Laminex Group Pty Limited
[2023] ATMO 35
•10 March 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2095624 (classes 6, 19, 20, 21, 35 and 37) – WATERLOO - in the name of Laminex Group Pty Limited
Delegate: | Benjamin Goldsworthy |
Representation: | Applicant: Phillips Ormonde Fitzpatrick |
Decision: | 2023 ATMO 35 Trade Marks Act 1995 (Cth) – s 33 – s 41 trade mark not inherently adapted to distinguish – evidence of use not sufficient – trade mark rejected |
Background
On 23 June 2020 (‘Relevant Date’) Laminex Group Pty Limited (‘Applicant’) filed an application under the Trade Marks Act 1995 (Cth) (‘Act’)[1] for registration of a trade mark for the word ‘WATERLOO’ (‘Trade Mark’) for various goods and services outlined below.
Class 6: Aluminium supports for panels; Bar connectors of metal; Bars of metal; Bathroom fittings of common metal; Brackets of metal for furniture; Bumper guards of metal (other than for vehicles); Changing rooms (structures) of metal; Channels of metal for use in constructing framed supports; Clothes hooks of metal; Cupboard fittings of metal; Cupboard fixtures of metal; Door fittings of metal; Door stops of metal; Hardware of metal (small); Hinges of metal; Lock parts of metal; Locks (other than electric) of metal; Metal boards; Metal brackets; Metal cabinets (other than furniture); Metal fittings for buildings; Metal fittings for doors; Metal head channels; Metal locks (non electric); Metal materials for building; Metal materials for construction; Padlocks of metal; Supporting brackets of metal (fixed or articulated)
Class 19: Building materials, not of metal; Chambers (non-metallic structures); Changing rooms (structures) of non-metallic materials; Construction materials, not of metal; Laminates of non-metallic materials for use in building; Non-metallic building partitions; Non-metallic prefabricated structures for use as toilets; Non-metallic screens (partitions) for bathrooms
Class 20: Bench seating; Fixings, not of metal for shelves; Lockers; Non-metallic shelves; Prefabricated shelves; Seating; Shelves made of plastics materials; Vanity unit bases being furniture adapted to support wash hand basins; Vanity units (furniture)
Class 21: Soap dishes; Toilet roll holders; Toilet utensils
(Collectively ‘Designated Goods’)
Class 35: Distribution of goods (not being transport services) and wholesale of goods; Online retail services; Retail services
Class 37: Installation of doors; Installation of fittings for buildings; Installation of locks; Installation of washroom apparatus(Collectively ‘Designated Services’)
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined under s 31 and on 8 July 2020 the examiner raised a ground for rejection under s 41 of the Act. The basis for the ground of rejection was that the Trade Mark is the name of a number of localities in both Australia and overseas. As such other traders are likely to want to use this term as a place name, for example, describing where their businesses are located or areas that they service. This position was maintained throughout several examination reports. In response, the Applicant provided various submissions and declarations, including:
Declaration of Sacha Leagh-Murray dated 15 October 2021 with Annexures 1-7;
Declaration of James King dated 2 February 2022 with Annexures JK-1 to JK-11; and
Declaration of James King dated 16 May 2022 with Annexures 1-7.
The Examiner assessed the evidence and submissions as insufficient to overcome the ground for rejection. The Applicant requested to be heard by written submissions. That hearing was scheduled and the Applicant provided its written submissions on 13 October 2022.
I was allocated this matter for decision as a delegate of the Registrar of Trade Marks (‘Registrar’). While it has been necessary to look at the examination reports to understand the issues raised, this is not a review of the examination. My role is to consider the Trade Mark application afresh.[2]
[2] Domino’s Pizza Enterprises Limited [2020] ATMO 199, [9]; MHFC Holdings Pty Ltd [2016] ATMO, [9]; Teraglow Pty Ltd [2016] ATMO 32, [5]; and TOM Organic Pty Ltd [2018] ATMO 46 [5].
Legislative Framework
Section 33 relevantly provides:
33 Application accepted or rejected
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
…
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
…
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Section 41 provides one such possible ground for rejection under s 33 as follows:
41Trade 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 applicant (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.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
Consideration
In deciding whether a s 41 ground of rejection exists, I must ask whether the Trade Mark is capable of distinguishing the Designated Goods and Designated Services as those of the Applicant from those of other traders. If I am satisfied that the Trade Mark is not so capable, s 41 requires that the Trade Mark be rejected.
Relevant to the assessment of capability to distinguish is whether the Trade Mark has ‘inherent adaptation’ to distinguish. If the Trade Mark has ‘sufficient inherent adaptation to distinguish’ the Designated Goods and Designated Services, a s 41 ground for rejection does not exist. However, if I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish, the next question will be whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that at the Relevant Date it did not in fact so distinguish, taking account of the extent of the Applicant’s use.[3] If the Trade Mark has some inherent adaptation to distinguish, it should be rejected only if I am satisfied that, after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant’s use, and other relevant circumstances, the Trade Mark did not or would not distinguish the Designated Goods and Designated Services.[4]
[3] Section 41(3).
[4] Section 41(4).
Signs that are geographical references have a long history of consideration under s 41 and its predecessors.[5] These types of signs are not automatically unregistrable simply because a place might exist with the name of the relevant trade mark.[6] However, central to the analysis is (1) the ordinary signification of the Trade Mark; and (2) the desire of other traders to legitimately make use of the Trade Mark for the sake of its ordinary signification in respect of their own similar goods and services.[7]
[5] Colliers International (WA) Pty Ltd [2022] ATMO 37; Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369; Zuru (Singapore) Pte Ltd [2021] ATMO 93; Brightwater Care Group [2021] ATMO 51; NATOWatchbands.com LLC [2021] ATMO 3; Dazzle and Shine Pty Ltd as trustee for Agnes and Charlene Trust [2020] ATMO 67; Ramsay Health Care Investments Pty Limited [2020] ATMO 11; Scotch Whisky Association v Cristian Andrei [2019] ATMO 172; The University of Sydney v The University of Wollongong [2016] ATMO 17; Marriott Worldwide Corporation [2016] ATMO 1; Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50; Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; Paramount International Export, Ltd [2009] ATMO 94; Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; Scotch Whisky Assn v De Witt [2007] FCA 1649; Blount Inc v Registrar of Trade Marks [1998] FCA 440; Oxford University Press v Registrar of Trade Marks [1990] FCA 175; Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; Western Australian Worsted and Woollen Mills Ltd's Appn (1926) 21 AOJP 463 (Reg); Thomson v B Seppelt & Sons Ltd [1925] HCA 40.
[6] Re Magnolia Metal Co’s Trade Mark (1897) 14 RPC 621 (CA) (UK), 627 (Rigby LJ).
[7] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).
In Clark Equipment Company v Registrar of Trade Marks (‘Clark Equipment’), Kitto J stated that whether a trade mark consisting of a word is ‘adapted to distinguish’ for certain goods 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.[8]
Ordinary signification
[8] [1964] HCA 55, [5] (Kitto J). This was also referenced in Cantarella, ibid, [26] (French CJ, Hayne, Crennan and Kiefel JJ).
The ordinary signification is the ordinary meaning of the word ‘Waterloo’ to persons in Australia who purchase, consume or trade in the Designated Goods and Designated Services (‘Relevant Persons’).
The Applicant acknowledges that Waterloo is an inner-city suburb of Sydney. The Gazetteer of Australia also mentions it as a geographical location. The population of Waterloo is roughly 16,000 people. Sydney is Australia’s largest city, with numerous suburbs. The Applicant submitted that persons would be unlikely to view the Trade Mark as referring to the suburb, noting a mixture of residential and commercial establishments in the location, with a commercial focus on technology and professional services. Other than bare statements, there was no evidence presented in that regard which might displace a clear ordinary signification referring to the suburb. The Applicant presented no evidence of how well known or obscure the location is in Australia. I consider it likely that, given its location and age, knowledge of the suburb of Waterloo is far beyond its own population and even persons connected to nearby suburbs. I am satisfied that a sufficient number of Relevant Persons are likely to receive the word Waterloo as referring to the suburb.
Accordingly, I am satisfied that Waterloo has an ordinary signification referring to the inner-city suburb in Sydney for a significant number of Relevant Persons.
Desire of other traders to legitimately use the Trade Mark
I must now determine the desire of other traders to legitimately make use of the Trade Mark to refer to their similar goods and services for the sake of the ordinary signification. The Applicant asserts that other traders are not likely to require use of the Trade Mark.
Reflecting the difficulties that trade marks which consist solely of geographical signification face, in Clark Equipment, Justice Kitto stated:
… the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if the goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods... [9]
[9] Clark Equipment (n 8) [7] (Kitto J).
Similarly, in Oxford University Press v Registrar of Trade Marks, Gummow J stated:
The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[10]
[10] [1990] FCA 175, [41].
That Waterloo is a suburb, rather than a broader geographical area such as a ‘district or county, a state or a country’ does not itself obviate the possibility of a trade mark having insufficient or no inherent adaptation to distinguish. Nor does it necessarily mean that desire to descriptively use the word is not likely.[11] That Waterloo is perhaps not as famous as suburbs such as Bondi or St Kilda, as suggested by the Applicant, also does not make such unlikely. In Henley even a relatively low population, roughly 400 persons, and few examples of actual use of the word ‘Henley’ for the relevant services still demonstrated a lack of inherent adaptation to distinguish and the likelihood of a relevant desire for use of the Trade Mark for its ordinary signification.[12]
[11] Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369, [815] and [819]-[821] (Anderson J) (‘Henley’). See also, Mid Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616; (1998) 42 IPR 561, 574 (Burchett, Sackville and Lehane JJ) with mention of suburbs being part of the common heritage.
[12] Henley (n 11) [814]-[816] (Anderson J).
Waterloo is reasonably well populated, and the Applicant acknowledges it hosts various commercial operations. Waterloo is not a place where the Designated Goods and Designated Services are very unlikely to originate, so its use is not fanciful. All Designated Services likely exist in suburbs which are situated, populated and industrialised like many inner-city suburbs across Australia. Many Sydney suburbs offer a variety of goods and services and Sydney is known to host small factories and warehouses in various locations. The Applicant has not provided any evidence regarding the asserted low probability for relevant manufacturing in Waterloo or for lack of actual manufacturing activities there. No evidence was presented as to how traders manufacture the Designated Goods, or the basic industrial requirements for such. Further, there are no clear barriers in the form of industrial requirements or other practical impossibilities, to the manufacture of the Designated Goods in Waterloo.[13] The Designated Goods and Designated Services are not uncommon or highly specialised and technical.[14] A variety of goods and services are in fact provided from the suburb Waterloo. It is reasonable to suppose that the Designated Goods or Designated Services might originate from this central inner-city location in the future. This is so despite the apparent development of the location and focus on professional and technology related services.
[13] For example, those noted in R & R C Bond (Wholesale) Ltd [2021] ATMO 36, [17]-[20]. See also, Western Australian Worsted and Woollen Mills Ltd's Appn (1926) 21 AOJP 463.
[14] Commonality was examined in Henley (n 11) [818] (Anderson J).
The Applicant referred to a recent decision of a delegate of the Registrar where a trade mark application for the word ‘Barton’ was considered under s 41(4) rather than s 41(3).[15] Barton is a suburb of Canberra with a fairly small population (less than 2000 persons) and little industry. Waterloo is in contrast a heavily populated and central suburb in Sydney, the largest city in Australia. Unlike Barton, Waterloo is likely to be known by a significant number of Relevant Persons, even outside the immediate area in which the suburb exists. If rate of travel to or through Waterloo is relevant, as was asserted by the Applicant, it is likely that Waterloo would experience significantly greater traffic, including of persons from various Australian locales, than Barton. Regardless, a reputation of a place name is not a pre-requisite for an absence of inherent adaptation to distinguish.[16] As far as there may be some apparent disagreement between the Barton and Henley decisions on whether the name of a suburb lacks any inherent adaptation to distinguish, I must prefer the reasoning of Henley, since it is both later in time and binding precedent. In any case, the population of Waterloo is several times that of Barton and Henley combined. There is a reasonable prospect that other traders may wish to use the geographical name Waterloo for goods or services the same as, or similar, to those designated. In summary, to echo the words of Kitto J in Clark Equipment, I consider it well within the bounds of reason to suppose that persons other than the Applicant may in the future produce the Designated Goods in or offer those goods from Waterloo, or perform the Designated Services to or from Waterloo.[17]
[15] NATOWatchbands.com LLC [2021] ATMO 31 (‘Barton’).
[16] For example, in Henley (n 11), where the suburb concerned was relatively small, populated by few persons and had a low probability of recognition by the public.
[17] Clark Equipment (n 8) [8] (Kitto J).
The Trade Mark consists solely of a word which is likely desired to be used, in the normal course of trade, without improper motive, by other traders to describe the origin of their similar goods or services. The Trade Mark is not to any extent inherently adapted to distinguish the Designated Goods and Designated Services from those of other persons. Accordingly, I am satisfied that the Trade Mark should be considered under s 41(3).
Evidence of use
I must now decide whether the Applicant has used the Trade Mark to such an extent that the Trade Mark does in fact distinguish the Designated Goods and Designated Services as being those of the Applicant. To put this another way, evidence needs to show that use of the Trade Mark by the Applicant has been to such an extent that the word Waterloo now carries with it a second meaning, so that Relevant Persons will in fact view this word as a badge of origin indicating that the Designated Goods and Designated Services come from the Applicant, rather than from anyone servicing or from the suburb. Under the terms of s 41(3) only evidence of use of the Trade Mark from before the Relevant Date can be considered. The Applicant has submitted that the extent of its documented use demonstrates the Trade Mark does in fact distinguish the Designated Goods and Designated Services.
Use with additions or alterations substantially affecting the identity of the Trade Mark
It is useful to first explore a sub-issue concerning the evidence of the Applicant. Across the Applicant’s evidence there were, in summary, eight main variations of use of Waterloo by the Applicant. For ease of reference, I have reproduced these below with a shorthand term.
| Trade Mark | Sign as used in evidence |
| Plain Word | Waterloo |
| ‘Other Use(s)’ | |
| Combination-1 | Laminex Waterloo |
| Combination-2 | Laminex® Waterloo® |
| Yellow-Blue W-Mark | |
| Blue W-Mark | |
| White W-Mark-1 | |
| White W-Mark-2 | |
| Black W-Mark-1 | |
| Black W-Mark-2 |
A use not being the Plain Word will only constitute use of the Trade Mark if any additions and alterations do not substantially affect the identity of the Trade Mark.[18] The Applicant asserts a ‘common identity’ exists between the Other Uses and the Trade Mark because the word ‘Waterloo’ is a shared element.
[18] Section 7(1).
To find that such additions or alterations do not substantially affect the identity of the Trade Mark, ‘it is necessary to find that a total impression of similarity emerges from a comparison between the two marks’.[19] I must compare the trade marks side-by-side, note the similarities and differences and assess their importance having regard to the essential features of the trade marks.[20] The addition or subtraction of a prominent element to or from a trade mark which is capable of distinguishing only as a combination is likely to affect the identity of the mark.[21]
[19] Optical 88 Limited v Optical 88 Pty Limited (No 2) (Includes Corrigendum dated 26 May 2011) [2010] FCA 1380 (‘Optical 88 (No 2)’), [256] (Yates J), citing Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [61] (Gummow J) and Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 (‘Shell’), [12] (Windeyer J).
[20] Shell, ibid, 414, [12] (Windeyer J).
[21] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [112] (Dodds-Streeton J). See also, British Sugar Plc v James Robertson & Sons Limited [1996] RPC 281 (Ch) (UK) (Jacob J).
The Applicant referred to E & J Gallo Winery v Lion Nathan Australia Pty Ltd[22] and Insight Clinical Imaging v Insight Radiology Pty Ltd[23] concerning the issue of substantial identity. These cases did not concern substantial identity for the purposes of deciding the issue of a s 41 ground of rejection, nor did they concern the extent of use in relation to whether a Trade Mark did in fact distinguish the relevant goods and services. More instructive is the recent decision of a Delegate in Bonza Aviation Pty Ltd.[24] There the addition of a thumbs-up device forming the letter ‘b’ assisted in making a combination with the word ‘bonza’ capable of distinguishing. Accordingly, evidence of use of the stylised word was not considered use of the plain word, which was the subject of the s 41 ground of rejection. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[25] the importance of the presentation of the relevant trade marks was noted in comparing two stylised versions of a single word.[26] I consider the significance of the presentation of the various elements and effects on the relative capability to distinguish as relevant factors for the consideration of substantial identity.
[22] [2010] HCA 15, [67]-[69] (French CJ, Gummow, Crennan and Bell JJ).
[23] [2014] ATMO 85.
[24] [2022] ATMO 188
[25] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (‘PDP Capital’) (Jagot, Nicholas and Burley JJ), where the Court found the trade marks were not substantially identical.
[26] This office has also noted such importance before. For example, Active Skin Pty Ltd v Yey Pty Ltd [2021] ATMO 139, [33].
When compared side by side with the Trade Mark, it is clear that each of the Other Uses do share a commonality in the word ‘Waterloo’. However, the visual presentation of each differs significantly. Just because two trade marks both contain word elements that are the same does not necessarily mean those trade marks are substantially identical.[27] Most of the Other Uses contain a highly stylised concertina rendition of the letter ‘W’. Some argument might be made that the stylised ‘W’ descriptively refers to a concertina partition wall. However, the image does not appear descriptive of the Designated Goods and Designated Services. The additional words ‘[l]eaders in wet area partitioning & locker systems’ contribute little in the way of trade source indicia and appear descriptive of the Designated Goods and Designated Services. However, the stylisation of the letter ‘W’ at least brings the totalities of each Other Use closer to being a signification as to a trade source rather than a geographical reference. All of these additions and alterations are noticeably absent from the Trade Mark. When applying the relevant considerations, including the presentation and its impact, the total impression which emerges is one of dissimilarity. In my assessment, the Trade Mark is not substantially identical to Other Uses featuring the stylised ‘W’. I also consider Combination-1 and Combination-2 as not being substantially identical to the Trade Mark. The additional and proximate word ‘Laminex’ is significant and is itself well adapted to distinguish. Again, comparing the trade marks side by side, the total impression which emerges is one of dissimilarity.
[27] PDP Capital (n 25) (Jagot, Nicholas and Burley JJ); Optical 88 (No 2) (n 18) (Yates J).
Accordingly, I give the evidence of Other Uses as outlined above no weight, in demonstrating that the Trade Mark at the Relevant Date in fact distinguished the Designated Goods and Designated Services as being those of the Applicant. I now turn to the extent of use of the Trade Mark.
Consideration of the extent of use
The Applicant states that first use occurred in 2009 by a predecessor in title and use by the Applicant itself occurred since at least August 2018. The three declarations include a mixture of brochures, quotations, purchase orders and screenshots of its own website (Applicant’s Website), which predominately feature the Yellow-Blue W-Mark or Blue W-Mark. For reasons given above these do not assist the Applicant. Throughout these materials there is some Plain Word use, though limited. The screenshots of the Applicant’s Website make reference to the Designated Goods without specificity and mainly display images of cubicles. The screenshots span roughly an 11 year period, which is not a lengthy period for the nature of the ground of rejection. The social media evidence is also of little strength and assistance, with 11 ‘YouTube’ views of a video displaying the Blue W-Mark. Screenshots of third-party websites show some Plain Word use, though it is not helpful since it is dated after the Relevant Date. Some annexures show only or predominately Combination-1 or Combination-2, which I do not consider of great strength. Some evidence is not clearly dated and of an unknown location or prominence, showing the White W-Marks, Black W-Mark and Yellow-Blue W-Mark, and is merely stated as being representative of the advertising prior to the Relevant Date. A few photographs of installations were also provided as well as business cards and internal induction documents for employees, featuring predominately the Other Uses.
The declared sales figures are seemingly substantial, though of limited assistance because they do not provide necessary demarcation or itemisation. The figures do not provide amounts for specific Designated Goods or Designated Services. They do not demarcate figures for sales occurring via online, retail and wholesale channels. Sales ratios for specific Designated Services versus Designated Goods are not provided. The location of any retail shops is not specified. The sales figures are of broad turnover figures, despite various Designated Goods and Designated Services claimed across six classes. The Applicant also provided invoices across various years before the Relevant Date, prominently displaying the Blue W-Mark, with some use of the Plain Word and Combination-1 in the itemisation. These invoices are not significant in total overall sales amount, number of invoices, or temporal and geographical reach.
No evidence was provided about consumer and user saturation, access metrics or otherwise the exposure rates for any of the installation guides, marketing material or noted websites. I also note that the advertising expenditure which was given across a few years appears quite small.
Overall, the evidence shows that use of the Plain Word before the Relevant Date was limited. Almost all of the documentation contains or consists solely of Other Uses, all of which I have found above include alterations or additions which substantially affect the identity of the Trade Mark. Whilst all the Designated Goods and Designated Services do appear represented throughout the totality of the evidence, I do not consider the evidenced extent of use to be sufficient for the purposes of s 41(3).
I am satisfied that the Trade Mark did not in fact distinguish the Designated Goods and Designated Services as those of the Applicant, at the Relevant Date.
Decision
Section 33 provides:
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
Note: For this Act see section 6.
(2) The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note: For this Act see section 6.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
I am I satisfied that there is a ground under s 41 of the Act for rejecting the application. In accordance with s 33(3), I reject trade mark application number 2095624.
However, if the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s order or direction.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
10 March 2023
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34
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