Pioneer Water Tanks Pty Ltd
[2018] ATMO 32
•5 March 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1742486(6) – SHAPE: rib spacing on water/storage tank - in the name of Pioneer Water Tanks Pty Ltd.
| Delegate: | Katrina Brown |
| Representation: | Anthony Norris of Collison & Co. |
| Decision: | 2018 ATMO 32 Trade Marks Act 1995 – s 33 proceedings – s 41 – trade mark not capable of distinguishing – evidence not sufficient to overcome ground for rejection – trade mark rejected. |
Background
This matter is an ex parte proceeding pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) involving an application for the registration of the following trade mark.
| Trade Mark No: | 1742486 |
| Trade Mark: | (‘the Claimed Mark’) |
| Endorsement: | The Trade Mark consists of the shape of a vertical wall of a storage tank characterised by the rib spacing and height as shown in the images attached to the application. The broken lines in the representations are to illustrate the outline of a tank and don’t form part of the mark as applied for as shown in the representation(s) attached to the application form. |
| Applicant: | Pioneer Water Tanks Pty Ltd (‘the Applicant’) |
| Filing Date: | 18 December 2015 |
| Specification: | Class 6: Water tanks of metal; liquid storage tanks (containers and structures) made of metal (‘the Designated Goods’). |
The application was examined and a ground for rejection was raised under s 41(3) of the Act. The first examination report stated:
Your trade mark is the shape of grooves on a water tank
This shape, with or without minor variations, is commonly used in relation to the goods you are claiming. Most water tanks have grooves similar to the shape you are claiming.
Other traders should be able to use this shape in connection with goods or services similar to yours.
To support the trade mark application, the Applicant submitted evidence. The examiner was of the opinion that the evidence was not sufficient to overcome the ground for rejection.
After the third examination report the Applicant requested to be heard. The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 1 November 2017. Anthony Norris of Collison & Co. made written and oral submissions on behalf of the Applicant.
Evidence
The evidence in this matter consists of the following declarations:
Jeremy Oliphant (Applicant’s Credit and Compliance Manager) made on 22 March 2017 with accompanying Exhibits JO1 to JO6 (‘Oliphant 1’);
Jeremy Oliphant made on 30 June 2017 with accompanying Exhibits JO1 to JO11 (‘Oliphant 2’);
Dave Smith (Applicant’s Senior Technical Consultant) made on 23 October 2017 (‘Smith Declaration’);
Richard Hand (Director of Town and Country Water Tank Pty Ltd) made on 20 October 2017 (‘Hand Declaration’)
Daniel Wyatt (Director and General Manager of Applicant) made on 19 October 2017 (‘Wyatt Declaration’);
Laurence Mitchell (Applicant’s Engineering Manager) made on 19 October 2017 (‘Mitchell Declaration’);
Mark each (Owner of The Tank Specialists) made on 23 October 2017 (‘Leach Declaration’);
Wesley Harris (Managing Director of Watertorque Group) made on 21 October 2017 (‘Harris Declaration’);
Keith Bartlett (Director of C.E Bartlett Pty Ltd & Bartlett Tank Liners Pty Ltd) made on 20 October 2017 (‘Bartlett Declaration’).
I will refer to the Smith, Hand, Wyatt, Mitchell, Leach, Harris and Bartlett Declarations collectively as ‘the Industry Declarations’.
At the time of Oliphant 1 the Applicant, or its predecessor, had been trading in Australia for 27 years. The Applicant is a supplier of water tanks for farming, domestic and agricultural purposes. It is declared that the wall profile which is the subject of the Claimed Mark, was first used by the Applicant, or its predecessors, in 2001 and that it is referred to by the Applicant as the ‘8-80 V-Lock wall profile’.
The annual revenue from the sale of water tanks bearing the Claimed Mark has been provided for the period between 2006 and 2016. The figures are significant, including those prior to the filing date. The Applicant has also provided a list of 42 distributors who sell water tanks bearing the Claimed Mark. The distributors are located throughout Australia.
The marketing and advertising expenditure in relation to goods bearing the Claimed Mark is provided in Oliphant 2 for the period from 2006 to April 2017. The figures indicate that between 2006 and 2015 approximately 8 million dollars was spent on the marketing and advertising of goods bearing the Claimed Mark. The Applicant has provided examples from its marketing and advertising to show how the Trade Mark has been used. These examples are discussed in more detail later in this decision.
The Industry Declarations consist of seven declarations from individuals of longstanding within the water tank industry; noting that the Smith, Wyatt and Mitchell Declarations are made by employees of the Applicant. Each of the declarants attests that the shape of the wall profile or the 8-80 V-Lock is unique to the Applicant and also makes a statement in relation to the Claimed Mark being identifiable in the marketplace:
The design of the wall panel…is easily identified by domestic, agricultural and industry clients: Smith Declaration [7].
The 8-80 V-LOCK…is the way our customers recognize a Pioneer tank from a Corri tank…It is a difference that our customers relate to and are drawn to when purchasing a tank: Hand Declaration.
These tanks are instantly recognizable in the market by customers due to their distinctive wall profile: Wyatt Declaration [7].
The exclusive “8-80 V-Lock’ shape makes a Pioneer Water Tank uniquely different from all other products on the market…This enables both industry professionals and consumers to easily identify Pioneer Water Tanks’ products: Leach Declaration [7].
Industry & consumers recognize the shape as an indication that the tank is a Pioneer Water Tank product, there is no other tank on the market with the unique ‘8-80 V-Lock’ walls: Harris Declaration [7].
The unique 8-80 V-Lock shape is known in the industry as the Pioneer Tank: Bartlett Declaration [7].
Section 41
As a preliminary matter I mention that the focus here is not to review the examiner’s decision and arguments, but rather to consider afresh the ground for rejection that has been raised.
Section 41 of the Act relevantly provides:
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.
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…
Under s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it.
Inherent adaptation to distinguish
The inherent adaptation of a trade mark 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, that is to say, of the common right of the public to make honest use of the 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.[1]
[1] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.
Whilst the above passage refers to trade marks consisting of words, the principle is equally applicable to other types of trade marks including shape trade marks.[2] In Chocolaterie Guylian N.V. v Registrar of Trade Marks, Sundberg J expressed the test in relation to a shape trade mark:
The ultimate question on the issue of inherent adaptation is whether a sign – in this case, a shape – possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign. In cases where a shape depicts a known object or concept (cf. wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, than a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar.[3]
[2] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 [146].
[3] [2009] FCA 891 [75].
I note that in applying this test, consideration is given to the likelihood of other traders desiring to use the trade mark, or something so nearly resembling it, in connection with their own goods.[4]
[4] W&G Du Cros Ltd’s Appn (1913) 30 RPC 660. 672.
Turning to the matter at hand, the Claimed Mark is described in the endorsement as:
the shape of a vertical wall of a storage tank characterised by the rib spacing and height as shown in the images attached to the application.
The images attached to the application are set out at [1] of this decision. The two images below are taken from Oliphant 1 Exhibit JO5 and give life to the shape that is being claimed. The first image shows the wall profile as applied to a water tank and the second is a close up of the wall profile allowing the rib spacing to be seen in detail.
Part 21.3 of the Trade Marks Office Manual of Practice and Procedure (‘Manual’) lists the following as relevant considerations in determining the capacity of a shape trade mark to distinguish the goods to which it is applied:
Shapes common to the trade
Shapes and functionality
Shapes and aesthetics
Shapes and invention
The Applicant made submissions under these headings and I will follow its lead in this decision. My impression of the material before me is that the following two considerations are most relevant to this matter: shapes common to the trade; shapes and functionality.
Common to the trade
The Applicant submits that:
This particular shape is unique to the applicant and was designed by the applicant, as stated in their evidence (Oliphant 1, paragraph 5). Whilst many water tanks might have walls with corrugation, the particular shape of the wall profile of our client’s tank, as depicted in the application, is unique to the applicant in this matter.
In the above passage the Applicant concedes that many water tanks might have walls with corrugation. The Macquarie Dictionary definition of ‘tank’ includes ‘a large, closed container made of corrugated, galvanised iron, or of concrete, for storing rainwater above ground’.[5] The inclusion of the word ‘corrugated’ in the dictionary definition suggests to me that it is common for above ground water tanks to be made from corrugated materials.
[5] Online edition, Macmillan Publishers Group Australia 2015.
The Macquarie Dictionary defines ‘corrugation’ as ‘a wrinkle; fold; furrow; ridge’ and defines ‘corrugate’ as ‘to draw or bend into folds or alternate furrows and ridges’.[6] During examination, the examiner conducted a Google image search for: tank “water”. Annexure 1 to this decision consists of the first two pages of the search results. The results show numerous tanks with side walls featuring alternating furrows and ridges. The examiner also conducted a Google image search for: corrugated water tank. Annexure 2 to this decision consists of the first two pages of the search results. The results show water tanks with side walls featuring alternating furrows and ridges.
[6] Ibid.
My opinion is that Annexure 1 and Annexure 2 to this decision, and the dictionary definition, support the view that it is common for the Designated Goods to have wall profiles consisting of alternating furrows and ridges.
In the endorsement the Claimed Mark is described as being characterised by rib spacing and height. The images attached to the application and the images at [18] of this decision, show that the rib spacing of the Claimed Mark has the effect of creating alternating furrows and ridges. Whilst I appreciate that the ribbing of the Claimed is of a specific height or width and the ridges are flat, my opinion is that the Claimed Mark so nearly resembles the corrugation that is common to water tanks. In the words of Sundberg J quoted at [15] of this decision, the Claimed Mark is not sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without requiring use of the same shape or one substantially identical or deceptively similar.
Functionality
Shapes that are functional are less likely to be capable of distinguishing the goods to which they are applied. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks French J stated:
Where shape serves function, then it may not bear that character of a distinctive attribute…I respectfully agree with the observations of Burchett J in Philips[7] that a shape that goods possess because of their nature or the need for a particular technical result could not operate as a trade mark.
[7] Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816.
The Applicant submits that:
[T]he shape the subject of this application is not functional. It was specifically designed to enable the applicant to distinguish their tanks from others. That design feature was given the name “8-80 V-Lock” so that consumers could understand what was distinctive about that shape.
The Applicant then refers to Part 21.3 of the Manual which sets out the following four criteria as relevant considerations in determining whether a shape is functional: the shape is essential to the use or purpose of the article; the shape is needed to achieve a particular technical result; the shape has an engineering advantage; the shape results from a comparatively simple, cheap method of manufacture.
In relation to the Claimed Mark having an engineering advantage the Applicant submits:
Not applicable to this application. Whilst the shape has been tested to ensure it meets relevant Australian Standards (Oliphant 1, Exhibit JO2) this particular shape has no engineering advantage over any other shape. If the shape did have an engineering advantage that led to superior performance, claims to such superior performance would no doubt dominate the marketing materials. However this is not the case.
My impression of the Applicant’s marketing materials is that they do suggest that the Claimed Mark has an engineering advantage resulting in superior performance. Exhibit JO3 to Oliphant 1 contains a brochure for the Galaxy water tank which states:
Unique ribbed tank featuring 8-80 V-Lock profile design, for strength and aesthetic appeal.
Similarly, Exhibit JO5 and JO6 to Oliphant 1 contain marketing material which states:
Pioneer Water Tank’s modern and unique 8-80 V-LOCK wall profile provides the strength of corrugated steel and maintains perfect support to the liner moulded to the inside of the tank wall.
The 8-80 V-LOCK design maximises the strength of your tank to ensure it stays in shape when full or empty whilst minimising liner stress.
Exhibit JO5 to Oliphant 2 contains marketing material which states:
The aesthetically pleasing wall profile is specifically designed by Pioneer to absorb normal earth movement and minimise the likelihood of distortion under load.
Likewise, Exhibit JO7 to Oliphant 2 contains the following:
The 8-80 V-lock profile, exclusive to Pioneer, strengthens the Bluescope Steel and is specifically calculated to withstand hydrostatic pressure.
Finally in the Harris Declaration, Mr Harris (a dealer of the Applicant’s water tanks for seven years) declares that ‘the “8-80 V-Lock” tank wall is a key factor in the tanks strength & quality’.
In my opinion the above extracts indicate that the wall profile, which is the subject of the trade mark application, contributes to the strength of the water tank and also to the ability of the water tank to retain its shape. As such, I consider that the Claimed Mark has functional features.
For the reasons given above, I am satisfied that the Claimed Mark is not to any extent inherently adapted to distinguish the Designated Goods and consequently a ground for rejection exists under s 41(3) of the Act. I must now consider the Applicant’s use of the Claimed Mark prior to the filing date and determine whether it has been used to such an extent that the Claimed Mark does in fact distinguish the Designated Goods as being those of the Applicant.
Evidence of use
The evidence demonstrates that the Applicant has used the Claimed Mark in Australia in relation to the Designated Goods. This use began some 14 years prior to the filing date and Oliphant 2 declares that a considerable amount has been spent on the advertising and marketing of goods bearing the Claimed Mark.
Declarations have been provided from seven individuals in the water tank industry. These individuals have been in the industry for varying lengths of time; ranging from 13 years to 44 years. Each of the declarants attests to the shape of the wall profile or the 8-80 V-Lock as being unique or exclusive to the Applicant.
The fact that the declarants associate the wall profile or 8-80 V-Lock with the Applicant does not on its own demonstrate the capacity of the Claimed Mark to distinguish the Designated Goods from those of other traders.[8] It is necessary to establish that the association is because of the use of the Claimed Mark as a trade mark.[9] In Unilever Plc’s Trade Mark Applications it was put like this:
I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as the badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.[10]
[8] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [100].
[9] Woolworths Limited v BP Plc (No 2) [2006] FCAFC 132 [117].
[10] [2003] RPC 35, 662.
My impression of the Industry Declarations is that they do not go so far as demonstrating that consumers regard the shape as a badge of origin. The Industry Declarations demonstrate that consumers recognise the shape but it is not clear that they treat it as a trade mark.
The Applicant asserts that it has promoted the shape as something apart from the goods and thereby educated consumers of its trade mark significance. To support this assertion, the Applicant points to the following examples from its marketing and advertising:
… a new look wall profile for our 8-80 V-Lock gave the tank a sleek aesthetic appearance;
Unique ribbed tank featuring 8-80 V-Lock profile;
Aesthetically pleasing 8-80 V-Lock profile;
Pioneer Water Tanks’ modern and unique 8-80 V-Lock wall profile;
The 8-80 V-Lock profile, exclusive to pioneer.
The above examples do go some way to highlighting the Claimed Mark in the sense that they refer to a wall profile and unique ribbed tank. The difficulty is that they do this in the shadow of the phrase ‘8-80 V-Lock’. I acknowledge that it is a commercial reality that multiple trade marks are often used together. However, my impression of the above examples is that the presence of the seemingly distinctive phrase ‘8-80 V-Lock’ has the effect of diluting any trade mark significance that may have otherwise been attributed to the Claimed Mark.
My impression of the evidence as a whole is that it is likely that any distinctiveness that the Claimed Mark has acquired is attributable to its use alongside the phrase ‘8-80 V-Lock’. As such it is difficult for me to conclude that the Claimed Mark has by itself acted as a badge of origin for the Designated Goods.
The words of Sundberg J in Unilever Plc’s Trade Mark Applications are particularly illuminating:
There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone.[11]
[11] [2003] RPC 35, 662.
When I weigh the evidence before me together with the extent that the Claimed Mark is inherently adapted to distinguish the Designated Goods, I find that the combined effect does not overcome the s 41(3) ground for rejection.
If I have erred and the ground for rejection should rightfully be under s 41(4) of the Act, it is my opinion that the evidence is also not adequate to overcome a ground for rejection under s 41(4) as it does not show sufficient use of the Claimed Mark as a badge of origin.
Decision
Section 33 of the Act provides:
Application accepted or rejected
(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.
I am satisfied that there is a ground for rejecting the Claimed Mark under s 41 of the Act.
In accordance with s 33(3) of the Act, I reject trade mark application number 1742486.
If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.
Katrina Brown
Hearing Officer
Trade Mark Oppositions & Hearings
5 March 2018
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