Hilton Worldwide Holding LLP

[2020] ATMO 20

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1903289 (41) – TAPESTRY - in the name of Hilton Worldwide Holding LLP.

Delegate:	Nicholas Barbey
Representation:	Applicant: Miriam Stiel and Lena Balakrishnan of Allens Patent & Trade Mark Attorneys
Decision:	2020 ATMO 20 Trade Marks Act 1995 (Cth) – section 33 proceedings – s 41 – trade mark not capable of distinguishing – amendment to specification – trade mark application accepted.

Background

1. On 30 January 2018, Hilton Worldwide Holding LLP (‘Applicant’) filed a divisional application to register the following trade mark:

   Trade Mark:  TAPESTRY (‘Trade Mark’)

   Application Number:             1903289

   Parent Application No.:         1824478

   Priority Date:  8 February 2017

   Services:Class 41: Entertainment services in the nature of presenting live dance, variety and musical performances; nightclub services; health club services, namely, providing instruction and equipment in the field of physical exercise; arranging and conducting of live exhibitions, functions, conferences, conventions, seminars and meetings in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes; theatre and opera reservations (‘Claimed Services’).

2. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and an adverse examination report was issued stating the following ground for rejection had been identified:

   Your trade mark is TAPESTRY.

   This indicates that your exhibition, function, conference, convention, seminar and similar services for the purposes of education, culture and entertainment are related to tapestries.

   Other traders should be able to use TAPESTRY in connection with goods or services similar to yours.

3. To overcome the ground for rejection, the Applicant was provided with the options of either supplying evidence of use pursuant to s 41(4) of the Act or restricting the Claimed Services. The latter being available because the ground for rejection was particularised as only applying to the following services within the Claimed Services:

   arranging and conducting of live exhibitions, functions, conferences, conventions, seminars and meetings in the fields of education, culture, and entertainment for non-business and non-commercial purposes

(‘Identified Services’)

1. The Applicant declined to pursue either option and instead filed written submissions asserting that the ground for rejection was not validly raised and should be withdrawn. The examiner was not persuaded by these submissions and further correspondence between the Applicant and examiner ensued. After a third adverse examination report was issued, the Applicant requested to be heard.

2. A hearing was scheduled and the Applicant was invited to submit further submissions and/or evidence by 13 August 2019. The Applicant filed written submissions (‘Applicant’s Submissions’) by this date and, as a delegate of the Registrar of Trade Marks, I heard this matter in Canberra on 20 August 2019. Miriam Stiel and Lena Balakrishnan of Allens Patent & Trade Mark Attorneys attended the hearing by telephone.

3. At the outset, it is important to clarify that the following discussion is not a review of the decision made by the examiner. Rather, it is a fresh consideration of the ground for rejection raised under s 41 of the Act. To this end, I am mindful that s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it or the application has not been made in accordance with the Act.

Section 41

1. Section 41 of the Act relevantly provides:

   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.

1. To determine the merits of the s 41 ground for rejection, the extent of the Trade Mark’s inherent adaptation to distinguish the Identified Services must be assessed. This is tested:

   [B]y 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[1]

   [1] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (emphasis added).

2. The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[2] indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step involves determining the ‘ordinary signification’ of the trade mark, in Australia, to persons who will purchase, consume or trade in the goods.[3] Once the ‘ordinary signification’ is determined, the second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar goods. Although this process was formulated in the context of goods, it is equally applicable to services.

   [2] [2014] HCA 48 (‘Cantarella’).

   [3] Ibid [71].

3. The Applicant’s Submissions acknowledge that ‘tapestry’ is a known word but emphasise that it refers to a specific object. Given this, the Applicant argues that ‘tapestry’ cannot be descriptive of a service because this would require an action or a verb which can be demonstrated or presented. The Applicant points to the examiner’s concession that the Trade Mark is not a direct reference to the Identified Services[4] and submits that Cantarella ‘makes it abundantly clear that a trade mark is only not registrable where it has a direct reference to the services’.[5] As such, in the absence of a direct reference, the Applicant asserts that the Trade Mark is capable of distinguishing the Identified Services.

   [4] Examination Report 2 dated 2 July 2018.

   [5] Applicant’s Submissions, [2.4] (emphasis in original).

4. I do not accept the Applicant’s assertion that if the Trade Mark does not have a ‘direct reference’ to the Identified Services, the only conclusion to be drawn is that the Trade Mark is inherently adapted to distinguish same. This deduction omits the fact that s 41 of the Act is structured in a manner which indicates distinctiveness is to be adjudged along a continuum. At one end of this continuum sit trade marks which do not have any reference to the designated goods or services and therefore are inherently adapted to distinguish. Whereas at the opposite end are trade marks which have a direct reference to the designated goods or services and therefore are not to any extent inherently adapted to distinguish. Meanwhile, trade marks which are to some extent inherently adapted to distinguish fall in between these two ends of the continuum. For the reasons that follow, I consider the Trade Mark is not to any extent inherently adapted to distinguish the Identified Services.

Ordinary signification

1. In this matter, the Trade Mark is constituted by the single word ‘tapestry’ and it is devoid of any devices or embellishments. The word ‘tapestry’ is defined by the Macquarie Dictionary as:

   tapestry

   noun (plural tapestries)

   1. a fabric consisting of a warp upon which coloured threads are woven by hand to produce a design, often pictorial, and used for wall hangings, furniture coverings, etc.

   2. a machine-woven reproduction of true tapestry.

   3. → needlepoint.

   –verb (t) (tapestried, tapestrying)

   4. to furnish, cover, or adorn with tapestry.

2. The ordinary signification of a word is not exclusively confined to its dictionary definition. Rather, it is discerned by considering the ordinary meaning it possesses to people in Australia who purchase, consume or trade in the relevant goods or services. The word ‘tapestry’ is well-known and has a commonly understood meaning as per the definitions at [12] of this decision. However, in the context of the Identified Services, the relevant audience would be unlikely to construe ‘tapestry’ as only denoting a specific object. Rather, they would be cognisant that ‘tapestry’ is an art form which can constitute the subject matter of an event. This is akin to other art forms such as painting, music, poetry, drawing or photography which all frequently form the subject matter of events. This broader meaning would be evident given that live exhibitions, functions, conferences, conventions, seminars and meetings are invariably conducted on a subject matter. Indeed, an intrinsic purpose of convening such events is to gather likeminded people and the subject matter of an event thus forms a pivotal characteristic of its promotion.

3. In my view, the ordinary signification of the Trade Mark is immediately apparent – it simply indicates the subject matter of the Identified Services. Purchasers, consumers and traders in Australia of the Identified Services would readily understand that when the Trade Mark is used in relation to a live exhibition, it describes an event at which exhibitors display tapestry collections, demonstrate tapestry techniques or otherwise present the art form of tapestry. The word ‘tapestry’ would be perceived as describing the subject matter of the Identified Services. Similar reasoning would equally apply to services for arranging and conducting functions, conferences, conventions, seminars and meetings as particularised within the Identified Services.

4. The Applicant’s Submissions emphasise that the Identified Services are ‘live’ exhibitions. According to the Applicant, a ‘live’ exhibition differs from a ‘standard fixed exhibition’ because the former relates to interactive or moving displays whilst the latter refers to exhibitions where artworks are displayed.[6] This distinction is highlighted as the ordinary signification of the Trade Mark must be considered in the context of the Identified Services. Even if this distinction is accepted, a ‘live’ exhibition in which tapestry forms the subject matter is nevertheless possible in many forms. For example, a ‘live’ exhibition of tapestry may entail interactive demonstrations of tapestry techniques, discussion panels on the subject matter of tapestry and/or tapestry workshops wherein consumers can participate in creating a tapestry. Likewise, ‘live’ exhibitions may incorporate evolving digital technologies such as the exhibition of tapestry collections whereby consumers are able to interact with tapestry by zooming, rotating or otherwise manipulating an electronic version. Consequently, the alleged demarcation between ‘live’ and ‘standard fixed exhibitions’ does not alter the ordinary signification of the Trade Mark.

Other traders

[6] Applicant’s Submissions, [2.6].

1. Pursuant to Cantarella, the next question to be determined is whether other traders would legitimately desire to use the Trade Mark for the sake of its ordinary signification in respect of their own services.

2. The Applicant’s Submissions contend that the examiner’s research demonstrates other traders are not using the Trade Mark in respect of the Identified Services. Relevantly, the Applicant criticises the examiner’s research methodology and submits that the research fails to demonstrate any connection between the Trade Mark and the Identified Services. To reinforce the absence of use by other traders of the Trade Mark, the Applicant’s Submissions annex a list of 30 results from its own internet-based search of the term ‘tapestry “live exhibition”’. On this basis, the Applicant concludes that other traders are not likely to wish to use the Trade Mark.

3. I will not be drawn into analysing the merits of the criticism levelled at the examiner’s research methodology because, in the present circumstances, it ultimately distracts from the enquiry at hand. While internet-based searches for the word ‘tapestry’ may have some utility in demonstrating the likelihood of other traders wanting to use a term, the results returned are by no means determinative in relation to whether a ground for rejection under s 41 is warranted. This is because whether a trade mark is inherently adapted to distinguish the relevant goods or services is based on the nature of the trade mark itself.[7] As such, the existence of use by other traders of the Trade Mark in the course of trade is an ancillary consideration to the ordinary signification it possesses. To this end, Murphy J’s observations in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited are apposite:

   [I]t is not necessary … to establish that the trade mark is required by other traders. It is enough if innocent other traders want to use it. For example, in Clark Equipment at 513 to 514 Kitto J spoke of the ‘desire’ of other traders to use the same mark, and said that traders may ‘think of the word and want to use it’. In Burger King at 425 Gibbs J took the reference to ‘likelihood’ by Kitto J as a reference to whether another trader ‘might’, without improper motive, want to use the mark.[8]

   [7] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7].

   [8] [2014] FCA 373, [200] (emphasis in original).

4. The Applicant’s Submissions also refer to Campbell Soup Company[9] in which the delegate determined that the word ‘uncanned’ had no ordinary signification in respect of information services on food and food production in Class 43. The Applicant contends this decision shares parallels to the present matter and thus the Trade Mark should likewise proceed to acceptance. I do not consider this decision to be analogous and it is readily distinguished on the basis that the services presently under consideration differ, the Trade Mark is a dictionary defined word and ‘tapestry’ is clearly not an ‘unnatural term’[10] which possesses an ‘awkward nature’.[11]

   [9] [2019] ATMO 84.

   [10] Ibid [15].

   [11] Ibid [23].

5. The word ‘tapestry’ is an apt and ordinary way of describing a characteristic of the Identified Services. It is wholly descriptive of the potential subject matter of live exhibitions, functions, conferences, conventions, seminars and meetings. There is nothing allusive or metaphorical about the Trade Mark. I consider it likely that other traders who are arranging and conducting live events about tapestry may think of and would legitimately desire to use the Trade Mark or some mark nearly resembling it. Accordingly, the Trade Mark is not to any extent inherently adapted to distinguish the Identified Services.  

6. The Applicant has not filed evidence of use of the Trade Mark despite invitations to do so both at the examination stage and prior to the hearing. However, two additional lines of argument were advanced in the Applicant’s Submissions regarding the Trade Mark’s inherent adaptation to distinguish the Identified Services – namely, 1) the existence of ‘comparable trade marks’[12] on the Australian trade marks register (‘Register’) and 2) the registration of the Trade Mark in foreign jurisdictions. Although not strictly necessary to do so given a ground for rejection under s 41(3) exists, I will briefly comment below on each.

   [12] See Australian trade mark registration numbers 726436 (‘BIG RED CAR’), 833120 (‘FABRIC’), 1713440 (‘VINYL’) and 1914085 (‘Chocolate for the imagination...’). 

7. The Applicant submits that the ‘comparable trade marks’ achieved registration without any distinctiveness objections being raised during examination. As such, consistent examination practice dictates that the Trade Mark should be afforded similar treatment. Naturally, consistency in decision making within the Trade Marks Office is desirable. However, the probative value of comparing the Trade Mark with selectively chosen trade marks from the Register is limited, especially when reliance is placed on such a minute sample size. In any event, each trade mark application must be assessed on its own merits based on the circumstances that existed at the time of examination and in accordance with the relevant legislation. To this end, the state of the Register does not override the application of the established tests for determining distinctiveness. It follows that the mere existence of these purportedly ‘comparable trade marks’ does not alter my view that the Trade Mark is not to any extent inherently adapted to distinguish the Identified Services.

8. Foreign jurisdictions in which registration of the Trade Mark has been achieved by the Applicant were also listed in the Applicant’s Submissions. It was stated that no distinctiveness objection was raised to the registration of the Trade Mark in any of these foreign jurisdictions.[13] Reference was subsequently made to Unilever PLC [2001] ATMO 39 (‘Unilever’) wherein the delegate observed:

   I should allow for the pattern of overseas registrations. Individually, no one of them is decisive. However, if it is said that the matter approaches the borderline, it would be difficult to justify placing additional obstacles in the way of a trade mark that is already accepted in comparable jurisdictions under analogous circumstances. I will accept Ms Thilo's advice that the trade mark has been accepted in the United Kingdom and for the Principal Register in the USA - in which country is located the city named after the bird in question - without evidence of use.

   [13] Applicant’s Submissions, [2.17].

9. I acknowledge that the list of foreign jurisdictions where the Trade Mark has been registered is lengthy but its overall relevance to the present matter is limited. First and foremost, the Trade Mark is to be assessed under Australian trade mark law which can then be informed by supplementary considerations such as registrations in foreign jurisdictions. As the delegate’s observation in Unilever makes clear, the significance of the registrations in foreign jurisdictions is contingent upon the matter approaching ‘the borderline’. For the reasons discussed above, I do not consider the present circumstances to be in the vicinity of a borderline matter. Consequently, the existence of these registrations in foreign jurisdictions has limited bearing on whether the Trade Mark is inherently adapted to distinguish the Identified Services in Australia.

Decision

1. Section 33 of the Act provides:

   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.

   Note: For this Act see section 6.           

   (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.

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

   Note: For applicant see section 6.

2. I am satisfied on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under s 41 of the Act.

3. On 31 January 2020, I informed the Applicant’s representative that it was my intention to reject trade mark application number 1903289 unless the Claimed Services were amended as follows:

   Class 41: Entertainment services in the nature of presenting live dance, variety and musical performances; nightclub services; health club services, namely, providing instruction and equipment in the field of physical exercise; arranging and conducting of live exhibitions, functions, conferences, conventions, seminars and meetings in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes; theatre and opera reservations

4. On 10 February 2020, the Applicant’s representative informed IP Australia of the Applicant’s agreement to the amendments set out in [27] of this decision. The Claimed Services have been amended.

5. Accordingly, I accept for possible registration trade mark application number 1903289 for the amended specification as set out in [27] of this decision.

Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
13 February 2020