Opposition by Jaimex Nominees Pty Ltd to registration of trade mark application number 1990619 (class 5) - earthify - in the name of Bamboo Babe Pty Ltd
[2021] ATMO 24
•22 March 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jaimex Nominees Pty Ltd to registration of trade mark application number 1990619 (class 5) - earthify - in the name of Bamboo Babe Pty Ltd
Delegate:
Jock McDonagh
Representation:
Opponent: Siobhán Ryan of Counsel instructed by DLA Piper Australia
Applicant: Written Submissions by FAL Lawyers
Decision:
2021 ATMO 24
Trade Marks Act 1995 (Cth) – opposition under section 52 – ground under section 41 not established – trade mark to proceed to registration
Background
This matter is an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Bamboo Babe Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.
Trade mark:
earthify
(‘the Trade Mark’)
Trade mark application:
1990619
Filing Date:
20 February 2019 (‘Priority Date’)
Specification:
Class 5: Breast-nursing pads; Incontinence pads; Panty liners (sanitary); Sanitary pads; Menstruation tampons; Sanitary tampons; Tampons (sanitary); Vaginal tampons; Absorbent nappies for pets; Babies' nappies (diapers); Babies' nappies (disposable); Disposable liners for babies’ nappies (diapers); Disposable nappies; Disposable nappies for incontinence; Disposable training pants (nappies or diapers) for babies; Disposable training pants (nappies or diapers) for toddlers; Disposable training pants (nappies or diapers) for young children; Disposable underpants (nappies or diapers) for babies; Disposable underpants (nappies or diapers) for incontinence; Disposable underpants (nappies or diapers) for infants; Disposable underpants (nappies or diapers) for young children; Infants' disposable training pants (nappies or diapers); Nappies; Nappies for incontinence; Impregnated medicated wipes; Impregnated napkins (wipes) of cellulose containing medicated preparations; Moist wipes impregnated with a pharmaceutical lotion; Sanitising wipes; Wipes (tissues) impregnated with pharmaceutical lotions; Wipes for medical use (‘Applicant’s Goods)
The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 21 July 2019. Jaimex Nominees Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose on 19 September 2019 followed by a Statement of Grounds and Particulars (‘SGP’) on 17 October 2019. The Applicant filed a Notice of Intention to Defend on 18 November 2019. Thereafter the Opponent and Applicant filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).
I heard, by way of video conference, the matter in Canberra on 4 November 2020 as a delegate of the Registrar of Trade Marks. Siobhán Ryan of Counsel, instructed by DLA Piper Australia, appeared for the Opponent. The Applicant relied on written submissions prepared by FAL Lawyers.
Grounds of Opposition
The SGP nominated one ground of opposition, being s41 of the Act. The onus is upon the Opponent to establish its ground of opposition on the ‘balance of probabilities’.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663, and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
The time at which the ground of opposition must be established is the Priority Date, being the date of the application for registration of the Trade Mark. [2]
[2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 95.
Evidence
6. The evidence consists of the following declarations:
Declarant
Position
Date Made
Comments
Evidence in Support
Robynne Sanders
Legal Representative of Opponent
20.02.20
(‘Sanders’)
Evidence in Answer
Michelle Wilson
Legal Representative of Applicant
18.05.20
(‘Wilson’)
The Opponent
While the Opponent’s business was not disclosed in evidence, the Applicant submitted that the Opponent is an Australian proprietary company limited by shares established in 1993.The Applicant further submitted that the Opponent holds a number of Australian trade mark registrations in class 25 (clothing) and in class 5 for feminine hygiene products; sanitary preparations; sanitary absorbent pads; sanitary panty and underwear shields and liners; sanitary panties and underwear.
The Applicant
According to Wilson, the Applicant was founded by George and Karyn Harris with a view to developing personal care products such as sanitary napkins that are biodegradable.[3] Wilson further states that the Applicant chose the word for the Trade mark because it was an invented word, and not descriptive of the Applicant’s products.[4]
The Law in Respect of s 41
[3] Wilson, at [2].
[4] Ibid, at [3]
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 person and services of a person see 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).
10. While neither party raised the issue of the ‘presumption of registrability’ in s 41 matters I make the following points regarding the Opponent’s onus. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:
Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[5] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:
[5] (1998) 40 IPR 498, 505.
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.
The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):
Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.
The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.
Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:
Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:
(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or
(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or
(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] 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 [Applicant’s Services]. [that is, s 41(4) applies][6]
[6] [2017] ATMO 25, [38]-[40].
11. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’), the Full Court summarised the principles in respect of s 41 as follows:
(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).
(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[7]
Is the Trade Mark to any extent inherently adapted to distinguish the Applicant’s Goods and Services from the goods or services of other persons?
[7] [2017] FCAFC 56 at [236].
12. The Opponent submitted that while the Trade Mark has a modicum of inherent distinctiveness, it is insufficient to distinguish the Applicant’s Goods. The Opponent further submitted that there is no evidence that the Trade Mark is otherwise capable of distinguishing through use, intended use or other circumstances.
13. Ms Ryan submitted that the Trade Mark was an obvious extension of the ordinary English language word ‘earth’, in which the suffix ‘-ify’ forms the verb ‘earthify’, meaning ‘to become earth’. This being what the Applicant’s Goods become once they biodegrade or compost, as advertised on the Applicant’s website.
14. Ms Ryan further submitted that the word ‘earthify’ should be free for other traders with biodegradable products to use to denote that characteristic of their goods, for example as ‘#earthify’.
15. Ms Ryan referred to the Applicant’s website, exhibited at Sanders Exhibit RS-7, which highlights the biodegradable and compostable qualities of the Applicant’s Goods, including quotes such as ‘Good for you. Good for the Earth.’
16. The Full Court of the Federal Court considered what qualifies as an invented word in Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks[8]:
“However, the mere fact that a word is newly coined, ie that the particular array of letters has not previously been used to constitute a word, is not sufficient to establish its character as an invented word. In Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (the Rohoe case) there was unanimity on the appropriate principle to be applied, though division on its applicability to the word “Rohoe” there under consideration. In addition to its being newly coined Dixon J said at 181:
The materials from which such a word has been fashioned cannot be neglected and if it is compounded of elements of which the source is manifest and the intended meaning is transparent, it becomes a question whether there is anything more than a colourable attempt at reproducing some of the sounds and all the sense of an expression belonging to common speech.
…. In order to qualify as an invented word under s 24(1)(c) of the Act, a word must be both newly coined and convey no obvious meaning to ordinary Australians. The word “hairfusion” fails the second limb of this test, being obviously composed of the elements “hair” and “fusion” and conveying the meaning of the fusion, mixing, integration or joining of hair.” (citations omitted)
[8] (1988) 12 IPR 1 at p3, refusing registration of HAIRFUSION in Part A under s 24 of the 1955 Act.
17. In Apple Inc v Registrar of Trade Marks, Yates J adopted a similar approach, finding that even if Apple Inc was the first to use the combination APP STORE, “… the words in that combination bore no more than their ordinary signification when applied to the designated services in class 35.”[9]
[9] Apple Inc v Registrar of Trade Marks (2014) 109 IPR 187 at [212].
Here, even if one accepts the Opponent’s etymology of the Trade Mark such that it is a word that means ‘to become earth’, it needs to be examined in the context of the Applicant’s Goods. The Applicant’s Goods are in become terms feminine hygiene products, sanitary products, and nappies. The expression ‘to make earth’ does not have any direct reference to the character or quality of the goods.
19. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (Cantarella),[10] the High Court emphasised the “requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business.”[11]
[10] [2014] HCA 48 at [70] – [71].
[11] Cantarella at [44].
20. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks,[12] the Full Court observed that the ultimate question under s 41 requires “a practical evaluative judgement about the effects of the relevant mark in the real world”.
[12] (2002) 122 FCR 944 at [47] per French J.
21. In my opinion, the Trade Mark is inherently adapted to distinguish the Applicant’s Goods. There is no evidence before me that it is a term that other traders might legitimately need to use in respect of their similar goods or services. Indeed, the results of searches exhibited in Sanders for products described as ‘environmentally friendly’ are shown to be such as ‘natural and organic’, ‘eco-friendly’, ‘environmentally friendly’, and ‘biodegradable.’[13]
[13] Sanders, Exhibits RS-4, RS-5 and RS-6.
22. Therefore, the Opponent has not established the ground of opposition under the provisions of s 41.
Decision
Section 55(1) of the Act applicable to this matter provides:
Unless the proceedings are discontinued or dismissed, the Registrar
must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then
specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
I have found the opposition to be unsuccessful on the ground raised pursuant to s 41 of the Act. I accordingly accept trade mark application number 1990619.
Costs
The Applicant has sought an award for costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Applicant is the successful party, I award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations.
Jock McDonagh
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
22 March 2021
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