Opposition by Olaf Kretzschmar to registration of trade mark application number 2018105 (class 45) - IP SERVICE INTERNATIONAL (Figurative) - in the name of IP Service International Pty Ltd
[2021] ATMO 71
•27 July 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSReTrade mark application number 2104364 (class 35) – CURVACEOUS FOR WOMEN WITH CURVES - in the name of SJT Enterprises Pty Ltd.
Delegate: Nicole Worth
Representation: Dr Anthony Place, Patentable Patent and Trade Mark Attorneys
Decision: 2021 ATMO 65
Trade Marks Act 1995 (Cth) – s 33 proceedings – ground for rejection under s 41(4) considered – use of trade mark in combination with inherent distinctiveness sufficient to qualify for acceptance of application.
Background
SJT Enterprises Pty Ltd (‘Applicant’) filed an application to register the trade mark detailed below.
Trade Mark: CURVACEOUS FOR WOMEN WITH CURVES
(‘Trade Mark’)
Application No.: 2104364
Filing Date: 22 July 2020
Services:Class 35: Online retail services; Retail services; Retailing of goods (by any means); Distribution of goods (not being transport services) and wholesale of goods; Discount services (retail, wholesale, or sales promotion services); Advertising; Advertising services provided over the internet; Sales promotion (for others).
The application was examined as required by s 31 of the Trade Marks Act 1995.[1] The examiner raised a ground for rejection under s 41(3) on the following basis:
Your trade mark is the words CURVACEOUS FOR WOMEN WITH CURVES.
A curvaceous woman has a body with attractive curves. CURVACEOUS is descriptive of clothing designed to be worn by curvaceous women. The words FOR WOMEN WITH CURVES serve to define the word CURVACEOUS and describes further the clothing goods and the retail of these goods. As a trade mark needs to be something that other traders do not use in the normal course of their trade, everyday language and vocabulary should remain available for all traders to use. Your trade mark is descriptive with regard to the services you have claimed and it is unable, by itself, to distinguish your services from those of other traders in the same industries.
Other traders are likely to need to use it in relation to their goods and/or services in the normal course of trade.
[1] Any reference to parts, sections or regulations in this decision are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise indicated.
Over several stages of correspondence the Applicant filed submissions that the Trade Mark was inherently distinctive or, in the alternative, that it should rightly be considered under s 41(4). The Applicant also filed evidence of use of the Trade Mark.
The examiner was not persuaded and maintained the ground for rejection, the result being that the Applicant then requested a hearing. The matter came before me, a delegate of the Registrar of Trade Marks, to decide per s 33. The hearing was held via video conference on 6 April 2021. Dr Anthony Place of Patentable Patent and Trade Mark attorneys appeared for the Applicant, and prepared written submissions and filed further evidence for my consideration.
I mention that the purpose of the decision here is not to review the examiner’s decision, but to consider the ground for rejection afresh.
Evidence
The evidence filed in this matter comprises four declarations by Mr Shane Tippet, founder and director of the Applicant, as follows:
· Declaration dated 7 August 2020 with exhibits ST-01 to ST-09 (‘Tippet 1’).
· Declaration dated 15 March 2021 with exhibits ST-10 to ST-11 (‘Tippet 2’).
· Declaration dated 15 March 2021 with exhibits ST-12 TO ST-14 (‘Tippet 3’).
· Declaration dated 25 March 2021 with exhibit 15 (‘Tippet 4’).
All but the first declaration are headed ‘CONFIDENTIAL DECLARATION’, although there is no specific claim of confidentiality within them. Moreover several exhibits across Tippet 2, 3 and 4 are comprised of publicly available material, such as Google® searches and Facebook® posts. That being the case I will adopt the approach of the delegate in Source Home Loans,[2] namely that in setting out my reasons for this decision I will discuss the declarations, noting that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail.
[2] [2008] ATMO 17, [4]-[6].
In summary the evidence establishes that the Applicant is a clothing retailer and it has been using the words CURVACEOUS FOR WOMEN WITH CURVES with varying degrees of stylisation and/or a device since 2007. The use of the Trade Mark is discussed in more detail under the heading ‘Use of the Trade Mark’.
The evidence also shows that the Applicant has achieved registration in Australia of its composite trade marks CURVACEOUS and CURVACEOUS FOR WOMEN WITH CURVES in respect of the designated services, shown below. The Applicant has also achieved registration of the trade marks CURVACEOUS and CURVACEOUS FOR WOMEN WITH CURVES, in plain text and in respect of the designated services, in New Zealand. No distinctiveness objection was raised there.
The Law
Section 41
Section 41 relevantly provides:[3]
[3] Notes have been omitted.
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.
A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, I may only reject the application if satisfied that the combined effect of its inherent adaptation to distinguish (if any), any past or intended use of it, and/or any other circumstances, has not or will not render the Trade Mark distinctive or capable of distinguishing.
Inherent Adaptation
The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the Applicant’s designated services from those of other traders. If I am satisfied that the Trade Mark has sufficient inherent adaptation to distinguish the designated services, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the services, I must determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected if I am satisfied that that it did not in fact distinguish the services based on the extent of its use at the filing date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected if I am satisfied that having regard to the combined effect of the level of inherent adaptation of the Trade Mark, use of the Trade Mark at the filing date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or will not distinguish the Services (s 41(4)).
Inherent adaptation to distinguish goods or services is to be tested:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, 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 they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[4]
[4] Clark Equipment Company v Registrar of Trade Marks (Clark Equipment) [1964] HCA 55, [5].
The High Court has described the consideration as a two step process: the first being the determination of the ‘ordinary signification’ of the sign in Australia to those who would purchase, consume or trade in the goods; and then having determined the ordinary signification, considering the likelihood of the sign being desired for use by other traders. [5] I bear in mind also that the assessment must regard the Trade Mark as a whole, not dissected into its constituent parts.[6] Nonetheless, in order to determine whether it has an ordinary signification as a whole it will be necessary to look to the meaning of the words from which it is comprised.
[5] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, [2014] HCA 48, [71].
[6] See, for example, Diamond T Motor Car Company [1921] 2 Ch 583.
As pointed out by the Applicant, the Macquarie Dictionary defines ‘curvaceous’ as:
adjective. (of a woman) having a full or shapely figure.
This is its primary signification, being a description of a woman’s figure. Nonetheless, descriptions of figure and body type are commonly understood and used in respect of clothing and the sale of clothing, including ‘petite’, ‘tall’, ‘curvy’, ‘plus size’ and ‘full figured’. The fact that they describe a figure or body type does not detract from their ordinary signification in the context of clothing – in such a context they are commonly understood to refer to lines of clothing that cater to those body types. Those meanings apply equally to services relating to the sale of such goods; they merely describe a characteristic of the goods being sold. The question is whether ‘curvaceous’ is likewise likely to have such meaning in the context of the designated services.
Whilst the ordinary signification of a word informs whether other traders are likely to wish to use it, it is also the case that traders tend to use words based on their perceived understanding by the target audience, and thus use by other traders may inform what ordinary signification exists. So much was noted by the delegate in Unilever Plc v Beiersdorf AG:[7]
I accept that whether words are inherently adapted to distinguish particular goods is something that is intrinsic to the words themselves. That is to say, if words are not so inherently adapted then no amount of use can alter this fact. However this does not mean that evidence of the manner in which those words are actually used by relevant traders cannot inform the questions of their ordinary signification to persons concerned with the goods and thus whether the words are inherently adapted to distinguish those goods in the first place. Indeed this is precisely what was said in cases such as Barrier Cream at 555,[8] Yellow at [119]-[127][9] and Cantarella at [56].[10] As the Full Federal Court (Besanko, Jagot and Edelman JJ) put it in their joint judgment in Yellow at [126]…:
If a word mark is taken as an example, the ordinary signification of the mark, and the question of “whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods” (Registrar of Trade Marks v Du Cros [(1913) 30 RPC 660] at 635 per Lord Parker) (or to note alternative formulations: such traders actuated only by proper motives “will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it” (Clark Equipment v Registrar of Trade Marks at 514 per Kitto J), or “a trader might without any improper motive, want to use to describe his goods” (Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 (“Burger King”) at 425 per Gibbs J (as his Honour then was), or “other traders might legitimately need to use the word in respect of their goods” (Cantarella at 20-21 [71])) are closely related questions. Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required. Burger King appears to be such a case (see Gibbs J at 425). In other cases, evidence might be called on the issue of the ordinary signification of the word mark as happened in [Barrier Cream]. Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at 543-544 [102] per Kenny J), but would be considered in light of all of the evidence in the case. It is important to note the possible dual significance of such evidence. Evidence of other traders using the word yellow or the colour yellow in connection with their print and online directories could be evidence of the ordinary signification of the YELLOW mark and of the fact that other traders might want to use the word to describe their goods or services.
[My emphasis, different to that made by the delegate].
[7] [2017] ATMO 25, [51].
[8] FH Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited [1965] HCA 72;2(1965) 112 CLR 537; (‘Barrier Cream’).
[9] Telstra Corporation Ltd and Another v Phone Directories Company Australia Pty Ltd and Others [2015] FCAFC 156; (‘Yellow’).
[10] Above, note 6.
I note that the Applicant itself uses ‘curvaceous’ in respect of the sale of larger sized clothing for women, and describes the goods it sells as ‘clothing that accentuates and celebrates the beauty of women with curves!’.[11] This would tend to support the premise that, despite ‘curvaceous’ being defined as a description of a woman’s figure, it has an ordinary signification also as clothing designed to fit a curvaceous figure. To further illustrate that the ordinary signification of ‘curvaceous’ is not confined to its dictionary definition, I look to the examiner’s research. It shows a number of instances of the word ‘curvaceous’ used in relation to larger sized clothing, as seen below.
[11] Tippet 1, exhibit ST-02, p 21.
The Applicant makes certain arguments about what the web pages show, which I will address shortly. Before doing so, I mention that the examiner appears not to have provided the Applicant with the images she saved of the web pages forming her research (from which I have taken the above images). Rather the examiner included a number of links to some of them in her second report. The Applicant has likewise included only links to the pages it visited (in Tippet 3 at [15] – [17]). It is generally desirable that the actual content of web pages is adduced (either by the Registrar or an applicant) as proof of a position. The content of web pages changes over time, and a party cannot be certain that what it has viewed is the same as what was viewed by the other party when it provided the links to the web pages. Nonetheless, here I do not consider the Applicant to be disadvantaged by this omission. The links themselves[12] support the premise that ‘curvaceous’ is a word used to identify a category of clothing: they identify the brand (or online store) as the main web page and then, after a slash symbol, a subsequent web page, which most consumers familiar with online clothes shopping would immediately understand to be a category of clothing (where the word is descriptive of a category).
[12] With the exception of that related to ‘Peter Trends’, which has a ‘Diva Curves collection’ and describes it as ‘designed to serve the needs of every bride with a more curvaceous figure’.
The Applicant avers that the pages regarding ‘Tuscany Bridal’ (as seen in the first of the images in paragraph 18) do not relate to any offered goods, only images (which it suggests might be ‘placeholders’). It does appear that the web pages are incomplete: two of them are the same as that shown above, and one shows an image of bridesmaids rather than a bride. Nonetheless I consider it quite clear that the word ‘curvaceous’ in the phrase ‘curvaceous-plus-size’ refers to an unpopulated category of clothing. The Applicant also avers, in relation to links to ‘Sweet Angels Bridal’ and a related Facebook® page ‘The term Curvaceous appears to be used in relation to “Sizes 16 to 28W” not the dresses themselves.’ I cannot agree with this statement. As seen in the image in paragraph 18, the web page contains the prominent statement ‘Curvaceous – A collection crafted to compliment a brides [sic] curvy figure’ as well as a heading, ‘Curvaceous’, under which appears a range of dresses. Such use is clearly meant to indicate a category of clothing designed to fit a curvaceous figure. The ‘Peter Trends’ web page, referred to in the footnote below, does not use ‘curvaceous’ as a heading for its category of clothing (although it does use it in the description of the category of clothing).
Bearing in mind the use of ‘curvaceous’ by other traders, and the common practice of naming categories of clothing after types of figures or body shapes, I consider that the word ‘curvaceous’ describes a characteristic of the goods being sold, namely clothing designed to fit curvaceous women. This then informs whether the Trade Mark, in its entirety, has an ordinary signification.
The Trade Mark is CURVACEOUS FOR WOMEN WITH CURVES. The words FOR WOMEN WITH CURVES have an unambiguous meaning: namely that the Applicant’s services (and the goods which it sells) are ‘for women with curves’.
It is not unusual for traders to collocate a brand name with a tag line, as it appears the Applicant has (although I bear in mind that the Trade Mark, in plain text and without punctuation, is perhaps less clearly divided so). Here, I consider that the component parts of the Trade Mark have an ordinary signification. It is therefore plausible that the Trade Mark, despite being comprised of several words which are unpunctuated, is one that other traders would think of and desire to use. At the same time, there is no evidence that they do (although such evidence is not required), and I bear in mind that ‘curvaceous’ is not as common as ‘plus size’ or other descriptions of body type. For these reasons I consider that the Trade Marks falls for consideration under s 41(4).
The Registrar is not entitled to reject a trade mark under s 41(4) before taking into account the combined effect of its degree of inherent adaptation to distinguish, any use or intended use of it, and any other circumstances. I turn then to the evidence of use of the Trade Mark.
Use of the Trade Mark
The Applicant has been using the word ‘Curvaceous’ and has operated the website ‘ since 2007 in respect of the retail and wholesale of clothing. Use of a word as part of a website address can be use as a trade mark,[13] increasingly so as more of the population conducts its shopping online. Whilst the Trade Mark is not the word ‘curvaceous’ solus, acquired distinctiveness of that word will influence the distinctiveness of the Trade Mark as a whole given the other elements are likewise insufficiently distinct. I therefore bear in mind that ‘curvaceous’ has been used as part of the website address for more than 13 years (which does not, of itself, prove acquired distinctiveness but is a factor to take into account).
[13] Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281, [24]; citing also Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700, [50]; Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [153]; and Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291, [53].
As at 1 July 2020 the Applicant had a moderate, although still commercially significant, number of customers with an active online account, and a similarly moderate though commercially significant number of Facebook® followers. Up until 2020, revenue has remained relatively modest but has grown each year. Predicted revenue for the 20/21 financial year increased significantly.
I note that the Applicant has invested significant sums in advertising in the four financial years up to 2020, including across Google Adwords, Facebook, Mailchimp and radio advertising. It declares also to have incurred further costs on search engine optimisation, and the Australian results of a Google® search of the word ‘curvaceous’ reveal that the first eight results relate to the Applicant (only one of which is a paid advertisement).[14]
[14] Tippet 2, ST-10. I note also that the tenth result is a link to ‘curvaceousfashion.com | Curve and Plus Size Women’s Clothing’, what appears to be a British fashion retailer, reiterating that acquired distinctiveness is a necessary consideration for the Trade Mark.
Use of the words CURVACEOUS FOR WOMEN WITH CURVES is first shown on 17 February 2011 upon the website in the form:[15]
[15] According to extracts from the Wayback Machine, a tool to search the Internet Archive (being an archive of digital material including websites), in Tippet 1, Exhibit ST-02.
Further iterations of the words upon the website are shown, as follows: [16]
As at 18 January 2014
As at 24 February 2018
[16] Tippet 1, Exhibit ST-02.
The Applicant declares that the Trade Mark is used upon clothing tags, parcel mailers, business cards, letter head paper, invoices and street signage. Undated images of these show use of the words in the composite form shown above (being the image as at 24 February 2018).[17] No use of the Trade Mark, in plain text, is shown.
[17] Tippet 1, Exhibits ST-03 to ST-08.
In respect of market recognition the Applicant declares to have been approached by a number of major Australian clothing retail brands, and the Applicant exhibits an email sent shortly after the filing date by a prominent Australian clothing retailer seeking to sell the Applicant’s clothing through its own websites.[18]
[18] Tippet 2, ST-11.
The Applicant has also been the target of scams, wherein false Facebook posts or a false Facebook page have targeted the Applicant’s customers.[19] The Applicant declares these to be attempts to leverage off the Applicant’s reputation. As further evidence of its recognition, the Applicant demonstrates that a ‘buy and sell’ group was established in New Zealand on Facebook®, wherein the page stated ‘Hey Ladies, I thought I’d start a group to sell your Curvaceous and plus size clothing in’ and ‘This group is not just Curvaceous clothing you are able to sell any brand you like as long as its plus size’. A user subsequently stated ‘you shouldn’t use the curvaceous brand name if it’s not their clothes, that’s misleading and could undermine their reputation’.[20]
[19] Tippet 3, Exhibits ST-12 to ST-14.
[20] Tippet 4, Exhibit ST-15.
Weighing the evidence of use of the Trade Mark, and the degree of inherent distinctiveness it possesses, I am satisfied that it qualifies for registration. Use of the words CURVACEOUS FOR WOMEN WITH CURVES has been demonstrated for more than nine years, albeit not in plain text (although at times the stylisation of it has been quite minimal). At the same time, the leading word of the Trade Mark, being the word ‘curvaceous’, has been shown to have acquired a degree of distinctiveness which sufficiently imbues the Trade Mark. Growth in sales has occurred each year, and is projected to increase significantly. The avenues by which the Applicant has advertised indicates increasing exposure, and in particular organic internet search results predominantly relate to the Applicant.
Decision
Section 33 of the Act relevantly provides:
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
Note: For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note: For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
In weighing the evidence of use of the Trade Mark with the extent to which it is inherently adapted to distinguish the designated services, I am satisfied that the application may be accepted with an endorsement added to the Register to reflect that it was considered under s 41(4).
Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks
14 July 2021
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