Opposition by Maya Abhaya to extension of protection under Part 17A, Division 3, Subdivision C of the Trade Marks Regulations 1995 (Cth) of trade mark number 1933870 (International Registration number 1407342) -...

[2021] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Maya Abhaya to extension of protection under Part 17A, Division 3, Subdivision C of the Trade Marks Regulations 1995 (Cth) of trade mark number 1933870 (International Registration number 1407342) - (28) – SNAP CIRCUITS - in the name of Elenco Electronics, Inc.

Delegate:

Louise Tuohy

Representation:

Opponent: Self represented

Holder: AJ Park

Decision:

2021 ATMO 19

Trade Marks Regulations 1995 (Cth) – opposition to extension of protection to an international registration designating Australia – ground of opposition under section 41 – of the Trade Marks Act 1995 (Cth) considered – protection extended with an endorsement under section 41(4)

Background

1.   Elenco Electronics, Inc. (‘Holder’) has applied for extension of protection to Australia of International Registration 1407342 (‘IRDA’). Relevant details of the IRDA are set out below:

Trade Mark:  SNAP CIRCUITS

Australian Trade Mark Number:       1933870

Filing Date:   14 March 2018

Specification:  Class 28:  Electronic toy building kits comprising circuit boards, wires, transistors, diodes, capacitors, inductors, and/or resistors and power supplies, lights, sirens, electronic sound emitters (‘Holder’s Goods’)

2.   The IRDA was examined as required by regulation 17A.12 of the Trade Marks Regulations1995 (Cth) (‘Regulations’). As a result, the Registrar of Trade Marks advertised acceptance of the IRDA for potential extension of protection to Australia in the Australian Official Journal of Trade Marks on 8 July 2019.

3. Maya Abhaya (‘Opponent’) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA on 19 August 2019. On 5 September 2019, the Opponent filed a Statement of Grounds and Particulars (‘SGP’) as is required by reg 17A.34B of the Regulations. On 10 December 2019 the Holder filed a Notice of Intention to Defend the IRDA.

4. The Holder filed evidence in accordance with the reg. 17A.34J(4) of the Regulations. No evidence or submissions were filed by the Opponent.

5.   As neither party requested a hearing, this matter was allocated to me for a decision on the written record.

Grounds of Opposition, Onus and Relevant Date

6. In the SGP the Opponent nominated the ground of opposition under s 41 of the Trade Marks Act 1995 (Cth) (‘Act’).

7.   The Opponent bears the onus of establishing the ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

8.   The date at which the rights of the parties are to be determined is 14 March 2018 (‘the Relevant Date’) being both the filing and priority date of the IRDA.

The Holder’s Evidence in Answer

9.   The Holder’s evidence consists of a declaration of Linda Cecchin Kramer, Vice President of Marketing, Legal and Intellectual Property at Elenco Electronics, Inc., made on 17 September 2020, with Exhibits-1 to 8 (‘Cecchin Kramer’).

10.  The Cecchin Kramer declaration provides the following facts and statements:

·The Holder is an educational toy, hobby, and electronic instruments company based in the Chicago, Illinois.

·In 2002, the Holder developed the IRDA and product range. In 2006, the Holder’s Goods bearing the IRDA were introduced to the Australian market.

·The Holder’s Goods bearing the IRDA are sold worldwide, with over 50 different models of kits for ages 8+.

·Confidential Australian sales revenue figures for the years 2013 to 2018 for the Holder’s Goods bearing the IRDA.

·The Holder has also provided confidential global marketing and promotional expenditure for the Holder’s Goods bearing the IRDA. In addition, the Holder participates in online brand protection to remove infringing use of its IRDA from digital platforms internationally.    

11.  Exhibit-3 provides a list of the Awards the Holder’s Goods bearing the IRDA have received including: Awarded the STEM[3] APPROVED trustmark by Stem.org, 2018; Toy Industry Association’s Toy of the Year, 2008; KAPi Award for Children’s Technology, 2019 and 2020; Oppenheim Toy Portfolio Gold Seal Award, 2018; Seriously STEM! Award, 2018 and 2019; National Parenting Product Award, 2018; Winner of a Parents’ Choice Recommended Award, 2017; Good Housekeeping’s Best Toy Awards, 2016; ASTRA BEST Toys For Kids Award Winner in 2010, 2012, 2013, 2014, 2015, 2016, 2017 and 2018; Purdue University Engineering Gift Guide, 2018 and 2019; NETS Gold Star Award in 2015, 2016 and 2017; Toy Insider Magazine Hot Holiday Toys in 2017 and 2018; Today’s Parent Holiday Toy Guide, 2016; Learning Express Best Toys Award, 2012; and Wiki Review’s Best Science Toys, 2016.

[3] All references to STEM are a reference to an approach to learning and development that integrates the areas of SCIENCE, TECHNOLOGY, ENGINEERING and MATHEMATICS.

12.  Exhibit-3 also provides examples of product reviews for the Holder’s Goods bearing the IRDA extracted from the following publications: Forbes.com; New York Times; Smithsonian Magazine; Today’s Parent; Business Insider; PC Mag; How Stuff Works; Chicago Voyager; Bloomber.com; The Maker Mom; Ultimate Kids Tech; The Curriculum Choice; Tinkerlab; Imagiplay; TechAge Kids; Chicago Tribune; PR News Wire; and The Wall Street Journal.

13.  Exhibit-3 also includes recognition of the Holder’s Goods bearing the IRDA in the following ‘Top 10 Lists’ rankings: Washington Post, Top STEM Toys 2018; BRIC, Top Toys for Creative Kids 2018; Engadget.com, STEM kits that will get your kid’s hands dirty; The School Run, Best Electronic Sets for Children; Business Insider, Best STEM Toys for Kids; The Toy Insider, Holiday List 2018; PC Mag, Hot Holiday List; Global TC Tech Talk, STEM Gift Ideas for Kids; and Society of Women Engineers, Holiday List 2018.

14.  Exhibit-3 also provides examples of online news videos which feature the Holder’s Goods bearing the IRDA. The news outlets include: NBC Tech Trends; ABC7 Chicago; Good Morning Texas; Kgun9; Twin Cities Live; Afternoon Live on KATU (ABC-Portland); Global News Canada; WFLA Tampa; KMVT Idaho; Twitter and YouTube.

15.  Exhibit-4 contains images of the IRDA taken from: the Holder’s Point-of-Sale Catalogue; screenshots from the Holder’s website elenco.com; and screenshots of the Holder’s social media front pages dedicated to the Holder’s Goods in Facebook, Instagram, Twitter, and YouTube. Below is an example of the IRDA as it appears on the packaging of the Holder’s Goods: 

16.  Exhibit-5 is a list of Australian retailers and customers that retail the Holder’s Goods bearing the IRDA. The retailers and customers listed include: Haines Educational Pty Ltd; Modern Teaching Aids; Education Matters Pty Ltd; Mad About Science; Museum Victoria; Robot Gear; Learning Technologies Pty Ltd; Willow & Finch Factory 13; Blackburn High School; Mektronis Australia Pty Ltd; Mathew Barratt Electrical Pty Ltd; Core Electronics; Milspec Services Pty Ltd; Chintan Vora; Scorpio Technology Vic.Pty.Ltd; C-Cor Broadband Aust Pty Ltd; and iWorld Australia.

17.  Exhibit-6 contains copies of invoices issued by the Holder to Mad About Science, listing the purchase of the Holder’s Goods bearing the IRDA, dated 13 April 2013 and 11 December 2018.

18.  Exhibit-7 is a series of screenshots from the websites of Australian online retail stores which show the pages advertising the sale of the Holder’s Goods bearing the IRDA. The online retailers include: Core Electronics; Harvey Norman; i World online; Temple and Webster; Dick Smith; Robot Gear; Little Bird; Mad About Science; and Amazon Australia.

Discussion

Section 41

19. 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.

(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.

(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.

1. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Federal Court summarised the governing 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 services 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…

   (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].[4]

   [4] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [236].

   21. In the SGP the Opponent particularised the s 41 ground of opposition as follows:

   The word ‘Snap’ and ‘Circuit’ are commonly used words. Putting both words together as ‘Snap Circuits’ is an adjective and a noun combination that describes a type of circuits that could be snapped together.

   The phrase ‘Snap Circuits’ is currently used by other sellers in describing and selling such products.

   It would be very sad if an American company is allowed to trademark commonly used words in Australia. eg: circuit

   22.  In the Cecchin Kramer declaration the Holder submits that the IRDA is distinctive and capable of distinguishing the Holder’s Goods. Furthermore, the Holder states the Opponent’s claim that other traders are using the IRDA to describe their own similar goods is incorrect and no evidence has been provided to substantiate this claim.

   23.  I agree with the Holder that there is no evidence of other traders using the IRDA to describe similar goods. The link provided by the Opponent in the SGP to the Target website ( is unhelpful in this regard since the information reproduced there will necessarily be from after the Relevant Date.

   24.  Nevertheless, while evidence demonstrating that other traders are using the IRDA or something nearly resembling it, for its ordinary signification can be instructive, the absence of it is not determinative. I refer to the observations of Murphy J in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited:

   [I]t is not necessary for an opponent to registration to establish that the trade mark is required by other traders. It is enough if innocent traders want to use it. For example in Clark Equipment at 513 to 514 Kitto J spoke to the “desire” of other traders to use the same mark, and said that traders may “think of the word and want to use it”. In Burger King at 425 Gibbs J took the reference to “likelihood” by Kitto J as a reference to whether another trader “might”, without improper motive, want to use the mark.[5]

   [5] Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373, [200].

   25.  The Macquarie Dictionary defines the word SNAP (adjective): denoting devices closing by pressure on a spring catch, or articles using such devices. The word CIRCUIT (noun) is defined as: a combination of electrical components connected together to perform a required function.[6]

   [6] The Macquarie Dictionary online < as at 8 March 2021.

   26.  I also note that in different markets there is use of the word SNAP to describe the assembly method used to attach parts to form a final product. SNAP products have in common a protruding part of one component that catches a mating component. SNAP products include: Snap Fittings; Snap Locks and Snap Fasteners.

   27.  The Cecchin Kramer declaration provides a description of the Holder’s Goods as kits that contain a plastic baseboard into which various components and wires can be attached to easily create a working circuit. Exhibit-4 in the Cecchin Kramer declaration provides instructions on how easily these various components snap together:

   28.  A consumer when looking at the IRDA as a whole, when applied to the Holder’s Goods, is likely to read SNAP CIRCUITS as describing a characteristic of the Holder’s Goods being the assembly method used to attach the parts to build a working circuit.  

   29. I find that the IRDA is to some extent, but not sufficiently, inherently adapted to distinguish the Holder’s Goods and as such falls within the category set out under s 41(4) of the Act.

   30.  I now must determine whether any evidence of acquired distinctiveness provided in the Cecchin Kramer declaration assists the Holder pursuant to that provision.

   31.  According to Cecchin Kramer the Holder has been using the IRDA in relation to the Holder’s Goods in the Australian market since 2006. The evidence shows the Holder’s Goods bearing the IRDA are available for purchase from leading retailers throughout Australia, particularly in educational and electronics stores.

   32.  In my assessment the sales revenue for the Holder’s Goods bearing the IRDA for the years 2013 to 2018 is reasonable.

   33.  In Australia, the Holder extensively promotes its IRDA through third party retailers, product catalogues, its international website and social media including Facebook, Instagram, Twitter, and YouTube.

   34.  In addition, the Holder’s Goods bearing the IRDA are sold worldwide, and there is ample evidence of the IRDA being promoted in the United States of America through its website, news outlets, Point of Sale catalogues and social media accounts including Facebook, Instagram, Twitter, and YouTube.   

   35.  In the United States of America the Holder’s Goods bearing the IRDA have won various Awards and received recognition in Best Toy and Holiday Toy lists annually. The Holder’s Goods bearing the IRDA have also been reviewed in educational, scientific and news publications.  

   36.  I am satisfied that as a result of this use of the IRDA by the Holder in respect of the Holder’s Goods in Australia and in a market similar to Australia, the IRDA does in fact distinguish the Holder’s Goods from similar goods of other traders.

   37. Therefore, I find that protection should be extended to the IRDA subject to an endorsement that the provisions of s 41(4) were applied.

   Decision

   38.  Regulation 17A.34N(1) of the Regulationsprovides the following:

   17A.34N Decision on opposition

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   39. The Opponent has not established the ground of opposition nominated in the SGP. As set out above, I am satisfied that the IRDA should receive extension of protection to Australia not less than one month from the date of this decision, subject to an endorsement that the provisions of s 41(4) of the Act were applied.

   40.  If the Registrar has been served with a notice of appeal before this time, I direct that extension of protection shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the IRDA should be in accordance with the Court’s order or direction.

   Costs

   41. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award cost against the Opponent in terms of sch 8 of the Regulations.

   Louise Tuohy

   Hearing Officer

   Oppositions and Hearings

   Trae Marks and Designs

   11 March 2021