Societe Air France

TRADE MARKS ACT 1995

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

Re:Trade Mark Application No 1396412 (16, 18, 35, 36, 37, 38, 39) (International Registration No 1056115) - CURVED RED STRIPE - in the name of Société Air France.

Delegate:	Alison Windsor
Representation:	Holder:  Mr Robert Kelson, Trade Mark Attorney of Callinans Patent and Trade Mark Attorneys
Decision:	2013 ATMO 90 Ex parte decision:  Trade mark not inherently adapted to distinguish – evidence insufficient for purposes of section 41(5) – extension of protection to Australia refused.

Background

1. Société Air France (‘the Holder’) requested protection in Australia for the following international registration designating Australia (‘IRDA’):

Application number:           1396412
International Registration:  1056115
Filing date:  20 November 2009
Convention priority:            13 August 2009          France
Trade Mark:   (‘the Trade Mark’)
Endorsement:  Colour claimed:  RED (Pantone reference 186C).
Goods/Services:  See Annexure 1.

1. The first official report issued as a Notice of Provisional Refusal in respect of all the goods and services claimed in the IRDA. The grounds for rejecting the IRDA were raised under the provisions of section 41 of the Trade Marks Act 1995 (‘the Act’) as follows:

   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/services because it is a slightly stylised geometric shape, the kind of which represents standard, non-distinctive trade mark material. The likelihood of other traders legitimately needing to use your slightly stylised geometric shape is high.

   The refusal applies to all the goods/services claimed in the application.

   You may respond to this refusal by:

   •       Making written submissions and/or

   •Providing evidence of use showing that the trade mark is capable of distinguishing the goods/services in Australia, and

   •       Requesting a hearing in this matter.

   If you wish to respond in any of the above ways, you must do so in writing and supply an address for service in Australia.

2. The Holder nominated an address for service in Australia (Callinans Patent and Trade Mark Attorneys) which provided arguments in rebuttal and evidence of use of the trade mark.  The evidence consists of the Statutory Declaration of Jean-Marc Bardy made on 27 September 2012 and accompanied by Exhibits JMB-1 to JMB-6.

3. Despite the Holder’s evidence and submissions, the examiner maintained the section 41 ground for rejection for a further two reports. The Holder requested a hearing and the matter was set down to be heard in Canberra at 10am on 21 October 2013.

4. As a delegate of the Registrar of Trade Marks I heard the matter at the appointed time.  The Holder was represented by Mr Robert Kelson of Callinans Patent and Trade Mark Attorneys who appeared by telephone.

Discussion and reasons

1. Section 189A of the Act specifies that implementation of the Madrid Protocol…