International Registration Designating Australia number 1980757 (International Registration number 1441500) (classes 10,20,27,35) - - in the name of PTM Guard SIA - [2021] ATMO 143

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia number 1980757 (International Registration number 1441500) (classes 10,20,27,35) - - in the name of PTM Guard SIA

Delegate: M. Cooper

Representation: Holder: SJ Hallahan of counsel instructed by Addisons Lawyers

Decision:
[2021] ATMO 143

Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) – r 17A.24 – s 41 of the Act considered – trade mark not inherently adapted to distinguish – use, intended use or other circumstances insufficient – extension of protection refused.

Background

On 10 September 2018, Prokapital Management, SIA applied to extend protection of International Registration of the below trade mark to Australia. The Trade Mark was later assigned to PTM Guard SIA (‘the Holder’), the current owner.
Application no: 1980757
IRDA No: 1441500
Trade Mark: (‘Trade Mark’)
Specification of Goods and Services:
Class 10:Acupressure mats; massage appliances and instruments; foot massagers; manual massage instruments; back massage apparatus; non-electric massage apparatus; massage apparatus for medical purposes; pillows for therapeutic use; acupuncture equipment, instruments and apparatus; non-electric acupuncture instruments; apparatus for the stimulation of acupuncture points; acupuncture needles; acupressure apparatus; apparatus for acupressure therapy; orthopedic cushions; orthopaedic foot cushions; cushions for medical purposes; padded cushions for medical purposes; acupressure pillows.
Class 20: Pillows; stuffed pillows; cushions; soft furnishings [cushions]; seat cushions.
Class 27: Carpets; rugs; mats and matting.
Class 35: Retail services in relation to bedding, pillows, cushions, medical instruments, acupressure mats, acupressure pillows, physical therapy equipment, massage apparatus, appliances and instruments, also via Internet.
(‘Goods and Services’)
The application was examined and a ground for rejection was raised under s 41(3) of the Trade Marks Act 1995 (Cth) (‘the Act’). The examiner decided as follows:
Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark is the shape of a functional part or the whole of the goods you have claimed, and the goods provided via the services you have claimed. This shape, with or without minor variations, is commonly used in relation to the goods/services you are claiming and is functional in nature. Other traders should be able to use this shape in connection with goods or services similar to yours.
In addition:
In order for this trade mark to be accepted, if you choose to provide submissions or evidence of use you will also need to provide further information about the scope of protection you are seeking for this shape. Such information would include additional representations of the shape from underneath and from the side, and a description of how the shape will be used in relation to your goods and services.
Following responses from the Holder, the examiner maintained the s 41 objection in two further reports finding insufficient evidence of use, stating:
The fact remains that research demonstrates widespread use of the shape claimed by the Holder as their trade mark by a wide variety of other traders currently and before the priority date, both in Australia and worldwide. Therefore at the time of filing the trade mark was devoid of inherent capacity to distinguish the Holder’s goods. Whilst the Holder may have been successful in preventing some use of the trade mark worldwide either through trade marks or other intellectual property rights, this fact does not demonstrate that, in a marketplace in which consumers can purchase a variety of goods featuring identical shapes, consumers would see the shape as a badge of origin and be able to distinguish between the Holder’s goods and third party goods on the basis of the shape alone.
Following receipt of the third adverse examination report the Holder requested to be heard. I heard the matter as a delegate of the Registrar on 1 October 2021. Mr. S J Hallahan of counsel, instructed by Mr. Tim Clarke of Addisons Lawyers, appeared for the Holder.
In making my decision I have had regard to counsel’s written and oral submissions and, as discussed at the hearing, the written record including the application, the examiner’s research and reports together with the Holder’s responses as accompanied by affidavits of the Holder’s shareholders and board members, Vladimirs Grigorenko dated 1 September 2020 (‘Grigorenko 1’) and Deniss Grigorenko, dated July 2021 (‘Grigorenko 2’).
Evidence
In Grigorenko 1, the deponent describes the products to which the Trade Mark shape is affixed as ‘studded acupressure mats and pillows used by healthy lifestyle and wellbeing enthusiasts around the world’. He describes the Trade Mark further at paragraph 7:
The Lotus Mark is a three-dimensional trademark being a stylized representation of a lotus blossom with 24 cone-shaped petals positioned on the perimeter of the frame to form concentric circles of different diameter with alternating shift and with the center is [sic] in the shape of a cupola with a sharp end.
The deponent claims the Holder (through its predecessor) has used the Trade Mark in Australia since 2014 in connection with acupressure mats and acupressure pillows and related retail and marketing services. He notes the Trade Mark was registered as a trade mark in Russia, UK, New Zealand, Mexico, Kazakhstan, and Ukraine without substantive objection and that the design was registered in Australia (registration number 329209[1]). The deponent asserts significant Australian use and substantial Australian sales and advertising under the Trade Mark.
[1] Registered but not certified, since ceased. I also note design registration does not mean a trade mark is necessarily adapted to distinguish as a trade mark. (See SC Johnson & Son Inc's Appn (1980) 50 AOJP 4200 (Reg)).
Legislation
Regulation 17A.24 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) requires that the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it.[2] That is, ‘it should be presumed that the mark is sufficiently adapted unless the Registrar is satisfied otherwise on the balance of probabilities’.[3] The relevant date of the assessment is the filing date, 10 September 2018 (‘relevant date’).[4] I note that my task is not to review the examiner’s decisions but to consider the application afresh.
[2] Regulation 17A.28(1) provides that the grounds for rejection are those in ss 39-44 of the Act.
[3] Chocolaterie Guylian N.V. v Registrar of Trade Marks (‘Guylian’) [2009] FCA 891 [21]. As also confirmed by the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 146.
[4] Ibid [54]; Apple Inc v Registrar of Trade Marks [2014] FCA 1304 [59]; (2014) 227 FCR 511.
Section 41 of the Act relevantly provides as follows:
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.
Note 2:       For goods of a person and services of a person see section 6.
Note 3:       Use of a trade mark by a predecessor in title of an Applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the Holder (see subsections (5) and 7(3) and section 8).
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an Applicant for the registration of the trade mark is taken to be a use of the trade mark by the Applicant
The relevant tests for assessing a trade mark’s inherent adaptation to distinguish are found in Clark Equipment Co v Registrar of Trade Marks[5] and Cantarella Bros v Modena Trading, (‘Cantarella’)[6] , and apply equally to shapetrade marks.[7] Sundberg J expressed the test in this regard as follows:
The ultimate question on the issue of inherent adaptation is whether a sign – in this case, a shape – possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign. 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.[8]
[5] [1964] HCA 55; (1964) 111 CLR 511 [514].
[6] [2014] HCA 48; (2014) 254 CLR 337 (French CJ, Hayne, Crennan and Kiefel JJ).
[7] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (‘Kenman Kandy’) [2002] FCAFC 273 [146].
[8] Guylian [75].
It seems uncontroversial that the ordinary signification of the Trade Mark, to persons concerned with the Goods and Services,[9] is that of a lotus flower or lotus flower leaves.
[9] Cantarella [28], [30], [70], [71].
The Holder submits that, in the absence of any association between the lotus flower and the Goods and Services, the Trade Mark should be regarded as inherently adapted to distinguish them.[10] I am unpersuaded that the relevant association is absent. The depiction of a lotus flower is particularly familiar in the fields of Chinese and Indian health and relaxation practices such as acupuncture/acupressure and yoga (e.g., the lotus position). The author of one of the exhibited articles notes that ‘the #pranamat hashtag is populated almost exclusively by yogis.’[11] In this context I am satisfied that the requisite association exists.
[10] Kenman Kandy [146]-[156].
[11] Grigorenko 1, Exhibit M, p 152. Several other exhibits demonstrate the association, see Exhibit O, pp162,168,171.
In considering whether it is likely that other traders may legitimately want to use the Trade Mark, or something nearly resembling it, in connection with their own goods and/or services, evidence as to the actual activities of other traders may be taken into account in assessing what hypothetical other traders are likely to do.[12] As referred to in the Holder’s submissions, the Trade Marks Office Manual of Practice and Procedure (‘Manual’), consistently with the relevant authorities, notes that consideration of the mark’s functionality is relevant to this assessment. Specifically, ‘[i]f a shape has significant functional features there is a strong likelihood that other traders will need to use that shape for their similar goods’... ‘No one owner should have exclusive ownership of words, devices, symbols or three dimensional shapes which are common to the trade. One way of testing this from a shape mark perspective, is to consider whether the shape is made up of the sort of functional elements that are commonly used in the relevant industry. [13]
[12] Sports Warehouse, Inc v Fry Consulting Pty Ltd (‘Sports Warehouse’) [2010] FCA 664 [102]; Guylian [54].
[13] Manual, 21.3.4.
The evidence shows that the Holder produces a variety of products including mats, cushions and pillows on which lotus shaped elements (the Trade Mark) are affixed, as below:
[14]
[14] Grigorenko 1, Exhibit L, p148.
The purchaser, by laying or placing his or her body on the product, is said to experience an acupuncture or massage effect, assisting with relaxation and/or pain relief. The Holder contends that the only functional parts of the Goods are the spikes at the top of the lotus petals, because that is what performs the acupressure or massage function, I note however the spikes do not have a separate existence, and are inextricably part of the lotus petals. As described in Grigorenko 1, the Trade Mark is ‘a signature look for a lotus-flower massager with 25 petals each for acupressure and massaging devices.’[15] The lotus petals (including the tips) are clearly necessary to the technical result, being the acupressure/massage function. I am satisfied therefore that the Trade Mark has significant functional features. I note in this regard however that the Manual also states that ‘[t]he presence of functional features need not be fatal to an application. In some cases, the other features of a mark may be sufficient to allow for acceptance where it is obvious that the Holder is not seeking or gaining rights in functional aspects. If something extra has been added to the inherent form of the goods, that will weigh in favour of acceptance.’[16] The Holder contends that the lotus shape is ‘something extra’ and there are a ‘multitude of ways in which products could be made with the tips in exactly the same position and arrangement’ as the Trade Mark that achieve the ‘same massaging effect.’ This may be so, but the examiner’s research is replete with examples of other traders using the same or similar shape for the same or similar Goods and Services. It leads me to infer that the shape is to a large degree a consequence of the desired functionality rather than an added ‘something extra’. Given it is the lotus ‘petals’ that perform the function, and taken together these form the Trade Mark lotus shape, registration of the Trade Mark would clearly give the Holder rights in functional aspects of the Goods. As French J found ‘[w]here shape serves function then it may not bear that character of a distinctive attribute.’[17]
[15] Grigorenko 1, paragraph 10.
[16] Manual, 21.3.4.
[17] Kenman Kandy [45].
Having regard to the evidence of use by other traders, the examiner observed the research demonstrated the Trade Mark ‘is commonly used in respect of a wide variety of goods including those claimed by the applicant.’[18] The Holder maintains these goods are ‘cheap knock offs’ and four emails and a list of ‘cease and desist’ correspondence is exhibited which indicate that the Holder sought the removal from websites of particular infringing items.[19] Further website pages are exhibited apparently demonstrating that the items have been removed, the Holder contending that an inference can be drawn that any such common use was illegitimate and therefore irrelevant to my assessment. On the evidence, aside from the ‘cease and desist’ correspondence, the Holder has only pursued litigation in Russia.[20] Even if I accept infringing use in some other countries by some traders, the evidence does not establish all such use was illegitimate.[21] Overall, I do not consider the Trade Mark is ‘so unique or imaginative’ that other traders already using a lotus shape for the same or similar Goods and Services, ‘will be able to avoid potentially infringing the mark if it were registered.’[22]
[18] Examiner’s report of 14 October 2019.
[19] Grigorenko 1, Exhibits Q-U; Grigorenko 2, paragraph 30.
[20] Grigorenko 1, Exhibit P; Grigorenko 2, Exhibit G.
[21] For example, a ‘cease and desist’ letter was sent to Amazon.com in respect of one vendor (Grigorenko 1, paragraph 36(c), Exhibit U), however the examiner’s research (as provided to the Holder) demonstrates a plethora of other sites on Amazon.com offering similar Goods (see ‘sponsored products related to this item’ on the same page). Aside perhaps from the Russian litigation, the Holder has provided no evidence it has taken any infringement action prior to receiving the examiner’s adverse decisions.
[22] Guylian [78].
Given the Trade Mark’s functional elements, the extent of use by other traders of the same or similar lotus shape for the same or similar products and services, even if some limited use may have been actuated by improper motives, I consider there is significant evidence of traders’ use of the lotus shape, or something similar to it, for the Goods and their retail sale, which demonstrates the likelihood that other traders may legitimately want to use the Trade Mark, or something nearly resembling it, in connection with their own similar goods and services, in a way that may infringe the Trade Mark if granted.
Even so, in addition to its functional features, the Trade Mark does have some aesthetic qualities. The lotus shape is slightly stylised and to some extent might be regarded as having been designed ‘to make the goods more arresting of appearance and more attractive, and thus to distinguish them from the goods of other traders.’[23] Given this limited stylisation, I consider the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Goods and Services from those of other persons (s 41(4)(a)). It follows that I must consider the ‘combined effect’ of the matters specified in s 41(4)(b), that is, the extent of inherent adaptation to distinguish, use or intended use of the mark and any other circumstances, in determining whether the trade mark does or will distinguish the Goods and Services from those of others.
[23] Coca Cola Company v All-Fect Distributors Ltd (‘Coca Cola’) [1999] FCA 1721; (1999) 96 FCR 107 [25]; see also Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3 (Clipsal’) [2017] FCA 60 [150] quoting Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (‘Mayne Industries’) [2008] FCA 27; (2008) 166 FCR 312 at 338 [63], 340 [69].
In this regard, the Holder contends that the evidence demonstrates significant sales and promotion and recognition of the Trade Mark in Australia over 7 years which will be ‘maintained and enhanced in the future’. The Holder further relies on various international design and trade mark registrations and claims worldwide sales of approximately AU$79,000,000.[24] It also claims Australian sales through an Australian distributor as well as through its website pranamat.com.au/eshop, Amazon and eBay of ‘nearly $750,000’ and promotion costs of ‘over $100,000’. This promotion is said to have prominently displayed the lotus flower shape ‘reinforcing use of the Trade Mark as a trade mark’ and not ‘simply selling a product with a particular shape’.
[24] Grigorenko 2 paragraph 6, although Grigorenko 1 asserts worldwide sales of approximately AU$61,480,000.
Extent of inherent adaptation to distinguish

In relation to s 41(4)(b)(i), notwithstanding the Trade Mark’s stylised representation, given its functionality and relatively extensive use by other traders for the same or similar Goods and Services, I consider it has only a low to moderate degree of inherent adaptation to distinguish.
Use as a trade mark
In relation to use, the evidence shows several examples of website and social media advertising and promotion of the Holder’s acupressure mats and pillows, upon which lotus shaped components (i.e., the Trade Mark), which perform the acupressure/massage function, are affixed (see above, paragraph 15). I am not satisfied however that such use is sufficient or of a character to demonstrate use of the Trade Mark as a badge of origin indicating a connection in the course of trade between Goods and Services and the Holder. As Lockhart J said in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd: "[m]erely to associate a word with the product of a particular producer does not mean that the association is necessarily one of origin.’[25] Similarly in Koninklijke Philips Electrics NV v Remington Products Pty Ltd[26], Burchett J stated:
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)…[27]
[25] [1991] FCA 310 [59]; (1991) 30 FCR 326.
[26] [2000] FCA 876 (Burchett, Hill, and Branson JJ).
[27] Ibid [12].
Invariably the evidence demonstrates that it is the Holder’s Pranamat trade marks[28] which perform the function of identifying the trade source, most conspicuously Australian registered trade mark (‘the pranamateco mark’) which is prominent in almost all the photographs and promotional material. While acknowledging that packaging can contain more than one trade mark,[29] as Sundberg J observed in Guylian, the seahorse shape was always used with another of Guylian’s trade marks and, although this did not necessarily mean that the shape could not function as a trade mark by itself, it reduced the likelihood of it doing so.[30] Similarly, any trade mark significance the Trade Mark may otherwise have had is, I consider, substantially diluted by the distinctive Pranamat marks with which it appears.
[28] Australian registration numbers 845733 for PRANAMAT ECO, 1845736 for PRANAMAT, 1868401 and 2102272 for Pranamat, and 1876256 for for the same or similar Goods and Service in classes 10, 20, 27, 30 and 35 (collectively ‘the Pranamat marks’).
[29] Anheuser-Busch, Inc v Budějovický Budvar [2002] FCA 390 [191]; (2002) IPR 182, 228 (Allsop J).
[30] Guylian [97].
Furthermore, while there is evidence of substantial overseas sales and promotion of the Goods and Services, there is little objective evidence of use of the Trade Mark (as a trade mark) either overseas or in Australia. Invoices for the sale of the Goods to individual Australians over the period 2015 to 2018 are exhibited which show a lotus flower silhouetted against the words ‘Pranamat ECO.’ A similarly shaped lotus is displayed on packaging in a Facebook ad and an Australian blogger’s Instagram: [31] and [32]. While the representation is visually quite different to the Trade Mark, even if could be characterised as use of the Trade Mark with alterations that do not substantially affect identity,[33] such a small volume of use (35 invoices) and of packaging (2 examples) is insufficient to establish it has acquired (or the capacity to acquire) the required distinctiveness in Australia at the relevant date. While the Australian blogger who displayed the packaging clearly has a very large following, I note this post appears to have a relatively few 187 ‘likes’.[34] Six other Australian bloggers also refer to the Holder’s Goods, two noting the ‘signature lotus shape’, however all comments post-date the relevant date and the mats again prominently display the pranamateco mark as the trade source[35]. The evidence does not support an inference that consumers have been educated to see the Trade Mark as an indication of trade source.
[31] Grigorenko 1 exhibit F.
[32] Grigorenko 1 paragraph 24, Exhibit K, p 122 and exhibit L, p148.
[33] S 7(1) of the Act.
[34] Grigorenko 1, Exhibit K.
[35] Grigorenko 2, Exhibit F.
The Holder also claims that the Trade Mark has featured in multiple popular publications however only one article, printed in two US publications, is exhibited. Other than a picture of mats with prominently displayed, there is no mention of the Trade Mark and the author refer to ‘nails’ and ‘tiny rubber spikes’ as ‘the defining feature’ of the product.[36] The claimed trade show presence is limited to evidence of two 2010 exhibitor booth contracts.
[36] Grigorenko 1, Exhibit M, paragraph 154.
The evidence discloses two further instances which more closely depict the Trade Mark, one from its website, ‘pranamateco.com’ prominently displaying the Pranamat marks but also depicting [37] , and the other, a screenshot from YouTube .[38] Neither are dated and both are headed ‘How does Pranamat ECO work’ and therefore appear to operate essentially as descriptive of function rather than as source identifiers. Even if they are seen to constitute trade mark use, they are two instances only and insufficient to establish the required distinctiveness in Australia. While I accept that Australian consumers may have seen some of the Holder’s overseas use and promotion of its mats and pillows, for reasons as discussed above, I consider it is the Pranamat marks that operate as the badge/s of origin. There appears to be no use of the Trade Mark without them.
[37] Grigorenko 1, Exhibit G.
[38] Grigorenko 1, paragraph 22.
Having regard to the principles outlined by Sundberg J in Global Brand Marketing Inc v YD Pty Ltd[39] for determining whether use of a shape constitutes use as a trade mark, I note that the Trade Mark is not a concocted shape, it is a part of the Goods delivered under the Services, and it forms at least ‘a substantial’ if not the functional element of the Goods. As such, I consider the references and representations of the lotus shape in the evidence are most appropriately characterised as references to ‘the nature of the goods themselves rather than use of the shape as a trade mark’ and ‘point away from trade mark use.’[40] And as Jacobs J stated in Unilever plc’s Trade Mark Applications,[41] as referred to by Sundberg J in Guylian:
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.[42]
[39] [2008] FCA 605 [61].
[40] Ibid; Mayne Industries [63].
[41] [2003] RPC 35
[42] Guylian [91]
For the above reasons, even if I accept that there is recognition among some Australian consumers of the Holder’s use of the lotus shape for certain of the Goods and Services in the Australian marketplace, I am not satisfied the evidence establishes any recognition is referable to it ‘having used the shape as a trade mark’[43] such that it might be regarded at the relevant date as distinguishing, or having the capacity to distinguish, any of the Goods and Services as those of the Holder.
[43] Guylian [95]
In conclusion I am not satisfied that the Holder has used the Trade Mark as a trade mark in Australia to any relevant extent or for any relevant duration.
Other circumstances
I note the Holder has provided substantial worldwide sales figures however they do not demonstrate what products were sold or under or by reference to which trade mark/s the sales were made, nor are they substantiated in any way by objective evidence. In Grigorenko 1 the Australian sales figures under the Trade Mark are provided of ‘nearly’ 3250 units over 2014 to 2020 and in Grigorenko 2 of ‘nearly’ 4159 to 28 May 2021. Adding the units sold in Grigorenko 2 for the period 2014 – 2018 this amounts to a modest 1122 pieces prior to the relevant date. Grigorenko 1 also asserts the distribution of 1,500,000 units of merchandise in Australia,[44] a figure which seems incongruous in light of the above sales figures. Notwithstanding a substantial number of Australian sessions/views of the Holder’s website ‘pranameteco.com’, it is not apparent what parts of the site were accessed and I observe the duration of the visits was quite short (average one minute). They clearly did not translate into significant sales at the relevant date. Furthermore, while the Holder claims 375,000 Instagram users, this figure is not substantiated and it is not clear how many, if any, were Australian users. Similarly the exhibit[45] attached to the claim of ‘more than 520,00 Australian users’ of the Holder’s Facebook page to 10 September 2018 demonstrates only a list of questions and answers on the Holder’s Facebook page. The deponent in Grigorenko 1 also asserts that Australians have viewed the Trade Mark over 21,446 times on the Holder’s YouTube Channel videos, on which it acted as a source identifier in ‘very similar images as shown below’ (in the affidavit). Overall, I find this evidence vague and unconvincing and attach only limited weight to it. It falls short of enabling an inference to be drawn that a significant number of Australian consumers had been educated to see the Trade Mark as an indication of trade source at the relevant date.
[44] Grigorenko 1, paragraph 29.
[45] Grigorenko 1, Exhibit L.
I also give limited weight to the deponent’s assertion in Grigorenko 2 that, because of the Trade Mark’s widespread use and reputation, the Holder would suffer hardship if the Trade Mark was not registered as no further submissions or evidence was provided in this regard. The Holder also submits that the acceptance of the Trade Mark without substantive objection in other jurisdictions, in particular the UK and New Zealand, is relevant to my considerations. I note however the examiner’s undisputed observation that it has been refused on distinctiveness grounds in the United States, China, and the European Union. Overall I consider overseas Trade Mark registrations of little assistance in assessing whether the Trade Mark is inherently adapted to distinguish under Australian trade mark law.
Given the Trade Mark’s limited capacity to distinguish, combined with a lack of evidence of use or intended use of it as a trade mark, or any other relevant circumstances, I am satisfied on the balance of probabilities that the Trade Mark does not and will not distinguish the Goods and Services from those of others (s 41(4)).
For the sake of completeness, and noting my findings above regarding lack of use of the Trade Mark as a trade mark, the evidence does not establish that it has been used to such an extent that is does in fact distinguish the Goods as being those of the Holder (s 41(3)(b)).
Decision
Regulation 17A.24 of the Regulations provides:
17A.24 Final decision on examination
(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it.
(2) The Registrar may accept the IRDA subject to conditions or limitations.
(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it, in whole or in part.
For the reasons stated above, I am satisfied there are grounds for rejecting the IRDA. Extension of protection to Australia of IRDA number 1980757 should not be granted.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
24 November 2021

International Registration Designating Australia number 1980757 (International Registration number 1441500) (classes 10,20,27,35) - - in the name of PTM Guard SIA

[2021] ATMO 143

24 November 2021