Tandem Computers Incorporated, Re

[1993] ATMO 6

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application numbers 522470 and 522471 to register trade marks in the name of TANDEM COMPUTERS INCORPORATED

Tandem Computers Incorporated, the applicant for trade mark application numbers 522470 and 522471, sought registration of the marks NONSTOP V+ and NONSTOP-UX respectively for "computers, computer memory devices, computer terminals and computer software".

The examiner's reports on 6 March 1991 raised objection to the registration of the marks under paragraphs 24(1)(c)(d) and (e) of the Act.  The basis of the objection was that the word NONSTOP was the predominant feature of the marks and made a direct reference to the character or quality of the goods as being suitable for continuous or non-stop operation, and that the other non-distinctive matter appearing in the marks, V+ and -UX, was not sufficient to render the marks distinctive when viewed as a whole.  The applicant's attorney argued that, when the marks were viewed as wholes, the additions did indeed render the marks distinctive.   Ultimately the applications were transferred to Part B of the Register, but the examiner maintained the marks were not registrable in Part A or Part B.  She said that the simple addition of the letter V and the plus symbol and the letters UX was essentially lacking in distinctiveness for computer goods since practically every software package had letters and/or numbers attached. 

The applicant thereupon requested a hearing of the matter.  The hearing took place in Sydney on 22 October 1992.  The applicant was represented by Mr Andros Chrysiliou, solicitor and trade mark attorney, of the firm Chrysiliou Moore Chrysiliou.

It should be noted at the outset that the registrability of the word NONSTOP in relation to the goods in question has already been the subject of two previous hearings.  On both occasions the applications, 378907 and 470042, were refused but on neither occasion did the applicant challenge the decision or the manner in which the decision had been reached.  Mr Chrysiliou, however, did query whether the matter of registrability in the case of 470042 had been fairly decided and he raised, for my consideration, a number of issues which I think it appropriate to deal with first since they concern the registrability of the predominant element of the present marks.

Mr Chrysiliou suggested that the decision in regard to application no. 470042 had placed too much reliance on technical publications.  He drew attention to the applicant's evidence of use and to the fact that the material had been published after the applicant had established substantial use of its mark.  Mr Chrysiliou also drew attention to the fact that people tend to use well known trade marks loosely, in speech and in publications and he provided extensive examples to establish that not even dictionary entries can be relied on to distinguish accurately between trade mark and generic use of words even though the publishers made every effort to do so.  Mr Chrysiliou submitted that the use of NONSTOP in the technical publications was an example of this sort of loose use, but that such usage did not necessarily cause the term to become generic: Levi Strauss & Co. v Amco Clothing Co. Pty Ltd (1968) 38 AOJP 1581.  Mr Chrysiliou submitted that in determining the true meaning of the word, that is, whether the word is a trade mark or a generic term, more importance should be attached to trade evidence than entries in books: "Manganin" Trade Mark [1967] RPC 271.

Mr Chrysiliou submitted that because too much reliance had been placed on publications a circumstance attaching to the word had been overlooked.  For example if one goes nonstop from Sydney to the United States, he said, it means that the plane does not put down en route, that is, it is something that usually stops or does not stop and is not the same as saying that something operates continuously.  Mr Chrysiliou did not deny that NONSTOP was a dictionary word but submitted that it was the type of word capable of functioning as a trade mark and was a mark like SOFLENS which was found to be registrable after evidence of use had been considered.  Use of the mark, NONSTOP, since 1980 had been substantial and it should have qualified for registration, as did SOFLENS, in Part B.

Mr Chrysiliou drew attention to paragraph 64(1)(b) of the Act which provides that descriptive use of a word, in good faith, is not infringement and that because of the inclusion of this provision, the Act clearly contemplated that words, that could be used as a description of the goods, could be registered.  If NONSTOP did have this descriptiveness attached to it, then it would not be infringement.  Mr Chrysiliou submitted that given the meaning he had drawn attention to above, it was not the right word to use in this application.  Other descriptions were more appropriate.  It did add something extra to the circumstances attaching to the mark particularly if the mark were considered in Part B in the light of use or other circumstances.

In response to these matters, I make the following comments.  Application no. 470042 was refused after due consideration had been given to whether the further submissions and additional evidence provided sufficient grounds for reversing the earlier decision on the registrability of the mark.  Throughout the prosecution of 470042, and indeed throughout the prosecution of all the applicant's NONSTOP applications, officers of the Trade Marks Office have contended that the word NONSTOP, according to its ordinary dictionary signification, is an apt description of the mode of operation of a computer.  The technical material referred to by Mr Chrysiliou in relation to 470042 did not form the basis of the objection to registrability of NONSTOP, but was brought to the attorney's attention by the senior examiner hearing the matter in response to the attorney's submission that the word NONSTOP was not in common use in the industry and that other traders would not need to use it to describe their products.  The attorney prosecuting that case responded to the material, as Mr Chrysiliou has done, by pointing out that the material postdated first use of the applicant's mark and that the reference could have arisen from the use of the applicant's trade mark without appropriate acknowledgement.  The senior examiner conceded that this might have been the case but also pointed out that the usage in the publications was completely consistent with the general use of the word, and thus indicated its suitability for use in relation to computing operations. 

The technical material was put forward to indicate that NONSTOP was a word that other traders would wish to use to describe their similar goods.  It was not put forward to suggest that the word had become generic in relation to computers, or was a generic computer term.  Therefore, I do not believe that in the case of 470042, or indeed the present case, the apparent generic use of marks in publications that Mr Chrysiliou raised in his citations of Levi and Manganin supra was an issue.  However the Manganin case supra does raise the issue of evidence, particularly evidence from those in the trade who can establish whether a word is used and recognised as a trade mark in the trade.  It was this type of evidence that was critical in tipping the balance in the decision in Soflens supra.  The senior examiner, having reviewed the evidence lodged in connection with 470042, found that none of the evidence from independent declarants (only six in all, and all apparently customers rather than others in the trade) showed clear recognition of NONSTOP, solus, as a trade mark rather than as a descriptive term.  Three of the declarants linked NONSTOP with the word TANDEM as the product identifier, and the evidence overall, always showed the use of NONSTOP with the word TANDEM.  Evidence of the type found persuasive in the Manganin and Soflens cases was not furnished at the time of the previous hearing nor in connection with the present cases.

In the case of all of the applicant's applications, the objection to registration of the word NONSTOP has been based on the fact that it makes a direct reference to the character or quality of the goods in that it refers to them as being suitable for continuous or nonstop operation.  In the two previous decisions, the meanings of the word were canvassed in a number of the standard dictionaries - "made or held without pause or interruption" (Webster's Third New International Dictionary), "without stopping or which does not stop" (Supplement to the Oxford English Dictionary), "without stopping; continuously" (Macquarie Dictionary).  With all respect to Mr Chrysiliou, I cannot agree that the meaning he put forward in his example was overlooked and not considered.  Whether a mark makes a direct reference has to be considered in relation to the goods or services to which it is applied and how it will be understood by ordinary persons: Mark Foys's Ltd v Davies Coop & Co. Ltd (1956) 95 CLR 190 at 195. While it may come more naturally to people to think of NONSTOP in its "continuous" sense in relation to the mode of operation of a computer, it comes almost as naturally to think of a nonstop computer as being one which does not stop in its operation as opposed to one that does stop. Mr Chrysiliou seemed to be suggesting that if his particular shade of meaning were ascribed to the word then it was not as apt for normal description and other circumstances could be considered. I believe the word is, and would be seen and understood to be, just as descriptive no matter which meaning were ascribed to it.

In the Soflens case supra cited by Mr Chrysiliou, it was found that other descriptions of the goods, besides that suggested by the mark itself, were available for other traders to use.  This factor, combined with trade evidence that the mark was recognised as such in the trade and not as a descriptive term resulted in the finding that the mark was registrable in Part B of the Register.  In the case of NONSTOP, other apt descriptions are available, but unlike Soflens supra, no convincing trade evidence has been provided to establish that the word is seen in the trade as a trade mark rather than as a descriptive term.  In the absence of such evidence, the technical material that has been referred to, must be taken as indicating that other traders do want to use the word descriptively and that it is not a word that one trader should be granted a monopoly over.  Mr Chrysiliou raised the matter of section 64 in regard to the registrability of descriptive words, but section 64 is not relevant to the question of registrability.  In discussing section 8, the United Kingdom equivalent of section 64, Lord Simonds, in the Yorkshire Copper Works Ltd's Appn (1954) 71 PRC 150 at 154 said:

I do not ignore that some protection is given by sec. 8 of the Act, but I accept the view frequently expressed in regard to this section, and to sec. 44 of the earlier Act which it replaced, and in particular by Lord Maugham, Lord Atkin and Lord Russell of Killowen in the Glastonbury case, that it should not afford a guide as to whether a name should be registered or not.

In the light of the foregoing, I am of the opinion that trade mark application 470042 was fairly decided.  The application, like applications 378907, 378908 and 378909, was refused.  The mark NONSTOP was found to have no inherent adaptability to distinguish and although additional evidence was provided in the case of 470042, it was found that the degree of factual distinctiveness was still not sufficient to outweigh the lack of inherent distinctiveness of the mark.

However, unlike the previous applications, both marks being  considered here have an additional element, and as Mr Chrysiliou submitted, must be considered as a whole.  He submitted that the marks as totalities were distinctive: Diamond T. Motor Co.'s Appn (1921) 38 RPC 373. Mr Chrysiliou drew attention to examples of recent acceptances in class 9 to show that marks consisting of two non distinctive elements were, as a whole, registrable. He submitted that initials could be used and did function as trade marks. Some initials, like UX, formed a pronounceable word, and though not registrable themselves, in this case, when added with a hyphen to NONSTOP, formed a single pronounceable, registrable word. He posed the question - would other traders want to use the marks in relation to their goods? Mr Chrysiliou submitted that the marks should be registrable in Part A with disclaimers of V+ and UX or at least with separate disclaimers since the combinations were registrable. At the very least the marks should be registrable in Part B and in this regard cited Retail Nurserymens Products Co-operative Ltd Applications 1987 IPR 255. The mark was registered in Part B in the United Kingdom and the similarity of the two jurisdictions should be considered.

Decision
For the purposes of this decision, I must consider the registrability of the marks in Part A in terms of paragraphs 24(1)(c)(d) and (e) and sub-sections 24(2) and 26(2), and then, as allowed by sub-section 44(2), consider the registrability of the marks in Part B.  The marks contain, as their predominant, and, I believe, essential identifying feature, the word NONSTOP.  The word is not an invented word and makes a direct reference to an important characteristic of the goods.  "Direct reference corresponds in effect to aptness for normal description": American Screw Co.'s Appn [1959] RPC 344 at 346. The word is an apt description of a computer's mode of operation as discussed earlier in this decision. With regard to the registrability of the word NONSTOP, nothing that has been put forward here persuades me to accept a view contrary to that already decided on two previous occasions.

As Mr Chrysiliou conceded, the additions to the marks in this case, V+ and -UX, are, of themselves, non distinctive.  However, it is common practice for developers of computer hardware and software to append letters, numbers and/or symbols to their main product identifier as a shorthand way of denoting a model or version number, or a specific feature or capability of a particular member of a family of products.  Indeed, the applicant's evidence makes it clear there is a family of NONSTOP computer products.  There are, for example, various model numbers identified by Roman numerals; a model for rapid transaction processing identified by the letters TXP; a model incorporating a UNIX (another proprietor's registered trade mark) brand operating system identified by the addition of -UX, and software for use with the system incorporating specific features like structured query language, identified by the letters SQL.  The applicant's products are expensive and an investment in them will not be undertaken without considerable research into their various capabilities.  It will be quite apparent to the purchasers of the goods that the letters simply refer to the various products sold under the name NONSTOP.  I concede that the addition of -UX does form a single pronounceable word, but given the context of its use and the common practice of using letters as described above, it seems to me very unlikely that it would be pronounced other than as the word followed by the individual letters.

I believe the present case can be distinguished from Diamond T supra.  The present marks, like the cited mark, are composed of non distinctive elements.  It was the special arrangement of those elements, however, which led to the finding that the cited mark was distinctive.  The elements in the present case are not arranged in a special, distinctive way, but in a manner quite consistent with normal trade practice.  Therefore, I believe, the appending of the non distinctive elements V+ and -UX to the descriptive word NONSTOP adds nothing of distinction to the marks as wholes.  Thus the marks do not meet the requirements of paragraphs 24(1)(c)(d) and (e) and are not prima facie registrable in Part A of the Register.

Evidence of use was provided in the two previous cases and when reviewed was not found sufficient to establish that the mark NONSTOP was in fact distinctive or capable of becoming distinctive of the applicant's goods.  In this case, the applicant has provided no additional evidence of use and I see no reason to vary the assessment of the evidence in relation to NONSTOP.  If the existing evidence is reviewed in relation to the present marks, there is no specific evidence of the use of the combination NONSTOP V+ and only a portion of the evidence relates to NONSTOP-UX though there is no indication as to extent of sales under this particular mark,.  Therefore, I do not believe the applicant has discharged its onus in terms of sub-sections 24(2) or 26(2) in establishing that the marks were distinctive of the applicant's goods at the time of lodgement, and I find the marks not registrable in Part A of the Register.

In determining whether the marks are capable of becoming distinctive and registrable in Part B of the Register, they must be considered in the light of the principles elucidated in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 and Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, namely, whether the marks will at some time in the future satisfy the requirements of sub-section 26(2) of the Act concerning inherent adaptability to distinguish and distinctiveness in fact. I have to consider whether the present marks satisfy these requirements.

As discussed above, the evidence of factual distinctiveness of the present marks is not convincing.  Whether the marks have some degree of inherent adaptability to distinguish can be tested by reference to Lord Parker's statement in the W. & G. du Cros Ltd's Appn (1913) 30 RPC 660 at 672 as to:

whether other traders are likely, in the ordinary course of their business 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.

Mr Chrysiliou submitted that other traders would not want to use the marks.  Following the hearing I carried out further research into this question, the results of which I included in a letter to Mr Chrysiliou for his comments.  Mr Chrysiliou responded to the points I raised, reinforcing the submissions he had made at the hearing.  I carried out a data base search of computer publications and reviewed other generally available computer publications.  The research showed that traders were using NONSTOP descriptively in relation to computers; that other traders were appending "V Plus", if not "V+" to their product identifiers, and at least one other trader was appending "-UX" to its mark to signify, as does the applicant, that a UNIX brand operating system was involved.  I concede that my researches did not show that other traders want to use the applicant's precise marks, though I believe it is possible, given the occurrence of the components, that they could wish to do so.

However, the key factor, I believe, emerging from this research, is the additional evidence that other traders do want to use the word NONSTOP in relation to their similar goods, and the applicant's registration of it, either on its own, or in combination with letters, numbers or symbols, would prevent other traders' use of the word or at the very least create considerable uncertainty as to whether it could safely be used as a descriptive term, the provisions of paragragh 64(1)(b) nothwithstanding.  Mr Chrysiliou could well be correct when he claims that the applicant's adoption of the word NONSTOP as a trade mark predates its use by others in computer publications.  However, just because the applicant thought to use it first in relation to computer equipment that can operate without stopping does not necessarily mean the applicant should be able to appropriate, what is an apt description of such goods, for its sole use.  Evidence of the type which was found to be persuasive in Manganin and Soflens supra has not been provided.  In the absence of such evidence, I find, as has been found on the two previous occasions, that the word NONSTOP is inherently non-distinctive and that the evidence of factual distinctiveness is insufficient to outweigh the lack of inherent distinctiveness of the word.  I believe the same can be found in relation to the present marks.  These cases can be distinguished from Nurserymens Brand supra where the Hearing Officer was not prepared to find that the mark had no inherent adaptation to distinguish.

Mr Chrysiliou made reference to the fact that the mark NONSTOP has been accepted for registration in Part B of the Register in the United Kingdom.  This factor was given due consideration in the previous decision and not found to be persuasive. As no additional information regarding that acceptance has been put forward in this case I am not inclined to view the matter differently.

Therefore, in the light of the comments above, I do not consider the mark registrable in Part B of the Register.

With regard to the matter of disclaimers, the present case can also be distinguished from the examples of acceptances that Mr Chrysiliou brought to my attention, BYTE PRO and CL/CONFERENCE.  The component elements of these marks are certainly common to the trade but since the combinations are not particularly meaningful when taken as a whole and applied to the goods, a disclaimer of the separate exclusive use of the elements was appropriate.  In the present instance, where the combinations are meaningful in relation to the goods, the device of a disclaimer cannot be employed to register a mark which isn't registrable (see Soflens supra).

Conclusion
I do not find the marks meet the requirements of section 24 or section 25 of the Act and I refuse the applications in Part A and Part B of the Register.

Linda Sullivan
22 January 1993