Specialty Fashion Group Limited v Alpargatas S.A
[2015] ATMO 100
•16 October 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Specialty Fashion Group Limited to registration of Australian trade mark application 1548205 – pattern on shoe strap – in Class 25 in the name of Alpargatas S.A.
Delegate: Hearing Officer: Debrett Lyons Representation: Opponent: Andrew Lockhart of Shelston IP
Applicant: written representations onlyDecision: 2015 ATMO 100
Section 52 opposition: s 41 considered – trade mark not inherently able to distinguish the Applicant’s goods – insufficient evidence of trade mark use – ground of opposition established – opposition successful.Background
On 25 March 2013, Alpargatas S.A. (“the Applicant”) made application under the Trade Marks Act 1995 (“the Act”) for a trade mark which is described as follows: The trade mark consists of the patterning appearing on the strap of the flip-flop. The dotted outline is intended to show the position of the mark and is not a part of the mark.
(“the Trade Mark”)
The application was examined and advertised as accepted for registration on 18 July 2013 in class 25 for goods described as footwear.
On 18 September 2013 Rivers (Australia) Pty Ltd filed a Notice of Intention to Oppose, followed on 18 October 2013 by a Statement of Grounds and Particulars which together form the Notice of Opposition.
The Applicant filed a Notice of Intention to Defend on 22 November 2013.
Pursuant to section 53 of the Act, Rivers (Australia) Pty Ltd was in October 2014 replaced by Specialty Fashion Group Limited (“the Opponent”) as the party opposing registration.
Evidence was filed in the usual manner, comprising the Statutory Declarations of:
Evidence in Support
▪ Phillip Scala made 24 February 2014 with Exhibits PS-1 - PS-6 (“Scala Declaration”);
Evidence in Answer
▪ Amanda Caldwell made 12 June 2014 with Exhibits 1 - 4 (“Caldwell Declaration”). I note that the exhibits to this declaration include a declaration of Andre Zonaro Giacchetta made 8 May 2014, with Exhibits 1-9, 11, 12, 14 and 15, and Confidential Exhibits 10 to 13 (“Giacchetta Declaration”)
I heard the matter as a delegate of the Registrar of Trade Marks on 17 June 2015 in Sydney. Andrew Lockhart of Shelston IP appeared for the Opponent. Mr Lockhart’s oral submissions were supplemented by written submissions sent to me and to the Applicant’s attorney before the hearing in accordance with the timetable I had set. The Applicant relied wholly on written submissions prepared by Spruson & Ferguson, Patent & Trade Mark Attorneys.
Ground of Opposition
The Notice of Opposition lists a number of grounds corresponding to various provisions of the Act but the Opponent pursued only that ground based on section 41 of the Act. I treat the remaining grounds listed as having been abandoned.
Section 41 of the Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into force on 15 April 2013. The Trade Mark was filed on 25 March 2013. The Registrar’s position is that the amended version of the section applies to applications filed on or after 15 April 2013, with the repealed section continuing to apply to applications such as this which were filed before that date.[1] Accordingly it is section 41, set out below, as it stood before the referenced amendment which regulates this opposition.
[1] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.
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).
In the lead-up to the hearing the Opponent recognized that the Statement of Grounds and Particulars as originally filed had not taken account of this Office practice and so it applied to amend the Statement of Grounds and Particulars as it related to the section 41 ground.
Notice of that application was given to the Applicant and time was allowed for the Applicant to express objection to the proposed amendment if it so chose. No objection was made and so I allowed the amendment (set out below).
Discussion
The amended section 41 Statement of Grounds and Particulars reads:
The mark the subject of the opposed application is not capable of distinguishing the applicant's goods from the goods of other persons for the purposes of section 41.
The mark is not inherently adapted to distinguish the designated goods from the goods of other persons and does not qualify for acceptance under section 41(3).
To the extent that it may have some level of inherent adaptability to distinguish, the mark does not does qualify under section 41(5) because it will not distinguish the designated goods as being those of the applicant having regard to the use of the mark by the applicant (or any other circumstances).
In the alternative, the mark has no inherent adaption to distinguish and does not qualify by reason of use under section 41(6).
The mark consists of a simple geometric pattern applied to the strap of a flip-flop. The strap is typically the only component of a flip-flop that is visible in its entirety when worn. The mark is one that other traders are likely in the ordinary course of their business to wish to use (and have used for many years before the Applicant’s priority date) in relation to their own similar goods and thus falls for consideration under section 41(5) or section 41(6). The Applicant has no basis for registering the opposed mark under section 41(5) or section 41(6).
The relevant date for assessing the registrability of the Trade Mark is the 25 March 2013 filing date of the application (“the Filing Date”).[2] The standard of proof is the ordinary civil standard based on the balance of probabilities.[3] It is the Opponent which bears the onus of establishing the ground of opposition. That said, the structure of section 41, entails a moveable onus. Although the Trade Mark was accepted without objection under section 41(3) by the examiner, I am required in these proceedings to consider the matter afresh[4] and I must firstly determine the extent to which the Trade Mark is inherently adapted to distinguish the applied-for goods from the goods of other persons. It is the Opponent which bears the onus to show to me that the Trade Mark should not be accepted. If, for some reason, the Trade Mark falls for consideration under either subsection 41(5) or (6) then it is the Applicant which bears the onus to show that the Trade Mark is capable of distinguishing.[5]
[2] Apple Inc. v Registrar of Trade Marks (2014) 109 IPR 187 at [32]-[59].
[3] Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
[4] Deutsche Telekom AG v E! Entertainment Television Inc [2006] ATMO 33
[5] Blount Inc v Registrar of Trade Marks [1998] FCA 440; 83 FCR 50; 40 IPR 498
Section 41(3)
In redacted form, the Opponent’s written submissions on section 41(3) were that:
Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co v Registrar of Trade Marks [(1964) [1964] HCA 55; 111 CLR 511 at 515 (“Clark”) and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.
Shanahan: Australian Law of Trade Marks And Passing Off 4th Edition states as follows:
“[20.770] Markings, lines and threads
These types of signs are generally considered to have little or no inherent distinctiveness even though some markings, lines or thread were registered under the 1955 Act. “
In Clark, Kitto J at 513 sets out the criteria for deciding whether a trade mark is inherently adapted to distinguish:
“That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. 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. and G. Du Cros Ltd. (1913) AC 624 at 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 connection 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." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd. 30 RPC 216 at 227; but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the 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.
…
Ordinary Signification is Ornamentation
The Opponent submits that the 41(3) issue is to be determined in the manner adopted by Sundberg J in Chocolaterie Guylian N.V. v Registrar of TradeMarks [2009] FCA 891 at [75], namely:
“The ultimate question on the issue of inherent adaptation is whether a sign - in this case, a shape - possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign. In cases where a shape depicts a known object or concept (cf wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar. An important consideration in all of this is the nature of the goods for which the shape mark is to be used.
The Opposed Trade Mark (a pattern) plainly possesses ordinary ornamental significations which the evidence shows other traders might want to use (and in fact do use) for the same decorative significations in a manner which would infringe the Opposed Trade Mark if it were registered. The pattern comprising the Opposed Trade Mark is plainly not so unique or imaginative that other traders using similar decorative features will be able to avoid potentially infringing the mark if it were registered.
Opponent’s Evidence
There is evidence that it is by no means unusual for there to be decorative patterns on the strap of the flip-flop. The evidence shows that there has been a pattern over time of the use of the same or similar decorative patterns applied to strap of the flip-flop. For example:
a)Rivers has used the same pattern since 2005 as a decorative feature (Scala (7)).
b)Other traders have used the same pattern for many years before the priority date (Scala (7) & (21) - (22) and exhibit 6).
…
Apart from the issue of whether other traders are likely to use the same mark or some mark nearly resembling it, upon or in connection with their own goods, assessing the likely ordinary signification to the public is also an important consideration for these types of trade marks.
In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 the Full Court determined an application for registration of a trade mark being the shape of the applicant's "millennium bug" confectionery. Lindgren J at [80] - [100] discussed the notion conveyed by the expression "inherently adapted to distinguish", agreeing with the observations of Gibbs J in Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 424 that inherent adaptability is something depending on the nature of the trade mark itself and is therefore not something that can be acquired. His Honour said at [84]:
"Whether the [millennium] Bug shape is inherently adapted to distinguish can be tested by assessing how it would be perceived and understood by members of the public seeing items of confectionery of that shape for the first time, because this test excludes the possibility of a trade mark significance arising from use."
…
In The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407 (“Shell v Esso Standard Oil”), the principal question before the High Court was whether the defendant had used an animated “oil drop” cartoon character advertising its petrol in advertising films as a trade mark. The Court answered that question in the negative. Kitto J delivered the leading judgment for the majority. His Honour said that whether a sign is being used as a trade mark depends on how the viewer would see the particular use in the setting or context which applies. His Honour described the question as being (at 425):
“... whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?”
In determining whether or not the sign was being used as badge of origin, the context of use is “all important”: Global Brand Marketing [2008] FCA 605; (2008) 76 IPR 161 at [61(g)]; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH [2001] FCA 1874; (2001) 190 ALR 185 at [22]- [23] applying Kitto J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 422.
Relevant issues to consider in the present case include:
oDoes the size and location of the Opposed Trade Mark, as applied to the goods, suggest an ornamental or trade mark function? Matter that is purely ornamental or decorative is unlikely to function as a trade mark.
For example, a small, neat, and discrete design feature (e.g., small design of animal over pocket or breast portion of shirt) may create the commercial impression of a trade mark, whereas a larger rendition of the same matter emblazoned across the front of clothing (or other product) may be perceived merely as a decorative or ornamental feature of the goods.
oIs it a “common” basic shape or design?
oIs unique or unusual in a particular field?
oIs it a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods?
oHas the same or similar sign been used to perform a trade mark function (i.e. inform the public about origin of product)?
Conclusion on Opponent’s Evidence
The evidence shows:
§ In terms of Rivers own use of the same pattern since 2005 (as a decorative feature), that the public has been educated at the same time that the word RIVERS is the trade mark not the pattern (i.e. used to seeing the trade mark as the word Rivers (Scala (10)). Also, Rivers as the dominant brand on each item is reinforced through other point of sale advertising that features Rivers logo (Scala (7), exhibit 5).
§ Other traders who have also used the same pattern for many years before the priority date (Scala (7) (21) - (22) and exhibit 6) have also used word marks on thongs (with same/substantially identical thread pattern) to indicate origin (e.g. Billabong). The Applicant itself has used the word mark HAVAIANAS.
§ Consumers are accustomed to seeing word marks not the decorative pattern, as functioning as a badge of origin.
§ That the Opposed Trade Mark is a “non-distinctive geometric pattern that serves a decorative or ornamental function” ((Scala (23)).
The Applicant’s position can be reduced to its submissions that:
The Applicant’s Trade Mark is a pattern to be applied to the strap of a flip-flop or thong, as depicted in the application for registration and described in the associated endorsement. The mark consists of a two rows of stylised lines or “V” shapes, applied to the straps of the thong or flip-flop. There is also a central vertical pattern at the intersection point of the straps. There is no reason why another trader would wish to use that particular combination of features as a trade mark unless to imitate the Applicant’s Trade Mark.
The Opponent’s evidence purporting to show Rivers and rival traders using a Graphic Patterns (allegedly similar to the Applicant’s Trade Mark) in connection with their similar goods, serves only to show that patterns are employed by other traders as a decorative feature on footwear products. That is it merely shows these patterns being used as decorative features and nothing more.
The various examples of product packaging exhibited in the Scala Declaration do not show use of the indicated patterns as a trade mark. Rather, the use shown is decorative and not trade mark use.
The fact that others traders use, or wish to use, a pattern as a decorative feature in relation to similar goods is not sufficient to show that the particular pattern the subject of the Applicant’s Trade Mark has descriptive meaning in connection with footwear products.
There is further nothing in the Opponent’s evidence which shows that the particular pattern the subject of the Applicant’s Trade Mark is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods, or some other characteristic of the Applicant’s goods. Indeed, there is nothing to indicate that the Applicant’s Trade Mark conveys any information about the Applicant’s footwear products at all.
By way of comparison we submit that the Applicant’s Trade Mark is clearly distinguishable from other cases where a feature of a mark has been deemed lacking distinctiveness, such as the shape of a bottle for beverage products, or the use of a speckle pattern in connection with cookware which indicates that the products are non-stick.
In light of the above submissions, we submit that the Opponent has failed to discharge its onus to show that the particular pattern the subject of the Applicant’s Trade Mark is not inherently adapted to distinguish the designated goods from the goods of other persons under Section 41 of the Trade Marks Act 1995.
In their submissions both sides referred to the relatively recent decision of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (2014) 109 IPR 154 but after short discussion both came back to known principles. So, for example, the Applicant wrote that:
The question is: Does the mark consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the goods or services, or which is ordinarily used to indicate the time of production of goods or the rendering of services.
Stone J in Kenman Kandy v Registrar of Trade Marks (2002) 122 FCR 494; 56 IPR 30 said at [147], IPR 66 to 67:
“In my opinion it is the absence of these associations and significations which makes a sign inherently adapted to distinguish one trader’s goods from those of another. In other words the concept is negative and not positive”.
…
The approach of asking whether the trade mark consists entirely of any of the matters listed in the note to paragraph 41(6) is a restatement of, rather than a departure from, the test stated by Kitto J in Clark Equipment Co v Registrar (1964) 111 CLR 511. There his Honour said that the question whether a mark is adapted to distinguish is to be:
“tested by reference to the likelihood that other persons, trading in goods of the relevant kind and be actuated only by proper motives – in the exercise that is to say, of the common right of the public honestly to 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.”
The final words of Kitto J’s statement are particularly relevant in this case. A mark is not inherently lacking in distinctiveness simply because another trader might, without any proper motive, wish to use a similar mark in some purely descriptive or non-trade mark sense. Only a mark which another trader may wish to use in some manner which would infringe a registered trade mark (ie. use as a trade mark) is thereby excluded.
In my opinion much of what my colleague, Hearing Officer Kirov, has written in Pacific Magazines Pty Limited v Bauer Consumer Media Limited [2015] ATMO 69 (5 August 2015) is on point and I have therefore quoted from his decision at length hereunder:
Consideration of the Opposed Mark under section 41(3)
In accordance with Branson J’s analysis then, the first issue which arises for consideration is that under s 41(3), namely “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.” It was not in dispute that, in the well known words of Kitto J[6] from Clark Equipment Company v Registrar of Trade Marks[7] (“Clark”) referred to by both Mr Rubetzki and Mr Burgess:
[6] In effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 that Kitto J had earlier (at 514) quoted with approval.
[7] (1964) 111 CLR 511 at 514. The case concerned possible registration of the claimed trade mark MICHIGAN in Part B of the then two part Register as a mark “capable of becoming distinctive” under s 25(1) of the now repealed Trade Marks Act 1955. Under s 26 of that Act a trade mark could not be considered distinctive unless it was “adapted to distinguish” the relevant goods or services.
[T]he question whether a mark is adapted to distinguish [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 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.
More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[8] (“Cantarella”) considered s 41(3) in some detail. In a joint judgment the majority of the Court (French CJ, Hayne, Crennan and Kiefel JJ) explicitly approved Kitto J’s above-quoted words[9] and went on to say at [70]-[71] (with original footnotes omitted and my emphasis added in bold):
[8] [2014] HCA 48 (3 December 2014); (2014) 109 IPR 154.
[9].Gageler J, in a separate judgment, ultimately reached a dissenting conclusion in the matter at hand, but did not disagree on the applicability of Kitto J’s above-quoted words.
Interpretation of s 41(3)
[70] In accordance with the principles established in [Mark Foy’s Ltd v Davies Coop & Co Ltd[10]] and restated in [Clark], [FH Faulding & Co Ltd v Imperial Chemical Industries Ltd[11]] and [Burger King Corporation v Registrar of Trade Marks[12]], determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.
[10] (1956) 95 CLR 190.
[11] (1965) 112 CLR 537.
[12] (1973) 128 CLR 417.
[71] As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.
I have emphasized the words I have in the above quotation because, although Mr Rubetzki sought to rely on paragraphs 70 and 71 of Cantarella, he omitted those words from the quotation reproduced in his submissions. His submissions then go on to argue, incorrectly in my view, that given the presumption in the Applicant’s favour with respect to s 41(3),[13] “…there is ample scope for the Registrar to decide…there are no grounds to reject [the application]” and thus that the further enquiries indicated by ss 41(5) or (6), as the case may be, are unnecessary. In order to explain why I think Mr Rubetzki’s argument is flawed, it is I think useful to set out (with footnotes omitted, but original emphasis retained) his subsequent submissions apparently based on the quoted passage from [70] and [71] of Cantarella:
[13] See paragraph 16 above and s 33 of the Act.
38. In this crucial extract from the judgment, the High Court has indicated that it is only those words which are understood by the target audience as having a directly descriptive meaning in relation to the relevant goods (or services) which should not have a monopoly granted in respect of them. The court has also indicated that words which contain an allusive reference to the relevant goods (or services) are prima facie qualified for the grant of a monopoly.
39. [The Opponent’s] Submissions describe the Application as an attempt by [the Applicant] to “monopolise the common descriptive term ‘test kitchen’…”. However, as already noted, [the Applicant] and [the Opponent] are in broad agreement as to the meaning of the term TEST KITCHEN: “a physical kitchen equipped with cooking and food preparation equipment where recipes and cooking processes can be tested”.
40. [The Applicant] submits that the term TEST KITCHEN does not make a direct reference to the goods and services claimed in the Application, and does not have a “directly descriptive meaning” in relation to them. At best, any reference is an “allusive reference” and, in any event is far removed from those goods and services themselves.
41. [The Applicant] submits that the phrase TEST KITCHEN is exactly the sort of mark which contains the kind of “allusive reference” referred to by the High Court. The words “test kitchen” can only mean a physical kitchen, and in the context of the relevant goods and services claimed, TEST KITCHEN merely alludes to a process of recipe testing and development taking place in such a kitchen, and any reference to the [A]pplicant’s printed matter or claimed services is at most very indirect, tangential and remote.
42. Accordingly, on the application of the High Court’s test above, [the Applicant] submits that it is entitled to have its mark TEST KITCHEN registered in respect of those goods and services.
43. It is also notable that registration of TEST KITCHEN for [the Goods and Services] would have no effect on any trader’s ability to continue to use that phrase to describe “a physical kitchen equipped with cooking and food preparation equipment where recipes and cooking processes can be tested”, nor on any other descriptive use of that phrase.
44. Any attempt by [the Applicant] to assert such a monopoly would fail where that phrase was used descriptively in good faith by a third party. This is because s 122(1)(b) of the Act states that:
a person does not infringe a registered trade mark when:
…
(b) the person uses a sign in good faith to indicate:
(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services45. Accordingly, the registration of [the Opposed Mark] would not offend the test referred to in [Clark] because there would be no prospect that a descriptive use of “test kitchen” would infringe [the Applicant’s] registration.
46. Having regard to these factors, and to the legal tests referred to above, [the Applicant] contends that TEST KITCHEN has sufficient inherent capacity to function as a trade mark in respect of printed matter, and the service of publishing, and all of the other services for which [the Applicant] seeks to register its mark.
47. On this basis, [the Applicant] submits that there is ample scope for the Registrar to decide, in accordance with s 41(3), that there are no grounds to reject [the Applicant’s] application to register its trade mark. Without such grounds, the presumption of registrability in s 33 must apply and the mark should proceed to registration.
48. However, if the Hearing Officer, as the delegate of the Registrar, is unable to decide the question (pursuant to s 41(4) of the Act), then for the reasons outlined above, [the Applicant] submits that the fate of the application should be determined pursuant to s 41(5), and not s 41(6).
There are two principal matters claimed in this submission with which I am unable to agree, which for convenience I will refer to as the “Cantarella issue” and the “infringement issue” respectively. Before discussing these, I note that there was no disagreement (indeed, were there any doubt, this is confirmed a number of times in both parties’ evidence), that the words “test kitchen” in their ordinary signification mean, and are widely understood to mean, as Mr Rubetzki put it, “a physical kitchen equipped with cooking and food preparation equipment where recipes and cooking processes can be tested”.
As regards the Cantarella issue, it is not the case, as Mr Rubetzki states at paragraph 38 of his above quoted submission, that “the High Court has indicated that it is only those words which are understood by the target audience as having a directly descriptive meaning in relation to the relevant goods (or services) which should not have a monopoly granted in respect of them”. Firstly, the Court was talking specifically here (in the penultimate sentence of [71]) about a “foreign word” being so understood by the target audience, in which case, (as with any words, whether English or foreign), if their “ordinary signification[14]…has ‘direct’ reference to the character or quality of goods [or services]” the words will not be prima facie registrable.
More generally, as the lines from [71] of Cantarella omitted from Mr Rubetzki’s submission which I emphasized above state, whether or not a trade mark consisting of such a word or words has a “direct” reference of this kind is but one reason why a mark may not be considered inherently adapted, or sufficiently inherently adapted, as to be prima facie registrable for particular goods or services. As I noted in Sustainable Living Fabrics Pty Ltd v Instyle Contract Textiles Pty Ltd[15] (“FARM TO FABRIC”), a decision referred to several times by Mr Burgess in his submissions, Lindgren J pointed out in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks[16] at [98] that:
…while [Clark] establishes that in … particular circumstances … a mark will not be inherently adapted to distinguish, the case does not purport to identify all the circumstances in which a mark will be (or, for that matter, will not be) inherently adapted to distinguish. [Clark] establishes one negative test, the failing of which means that a mark is not inherently adapted to distinguish.[17]
Amongst those additional circumstances identified by the Court in Cantarella at [71] with, as I see it, particular relevance to assessing the Opposed Mark’s inherent adaptation to distinguish, are its laudatory nature and the fact that, given the agreed and widely understood meaning of the words “test kitchen,” it has either lost, or most likely never had, “the requisite distinctiveness to start with.” As discussed further below, Mr Burgess thus, correctly in my view, advanced several separate, albeit inter-related, reasons, in addition to its arguably directly descriptive character, as to why the Opposed Mark lacked sufficient adaptation to distinguish the Goods and Services to qualify for registration on a prima facie basis.
[14] Or as Kitto J originally put it in Clark at 504, “the signification which they ordinarily possess”.
[15] [2011] ATMO 66; (2011) 94 IPR 186 at [30].
[16] (2002) 122 FCR 494; 56 IPR 30.
[17] See also Hearing Officer Thompson’s remarks in the same vein in Kraft Foods Australia Pty Ltd v Mars Australia Pty Ltd (2012) 97 IPR 52 at [21].
In this case I must decide if the Trade Mark ever had the requisite distinctiveness to start with because of the claim that its ordinary signification is ornamental. The Scala Declaration shows ornamental use of a pattern similar to that of the Trade Mark by the Opponent since 2005. There is evidence of ornamental use of decorative patterns on flip-flop straps by third parties. I accept that evidence but even if I had put it to one side, it would be reasonable for me to draw certain findings about the use of decorative patterns on the straps of flip-flops based only on my own common general knowledge of such matters. However, I need look no further than the Applicant’s own submissions which state:
The Opponent’s evidence purporting to show Rivers and rival traders using a Graphic Patterns (allegedly similar to the Applicant’s Trade Mark) in connection with their similar goods, serves only to show that patterns are employed by other traders as a decorative feature on footwear products. That is it merely shows these patterns being used as decorative features and nothing more.
After a survey of the evidence, there is nothing before me to make me think that the ordinary signification of such use is anything but ornamental. I am not satisfied that the Trade Mark has sufficient inherent adaptation to distinguish the goods of the application from the similar goods of other traders so as to qualify for registration on the basis of section 41(3).
Sections 41(5) and (6)
It follows that the Trade Mark can only proceed to registration if either subsection 41(5) or (6) applies. In the former case use (whether before or after the Filing Date), intended use, or “any other circumstances,” may be considered in assessing the Trade Mark’s capacity to distinguish the applied-for goods at some future time. In the latter case it must be established that because of the use of the Trade Mark before that Filing Date, it had by then become actually distinctive of those goods.
The Opponent’s submission is that neither subsection can apply. The Applicant bears the relevant onus of proof to show that one or other section does apply.
The Opponent’s written submissions were that:
Under s.41(5), an applicant relying on use prior to the lodgement date needs to show that the mark has in fact been used as a trade mark prior to the lodgement date so as to have acquired the requisite capability to distinguish the applicant's goods: Chocolaterie Guylian at [84].
A trade mark possessing a very low level of inherent adaptation to distinguish will require correspondingly high levels of use as a trade mark and other circumstances in order to permit registration: Cantarella at [107]; Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51.
In Coca Cola Company v PepsiCo Inc (No 2) [2014] FCA 1287 Besanko J said at 200:
“In Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310; (1991) 30 FCR 326 (“Johnson & Johnson”), Gummow J identified a number of principles relevant to whether there has been use as a trade mark in the context of a case involving a word mark. First, he said that a court is entitled to take into account a usage common in the relevant trade. Secondly, he said that the court is entitled to consider the way in which the word has been displayed in relation to the goods or advertisement of which complaint is made. Thirdly, his Honour noted that a word may have a descriptive element, but still serve as a badge of origin. That proposition can, I think, be adapted to the shape of a container. ……… Finally, his Honour said that the fundamental question is whether “those to whom the user is directed” are being invited to purchase the goods of the defendants which are to be distinguished from the goods of other traders partly because they are described by the words in question. His Honour emphasised the words “partly because” and noted that this formulation of the fundamental question is based on the statements of Williams J in Mark Foy’s Limited v Davies Coop and Company Limited and Another [1956] HCA 41; (1956) 95 CLR 190 at 205.
In Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 Roberston J said at 59:
“In relation to use as a trade mark the Full Court in Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117; (2010) 272 ALR 487 at [19] summarised the relevant principles as follows, the issue being whether Nestlé used “luscious Lips” as a trade mark:
(1) Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107 at [19]; E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144 at [43].
(2) A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 347–8; Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH [2001] FCA 1874; (2001) 190 ALR 185 at [60].
(3) The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 422.
(4) The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at 347 per Gummow J; Shell Co at 422.
(5) Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at FCR 347; Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390; (2002) 56 IPR 182.
(6) In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited...
The Opponent submitted that the Applicant faces a heavy burden in establishing that the Trade Mark has capacity to distinguish and referred me, by analogy, to a number of authorities involving “colour” marks[18] or laudatory terms[19] where the courts have made it plain that in order to function as trade mark these signs must be perceived as operating as trade marks.
[18] BP p.l.c. v Woolworths Limited [2004] FCA 1362; Woolworths Limited v. BP plc [2006] FCAFC 132; (2006) AIPC 92-224
[19] Ocean Spray Cranberries Inc v Registrar of Trade Marks, [2000] FCA 177; (2000) 47 IPR 579
The Opponent submitted that here the Applicant’s pattern device did not have that character. The Opponent argued that this deficiency was underlined by the Applicant’s evidence, in particular the Giacchetta Declaration.
The Giachetta declaration was made and filed as Evidence in Answer in respect of a finalised opposition to the Applicant’s Australian trade mark 1548203, also in class 25, and now registered. A representation of that trade mark is shown below:
That registration carries the endorsement:
The trade mark consists of the configuration of trade mark elements as depicted in the representation attached, the trade mark elements being the patterning and the word HAVAIANAS on a strap of the flip flop, the word/device HAVAIANAS in the ellipse logo in the centre of the top layer of the flip flop, and the patterning applied to the top layer of the flip flop.
The Opponent flags, correctly in my view, the several ways in which the Giachetta Declaration is not helpful to me in these proceedings, in the main because of the focus on the word component HAVAIANAS of many of the Applicant’s trade mark registrations and because the claims to use refer compendiously to goods sold “under the HAVAIANAS trade mark”.
In summary, the Opponent’s submission is that “there is no or very little evidence that the primary decorative signification of the tyre pattern has been displaced to the extent that, in relation to the goods, it (and it alone) has come to denote goods provided by the Applicant.”
I agree with the Opponent. Whether it is subsection 41(5) or 41(6) which is applicable in this case is something that I need not directly decide. The answer to whether or not the Trade Mark is to any extent inherently adapted to distinguish the applied-for goods, or has some degree of inherent adaptation to distinguish those goods is not important since in my assessment the combined influence of the use or intended use of the Trade Mark either before or after the Filing Date and other circumstances is insufficient to satisfy me that the Trade Mark does or will distinguish the goods.
In the result I have found that the Trade Mark has little or no inherent adaptation to distinguish the applied-for goods and so the application fell for consideration under subsection 41(5) or 41(6) of the Act. In either case the onus was then on the Applicant to prove significant use of the Trade Mark - as a trade mark and ideally without the distracting influence of other signs - for the goods. It has not done that and accordingly I find that the Opponent has established the section 41ground of opposition.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in
respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
The Opponent has established a ground listed in the Notice of Opposition. I therefore refuse to register trade mark application number 1548205.
Costs
Both parties requested an award of costs in their favour. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
16 October 2015
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