Robert George Coles v Telstra Corporation Limited

[2009] ATMO 36

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Robert George Coles to registration of trade mark application 1120486(9,16,35,38,41 and 42) - YELLOW & DEVICE - filed in the name of Telstra Corporation Limited.

Delegate:	Debrett Lyons
Representation:	Opponent:   No representation Applicant: Georgina Schoff of Counsel, instructed by Mallesons Stephen Jaques, Solicitors
Decision:	2009 ATMO 36 Section 52 opposition:  sec. 41 not established since trade mark capable of distinguishing under sec 41(3); sec. 43 not established since no relevant connotation.  Opposition unsuccessful. Costs:  Opponent ordered to pay applicant’s costs.

Background

1. Telstra Corporation Limited (‘the applicant’) filed an application to register a trade mark, details of which appear below:

   Application number:              1120486

   Filing date:  26 June 2006  

   Goods/Services specifications:        

   Class: 9

   Telephones and telephone equipment, apparatus and systems; data processing equipment; computer software including computer programs, computer hardware; modems; apparatus for recording, transmission or reproduction of sound or images; all associated parts, accessories and fittings of the foregoing goods; publications in electronic form including publications supplied on-line from databases or from facilities provided on the Internet (including web sites)

   
   
   Class: 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; books; directories; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printer's type; printing blocks
   
   Class: 35 Retail and wholesale services including retail and wholesale services in relation to directories, publications,printed matter, telecommunications equipment, computer hardware and software, recording discs and CD ROMs; marketing, merchandising, retail and wholesale distribution services (excluding transport); directory services; business advisory services; business planning and analysis services; business management and business administration services; business surveys, appraisals and research; collection, preparation, compilation, storage, processing, retrieval and provision of business information; conduct of business studies and preparation of business reports; economic forecasting and analysis for business purposes; market analysis, research and monitoring services for business purposes; advertising services; advertising survey services, including telephonic and electronic surveys; electronic commerce services; business information services; agency services in respect of such directories and business supplements; advertising services promoting the services and goods of advertisers in such directories and business supplements in any medium; co-operative advertising with those who advertise in telephone and telephone directory business supplements; on-line business information services relating to e-commerce; provision of on-line directories
   
   Class: 38 Telecommunication and communication services including telecommunication of information (including web pages), computer programs and any other data; directory services; electronic mail services; provision of telecommunication access and links to computer databases and the Internet; transmission of information on a wide range of topics, including on-line transmission; arranging and providing electronic, digital and computerised communications services and facilities between wholesalers, retailers, customers, transport service providers; computer aided transmission of messages, data and images; on-line telecommunications information services relating to e-commerce; provision of access to electronic databases including electronic directory databases
   
   Class: 41 Electronic publication of information on a wide range of topics, including on-line publication; publication in multiple mediums; education and training services relating to advertising; organising and staging sporting, cultural and entertainment events and competitions; publication of books, business directories and newsletters; arranging and conducting conferences and seminars
   
   Class: 42 Computer programming services; computer rental services; computer software design services; installation, maintenance and construction of computer software programs; research and development of technology, including research and development in relation to telecommunications goods and services, including directory goods and services in both electronic and non-electronic form; on-line computer services; hosting of websites for others; designing of websites; drawing and commission writing for webpages; compilation of webpages and data for websites; consultancy in relation to all of the aforesaid services; domain name registration services
   
   
   

   Trade mark:  

   (‘the trade mark’)

2. The trade mark was accepted for possible registration and advertised for opposition purposes on 26 October 2006 after which Robert George Coles (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.

3. The parties filed and served evidence in accordance with the Trade Mark Regulations 1995.  The matter then came before me, Debrett Lyons, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 25 March 2009.  The applicant was represented by Georgina Schoff of Counsel, instructed by Mallesons Stephen Jaques, Solicitors.  The opponent made no appearance but stated in an email to the Trade Marks Office dated 5 March 2009 that he relied on the evidence that he had already filed in the proceedings.

   Notice of Opposition

4. The Notice of Opposition listed grounds of opposition under sections 41 and 43 of the Act.

5. Section 41, so far as it is relevant to this decision, states:

   Trade mark not distinguishing applicant’s goods or services

   …

   (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.

6. Section 43 states:

   Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

   The Evidence

7. The evidence in support of the opposition consists of statutory declarations by Robert George Coles dated 18 April 2007 and 18 June 2008.

8. The evidence in support of the application (evidence-in-answer) consists of a statutory declaration by Stephen Thomas Harvy dated 21 January 2008.

   Submissions and Reasoning

9. The opponent bears the onus of establishing its grounds of opposition.  The opposition will succeed if one of those grounds is established.  The standard of proof is the balance of probabilities.

   Section 41

10. The application was accepted under section 41(3) of the Act.  In other words, the Registrar first took into account the extent to which the trade mark is inherently adapted to distinguish the designated goods and services from the goods and services of other persons and decided that the trade mark was in fact capable of distinguishing those goods and services from the goods and services of other persons.

11. In his 2007 declaration, Mr Coles states that the:

    proposed trade mark is predominantly YELLOW – approximately 90%.  Yellow is one of seven primary colours used extensively by the community in promoting their businesses.  It is IP Australia’s stated policy not to allow any one person to gain exclusive use of these colours. … The overall visual appearance of the trade mark is the COLOUR YELLOW.  In the first place the solid yellow background creates this impression.  Secondly the word Yellow re-inforces this message.  The application is therefore nothing more than a means of attempting to secure registration of the word YELLOW.

12. Mr Coles is incorrect when he states that it is the policy of the Trade Marks Office to refuse to register (single) colour trade marks.  Section 17 of the Act  states that:

    A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person

13. Section 6 then expressly states that:

    Sign includes the following or any combination of the following, namely any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

14. The Trade Marks Office Manual of Practice and Procedure, accessible online at the IP Australia website, states that:

    A colour, by itself or in combination with other colours and/or any of the other features which fall within the definition of a sign, may be used as a trade mark. For example, a trade mark may consist of a coloured label or ticket which incorporates other signs, or it may consist of a colour or colours applied to the goods themselves. Colour may also be an aspect of packaging which is used as a trade mark. An example here is a particular coloured wrapper or box used to cover the goods. In all cases the trade mark will only be registrable if, taken as a whole, it is capable of distinguishing the applicant's goods and/or services from those of other traders.

15. The trade mark here consists of the combination of a yellow coloured background prominently superimposed upon which are the word “Yellow” and what has come to be known as the “walking finger device” which itself is represented as if it were on a yellow adhesive note attached to the yellow background of the trade mark.

16. There is no doubt that the colour, yellow, is a visually significant part of the trade mark but the distinctive character of the whole trade mark arises from the combination of the elements just described.  Put another way, the registration of the trade mark would not give the applicant exclusive rights in the colour yellow per se, but in the combination of integers that forms the trade mark.

17. I do not find that the opponent has established its ground of opposition under s 41.

Section 43

1. Section 43 provides that an application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. The only statement in either of Mr Coles’ declarations which I read as having potential relevance to section 43 is this:

   Application 1120846 is nothing more than selected “bits and pieces” of other trade marks already owned by the Applicant but in the present form of application 1120486 is vague and misleading.

3. Section 43 looks at the inherent qualities of the trade mark.[1]  It is concerned with some connotation — something implied by the trade mark itself  — which is likely to deceive or cause confusion.[2]  

   [1] Register of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 389 (Branson J).

   [2] Big Country Developments Pty Ltd v TGI Friday’s Inc (2000) 100 FCR 358, 365 (Wilcox, Kiefel and Emmett JJ).

4. In this case, all I have before me is the opponent’s claim the trade mark is vague and misleading because it contains elements of other trade marks filed or registered by the applicant.

5. There is no prohibition against a person applying for various marks which share one or more elements.  Of itself, that does not cause a trade mark to carry a deceptive or confusing connotation.  There is nothing to my mind to suggest that the trade mark carries any sort of relevant connotation.  I do not find that the section 43 ground has been established.

   Decision

6. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note: For limitations see section 6.

7. The opponent has not established either of the grounds of opposition raised.  Accordingly the application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that the application shall not be registered until the appeal has been decided or discontinued.

   Costs

8. I order that the opponent pay the applicant’s costs according to the official scale.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
2 June 2009