LEAFSCREENER – in the name of Grayson’s International Pty Ltd

[2022] ATMO 141

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2085666 (class 6) – LEAFSCREENER – in the name of Grayson’s International Pty Ltd.

Delegate:

Nicholas Butson

Representation:

Applicant: Self-represented

Decision:

2022 ATMO 141

Trade Marks Act 1995 (Cth) – s 33 proceeding – s 41 – trade mark is not to any extent inherently adapted to distinguish – evidence of use considered but not sufficient – trade mark application rejected.

Background

1. This is a decision under s 33 of the Trade Marks Act 1995 (Cth),[1] in respect of the following trade mark application filed by Grayson’s International Pty Ltd:

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation of the Trade Marks Regulations1995 (Cth).

   Trade mark number:      2085666

   Trade mark:   LEAFSCREENER (‘Applicant’s Trade Mark’)

   Applicant:   GRAYSON’S INTERNATIONAL PTY LTD (‘Applicant’)

   Filing date:   4 May 2020 (‘Relevant Date’)

Specification:                    Class 6: Metallic building materials and components including, roof materials, large items of hardware, plumbing accessories, drainage parts, gutter protection parts, gutter guards, meshes, barriers, fire ember guards, fixing devices, grids, guttering, spouting, pipes, tubes, water storage containers, coverings for guttering, wire, props, posts, collars, bolts, screws, angle trims, fittings, anchors, clip clamps, screens, sheets, channels, extrusions, castings, wire products and small items of hardware; common metals and their alloys; metal hardware (‘Applicant’s Goods’)

1. The application was examined and the examiner raised grounds for rejection under s 41. These were articulated in the first examination report as follows:

   In relation to the Section 41(3) grounds for rejection:

   Your trade mark consists of the word LEAFSCREENER.

   A LEAFSCREENER is a layer of protective mesh, commonly made of metal, placed over roof guttering to protect gutters from filling up with leaves. This indicates that your metallic building materials and components being those that are mesh or specified as roofing or guttering materials are used to protect gutters from filling up with leaves, thus acting as a LEAFSCREENER.

   Other traders should be able to use LEAFSCREENER, or something so nearly resembling this, in connection with goods or services similar to yours.

   In relation to the Section 41(4) grounds for rejection:

   Your trade mark consists of the word LEAFSCREENER.

   A LEAFSCREENER is a layer of protective mesh, commonly made of metal, placed over roof guttering to protect gutters from filling up with leaves. This indicates that your metallic building materials and components and general metal goods are used as parts of or in the production of LEAFSCREENER's.

   Other traders should be able to use LEAFSCREENER, or something so nearly resembling this, in connection with goods or services similar to yours.

2. In response, the Applicant filed submissions and evidence relating to the history of the Applicant’s Trade Mark, including business, phone word, domain name registrations and examples of use in the marketplace. The examiner did not find these submissions and evidence persuasive and communicated this to the Applicant in the second examination report.

3. The Applicant filed further submissions relating to use of the Applicant’s Trade Mark in the marketplace, as well as earlier registered trade marks filed by the previous owner in title. This included evidence relating to sales for the 2019/2020 financial year. However, the sales were not specifically in relation to the Applicant’s Trade Mark. The examiner did not find this evidence persuasive either and maintained the grounds for rejection in the third examination report to the Applicant.

4. The Applicant then requested to be heard. Prior to the hearing, the Applicant was given the opportunity to provide additional submissions or evidence, which were filed on 3 July 2022. This matter was heard by me, a delegate of the Registrar of Trade Marks, on 4 July 2022. Grayson O’Connor made written and oral submissions on behalf of the Applicant. Afterwards, the Applicant was given the opportunity to file relevant supplementary evidence, which it did.

5. These submissions and evidence primarily focus on two points, firstly that the Applicant’s Trade Mark is not descriptive of the Applicant’s Goods, and secondly that the trade mark is or will become capable of distinguishing based on the extent of its use in the marketplace.

6. As a preliminary matter, I note that I am required to consider the matter afresh and I am not bound to follow the decision of the examiner.

Section 41

1. Section 41 relevantly provides:

   (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.

   …

   (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.

2. The inherent adaptation of a trade mark is assessed:

   [B]y 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.[2]

   [2] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

3. This is a two-step process.[3] The first step is to identify the ordinary signification that the word(s) possess. The second step is to determine whether, considering the ordinary signification, other traders may legitimately desire to use the words in respect of their own similar goods and services.

   [3] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

Ordinary signification

1. The ordinary signification is the ordinary meaning of the words to any person in Australia who may trade in or consume the Applicant’s Goods.[4]

   [4] Ibid [70].

2. The Applicant’s Trade Mark, consists of the English words leaf and screener. A leaf is a reference to a part of a plant. Screener is a variation of the word screen, being ‘anything that shelters, protects, or conceals’, as well as relevantly here to ‘sift by passing through a screen’.[5] While the general term for goods that act this way is a screen rather than a screener, for example security, fly or wind screens, this does not substantially alter the overall meaning. I am also satisfied the overall meaning is retained even in upper case and as a composite of two words. As such, the ordinary signification of a LEAFSCREENER is a device for the purpose of screening, protecting from or filtering leaves.

   [5] Macquarie Dictionary (online at 2 August 2022) ‘Screen’ (def 8 and 16); The Britannica Dictionary (online at 2 August 2022) ‘Screener’.

Other traders

1. Having determined the ordinary signification, I must consider whether other traders would desire to use LEAFSCREENER or something so nearly resembling it for its ordinary signification, without improper motive.[6]

   [6] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

2. The Applicant has provided submissions in relation to a consideration for consistency, since Applications filed by the previous owner in title for LEAFSCREENER in class 19, achieved registration in the past.[7] It is important to note that under the s 41 test each trade mark is to be examined on its own merit at the filing date (Relevant Date).[8] I will however comment that one of these earlier trade marks features a stylised leaf image device, which substantially changes the considerations for the s 41 ground and is therefore not relevant to the considerations here for the plain words LEAFSCREENER. Additionally, both of the earlier registrations are in relation to slightly different goods and a substantial amount of time has passed in the marketplace since their filing date in the year 2000, which can lead to different considerations under this ground and the relevant test. As such, while earlier registrations are a relevant consideration, I am not bound by this precedent.

   [7] Australian trade mark numbers 831484 and 849621.

   [8] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 303 (Jacob J).

3. The Applicant submits that the word LEAFSCREENER was created by the previous owner in title. The Applicant also submits that LEAFSCREENER is not a generic term in the marketplace to use for gutter covering and that the more prevalent term is ‘gutter guard’. The Applicant also submits that use by other traders, in its opinion, is actually use by competitors in order to genericise the Applicant’s Trade Mark.

4. The evidence demonstrating that other traders are using or not using the Applicant’s Trade Mark or something so nearly resembling it, is instructive, but not in itself determinative.[9] The ‘other traders’ aspect of the test is a hypothetical question,[10] in relation to whether traders are likely without improper motive, to desire to use the words for the ordinary signification which they possess in respect of their own similar goods.[11]

   [9] Openfit LLC [2022] ATMO 96, [15] (Hearing Officer Brown).

   [10] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (Kenny J), [96]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [146] (Besanko, Jagot & Edelman JJ).

   [11] Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235, [158] (Burley J).

5. An approach to this question was considered in Telstra Corporation Ltd v Phone Directories Co Pty Ltd:

   If a word mark is taken as an example, the ordinary signification of the mark, and the question of “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” … are closely related questions. Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required.[12]

   [12] [2015] FCAFC 156, [126] (Besanko, Jagot & Edelman JJ).

6. The Applicant’s Trade Mark features two commonly understood words, conjoined, which together create an ordinary meaning of the purpose of the goods – to screen, or filter out, leaves. Since these are a pair of ordinary English words, consumers are likely to read or hear the trade mark in two parts with a natural break between LEAF and SCREENER. Nothing in the definition of these words or in joining them together, changes the meaning or creates an unusual and therefore distinctive idea. This is a combination of words which other traders, without improper motive, may desire to use to indicate that their own similar goods will screen leaves.

7. In my assessment, the Applicant’s Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Goods from those of other persons, under s 41(3).[13]  

   [13] As can be seen in the excerpt from the examination report reproduced in the background earlier, the examiner had objected to certain goods under s 41(4). This provision applies when a mark is, to some extent, but not sufficiently, inherently adapted to distinguish goods. But in my view those goods could be for the purpose of, or include features in relation to screening leaves, so it is appropriate for the s 41(3) ground for rejection to apply in relation to all of the Applicant’s Goods.

8. As the Applicant’s Trade Mark has been found to not to any extent, be inherently adapted at the Relevant Date, it is now relevant to consider the evidence of use submitted by the Applicant.

Evidence of use

1. Despite its lack of inherent distinctiveness, the Applicant’s Trade Mark must not be rejected if through use in the marketplace before the Relevant Date, it distinguishes the Applicant’s Goods from those of other traders. A finding of whether a trade mark has acquired such distinctiveness, involves a consideration of any evidence of trade mark use in the marketplace.

2. The Applicant has submitted a variety of information and evidence relating to the use of the Applicant’s Trade Mark. Some of the examples provided feature LEAFSCREENER combined with a stylised leaf image device,[14] as seen below:

1. As stated in Woolworths Ltd v BP Plc (No 2):

   The trade mark that is the subject of the application must conform with the trade mark that was used before the relevant filing date, because it is the extent to which that prior use has distinguished the designated goods or services as being those of the applicant which must be assessed.[15]

   [15] [2006] FCAFC 132, [79] (Heerey, Allsop and Young JJ).

2. Use of the stylised forms will only constitute use of the Applicant’s Trade Mark if the additions or alterations do not substantially affect its identity.[16] In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J relevantly observed:

   [16] Trade Marks Act 1995 (Cth) s 7(1).

   The addition or subtraction of a prominent element to or from a mark which is capable of distinguishing only as a combination is likely to affect the identity of the mark.[17]

   [17] [2012] FCA 81, [112].

3. The addition of the stylised leaf device element to the word LEAFSCREENER plainly affects the identity of the Applicant’s Trade Mark. As such, any use of the composite trade mark featuring this leaf device, does not constitute use of the Applicant’s Trade Mark. None of the examples with the stylised leaf device assist the Applicant in demonstrating that the plain word LEAFSCREENER did in fact distinguish the Applicant’s Goods at the Relevant Date.

4. The two declarations from Mr Grayson, which were filed in response to examination reports set out of the following relevant submissions and evidence:

1. The first use of LEAFSCREENER by the previous owner in title was in the early 1990s and it has been continuously used since then. A business registration certificate was included from 1993.

2. The Applicant owns the domain name which was originally registered in 1999.

3. The Applicant has acquired two related phone words containing the word LEAFSCREEN as well as a few social media pages.

4. Two advertising invoices in 2005 showing money was paid to advertise in the Yellow Pages, as well as images of two advertisements in the Sydney/Melbourne Yellow Pages. These two advertisements do show use of the word LEAFSCREENER without the stylised leaf device.

5. Mr Grayson declared that in the 2019-2020 financial year the Applicant sold a variety of metal products under the LEAFSCREENER trade mark as well as other trade marks owned by the Applicant. Financial turnover for this financial year was also provided, however, again not just in relation to the LEAFSCREENER trade mark. I am unable to give this any significant weight as it is unclear how much of this use was in relation to the LEAFSCREENER trade mark specifically and whether this was use with or without the stylised leaf device.

1. In the lead up to and after the matter was heard, the Applicant also filed the following relevant evidence of use:

1. A declaration from the previous owner in title, Theofani Groom. This declaration contains submissions relating to first and continual use by the previous owner in title. This declaration includes a statement that gutter and roof related goods were sold from the 1990s to late 2010s with the Applicant’s Trade Mark attached. It is however, hard to give this submission significant weight without more specific evidence and details.

2. Theofani Groom also declares that the Applicant’s Trade mark was advertised in the Yellow Pages at some point and that from 2000 till 2020 the Applicant’s Trade Mark was ‘advertised online’. Again it is hard to give this submission significant weight without more specific evidence and details.

3. A declaration by McDonald Silver, who works in the industry and now is a franchise owner of the Applicant. Mr Silver states he has installed metallic products featuring the Applicant’s Trade Mark since 2009, along with information about their use of certain metallic components in installation. Again it is hard to give this submission significant weight without more specific evidence and details.

4. Mr Grayson provided another declaration including 4 invoices featuring the Applicant’s Trade Mark from the 2016-2019 period, showing the sale of some of the claimed goods, including screws and mesh.

5. Mr Grayson’s declaration also annexes a screenshot of an online Yellow Pages directory featuring the Applicant’s Trade Mark and their phone number.

6. Mr Grayson’s declaration also includes an image of some metallic items featuring the word LEAFSCREENER, however, these also include the aforementioned stylised leaf device.

7. Mr Grayson’s declaration also includes an image of the Applicant’s Trade Mark attached to a variety of metal products dated as being from 9 November 2020. This is past the Relevant Date and so cannot be considered here.

1. I cannot give significant weight to a variety of the Applicant’s submissions and evidence for the following reasons. Much of the evidence is vague statements relating to sales or use without material that objectively supports the claims. Sufficiently clear sales and marketing expenditure figures relating specifically to the Applicant’s Trade Mark have not been provided. The examples of use provided show that only very occasionally has the Applicant’s Trade Mark been used in the form applied for (i.e. plain words). Far more often it appears as part of a composite with the stylised leaf device. As such, it is unclear whether the Applicant’s claims of use in many of their submissions is use with this stylised leaf device, or use of the Applicant’s Trade Mark.

2. The evidence of business, phone word and domain name registrations is also difficult to give significant weight. These merely shows that these things were registered and do not demonstrate the extent to which they were used or known by customers.

3. In summary, the evidence provided is fairly slim and much of it can be afforded little weight. Having regard to the extent to which the evidence demonstrates use of the Applicant’s Trade Mark, I am satisfied that the plain word LEAFSCREENER did not in fact distinguish the Applicant’s Goods in the minds of the relevant public at the Relevant Date.

Decision

1. I am satisfied that there is a ground for rejecting the Applicant’s Trade Mark under s 41(3). In accordance with s 33(3)(b), I reject trade mark application number 2085666 for all of the Applicant’s Goods.

Nicholas Butson

Hearing Officer

Delegate of the Registrar of Trade Marks

24 August 2022