Saint-Gobain Glass France

[2011] ATMO 115

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia 1349913(19, 21, 42) – Q – (International Registration No 1030219) in the name of Saint-Gobain Glass France.

Delegate:

Iain Thompson

Representation:

Holder: written submissions by AJ Park Intellectual Property.

Decision:

2011 ATMO 115

Reg 17A.24: section 41 of the Act; inherent adaptation of Trade Mark; Trade Mark not capable of distinguishing designated goods and services because of its resemblance to the letter Q; get-up of Trade Mark; intended use of Trade Mark; IRDA rejected.

Background

1. Saint-Gobain Glass France (‘the holder’) of Paris, France, has requested protection in Australia for the following International Registration Designating Australia (‘IRDA’):

IRDA No:  1349913

International No:             1030219

Filing Date:  28 December 2009

Convention Priority:       17 December 2009 (09/3699422: France)

Goods/Services:              Class 19: Building materials, not of metal, namely building glass; printed glass for building; glazing; windows and doors, not of metal; sheets, plates, panels, walls and glass for buildings, fitting out, exterior and interior decoration; glass walls and partitions for building

Class 21: Glassware not included in other classes, namely unworked or semiworked glass (except building glass); printed glass (not for building); opaque and translucent enamelled glass (not for building); lacquered glass (not for building); serigraphed glass (not for building); painted glass not for building; unworked and semi-worked glass also in the form of sheets and plates used in the manufacture of sanitary installations, shower cubicles, shower doors, shower partitions and walls, refrigerator shelves, glazing, walls, partition walls, doors, cupboard and furniture doors; utensils and containers for household or kitchen purposes (neither of precious metals, nor coated therewith)

Class 42: Technical consultancy in the field of glass making, architecture and interior design; professional consulting for technical applications in the fields of glassware products, architecture and interior design; technical project studies; computer software design and development; rental of computer software; software updating; computer programming; research and development of new products in the fields of glassware, architecture, and interior design

Trade Mark:  

(‘the Trade Mark’)

1. Examination of an IRDA is provided for under the regulations to the Trade Marks Act 1995 (‘the Act’) which relevantly allow:

   17A.12 Registrar to examine, and report on, IRDA

   If the Registrar receives from the International Bureau a notification of an IRDA, the Registrar must examine and report on:

   (a)whether the IRDA is in accordance with this Division; and

   (b)whether there are grounds under Subdivision 2 for rejecting it.

   17A.28 Grounds for rejecting IRDA

   (1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).

   (2)Sections 39 to 44 apply in relation to an IRDA as if:

   (a)a reference in those sections:

   (i)to an application for the registration of a trade mark were a reference to the IRDA; and

   (ii)to an applicant were a reference to the holder of the IRDA; and

   (b)the reference in paragraph 41 (6) (a) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and

   (c)each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark registered by another person included a protected international trade mark held by another person; and

   (d)each reference in subparagraphs 44 (1) (a) (ii) and (2) (a) (ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.

2. The Registrar has examined and reported on the IRDA and found that there is a ground for rejection in terms of section 41 of the Act: put briefly, that the Trade Mark so resembles the alphabetical letter Q that it lacks inherent adaptation to distinguish the designated goods and services. The Registrar and the holder have respectively exchanged several examination reports and ‘contests of the Registrar’s beliefs’[1] as provided for by regulations 17A.16 and 17A.17.  Now, in lieu of a hearing on the matter, the holder through its attorney AJ Park Intellectual Property has filed submissions for me to consider and requested a decision on the written record.  The holder has further requested that all of its prior correspondence contesting the beliefs of the Registrar be taken into consideration.

   [1] I adopt the language of regulation 17A.17(2)(a).

3. I am a delegate of the Registrar of Trade Marks and will decide this matter taking into account the materials on the official file, the Act and case law pertaining thereto and the various manuals and reference works which are relevant to the ground for rejection.

4. The materials on the official file comprise:

   ·Examiner’s Work File, Research and Search Results,

   ·Reports from the examiner dated:

   o6 April 2010

   o9 August 2010

   o29 November 2010

   o10 March 2011

   o28 June 2011

   ·Contestations of the Registrar’s belief dated:

   o30 July 2010

   o28 October 2010

   o10 February 2011

   o31 May 2011

The Stated Ground for Rejection

1. The ground for rejection under subsection 41(5) of the Act (that the Trade Mark is not sufficiently inherently adapted to distinguish the designated goods and services) is stated by the examiner in the first report in the following way:

   Grounds for rejecting this International Registration Designating Australia (IRDA) exist under sub section 41(5) of the Trade Marks Act.

   To be protected in Australia, your trade mark must be capable of distinguishing your goods/services from the similar goods/services of other traders in the market place.

   Your IRDA is refused as the trade mark is not capable of distinguishing the specified goods and services as it consists of the single letter Q.

   Single letters are commonly used on goods or services as initials, symbols or abbreviations.

   Other traders should be able to use this letter in connection with goods or services similar to yours.

2. The subsequent reports of the examiners elaborated on the above theme with references to case law and to the Trade Marks Office Manual of Practice and Procedure.

The Contesting Submissions

1. As mentioned, attorneys for the holder are AJ Park Intellectual Property of Auckland, New Zealand.  Their contestations on behalf of the holder[2] are quoted in condensed form below:

   [2] The attorney’s references to ‘the applicant’ in the passages which follow are references to ‘the holder’.

   · is not “Q”.  We disagree with the examiner’s reading that the device the subject of application 1349913 is automatically “Q”.  The trade mark is  and does not automatically read “Q”.  Q is the 17^th letter of the Roman alphabet which consists of a complete circle with a line cutting through it at 5 o’clock at a 45 degree angle. This is not how the device the subject of this application is represented.  What is ?  Whatever  is, it will not automatically be perceived by consumers as the 17^th letter of the Roman alphabet.  When considering the features of the trade mark as a whole, the trade mark is not “Q”. The mark’s features combine to make the mark as a whole unusual and distinctive.  Due weight should be given to the space in the trade mark, this space changes the device from being what is readily described as a “Q” to being something more.  The mark is distinctive for the goods and services it seeks registration for.   is:

oA lasso

oA magnifying glass with a bit missing

oA bubble.

·Single letters are able to act as trade marks.  Even if the device is a stylised representation of the letter “Q”, we respectively reject the examiner’s argument that the single letter Q is incapable of distinguishing the specified goods and services.  Single letters are able to distinguish the goods and services of one trader from those of another.  Single letters are by definition registerable; the Trade Marks Act 1995 defines a sign as including “any letter”. Therefore, single letters which are capable of distinguishing are registerable.  Many letters are used as common abbreviations, but not the letter Q.  As the IP Australia practice manual says the single letters “E”, “I” and “M” may be used to indicate electronic, internet, or mobile. These single letters, as they have secondary meanings, should be left available for other traders to use.  However, the letter Q is not a known abbreviation, and not an abbreviation used in relation to the goods and services in the application.  We refer to W&G du Cros Ltd’s Application (1913) 30 RPC: 660 at 672 where it was stated:

“the, applicant’s chances of success must depend on whether other traders are likely in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark merely resembling it, upon or in connection with their own goods”

Given, the letter “Q” has no meaning in connection with the glass trade, it is unlikely that other traders in the same or similar industry as the applicant would in their ordinary course of business, without improper motive, desire to use the letter “Q”.

·The equivalent applications have been accepted in other jurisdictions. We attach:

oextracts from the Norwegian Industrial Property Office showing the acceptance of this mark in Norway

oan extract from the OHIM database showing that the equivalent mark has been published for opposition in the European Community

othe certificate of registration from WIPO

oan extract from the USPIO showing acceptance for publication in the USA

Although not binding on the registrar, we submit that marks that are sufficiently distinctive in America, the European Community and Norway are equally likely to act as trade marks in the Australian market.

·We refer […] to the decision of the delegate of the Register of Trade Marks with reasons in Saguna Food-Und Non-Food-Vertriebs GmbH v Planet Health Pty Limited [2010] ATMO 26.

In discussing the opposition grounds, including the opposition based on Section 41, the Hearing Officer Debrett Lyons states:

“whether a mark is inherently adapted to distinguish has been said to depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark closely resembling it, upon or in connection with their own goods.”

·Mr Lyons goes on to say the following about the letter Q:

“[the letter] ‘Q’ is an uncommonly used letter. It seems to me to be an arbitrary letter when used in relation to the goods. It is not the name or symbol or abbreviation or any relevant substance, nor does it appear to describe any characteristic or quality of the designated goods.”

·We agree with Mr Lyons, that the letter Q is:

oCapable of distinguishing

oUncommon

oAn arbitrary letter in relation to the goods in the application

oNot the name of or symbol of a substance or abbreviation of a substance that is descriptive of the goods in the application.

·The examiner states that the trade mark is not represented in an unusual manner. However, the examiner overlooks the subtle uniqueness of the design.  If this trade mark is in fact the letter Q, it is stylised in a unique manner that makes the mark in both negative and positive resemble the letter Q.  This unusual representation which means that the internal part of the mark, (the negative part) is the same as the positive part of the mark, makes the mark unusual, eye-catching and visually distinctive.  Embellishment does not require additional material.  In fact with the concept of modern design, minimalism and simplicity afford design-uniqueness. [sic]

·The attorneys draw attention to a number of acceptances which may contain or consist of alphabetical letters rendered in various ways.

·We note you are willing to consider evidence of use of proposed use of the mark that would demonstrate that overall the mark would be inherently adapted to distinguish. Accordingly, we attach one of the applicant’s brochures demonstrating that overall the mark is inherently adapted to distinguish. This brochure shows the use the applicant proposes to make of its trade mark in Australia. This is in the same way it uses its trade mark in Europe.  We note that the applicant’s trade mark is used repeatedly throughout the brochure, particularly on pages 1, 3, 6, 10, 16, 21, 28, 34, 40 and 48. This demonstrates that the applicant does not use the trade mark descriptively; rather it uses it as a badge of origin of the goods.

·We note the examiner states that she considers that caution is necessary when considering the comments of Hearing Officer Lyons. It appears that the examiner is applying a more rigorous test for the present application than is required. Section 17 of the Trade Marks Act 1995 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. Section 6 of the Trade Marks Act 1995 defines sign to include: “the following or any combination of the following namely, any letter, word, name, signature, numeral device, band, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”. Thus, the Act specifically states that trade marks may consist of “any letter”. The question then remains whether the mark is capable of distinguishing. As set out above we consider the mark is capable of distinguishing and when it is used, will so distinguish the goods of the applicant.

1. The submissions put before me by the holder in essence recapitulate the above contentions placed before the examiner.  I will address both sets of submissions in the course of my decision.

2. The Trade Mark appears within the brochure of the holder.  Another trade mark which contains the Trade Mark also appears in the brochure:

1. I note that the above trade mark confirms the resemblance of the Trade Mark to the alphabetical letter Q.

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 to any extent 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).

1. The operation of section 41 was explained by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 (‘Blount’)where she said:

   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)).

1. The first consideration under section 41 of the Act therefore lies within subsection 41(3) and an assessment of the extent to which the Trade Mark is inherently adapted to distinguish the designated goods and services from the goods or services of other traders.

2. In this regard, the words of Kitto J in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (‘Michigan’) are apposite.  Kitto J said at (CLR) 513:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.”

3. The attorney has submitted that the Trade Mark is not obviously the alphabetical letter ‘Q’. She has stated that the Trade Mark is a number of different things – a lasso, a magnifying glass with a bit missing or a bubble. I would add that at an extreme the Trade Mark might also be seen as a Mexican with a fishing rod as viewed from above. But these are not relevant considerations when assessing the registrability of a trade mark in the context of section 41. In the context of section 41 there are three major considerations in assessing an application such as this: firstly, what does the Trade Mark most appear to be? Secondly, what rights may be created upon the grant of registration or protection to the Trade Mark? And thirdly, what present or future inchoate rights[3] of other traders might be interfered with upon the registration or protection of the Trade Mark?

   [3] Eg “whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it upon their similar goods or services” per Michigan.

4. I consider that the Trade Mark essentially consists of the alphabetical letter Q.  There are many fonts in which the ‘tail’ of the letter Q does not intrude into the circular central space such as Times New Roman in which this decision is written.  I am unable to see, as the attorney as invited me to, some other repetition or echo of the alphabetical letter Q within the trade mark.

5. The attorney’s interpretations of the Trade Mark appear to me to be quite as fanciful and strained as the one that I have suggested.  And I also consider that (if the Trade Mark did not essentially consist of the alphabetical letter Q which it obviously does) it would be appropriate to treat the Trade Mark as being the alphabetical letter Q because both the rights which would be granted (and the effects on the inchoate rights of other traders) in relation to the alphabetical letter Q must be affected by the registration (or, as pertains to an IRDA, the protection) of the Trade Mark.

6. It is apparent that both the Registrar and the Courts have been slow to allow immediate acceptance for registration of trade marks which are comprised of one or two alphabetical letters on a prima facie basis.[4]  There are two major reasons for this – firstly it is the habit of traders to place their, or their company’s, initials upon their goods which was a matter referred to in Registrar of Trade Marks v. W. & G. Du Cros Ltd. [1913] AC 624. Secondly, initial letters are frequently used by traders to indicate some characteristic of the goods or services such as the kind, quality, quantity, intended purpose, value or geographical origin.

   [4] See discussion in Australian Law of Trade Marks and Passing Off, DR Shanahan et al © 2011 Thomson Reuters (Professional) Australia.

7. Further, it is not necessary to show that another trader is in fact using a sign in a descriptive manner in relation to its similar goods or services in order to make an assessment as to whether that sign lacks inherent adaptation to distinguish an applicant’s (or holder’s) goods or services: Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417; 1a IPR 504 (‘Whopper’); Re Chancellor, Masters and Scholars of the University of Oxford T/A Oxford University Press v the Registrar of Trade Marks [1990] FCA 175; 24 FCR 1; (1990) 17 IPR 509 (‘Oxford’).

8. Additionally it is incorrect to claim as the holder has here that some particular denotation must be ascribed to a sign which is under consideration as a trade mark before that sign might be validly rejected in terms of section 41 of the Act as lacking sufficient inherent adaptation to distinguish the designated goods or services. Trade marks which are comprised of one or two alphabetical letters prima facie lack sufficient inherent adaptation to distinguish because of the habits (both present and prospective) of traders in commonly requiring such letters to place upon their goods: Effem Foods Pty Ltd v Marks and Spencer PLC [1999] ATMO 88. Many kinds of signs which come under the consideration of the Registrar have no specific denotation and yet lack inherent adaptation to distinguish – for example, people’s names such as JOHN SMITH or MARY JONES, common surnames such as WILSON, aspects of packaging, and most shapes, colours, sounds or scents.

9. Accordingly, the Trade Mark lacks inherent adaptation to distinguish the goods and services of the holder and therefore (setting aside the issue of the get-up of the Trade Mark which I will discuss below) the provisions of subsection 41(5) apply to the IRDA.

10. That said, in reviewing this matter I have referred to the Dictionary of Abbreviations (First edition, 2011 – An Oxford Online Reference) which contains the following entry:

    24. Q

    quality

11. The number ‘24’ refers to the fact that the entry is the 24^th (out of 25) in a series of definitions of terms for which the alphabetical letter Q is an abbreviation.

12. The alphabetical letter Q is thus apparently an understood abbreviation for the word ‘quality’ and the letter is accordingly one that other traders may wish to use without improper motive and for the sake only of its ordinary significance to indicate the excellence of their similar goods and services.

13. The attorney has referred me to the decision of Mr Lyons in Saguna Food-Und Non-Food-Vertriebs GmbH v Planet Health Pty Limited [2010] ATMO 26. I distinguish this decision from my colleague’s on the basis that he was considering a composite trade mark in relation to different goods from those here under consideration.

14. The attorney has also referred me to a large number of trade marks which have been accepted for registration which she says feature letters of the alphabet. In this regard what appears on the register is, at most, something which may be considered as a guide rather than a rule. ‘Precedent’ on the register is not binding in any way. In relation to the British equivalent of subsection 41(6) of the Act (s 3(1)(b) Trade Marks Act 1994 (UK) “devoid of distinctive character”), Jacobs J in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (‘Treat’) said at page 305:

    In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see eg Re “Madame” Trade Mark [1966] RPC 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.

15. And in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579; [2000] AIPC 37,137 Wilcox J observed at paragraph 35 (after quoting Jacobs J in Treat):

    I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

16. I add to these judicial observations that in my consideration I am to apply the Act and relevant law to the particular application before me and regard what is on the register as being somewhat akin to a wide tidal range rather than a benchmark: cf Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘Persian Fetta’); Sports Break Travel Pty Ltd v P & O Holidays Ltd [2000] FCA 924 (‘Schoolies’); Larry John Powell v Glow Zone Products Pty Ltd [1996] FCA 1021 (‘Caps the Game’). I add that while the holder wishes me to ‘read down’ the law and look at the Trade Mark sympathetically because of what may be on the register, the holder should understandably be concerned if I were, irrespective of the provisions of section 41 of the Act and relevant law, to reject the Trade Mark on the basis only of what is on the Register of Trade Marks or has previously been rejected.

The ‘Get-up’ of the Trade Mark

1. The holder also made submissions to the effect that there is sufficient inherent adaptation to distinguish in the get-up of the Trade Mark for it to be found to be at least capable of distinguishing the designated goods and services.

2. Considerable guidance is available from the Courts concerning get-up in trade marks and how this affects inherent adaptation to distinguish.  In Blount the trade mark at issue was that below:

1. Branson J observed in Blount at paragraph 12:

   In Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285, Kitto J was required to consider “a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter “Y” is common to both, the whole being enclosed within a circle.” His Honour said of this cross device that it:

   “...merely provides a fancy method of presenting the name `Bayer’, and it has no greater aptitude than has the name itself for distinguishing the proprietor’s goods from those of other people who happen to be known as ‘Bayer’. It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which ... `would strike the eye and fix in the recollection.’“

   On appeal to the Full Court of the High Court, Taylor and Owen JJ expressly agreed with the above approach of Kitto J to the Bayer cross device. No member of the Court criticised his Honour’s approach.

   By analogy, it seems to me that I must conclude that the particular manner in which the applicant’s trade mark presents the word “Oregon” does not give it inherent adaptability to distinguish the designated goods, the word “Oregon” alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word “Oregon” are sufficient to take the applicant’s trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.

2. The holder has, however, submitted that the Trade Mark is “visually distinctive”. Regarding trade marks which are distinctive only because of their get-up, (as opposed to being capable of distinguishing on that basis) it is convenient to refer to the cases which deal with trade marks which are rendered in a ‘special or particular manner’: this expression was contained within section 24 of the Trade Marks Act 1955 and its British antecedents to allow for the registration of trade marks the get-up of which rendered them “visually distinctive”.  In British Milk Products Co Ltd’s Application (1915) 32 RPC 453, Sargant J found that as the name of the applicant (which comprised the trade mark) was rendered in ordinary handwriting or script, it was not rendered in a special or particular manner. In Fanfold Ltd’s Appn (1928) 45 RPC 325 (‘Fanfold’) the trade mark under consideration was that which appears below:

1. Lord Hanworth said in Fanfold at page 329:

   The type employed in the representation of the name is quite ordinary; and it does not appear to me that the slight arching of the name (which in itself is a common form of display) and the addition of the indistinctive scroll device are so special or particular as to fit the whole mark to distinguish the Applicant’s goods.

2. And in Standard Cameras Ltd’s Application (1952) 69 RPC 125 (‘Robin Hood’) the trade mark was that which appears below:

1. Lloyd-Jacob J observed in Robin Hood at page 129:

   I myself entertain no doubt that it is an unusual representation, which does strike the eye as uncommon, and which I should suppose is so unlikely as to be substantially impossible for any ordinary man wishing to represent the name “Robin Hood” to arrive at.  Accordingly, were the matter before me, sitting as the Registrar of Trade Marks, I should have accepted this application for registration [as being rendered in a special or particular manner].

2. However, the observations of Branson J in Blount (referred to above) apply here and the Trade Mark may be regarded as having markedly less get-up than the Oregon trade mark which Branson J found should consequently be considered under subsection 41(6) of the Act. The manner in which the Trade Mark is rendered appears to me to be substantially as the alphabetical letter Q or as so resembling the alphabetical letter Q as to be taken only for it. My assessment of the get-up of the Trade Mark is therefore that it is prima facie lacking inherent adaptation to distinguish the designated goods or services from the goods or services of other persons.

3. I accept, however, that the Trade Mark contains at least some degree of inherent adaptation to distinguish the designated goods and services and thus I move on to consider it in terms of subsection 41(5).

Subsection 41(5)

1. Subsection 41(5) requires me to consider whether I am satisfied that ‘because of the combined effect the extent to which the Trade Mark is inherently adapted to distinguish the designated goods or services and the use, or intended use, of the Trade Mark by the applicant and any other circumstances’ the Trade Mark does or will distinguish the designated goods and services as being those of the applicant.

2. There is no evidence before me that the Trade Mark has been used in Australia.

3. My assessment of the inherent adaptation of the Trade Mark to distinguish the designated goods and services is that it stands as being low when its resemblance to an alphabetical letter (and the denotation of that letter) and the comparative lack of get-up (in terms of Blount) of the Trade Mark are considered.

4. The holder has submitted a brochure as evidence of the use or intended use of the Trade Mark.  However, the brochure does not evidence an intended use of the Trade Mark in Australia.  The brochure is written in French, German and English and is, I infer, intended for circulation in Europe and the holder does not claim that the brochure has circulated in Australia.  The holder has not submitted any other evidence which outlines the intended use of the Trade Mark in Australia – such as whether it has a subsidiary or sales representative in Australia, details of a planned advertising budget to support or encourage trade in the designated goods and services in Australia, forecasts of sales and so forth from which I could assess whether because of such future use of the Trade Mark it will distinguish the designated goods and services as being those of the applicant.

5. After consideration of the combined effect of the above factors I am not satisfied that the Trade Mark does or will distinguish the designated goods or services and the Trade Mark is therefore taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Decision

1. Regulation 17A.24 provides:

17A.24Final decision on examination

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

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

(b)there are grounds for rejecting it.

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

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

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

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

1. I reject IRDA 1349913(19, 21, 42) – Q (Logo) – (International Registration No 1030219).

Iain Thompson

Hearing Officer

Trade Marks Hearings

21 November 2011