OILID Pty Ltd

[2012] ATMO 15

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1314932 (9) – DOCid – in the name of OILID Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Applicant:  Thomas Haines, Trade Mark Attorney with Golja Haines & Friend
Decision:	2012 ATMO 15 Ex-parte decision – section 41 – grounds for refusal to registration under ss 41 and (potentially) 43 – application refused.

Background

1. OILID Pty Ltd (‘the Applicant’), applied to register a trade mark, current details of which appear below:

Application number:              1314932
Filing date:       13 August 2009           

Class and goods  Class: 9 Antennas; bar code readers; electronic tags for goods; electronic radio apparatus, including electronic radio apparatus for modulating and demodulating radio-frequency signals, and electronic radio apparatus for transmitting and receiving radio-frequency signals; data processing equipment; electronic signal transmitters; electronic signal receivers; electronic signal transceivers; interfaces for computers; and software, including asset management software

Trade Mark:  DOCid           

(‘the Application’)       

1. The Application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner raised a ground for rejecting the Application under the provisions of subsection 41(5) of the Act. The examiner stated that “doc id” is a term in common use, understood as a common abbreviation for the words “document identification”. The examiner reasoned that in spite of the stylization of the trade mark, it would be seen as “doc id” and that the trade mark therefore indicates that the goods are used to identify, or issue identities to, documents. The Examiner went on to invite the Applicant to provide evidence of use of the trade mark such that the Application might be reconsidered under section 41(5) of the Act.

2. In response thereto, the Applicant requested that the statement of goods of the Application be amended to:

   Antennas; bar code readers; electronic tags for goods; electronic radio apparatus, including electronic radio apparatus for modulating and demodulating radio-frequency signals, and electronic radio apparatus for transmitting and receiving radio-frequency signals; data processing equipment; electronic signal transmitters; electronic signal receivers; electronic signal transceivers; interfaces for computers; and software, including asset management software; all of the aforementioned goods not for identifying or issuing identities to documents or documentaries.[1]

   [1] The somewhat obscure exclusion of “documentaries” arose from the Applicant’s reaction to the examiner’s claim that “doc” might be a reference to documents or documentaries.

3. In later reports, the examiner maintained the objection under section 41(5) and it is only necessary for me to extract a passage from the examiner’s third and final report which reads:

   DOC ID is a very common term being used in relation to a broad range of goods in particular software, electronic tags, and other electronic goods used in association with asset management software and hardware for the purpose of tracking assets.  It appears all of the goods of your application are used in relation to asset identification and management, to which DOC id refers.  As such it is unlikely that any exclusion would be sufficient to allow me to withdraw the objection.

4. The examiner once more made suggestions about evidence which might assist the Applicant and about the possibility that the Applicant might refine the specification, but advised the Applicant that if these avenues did not progress the Application then it was likely that the examiner would instigate the rejection process. 

5. No evidence of use was submitted nor were further amendments to the specification of goods requested.  It is understood that a subsequent telephone conversation between the examiner and the Applicant’s representative did not advance matters with the result that the Applicant asked to be heard.

6. The matter came before me for hearing in Perth on 25 August 2011.  The applicant was represented by Thomas Haines, Trade Mark Attorney of Golja Haines & Friend.  Mr. Haines made both oral and written submissions which have been taken into account in reaching my decision.

7. By way of further background, it is noted here that after the hearing I indicated to Mr. Haines that I would not refuse the Application without first giving the Applicant notice of my intentions and allowing the Applicant an opportunity to reply.

8. Having heard the Applicant and having reviewed all its submissions, it remained unclear to me whether there was any contest by the Applicant to the claim that the trade mark would be readily understood as an abbreviation for the words “document identification” or “document identity” and so on 12 October 2011 I wrote to the Applicant providing a pertinent reference and sought clarification of that point.  In a response dated 29 November 2011, the Applicant wrote that it did not dispute that the trade mark may be seen as an abbreviation for those words but disputed that there was any descriptive relationship between those words and the designated goods, as sought to be amended.

10.  In that same correspondence the Applicant advised that the trade mark had in fact been used.  Making allowance for the possibility that use might somehow assist the Application or else point to ways in which the Application might be otherwise amended, I allowed the Applicant until 16 December 2011 to provide evidence of use.

11.  On 16 December 2011 the Applicant filed a statutory declaration of Phillip Shearer made 15 December 2011 under cover of a letter from Mr. Haines asking that reasons be given for any refusal of the Application.  Those reasons are given hereunder.

Discussion and Reasons.

The evidence

12.  I have determined that the assessment of the registrability of the Application is best approached by first examining the statutory declaration of Phillip Shearer        and the evidence of use of the trade mark provided with it.

13.  Mr. Shearer is a director of the Applicant.  He states that the information he has provided is confidential and is not to be made publicly available.  Since it is possible and indeed likely that this decision will be published I am therefore left in a difficult position.  I have however seen my way clear to extracting certain inoffensive portions of the information and material provided by Mr. Shearer which should not compromise his request for confidentiality.

14.  Mr. Shearer states that the trade mark was conceived when the Applicant was planning development of systems for tracking objects in a commercial, non-industrial, environment.  He goes on to say that the Applicant has promoted RFID based tracking systems since July 2009.  The annexures to Mr. Shearer’s declaration comprise a document showing the existence of a domain name registration corresponding with the trade mark, a business card carrying the trade mark, and the pages from a PowerPoint® presentation referable to the product offered by the Applicant under the trade mark.

15.  There seems to me to be nothing confidential in nature in either the business card or the domain name registration but I need not consider the issue more closely since neither carries weight in terms of progress of the Application.

16.  It is not easy to identify what aspects of the PowerPoint® presentation might be considered confidential in nature however since the Applicant has so characterized it, I have simply taken two short statements from it.  The business solution offered by the Applicant under the trade mark is said to include “software, RFID tags, reader and docking station”.  One touted advantage of the business solution is said to be that it allows a user to “store and manage all related information in one place, including documents, photos and accounting data”. 

17.  Certain preliminary observations can be made from this material.  First, there is no clear documentary evidence of use of the trade mark before the filing date, 13 August 2009.  Secondly, the alleged promotion of the trade mark began in the month prior to the filing date.  Thirdly, there are no sales or promotional figures of any kind in the evidence, or any other indicia which might show a public awareness of the trade mark, or allow such a conclusion to be reasonably inferred.  There is no information about use or proposed use of the trade mark occurring after the filing date.    

18.  There is no explanation of the nature of “RFID tags” however rudimentary research shows that “RFID” refers to “radio frequency identification” which is described in one place as the use of a wireless non-contact radio system to transfer data from a tag attached to an object, for the purposes of automatic identification and tracking.

The Submissions

19. Mr. Haines’s submissions can be summarized simply. First, although not made explicit in his arguments, Mr. Haines is of the belief that the trade mark qualifies for registration under section 41(3). That is, he believes that the trade mark is inherently adapted to distinguish the goods from those of other persons. That is so, it is submitted, because either (a) the examiner has taken an unnaturally broad reading of how the term “DOC” in the trade mark relates to the goods, as filed, or (b) because the restriction to the goods specification offered up to the examiner and re-iterated at the hearing, namely, “all of the aforementioned goods not for identifying or issuing identities to documents or documentaries, negatives any descriptive connection between the trade mark and the goods.

The legislative framework

20. Section 41 relevantly provides:

(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).

1. The operation of section 41 was analysed by Branson J in Blount Inc v Registrar of Trade Marks[2] in the following way:

   Subsections (3)–(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.

   [2] (1998) 40 IPR 498 at 504.

22.  I have summarized the evidence of use of the trade mark.  There is no scope for the application of subsections 41(5) or 41(6) in this case since the evidence of use of the trade mark is de minimus and there is no information regarding the intended use of the trade mark, or other circumstances which might engage consideration of subsection 41(5).

23.  The only matter to be decided therefore is the extent to which the trade mark is  inherently adapted to distinguish the designated goods, taking due account of any impact made by the requested amendment to the goods specification.

24.  Looking firstly at the Application as filed, I repeat the words of Justice Kitto in F.H. Faulding & Son Ltd [3] :

The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which 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.

[3] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555.

25.  The Applicant has stated that it does not dispute that the trade mark may be seen as an abbreviation for the words “document identification” or “document identity”.   Moreover, references have been put to the Applicant that the term “doc id” is, in fact, a used abbreviation for those words.   Nothing turns on the slight stylization of the trade mark and so it seems to me so clear as to require no detailed analysis that other traders may legitimately wish to use the trade mark in connection with their (similar) goods.

26.  I note here Mr. Haines’s submission that the technology to specifically identify particular “documents” by RMID technology or by means of the suite of goods listed in the specification is, at this point in time, not feasible.  I repeat here Mr. Haines’s submission that case law does not support extrapolation to a possible future state of affairs.  In respect of both those submissions I would direct attention to what was said by French J in Registrar of Trade Marks v Woolworths[4]:

The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

[4] [1999] FCA 1020 at 88.

27.  I need not enquire further into the veracity of Mr. Haines’s claim regarding the state of the art in technology of this kind since it seems to me to be entirely consonant with the idea of fair and normal notional use that the goods may be put to the relevant use in the foreseeable future.

28. In the absence of evidence of acquired distinctiveness it is not necessary for me to determine whether the ground for rejection lies within subsection 41(5) or (6) of the Act and it is sufficient to observe that the lack of inherent adaptation within the trade mark is such that it most certainly brings it within the operation of subsection 41(5).

29. Turning finally to the requested amendment, I am mindful that for many years the Registrar exercised a discretion at the examination stage of an application to refuse trade marks which were regarded as somehow misdescriptive of the nominated goods. Although that practice has disappeared along with the legislation which underpinned it, a ground for refusal based on similar considerations exists under the Act in terms of section 43 which states that:

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.

30.  In short, the trade mark is so wholly descriptive that its dominant, if not only, connotation is that the goods are concerned with document identification – were they not then in my estimation the trade mark would be likely to deceive or cause confusion.  That finding is underlined by the evidence of Mr. Shearer which points only in the direction of technology for the identification of material which I comfortably regard as falling within the generic description of “documents”.

31. I am satisfied that a ground for rejection of the Application exists in terms of section 41 of the Act. Further, the requested amendment to the specification, were it made, would result in a ground for rejection of the Application under section 43 of the Act.

Decision

32.  I refuse to register trade mark application number 1314932.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
9 February 2012