Hutchinson Industries, Inc
[2024] ATMO 83
•30 April 2024
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 written submissions (‘Applicant’s Submissions’). On 15 February 2024, I heard the matter. Sonia Stewart of Counsel instructed by Shyama Jayaswal and Peter Ryan of MinterEllison appeared on behalf of the Applicant.
I note that this is not a review the examiner’s decision and rationale and the ground for rejection will be considered afresh. In deciding this matter, I have considered all the submissions and evidence provided by the Applicant in respect of this application, including those made during examination. I have decided the matter as a delegate of the Registrar of Trade Marks.
Evidence
The evidence in this matter consists of the following (collectively, ‘Declarations’):
- a declaration of Mark R Young, Vice President of Value Chain at the Applicant, dated 7 February 2024 (‘Young-1’), together with Exhibits MRY-1 to MRY-6;
- a declaration of Coll S Haddon, Vice President of Business Development for Defence at the Applicant, dated 3 February 2024 (‘Haddon’).
- a declaration of Andrew Barker, Chief Executive Officer of the Applicant, dated 31 August 2023, with Exhibits AB-1 and AB-2 (‘Barker’);
- a declaration of Mark R Young dated 19 May 2023 (‘Young-2’) together with Exhibits MRY-1 to MRY-6;
- a declaration of Mark R Young dated 11 March 2021 (‘Young-3’) together with Exhibits MRY-1 to MRY-7;[2]
- a declaration of Michael Bruce Marshall, National Line Product Line Manager – Military for Marathon Tyres Australia Pty Ltd (‘Marathon’), dated 10 June 2020 (‘Marshall’), together with Attachments 1 - 7;[3] and
- a declaration of Mark R Young dated 5 May 2020 (‘Young-4’) together with Attachments 1 to 8.[4]
[2] Exhibit MRY-3 to Young-2.
[3] Exhibit AB-2 to Barker.
[4] Exhibit MRY-1 to Young-2
The Applicant is a military wheel sub-contractor and supplies military wheels on a tender basis to other military contractors who manufacture and assemble completed military vehicles for supply to the Australian Government. Throughout the Declarations the Claimed Mark is said to be recognised as designating the Applicant as a trade source for the Designated Goods. The Applicant’s distributor in Australia is Marathon.
The Designated Goods are said to be highly specialised wheels for military and tactical applications. Three tenders which have featured goods bearing the Claimed Mark appear to have occurred in Australia in 2005, 2012 and 2016. No documentation is otherwise provided regarding the contents of the tenders. The Claimed Mark also appears in a magazine dated in 2009.[5]
[5] Attachment 8 to Young-4.
Goods bearing the Claimed Mark are said to be promoted in Australia and/or to Australian consumers at Australian and international trade shows. This has included the exhibition known as ‘EUROSATORY’ in France in the years 2014[6] and 2022[7] and the Land Forces Exposition in Australia in 2014, 2016, 2018, 2021 and 2022.[8] Designated Goods bearing the Claimed Mark also apparently appeared at the annual meeting for the Association of the United States Army,[9] which is said to be attended by exhibitors from overseas and Australia. Examples of the appearance of the road wheels bearing the Claimed Mark that would have appeared at the trade shows are also provided.[10] One example of the Claimed Mark appearing at a trade show is reproduced at Schedule 1 to these written reasons.
[6] Exhibit MRY-3 to Young-1.
[7] Exhibit MRY-4 to Young-1.
[8] Young-2, [19].
[9] Young-1, [6].
[10] Young-1, [6]; Exhibit MRY-6 to Young-2; and Exhibit MRY-4 to Young-3. See also Young-2, [19(b)].
The Applicant’s sales of Designated Goods bearing the Claimed Mark worldwide appear to be significant.[11] The total sales value since on or around 1 July 2005 declared for Australia also appears significant.[12] However, I note that no context is provided for the volume of Designated Goods, market share or how the sales figures should be contextualised.
[11] Young-1, [3] and Exhibit MRY-2 to Young-2.
[12] Young-2, [17] and Young 3, [20(e)].
The Declarations also in part focus on the functionality of the Claimed Mark.[13] Much of the discussion focusses on what are termed central tyre inflation systems (‘CTIS’). A CTIS allows for the inflation and deflation of tyres on vehicles, sometimes by way of a valve through the wheel. This enables maneuverability and traction in different contexts. A CTIS valve has a particular use for tactical military vehicles which require varied maneuverability.
[13] Young-1, [10]-[19] and Young-2, [10]-[12].
Haddon declares that, ‘[the Applicant] is the only wheel manufacturer in the global market which uses the particular [Claimed Mark] shape in relation to [the Designated Goods]’.[14] The Declarations also assert the uniqueness of the Claimed Mark compared with other wheel cut-outs and CTIS valve bearing goods.[15] Several examples of competitor’s CTIS valves are provided, some using a wheel cut-out.[16]
[14] Haddon, [11].
[15] For example, Barker, [14].
[16] Barker, [13].
The Applicant has obtained trade mark registrations in various overseas jurisdictions for shapes which appear to be the same as the Claimed Mark.[17]
Consideration
[17] Exhibit MRY-2 to Young-1.
Section 41
Section 41 relevantly provides:
41Trade 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.
Note 2: For goods of a person and services of a person see section 6.
Inherent adaptation to distinguish
A trade mark’s inherent adaptation to distinguish should be 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.[18]
[18] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J); Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ).
The principle equally applies to shape trade marks as it does to other types of signs.[19] In Chocolaterie Guylian NV v Registrar of Trade Marks Sundberg J stated:
In cases where a shape depicts a known object or concept (cf wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar. An important consideration in all of this is the nature of the goods for which the shape mark is to be used.[20]
[19] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 [146].
[20] Chocolaterie Guylian NV v Registrar of Trade Marks, [75] (‘Guylian’).
In applying the test, I must consider the likelihood of other traders desiring to use the Claimed Mark, or something nearly resembling it, in connection with their own goods.[21]
[21] W&G Du Cros Ltd’s Appn (1913) 30 RPC 660, 672 (Lord Parker) (emphasis added).
The Claimed Mark is the shape 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 Applicant submits and the Declarations broadly state that:
- It is not necessary for a wheel rim to have cut-out in the wheel rim for a CTI valve to be present and utilised; and
- If a cut-out is used by a particular manufacturer on a wheel rim, the cut-out design is arbitrary and can be of any desired shape, and accordingly cut-out designs from different manufacturers come in a variety of different shapes; and
- Different manufacturers use different shapes of wheel cut-outs on their highly specialised military wheels/wheel rims and accordingly this operates as a material point of difference in the relevant trade to distinguish the wheels manufactured by one trade from those of other traders.[22]
[22] Applications Submissions, [45].
In Sebel Furniture Limited v Acoustic & Felts Pty Limited Foster J stated:
In order to function as a trade mark, the shape must be something which is extra or which is added to the inherent form of the particular goods as something distinct which can denote origin. A shape cannot function as a trade mark if it is something that other traders may legitimately wish to use either because it is inherent to the particular goods (ie it is of their nature) or because it provides some technical or functional benefit to the goods.[23]
[23] [2009] FCA 6, [144] (original emphasis).
Cut-outs on a road wheel can be a variety of shapes and sizes and it is not always necessary for a cut-out to be of a particular shape to accommodate a CTIS valve, or even for there to be a cut-out for a CTIS to function. Young-1 declares that the Claimed Mark was ‘adopted in part for the practical purpose of accommodating the CTI Valve used in road wheels’.[24] Barker declares that ‘differing and particular shapes of “Wheel Cut Outs” used by [the Applicant] and competitors do not have a functional purpose, other than to provide an opening for a valve for which there are many options’.[25] Young-1 declares that the Claimed Mark ‘can be used with a number of different valves’.[26] My reading of the Applicant’s evidence is that the Claimed Mark does have an engineering advantage. The shape of the inlet is a byproduct of functional engineering considerations and benefits, in particular to accommodate CTIS valves of a variety of shapes and sizes. The shape of the Claimed Mark creates space on the face of a road wheel to accommodate a variety of CTIS valves. The fact that the representations of the Claimed Mark depict disclaimed representations of airholes in close proximity to the cut-out provides some confirmation of that functionality.
[24] Young-1, [2(b)].
[25] Barker, [12].
[26] Young-1, [16].
As with descriptive words, the fact that there are different shapes available to other traders to create the same functionality does not necessitate a conclusion that Claimed Mark is inherently adapted to distinguish. There may be cases where a shape may distinguish or differentiate the goods as goods, but not as the trade source.[27] The ultimate question I must consider is whether the Claimed Mark, or something nearly resembling the Claimed Mark, is one which other traders are likely to desire to use in the ordinary course of their business without improper motive.[28]
[27] Mayne Industries v Advanced Engineering Group Pty Ltd [2008] FCA 27 (Greenwood J).
[28] Guylian (n 20) [75].
The Claimed Mark is a basic shape of a cut-out portion of a wheel and conveys the meaning of a cut-out on the surface of the Designated Goods. Cut-outs are common elements of wheel design, as are wheels having a face including a substantially curved portion that extends into a straight portion that then extends into a second curved portion. I do not agree with the Applicant’s characterisation that the Claimed Mark is a ‘wholly concocted or ambiguous shape’.[29] Although the evidence shows that road wheels for military and tactical applications do not have one inherent form other than perhaps the overall round shape of a wheel, some do have cut-outs with two curved portions with straight portions between and/or after the curves.[30] These possess characteristics which are reminiscent, to a greater or lesser degree, of the features of the Claimed Mark. I would also, for example, contrast the shape in Toyota Jidosha Kanushiki Kaisha[31] being the front grille of a motor vehicle that was considered to have some inherent adaptation to distinguish because of visually appealing features in the shape making it ‘more arresting in appearance’.[32] The Claimed Mark’s features are not visually striking or arresting in appearance, and are also of low prominence on the Designated Goods.
[29] Applicant’s Submissions, [102], referring to Guylian (n 20).
[30] Barker, [13].
[31] [2022] ATMO 86 (Hearing Officer K Brown).
[32] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721, [25] (Black CJ, Sundberg and Finkelstein JJ)
Other traders sell road wheels for military and tactical applications which incorporate in their shape simple accommodative cut-outs for CTIS valves, or cut-outs to accommodate other tools and fittings. Furthermore, other traders are also likely to sell Designated Goods which feature basic shapes being cut-outs that nearly resemble the Claimed Mark. I consider it likely that other traders might want to depict a shape of a three-dimensional configuration of a cut-out on a road wheel, with the face of the cut-out having a curved portion extending into a straight portion, which then extends into curved portion. On my assessment other traders are likely to desire to use the Claimed Mark, or a sign nearly resembling it.
The Applicant submits that its overseas registrations are indicative of the Claimed Mark’s registrability in Australia.[33] The assessment of distinctiveness of trade marks differs from country to country. I note that the same shape was filed by the Applicant in the United States and it was there not considered to be inherently distinctive.[34] The fact that the Applicant was required to demonstrate acquired distinctiveness in the United States is consistent with my finding that the Claimed Mark is functional in nature and is not inherently adapted to distinguish.
[33] These are Belarus, India, Korea, Kazakhstan, South Africa and the United States of America.
[34] According to the certificate of registration the trade mark appears to have been accepted in the United States under §2(f), 15 USC § 1052, because of use of the trade mark.
For the reasons given above, I am satisfied that the Claimed Mark is not to any extent inherently adapted to distinguish the Designated Goods.
Evidence of the Applicant’s use
I next consider the Applicant’s use of the Claimed Mark prior to the filing date and determine whether the Claimed Mark has been used to such an extent that the Claimed Mark does in fact distinguish the Designated Goods as being those of the Applicant.
The first use in Australia is said to have been in 2005. This is likely to refer to a tender noted as having been in Australia for integration in the Thales Bushmaster vehicle.[35] Tenders in 2012 for the Supacat HMT and in 2016 for the Oshkosh Striker are also mentioned.[36] Exhibitions at the Land Forces Exposition from 2014 to 2022 are also mentioned throughout the Applicant’s evidence. Whilst the sales figures provided by the Applicant both for Australia and globally appear to be substantial, there is no market contextualisation provided. Magazine advertising is also provided with no context about the distribution rate in Australia and whether advertising is aimed at Australian consumers.
[35] Young-2, [20(e)].
[36] Ibid.
The Applicant has provided declarations from persons who have experience in the niche market for the Designated Goods, being road wheels for military and tactical applications.[37] I note that these persons are all employees or persons related to the Applicant. The fact that these declarants associate the features of the Claimed Mark with the Applicant does not of itself show the capacity of the Claimed Mark to distinguish one trader’s goods from those of another trader. The association must be one which results from the use of the Claimed Mark as a trade mark.[38] Ultimately, I must decide whether the evidence establishes that the Claimed Mark is acting, in its own right, as a badge of origin in relation to the Designated Goods.
[37] For example, Haddon, [10].
[38] Woolworths Limited v BP Plc (No 2) [2006] FCAFC 132, [117] (Heerey, Allsop and Young JJ).
It is important to note that in the individual examples of use of the Claimed Mark, the Claimed Mark is always represented alongside other trade marks, such as those containing the word ‘Hutchinson’ (‘Hutchinson Label’).[39] It is possible for a sign to operate as a trade mark even alongside other trade marks.[40] In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd the High Court commented on situations where several signs are used in combination stating, ‘[w]here there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also’.[41] In RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd a trade mark, used in combination with other trade marks, was found to have been used as a trade mark in part because it was used, ‘to provide a visual prompt to the consumer’.[42]
[39] For example, Exhibit MRY-3 to Young-1. See also Schedule 1 to these written reasons.
[40] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’); RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10, [111] (Nicholas, Burley and Hespe JJ) (‘RB (Hygiene Home)’); Guylian (n 20) [97]; Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [133] (Kenny J); Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2014) 106 IPR 291, [245] (Murphy J).
[41] Self Care (n 40) [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[42] RB (Hygiene Home) (n 40) [93].
On an objective assessment of the evidence, other signs such as the Hutchinson Label, appear to do the work of distinguishing the Designated Goods from other traders. I do not consider it likely that upon seeing the Claimed Mark a consumer of the Designated Goods would perceive it as having the character of a trade mark. The use of the Claimed Mark, such as at the trade shows or in the promotional publications, does not provide a visual prompt to the consumer of a badge of origin. The consumer is likely to view the Claimed Mark as an illustration or representation of a partial feature of a road wheel (if that consumer notices the Claimed Mark as aside from all other visual aspects of the Designated Goods). Nothing in the evidence demonstrates the promotion or use of the Claimed Mark as apart from the Designated Goods. There is no deliberate attempt to educate the consumer of the trade mark significance of the Claimed Mark.
I am satisfied that at the Relevant Date the Claimed Mark did not in fact distinguish the Designated Goods based on the extent of the Applicant’s use.
For completeness, I note that even if the Claimed Mark does have some inherent adaptation to distinguish in the way asserted by the Applicant, I am satisfied that, after considering the level of inherent adaptation of the Claimed Mark, the extent of the Applicant’s use of the Claimed Mark, and other relevant circumstances, the Claimed Mark does not and will not distinguish the Designated Goods.
Accordingly, the s 41 ground for rejection has been established.
Decision
Section 33 of the Act provides:
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.
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.
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.
I am satisfied that there is a ground for rejecting the Claimed Mark under s 41. In accordance with s 33(3), I reject trade mark application number 2188279. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 April 2024
Schedule 1
0
12
4