Tatra Nominees Pty Ltd and Hokarra Nominees Pty Ltd, Re

[1994] ATMO 35

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application Number 585177 to register a trade mark in the name of TATRA NOMINEES PTY LTD and HOKARRA NOMINEES PTY LTD

On 26 August 1992, the abovenamed applicant lodged an application in class 42 to register the words THE LEADING EDGE as a trade mark in Part A of the Register for the services "catalogues, mail order marketing services, direct marketing services including retail stores, wholesale services".

The first two examiner's reports dealt with formality objections, the main one being to do with the statement of services.  On 20 September 1993, the applicant agreed to amend the statement of goods to read:  "mail order marketing services, telephone order marketing services, direct marketing services, wholesale and retail services in respect of retail stores, department stores, discount stores and supermarkets".  On 13 October 1993, however, in a third report, the examiner raised a late objection to the mark, stating that:

Your mark consists of the words THE LEADING EDGE which refer directly to the character or quality of your services, LEADING EDGE being a laudatory term meaning 'in the vanguard or forefront'.  The mark is thus descriptive of sales services which are more advanced than those of competitors, or services relating to sales of goods which are more advanced than that of other traders.

In his response of 28 October 1993 to this objection, the attorney for the applicant submitted that the words THE LEADING EDGE were not words that other traders would normally use in a laudatory sense to describe the nature of their products;  that the words were more emotive than laudatory, containing a skilful and covert illusion as to the fact that the services offered may be better than others;  and that the words were not directly descriptive, given the nature of the services contained in the application.  The attorney also pointed out that there were already three existing registrations, all comprising the words LEADING EDGE.

The examiner maintained the objection whereupon the attorney waived the right to be heard and requested a decision on the written record.

The Oxford Dictionary of New Words shows that LEADING EDGE is defined as "the forefront of progress or development, especially in technology;  the 'state of the art' ". 

This definition indicates that the words LEADING EDGE are used especially in the field of technology;  however, that does not mean that the phrase is confined to that field.  The applicant submitted that the phrase "may not be registrable for computers or advanced technological products for which the words 'state-of-the-art' are often used".  However, relying on my own knowledge of the way the phrase is now used in current speech, something I am fully entitled to do (See Heavenly Trade Mark [1967] RPC 306 at 309), my observation is that the phrase has slipped into common usage in all fields of endeavour. To have THE LEADING EDGE indicates, for example, that if someone adopts an innovative method of doing something, that person can be said to have the LEADING EDGE over competitors in that same field.

I believe, then, that the meaning conveyed by the mark represented as THE LEADING EDGE can in no way be considered to be merely allusory to, or only indirectly eulogising, the services upon which it is used;  it would indicate to persons concerned with the applicant's services that the most advanced techniques in that field are being employed, resulting in the applicant gaining advantage over competitors in that same area.
I note the attorney's submissions concerning the prior registrations of the words LEADING EDGE.  However, as pointed out by the examiner, the state of language and its connotations change over time;  the marks to which the attorney refers date back some nine to twelve years.  In that time, the meaning assigned to LEADING EDGE has evolved from referring to the forward edge of propeller blades to a figurative application referring to something in the forefront of progress or development. 

In considering a mark's registrability for the purposes of Part A or Part B registration in terms of the Act, Gibbs J in the Burger King Corporation case 128 CLR 417 said:

...that the primary enquiry is whether the word is inherently adapted to distinguish the goods in respect of which registration is sought, and that if it is simply a laudatory or descriptive epithet, registration will generally be refused, even if there is evidence of such user as has in fact rendered the word distinctive of the goods.

As I have indicated, the mark in suit consists of a phrase which is merely laudatory and descriptive.  There is no evidence of user before me to weigh against this lack of inherent adaptedness to distinguish.  There appear, thus, to be no favourable circumstances or use which could be weighed against the mark's inherent non-distinctiveness and, accordingly, I refuse to register application number 585177 in either Part A or Part B of the register.

(Sharyn Sullivan)
Senior Examiner

27 April, 1994.