Pole Logics Pty Ltd

[2022] ATMO 202

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2143210 (class 3) – SENSITIV+E - in the name of Pole Logics Pty Ltd

Delegate:

Tracey Berger

Representation:

Applicant: Lance Scott of Gestalt Law Pty Ltd

Decision:

2022 ATMO 202

Trade Marks Act 1995 (Cth) – section 33 proceedings – ground for rejection under s 41 – trade mark not sufficiently adapted to distinguish all goods – trade mark to be accepted under s 41(4)

Background

1. This decision follows from an ex parte hearing at the request of Pole Logics Pty Ltd (‘Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] in relation to trade mark application number 2143210 (‘Application’) filed on 15 December 2020 for SENSITIV+E (‘Trade Mark’) in class 3 for:

Soaps; perfumery; essential oils; cosmetics; toiletries; hair care preparations; skincare preparations; sunscreen preparations; cosmetic preparations for tanning; nail care preparations; make-up preparations; fragrances; air fresheners; room fresheners (‘Goods’).

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) ( ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) ( ‘Regulations’).

2.     The Application was examined as required by s 31 and a ground for rejection was raised under s 41.  The first examination report issued on 18 January 2021 and stated the s 41 objection as follows:

Your trade mark is SENSITIV+E.

SENSITIVE is a term used in association with cosmetics to indicate that the product in question is for sensitive skin. +E is often used in association with cosmetic products that contain added vitamin E. In relation to the goods you have claimed your mark simply indicates that they are for sensitive skin and that they contain vitamin E.

As there is no other material in your mark, it is not sufficiently adapted from the terms "SENSITIVE" and/or "SENSITIVE + E" that another trader would wish to use for their ordinary meanings in relation to their similar cosmetic products.

Other traders should be able to use SENSITIV+E, or something so nearly resembling it, in connection with goods similar to yours in the ordinary course of trade.

3.     In support of the Application, the Applicant made submissions that the Trade Mark is very unusual in that it contains a “+” sign in the middle of a full word, that “+E” is not an obvious reference to added Vitamin E as demonstrated by internet search results, and that it is linguistically unique and more than a misspelling of the word SENSITIVE. 

4.     The Examiner did not find the submissions persuasive and issued a further report.  Following the second examination report, the Applicant requested a hearing by videoconference.  The matter was heard before me as a delegate of the Registrar of Trade Marks on 3 November 2022.  Lance Scott of Gestalt Law Pty Ltd made written and oral submissions on behalf of the Applicant.  The written submissions include a Declaration of Jessica Amy Claire Dummett, director of the Applicant, made on 1 November 2022 with Annexures JD-1 and JD-2 (‘Dummett Declaration’).

5. As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the ground for rejection under s 41 identified by the Examiner and I am not bound by the Examiner’s findings. Whilst I may consider reasoning provided by the examiner in support of the objection ultimately, I must make a decision based on my interpretation of the facts and law.

The Applicant’s business

6.     Ms Dummett attests that she has a background in pharmaceutical marketing.  In 2005, she decided to have a career change and commenced her own business as the exclusive distributor of X-POLE products, the world’s leading brand of professional grade dance/fitness poles and related products (Applicant’s X-POLE Business’).

7.     Whilst operating the Applicant’s X-POLE Business, Ms Dummett founded her POLE PHYSICS business in 2010 which produces and sells body lotions (‘Products’) designed for pole dancers and aerialists.  The Products are very popular as they are natural, gentle, moisturising products which are non-greasy and not slippery.  At the request of her customers, Ms Dummett then designed a more mainstream brand for people not in the pole industry which the Applicant has provided under the Trade Mark since November 2020.

8.     The Trade Mark was adopted to convey that it is:

·     a play on the word ‘sensitive’ indicating that the products are gentle;

·     contains Vitamin E as an additional or special quality of the product;

·     the ‘+’ symbol was chosen for its visual resemblance to the letter ‘t’ and to indicate sensitivity and positivity; and

·     the use of the ‘+’ symbol as part of the word suggests a scientific formula and reflects the technical nature of the specialised product developed for the brand.

9.     The above mentioned meanings in the Trade Mark are reinforced in the Applicant’s marketing and brand communications.  Extracts from the Applicant’s website at are annexed by way of example.

10.   The Trade Mark has no official pronunciation.  Customers and the Applicant’s staff all pronounce the Trade Mark in different ways including ‘sensitive’, ‘sensitive + e’, ‘sensitivity’ and ‘sensitive Ee’.

11.   Ms Dummett attests that in operating the POLE PHYSICS business, she became aware that the Products offered under the Trade Mark were popular amongst customers with tattoos who were using it to assist in the healing of a new tattoo or to maintain the colour of existing tattoos. 

12.   In around November 2020, the Applicant launched another business named KOYA to provide all natural products for athletes and active consumers.  The Trade Mark is also used in the KOYA business in relation to Products for use on tattooed skin.  The Dummett Declaration annexes screenshots from the Applicant’s website at featuring the Products offered under the Trade Mark.  For Christmas 2022, the Applicant will be releasing a travel size bottle of KOYA Products under the Trade Mark to be primarily sold through tattoo studios.

13.   The Products are promoted under the Trade Mark in various ways including:

·     Pole-related channels: pole-related activities, pole businesses such as X-POLE and individual pole studios and by high-profile pole athletes;

·     Social media & influencers: since 4 September 2021, the Applicant has spent a reasonable sum on US-based agents to promote the KOYA and POLE PHYSICS Products including the Goods bearing the Trade Mark.  The Applicant’s staff also reach out to influencers to promote the Products.

·    Tattoo channels: the KOYA Products bearing the Trade Mark are promoted to tattoo artists and tattoo influencers.  The Applicant has also planned to attend a tattoo tradeshow in November 2022 and in 2023, will attend four further tattoo tradeshows as well as an international tradeshow in the USA.

14.   The Products bearing the Trade Mark are primarily sold online and are shipped globally.  The Products are also sold through the Applicant’s X-POLE business and other X-POLE stores, the Applicant’s POLE PHYSICS and KOYA stores, tattoo studios and through resellers in the US (which are warehoused in the USA) and UK.  The Applicant attests that sales of the Products bearing the Trade Mark are positive given the Covid-19 pandemic and are expected to continue to grow based on past sales and the recent investment in the US market.

Discussion

15.   Section 41 relevantly 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.

Note:          For goods of a person and services of a person see section 6.

(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.
                

16.    The inherent adaptation of a trade mark to distinguish is to be assessed:

[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.[2]

[2] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5]; cited with approval inCantarella Bros Pty Ltd v Modena Trading Pty Ltd  [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

17.   The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited indicated that the test for distinctiveness under s 41  involves a two-step process.

18.   The first step requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied. The majority stated:

It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable).[3]

[3] Cantarella, [59].

19.   The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar goods.[4]

[4] Cantarella, [71].

20.   The Applicant argues that the Trade Mark is inherently distinctive.  The Applicant disputes that the ordinary signification of the Trade Mark is ‘sensitive + added vitamin E’.  The component “+E” is not an ordinary abbreviation or sign for added Vitamin E.  Similarly, the Applicant contends the element “V+E” does not connote Vitamin E. 

21.   Further, the Applicant submits that the Trade Mark is not a mere misspelling or trifling variation of the word ‘sensitive’ and such an objection is inconsistent with the contention that ‘+E’ indicates added Vitamin E.  In any event, the Applicant argues there is no general prohibition against such marks and notes:

Misspellings are the essence of a great many trade marks…many such trade marks derive both their inherent capacity to distinguish in terms of s 41 and their individuality in terms of s 44 from the misspellings.[5]

[5] Re Brown (2004) 64 IPR 421 (Reg).

22.   In the Applicant’s contention, the use of the ‘+’ symbol within the word constitutes more than a misspelling or trifling variation.  The ‘+’ symbol has a number of different ordinary significations including (i) the mathematical sign for addition, (ii) to indicate ‘plus’(as in something additional), (iii) ‘positive’ symbol and (iv) to connote the word ‘and’.  As such, the Applicant argues that the ‘+’ sign does more than replace the letter ‘t’ so the Trade Mark is not analogous to marks such as KOOL or XTRA.  The ‘+’ sign has meaning and impact.  As a result, the Trade Mark is a clever play on the word ‘sensitivity’ and this ordinary signification is not directly descriptive of the Goods but rather a ‘covert and skilful allusion’ to the Goods.

23.   The ordinary signification of the Trade Mark is the ordinary meaning of the word to any person in Australia concerned with the Goods.[6]

[6] Cantarella, [70].

24.   Whilst the Applicant has carefully crafted the Trade Mark with multiple meanings, I am not satisfied that the various meanings which the Applicant attributes to the Trade Mark would be apparent to most Australian consumers of the Goods.  Although the element ‘+E’ is not commonly used by other traders, the letter ’E’ is often used to indicate goods that contain Vitamin E and Vitamin E is generally known to be good for sensitive skin.  Accordingly, it does not involve any research or deep thought for consumers to understand that ‘+E’ indicates that the Goods contain Vitamin E.  In my view, the ordinary signification of the Trade Mark is that the products are for consumers with sensitive skin (or who are otherwise sensitive) and contain vitamin E. 

25.   Having determined the ordinary signification, the enquiry turns to whether other traders might legitimately desire to use SENSITIV+E , or something so nearly resembling it.  Many of the Applicant’s Goods are well known for containing Vitamin E such as soaps, body lotions and make up preparations.  Other goods such as fragrances and essential oils are less well known for containing Vitamin E but my enquiries indicate that such goods do commonly contain this ingredient.  Given the ordinary signification of the Trade Mark, I consider that other traders are likely to wish to use a similar mark for its ordinary meaning in relation to the Goods. 

26.   Having found that the Trade Mark is to some extent inherently adapted to distinguish the Goods under s 41(4)(a), I must consider the ‘combined effect’ of the inherent adaptation to distinguish, use or intended use of the Trade Mark and any other circumstances, to determine whether the Trade Mark will or will not distinguish the Goods from those of other persons.

27.   The Applicant’s sales figures to date are modest but the products bearing the Trade Mark were launched shortly before the filing of the Application whilst the Covid-19 pandemic was still affecting normal activities.  The Applicant is already offering three different products under the Trade Mark in its POLE PHYSICS and KOYA ranges through multiple sales channels including on the websites of POLE PHYSICS, KOYA and X-POLE, various resellers and promoting the Products through social media influencers.  In addition, the Applicant has made a sizeable investment in promoting the Products in the US market through sales agents and a planned attendance at an international tattoo tradeshow.  The Applicant also has plans to attend a number of local tattoo tradeshows. 

28.   Taking into account the inherent distinctiveness, the use and intended use of the Trade Mark, I am satisfied that the Trade Mark will distinguish the  Goods.

Decision

29. Under s 33(1), if I am not satisfied that there are grounds for rejection, I must accept the Application.

30.   Therefore, I accept the Application, subject to an endorsement indicating that the provisions of s 41(4) have been applied.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

14 November 2022