Micro Farm – in the name of Grimshaw Architects Pty Limited

[2023] ATMO 176

TRADE MARKS ACT 1995

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

ReTrade mark application number 2334407 (20) – Micro Farm – in the name of Grimshaw Architects Pty Limited

Delegate:	Nicholas Smith
Representation:	Applicant: Peter Whitehead of Hazan Hollander
Decision:	2023 ATMO 176 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 41 of the Act – section 41 considered – trade mark is not to sufficiently adapted to distinguish the designated goods – no evidence of use supplied – trade mark application rejected

Background

1.       On 14 February 2023, Grimshaw Architects Pty Limited (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (Cth) (‘Act’)

Application Number:	2334407
Filing Date:	14 February 2023
Goods:	Class 20: Cupboards being built-in; Cupboards being furniture; Cupboards fitted with mirrors; Cupboards for bedrooms; Cupboards for kitchens; Fitted cupboards; Fronts of cupboards; Kitchen cupboards; Linen cupboards (furniture); Non-metallic cupboard fittings; Non-metallic cupboard fixtures; Non-metallic fittings for cupboards; Room dividing cupboards; Sectional units for making cupboards; Storage cupboards (furniture); Storage units for cupboard conversions; Wall cupboards; Cabinet fittings (not of metal); Cabinet work; Cabinets; Cabinets being storage units for use on work sites; Cabinets for display purposes; Cabinets for storage purposes; Cabinets for storing articles; Cabinets for storing materials; Cabinets for waste bins; Cabinets having fire protection properties; Cabinets incorporating protection against radiation; Card file cabinets; Display cabinets; Doors for cabinets; Filing cabinets; Fire resistant cabinets; Fire safe cabinets; Furniture cabinets; Index cabinets (furniture); Indexing cabinets (furniture); Key cabinets; Kitchen cabinets; Magnetically shielding cabinets; Metal cabinets for industrial use; Metal cabinets; Non-metallic fittings for cabinets; Pedestal cabinets; Security cabinets; Shelves for filing-cabinets; Soundproof cabinets; Storage cabinets (furniture); Tool cabinets; Cupboards; Cupboard units (‘Applicant’s Goods’)
Trade Mark:	Micro Farm	(‘Trade Mark’)

1. The Trade Mark was duly examined under s 31 of the Act and a ground for rejection was identified by the examiner under s 41 of the Act. The examiner stated (paraphrased), that the Trade Mark consisted of the words Micro Farm, which refers to a small scale farm suitable for urban areas. In relation to the Applicant’s Goods, the Trade Mark will be viewed as a descriptive reference to the characteristics and features of the Applicant’s Goods not as an indicator of trade source. Other traders should be able to be able to use the Trade Mark in connection with the Applicant’s Goods.

2. On 17 May 2023 the Applicant responded to the rejection, providing further submissions but no evidence of use. The submissions were insufficient to persuade the examiner, who issued a further examination report maintaining the s 41 ground for rejection in respect of the Applicant’s Goods. After further submissions were insufficient to persuade the Examiner, the Applicant then requested to be heard by the Registrar of Trade Marks under s 33 of the Act.

3. As a delegate of the Registrar of Trade Marks I heard this matter on 3 October 2023.  Peter Whitehead of Hazan Hollander, representing the Applicant, made oral submissions after having earlier provided me with an outline of written submissions in accordance with the pre-hearing directions I had given. 

4. The present matter is a hearing under s 33(4) of the Act. As noted in MHFC Holdings Pty Ltd[1] as well as other decisions of the Registrar (Teraglow Pty Ltd[2] and TOM Organic Pty Ltd[3]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 41 ground for rejection under the Act as it applies to the Trade Mark.

   Legislative framework

   6. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[4] Regarding the present application, the only unresolved ground for rejection identified is under s 41 of the Act. The capacity of the Trade Mark to distinguish the Applicant’s Goods must be assessed at the filing date, being 14 February 2023 (‘relevant date’).  However evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.[5]

   [1] [2016] ATMO 96, [9] (Hearing Officer Wilson).

   [2] [2016] ATMO 32 (Hearing Officer Worth).

   [3] [2018] ATMO 46 (Hearing Officer Worth).

   [4] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

   [5] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

5. 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 person and services of a person see 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).

6. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[6] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [6] (1998) 40 IPR 498, 505 (Branson J).

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Goods] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Goods]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Goods] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Applicant’s Goods] 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 [Applicant’s Goods]. [that is, s 41(4) applies][7]

   [7] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).

7. In the present case the Applicant does not provide any evidence of use. There are no other circumstances raised that may be relevant in my consideration of whether the Trade Mark could distinguish the Applicant’s Goods. As such, a ground for rejection under s 41 will apply if the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods from the goods and services of other persons, being the test in s 41(4). It is not necessary to conclude that the Trade Mark is not to any extent inherently adapted to distinguish, being the test in s 41(3).

8. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

   (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

   (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
   
   (3) The question of whether a trade mark is adapted to distinguish the services of the applicant 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
   
   (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

   
   (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
   
   (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to 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”: Cantarella at [59].
   
   (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
   
   (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (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”: Cantarella at [59].
   
   (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
   
   (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
   
   (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
   
   (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[8]

   [8] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

9. I am satisfied that the ordinary signification of Micro Farm is as set out by the examiner; namely that it refers to a particular type of farm, being a small-scale, high yield farm located urban or suburban areas.  The nature of micro farming means that rather than simply planting the seeds in the ground, a farmer may place the soil, seeds, watering equipment (sometimes hydroponics) in cabinets or storage units so that the product is contained in an efficient, high-yield and space-saving manner.

10. The Applicant submits that while the Trade Mark has an ordinary signification, it is meaningless in relation to the Applicant’s Goods and hence the Trade Mark ‘does not have an ordinary submission in respect of the goods’.  I do not agree.  Given that micro farming generally requires the installation of cabinets and storage units, as noted in the paragraph above, the term ‘micro farm’ directly indicates the intended purpose of the Applicant’s Goods, namely that they are suitable for micro farms or micro farming.  It is no more meaningless than terms such as ‘bedroom’ or ‘office’. 

11. The Applicant submits that the Trade Mark is not intrinsically descriptive of the Applicant’s Goods, nor does it describe the characteristics, nature, quality or origin of the Applicant’s Goods which are furniture products in class 20, rather than farm structures in classes 6 or 19.  It submits that no trader in cupboards or cabinets, without improper motive, would want to use the Trade Mark in connection with the goods.  I address these submissions at paragraph 14 below but I note that I do not place much emphasis on the different classes in this case; cabinets can be used for many purposes and hence ‘cabinets for farming’ and ‘cabinets’ are similar goods for which this office must make the enquiry about whether other traders will want to use the word(s) (see Cantarella at [59]).

12. The second element of the test under s 41 is whether, given the ordinary signification of the Trade Mark, other traders might legitimately need to use the words in respect of the goods or similar goods. Notwithstanding the Applicant’s submissions (which I accept) that the Trade Mark is not descriptive of the Applicant’s Goods I am satisfied that the Trade Mark is not to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods from the goods of other persons and in the absence of evidence of use, hence s 41(4) applies and the mark should not be registered. This is because the process of micro farming, as outlined in paragraph 11 above, generally requires the use of cabinets or storage units. Note 1 to s 41 states that (paraphrased) trade marks that consist wholly of a sign that is ordinarily used to indicate the intended purpose or some other characteristic of the goods are not inherently adapted to distinguish. The Trade Mark operates to indicate the intended purpose of the Applicant’s Goods, namely that they are cabinets, storage units or cupboards suitable for use on micro farms. It is entirely foreseeable that other traders providing cabinets and storage units for the micro farm industry might legitimately need to use the Trade Mark in respect of their goods which are similar to the Applicant’s Goods.

1. Finally, the Applicant also provides a list of what it claims are similar marks which have been accepted for registration, being marks including the term ‘micro’ applied to a descriptive term.  I am unpersuaded by this submission.  Not only are the marks identified different marks sought to be registered for different goods (indeed the only thing that connects the example is the use of the term ‘micro’) I note the statement by Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks that ‘[A]lthough 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. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not’.[9] 

   [9] (2000) 47 IPR 579, 590.

2. The Applicant’ s written submissions identify a number of examples of marks that were found to have a direct reference to the services claimed, such as DEFENCE JOBS for employment related services in class 35[10]. The Applicant submits that these marks are substantially more descriptive than the mark at issue. While this may be the case, in each of these cases the respective mark was found to have no inherent adaption to distinguish, that is s 41(3) applied. In the present case, as discussed below I have found that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish, that is s 41(4) applies.

   [10] The Commonwealth of Australia as represented by the Department of Defence (Defence Force Recruiting Branch) [2023] ATMO 36 (Hearing Officer Smith)

3. Accordingly, the Trade Mark is not sufficiently inherently adapted to distinguish the Applicant’s Goods. As such s 41(4) applies, and in the absence of evidence of use, intended use or other circumstances I find that the application to register the Trade Mark must be rejected under s 41 of the Act.

   Decision

   18. 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.

   (2)The Registrar may accept the application subject to conditions or limitations.

   (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.

4. As I am satisfied that there is a ground for rejection under s 41(4) of the Act, I reject the application to register the Trade Mark.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   1 November 2023