Parkware Trading Pty Limited, Trading as Vault Lock Company, Re

[1991] ATMO 10

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade Mark Application 482007 in the Name of PARKWARE TRADING PTY LIMITED, trading as VAULT LOCK COMPANY

Trade mark application 482007 for the composite mark shown below was lodged on 2 February 1988 in the name of VAULT LOCK.  The applicant's name as amended is PARKWARE TRADING PTY LIMITED a company incorporated in New South Wales, of 1/41 Leyton Place, Asquith, NSW, trading as VAULT LOCK COMPANY.

The application was lodged in respect of goods in class 6, specified as "locks, catches, door hardware of various shapes, types and sizes".  In the first report on the application, the examiner of trade marks objected in terms of paragraphs (c), (d) and (e) of sub-section 24(1) of the Act that the mark consists of the word VAULT which is not an invented word and which, when used in relation to goods included in the specification, directly describes them as locks and door fittings to be used on vaults or strongrooms.  The other non-distinctive matter in the mark, the oval border, was not sufficient, in the examiner's opinion, to render the mark distinctive when viewed as a whole.

Responses from the applicant's attorneys requested amendment of the specification of goods which now reads:

Locks, including padlocks, door hardware including security chains therefor and lock cylinders.

The examiner maintained the objection based on the descriptive significance of the word VAULT, citing definitions given in the Macquarie and Websters Dictionaries to support his contention that VAULT is an apt description for locks, lock cylinders and other door hardware designed for use on the doors of vaults or strongrooms.
          In response, the attorney submitted that the mark cannot be said to be directly descriptive of the goods in respect of which registration is sought.  A vault, he contended, refers to a cavern or an enclosure, whereas the goods on which the mark is used are locking devices per se.  The attorney also submitted that, although each of the word and device elements may be said to be lacking distinctiveness, it is the combination of these features that is the matter at issue.  In this regard the examiner was referred to the Diamond T case (1921) 38 RPC 373.
          When the objection taken under sub-section 24(1) was maintained, the applicant waived its right to be heard and requested a decision on the written record.  I note the attorney's advice that the applicant would consent to an amendment of the application to one for Part B of the Register.  Should I find that the mark fails to qualify for registration in Part A, I shall, as provided by sub-section 44(2), consider whether the mark would be registrable in Part B.
          For a mark to be registrable in Part A of the Register, it must qualify either in terms of sub-section 24(1) of the Act or through the provisions of sub-sections 24(2) or 26(2) with evidence of use.  In this instance, no evidence of use has been offered and so I need consider only whether the mark is prima facie registrable.
          I note the attorney's submission that the mark is not directly descriptive of locks or other of the goods in respect of which registration of the mark is sought.  However, as was observed by Lloyd-Jacob J. in American Screw Company's Application [1959] RPC 344 at 346, "direct reference corresponds in effect to aptness for normal description". The examiner referred to two definitions given in the Webster's Third New International Dictionary which read as follows:

VAULT 2(c)(1): a room for the safekeeping of valuables and commonly built of steel;

(2):a special compartment usually in a piece of office equipment for the safekeeping of money.

These definitions indicate that the word VAULT is used for both the large scale secure storage provided by a strongroom and also for smaller security devices more in the nature of a strong box or safe.  All such items would be fitted with doors which incorporate or require a locking mechanism and other door hardware appropriate to the level of security.  For goods within this specification suitable for use as parts of or in association with devices or rooms designed to provide secure storage, I believe the term VAULT is most apt for normal description.  I am therefore in agreement with the examiner's opinion that the word VAULT is directly descriptive of these goods.
          I turn now to the attorney's submission that registrability must be determined with reference to the distinctiveness of the mark as a whole.  The term "distinctiveness" is defined in sub-sections 26(1) and 26(2) of the Act as follows:

(1)For the purposes of this Act, a trade mark is not distinctive of the goods or services of a person unless it is adapted to distinguish goods or services with which that person is or may be connected in the course of trade from goods or services in respect of which no such connexion subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions or limitations.

(2)In determining whether a trade mark is distinctive, regard may be had to the extent to which -

(a)the trade mark is inherently adapted so to distinguish; and

(b)by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish.

In the Diamond T case (supra) to which the attorney referred, a mark which was a composite of non-distinctive elements was found to be distinctive and thus registrable, subject to disclaimer of individual elements within the mark.  Lawrence J. found the mark to be adapted to distinguish the applicant's vehicles from those of other manufacturers, stating (at 381):

"As pointed out by Lord Parker in the W&G case [(1913) 30 RPC 660 at 671-2], in order to determine whether a mark is so adapted, it must be considered apart from the effects of registration. What has to be ascertained is whether the mark itself, if used

as a trade mark, is likely to become actually distinctive of the goods of the person so using it; this must largely depend upon whether other traders are likely, in the ordinary course of business and without any improper motive, to desire to use the mark, or one resembling it, upon or in connection with their own goods. ... In the present case I have come to the conclusion that the applicant's mark does satisfy the test laid down by Lord Parker."

In the subject mark, the only element in addition to the word VAULT, which I have found to be directly descriptive of goods specified, is an oval-shaped line border about the word.  There is no novelty of get-up in the mark and, applying the tests of Lord Parker to this mark, I do not believe it unlikely that other traders would, without improper motive, wish to use a mark closely resembling it in respect of their own goods.  In addition, I am mindful of the words of Romer L.J. in Clement & Cie's Trade Mark (1899) 16 RPC 611 at 618:

"... this judgement will in no way, I think, give rise to any idea that it would sanction the registration of words which in themslves would not constitute a proper trade mark, merely because some flourishes were colourably put round them to try to make out a distinctive label - a compound label - when, in fact, what was really sought to be registered and intended to be registered were the words alone."

In view of the foregoing reasons, I find that the applicant's mark does not qualify for registration in Part A.
          To qualify for registration in Part B, a mark must come within the provisions of sub-section 25(1):

A trade mark is registrable in Part B of the Register if it is distinctive, or is not distinctive but is capable of becoming distinctive, of goods or services in respect of which registration of the trade mark is sought and with which the applicant for registration is or may be connected in the course of trade.

As stated by Gibbs J. in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, in deciding whether a trade mark is capable of becoming distinctive it becomes necessary to consider whether the mark is capable of meeting at some time in the future the tests stated in sub-section 26(2). This requires two matters to be considered - inherent adaptability to distinguish and distinctiveness in fact acquired by use or otherwise - and the effect of this sub-section is that these two factors must both be weighed.
          In the absence of evidence of use, the consideration reverts to the inherent capacities of the trade mark.  Having found, as stated earlier, that the subject mark is not inherently adapted to distinguish goods encompassed by this application, I must decide that the mark fails to meet the tests for registrability in Part B.
          I find therefore that the applicant's trade mark does not fall within the provisions of sections 24 or 25 of the Act and accordingly I refuse application 482007.

(BARBARA J. BENNETT)
Senior Examiner
22 January 1991