McMullen Nolan Group Pty Ltd

[2015] ATMO 68

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1642500 (37; 42) – MNG - in the name of McMullen Nolan Group Pty Ltd.

Delegate:	Heath Wilson
Representation:	Applicant: Georgina Hey of Norton Rose Fulbright Australia.
Decision:	2015 ATMO 68 Ex parte proceeding – Ground for rejection considered under section 41 of the Trade Marks Act 1995 - Trade Mark accepted for possible registration.

1. On 21 August 2014, McMullen Nolan Group Pty Ltd (‘the Applicant’) applied to register a trade mark the details of which are shown below:

   Trade Mark No. 1642500

   Trade Mark: MNG (‘the Trade Mark’)

   Specification of services:

   Class 37: Building services; construction services; installation services; maintenance services; project management of construction, installation, repair and maintenance services; provision of information, advice, consultancy, including online, in relation to the aforementioned services
   
   Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; inspection and reporting services in relation to land (surveying); project management of IT hardware and software design; surveying; architectural services; engineering design services; building and structural inspection service (engineering, quality assessment, and surveying); preparation of reports relating to architecture and surveying; project management (design); mapping services; provision of geographical information; design services being creation and provision of scale models and dioramas; technical drawing services; research services; provision of information, advice, consultancy, including online, in relation to the aforementioned services

(‘the designated services’)

1. The Trade Mark was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner was satisfied that a ground of rejection existed under section 41 of the Act. On 19 November 2014, the examiner wrote in the first report:

   Your trade mark is, or has as its main feature, the letters MNG.  These letters are commonly used as an acronym for the words MULTIPLE-IMAGE NETWORK GRAPHICS.

   This is a file format, and indicates that the software services relate to software utilising or used for such graphics.

   Other traders should be able to use this acronym in connection with goods or services similar to yours.

-And provided the Applicant with the following options:

AMENDING YOUR GOODS AND/OR SERVICES:

You will be able to overcome this problem if you agree, in writing, to limit or clarify your claim in a suitable way.

This is an example of an amended claim which would overcome the problem:

Delete project management of software design from class 37 and design and development of software from class 42

SUPPLYING EVIDENCE OF USE:

You might be able to overcome this problem if you supply evidence of use in terms of subsection 41(4) of the Trade Marks Act 1995.

1. On 19 January 2015, the attorney for the Applicant supplied argument in rebuttal of the section 41 objection. The attorney conceded that the acronym had a meaning but observed that it also had other meanings and argued that it was not a well-known acronym or abbreviation especially in relation to the designated services. She further made reference to the majority decision of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[1] (‘Cantarella’).

   [1] [2014] HCA 48.

2. The examiner was not convinced by the Applicant’s submissions and maintained the ground for rejection. Annexed to the second report were Google search results for the expression ‘mng graphics’ and a Wikipedia article for ‘Multiple-Image Network Graphics’. The Wikipedia article is redirected from “MNG” and indicates that the filename extension for ‘Multiple-Image Network Graphics’ is ‘.mng’.

3. On receipt of the second report, the Applicant elected to be heard on the matter as provided by section 33(4) of the Act.

4. I heard the matter on 19 June 2015 in Sydney as a delegate of the Registrar of Trade Marks. Ms Georgina Hey of Norton Fulbright Australia made submissions on behalf of the Applicant and supplied me with additional information obtained from a Google search she had conducted and an indication of the Applicant’s use of the Trade Mark to date.

Discussion

1. Section 41 of the Act relevantly provides:

41Trade 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)…

(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.

1. In Clark Equipment Co v Registrar of Trade Marks,[2] Kitto J set out the now well-established test for determining whether a trade mark is inherently adapted to distinguish:

   [T]he 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.

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

2. That test was endorsed by the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[3]. The majority stated that:

   The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from [Registrar of Trade Marks v W& G Du Cros Ltd [1913] AC 624 (‘Du Cros’)]... is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

   [3] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 at [59].

3. Relevant to the present matter is the reference by the majority to the ‘ordinary signification of the word, in Australia to persons who will purchase, consume or trade in the goods’. It is possible that some consumers of, and traders in, project management of software design and design and development of computer software may recognize the acronym MNG as meaning the graphics file format ‘Multiple-image Network Graphics’. However, simply identifying that a word (or acronym) may have a meaning is not sufficient to find that the Trade Mark is not prima facie capable of distinguishing. One must consider both the ‘ordinary signification’ of the word (or acronym) and also the legitimate desire of other traders to use it in relation to the same or similar services. In other words, and to draw an analogy with Cantarella, identifying the fact that a word has a particular meaning in a foreign language used in Australia is only part of the consideration.

4. To a certain extent, Google search results can assist in the overall determination of the inherent adaption of a trade mark to distinguish, and the Applicant has now provided further material for my consideration which she has referred to in the written submissions provided before the hearing. The material provided to me indicates that PNG (Portable Network Graphics) is the more well-known file format in this field (being an alternative to GIF or ‘Graphics Interchange Format’). MNG is apparently an animated file format derived from PNG. While still clearly in existence, it appears to be a format seldom used within the relevant industry.  

5. To paraphrase Cantarella[4] the information in front of me falls short of demonstrating that ‘MNG’ is understood in Australia by persons concerned with design and development of computer software; project management of software design to be directly descriptive of the character or quality of such services.

   [4] Cantarella (supra) at [76].

6. It is a further step removed in the consideration to say that an acronym with some meaning in relation to software fails to distinguish the services of project management for software design or the design and development of software. The provision of a project management service (albeit for software design) in particular is not a service in relation to which a specific (and seldom used) file format is a ‘direct reference’.

7. Ms Hey highlighted certain paragraphs from the Trade Marks Office Manual of Practice and Procedure (‘the Manual’)[5] indicating that trade marks consisting of three or more letters are prima facie capable of distinguishing. The Manual is not law but a reflection of the practice of the Trade Marks Office at a particular point in time. If, however, they are well-known acronyms with a particular meaning in relation to the designated goods or services such that other traders will legitimately desire to use them they lack inherent adaptation to distinguish. Despite the fact that the acronym comprising the Trade Mark does have a meaning, I am not satisfied that it is an acronym that other traders in the designated services will legitimately desire to use.

   [5] Specifically, Part 22.8.3 of the Manual.

8. As a result, I find that the Trade Mark is capable of distinguishing the designated services. Pursuant to section 33, I must accept the Trade Mark application unless there are grounds for rejecting it. In the current matter and on the facts before me I am not satisfied that there is a ground for rejection.

9. I therefore accept Trade Mark application no. 1642500 for possible registration.  

Heath Wilson
Hearing Officer
Trade Marks Hearings & Opposition
27 July 2015