Re Ziff Communications Company

[1993] ATMO 39

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re: Application number 482719 to register a trade mark in the name of Ziff Communications Company

Background

This issue arises out of the lodgement, on 4 March 1988, of an application to register the expression PC COMPUTING as a trade mark in respect of "printed matter; publications", in Class 16 in the name of the above applicant.

In response to examiner's objections under sections 24 and 25 of the Act, the applicant submitted evidence of use in order to show acquired distinctiveness.  In the face of the examiner's continuing objections that the mark lacked any inherent distinctiveness, the applicant requested a hearing of the issue.  This was before me in Canberra on 26 March 1993 and the applicant was represented by Ms Catherine Chant of Davies Collison Cave, Patent and Trade Mark Attorneys of Sydney.

The submissions

Ms Chant opened by directing my attention to the sales of the magazine bearing the trade mark throughout Australia and the use that the mark has accordingly had.

Ms Chant continued by referring to American Screw Co.'s Appn [1959] RPC 344 and argued that the mark is not apt to describe the applicant's goods. If it is not registrable in terms of section 24(1)(d) of the Act, it is, submitted Ms Chant, registrable in terms of section 24(1)(e).

It was further submitted by Ms Chant that, in terms of Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511; Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417; and, the Blue Paraffin decision [1977] RPC 473, there is some inherent adaptation in the trade mark to distinguish the goods of the applicant.

The balance of Ms Chant's submission was basically reiteration of the above mentioned precedents and a listing of some prior acceptances by the office which she believed tends to demonstrate that her client's mark is acceptable.

Discussion

Part A

I am not happy in following cases such as American Screw, which give the British approach to the interpretation of their Act.  When the Australian courts have set out the tests for registrability so clearly and admirably, I cannot see any reason for adopting the course that Ms Chant would have me follow: in fact I can only presume that she would have me so do because of her client's obvious difficulties with the registrability of its mark in terms of the Australian Act and its administration.

In Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190, Dixon CJ stated that the test, for direct reference, must lie in the probability of ordinary persons understanding the words in their application to the goods as describing or indicating or calling to mind either their nature or some attribute they possess. The ordinary person was considered to be, in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175, at 184; and, in Bausch & Lomb Inc v Registrar of Trade Marks (1980) 28 ALR 537, at 542, as the person having some interest or expertise in the relevant section of the market.

Accordingly, I consider that the ordinary person is here the individual who has some expertise or interest in PC computers; he or she probably uses one at work and/or has one at home and would know what a PC computer is.  I cannot think of a title of a magazine, or of a trade mark, that has a more direct reference to magazines about PC computers than does PC COMPUTING: bringing in, as it does, an inference of not only dealing with the subject matter of PC computers, but also things to do with PC computing such as software, hardware, peripherals and so on.

I am at a loss to understand Ms Chant's submissions that a word might have direct reference and yet registrable in terms of section 24(1)(e).  Having found that the mark has direct reference in terms of section 24(1)(d) of the Act, it must be automatic that the word lacks the inherent distinctiveness to be registrable in Part A of the Register under section 24(1)(e).  It is fundamental to a basic appreciation of Part A registrability to understand that while it does not of necessity follow that a non-distinctive mark has direct reference (for example MERRY CHRISTMAS), it does automatically follow that any word that has direct reference is not distinctive. 

Accordingly, the mark is not prima facie registrable in Part A of the register.

Part B

As to whether the mark is prima facie registrable in Part B of the Register, I refer to Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 513 where Kitto J noted that it was necessary to inquire not only as to acquired distinctiveness but also as to the inherent fitness of the mark for the purpose of distinguishing the applicant's goods from those of others.

The inherent fitness of a mark is its inherent distinctiveness.  If a mark has no inherent distinctiveness, no amount of distinctiveness in fact (ie. use) will render it registrable because the primary signification of the word, or words, that constitute the mark does not change and cannot change through use, nor can the need for other traders to use them as a bona fide description of their goods.  (See Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417).

The attorney in her submissions has directed me strongly to section 10(1) of the British Act and the various interpretations of it in CHUNKY Trade Mark [1978] FSR 322 and BLUE PARAFFIN Trade Mark [1977] RPC 473. I think that these cases are a very good illustration of the fact that the British and Australian tests for registrability in Part B appear to be different and that the fact of registration, if it has been demonstrated in Britain, (which here it has not) is only indicative that a mark might be similarly registrable in Australia. In CHUNKY and BLUE PARAFFIN part of the reason for allowing those marks was, apparently, that they were considered to be, irrespective of their ordinary meanings, relatively novel or unusual in their trades and that hence the inherent nature of the mark had changed through use.  Following on from the WELDMESH Trade Mark [1966] RPC 220, it was not thought at that stage in Britain that marks that were registrable in Part B had to be eventually registrable in Part A; certainly, the British courts had arrived at a different conclusion as to the meaning of the phrases "adapted to distinguish" and "capable of distinguishing" than did the Australian courts when considering the phrases "inherently adapted so as to distinguish" and "capable in fact of distinguishing the applicant's goods" . Further, it might be argued that the construction of the British Act is different from ours and is such that the test applied might, by the use of the words '... subject to limitations ...' be viewed as anticipating the effects of registration, which the Australian Act does not do.. The House of Lords, later, in the YORK Trade Mark [1984] RPC 231, stated that marks will not be allowed in Part B unless they be eventually registrable in Part A. Hence, the decisions relied on by the attorney must be read down in view of the later YORK decision, the differences in the Acts in question and the differences in the way that they have been applied.

The fact that the mark WHOPPER was not shown to be used by any other trader in relation to hamburgers was simply not material in the Burger King decision, supra.  In fact, the court stressed the fact that the question should be decided on the ordinary English meaning of the word; hence, the dicta that the attorney wishes me to follow or apply from CHUNKY and BLUE PARAFFIN has never been applied in our courts and is not being applied in our courts.  For the reasons given in the prior paragraph, I would be loathe to place any great reliance on British case law relating to this area prior to York and would be fairly circumspect about any following that case.

In short, there appears to be some doubt as to whether the case law on which the attorney rests her submissions is still good in the jurisdiction where it occurred, which is not ours, and, in any case, was not followed in ours.  Again, there are much more reliable guide-lines to be adopted from within our own jurisdiction.

In terms of these guide-lines, I consider that if one is selling magazines the subject matter of which is PC computing, there cannot be a much more obvious and natural trade mark than PC COMPUTING and that the mark, accordingly, has no inherent distinctiveness.  I would further observe that, if the mark is not one hundred percent non-distinctive of the goods in question, on account of its direct reference to the character or quality of the goods, then it is confusing and deceptive in terms of section 28(a) of the Act and should be also refused if the magazines' contents are not as described by the mark.  I therefore refuse to accept application 482719.

T.  Williams
Hearing Officer
Trade Marks Hearings

May 1993