Re National Geographic Society

[1993] ATMO 46

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Applications number 474629, 474630 and 474631, in the name of National Geographic Society, to register a trade mark.

The above trade mark applications were lodged on 14.10.87.  They seek registration in respect of goods which I will briefly describe as being printed matter, teaching equipment, pre-recorded films and videos and educational and entertainment services.  The mark the subject of the three applications is a hollow yellow rectangle, of the proportions as depicted below.

trade mark

An examiner of trade marks has objected that the trade mark does not comply with the registrability requirements of section 26(2) of the Trade Marks Act. The final formulation of that objection, maintained consistently through three reports, was that "the mark does not appear to be sufficiently distinctive, or capable of becoming distinctive, for registration".

The applicant requested a hearing in the matter and was represented by Ms Lyn Stafford, a patent attorney of the attorney firm of Watermark.

Ms Stafford directed her attack at the two points maintained by the examiner. In the first instance she argued that the applicant's mark was distinctive in fact; though she argued that this factual distinctiveness was underpinned by the inherent adaptation to distinguish required by s 26(2).

Ms Stafford referred me to the terms of registration, in the name of the applicant, of application 340034.  This mark is as below

340034

Ms Stafford noted that it had been open to the Registrar (under s 32) to have required her client to consent to a condition of registration recognising that the border device in question was non-distinctive.  Instead, the applicant has been required to disclaim exclusive right to the use of the word GEOGRAPHIC, and undertaken to use the blank space in the mark as follows:

It is a condition of registration that the blank space(s) in the mark shall, when the mark is in use, either be left vacant or be occupied only by matter which is wholly descriptive and has no trade mark significance in relation to the goods in respect of which the mark is registered. 

The application is also endorsed to the effect that:  "The border depicted in the representation of the mark attached to the application is limited in use to the colour yellow but otherwise the mark is without limitation of colour".  I can give no weight to that endorsement:  it is a only a reflection of the fact that the applicant had filed the application in those narrow and restricted terms at the time of lodgement. 

It does not matter in the slightest that the border device has not been disclaimed, for the purposes of registration 340034, as being non-distinctive.  The mark as registered shows that the device in question is simply a border, albeit a yellow one.  It has never been the practice of this office to require that simple borders be disclaimed.

The applicant's case is bolstered, in Ms Stafford's submission, by the evidence of the use made of the mark.  The applicant has sold films in Australia bearing the trade mark since 1977 and videos since 1982.  It trades in services, charging licence fees for syndicated broadcast transmissions.  It is also quite clear that the applicant's NATIONAL GEOGRAPHIC magazines are well-known.  These magazines have been widely sold, bearing the yellow device, for more than 30 years. 

Supporting the fact of these sales was her own declaration as to a survey she had made of two buyers of books.  If matters were to hinge on this questioning, I would not give it any weight at all:  the result cannot be statistically significant and the key question is more than a little leading.  Ms Stafford has presented two book traders with a question which reads "With what goods do you associate the YELLOW/GOLD RECTANGLE Trade Mark?  (A copy is attached)".  Sure enough, the mark in question is attached, but the people surveyed will be in no doubt, by the time they turn to the attached page at the rear of the questionnaire, that the thing they are to find there is alleged to be a trade mark.  They go on to say that no, they do not associate "the YELLOW/GOLD RECTANGLE Trade Mark" with anyone other than the applicant.  I accept that in the context in which it was obtained, that opinion was honestly given. 

Decision

I take issue with the claim that the yellow device has become factually distinctive. 

The Trade Marks Act provides for the registration of devices in Part A if they are distinctive, and in Part B if they are either distinctive or able to become distinctive (s 25).

Paragraph e of s 24(1) allows for the registration of "any other distinctive mark" and the preceding paragraphs relate to words of various sorts.  Those classes of word marks are further filtered into registrable and unregistrable by s 24(2) but a device mark stands or falls by s 26 direct.  That section provides:

(1) For the purposes of this Act, a trade mark is not distinctive of the goods or services of a person unless it is adapted to distinguish goods or services with which that person is or may be connected in the course of trade from goods or services in respect of which no such connexion subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions or limitations.

(2) In determining whether a trade mark is distinctive, regard may be had to the extent to which-
(a) the trade mark is inherently adapted so to distinguish; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish.

Ms Stafford submitted that yellow borders are not common to the magazine trade and that yellow rectangles are not common to the trade in the other goods and services produced by the applicant.  I will revert to the other items at a later stage, but for the moment let me consider the applicant's trade in magazines.

Magazines
I will accept the opinions of the two book traders questioned by Ms Stafford:  apparently nobody else is using a yellow rectangle on the cover of their magazines.  Thus, as Ms Stafford argues, the device is not actually common to the trade.  However, let me say here and now that if a rival magazine was to adopt a yellow border tomorrow it would not surprise me. 

Inherent adaptation can, in the terms used in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 and Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 (per Gibbs J at p 425 of the latter decision)

be tested by 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.

On that basis a shape such as the present one, which is so eminently suited to use as a mere border, does not have a great deal of inherent adaptation to distinguish. It is not prima facie distinctive when tested as per s 26(2).

I will concede that simple geometric patterns such as arrows, overlaid squares, even perhaps discs, can become distinctive as long as they are not common to the relevant trade and are used with care.  The applicant might, for instance, have spent the last 30 years publishing a magazine entitled "yellow rectangle".  If the magazine had a cover page where a yellow rectangle appeared towards the centre of a page of a different colour, with nothing in the blank space in the centre of the rectangle, I would probably concede that the case for the factual distinctiveness of the device of a hollow yellow rectangle per se was convincing. 

However, the applicant here has done something entirely different.  It has taken a simple device with a minimum amount of inherent adaptation, and used it as a mere border.  The device selected for that treatment is less robust than the CASTROL HALF-FLASH considered in Castrol Limited's trade mark [1972] RPC 531. Nor is it comparable with that considered in Time trade mark [1961] RPC 381, the mark in the latter decision incorporating the word TIME in much the same general proportions as the present applicant's existing registration 340034.

As a potentially ideal border the device has very little inherent distinctiveness.  It is certainly not comparable in that respect to the more complex patterns and devices to which Ms Stafford referred me.  Its identity as a trade mark is not robust, and is easily squashed or buried by the treatment the applicant has accorded it.  There are rare instances where it is used in relative isolation from the words NATIONAL GEOGRAPHIC, but even then the mark presents itself not so much as a badge of origin but as a dot-point or paragraph marker, or perhaps as a simple piece of fill-in to draw attention to something else.  For instance, in the material copied below, it calls the eye to the words "Membership - a surprisingly affordable gift".  The use of devices simply to achieve an eye catching and aesthetically balanced combination is common in the printing trade, and I will refer below to at least one instance where this has been done by the applicant, to the detriment of the acquisition of distinctiveness in the rectangle.

I note Ms Stafford's argument that use of a device closely associated with words (in this instance, either NATIONAL GEOGRAPHIC or various bits of non trade-mark material) will not necessarily undermine a scintilla of distinctiveness present in the device or detract from the simple fact that the device has been applied.  Her argument is aimed squarely at the PRESSURE PAK case, Samuel Taylor v Registrar of Trade Marks 102 CLR 650. In that case, in a joint judgement, McTiernan, Taylor and Windeyer JJ noted:

But when it is seen that during the protracted pendency of the application "Pressure Pak" was not used alone in relation to the appellant's goods but only as a combination of words such as "Mortein Pressure Pak" it is difficult to see how the critical words could have acquired a distinctiveness of their own.

None the less, as that case points out, such use does not help the applicant to show that the device alone is seen as having trade mark merit.

I have noted that on many of the applicant's goods the rectangle device was used separately from the words NATIONAL GEOGRAPHIC, and that is true in part in relation to magazines also.  However, a balanced view of the use consistently made in relation to magazines is as below, which I reproduce from a brochure lodged by the applicant. 

I note in passing that the instance in question may not be entirely typical, as the French tricolour emblem actually impinges on the border.  However, another example in the same brochure also shows the border being trespassed on - in the latter instance by picture panels that start closer to the centre of the page but have perhaps one sixth of their bulk over the yellow zone at the sides of the cover.  To my own knowledge, most traders would not take liberties of that sort with their trade marks.  Presumably the applicant sees the importance of its yellow magazine border as less than that of an aesthetically interesting cover design.

Were the yellow device used with care, as in my entirely hypothetical example, it would be hard to argue with a market which had been taught that the yellow rectangle was being used as a trade identifier.  Any trader who made trade mark use of such a rectangle would then perhaps have some less than honest motive.  However, in the present instance the fragile identity inherent in the trade mark is not being accorded the attention and public notice it requires if the market is to be educated to take a simple rectangle seriously, as a trade mark.

On that pattern of use, I do not think that the applicant's mark has become distinctive and I do not accept that use in the present manner will render it distinctive at any time in the future.  It follows that I am not prepared to accept the applicant's mark for registration in either Part A or Part B in respect of magazines.

Other goods and services
In relation to other goods such as books and videos, the picture is not always quite so bad, though at the outset the applicant's case is not assisted by the mark's inherently low level of adaptation to distinguish.  An example of the mark applied to a box for film strips has been lodged.  The film is titled "Saving Our Planet", and these words and the picture of a hand holding a seedling dominate the box.  In the lower right corner of the top of the box, and on the side that would present itself to view if the box was shelved book-fashion, are the words "Educational Filmstrips".  Larger, and directly above them, are the words National Geographic Society, printed one above the other.  To their right, and of the same height as the three words together, is the rectangle in question. 

Much the same presentation is used for an educational kit, called a "Wonders of Learning Kit".  The use of the rectangle beside the words National Geographic Society is as per the filmstrip box, but the box is dominated by the picture of a boy exercising on a pair of parallel bars.  That picture is surrounded by a yellow border of the proportions of the one here in question, but turned on its side.  Such upending is not the sort of treatment likely to reinforce any belief that the yellow rectangle is on the cover (either side up) as a badge of origin.

The boxes in which the applicant's videos are sold look very much like the magazine covers, with the added problem that the yellow colour continues onto the four sides of the box, so that the perception of a yellow rectangle is lost on any sort of close inspection.

The applicant's hardcover books have on their spines the words National Geographic Society, printed one above the other, directly below the device in question.  The rectangle presents itself as no more than a meaningless flourish to draw the eye to the name of the Society, which is otherwise much less prominent than the title of the book.

Again, in relation to services, the applicant's Educational Services Catalogue shows a yellow rectangle which is in no danger of being noticeable as an indication of proprietorship.  The catalogue has on the front page the picture of a toucan, to the right of the page and with its head turned to the reader's left.  Above the picture and in the largest print of any are the words NATIONAL GEOGRAPHIC.  Below the bird's beak, which appears very large in the picture, are the numerals 1990, the year to which the catalogue applies, and beside this, again quite large, is the yellow rectangle device. 

Any perception of the purpose which the device is meant to be serving is partly governed by the text below this.  Words such as "Geography Education", "Wonders of Learning Kits" and "Filmstrips" are printed, to show what sort of items are listed in the catalogue, one above the other.  Beside each such item is a coloured square (in varying colours including red, yellow and orange) printed on a white background.  The white shows merely as an outline around the coloured square and the repeated use of such white-rimmed squares robs the rectangle beside the 1990 of any function as an indication of trade origin.  Both the yellow rectangle and the white-rimmed squares look like they are there to break up the text and to draw attention to the year in question and to the product lines.

Conclusion
The applicant's mark might possibly have qualified for registration had its low inherent adaptation to distinguish been preserved and its function as an indication of trade origin been augmented by careful use.  That is not what the applicant has done in practice and on no goods or services have I been shown that there is a reasonable likelihood that the device is or will become factually distinctive of the applicant. 

To the contrary, I see no reason why the applicant's present way of doing business should suggest that any other trader who produces a magazine or a video box with a yellow border, or uses a yellow rectangle to emphasize a paragraph or item of text, should be suspected of an improper motive.  I therefore refuse to accept, in either Part A or Part B, all three of the applications in question.

T. Williams
Hearing Officer
13 May 1993