The Procter & Gamble Company a Corporation Organised and Existing under the Laws of the State of Ohio, United States of America

[2014] ATMO 5

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1553201 (21) – SWEEPER+ VAC - in the name of The Procter & Gamble Company a corporation organised and existing under the laws of the State of Ohio, United States of America.

Delegate:

Bianca Irgang

Representation:

Applicant:

Decision:

2014 ATMO 5

Ex parte - S33 – section 41 ground for rejection – Trade mark is descriptive– consideration of subsection 41(4)–insufficient evidence and no other circumstances made out – application to be rejected in its entirety unless the applicant amends its goods specification in class 21.

Background

1. The Procter & Gamble Company a corporation organised and existing under the laws of the State of Ohio, United States of America (‘the applicant’) filed application number 1553201 on 23 April 2013 in class 21 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  SWEEPER+ VAC

Trade mark application:      1553201

Priority Date:  23 April 2013

Goods Specification:            Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware; paper mops; mops and disposable cleaning pads

1. An adverse report was issued to the applicant at the initial examination stage on 18 July 2013 raising a subsection 41(4) ground for rejection. The applicant requested an expedited decision on the section 41 matter which I was delegated to decide. No hearing was conducted and no submissions were made. Nor was any evidence provided at any stage of the process. Therefore, it is up to me to determine if a ground for rejection under section 41 of the Act applies to the trade mark application.

The Law

3. Section 33 of the Act provides:

33  Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

Presumption of Registrability

1. By virtue of section 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

2. Subsection 33(3) of the Act sets down the provisions for rejecting an application. It prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This is mandatory language. If subsections 33(3)(a) or (b) apply, the Registrar must reject the trade mark application.

3. Therefore, should I as a delegate of the Registrar decide that a valid section 41(4) ground for rejection exists and if the applicant is not able to satisfy me that the evidence or other circumstances it has provided are sufficient to overcome that objection then I must reject the application as per subsection 33(3).

Discussion

1. Following the amendments to the Trade Marks Act 1995 which took effect on 15 April 2013, section 41 now provides:

   41 Trade mark not distinguishing applicant’s goods or services

   (1) 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 (the 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.

   (2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3) This subsection applies to a trade mark if:

   (a) 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; and

   (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4) This subsection applies to a trade mark if:

   (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii) the use, or intended use, of the trade mark by the applicant;

   (iii) any other circumstances.

   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: For goods of a person and services of a person see section 6.

Note 3: 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 (5) and 7(3) and section 8).

(5) 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).

1. The amendments made to section 41 by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) from 15 April 2013 were intended to clarify that the presumption of registrability in section 33 does apply to section 41. Therefore, a trade mark is presumed to be registrable unless the Registrar is satisfied, on the balance of probabilities, that there is a ground for rejecting it under section 33 of the Trade Marks Act 1995 (Cth). If the Registrar is equally unsure of whether the trade mark is or is not capable of distinguishing the applicant’s goods or services, a decision should be made in favour of the applicant for registration[1].

   [1] Explanatory Memorandum p 146

2. While the numbering of the subsections within section 41 has altered, the sliding scale of capacity to distinguish has been preserved along with the prior authorities[2]. Section 41 still works on a type of sliding scale in relation to trade marks which are to some extent, but not sufficiently, inherently adapted to distinguish, and those which are not, to any extent, inherently adapted to distinguish. A trade mark that is sufficiently inherently adapted to distinguish on its own will be registrable without reference to the other requirements set out in subsections 41(3) or 41(4). It will not fall under the provisions of section 41 and therefore would not be rejected under section 33.

   [2] Explanatory Memorandum p 146

Consideration of inherent adaptability of the applicant’s trade mark to distinguish

1. In the present case, the applicant’s trade mark had a section 41(4) ground for rejection raised against it during examination. Just like the old section 41(5), under subsection 41(4) a trade mark that is only inherently adapted to distinguish “to some extent, but not sufficiently” may be registrable with evidence of use, evidence of intention to use, or evidence of “any other circumstances”. The trade mark will be rejected if it does not or will not distinguishing the applicant’s goods or services in light of the combined effect of its limited inherent capacity to distinguish use, intended use and other circumstances. As the prior authorities still apply when considering the inherent adaptability of a trade mark to distinguish, guidance is found in the words of Justice Kitto in ClarkEquipment Co v Registrar of Trade Marks[3]:

   …. whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [3] (1964) 111 CLR 511 at 514

2. The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[4]

   [4] (1965) 112 CLR 537).

3. The applicant is clearly of the opinion that its trade mark SWEEPER+ VAC is capable of distinguishing the designated goods as other traders in the same goods would not need to use the expression SWEEPER+ VAC in the ordinary and legitimate course of trade.

4. The research conducted by the examiner during examination and placed on the official file shows that SWEEPER+ VAC is not capable of distinguishing the goods because SWEEPER+ VAC may be defined as a device which is capable of cleaning a surface via sweeping and/or suction.   

5. Sweeper is defined in the Oxford English Dictionary as:

   A mechanical apparatus for sweeping a floor, road etc.; a sweeping machine

6. VAC is defined in the Oxford English Dictionary as:

   colloq. abbrev. of Vacuum

7. The term vacuum is defined as operating by a means of suction or by maintaining a partial vacuum. Considering the goods claimed in the specification I am satisfied that SWEEPER+ VAC is indicative of the uses of some of the applicant’s goods in class 21. More than that, I find that other traders trading in the relevant goods are likely to think of this expression and want to use it in relation to:

   ‘Household utensils (not of precious metal or coated therewith); brushes; articles for      cleaning purposes;’

8. The above goods cover non-electric sweepers and the applicant’s trade mark SWEEPER
   + VAC is directly descriptive of these type of sweepers. I believe that there is a clear link between the meaning of SWEEPER+ VAC and the goods which are claimed by the applicant. Particularly since non-electric sweepers are being promoted within the industry as being a quiet and energy efficient alternative to conventional cleaning systems.  

9. I find that a ground of rejection exists under subsection 41(4) with regard to the goods ‘Household utensils (not of precious metal or coated therewith); brushes; articles for cleaning purposes;’ claimed in the class 21 specification of the applicant’s trade mark. The applicant has not provided evidence of use or intended use. Nor has the applicant provided any reasons or other circumstances (s41(4)(b)(iii)) which are sufficient to overcome the ground for rejection. Therefore, the applicant has not established that the applied for trade mark, SWEEPER+ VAC, is capable of distinguishing its goods. I am satisfied there is ground for rejecting the application pursuant to subsection 41(1).

Decision

1. A valid ground for rejection of the application exists under subsection 41(4).

2. Therefore, I will reject trade mark application no. 1553201 in its entirety unless the applicant amends its class 21 claim to:

   Class 21: Household containers (not of precious metal or coated therewith); kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brush-making materials; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware; paper mops; mops and disposable cleaning pads

3. I will allow the applicant 21 days from the date of this decision in which to request the amendment. If the applicant does not amend its goods I will reject trade mark application no. 1553201 in its entirety.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
17 January 2014