Re: Trade mark application number 2080292 (classes 12, 21, 35) - Bottles of Australia in the name of Plaspro Enterprises Pty Ltd

[2021] ATMO 77

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2080292 (classes 12, 21, 35) – Bottles of Australia - in the name of Plaspro Enterprises Pty Ltd

Delegate:

Nicholas Barbey

Representation:

Applicant: One IP International Pty Ltd

Decision:

2021 ATMO 77

Trade Marks Act 1995 (Cth) – section 33 proceeding – ground for rejection under section 41 – trade mark not capable of distinguishing – evidence insufficient – amendment to specification – trade mark application accepted

Background

1. Plaspro Enterprises Pty Ltd (‘Applicant’) filed an application to register a trade mark on 8 April 2020. The current details of the application are reproduced below:

   Trade Mark:  Bottles of Australia (‘Trade Mark’)

   Application Number:  2080292

   Priority Date:  8 April 2020

   Specification:  Class 12: Bottle carriers for bicycles; Water bottle cages and water bottles for bicycles, sold together as a kit; Water bottle cages for bicycles

   Class 21: Anti-drip devices for bottles; Bottle buckets; Bottle cradles; Bottle or can carriers for domestic use; Bottles; Drip preventers for bottles; Plastic bottles; Water bottles (containers); Drinking containers; Holders for drinking vessels

   Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means); Advertising; Sales promotion (for others); Business administration; Product marketing; Demonstration of goods for advertising purposes

   (‘Claimed GS’)

   Endorsement:  It is a condition of registration that the trade mark will only be used in respect of goods produced in, and services relating to, Australia

2. The application for the Trade Mark was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and a first examination report raising grounds for rejection under ss 41 and 43[1] of the Act issued to the Applicant on 8 July 2020.

   [1] During the course of correspondence between the Applicant and the examiner, the Applicant overcame the s 43 ground for rejection by consenting to add the endorsement to the application’s details which appears at [1] of this decision.

3. The s 41 ground for rejection was particularised as follows:

   Your trade mark is BOTTLES OF AUSTRALIA.

   BOTTLES is a descriptive term that indicates the goods and services that your trade mark relates to. AUSTRALIA indicates the geographic context of your goods and services. Therefore your trade mark as a whole indicates that your goods and services are or are in relation to BOTTLES that are available in, from or in relation to AUSTRALIA, that is BOTTLES OF AUSTRALIA. Your trade mark is therefore not able to distinguish your goods and services from the similar goods and services of other traders.

   Other traders should be able to use BOTTLES OF AUSTRALIA or words so nearly resembling in connection with similar goods and services.

1. In response, the Applicant submitted evidence of use to overcome the ground for rejection. The evidence consisted of a statutory declaration made on 1 June 2020 by Adem de Manincor, director of the Applicant, with Annexures A to G (‘De Manincor 1’). De Manincor 1 states that the Trade Mark was first used by the Applicant on 1 February 2018 and the target market for the Claimed GS is the ‘manufacturing area’. According to De Manincor 1, the goods provided by the Applicant are offered nationwide and the Trade Mark has been promoted extensively.

2. Unpersuaded by the evidence filed, the examiner issued a second examination report maintaining the s 41 ground for rejection. Further and better particulars were sought regarding the nature and extent of the Trade Mark’s use. To address this, the Applicant filed a second statutory declaration made on 20 August 2020 by Adem de Manincor with Annexures A to E (‘De Manincor 2’). De Manincor 2 expands on the information disclosed in De Manincor 1, by explaining that the Applicant purchased the ‘Bottles of Australia business’ from Bottles of Australia Pty Ltd (‘Prior Owner’) on 8 February 2018.[2] The Prior Owner’s trade mark portfolio included several Australian trade marks incorporating the words ‘Bottles of Australia’[3] and was assigned to the Applicant as part of this purchase.

   [2] De Manincor 2, [5].

   [3] See Australian trade mark numbers 1365357, 1365359, 1365361 (shape trade marks incorporating the words ‘BOA BOTTLES OF AUSTRALIA’) and 773050 (‘BOA BOTTLES OF AUSTRALIA’ logo). I note only Australian trade mark number 1365361 remains registered as at the date of this decision.

3. According to De Manincor 2, the Prior Owner has continuously used ‘Bottles of Australia’ in relation to the Claimed GS since 1989.[4] The Trade Mark has also been advertised on a website accessible from the domain name bottlesofaustralia.com.au (‘Website’) since 2004 as well as on social media pages since 2015. Reference is also made to a Google® search for the Trade Mark which displays more than 1,320,000 results. The declarant points out that the top results from this search relate to the Trade Mark.[5] Finally, the declarant claims that the ‘Trade Mark has obtained a substantial reputation across Australia and the World for water bottles and other related goods and services’.[6]

   [4] De Manincor 2, [8].

   [5] Ibid [11].

   [6] Ibid [14].

4. The examiner was unconvinced by the evidence disclosed in De Manincor 2. It was noted that particulars such as volume of sales, revenue and use of the Trade Mark in relation to all of the Claimed GS had not been demonstrated. Consequently, the s 41 objection was maintained. In reply, the Applicant requested to be heard by way of written submissions.

5. A hearing was scheduled and the Applicant was invited to file further submissions and/or evidence. The Applicant availed itself of this opportunity and filed submissions (‘Submissions’). The matter has now been allocated to me, as a delegate of the Registrar of Trade Marks, for determination.

6. At the outset, I note that the ground for rejection must be considered afresh and the following discussion is not a review of the examiner’s decision. I am also cognisant that s 33 of the Act embodies a presumption of registrability, which provides that the Registrar must accept an application for registration unless it is satisfied that there are grounds under the Act for rejecting it or the application has not been made in accordance with the Act.

7. Additionally, De Manincor 1 and De Manincor 2 each contain a blanket statement that their contents are confidential. Claims of this nature are unhelpful given a substantial portion of each statutory declaration discusses publicly accessible information. Nevertheless, I acknowledge the Applicant’s interests in preserving its confidential information. However, the Registrar must provide reasons for her findings. In discharging this duty, information claimed to be confidential may inevitably require discussion. This is particularly so when no effort has been made by the Applicant to identify the information alleged to be confidential. Accordingly, where such discussion is unavoidable, broad non-specific statements will be used to minimise the potential risk of divulging any commercially sensitive information.

Section 41

1. Section 41 of the Act relevantly provides:

   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.

1. To determine the merits of the s 41 ground for rejection, the extent of the Trade Mark’s inherent adaptation to distinguish the Claimed GS must be considered. This is assessed:

   [B]y 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.[7]

   [7] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).

2. The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[8] indicated that the test for distinctiveness under s 41 of the Act is a two-step process. First, the ordinary signification of the trade mark, in Australia, to persons who will purchase, consume or trade in the goods must be deduced.[9] Once the ordinary signification is established, consideration must then be given to whether other traders might legitimately desire to use the trade mark for the sake of its ordinary signification in respect of the same or similar goods. Although formulated in the context of goods, this process has equal applicability to services.

   [8] [2014] HCA 48 (‘Cantarella’).

   [9] Ibid [71] (French CJ, Hayne, Crennan and Kiefel JJ).

3. The Submissions did not press any targeted arguments regarding the ordinary signification of the Trade Mark. Indeed, the alleged descriptive nature of the Trade Mark was implicitly accepted as the Submissions focused on the evidence filed. The Submissions adopted the position that the ‘primary meaning of the sign [has] been displaced to the extent that, it denotes the Applicant’s goods and services’.[10] However, the Submissions did not engage with nor did they attempt to address what the ‘primary meaning’ of the Trade Mark actually is.

Ordinary signification

[10] Submissions, [26].

1. The Trade Mark is comprised of three well-known English words depicted in plain letters. The word ‘bottles’, being the pluralised form of ‘bottle’, refers to a portable container for holding liquids.[11] The word ‘of’ is a preposition used to indicate origin[12] and ‘Australia’ refers to a geographical location.[13] When arranged in the applied for sequence, ‘Bottles of Australia’ has a natural ordinary signification which describes a product and its origin. That is, bottles that originate from, are sold in or otherwise relate to Australia. This conclusion is reinforced by the Applicant’s promotional material which states ‘[o]ur bottles are, as the name suggests, proudly designed and made in Australia’.[14]

   [11] Macquarie Dictionary (online at 6 July 2021) ‘bottle’ (def 1) may be defined as ‘a portable vessel with a neck or mouth, now commonly made of glass, used for holding liquids’.

   [12] Macquarie Dictionary (online at 6 July 2021) ‘of’ (def 2) may be defined as ‘derivation, origin, or source: of good family; the plays of Shakespeare’.

   [13] Macquarie Dictionary (online at 6 July 2021) ‘Australia’ (def 1) may be defined as ‘the continent south-east of Asia, lying between the Indian and Pacific Oceans; the smallest continent in the world. 7 614 500 km²’.

   [14] See screenshot dated 19 January 2008 contained in Annexure D to De Manincor 2 (emphasis added).

2. Accordingly, the ordinary signification of the Trade Mark in relation to the Claimed GS is readily apparent. In the context of bottles and bottle accessories, it describes the goods as either being, or for use associated with, bottles that originate from or are related to Australia. In relation to the services, the Trade Mark describes the subject matter of all but one of the services claimed. For example, it describes the retailing and wholesaling services as being the retail and wholesale of bottles that originate from or are related to Australia. Similarly, the Trade Mark describes the advertising, marketing and sales promotion services as being in respect of such bottles.

3. In my assessment, the only service for which the Trade Mark does not have a descriptive signification is ‘business administration’. Services of this nature broadly refer to the administration of a commercial enterprise including the oversight and supervision of business operations. Evidently, ‘Bottles of Australia’ does not describe the subject matter, quality or some other characteristic of this service.

Other traders

1. In accordance with Cantarella, the next step involves determining whether other traders would legitimately desire to use the Trade Mark for the sake of its ordinary signification in respect of their own goods and/or services.

2. The Trade Mark is for the plain words ‘Bottles of Australia’. It does not contain any device element and is devoid of any other embellishment. The words ‘Bottles of Australia’ are an apt way to describe the goods as being bottles or bottle accessories which originate from or are otherwise related to Australia. Equally, the words describe the subject matter of the retail, wholesale, advertising, marketing and sales promotion services. On this basis, I am satisfied the Trade Mark is an expression that other traders would legitimately desire to use to describe their own similar goods and/or services.

3. In my consideration, the Trade Mark directly describes the bottles claimed as well as the subject matter of the retail, wholesale, advertising, marketing and sales promotion services. As such, the Trade Mark is not to any extent inherently adapted to distinguish these specific goods and services. With respect to the remaining bottle accessories, such as the holders and drip preventers, the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish these goods. This is because these goods are not bottles but rather are for use in relation to same. Ordinarily, the question of whether or not the Trade Mark falls foul of either s 41(3) or s 41(4) is significant because this affects the nature and scope of the evidence which may be considered. However, in the present matter, nothing turns on this distinction due to the nature of the evidence filed by the Applicant which I now turn to consider.

Evidence of use

1. The Submissions contend that the Applicant is ‘one of the market leaders in the water bottle and related industry and is known and recognised by the [Trade] Mark, in its word form’.[15] It is claimed that the Trade Mark has acquired a significant reputation amongst Australian consumers given it has been used continuously since 1989. To support this, evidence in the nature of screenshots of the Website and examples purporting to show the Trade Mark in use were provided. Having considered the evidence in its entirety, I am satisfied that the Trade Mark does not and will not distinguish the Claimed GS for the following reasons.

   [15] Submissions, [28].

2. As a preliminary observation, I note that several low-resolution images were provided in Annexures E to G of De Manincor 1. Such evidence is of low probative value given it is difficult to discern a) what trade mark is being used, b) the goods and/or services being offered and c) when the purported use occurred. I further note several different trade marks appear throughout the evidence filed. These include:

Annexure A to De Manincor 1	Annexure G to De Manincor 1	Annexure C to De Manincor 2
Annexure D to De Manincor 2

1. I acknowledge that a trade mark’s appearance may vary over time given brands are generally refreshed to adapt to changes in the marketplace. In this context, I accept that the inclusion of the rounded rectangular border (as shown above in Annexure A to De Manincor 1) constitutes an addition that does not substantially affect the Trade Mark’s identity. However, the presence of additional material such as the letters ‘BOA’ would, in my assessment, substantially affect the identity of the Trade Mark. The salient point being the former constitutes use of the Trade Mark whereas the latter would not.[16] To this end, the screenshots of the Applicant’s social media pages demonstrate consistent use of trade marks incorporating the letters ‘BOA’ and not the Trade Mark as applied for.

   [16] Trade Marks Act 1995 (Cth) s 7(1).

2. The Applicant’s ‘annual turnover in relation to the sale of the Trade Mark Owner's goods/services using the [T]rade [M]ark’ is alleged to be significant.[17] However, the annual turnover is not particularised as to what goods and/or services it pertains to. For example, 95% of the turnover may relate to one particular good and 5% of the turnover may relate to the remaining goods and services claimed. Without contextualisation, little can be reliably deduced from this isolated figure. Notably, annual turnover from previous financial years have not been disclosed despite the Trade Mark having been allegedly used since 1989. Moreover, the Applicant has only put forward a single invoice dated 26 May 2020.[18] At its highest, this invoice demonstrates use of the Trade Mark in relation to retail services for ‘Ecolab 750ml Viva HDPE BTL’ products. The invoice does not demonstrate use of the Trade Mark for the residual goods and services claimed.

   [17] De Manincor 1, [12].

   [18] See Annexure A to De Manincor 1.

3. The Submissions further assert that the Applicant has invested a moderate amount on ‘advertising and promoting the [T]rade [M]ark to the public and consumers’.[19] However, the evidence is silent as to what time period this expenditure relates to and, tellingly, no explanation or meaningful examples have been provided in relation to how the Trade Mark has been promoted. One screenshot from the evidence suggests that the Applicant may have attended exhibitions,[20] however, no details as to when, where and what these exhibitions relate to have been provided. Furthermore, the Applicant has not disclosed its sales volume nor elaborated upon where the Claimed GS are provided, aside from a general statement that they are provided throughout Australia and the world. In the absence of such particulars, it is difficult to ascertain the extent of use of the Trade Mark that is alleged to have occurred.

   [19] De Manincor 1, [10].

   [20] See Annexure C to De Manincor 2.

4. Finally, a significant portion of the evidence consists of screenshots of the Website (ranging from 2004 through to 2019) obtained from a Wayback Machine internet archive search.[21] This evidence is problematic for several reasons. First, the actual goods and/or services provided under the Trade Mark are unclear. For example, the 2015 screenshot of the Website indicates that the Applicant was providing ‘BOA’ branded sports bottles, ‘Earthtrail’ branded adventure bottles and ‘321 Water’ branded lifestyle bottes. However, the Trade Mark is notably absent. Second, the screenshots indicate one of the main services provided by the Applicant is custom printing, whereby the Applicant prints the brands of other traders onto drink bottles. Indeed, the screenshots of the Website contain statements such as ‘We specialise in custom-printed drink bottles for any business, school, or government department’.[22] Clearly this raises doubts as to whether the alleged reputation actually resides in the Claimed GS or in the provision of custom printing services. Third, many of the screenshots disclose incomplete captures of the Website and accordingly must be treated with a degree of caution because it is unknown what other material appears on the captured pages.

   [21] See Annexure D to De Manincor 2.

   [22] See screenshot dated 13 May 2018 in Annexure D to De Manincor 2.

1. Given the highly descriptive nature of the Trade Mark and the limitations of the evidence, I am not satisfied that the actual or intended use of the Trade Mark by the Applicant is such that by reason of this use (or other circumstances), the Trade Mark does (or will) distinguish the Claimed GS as being those of the Applicant. Therefore, a ground for rejection under s 41 of the Act applies.

Decision

1. Section 33 of the Act provides:

   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.

   Note: For this Act see section 6.            

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

   Note: For limitations see section 6.

   (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.

   Note: For applicant see section 6.

2. I am satisfied on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under s 41 of the Act.

3. On 28 July 2021, I notified the Applicant’s representative that it was my intention to reject trade mark application number 2080292 unless the Claimed GS were amended as follows:

   Class 12: Bottle carriers for bicycles; Water bottle cages and water bottles for bicycles, sold together as a kit; Water bottle cages for bicycles

   Class 21: Anti-drip devices for bottles; Bottle buckets; Bottle cradles; Bottle or can carriers for domestic use; Bottles; Drip preventers for bottles; Plastic bottles; Water bottles (containers); Drinking containers; Holders for drinking vessels

   Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means); Advertising; Sales promotion (for others); Business administration; Product marketing; Demonstration of goods for advertising purposes

4. On 2 August 2021, the Applicant’s representative informed IP Australia of the Applicant’s agreement to the amendments set out in [30] of this decision. The Claimed GS have been amended.

5. Accordingly, I accept for possible registration trade mark application number 2080292 for the amended specification as set out in [30] of this decision.

Nicholas Barbey

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

3 August 2021