National Software Pty Ltd, Re

[1991] ATMO 63

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade Mark Application 468932 in the name of NATIONAL SOFTWARE PTY LTD

Trade Mark Application 468932 was lodged on 15 July 1987 in the name of NATIONAL SOFTWARE PTY LTD of 25 York Street, Launceston, Tasmania.  The application was for the trade mark shown below in respect of goods in class 9, the specification being subsequently amended to read:

Computer software; computers, computer discs and magnetic recording tapes; and all other goods in this class.

In the first report on the application, the examiner advised that objections to registration existed under paragraph (e) of sub-section 24(1) in that the mark was not distinctive.  The objection was said to arise because the mark contains a non-distinctive representation of goods for which registration of the mark is sought and the device of a map of Australia, the manner of representation not being sufficient to render the mark distinctive when viewed as a whole.

It was submitted on behalf of the applicant that, while the individual elements within the subject mark are in themselves not distinctive, the mark is at least capable of becoming distinctive of the applicant's goods.  The applicant requested amendment of the application to one for registration in Part B of the Register and offered to disclaim the device of a map of Australia and the device of a computer disc.

The amendment was effected and in the next report an objection under section 25 was taken. When that objection was maintained by the examiner, evidence of use was lodged.  The examiner reported that the evidence demonstrated use of a mark which included the word NATSOFT written on the floppy discs within the device mark which is subject of this application.  The section 25 objection was maintained as the evidence did not support use of the mark as lodged.

The applicant requested a decision on the written record.  By letter dated 27 May 1991, I advised that, if evidence showing use of the mark as depicted in the application was not provided I would not be able to withdraw the outstanding objection to registration.  Having heard nothing further from the applicant in the time allowed, I am now issuing my decision in this matter.

To decide whether a mark is capable of becoming distinctive and thus registrable in Part B, it is necessary to consider whether the mark is capable of meeting in the future the tests of distinctiveness laid down in sub-s 26(2): Gibbs J., Burger King Corporation v. The Registrar of Trade Marks 128 CLR 417. Consisting as it does of a representation of goods included in the specification surrounded by the outline of the map of Australia, the subject mark is markedly lacking in inherent adaptation to distinguish the applicant's goods. While the mark may not be inherently incapable of becoming distinctive this may not be regarded as sufficient for it to qualify for registration in Part B and the onus is on the applicant to establish that the mark is capable of actually becoming distinctive: Personal Products Corporation's Application (1960) 30 AOJP 1817 at 1819.

As noted by the examiner, the evidence does not reflect use of the subject mark.  In addition, the rather modest sales under the mark depicted in the evidence appear to have been confined to Tasmania.  All the evidence relates to use of a mark comprising the device for which registration is now sought with the word NATSOFT appearing on each of the discs within the device and that composite being in close association with the applicant's registered mark NATSOFT rendered in comparatively large lettering.  The goods are most likely to be ordered with reference to the word element and, given the non-distinctive nature of the device and the prominence of the words in the mark in use, the device may well be taken as an embellishment rather than an indication of the trade source.  The manner of use shown by the evidence does not indicate a likelihood that use has brought about, or will in the future lead to, the acquisition of distinctiveness of the device element solus.

The applicant has not satisfied me that the subject mark is capable of becoming distinctive of the goods specified and therefore qualifies for registration in Part B.  I therefore refuse trade mark application 468932.

(Barbara J Bennett)
Senior Examiner
24 September 1991