Trade Mark application number 1892924 (45) –– in the name of Richard Jean Yared

[2021] ATMO 26

TRADE MARKS ACT 1995

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

Re:Trade Mark application number 1892924 (45) –– in the name of Richard Jean Yared  

Delegate:	Bianca Irgang
Representation:	Applicant: Mr Richard Jean Yared
Decision:	2021 ATMO 26 Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection exists under section 41(4) – evidence insufficient to overcome section 41(4)– Trade Mark rejected.

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

   Trade Mark No:1892924

   Trade Mark:   (‘the Trade Mark’)

   Filing Date: 7 December 2017

   Applicant: Richard Jean Yared (the ‘applicant’)

   Specification of Services:

   Class 45: Establishment of intellectual property rights; Exploitation of intellectual property rights; Industrial property (intellectual property) management; Licensing of intellectual property; Research relating to intellectual property; Personal letter writing (the ‘services’)

2. The application was examined as required under section 31 of the Act and grounds for rejection were raised under section 41(4). The examiner’s first report provided:

   Your trade mark is, or has as its main feature, the word ILLUSTRATIONS.

   This indicates that the services claimed relate to illustrations. For example, the trade mark may Indicate that the services involve intellectual property rights pertaining to illustrations.

   Other traders should be able to use ILLUSTRATIONS in connection with goods or services similar to yours.

   Please note that the inclusion of the square and corner stripe is not significant enough to alter the nature of your trade mark when seen as a whole. The main feature of your trade mark remains to be the word ILLUSTRATIONS.

   Actions you can take: Please consider the following option: SUPPLYING EVIDENCE OF USE: You might be able to overcome this problem if you supply evidence of use in terms of subsection 41(4) of the Trade Marks Act 1995.

3. The applicant responded by submitting evidence of use. The examiner maintained the ground for rejection under section 41(4). The second report from the examiner focused on addressing the applicant’s speculation on how the target audience may or may not view the Trade Mark, the lack of detail in the evidence and the fact that the applicant had not yet commenced using the Trade Mark.

4. Thereafter, the applicant requested multiple extensions of time which were granted before providing additional evidence to clarify the examiner’s concern that the evidence was insufficient. The examiner remained unconvinced by the evidence. Duly, the applicant requested to be heard on the matter as allowed by section 33(4) of the Act. The hearing took place in Canberra on 5 November 2020. Mr Richard Yared represented himself. I conducted the hearing and while undertaking the hearing became aware that much of the documentation filed by the applicant was in a format that was inappropriate and did not demonstrate or support statements that Mr Yared was making at the hearing. Following discussion with Mr Yared about the form of his evidence, I provided him with a total of one month in which to place the evidence into a more appropriate format. The following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

The Law

1. Section 41 of the Act 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 personand services of a personsee 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 first step, in terms of subsections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the services of the applicant from the similar services of other persons.

2. The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks[1] where Kitto J said:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist 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 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] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at 345–6, (Kitto J)

3. 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 services” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[2]

   [2] (1965) 112 CLR 537).

4. The ground for rejection as stated by the examiner is that the Trade Mark has limited inherent adaptation to distinguish the designated services as the word illustrations is commonly used in the marketplace to promote services by which a customer may obtain illustrations. For example, the trade mark may indicate that the services involve intellectual property rights pertaining to illustrations.

5. In terms of the ‘other traders’ test in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[3] the likelihood of other traders desiring to use the Trade Mark in relation to the designated services may be tested by appropriate examples from the marketplace. On that point I note that there are a number of examples on the Official File of other traders using the term ILLUSTRATIONS when it comes to intellectual property services. The Macquarie Dictionary defines illustrations as meaning:

   Illustrations:      1. That which illustrates, as a picture in a book, etc

   2. a comparison or an example intended for explanation or corroboration

   3.the act of rendered clear; explanation; elucidation

   [3] (1913) AC 624, at pp 634.

6. This means that an illustration can be an interpretation or visual explanation of a text, concept or process designed for integration in print and digital media. When I consider the basic meaning and understanding that is attributed to the word ILLUSTRATIONS, I note that this word is descriptive and indicates that the services offered by the applicant are in regards to illustrations. 

7. Having taken into account the presumption of registrability I am nevertheless satisfied that the first element of the ground for rejection exists under section 41(4)(a) of the Act with regards to all the services in the application. I acknowledge that the Trade Mark has a scintilla of an element of distinctiveness to it and this provides the Trade Mark with some inherent adaptation to distinguish the designated services from those of other traders which is why I am satisfied that only a ground for rejection exists under section 41(4).

8. However, a ground for rejection under section 41(4) need not be fatal to the application, I must also be satisfied that the Trade Mark does not and will not distinguish the designated goods as being those of the applicant having regard to the factors set out in section 41(4)(b). Accordingly, I will now consider the applicant’s evidence of use, intended use and any other circumstances that may be relevant in the consideration. To this end, the applicant provided significant comment and some evidence which was filed over the course of the examination and in the additional time I provided him with after the hearing.

9. Mr Yared explained that he had not yet commenced using the Trade Mark but had spent multiple years developing and researching his business plan and the types of services that he would be offering under the Trade Mark. He further explained that his services were highly specialized and that he would only be offering his services under the Trade Mark to hand-selected particular customers rather than the broader public. I note that the statements about the specialized services that will eventually be offered by the applicant is not reflected in the services claimed by the Trade Mark which are not restricted to a limited group of customers, but rather are potentially available to all customers. The applicant has not sought to amend the services to reflect the services for which it intends to use the Trade Mark.

10. Mr Yared stated that he had obtained registration of other trade marks which would be used in close association with the Trade Mark once his business commenced. Included in the evidence filed by the applicant are claims that considerable amounts of money have gone into the development of the Trade Mark, however, there are very limited exhibits or receipts within the evidence to support these assertions. For example, the receipt from Signorama is dated 26 November 2019 but it is for a minimal sum and does not reference the Trade Mark so I am unable to ascertain if this receipt relates to the Trade Mark or to one of the other trade marks that the applicant owns. Another receipt from MCS Mobility Scooters is for the purchase of a scooter for a reasonable amount but no mention of the Trade Mark is made. Much of the applicant’s evidence follows in the same vein, being severely limited in demonstrating use of the Trade Mark or any intended use of the Trade Mark beyond ‘concept’ designs or potential letterheads.

11. Mr Yared’s evidence outlines a timeline of considerable length for development of his detailed business plan. The vast majority of the expenses to date with the development of the Trade Mark are listed in a table put together by Mr Yared. These claims of research for the development of the applicant’s business plan and Trade Mark include coffee shop expenses, magazine subscription research, stationary research, membership subscription research, printing and presentation research, software research, library expenses, library expenses, self storage expenses. These type of expenses form the bulk of the applicant’s claims as to the costs of developing the Trade Mark and the applicant’s business.

12. While I am satisfied that Mr Yared has spent considerable time in developing a business plan for his future business, given the nature of the material before me there is no way for me to determine how much of these expenses were directly relevant to the Trade Mark. I am more persuaded that the expenses quoted by Mr Yared are based upon the continual development of his business plan and not solely dedicated to the development of his Trade Mark. The applicant has stated that he has not commenced using the Trade Mark and it appears that the applicant’s business remains in its infancy which is perhaps the reason for the sparse evidence of use or intended use of the Trade Mark.

13. I consider, from what is demonstrated in the material before me, that the Trade Mark has not acquired a meaning related to the applicant’s services which overshadows its descriptive meaning. The applicant’s evidence does not satisfy me that the Trade Mark is capable of distinguishing the applicant’s services from the similar services of other traders in the same field nor are there any other circumstances which would allow me to accept the Trade Mark. I am satisfied there is ground for rejecting the application pursuant to subsection 41(4).

Decision

1. Section 33 of the Act relevantly provides:

33Application 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.

1. Therefore, I reject trade mark application no. 1892924 in its entirety.

Bianca Irgang
Hearing Officer
Trade Marks Hearings & Opposition
24 March 2021