Jobnet Worldwide Pty Limited v Elisabeth Lange

[2002] ATMO 35

TRADE MARKS ACT 1995

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

Re:      Opposition by Jobnet Worldwide Pty Limited to registration of trade mark application 732376(16,35,41,42) - TOOLBOX - filed in the name of Elisabeth Lange.

Background

Trade mark application number 732376 is an application to register the word toolbox in the following classes:

Class: 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter, bookbinding material; photographs; stationery, instructional and teaching material, plastic materials for packaging; not including printed matter relating to toolboxes, statistical process control software, or software routines of computer programmes

Class: 35 Advertising, business management, business administration, office functions

Class: 41 Education and training in the fields of business and commercial enterprise and management and personal development, and not related to any software routines or computer programming

Class: 42 Legal services

The application was filed on 15 April 1997 ("the relevant date") by Elisabeth Jane Lange, of Parkside South Australia ("the applicant"). 732376 was duly examined and, on 25 May 2000, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted this trade mark for registration.

On 24 November 2000, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), Jobnet Worldwide Pty Limited, of St Leonards New South Wales ("the opponent") filed opposition to the registration of 732376, nominating grounds as per sections 41, 42, 44, 58, 59, 60 and 61 of the Act.

The opponent served on the applicant, and filed with the Trade Marks Office, evidence in support of the opposition.

There is no evidence in answer from the applicant.

Neither party has requested to be heard in this matter. Accordingly, the matter has come to me as a delegate of the Registrar of Trade Marks to decide on the material held on the file. The opponent has filed written submissions to support its case. The applicant has made no representations.

The Evidence

The evidence in support of the opposition includes a statutory declaration by Trevor Noel Beadle, attorney for the opponent, dated 23 February 2001. Mr Beadle exhibits the results of searching the Internet for the term toolbox using the Techencylopedia website, the Yahoo and ANZWERS search engines. The Techencylopedia does not provide a definition for toolbox, but rather cross-references the terms toolkit and toolbar. He also exhibits a newspaper article discussing on-line TAFE courses utilising "toolboxes", which I understand to be the learning materials for a particular course conducted "on-line". Mr Beadle states that the goods in classes 35, 41 and 42 specified in the statement of goods can all be provided electronically on-line via the Internet.

The evidence in support of the opposition also includes a statutory declaration by Paul Anthony Quinn, the Group Marketing manager of Candle Australia Limited, a recruitment service provider specialising in the IT industry, dated 18 May 2001. Mr Quinn states that the word toolbox describes a facility that is available using a computer and that offers a suite of computer facilities from which the user of the computer based service can select.

There is no evidence served or filed by the applicant.

Submissions, Considerations and Findings

The opponent's evidence and written submissions were directed to section 41 of the Act. I will refer to the opponent's submissions in the course of my considerations below.

There being no evidence to support the other grounds of opposition, I dismiss them.

Section 41 - Capable of Distinguishing
Section 41 provides for the assessment of the capability of trade marks to distinguish the designated goods or services of one trader from the goods or services of other persons. The initial step is provided for, in terms of subsection 41(3):

(3)     In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

The classic statement of the test involved is that of Kitto J in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

[T]he question whether a mark is adapted to distinguish [is to] 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.

The opponent states that the evidence shows that the word toolbox is a term of the electronic communication art and is universally used to describe a standard function or tool available on all computers. It was also submitted that such a device is used in all Internet systems and in other electronic communication, such as e-mail.

The opponent further submits that, assuming the above premise is accepted, then the word is directly descriptive of any service detailed under the opposed application that can be provided electronically via the Internet, or the like, using the standard available facilities of the toolbox provided on the user's computer. The opponent stated that this was clearly the case with advertising services, which many of the Internet service providers provide electronically with "toolbox" assistance.

The opponent submits that registration of toolbox would not be in the public interest, as it would seriously inhibit Internet users continuing to use toolbox facilities.

The opponent submitted that the application should be refused in its entirety because each one of the services detailed in the application can potentially be performed using a toolbox facility. In the alternative, it was submitted that the application services should be restricted to exclude all services capable of being provided in conjunction with a toolbox facility.

I am satisfied that the terms toolbox, toolkit and toolbar are information technology ("IT") industry terms each of which means a set of software routines or utilities ("tools") that are used to develop and maintain applications and databases (see Mr Beadle's declaration, exhibit TNB-1. I also accept Mr Quinn's evidence that he has used toolbox facilities when utilizing computer-based services.

However, I am not satisfied that "toolbox" is directly descriptive of any service detailed under the opposed application that can be provided electronically via the Internet. It should be noted that the applicant's class 16 goods and class 41 services expressly exclude software routines or computer programming. Class 42 is limited to Legal services, excluding scientific and technological service and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

The remaining services - Class 35 Advertising, business management, business administration, office functions, - are likely to utilise IT hardware and software, including Internet use. However, notwithstanding that the Internet software might employ a toolbox function, I am not satisfied that toolbox is a direct reference to a characteristic of the services which determine their nature: see Sports Break Travel Pty Ltd v P & O Holidays Ltd(2000) 50 IPR 51, at 61. Toolbox is not descriptive of the character of the relevant services, nor does it inherently refer to the relevant services: see TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc(2000) 48 IPR 513, at 524.

In my opinion, "toolbox" has been shown to be an indirect reference to a component of one potential means of delivery of the applicant's services. There is nothing in the evidence, however, to show that "toolbox" has any direct meaning in respect of stationery goods. The word may directly refer to a characteristic of software employed in the delivery of advertising, educational and legal services, but "toolbox" is not a word that directly describes a characteristic of advertising, educational or legal services themselves. It is therefore not a word, which for the sake of its ordinary signification is likely to be required by other persons in their supply and promotion of advertising, educational and legal services. I find, therefore, that I am satisfied that the applicant's mark toolbox is capable of distinguishing the goods and services nominated in the application.

I find that the opponent has not established this ground of opposition.

Decision

The opponent has not established any of its grounds of opposition. I therefore dismiss the opposition. Subject to the payment of the requisite fees and the expiration of one month from the date of this decision, the applicant's trade mark may proceed to registration.

Costs

The opponent sought its costs in this matter, while the applicant made no submissions regarding costs. I make no order as to costs.

Jock McDonagh
Hearing Officer

18 April 2002