Luk Lamellen and Kupplungsbau Beteiligungs KG

[2003] ATMO 12

TRADE MARKS ACT 1995

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

Re:Trade mark application number 763244(12) - CO: YELLOW- in the name of Luk Lamellen und Kupplungsbau Beteiligungs KG.

On 26 May 1998 Luk Lamellen und Kupplungsbau GmbH ('the applicant') filed trade mark application 763244 for the trade mark consisting of the colour YELLOW applied to goods in classes 4 and 12 as set out below:

Class 4:
Oil and grease for technical purposes as well as fuel (including gas and liquids)

Class 12:

Parts of on and off road vehicles including power transmission, vibration absorption and control, like torque transmitting devices, clutch cover assemblies, clutch disc assemblies, clutch friction facings, clutch pressure plates, pilot bearings, clutch thrust bearings, release bearings, release systems, clutch actuators, dual mass flywheel, vibration absorbers, V-belt pulleys, V-belt pulley dampers accessory drive isolators, electronic torsion control isolation system, inertia flywheel clutches, centrifugal clutches, drive shafts, vibration isolators, hydrostatic and hydrodynamic torque converters, torque converter clutches, discs, diaphragm springs, wave washers, brake bands, hydraulic pumps and motors, steering systems, also with electronic control units, hydraulic accessories including compensation systems, hydraulic valves, hydraulic fluids for cars, hybrid drives, as well as transmissions, automatic and semi-automatic transmissions, both as a range transmission and as a continuously variable transmission, their component parts, shift mechanisms and control systems and assemblies for this; tools and shop equipment for the change, the repair and the recycling of the aforementioned parts and assemblies.

The description of the mark as supplied by the applicant was:

The mark consists of yellow colour applied to the goods, as shown in the representation attached to the application.

Under the provisions of section 29 of the Trade Marks Act 1995 ('the Act') the applicant claimed a priority date of 28 November 1997 in respect of class 12 only, and this was based on German Trade Mark Application No 39757189.5.

The application was duly examined. At the outset, grounds for rejection were raised under sections 41 and 44, the examiner finding that the colour YELLOW had no inherent adaptation to distinguish the designated goods, and that deception and confusion was likely in the face of prior registration 702586. The examiner also found that some of the designated goods did not fall into the classes nominated and suggested the applicant could add the relevant classes or delete the goods concerned.

The applicant restricted its goods to vehicle clutches including clutch covers, clutch plates and clutch release bearings in class 12, and the ground for rejection under section 44 was withdrawn. At this stage, the applicant also amended its name to Luk Lamellen und Kupplungsbau Beteiligungs KG.

In an attempt to overcome the s41 ground for rejection, the applicant provided evidence of use. The examiner, however, found this evidence insufficient and maintained the ground for rejection in terms of subsection 41(6). The examiner also determined that, as per the evidence, use of the colour YELLOW was in relation to the packaging of the designated goods only, not the goods themselves. The applicant was requested to amend the description of the mark to reflect this.

The applicant did not provide further submissions but requested a decision on the written record.  The matter has come to me, as Registrar's Delegate, to decide on the basis of the material on file. 

Evidence

The applicant's evidence of use consists of the statutory declaration of Wolfgang Hess dated 19 September 2000.  In his capacity as Sales Director for AS Autoteile Service GmbH & Co, distributor of the applicant's products, Mr Hess provides information relating to the applicant's use and promotion in Australia of the colour YELLOW as an aspect of packaging of goods in Australia.  The declaration attests to use of the colour both singly and in combination with the colour BLACK.  Mr Hess also points to instances where the colour YELLOW or colour combination BLACK and YELLOW have been registered or accepted overseas. Attached to the declaration are Exhibits "A" to "G", which are examples of sales catalogues and brochures, samples of packaging and advertisement of the goods, copies of documentation relating to overseas registrations and/or acceptance, and letters from members of the relevant vehicle trade.

The law

Section 17 of the Act defines a trade mark as:

What is a trade mark?

17. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:  For sign see section 6.

The definition of a sign, as per section 6, reads:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

Before it can qualify for registration, a sign must be capable of distinguishing the applicant's goods in terms of section 41 of the Act.

Section 41 states:

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 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).

The operation of section 41 was analysed by Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 504 ('Blount').  In Philmac Pty Limited v The Registrar of Trade Marks (2002) FAC 1551 (13 December 2002) ('Philmac'), Mansfield J, citing with approval Her Honour's analysis, further summarised the operation of section 41 as:

The process by which the Registrar or the Court is to reach a conclusion under s41(2) as to whether a trade mark is capable of distinguishing an applicant's goods is controlled by ss41(3) to 60: See Blount per Branson J at 556. Subsection (3) provides that the first step in that process is 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. If that inquiry alone does not yield an answer to the question, subs(4) directs that the provisions set out in subs(5) and (6) apply. Subsection (5) sets out the process the Registrar or the Court is to follow where it determines under subs(3) that the trade mark is "to some extent" inherently adapted to distinguish the applicant's goods but is unable to determine on that basis alone that the trade mark is capable of distinguishing the goods. . . . Subsection (6) sets out the process the Registrar or the Court is to follow where it is determined under subs(3) that the trade mark is not inherently adapted to distinguish the applicant's goods from the goods of other persons. If it is found that a trade mark is not inherently adapted to distinguish the applicant's goods, it will nonetheless be "taken to be capable of distinguishing" the goods if the trade mark does in fact so distinguish those goods because of the extent to which the applicant has used the mark before filing the [Philmac] application.

Discussion

Description of the mark

It is essential in cases relating to colour trade marks that the description of the mark is precise.  Here the description provided by the applicant at the time of filing does not accord with the mark as depicted in the evidence.  The Hess declaration attests to use of the colour YELLOW and colour combination YELLOW AND BLACK in relation to the packaging of the designated goods.  The pictorial samples of use confirm this.  None of the samples shows use of the colour YELLOW applied to the goods themselves.  Therefore, to define properly the extent of the trade mark, the description of the mark should be amended to read:

The trade mark consists of the colour YELLOW applied to the packaging of the designated goods, as shown in the representation attached to the application.

Registrability

In Philmac, supra at 8, Mansfield J set out the relevant procedure for determining if a sign was registrable as a trade mark.  In that case, His Honour indicated that the first question to consider was if the sign was being used as a trade mark. For convenience on this occasion, I will deal firstly with the issue of inherent adaptability to distinguish, and then consider the applicant's use of the mark.

Inherent adaptation to distinguish

The established test to determine if a trade mark is inherently adapted to distinguish is that set out in Clark Equipment v Registrar of Trade Marks (1964) 111 CLR 511 at 514. That test has been cited as the appropriate test in cases such as Ocean Spray v Registrar of Trade Mark (2000) AIPC 91-539, and more recently in Kenman Kandy v Registrar of Trade Marks [2002] FCAFC 273 (28 August 2002) and Philmac supra.In the latter case, Mansfield J considered the application of that test to signs consisting wholly of colour.  His Honour observed that in deciding if a colour trade mark was inherently adapted to distinguish, that the utilitarian, ornamental and economic function of the colour must be considered, as well as the nature of the colour, the goods concerned, and the relevant mark in which the goods exist.  His Honour further established that consideration must also be given to whether the colour sought to be registered is in respect of goods in a market in which there is a proven competitive need for the use of colour, and in which, having regard to the colour chosen and the goods on which it is sought to be applied, other properly motivated traders might naturally think of the colour and wish to use it in a similar manner in respect of such goods. 

In this case, the sign sought to be registered consists of a colour applied to the packaging of the designated goods, not a colour applied wholly to the goods themselves.  I see no reason, however, why His Honour's criteria should not be applied to the present case.  In accord with those criteria, I must consider if the colour YELLOW applied to the packaging of the designated goods performs a utilitarian, ornamental or economic function.  I must also consider the nature of the colour concerned and whether there is a proven competitive need for use of colour by other properly motived traders in the market in which the goods exist.

I am satisfied the colour YELLOW does not serve any utilitarian, ornamental or economic function in relation to the packaging of the goods.  To the best of my knowledge the colour does not provide any physical or chemical effect or convey any recognised meaning in relation to the goods.  I am also aware that the packaging applied to the designated goods is normally made of paper, cardboard or plastic and that the colour YELLOW is not the naturally occurring colour of such packaging.

I must now consider the remaining questions:  Is there a competitive need for the use of colour?  Will other traders naturally think of the colour and wish to apply it to their similar goods? 

There is nothing unusual about the colour claimed.  As one of the three primary colours, YELLOW is readily thought of and very commonly used in a commercial sense in the packaging of goods and the advertisement of goods and services.  A search of the Internet, [Google.com: Accessed 12 November 2002] reveals that the colour YELLOW is commonly used in respect of containers or packaging for automotive parts.  I am thus satisfied there is a competitive need for other traders to use colour as an aspect of packaging of the designated goods and that other traders do and will think of the colour YELLOW and wish to apply it to the packaging of their similar goods.

Having tested the mark by way of the relevant criteria, I find it has no inherent adaptation to distinguish the designated goods, and can only be considered for acceptance in terms of subsection 41(6).  That is, the applicant must demonstrate that, as at the relevant priority date, because of the extent to which the applicant has used the colour YELLOW as applied to the packaging of the designated goods, the colour did distinguish those goods in Australia.  As per Philmac, supra, such use must be use as a "badge of origin".  The relevant priority date is 28 November 1997.

Consideration of evidence

The Hess declaration points to the applicant's sale and promotion in Australia of  goods bearing the applied-for mark since 1980.  The samples of use provided by Mr Hess show the colour YELLOW applied to packaging of the applicant's goods, or to advertising brochures featuring those goods.  The YELLOW colour is overprinted in BLACK with other signs, including descriptive wording, depictions of clutch components, the applicant's registered trade mark, LUK and the slogan LUK FOR THE BEST.

The question of "use as a trade mark" was discussed extensively by Lockhart, Burchett and Gummow JJ in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 ('Johnson & Johnson v Sterling').  I am mindful that the applicant's use of the colour YELLOW in conjunction with other signs does not of itself preclude that colour from operating as a trade mark.  However, taking into account Their Honours' comments in Johnson & Johnson v Sterling, supra, I am not satisfied that the evidence is sufficient to demonstrate that the colour YELLOW does operate as a trade mark in respect of the applicant's goods. 

Mr Hess states that the applicant's goods have been promoted by way of brochures, trade catalogues and through trade shows.  He does not indicate, however, the extent to which the application has used or promoted the colour YELLOW as a trade mark during the course of such advertising.  None of the catalogues or brochures exhibited to the Hess declaration promotes the colour YELLOW as a badge of trade origin or suggests that the colour is the applicant's trade mark.

The eight letters provided by members of the relevant motor trade are dated June 2000 and refer to association with the applicant of the colour combination YELLOW and BLACK and the trade mark LUK.  None of the letters establishes an association with the applicant of the single colour YELLOW or clearly indicates what the position was at the relevant priority date.  In any event, I cannot conclude from the statements made in the letters that the association referred to is association in a trade mark sense.  A person may well associate colours with the goods of a particular trader, but not necessarily as indicating trade origin.

The applicant has provided no evidence from any other source to the effect that the colour YELLOW is recognised as the applicant's trade mark.

In addition to the evidence relating to advertisement of the goods, Mr Hess provides sales figures for the period 1980-1997 and details of the applicant's overseas registrations of the colour YELLOW.  I am unable to give this evidence any weight.  The sales figures show an increase in monetary terms from $219,692 in 1980 to $917,818 in 1997.  No unit costs are provided, and there is no indication of the impact of inflation during the period or what share of the market the applicant claimed.  Without such information, it is impossible to place the sales figures into the context of the market in which the applied-for mark operated as at the relevant priority date.  As the applicant must demonstrate that the trade mark did distinguish the goods in Australia, details of overseas registrations are of little value.

In summary, the evidence fails to show either that the applicant has used the colour YELLOW as a badge of trade origin of the designated goods or that, because of the extent to which it has used the colour YELLOW, the sign did distinguish the designated goods as at 29 December 1997.

Decision

I find the colour YELLOW has no inherent adaptation to distinguish the designated goods and that the evidence provided does not establish that it did distinguish those goods as at the priority date as per section 41(6).

Accordingly, I reject the trade mark application in terms of subsections 41(2) and 33(3)(b).

Frances Aarnio
Senior Examiner

24 February 2003