My Brilliance Pty Ltd v Brilliance Publishing Inc
[2015] ATMO 63
•2 July 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by My Brilliance Pty Ltd to registration of trade mark application 1369408 - BRILLIANCE AUDIO - in the name of Brilliance Publishing Inc.
Delegate: Jock McDonagh Representation: Opponent: Kevin Ashby of IP Strategies International Patent and Trade Mark Attorneys
Applicant: Angus Lang of counsel instructed by King & Wood Mallesons LawyersDecision: 2015 ATMO 63
Section 52 opposition – Grounds pursued under sections 41, 42, 43, 44, 58A, 58, 59, 60, and 62 not establishedBackground
1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark BRILLIANCE AUDIO in the name of Brilliance Publishing Inc (‘the Applicant’). Relevant details of the application are set out below.
Trade mark: BRILLIANCE AUDIO (‘the Trade Mark’)
Trade mark application: 1369408
Filing Date: 30 June 2010Specification: Class 9: Publications and electronic publications, being audibly rendered books featuring literary works recorded on tapes, cassettes, digital discs, compact discs, optical discs, MP3 discs, and computer-readable media; downloadable electronic publications in the nature of audibly rendered books featuring sounds, text, music, and spoken word content for literary works
Class 41: Publishing and electronic publishing services, being publication of text and graphic works of others on tapes, cassettes, digital discs, compact discs, optical discs, MP3 discs, and computer-readable media and on-line, featuring sounds, text, music, and spoken word content for literary works
The application was examined in compliance with section 31 of the Act and after the provisions of section 44(4) had been applied it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 2 May 2013. My Brilliance Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the application on 1 July 2013. Thereafter the Opponent and Applicant filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) and a Notice of Intention to Defend and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the matter in Canberra on 9 April 2015 as a delegate of the Registrar of Trade Marks. Kevin Ashby of IP Strategies International Patent and Trade Mark Attorneys represented the Opponent by telephone. The Applicant was represented by Angus Lang of counsel instructed by King & Wood Mallesons Lawyers.
Grounds of Opposition
4. The Opponent nominated grounds of opposition under sections 41, 42, 43, 44, 58A, 58, 59, 60, 62, and 62A of the Act. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 and Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27]. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]
At the hearing, Mr Ashby advised that the section 62A ground had been abandoned.
The time at which the grounds of opposition must be established is the date of filing of the application for registration[2].
[2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595
Evidence
7. The evidence consists of the following declarations:
Declarant
Position
Date Made
Evidence in Support
Lisa Jane Holmes (‘Holmes 1’)
Director of Opponent
17.03.14
Evidence in Answer
David Cully (‘Cully’)
President- Retail Markets, EVP Merchandising
11.07.14
Linda K Dickert (‘Dickert’)
Chief Legal Officer and General Counsel Ingram Book Group Inc
17.07.14
Mark Pereira (‘Pereira’)
Vice President of Applicant
18.07.14
Evidence in Reply
Lisa Jane Holmes (‘Holmes 2’)
Director of Opponent
23.09.14
8. In Holmes 1 Ms Holmes declares that the Opponent was founded after she received ‘The Sight’ on 10 January 2001. The Sight is a spiritual, emotional and philosophical concept, which Ms Holmes has developed as ‘The My Brilliance Principle’ to assist other people in their spiritual and emotional lives and find personal fulfilment.
The Opponent provides various personal, social and psychic services and consultancy, which also use various printed and audio-visual media to support the ‘My Brilliance’ services.
After describing the nature of the Opponent’s goods and services and their history, the remainder of Holmes 1 is effectively submissions on each of the grounds of opposition and an attempt to impeach the Applicant and its evidence provided during examination, particularly that which the Applicant filed to establish the opposed application was acceptable under section 44(4) of the Act.
Holmes 1 annexes voluminous results of various internet searches conducted by the Opponent. The searches are usually based on the titles of the Applicant’s goods, where the Opponent is highlighting what is contends are inconsistency of branding of the Applicant’s goods and/or wrong details such as ISBN, postcodes, and similar detail.
Holmes 1, at [B.9.9] and following mentions that the Opponent learned that one of its registered trade marks had been cited during examination, and that the Applicant had attempted to obtain a letter of consent from the Applicant.
The trade mark registration cited in examination is as follows:
Registration No Trade Mark Priority Date Class(es) 1179855 BRILLIANCE 4.06.07 16: Bookmarks; books; printed matter; business books; photo books; picture books; pocket books (stationery); postcard books; printed books; newsletters; planners (printed matter); cardboard articles; goods made from paper or cardboard (not included in other classes); photographic reproductions; photographs; postcards; greeting cards; stationery
41: Publishing of newsletters; cultural activities; providing information, including online, about cultural activities; distribution (other than transportation) of audio recordings; distribution (other than transportation) of radio programmes; distribution (other than transportation) of television programmes; distribution (other than transportation) of videos; electronic publication of information on a wide range of topics, including online and over a global computer network; preparation of texts for publication; providing online electronic publications (not downloadable); publication of multimedia material online; publication of texts (other than publicity texts); weblog (blog) services (online publication of journals or diaries); publication of texts (other than publicity texts); publishing by electronic means; editing of audio-tapes; editing of written text; video editing; production of audio and/or video recordings; video production services
Cully provides details of Baker & Taylor distributing the Applicant’s goods in Australia since 1999. In particular, it provided audiobooks to libraries in New South Wales and Victoria since 1999.
Dickert provides details of Ingram Book Group, Inc distributing the Applicant’s goods in Australia since January 2003.
Pereira provides details of the Applicant’s founding as Brilliance Corporation in 1984 and its renaming as Brilliance Audio Inc in 1998. The Applicant was acquired by Amazon.com in 2007, and in 2013 changed its name to Brilliance Publishing.
The Applicant’s goods have been available to purchase on line (through websites at ‘brillaince.com’ and ‘audiobooks.com’) since 2001, and physically through the Australian distributors from 1999.
Discussion
18. In its evidence and submissions, the Opponent’s primary strategy was attacking the evidence of the Applicant, in both its evidence filed during the course of the examination of the trade mark and evidence filed during the course of the opposition proceedings. The intention was apparently to impeach the credibility and reliability of the Applicant’s evidence in order to establish the sections 44 and 62 grounds.
There was a fourfold thrust in the Opponent’s attacks on the Applicant’s evidence:
· That the sales made through Baker & Taylor and Ingram Book Group do not constitute use by the Applicant in Australia. The Applicant bases this contention on E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (‘Gallo’).
· That the sales made directly by the Applicant to customers in Australia from its websites do not constitute use in Australia because they are not ‘targeted at’ Australia.
· The uses of the trade mark shown in the evidence are said not to be use of the mark because they are accompanied by a starburst device.
· The evidence, or key elements of it, has been fabricated.
Before I consider each of the grounds of opposition relied upon by the Opponent, I consider that I should deal with the Opponent’s approach to the evidence as discussed above.
The Opponent’s understanding of Gallo is not correct. Gallo stands for the proposition that once a trade mark owner itself supplies goods bearing the trade mark to another in the course of trade, subsequent sales of those same goods in Australia constitute use of the trade mark by the owner in Australia. The same is true where the goods are originally supplied in the course of trade by an authorised user of the trade mark and subsequently sold in Australia. The High Court stated in Gallo at [51] to [53]:
The capacity of a trade mark to distinguish a registered owner’s goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia. Each occasion of trade in Australia, whilst goods sold under the trade mark remain in the source of trade, is a use for the purposes of the Trade Marks Act.
In the present case, the Applicant supplied certain of its products through distributors, including Baker & Taylor and Ingram Book Group. The supply of goods to the distributors constitutes use in the course of trade in accordance with Gallo. Subsequent sales of those goods by the distributors in Australia constitute use of the trade mark by the Applicant in Australia. In any event, the evidence in Pereira at [13] is that the distributors were authorised distributors of the Applicant’s audiobook products and accordingly constitute authorised users. For this reason also, sales of products under the Trade Mark by those distributors constitute use by the Applicant of the Trade Mark in Australia.
The Opponent submitted that the claimed sales of the Applicant’s goods to Australian libraries are ‘not admissible as evidence of use, based on the findings in [Gallo], that a sale to an end user removes the trade marked good from the course of trade (since libraries do not trade in the goods)’.
This proposition is incorrect. The purchase by the Australian libraries of the Applicant’s goods bearing the Trade Mark from the authorised distributor constitutes use of the Trade Mark in Australia.
As to the second dot-point in [20], above, regarding sales made directly to consumers in Australia, the Opponent’s contention that the Applicant’s website through which such sales were made is not ‘targeted at’ Australia is irrelevant. The Applicant’s sales to consumers located in Australia constitute use of the Trade Mark in Australia.
The third contention raised by the Opponent was that the uses of the Trade Mark are not use of the words BRILLIANCE AUDIO, as they are accompanied by a ‘starburst’ device, and the word AUDIO is barely visible in relation to the word BRILLIANCE.
As to the visibility or otherwise of the word AUDIO, the evidence tendered with both Holmes 1 and Pereira clearly shows examples of the Trade Mark with both words quite visible. The same examples do, on occasion show the Trade Mark accompanied by the ‘starburst’ device.
However, such use is also discussed in detail by the High Court in Gallo in relation to whether the use of BAREFOOT together with a logo constituted use of the word mark for the purposes of a non-use application. At [69] the court stated:
The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which “do not substantially affect the identity of the trade mark”. Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).
In this case the ‘starburst’ device is very suggestive of ‘brilliance’ and I do not consider that it substantially affect the identity of the words alone.
The Opponent’s fourth contention attacked the credibility and veracity of the evidence contained within Pereira. The attacks were on a number of fronts. For example, the Opponent submited that Mr Pereira should not be the deponent as he was not in the employ of the Applicant during the period of use evidenced in Pereira and that here was a more qualified potential deponent who, the Opponent alleged, has been overlooked to enable misleading evidence to be given.
The Opponent submitted that Ms Hutton – a prior owner of the Applicant – had made a formal declaration to the United States Patents and Trade Marks Office to the effect that as late as 2006 the Applicant had not commenced use of the Trade Mark anywhere.
However, this allegation is rebutted by the evidence in Pereira where, at [24] to [27], an explanation is given of the differences between the Australian and United States trade mark application and registration systems. The Opponent’s allegation is without foundation, and is improper.
The Opponent is on slightly firmer ground in its provision of results of its own research into ISBNs provided in Pereira that reveal instances of the goods being published under marks other than the Trade Mark. This does appear to be the case in many instances; however, in Holmes 1 Exhibit LJH004, the same research provides instances of the use of the Trade Mark from 1999.
The Opponent also highlights discrepancies between Pereira and a declaration by Mr Pereira during the course of examination of the Trade Mark. However, I note that in Pereira, at [21], the deponent corrects aspects of his previous declaration and the evidence in Pereira is consistent with other objective evidence filed in these proceedings.
Having examined in some detail the evidence filed by the parties, I reject any allegations of false or misleading evidence being made by the Applicant. While there are certainly instances of errors in the materials provided, I do not consider that they are deliberate nor do I consider that they negative the clear evidence that the Trade Mark has been used in the course of trade in Australia since 11 February 1999.
The examination of the evidence has also satisfied me that, given the Opponent did not receive ‘The Sight’ until sometime in 2001; it could not have used its BRILLIANCE mark before then. There is no supported evidence of its use prior to 2005.
Therefore, notwithstanding any similarity or identity issues between the Trade Mark and the Opponent’s trade mark, the Applicant has clearly used the Trade Mark prior any use of the Opponent’s trade mark. Such prior use overcomes the grounds of opposition under sections 44, 58, 58A and 59.
Ground under Section 62(b)
38. Section 62 relevantly provides:
62 Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
(a) … ;(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
The Opponent relied on the alleged false evidence of prior use of the Trade Mark during the examination of the Trade Mark. As discussed earlier, this allegation cannot be sustained and I find that this ground has not been established.
Ground under Section 60
40. Section 60 of the Act provides:
60Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Concerning a trade mark’s reputation, in McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) Kenny J said at [81]:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1 said that the reputation required to be demonstrated was:
one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
The reputation may be assessed by evidence of sales revenue and advertising expenditure provided by an Opponent. In McCormick, Kenny J said at [86]:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
The evidence provided by the Opponent does not establish the requisite reputation in its BRILLIANCE mark. There is evidence of ad hoc sales of goods and services and minimal evidence of any advertising or promotional activities.
To the extent that any reputation has been established, it is in respect of personal and emotional counselling and ‘emotion mapping’ services. There is no likelihood of any deception or confusion with the Applicant’s goods and services.
This ground of opposition has not been established.
Ground under Section 58
46. Section 58 of the Act provides:
58Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
To establish this ground, an opponent must prove that it is the ‘author’ of the trade mark, in that it was the first user or that no other person acquired a prior right to use the trade mark in Australia for the relevant goods and services. The mark claimed to be owned and used by the opponent must be substantially identical to the opposed mark and not merely deceptively similar: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375.
This ground fails because the Applicant has established that it has continuously used the Trade Mark since February 1999. The Opponent does not assert any use of its trade marks prior to 2001, and has no adequate evidence of any use in Australia prior to 2005. Regardless of whether or not the trade marks cited by the Opponent (i) are substantially identical with the Trade Mark and (ii) have been used in respect of the same kind of goods and/or services to those set out in the Application, this ground of opposition must fail as there is no evidence of prior use by the Opponent.
I find that this ground of opposition has not been established.
Ground under Section 58A
50. Section 58A of the Act provides:
58AOpponent’s earlier use of similar trade mark
(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a)subsection 44(4); or
(b)a similar provision of the regulations made for the purposes of Part 17A.
Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a)first used the similar trade mark in respect of:
(i)similar goods or closely related services; or
(ii)similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b)has continuously used the similar trade mark in respect of those goods or services since that first use.
Note:For predecessor in title see section 6.
This ground fails for the same reasons as set above.
I find that this ground of opposition has not been established.
Ground under Section 59
53. Section 59 of the Act provides:
59Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a)to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
As discussed, Pereira, Cully and Dickert confirm that the Applicant has used the Trade Mark continuously in Australia from February 1999 to the present day. The Opponent has suggested that the Applicant’s change of name from Brilliance Audio Inc to Brilliance Publishing Inc in 2013 somehow suggests that the Applicant is ‘phasing out’ the use of the words of the Trade Mark.
This submission cannot be sustained in the face of the continuous use of the Trade Mark up to and beyond the filing date of the Application. I have already stated that the time at which the grounds of opposition must be established is the date of filing of the application for registration.
I find that this ground of opposition has not been established.
Ground under Section 43
57. Section 43 of the Act provides:
43Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
58. The Opponent here submits that the word ‘AUDIO’ in the Trade Mark gives rise to a misleading connotation because of the word ‘text’ contained in the specification of goods and services.
59. However, this is based on a misreading of the specification. It ignores the words ‘audibly rendered’ in relation to the Class 9 goods and ‘featuring sounds, text, music and spoken word content for literary works’ in relation to the Class 41 services.
60. This ground is misconceived and is not established.
Ground under Subparagraph 42(b)
61. Subparagraph 42(b) of the Act provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[…]
(b)its use would be contrary to law.
62. The Opponent in its written submissions asserts that the use of the Trade Mark by the Applicant would be contrary to law and would constitute conduct in breach of section 29 of the Australian Consumer Law [‘the ACL’].
63. As to this claim that use of the Trade Mark would contravene Australia's consumer protection legislation, I firstly note that the Trade Practices Act 1974 (‘the TPA’), which was in force as at 30 June 2010, is on the face of it the relevant law. (Although containing essentially identical consumer protection provisions, the Competition and Consumer Act 2010 which replaced the TPA only came into force as from 1 January 2011.) In this regard I note the words of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd (2004) 59 IPR 343, at [47]:
I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.
64. That said, section 29 of the ACL, being the particular provision identified as relevant to the Opponent's s 42(b) ground, directly corresponds to section 53 of the TPA. This section of the TPA is reproduced below: etc (concerns making false representations as to sponsorship, etc)
53 False or misleading representations
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:
(a)falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use;
(aa)falsely represent that services are of a particular standard, quality, value or grade;
(b)falsely represent that goods are new;
(bb)falsely represent that a particular person has agreed to acquire goods or services;
(c)represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d)represent that the corporation has a sponsorship, approval or affiliation it does not have;
(e)make a false or misleading representation with respect to the price of goods or services;
(ea)make a false or misleading representation concerning the availability of facilities for the repair of goods or of spare parts for goods;
(eb)make a false or misleading representation concerning the place of origin of goods;
(f)make a false or misleading representation concerning the need for any goods or services; or
(g)make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy.
It relies on ‘the deception and confusion already demonstrated’. Such deception and confusion has not been demonstrated in any other grounds, and I have found that it was not demonstrated under the section 60 ground. This ground also has not been established.
Ground under Section 41
66. Section 41 of the Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into effect on 15 April 2013. Since the filing date of the application is earlier than the operative date of the amendment to section 41, it is the un-amended form of the section which applies to this matter.[3]
[3] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50
Section 41 in its un-amended form provided:
(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 to any extent 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 to any extent 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).
It is firmly established that the essential or primary function of a trade mark is to act as an indication of the trade source of the goods or services in relation to which the sign is to be used.[4] Whether an applicant’s choice of sign for use as a trade mark is initially adapted to fulfill this function will depend on its successful negotiation of former section 41, discussed by Branson J in the Oregon decision, Blount Inc v Registrar of Trade Marks [1998] 40 IPR 498, where she said (in part):
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first 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". Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that 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; or
(c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
[4] See E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2010) 241 CLR 144; 84 ALJR 352; [2010] HCA 15 at [41] – [43] (HCA).
If one accepts that the Opponent’s registered trade mark BRILLIANCE is inherently distinctive, the Trade Mark is no less so and has been found to be inherently distinctive upon initial examination. I see no need to disturb those previous findings.
The Opponent asserts that it and another trade mark owner, Belden Inc, might need to use their registered trade marks for ‘BRILLIANCE’ in combination with the word ‘audio’. The Opponent did not point to any need for traders generally to be able to use the term BRILLIANCE AUDIO, but only for traders who already claim and own trade mark rights in the word BRILLIANCE to be able to use the combination term BRILLIANCE AUDIO.
Such a scenario is not relevant to the test in Registrar of Trade marks v W & G Du Cros Ltd [1913] AC 624 at 635, cited by the Opponent:
The applicant's chance of success in this respect (ie. 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 connection 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 Trade Mark is capable of distinguishing the Applicant’s goods and services from the same or similar goods and services of other traders within the meaning of section 41 and I find that this ground of opposition has not been established.
Ground under Section 44
73. Under section 44, an application for a trade mark must be rejected if the applicant's trade mark is substantially identical with or deceptively similar to:
· a trade mark registered by another person in respect of similar goods or closely related services, or similar services or closely related goods;
· a trade mark whose registration is being sought by another person in respect of similar goods or closely related services or similar services or closely related goods; and
· the priority date of the applicant's trade mark is not earlier than the priority date of the other trade mark in respect of the similar goods or closely related services, or the similar services or closely related goods.
The Opponent had cited its trade marks 1179457, 1179855, 1179936, 1179856, and Belden Inc’s trade mark 952112 as being substantially identical with or deceptively similar to the Trade Mark.
The Opponent’s trade marks all have priority dates in June 2007, while the Belden Inc trade mark BRILIANCE has a priority date of 29 April 2003.
As I have found before, this ground fails because the Applicant has established that it has continuously used the Trade Mark since February 1999. Regardless of whether or not the trade marks cited by the Opponent (i) are substantially identical with or deceptively similar to the Trade Mark and (ii) have been used in respect of similar or closely related goods or similar or closely related services to those set out in the Application, this ground of opposition must fail as section 44(4) of the Act mandates that the Registrar may not reject the Application because of the trade marks cited by the Opponent..
This ground of opposition is not established.
Decision
78. At the Relevant Date subsection 55(1) of the Act provided:
55Decision
(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
The Opposition has not been to any extent established.
The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
81. Having been successful in this matter the Applicant is entitled to its costs which I award against the Opponent at the scale set out in Schedule 8 to the Regulations.
Jock McDonagh
Hearings Officer
Trade Marks Hearings
2 July 2015
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