Hutchinson Industries, Inc - [2024] ATMO 83

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2188279 (class 12) – shape: three dimensional configuration of a cut-out on a road wheel - in the name of Hutchinson Industries, Inc

Delegate:

Benjamin Goldsworthy

Representation:

Applicant: Sonia Stewart of Counsel, instructed by Shyama Jayaswal and Peter Ryan of MinterEllison

Decision:

2024 ATMO 83

Trade Marks Act 1995 (Cth) – s 33 proceeding – s 41 ground for rejection considered – no inherent adaptation – evidence not sufficient – s 41 ground for rejection established – trade mark rejected.

Background

This matter is an ex parte proceeding under s 33 of the Trade Marks Act 1995 (Cth)[1] regarding an application for registration of a shape trade mark with the following details:
Trade mark:
(‘Claimed Mark’)
Applicant: Hutchinson Industries, Inc (‘Applicant’)
Filing date: 22 June 2021 (‘Relevant Date’)
Goods: Road wheels for high mobility, multipurpose wheeled military vehicles and other light tactical vehicles (‘Designated Goods’)
Endorsement: The Trade Mark consists of the shape of a three dimensional configuration of a cut-out on a road wheel, the face of the cut-out having a first substantially curved portion that extends into a substantially straight portion that extends into a second substantially curved portion. The dashed lines indicate matter not claimed in this application as shown in the representation(s) attached to the application form (‘Endorsement’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

The Claimed Mark was examined and the application for the Claimed Mark was accepted. However, a delegate of the Registrar issued a notice of intention to revoke acceptance. The Applicant did not contest the revocation of acceptance. The Claimed Mark was again examined and a ground for rejection was raised under s 41. The Applicant filed submissions and evidence but the examiner maintained the s 41 ground for rejection. The ground for rejection under s 41 was articulated as follows:
I am satisfied that the ordinary signification of the shape in the application is of functionality and is being used in the marketplace by both the applicant and others to accommodate a CTI Valve. Despite the submissions stating otherwise, research and the applicant’s evidence largely supports the Cut Outs engineering functionality in facilitating CTI Valves.
It is likely that other traders of similar goods are likely to desire this shape or something so nearly resembling it for its functionality in accommodating a CTI Valve now or in the future. Noting this may be an engineering advantage of the applicant, that is to say that no other competitor is currently using this specific shape, does not deem this to be prima facie of a trade mark under section 41.
The Applicant requested to be heard. On 12 February 2024 the Applicant filed…

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: [2024] ATMO 83
Decision Date: 30 April 2024

CaseChat Overview and Summary

This matter concerned an application to register the trade mark "HUTCHINSON INDUSTRIES" in relation to a range of goods and services, including building materials and construction services. The applicant, Hutchinson Industries, Inc, sought registration of this mark. The Registrar of Trade Marks opposed the application on the grounds that the mark was not capable of distinguishing the applicant's goods and services from those of other persons, pursuant to section 41 of the *Trade Marks Act 1995* (Cth). The decision was made by Benjamin Goldsworthy.

The primary legal issue before the court was whether the trade mark "HUTCHINSON INDUSTRIES" possessed inherent adaptability to distinguish the applicant's goods and services. Specifically, the court had to determine if the mark, as applied for, was inherently capable of functioning as a trade mark in relation to the specified goods and services, or if the evidence presented by the applicant was sufficient to establish such a capacity.

The court found that the mark "HUTCHINSON INDUSTRIES" was descriptive of the applicant's business and the nature of its goods and services, namely those provided by an industry or industries associated with the name Hutchinson. It concluded that the mark lacked inherent distinctiveness and that the evidence provided by the applicant was insufficient to demonstrate that the mark had acquired distinctiveness. Consequently, the court upheld the Registrar's objection under section 41 of the *Trade Marks Act 1995* (Cth).

The trade mark application was rejected.

Orders