Toyota Jidosha Kanushiki Kaisha
[2022] ATMO 86
•31 May 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2061366 (class 12) – Shape: trapezoid in central part of front face of a vehicle - in the name of Toyota Jidosha Kabushiki Kaisha
Delegate: Katrina Brown Representation: Applicant: Vivian Tran of Spruson & Ferguson Decision: 2022 ATMO 86
Trade Marks Act 1995 (Cth) – s 33 proceeding – s 41 - trade mark not capable of distinguishing – evidence not sufficient – trade mark application rejectedBackground
This matter is an ex parte proceeding pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’) concerning an application to register the following trade mark:
Trade mark no: 2061366
Applicant: Toyota Jidosha Kabushiki Kaisha (‘Applicant’)
Trade mark:
The Mark consists of a three-dimensional shape whose position is in the central part of the front face of a vehicle, between the headlights as shown in the images (‘Claimed Mark’). The broken lines are not part of the trade mark and serve only to show the shape of the trade mark on product to which it is fixed.
Filing date: 7 January 2020
Goods: Class 12 – automobiles (‘Designated Goods’)The application was examined and a ground for rejection was raised under s 41(3) of the Act as the examiner was of the opinion that the Claimed Mark was not to any extent inherently adapted to distinguish the Designated Goods. The ground for rejection was articulated in the first examination report as follows:
Your trade mark is the shape of a CAR GRILLE CASING.
This shape of a CAR GRILLE CASING is used to secure and house a car’s protective grille mesh.
I have considered the indentations on the side of the GRILLE CASING, however these are insufficient in distinguishing your trade mark. Consumers will still likely see your shape of a CAR GRILLE CASING as a functional part of your claimed automobile goods.
Other traders should be able to use this shape of a CAR GRILLE CASING, or something very similar, in connection with goods or services that are the same or similar to yours.
In support of the application, the Applicant made submissions and filed the following declarations:
·Declaration of Shinsuke Arita (General Manager, Business Support Department, Intellectual Property Division of the Applicant) made on 7 September 2021 with Annexures A to D (‘Arita Declaration’); and
·Declaration of Mark Carbonari (Senior Manager, Marketing & Strategy of Lexus Australia) made on 7 October 2021 with Annexures A to H (‘Carbonari Declaration’).
The examiner did not find the submissions or evidence persuasive and maintained the s 41 ground for rejection.
After the third examination report the Applicant requested to be heard. The following supplementary declaration was also submitted:
·Declaration of Vivian Tran (Spruson & Ferguson) made on 22 February 2021 with Annexures A to B (‘Tran Declaration’).
The matter came before me, a delegate of the Registrar of Trade Marks, on 1 March 2022. Vivian Tran of Spruson and Ferguson made written and oral submissions on behalf of the Applicant.
As a preliminary matter I note that the focus here is not to review the examiner’s decision and rationale but rather, to consider afresh the ground for rejection that was raised.
Section 41
Section 41 of the Act relevantly provides:
(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.
…
(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.
The inherent adaptation of a trade mark is assessed:
[B]y 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.[1]
[1] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
Whilst the above passage refers to trade marks consisting of words, the principle is equally applicable to other types of trade marks including shape trade marks.[2] In Chocolaterie Guylian N.V. v Registrar of Trade Marks, Sundberg J expressed the test in relation to a shape trade mark as:
The ultimate question on the issue of inherent adaptation is whether a sign – in this case, a shape – possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign.[3]
[2] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, [146] (Stone J).
[3] [2009] FCA 891, [75].
I note that in applying this test, consideration is given to the likelihood of other traders desiring to use the trade mark, or some mark so nearly resembling it, in connection with their own goods.[4]
[4] W&G Du Cros Ltd’s Appn (1913) 30 RPC 660, 672 (Parker LJ).
The Claimed Mark is a trapezoid shape which is pinched inwards on both sides (approximately 1/3 of the way from the top of the shape) and is positioned in the central part of the front of a vehicle. From the evidence before me, the Claimed Mark is the shape of the grille on the front of the Applicant’s automobiles and is often referred to as the ‘spindle grille’.
The Applicant submits that the Claimed Mark is capable of distinguishing the Designated Goods as it is an invented shape which is not inherent to automobiles and does not confer any functional benefit.
In Sebel Furniture v Acoustic & Felts Pty Ltd Foster J, referring to Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd,[5] stated:
A shape which is dictated by the nature of the goods or by the need to achieve some particular technical result or functional outcome cannot operate as a trade mark.
In order to function as a trade mark, the shape must be something which is extra or which is added to the inherent form of the particular goods as something distinct which can denote origin. A shape cannot function as a trade mark if it is something that other traders may legitimately wish to use either because it is inherent to the particular goods (ie it is of their nature) or because it provides some technical or functional benefit to the goods.[6]
[5] [2000] FCA 876.
[6] [2009] FCA 6, [144] (emphasis in original).
It is apparent from the evidence that vehicle grilles come in an array of different shapes and sizes. The purpose of a vehicle grille is to let air flow into the engine bay to prevent overheating.[7] At the highest level of generality, a shape with a large surface area will be better equipped to achieve this function. More specifically, the evidence suggests that the particular shape of the Claimed Mark provides some technical or functional benefit. Annexure B to the Arita Declaration contains sample pages from the Applicant’s magazine, Beyond Lexus, which include the following statements, ‘trapezoid-like shape assists the flow of air into the engine room’ and ‘the recognizable geometric grille is a result of its function, too. In particular, the lower half is structured to assist intake airflow, optimizing the temperature of the engine under the hood’. Annexure D to the Arita Declaration consists of articles from third parties and includes the following comment in respect of the shape of the grille:
The large grille will remain in battery electrics for a very good technical reason …Spindle grille’s aesthetic role is just one part of the equation. EVs [electric vehicles] also need lots of cooling for batteries … You need proper airflow to cool this. … There are also some additional practical reasons why this grille design will remain for the foreseeable future: “Our cars have lots of radar systems and many sensors as well. So when you have a grille like this it’s easy to install such kind of equipment and all the tech bits,” …
In my assessment, evidence such as this supports the conclusion that the Claimed Mark is, or has features which, provide a technical or functional benefit.
[7] Tran Declaration, Annexure A.
Furthermore, I do not agree with the Applicant’s characterisation that the Claimed Mark is an invented shape. Although the evidence shows that vehicle grilles do not have one inherent form, many of the grilles are trapezoid in shape. They possess characteristics which are reminiscent, to a greater or lesser degree, of the features of the Claimed Mark. Whilst I do not agree that the shape is what Sundberg J called a ‘wholly concocted or ambiguous shape’,[8] the pinched feature does add a small but recognisable aspect of visual appeal, separate from its function.[9] This is supported by the evidence before me which includes various third-party articles commenting on the ‘aggressive’ and ‘visually striking’ spindle grille. Features of the shape were obviously chosen so as not only to be functional, but also visually appealing and ‘more arresting of appearance’[10] to the consumer. Whilst the Applicant’s submissions have not persuaded me that the Claimed Mark is prima facie capable of distinguishing, I consider that it does have some level of inherent adaptation to distinguish the Designated Goods.
[8] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [75].
[9] Irene Notaras [2013] ATMO 98 [24]; Henkel AG & Co. KGaA. [2015] ATMO 13 [20].
[10] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721, [25] (Black CJ, Sundberg & Finkelstein JJ).
In view of this, I must now consider whether the Claimed Mark should be rejected having regard to the matters set out in s 41(4) of the Act, namely the combined effect of the extent of the inherent adaptation to distinguish, the use or intended use of the Claimed Mark and any other circumstances.
The Arita Declaration and the Carbonari Declaration demonstrate that the Applicant has used the Claimed Mark in Australia in respect of the Designated Goods. This use began approximately 8 years prior to the filing date. There has been significant marketing, promotion and sales of vehicles bearing the Claimed Mark in Australia. Despite this, it does not necessarily follow that the evidence is sufficient to establish that the Claimed Mark does or will distinguish the Designated Goods as being those of the Applicant. This is because the use must be ‘use as a trade mark’. Use as a trade mark is:
use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods. That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.[11]
[11] Ibid [19] (citation omitted).
The Applicant submits that the Claimed Mark has been used as a badge of origin and draws my attention to the fact that it is consistently shown throughout the Applicant’s promotion of its vehicles in close-up or as a salient feature on the front of the vehicles. I agree that the Applicant’s advertising does consistently contain images of vehicles which have the spindle grille. However, it is not clear to me that consumers upon seeing this type of advertising material would perceive the Claimed Mark as possessing the character of a trade mark. The consumer is likely to view the Claimed Mark as merely an illustration or representation of the Designated Goods or a feature of those goods, rather than any assertion of a proprietary right.
The Applicant also draws my attention to the fact that the Claimed Mark is recognised and associated with the Applicant as evidenced by various media articles published by third parties. The fact that the spindle grille is associated with the Applicant does not on its own demonstrate the capacity of the Claimed Mark to distinguish the Designated Goods from those of other traders. It is necessary to establish that the association is because of the use of the Claimed Mark as a trade mark.[12] In Societe Des Produits Nestle SA v Unilever plc it was put like this:
I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.[13]
[12] Woolworths Limited v BP Plc (No 2) [2006] FCAFC 132, [117] (Heerey, Allsop & Young JJ).
[13] [2003] RPC 35, 662 (Jacob J).
In the current matter, the evidence makes it clear that the Claimed Mark is always used in combination with a stylised ‘L’ device, or in close proximity to the word ‘Lexus’. As such, it would be logical for members of the public to draw an association between the Applicant and the spindle grille. However, this does not equate to consumers attributing trade mark significance to the shape itself.[14]
[14] Apple Inc. v Registrar of Trade Marks [2014] FCA 1304, [230] (Yates J).
My overall impression of the evidence is that it is likely that any distinctiveness that the Claimed Mark has acquired is attributable to its use in combination with the stylised ‘L’.device. As such I am not satisfied that the Claimed Mark has ‘standing on its own feet’[15] acted as a badge of origin. In this respect, the following words of Jacob J are particularly illuminating:
There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone.[16]
[15] Philmac Pty Limited v Registrar of Trade Marks [2002] FCA 1551, [44] (Mansfield J).
[16] Societe Des Produits Nestle SA v Unilever plc (n 13) 662.
When I weigh the evidence before me together with the extent that the Claimed Mark is inherently adapted to distinguish the Designated Goods, I find that the combined effect does not overcome the s 41(4) ground for rejection.
Decision
I am satisfied that there is a ground for rejecting the Claimed Mark under s 41 of the Act. In accordance with s 33(3) of the Act, I reject trade mark application number 2061366.
However, if the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s order or direction.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
31 May 2022
11
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