Marlin Australia Pty Ltd

[2011] ATMO 73

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1240941(9) - UNIVERSAL- in the name of Marlin Australia Pty Ltd.

Delegate:	Heath Wilson
Representation:	Written submissions of Susan Darmopil of Jirsch Sutherland Intellectual Property Lawyers.
Decision:	2011 ATMO 73 Ex parte – Section 41(5) of the Trade Marks Act 1995 – evidence insufficient to allow acceptance – Application rejected.

Background

1. On 16 May 2008, Marlin Australia Pty Ltd (‘the Applicant’) applied to register trade mark no. 1240941 the details of which are:

   UNIVERSAL

   Class: 9 Life jackets, personal flotation devices, buoyancy jackets and buoyancy belts and accessories for the foregoing

2. On 30 July 2008, the examiner of this trade mark application raised a ground for rejection under section 41(5) of the Trade Marks Act 1995 (‘the Act’) as he considered the word UNIVERSAL to indicate:

   …that your goods claimed are applicable to many individuals in some way, such as in size (e.g. UNIVERSAL life jackets which can fit many individuals).

3. The response to that report from the Applicant’s attorney disputed the proposition that personal flotation devices (‘PFDs’) could be described as ‘universal’ in size. Referring to the Australian Standards for PFDs, the attorney also submitted that:

   …UNIVERSAL is never used in relation to PFDs to indicate a characteristic or quality of the goods in the context or manner referred to by the Examiner.

4. The examiner then generated a second report maintaining the ground for rejection under section 41 and referred to research indicating other traders using UNIVERSAL to describe their PFDs as fitting many sizes of person or using them for several different water-based applications. On 9 March 2010, the attorney for the Applicant responded, providing more information about the Australian Standards for personal flotation devices and further arguing that it could “be misleading or deceptive for any trader to describe their PFD as a ‘universal’ device, suitable for many purposes and/or wearers.”

5. In addition, the Applicant supplied evidence in the form of the statutory declaration of John Vivian Murray (Director of the Applicant) sworn on 13 January 2011 (‘the Murray declaration’). The fourth and final examination report which issued on 16 February 2011 reiterated the ordinary definition of ‘UNIVERSAL’ and the likelihood that other traders would desire to use that word upon or in relation to the goods as an indicator of size and/or the intended purpose of the goods. The examiner was not satisfied that the contents of the Murray declaration were sufficient for the trade mark to be accepted under section 41(5)(b) of the Act. The examination had therefore reached an impasse.

6. The Applicant was given the opportunity to be heard on the matter pursuant to section 33(4) of the Act. Availing itself of this opportunity, the Applicant requested that the matter be decided on material comprising the written record, paid the requisite hearing fee and provided submissions to support the Applicant’s position. I have now been delegated by the Registrar of Trade Marks to decide the matter.

   The Law

7. Section 41 of the Act relevantly provides:

   (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).

   Reasons

8. The relevant considerations regarding the inherent adaptation of a trade mark to distinguish its goods were set out by Justice Kitto in F.H. Faulding & Son Ltd[1]:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   [1] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555

9. UNIVERSAL is an ordinary English word with unambiguous meanings. Relevant definitions of UNIVERSAL include:

   Applicable to many individuals or single cases; general.[2] And:

   Relating to or done by all people or things in the world or in a particular group; applicable to all cases.[3]

   [2] The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd.

   [3] Oxford Dictionary of English. Edited by Angus Stevenson. Oxford University Press, 2010.

10. In relation to the claimed goods, being PFDs and their accessories, it is a simple task to see how other traders of life jackets may ordinarily desire to use the word UNIVERSAL upon or in connection with them. As the examiner of the Applicant’s trade mark noted, it is likely that other traders would wish to use the term to indicate a general application for their life jackets whether it be in relation to size or purpose. That said, UNIVERSAL is not the only possible way in which to describe these particular goods as being applicable for all sizes or all purposes. The word is therefore not devoid of an inherent adaptation to distinguish the goods from those of other traders. I will address these possible applications of UNIVERSAL in light of the evidence provided by the Applicant.  

11. I am unable to decide whether the trade mark is prima facie capable of distinguishing and a ground for rejection therefore exists under section 41(5) of the Act. Evidence of use, intended use of the trade mark or other circumstances is necessary to overcome this ground.

    Evidence of Use

12. The Murray declaration outlines the development and use of the Applicant’s trade mark commencing in 2007 in relation to PFDs. The printing of UNIVERSAL on the life jackets to date has only ever appeared on the inside neck of the jacket. The Applicant’s primary trade mark ‘MARLIN’ appears of the jackets’ breast. The examiner believed this to support that the use of the trade mark was a reference to size. However, as the size itself (e.g. ‘Large Adult’) actually appears below UNIVERSAL, it does not appear to be performing that function. In addition, the later submissions from the Applicant’s attorney refer to the sub-brands/trade marks “Dominator” and “Nautical” owned by the Applicant that also appear in identical positioning on the neck of the jacket.  

13. A relevant consideration for inherent capacity to distinguish must be what the Applicant can do with the trade mark if registration is obtained. “The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.”[4] In terms of the trade marks capacity to distinguish under section 41(5), the combination of the ordinary descriptive nature of the word with its placement on the goods interferes with its ability to function as a “badge of origin”[5] to the average consumer.

    [4] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513; [1965] ALR 344 at 345

    [5] Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721; and E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15.

14. Ms Darmopil submits that PFDs are, by their nature, worn by people on boats and other watercraft on the open water and are constructed to account for any weather condition the vessel may encounter. This is not entirely accurate. The evidence indicates that PFDs or life jackets have varying applications. The Australian Standards provided by the Applicant indicates that PFDs are classified by application and buoyancy level (e.g. from sheltered waters to Offshore with extreme conditions, or special purpose PFDs). Some are designed predominantly for high activity water sports, others for enclosed waterway use, and some for a combination of the two.

15. Certain exhibits in the Murray declaration also lend support for the proposition that UNIVERSAL is being used as a description of a type of life jacket. The Applicant’s ‘MARLIN’ PFD has been advertised with the following description[6]:

    This PFD2 Universal jacket made by Marlin is the perfect all round lifejacket for enclosed waters… used while doing water sports such as waterskiing, wakeboarding, tubing and jetskiing. Although its main design is for general boating. 

    [6] Murray Declaration, exhibit JVM-4.

16. In the above instance, the term that appears to be functioning as a trade mark is MARLIN. This does not mean that UNIVERSAL is unable to function as trade mark when used in conjunction with MARLIN, rather the issue is whether the Applicant has provided sufficient evidence of UNIVERSAL currently functioning (or how it is intended to function) as a trade mark in the Australian marketplace. In relation to the other sub-brands that the Applicant uses in conjunction with the MARLIN trade mark, the attorney states that:

    … Marlin Australia and its distributors refer to the products by the house brand MARLIN. Each sub-brand is also important however, to differentiate the different features of each product.

17. I note that the estimated marketing expenditure occurring since the filing date and the sales revenue generated from 2007-2010 in relation to the trade mark are not insubstantial. However, that expenditure and revenue must be considered in light of the presentation of the trade mark on the Applicant’s goods. While it is accepted that two trade marks may operate concurrently, in this matter the presentation of the trade mark MARLIN on the front and back of the PFD overwhelms any trade mark function which the word UNIVERSAL may have. This fact has an adverse effect on the weight which may be given to the Applicant’s marketing and advertising expenditure.

18. I have now had the opportunity to consider the entirety of the evidence and all submissions from Ms Darmopil. I find it unlikely that the word UNIVERSAL is used by the Applicant to indicate the size of the life jacket. As the Applicant points out, the nature of PFDs (while adjustable) is such that they cannot be “one size fits all”. Despite this finding, I am still of the view that UNIVERSAL has a limited capacity to distinguish the goods claimed by the Applicant. As mentioned earlier, advertisements for the Applicant’s products describe it as “the perfect all round life jacket for enclosed waters” and suitable for a number of different water activities including boating, waterskiing and wakeboarding. Other traders are likely to desire to use the word UNIVERSAL (without improper motive) to describe their own similar products as having a similar all-round application.

19. Even if the Applicant’s use of UNIVERSAL does amount to use as a trade mark to the Australian public, I find that the prominence and extent of the use of UNIVERSAL is insufficient. The Applicant’s evidence of use does not convince me that UNIVERSAL is capable of distinguishing Life jackets, personal flotation devices, buoyancy jackets and buoyancy belts and accessories for the foregoing from those goods of other traders as is required under section 41(5)(b) of the Act.

    Decision

    Section 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.

    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.

20. A ground for rejection under section 41(5) has been established, and I therefore reject trade mark application 1240941: UNIVERSAL.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    28 July 2011