Re RA Nominees Pty Ltd

[1993] ATMO 40

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

Re:Application number 534635, in the name of RA Nominees Pty Ltd, to register a trade mark.

Trade mark application 534635 was lodged on 18.5.90, and seeks registration in respect of all goods in international class 12, being, generally speaking, land, air and water vehicles and their parts.  The mark the subject of the application is CUSTOM CHROME.

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 in that it is entirely lacking in the inherent adaptation to distinguish the applicant's goods from those of other traders. The outstanding objection was addressed at hearing by the applicant's patent attorney, Mr John Pizzey, of the attorney firm Pizzey and Company.

Mr Pizzey opened his submissions by pointing to a difficulty the examiner of trade marks had initially experienced in coming to grips with an alleged meaning of the term custom chrome.  This is true, at least on a superficial level:  the examiner had originally formed the view that the words in question were a direct reference to the character of the goods as being "custom made of chrome and/or customised with chrome". 

However, as the attorney has conceded, the word "custom" is one that has evolved over time.  The attorney has quite correctly conceded that "in the respective trade, CUSTOM CAR PARTS are taken to mean after market car parts and accessories, generally not of the original car manufacturer and adapted for fitting to a vehicle to modify it in some way.  Thus the term has evolved away from "customising" and more to mass produced parts available to vehicle owners as a replacement of an original part or as a bolt on accessory to the vehicle". 

The applicant has not disputed that the term "custom wheels" is a common one, for instance, and I am satisfied that this term is commonly used to mean a range of off the shelf wheels that are a bolt on replacement of the factory originals.  However, the term "custom" still retains some of its older import, and an expression such as "custom headers" could as easily mean an off the shelf set of exhaust headers as a one-off item made up to suit a particularly tricky installation.

Nor did Mr Pizzey dispute that the term "chrome" has considerable currency in relation to car parts.  The applicant itself has produced examples of usages such as "chrome air cleaner", "chrome rocker cover" and so forth.  Mr Pizzey's argument was to the point that the examiner had not been able to locate a single entirely appropriate use of the term "custom chrome" in relation to such goods.  Neither have I, for that matter. 

Mr Pizzey argued that no trader acting with proper motives would want to use the term custom chrome to designate chromed custom car parts.  He went on to argue that if the term as a whole has not been proved to be in current use as a descriptive one then the term as a whole must have some inherent merit as a trade mark.  If that is so then his client is entitled to rely on the mark's extensive use and reputation and should be able to obtain registration.  However, the onus is not on me to find reasons for keeping the mark off the register, but on the applicant to make a reasonable case for entitlement to registration. 

To my mind the primary signification of the words custom chrome is no more than the sum of its parts:  custom car or other parts that feature chrome, presumably used either as a plating or an alloy.  I find that they constitute, together, a direct reference to the character of the goods, for the purposes of s 24(1)d of the act.  If they are ever to achieve registration then it must be by way of the following sub-section, s 24(2), which provides that

(2) A name, signature or word (not being a name, signature or word described in paragraph (a), (b), (c) or (d) of the last preceding sub-section) is not registrable in Part A of the Register unless it is, by evidence, shown to be distinctive.

The scheme of the act is such that no trade mark is registrable in Part A or Part B unless it is distinctive, or at least able to become distinctive in the case of Part B. Sub-section 26(2) provides that:

(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.

Moreover, it is a truism of Trade Marks law that in that context "may" means "must".

As to what "distinctive" may look like for practical purposes I note the decision of the Federal Court in Oxford University Press v Registrar of Trade Marks 17 IPR 509. Jenkinson J noted (p517) that distinctiveness is such that the use of the mark, or other circumstance, must be such as to darken the mind of virtually all potential purchasers to the "primary signification" (per Kitto J in Clark Equipment Co v Registrar of Trade Marks 111 CLR 511 at 514-5) of the word or words.

The question of what factual distinctiveness might entail was not directly at issue in the OXFORD case, but Jenkinson J, quoting and elaborating Kitto J., has set the present applicant a formidable task.  If CUSTOM CHROME is to ever become factually distinctive, the applicant must look forward to a day when the ordinary and common use and meaning of those words - separately - is overshadowed by the knowledge that, together, they constitute a badge of origin that denotes nothing other than the applicant's goods.

I appreciate that the applicant has lodged a great number of statutory declarations in this matter.  In each of them, as Mr Pizzey reminded me, a declarant with considerable experience in the trade has said that he knows of no other similar trade marks in use by anyone other than the applicant.  However, I am simply not satisfied that the eclipse of the ordinary meanings of the words custom and chrome, taken together, is sufficiently widespread as to be more likely than not, in the future, to become a generality.

I will therefore leave open the question of the extent of the inherent adaptation of the mark to distinguish.  Had I been able to find a single instance of the two terms in use together, I would have had no hesitation in saying that it was an illustration of what seems to me to be an obvious likelihood.  However, I do not need to go that far, as I am satisfied that the inherent adaptation is vanishingly small.  It is sufficient for me to say that I am not reasonably satisfied that the effect of use and reputation will ever overcome this handicap to allow the applicant's mark to achieve factual distinctiveness.

I therefore refuse to accept the application.

T. Williams
Hearing Officer

7 May 1993