Tomorrow's Apparel

[2003] ATMO 22

TRADE MARKS ACT 1995

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

Re:Trade Mark Application 872091 (25)– PLUSH – filed in the name of Tomorrow’s Apparel Pty Ltd.

Background

These issues arise out of the filing, by Tomorrow’s Apparel Pty Ltd, (‘the applicant’) of Neutral Bay NSW, on 10 April 2001, (‘the priority date’) of application 872091 in Class 25 of the International Classification of Goods and Services to register the trade mark PLUSH, for ‘Clothing, footwear, headgear’ (‘the nominated goods'):

The examiner issued a report stating that grounds for rejection existed in terms of section 41 of the Trade Marks Act 1995 because the Macquarie Dictionary at defines the word PLUSH as meaning, inter alia:  “a fabric of silk, cotton, wool, etc, having a longer pile than that of velvet”.  In the course of correspondence with the solicitors who then acted for the applicant, the examiner stated that the accepted test for whether a trade mark is inherently adapted to distinguish depends on the likelihood of other traders thinking of the word and wishing to use it in connection with their similar goods for the sake of its ordinary meaning –Clark Equipment Co v Registrar of Trade Marks (1964) 11 CLR 511 at 514. The examiner provided examples of other traders using the word PLUSH in respect of clothing as an indication of the type of cloth from which the clothing was made.

The applicant requested a hearing.  As a delegate of the Registrar of Trade Marks, I heard the applicant’s submissions in Sydney on Friday 25 October 2002.  Mr Jarrod Whelpton, a Director of the applicant, and its General Manager, Paul Davis, represented the applicant.

At the end of the hearing, I indicated to Messrs Davis and Whelpton that I believed that it was probable that my decision would be adverse and asked them if, if I did, in fact, conclude that the application must be rejected, they would wish to afford themselves of the opportunity to withdraw it.  My considerations were adverse to the applicant and, on 6 January 2003, I wrote to the applicant indicating that my decision would be adverse and indicating that I would afford the applicant the opportunity to withdraw the application and avoid an adverse finding.  The applicant has not availed itself of this opportunity and I now give my reasons for rejecting the application.

Section 41

41  Trade mark not distinguishing applicant’s goods or services

(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 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 scheme of section 41 and how it is intended to work was discussed in Blount Inc v Registrar of Trade Marks [1998] 440 FCA (1 May 1998) by Branson J:

Subsections (3) to (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.

The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

As an initial step, I am required to “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.”

In Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514, Kitto J put the test as follows:

[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.

As observed by Branson J, in Blount, above, the test concerning inherent adaptability is the same under the current Act as it was under the predecessors of it.  I have mentioned, above, the examiner’s quotation from the Macquarie Dictionary and the examples of the word PLUSH in use in relation to clothing as an indictor of the material out of which the garments are made.  Before the hearing, I confirmed such usage of the word on Internet sites and provided copies of these to the applicant’s representatives.  The research material showed prominent usage of the word PLUSH on a range of garments – predominantly jackets, but including other garments such as pants, shirts, track suits, dressing gowns, night-wear, bath robes and slippers.  The word PLUSH is used as a ‘selling point’ in relation to this clothing – that is, it is used prominently in order to promote and draw attention to the garments.

In summary, the research material shows that there is a 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”. I conclude, therefore, that the word PLUSH is not, to any extent, adapted to distinguish the goods of the applicant. In terms of the analysis of section 41 of the Act by Branson J in Blount, above, this is a finding in terms of conclusion (b) and I am directed by the Act to subsection 41(6) and am to consider whether the applicant has established 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 relevant date is here 10 April 2001 - the date on which the application was filed.  The applicant, in a declaration by Jarrod David Whelpton has stated that the trade mark was first used publicly by the applicant in the June 2001 issue of Waves SurfGirl magazine.  The first articles of clothing under the PLUSH label went on sale in August 2001.  In short, the applicant had not, to any extent, used the trade mark prior to the filing of the application.  The trade mark, being unused, could not, therefore, have distinguished the applicant’s goods because of the extent of its use prior to the filing date.

I have given some thought as to whether the applicant might be given the opportunity to amend its application so as to exclude clothing made of plush material.  I have concluded that this is not possible in the light of the provisions of section 43 of the Act which states:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Obviously, the word PLUSH has the connotation given in the quote from the Macquarie Dictionary, above.  It is frequently the case that garments are sold in plastic packaging where the composition of the cloth may not be examined prior to purchase.  If a member of the public was led to purchase the goods believing, as the sign indicates it to be, that the clothing was made of plush, that person would have been deceived.  I believe that the conclusion that the garment is made of plush or has a plush texture is an obvious one and is one that might be formed by a great many people.  The use of the trade mark would under those circumstances therefore be likely to deceive or to cause confusion.

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 for rejecting it.

Note:   For the grounds on which an application may be rejected see Division 2.

(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 for rejecting it;

the Registrar must reject the application.

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

Note:   For applicant see section 6.

In terms of section 33(3), I am satisfied that there is a ground for rejecting the application and now do so.

Ian Thompson
Hearing Officer

18 April 2003