Sociability Pty Limited

[2019] ATMO 167

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1846055 (class 10) – FINGER TAPE & LOGO - in the name of Sociability Pty Limited

Delegate:

Jock McDonagh

Representation:

Applicant: Yi-Ern Phang Director of Applicant

Decision:

2019 ATMO 167

Trade Marks Act 1995 (Cth) – Request to be heard under s 33 – Section 41 considered – trade mark not capable of distinguishing at the filing date – evidence did not demonstrate trade mark use as a badge of origin – trade mark rejected

Background

1. On 19 May 2017 Sociability Pty Limited (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:

1846055

Goods:

Bandages (elastic or supportive) for joints; Bandages (supportive) for anatomical joints; Bandages for joints (anatomical); Bandages for orthopaedic purposes; Bandages for support purposes; Joint and muscle supports (elastic and supportive bandages); Non-elastic bandages (supportive); Support bandages; Support bandages for joints; Supportive adhesive bandages; Supportive bandages; Suspensory adhesive bandages; Suspensory bandages; Suspensory bandages for joints; Suspensory bandages for use in sports

Endorsement: The applicant has advised that the JAPANESE characters appearing in the trade mark may be transliterated as FINGA TEPU which may be translated into English as FINGER TAPE.

Trade Mark:

(‘the Trade Mark’)

2. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’) and on 18 August 2017 the examiner issued an adverse report. The report indicated that there was a ground for rejecting the application under s 41 of Act. Under that section, the application 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. The basis for the examiner’s view was stated in the report as follows:

Your trade mark is, or has as its main feature, FINGER TAPE.

This indicates that your goods are tape, or intended for taping, for the fingers. This is a combination of two ordinary dictionary terms which when combined present a direct description of the goods. Your trade mark is therefore completely descriptive and completely lacking in adaptation to distinguish your goods. The Japanese katakana characters are presented in a minor font and are the direct equivalent of the English phrase. The use of these characters and the circle surrounding the words does not provide adaptation to distinguish your goods.

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

3.  The Applicant responded to the first report on 16 October 2018. The Applicant’s response was by way of a statutory declaration made by Yi-Ern Phang, the sole director and secretary of the Applicant, on 16 October 2018.  The declaration included Annexures A to V.

4.  The declaration explained use of the Trade Mark, and included examples of invoices, packaging of the product, and promotional paraphernalia. The use was moderate for a period of two years prior to the application. The goods are priced in the range $1 to $10.

5. The examiner maintained the grounds of rejection, noting that as the objection was taken under s 41(3) of the Act, evidence of use after the application filing date could not be considered. The examiner reiterated that the Trade Mark was completely lacking adaptation to distinguish the Applicant’s goods. The examiner considered that the use of the Trade Mark was likely to be perceived by ordinary customers as the description of the goods, namely finger tape.

6.  On 27 February 2019, the Applicant requested a hearing of the matter.

7. I have been allocated as a delegate of the Registrar of Trade Marks to consider the matter and either accept the application or if satisfied that there are grounds for rejecting the application, reject it, as required by the Act.

8.  I heard the matter in Canberra on 17 May 2019. Yi-Ern Phang, sole director of the Applicant appeared by video link. Mr Phang had filed written submissions on 16 May 2019, which pointed to details in his declaration, referred to above. Mr Phang’s submissions in the hearing repeated the most relevant aspects of his previous evidence and written submissions.

Discussion

Section 41 - Trade mark not distinguishing applicant’s goods or services

9. Section 41 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.

Note:          For goods of a person and services of a person see section 6.

(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.

Note 2:       For goods of a person and services of a person see section 6.

Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a  mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(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.

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).

10. Section 41 of the Act provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods and services of one trader from the similar goods or services of another trader.

11.   Turning to the relevant consideration of whether a trade mark is inherently adapted to distinguish, in the case of Clark Equipment Co v Registrar of Trade Marks (‘Clarke Equipment’), Kitto J found:

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.

…

[T]he question [is] whether a mark is adapted to distinguish 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. [1]

[1] (1964) 111 CLR 511 [513–14].

12.   As Kitto J made clear, it is “the common right of the public to make honest use of words forming part of the common heritage”,[2] with some words “so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration.”[3] Equally, while a descriptive statement may be commonly associated with a particular trader’s goods and services, this will not in and of itself, mean that statement is inherently adapted to distinguish that trader’s goods and services.[4]

[2] Clarke Equipment, 514.

[3] Ibid. 516.

[4] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968, [38].

13.   Justice Bennett further observed in Unilever Australia Ltd v Societe Des Produits Nestlé S.A:

The more apt the word or expression is to describe the goods, the less it is inherently apt to distinguish them as the goods of a particular manufacturer (Clark Equipment at 515). The setting or context in which the use occurs is relevant in determining whether the use is descriptive or for the purpose of indicating a connection in the course of trade between the product and the trade mark applicant, as a badge of origin (Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 424–5; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 350–1).[5]

[5] [2006] FCA 782, at [31].

14.   More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 endorsed that the proper test for assessing the inherent capacity of a trade mark to distinguish still remains that articulated by Kitto J in Clarke Equipment. In doing so, the majority discussed the meaning of Kitto J’s words:

[T]he question whether a mark is adapted to distinguish 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

15.   In Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft (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:

[M]erely 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.’

16.   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.

17.   By analogy, it seems to me that I must conclude that the particular manner in which the Trade Mark presents the words ‘finger tape’ does not give it inherent adaptability to distinguish the designated goods, the words ‘finger tape’ alone lacking such inherent adaptability.  I do not think that the use of Japanese text denoting ‘finger tape’, and the circular device surrounding the words ‘finger tape’ are sufficient. 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 significance in respect of a particular kind of sporting tape.  I find that the Trade Mark is not inherently adapted to distinguish the designated goods from the goods of another person.

18.   The evidence demonstrating use of the Trade Mark in Australia is very limited. There are a about 115 invoices for orders costing between $11 and $70, typically for $20, and for a total of about $5,000. Promotional expenditure is in the order of about $1,000. There are photographs that show martial artists and climbers with taped fingers and holding nondescript packages displaying the Trade Mark on a white background; however, many appear to be overseas and it is unclear whether the photographs are of Australian events.

19.   I am not satisfied that the evidence demonstrates that the Trade Mark functions as a badge of origin for the Applicant’s goods in Australia.

Decision

20. Section 33 of the Act provides:

33 Application accepted or rejected

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

(a)  the application has not been made in accordance with this Act; or

(b)  there are grounds under this Act for rejecting it.

Note: For this Act see section 6.

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

Note: For limitations see section 6.

(3)  If the Registrar is satisfied that:

(a)  the application has not been made in accordance with this Act; or

(b)  there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note: For this Act see section 6.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note: For applicant see section 6.

21. I am satisfied that there is a ground for rejecting the Trade Mark under s 41(3) of the Act. As such, I reject trade mark application 1846055 in accordance with s 33(3) of the Act. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Jock McDonagh

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

22 November 2019