Raytheon Company

[2010] ATMO 111

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1284666(12,13) – (International registration designating Australia 990842) - MALD- in the name of Raytheon Company.

Delegate:	Alison Windsor
Representation:	Holder:  David Stewart of Wrays
Decision:	2010 ATMO 111 Regulation 17A.24 – ex-parte - subsection 41(5) – trade mark has some inherent adaptation to distinguish – consideration of effects of Defence Force legislation on provision of evidence of use in Australia - evidence of use sufficient to satisfy Registrar that trade mark has a capacity to distinguish – accepted under provisions of subsection 41(5).

Background

1. Raytheon Company (‘the holder’), a company based in the United States of America, has requested the extension to Australia of protection for International Registration Designating Australia (IRDA) number 990842. The IRDA’s Australian trade mark application number is 1284666 and its priority date is 10 March 2008 by virtue of a convention claim from an earlier filed application in the US. 

2. The IRDA was filed in Australia on 9 September 2008 and the trade mark is the word MALD in plain type.  The IRDA was filed in classes 12 and 13 of the International (Nice) Classification of Goods and Services in respect of the following goods

   • Class 12:  Aircraft; space vehicles, namely air defense decoys
   • Class 13:  Projectiles; weaponry, namely, air defense decoy systems; ballistic missiles; guided missiles; guided artillery projectiles; guided projectiles

3. The application was examined as is required by section 31 of Trade Marks Act 1995 (‘the Act’). During examination the examiner raised a ground for rejection under subsection 41(5) of the Act in respect of all of the goods included in the IRDA. The examiner’s first report, notifying the holder (via the International Bureau in Geneva) of the full provisional refusal under regulation 17A.16, stated:

   To be protected in Australia, your trade mark must be capable of distinguishing your goods from the similar goods/services of other traders in the market place.

   Your IRDA is refused as the trade mark is not capable of distinguishing the specified goods because your mark is the word MALD. MALD is an acronym meaning Miniature Air-Launched Decoy to describe weaponry and equipment including missiles and projectiles that are used as decoys.

   Therefore your mark indicates that the goods you have applied for in Class 12 and Class 13 are goods that are Miniature Air-Launched Decoys.

4. The examiner advised the holder that it could respond to the provisional refusal by making written submissions, by providing evidence of use designed to show that the trade mark is capable of distinguishing, or by requesting a hearing in the matter. 

5. The holder provided detailed written submissions in support of its case.  It also provided a copy of a declaration by Jerome E Rutt, an officer of the holder.  The declaration is one which was submitted in response to the examination of the MALD trade mark in the US Patent and Trademark Office.  Also provided were some extracts from a Google® search for the word MALD and the front page of a presentation delivered to the Australian Defence Ministry regarding the goods sold under the trade mark MALD.

6. The examiner was not persuaded by the information supplied and issued a second report maintaining the ground for rejection. He again suggested that the holder might wish to provide evidence of use sufficient to satisfy the provisions of subsection 41(5). He also advised the holder of the likelihood of rejection should the examination process appear to be reaching an impasse. The holder then requested a hearing.

7. I was delegated to hear the matter in Perth on 19 August 2010.  David Stewart of Wrays Lawyers appeared for the Holder.  Raymond Conroy of Raytheon Australia attended via telephone.  At the hearing I was provided with additional evidence in support of the application, which I have now been able to consider in order to reach my decision in this matter.

   The law

8. Section 41 of the Act, as relevant to the present application, reads:

   (1) …

   (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).

   Discussion

   The grounds for rejection

9. The examiner described MALD as an acronym, formed by the initial letters of the words ‘miniature air-launched decoy’.  These words, the examiner said, describe the nature of the goods in respect of which the acronym is used.  It therefore was lacking in inherent adaptation to distinguish the holder’s goods from those of others.  The descriptive nature of the expression was confirmed in the submissions the holder provided in response to the first official report. 

10. The test for determining whether a word is adapted to distinguish an applicant’s goods or services was summarised by Kitto J in the Barrier Cream case as follows:[1]

    …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 businesses and without any improper motive, to desire to use upon or in connexion with their goods: ...

    [1] F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 at 555

11. The likelihood of another arms manufacture desiring to use the description ‘miniature air-launched decoy’ for those particular goods is, I would surmise, fairly high.  However, the trade mark under consideration does not consist of those words: it is made up of the initial letters of the words without any indication, such as dots or dashes, that it is an acronym.  At face value, the word MALD has no clearly discernible meaning.

12. However, in this case we are dealing with a very narrow market indeed. In a narrow market, it is more likely that the purchasers will be aware of terminology used within their field, and that fact is relevant to this matter. The trade mark MALD is therefore subject to the provisions of subsection 41(5), as being one with only some inherent adaptation to distinguish. This requires the holder to support its case for registrability via the provision of evidence of use and/or intended use of the trade mark and/or of any other relevant circumstances. Evidence of actual use in Australia would on the face of it have the most persuasive value.

    Evidence of use, intended use and/or other circumstances

13. At the hearing the holder provided me with some evidence of use of its trade mark, mainly from the United States, over a number of years and of other circumstances said to be of relevance.  The evidence consists of the following declarations:

    • Michael W Spencer, Senior Manager Business Development of Raytheon Missile Systems (a division of the holder), made on 18 August 2010, with exhibits MWS-1 to MWS-8
    • Raymond John Conroy, Director of Strategy Aerospace, Raytheon Australia, made on 19 August 2010

14. The Spencer declaration states that the term MALD was coined by an outside supplier to the US Air Force (‘USAF’) and Defence Advanced Research Projects Agency in connection with the redesign of a software simulation program in 1992 or 1993.  In 1996, the term MALD was adopted by the Directorate of Requirements Division of the US Air Combat Command and applied to a conceptual decoy design intended for use by the USAF.  The holder was successful in being awarded the first miniature air launched decoy contract in 2003 and since then has been the sole contractor to the USAF for the goods using the trade mark.

15. Since 2003, Mr Spencer says, the holder has used its trade mark in a number of ways including via promotion of the goods to Australian Defence personnel; via internet usage; at trade shows in various parts of the world; via promotional materials and through various published articles.  Also attached to this declaration are examples of relevant publications, much of it consisting of extracts from the holder’s website at a site which is open to the public and which provides a significant amount of comment about the particular goods in respect of which the holder uses the trade mark MALD.   

16. Mr Spencer states that throughout 2009 members of the Australian Defence Force have visited the holder’s headquarters in Tucson, Arizona to hear briefings on the MALD project.  Attachments to the declaration demonstrate use of the trade mark on the title slides and pages of presentations given to these personnel.  Mr Spencer states that the content of these briefings is strictly confidential for national security reasons.

17. Mr Raymond Conroy’s company is based in Canberra in the Australian Capital Territory.  He states that he is a retired Royal Australian Air Force (‘RAAF’) Air Vice-Marshal, with a fighter pilot background; that he was in the Defence Materiel Organisation (‘DMO’) as head of the Aerospace Systems Division and, prior to that position, he was the Director-General Aerospace Development, the peak air operational requirements body in the Australian Defence Headquarters.  His declaration notes that, to the best of his knowledge, only one other company in the Western world is currently marketing an air launched decoy.  He says that the Israeli Military Industries’ current product is titled ATALD.  Previous similar products which he assumes are now out of production have been called TALD and ITALD (improved tactical air-launched decoy).  He states that he is familiar with MALD as a Raytheon product and associates the name only with the holder.

18. Mr Conroy also states that within the relevant industry MALD is the key contender for selection as a counter-air operations system (in the US) on the Lockheed Martin F-35 Joint Strike Fighter and Boeing F/A-18E/F Superhornet, both of which are fighter aircraft.  He mentions an Australian Department of Defence White Paper released in May 2009 which refers to purchase by the DMO of both types of aircraft.  He says that non-US purchasers of such aircraft, such as the DMO, have, as a purchasing pattern, a respectable likelihood of buying ancillary systems like MALD if they buy the previously mentioned fighter aircraft.

19. Generally speaking, it is expected that an overseas company should be able to provide evidence of use of its trade mark within the Australian market if that evidence is to be persuasive.  Evidence from an overseas jurisdiction is likely to carry less weight.  This is where the holder has struck a problem.

20. The relevant market for these goods in Australia is the Australian Defence Force, in particular the RAAF as well as the DMO.  In respect of the lack of specifically Australian evidence, the holder submitted the following:

    As the relevant market of the [holder’s] goods in Australia is the Australian Defence Force, the only people in Australia (other than the [holder’s] employees) who are able to swear that they associate the Trade Mark with the [holder] and no one else are Australian Defence Force personnel.

    The operation of legislation regulating the conduct of the Australian Defence Force prevents the [holder] from obtaining evidence that establishes that they associate the Trade Mark and the goods with the [holder] and no one else. 

    Defence Act 1903 (Cth) section 73A; Defence Force Discipline Act 1982 (Cth) section 58; Crimes Act 1914 (Cth) section 70 and 79.

    A member of the Australian Defence Force is prohibited from communicating (including swearing statutory declarations), otherwise [than] in the course of his or her official duty, any plan, document, or information relating to any fort, battery, field work, fortification, or defence work, or to any defences of the Commonwealth, or to any factory, or air force aerodrome or establishment or any other naval, military or air force information.  Penalty is 2 years imprisonment.

    Defence Act 1903 (Cth) section 73A

    Australian Defence Force personnel are prohibited from unauthorised disclosure of any information if the disclosure ‘is likely to’ prejudice the security or defence of Australia.

    Defence Force Discipline Act 1982 (Cth) section 58

    Australian Defence Force personnel are prohibited from unauthorised communication of any fact or document which comes to his or her knowledge, or into his or her possession, by virtue of being a Commonwealth officer, and which it is his or her duty not to disclose.  Such conduct is an offence with a penalty of 2 years imprisonment.

    Crimes Act 1914 (Cth) section 70

    Relevantly, Australian Defence Force personnel cannot swear statutory declarations in relation to the Trade Mark or the goods as it is a matter outside the course of their official duty.

    Defence Act 1903(Cth) section 73A; Defence Force Discipline Act 1982 (Cth) section 58; Crimes Act 1914 (Cth) section 70

    In the interests of national security, the [holder] is unable to present any further evidence other than its evidence of use over the past 7 years because of the highly confidential nature of Australian Defence Force matters including any plans to acquire, or evidence of acquisition of goods bearing the Trade Mark.  

21. It can be seen from these comments that the holder is not in a position to provide any evidence relevant to use of the trade mark within Australia, or indeed to any information at all about recognition of the trade mark in Australia, apart from that recognition provided by members of the holder and its subsidiaries.  I need to consider if I can be satisfied that the trade mark has the capacity to distinguish the holder’s goods in the Australian market on the basis of the information which has already been provided.

22. I have carefully considered the Google® searches the examiner conducted and I have duplicated those searches and those provided as part of the evidence of use.  From this, I am able to see that the bulk of the relevant ‘hits’ on the internet searches are, in fact, references to the holder, its company and its products.  I was unable to find anything which referred to any other party’s general understanding that MALD was a well known and understood term for any product other than that of the holder.

23. On the basis of this information, I am satisfied that the holder is using the word MALD as a trade mark in respect of its goods, even though it clearly began its life as the initials of a descriptive term.  In addition, I am satisfied that the relevant market in Australia will have been educated by the holder to understand that MALD is the holder’s trade mark, rather than merely an acronym for a descriptive term.  I am therefore satisfied that the trade mark MALD is capable of distinguishing the holder’s range of goods. 

    Decision

24. Regulation 17A.24 provides:

    (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.

25. I am satisfied that there are no grounds for rejecting International Registration Designating Australia no. 990842 (Australian trade mark application 1284666) and it may be accepted for possible protection under the provisions of subsection 41(5) of the Act.

    Alison Windsor
    Hearing Officer
    Trade Marks Hearings
    9 November 2010