In-Telegence Pty Ltd, Re

[1994] ATMO 97

TRADE MARKS ACT 1955

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

Re:Application number 603075 to register a trade mark in the name of IN-TELEGENCE PTY. LTD.

Application No. 603075 was lodged by IN-TELEGENCE PTY. LTD. (the applicant) on 24th May, 1993, for the trade mark StockWatch in respect of services subsequently amended to: "real time stock market information services using the telephone as the delivery mechanism", in class 36.

In a report of 13th June, 1993, the examiner raised an objection to registrability of the applicant's mark in terms of paragraphs 24(1)(c), (d) and (e) of the Act on the grounds that the mark has a direct reference to the character or quality of the services by describing them as stock market observation/information services.  In the same report, she advised the applicant that the objection would be withdrawn if the applicant agreed to amend the application to Part B and provided a consent to disclaim the words STOCK and WATCH separately.  The applicant instructed to have the application amended and the disclaimer endorsement entered, as proposed by the examiner.  On 20th July, 1993, however, the examiner issued a further report informing the applicant that, on reconsideration of the mark's registrability, the mark did not meet the requirements of section 25, being neither a distinctive mark, nor one capable of becoming distinctive.  She further explained that, since the mark comprises directly descriptive words, it is one which other traders are likely to use in describing their similar services.  In response, having waived its right to a hearing and requested a decision on the written record, the applicant drew an analogy of the subject mark with the marks FREECALL and FREEFAX which, it submitted, should not have been accepted for registration on grounds similar to those raised against the mark of the present application.

Decision

Part B of the Register

Sub-section 25(1) of the Act reads:

(1)  A trade mark is registrable in Part B of the Register, if it is distinctive, or is not distinctive but is capable of becoming distinctive, of goods or services in respect of which registration of the trade mark is sought and with which the applicant for registration is or may be connected in the course of trade.

For a mark to be registable in Part B of the Register it must be determined whether it will, at some time in future, meet the requirements of sub-section 26(2), namely, by inherent distinctiveness, or by a combination of inherent adaptability to distinguish and distinctiveness in fact.  These criteria were set out in Burger King Corporation v. The Registrar of Trade Marks (1974) 128 CLR 417, where Gibbs J. explained at p. 424:

"... in deciding whether a trade mark is capable of becoming distinctive it becomes necessary to consider whether the trade mark is capable of meeting in future the tests stated in s. 26(2).  That sub-section requires two matters to be considered, inherent adaptability to distinguish and distinctiveness in fact acquired by use or otherwise."  

To decide whether a mark is adapted to distinguish, I must consider whether or not the mark is of such nature that other traders are likely to use it, without improper motive, upon or in connection with similar services "in any manner which would infringe a registered trade mark granted in respect of it" - Clark Equipment Co. v. Registrar of Trade Marks (1964) 111 CLR. 

In the Macquarie Dictionary, the word WATCH is defined, inter alia, as a verb: "to be on the lookout, look attentively, or be closely observant, as to see what comes, is done, happens, etc"; "to keep under attentive view or observation, as in order to see or learn something", and as a noun, inter alia: "close, constant observation for the purpose of seeking or discovering something".  I note also that "stock watcher" is a:

"computerized service that monitors all trading activity and movement in stocks listed on the New York Stock Exchange.  The system is set up to identify any unusual activity due to rumors or manipulation or other illegal practices.  The stock watch (my emphasis) department of the NYSE is prepared to conduct investigations and to take appropriate action, such as issuing clarifying information or turning questions of legality over to the Securities and Exchange Commission."

This definition has been extracted from Barron's Dictionary of Finance and Investment Terms, 3rd ed.

Applying the now ingrained criterion to the applicant's mark to ascertain whether, to an ordinary person, the mark, when used in conncetion with the services, would describe, indicate or call to mind either the nature of the services or "some attribute that they possess", as expressed by Dixon C.J. in Mark Foy's Ltd. v. Davies Coop & Co. Ltd. 95 CLR 190, at p. 195, and having regard to the explanation of Dixon C.J. in Howard Auto-Cultivators Ltd. v. Webb Industries Pty. Ltd. (1946) 72 CLR 175 at p. 184, that by 'ordinary persons' is meant a "section of the community following a particular pursuit or possessing particular vocation or technical status"; it seems to me that, in view of the above definitions, persons concerned with and interested in the stock market would see the words STOCK WATCH, in their application to the services, as being stock market monitoring services which provide information, by telephone, relating to the trading of stocks and shares. To those familiar with the New York Stock Exchange, the words would indicate a department of this exchange which deals with the activities as described above.

Accordingly, the words STOCK WATCH refer directly to the character of the services of the present application, and are generic.  In my opinion, hardly any other combination of words could be chosen for describing so aptly the kind of services offered by the applicant.  In view of the nature of such words, I believe that any trader in similar services should be free to describe his services as "stock watch".   I therefore find that the combination of the two words STOCK WATCH is in no way novel or unusual so as not to be legitimately required by other traders to describe their services. Thus, the condition that the mark be registered subject to a disclaimer that the registration gives no right to the separate exclusive use of the words, which was initially suggested by the examiner, is not appropriate, and would not permit registration of a mark which has been found to be unregistrable.  Consequently, I have found that the applicant's mark is not adapted to distinguish the applicant's services from those of other traders. 

The two trade marks FREECALL and FREEFAX, to which the applicant has referred, are still pending and have attracted objections in terms of section 24 of the Act.

As the applicant has not lodged any evidence concerning use of the mark in question, I am not required to assess the mark in light of the second factor for consideration, that of distinctiveness in fact.

Conclusion
In view of the foregoing, I find that, since the words STOCK WATCH fail to meet the requirements of s. 25, the mark is not registrable in Part B of the Register.  Accordingly, I refuse the application.

Vija Zars

Senior Examiner
9 December, 1994