Re Trade mark application number 1958479 (7, 16) - MLP - in the name of Miyakoshi Printing Machinery Co Ltd

[2020] ATMO 79

TRADE MARKS ACT 1995

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

ReTrade mark application number 1958479 (7, 16) – MLP – in the name of Miyakoshi Printing Machinery Co Ltd

Delegate:                 Robert Wilson

Representation:       Applicant: MDP Patent and Trade Mark Attorneys Pty Ltd

Decision:                   2020 ATMO 79

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 41 – trade mark potential acronym – no ordinary signification – trade mark inherently adapted to distinguish – application accepted

Background

1. On 27 September 2018 Miyakoshi Printing Machinery Co Ltd (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:

1958479

Convention Priority Date:

3 September 2018 (Japan 2018-110527)

Goods:

Class 7: Offset printing machines and parts thereof; Ink jet printing machines and parts thereof; Label printing machines and parts thereof; Printing or bookbinding machines and apparatus

Class 16: Label printing machines and parts thereof

(‘the Applicant’s Goods’)

Trade Mark:

MLP  (‘the Trade Mark’)

1. Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

2. The application was examined as required by s 31 and on 19 October 2018 the examiner issued an adverse report. The examiner indicated his view that there was a ground for rejecting the application under s 41 on the basis that MLP is ‘an acronym for the words Multi-lane printing/printer or Multi-layer printing/printer. … This indicates that your printers are multi-lane printers or multi-layer printers’. The Applicant responded to the report indicating its view that the Trade Mark is inherently adapted to distinguish. The Applicant’s response was prepared and filed by the Applicant’s representatives MDP Patent and Trade Mark Attorneys Pty Ltd. The examiner was not swayed and issued a second adverse report. In that report the examiner indicated that MLP is also an acronym for ‘Monochrome Laser Printers and some other abbreviations’. The Applicant responded to the second report with further submissions and some evidence of use. The examiner remained unmoved by the submissions and considered that the evidence provided was insufficient to overcome the ground for rejection; a third adverse report was issued. The Applicant again responded, following which a fourth adverse report was issued by the examiner.

3. On 15 January 2020, the Applicant requested to be heard and a hearing was scheduled for 4 March 2020.  As a delegate of the Registrar of Trade Marks, I was charged with the responsibility of deciding the matter. In the end, the Applicant decided to rely on written submissions. Written submissions were prepared and filed by the Applicant’s representative on 21 February 2020. The Applicant requested that I consider those submissions along with the responses made by the Applicant during examination.

   The Law in Respect of s 41

4. 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).

5. The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

   The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend 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 connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire.[1]

   [1] (1913) AC 624, 634-5.

6. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

   [W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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.[2]

   [2] [1964] HCA 55, [5] (‘Clark Equipment’).

7. More recent authority is to be found in Cantarella Bros v Modena Trading.[3] In that case the High Court indicated that the test for distinctiveness is a two step process. The first step being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods, then having determined the answer to that question to consider the likelihood of the sign being needed by other traders.

   [3] [2014] HCA 48.

   The Manual

8. The Trade Marks Office Manual of Practice and Procedure (‘the Manual’) is a manual which contains, inter alia, the examination practices to be adopted by examiners of trade mark applications. The Manual is available to be read by the general public online at IP Australia’s website. The Applicant referred to the Manual a number of times in its submissions: specifically, Part 22.8.3 which concerns Three or more letter trade marks. That part of the manual is reproduced in full below:

   Trade marks consisting of three or more letters are prima facie capable of distinguishing because there is likely to be less need for use of these combinations. However they will lack inherent adaptation to distinguish if they are well known acronyms or abbreviations used on or in relation to the good and/or services concerned.

9. It is important to understand that the Manual is not law; rather, it is a record of the current practices and procedures generally adopted by examiners when examining applications to register trade marks. The practices and procedures in the manual have arisen over many years and are modelled on the laws surrounding trade marks. As the law surrounding trade marks evolves, examination practice follows suit and the Manual will reflect those changes. It is proper, in making an assessment of the inherent adaptation to distinguish of the Trade Mark, that it is the Trade Marks Act 1995, its surrounding case law and the tests proscribed thereby that are followed and applied.

   The ordinary signification of the trade mark

10. The first step in making an assessment of the inherent adaptation of the Trade Mark is to determine the ordinary signification of the Trade Mark, in Australia, to persons who will purchase, consume or trade in the Applicant’s Goods. Those persons are purchasers and consumers of various types of printing machines and those persons who trade in such goods.

11. Acronyms[4] are in common usage throughout Australia (and the world). Many acronyms are familiar to the vast majority of the population, for example, NSW and LASER; however, the vast majority of acronyms are used only within particular industries, fields of endeavour and organisations. The Trade Mark consists of three letters. This is a common form for acronyms and an assumption that the Trade Mark is an acronym is not an unreasonable one. The Applicant has indicated that, from its point of view, the Trade Mark is an acronym for Miyakoshi Label Printer. If this was the only meaning of the Trade Mark the examiner would, quite likely, not have raised a ground for rejection of the application. However, a trade mark may have a number of ordinary significations. That the Applicant coined the Trade Mark for its purposes does not restrict its ordinary signification to the meaning determined by the Applicant. An enquiry into other possible ordinary significations is appropriate.

    [4] I note that there is some disagreement over the meaning of the term acronym. For the sake of simplicity ‘acronym’ used here includes abbreviations made up of individual letters but which do not themselves form words. Compare UNESCO and Benelux with ATM and TNT.

12. It is not possible, of course, for examiners to be personally aware of all the acronyms used in all fields of endeavour etc. Where a trade mark is potentially an acronym, it is usual practice for the examiner to research this possibility. One tool examiners use for this purpose is a website at < The results of searches made on that website can be filtered by some broad areas, for example, Information Technology and Science & Medicine. The examiner searched for MLP on the website and then filtered the results to Information Technology. The initial search returned 62 results and after filtering 16 results for MLP as an acronym remained. The first result in the list indicates that MLP is an acronym for ‘Mono Laser Printer (computer product)’. This is, on the face of it, a highly relevant result considering the Applicant’s Goods. The remaining results have no apparent connection to the Applicant’s Goods. I note that ‘multi-lane printer’, ‘multi-lane printing’, ‘multi-layer printer’ and ‘multi‑layer printing’ do not appear in the list. The result of this research is not sufficient, on its own, to determine the ordinary signification of the Trade Mark. Further research is necessary.

13. A search I carried out of the internet for ‘MLP printing’ returns no relevant results on the first page: those being almost exclusively related to My Little Pony. The second page of results includes three relevant results including links to ‘Kortho Hotprinter MLP (Multi-Lane-Printer)’, ‘Bell-Mark Easy Print MLP’ and ‘MLP Series Portable Printers’. When the second of those results is followed there is no explanation of what MLP stands for although in the product description it is stated that ‘The Bell-Mark Easy Print MLP offers multi-lane thermal transfer traversing head’. The third of the results refers to a Printek MLP-35 Mobile Printer. Although it may be, there is no indication on the page that the MLP-35 is a Mono Laser Printer or a Multi-Lane-Printer: MLP-35 may simply be a model number. Relevant results were few and far between on the following pages of the search. A search of the internet for ‘MLP printer’ was no more enlightening.

14. A search of the internet for ‘mono laser printer’ returned a large number of results. A very small number of the results followed showed use of MLP to mean Mono Laser Printer, for example, one result lead to a page which included the title ‘What You Will Learn About Monochrome Laser Printers (MLP)’.

15. A search of the internet for ‘“multi lane printer” mlp’ returned a total of 12 results. This would seem to be quite a small number in the scheme of things. All but two of those results were references to the Kortho Hotprinter MLP (Multi-Lane-Printer) mentioned above. The remainder were a reference to the Bell-Mark Easy Print MLP mentioned above.

16. The Applicant submitted that the research carried out by the examiner ‘is not sufficient to show either that the mark is a well-known acronym or abbreviation’. On the basis of my own research, I am inclined to this view. The search results discussed above do not show sufficient use of MLP, as an acronym in connection with goods of the nature of the Applicant’s Goods, to satisfy me that MLP has any ordinary signification to any significant number of persons who will purchase, consume or trade in those goods.

17. The conclusion which follows from the above is that the Trade Mark is inherently adapted to distinguish. If there were any doubt about this, the Applicant would, in this case, be entitled to rely on the presumption of registrability of its Trade Mark.[5]

    [5] Registrar of Trade Marks v Woolworths (1999) 45 IPR 411, 422-23 [32].

    Decision

18. I am not satisfied that there are grounds for rejecting the application; accordingly, I accept the application.

    Robert Wilson
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    12 May 2020