Lockheed Martin Corporation v Raytheon Company

[2012] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by Lockheed Martin Corporation to protection of international registration designating Australia 1394706(13) - PAVEWAY LOGO – (international registration number 1055516) filed in the name of Raytheon Company.

Delegate:

Iain Thompson

Representation:

Opponent: Felicity Marks of Counsel instructed by Lord & Co

Holder:  David Stewart of Wrays

Decision:

2012 ATMO 102

Reg 17A.29 opposition: s41 - consideration of composite trade mark – ground not established; s59 – lack of intention to use trade mark in relation to firearms – ground not established;

Opposition not established

Background

1. This matter relates to an application under the Trade Marks Act 1995 (‘the Act’) and regulations thereto to extend protection under the Madrid Protocol to an international registration designating Australia (‘IRDA’) relevant details of which are:

Application No:               1394706

IR Number:  1055516

‘the Holder’  Raytheon Company

Filing Date:  6 October 2010

‘the Goods’:  Firearms

‘the Trade Mark’:  

1. The IRDA was examined and subsequently advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 9 December 2010.

2. On 9 March 2011 Lockheed Martin Corporation (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the protection of the IRDA. The Notice recites most of the grounds of opposition available under the Act including those under sections 41 and 59 which were subsequently argued at the hearing of the matter. For the sake of completeness I find that the grounds in the Notice other than those under sections 41 and 59 have not been established and observe that, should this decision be appealed, proceedings before the Court are de novo and any ground might be relied upon.

3. Both parties were informed of their right to be heard and both appeared by teleconference before me, a delegate of the Registrar of Trade Marks, in Canberra on 5 September 2012.  Ms Felicity Marks of Counsel instructed by Lord & Co represented the Opponent.  Mr David Stewart of Wrays represented the Holder.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 (‘Sports Warehouse’) per Dodds-Streeton J at [13].

Evidence

1. The Opponent has served and filed a declaration by Joseph Michael Serra in support of its opposition.  The Holder has not served and filed evidence in answer.

2. Mr Serra is Line Product Manager, Precision Guidance Systems of the Opponent.  Much of Mr Serra’s declaration goes to the nature of the word ‘paveway’ when used in relation to GPS and laser-guided bomb kits.

3. The parties use the word ‘paveway’[1] in relation to laser-guided bomb kits which they both sell to the Australian Defence Force.

   [1] In Lockheed Martin Corporation v Raytheon Company 2012 ATMO 102 I decided that the trade mark PAVEWAY (word) lacks any inherent adaptation to distinguish in relation to laser-guidance kits for bombs and I refused to register that trade mark.

4. Mr Serra also draws attention to the nature of the Goods.

Section 41

1. Section 41 of the Act provides:

   Trade mark not distinguishing applicant's goods or services

   41.(1) 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).

   (2) 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 (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.

   (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.

   (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a) the Registrar is to consider whether, because of the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
   (ii) the use, or intended use, of the trade mark by the applicant;
   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

   Note 1:  For goods of a person and services of a person see section 6.

   Note 2:  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 (1) and 7(3) and section 8).

   (6) If the Registrar finds that 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, the following provisions apply:

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
   (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   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:  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 (1) and 7(3) and section 8).

2. The scheme and operation of section 41 were discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241 where she said:

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “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”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that 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; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

3. The initial step is, in terms of subsection 41(3), to ‘take into account the extent to which the Trade Mark is inherently adapted to distinguish the Goods from the goods of other persons’.

4. The test for determining a trade mark’s inherent adaptation to distinguish was enunciated by Kitto J in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511, at p 514, (‘Michigan’) where his Honour described the test as follows:

   ...the 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

5. Kitto J, in Michigan at p 513, also referred to Registrar ofTrade Marks v W & G du Cros Ltd [1913] AC 624 at 634-635, where Lord Parker of Waddington said:

   The applicant's chance of success in this respect [ie in distinguishing his goods by means of the mark, apart from the effects of registration] must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses 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.

6. The question before me concerns the level of the inherent adaptation of the Trade Mark considered as a whole.

7. I have, as mentioned in Footnote 1, found that the trade mark PAVEWAY (word) lacks any inherent adaptation to distinguish the Holder’s GPS and laser-guided bomb kits.  In the course of submissions, Ms Marks made detailed argument that the individual elements of the Trade Mark also lack inherent adaptation to some degree or other.  I accept these arguments with some minor qualifications.  However, it is the inherent adaptation of the Trade Mark as a whole which I am to consider.  In Diamond T Motor Car Company (1921) 38 RPC 373; [1921] 2 Ch 583 (‘Diamond T’) Lawrence J stated at p 588:

   Now it has often been said that it is wrong, in judging whether a combination mark is distinctive or not, to dissect the mark and show that each of its component parts is not distinctive in itself and then, as the result of this process, to conclude that the mark as a whole is not distinctive.

8. In Sports Warehouse Dodds-Streeton J discussed Diamond T and said at [64]:

   His Lordship observed that whether the trade mark as a whole was not distinctive largely depended on whether other traders were likely, in the ordinary course of business, and without any improper motive, to desire to use the mark, or one resembling it, upon or in connection with their goods (at 589).

9. In the light of the above, any discussion here of the inherent adaptation of the individual elements which go to make up the Trade Mark would be otiose.  It is sufficient to observe that whatever the inherent adaptation of those elements might be, there is no obvious need for other traders to use the Trade Mark or some trade mark nearly resembling it in relation to their similar goods.  The Trade Mark is an arrangement of some six or seven elements and while it may be possible that other traders might have a legitimate need to use one or even, at a stretch, two of those elements together, I cannot imagine that there is a situation in which other traders might need to use all of them, let alone all of those elements arranged in the particular manner in which they appear within the Trade Mark.  The likelihood that some other trader might have such a need appears to me to be nonexistent.  The elements of the Trade Mark combine in a way that strike my eye as unusual, striking and distinctive such that other traders could not without improper motive need to use it in the ordinary course of trade.

10. The Opponent has not established its opposition under section 41 of the Act.

Section 59

1. Section 59 of the Act provides:

   59Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:For applicant see section 6.

2. Ms Marks submitted that the evidence served and filed by the Opponent shows that the Holder uses and intends to use the opposed trade mark on GPS and laser-guided bomb kits which are not included in the Goods.  Ms Marks argued that, this being so, the Holder cannot have an intention to use the trade mark on the Goods.

3. The Holder has not served and filed evidence which addresses its intended use of the Trade Mark.

4. The word ‘firearm’ is defined by the Oxford English Dictionary as follows:

   firearm, n.

   A weapon from which missiles are propelled by the combustion of gunpowder or other explosive. (The sing. is late and rare in use.) a1684   J. Evelyn Diary anno 1646 (1955) II. 489,  Here I purchasd my fine Carabine this Citty being famous for these fire Armes.

5. The Macquarie Dictionary provides:

   firearm

   noun a small arms weapon from which a projectile is discharged by the burning of a propellant. Compare air gun.

6. The word ‘firearms’ is a part of the heading, or general description, of Class 13 of the International (Nice) Classification of Goods and Services – the full Class 13 heading reads, ‘Firearms; ammunition and projectiles; explosives; fireworks’.

7. It is, I consider, quite obvious that the Holder’s GPS and laser-guided bomb kits do not fall within the definition of the word ‘firearms’ because neither the kits nor the bombs to which the kits are fitted are weapons from which missiles are propelled by the combustion of a propellant but are, rather, kits which are fitted to unpropelled bombs which are subsequently dropped from an aircraft.

8. On this basis, argued Ms Marks, the ground under section 59 should be established as the Holder is not seeking to register the Trade Mark in respect of its goods of interest and thus cannot have an intention to use the Trade Mark in relation to the Goods.

9. However, I consider that this argument is unsupported by the evidence served and filed by the Opponent which is said to go to this ground.  This issue is illustrated by the following example.

10. The fact that a man has always used his trade mark SAHARA DESSERT on ‘ice-cream’ (and intends to continue to do so) does not mean that he cannot subsequently form an intention to extend that trade mark’s use to ‘custards and dessert mousses’ and file an application to register the trade mark SAHARA DESSERT which reflects this new intention.  No matter how extensive the evidence that shows that the man has only ever made ‘ice-cream’ (and is likely to continue to do so) that evidence sheds no light whatsoever on the man’s intention (or lack of it) to use his trade mark in relation to ‘custards and dessert mousses’.

1. The Opponent has filed evidence which indicates that the Holder uses and intends to use the Trade Mark in relation to GPS and laser-guided bomb kits; however, the Opponent has not filed any evidence which establishes to my satisfaction that the Holder has no intention to also use the Trade Mark in relation to the Goods.  The evidence shows that both the Holder and the Opponent may be inferred to be very large companies that form parts of the USA industrial/military complex that make weapons but the evidence does not show that the Holder does not manufacture the Goods and use the Trade Mark in relation thereto, or intend to do so.  Such manufacture is obviously within the Holder’s capacity and the evidence reveals nothing of the Holder’s intention, or lack of it, to use the Trade Mark in relation to the Goods.

2. The Opponent had not established its ground under section 59 of the Act.

Decision

1. Regulation 17A.34 provides:

17A.34Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

(2)The Registrar must tell the International Bureau of his or her decision.

1. The Opponent has not to any extent established its opposition to extension of protection of the IRDA.

2. The IRDA may then proceed to protection one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application for extension of protection should be in accordance with the Court’s order or directions.

Costs

1. Having been successful the Holder is entitled to its costs which I award at the Official Scale against the Opponent.

Iain Thompson

Hearing Officer

Trade Marks Hearings

8 November 2012