Normet International Ltd

[2015] ATMO 65

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1437999 (IR No. 1083033) in classes 6, 37 – D-BOLT – in the name of Normet International Ltd.

Delegate:	Debrett Lyons
Representation:	Holder: Michael Seifreid of F. B. Rice & Co.
Decision:	2015 ATMO 65 Regulation 17A.24 – grounds for rejection under section 41(5) apply – partial refusal of extension of protection to Australia.

Background

1. This is a decision with reasons in the matter of an examiner’s partial refusal to extend protection to Australia in respect of an International Registration Designating Australia (‘IRDA’) details of which follow:

   I/N Regn. No.             1083033

   Application No:           1437999

   Priority Date:               9 May 2011

   Goods/Services           Class: 6 Metal building materials; bolts made of metal; bolts made of steel
   Class: 37 Mining activities

   Trade Mark:               D-BOLT

2. Provisional refusal of protection of the IRDA were raised in examination under section 27 of the Trade Marks Act 1995 (‘the Act’), and regulation 4.3 of the Trade Mark Regulations 1995 (‘the Regulations’). The refusal was in respect of the class 6 goods only and was based on section 41(6) of the Act.

3. The reason for refusal was expressed to be because “research indicates that other traders use D BOLT to describe carious types of bolts, most often bolts which incorporate some part in the shape of the letter D.”

4. Over three rounds of correspondence with the prosecuting attorneys the objection was maintained during which the basis for refusal was modified to section 41(5) of the Act. In the course of that correspondence a declaration made on behalf of the holder by Mr Trond Skogseth was filed and considered by the examiner. In her final report, the examiner expressed the view that the trade mark had “a very low level of adaptation to distinguish the claimed goods”. Further, after cataloguing alleged deficiencies in the evidence provided by Mr Skogseth, the examiner concluded that “the declaration and evidence leaves many questions as to why and how consumers across the entire Australian jurisdiction would perceive D-BOLT as an identifier of source rather than as a reference to the claimed goods.”

5. The examiner invited further and better evidence but none was forthcoming and the matter was set down for hearing in Melbourne on 19 March 2015.  The hearing was held before me, as delegate of the Registrar of Trade Marks.  Mr Michael Seifreid of F. B. Rice & Co. represented the holder.

   Submissions and Discussion

6. Prior to the hearing, the holder provided written submissions for my consideration. Those submissions did not touch on the point, but it is noted here that it is the form of section 41 of the Act as it existed before the commencement of the ‘Raising the Bar’ Act in April 2013[1] which determines the registrability of the trade mark in this case.  The Registrar’s position is that the amended version of the section only applies to applications filed on or after 15 April 2013, with the repealed section continuing to apply to applications such as this which were filed before that date.[2]

   [1] The Intellectual Property Laws Amendment (Raising the Bar) Act2012 came into full effect on 15 April 2013. The Act repealed section 41 of the Trade Marks Act 1995 and substituted it with a new section 41.

   [2] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.

7. The wording of repealed section 41, as applied here to the IRDA by regulation 17A.28, relevantly provides:

   (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).

   8. As stated already, there is no objection to the class 37 services. So far as the goods are concerned, the holder’s submissions were essentially that the trade mark has a greater degree of inherent adaptability to distinguish than has been perceived by the examiner and so, for the purposes of section 41(5), correspondingly less evidence of use, or of intended use, should be required. It is then said that the evidence filed during examination is sufficient for acceptance of the application, or, in the event that it is not, additional evidence of a less than “very substantial and persuasive” (to repeat the examiner’s words) kind should be sufficient for that purpose.

   9.     The test for whether a trade mark is ‘inherently adapted to distinguish’ focuses on the ordinary meaning or signification of the words or terms to people ordinarily buying, consuming or trading in the relevant goods.[3]  I must first determine the ordinary signification of the trade mark and then examine whether other traders might legitimately need to use the word in relation to their goods.[4]

   [3] Cantarella Bros Pty Ltd v Modena Trading Pty Limited [2014] HCA 48, [28], [30], [59].

   [4] Cantarella Bros Pty Ltd v Modena Trading Pty Limited [2014] HCA 48, [71].

   10.     In my assessment the ordinary signification of the trade mark is that of bolts which are somehow fashioned in the shape of, or incorporate, a “D” shaped element.  Moreover, the examiner’s research shows that such bolts are known and are referred to as “d-bolts”.

   11. There was no submission from the holder that the trade mark was acceptable for registration under section 41(3) and I agree with the examiner that the proper positioning of the trade mark for testing registrability is under section 41(5). Even then, I find that the trade mark sits low on the spectrum of inherent adaptation to distinguish the designated goods.

   12.     It is not necessary for me to set out the shortcomings of the evidence of use provided by the holder.  That has been communicated to the holder in detail already by the examiner and, given what I have just said about the inherent character of the trade mark, further and better evidence is necessary.

   13.     Much of this was communicated to the holder’s representative at the hearing and, at his request, additional time was given until 25 May 2015 to adduce further evidence.

   14.     No further evidence was forthcoming, but on 12 May 2015 the holder filed a divisional application for the trade mark nominating the same class 6 goods, namely, “metal building materials; bolts made of metal; bolts made of steel”.

   15. Accordingly, the position in relation to this IRDA remains unchanged since the examiner’s final report on 17 February 2014. On reconsideration of grounds for refusal and of the evidence I am of the view that registrability should be assessed under section 41(5) and that the evidence of record is insufficient to allow extension of protection of the trade mark for the class 6 goods.

   16.     I note that the holder submitted that “one possible (limiting) amendment to its present class 6 goods specification would be to reframe the goods as: “metal building reinforcement materials for use in tunnelling, mining and rock extraction activities”.  In my opinion that proposal, without more, does not assist the holder since metal building reinforcement materials would include bolts.

   Decision

8. Regulation 17A-24 provides:

   Final decision on examination

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

   (a)  it is not in accordance with this Division; or

   (b)  there are grounds for rejecting it.

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

   (3)  The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   (a)  it is not in accordance with this Division; or

   (b)  there are grounds for rejecting it, in whole or in part.

9. I therefore refuse to extend protection in Australia to International Registration Designating Australia 1437999 for all of the class 6 goods.  Extension of protection can extend to Australia for the class 37 services.  This decision will be communicated to the International Bureau.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   8 July 2015