Solo Industries Pty Ltd

[2019] ATMO 136

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1857374 (7) – Cross blades device - in the name of Solo Industries Pty Ltd.

Delegate:

Katrina Brown

Representation:

Fraser Old of Fraser Old & Sohn

Decision:

2019 ATMO 136

Trade Marks Act 1995 – section 33 proceedings – s 41 – trade mark not to any extent inherently adapted to distinguish – evidence not sufficient – trade mark application rejected.

Background

1. This matter is an ex parte proceeding pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’) involving an application to register the following device trade mark.

Trade Mark No:	1857374
Trade Mark:	(‘the Claimed Mark’)
Applicant:	Solo Industries Pty Ltd (‘the Applicant’)
Filing Date:	6 July 2017
Specification:	Class 7: Lawn edger blades (‘the Designated Goods’)

1. The application was examined and a ground for rejection was raised under s 41(3) of the Act as the examiner was of the opinion that the Claimed Mark was not to any extent inherently adapted to distinguish the Designated Goods.

2. After four examination reports the examiner remained of the view that s 41(3) was applicable, and so the Applicant requested to be heard by way of written submissions. They were invited to file any further submissions or evidence by 3 June 2019. On 9 May 2019, the Applicant informed me that they would not be filing additional submissions or evidence. As such, in reaching my determination I have had regard to the written record which consists of:

• The Application;

• Examiner’s reports;

• Correspondence to the examiner from the Applicant dated 1 September 2017, 29 May 2018, 28 November 2018 and 21 January 2019; and

• Declaration of John Arthur Notaras (Director of the Applicant) made on 1 September 2017 with Annexures JN1 to JN6 (‘Notaras Declaration’).

1. As a preliminary matter I note that the focus here is not to review the examiner’s decision and rationale, but rather to consider afresh the ground for rejection that was raised.

Section 41

1. Section 41 of the Act relevantly provides:

   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…

(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.

1. The inherent adaptation of a trade mark 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 the 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] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.

2. Whilst the above passage refers to trade marks consisting of words, the principle is equally applicable to other types of trade marks including device trade marks.[2] I also note that the enquiry is directed, not only at the likelihood of other traders desiring to use the Claimed Mark, but also at their desire to use ‘some mark nearly resembling it’ in connection with similar goods.[3]

   [2] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, [146].

   [3] W&G Du Cros Ltd’s Appn (1913) RPC 660.

3. In the Notaras Declaration the Claimed Mark is described as:

   a device consisting of a pair of notionally assembled but unmounted lawn edger blades (hereinafter referred to as the “device trade mark”). The device mark is not a picture of the goods as sold since the lawn edger blades as sold are loose and unassembled within their packaging. In addition, the device mark is not a picture of the goods as used since in use the lawn edger blades are mounted within a lawn edger. Instead, the device mark is an imaginary and whimsical representation of a multi-blade cutting action.[4]

   [4] Notaras Declaration [4].

4. I find myself unable to agree with the Applicant’s characterisation of the Claimed Mark as an ‘imaginary and whimsical representation of a multi-blade cutting action’. Whilst the Claimed Mark may not be a photographic representation it is still an obvious depiction of the Designated Goods arranged in a cross formation. The annexures to the Notaras Declaration clearly demonstrate that the Applicant’s lawn edger blades are fitted to a lawn edger in this cross formation. It is also evident that this cross formation achieves the functional or technical outcome of a four-fold cutting action which is referred to in the Applicant’s product brochures as the ‘patented 4-blade cutting system’ and was the subject of Australian patent number 1999040109.

5. The Applicant asserts that there is no evidence that other traders are using the Claimed Mark, or something so nearly resembling it. Evidence demonstrating that other traders are using the Claimed Mark or something so nearly resembling it, for its ordinary signification can be instructive, but the absence of such evidence is not determinative. In this respect I refer to the following observations of Murphy J in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited:

   [I]t is not necessary…to establish that the trade mark is required by other traders. It is enough if innocent traders want to use it. For example in Clark Equipment at 513 to 514 Kitto J spoke to the “desire” of other traders to use the same mark, and said that traders may “think of the word and want to use it”. In Burger King at 425 Gibbs J took the reference to “likelihood” by Kitto J as a reference to whether another trader “might”, without improper motive, want to use the mark.[5]

   [5] [2014] FCA 373, [200].

6. The Claimed Mark is an illustration of the Designated Goods arranged in a manner that achieves a four-fold cutting action. This strikes me as an illustration which a trader might, without any improper motive, want to use to depict their own similar goods. The Applicant asserts that no other trader sells twin blades. However, ‘it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately wish to produce similar goods’.[6] The following observation of Jacobs J in Philips Electronic NV v Remington Consumer Products is particularly apt:

   A picture of an article is equivalent to a description of it – both convey information. If the picture is simply of an artefact which traders might legitimately wish to manufacture then to my mind it is just like the common word for it and, like the word for it, incapable of distinguishing.[7]

   [6] Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876, [12].

   [7] [1998] RPC 283, 302.

7. In my opinion, the Claimed Mark is not to any extent inherently adapted to distinguish the Designated Goods. However, I am required to reject the application only if the Applicant has not used the Claimed Mark before the filing date to such an extent that the Claimed Mark does in fact distinguish the Designated Goods as being those of the Applicant.

8. Accordingly, I now turn to the evidence of the Applicant’s use of the Claimed Mark.

Evidence of use

1. The evidence does not clearly indicate when the Applicant commenced using the Claimed Mark. According to the Notaras Declaration the Applicant developed a ‘set of two lawn edger blades’ in 1996 and that ‘sales and production of these twin blades commenced about 1997’[8]. Whilst this provides information about the development and manufacture of ‘twin blades’ it makes no reference to the Claimed Mark and therefore says nothing about when the Applicant began using the Claimed Mark on or in relation to its twin blades. Similarly, sales figures of ‘twin edger blades’ have been provided from 2005 but the Notaras Declaration makes no reference to those figures relating to the sale of goods bearing, or in association with, the Claimed Mark.

   [8] Notaras Declaration [7].

2. Furthermore, the examples of how the Applicant uses the Claimed Mark do not clearly demonstrate use as a trade mark. Use as a trade mark is:

   use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods. That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.[9]

   [9] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19].

3. Exhibits JN 3 to JN 6 of the Notaras Declaration demonstrate that the Applicant uses the Claimed Mark on the packaging of its lawn edger blades in the following manner:

1. As illustrated above, the Claimed Mark is clearly used in close proximity to the ‘///ATOM’ device and the words ‘Cross Blades’ both of which are clearly indicated on the packaging as being registered trade marks. I acknowledge that it is a commercial reality that multiple signs are often used together. The question is whether the evidence before me demonstrates that the Claimed Mark is acting in its own right as a badge of origin, notwithstanding the presence of these other signs. This requires consideration ‘from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use’.[10]

   [10] Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390, [186].

2. I think there can be little doubt, in the context of the label, that a consumer will view the Claimed Mark as an illustration or representation of the goods rather than as an indication of their commercial origin. Particularly as the label contains illustrations of other garden implements which are seemingly not intended to function as trade marks and because of the positioning of the Claimed Mark directly beneath ‘CROSS-BLADES®’, words which describe the Claimed Mark and the Applicant’s blades.

3. My impression is that a person looking at the label would identify the ‘///ATOM’ device as the badge of origin. If the Claimed Mark has acquired any distinctiveness it is likely to be attributable to its use alongside the ‘///ATOM’ device. The Claimed Mark is at best a limping trade mark in the sense referred to in Philips Electronic NV v Remington Consumer Products:

   What we have here is a kind of “limping mark” always used with what is obviously a proper trade mark. The same was true of Treat which was always used with “Silver Spoon”. Neither sign was ever used by the proprietor on its own. And that was evidence of a lack of capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that a part of a sign – a “sub-sign” – cannot also be a trade mark: both Ford and Fiesta are obviously valid trade marks. But there are other cases, where the sign proffered as a valid mark cannot really stand up on its own.[11]

   [11] Philips Electronic NV v Remington Consumer Products [1998] RPC 283, 312.

4. When I weigh the evidence before me together with the extent that the Claimed Mark is inherently adapted to distinguish the Designated Goods, I find that the combined effect is not sufficient to satisfy me that the Claimed Mark did in fact distinguish the Designated Goods as being those of the Applicant at the filing date.  

Decision

1. Section 33 of the Act provides:

   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.

2. I am satisfied that there is a ground for rejecting the application to register the Claimed Mark under s 41 of the Act. Therefore, I reject trade mark application number 1857374 pursuant to s 33(3)(b) of the Act.

3. However, if the Registrar 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.

Katrina Brown

Hearing Officer

Oppositions & Hearings

Trade Marks & Designs

16 September 2019