Maya Daher

[2015] ATMO 93

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1616666 (37, 42) –Mini Homes - in the name of Maya Daher.

Delegate:

Bianca Irgang

Representation:

Applicant: Yves Hazan of Hazan Hollander

Decision:

2015 ATMO 93

Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection under section 41(4) – application rejected.

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

   Trade Mark No: 1616666

   Trade Mark: Mini Homes (‘the Trade Mark’)

   Filing Date: 10 April 2014

   Applicant: Maya Daher

   Specification of Services:

   Class 37: Advisory services relating to building construction materials; Advisory services relating to property development building and construction services; Building (construction) supervision; Building and construction services; Building construction; Building construction advisory services; Building construction consultancy; Building construction supervision; Development of property (building and construction services); Housing development (building and construction services); Property development (building and construction services); Maintenance and repair of buildings; Installation of fittings for buildings; Development of land (construction); Advisory services relating to building; Structural engineering services (construction)

   Class 42: Advisory services relating to architecture; Advisory services relating to building design; Advisory services relating to planning applications; Building design services; Civil engineering (design); Civil engineering design services; Design services relating to civil engineering; Design of building interiors; Design of buildings; Design planning; Commercial design services; Design services; Design services for architecture; Designing and planning of real estate subdivisions and developments; Architecture; Architectural consultation; Architectural project management; Architectural services relating to land development; Preparation of architectural reports; Landscape architecture; Engineering services relating to architecture

1. The application was examined under as required by section 31 of the Act and grounds for rejection were raised under section 44 and section 41(4). The examiner’s first report provided:

   Your trade mark is, or has as its main feature, the words MINI HOMES.

   This indicates that the services relate to the planning and construction of smaller than normal (mini) dwellings.

   AND

   Your trade mark is identical to or closely resembles trade mark number 827328. This trade mark has an earlier priority date and is for the same or similar goods or services

2. The applicant was then given the option of providing evidence of use, intended use or other circumstances to overcome the grounds for rejection.. The applicant’s legal representative responded by submitting that the Trade Mark was prima facie capable of distinguishing the applicant’s services and was not deceptively similar to trade mark 827328.

3. The examiner reconsidered the section 44 ground for rejection and withdrew it. However, the examiner maintained the ground for rejection under section 41(4). The second report from the examiner focused on the use of the expression by other traders and that the Trade Mark was not inherently adapted to distinguish. The report read:

   “…You submit that ““mini homes” has no precise meaning in English language and clearly has no direct reference the services claimed”. The trade mark comprises common English words with common meanings in relation to the designated services. The word MINI is defined in the Macquarie Dictionary as small; miniature. The combination of the words MINI and HOMES does not change the normal meaning of those words. The trade mark as a whole indicates that the services relate to small homes.”

4. A further two examination reports were issued by the examiner after more submissions from the applicant’s representative failed to persuade the examiner to withdraw the section 41(4) ground for rejection. In the fourth examination report, the examiner advised the applicant:

   “…It is clear that we are approaching an impasse in the examination of this trade mark. Should further submissions be received which do not raise new arguments or which are not accompanied by convincing evidence of use, we may consider the initiation of rejection process.”

5. Duly, the applicant requested to be heard on the matter as allowed by section 33(4) of the Act. The hearing took place in Sydney on 11 August 2015. Yves Hazan of Hazan Hollander made representations on behalf of the applicant. I conducted the hearing and the following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

The Law

1. Section 41 of the Act provides:

41 Trade 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 personand services of a personsee 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).

1. Mr Hazan argued that the Trade Mark was prima facie inherently adapted to distinguish the designated services and should be accepted. He also argued that consistency, justice and fairness dictate that section 41 be applied consistently to all trade mark applicants and referred me to three trade mark registrations that he believed were analogous to the present situation.

2. The ground for rejection was based on the view that “MINI HOMES” describes the specified architectural and construction services as being in relation to small homes.

3. Mr Hazan argued that the Trade Mark is not directly descriptive of the designated services in classes 37 or 42. He stated that the Trade Mark does not describe the character or quality of those services and that it is a coined or invented phrase. As such, it is not reasonable to suggest, that the ordinary signification of the words, in Australia, that it contains a direct reference to any of the designated services considering that MINI HOMES is an invented phrase. Mr Hazan argued that MINI HOMES represents no more than a “covert and skillful allusion” to the designated services and that the Trade Mark is prima facie registrable. He went on to state that the Trade Mark is not likely to be used by other traders without improper motive. He states the Trade  Mark is not part of the vernacular utilised within the industry for any of the services and there is no basis for its rejection.

4. Concerning the question of whether a trade mark is inherently adapted to distinguish, Kitto J in Clark Equipment Co v Registrar of Trade Marks said:[1]

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. 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. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. 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 connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish 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.

   [1] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at 345–6, (Kitto J)

5. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[2](‘Cantarella’) noted the followed part of Kitto J’s test:

   "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"

   [2] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.

6. Considering this passage the High Court explained that the inherent adaptability of a trade mark consisting of a work (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, which may be characterized as “the target audience”[3]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade mark to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[4].

   [3] Cantarella at [28], [30] per French CJ, Grennan and Kiefel JJ

   [4] Cantarella at [73] per French CJ, Hayne, Grennan and Kiefel JJ

7. Superimposed on this test for inherent adaptability is the so called ‘presumption of registrability’ (which was formulated under the Trade Marks Act 1955), whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it. A trade mark that has an obscure reference to the applicant’s services is not a word or phrase that is likely to be understood by others as a description/direct reference.

8. The word “mini” is defined in the Macquarie Dictionary as:

   Something small in size or dimension.

9. The word “home” is defined as:

   A house, or other shelter that is the fixed residence of a person, family or household.

10. Considering the services claimed in the specification I am satisfied that the Trade Mark is indicative of the fact that the services are provided in relation to the design and construction of small houses or shelters. More than that, I find that other traders trading in the same services are likely to think of this expression and want to use it without improper motive.

11. Mr Hazan has suggested that that the combination of the two words MINI HOMES has no definition as it could mean a number of things from houses for “small people to dolls’ houses”. He submitted that it is a coined phrase. However, it does not necessarily follow an ordinary combination of two common words without a specific dictionary definition constitutes a “coined phrase” or for that reason constitutes a ‘covert’ or ‘skillful allusion’ to the designated services.[5]

    [5] See Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 (at p201).

12. In this case, I do not believe that the most obvious meaning with can be attributed to the combination of words which comprise the  Trade Mark in the context of the designated services can be ignored because that combination does not have a specific dictionary entry. I believe that such an approach would not be in keeping with common sense or with the ordinary signification of the words “mini” and “homes” and their likely significance when applied in combination to the applicant’s construction and architecture services. While the words could indicate dolls’ houses or other such things, I believe that it is drawing a long bow to suggest that the most obvious meaning attributable to the Trade Mark would be ignored by the Australian consumer in favour of more fanciful and obscure meanings.

13. Indeed, the research conducted by the examiner during examination and placed on the official file shows that other traders within the industry are using the expression MINI HOMES to describe the construction and design of small residences/houses for ecologically-friendly, money-saving and downsizing or minimalistic purposes.

14. Having taken into account the presumption of registrability, I am nevertheless satisfied that a ground for rejection exists under section 41(4) of the Act with regard to all the designated services. I acknowledge the particular construction of the trade mark has an element of distinctiveness to it and this provides the Trade Mark with some inherent adaptation to distinguish.

15. Although the applicant has not provided evidence of use or intended use, however, Mr Hazan has argued that there are other circumstances under subsection 41(4)(b)(iii) which are sufficient to overcome the ground for rejection. He points to the state of the register and three prior registrations which he argues support that this trade mark application should be accepted. These trade mark registrations are:

Trade Mark No.	Trade Mark	Goods/Services	Status
1269315	Mini Milkys	Ices, ice cream, ice confections, ice cream stick bars, ice cream cones, desserts	Registered
1301226	Mini Ink	Thank you cards; invitation cards; greeting cards; graphic designs; announcement cards (stationery); cards; cards (stationery); gift cards; invitations (printed matter)	Registered
1622592	Mini Mowers	Lawn maintenance services; Garden maintenance	Registered

Whatever the merits of these registrations, however, each case must be assessed on its merits having regard to the applicable legislation and the relevant judicial texts. Relevant to this are the comments of Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks[6] at [35] where, after approving the reasoning of Jacob J. in British Sugar plc v. James Robertson & Sons Limited[7] to the effect that a comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, his Honour observed:

‘I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.’

[6] (2000) 47 IPR 579; (2000) AIPC 91-539

[7] [1996] RPC 281 at 305

1. I am satisfied from the  meaning of the expression MINI HOMES in relation to the specified services that the Trade Mark is not prima facie capable of distinguishing and that there is ground for rejecting the application under section 41(4).

Decision

1. Section 33 of the Act relevantly provides:

33Application 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.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

1. I am satisfied there is ground for rejecting trade mark application no. 1616666 and I hereby reject it.

Bianca Irgang

Hearing Officer

Trade Marks Hearings & Opposition

25 September 2015