Re Exabyte Corporation

[1992] ATMO 65

trade marks act 1955

decision of a delegate of the registrar of trade marks

Re:Trade Mark Application No 543607 in the name of EXABYTE CORPORATION

Application number 543607 was lodged on 9 October 1990 by EXABYTE CORPORATION, a Delaware corporation, for the mark EXABYTE to cover the goods, "Blank magnetic tape cartridges; cartridge tape subsystems including tape drives and control units for use with computers," in Class 9.

In the examiner's first report of 10 February 1992, objections were taken to the mark's registration under paras 24(1)(c), (d) and (e) of the Act that the mark referred to the goods of the application and was not distinctive.  The examiner said that the mark was a combination of the words EXA and BYTE and directly referred to the goods of the application as "computer control units which hold or operate with the capacity of 10 to the 18th (number of) bytes (EXA being a prefix denoting 10/18th of a given unit, and BYTE being a unit of information stored by a computer...)".  The attorney, Callinan Lawrie of Melbourne, replied by arguing that all computer information is binary and, as the number 18 could not be part of such a system, the element EXA which meant 1018, provided a word which was meaningless.  Further, the word BYTE was common to the trade for computer products.  The examiner maintained the objection in the second report, saying that computer storage or operating capacity also could be expressed using the decimal system and thus EXA could have a meaning in relation to computers.  She said that, while an EXA capacity of bytes was not feasible with present technology, it was likely the such a capacity would be developed in the future.  On the basis of the word not having a present descriptive meaning, she offered to recommend acceptance of the mark in Part B of the Register.  The attorney submitted in reply that the mark qualified for Part A registration as the mark had no meaning at the time of lodgment, despite any possibility of a futuristic change in technology, and the objection was therefore not proper in law or in fact.  In the third report, the examiner again maintained the objection to the mark's registration, saying that the descriptiveness of the term EXABYTE was highly likely to be realized in the future and, in her opinion, the Office did have a responsibility to protect the rights of traders in a future marketplace.  She suggested a hearing might be the best way to resolve the matter and the attorney duly sought to have the matter heard by the Registrar's delegate.

The matter came before me as that delegate in Melbourne on 18 September 1992.  The applicant was represented at the hearing by Mr Robert Kelson of Callinan Lawrie.

Mr Kelson submitted that the mark had been dissected by the examiner in an effort to find a meaning, in a practice decried by Dixon CJ in the well known Tub Happy case, Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190. He said that, even if a meaning could be ascribed to the mark, then the concept implied was theoretical and fanciful. The idea of any computer related equipment having a capacity of 1018 bytes was well beyond actual and theoretical capabilities even in the long term. Even computers with gigabyte capacities are, for most purposes, theoretical and an exabyte capacity would be many times this. As such, the term would be meaningless to those in the trade and, at worst, would imply something as being overlarge. He pointed to several Australian registrations of marks which contained the element BYTE. In those where the word BYTE was separate, it had been disclaimed but this would not be necessary in the present instance as it formed part of longer word. Mr Kelson also pointed to overseas registrations, including in the United States, of the mark EXABYTE and lodged a certified copy of the U.S. mark which had been included on the Principal Register for the same goods as the Australian application.

Decision

For a mark to be registrable in Part A of the Register it should qualify in terms of s.24(1) of the Act or through the provisions of ss.24(2) and 26(2) with evidence of use.  The basic requirement for the registration of any trade mark in Part A is that it is distinctive, i.e., adapted to distinguish the goods or services of its owner from the similar goods or services of other traders.

The test as to whether or not a mark is adapted to distinguish is well established.  If the mark is one which other traders would desire to use without improper motive upon or in connection with their own goods or services, then registration will generally be denied.  The test for registrability in Part B is whether the mark will at some time in the future satisfy the requirements of s.26(2) as to inherent distinctiveness and distinctiveness in fact.

The word EXABYTE is clearly a combination of the elements EXA- (a word element defined in the Macquarie Dictionary as "a prefix denoting 1018 of a given unit, as in exahertz,") and -BYTE (listed in Macquarie as, "a unit of information, usu. eight bits, stored by a computer").  The public is well used to seeing such words as MEGABYTE and GIGABYTE to describe computer-related capacities and I do not agree that, in the light of this, the examiner has arbitrarily "dissected" the mark to find a meaning; the meaning is obvious.  Thus, if the concept of computer related equipment with exabyte capacities was presently a reality, clearly the term would be required for ordinary use.  Additionally, even if computer related equipment with exabyte capacities is not possible with today's hardware, I must agree with the examiner that, given the rapid technological innovations in the computer field, such abilities are highly likely to be realized in a tangible way in the future.  It is theoretically possible to address that much space even if present capacities fall far short.  The pace of change is accelerating, with many innovations, eg in the field of molecular technology, which allow state of the art computers to perform feats, or possess capacities, which ten years ago seemed impossible or, at best, remote.  It is therefore not inconceivable that, in the future, exabyte capacities will be available through, for example, networks of computers each with large memories having a communal capacity of EXABYTE proportions.  The precedent law suggests that the Registrar has a responsibility to take into account future developments and I refer here to the words of Lord Shaw in agreeing with Lord Justice Farwell in W. and G Du Cros Ltd's Appn (1913) 30 RPC 660 at 670, where he said with regard to the Registrar, "His function is to protect the interests of the public, present and future...". Also pertinent here is the decision of the Assistant Registrar of Trade Marks in re International Business Machines Corporation's App'n AOJP 19 November 1959 where it concerns a mark's acquisition of generic meaning.

In relation to the question of whether a mark is adapted to distinguish, Kitto J in the MICHIGAN case, Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, has pronounced the following criterion:

"[the question is to] be tested by reference to the  likelihood that other persons, trading in goods of 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."

I am of the opinion that the present mark is in the above category.  It is a term which others may honestly wish to use in the future to describe computer related capacities and, as such, should be left in the public domain.  I therefore conclude that the mark fails the test of inherent distinctiveness.

Turning to the issue of any distinctiveness in fact, I was not provided with any evidence of use either before, or at, the hearing to enable me to assess the mark under that criterion.  Mr Kelson did state at the hearing that the mark has been registered overseas, and in the U.S., with no problems and lodged a certified copy of the U.S. registration.  He said that the U.S. market conditions for the goods in question were identical to that of Australia.  However, the legislative requirements and judicial systems of the U.S., other countries, and Australia may differ markedly, and I take note of such registration in the light of these differences.  There is, therefore, no basis to find that the mark has achieved any acquired distinctiveness in Australia.

However, despite any evidence that could be lodged and the achievement of overseas registration, in view of the mark's inherent non-distinctiveness it is not distinctive within the meaning of section 24 of the Act since, as was stated by Gibbs J in respect of the WHOPPER mark in Burger King Corp. v Register of Trade Marks (1973) 128 CLR 417 at 426:

The effect of s.26(2) is that the two factors mentioned must both be weighed but the authorities show that the primary inquiry is whether the word is inherently adapted to distinguish the goods in respect of which registration is sought, and that if it is simply a laudatory or descriptive (my emphasis) epithet, registration will generally be refused even if there is evidence of such user as has in fact rendered the word distinctive of the applicant's goods.

I was not asked to consider the mark in Part B of the Register but, for the sake of completeness, I will do so.  I have considered the presence of other BYTE marks on the Register, most of which are in Part B or have the word BYTE disclaimed, and the earlier offer by the examiner to recommend the mark in that Part.  However, in all the former cases, there was a degree of allusion that the present mark fails to possess.  For a mark to be registrable in Part B it should be capable of becoming distinctive, that is, in the course of time it should be capable of being registered in Part A subject to the tests set out in section 26(2).  However, as I have previously observed, the passage of time will not improve the situation, as computer related capacities are constantly expanding and the word comprising the mark will be likely to be required for general use.  In my opinion, this, combined with the mark's inherent non-distinctiveness disqualify the mark for registration in Part B of the Register.

Having found that the mark fails the required tests for registration in both Parts A and B, I have no option but to refuse to accept application number 543607 in both of those Parts of the Register.

Ian Forno
Hearing Officer

16 October 1992