Red.com, LLC

[2022] ATMO 224

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1599738 (class 9) - RED – trade mark number 1827605 (international registration number 1332228) (class 9) - RED (stylised) - in the name of Red.com, LLC

Delegate:

Nicholas Smith

Representation:

Applicant: Corrs Chambers Westgarth

Decision:

2022 ATMO 224

Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) – ex parte proceedings under s 33 and reg. 17A.24 – grounds for rejection raised under ss 41 and 44– s 41 considered – trade marks are not to any extent inherently adapted to distinguish the designated goods – evidence of use insufficient – s 44 considered – s 44(4) evidence of use insufficient - trade mark application/application to extend protection rejected.

Background

1.  On 6 January 2014 and 21 September 2016 respectively Red.com, LLC (‘Applicant’)[1] filed applications to register the trade mark 1599738 and to extend protection to Australia of International Registration 1332228 (Australian Trade Mark Application No. 1827605), under the Trade Marks Act 1995 (Cth) (‘Act’) and the Trade Marks Regulations 1995 (Cth) (‘Regulations’).  The marks are detailed below, and I will refer to them collectively as the ‘Trade Marks’[2]:

[1] While ‘Holder’ is the technically correct reference in relation to IR 1332228, for ease of reading I have used ‘Applicant’ throughout the decision.

[2] Trade Mark 1827605 consists of the word ‘red’ with minor stylization.  It is substantially identical to the word mark RED.  In this decision when I refer to ‘Trade Mark’ in the singular I am referring to the word mark RED which incorporates minor variants such as Trade Mark 1827605.  

Trade mark nos.	1599738	1827605 (IR no. 1332228)
Filing date	6 January 2014	21 September 2016
Priority date	31 July 2013 (convention)	21 September 2016
Trade Mark	RED
Specification	Class 9	Class 9
Photographic equipment; cinematographic equipment; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact disks, DVD’s and other digital recording media; data processing equipment, computers; operating software (Collectively the ‘1599738 Goods’)	Digital still and motion cameras; digital cinema camera systems and accessories, sold individually or as a unit, comprised of cameras, camera lenses, flash memory cards, electronic memories, hard drives for video recorders, video monitors and flat panel display screens, grips and handles, all for use in the creation, storage, delivery, manipulation, recording, playback or viewing of video, film, photographs, and multimedia data; modular digital camera systems and accessories, sold individually or as a unit, comprised of cameras, camera lenses, electronic viewfinders, processing modules, imaging modules, flash memory cards, electronic memories, hard drives for video recorders, video monitors and flat panel display screens, all for use in the creation, storage, delivery, manipulation, recording, playback or viewing of video, film, photographs, and multimedia data; camera lenses; digital image sensors for digital still and motion cameras; electronic input/output modules for digital camera systems data transmission; batteries; digital video players and projectors; software for use in the compression and storage of video and audio in the field of digital still and motion picture filming, excluding software for color correction and color editing; all the foregoing not relating to baseball or softball or to a baseball or softball team, league, mascot or stadium (Collectively the ‘1827605 Goods’)[3]

[3] The 1599738 and 1827605 Goods are collectively referred to as the (‘Goods’) in this decision.

2. The applications were examined and, in respect of trade mark 1599738, the examiner raised ss 41(3) and 44 grounds for rejection in five adverse reports dated from 23 January 2014 to 16 April 2019. In relation to trade mark 1827605, objections were raised under s 41(4) in the first adverse report dated 24 March 2017 and ss 41(3) and 44 in four further adverse reports from 29 May 2018 to 17 April 2019.

3.  On 21 July 2022 the Applicant requested a hearing in relation to both trade marks.  The hearing was held by a delegate of the Registrar of Trade Marks on 5 October 2022.  That person was subsequently unavailable to decide the opposition, so it was allocated to me.

4.  Following directions, written submissions were received on 3 October 2022 in respect of both marks.[4]  Chris Sgourakis of Corrs Chambers Westgarth appeared for the Applicant at the hearing.  

[4] The Applicant filed two sets of written submissions in preparation for the hearing and I have had regard to both.

5.  In making my decision I have had regard to the Applicant’s written and oral submissions, including a full recording of the hearing, and the written record including the declarations of Jarred Land, the Applicant’s President, dated 6 March 2017 with Annexures JL-1 to JL-13 (‘Land 1’) and 16 January 2019 with Annexures JL-14 to JL-17 (‘Land 2’).  I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection. 

Evidence summary

6.  The Applicant was founded in 2000 and the name was coined because it is ‘a short and vivid name which is easy to remember’.  It ‘designs, manufactures and sells high performance digital photography and cinematography cameras’ and ‘associated digital cine camera products including lenses, display screens, rail components, batteries, chargers, data carriers, cables, modules and related hardware and software’, all centred around the word ‘RED.’   

7.  The Applicant has registered a large number of trade marks in Australia incorporating the word or syllable ‘RED’ mostly for goods in class 9.  The Applicant’s digital camera products are high-end, specialist niche products and have a high-price point, and Land 1 indicates that the Applicant’s camera products retail for prices such as US$49,500 and US$29,500.  

8.  The Applicant gives evidence that its products are often used for professional film productions, including very well-known Hollywood productions as well as photography projects for high profile magazines such as Vogue and Forbes. 

9.  The Trade Mark is depicted, either solus or as part of a broader RED brand, on all of the Applicant’s products, marketing material, on its website at as well as third party media and online forums.

10.     The Applicant has sold its digital cameras, accessories and related products in Australia since 2007 and as of the date of Land 1 (March 2017) over xxxx worth of products branded with the Trade Mark had been sold in Australia.  By the time of Land 2 (January 2019) this had increased to xxxx or xxxx separate products on a wholesale and retail basis.

Legislative framework

11. Section 33 of the Act and reg.17A.24 of the Regulations require that the Registrar must accept an application for registration or extension of protection unless satisfied that there is a ground for rejecting it. That is, ‘a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists’.[5] The relevant date of assessment for 1599738 is 31 July 2013, the convention priority date, for s 44 and 6 January 2014, the filing date for s 41 and for 1827605, the filing date (‘relevant date(s)’)[6] however evidence of use after those dates may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.[7]

[5] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [146] (Sundberg J). As also confirmed by the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 146.

[6] Apple Inc v Registrar of Trade Marks [2014] FCA 1304 [59]; (2014) 227 FCR 511 (Yates J).

[7] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

Section 41

12. Section 41 of the Act relevantly provides as follows:

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

13. 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:

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[8] (‘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:

[8] (1998) 40 IPR 498, 505 (Branson J).

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][9]

[9] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).

14.     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].[10]

[10] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

Is the Trade Mark to any extent inherently adapted to distinguish the Goods from the goods of other persons?

15. The Applicant concedes in its submissions that the Trade Mark lacks inherent distinctiveness but submits that the Trade Mark is to some extent inherently adapted to distinguish the Goods (that is, s 41(4) applies). It bases its submissions on the decision of the Full Court of the Federal Court in Telstra Corporation Limited v Phone Directories Australia Pty Ltd[11] (‘Yellow’).

[11] [2015] FCAFC 156 (Besanko, Jagot and Edelmann JJ).

16.     The Applicant submits that critical to the Court’s Yellow decision was the fact that YELLOW (the word and the colour) was synonymous with business directories in Australia and hence other traders, acting without improper motive, would wish to use the word YELLOW in a way likely to infringe if registered.  It then submits that because neither the colour nor the word RED has any significance in respect of the Goods that it is to some extent inherently adapted to distinguish.

17.     The Applicant is correct in that, in deciding the inherent adaptation of a word, the decision maker may consider evidence of the use of the word in the particular trade. Where it falls into error is its submission that because the decision in Yellow involved a finding that a colour synonymous with the goods in question had no inherent adaption to distinguish, the Registrar must conclude that a colour that is not synonymous with the specified goods must have some inherent adaption to distinguish.  This approach misunderstands the clear guidance of the legislation and the operation of previous cases.

18. It is sufficient to dispose of the Applicant’s submissions in this manner. Note 1 to s 41 clearly states that trade marks that consist of a sign ordinarily used to indicate a characteristic of a good or service are not inherently adapted to distinguish. The Trade Mark in question indicates that the goods are red in colour, which is a descriptive characteristic. Moreover, adopting the formulation in Cantarella, the ordinary signification of the Trade Mark is the colour red. It is entirely plausible that ordinary traders in the Goods may wish to use the word red to describe their goods – i.e., a ‘red camera’ and that they may wish to produce their goods in the colour red for an aesthetic or pragmatic reason. I consider that the Trade Mark is not to any extent inherently adapted to distinguish the Goods (that is, s 41(3) applies).

19. The Applicant, in its written submissions, has identified what it says are 5 registered marks (of the 800,000 registered marks on the Register) consisting of a colour word mark that were registered on the basis of s 41(4) or comparable provisions. I am unpersuaded by existence of these 5 marks on the Register.[12]  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’.[13]

[12] The Applicant in its oral submissions refers to two other colour marks, which again can be distinguished, one relating to services and another (Trade Mark No. 1304527) being registered for a much narrower, more specialized set of goods.

[13] (2000) 47 IPR 579, 590.

20. In the interests of completeness, I note that the Applicant submits that the stylisation of trade mark 1827605 provides sufficient distinctiveness for it to fall within s 41(4). I do not accept the submission. The stylisation of trade mark 1827605 is de minimis; that mark is substantially identical to the Trade Mark.   Trade mark 1827605 is not to any extent inherently adapted to distinguish the 1827605 Goods.  

21.     Nor do I accept the Applicant’s oral submissions that I should make a distinction in assessing distinctiveness between the word ‘red’ and the colour red on the basis that the word ‘red’ ‘looks like a brand’.  To refer to my example in the paragraph above, I am not persuaded that a consumer being told to ‘buy the red camera’ or ‘look for the red DVD player’ would conclude anything other than the term ‘red’ was being used in a descriptive sense.

Did the Trade Mark in fact distinguish the Goods?

Legal principles

22.     As the Trade Mark is not to any extent inherently adapted to distinguish the Goods, the Trade Marks must be rejected unless the evidence before me establishes that the Applicant has used the Trade Mark before the filing dates to such an extent that the Trade Mark does in fact distinguish the Goods as being those of the Applicant.  To establish that a sign which is not to any extent inherently adapted to distinguish does in fact distinguish typically requires evidence of extensive widespread use and exposure to the Australian market for that Trade Mark over a long period of time and this use must have occurred before the relevant date(s).

23.     Use as a trade mark is:

[U]se of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[14]

[14] Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19].

24.     The Applicant’s evidence as to its use of the Trade Mark is not insignificant, being use for 6 and 9 years at the relevant dates.  However, as the Delegate in Mount Everest Mineral Water Ltd cautioned:

It is convenient first to dispose of a myth: that is, given sufficient use, any sign might qualify as a trade mark and be registrable under the provisions of subsection 41(6).  This is not true as is stated in Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 (‘Go On ..’); implied in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘PERSIAN FETTA’); and discussed in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (TREAT’), where Jacob J said:

There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords.

A moment’s reflection reveals that a trader’s repeated use of an inherently unadapted sign for the sake only of its ordinary meaning serves solely to reinforce its ordinary meaning in the eyes of the public.  The word ‘soap’, used on ‘soaps’, is only descriptive and when used solely to describe the nature of the goods can never change its meaning.  Such a sign is incapable of taking on an additional meaning as indicating only the goods of one trader.  But that is not to state that a sign which lacks any inherent adaption to distinguish cannot take on another meaning as a trade mark and denote the goods or services of a trader.  The acquisition of this other meaning depends entirely on a number of factors including:

·     whether the sign is, effectively, the only ‘normal’ way to describe or identify the goods or services in question such that other traders are likely to require in good faith to want or need to use it, and,

·     whether the sign is the only, or the most appropriate, sign to use to denote the nature or origin of the goods.

·     The way the sign has been used by the owner;

·     whether the sign is used by other traders for the sake of its ordinary meaning;

·     how the particular market has been educated concerning that use; and,

·     how the market perceives that sign in denoting the goods in respect of which it is used: see Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241; (‘OREGON’) Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525; (2002) 56 IPR 452; [2003] AIPC 91-841 (‘Terracotta Colour’).[15]

[15] 2012 ATMO 65, [16]-[17].

25.     In Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks Yates J summarized the issue in these terms (in respect of s 41(6) of s 41 as it stood prior to the Raising the Bar legislation, which is equivalent to the current s 41(3):

Section 41(6) recognises that a sign may be descriptive but still distinctive. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297, Middleton J observed (at [60]) that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive. His Honour quoted the following observations of Lockhart J in Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 335-336:

The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re application of H N Brock & Co Ltd, for a trade mark (“Osowoolo”)and trade marks (“Orlwoola”) (1909) 26 RPC 683, 850, 854 (the Orlwoola case) and Re application of Joseph Crosfield & Sons Ltdto register a trade mark (“Perfection”) (1909) 26 RPC 837 (the Perfection case).

If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.

A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (supra) (at 857-858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.

Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the [identity] of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, par 25.8.[16]

[16] [2015] FCA 756; (2015) 114 IPR 81, [128].

26.     Most recently, in Primary Health Care Limited v Commonwealth of Australia the court made the following comments:

An essential characteristic of a trade mark is that it is used to distinguish the goods or services of a trader from the goods or services of other traders: s 17 of the TMA; E & J Gallo Winery v Lion Nathan Pty Ltd (2010) 241 CLR 144 at [42]. A trade mark may in fact distinguish goods and services, or it may not. If a trade mark is not capable of distinguishing designated goods or services, then it may be used but cannot be registered. If it is not registered, the owner does not acquire the monopoly on the use of the trade mark conferred under s 20 of the TMA.[17] 

…

As Yates J observed in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 at [34], mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. Whether the appellant used the word mark to distinguish the Services, and the extent to which it achieved distinctiveness, involved an evaluative judgment. The primary judge found that the appellant had used the word mark to distinguish its operation of its medical centres, but had not used the mark to distinguish the Services.[18] 

[17] [2017] FCAFC 174, [219].

[18] Ibid [373].

27. In summary when evaluating the evidence of the Applicant for the purposes of s 41(3)(b), I must consider whether it establishes that the Trade Mark has a new and secondary meaning different from its primary descriptive one and thus, at the relevant date, had ceased to be purely descriptive. Another way to look at it is whether consumers in the relevant market regard the Trade Mark alone as a badge of trade origin in the sense that they would rely upon that Trade Mark alone as an indication of trade origin for the Goods. In particular, I must look at:

• the way the Trade Mark has been used by the Applicant;
• how the particular market has been educated concerning that use; and
• how the market perceives the Trade Mark in denoting the goods in respect of which it is used.

28.     In evaluating the evidence and submissions of the Applicant I note that the Applicant is a producer of specialist, high-performance digital photography and cinematography cameras and accessories.  The Australian market for such products may be limited but that is not the relevant consideration.  Rather I must consider the impact of the Applicant’s use of the Trade Mark on the markets for which the Trade Marks are sought to be registered, namely the markets for the 1599738 Goods and the 1827605 Goods.

29.     The 1599738 Goods consist of a broad range of consumer goods, the market for which is virtually the entire Australian population.  Notwithstanding the esteem in which the Applicant is held I fail to see how an entity that had a total of xxxx sales between 2007 and 2018 (noting that the filing date of Trade Mark 1599738 is 2014) can establish secondary meaning in the Trade Mark at the relevant date.  To put it another way, I am unpersuaded that an ordinary consumer in January 2014 seeing a camera or DVD referred to using the word ‘red’ would think that the word referred to the Applicant; rather they would assume that the word referred to the colour of the physical product.

30. While the 1827605 Goods consist of a narrower range of goods than the 1599738 Goods the concern I have with the Applicant’s evidence and submissions remains the same. The Applicant’s evidence and submissions emphasise the Applicant’s use of the Trade Mark and reputation in the Applicant’s specialist market (high-end digital cameras and accessories). This is not the relevant requirement under s 41(3)(b). The Applicant seeks to register the Trade Mark for the 1827605 Goods which is a significantly broader range of goods than those sold by the Applicant. This market, for example, includes all potential purchasers of digital cameras and camera lenses. The requirement under s 41(3)(b) is a reputation (and hence a secondary meaning) in the Trade Mark in that broad market.

1. While the Applicant may, as a result of 9 years of trading in Australia (at the relevant date for Trade Mark 1827605) have had a reputation in the Trade Mark in respect of high end digital cinema cameras and accessories, I am not in any way satisfied that, given the highly descriptive nature of the Trade Mark, the consumers in the broader market for the 1827605 Goods regarded the Trade Mark alone as a badge of origin separate from its descriptive nature; i.e. that the mark uniquely identifies the goods and services provided by the Applicant, as opposed to a description of the colour of the physical products.  Most purchasers of digital cameras in Australia would not be aware of the identity of specialist producers of cameras with an average price point of over $20,000 and would see a reference to ‘red’ in connection with digital cameras as being a reference to the colour rather than as a badge of origin.  The Applicant’s evidence does not show reputation in the Trade Mark in market for the 1827605 Goods, rather its reputation and esteem is limited to the market for the Applicant’s products.

   32. In my evaluative judgement, the evidence before me is insufficient to satisfy me that either of the Trade Marks has achieved distinctiveness in respect of any of the Goods at the relevant dates. I find that the applications to register the Trade Marks must be rejected under s 41 of the Act.

   33. Given my findings in respect of s 41 of the Act it is not strictly necessary to consider the s 44 ground however I will address the ground below.

   Section 44

2. The relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)              a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)             a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   35. To successfully reject the application pursuant to s 44 I must be satisfied of the requirements of s 44(1), i.e., that there is a trade mark registered by a person other than the Applicant that:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Goods (‘the third requirement’).

   36. In the event that each of these requirements is satisfied it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the mark.

   37. In relation to Trade Mark 1599738, the examiner raised a s 44 ground for rejection citing trade marks 824308, 1009165, 1496548 and 1743415. Trade mark 824308 has now been removed from the Register. With respect to trade marks 1009165 and 1496548 the examiner for Trade Mark 1599738 indicated that the ground for rejection based on these marks would be withdrawn on the basis that the specification to 1599738 be amended to be limited to Photographic equipment; cinematographic equipment. The Applicant has indicated a willingness to make such an amendment if necessary to obtain acceptance of the 1599738 Trade Mark. No such amendment has been made at this stage and given my finding in respect of the s 41 ground for rejection any such amendment would be moot.

   38.   Trade mark 1743415 was cited against both Trade Marks.  It consists of the word RED, with a priority date of 15 June 2012, registered for the following goods in class 9.

   Apparatus for recording, transmitting and reproducing data; telecommunications hardware and software; computer software for energy management; downloadable publications; DVDs and CD-ROMs, including pre-recorded DVDs and CD-ROMs; recorded media containing energy management related information and data; digital and magnetic devices able to store and/or process information, including those containing integrated circuit cards and/or memory chips; gas meters; gasometers; gas testing instruments; gas apparatus in this class; gas monitoring instruments; gas testing instruments; electrical equipment for the generation and transmission of electricity; transformers (electricity); electric conductors; electric cables; meters; regulators; switches, monitors, controllers, filters, transformers, circuit breakers, and capacitor banks all for evaluating, monitoring, managing, controlling, supplying, converting, conditioning and testing energy operations, usage, power quality and energy efficiency; all the aforegoing provided as part of, in conjunction with or in relation to the supply of wholesale and retail gas and electricity

   39. The Applicant concedes that trade mark 1743415 satisfies the three requirements for s 44(1) and for completeness I consider the three requirements to be satisfied (‘Apparatus for recording, transmitting and reproducing data’ being similar goods to the various photographic goods for which the Trade Marks are sought to be registered). Rather the Applicant submits that the s 44 ground for rejection on the basis of trade mark 1743415 should be withdrawn due to prior use of the Trade Marks on the Goods (s 44(4) of the Act).

   40.   Having reviewed the evidence, I consider that the Applicant may be able to establish that it has continuously used the Trade Marks in respect of some of the Goods, such as digital cinema cameras, from a date prior to 15 June 2012.  However, the evidence does not establish prior continuous usage in respect of all the 1599738 and 1827605 Goods – for example there is insufficient evidence of continuous use in respect of digital video players and projectors or DVDs.  

1. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[19]

   [19] [2014] FCA 1304, [232].

2. In circumstances where a ground for rejection has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground for rejection exists. 

3. The Applicant, in its oral submissions, noted that the goods for which trade mark 1743415 is registered are subject to the limitation ‘all the aforegoing provided as part of, in conjunction with or in relation to the supply of wholesale and retail gas and electricity’ and speculated that it may be possible to amend the specification for the Trade Marks to prevent a conflict between the Goods and the goods for which trade mark 1743415 is registered. For the purposes of considering the s 44 ground I can only consider the Goods as they are before me, not the Goods following a hypothetical amendment. Moreover, each of the trade mark applications has been the subject of 5 examiners reports running several years. The Applicant has been provided with ample opportunity to amend the Goods to overcome the conflict with trade mark 1743415. In the present case, given my finding that there is a ground for rejection under s 41 in relation to all of the Goods; offering any amendment to allow the s 44 objection to be resolved would both involve a significant rewriting of the specification and be moot. As such I decline to offer such an amendment.

   Decision

   44. In relation to trade mark 1599738, s 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.

   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.

   Note: For this Act see section 6.

   45. As I am satisfied that there are grounds for rejection under ss 41(3) and 44 of the Act I reject the application to register Trade Mark 1599738.

   46.     In relation to Australian trade mark no. 1827605, IRDA 1332228, reg. 17A.24 provides:

   17A.24 Final decision on examination

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

   (a) it is not in accordance with this Division; or

   (b) there are grounds for rejecting it.

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

   (3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   (a) it is not in accordance with this Division; or

   (b) there are grounds for rejecting it, in whole or in part.

   47. As I am satisfied that there are grounds for rejection under ss 41(3) and 44 of the Act in relation to IRDA 1332228/Trade Mark 1827605 I must reject the IRDA in accordance with reg 17A.24.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   20 December 2022