NA v Spitfire Brands (Aust) Pty Ltd

[2018] ATMO 126

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1759542 (8, 9, 11) – TACTICAL - in the name of Spitfire Brands (Aust) Pty Ltd.

Delegate:

Bianca Irgang

Representation:

Joel Masterson of Cornwall Stodart

Decision:

2018 ATMO 126

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

Background

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

   Trade Mark No: 1759542

   Trade Mark:  TACTICAL (the ‘Trade Mark’)

   Filing Date: 17 March 2016

   Applicant: Spitfire Brands (Aust) Pty Ltd

   Specification of Goods:

   Class 8: Hand tools; cutlery including sport knives, pocket knives; tongs; scissors; multiplier tools; axes; pickaxes; daggers; chisels; clamping wedges; insecticide sprayers (hand tools); drills; hammers (hand tools); ice picks; shovels and other implements for digging

   Class 9: Binoculars; sport glasses (binoculars); sports glasses (binoculars); protective goggles; compasses (measuring instruments); directional compasses; magnetic compasses; navigation compasses; apparatus for navigation; batteries; battery chargers; battery packs; vehicle batteries; solar batteries; solar energy operating apparatus; solar panels for electricity generation; solar cells for electricity

   Class 11: Lamps; lanterns; torches; pocket torches; headlamps; headlights; map lights; tent lights; solar collectors (lighting); solar energy powered heating apparatus; solar lamp units; solar panels for use in heating; solar thermal collectors (heating

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

   Your trade mark consists of the word TACTICAL.

   This word is defined as:

   (adj): 1. of or relating to tactics, especially military or naval tactics. 2. characterised by skilful tactics or adroit maneuvering or procedure: tactical movements (Macquarie Dictionary)

   As such, your trade mark simply indicates that your goods -which cover a range of hand tools, protective wear, binoculars, navigation and measuring instruments, batteries, lighting and heating equipment- are for tactical purposes. I note that phrases such as 'tactical gear' and 'tactical equipment' are commonly used in the marketplace to promote such goods, when sold (for instance) for the purpose of outdoor or adventure activities.

   In view of this descriptive meaning, other traders should be able to use TACTICAL, or something similar, in connection with goods or services similar to yours.

2. The applicant was then given the option of providing evidence of use to overcome the ground for rejection. The applicant’s legal representative responded by submitting evidence of use by the applicant and requesting amendments to the goods and services in the application.

3. The examiner maintained the ground for rejection under section 41(4) and section 44. The second report from the examiner focused on a lack of detail in the evidence and considered the limited instances of the Trade Mark being used in the evidence provided. The amendments were also considered to be insufficient to overcome the section 44 ground for rejection.

4. Thereafter, the applicant provided additional evidence to clarify the examiner’s concern that the evidence was insufficient. The examiner remained unconvinced by the evidence and pointed out that the applicant’s requested amendments to the goods and services did not overcome all the section 44 citations. Duly, the applicant requested to be heard on the matter as allowed by section 33(4) of the Act. The hearing took place in Canberra on 23 February 2018. Joel Masterson of Cornwall Stodart made representations on behalf of the applicant. I conducted the hearing and the following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

The Law

1. Section 41 of the Act provides:

41 Trade mark not distinguishing applicant’s goods or services

(1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:          For goods of a person and services of a person see section 6.

(2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)  This subsection applies to a trade mark if:

(a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)  This subsection applies to a trade mark if:

(a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)  the use, or intended use, of the trade mark by the applicant;

(iii)  any other circumstances.

Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:       For goods of a personand services of a personsee section 6.

Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:       For applicant and predecessor in title see section 6.

Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

1. The first step, in terms of subsections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the goods of the applicant from the similar goods of other persons.

2. The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks[1] where Kitto J said:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

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

3. The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[2]

   [2] (1965) 112 CLR 537).

4. The ground for rejection as stated by the examiner is that the Trade Mark has limited inherent adaptation to distinguish the designated goods as the word tactical is commonly used in the marketplace to promote such goods, when sold (for instance) for the purpose of outdoor or adventure activities.

5. Mr Masterson explained that the applicant exclusively licenses its related company, Anaconda Group Pty Ltd (‘Anaconda’) to use the Trade Mark in relation to goods that are sold in its national chain of retail stores which are also called Anaconda. Therefore, the evidence presented concerns Anaconda’s use of the Trade Mark in Australia. Mr Masterson also asserts that the applicant has provided sufficient evidence by way of its exclusive licensee that the Trade Mark has been extensively used in Australia on the goods since 2006 and that use of the applicant’s composite trade mark (as seen below) is, based upon Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[3](‘Accor’), sufficient to demonstrate use of the plain text Trade Mark.

   [3] [2017] FCAFC 56

Trade Mark Registration No: 1350716

Trade Mark:   (‘Composite Trade Mark’)

Filing Date: 15 March 2010

Applicant: Spitfire Brands (Aust) Pty Ltd

Specification of Goods:

Class 9: Binoculars; sport glasses (binoculars); sports glasses (binoculars); compasses (measuring instruments); directional compasses; magnetic compasses; navigation compasses

1. I will consider the above argument when it comes to the discussion of the evidence provided to me.

2. In terms of the ‘other traders’ test in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[4] the likelihood of other traders desiring to use the Trade Mark in relation to the designated goods may be tested by appropriate examples from the marketplace. On that point I note that there are a number of examples on the Official File of other traders using the term TACTICAL. Even this use in the marketplace indicates that traders do use TACTICAL as a laudatory expression and apply it to the goods which may be employed by consumers for tactical purposes which will most likely take place outdoors for pleasure and adventure. I note that the applicant’s goods are marketed and sold to consumers primarily as outdoor adventure products.

   [4] (1913) AC 624, at pp 634.

3. Having taken into account the presumption of registrability I am nevertheless satisfied that the first element of the ground for rejection exists under s 41(4)(a) of the Act with regards to all the goods in the application. I acknowledge that the Trade Mark has an element of distinctiveness to it and this provides the Trade Mark with some inherent adaptation to distinguish the designated goods from those of other traders.

4. However, for the ground for rejection under s 41(4) to apply, I must also be satisfied that the Trade Mark does not and will not distinguish the designated goods as being those of the applicant having regard to the factors set out in ss 41(4)(b). Accordingly, I will now consider the applicant’s evidence of use, intended use and any other circumstances that may be relevant in the consideration.

The Evidence

1. The applicant provided the following declarations in support of its application:

• John Richard Hutchings, Director of Spitfire Brands (Aust) Pty Ltd made 4 October 2017 accompanied by exhibits JRH-19 to JRH-18. (‘Hutchings 1’)

• John Richard Hutchings, made 4 October 2017 accompanied by confidential exhibit JRH-9 (‘Hutchings 2’)

1. The applicant also provided an outline of submissions for the hearing.

2. A consideration of the evidence reveals that Mr Masterson’s assertions concerning Anaconda are correct. The majority of evidence before me is use of Trade Mark by Anaconda since 2006. Since that time:

• Anaconda has used the Trade Mark continuously in relation to its range of camping, hiking, fishing and other outdoor adventure products.

• In October 2008, the Tactical brand grew in popularity and sales of TACTICAL branded goods increased. An official Brand Usage Guide was also developed[5].

• The goods sold under the Trade Mark increased from the approximately 7 products sold under to the Trade Mark in 2006 to 46 products sold under the Trade Mark in 2017[6].

  [5] Confidential exhibit JRH-3

  [6] Exhibit JRH-4 accompanying Hutchings 1

1. Anaconda operates a number of stores across Australia[7] as well as an online store[8] (which has been in operation since 2 November 2010). The advertising and marketing expenditure by Anaconda of the Trade Mark has included the “Adventure Club” which Anaconda established in 2004. The Adventure club has a substantial number of members which is unsurprising given that any Anaconda customer may join the club for free and obtain promotions through it including the $10 discount on their next purchase for signing up.

   [7] Exhibit JRH-6

   [8] Exhibit JRH-13

2. Anaconda has also advertised the Trade Mark through various print media such as its catalogues and the OE Mag since 2007. The magazine is released monthly and has a small subscription base. Additional advertising has taken place over the radio, through television, social media and through event sponsorship and charitable activities including State Government of Victoria’s Gallipoli 2015 ANZAC Day Dawn Service Tour as the official outdoor adventure gear supplier.

3. The sales figures provided by the applicant for the revenue generated by Anaconda in relation to the goods bearing the Trade Mark are from 2012 until 2016. The figures are considerable although tending to fluctuate. 

4. Mr Masterson has argued the above evidence, while being predominantly related to use of the applicant’s Composite Trade Mark, constitutes use of the word TACTICAL solus as currently applied for. He has cited the decision in Accor as being the basis for this reasoning. In that decision the Full Court found that use of two composite trade marks including additional words and devices were relevant in assessing the proprietorship of the plain text trade mark for the words HARBOUR LIGHTS under s 58.

5. Mr Masterson referred me to the comments of the Full Court at [213];

   “…even if the adoption of the five gold stars constitutes a device, the device does not substantially affect the identity of the trade mark in the words alone. The device is simply not an addition to the registered trade mark with the result that use of the trade mark with the five gold stars nevertheless constitutes use of the registered trade mark for the purposes of s. 7(1) of the Act. We respectfully disagree with the primary judge that the addition of the five gold stars in combination with the de minimis word “A New Star Shines” gives rise to such a degree of interconnection and allusion, one to the other, as to substantially affect the identity of the trade mark in the words alone.”

6. I have carefully considered this case in relation to the one before me and I am not satisfied that the situations are analogous. In the above case, the trade marks were in relation to services in which the words HARBOUR LIGHTS were not in any way descriptive or laudatory for those services offered under them. If I were to accept the reasoning of the arguments presented under an opposition under s 58 as being reasonable to apply in a s 41(4) situation then I am still faced with the decision of assessing whether or not the evidence presented by the applicant is sufficient to overcome the s 41(4) objection to registration. I say now that even if I generously consider all the evidence provided by the applicant in regards to use of both the Composite Trade Mark and the Trade Mark, I am not satisfied that there is sufficient evidence before me of use of either trade mark which is sufficient to overcome the s 41(4) objection.

7. I am not satisfied from the above evidence that the word TACTICAL has developed a secondary meaning as a trade mark of the applicant such that the average Australian consumer would overlook the primary meaning of the word TACTICAL when applied to outdoor adventure goods such as those covered by the application. I am not satisfied that a consumer commenting on or hearing about ‘tactical binoculars’ or a ‘tactical knife’ would conjure associations with the applicant rather than the laudatory and descriptive nature of the word when applied to those goods. Particularly given the sheer number of traders in the Australian marketplace selling the same goods with reference to them being ‘tactical’ goods.

8. I turn to the Treat decision[9] where Jacob J of the UK High Court of Justice considered the evidence provided in the action between the parties.  He said:

   I have already described the evidence used to support the original registration.  It was really no more than evidence of use.  Now it is all too easy to be beguiled by such evidence.  There is an unspoken and illogical assumption that ‘use equals distinctiveness’.  The illogicality can be seen from an example:  no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods.  He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. 

   [9] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

9. Justice Jacob then went on to say the following:

   It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader.  This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.

1. The applicant has provided a number of examples of how it uses its Trade Mark and its Composite Trade Mark. It is clear that in the vast majority of cases the Composite Trade Mark is used and that occasionally the Trade Mark is used in the same advertisements. While I agree that there is no reason why the applicant cannot use one, two or several trade marks together in its advertising or on its packaging, the essential consideration is that the plain text expression TACTICAL operates, in its own right, as a trade mark. It must serve the purpose of distinguishing the applicant’s goods within the particular trade. I am not satisfied that this is the case.

2. The applicant’s goods are only sold through the Anaconda branded stores and they are sold to consumers who would be in the market for adventure gear which likely has a tactical purpose. The applicant has openly admitted that the goods it has sold under the Trade Mark started out only being around seven products but has eventually grown to 47 products. It is unclear how long and what usage of the trade marks applies to which goods in the applicant’s specification for purposes of determining if there is sufficient use to sufficiently overcome the s 41(4) objection to all the goods.

3. I note that the applicant has obtained registration of its Composite Trade Mark for a limited number of goods in class 9 so this registration is of limited assistance to the applicant in establishing that it already has the term TACTICAL registered if I were to apply the reasoning in Accor. In any event each case must be assessed on its merits - with regard to the relevant judicial tests - not with regard to the state of the register.

4. This previous registration does not necessarily grant the applicant ownership or rights in the single word TACTICAL and it is not a sufficient reason for the acceptance of the Trade Mark.

5. I consider, from what is demonstrated in the evidence before me, that the applicant’s use of the term TACTICAL in conjunction with the applicant’s Composite Trade Marks and various identifiers common to the packaging, advertising and distribution of its goods only through Anaconda stores that the Trade Mark does not distinguish the applicant’s goods on its own. Nor does the evidence provided sufficiently demonstrate that the Trade Mark has acquired a meaning related to the applicant’s goods which overshadows its descriptive meaning. The applicant’s evidence does not satisfy me that the Trade Mark is capable of distinguishing the applicant’s goods from the similar goods of other traders in the same field.

6. The applicant has been unable to overcome the section 41(4) ground for rejection and given this ground of rejection stands, I find it unnecessary to discuss the s 44 ground of rejection which would suffer from the same issues regarding the applicant’s evidence of use.

Decision

1. Section 33 of the Act provides:

33Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

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

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

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

Note:For applicant see section 6.

1. I am satisfied that there is a ground under section 41(4) of the Act for rejecting trade mark application no. 1759542 and I hereby reject it.

Bianca Irgang

Hearing Officer

Trade Marks Hearings & Opposition

8 August 2018