Re: Trade mark application number 1920532 (classes 18 and 25) Wood Paper Company in the name of Amazon Technologies, Inc

[2020] ATMO 18

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1920532 (classes 18 and 25) – WOOD PAPER COMPANY - in the name of Amazon Technologies, Inc.

Delegate:	Louise Tuohy
Representation:	Applicant: King & Wood Mallesons.
Decision:	2020 ATMO 18 Trade Marks Act 1995 (Cth) – ex-parte - Section 41 – trade marks inherently adapted to distinguish – trade mark not capable of distinguishing – application rejected.

Background

1. The following is a Decision on the Written Record pursuant to section 33(4) of the Trade Marks Act 1995 (‘the Act’).

1. On 17 May 2018, Amazon Technologies, Inc, (‘the Applicant’) applied to register a trade mark, the details of which follow:

Trade Mark Number: 1920532

Trade Mark: WOOD PAPER COMPANY (‘the Trade Mark’)

Specification of Goods:

Class 18: Purses, and handbags, all-purpose carrying bags, tote bags, traveling bags, shoulder bags, clutch purses, backpacks, athletic bags, wallets, coin purses and cosmetic bags sold empty

Class 25: Clothing, footwear, and headgear, including blouses, shirts, t-shirts, sweatshirts, pants, denim jeans, slacks, shorts, skirts, tunics, tank tops, dresses, jumpsuits, leggings, sweaters, scarves, jackets and coats, raincoats, fashion headbands and hats, belts, sleepwear, lingerie, socks, gloves, and hosiery

(collectively ‘the Goods’)

1. The Trade Mark was examined as required by section 31 of the Act. The First Examination Report (‘the Report’) issued on 17 May 2018 raised a ground for rejection under section 41(4) of the Act as follows:

Your trade mark is the words WOOD PAPER COMPANY. Research shows that the goods you have claimed, various types of clothing and bags, can be made from wood or paper. Your trade mark indicates that you are a company that provides wood and/or paper products. It is therefore descriptive of the goods you have claimed and does not appear to be able to act as a trade mark in distinguishing your goods from those of other traders. Other traders should be able to use WOOD PAPER COMPANY, or similar variations, in connection with goods or services similar to yours.

1. On 18 June 2018, the Attorney for the Applicant provided a submission in rebuttal of the ground for rejection under section 41 of the Act, arguing that the Trade Mark is not descriptive of the Goods, or a characteristic of the Goods; and on the basis of a fulsome assessment, the Trade Mark is sufficiently inherently adapted to distinguish in respect of the Goods[1].

   [1] Applicant’s written submission, 18 June 2018, Kings & Wood Mallesons, 1.

1. In response to the Applicant’s submission the Examiner issued a second report dated 3 July 2018 and maintained the ground for rejection under section 41(4) of the Act.

2. On 14 November 2019, the Applicant requested a Decision on the Written Record as provided by section 33(4) of the Act.

3. The Attorney for the Applicant provided a written submission in support dated 9 December 2019 claiming that the objection to registration of the Trade Mark should be withdrawn on the basis that the Trade Mark is sufficiently inherently adapted to distinguish the claimed goods from those of other persons[2].

   [2] Applicant’s written submission, 9 December 2018, Kings & Wood Mallesons, 15.

Discussion

1. Section 41 of the Act relatively provides:

Section 41. Trade Mark not distinguishing applicant’s goods or services

1. 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 (the designated goods or services) from the goods or services of other persons.

2. A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

3. […]

4. This subsection applied to a trade mark if:

   (a)    The trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)   The trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)The extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

   (iii)any other circumstances.

5. The now well-established test for determining whether a trade mark is inherently adapted to distinguish is set out in Clark Equipment Co v Registrar of Trade Marks by Kitto J:

   [T]he question whether a mark is adapted to distinguish 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it[3].

   [3] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, [515].

6. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited endorsed the test but it used new descriptive terminology to describe the test. The Majority view stated that:

   The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia[4].

   [4] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [59].

7. In this matter, the reference to the ‘ordinary signification of the word, in Australia to persons who will purchase, consume or trade in the goods’ is of relevance.

1. A Google search on the phrase WOOD PAPER COMPANY provides direct references to the Applicant and its nominated Goods[5]; however, the ordinary signification of the word phrase WOOD PAPER COMPANY is that of a company providing wood and paper-based products[6].

   [5] Wood Paper Company, Amazon (Web Page) < Pulp and paper industry, Wikipedia (Web Page) <https//en.wikipedia.org>wiki>Pulp_and_paper_industry>; Australia’s Wood and Paper Industry, Australian Government, Department of Agriculture, Water and the Environment  (Web Page) < Pulp and Paper Manufacturing, Australian Industry and Skills Committee (Web Page) <>

   Moreover, research shows that textiles used in clothing and bags such as viscose, rayon and modal are made from wood that is regenerated as cellulose fiber[7] and the literature unanimously considers textiles as one of the most promising markets for emerging wood-based products[8].

   [7] Dissolving pulp, fabric, Bioeconomy, published 4.6.2014 (Web Page) < Canadian Journal of Forest Research, 2018, 48(12): 1417-1432 (Web Page) <>

   The ordinary signification of WOOD PAPER COMPANY in Australia to persons who will purchase, consume or trade in clothing and/or bags is that of a company that produces wood and paper based products and the use of the phrase in connection with clothing and/or bags is a direct reference to the nature and quality of these goods.  

2. I am not satisfied that the Trade Mark is inherently adapted to distinguish the Applicant’s designated goods from those of others. The phrase WOOD PAPER COMPANY is one that other traders are likely to think of and desire to use. Accordingly, section 41(4) of the Act applies.

3. The Applicant did not provide any evidence of use and therefore the ground for rejection cannot be overcome. However, for completeness I will respond to the Applicants arguments below.

Other registrations    

1. The Applicant also makes submissions regarding the state of the Register in terms of various other word trade marks achieving registration apparently without the need to rely upon evidence of use. As to the Register being a gauge as to the kinds of trade marks the Registrar considers registrable, I turn to the reference in Ocean Spray wherein Wilcox J disregarded evidence of other registered trade marks, stating:

That evidence should be disregarded, for the reasons expressed by Jacob J 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 Marks [1996] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence[9].

[9] Ocean Spray Cranberries Inc v Registrar of Trade Marks (‘Ocean Spray’)[2000] FCA 177;47 IPR 579,[35].

1. I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Trade 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.

Overseas acceptance

1. I note that the Applicant’s Trade Mark has been accepted in the United Kingdom, the European Union and the United States. While the existence of registrations in jurisdictions other than Australia is relevant and has been taken into account, I am not satisfied that the existence of these registrations sheds significant light on the capacity of the Trade Mark to distinguish the goods in Australia.

Presumption of registrability

1. The Applicant submits that the statutory presumption of registrability in section 33 of the Act applies.

2. Under section 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. In other words, as per Sundberg J in Chocolaterie Guylian, ‘a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists[10]’.

   [10] Chocolaterie Guylian N.V v Registrar of Trade Marks [2009] FCA 892, [16].

3. The enquiry here is on what is ‘wrong with the mark[11]’ and I consider, on the balance of probabilities, that the nature of the Trade Mark precludes it from ‘standing on its own feet[12]’ in the market.

   [11] Trade Marks Manual of Practice and Procedure, Part 22, 2.2.

   [12] ‘Weldmesh’ Trade Mark [1966] RPC 220, [226].

4. To conclude, while I find that the trade mark is to some extent inherently adapted to distinguish the Goods, the Applicant 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 section 41(4) of the Act.

Decision

1. Section 33 of the Act relatively provides:

Section 33. Application accepted or rejected

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

(a) the application has not been made in accordance with this Act; or

(b) there are grounds under this Act for rejecting it.

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

(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this Act; or

(b) there are grounds under this Act for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

1. Under section 33 of the Act, I must accept the Trade Mark application unless there are grounds under the Act for rejecting it. In this matter I am satisfied that there is a ground under the Act for rejecting it.

1. I therefore reject Trade Mark application 1920532.

Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
10 February 2020