Peter Harburg v Paramount Pictures Corporation

[2006] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by Peter Harburg to registration of trade mark application 868063(9,21,25,42) - CHEERS logo - filed in the name of Paramount Pictures Corporation.

Delegate:

Deirdre O'Brien

Representation:

Opponent

Trevor Dredge of Intellpro, patent and trade mark attorneys

Applicant

Steven Burley of counsel instructed by Spruson & Ferguson, patent and trade mark attorneys

Decision:

Section 52 opposition

Ground under s58 made out; grounds under ss 41 and 59 not made out. Registration refused. Costs awarded against applicant.

Background

1. Trade mark application 868063 was filed on 5 March 2001 by Paramount Pictures Corporation (‘the applicant’) in respect of the following goods and services:

Class 9:	Pre-recorded video cassette tapes featuring entertainment television services episodes
Class 21:	Beverageware, namely, drinking glasses, mugs, coffee cups and shot glasses
Class 25:	Hats, jackets and pyjamas
Class 42:	Restaurant and bar services

The trade mark, the subject of this application (‘the present trade mark’), is depicted below:

1. The application was examined and accepted for possible registration whereupon registration was opposed by Peter Harburg (‘the opponent’).

2. Both parties filed and served evidence as provided in the Trade Marks Regulations 1995.  In addition, at the applicant’s request the Registrar issued a notice to produce documents[1] which was served on the opponent.  The opponent produced some of the documents described in the notice and provided what prima facie was a reasonable excuse in terms of section 153(2A) for its non-compliance with respect to each of the remaining documents.  In particular it claimed legal professional privilege with respect to the requirement to produce documents described in the notice as follows:

   Documents recording, evidencing or referring to the professional advice provided to Peter Victor Harburg by Intellpro Patent and Trade Mark Attorney on or prior to 16 March 2001 as referred to in paragraphs 13 and 14 of the Harburg Declaration.

   [1] pursuant to section 202(c) of the Trade Marks Act 1995

3. In response the applicant said the opponent had waived legal professional privilege by disclosing the substance of that advice in its evidence.  As the Registrar’s delegate I informed both parties that pursuant to Bennett v Chief Executive Officer of the Australian Customs Service[2] I considered there was a case for privilege having been waived but that a final decision would be made at the hearing of the opposition. 

   [2] [2004] FCAFC 237 at paragraph 65 where Gyles J says:

   The voluntary disclosure of the gist or conclusion of the legal advice amounts to waiver in respect of the whole of the advice to which reference is made including the reasons for the conclusion.

4. The hearing was held by me in Sydney on 18 October 2005. Mr Steven Burley of counsel, instructed by Spruson & Ferguson, Patent and Trade Mark Attorneys, appeared in person for the applicant. Mr Trevor Dredge of Intellpro, Patent and Trade Mark Attorneys, appeared by telephone for the opponent. The grounds of opposition pressed by the opponent at the hearing were those pursuant to sections 41, 58 and 59 of the Trade Marks Act 1995. 

Documents produced at hearing

1. After considering further submissions by the opponent and the applicant I informed both parties I was satisfied privilege had been waived with respect to the aforementioned professional advice.  The opponent had already provided me with two documents being facsimile copies of its letter dated 16 March 2001 (with one attachment) and of its agent’s letter dated 21 March 2001 (with two attachments).  I gave a copy of those documents to the applicant at the hearing.  In order to give the applicant a reasonable opportunity to comment on the documents, I consented to it filing written submissions after the hearing.

Evidence

1. The parties filed and served evidence as indicated in the table below:

DECLARANT	MADE	EXHIBITS	NAME
Evidence in support
Peter Harburg	15.07.2003	PVH1 to 31	Harburg 1
Peter Harburg	14.04.2004	PVH32 to 33	Harburg 2
Mark O’Hare	03.06.2003
Mark O’Hare	15.04.2004
Gianfranco Kert	08.03.2004	GK1 to 10	Kert
Bernard McGowan	undated	McGowan
James Forbes	12.03.2004
Greg Scott	17.03.2004
Angela Dahlke	30.03.2004	AVD1 to 19
Angela Dahlke	13.04.2004	AVD20
Angela Dahlke	13.04.2004	AVD21
Evidence in answer
Kevin Springall	12.05.2004	KCS-1
Mark Garner	24.05.2004	MMG-1 to 2
Jose Arrufat-Garcia	20.05.2004	JMAG-1 to 2
Ruth Wong	25.07.2004	RW1	Wong
Olivia Mak	25.06.2004	OOM-1 to 6	Mak
Ashley Keen	07.07.2004	ACK-1 to 5	Keen
Stan Novack	07.07.2004	SN-1 to 2	Novack
Michelena Hallie	07.07.2004	MH1 to 6
Michael Goldman	08.07.2004	A* and MG1 to 10	Goldman
Veronique Maury	15.07.2004	VHM-1
*Rebecca Borden	29.04.2004	RAB-1 to 19	Borden 1
*Rebecca Borden	04.06.2004	RAB-20	Borden 2
*Rebecca Borden	06.08.2004	RAB-21	Borden 3
Rebecca Borden	12.10.2004	RAB-22 to 25	Borden 4
*these declarations form exhibits RAB-22 to 24 to Borden 4	*this is a copy of Borden  1 without the exhibits
Evidence in reply
Trevor Dredge	13.05.2005	TJD1 to 7
Peter Harburg	17.05.2005	Harburg 3

1. Both parties have accepted the onus is on the opponent to make out the ground of opposition relied upon[3].  Unless I am satisfied the opponent has made out a prima facie case for refusing registration based on one of the nominated grounds, I do not need to refer to the applicant’s evidence, nor to its submissions.

   [3] as recently confirmed in Kowa Co v NV Organon (2005) 66 IPR 131 at 153

Section 58 ground

1. This ground provides that:

   58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. Trade mark ownership has frequently been the subject of judicial consideration.  An application to register a trade mark can only be made by a party claiming to be its owner[4].  That claim to ownership may be defeated if the trade mark has already been used by another party in relation to the ‘same kind of thing’[5].  In Carnival Cruise Lines Inc v Sitmar Cruises Ltd[6] Gummow J confirmed that the first use must be in relation to an identical or substantially identical trade mark. 

   [4] subsection 27(1)(a)

   [5] Re Hicks Trade Mark (1897) 22 VLR 636

   [6] (1994) 31 IPR 375 at 391

3. The opponent submits it has used the following trade mark[7] since 1997 which, it says, is a substantially identical trade mark to the present trade mark. 

[7] In its submissions the opponent relies on the applicant’s claim (in paragraph 11 of Borden 4) that this trade mark appeared in photographs taken by the applicant at one of the opponent’s taverns in January 2001. 

1. The opponent says its use of the substantially identical trade mark pre-dates the filing date of the present application and that it was use in relation to the same kind of services as the applicant’s class 42 bar and restaurant services.  For these reasons the opponent says it, not the applicant, is the owner of the present trade mark and this ground of opposition must succeed. 

2. However there is nothing in the opponent’s evidence in support to show it has used the trade mark depicted above.  The applicant’s evidence in answer[8] contains photographs of what is arguably a substantially identical trade mark being used on the portico to the opponent’s Sunnybank tavern[9] and on a glass window inside the tavern.  That trade mark is as follows:

[8] KCS-1

[9] At the filing date the opponent was operating three Cheers Taverns within the greater Brisbane area.  The Sunnybank tavern was the first of these to open. The other taverns are at Aspley (opened in 1998) and at Spring Hill (opened in 1999).

1. In its evidence in reply the opponent distances itself from that use.  It says ‘I never intended to use it, and I never did in any of the other taverns’[10].  It says the trade mark was not displayed on signs at the Sunnybank tavern on its instructions but that the signs were commissioned and paid for by the brewer of XXXX beer[11].  The opponent says it was too expensive for it to have the signs removed and it did not want to upset relations with the brewer[12].  However following a complaint by the applicant it had the signs removed[13].  The removal of the signs is confirmed by photographs in Exhibit MMG-2 which were taken in November 2003. 

   [10] Paragraph 7 of Harburg 3

   [11] Paragraph 9 of Harburg 3

   [12] KCS-1 shows the XXXX trade marks were displayed on the same sign, at the bottom left and right hand corners.

   [13] Paragraph 9 of Harburg 3

2. So what exactly is the trade mark the opponent intended to use and did use in relation to its tavern services?  The opponent’s evidence shows that in 1995 it decided to commence a tavern business ‘by reference to CHEERS TAVERN’.[14]  In April 1995 it registered the business name CHEERS TAVERN in Queensland[15].  It applied for a liquor licence which was issued on 10 October 1997 and it commenced trading shortly afterwards at the Cheers Tavern in Sunnybank[16].

   [14] Paragraph 5 of Harburg 1

   [15] PVH-1

   [16] Paragraph 3 of Harburg 1

3. In 1998 the opponent said it became concerned that it needed to protect its trade mark and in May that year it commissioned a search by IP Australia of the trade marks database for any trade marks which would conflict with registration of the business or company name CHEERS TAVERN in relation to ‘hotel and tavern’[17].  That search did not find any conflicting trade marks[18] whereupon the opponent, through its lawyer[19], applied to register the following trade mark series:

[17] The opponent says in paragraph 10 of Harburg 1 that:

A request was made to IP Australia to conduct a search of the Trade Marks Register for the trade mark in relation to “hotel[s] and tavern[s]” before a corresponding trade mark application was filed.

The opponent may have believed that is what it was requesting but in 1998 IP Australia conducted no such searches for prospective trade mark applicants.  IP Australia did conduct searches of the register for trade marks which may conflict with a proposed business or company name.  The letter dated 20 May 1998 from IP Australia reporting the result of such a search is in evidence at PVH-2.

[18] PVH-2

[19] Paragraph 9 of McGowan

1. Its application was examined in October 1998 and the examiner informed the opponent that the trade marks did not constitute a series.  Moreover the examiner raised grounds for rejection under section 44 based on five conflicting trade mark registrations[20].  Three of those registrations were owned by the applicant including registration 580371 in respect of restaurant and bar services for the following trade mark:

[20] PVH-4

1. The opponent took no further action with respect to its trade mark application and the application lapsed in due course.  With the lapsing of the application, the claim by the opponent to be the owner of the trade mark series also lapsed.[21]

   [21] Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601 at 619

2. On 15 March 2001, according to the opponent’s letter which was produced at the hearing, the opponent gave its present agent instructions to ‘take whatever action necessary to register our trading name’.  In that letter the opponent says the following is its ‘logo’.

1. Accordingly, on 16 March 2001 the agent filed an application on behalf of the opponent to register the following trade mark series in respect of various food and beverage services in class 42: 

1. That application was given the number 869436.  The trade mark examiner found the trade marks did not constitute a series and the application was subsequently limited to the following trade mark which, as already noted, the opponent had said was its logo:

1. Thus the opponent’s evidence establishes that in 1995 its intention was to use CHEERS TAVERN as a trading name, that its first tavern was named Cheers Tavern[22], and that by virtue of trade mark application 869436 it claims to be the owner of the trade mark depicted at paragraphs 19 and 21 of these reasons and which I will refer to as the CHEERS TAVERNS trade mark. 

   [22] as were the taverns it subsequently opened in Aspley and Spring Hill

2. In evidence are photocopies of photographs taken at the opponent’s tavern in Spring Hill.  They form Exhibit PVH-7 to Harburg 1 which was sworn on 15 July 2003.  The photocopies are of poor quality and are undated, however they do show the CHEERS TAVERNS trade mark displayed on external and internal signage at the tavern and on staff uniforms.  Other exhibits to the same declaration show the CHEERS TAVERNS trade mark being used on business cards[23], letterhead[24], on menus and other point of sale material[25].  Evidence of use of the CHEERS TAVERNS trade mark prior to the filing date is provided by photographs taken at all three of the opponent’s taverns in January 2001 and which form part of the applicant’s evidence in answer[26].

   [23] PVH-8

   [24] PVH-9

   [25] PVH-10 to 14

   [26] KCS-1

3. The opponent’s evidence also shows that in 2000 it commissioned the updating of its trade mark.  Paragraph 3 of the Kert declaration reads:

   …On 13 March 2000 I was engaged by Peter Harburg to restyle the CHEERS (or CHEERS TAVERN) logo (hereinafter referred to as “the old CHEERS logo(s)”) which I was informed had appeared on signage which Peter Harburg had commissioned a signwriter to create.  For this purpose I received from the signwriter an email including representations of the old CHEERS logos.  The attached Exhibit marked GK1 comprises a copy of the old CHEERS logos that I was instructed to restyle.

4. Exhibit GK1 consists of the following two coloured representations of the expression CHEERS TAVERN, the top representation being red lettering on a yellow background and the bottom being yellow lettering on a red background:

1. Elsewhere in evidence[27] is a copy of an invoice dated 24 October 1997 issued by a signwriting firm and addressed to Cheers Tavern, Sunnybank, for the supply and signwriting of the ‘Cheers logo’ on boards and signs.

   [27] PVH-27

2. Authorship of a trade mark is part of establishing a claim to ownership.  In Moorgate Tobacco Co Ltd v Philip Morris Ltd[28], Deane J said at 432:

   The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person.

   [28] (1984) 156 CLR 414

3. In other words the first use of a substantially identical trade mark may not be sufficient to establish the opponent’s proprietorship.  The opponent must also establish it was the author of the substantially identical trade mark.  Dixon J in Shell Co (Aust) Ltd v Rohm and Haas Co[29] held authorship to ‘involve the origination or first adoption of the word or design as and for a trade mark.’  Authorship is not limited to the party who first thought of the trade mark.  As noted by Deane J, local authorship is sufficient, that is, being the first party to adopt the trade mark in Australia.

   [29] supra note 21 at 628

4. The evidence before me does not show that the opponent has ever used the trade mark reproduced at paragraph 11 of these reasons. The evidence does show the opponent has used the trade mark reproduced at paragraph 13 but that use was not the result of a decision to adopt the trade mark.  On the contrary, according to the opponent, the use was not authorized, was unintended and subsequently ceased.  I find that if any rights did accrue to the opponent through that unauthorized use, they have since been abandoned.

5. The evidence does establish that the opponent has used the CHEERS TAVERNS trade mark since at least January 2001 and that it is the author of that trade mark.  What I now need to decide is whether the CHEERS TAVERNS trade mark is a substantially identical mark to the present trade mark. 

6. The accepted test for substantial identity is that provided by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[30]:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

   [30] (1961) 109 CLR 407 at 414

7. The two trade marks are depicted below for a side by side comparison as required by that test.

   Applicant’s trade mark  Opponent’s trade mark

8. Applying the reasoning of the court in PB Foods Ltd v Malanda Dairyfood Ltd[31] the presence of the word TAVERNS in the opponent’s trade mark may be given little weight as it serves to describe the applicant’s bar and restaurant services rather than indicate trade origin.  The essential feature of each trade mark is the word CHEERS. 

   [31] (1999) 47 IPR 47

9. The comparison must also, I consider, take into account the fact that at the filing date the applicant’s trade mark was (and still is) very well known.  It is the trade mark of a popular and long running television series,[32]  broadcast on free to air television in Australia from 1983 to 1996 and from then until the filing date on pay television[33].  The series received numerous awards[34].  It was set in a Boston bar called CHEERS and characters in the series such as Sam Malone, the proprietor, were so popular they developed a cult following[35].  The title credits displayed the applicant’s trade mark and each episode opened and closed with a shot of the exterior sign for the Cheers bar[36].   The series achieved such popularity it was still being mentioned in Australian newspapers in 2004[37] even though there had been no free to air broadcast since 1996[38].  Sales of DVDs of the series are ongoing[39]. 

   [32] Mak declaration

   [33] RAB-1 and 2

   [34] RAB-5

   [35] RAB-4 and 20

   [36] Paragraph 23 and exhibit RAB-8 to Borden 1

   [37] Wong declaration

   [38] OOM-3

   [39] Paragraph 4 and Exhibit ACK-2 to Keen declaration and Exhibit RAB-7 to Borden 1

10. In Registrar of Trade Marks v Woolworths Ltd[40] French J said at 431[41]:

    His Honour’s reference to the familiarity of the name “Woolworths” in Australia was appropriate.  Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them.  For in the end the question of resemblance is about how the mark is perceived.  In the instant case the visual impact of the name “Woolworths” cannot be assessed without a recognition of its notorious familiarity to consumers.

    [40] (1999) 45 IPR 411

    [41] This was in relation to deceptive similarity, not substantial identity, but I see no reason not to apply the same reasoning here.

11. Notoriety is not something that can be established by evidence of trade mark use.  Rather it is something that is ‘common knowledge’ and of which judicial notice can be taken.  While I am satisfied the applicant’s trade mark has a reputation as the name of a television series, I am not satisfied it was at the filing date, or is now, ‘notoriously familiar’ to consumers such that the two trade marks would have been perceived differently.  I find a side by side comparison gives rise to ‘a total impression of similarity’[42].  The trade marks have the same essential feature, the word CHEERS, and that word is depicted in similar manner with partly shaded letters and emphasis on the initial letter C and the final letter S. I am satisfied the two trade marks are substantially identical.

    [42] supra note 6

1. As the opponent has used a substantially identical trade mark since at least January 2001, the onus is on the applicant to show that it used the present trade mark, or a substantially identical trade mark, prior to that date in relation to the ‘same kind of thing’ as bar and restaurant services.  It has not been able to do so. 

2. The opponent says discussions took place in 1993/94 and in 1995/96[43] to open a restaurant and bar[44] themed to the Cheers television series and submits that these discussions constitute ‘an existing intention to offer or supply [services] bearing the mark in trade’ as described by Deane J in Moorgate Tobacco Co Ltd v Philip Morris Ltd[45].  However Deane J found preliminary discussions are not ‘public use in Australia of the mark as a trade mark’.  The applicant has not shown that ‘it [had] gone beyond the investigating whether to use the mark and beyond planning to use the mark and [had] got to the stage where it [could] be seen objectively to have committed itself to using the mark, ie to carrying its intention to use the mark into effect’.[46]

   [43] Paragraphs 10 to 12 of Novack

   [44] at Melbourne and Cairns airports respectively

   [45] supra note 28

   [46] Woolly  Bull Enterprises Pty Ltd v Reynolds (2001) 50 IPR 149 at 161; see also Shahin Enterprises Pty Ltd  v Exxonmobil Oil Corporation [2005] FCA 1278

3. In the absence of prior public use by the applicant of the present trade mark in relation to bar and restaurant services, I find the opponent’s use of a substantially identical trade mark establishes that it, not the applicant, is the owner of the present trade mark with respect to those services. The section 58 ground has been made out.

Section 41 ground

1. The opponent submits the present trade mark is not capable of distinguishing[47] the applicant’s goods and services, particularly its restaurant and bar services in class 42.  The opponent says the word CHEERS is banal and refers to its use by other traders in the names of outlets providing food and drink such as cafes, bars, coffee lounges and restaurants and the like[48].  However this use by other traders is trade mark use.  All it shows is that, like the applicant and the opponent, others in the same trade also believe CHEERS to be a good way of identifying their food and beverage services.  It does not establish CHEERS is a word that is common to the trade.

   [47] subsections 41(2) and (3) provide:

   [48] AVD-6 to 9

2. The accepted test to be applied with respect to subsection 41(3) and whether a trade mark is inherently adapted to distinguish is that stated by Kitto J in Clark Equipment Co v Registrar of Trade Marks[49].   His Honour said at 514 that this 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, 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.

   [49] (1964) 111 CLR 511

3. According to the entry from the Macquarie Dictionary in evidence[50] ‘cheers’ is an interjection used colloquially in the sense of ‘to your health!’  That dictionary also refers to the use of ‘cheers’ in the expression ‘three cheers’ meaning ‘three shouts of hurray, given as a token of approval for someone’.  Neither of these definitions describe the applicant’s services, nor do they show that CHEERS is an expression other traders in the same services would need to use in the ordinary course of business.

   [50] AVD-2

4. In any event the present trade mark is not just the word CHEERS but the word CHEERS represented in an unusual manner.  The opponent claims CHEERS is depicted in an ordinary font which it describes as ITC Cabaret[51].  It says the present trade mark is represented in the cursive form of ITC Cabaret.  The applicant points to the lack of evidence to show the font was available at the date of application which both parties agree is the date at which the facts must be considered.  But even if I were to accept that ITC Cabaret was an ordinary, readily available font at the filing date, Exhibit TJD-2 shows the initial letter C and the final letter S in the present trade mark to be clearly different from the representations of those letters in ITC Cabaret.  I am satisfied the representation of the present trade mark is not ordinary and that it has to be taken into account in considering whether the trade mark is inherently adapted to distinguish in terms of subsection 41(3).  I am satisfied the present trade mark is so adapted to distinguish the applicant’s goods and services and is thus capable of distinguishing.

   [51]TJD-2

5. The opponent points to the fact that the applicant’s registration 580371[52] for restaurant and bar services has been endorsed as follows:

   Registration gives no right to the exclusive use of the word CHEERS

   [52] The trade mark in registration 580371 is depicted at paragraph 17 of these reasons.

6. That endorsement was applied under the provisions of section 32 of the now repealed Trade Marks Act 1955.  Under that provision the Registrar had the discretion to require the proprietor of a trade mark to disclaim any right to the exclusive use of parts of a trade mark ‘for the purpose of defining the rights of the proprietor under the registration’.  Such a disclaimer sheds no light on whether the word CHEERS is capable of distinguishing under the current legislation.  It simply indicates that registration 580371 does not give the proprietor rights to the exclusive use of the word CHEERS solus.

7. I find the opponent has failed to make out the section 41 ground.

Section 59 ground

1. Section 59 provides that an application for registration may be opposed if, at the filing date, the applicant had no intention of using the trade mark in the ordinary course of business. The act of applying for registration is taken as indicating the requisite intention to use[53].  To make out this ground the opponent needs to establish that on 5 March 2001 the applicant had no such intention.  It has failed to do so.

   [53] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401

2. In its submissions the opponent makes much of the coincidence between the applicant being made aware in December 2000 of the opponent’s proposal to open a fourth tavern and the present application being made three months later.  It was only when it had applied for registration, the opponent says, that the applicant approached the opponent with a view to licensing the sale of merchandise associated with the Cheers television series.  The opponent argues the applicant had no intention of using the present trade mark but wanted to use its application as leverage in negotiations.

3. That argument is not substantiated in the evidence however.  On the contrary the applicant has provided evidence of its licensing the use of its various CHEERS trade marks world wide, in particular the licensing of its trade mark for use in connection with bar and restaurant services in New Zealand, the UK, Canada and the US[54].  This is not consistent with a lack of intention to use.  The applicant may not intend to use the trade mark itself but I am satisfied it intends to authorise the use of the trade mark by a third party as provided in subsection 27(1)(b)(ii).  Accordingly I find the opponent has not made out this ground of opposition.

   [54] Paragraphs 27 to 32 and Exhibits RAB-13 to 15 Borden 1; paragraphs 8 to 11 and Exhibits MG-2 to 5 to Goldman

Decision

1. As the opponent has made out the section 58 ground of opposition, my decision is to refuse to register trade mark application 868063.

Costs

1. I award costs against the applicant according to the official scale.

Deirdre O'Brien

Hearing Officer

Trade Marks Hearings

31 January 2006

(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.
(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.