Rodney Gibson

[2010] ATMO 73

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1251677(6) - HOUSE SHAPE- in the name of Rodney Gibson.

Delegate:	Iain Thompson
Representation:	Applicant: Dr Donald Angus of Collison & Co
Decision:	2010 ATMO 73 Ex parte hearing; shape of a transportable building; shape related to function therefore required by other traders in the normal course of trade; s41(6); evidence does not show that the shape has become distinctive of the applicant’s goods. Registration refused

Background

1. In this matter, Rodney Gibson of Wellington, New Zealand, (‘the applicant’) has applied to register a shape trade mark, current details of which appear below:

   The trade mark[1]
   

   Application No:           1251677
   Priority Date:               16 July 2008

   Goods:Class 6: Building elements of metal; building extensions (structures) of metal; building fittings of metal; building frameworks of metal; building materials made principally of common metal; building parts of metal; building products of metal; buildings of metal; buildings, transportable, of metal.

   Endorsement:              The trade mark consists of the three dimensional shape of a transportable building as shown in the representations attached to the application form.

   [1] The representation has been converted to ‘greyscale’ as it appears to improve the quality of reproduction and there is no claim to colour in the endorsement which describes the trade mark.

2. The application was examined in compliance with section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner recited grounds for rejection in terms of subsection 41(6) of the Act. After the applicant submitted evidence of the use of the trade mark, statutory declarations in support of the application and further submissions made in support of the application, the examiner stated an intention to reject the application.

3. The applicant requested to be heard concerning the ground for rejection and, as a delegate of the Registrar of Trade Marks, I heard the arguments of the applicant at a hearing in Sydney on 19 July 2010.  Dr Donald Angus of Collison & Co represented the applicant on behalf of Tony Pietras of AJ Pietras & Co Intellectual Property of Lower Hutt, New Zealand.

   The Evidence

4. The evidence filed by the applicant comprises the statutory declarations of:

   ·     Sydney Roy Justice, General Manager of Formas Australia Pty Ltd (“Formas”), previously known as Habode (Australia) Pty Ltd.

   ·     Dr Michael Allen, Senior Lecturer in Marketing at the Faculty of Economics and Business at the University of Sydney.

   ·     Brent Marvin, architect and director of MDA Architects in Sydney.

   ·     Jack Van, Chief Executive Officer in Jack Van & Associates, Brand Consultants.

5. Pertinent to this matter and my reasons, Mr Justice says:

   Formas is part of the Pindan Property Group (“Pindan”) and is based in Belmont, Western Australia. Pindan operates in a range of business areas including building construction, property development and management, and real estate sales and rental. Formas specializes in providing high quality manufactured housing. Specifically, Formas provides a range of transportable buildings.

   One of the transportable buildings was originally branded HABODE, and has more recently been re-branded FORMAS Home. The FORMAS building was created by New Zealander, Rod Gibson. After manufacture, the building is folded up into a portable structure the size of a freight container. The building can then be easily transported to its end destination by sea, rail or road as if it were a freight container. Once at its location the portable structure can be transformed into a two or three bedroom 80 square metre (approximately) dwelling within about two days.

   Formas has been distributing the FORMAS building through a license agreement. I understand that Mr Gibson filed a trade mark application to protect the shape of the FORMAS building on 16 July 2008.

   The FORMAS building has a very unusual and eye catching appearance once it is erected. It has a rectangular central portion and two roof sections that extend away and up from the centre to give it a “butterfly” shape. That is, the building’s roof differs from the appearance of a conventional roof that slopes down from a high point in the middle of the building. The FORMAS building has the low point of the roof at the centre of the building and the two roof sections slope upward from the centre so that the highest point of the roof is at the front and back edges of the building.

   The FORMAS building has proved very popular in Australia. It is very cost effective housing and the speed within which it can be put together is appealing to those who wish to avoid building delays. Formas is a great believer in the product and has been actively promoting it on a national level since at least December 2005.

   I believe that the unique and eye catching shape of the FORMAS building really does serve to make it something that stands out amongst other buildings and something that consumers readily identify.

   To give an example of this, after Formas had been promoting the building in Australia for a year or so it encountered what appeared to be a copy product in the market and inspected a display in March 2007. The copy was being sold by an Australian company called Transformable Homes who, Formas was told by Mr Gibson, was buying it from people related to the former Chinese manufacturer of the HABODE/FORMAS building. I say this because people would see a Transformable Homes product on display, or advertised somewhere, and they would assume that Formas was behind the product as they knew that it had been selling a product with the same shape beforehand. These somewhat confused consumers recognised the product shape from dealings with Formas, and when they saw the same product shape from Transformable Homes, they automatically made a link back to Formas. I attach as Exhibit 2 a copy of a photograph showing the building that was being offered by Transformable Homes.

   To give a more specific example of this confusion a trade publication called “Australian Building News” featured an article on Transformable Homes on the front page of an edition in early 2007. Australian Building News received a call from one of their clients who believed that the magazine had got the name of the company on the cover wrong, namely Transformable Homes, as he recognized it as the HABODE/FORMAS building. As a result the magazine published an apology and gave Formas a free editorial to advertise our HABODE/FORMAS building.

   I understand that the originator of HABODE/FORMAS building took legal action against the Chinese manufacturers in 2007/8 and that, as a result, Transformable Homes was no longer to be supplied with, and therefore offer for sale, the same product.

   Below is a table showing, for the periods indicated, the approximate amounts spent in Australia on advertising and promotional materials in respect of the FORMAS building:

Year

Amount spent on advertising        and

promotional materials ($AU approximate)

2006

$60,000

2007

$50,000

January — July 2008

$28,000

Below is a table showing, for the periods indicated, the approximate number of sales of the FORMAS building and the approximate retail sales figures in respect of the buildings during those periods:

Year	Number of FORMAS buildings sold in Australia (approximate)	Retail sales value in Australia (approximate)
2006	6	$290,000
2007	9	$750,000
January — July 2008	60	$3,200,000

The retail cost per unit can vary considerably depending on the location of the unit and associated transport costs.[2]

The FORMAS building has been advertised regularly in a number of magazines and newspapers. Publications that Formas has advertised in include the following:

[2] The figure given in an advertisement which is Exhibit 3 to Mr Justice’s declaration is ‘from $58,000’.

Publication	Period Advertised	Circulation of Publication (Approximate[3])
Australia’s Mining Monthly	Monthly from July 2007- July 2008	11,500 copies per month
The Western Australian	Daily from July 2007-July 2008	230,000 copies per day
Farm Weekly	Weekly from July 2007- July 2008	14,000 copies per week (with an estimated readership of 40,000)
The North West Telegraph	Weekly from July 2007 — July 2008	15,000 per week

[3] According to the Audit Bureau of Circulations.

1. I will discuss the other evidence filed in support of the application as it becomes relevant to my reasoning, below.

   Preliminary

2. Section 17 of the Act provides the definition of a trade mark:

   17What is a trade mark?

   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.

   Note:For sign see section 6.

3. Section 6 of the Act provides:

   applicant, in relation to an application, means the person in whose name the application is for the time being proceeding.

   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.

4. And section 8 of the Act provides:

   8Definitions of authorised user and authorised use

   (1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

   (2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

   (3)If the owner of a trade mark exercises quality control over goods or services:

   (a)dealt with or provided in the course of trade by another person; and

   (b)in relation to which the trade mark is used;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (4)If:

   (a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

   (b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

   the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

   (5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

   Section 41

5. 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).

6. Section 41 thus provides a scheme for the assessment of the inherent capability of a trade mark for distinguishing the goods or services of a person from the similar goods of other people. In the words of Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440:

   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)).

   The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken 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, is able to answer positively 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, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so “establish” by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.

1. The first step in the process outlined above is for me is to consider the extent to which the trade mark is inherently adapted to distinguish the designated goods (transportable buildings) from the similar goods of other persons.  In Blount, Branson J endorsed the approach taken in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 514, by Kitto J who put the test under the 1955 Act as follows:

   “[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.”

2. The identical principle applies in relation to shape trade marks.

3. In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, at paragraph 45, the Court said:

   To be a trade mark, a shape must 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. That definition is entirely consistent with the idea of “shape” as an attribute of goods which distinguishes them from others. It is not to be read down to cover only some aspect of the physical configuration of goods. The shape which distinguishes the goods may be their shape taken as a whole. The inclusion of “shape” in the definition of “sign” stands against the suggestion that it can never be an attribute separate from the goods to which it relates. It mandates consideration of shape as a distinctive attribute although not a necessary feature of the particular goods. Where shape serves function, then it may not bear that character of a distinctive attribute. Like the three headed shape of the Philips Rotary Shaver it would not be capable of registration - Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd. As Stone J observes in her reasons for judgment, the separation issue in that case was at least in part an element of the capacity to distinguish. I respectfully agree with the observations of Burchett J in Philips that a shape that goods possess because of their nature or the need for a particular technical result could not operate as a trade mark.

4. And in Coca-Cola Co v All-Fect Distributing Co trading as Millers Distributing Co [1998] FCA 1638, Merkel J drew attention to prior and present difficulties in accepting some shapes as trade marks where he referred to:

   … the decision of the House of Lords in Re Coca-Cola Trade Marks  [1986] RPC 421 in support of its contention. That case concerned an appeal by Coca-Cola from a decision of the Registrar to refuse to register a trade mark of the contour bottle for use as a container for the Coca-Cola beverage. In that context Lord Templeman (at 457), in a decision concurred in by Lords Keith, Brandon, Griffiths and Oliver, said that:

   “It is not sufficient for the Coca-Cola bottle to be distinctive. The Coca-Cola Co. must succeed in the startling proposition that a bottle is a trade mark ...

   The word `mark’ both in its normal meaning and in its statutory definition is apt only to describe something which distinguishes goods rather than the goods themselves.  The distinction between a mark and a thing which is marked is supported by authority.”

   The above passage needs to be approached with some caution for two reasons. Firstly, the appeal concerned registration rather than infringement of a trade mark. Secondly, the distinction between the product itself and a mark used as a trade mark in relation to a product is less obvious as a result of the extension of the definition in the 1995 Act of a “ trade mark “ to mean a “sign” (which includes a shape). This latter difficulty is exacerbated by the recent trend (to which I have referred) to use devices, which may be a product, as a mark.

   However, the distinction drawn, by Lord Templeman and Windeyer J in Smith, Kline and French Laboratories (Aust) Ltd v Registrar of  Trade Marks [1967] HCA 42; (1967) 116 CLR 628 at 639, between a mark and the product to which it is to be applied remains significant. Windeyer J said:

   “...a mark for the purposes of the Act must be capable of being described and depicted as something apart from the goods to which it is to be applied, or in relation to which it is to be used.”

   Inherent Adaptation of this Shape Trade Mark

5. In his submissions, Dr Angus pointed to a range of features of the applicant’s shape trade mark and argued that these, considered in combination, should lead to a conclusion that the trade mark is (to at least some extent) inherently adapted to distinguish the applicant’s goods – transportable houses.  These features are: the skillion or ‘butterfly’ roof which slopes inwards to a flat central roof area, the parti-colored panels on each side of the building, and the bull-nosed verandah.  The chairs on the verandah implicitly do not, by the terms of the endorsement describing the trade mark, form a part of the trade mark, since they are not a part of the three dimensional shape of the building.  This consideration, however, leads logically to the observation that the parti-colored panels, (which are also said by the applicant to contribute to the inherent adaptation of the trade mark to distinguish) do not form a part of the three dimensional shape – the panels, from an objective standpoint, are flat areas of colouration on the three dimensional surface but do not dictate the shape – they merely adhere to, or appear on, it and the endorsement excludes any ornamental effect of the panels by defining the trade mark as being the three dimensional shape.  The argument that the parti-colored panels contribute to the inherent adaptability of the trade mark (as defined by the endorsement) appears to me to be somewhat akin to a person applying to register the shape of a polka-dotted car, then arguing that it is the polka-dots (which are not included in the description of the shape and do not contribute to it) which lend it inherent adaptation to distinguish the goods.

6. The evidence is not of much assistance in helping to assess the inherent adaptation to distinguish of the trade mark for reasons which I will now discuss.

7. Dr Allen says:

   In my view the most distinctive feature of the Building Shape is the roof. Most roofs have their apex at the centre part of a house and slope down toward the outside walls. This roof does the opposite, sloping in toward the central part of the building. This gives it a particular look and marks it out from other buildings. Because of this a consumer would have little difficulty recalling, in their mind, the Building Shape as something associated with a particular business, as opposed to just any business generally. In this regard I see the shape as very much a ‘badge of origin’ type of feature, not something that building companies would want to do for functional reasons. In particular the roof shape is in my view quite aesthetically pleasing.

   What also stands out is the series of square, rectangular and oblong panels interspersed with windows that make up the walls. The panels and windows form a chequered pattern and because they are a variety of sizes they also create a design effect, giving an artistic impression to a consumer rather than appearing purely functional. Consumers generally would have relatively good recall of these features, particularly in combination with the roof features that I discussed above. Again, I have not seen any other buildings where the walls are made up of this sort of panel and window combination.

8. In his declaration Mr Brent says:

   The Building Shape contains a number of features which in my view combine to make it stand out. In this regard I point out the roof shape, the walls of differently-sized panels, and the selective placement of glass panels in the walls. The roof shape could be described as a “butterfly” roof, that is, the sides of the roof angle up away from the centre rather than down from a high point which is characteristic of conventional gabled roofs. However, as the two sides of a butterfly roof usually meet together at a low point, I believe that the roof of the Building Shape is more accurately an arrangement of two “skillion” roofs. That is, there are two single sloping roofs that mirror each other and are separated by a flat roof section, which is unusual. The skillion sections here angle away and up from the central flat section, quite unlike conventional roofs and quite unlike mere butterfly roofs per se.

   […]

   I consider that the Building Shape would be something that a consumer would have little difficulty in remembering. For example if a consumer was to look at the Building Shape at one time, and then again couple of weeks or even a month later, he or she would be apt to recall it from the first viewing. This would not be so with a standard rectangular building having a simple gable roof, but here the combination of features marks the Building Shape out as something different. In my experience consumers are quite good at recalling building shapes because a building is very much something that is ‘in your face’, so to speak. Buildings tend to attract a high level of recognition among consumers, particularly unusual buildings. I am not sure of the psychology behind this as I am not trained in that field but it is certainly something I have observed in my work as an architect.

9. And Mr Van says:

   There are many trade marks in place which consist of or include two dimensional images of buildings. This is not surprising because consumers have a particular affinity for buildings. They are places that we live in, study in, do our work in and visit when on holiday, etc. Buildings are very much entwined in the everyday life of consumers, who they often identify or recall an experience by reference to the building that it is associated with. For example consumers have no difficulty in identifying the opera house in Sydney or the Sydney Tower (Centre Point) with that city. Similarly consumers have no difficulty identifying the Twin Towers with New York, the Golden Gate Bridge with San Francisco, the Petronas Towers with Kuala Lumpur and the Tower of London with the UK. While the association is in each case to a place, as opposed to a business, I give these as examples to show that building shapes do indeed make a strong imprint in the mind of the average person. Thus buildings which are other than a common design are very good at functioning as identifiers of origin, which is of course the primary function of any trade mark.

   In the case of the Building Shape of Exhibit ‘B it is my view that it is well suited to function as a trade mark. I say this because the shape is quite unusual for a building, The roof in particular is not something that one would expect to see in a building and indeed I cannot recall having seen anything the same or similar before. I say this in my capacity as an expert in branding and also in my capacity as a consumer. The roof in particular seems to have a wing-like appearance which stands the building out as something quite out of the norm. In my view the wing-like roof is in itself enough to give the building distinctive character but the other parts of the building, for example the way the walls comprise a collection of panels with a prominent criss-crossing of supports between these, makes the shape even more distinctive. I am confident that the average consumer would have no difficulty recalling the Building Shape as being connected with the o organisation or person behind it.

10. The declarants, it will be noted, do not discuss inherent adaptation to distinguish within the meaning of the expression considered in Clark Equipment, above, and so they do not comment on whether other traders might, without improper motive, require to use similar features or similar combinations of features on the relocatable/transportable houses that they make.  There are no declarations from other traders in the same trade as the applicant.  There is no declaration from the applicant.

11. The first two of the declarants quoted immediately above look very strongly to the combination of features: the shape of the roof and the parti-colored panels feature as contributing to the alleged inherent adaptability of the trade mark to distinguish the goods.  However, the side panels are not, in my consideration, a part of the three dimensional shape as I have discussed above.

12. If I am wrong in this, and the panels are a part of the shape trade mark, they appear to me to be functional and are dictated by and reflect the steel frame of the building.  The Formas Internet website to which I am referred in evidence has the following picture which shows the steel frame (partially assembled) which forms the outline of the panels:

13. It is my consideration that any trader, in the ordinary course of trade, who is factory-building a prefabricated house with a steel frame, which is designed to interchange with a shipping container for transportation purposes, is likely to need to use a similar steel frame which has (when fabrication has finished) the appearance of being panels – this is not only necessitated for structural integrity during and after shipping but also for the placement of windows, doors and roofing elements and the bracing of those features.  The frame is a functional element and the panels (if they are part of the shape) reflect that function.

14. The declarants also mention the ‘butterfly’, or skillion, roof as contributing to the inherent adaptability of the trade mark to distinguish the goods of the applicant.  However, the attraction of a skillion roof which is in the butterfly shape is that it drains storm water to a middle single gutter channel on the building and allows storm water take off via one down pipe in one single location – this central drainage is remarked upon by Mr Brent in his declaration.  It appears to me that other traders, activated only by proper motives, might need to use this arrangement on transportable buildings as it simplifies installation and lowers the potential cost of having multiple storm water run-off points when installing the building.  It follows that the skillion ‘butterfly’ roof is a functional feature of the shape trade mark.

15. The central flat piece of roof between the two skillions is a way to create extra space between the boxes which form the building and detract from any impression that the occupants of the building might have that they are, in effect, living in two oblong boxes.  If I understand the brochures correctly, the components of this central area of the house ‘fold out’ from the two oblong boxes.  Again, this feature is something which any trader might need to use without improper motive in the ordinary course of trade.

16. Examples of such uses by people other than the applicant are pictured below:

17. In the uppermost picture the placement of the panels and skillion ‘butterfly’ roof is very obvious.  Similarly, the lower picture of an ablution block in Queensland shows a combination of skillion ‘butterfly’ roof (whose single central storm water take off feature is highlighted by a water tank) and also parti-colored panels and overhanging verandahs.

18. I do not think that the combination of the features of the trade mark is such that other traders are not going to need to use these, without improper motive, in the ordinary course of trade.  Each feature referred to as contributing to an alleged inherent adaptation to distinguish appears to me to be an obvious functional solution to design, transportation and financial considerations that any trader might be reasonable likely to alight innocently upon and require to use either alone or in combination.  I therefore do not consider that the principle in Diamond T Motor Car Co’s Application (1921) 38 RPC 373 applies. The mere addition of features to each other which lack any inherent adaptation does not necessarily, in itself, create in the resultant composite an adaptation to distinguish – for example, the addition of the words WORLD’S and BEST and BREWED to the word BEER does not lend the whole, WORLD’S BEST BREWED BEER, any inherent adaptation to distinguish in relation to ‘beer’.

19. Further, the declarants each appear to implicitly acknowledge that the ability of the shape trade mark to become a distinctive trade mark is something which will develop over time.  Mr Van does this in comparing the trade mark to the Petronas Tower and Tower of London or Sydney Opera House – these buildings have achieved the distinctiveness they have over a period of time and through vast publicity.  This view, however, implicitly starts from the position that the shape trade mark lacks inherent adaptation to distinguish now.

20. Mr Angus, in his submissions concerning the inherent adaptation of the shape trade mark drew my attention to my reasoning and decision in FreshFood Holdings Pte Ltd [2005] ATMO 8 concerning an application in Class 29 of the International (Nice) Classification of Goods and Services in respect of ‘coffee’ in which the trade mark was the shape of the container which appears below:

21. I accepted that the shape of the coffee jar was inherently adapted to distinguish the goods of Freshfood.

22. In Freshfoods, I noted, “It is not alleged that the particular shape has any function other than that common to all such containers.  Neither can I discern any.  There are thus no considerations of the type in Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 where the shape has a function or is conformed to achieve a technical outcome.” That contrasts strongly with the situation before me where the features which are claimed to lend adaptation to distinguish the goods are in fact functional elements of the goods themselves.

23. I would conclude that this shape trade mark has absolutely no inherent adaptation to distinguish the goods of the applicant from the transportable buildings made by other traders and thus falls for consideration under subsection 41(6).

    Subsection 41(6)

24. This subsection provides that “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.”

25. The shape trade mark has, according to the evidence, been advertised and promoted to the mining industry, to those involved in housing aboriginals, and also to teachers and others who might live in remote locations.  There are no declarations in evidence from those third parties involved in the housing of miners, aboriginals or teachers.

26. Neither is there a declaration from the applicant which states that there is an authorised user agreement in place, or stating who is the authorised user of the trade mark.  Mr Justice, who is General Manager of Formas, states in his declaration that “The FORMAS building was created by New Zealander, Rod Gibson.”  And, “Formas has been distributing the FORMAS building through a license agreement.”

27. I am left to infer that possibly Formas, or maybe the Pindan Property Group of which Formas is a part, is an authorised user of the trade mark and that this use has been authorised by either the applicant or some authorised company associated with him.  It is possible that the goods are being made by the applicant, in (I understand) China but this is not expressly stated.  The situation is not clarified by Mr Justice’s repeated references to the shape trade mark as being the FORMAS building rather than the ‘shape trade mark’ or even the ‘Gibson building’.

1. Clearly, under subsection 41(6) and section 8 the onus is on the applicant to show that such authorised use of the trade mark that may have occurred redounds to him – or to have some other affirmation that the trade mark has been used by him. It is difficult under the circumstances outlined in the preceding paragraph to conclude that the applicant has discharged this onus.

2. Further, I do not consider that (had such use which has occurred been by or authorised by the applicant) the use of the trade mark has been such that the trade mark should be taken to be capable of distinguishing the applicant’s goods. 

3. There were, according to the evidence, some 75 Formas transportable buildings sold in Australia in the three years prior to the filing of the trade mark application.  It is not stated in Mr Justice’s declaration that these were in the shape in respect of which trade mark registration is sought and I am left to infer that this is so.  However, Formas does supply buildings made in other shapes – see the example, immediately below:

4. It will be noted that the trade mark appearing on the above building is FORMAS; thus the statement by Mr Justice that his company has sold 75 Formas buildings is ambiguous. I am not suggesting that the statement is an attempt to mislead – it is more likely the result of poor drafting – however, the inference that these sales are all of the shape trade mark is not one which I am prepared to draw whilst the ambiguity exists and the onus is on the applicant in terms of subsection 41(6) to establish his use of the trade mark.

5. Moreover, if the sales referred to in the preceding paragraph had been of houses of the shape in question and had been by the applicant or under the aegis of the applicant by an authorised user, the amount of user of the trade mark by way of sales, advertising, promotion and ‘viewings’ falls well short of demonstrating that the shape has developed a secondary signification as denoting to Australians only the goods of the applicant.  A trade mark will have become distinctive when it conveys to Australians a new and secondary meaning and has ceased signifying only its primary meaning: Pepsico Australia Pty Ltd v Kettle Chips Co Pty Ltd (1996) 33 IPR 161 at pages 170, 177-78. To achieve this kind of distinctiveness, this shape trade mark would have to have a ubiquity and signification far beyond that to be inferred from a claimed 75 sales in three years and modest promotion.

6. I thus consider that the trade mark must be taken not to be capable of distinguishing the designated goods from the goods of other persons.

7. I reject application 1251677.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   12 August 2010