Tchen Kil Tchun
[2014] ATMO 28
•2 April 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia 1490017 in Classes 18 & 25 (International Registration 678388) – LANCASTER - in the name of Tchen Kil Tchun
| Delegate: | Michael Kirov |
| Representation: | Holder: Gabriella Rubagotti of Counsel, instructed by Erin Cassidy of Baker & McKenzie, Attorneys & Solicitors |
| Decision: | 2014 ATMO 14 Ex parte matter pursuant to s 33(4)/reg. 17A.24: s 41 of the Trade Marks Act 1995 (pre-15 April 2013) considered – trade mark not inherently adapted to distinguish – use, intended use or other circumstances insufficient – extension of protection refused. |
Background
Trade mark application number 1490017 is the Australian designation of an application under the Madrid Protocol by Tchen Kil Tchun (“the Holder”) to extend protection of the trade mark subject of his international registration 678388 to Australia (“the IRDA”). After examining the IRDA, IP Australia raised and subsequently maintained an objection based on s 41[1] of the Trade Marks Act 1995 (“the Act”). This decision follows from an ex parte hearing held at the request of the Holder pursuant to s 33(4) of the Act in relation to that objection and IP Australia’s consequent provisional refusal of the IRDA.
[1] See paragraph 3 below.
Details of the IRDA are as follows:
Application Number: 1490017
Priority Date: 29 March 2012
Goods:Class 18: Leather goods, bags for men, bags for women, satchels, portfolios, document holders, briefcases, small leather articles, purses, card holders, wallets
Class 25: Belts
Trade Mark: LANCASTER (“the Trade Mark”)
As from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[2] Accordingly the repealed section remains relevant here and all references to s 41 hereafter in this decision are to the section as it stood prior to its amendment, as set out below:
[2] 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 first of three adverse reports on the IRDA the examiner concerned advised that there were two distinct bases for the s 41 objection, as follows:
To be protected in Australia, your trade mark must be capable of distinguishing your goods/services from the similar goods/services of other traders in the market place.
Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark is LANCASTER. This is the name of several places including a City in England and a City in the United States of America. Other traders use LANCASTER to indicate the origin of their goods and/or services.
Other traders should be able to use LANCASTER in connection with goods or services similar to yours.
AND
Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark is the word LANCASTER. This word is also the surname of many Australians.
People will often provide goods and/or services using their surname. The more common a surname is, the more likely it is that other traders may wish to use it.
Other traders with this surname should be able to use it in connection with goods or services similar to yours.
As a guide, a surname is considered a relatively common one if it has 750 or more entries on the Australian electoral roll. The surname in your trade mark occurs 2012 times. It is likely that a significant number of traders with this surname may need to use it in connection with their goods or services.
Other traders should be able to use LANCASTER in connection with goods or services similar to yours.
The examiner nevertheless considered that the Trade Mark was “to some extent inherently adapted to distinguish” the Applicant’s goods and thus specified that the objection was founded on s 41(5) of the Act, rather than s 41(6). The Holder was accordingly invited to provide evidence of use, intended use or other circumstances that might demonstrate the mark does or will so distinguish the goods.
In response the Holder submitted via its attorneys:
That “the geographical locations of [Lancaster] in the UK or the US have no obvious or potential connection with the [Holder’s] goods and therefore other traders would not be equally likely to need to use [the name] to indicate similar goods”;
That although “aware that it is Office practice to consider that a surname occurs frequently in the Australian population if it appears more than 750 times on the electoral role [sic]…this practice has been criticized by Wilcox J in Companhia Souza Cruz Industria e Comercio v Rothmans of Pall Mall (Australia) Ltd (1998) 41 IPR 497 (“Souza Cruz”) on the basis that it is a non-statutory restriction placed by the Registrar on the words that may be registered as trade marks (see at 503) and it is not for the Registrar to impose such non-statutory restrictions. We submit that [Lancaster] occurring 2012 times on the electoral role is not a common surname…”;
That the “test of inherent adaptation to distinguish remains that which was described by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 [“Clark Equipment Co”] at 514 as follows:
‘…the question whether a trade 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it’.
[and that] LANCASTER is not a trade mark that other traders will legitimately think of, and want to use in connection with similar goods to those covered by the application”; and
That in 1998 another applicant had apparently been able to register the same mark “for a broad range of goods in Class 3 without evidence of use of the trade mark in Australia being filed.”
The ensuing second adverse report on the application nevertheless maintained the objection, noting:
That whether or not the places named Lancaster had any obvious or potential connection with the actual goods produced by the Holder itself was not the issue. Rather, what mattered was whether any of those places might have any obvious or potential connection with the same or similar goods of other traders and thus be needed by them for legitimate descriptive purposes. As the examiner put it, “The cities of [Lancaster] in both the United States of America and England are big cities and the Holder’s goods are commonplace therefore the likelihood of a connection is high.”
That notwithstanding what Wilcox J had said in Souza Cruz, the examiner was satisfied given the nature of the Holder’s goods that the surname Lancaster was sufficiently common that other traders with the name might want or need to use it for relevant goods without improper motive. Indeed, the examiner noted, (albeit without providing any details), her Internet research indicated other traders were already doing so; and
That the 1998 registration in Class 3 was distinguishable because it covered “completely different” goods and that having reviewed the state of the Register in more relevant classes the examiner was satisfied it supported her maintaining the s 41(5) objection.
With respect to the geographical objection, the Holder’s attorneys responded by again submitting:
That “although the mark LANCASTER is the name of a city in the United Kingdom and a city in the United States, because the [Holder’s] goods have no connection or potential connection with either of these cities, the mark LANCASTER is able to act as a mark which distinguishes the [Holder’s] goods from those of other traders.”
That an “extreme example” of this (it was said) was “NORTH POLE used in relation to bananas, as consumers would not presume that such goods would originate from the North Pole, and bananas have [no] connection with that geographical location.[3] In the present case, consumers will not presume that that the mark LANCASTER is an indication of the origin of the [Holder’s] goods sold under the mark.”
That, “We have not located any evidence that indicates that either [sic] of the cities of [Lancaster] in the UK or the US [has] any connection or a potential connection with the [Holder’s] goods.”; and
That “the names of numerous cities in the UK and US [of comparable size to the cities named Lancaster] have been registered in relation to commonplace goods (to which the cities have no connection).”
[3] Citing Yorkshire Copper Works Ltd’s Application [1954] 71 RPC 150 (HL), where registration of the trade mark YORKSHIRE was refused for copper tubing. The example was referred to by Kitto J in Clark Equipment Co at 515, as to which see paragraph 21 below.
As for the surnominal objection, the Holder’s attorneys repeated their earlier submissions that they did not think Lancaster should be considered a common surname, since its occurrence 2,012 times on the Electoral Roll meant that it was only the name of “approximately 0.008% of the current Australian population”.[4] They again referred to Wilcox J’s comments in Souza Cruz and again referred to the existence of another party’s 1998 registration for the same mark for Class 3 goods (see paragraph 6 above). The attorneys also submitted that:
Regardless of whether the Examiner has located use of the name [Lancaster] on the Internet which demonstrates that LANCASTER is in use by other traders as a trade mark to distinguish different goods to those of the [Holder], it remains that [Lancaster] is not a common surname, and therefore the mark should be found to be a mark which is capable of distinguishing the [Holder’s] goods.
[4] This calculation obviously assumes there are more than 22,000,000 people on the Roll. I note the true number is fewer than 15,000,000.
After considering these further submissions the examiner issued a third adverse report maintaining the s 41 objection. The examiner noted that the hypothetical trade mark NORTH POLE for bananas was “not analogous”, stating, inter alia, that:
You submit a reasonable purchase[r] is not likely to assume that the [Holder’s] goods come from either of the cities of [Lancaster], I disagree and you have provided no evidence to the contrary. You further submit neither of the cities of [Lancaster] in the UK or the US have any connection or potential connection with [the Holder’s] goods, again I disagree there are traders in both cities of leather goods etc. As Gummow J stated in the Oxford case[5] when refusing registration of the word, "Oxford", under the repealed Act on the basis that Oxford was not inherently adapted to distinguish the applicant's books from those of other book publishers whose goods also emanated from Oxford:
“The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration”.
[5] Chancellor, Masters and Scholars of the University of Oxford (t/as Oxford University Press) v Registrar of Trade Marks (1990) 17 IPR 509; 24 FCR 1.
Nor did the examiner consider persuasive the 1998 registration for Class 3 goods to which the Holder’s attorneys had again referred, noting its age and the fact that “the circumstances surrounding the acceptance of the trade mark are unknown”. The examiner concluded her report with the words:
Please note that further submissions which merely debate the merit of the section 41(5) ground for rejection are very unlikely to be persuasive. Therefore, any further submissions must be accompanied by substantial evidence of use, or must otherwise advance the application towards acceptance. Otherwise, I will reject the application.
Alternatively, the [Holder] may request a hearing on the matter and pay the appropriate fee.
The Holder requested a hearing. I heard the matter as a delegate of the Registrar on 14 February 2014 in Sydney, with Gabriella Rubagotti of Counsel, instructed by Erin Cassidy of Baker & McKenzie, Attorneys & Solicitors, representing the Holder. Ms Rubagotti supplemented her oral submissions with written submissions emailed to me by Ms Cassidy on the eve of the hearing. Ms Cassidy also included with that email a copy of a declaration made under the Act by the Holder on 7 February 2014, with two Annexures.
Discussion
Particulars of the Section 41 objection
I think it useful to begin by further specifying the basis for the s 41 objection since, while the examiner did indicate that the name Lancaster occurred some 2,012 times on the Electoral Roll, I understand she did not provide the Holder with details concerning the cities named Lancaster in the UK or US which led to her raising the geographical objection. Accordingly the Holder’s submissions (both during prosecution of the application and at the hearing) as to whether cities named Lancaster in the UK or US might be, or be seen to be, an actual or potential source of the Holder’s goods appear essentially to have been made on a theoretical basis. My own research[6] using the Columbia Gazetteer of the World Online[7] indicates that as far as the UK is concerned Lancaster has a population of around 46,000. It is the capital of Lancashire and the Gazetteer notes that “the city’s products include furniture, textiles, synthetic fiber, linoleum and soap. It also has an active livestock market.”
[6] Conducted on 10 February 2014 and raised with Ms Rubagotti at the hearing.
[7] At © Columbia University Press.
Lancaster is also the name of four cities in the US with a population of more than 30,000, located in the States of California (118,718), Pennsylvania (54,779), Ohio (36,507) and Texas (33,790). It is also the name of counties in Pennsylvania (494,486), Nebraska (267,135) and South Carolina (63,628). According to the Gazetteer the cities mentioned produce a broad range of goods, including various farm produce and livestock, concrete, aluminium products, medical products and goods for the electronics, aerospace, aircraft, defense, motor vehicle, glassware, and other manufacturing industries. The cities are also variously known for their advertising, printing and publishing industries.
I also highlight the fact that there are two distinct bases for the s 41 objection in this case and that one does not “subsume”, as it were, the other. The likelihood of other traders in relevant goods wanting to use the name Lancaster for its geographical significance is one thing. In principle there is in addition effectively a separate cohort of actual or potential traders in such goods who are themselves named Lancaster and who might want or need to use the name for that reason. That said, I will concentrate on the geographical basis for the objection in the following discussion.
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[8] (“Blount”) as follows:
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.
[8] (1998) 40 IPR 498 at 504.
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 designated goods … from the goods or services of other persons”. Before turning to this enquiry, however, it is necessary to say something about the “presumption of registrability” indicated in s 33 of the Act.
The “Presumption of Registrability”
Ms Rubagotti began her submissions by highlighting s 33, quoting, inter alia, French J (as he then was) in Kenman Kandy (Aust) Pty Ltd v Registrar of Trade Marks (“Kenman”),[9] where his Honour was considering the inherent adaptation of a fanciful “bug” shape to distinguish confectionery:
…it is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s 33. To the extent that critical criteria upon which registration might be rejected are in doubt, the application should be accepted. Closer adversarial scrutiny may occur in opposition - Registrar of Trade Marks v Woolworths at 377.[10]
[9] (2002) 56 IPR 30; 122 FCR 494 at [50].
[10] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411; 93 FCR 50.
Ms Rubagotti was critical of the examiner’s approach in this regard, arguing that despite the surnominal and geographical significance of the name Lancaster, the examiner should have resolved any doubt she might have had as to the Trade Mark’s inherent adaptation to distinguish the Holder’s goods in the Holder’s favour rather than calling for evidence of use, intended use or other relevant circumstances as indicated by s 41(5). As Ms Rubagotti put it in her written submissions:
In this case, the Examiner rejected the application by reference to the following critical criteria: LANCASTER is a place name and a surname and thus, without more (i.e. the s.41(5) matters), the mark is insufficiently inherently adapted to distinguish the [Holder’s] goods as to be capable of distinguishing the goods. See: second adverse report (last sentence).[11]
In the [Holder’s] submission, these criteria are open to doubt for the reasons stated below. In view of this doubt, noting the presumption of registrability, the [Holder] submits that the application should be accepted.
[11] I note the last sentence of this report is, “Further submissions in opposition to the merits of the grounds for rejection are unlikely to be persuasive.”
I will say more below about the specific reasons put forward by Ms Rubagotti for the “doubt” regarding the extent of the Trade Mark’s inherent adaptation to distinguish the Holder’s goods. It is nevertheless necessary firstly to clarify that the presumption French J considered should be made in the applicant’s favour in Kenman was that “the number of possible symmetrical arrangements of projections and recesses [making up the shape of the fanciful bug for which protection was sought was] infinite”.[12] His Honour was thus unwilling, “absent evidence, to draw conclusions about that number and whether the particular arrangement has any significant impact upon the access of other traders to the use of insect like shapes as trade marks.”[13] This was the issue he thought should be left for possible “closer adversarial scrutiny” in opposition proceedings if necessary.
[12] Kenman at [50].
[13] Ibid.
Accordingly, I have no hesitation in agreeing in general terms with Ms Rubagotti that a presumption of registrability applies when considering s 41 and, in particular, when considering a mark’s inherent adaptation to distinguish under s 41(3). However, the present case is quite distinguishable from Kenman. We are not here dealing with the inherent adaptation to distinguish of a fanciful shape mark unlikely on the face of it, (that is “absent evidence” as French J put it), to be required by other confectionery producers. Rather, the Holder is seeking a monopoly in respect of common, everyday goods in a well known name which occurs a known number of times on the Australian Electoral Roll and which is the name of sizeable cities (and counties) in the US and the UK. Unlike the position with an invented bug shape, there is abundant case law going back many years indicating a name of this kind is not considered prima facie inherently sufficiently adapted to distinguish common goods such as those of interest to the Holder. In this regard, as Branson J observed in Blount in relation to the inherent adaptation of the geographical name “Oregon” to distinguish goods in Class 7:[14]
The notion of a trade mark being inherently adapted to distinguish the designated goods was of primary significance under the 1955 Act. There is no reason to think that the phrase ``inherently adapted to distinguish the designated goods from the goods of other persons'’ appearing in s 41(3) of the Act is not intended to be understood in the light of decisions under the 1955 Act, and comparable United Kingdom legislation which includes references to inherent adaptability.
In the Clark Equipment Co case at 514, Kitto J explained that the basic reason for the frequent refusal to register as a trade mark a word of prima facie geographic significance was the requirement 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 actuated by proper motives might want to use the word in a manner which would impinge [sic] a registered trade mark granted in respect of it. His Honour went on at 515 to observe:
The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make.
See also the discussion of the notion of ``inherently adapted to distinguish'’ in Oxford University Press v Registrar of Trade Marks(1990) 17 IPR 509.
The applicant's trade mark is not a ``fancy name'’ as that expression was used by Kitto J in the Clark Equipment Co case. An example there given by his Honour at 515 of a ``fancy name'’ was ``North Pole'’ used in connection with bananas.
[14] Op. cit. at 506-507. The additional words of Kitto J from Clark Equipment Co at 515 that I have highlighted in bold were not quoted by Branson J, but I have included them nonetheless because they have direct relevance to the present matter.
On the face of it, (and contrary to the Holder’s attorney’s submission to the examiner mentioned in paragraph 8 above), nor is Lancaster a “fancy name” when considered in the context of the Holder’s goods of interest. There is no evidence before me, nor has the Holder suggested any basis, as to why it would be unreasonable to suppose that such goods might in future be produced in any of the places named Lancaster. In such circumstances s 41(4) of the Act indicates either s 41(5) or 41(6) applies. Of course s 41(3) and, if applicable, s 41(5) still require consideration of the extent (if any) to which the Trade Mark is inherently adapted to distinguish relevant goods. However in terms of Branson J’s analysis in Oregon quoted in paragraph 16 above, I am not satisfied that the Trade Mark is sufficiently inherently adapted to distinguish the Holder’s goods from the similar goods of other persons as to be capable, on that basis alone, of so distinguishing the designated goods.
While Ms Rubagotti did not submit otherwise, I note that since I have reached this critical conclusion with respect to the Trade Mark’s inherent adaptation, arguably any “presumption” I might hereafter make would only aid the Holder if matters were so finely balanced that I was unable to decide one way or the other a relevant issue under ss 41(5) or (6). That said, as explained in some detail by Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd:[15]
[15] (2010) 87 IPR 300 at [26] to [28] 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[16] 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[17] 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”.
[16] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.
[17] 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).
…
[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”.
The extent to which the Trade Mark is inherently adapted to distinguish
In Blount, to which Ms Rubagotti referred in this context, Branson J considered the name Oregon (slightly stylised as ) contained no inherent adaptation to distinguish the applicant’s goods of interest in Class 7 and thus that s 41(6) of the Act was applicable in that case. In addition to Blount Ms Rubagotti referred me to three other cases featuring geographical names. In Chancellor, Masters and Scholars of the University of Oxford (t/as Oxford University Press) v Registrar of Trade Marks[18] (OXFORD for printed publications in Class 16) and Re Mackay Airport Pty Ltd[19] (Mackay Airport for services in Classes 35, 36, 37, 38, 39 and 42) the marks concerned, like the mark, were not considered to any extent inherently adapted to distinguish the relevant goods or services.[20]
[18] (1990) 17 IPR 509; 24 FCR 1.
[19] (2013) 101 IPR 594.
[20] For the OXFORD mark this determination was made pursuant to s 26 of the Trade Marks Act 1955.
The fourth case to which Ms Rubagotti referred was Colorado Group Limited v Strandbags Group Pty Limited[21] (“Colorado”), an infringement case. Here the alleged infringer cross-claimed under s 88 of the Act for partial cancellation of the trade mark relied upon, (COLORADO, then registered for, inter alia, backpacks, bags, purses and wallets in Class 18), arguing that the mark was not inherently adapted to distinguish those Class 18 goods because of its geographical significance and/or because the state of Colorado had connotations of ruggedness, trekking or similar which were relevant to the goods concerned. The Full Federal Court (Kenny, Gyles and Allsop JJ) agreed. As noted by Allsop J in his leading judgment at [129], it was considered both unnecessary and redundant to consider s 41(6) on the particular facts before the Court since the alleged infringer:
… accepted in submissions in its approach to the appeal that the word was to some extent inherently adapted to distinguish the designated goods or services and submitted that the relevant enquiry was under s 41(5). It is unnecessary, therefore, to consider the application of s 41(6) and whether it would lead to any different result than would the application of s 41(5).[22]
[21] (2007) 74 IPR 246; 164 FCR 506.
[22] See the detailed discussion of this aspect of Colorado by Middleton J in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 90 IPR 117 at [68]-[76], particularly at [76] itself.
Ms Rubagotti submitted that the Trade Mark was distinguishable from the , OXFORD, COLORADO and Mackay Airport trade marks because, “In all of these cases, an overwhelming connexion existed between the marks sought to be registered [sic][23] and their applicable goods or services.”
[23] As mentioned, in Colorado the COLORADO mark was already registered and the question of its inherent adaptation arose in the context of an application under s 88 of the Act.
I accept that, in principle, this may be a relevant distinction as far as assessing whether the Trade Mark might qualify for registration under s 41(5) of the Act rather than s 41(6). However, whether the Trade Mark is not to any extent inherently adapted to distinguish the Holder’s goods, or arguably contains some degree of inherent adaptation because no “overwhelming connexion” between the places named Lancaster and the Holder’s goods currently exists, is not critical to my decision in the current case. This is because the use, intended use and other circumstances relied upon by the Holder is in any event insufficient to satisfy me the mark does or will distinguish the Holder’s goods as required by s 41(5), let alone to establish that it did distinguish those goods as at the 29 March 2012 priority date as required by s 41(6).
I might add that in Colorado it was indeed noted that the evidence before the Court indicated that the state of Colorado was apt, as Allsop J put it at [127], “to conjure up an image of adventure, the outdoors, ruggedness, trekking and the like” and that this might accordingly constitute a further reason other traders in relevant goods might want to use the name. However all three judges still emphasized the word’s primary signification as a geographic name as problematic in its own right, as indicated in the extracts below from the judgments of Kenny J at [29] and Gyles J at [41] respectively (with my emphasis added):
[29] … I agree in substance with Allsop J that it is likely that another trader will want to use the word “Colorado”, legitimately, with regard to his goods, for the sake of the geographical reference which it is inherently adapted to make or the connotations that that geographic reference invokes.
…
[41] As Allsop J has explained, the [alleged infringer] accepted that the relevant inquiry was under s 41(5). When the questions posed by s 41(5) are addressed, in my opinion, the word “Colorado” is inherently adapted to distinguish the designated goods or services only to a slight extent. Whether taken to indicate the origin of goods or the association of the goods with the known or perceived characteristics of the American state, “Colorado” is unlikely to distinguish the goods of the first appellant compared with the goods of other parties who may legitimately choose to use the word in connection with such goods.
To conclude, in my estimation the Trade Mark too might at best be said to have only slight inherent adaptation to distinguish the Holder’s goods, particularly when the cumulative effect (see paragraph 15 above) of the Trade Mark’s surnominal significance is also taken into account. As indicated by s 41(5)(a) of the Act, this in turn is relevant to my assessment of the significance of the matters mentioned in the declaration by the Holder lodged on the eve of the hearing (“the declaration”), which is discussed below. In this regard, as Ms Rubagotti put it in her written submissions:
A trade mark possessing a lower level of inherent adaptation to distinguish will require correspondingly higher level of use as a trade mark and other circumstances in order to permit registration: Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd (2003) 134 FCR 51.
Evidence of use, intended use and other circumstances
As foreshadowed above, the information contained in the declaration is insufficient to satisfy me the mark does or will distinguish the Holder’s goods. Briefly put, the Trade Mark has not been used in Australia and there is insufficient detail of the Holder’s intention to use it here. Nor is it possible to place significant weight on the Holder’s overseas use, for which, inter alia, no sales or advertising figures are given. Moreover, the Holder does not in any event define what actual mark(s) the terms “the LANCASTER trade mark” and “the Trade Mark” variously used in his declaration refer to. It is however apparent from the declaration as a whole that he makes no distinction between the claimed trade marks LANCASTER, LANCASTERPARIS and stylised versions of each of these marks. That said, none of the trade mark use shown on the Holder’s website (downloaded pages from which are annexed to the declaration), and shown on the website itself, appears to be of the mark as applied for, but is rather of marks in one or other of the stylised forms shown below:
I will not further detail the contents of the declaration in view of the Holder’s statement that:
The [Holder] regards the information provided in this declaration as commercially sensitive and relating to the business affairs of the [Holder] and the [Holder’s] Business under [sic] the Freedom of Information Act 1982 (Cth). I am providing this information for no other purpose than this matter and ask that it be returned to the [Holder’s] attorneys when the matter has been determined. I also ask that the information not be disclosed to any persons other than the representatives of IP Australia who require access to it for the purposes of determining this matter without the consent of the [Holder].
In terms of s 41(5)(a)(iii) of the Act, the only “other circumstances” raised by Ms Rubagotti in her submissions were based on (1) the existence of registrations in Australia owned by third parties for marks containing or featuring the name Lancaster and (2) the existence of overseas registrations owned by the Holder for marks containing or featuring the name.
As to the first issue, Ms Rubagotti did not, as I understand it, seek to press the same point that the Holder’s attorneys had during prosecution of the application,[24] namely that the apparent acceptance on a prima facie basis in 1998 of a third party’s application to register LANCASTER as a trade mark for goods in Class 3 should be seen as relevant precedent. For the record, nevertheless, I confirm I do not consider any (arguable) inconsistency in the treatment of this now registered mark is relevant to my decision, which is made on first principles and on the merits of the Holder’s application itself. In this regard, as Wilcox J remarked in Ocean Spray Cranberries Inc v Registrar of Trade Marks:[25]
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
[24] See paragraphs 6-11 above.
[25] (2000) 47 IPR 579 at [35].
The point Ms Rubagotti did want to make was nevertheless based on the existence of this 1998 registration for LANCASTER in Class 3 and of a 1996 registration in Class 3 owned by the same party for LANCASTER (stylised).[26] She suggested that:
By reason of these registrations, in Australia, the word LANCASTER may be taken to be distinctive of this registered proprietor’s class 3 goods, to the extent that the mark LANCASTER distinguishes those goods from others of the same type in the market.
[26] Which I note in passing was accepted for registration under s 41(5) of the Act.
She added that “similar observations” might be made about the mark , registered since 2010 by another party for Class 7 goods. Noting Kitto J’s well known formula for assessing inherent adaptation to distinguish in Clark Equipment Co at 514 (quoted in full in paragraph 6 above), she highlighted his reference to “…words forming part of the common heritage, for the sake of the signification which they ordinarily possess” and concluded that:
By reason of these registrations there is considerable room for enquiry as to whether the place-name or the surname or both be the signification LANCASTER ordinarily possesses.
In my view there is no need for an enquiry of this kind at all, but even if there were such a case to be made the onus would be on the Holder to make it. There is no evidence before me indicating that any of the three registered marks mentioned by Ms Rubagotti has ever enjoyed any use, let alone that their use was so pervasive as to displace the geographical or surnominal significance the name Lancaster inherently has.
As to the matter of the Holder’s overseas registrations, brief details of these are provided in the declaration. While the classes covered are indicated, the actual goods covered are not. Nor is there any indication as to whether use or other circumstances may have been required before the marks were accepted for registration. Moreover, in all but four of the 14 registrations identified the registered marks (which are not shown) are described in the declaration as “LANCASTERPARIS”, “LANCASTER PARIS (stylized)” or “LANCASTER (stylized)”, rather than LANCASTER per se. The remaining four registrations are not in common law jurisdictions with similar registration requirements to Australia, being the Holder’s home jurisdiction of France as well as Liechtenstein, Taiwan and the Russian Federation. I am not satisfied that the existence of these four registrations sheds significant light on the capacity of the Trade Mark to distinguish the Holder’s goods in Australia.
Decision
I have found that the Trade Mark is not inherently adapted to distinguish, or is not sufficiently inherently adapted to distinguish, the Holder’s goods so as to be acceptable for registration on that basis alone. I have further found that the Holder has not made out a case for acceptance under ss 41(5) or (6) of the Act.
I accordingly refuse to extend protection of the Trade Mark to Australia and confirm that pursuant to sections 41(2) and 33(3)(b) of the Act the IRDA is refused.
Michael Kirov
Hearing Officer
Trade Marks Hearings
2 April 2014
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