Portmans Consolidated Pty Ltd, Re

[1991] ATMO 31

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application Number A496520(25) to Register a Trade Mark in the Name of PORTMANS CONSOLIDATED PTY LTD.

Portmans Consolidated Pty Ltd, of 187-191 Lennox Street, Richmond, Victoria, applied on 30 September 1988 to register the trade mark UTILITY in respect of women's clothing and all other goods in class 25. Class 25 of the International Classification, comprises clothing and footwear. An objection was raised that the word UTILITY described the goods as being useful or functional, that it therefore had direct reference to the goods and was not qualified for registration under the provisions of section 24(1)(d) of the Trade Marks Act.
          The agent for the applicant responded with evidence that the trade mark had been used in respect of women's clothing since 1983, some 5 years prior to application.  The use demonstrated indicated that this use had been substantial.  Some millions of dollars were turned over each year and moreover sales were growing at an impressive rate.
          The examiner of trade marks, however, maintained the objection to the mark on the grounds that the word UTILITY was inherently non-distinctive.
          The matter then came to a hearing which was conducted before me in Melbourne on 18 June 1990, the applicant being represented by Mr J.G. Hawker of Griffith Hack & Co, patent and trade mark attorneys of Melbourne.
          Mr Hawker's case in support of accepting this trade mark for registration, rested first on submissions that the word UTILITY

was not directly descriptive and thus was capable of becoming
distinctive, and second on submissions that the evidence of use supported acceptance in Part A, or otherwise in Part B.
          In regard to inherent distinctiveness, Mr Hawker first referred to an informal survey conducted amongst his colleagues.  This survey brought forth the responses that UTILITY meant 'a utility van', 'a public utility such as the electrcity authority' or 'a computer function'.  These results, he said, implied that the word UTILITY had no clear meaning.  He then referred to an unspecified dictionary definition which held that utility was a noun meaning 'usefulness'.  In Mr Hawker's estimation, considering both the survey results and the dictionary meaning, UTILITY should not be held to be an apt description for clothing.  More appropriate terms, he suggested, were words like 'practical', 'hard wearing' and 'no-nonsense'.  If the word UTILITY did have reference to the goods, he argued, it was clearly not the only word and was certainly not the most suitable word to describe clothing of a practical character.  UTILITY he stressed did not fall within the ambit of EUTECTIC, Eutectic Corporation v Registrar of Trade Marks (1980) 32 ALR 211, which was found to be the only word available to describe a property of the goods then in question.
          Mr Hawker submitted that taking these factors into account I should find that UTILITY was not without inherent distinctiveness, that in light of evidence of use filed in the course of trade mark examination, factual distinctiveness was established for women's clothing, that the mark was thus qualified for acceptance in Part A and failing that was at least capable of becoming distinctive and should be admitted to Part B for a range of goods restricted to accorded with the demonstrated use.

While I acknowledge that Mr Hawker's colleagues are probably representative of contemporary and educated purchasers, I am not disposed to attach any weight at all to the survey he conducted into the current meaning of UTILITY.  I have no information about the number or expertise of the respondents, the way in which the questions and the answers were framed, or the degree of seriousness with which the survey was treated.  Similarly, I am not prepared to attach any weight to his reference to an unspecified dictionary definition: I do not know the authority of his reference, nor do I have access to the full substance of that definition.
          I did, however, refer Mr Hawker to The Macquarie Dictionary definition of UTILITY.  This authority lists the word both as a noun and an adjective and reads, in part

'n-. 1. the state or character of being useful.

2. something useful; a useful thing ... - adj.

8. provided, designed, bred, or made for usefulness or profitability rather than beauty'.

This definition is in agreement with entries in other recognized reference works.  Webster's Third New International Dictionary lists the word as both a noun and an adjective and states under meaning 3, of the adjectival entry

'serving primarily for utility rather than beauty: designed primarily for usefulness often at the expense of beauty, taste or good quality: FUNCTIONAL, UTILITARIAN'

and gives amongst the examples of use, 'utility clothes'.  The Supplement to The Oxford English Dictionary gives the definition

'Intended for use; generally useful; (passing into) merely functional'

and gives, among its examples of the word in use

'1974 Country Life 26 Sept, 828 Utility clothes, furniture and household goods ... were the wartime government's solution'.  The Australian Concise Oxford Dictionary gives as meaning 2 'a. made or serving for utility; severely practical and (e.g. in wartime) standardized (utility clothes, furniture).

These authorities establish to my satisfaction two facts.  First that the word UTILITY, by definition, is directly descriptive of clothing designed on practical lines rather than on consideration of fashion.  Second, by way of the examples chosen to illustrate use that UTILITY is a word normally used to describe clothing of this kind.  The references show, moreover that UTILITY is not only a perfectly apt description of clothes but that it appears to be a reasonably common and popular choice.  On this finding I cannot agree with Mr Hawker that the trade mark UTILITY has any inherent distinctiveness whatsoever.  Therefore, in accordance with the directives of Kitto J, as per Clark Equipment Company v Registrar of Trade Marks, 111 CLR 511, I find that UTILITY is a word which is not fit for registration for clothing, regardless of any distinctiveness in fact.
          Accordingly, I refuse this application both for Part A and Part B of the Register.

(HELEN R. HARDIE)
Assistant Registrar
9 May 1991