); Slatted indoor blinds; Window shades (blinds); Blind pulls of non-metallic materials; Slatted blind connectors; Slatted blind controls (non-electric); Non-metallic clamps for fixing awnings; Non-electric, non-metallic operating devices for shutters; Screens (furniture); Sun screens (indoor), not of metal or textile; Sun screens (indoor), of metal; Sun screens (slatted indoor); Sun screens (slatted outdoor); Non-metallic window furniture; Curtain hooks; Curtain pins; Curtain poles; Curtain rails; Curtain rings; Curtain rods; Curtain rollers; Curtain runners; Curtain suspension apparatus; Curtain tie-backs; Curtain tracks; Non-metallic articles for hanging curtains
   Class 22:  Ladder tapes for venetian blinds; Outdoor blinds of textile; Roller blinds of textile for external use; Roller screens in the nature of blinds; Sun screens (outdoor), of textile
   Class 24:  Textile materials for use in the manufacture of blinds; Textile materials for use in manufacture of awnings; Curtain fabrics; Curtain holders of textile material; Curtain loops made of textile materials; Curtains

   Class 35:  Discount services (retail, wholesale, or sales promotion services); Retail services; Retailing of goods (by any means)

   Examination Reports

   Trade Mark 1

2. Trade Mark 1 being a divisional of trade mark numbers 1385786, 1639896, 1743473 and 1879890, was examined as required by section 31 of the Act. The First Examination Report issued on 23 September 2019 raised a ground for rejection under section 41(6) of the Act as follows:

   Your trade mark is, or has as its main feature, the plain words HALF PRICE BLINDS. This indicates that your goods are, or are related to, or for use with, blinds which are sold at half the normal price. Additionally, it indicates that your services relate to such goods. Other traders should be able to use HALF PRICE BLINDS in connection with goods or services similar to yours.

3. On 23 December 2019 the Applicant requested a Hearing on the matter as provided by section 33(4) of the Act.

   Trade Mark 2

4. Trade Mark 2 was examined as required by section 31 of the Act. The First Examination Report issued on 5 March 2018 raised a ground for rejection under section 41(3) of the Act as follows:

   Your trade mark is, or has as its main feature, the plain words HALF PRICE BLINDS. This indicates that your goods are, or are related to, or for use with, blinds which are sold at half the normal price. Additionally, it indicates that your services relate to such goods. Other traders should be able to use HALF PRICE BLINDS in connection with goods or services similar to yours.

5. Collectively, Trade Mark 1 and Trade Mark 2 will be referred to as ‘the Trade Marks’.

6. On 23 August 2019 the Applicant submitted a response to the First Adverse Report including evidence.

7. In response the Examiner issued a Second Adverse Report dated 2 September 2019 maintaining the ground for rejection under section 41(3) of the Act.

8. On 25 September 2019 the Applicant’s Attorney contacted the Trade Marks Office by telephone.

9. In response the Examiner issued a Third Examination Report dated 25 September 2019 maintaining the ground for rejection under section 41(3) of the Act.

10. On 27 September 2019 the Applicant’s Attorney contacted the Trade Marks Office and requested a review of the examination file and the evidence provided by the Applicant in response to the Second Adverse Report.

11. The Assistant General Manager reviewed the examination file and issued a Fourth Adverse Report on 30 September 2019 maintaining the ground for rejection under section 41(3) of the Act.

12. On 1 October 2019 the Applicant’s Attorney contacted the Trade Marks Office by telephone.

13. In response the Assistant General Manager issued a Fifth Adverse Report dated 4 October 2019, maintaining the ground for rejection under section 41(3) of the Act.

14. 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

15. 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.

16. 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.

17. Section 41 of the Act as at 12 October 2017 being the filing date of Trade Mark 2 relatively 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.

    (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.

    […]

    Discussion

18. The now well-established test for determining whether a trade mark is inherently adapted to distinguish is set out in Clark Equipment Co v Registrar of Trade Marks by Kitto J:

    [T]he 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it[2].

    [2] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, [515].

19. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited endorsed the test but it used new descriptive terminology to describe the test. The Majority view stated that:

    The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. 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). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia[3].

    [3] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [59].

20. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Federal Court summarised the governing principles as follows:

    (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the services of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others…
    (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
    (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
    (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
    (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
    (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
    (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
    (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
    (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
    (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
    (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

    (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[4]

    [4] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [236].

1. It is appropriate to first consider the ‘ordinary signification’ of the Trade Marks. It is, in my consideration, to fall into error to assume that the ‘ordinary signification’ of a word or words that form a trade mark is indicated only by the dictionary definition of the words. Consideration must be afforded to the ‘ordinary signification’ of the words and is to be considered from the perspective of ‘any person in Australia concerned with the goods and services to which the Trade Marks are to be applied’[5]. This consideration includes how the words are used in the relevant trade and how they are likely to be understood by the public. The words may have taken on a particular significance in the trade or to the public other than those which appear in a dictionary. These considerations maybe illuminated by the dictionary definitions therein but those dictionary definitions do not dictate the outcome of the considerations if the words have a particular denotation in the trade and/or amongst the public.

   [5] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [70].

2. The definition of the word BLINDS is clear and not disputed. In Wallace three dictionary definitions of the word ‘half-price’ have been provided[6]:

   Macquarie Dictionary online: Half-price (adjective) at half the normal price
   Cambridge Dictionary online: Half-price (adjective, adverb) costing half the usual price

   Dictionary.com: Half-price (adjective, adverb) for half the normal price

   [6] Wallace Exhibits [RW1].

3. The Applicant’s submission argues that the dictionary word ‘half-price’, that is ‘half’ hyphen ‘price’ is not part of the Trade Marks. Moreover the meaning of the Trade Marks is unclear in HALF PRICE BLINDS because the required reference to what the usual price is, is absent[7].

   [7] GHF [63-73].

4. However, as was observed by Dixon J in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd in considering the meaning of a trade mark:

   But again I think that the question depends upon the use to which it is intended to put the word-mark. Doubtless a word is no less invented because, when it comes to be affixed to an article, its meaning is determined and perhaps explained. But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements[8].

   [8] Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [1946] HCA 15; 72 CLR 175.

5. Here the context of the Trade Marks in relation to the specification includes BLINDS. Accordingly, whilst the Applicant submitted otherwise, the words ‘half’ and ‘price’ with a hyphen or without a hyphen do not require a reference to what the usual price is, in the context of its usage within the trade and how it is understood by the public in relation to the goods and services. Here customers encountering the words HALF PRICE BLINDS would know immediately the kind of goods and services are being offered. The expression is a simple explanation of the potential price point of the goods and services and there is nothing fanciful about it. On any rational view of the words it means that the goods and services can be obtained at half the normal cost. In this context I believe that the descriptive meaning of the expression is very clear.

6. The Applicant also argued that the expression HALF PRICE BLINDS is not in common use[9]. In response, I conclude that if other traders are using a word or expression for the sake of their ordinary signification in the normal course of trade, that may be powerful corroboration of a lack of inherent adaptation. However, cases such as Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 and Eutectic Corporation v Registrar of Trade Marks (1980) 1A IPR 550 were decided on the ordinary meanings of the words and not by reference to whether other traders were in fact, using the words for their ordinary significance[10].

   [9] GHF [86].

   [10] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417; Eutectic Corporation v Registrar of Trade Marks (1980) 1A IPR 550.

7. It follows that the issue I must consider is the extent to which other traders, actuated only by proper motives, would need to use the expression HALF PRICE BLINDS or some expression so nearly resembling that expression for the sake of their ordinary signification in relation to their similar goods and services.

8. The window covering industry is one in which there are a large number of participants, ranging from small family businesses to large national organisations[11].

   [11] Blind Manufacturers Association of Australia, webpage <>

   It appears that on the plain meaning of the expression, traders in the window covering industry who provide the goods and services claimed by the Applicant would desire or need without improper motive to use that expression or one closely resembling it for the sake of its ordinary meaning. This is particularly so when these businesses engage in sale promotions. The expression thus lacks any inherent adaption to distinguish the goods and services of the Applicant from the goods and services of other traders who provide similar goods and services.

9. Therefore, the matter appropriately falls for consideration under subsection 41(6) of the Act in relation to Trade Mark 1 and subsection 41(3) of the Act in relation to Trade Mark 2.

   Evidence of Use

10. Subsection 41(6) and subsection 41(3) respectively require me to consider whether the evidence establishes that, because of the extent to which the Applicant has used the Trade Marks before the filing date(s) in respect of the applications, it does distinguish the designated goods and services as being those of the Applicant. If so, the Trade Marks are taken to be capable of distinguishing the designate goods and services from the goods and services of another trader.

11. As I explained earlier the filing dates of the respective trade marks are 28 September 2010 for Trade Mark 1 and 12 October 2017 for Trade Mark 2. The Brice declaration states that HALF PRICE BLINDS business was established in September 2008 and commenced trading in the second half of 2009. Noting that the business was established to cater for an internet-based market and the Applicant launched its website in November 2009[12], I will take this date as the date of first use and the evidence of use discussed below will be taken from the period of use up to 12 October 2017 being the filing date of Trade Mark 2.  

    [12] Brice [6-7].

12. The Brice declaration provides a breakdown of total revenue and advertising expenditure. Marked as confidential the figures show annual turnover from 2010 to 2017 is solid with steady growth over that period[13], while annual expenditure on offline and online advertising for the period 2009 to 2017 is high[14].

    [13] Brice [14].

    [14] Brice [18].

13. Advertising and Promotion of the Trade Marks includes Radio advertising campaigns in Sydney and Melbourne during the months of March and June in 2017[15], with digital media being the Applicant’s main vehicle for advertising and promotion via its website[16], YouTube account (opened in April 2015)[17] and Facebook account (opened in 5 June 2015)[18]. The Applicant has also bought digital media advertising on digital channels including Google Ads, Google shopping, Google Display, Instagram and Facebook[19].

    [15] Brice [19].

    [16] Brice [7].

    [17] Brice [22-23].

    [18] Brice [32].

    [19] Scampoli 1 [10].

14. Evidence of the Applicant’s advertising featuring the Trade Marks are provided in the Brice Exhibits[20]:

    MB-3: Copies of scripts for radio advertising campaigns featuring the Trade Marks read on KIIS1065 which were run during the date periods 1/3/2017 to 31/3/2017 and 1/6/2017 to 30/6/2017.

    MB-4: Copy of a contract confirmation between the Australian Radio Network and the Applicant for radio advertising featuring the Trade Marks over KIIS1065 (Sydney) and KIIS101.1 (Melbourne) for September and October 2017.

    MB-10: A copy obtained from the Wayback Machine of the HALF PRICE BLINDS website home page dated 24 November 2009 and features a word and device trade mark (being Trade Mark Registration 1339343) and the Trade Marks.

    MB-11: Copies obtained from the Wayback Machine of the HALF PRICE BLINDS website home page dated: 11 December 2010; 17 July 2011; 16 April 2012; 12 August 2013; 24 September 2014; 26 March 2015; and 1 March 2016, all featuring a word and device trade mark (being Trade Mark Registration 1339343) and the Trade Marks.

    [20] Brice Exhibits [MB 3, 4, 10 and 11].

15. The Applicant has been listed on ProductReview.com.au, a consumer opinion website, since 2014 where the Applicants review page features the HALF PRICE BLINDS logo trade mark and the Trade Marks, and in 2017 the Applicant received a ProductReview Award for being well rated by the ProductReview community[21].

    [21] Brice [36].

16. As an internet-based business the Applicant has provided HALF PRICE BLINDS website metrics in the Scampoli Declaration’s 1, 2 and 3[22], and the metrics provided in Scampoli 1 and 2 have been considered and agreed with in Lane[23] and Burke[24].

    [22] Scampoli 1,2,3.

    [23] Lane [10].

    [24] Burke [10].

17. The website metrics show the different digital channels customers use to enter the Applicants website to October 2017.  Most new users to the website come from a ‘Paid Search’ (that is all paid traffic that come from Google, YouTube, Facebook, or any channel that has paid ads), next is through an ‘Organic Search’ (that is traffic that comes through search engines such as Google and in this situation Customers will search on a term such as “roller blinds” and if the Applicant shows up in the search results and someone clicks, Google Analytics will record it under this channel), then is ‘Direct’ traffic (that is traffic where customer have typed in the URL and it is reported that visits to the website via  ‘Direct” traffic total 5000 a month[26].

    [25] Scampoli 1 [19-20]; Scapmoli 3 [5].

    [26] Scampoli 1 [32].

18. The Applicant argues that the metrics outlined in the Scampoli declarations clearly show statistically, that the term HALF PRICE BLINDS has become a distinctive mark for “the business” and HALF PRICE BLINDS has a ‘secondary meaning’ of an indication of the business significantly more than it might have as a category generic search term[27].

    [27] GHF [149].

19. However, the Applicant appears to have taken a quantitative approach to its evidence of use rather than a qualitative one. As Jacob J said in British Sugar Plc v James Robertson & Sons Ltd:

    I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogically can be seen from an example: no matter how much use a manufacturer made of the word ‘soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not the trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords. In the former case Lord Russell said (at page 145):

    ‘A word or words to be really distinctive of a person’s goods must generally speaking be incapable of application to the goods of anyone else.’

    It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader[28].

    [28] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 [302].

20. Here, the Applicant has relied on the decision in REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 (‘REA’), where the court found, by analysing website metrics, that a significant number of consumers who utilize search engines to search for property portals, recognized REA’s residential property portal by name and therefore it had established a secondary meaning[29].

    [29] GHF [136-141].

21. However, in REA, the Applicant accepted that the term ‘real estate’ was purely descriptive, and the court stressed that the essential or distinguishing feature of REA’s mark is the domain name in its entirety. The inclusion of ‘com.au’ as part of that essential feature is necessary because the highly descriptive nature of ‘real estate’ on its own would not be enough to establish brand identity[30].  

    [30] REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559.

22. In this case, consumer awareness of the HALF PRICE BLINDS portal has not changed or altered the Trade Marks meaning so that it only denotes the Applicant as the source of the goods and services to which the Trade Marks are applied.

23. The evidence provided shows strong sales turnover and advertising expenditure, however the Exhibits drawn from the Applicant’s digital media platforms in particular show use of its HALF PRICE BLINDS logo trade marks predominate use of the Trade Marks.

24. Consequently, I am satisfied that the Applicant’s evidence of use fails to show that the Trade Marks distinguish the Applicant’s goods and services at their respective filing dates as being those of the Applicant.

    Decision

25. Section 33 of the Act relatively provides:

    Section 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.

    (2) The Registrar may accept the application subject to conditions or limitations.

    (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.

    (4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

26. Under section 33 of the Act, I must accept a trade mark application unless there are grounds under the Act for rejecting it. In this matter I am satisfied there are grounds under the Act for rejecting both applications.

27. I therefore reject Trade Mark application 1879894 and Trade Mark application 2032599.

    Louise Tuohy
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    26 March 2020