Samsung Electronics Pty Ltd

[2024] ATMO 224

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2314262 (class 9) – Music Frame - in the name of Samsung Electronics Co., Ltd.

Delegate:

Nicole Worth

Representation:

Applicant: Michelle Calder, Spruson & Ferguson

Decision:

2024 ATMO 224

Trade Marks Act 1995 (Cth) – s 33 – ground for rejecting trade mark under s 41(4) – trade mark to some extent inherently adapted to distinguish – other circumstances under s 41(4)(b) considered – application accepted.

Background

1. This is a decision pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that, inter alia, there are grounds for rejecting it.

   [1] Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.

2. On 11 November 2022 Samsung Electronics Co., Ltd (‘Applicant’) filed trade mark application number 2314262 (‘Application’) to register the trade mark detailed below.

   Trade Mark:                   Music Frame (‘Trade Mark’)

   Filing Date:                   11 November 2022

   Goods:Class 9: Audio speakers; sound amplifiers; audio amplifiers; digital audio players.

3. The Application was examined and a ground for rejection was raised under s 41(4) of the Act on the basis that:

   The term MUSIC is defined as 'musical work or compositions for singing or playing' (Macquarie Dictionary).

   The term FRAME is defined as 'an enclosing border or case, as for a picture' (Macquarie Dictionary).

   With the above in mind, your trade mark indicates that your audio speakers; sound amplifiers; audio amplifiers; digital audio players as claimed in Class 9 are in the nature of FRAMES that are capable of playing MUSIC.

   Other traders should be able to use MUSIC FRAME, or some term that so nearly resembles it, in connection with goods or services similar to yours.

4. The Applicant made submissions contesting the ground for rejection, however the ground was maintained over the course of two further examination reports. After the third examination report, the Applicant exercised its right to be heard.

5. I heard the matter, as a delegate of the Registrar of Trade Marks, on 2 September 2024. Michelle Calder, of Spruson & Ferguson attorney firm, represented the Applicant at the hearing and filed written submissions on its behalf. I mention here that the purpose of these proceedings is not a review of the examiner’s decision, but rather a fresh consideration of the ground for rejection.

The Legislation

1. Section 41 of the Act relevantly provides:

   41 Trade mark not distinguishing applicant’s goods or services

   (1) 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 (the designated goods or services) from the goods or services of other persons.

   (2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3) This subsection applies to a trade mark if:

   (a) 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; and

   (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4) This subsection applies to a trade mark if:

   (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii) the use, or intended use, of the trade mark by the applicant;

   (iii) any other circumstances.

   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.

   (5) 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.

2. A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, if I consider the Trade Mark has some inherent adaptation to distinguish the designated goods, I am not entitled to reject it unless satisfied that the combined effect of its inherent adaptation to distinguish, any past or intended use of it, and any other circumstances, has not or will not render the Trade Mark distinctive or capable of distinguishing. If I consider the Trade Mark has no inherent adaptation to distinguish, I am not entitled to reject it unless I am satisfied that it does not in fact distinguish the designated goods, having regard to the extent to which the Trade Mark was used, if at all, before the filing date of the application.

Discussion

1. The starting point for the assessment under s 41 is a consideration of the inherent adaptation of the Trade Mark to distinguish the designated goods from those of other traders. This is to be tested

   by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated by only 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]

   [2] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

2. This test was cited with approval in Cantarella Bros Pty Limited v Modena Trading Pty Limited.[3] In that case their Honours describe a two-step process of consideration wherein first the ordinary signification of a word is determined, permitting a conclusion to be drawn as to whether the word contains a ‘direct reference’ or ‘covert and skilful allusion’. Then the legitimate desire of other traders to use the word is considered, wherein only a word comprising a ‘direct reference’ can legitimately be desired for use by other traders – not words that are allusive or metaphorical.[4]

   [3] [2014] HCA 48 (French CJ, Hayne, Crennan, Keifel and Gageler JJ).

   [4] Ibid [59].

3. I start therefore by considering the ordinary signification, if any, of Music Frame. I bear in mind that it is the signification of the Trade Mark as a whole which is relevant, however it remains necessary to consider the ordinary signification of the words individually in order to assess the signification of the phrase.[5] Additionally, any meaning of the Trade Mark is to be assessed in the context of the designated goods: ‘[T]he meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here, the scope of the use of the word is settled by the application for registration…’[6]

   [5] See for example Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 (Moshinsky J) or Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 (Yates J), wherein the ordinary signification of the respective phrases MELBOURNE BONE AND JOINT CLINIC and APP STORE were considered, taking into account the meaning of the individual words comprising the phrases.

   [6] Howard Auto-Cultivars Limited v Webb Industries Proprietary Limited [1946] HCA 15 (Dixon J), (1946) 72 CLR 175, 184.

4. ‘Music’ is a commonly understood word which refers to rhythmic and/or melodic sounds. It has multiple definitions in the Macquarie Dictionary, including ‘the art of organising sound in significant forms to express ideas and emotions…’, ‘the tones or sounds employed, occurring in a single line (melody) or multiple lines (harmony)’, ‘musical work or compositions for singing or playing’, or ‘any sweet, pleasing or harmonious sounds or sound’.[7] Similarly. ‘frame’ is a commonly understood word which refers to a surrounding or supporting structure, although depending on context the meaning and uses of ‘frame’ varies significantly. Relevant definitions from the Macquarie Dictionary include ‘an enclosing border or case, as for a picture’, ‘anything composed of parts fitted and joined together, a structure’, ‘a structure for admitting or enclosing something’ and ‘form, constitution, or structure in general; system; order’.[8]

   [7] Macquarie Dictionary (online at 4 November 2024) ‘music’ (definitions 1, 2, 3 and 6).

   [8] Macquarie Dictionary (online at 4 November 2024) ‘frame’ (definitions 1, 2, 5 and 10).

5. The word ‘frame’ is not commonly used in the context of the designated goods, being ‘audio speakers; sound amplifiers; audio amplifiers; digital audio players’. Nonetheless, it would not be entirely without meaning in this context. I am aware from my own knowledge that electronic frames for digital photographs have existed since the 1990’s. They were commonly referred to as ‘digital photo frames’ and could include audio capability. This is reflected in the examiner’s research which reveals several such frames currently on the market including the ‘Dragon Touch Digital Picture Frame with Music’, ‘Ultrasound Music Box Photo Frame’ and ‘Pix-Star digital picture frame’, as well as a ‘Music Photo Frames’ category on the retail website ‘ Similarly, I am also aware that the Applicant’s own product ‘The Frame’ television (a framed television screen with the ability to appear as a framed work of art) has had wide exposure in the Australian market. Consumers therefore have some level of familiarity with the word ‘frame’ in the context of electronic goods which produce sound, even if those goods are not speakers or amplifiers per se (although they do accord with the specified goods ‘digital audio players’).

6. On the other hand, as pointed out by the Applicant there is no evidence of meaningful use of the precise phrase MUSIC FRAME by other traders in respect of the designated goods. Whilst those words appear together in ‘header’ results of Google searches shown in the examiner’s research, the actual web pages behind those results demonstrate only use with additional words to provide meaning, such as ‘Music Picture Frame’ or ‘Music Photo Frame’. Instances of the precise phrase MUSIC FRAME are in the context of music-themed picture frames, for example frames decorated with music themed images, not the designated goods (nor electronic goods generally).

7. Nonetheless, whether or not other traders are actually using an impugned trade mark is not determinative of the question of inherent adaptability. Although use (or a lack of use) can be indicative of the level of current desire by other traders to use a trade mark, it does not fully answer the question of future legitimate desire (for example in the context of burgeoning industries or technologies).

8. I consider that the Trade Mark does contain a direct reference to the nature of the goods, being that of audio speakers, amplifiers and players which appear as frames, or frames with audio capabilities. I do not consider that the Trade Mark is allusive or metaphorical, although I acknowledge that MUSIC FRAME is not the most obvious of descriptions. The likelihood of other traders desiring to use the Trade Mark or another mark closely resembling it is therefore somewhat diminished, but not altogether insignificant.

9. Bearing these considerations in mind, I consider that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the designated goods. Accordingly, s 41(4)(a) applies to the Trade Mark and I turn to the determination of s 41(4)(b).

10. The Applicant has not filed any evidence of use or intended use. However, it does provide certificates of registration of the Trade Mark from Andorra, Taiwan, the European Union and the United Kingdom. I take particular note of the registrations in the European Union and the United Kingdom. The Trade Mark was found to be inherently distinctive in both jurisdictions. As noted in Game Theory Soapbox Limited:

    The legal tests for whether a trade mark is sufficiently distinctive to be considered registrable differ from country to country. However, the trade mark systems of the UK, EU, and USA all have an underlying rationale similar to Australia in assessing distinctiveness, which is to prevent the unfair monopolisation by one trader of descriptive or otherwise non-distinctive terms or indicia. Further, like Australia, decision makers in the UK, EU, and USA will consider the effect of an English language trade mark on English speaking consumers.[9]

    [9] [2022] ATMO 38, [12] (Hearing Officer Knowles).

11. Registration in comparable jurisdictions has been considered by the Registrar as a relevant ‘other circumstance’ justifying registration in borderline cases under s 41:

    [I]f it is said that the matter approaches borderline, it would be difficult to justify placing additional obstacles in the way of a trade mark that is already accepted in comparable jurisdictions under analogous circumstances.[10]

    [10] See for example Unilever PLC [2001] ATMO 39 (Hearing Officer Williams).

12. Here, weighing the degree of inherent adaptation to distinguish, I consider such registrations sufficient to tip the balance in favour of the Applicant.

13. Accordingly, I consider that the Trade Mark may be accepted for possible registration, and I have accepted the Trade Mark with the following endorsement:

    Evidence and/or other circumstances provided under subsection 41(4).

14. The acceptance will be advertised for opposition purposes in due course, and the Applicant will receive notification should any opposition to registration be filed.

Nicole Worth

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

20 November 2024