Jarvis Walker Pty Ltd v G. Loomis, Inc

[2002] ATMO 104

TRADE MARKS ACT 1995

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

Re:Opposition by Jarvis Walker Pty Ltd to registration of trade mark application 851195(28) - PELAGIC SERIES - filed in the name of G.Loomis, Inc.

Date of Decision:         22 November 2002
Delegate:  Hearing Officer Mary Skivington

Decision:  Section 52 Opposition -section 41 ground of opposition

established - registration refused.

Background

G. Loomis, Inc, ('the applicant'), filed trade mark application 851195, through its trade mark attorneys, Brand Name Consultants, on 21 September 2000, claiming a convention priority date of 21 March 2000, for the trade mark PELAGIC SERIES in class 28.  The nominated goods are:

Artificial fishing bait; fishing creels; fishing hooks; fishing lures; fishing lure boxes; fishing poles; fishing reels; fishing rods; fishing rod blanks; fishing tackle boxes and fishing tackle; weights for fishing lines.

The application was examined and its acceptance for opposition purposes was advertised in the Official Journal of Trade Marks on 9 November 2000. Jarvis Walker Pty Ltd, ('the opponent'), through its lawyers, MacPherson & Kelley, filed notice of opposition on 8 February 2001. The notice of opposition listed numerous grounds of opposition but the only ground pursued was under the provisions of section 41 of the Trade Marks Act 1995, ('the Act'). The parties completed the evidence stages set out in the regulations by 5 April 2002.  Neither party requested a hearing and in due course the matter was referred to me, as a delegate of the Registrar, to decide the opposition on the written record.

The evidence

The evidence filed on behalf of the opponent consists of two statutory declarations from Mr Trevor Manudrell, who is a director of the opponent.  The first declaration dated 8 October 2001, was accompanied with exhibits TM-1 to TM-18.  The applicant's evidence consisted of a statutory declaration with exhibits JC-1 to JC-4, made by Mr John Christiansen, trade mark attorney of Brand Name Consultants, for the applicant.

Evidence in support
Mr Manudrell declares that he has been in the recreational fishing industry for about twenty years and during that time he claims to have been actively involved in the development, marketing and sales of all kinds of recreational fishing equipment.  He declares that the opponent has been designing, manufacturing, wholesaling and retailing a wide variety of recreational fishing equipment including rods, reels, lines, lures, tackle boxes, clothing and fishing accessories such as knives, pliers, and nets since 1946.  He avers that the opponent makes equipment to cater for the needs of the many different fishing conditions.

Mr Manudrell asserts that the word PELAGIC is a descriptive term in common usage by fishermen and people within the fishing industry.  The exhibits attached to the first declaration, in support of his claim that PELAGIC is a descriptive term, include dictionary definitions, references from various encyclopaedias, trade references and extracts from academic research and reference materials.  Among the Internet extracts tendered as evidence were extracts in respect of PELAGIC fishing for tourists and an extract about the Australian Bureau of Rural Sciences', 'Pelagic Fisheries Project'.

Evidence in Answer
Mr Christiansen declares that the applicant's New Zealand application for registration of the trade mark, PELAGIC SERIES, was filed on the same day as its Australian application.  The New Zealand application, he declares, was accepted without the need to file evidence of use and its registration was unopposed.  He declares that the opponent's goods are offered for sale in New Zealand and on this basis he questions why the opponent did not oppose registration of the trade mark in New Zealand.

He declares that the opponent must be of the opinion that no error or omission occurred in the course of examination because the opponent did not request revocation of acceptance of the trade mark under the provisions of section 38 of the Act.

The Australia and New Zealand Closer Economic Relations Trade Agreement (CER) provides for the creation of a WTO-consistent Free Trade Agreement between Australia and New Zealand.  The CER 'addresses the harmonisation of a range of non-tariff measures that affect the free flow of goods and services ....'  On this basis Mr Christiansen declares that it would be counter to the provisions and spirit of the CER that a trade mark in respect of certain goods be registered in one CER country but refused registration in the other CER country in the absence of specific circumstances justifying the refusal.

Mr Christiansen declares that an Internet search on "Pelagic Series" on the Yahoo search engine only revealed twenty hits, twelve of which related to the applicant's trade mark use.  The other hits, he declares, did not relate to trade mark use by others.

Evidence in Reply
In his evidence in reply Mr Manudrell filed a second declaration, dated 4 April 2002, which is critical of the quality of the applicant's Internet search.  He declares that in the light of the evidence in answer, Internet searches on behalf of the opponent were conducted. An Internet search on Yahoo, of the words PELAGIC and SERIES without the quotation marks resulted in 18,900 hits.  The same search on the Google search engine resulted in 21,400 hits and a search for the word PELAGIC solus resulted in 130,000 hits.  The opponent declares that given the meaning of the word SERIES an Internet search should be based on the word PELAGIC alone.

Mr Manudrell asserts that no adverse inference can be drawn from the fact that the applicant's trade mark was registered without opposition in New Zealand'.  He also declares that the existence of the CER trade agreement should not be seen as a persuasive argument in support of accepting the applicant's trade mark. Finally, he states that, the applicant's submissions related to the opponent not seeking a revocation of acceptance of the applicant's trade mark, under the provisions of section 38 of the Act are irrelevant in the context of the opposition in train.

The Law and discussion

Section 41
Subsection 41(2) of the Act provides that 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 from those of other traders. Subsection 41(3) provides that in deciding the question, the Registrar must first consider the extent to which the trade mark is inherently adapted to distinguish. If the Registrar finds the trade mark is to no extent inherently adapted to distinguish, then it is to be considered under the provisions of subsection 41(6). If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish, but it is not capable of distinguishing on that basis alone, then it is to be considered under the provisions of subsection 41(5). If, after consideration under the provisions of subsections 41(5) or 41(6), the Registrar is still not satisfied the trade mark is capable of distinguishing, or does in fact distinguish, then the application must be rejected.

In determining whether or not a trade mark may be regarded as being adapted to distinguish, Kitto J, in Clark Equipment Co v Registrar of Trade Marks, (1964) 111 CLR 511) said:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing the goods from the goods of others.

and in Registrar of Trade Marks v W. & G. Du Cros Ltd, (1913) 30 RPC 660, Lord Parker of Waddington, said in relation to whether or not a proposed trade mark is adapted to distinguish:

The applicant's chance of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

The opponent has provided documentary evidence in the form of dictionary definitions that PELAGIC is an adjectival word of Greek origin meaning 'of or performed on, the open sea (pelagic sealing, whaling); (of marine life) belonging to the upper layers of the open sea', as opposed to near the shore.  The Concise Oxford Dictionary of Ecology defines the phrase Pelagic Life as, '.. a widely inclusive term, encompasses all living organisms which either swim or drift passively in the ocean'.  An example of Pelagic Life is the pelagic cod, as detailed in Fishes of the World, 3^rd Edition, (exhibit TM-6).

The Oxford Reference Online defines Pelagic Fish as, fish that swim near the surface, compared with demersal fish, which live on the sea bottom.  Pelagic fish, it states are mostly of the oily type such as herring, mackerel and pilchard.

Exhibit TM-7 in Mr Manudrell's first declaration includes extracts from an online publication, Marinews, in which two different brands of fishing equipment were reviewed and the expressions 'to get pelagics interested' and 'to get you into the pelagic action' were used.  Exhibit TM-9 is a copy of an extract from another publication, Maui Fishing News, where the expression 'keeping up the power of these pelagic beasts' was used in an evaluation of different brand reels for use in fishing for marlin.  Other exhibits in this evidence include advertisements from a variety of traders for pelagic rods, pelagic spear gun reels and various lures suitable for small, medium and large pelagics.

Exhibit TM-10 is an article, dated 24 July 2001, entitled Saltwater Fishing Remains Consistent by Tom Keer.  It was published in the Virtual Flyshop - Fly Fisherman's Online Network and begins, 'The warm weather has brought in a tremendous amount of pelagic fish ranging from bonito, false albacore, skipjacks, Spanish mackerel, tuna, mahi mahi and the vast amounts and diversity of baitfish has created some of the season's most interesting fishing.'

Exhibit TM-14 is an advertising promotion for a Cairns company that provides deep sea fishing expeditions and other tourist activities.  Part of its advertising promotion to attract tourists states, '..this provides excellent catches for fast moving pelagic fish.'  Another advertising promotion for a company that provides opportunities for deep sea diving states that, 'Divers often report seeing very large pelagic fish, whales, dolphins, giant manta rays and turtles.'

The applicant has not rebutted any of this evidence. The Christiansen declaration filed as evidence in answer relied only on the opinion of the declarant. It addressed three issues, none of which answers the opponent's challenge that the trade mark fails to meet the provisions of subsection 41(2) of the Act.

The first of these issues was the fact that the opponent did not request revocation of acceptance of the subject application. This is irrelevant. There is no onus on a person to canvass revocation prior to notifying opposition in terms of Part 5 of the Act.

The second matter Mr Christiansen addressed was the fact that the opponent did not oppose registration of the trade mark in New Zealand.  This is also quite irrelevant.  This matter is now proceeding and must be determined in line with Australian opposition proceedings.

The final matter addressed was the CER agreement.  Again, domestic law prevails and the opposition must proceed accordingly.

The opponent has provided a considerable body of evidence that demonstrates that the term PELAGIC is widely used and understood by fisherpersons and traders in fishing equipment and in those parts of the tourist industry that provide fishing expeditions and other opportunities to see fish in their natural habitats.  The equipment needed for fishing in open seas - pelagic fishing - is clearly different from that needed for onshore fishing or fishing in rivers, lakes and dams.  In describing goods as being pelagic, traders are indicating that the goods so described are suitable for open sea or ocean fishing.  I am persuaded, on the basis of the opponent's evidence, that PELAGIC is a term needed by traders to describe fishing equipment of that kind.

The remaining element in the trade mark is the word SERIES.  The opponent has stated that this word 'purely refers to a class of goods of the same type and gives nothing to the mark itself.'  I am inclined to agree with the opponent.  The Macquarie Dictionary defines the word 'series' as a set, as of coins, stamps, etc.  A series may include a number of, or a set of goods which meet a particular criterion such as the year of release or being the work of a particular author or designer or in the case of the goods of this application, perhaps, a number of or set of fishing items to meet the different demands of pelagic fishing.  I am satisfied, on the basis of the evidence provided, that the trade mark as a whole, PELAGIC SERIES, is not to any extent adapted to distinguish because it is an expression for which other similar traders have a legitimate need, and as per Jacobs J in the Treats case, 1996 RPC 281, it will not be perceived as a trade mark until such time as the public is educated to regard it as a trade mark.

This ground of opposition has been established.

Decision

The opponent has been successful in establishing its ground of opposition under the provisions of section 41 of the Act. Therefore, I refuse to register trade mark application number 851195.

Mary Skivington
Hearing Officer
Trade Mark Hearings
22 November 2002