Re Trade Mark Application number 1932928 (6, 8, 9, 21, 25) – WORKWEAR PROTECTIVE CLOTHING (Figurative) - in the name of Aldi Foods Pty Ltd

[2019] ATMO 174

TRADE MARKS ACT 1995

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

Re      Trade Mark Application number 1932928 (6, 8, 9, 21, 25) – WORKWEAR PROTECTIVE CLOTHING (Figurative) - in the name of Aldi Foods Pty Ltd

Delegate:

Nicholas Smith

Representation:

Applicant: Blake Knowles of Spruson & Ferguson

Decision:

2019 ATMO 174

Trade Marks Act 1995 (Cth) – Request to be heard under section 33(4) of the Trade Marks Act 1995 - s 41 considered – trade mark is not sufficiently inherently adapted to distinguish the designated goods – no evidence of use – trade mark application rejected

Background

On 11 June 2018, Aldi Foods Pty Ltd (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (‘Act’).

Application Number:

1932928

Filing Date:

11 June 2018

Goods:

Class 6: Non-electric cables and wires of common metal

Class 8: Tool belts

Class 9: Protective clothing (body armour); Ventilation suits; Shoes (Protective -); Boots for protection against accidents; Gloves for protection against injury; Safety gloves for protection against accident or injury; Disposable gloves for laboratory use; Knee-pads for workers; Welding helmets; Protective goggles; Electric cables and wires

Class 21: Gardening gloves

Class 25: Work clothes; Jumper suits; Work overalls; Coveralls; Pinafores; Jogging pants; Work shoes; Work boots; Underwear; Body warmers; Socks; Gloves; Caps with visors; Caps (headwear) (‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

The application was examined as required under s 31 of the Act. The application was initially accepted however on 16 November 2018 IP Australia issued a proposal to revoke acceptance and inviting the Applicant to provide submissions. The Applicant provided submissions on 14 November 2018 but they did not persuade the Principal Examiner and on 21 December 2018 IP Australia confirmed that the acceptance would be revoked.

On 14 January 2019 IP Australia issued an adverse examination report, identifying a ground for rejection pursuant to s 41 of the Act. The examiner stated (paraphrased) that the Trade Mark has as its main feature WORKWEAR PROTECTIVE CLOTHING which is an ordinary description of the type and purpose of the clothing claimed. Furthermore the manner in which the words are represented comprises an ordinary font in a border device which is not sufficient to provide the Trade Mark with sufficient inherent adaption to distinguish. Other traders should be able to use WORKWEAR PROFESSIONAL CLOTHING in connection with goods and services similar to the Applicant’s Goods.

On 16 August 2018, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. As a delegate of the Registrar of Trade Marks I heard this matter on 5 November 2019. Blake Knowles of Spruson & Ferguson, representing the Applicant, made oral submissions by telephone after having earlier provided me with an outline of written submissions (‘Applicant’s Submissions’) in accordance with the pre-hearing directions I had given. 

Legislative framework

Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. Section 17 of the Act defines a trade mark as:

What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable. Regarding the present application, the only ground for rejection identified is under s 41 of the Act.

Section 41 of the Act provides:

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.

Note:      For goods of a person and services of a person see section 6.

(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)        This subsection applies to a trade mark if:

(a)     the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)     the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)        This subsection applies 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.

Note 1:    Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: 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 (5) and 7(3) and section 8).

(5)        For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies]

In the present case the Applicant has provided no evidence of use of the Trade Mark. As such the ground for rejection under s 41 will apply if the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods from the goods of other persons, being the test in s 41(4). It is not necessary to conclude that the Trade Mark is not to any extent inherently adapted to distinguish, being the test in s 41(3).

In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to 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”: Cantarella at [59].

(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (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”: Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].

The Applicant has argued that the Trade Mark is inherently adapted to distinguish the Applicant’s Goods for the reasons summarised below:

• The Examiner was incorrect in applying the s 41 ground because the words WORKWEAR PROTECTIVE CLOTHING cannot be considered in isolation from the Trade Mark as a whole; as the Applicant is seeking registration of the Trade Mark as a whole.

•         Given the stylised nature of the Trade Mark it is not something that other traders would seek to use.  Furthermore as the Trade Mark contains a number of elements to create a visually striking whole it does not ‘nearly resemble’ any words that other traders would wish to use in connection with their own goods.  This includes the stylised words WORK WEAR, presented in a format where the words resemble a house with a peaked roof, the words PROTECIVE CLOTHING in contrasting smaller font underneath the words WORK WEAR, and a distinctive stylised bordered hexagon.  This combination creates a strong ‘badge’ like appearance, which allows the mark to act as a badge of origin.

•         The Applicant’s Goods are sold through supermarkets and its brands are displayed on labels and tags.  In this context the strong visual elements of the Trade Mark are those that would be first noticed by the consumer.

•         The Trade Mark has been registered in New Zealand and the United States for similar goods.  The Applicant refers to the decision in Unilever PLC in which the Delegate noted that if the matter approaches the borderline, it would be difficult to justify placing additional obstacles in the way of a trade mark that is already accepted in comparable jurisdictions in analogous circumstances.

•         The Applicant refers to a number of marks comprising dictionary words with limited stylisation, including Trade Marks 1744164 and 1575211 set out below that have been registered without having to provide evidence of acquired distinctiveness.

The process I am required to undertake is not a review of the examiner’s reasoning, rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. I am unpersuaded by the Applicant’s Submissions to the extent that they suggest that because the Trade Mark was initially accepted it should be accepted in this case; as noted above, my decision is made independent of any examiner’s reasoning, including both the initial examiner and the Principal Examiner who made the decision to revoke the trade mark.

Equally, while the Applicant can point to certain examples where this office has registered marks that consist of ‘descriptive word in distinctive font inside device’, such examples are isolated and I am not aware of all of the circumstances surrounding their acceptance or registration.  Furthermore, as conceded by the Applicant, each case must be considered on its own and each of the citations identified by the Applicant is materially different from the Trade Mark in wording, format, stylization or relationship between the descriptive words and the goods/services applied for.  In particular, with respect to the FITWEAR and BUBWEAR Marks referred to above, I consider that the words ‘workwear’ and ‘protective clothing’ are far more descriptive and in common use then either ‘fitwear’ or ‘bubwear’.  Finally I note the statement by Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks that ‘[A]lthough consistency in public administration is desirable, a public officer in not justified in persisting in error. 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’.

Finally, while I accept the principle outlined by the delegate in Unilever PLC, the first step is to reach an independent conclusion as to whether the Trade Mark is inherently adapted to distinguish; decisions made by other countries only being relevant, at best, in borderline cases.

The Applicant’s primary submissions as to whether the Trade Mark is inherently adapted to distinguish the Applicant’s Goods focus on the different elements of the Trade Mark, including the stylization of the words WORKWEAR PROTECTIVE CLOTHING and the hexagon device.  The Applicant submits that these elements, when considered as part of a whole, are sufficient to allow the Trade Mark to operate as a badge of origin.

While the Trade Mark is a composite mark, the primary features of the Trade Mark are the words WORKWEAR PROTECTIVE CLOTHING.  The fact that the words are placed inside a hexagon operates at best as a minor embellishment on the primary feature, similar to that identified in Blount Inc v Registrar of Trade Marks, referred to below.  While there is some stylisation of the words WORK and WEAR, with the letters increasing in size and then decreasing, such an effect is, in my view, minimal and the font does not otherwise appear to be particularly distinctive.  I do not agree with the Applicant’s Submissions that the level of stylisation of the words WORKWEAR PROTECTIVE CLOTHING is significant in any way.  The Trade Mark falls into the category of composite marks that consist of a word(s) surmounted by mere embellishments described by Branson J in Blount Inc v Registrar of Trade Marks:

In Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (1965) 120 CLR 285, Kitto J was required to consider “a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter “Y” is common to both, the whole being enclosed within a circle.” His Honour said of this cross device that it:

“...merely provides a fancy method of presenting the name ‘Bayer’, and it has no greater aptitude than has the name itself for distinguishing the proprietor’s goods from those of other people who happen to be known as ‘Bayer’.  It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which ... ‘would strike the eye and fix in the recollection.’”

On appeal to the Full Court of the High Court, Taylor and Owen JJ expressly agreed with the above approach of Kitto J to the Bayer cross device.  No member of the Court criticised his Honour’s approach.

By analogy, it seems to me that I must conclude that the particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability.  I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient…. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.  I find that the applicant's trade mark is not inherently adapted to distinguish the designated goods from the goods of another person.

The Applicant’s Goods consist primarily of clothing.  The ordinary signification of the words ‘workwear protective clothing’ in connection with the Applicant’s Goods is that the goods are protective clothing used for work.  This is a direct reference to the nature of the goods.  I also do not accept the Applicant’s Submissions that I should discount the aural impression provided by the mark, which is wholly descriptive; a trade mark on clothing can be used orally; for example in a corporate setting where a manager may seek to order a range of WORKWEAR PROTECTIVE CLOTHING for her staff. 

I find that other traders in the Applicant’s Goods may need to use a mark nearly resembling the Trade Mark, being the words WORKWEAR PROTECTIVE CLOTHING, in respect of their goods. As such I find that the Trade Mark is not sufficiently inherently adapted to distinguish the Applicant’s Goods from the goods or services of other persons. In the absence of any evidence of use, intended use or other circumstances s 41(4) of the Act applies and the application to register the Trade Mark must be rejected.

The Applicant, in its oral submissions, submitted that in the event that I was minded to find (as I have) that the Trade Mark was not inherently adapted to distinguish, that I instead allow the Trade Mark to proceed to registration with a condition or disclaimer to the effect that the Trade Mark provides no exclusive right to use the words WORKWEAR PROTECTIVE CLOTHING.  I decline to allow the Trade Mark to proceed to registration in this manner; such a disclaimer is not appropriate when, in this case I have found that the trade mark as a whole is not sufficiently capable of distinguishing the Applicant’s Goods from the goods of other traders to proceed to registration.

Decision

Section 33 of the Act relevantly provides:

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.

As I am satisfied that there is a ground for rejection under s 41(4) of the Act in relation to the Trade Mark, I reject the application to register the Trade Mark.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

10 December 2019