Myoori Pty Ltd - [2015] ATMO 94

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1613048(33) - BOTTLE LABEL- in the name of Myoori Pty Ltd.

Delegate:	Nicole Worth
Representation:	Applicant: Fraser Old of Fraser Old & Sohn
Decision:	2015 ATMO 94 Section 33 proceedings – section 41 – trade mark not capable of distinguishing Applicant’s goods – application rejected.

Background

This matter is pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’). On 24 March 2014 Myoori Pty Ltd (‘the Applicant’) applied to register the trade mark detailed below:
Trade Mark:
(‘the Trade Mark’)
Application No.: 1613048
Filing Date: 24 March 2014
Goods: Wine and all other alcoholic beverages in this class
There is some ambiguity as to what kind of trade mark it is. It is described on the Australian online database of trade marks (‘ATMOSS’) as “3 concentric rectangles in bottle” and the type of trade mark is listed as a “device”. I note that the dotted lines depicting a bottle are not disclaimed. However in submissions the Applicant made clear that the Trade Mark is a bottle label (and is therefore probably more accurately described as an aspect of packaging) and I have therefore assessed it as such.
The application was examined and a ground for rejection under section 41 of the Act was identified on the basis that the Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s goods from those of other persons. After four examination reports the examiner remained of the view that subsection 41(4) of the Act was applicable, and so the Applicant requested to be heard.
The matter came for hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 14 August 2015. The Applicant was represented by Fraser Old of Fraser Old & Sohn who made written and oral submissions on its behalf. In this decision I will refer to the Applicant’s representative also as ‘the Applicant’.

Section 41

As a preliminary matter I mention that the focus of the decision here is not to review the examiner’s decision and arguments, but rather to consider afresh the ground for rejection that has been raised.
Section 41 of the Act relevantly 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.
…
(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.
A presumption of registrability is embodied in section 33 of the Act which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it. This provision shifted the onus which had existed under the previous 1955 Act, wherein an applicant bore the onus to establish registrability. Nonetheless, prior to the introduction of the Intellectual Property Laws Amendment Act (Raising the Bar) Act 2012 a tension remained between the presumption of registrability in section 33 and the decision making process reflected in section 41 of the 1995 Act[1]. To that end section 41 was amended by the Intellectual Property Laws Amendment Act (Raising the Bar) Act 2012 to clarify that the presumption of registrability does apply to the section 41 consideration as reflected in the Explanatory Memorandum:
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.[2]
[1] See for example Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) FCR 50 and Chocolaterie Guylian N.V. v Registrar or Trade Marks [2009] FCA 891.
[2] Item 113 of the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.
Accordingly I am not entitled to reject the Trade Mark unless satisfied that the combined effect of its inherent adaptation to distinguish (if any), any past or intended use of it and any other circumstances has not or will not render the Trade Mark distinctive or capable of distinguishing. No evidence of use, intended use or other circumstances has been presented and therefore the determination under section 41 rests upon the inherent adaptation of the Trade Mark to distinguish the Applicant’s wine and alcoholic beverages from those of others.
The inherent adaptation of a trade mark is to be tested:
[B]y 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.[3]
[3] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 514; [1964] HCA 55; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 (albeit both decisions in relation to word trade marks).
Whilst the above passage relates to trade marks comprising words, the principles may nonetheless be applied to other types of trade marks.[4] I note further that the consideration takes into account the precise form of the Trade Mark applied for as well as forms which nearly resemble it (as reflected in W&G Du Cros Ltd’s Appn[5] wherein it was observed that the question of registrability depends upon the likelihood of other traders desiring to use the mark, “or some mark nearly resembling it”, in connection with their own goods). The Applicant also emphasizes that trade marks must be considered in their entirety and points out that a combination of known elements, of which each on their own may be unregistrable, may nonetheless be registrable if the overall effect of the combination is distinctive.[6]
[4] See for example BP plc v Woolworths Ltd (2004) 62 IPR 545; [2004] FCA 1362 at [16] or Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494; [2002] FCAFC 273 at [46]. As in those cases, there is nothing in the Act to suggest that the registrability of a device or aspect of packaging should be approached differently to the registrability of any other sign.
[5] (1913) RPC 660.
[6] Per Diamond T Motor Car Company [1921] 2 Ch 583; (1921) 38 RPC 373.
The Trade Mark is a bottle label that comprises three concentric rectangles spaced relatively evenly apart, such that they may be perceived as a pattern or “rectilinear bullseye”[7]. In submissions in respect of a similar co-pending application the Applicant described its mark as, inter alia:
(i)Overall the mark encompasses three distinct elements or shapes in the form of oblongs or rectangles each of which is quadrangular in nature and each of which is of a different size and proportion in relation to the two other shapes. The three rectangular shapes are arranged and reside on inside the others so that they are seen to be in parallel or, as the Examiner puts it, “concentric” in nature.
(ii)The trade mark in question will thus be seen as comprising a pattern, set or series where each of the several individual integers is arranged in a particular sequence and configuration.
(iii)The separate rectangular shapes are placed in a particular and definite arrangement and a precise relationship one with the others. The individual elements are arranged in a manner whereby they are in particular contiguity one with the others, with the overall effect that they come together as a distinct whole.
…
(xii)The choice of elements which make up the present mark and the particular arrangement of same is purposeful and deliberate and the effect of the mark is calculated and intentional. The mark is presented in a special or fanciful manner which goes much further than mere embellishment. The mark can be described by the label RECTILINEAR BULLSEYE…
[7] I am not convinced that the Trade Mark would be perceived as a “rectilinear bullseye”, as proposed by the Applicant, however as it does not affect the outcome of the decision I use that description where appropriate.
Whilst I do not consider the Trade Mark devoid of inherent adaptation to distinguish, as contemplated by subsection 41(3), I am not satisfied that it is prima facie capable of distinguishing the Applicant’s wine and alcoholic beverages from those of others on the basis of its inherent adaptation alone. Whether it is described as “three concentric rectangles” or a “rectilinear bullseye”, it remains that the Trade Mark is not so distinctive that other traders are unlikely to wish to use the same or a similar trade mark without any improper motive.
Bottle labels are conventionally rectangular. Accordingly the basic shape which has been repeated in a concentric pattern does not impart any inherent distinctiveness to the Trade Mark (as might be the case were the basic shape something atypical such as a complex polygon, an animal or a person). The pattern of “concentricity” and relatively even spacing between the rectangles do lend a degree of inherent distinctiveness to the Trade Mark. Whereas closely spaced concentric rectangles enclosing a relatively large blank space would likely be perceived only as a decorative border (such as in trade mark no. 974328 reproduced the table below), here the regular repetition of the rectangles in Trade Mark is in the nature of a concentric pattern rather than a mere border. Nonetheless, even though the Trade Mark is to some degree inherently adapted to distinguish I am not satisfied it is capable of distinguishing on that basis alone. Images of concentric shapes are not unusual, and the simple repetition of rectangles is something other traders are likely to think of desire to use.
The Applicant asserts that such a stance should be able to be supported by examples of use of the Trade Mark by others or conflicting trade marks upon the Register, but none have been provided demonstrating that the Trade Mark is not one others would wish to use.
I note firstly that the assessment of whether other traders are likely to think of and desire to use a trade mark is not answered by whether they already have (although evidence of such would likely support a ground for rejection under section 41). It is an assessment of a future likelihood: an inference which must be supported by a reasonable basis, but which is not negated by a lack of present use by others.
Whether conflicting trade marks appear upon the Register does not answer the test of whether others are likely to wish to the Trade Mark or something nearly resembling it as part of the “common heritage” of images that may be used. Moreover the state of the Register should be approached with caution.[8] Nonetheless, insofar as it may give an indication as to the likelihood of other persons thinking of and desiring to use the same or similar concentric pattern in the course of trade, the online database of trade marks (‘ATMOSS’) contains the following applied-for and registered trade marks in various classes including class 33:
[8] See British Sugar PLC v James Robertson & Sons Ltd 1996 RPC 281, which notes that the state of the Register does not tell the observer what is happening in the market or the circumstances of the marks being registered; and Ocean Spray Cranberries Inc v Registrar of Trade Marks (‘Ocean Spray’) 47 IPR 579, which notes that marks may have been wrongly registered and it would be an unwarranted distraction to investigate, in each case, whether they were or not.

-9000577 (prohibited mark)	316529	327626	354293
499694	503728	519367	757791
787847 (applied for in class 33)	938126 (registered in class 33)	974328 (applied for in class 33)	1031332
1034476	1043855	1087201 (registered in class 33)	1139312
1242628	1263422	1332353 (registered in class 33)	1478101

The Applicant also makes submissions regarding the state of the Register in terms of various other concentric shapes achieving registration apparently without the need to rely upon evidence of use. I note firstly that many of them are a good deal more complex than the Trade Mark. Secondly as to the Register being a gauge as to the kinds of trade marks the Registrar considers registrable, I return to the caution mentioned above, in particular the reference to Ocean Spray wherein Wilcox J disregarded evidence of other registered trade marks, stating at [35]:
That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar at 305:
Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word ‘Treat’. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.
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. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
The Applicant emphasizes trade mark registration 509292, being an arrangement of three ellipses (shown below) which was registered without evidence of use, and submits that the Trade Mark is in its conception very similar to that registration. Aside from the discussion above I do not consider this an analogous example. The arrangement of the ellipses is much more complex than a simple concentric arrangement, and I am satisfied that this Trade Mark can be distinguished from registration 509292.

In further support of its case the Applicant cites Re Freshfood Holdings Pty Ltd[9] and Re Clipsal Australia Pty Ltd[10], two shape trade marks wherein a number of criteria were advanced by the respective applicants in establishing distinctiveness of the trade marks. The Applicant relies upon those criteria here, stating:
1.The present application is an original shape.
2.It is a shape that is striking to the eye.
3.It is a shape that is not dictated by any function or requirement, but rather is purely aesthetic.
4.It is unique to the goods in respect to which registration is sought.
5.It is a shape which other traders are not likely without an improper motive to want to use.
[9] (2005) AIPC 92-074
[10] (2006) AIPC 92-151
I mention first that the above criteria were applied specifically to shape trade marks and do not necessarily directly translate to other types of trade marks. It is not entirely clear what kind of trade mark is sought to be registered here: it has been applied for and captured as a standard device trade mark, however in submissions for the hearing is referred to as both a device and an aspect of packaging. Nevertheless, as indicated in the previous paragraphs of this decision I do not consider the Trade Mark to be an original device or aspect of packaging as illustrated by the number of concentric rectangles and squares appearing in trade marks sought to be registered, or to be one which other traders are unlikely to want to use without improper motive.
In Re Apple Inc[11] the Registrar’s delegate considered a trade mark comprising a horizontal line surrounded by a rectangle with rounded corners, as shown below (the broken/light grey lines not being part of the trade mark, having been disclaimed in an endorsement to the registration).

The Applicant relies upon this case and states that the maxim “simplicity is no bar” may be used to summarise the decision. The delegate in that decision did not use the maxim but did somewhat disagree with the apparent basis for the examiner’s objection, being that the trade mark was too simple. Whilst I do not consider that the delegate’s comments go so far as to articulate a general principle, I acknowledge that simplicity of itself is not necessarily a basis for rejection (unless a mark is so simple that it is reasonable to infer on that basis alone others are likely to desire to use it, such as might be the case for a dot or a line). I note further that the delegate did not go so far as to decide that the trade mark was inherently adapted to distinguish but rather applied the provisions of subsection 41(5), reflecting that the trade mark was not capable of distinguishing without evidence of acquired distinctiveness. There is no such evidence before me.

[11] (2015) 112 IPR 43; [2015] ATMO 25

A further argument the Applicant raises is that if the the submitted verbal equivalent “rectilinear bullseye” is considered registrable (and “rectilinear” has been registered by the Applicant in respect of similar goods – see registration 1446724), then the present form of the device trade mark should have no lesser prospect of success. I do not accept this argument for two reasons. Firstly, as stated previously I am not convinced that the Trade Mark would be perceived as a “rectilinear bullseye”, even though the label might fall within that description. I consider it more likely to be perceived as a pattern of concentric rectangles on a bottle with no particular association to a bullseye. I therefore do not equate the expression “rectilinear bullseye” with the Trade Mark, nor do I consider consumers would perceive it as such. Secondly, under section 41 the verbal equivalent of many non-distinctive features may be registrable, including “rectangle”, “underline”, “elliptical border” and so on. The likelihood of persons wishing to use the verbal equivalent of those features is quite different to the likelihood of persons wishing to use the features themselves, and the outcomes of the section 41 assessment may accordingly differ.

Lastly, the Applicant submits:
There arises a public policy factor which should properly be taken into account by the Examiner. There is an overriding need to protect the public from the prospect of confusion or deception. The basic principle of trade mark law is that the first party to adopt and use a trade mark should acquire prioir rights in respect of that mark. In this instance, the mark of the present application is distinctive of the Applicant. The Applicant is the first party to have arrived at and adopted this particular form of device mark in Australia in respect of the relevant goods. The mark is associated with the Applicant and the Applicant has rights at common law in respect of it. It would be wrong if a third party were allowed to be placed in a position where it might be able to assert rights in respect of the Applicant’s trade mark. Any other party who now sought to register this device mark in Australia would do so knowingly and would act in a manner which arguably constitutes improper conduct…A refusal to allow the present application to proceed to registration might well be deceptive in encouraging members of the public and third parties to believe a situation which is not correct, namely that the Applicant does not have rights in respect of the device mark which is presently applied for.
However, the above proposition rests upon the premise that the Trade Mark is registrable, either by virtue of its inherent adaptation alone or in combination with its use or intended use. Where a trade mark is not capable of distinguishing, it is not registrable and therefore there are no statutory rights flowing from the application. The Applicant asserts that it has common law rights in respect of the Trade Mark, however there is no evidence of that. Earlier in its submissions it concedes that no evidence of use of the Trade Mark is available because it is reluctant to release its product and Trade Mark into the marketplace until the outcome of this application is known. Therefore the common law rights that the Applicant asserts it has are not apparent to me.
I am not satisfied that the Trade Mark is inherently adapted to distinguish the Applicant’s wine and alcoholic beverages from those of others. The arrangement of concentric rectangles on a bottle is one that other traders are likely to think of and desire to use. No evidence of use, intended use or other circumstances have been provided. Accordingly section 41(4) of the Act applies and the Trade Mark is not capable of distinguishing the designated goods.

Decision

Section 33 of the Act relevantly provides:
(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.
…
(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.
I have found that the Trade Mark is not capable of distinguishing the designated goods. I accordingly reject trade mark application number 1613048. If, however, the Registrar has been served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Nicole Worth
Hearing Officer
Trade Marks Hearings
29 September 2015