Sustainable Living Fabrics Pty Ltd v Instyle Contract Textiles Pty Ltd
[2011] ATMO 66
•25 July 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Sustainable Living Fabrics Pty Ltd to registration of trade mark application 1262160 (24,35) - FARM TO FABRIC - filed in the name of Instyle Contract Textiles Pty Ltd.
Delegate: Michael Kirov Representation: Opponent: No appearance
Applicant: Andrew Lockhart of Shelston IPDecision: 2011 ATMO 66
Section 52 opposition: s 41 considered – trade mark not capable of distinguishing the Applicant’s services –opposition established. Costs awarded against the Applicant.Background
This is an opposition brought by Sustainable Living Fabrics Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark FARM TO FABRIC subject of application number 1262160[1] in the name of Instyle Contract Textiles Pty Ltd (“the Applicant”).
[1] As indicated in paragraph 13, the opposition only concerns the services covered by the application.
Details of the opposed application are as follows:
Number: 1262160
Priority Date: 11 September 2008Goods: (Class 24) Textile and textile goods including fabric, upholstery, screen, workstation and panel fabrics
Services:(Class 35) Wholesaling and retailing services in this class, including wholesaling and retailing services in relation to textile and textile goods, fabric, upholstery, screen, workstation and panel fabrics, yarns, textile, bio based and other fibres, flock, raw or treated wool, clothing; promotion and advertising services, including promotion and advertising services related to the aforesaid; grading and evaluation of wool and wool fabrics
Trade Mark: FARM TO FABRIC (“the Trade Mark”)
Acceptance of the application for registration was advertised on 15 January 2009. The Opponent filed its Notice of Opposition (“the Notice”) on 9 July 2009 and the parties served Evidence in Support and Evidence in Answer as follows:
Evidence in Support
▪ Statutory Declaration by Barry White made 15 October 2009[2]
▪ Statutory Declaration by Dawn Heaney Kirkbride Logan Keeffe made 17 December 2009, with Exhibits DLK-1 and DLK-2
▪ Statutory Declaration by David Brook made 5 February 2010
Evidence in Answer
▪ Statutory Declaration by Michael Fitzsimmons made 11 August 2010▪ Statutory Declaration by Rochelle Deborah Einfeld made 17 August 2010, with Exhibits RDE-1 and RDE-2
[2] There is nothing in IP Australia’s records to indicate the original of this declaration was ever filed. However, Mr Lockhart, the Applicant’s attorney, confirmed the Applicant was served with a copy via Mr Lockhart’s firm. Mr Lockhart allowed me to take a further copy at the hearing and had no objection to proceeding on the basis that the White declaration did properly constitute part of the Opponent’s evidence in support.
Mr Fitzsimmons is the founder of the Applicant and has been its Managing Director since 1987. In his declaration he explains that the Applicant:
…produces and supplies a range of textiles designed for airlines, trains, entertainment venues, casinos and convention centres, hospitality and healthcare interiors, commercial offices and education facilities, as well as high-end residential and public places.
He names a long list of well known Australian and international companies, transport infrastructure, government buildings, hotels and venues that have used the Applicant’s textiles and notes that the Applicant has won many awards over the years for the quality of its textile products. The Applicant “has established offices in all capital cities of Australia” and also has offices or representation in the United States, New Zealand, Hong Kong, Singapore, Thailand and Malaysia.
The Opponent’s evidence does not disclose any details of its activities or history, although it is apparent from the declaration of Ms Logan Keeffe, the Opponent’s attorney, that it is also involved with the textile industry. It is clear from the totality of its evidence that it considers the words “farm to fabric” to be a well known, generic phrase that has been used in the wool industry in Australia and internationally for many years to refer to the activities or supply chain involved in converting wool on the sheep’s back to a finished product and has been used in a similar fashion in the cotton industry. The Opponent’s concern is, accordingly, that no one trader in the textile industry should be given a monopoly on use of the phrase in question in relation to the Applicant’s services of interest.
I heard the matter as delegate of the Registrar of Trade Marks on 4 April 2011 in Sydney. Andrew Lockhart of Shelston IP appeared for the Applicant and also tendered written submissions. The Opponent did not appear, nor was it represented, at the hearing and it did not file any written submissions.
Grounds of Opposition
The Notice lists a number of specific grounds corresponding to various provisions of the Act. However the evidence before me does not on the face of it support any of the listed grounds other than, arguably, the grounds based on sections 41 and 43 of the Act. The s 41 ground is discussed below. As will become apparent, I have not found it necessary in this decision to consider the Opponent’s possible s 43 ground. I treat the remaining grounds listed in the Notice as abandoned.
Standard of Proof
I proceed on the basis that the relevant date for assessing the parties’ rights is the 11 September 2008 filing date of the opposed application (“the Priority Date”) and that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities[3].
[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40].
I note Mr Lockhart did suggest in his submissions that in light of the recent decision by Lander J in Hills Industries Limited v Bitek Pty Ltd (2011) 90 IPR 337 it might now be necessary for an opponent before the Registrar to establish the trade mark in suit “should clearly not be registered”. It is true that Lander J did opt to apply this higher standard in the Hills matter because, as he said[4], he felt bound by the Full Federal Court’s decision in Lomas v Winton Shire Council[5] (although conceding the Full Court’s remarks on the subject may have been obiter) and felt obliged to follow Bennett J’s decision in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318 “as a matter of comity and because other judges of the Court had followed that decision”. However, I understand both Lander J’s remarks on the subject and those of the Full Court in Lomas[6] to be confined to appeals pursuant to ss 35 and 56 of the Act, that is to appeals to the Federal Court from a decision of the Registrar, rather than extending to opposition proceedings before the Registrar under s 52 of the Act.
[4] Hills Industries Limited v Bitek Pty Ltd (2011) 90 IPR 337 at [54].
[5] [2002] FCAFC 413 (11 December 2002); [2003] AIPC 91-839.
[6] Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91-839 at [17]-[19].
As to whether the Opponent or the Applicant bears the onus with respect to s 41, see paragraph 17 below.
Discussion
Section 41
The ground based on s 41 of the Act is indicated in the Notice as follows:
The Opposed Trade Mark is not capable of distinguishing the services for which registration is sought (Section 41)
I note at the outset, as did Mr Lockhart in his submissions, that there is no objection raised in the Notice that the Trade Mark is not capable of distinguishing any of the goods covered by application 1262160[7]. Accordingly, I will consider the s 41 ground only in relation to the services it covers (hereafter “the Services”).
[7] I mention that the ground in the Notice based on s 43 of the Act was also limited to the services covered by the application.
Section 41 is reproduced below:
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).
The operation of Section 41
The operation of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (“Blount”) as follows (at 504):
Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to ``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'’. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) 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; or
(c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
In accordance with Branson J’s above analysis the first issue which arises for consideration is therefore that under s 41(3), namely “the extent to which the trade mark is inherently adapted to distinguish [the Services] from the goods or services of other persons”. Before turning to this enquiry, however, it is convenient to say something about which party bears the onus of establishing the various matters specified in s 41.
Onus under Section 41
As Mr Lockhart mentioned, Kenny J confirmed in Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 that the onus with respect to s 41(3) of the Act falls upon an opponent. However, if after considering the s 41(3) issue the Registrar (or her delegate) then concludes the mark in question is not to any extent inherently adapted to distinguish the relevant goods or services, or is left uncertain whether it is sufficiently adapted as to be capable of distinguishing them on that basis alone, the onus then shifts to the applicant to establish the matters specified in ss 41(6) or 41(5), as the case may be. As her Honour put it[8]:
[8] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 at [26] to [29] and at [40].
[26] At the acceptance stage under s 33 of the Act and on appeal from such a decision, there is said to be a presumption of registrability: see Woolworths[9] at [24] per French J. This presumption arises from s 33, pursuant to which an application must be registered, unless the registrar is satisfied that there is a ground for rejecting it. In other words, as Sundberg J said in Chocolaterie Guylian[10] at [16], “a mark will be presumed registrable unless the registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.
[9] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411
[10] Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13
[27] There is also said to be a presumption of registrability at the opposition stage and in an appeal under s 56 (as here): see Pfizer Products Inc v Karam(2006) 237 ALR 787 ; 70 IPR 599 ; [2006] FCA 1663 at [8] (Pfizer Products) per Gyles J. For the reasons about to be stated, however, in the present case only the application of s 41(3) is to be considered with the presumption in mind.
[28] I accept that, for the reasons explained by Sundberg J in Chocolaterie Guylian at [21], the effect of the presumption on s 41(3) is that, in considering whether a mark is capable of distinguishing the goods or services of the applicant from the goods or services of other persons, by reason of being “inherently adapted”, the mark is presumed to be sufficiently adapted unless the registrar is not so satisfied on the balance of probabilities. If the registrar is not so satisfied, then the registrar will be “unable to decide the question” (s 41(4)) whether the mark is capable of distinguishing on the basis of any inherent adaptation alone, and must proceed to consider s 41(5) or (6). The presumption has no part to play under either of these subsections because the applicant is required either to “satisfy” the registrar that the mark does or will distinguish in accordance with the criteria in s 41(5), or to “establish” that the mark does distinguish in accordance with the criterion in s 41(6).
[29] Generally speaking, at the opposition stage and on appeal from a decision on an opposition, the opponent to the registration of the mark bears the onus of establishing a ground of opposition: Lomas v Winton Shire Council (2003) AIPC 91-839 ; [2002] FCAFC 413 at [36] (Lomas) and Torpedoes Sportswear[11] at [15]. The position is different under s 41(5) and (6) of the Act: see below.
…
[40] …[sections 41(5) and 41(6)] require the applicant for registration to “satisfy” the registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria are met: compare Chocolaterie Guylian at [21]. As Branson J said in Blount at 56, referring to Rejfek v McElroy (1965) 112 CLR 517 at 521 ; [1966] ALR 270 at 272:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities … That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
Under s 41(5), the registrar must be persuaded by the applicant on the balance of probabilities that the trade mark does or will distinguish, having regard to the considerations in s 41(5)(a). The standard is the same under s 41(6), where the applicant must establish on the balance of probabilities that the mark does distinguish “because of the extent to which the applicant has used the trade mark before the filing date”.
[11] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318
Consideration of the Trade Mark under s 41(3)
In the matter at hand, accordingly, the Opponent bears the initial onus of establishing on the balance of probabilities that the Trade Mark is not, or is not sufficiently, inherently adapted to distinguish the Services from the goods or services of other persons as to qualify for registration on that basis alone.
As regards inherent adaptation to distinguish, Mr Lockhart highlighted in his submissions the well known words of Kitto J[12] in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 (“Clark”), which concerned the claimed trade mark MICHIGAN, at 514:
[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.
[12] 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.
The Opponent’s evidence thus seeks to establish that other traders in textiles and textile goods were likely to use the words “farm to fabric” before the Priority Date to refer to the supply chains involved in the wool and cotton industries.
To this end the Opponent’s attorney, Ms Logan Keeffe, has exhibited with her declaration a copy of a letter dated 10 June 2009 (with accompanying submissions and supporting materials) sent to IP Australia on behalf of the Opponent and requesting revocation of acceptance of application 1262160 under s 38 of the Act[13]. The basis of the request was that the Examiner of the application had made “an error of judgment or omission” in not having raised any objection to the application under s 41 and the stated intention of the letter was to avoid the necessity for a formal opposition while allowing the Applicant the opportunity to file, as necessary, submissions and/or evidence as indicated by ss 41(5) and (6) of the Act.
[13] I mention that the request for revocation was not granted.
The supporting materials included with the revocation request and thus forming part of the Opponent’s evidence before me now comprised the first 69 (summary) results of a GOOGLE® search for the words “farm to fabric” conducted on 3 June 2009 and:
…printouts of a number of the search results found in [the GOOGLE® search], and in particular, include printouts showing use of the phrase “farm to fabric” by the following textile industry publications:
- Quality Insurance International, an international organisation which certifies organic food systems and related products, including organic fibres used for textiles;
- Sheep Industry News publication
- In Business publication
- The Australian Wool Testing Authority
- Country Wide publications
- International Fabric Centre
- Institute for Agriculture and Trade Policy (USA)
- Australian Sheep & Wool Handbook, 2nd Ed., Cottle, D.J.
I note that Mr Lockhart criticized this material, arguing that the various uses of the phrase “farm to fabric” disclosed did “not show use for the Applicant’s Goods or Services”. The extracted articles do however strongly suggest, in my view, that the phrase has some currency in the textile industry, with the understood meaning claimed by the Opponent. Mr Lockhart also argued some of the extracted articles post-dated the Priority Date or were not dated at all. I am however satisfied that all of the articles bar two bear copyright notices indicating they were published well before September 2008. Moreover it has long been accepted that, as Burchett J said in Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 (at 509), “it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date”. As Sundberg J put it in Chocolaterie Guylian at [54]:
In assessing as at the priority date the “likelihood” that other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been “actuated only by proper motives”. In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the “evaluative judgment” (see French J in Kenman Kandy at [47]) required under s 41(3).
I also reject Mr Lockhart’s submission, reliant on a passage from the judgment of Foster J in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd (2009) 83 IPR 210 at [72], that some of the articles which were apparently originally published outside Australia “should be excluded from consideration”. In this regard I have borne in mind the fact that five of the eight articles in evidence were first published in the United States or New Zealand, but I do not believe this renders their significance entirely nugatory.
Also exhibited with Ms Logan Keeffe’s declaration were the first 66 (summary) results of an “updated” GOOGLE® search on the words “farm to fabric” conducted on 14 December 2009. Both this and Ms Logan Keeffe’s earlier GOOGLE® search have picked up the website < being the Applicant’s website, which shows the words “farm to fabric” are currently being used in relation to an interactive feature of the website allowing the visitor to “trace your [textiles] through every stage of production”. The words are claimed as a trade mark, although they are apparently used in an essentially descriptive manner as shorthand for the phrase “from the farm to the finished fabric”. They appear in the following context on the relevant introductory page:
FARM TO FABRIC™
Trace your LIFE Textiles®
From the farm through to the finished fabric
As mentioned, the Opponent also relies on declarations by Barry White and David Brock. Mr White has “been involved in the wool industry in Australia for over 40 years” and is currently a director of a company providing trade and marketing advice to Australian enterprises in the agribusiness, textile, and wool industries interested in international trade. His past positions include Chief Executive Officer of the International Fibre Centre (which, he indicates, supports and facilitates access to education and training programs relating to textile processing and manufacturing by the Australian fibre and textile industries), Group Manager for International Market Development for Woolmark/Australian Wool Innovation (“a not-for-profit company owned by more than 30,000 Australian woolgrowers” which “invests in research, development, innovation and marketing along the global supply chain for Australian wool”) and Director for European and US markets for the Australian Wool Corporation. Mr White attests that:
I am aware of use of the term FARM TO FABRIC within the wool industry. This term is used to describe the activities involved in converting wool on farm through all of the processes to create an end-product. It is a generic term which does not related (sic) to a single product of a unique supply chain.
I do not associate the term FARM TO FABRIC with any one trader in particular as it is a generic term and does not imply a specific product or set of activities.
Indeed, I am aware of use of the term FARM TO FABRIC to describe wool industry training and educational programs conducted by the International Fibre Centre, CSIRO, Australian universities and Australian Wool Innovation.
David Brook is currently a self-employed consultant who has “been involved in the wool industry in Australia for over 34 years”. His previous positions include wool buyer with one of Australia’s largest wool exporters from 1975 until 1985, Trading Manager for Cargill Australia (“an international provider of food, agricultural and risk management products and services”) from 1986 to 1992 and Trading Manager for Dalgety Limited (now Landmark Operations Limited) from 1995 to 2002. He says:
I am aware of the phrase FARM TO FABRIC being used in the wool industry.
It is my understanding that the phrase FARM TO FABRIC is frequently used to describe the wool supply chain, namely, the wool manufacturing process as per below:
FARMER
↓
WOOL BROKER
↓
EXPORTER
↓
WOOLEN MILL
↓
SPINNER
↓
WEAVER
↓
GARMENT MAKER
↓
RETAILERIn particular, I am aware that Landmark Operations Limited has used the phrase FIBRE TO FABRIC during both 2000 and 2001 at the Elmore Field Days where a display was exhibited to show the processing of wool into cloth. Elmore Field Days are recognised as one of Australia’s premier agricultural Field Days.
At the time, Landmark Operations Limited did not claim any ownership to the phrase FIBRE TO FABRIC as the opinion of same was that the phrase was generic in the wool industry in a similar vein to FARM TO FABRIC or as is use of the phrase FIELD TO FABRIC in the cotton industry or PADDOCK TO PLATE in the beef industry.
From my experience and knowledge of the wool industry, I do not associate the phrase FARM TO FABRIC with any one trader in particular.
Mr Lockhart had certain quibbles with whether either Mr White or Mr Brook was qualified to provide the above quoted opinions and further objected that neither declarant had supported his statement with “any corroborating documentary evidence”. However, I see no reason to doubt that both men are very familiar with the Australian wool industry and I believe their evidence might reasonably be taken at face value. Indeed, their evidence is effectively corroborated by the Applicant’s Managing Director, Michael Fitzsimmons, who says in his own declaration:
I am aware of the expression “farm to fabric” sometimes being used [as] a shorthand way of referring to the wool supply chain, or in connection with wool trade training programs. However, I am not aware of any other traders using “farm to fabric” on or in relation to, or in a manner which, describes the goods or services of the Application.
Mr Lockhart also objected that Ms Logan Keefe’s GOOGLE® searches were undertaken after the Priority Date. That, of course, is true, although it is in any event impossible to glean any meaningful information from the brief summaries of the search results in evidence. That said, those searches did identify the Applicant’s website and, as mentioned, the Applicant does on the face of it appear to be using the words “farm to fabric” on its website simply as shorthand for the service it provides of tracing textiles through every stage of production “from the farm through to the finished fabric”. That is, to adopt Kitto J’s words in Clark, “for the sake of the signification which they ordinarily possess”.
In referring to the Clark test for inherent adaption to distinguish, Mr Lockhart nevertheless placed particular emphasis on Kitto J’s words, “in any manner which would infringe a registered trade mark granted in respect of it”[14]. In this regard he quoted the following words of Sundberg J from Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 at [80]:
However, in Clark Kitto J quite clearly referred to use “in any manner which would infringe a registered trade mark granted in respect of [the relevant word or shape]”. I agree with Lindgren J in Kenman Kandy at [95] that the Clark test does not go so far that any kind of innocent use at all, including innocent non-trademark use, would necessarily deprive a shape of being inherently adapted to distinguish.
(Mr Lockhart’s emphasis)
[14] See paragraph 19 above for the full quotation.
It is however important to stress that Kitto J also noted in Clark (at 517):
It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as “made in Michigan” or in some other way indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word “Michigan” that he may fairly want to make in the course of his business.
Indeed, Kitto J considered (at 516-517):
…it seems to me impossible to conclude that there is no likelihood of other traders, in the ordinary course of their businesses and without any desire to get for themselves a benefit from the appellant’s reputation, wishing in advertisements or otherwise to describe (e.g.) their power cranes from Michigan as Michigan power cranes.
Thus while Sundberg J in Chocolaterie Guylian highlighted Kitto J’s words in relation to infringement, this should be seen in context and bearing in mind that, as with the Kenman Kandy case to which he also referred, Sundberg J was concerned with the inherent adaption to distinguish possessed by a particular shape of confectionery. Moreover, in the case before him his Honour believed the seahorse shaped mark he was considering so lacked inherent adaptation to distinguish that other traders might inevitably risk infringing it if it were registered:
[78] As best as possible, an assessment should be made as to the ability of other traders to depict a seahorse in a way that would not infringe the mark in suit, if it were registered. In my view, while the shape has some distinctive features, I am satisfied that it is not so unique or imaginative that other traders, using a seahorse shape for its ordinary signification, will be able to avoid potentially infringing the mark if it were registered. Accordingly, I am satisfied that it is to some degree inherently adapted to distinguish, but not sufficiently so to decide the matter under s 41(3)…
…
[80] Given the mark sought to be registered is simply the three dimensional shape itself, without any other stipulation as to its use, the application for registration must be assessed on the basis that it would give Guylian a monopoly over that shape as the entire shape of one of its chocolate pieces. There is therefore a higher potential for other traders who wish to use a similar shape to do so in a manner that would infringe that monopoly. In other words, infringement might occur simply by the selling of a similar shaped chocolate, even where the shape does not feature significantly on, for example, the packaging of the product.
As Mr Lockhart highlighted, Sundberg J was otherwise in agreement with the remarks of Lindgren J in his (dissenting) judgment in Kenman Kandy “that the Clark test does not go so far that any kind of innocent use at all, including innocent non-trademark use, would necessarily deprive a shape of being inherently adapted to distinguish”. However Lindgren J, too, made that statement after having concluded that a registration for the shape of the “bug shaped” confectionery he was considering was unlikely to be infringed precisely because the shape in question was so lacking in inherent adaptation that use by another trader of a similar shape would “inevitably be understood not to be a trade mark use”. As Lindgren J put it at [87]:
in my opinion for this same reason the bug shape as the shape of items of confectionery is not inherently adapted to distinguish Kenman's confectionery from the confectionery of others.
I mention in passing that Lindgren J also stressed at [96] to [97] that there were “two important aspects of the Clark line of authority which must be noted”, namely that Clark concerned a word mark rather than a shape mark and that Kitto J:
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 Equipment establishes one negative test, the failing of which means that a mark is not inherently adapted to distinguish.
A further matter raised by Mr Lockhart was that Wilcox J had accepted in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 that:
…a mark need not be “absolutely unsuggestive of qualities” of the goods for which registration is sought, provided it does not amount to a normal description. …a question of degree is involved.
He argued that in the present case the words “farm to fabric” merely alluded to the Services and were not “directly descriptive” of them. As he put it in his written submissions, (highlighting the terms “emotive” and “cloudy suggestion” used by the High Court in discussing the trade mark TUB HAPPY in Mark Foy’s Limited v Davies Coop & Company Limited (1956) 95 CLR 190):
If FARM TO FABRIC describes a “wool supply chain” (and what is understood by “wool supply chain” is not clear from the evidence) it describes a whole process, a continuum (i.e. a set of connected steps). Foe example, it is not apt for normal description of the single steps of retailing or wholesaling textiles or the other goods specified in the Applicant’s Goods or Services. It is also not an apt description for textile goods.
There is an indefiniteness of meaning about FARM TO FABRIC when correctly considered in the context of the Applicant’s Goods and Services. At most it may refer in some vague and “emotive” way to how the products may be are (sic) natural rather than synthetic (i.e. from the farm).
While the trade mark may give a “cloudy suggestion”, there is an indefiniteness of meaning when an analysis of the trade mark is attempted. Such indefiniteness, and the lack of any real evidence from the Opponent, does not establish that other traders have a real need to use the words in the normal course of trade for their similar goods and services.
I accept that a trade mark need not be entirely unsuggestive in relation to the services it covers and that a question of degree is involved in assessing its inherent adaption to distinguish those services. I find I am nevertheless satisfied by the Opponent’s evidence that the words “farm to fabric” constitute a known phrase in the textile industry and that the phrase has a transparent descriptive meaning referring to the supply chain for wool or other textiles. I thus consider the words in question, as Wilcox J put it, “amount to a normal description” in the context of wholesaling and retailing services in relation to textiles, of related “promotion and advertising services” and of “grading and evaluation of wool and wool fabrics”. The Trade Mark is not in my view simply “emotive” in the same way as TUB HAPPY is for easily washable clothing or PERFECTLY YOU is for cosmetics[15]. It strikes me as a phrase apt for normal description in relation to the Services or in relation to a significant characteristic[16] those services might possess. I am therefore unable to decide whether it contains sufficient inherent adaptation to distinguish the Services from the similar services of other traders as to qualify for registration on that basis alone.
[15] Wella Aktiengesellschaft v Registrar of Trade Marks (1995) 33 IPR 374, per Lehane J at 377, a case also cited by Mr Lockhart in his submissions.
[16] See Note 1 to s 41(6) of the Act.
Consideration of the Trade Mark under ss 41(5) and (6)
In these circumstances section 41(4) of the Act thus indicates ss 41(5) or (6) apply, with the Applicant bearing the relevant onus of proof.
The Applicant’s Managing Director says that:
[The Applicant] has used the trade mark FARM TO FABRIC since around September 2008. [The Applicant] filed [application 1262160] on 11 September 2008.
There is no evidence before me as to the extent of any subsequent use of the Trade Mark or of the Applicant’s future intended use.
In terms of s 41(5) of the Act, the only “other circumstances” of arguable relevance are contained in the Einfeld declaration, being the results of online searches of the Trade Marks Register Ms Einfeld conducted on or around 29 July 2010 “for other pending or registered marks which include the word FARM” and for “other pending and registered marks which are conceptually similar to the FARM TO FABRIC mark”. These searches indicate marks such as FROM FARM TO FORK, FARM TO FURNITURE, FARM TO HARBOUR, FROM SEA TO SASHIMI, FROM GRAPES TO GLASS, From Bench to Business, FROM BUGS TO DRUGS, FROM TREE TO TRADE and Bean to tea From the plot to the pot have in the past been considered prima facie registrable for a range of goods and services.
I do not however find the existence of these earlier registrations a sufficiently cogent basis to satisfy me the Trade Mark is prima facie capable of distinguishing the Services. One does not know the precise circumstances which led to the acceptance of the marks identified by Ms Einfeld’s searches and, in any event, the goods or services for which the marks are registered are not necessarily analogous to the Services. Importantly, too, none of the marks identified appears to have been opposed and thus none has undergone the “closer adversarial scrutiny” inherent in opposition proceedings referred to by French J in Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at 377.
The Applicant has accordingly not established that the provisions of ss 41(5) or (6) of the Act should be applied in this case.
Decision
Section 55 of the Act provides:
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.
I have found that the Trade Mark is not inherently adapted to distinguish, or is not sufficiently inherently adapted to distinguish, the Services from the goods or services of others. I have further found that the Applicant has not made out a case for application of ss 41(6) or 41(5) of the Act. I accordingly refuse to register trade mark application number 1262160 unless, within one month from the date of this decision, the application is restricted to “Textile and textile goods including fabric, upholstery, screen, workstation and panel fabrics” in Class 24.
If the application is so restricted, it may proceed to registration. If, however, the Registrar has been 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.
Costs
Mr Lockhart submitted that in view of the Opponent’s non-appearance at the hearing I should not make an order for costs in its favour. However, the Opponent did prepare and serve its evidence in a timely manner and, in the event, I have found that evidence persuasive. I accordingly do award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
25 July 2011
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