Reemark

[2000] ATMO 112

TRADE MARKS ACT 1995

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

Re:Trade mark application number 727492(8, 9, 10, 14, 16, 18, 21, 24, 25, 28, 30, 32, 33, 36, 39 and 41) - WEST and device- in the name of Reemark.

Background

On 10 February 1997

, Reemark (the applicant) filed an application to register the trade mark depicted below in respect of a broad range of goods and services in 16 different classes.

The examiner raised several issues that would require the applicant's attention before the application could be accepted for registration. Only the ground for rejection of the application under s.41 of the Act, however, based on the surnominal significance of the word WEST in the composite mark, still remains.

In his first response, in relation to the s.41 objection, the attorney for the applicant pointed out the significant brushstroke graphic in the mark, which in combination with the word WEST, he said, would provide sufficient capacity to distinguish the applicant's goods - so as to allow acceptance of the mark for registration.

The examiner maintained the objection under s.41, pointing out that the degree of popularity of the name WEST would make it very likely that other traders would require the use of the word as a trade mark, to indicate the source of the goods. He stated that the brushstroke devices in the mark added little to the mark in terms of its capability to distinguish, being a mere flourish or embellishment.

The applicant's attorney submitted that, given the applicant's strong link with motor racing, the brushstroke device constituted more than a mere embellishment, being three-quarters of the length of the entire mark. He also emphasised the applicant's overseas registrations, as well as the mark's Australian use and its intended use as being relevant factors to enable registration. He concluded these written submissions with comments concerning the high profile of the applicant's mark due to its prominent exposure at Formula 1 motor races, which are televised into Australia from around the world.

The examiner continued to maintain the ground for rejection of the application. Although he conceded that the mark had some adaptation to distinguish the applicant's goods from those of other traders, he maintained that only 'cigarettes' had sufficient evidence of use to enable a possible acceptance. As these goods did not form part of the application, the ground for rejection was maintained.

The applicant then requested to be heard in the matter and it came before me, as a delegate of the Registrar, in Sydney, on 17 July 2000. The applicant was represented at the hearing by Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys.

Submissions

At the hearing, Mr Stevens argued that the mark has much more than a mere minimal level of inherent adaptability to distinguish the applicant's goods. He submitted a copy of a magazine, F1 RACING, which contained a photograph depicting the mark, both on the side of a car driven by dual world champion Mika Hakkinen, and also on his helmet. Mr Stevens claimed that, in use, the colours shown in the trade mark provided a greater level of capability for the mark to distinguish the applicant's goods than the black and white version on the application form. On this basis he proposed a colour restriction for the trade mark to match the mark shown in the magazine.

The next argument put to me by Mr Stevens highlighted the similarities between the registrability of the present application and the registrability of the trade mark FREE. The issue involving the FREE trade mark was discussed by Justice Wilcox in Companhia SouzaCruz Industria e Comercia v Rothmans of Pall Mall (Australia) Limited, 41 IPR 497. Mr Stevens claimed that the issues involved with the FREE case were 'on all fours' with the present application because both considered the registration of a composite trade mark which, (i) contains a surname, (ii) has another dictionary meaning for the word that is the surname and (iii) has other elements contained within the trade mark.

In relation to the inherent adaptability to distinguish, Mr Stevens emphasised the device element, which he referred to as the 'skidmarks' device rather than 'brushstrokes' or 'flourishes', as providing a significant feature in the mark. He argued that trade marks that are considered to fall within the province of being caught by s.41(5) of the Act lie on a continuum[1] of acceptability, and that in this case the trade mark is closer to the acceptable end of that continuum than not.

[1] Equity Access Pty Ltd v Westpac Banking Corporation and Another, 16 IPR 431 at 431 and 448.

Mr Stevens then directed me to the extent of use of the trade mark in Australia, as set out in two separate declarations, one declaration from Dr Marion Funck, an authorised officer of the applicant, and a second declaration, made by Mr Stevens. Another aspect that Mr Stevens requested that I consider, concerns the intended use of the mark, as shown by means of the use made of the mark in the F1 RACING magazine and in the applicant's own merchandising catalogue. Mr Stevens also highlighted the broad range of goods listed in the catalogue showing the future intention of the applicant to trade in them, by means of modern methods of merchandising in connection with major events or functions. He referred me to two court judgements setting out the notion of merchandising and how such commercial activity impacts on the acceptability of a trade mark for registration[2].

[2] Hogan and Others v Pacific Dunlop Limited, 12 IPR 225 at 234-236;

Twentieth Century Fox Film Corp and Anor v South Australian Brewing Co Ltd and Anor, 34 IPR 225.

In relation to other circumstances, Mr Stevens requested that I look at the registrations of the mark in other jurisdictions, the high profile of the mark in Formula 1 motor racing (especially as shown in the F1 RACING magazine) and the modern practice of merchandising.

Discussion

This trade mark has suffered three adverse examination reports outlining a ground for rejection of the application in terms of s.41 of the Act. That is still the issue to be considered.

This section, insofar as it is applicable here, reads:

Trade mark not distinguishing applicant's goods or services

41. …

(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).

Justice Branson has judicially considered the application of this section of the Act in the OREGON case[3].

[3]Blount Inc v Registrar of Trade Marks, 40 IPR 498

In relation to s.41(3) I must first determine 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'. I accept Mr Stevens's argument on this point, that the trade mark is, to some extent inherently adapted to distinguish the designated goods and services. The effect of this conclusion is that I must then further consider the trade mark under s.41(5) rather than s.41(6) of the Act.

Mr Stevens submitted that the device element, which he described as a 'skidmarks' device, constituted a significant part of the mark. He claimed that it was more than a mere embellishment and provided more than a mere minimal level of 'inherent adaptability to distinguish' the applicant's goods and services. Whilst I agree that the mark possesses more than the minimal level of 'inherent adaptability to distinguish', I do not accept that the device element adds significantly to the mark in this regard. The overwhelming element in the mark is the surname WEST - a rather common name, that other traders in the broad range of goods claimed by the applicant, could be expected to require to describe the origin of their goods. In the spoken word it is highly likely that the word WEST would be the only description of the present mark. In my opinion, visually, too, the word WEST overwhelms the device. Mr Stevens described the device element as 'skidmarks' - due, in part, to the applicant's association with motor sport. The examiner had earlier described the device element as merely 'flourishes' in, or 'embellishments' to, the mark. The fact that the two parts of the device are in different colours would tend to reduce the likelihood that purchasers would see them as 'skidmarks'. Moreover, given the extremely broad range of goods and services in the application on which the mark will be used, few cues exist in the mark to support such a perception. I am of the opinion that the device may be best described as 'brushstrokes'. However, whatever the description, I am of the opinion that they do not add a great deal in terms of the capability of the mark to distinguish the applicant's goods or services from those of other traders in similar goods and services, even if the applicant did restrict the 'brushstrokes' device to specific colours.

Mr Stevens also argued that the present application is 'on all fours' with the application to register the composite mark containing the word FREE. Whilst I concede that there are some similarities between the two - that both WEST and FREE are surnames and also words that have another dictionary meaning - there does exist one major distinguishing feature between them. In his judgement on the FREE trade mark, supra, Justice Wilcox was critical of the Trade Mark Office practice of consultation with an on-line search - the 'Search for Australian Surnames' - which was then relied upon as a ground for rejection if the word was shown to occur more than 400 times throughout Australia on the Electoral Register. Justice Wilcox wrote at 503:

I gather from Mr Homann's reasons there is a policy document issued by the Registrar of Trade Marks that decrees a mark, to be registrable, should not comprise or include a name that occurs more than 400 times in the Australian Electoral Register. The policy document is not before the court, so I do not know what rationale it advances for this dictat[e]. Why 400? The answer does not matter. The policy has no foundation in the Act; so it is devoid of any legal justification. It is not for the registrar to impose non-statutory restrictions on the words that may be registered as trade marks.

In relation to the consideration for registrability of words which are surnames, a statement from Part 22 of the Trade Marks Office Draft Manual of Practice and Procedure at '16.Surnames' is pertinent. This statement reads: 'The more common the surname, the less inherent adaptation to distinguish it will have.'

The word WEST as a surname is many, many times more common than the word FREE. Such a circumstance, in my view, places the word WEST in a seriously disadvantageous position for acceptability for trade mark registration in comparison with the word FREE. Many other traders could, therefore, require the word to indicate the origin of their goods without an improper motive. Despite the device element of the 'brushstrokes', I am of the opinion that the 'inherent capability to distinguish' for this total trade mark would require considerable assistance from any use, or intended use, made of the mark or other circumstances in order to enable the mark to be accepted.

Mr Stevens has argued that such assistance does exist. In the first instance, he directed me to the evidence of actual use of the mark in Australia. Here, the applicant claims use of the mark on 'pens, lighters, matches, sun shades, ashtrays, stickers and aprons' in the Funck declaration. I note that there are no prices shown in any of the six 'copies of the sample invoices' in exhibit 'E'. Comments such as 'promotion material' and 'advertising material' are to be found on each page of these samples. This casts some doubt on whether the documents demonstrate use of the mark, by means of an offer of the goods for sale, at all. In addition to this evidence, two further invoices are exhibited, at 'TKS 1', to the Stevens declaration. One of these has the same written comment as the invoices above, whilst the other claims sales of 'ashtrays, matches and pens'. This volume of sales provides only very minor assistance to the overall capability of the mark to distinguish the applicant's goods in terms of s.41(5)(a)(ii).

The second leg of Mr Stevens's argument looked at intended use of the trade mark. Here he had commented that this concept had been largely overlooked as a factor for trade mark registration despite being a legitimate ground that could be relied upon in terms of s.41(5)(a)(ii). Mr Stevens directed me to exhibit 'TKS 4' of his own declaration that contains excerpts from the applicant's merchandising catalogue of 1998/99. The catalogue is written for English speaking countries with the prices blanked out. I note that a near identical, but later, catalogue forming exhibit 'F' of the Funck declaration (for 1999/2000) lists prices in Deutsche Marks. The Funck declaration at paragraph 14 indicates that this catalogue is for the applicant's worldwide merchandising. In addition, both catalogues contain many pages headed 'Giveaways', 'Incentives' and 'Advertising Gifts'. It is difficult to gain a clear picture of exactly what is shown by this material via 'intention to use' for the Australian market. Within the catalogues there are deadlines for orders of the advertised materials. In the later catalogue, the two deadlines mentioned are 18 June 1999 and 30 September 1999. Given that the date of this hearing was 17 July 2000, it would be expected that such 'intention to use' would already have been converted to actual use of the mark, in Australia, and some evidence of this use could have been provided. Certainly, 'intention to use' a trade mark is more readily seen where a mark has had at least some moderate amount of commercial use, and the actual sales figures can be shown to be steadily progressing. It is then possible to offer some sort of prediction for the scale of the intended use over the next few years. In looking at the words 'intention to use' it is obvious that the intended size of such use is of major importance. Otherwise, an intention to sell just one item would be sufficient for the provisions of s.41(5)(a)(ii) to always be applied in favour of registration of a trade mark. However, in the present circumstances, given the very minimal use to which the mark has been put in Australia, it is virtually impossible to look at a catalogue and import any sort of extrapolation to the figures. Apart from this catalogue no evidence assisting the applicant's intention to use, by means of a plan concerning how the mark would be promoted, or even the actual means by which the catalogue would reach the hands of prospective purchasers has been submitted.

Another item raised by Mr Stevens concerned the use of the mark at Formula 1 car races. The extent of use of the mark, coupled with the high profile afforded by worldwide television broadcasting, meant that the mark had achieved great notoriety, Mr Stevens submitted. The Funck declaration comments that first use of the mark in Australia by the above means occurred in 1997. Certainly, the evidence shows that the mark has been given extensive exposure at Formula 1 car races. The applicant also submitted material to support the argument by indicating the popularity of the F1 RACING magazine in Australia. Whilst I accept the popularity of the magazine itself, the difficulty that I have with this material, however, is that in almost all of the comprehensive set of photographs from the magazine F1 RACING the mark is shown on helmets, cars or on the drivers racing suits. The word WEST is also used in conjunction with McLAREN MERCEDES in some instances. There are no actual goods offered for sale by means of the mark in any of these exhibits from the racing magazines. It is also clear from the evidence that the mark is used extensively in Europe and several other countries outside Europe in relation to cigarettes. Taken together, this material, to me, indicates that the mark is used by a company involved in sponsorship of the racing team rather than for direct sales of goods (other than cigarettes) under the mark to this stage. Although the applicant has claimed that it has an intention to use the mark to merchandise a wide range of goods, I cannot accept that sufficient evidence of such future action, in Australia, has been shown.

The Funck declaration at paragraph 6 also attests that the applicant has obtained registrations for its trade mark in 14 jurisdictions. It would appear, however, that most of these registrations are for goods in class 34 only - a class not included within the present specification. This includes registrations in Germany, Russia, Benelux, Turkey and Norway, and an International registration. The registration certificates, which do cover a wide range of classes, are all in non-English speaking jurisdictions, and often in locations with alphabets that use non-Roman characters. No translations of these certificates were supplied to assist in defining the exact range of goods, but clearly issues centred on the capability of the mark, WEST and device, to distinguish the applicant's goods from those of other traders, would find very different parameters in those societies. Such registrations are of limited value to support the present application.

The final circumstance argued by the applicant concerned the significant cigarette sales in several overseas jurisdictions, particularly in several European countries. The sales involved for these goods, as shown in exhibit 'B' to the Funck declaration, are quite substantial - many tens of millions per annum from 1994-97. Such evidence would be useful in gaining a registration for cigarettes in class 34, but has very limited usefulness toward finding that the present trade mark is capable of distinguishing the applicant's goods when all those goods fall in other classes.

Conclusion

From the foregoing I find that the applicant's mark has some measure of inherent adaptation to distinguish the goods and services of the applicant from those of other traders in similar items, to enable a further consideration of the application under the provisions of s.41(5) rather than s.41(6). However, from the material before me, I find that the other factors to be considered under s.41(5)(a), involving actual use of the mark, intended use of the mark and other circumstances, are not sufficient for me to find that the mark is capable of distinguishing the applicant's goods and services, given the prevalence of the surname WEST in the Australian community.

Thus, in my position as the delegate of the Registrar in this matter, I refuse registration of this application.

Don Nancarrow
Hearing Officer

18 October 2000