Pramac S.P.A

[2011] ATMO 125

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia 1338504 (International Registration No. 631780) (12) - LIFTER- in the name of PRAMAC S.P.A.

Delegate:

Heath Wilson

Representation:

Holder: Tim Allen of Corrs Chambers Westgarth, Lawyers.

Decision:

125 ATMO 2011

Reg 17A.24: Ex parte – Assessment under s41 of the Trade Marks Act 1995 – extent of stylisation insufficient – s41 (5) applies - IRDA rejected.

Background

1. On 28 October 2009, Pramac Industriale S.P.A applied to extend the protection in Australia for an International Registration Designating Australia (‘IRDA’), the current details of which are :

   Application No:              1338504 (International Registration No. 631780)

   Trade Mark:      

Goods/Services:            Class 12: Fork-lift trucks and conveyors (pallet trucks)

Owner:   Pramac S.P.A (hereafter ‘the holder’)

1. On 28 January 2010, the examiner of this IRDA raised a ground for rejection under subsection 41(5) of the Trade Marks Act 1995 (‘the Act’). This ground for rejection was based on the examiner’s assertion that ‘LIFTER’ is a word other traders of fork-lift trucks would need to use in the ordinary course of their trade. The examiner pointed out that the Online Oxford English Dictionary defines a ‘Lifter’ as: Something which lifts or is used for lifting. The visual stylisation of the word that comprises the trade mark was not sufficient to satisfy the examiner that the trade mark did or would distinguish the holder’s class 12 goods.

2. The attorney for the holder responded to the examiner on 28 April 2011 and submitted that the degree of embellishment of the word LIFTER is such that it has a ‘highly distinctive’ character and should be prima facie registrable under subsection 41(3). The attorney also referred to other trade marks on the Register with elements of stylisation seemingly accepted without the need to provide evidence of use under the provisions of subsection 41(5) or 41(6).

3. Notwithstanding the attorney’s submissions, the examiner’s second report maintained the ground for rejection under subsection 41(5) of the Act and further outlined the option of providing evidence of use, intended use or other circumstances.

4. Rather than provide any evidence or further submissions to the examiner, on 22 June 2011 the holder instead requested a hearing on the section 41 issue.

5. I have been delegated by the Registrar of Trade Marks to hear the matter. Tim Allen of Corrs Chambers Westgarth, Lawyers represented the holder and provided me with written submissions on 25 August 2011.  Those submissions also requested an early indication of whether I would accept the IRDA prima facie or whether there was a need for Mr Allen to attend a hearing in the event I was unsatisfied the trade mark could be accepted on the strength of those submissions. On 26 August 2011, I provided a preliminary view to Mr Allen that I believed the objection that had been raised under subsection 41(5) was appropriate in the circumstances.

6. Despite this indication, the holder still wished to be heard and an ex parte hearing occurred in Melbourne on 23 September 2011, with Mr Allen appearing on behalf of the holder.  

Relevant Provisions

1. Reg 17A.28(1) of the Trade Marks Regulations 1995 (‘the Regulations’) sets out the grounds for rejecting IRDAs:

(1) The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by sub regulation (2).

1. Section 41 of the Act relevantly provides:

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.

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

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.

4. Then, if the Registrar is still unable to decide the question, the following provisions apply.

5. If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:For goods of a person and services of a person see section 6.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

Reasons

1. The test for the inherent adaptation of a trade mark to distinguish its designated goods, according to Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 (at 555), is:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

2. The ordinary meaning of the word ‘Lifter’ (without any form of stylisation) if used in relation to forklift trucks is one which other traders would desire to use (without improper motive) in the course of trade. Mr Allen conceded that the word was non-distinctive and one that other traders would be likely to want to use. As the holder did not provide any evidence of use or intended use for consideration, Mr Allen’s argument concerned the degree of embellishment in the trade mark and the level of its capacity to distinguish on that basis.

3. I am satisfied that the embellishment or stylisation provides the trade mark with some inherent adaptation to distinguish and I find that an objection under subsection 41(6) of the Act is not appropriate here. The remaining issue for me to determine is whether that embellishment or stylisation is such that the trade mark is inherently capable of distinguishing the designated goods under Ss41(3). I will firstly deal with relevant case law and then address Mr Allen’s other arguments referring to the state of the Register of Trade Marks.

‘Some Degree of Get-Up’

1. The High Court of Australia has provided guidance in the past on the amount of stylisation (or ‘get-up’) that may be sufficient to affect the question of a trade mark’s ability to distinguish its goods/services. In the case of Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285 Justice Kitto, commented that the cross device in that trade mark:

   ...merely provides a fancy method of presenting the name `Bayer', and it has no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as `Bayer'. It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which ... `would strike the eye and fix in the recollection.'

2. While the determination of Justice Kitto was made under the Trade Marks Act 1905-1948, those comments were later applied by Justice Branson in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (at 507); when considering section 41 under the 1995 Act:

   [T]he particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient to take the applicant's trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case.

3. A trade mark’s level of adaptation to distinguish the designated goods/services is determined by a number of contributing factors. While the extent of embellishment in an otherwise non-distinctive word trade mark is just one factor, the following are examples of historical decisions from the Registrar’s delegates which specifically contemplated this factor:

Trade Mark	Finding	Decision
Section 41(5): Application accepted.	Re Application by ElthamWoodwind (Importing Pty Limited) [1996] ATMO 12; 34 IPR 668
Section 41(5): Application rejected.	Re Application by Fantasy Inc (1997) 39 IPR 381
Section 41(6): Application rejected.	The Babcock & Wilcox Company, Re [1998] ATMO 25; 41 IPR 147
Section 41(5): Application rejected.	Reemark [2000] ATMO 112
Section 41(5): Application rejected.	Small & Associates Pty Limited [2002] ATMO 10
Section 41(6): Application rejected.	Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd [2008] ATMO 39
Section 41(5): Application accepted with restriction to specification.	Freelife International Holdings LLC [2009] ATMO 45
Section 41(6): Application rejected.	Paramount International Export, Ltd [2009] ATMO 94

1. In some of the above decisions, a small amount of stylisation was sufficient to shift the consideration to that under subsection 41(5) rather than 41(6). In other cases, the stylisation of the word(s) was not sufficient to alter the consideration at all. However, Mr Allen argues that the extent of the stylisation in the ‘LIFTER’ trade mark should move the consideration from subsection 41(5) to 41(3).

2. The trade mark is represented in italics with the letters ‘F’ and ‘T’ being elongated and stylised. The letter ‘T’ also features some shading behind it. Mr Allen described the trade mark as the representation of a person operating a forklift. Firstly, I am of the view that this visual interpretation is secondary to the dominant word element ‘LIFTER’ which ‘would strike the eye and fix in the recollection’ (Bayer Pharma, supra) of the consumer. Secondly, I am not satisfied that the interpretation of the image of a forklift operator and a forklift would be immediately evident to an observer.

3. The trade mark is more than a simple change in font and is not the usual way of representing the word and this is reason enough for the trade mark to be assessed under the provisions of subsection 41(5) rather than 41(6). It does not follow that the representation of ‘LIFTER’ is sufficiently distinctive to override the descriptive nature of the word were it to be applied to the designated goods.

4. Recent examples from the Register of Trade Marks provided by Mr Allen show that certain descriptive words with minor stylisation and arguably less inherent adaptation to distinguish were prima facie acceptable at the examination stage. As in the case of Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (at 590) which referred to Jacob J’s comments in British Sugar (at 305):

   "Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence."

   I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

5. Hearing Officer Williams, in the decision of Unilever Plc [2001] ATMO 39 added (with reference to the above paragraph from the Ocean Spray case):

   The last paragraph is important. Firstly, consistency in public administration is desirable. Secondly, there is a difference between the role of the court and that of the Trade Marks Office in such matters. It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant. It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.

6. In contrast with the Hearing Officer’s decision above, the examples of accepted trade marks provided by Mr Allen in this matter do not establish a definitive pattern or a solid body of analogous acceptances under section 41 of the Act. As each trade mark is assessed on its own merits under section 41, I am satisfied that this trade mark can be distinguished from the examples.

7. While I find that the trade mark of the IRDA is to some extent inherently adapted to distinguish the goods, I am unable to decide on that basis alone whether it is capable of doing so. Due to the fact that the holder has not provided any evidence of use, intended use or other circumstances that may allow the trade mark to be accepted under the provisions of 41(5)(b), the ground for rejection under subsection 41(5)(c) stands.

Decision

Reg 17A.24    Final decision on examination

(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it.

(2)The Registrar may accept the IRDA subject to conditions or limitations.

(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it, in whole or in part.

1. The ground under subsection 41(5) has been established and I reject IRDA 1338504 in respect of all goods listed.

Heath Wilson

Hearing Officer

Trade Marks Hearings

16 December 2011