International Registration Designating Australia number 1483631 (Australian trade mark number 2031986) and International Registration Designating Australia number 1493741 (Australian trade mark number 2045849) in...

[2021] ATMO 126

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia number 1483631 (Australian trade mark number 2031986) and International Registration Designating Australia number 1493741 (Australian trade mark number 2045849) in Class 9– Shape of hand grip and stand for mobile devices- in the name of PopSockets LLC.

Delegate:	Blake Knowles
Representation:	Holder: Mr Peter Creighton-Selvay of counsel, instructed by Gadens Lawyers.
Decision:	2021 ATMO 126 Trade Marks Act 1995 (Cth) – ex parte – section 41 – trade marks not capable of distinguishing– protection not extended.

Background

1. This is a decision on examination of two International Registrations Designating Australia (IRDAs) filed by PopSockets LLC (‘Holder’). The first IRDA was filed under International Registration Number 1483631 (Australian trade mark number 2031986) (‘986 Mark’). The second IRDA was filed under International Registration Number 1493741 (Australian trade mark number 2045849) (‘849 Mark’).  Both the 986 Mark and the 849 Mark have a priority date of 4 January 2019[1] (‘Relevant Date’) and seek protection for the following goods:

   Class 9: Hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players.

   (‘Goods’)

   [1] The 986 Mark claims convention priority from United States trade mark application number 88249974 and the 849 Mark claims priority from United States trade mark application number 88249980.

2. The IRDAs seek to register two three dimensional shapes (‘Trade Marks’) which are shown below together with the accompanying endorsements proposed by the Holder:

986 Mark

Endorsement: The mark consists of a three-dimensional product configuration of a mobile device grip and stand featuring a tapered mid-section. The mark includes the following design features: a top piece and a base being roughly equal in diameter, the top piece being roughly double the thickness of the base; and an inverted conical trunk connecting the top piece and base and featuring a specific design, namely, side walls having a number of contours and embellishments, including four inward flares and four outward flares.

849 Mark

Endorsement: The mark consists of a three-dimensional product configuration of a mobile device grip and stand featuring a tapered mid-section. The mark includes the following design features: an inverted conical trunk connecting the top piece and base and featuring a specific design, namely, sidewalls having a number of contours and embellishments, including four inward flares and four outward flares.

1. I note that the only difference between the 986 Mark and 849 Mark appears to be the statement in the endorsement of the 986 Mark that the top piece and base are of equal diameter, with the top being double the thickness of the base. This difference in the Trade Marks is largely immaterial in determining their registrability.

2. As required by the Trade Marks Regulations 1995 (Cth)[2] the Trade Marks were examined. The examiner raised grounds for rejection under s 41 on the basis that the shapes are predominantly functional in relation to the goods and therefore were not capable of distinguishing.

   [2] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) or regulation of the Trade Marks Regulations 1995 (Cth).

3. The Holder requested a hearing and was subsequently heard by a delegate of the Registrar on 18 March 2021. Mr Peter Creighton-Selvay of counsel appeared by video conference on behalf of the Holder, instructed by Kerry Awerbuch and Madeleine McMaster of Gadens Lawyers. The matter has subsequently been allocated to me, another delegate of the Registrar, for decision. I have formed my decision based on the evidence, written submissions, and oral submissions which were recorded at the hearing.

   Evidence

4. During examination, the Holder filed a declaration by its CEO, Mr David Barnett, made on 16 October 2020 with Exhibits DB-1 to DB-4 (‘Barnett 1’). Prior to the hearing, the Holder filed a second declaration of Mr Barnett, dated 10 March 2021, with Exhibits DB-5 to DB-7 (‘Barnett 2’).

5. In Barnett 1, Mr Barnett declares that he is co-inventor of an original invention patented under United States patent number 8,560,031 (‘031 Patent’), which relates to products sold under the brand name PopSockets. The subject of the 031 Patent was an extendable socket formed of accordions for attaching to portable media players or portable media player cases. In addition to the 031 Patent, the Holder is the owner of several other patents. Mr Barnett declares that none of the utilitarian or functional advantages disclosed by any of the patents is dependent on the design embodied in the Trade Marks.

6. Mr Barnett declares that the first ‘grip’ product he prepared for mass production performed all of the functional roles described in the 031 Patent, but with a significantly different shape. Mr Barnett indicates he never brought the first ‘grip’ product to market because he was unhappy with the aesthetic features. Mr Barnett states that the particular design embodied in the Trade Marks was chosen for aesthetic reasons. Mr Barnett also states that the shape represented in the Trade Marks is just one of many that are equally effective and feasible from a functional perspective and are cost effective to produce.

7. Mr Barnett states that stands, grips, and mounts that incorporate an accordion-like concept could be easily altered in any number of ways without affecting the functionality of the underlying product. For example, instead of a roughly conical trunk, it could take the shape of a pyramid, or the cone could be inverted so the broadest part of the cone is flush with the base rather than the top piece. Further, the angles of the sidewalls can vary to create a wider or narrower cone. Mr Barnett provides a number of alternative collapsible cone designs that all have different profiles to the Trade Marks, in addition to providing examples (contained in both Barnett 1 and Barnett 2) of other grips, stands, and mounts that can collapse or fold against the back of a mobile device when not in use. Such designs include hinged platforms, ring grips, finger straps, and deformable rubber strips, as per the examples given below:

8. Mr Barnett declares that the Holder is the owner of two corresponding United States trade mark registrations (‘US Marks’) in Class 9, namely:

   Trade Mark Number:   6005169 (serial number 88249974)

   Representation:  

   Description:  

   Color is not claimed as a feature of the mark. The mark consists of a three-dimensional configuration of a mobile device grip featuring a top piece and a base having roughly equal diameter, the thickness of the top piece being roughly double of that of the base; and an inverted conical trunk connecting the top piece and base and featuring a specific and non-essential design, namely, sidewalls having a number of contours and embellishments, including four inward flares and four outward flares. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.

   Trade Mark Number:                    6005170 (serial number 88249980)

   Representation:  

   Description:  

   Color is not claimed as a feature of the mark. The mark consists of a three-dimensional configuration of a mobile device grip featuring an inverted conical trunk connecting the top piece and base and featuring a specific and non-essential design, namely, sidewalls having a number of contours and embellishments, including four inward flares and four outward flares. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.

9. The US Marks are registered on the United States Principal Register on the basis that they have ‘acquired distinctiveness’, after being deemed not to be inherently distinctive.  

10. Mr Barnett also declares the Holder is the owner of numerous registered shape trade marks in other jurisdictions, including Chile, European Union, India, Korea, Mexico, South Africa, Turkey, and the United Arab Emirates.

11. In Barnett 2, Mr Barnett declares that the Goods were first released in the United States by the Holder in November 2013 and were released in the Australian market in 2017. Sales volume and revenue in the Australian market both before and after the Relevant Date are commercially significant, given the low cost of the Goods. Similarly, the Holder has spent a significant amount on international marketing (predominantly via Google and social-media) although no Australian market specific figures have been provided. The Goods are sold via the Holder’s own website and also through various major online and traditional retailers.

12. Mr Barnett refers to the significant media coverage that the Goods received in 2018 and 2019 prior to the Relevant Date, an illustrative example being an article of 8 February 2019 in Fortune Magazine titled ‘PopSockets IPO? This Philosophy Professor/CEO is Getting Ready’ where the author, Ms Sophie Alexander, states:

    Never heard of PopSockets? That’s OK, because you’ve probably seen its products on the back of a teenager’s phone. The Boulder, Colorado-based company offers the ubiquitous little plastic doorknobs (the highlighted version on its website right now features the Super Bowl champion New England Patriots), as well as smaller versions (PopMinis), mounts, wallets and cases. You can even design your own. The company’s success has been directly related to its presence on social media.

13. Mr Barnett states that in March 2019, the Holder started to observe a small number of third parties in Australia offering for sale and selling products which were similar or identical to the Holder’s products.  Mr Barnett opines that the majority of the third party products became available in Australia on or about March 2019, which coincided with significant marketing spend by the Holder and associated press coverage during 2018 and 2019.    

14. Mr Barnett also indicates that legal action has been taken against third parties selling competing products. I note the reference to a competing product sold under the SpinPop brand (pictured below), in relation to which the Mr Barnett states: “The Holder has previously been engaged in litigation with the owner of this brand on the basis that it infringes the Holder’s patents. However, the Holder does not consider the below product to be the same shape as the Trade Marks and it would not seek to enforce any rights in such Trade Marks (if registered)”

    [‘SpinPop Grip’]

15. Mr Barnett provides various articles which highlight the ubiquity of different types of phone grips and stands. Illustrative examples include articles titled ‘8 phone grips that make holding your device more comfortable – all under $15’[3], ‘Everyone Uses PopSockets, But We Like These Alternatives Instead’[4], and ‘Five best phone grips to stop smashed screens’[5].

    [3] Business Insider, 23 August 2019, Connie Chen.

    [4] Spy.com, 12 August 2019, Sarah Morlock.

    [5] The Guardian, 28 October 2019, Samuel Gibbs.

    Discussion

16. Section 41 requires that the Trade Marks be rejected if I am satisfied that they are not capable of distinguishing the Goods of the Holder from those of other traders. The Trade Marks are to be first assessed under s 41 having regard to their level of ‘inherent adaptation’ to distinguish. If the Trade Marks have sufficient inherent adaptation to distinguish the Goods, there will be no grounds for rejecting them under s 41. If I am satisfied that the Trade Marks do not have sufficient inherent adaptation to distinguish the Goods, I must then determine whether they have any inherent adaptation to distinguish. If the Trade Marks have no inherent adaptation, they must be rejected only if I am satisfied that that they did not in fact distinguish the Goods based on the extent of their use at the Relevant Date (s 41(3)). If the Trade Marks have some inherent adaptation to distinguish, they must be rejected only if I am satisfied due to the level of inherent adaptation of the Trade Marks, the extent of use of the Trade Marks at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Marks did not or would not distinguish the Goods (s 41(4)).

17. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’):

    His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend 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 connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[6]

    [6] (1964) 111 CLR 511, 514 (Kitto J).

18. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’), the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[7]

    [7] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

19. The Holder referred to the decision of the majority of the Federal Court in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (‘Kenman Kandy’)[8]. In that case, the court dealt with a trade mark consisting of a bug shape that was sought to be registered in respect of confectionery:

    [8] [2002] FCAFC 273 (French, Stone, and Lindgren JJ).

20. The Holder submitted that the authoritative paragraphs in Kenman Kandy are those of Stone J, with whom French J agreed. The Holder suggested that the examiner in maintaining the ground for rejection under s 41 had erroneously adopted the same minority reasoning of Lindgren J. I agree with the Holder that the authority of Kenman Kandy is to be primarily found in the decision of Stone J, including the following paragraphs highlighted by the Holder:

    147. In my opinion it is the absence of these associations and significations that makes a sign inherently adapted to distinguish one trader’s goods from those of another.  In other words the concept is negative not positive.  Support for this view can be found in the cases in which a trade mark has been found to be inherently adapted to distinguish. In Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 it was argued that the registration of a trade mark consisting of the words “Chifley Tower”, registered by the owner of a large office and retail building of that name, in respect of property management services and retail and office leasing services should be cancelled because, inter alia, it lacked the capacity to distinguish the services in respect of which it was registered. The Full Federal Court, applying the principles formulated by Kitto J in Clark Equipment, rejected this argument, stating at 251:

    “The Chifley Tower is not part of the common heritage in the sense that a town, suburb or municipality is. … There is not public policy against [the building owner] restricting those who have come to occupy space within its building as to the way in which they use its name in connection with goods they produce or services they provide.  That being so, it is not easy to see, in our view, why any separate public policy, of a kind identified by Kitto J, should apply so as to deprive the name selected by [the building owner] of a capacity to distinguish, in circumstances where there could be no legitimate reason for persons other than those carrying on business within The Chifley Tower to use its name in connection with their goods or services.”

    …       

    156. In the above examples the trade marks were held to be inherently adapted not because of any positive content but because they had no associations or significations that prevented them from being inherently adapted to distinguish a trader’s goods.  In addition they show, especially in the comments made in Mark Foy’s and Wella, that, at least in relation to word trade marks, it is not an obstacle to inherent adaptation that the trade mark is also designed to elicit a positive emotional response.  The fact that the “sign” that comprised the trade mark in those cases had a dual function was not seen to be inconsistent with the sign acting as a trade mark in respect of certain goods.  I see no reason why the attractiveness of a shape should be considered differently.  Moreover, I also see no reason why an invented shape should be regarded as different from an invented word in terms of assessing its inherent capacity to distinguish a trader’s goods.

    …

    162. A shape (or word) that is entirely concocted does not have the associations that would lead to confusion.  I do not regard such a shape as being part of the “great common” any more than does a concocted word or a novel combination of common words; see for example Mark Foy’s and Wella.  The learned primary judge drew a distinction between concocted words, which, he said, were possibly infinite in number and the possibilities for concoction of animal-like shapes, which, he said were finite.  With respect, I do not see the justification for this distinction.  If there is any distinction I would have thought the advantage of greater variety lay with the category of three dimensional shapes which may involve any number of combinations of planes, arcs, angles and so forth.

    163. Although the bug shape is suggestive of insect life it is not the shape of any specific insect or bug.  Indeed, were it not for the description given by the appellants, it might as easily be seen as some extra-terrestrial object or space equipment such as a modified lunar landing module.  Registration of the bug shape as a trade mark would not give the appellant a monopoly over all bug or insect shapes – only this particular shape and any substantially identical or deceptively similar shape. I see no reason in principle or policy why this should be so.

21. With regards to the issue of functionality, Stone J said:

    140. I agree that the 1995 Act was not intended to make the radical change of providing for registration of a trade mark that would have the effect of restricting access to functional features or innovations.  The policy concerns expressed by Burchett J were relevant to the issues considered in Philips v Remington (Aust), FC, because that case was concerned with functional features.  There is however, no suggestion, that in this case, the appellant’s bug shape has any functional significance unless one regards having an attractive shape as functional. For reasons expressed below at [156], I do not regard the fact that a sign may evoke a positive emotional response as having functional significance for present purposes.[9]

    [9] Ibid, [140].

1. The Holder also referred to the decision of the Federal Court in Mayne Industries v Advanced Engineering Group Pty Ltd (‘Mayne’)[10], where Greenwood J considered the capacity to distinguish of a shape trade mark for fence droppers. In that case, the shape in question was the shape of the goods:

   [10] 2008 FCA 27.

2. In determining that the particular shape was not capable of distinguishing, Greenwood J said:

   The patent as the foundation for the dropper demonstrates that the S loop adopted in the dropper provided a solution to functional problems evident in droppers comprehended by the prior art at that time. The adoption of the S loop as the shape of the catch was the central element of the functionality of the improved dropper which continues to be the same dropper incorporating the S loop as developed and patented in 1969. The shape of the S loop is not just a functional part of a functional article, its functionality is fundamental to the working easy application of the dropper into a fence and the work of the dropper once install.[11]

   [11] Ibid, [52].

3. The Holder submits that the above authorities support a finding that the Trade Marks are inherently adapted to distinguish. With regards to Kenman Kandy, the Holder submits that the Trade Marks, being original and invented shapes designed primarily for aesthetic purposes lack any ordinary signification to consumers, and it is this lack of ordinary signification which renders them inherently adapted to distinguish. The Holder states that the Trade Marks were not part of the ‘great common’ and that the functional aspects of the shape of the Trade Marks are not fundamental to the operation of the Goods, as was the case with the fence dropper mark considered by Greenwood J in Mayne. The Holder characterises the functionality of the mark in Mayne as being a ‘universe removed’ from the functionality of the shapes in this case.

4. The Holder also refers to the decision in Re: Application byFreshFood Holdings Pte Ltd[12], where Hearing Officer Thompson deemed the following shape to be registrable in respect of coffee and coffee products:

   [12] [2005] ATMO 8.

5. Hearing Officer Thompson held that the trade mark had no function other than that common to all such containers[13], and that considering its various features, it was no less registrable than the trade mark considered by Stone J in Kenman Kandy[14].

   [13] Ibid, [18].

   [14] Ibid, [27].

6. In Re: Application by Ferrero S.p.A (‘Ferrero’).[15], Hearing Officer Wilson, after considering the relevant authorities, determined that the following trade mark (being the shape of a container for confectionery) was not capable of distinguishing, even after taking into account the extensive use of the container prior to the filing date of the application:

   [15] [2012] ATMO 79

7. In reaching his decision, Hearing Officer Wilson said:

   In the present instance, other traders would have a legitimate need to use this shape in relation to these goods. While the specific elements may not have been used in this particular combination by other traders at the time of filing, it is worth adding that if registered the Holder’s trade mark would enjoy protection against infringement by trade marks that are substantially identical and also by those marks which are deceptively similar.[16]

   [16] Ibid, [26].

8. The Holder submits that it is entirely irrelevant that a shape might be sought to be registered in relation to a functional product, and that the ‘striking and unusual’ Trade Marks bear no resemblance whatsoever to a conventional handgrip, stand, or mount for an electronic device. The Holder points to the abundance of alternative shapes and designs that could be employed by other traders that would achieve an equivalent functional outcome.

9. The Holder also submits that a person encountering the images constituting the Trade Marks would not perceive any resemblance to a grip, stand, or mount, and they are more likely to perceive an ornate vase, sculpture, or piece of furniture. Similarly, the Holder submits that the results of a Google Image search undertaken by the examiner revealed images of furniture. However, I note that given the Trade Marks are described as a three-dimensional product configuration, the ordinary signification I must consider is that of the Trade Marks rendered in their three-dimensional configuration as described in the endorsement, not the Trade Marks as a two-dimensional drawing.     

10. Having regard to the above, I will first consider whether the Trade Marks are sufficiently inherently adapted to distinguish to be considered prima facie registrable.

11. Assessments of the inherent adaptation of a shape trade mark in situations where the mark corresponds entirely to the shape of the goods will involve consideration of its functional and non-functional features in the context of the relevant market for those goods. I agree with the Holder that the presence of functional characteristics does not automatically render a shape trade mark as not being inherently adapted to distinguish. However, I do not consider that the mere presence in the market of alternative shapes that would achieve the same functional purpose renders a shape trade mark as being prima facie registrable.

12. The ubiquity of different shapes available indicates that the Goods in question are not limited to one or two inherent forms. Further, the fact that a particular shape may not have been previously applied to a specific niche purpose does not mean that it is not part of the ‘great common’ of shapes that have been used for functional purposes in the past.  A shape which forms a functional grip that has been applied to existing goods in the past is no less a functional grip when applied to a new product. 

13. I consider that one of the articles submitted by the Holder contains an apt description of the Trade Marks and their functionality in the context of the Goods:

    Essentially, it’s a knob you attach to the back of your phone or case that compresses down like an accordion when not in use. The cap is usually metal or hard plastic and comes in any number of designs. The underside is a tough rubbery material that locks into a plastic disc that attaches firmly to the back of your phone with removable adhesive. Stick your fingers either side and you’re good to go. When popped out it doubles as a kickstand for watching video, or to slot into car mounts.[17]

    [17] The Guardian, 28 October 2019, Samuel Gibbs.

14. I consider that the characterisation of the Goods as ‘a knob’ is an appropriate place to start discussion of the functional features of the Trade Marks. There can be no disputing that the shape of a knob, at the Relevant Date, formed part of the ‘great common’ referred to by Stone J in Kenman Kandy. A knob is intended to allow an item to be gripped securely by preventing fingers from sliding back over the large surface forming the top of a knob. Traditionally, a knob facilitates the pulling of a draw or a door. However, the features of a knob can also be utilised in performing a more passive, gripping function as is the case with the Goods. The knob shape also facilitates the collapsible nature of the Goods, as it permits the tapered side walls of the knob to collapse telescopically into the top, which then allows the Goods to sit flush against the surface of the mobile device. The combination of features allows the Goods to be applied to a mobile device in a manner which provides a functional grip and stand while also being less conspicuous than other grips or stands when collapsed and not in use. Further, I also note one of the media articles provided by the Holder, in addition to highlighting the gripping and standing functions, refers to a third function, namely, a convenient location for wrapping headphones (presumably, headphone wires).[18]

    [18] Forbes, undated, ‘PopSockets: The Story Behind How It Went from a Simple Concept to Selling Tens of Millions of Units’.

15. I acknowledge the multitude of other functional variations on the same theme available to traders who wish to sell competing products. Some of those options may have functional advantages over the Trade Marks, and some may be less advantageous. Overall, I do not think the fact that the there are other ways to achieve the same result is a particular persuasive factor. I consider that the use of a knob is one of the more obvious and desirable ways that other traders may legitimately wish to employ to achieve a dual function of an inconspicuous grip, stand, or mount on mobile devices.

16. I also do not consider that the contours and embellishments on the side walls imbue sufficient additional distinctiveness to the Trade Marks. The presence of these minor additions does not significantly alter the general impression of the Trade Marks as a relatively unremarkable conically shaped knob. In determining inherent adaptation to distinguish, I must keep in mind whether other traders would legitimately wish to use a shape identical to the Trade Marks or a shape that is deceptively similar to, and would therefore constitute infringement of, the Trade Marks.[19] I consider that the use of a similar shaped knob with different contours or embellishments would potentially infringe the Trade Marks, having regard to the principle of imperfect recollection. As an illustration, I refer to the SpinPop Grip mentioned above which also consists of a conical knob shape. Mr Barnett states that he considers this not to be the same shape as the Trade Marks and that the Holder ‘would not seek to enforce any rights in such Trade Marks’. However, Mr Barnett’s perception of what enforceable rights would result from registration of the Trade Marks may not be aligned with the reality. When viewed side by side (see below), there appears to be cogent arguments that the respective shapes are deceptively similar, and the use of the SpinPop Grip may well infringe the Trade Marks:

    v         

    [19] Kenman Kandy, [161] (Stone J).

17. Further, the Holder’s evidence indicates that shortly after the Relevant Date, other traders started selling similar shaped grips. In Chocolaterie Guylian N.V. v Registrar of Trade Marks, Sundberg J said that ‘In my view, evidence of what other traders were selling prior to, at or subsequent to the priority date has the ability to rationally affect, albeit with varying degrees of weight, the conclusion one might reach about the extent to which a mark is inherently adapted to distinguish under s 41(3) of the Act.’[20]   While it is possible that the popularity of the Holder’s goods influenced others to commence selling similar shaped competing products under different brands, it does not necessarily follow that the competitors were driven by improper motives. Many products that achieve a sudden level of popularity are copied by competitors (motivated only by a legitimate desire to compete in the trade of a popular item), and in such cases it can be problematic for the first user to maintain exclusivity other than by enforcement of any relevant patents or registered designs.  While the trade mark registration system can bestow powerful enforceable rights on those who use and register signs that are capable of distinguishing, it is less suited to protecting the rights of those who are the first user of signs which are primarily functional or descriptive in nature.

    [20] [2009] FCA 891, [54].

18. On balance, I do not agree with the Holder’s submission that the Trade Marks lack ordinary signification in relation to the Goods. Following the process outlined in Cantarella, I am satisfied that the ordinary signification of the Trade Marks, considering the impression the Trade Marks would convey to ordinary consumers of the Goods, is a functional knob shaped grip which is also suitable for use as a stand or mount. I am also satisfied that given the ordinary signification of the Trade Marks is primarily functional (notwithstanding the shapes do have some aesthetic qualities), other traders would legitimately desire to use the Trade Marks (or some marks nearly resembling them). In view of the above, I am satisfied that the Trade Marks are not sufficiently inherently adapted to distinguish.

19. I am also mindful that the Trade Marks were not deemed inherently distinctive in the United States. While the assessment of distinctiveness of trade marks will differ from country to country, the fact that the Holder was required to demonstrate acquired distinctiveness in the United States is consistent with my view that the Trade Marks are predominantly functionality in nature. I also note that while the Holder has stated that it has registered the Trade Marks in other jurisdictions, no further details have been provided regarding the circumstances in which those trade marks were registered, nor have details been provided regarding other jurisdictions where applications to register the Trade Marks may have been unsuccessful.

20. While I consider that the Trade Marks are not sufficiently inherently adapted to distinguish to be prima facie registrable, I do consider they have some small level of inherent adaptation to distinguish, taking into account that there are several different ways to achieve the same functional outcome, and given that the Trade Marks incorporate some minor embellishments.  In view of this, I must consider whether the Trade Marks should be rejected having regard to the matters set out in s 41(4), namely, the extent to which the Trade Marks are inherently adapted to distinguish, the extent of use of the Trade Marks at the Relevant Date, the extent to which the Trade Marks will be used in future, and any other circumstances which may be relevant.

21. I note that the Holder’s submissions at the hearing focused almost exclusively on the issue of inherent adaptation. Further, the Holder’s evidence (particularly Barnett 1) is not directed towards establishing that the Trade Marks have or will become capable of distinguishing through use. Barnett 2 provides more evidence regarding the extent of use of the Trade Marks, however the emphasis of this evidence appears to be focused more towards arguments around inherent adaptation. Nevertheless, there is sufficient information in Barnett 2 to give consideration to the matters set out in s 41(4). 

22. In considering evidence of use of the Trade Marks, I must consider whether any such use is use ‘as a trade mark’. In Koninklijke Philips Electrics NV v Remington Products Pty Ltd[21], Burchett J said:

    In my opinion, merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark (here the marks do depict, one more completely than the other, a working part of a triple rotary shaver) is not to engage in a “use” of the mark “upon, or in physical or other relation to, the goods” within s 7(4), or to “use” it “in relation to the goods” within s 20(1). “Use” and “use”, in those contexts, convey the idea of employing the mark, (first) as something that can be “upon” or serve in a “relation” to the goods, (and secondly) so as to fulfil a purpose, being the purpose of conveying information about their commercial origin. The mark is added, as something distinct from the goods. It may be closely bound up with the goods, as when it is written upon them, or stamped into them, or moulded onto them … or, in the case of a liquid, it may be sold in a container so formed as to constitute at once both container and mark. But in none of these cases is the mark devoid of a separate identity from that of the goods. The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as the trade mark. The reason is plain: it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately wish to produce similar goods (unless, of course, there are, for the time being, subsisting patent, design or other rights to prevent them from doing so), and it follows that a mark consisting of nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a mark: Johnson & Johnson at 342, 348‑349.[22]

    [21] [2000] FCA 876 (Burchett, Hill, and Branson JJ).

    [22] Ibid, [12]

23. In Ferrero, Hearing Officer Wilson when considering registrability of the container used for the well-known TIC TAC product, said:

    In answering that question, I am also mindful of the cautionary comments made by Jacobs J in Unilever plc’s Trade Mark Applications in relation to the shape of ice cream dessert products (Viennetta):

    There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled.

    I do not think that is what the European Trade Mark system is for. It is a system about trade marks, badges of trade origin. For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.

    While there may be recognition among some consumers of the shape of the box in the Australian marketplace, I am not convinced that the use of the shape by itself before the priority date was sufficient for it to distinguish instantly the Holder’s goods of confectionery. In addition, I am not satisfied on the balance of probabilities that the public recognition of the shape solus (i.e. in the absence of the words ‘TIC TAC’) is necessarily recognition as a trade mark or as the Holder’s badge of origin. The Holder has not established, through evidence of trade mark use, that the trade mark does in fact distinguish the goods of confectionery. Thus, the ground for rejection under section 41(6)(b) of the Act applies.[23]

    [23] Ferrero, [35]-[36].

24. I am satisfied based on the information provided by the Holder in Barnett 2 that there has been extensive use of the shapes corresponding to the Trade Marks. I am also satisfied that there has been significant sales of the Goods in Australia and internationally, and the PopSockets brand likely has a significant reputation amongst relevant consumers. However, I do not consider that the Trade Marks have been used ‘as a trade mark’ as opposed to being used merely as the shape of the goods. While the two concepts are not mutually exclusive, the Holder does not appear to promote or emphasise the shape of the Goods as being a trade mark in its own right. The extracts provided from the Holder’s website indicate that the Popsockets brand is used prominently on both the website and the Goods themselves, and the Holder also prominently uses in its branding other variations on the term ‘Pop’ including Poptivism (referring to variations of the grip which include decorative tops in support of various social or charitable causes), PopGrip and Popmount (referring to accessories for the Popsocket product), and PopLips. I consider that the various Pop formative marks used by the Holder are serving to distinguish the Holder’s Goods, rather than the shapes which constitute the Trade Marks. In this context, I consider that consumers would consider the shape constituting the Trade Marks to be simply one of a number of different types of grip/stands sold under various brands, rather than being a badge of origin in its own right.

1. For the reasons given above, I am satisfied that there are grounds for rejecting the Trade Marks under s 41.    

   Decision

2. Under r 17A.24, if I am satisfied that there are grounds for rejection, then I must reject the IRDAs.

3. Therefore, I reject the IRDAs for all of the Goods.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   26 October 2021