Reed Elsevere Properties, Inc

[2012] ATMO 46

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1428831(45) - TOTALPATENT- in the name of Reed Elsevier Properties, Inc.

Delegate:

Iain Thompson

Representation:

Applicant: Carmen Champion of Counsel instructed by FB  Rice

Decision:

2012 ATMO 46

s31 proceedings, s41 trade mark lacks inherent adaptation to distinguish - application rejected.

Background

1. In this matter Reed Elsevier Properties, Inc. (‘the applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark, current details of which appear below:

Application No: 1428831

Filing Date:  3 June 2011

Convention date:           16 February 2011 (US: convention number 852343944)

Services:Class 45: Computer services, namely, on-line interactive databases featuring information relating to the analysis, evaluation and creation of patents; providing an online searchable database in the field of patents and patent applications.

Trade Mark:  TOTALPATENT

1. I will refer to the above services as ‘the specified services’.

2. In the course of examination in compliance with section 31 of the Act, the examiner maintained a ground for rejection in terms of section 41 of the Act in the following terms:

   … [Y]our mark consists of the conjoined words TOTAL and PATENT.  The services supplied relate to databases which are volumes of information stored in a computer and organised in categories to facilitate retrieval.  When seen in relation to the services, the term TOTAL PATENT gives an immediate and obvious impression of databases containing a wide range of information on patents.

3. In view of an impending formal rejection of the trade mark, the applicant requested to be heard.

4. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 20 April 2012.  Carmen Champion of Counsel, instructed by FB Rice, represented the applicant.

Onus

1. In Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; (‘Blount’) Branson J stated:

   Each of s 33(1) and s 41 involves the concept of the Registrar being “satisfied”. Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not..

2. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494; [2002] AIPC 91-817; (2002) 56 IPR 30 French J said at [22]:

   Since the enactment of the Trade Marks Act 1995 the onus is no longer on the applicant to establish registrability as it was under the 1955 Act - Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at 372-373. The application must be accepted unless the Court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it. If the matter is in doubt then the application should be accepted. The possibility of refusal after a contested opposition with evidence and closer scrutiny remains open. The acceptance stage is not the time for detailed adversarial examination of the application that might be involved in an opposition - Registrar of Trade Marks v Woolworths at 377. Acceptance for registration involves an initial screening process albeit it requires the application of statutory criteria and evaluative judgments by the Registrar and the Registrar’s delegates.

3. However, when addressing the ‘doubt’ mentioned in the preceding paragraph, Sundberg J said in Chocolaterie Guylian N v v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [20]:

   There is a tension between the operation of the presumption and the text and structure of s 41. Section 41(3) requires the Registrar to “take into account” the extent to which a mark is inherently adapted to distinguish in deciding whether or not it is “capable of distinguishing” the applicant’s goods. Section 41(4) then directs the decision-maker to subs 41(5) and subs 41(6), if they are “still unable to decide the question”. Section 41(5) will be applicable if there is a finding that the mark is to some extent inherently adapted, but the Registrar is “unable to decide, on that basis alone, that the mark is capable of ... distinguishing”. Accordingly, where there remains some doubt after considering s 41(3) about a mark’s capability to distinguish, rather than resolving that doubt in favour of an applicant (by operation of a presumption), the statute expressly directs the decision-maker to consider the criteria in subs 41(5) or subs 41(6) (whichever is applicable).

Section 41

1. Section 41 of the Act provides:

   Trade mark not distinguishing applicant’s goods or services

   41.(1) 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).

   (2) 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 (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.

   (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a) the Registrar is to consider whether, because of the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
   (ii) the use, or intended use, of the trade mark by the applicant;
   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:  For goods of a person and services of a person see section 6.

   Note 2:  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 (1) and 7(3) and section 8).

   (6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
   (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   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:  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 (1) and 7(3) and section 8).

2. In Blount Branson J discussed the operation of section 41 of the Act:

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that 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; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services 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 designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

3. The initial step is to take into account “the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.”

4. In Blount, Branson J endorsed the discussion of inherent adaptation discussed by Kitto J in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (‘Clark’) at 514:

   “[T]he question whether a mark is adapted to distinguish [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, 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.”

5. Mrs Champion argued:

   The mark “TOTALPATENT” is proposed to be used in respect of the provision of computer services. The provision of such services involve the applicant entering into a contractual arrangement with a customer resulting in the customer having the means to access the applicant’s on-line interactive databases featuring the information relating to patents identified in the application (“Databases”).

   A distinction has to be drawn between the use of the mark TOTALPATENT” in respect of the [specified services] and its use on the Databases. The application is only concerned with the mark’s use in respect of the [specified services].

6. The balance of Mrs Champion’s submissions appears to hinge on the above distinction.

7. However, I do not fully understand the distinction which Ms Champion wishes me to draw and consider that it is probably not there to be taken.  The computer services which Ms Champion refers to in the specified services are qualified by the word ‘namely’ as being of the kind subsequently spelt out within the specification and not as being distinct from those computer services.  It appears to me that if what Mrs Champion states has merit, any supplier of computer services which provides information on real estate, car sales, newspapers, or any other information could gain monopolies in related trade marks such as REALESTATE or CARSALES simply by constructing specifications of services which commence with the formula “computer services namely, the provision of real estate information [etc]”.  As a proposition, this appears to be without any foundation.

8. Although information within computers resides in a virtual world, that environment is in effect as true a trading and information milieu as the real world.  A suggestion that a trade mark might gain inherent adaptation because the trade or service in respect of which it is used is resident within this virtual environment or in a computer program appears itself to be an artificial construct.

9. I do not consider that the elision of the space between the words TOTAL and PATENT alters the meaning of the words such that it affects their meaning or inherent adaptation to distinguish.  And, in terms of the test in Clark, the use of the words TOTAL PATENT in respect of similar services should infringe a putative registration of the trade mark TOTALPATENT if it were granted.

10. There are two complementary methods of gauging the likelihood that other persons trading in the same services as the applicant will, without improper motive, think of the words TOTAL PATENT and want to use them for the sake of the significance of their ordinary meaning.  The first method is to consider the ordinary meaning of the words in relation to the specified services.  The second method is by seeking corroboration as to whether other traders do actually use these words for the sake of their ordinary meaning in relation to their similar services.

11. According to Macquarie Dictionary, the word ‘total’ has the following meanings:

    adjective 1. constituting or comprising the whole; entire; whole: the total expenditure.

12. I consider that, on its ordinary meaning, the expression ‘total patent’, in relation to the specified services means a whole, or entire, patent analysis, evaluation and creation service.  It would thus appear that any other trader offering a similar service would, without improper motive want to use the expression TOTAL PATENT for the sake of its ordinary meaning.

13. I further note, although this is not in itself determinative, that the expression is used for the sake of its ordinary meaning by at least one other trader in Australia in relation to an apparently similar service. A search on the Google search engine reveals:

     

1. I note that the above usage of the expression ‘total patent’ also reveals that the expression is a normal and natural English construction and not of the type referred to in Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 at 194 where Dixon CJ pointed out:

   It is, I think, a mistake first to assume that words like “Tub Happy” do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods.

2. Accordingly, I conclude that the trade mark TOTALPATENT lacks inherent adaptation to distinguish the specified services.

3. While it is possible that the trade mark may contain a slight degree of inherent adaptation to distinguish, it is not necessary that I further discuss the degree to which the trade mark may be inherently adapted as the applicant has not adduced evidence which addresses either of subsections 41(5) or (6) of the Act. In terms of section 41(2) the trade mark is not capable of distinguishing the applicant’s services and must be rejected.

Decision

1. Section 33 of the Act provides:

   33Application 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.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:For applicant see section 6.

1. I reject application 1428831.

Iain Thompson

Hearing Officer

Trade Marks Hearings

11 May 2012