Trade mark application number 1956914 (classes 9, 12) – DOM - in the name of Domino's Pizza Enterprises Limited
[2020] ATMO 199
•23 December 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1956914 (classes 9, 12) – DOM - in the name of Domino's Pizza Enterprises Limited
Delegate: | Nicholas Barbey |
Representation: | Applicant: Blake Knowles of Spruson & Ferguson |
Decision: | 2020 ATMO 199 Trade Marks Act 1995 (Cth) – section 33 proceeding – ss 41 and 44 considered – trade mark not capable of distinguishing class 9 goods claimed – amendment to specification – trade mark application accepted. |
Background
Domino's Pizza Enterprises Limited (‘Applicant’) filed an application to register a trade mark on 20 September 2018. The current details of the application are set out below:
Trade Mark: DOM (‘Trade Mark’)
Application Number: 1956914
Priority Date: 20 September 2018
Specification: Class 9: Hardware and software for autonomous delivery vehicles; hardware and software for autonomous delivery drones; hardware and software for accessing food and beverage menu items and promotions and for ordering and purchasing and checking on the status of an order for, and/or delivery of, prepared foods and beverages and for receiving downloadable information relating to progress of an order for food or beverages, delivery of an order, the status of an order and estimated delivery time for an order
Class 12: Autonomous delivery vehicles; autonomous delivery drones
(‘Claimed Goods’).
The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and a first examination report issued on 15 October 2018. Relevantly, a ground for rejection under s 44 of the Act was raised because the Trade Mark was identified as conflicting with the following Australian trade mark registrations (collectively ‘Earlier Marks’):
Trade Mark: (‘267 Mark’)
Application Number: 1067267
Priority Date: 28 July 2005
Specification: Class 6: (goods including) metallic cylinder locks and keys for doors
Class 9: (goods including) wireless alarm and transmission systems, consisting of transmitter and receiver in the uhf-field as wireless device for long distance; closed circuit television systems, consisting of video cameras, monitor and sound transmitter
Class 20: (goods including) non-metallic locks for vehicles
[The full specification for the 267 Mark appears in the Annexure to this decision].
Trade Mark: (‘772 Mark’)
Application Number: 1623772
Priority Date: 23 May 2014
Specification: Class 9: Computer apparatus for use with computer networks; Computer network apparatus; Computer networking apparatus; Computer networks for the communication of data
A ground for rejecting the application under s 41 of the Act was also raised. The following rationale was provided:
These letters are commonly used as an acronym for the words DISK ON A MODULE. A DOM is a flash drive that performs the functions of a traditional hard disk drive, used in place of traditional hard disks because of their small size and lower power consumption. This indicates that your hardware in Class 9 consists of DOM (DISK ON A MODULE) unit (‘Hardware Objection’).
AND
These letters are commonly used as an acronym for the words DISTRIBUTED ORDER MANAGEMENT. DOM (DISTRIBUTED ORDER MANAGEMENT) software is commonly used to automate ordering and govern delivery of goods. This indicates that your software goods feature Distributed Order Management software, or in the case of drone/vehicle software, are used in connection with Distributed Order Management (‘Software Objection’).
To overcome the grounds for rejection, the Applicant provided submissions in rebuttal of the s 41 issue and proposed the following amendment to the Claimed Goods to address the s 44 issue:
Class 9:
Hardware andsoftware for autonomous delivery vehicles;hardware andsoftware for autonomous delivery drones;hardware andsoftware for accessing food and beverage menu items and promotions and for ordering and purchasing and checking on the status of an order for, and/or delivery of, prepared foods and beverages and for receiving downloadable information relating to progress of an order for food or beverages, delivery of an order, the status of an order and estimated delivery time for an orderClass 12: Autonomous delivery vehicles; autonomous delivery drones
(‘Proposed Amendment’)
Unpersuaded by either submission, the examiner issued a second examination report explaining that, irrespective of the Proposed Amendment, the Software Objection would be maintained. As such, the Proposed Amendment was not actioned and all grounds for rejection were maintained pending the resolution of the Software Objection.
The Applicant filed further submissions pointing out that ‘Distributed Order Management’ software is an inventory management tool. In contrast, aside from operating autonomous delivery drones, the software encompassed by the Proposed Amendment is designed to facilitate the ordering and monitoring of food and beverages including pizza which is made fresh by the Applicant and not stockpiled. On this basis, it was submitted that no inventory requiring any management existed and the s 41 objection should be withdrawn.
The examiner disagreed and all grounds for rejection were maintained in a third examination report. The report emphasised that prepared foods and beverages include frozen and pre-made meals which may be transported from the distributor or manufacturer to the consumer but also within a logistical chain of a company. The Software Objection therefore had meaning with respect to the in-store inventory management of goods (such as ingredients) and it would also feed into the inventory data of the store. In response, the Applicant requested to be heard.
A hearing was scheduled and the Applicant was invited to submit further submissions and/or evidence. The Applicant duly filed written submissions (‘Submissions’). As a delegate of the Registrar of Trade Marks, I heard this matter via telephone conference on 21 May 2020. The Applicant was represented at the hearing by Blake Knowles of Spruson & Ferguson.
As a preliminary observation, the following discussion is not a review of the examiner’s decision. Rather, the grounds for rejection raised under the Act must be considered afresh. To this end, I am mindful that s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it or the application has not been made in accordance with the Act.
Section 44
Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Accordingly, subject to ss 44(3) and 44(4) of the Act, the Trade Mark must be rejected if either of the Earlier Marks satisfy the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than that of the Trade Mark;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of goods and/or services which are either similar or closely related to the Proposed Amendment.
The s 44 ground for rejection may be conveniently dispensed with given the Proposed Amendment was pursued in the Submissions and at the hearing. Broadly speaking, the 267 Mark is registered in respect of various closed circuit television, detection, electrical and alarm equipment in class 9. Such goods are evidently of a different nature, used for different purposes and generally sold through unrelated trade channels to the software particularised in the Proposed Amendment. The same is true when the Proposed Amendment is compared to the 267 Mark’s goods in classes 6 and 20 which include various locks. Consequently, requirement (iv) detailed at [11] of this decision has not been satisfied in respect of the 267 Mark.
Meanwhile, the 772 Mark is registered in relation to various computer network apparatus. While there is some commonality in trade channels between these goods and those encompassed by the Proposed Amendment, the nature and use of the respective goods are sufficiently distinct. Computer network apparatus may be characterised as the physical hardware that enables devices on a computer network to interact and communicate. In contrast, the goods detailed in the Proposed Amendment is software used for autonomous delivery vehicles and for accessing and managing orders as well as purchasing food and beverages. Typically, traders who provide computer network apparatus are highly unlikely to also provide software designed for autonomous delivery vehicles or ordering and purchasing. As such, requirement (iv) as set out at [11] of this decision has not been satisfied in respect of the 772 Mark.
Accordingly, I am satisfied that the Earlier Marks are not registered in respect of similar goods to those specified in the Proposed Amendment. It follows that consideration of the remaining requirements listed at [11] of this decision is not necessary and the s 44 ground for rejection may be withdrawn.
Section 41
Section 41 of the Act relevantly provides:
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.
To determine the merits of the s 41 ground for rejection, the extent of the Trade Mark’s inherent adaptation to distinguish the Proposed Amendment must be assessed. This is tested:
[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 Co v Registrar of Trade Marks [1964] HCA 55, [5] (emphasis added).
The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[2] indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step involves determining the ‘ordinary signification’ of the trade mark, in Australia, to persons who will purchase, consume or trade in the goods.[3] The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar goods.
[2] [2014] HCA 48 (‘Cantarella’).
[3] Ibid [71].
The Applicant submits that the Trade Mark is distinctive of the goods encompassed by the Proposed Amendment because it would be apprehended as a first name. In the event that consumers perceive the Trade Mark as denoting ‘Disk On a Module’, the Applicant highlights that all claims for hardware in class 9 have been deleted and the Trade Mark is meaningless with respect to the remaining software goods. As such, the Applicant believes that the Hardware Objection should be withdrawn in view of the Proposed Amendment.
Likewise, to the extent that the Trade Mark is understood as an acronym for ‘Distributed Order Management’, the Applicant contends this meaning has no connection to the particularised software. In the Applicant’s view, its software is essentially limited to ordering food and beverage menu items and monitoring when the order will arrive.[4] ‘Distributed Order Management’ software is fundamentally different given, in the Applicant’s view, it is designed to allow retailers selling merchandise to: obtain visibility of all inventory across various sources; offer different fulfilment options; address inventory replenishment and evaluate and process orders by efficiently allocating inventory from specific sources.[5] The Applicant submits that the Software Objection should also be withdrawn given the Proposed Amendment.
[4] Submissions, [24].
[5] Ibid [25].
From the outset, I am satisfied that the Hardware Objection should be withdrawn. Even if I accepted the ‘Disk On a Module’ meaning ascribed to the Trade Mark in the first examination report, the Proposed Amendment removes all references to hardware in class 9. Consequently, the Trade Mark no longer has a direct reference to the residual class 9 goods. ‘Disk On a Module’ has no relevant meaning with respect to the particularised software. It does not indicate the value, quality, intended purpose or any other characteristic of the software. The mere fact that software may be stored on a ‘Disk On a Module’ hardware is one step removed and, by itself, does not render the Trade Mark non-distinctive. Bearing this in mind, the following discussion will focus on the remaining ground for rejection – namely, the Software Objection.
Ordinary signification
The Submissions state:
The primary meaning of “DOM” that would be perceived by most consumers is a name, being an abbreviated version of Dominic or Dominique. As such, it is highly likely that most consumers would not even consider the trade mark to be an acronym in the first place, unless faced with the word in a very specific context.[6]
[6] Ibid [12] (emphasis added).
The second sentence in the above quoted paragraph is instructive. I accept that, in the context of certain goods such as fashion, the Trade Mark may be construed as a first name given that industry commonly adopts first names as trade marks. However, the ordinary signification of the Trade Mark is to be discerned by reference to the relevant audience which, in this ‘specific context’, are people in Australia who purchase, consume or trade in software products. In my experience, acronym usage in relation to software is prevalent. For illustrative purposes, the letters ‘OS’, ‘AI’ and ‘CAD’ are widely understood and commonly used as acronyms for ‘Operating System’, ‘Artificial Intelligence’ and ‘Computer Aided Design’ software, respectively. Thus, it is reasonable to infer that the Trade Mark would be interpreted as being an acronym when used in relation to software.
As regards to the Trade Mark itself, the research on file reveals that ‘DOM’ is recognised and used as an acronym for ‘Distributed Order Management’ software. As the name suggests, ‘Distributed Order Management’ software intelligently manages orders from various sales channels and optimises order fulfillment by efficiently routing orders based on variables such as inventory availability, location and delivery cost. It also monitors and provides real time visibility of inventory across multiple locations (including in-transit inventory) and facilitates efficient inventory distribution and replenishment. In short, ‘Distributed Order Management’ software streamlines and tracks how orders are processed and managed together with orchestrating inventory allocation.
The crux of the Submissions is that ‘Distributed Order Management’ is a ‘very specific term of art’[7] which has an entirely different purpose to the software particularised in the Proposed Amendment. Put another way, the Applicant’s position is that the Trade Mark does not convey a meaning sufficiently tangible in relation to software specifically designed for autonomous delivery vehicles and/or food and beverage ordering and purchasing. The Applicant contends that its software is very limited in scope, namely, for ordering food and beverage goods and monitoring the arrival of the order.[8] Conversely, ‘Distributed Order Management’ software is purportedly ‘designed to be used by traders selling large amounts of merchandise’.[9]
[7] Ibid [20].
[8] Ibid [24].
[9] Ibid [21].
The Applicant’s position is premised on an unreasonably narrow interpretation of the software claimed in the Proposed Amendment. While the Applicant may, in practice, be using the software exclusively in relation to providing fresh pizza, this is not borne out in the Proposed Amendment. Similarly, there is nothing before me to reasonably conclude that ‘Distributed Order Management’ software is designed for, or may only be used exclusively in relation to, large stockpiles of inventory. Even if it were so confined, prepared foods and beverages are nevertheless capable of falling within these parameters given such goods would include, for example, non-perishable and frozen products.
The Proposed Amendment contains unqualified software claims for autonomous delivery vehicles. The Applicant asserts that this software relates specifically to the operation or control of autonomous delivery vehicles and such vehicles are ‘highly unlikely to contain any distributed order management software’.[10] As to the former, this asserted specificity is not manifested in the software claims within the Proposed Amendment. With respect to the latter, I do not accept this assertion. Autonomous delivery vehicles, such as drones, may be used within a ‘Distributed Order Management’ system. For example, they may be deployed to palletise inventory, transport inventory between locations and/or provide real time logistical information. These drones would perform functions due to ‘DOM’, that is, they would be required to have ‘Distributed Order Management’ software installed so they can integrate with and communicate data back to the central repository of the ‘Distributed Order Management’ system. As such, the Trade Mark would be perceived, at the very least by other traders, as signifying ‘Distributed Order Management’ software when used in relation to software for autonomous delivery vehicles.
[10] Ibid [27].
In my assessment, the Trade Mark would also signify that the remaining software claims in the Proposed Amendment are or relate to ‘Distributed Order Management’ software. The Applicant reiterated that its software is for use by restaurants selling food for immediate consumption[11] and simply allows customers to order food and track its arrival.[12] Again, this downplays the true scope of the software claimed in the Proposed Amendment and artificially imports a limited interpretation of the claims. First, the drafting of the software claims means those which are expressly made in respect of food and beverages do not delimit the residual claims.[13] Second, the software is particularised as providing the very design features of ‘Distributed Order Management’ software enunciated by the Applicant at [19] of this decision. That is, the claimed software provides visibility of available inventory by facilitating access to available food and beverage menu items. It offers different fulfilment options given it enables orders and purchases to be made with pick up or delivery options from certain locations. Finally, the software provides real time visibility across the supply chain insofar as it allows the progress of an order to tracked throughout the process. As such, the ordinary signification of the Trade Mark in relation to such software would be ‘Distributed Order Management’.
Other traders
[11] Ibid [21].
[12] Ibid [25].
[13] See, eg, the claim for ‘software for receiving downloadable information relating to progress of an order for food or beverages, delivery of an order, the status of an order and estimated delivery time for an order’ may be distilled into four separate claims – namely, i) software for receiving downloadable information relating to progress of an order for food or beverages, ii) software for receiving downloadable information relating to delivery of an order, iii) software for receiving downloadable information relating to the status of an order and iv) software for receiving downloadable information relating to the estimated delivery time for an order.
According to Cantarella, the next question to be determined is whether other traders would legitimately desire to use the Trade Mark for the sake of its ordinary signification in respect of their own goods.
The acronym ‘DOM’ is an apt and ordinary way of describing software goods contained in the Proposed Amendment. It is not an allusive reference, but rather, it is directly descriptive of the type of software claimed – namely, ‘Distributed Order Management’ software. I consider it likely that other traders who are providing ‘DOM’ software will think of and would legitimately desire to use the Trade Mark, or some mark nearly resembling it, in respect of the software goods claimed in the Proposed Amendment.
Bearing in mind the presumption of registrability, I am nevertheless satisfied that the Trade Mark is not to any extent inherently adapted to distinguish the software goods claimed in the Proposed Amendment. No evidence of use of the Trade Mark has been filed by the Applicant. As such, s 41(3) of the Act applies and the application to register the Trade Mark must be rejected in respect of the software goods claimed in the Proposed Amendment.
Decision
Section 33 of the Act provides:
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.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
I am satisfied on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under s 41 of the Act.
On 7 December 2020, I informed the Applicant’s representative that it was my intention to reject trade mark application number 1956914 unless the Claimed Goods were amended as follows:
Class 9:Hardware and software for autonomous delivery vehicles; hardware and software for autonomous delivery drones; hardware and software for accessing food and beverage menu items and promotions and for ordering and purchasing and checking on the status of an order for, and/or delivery of, prepared foods and beverages and for receiving downloadable information relating to progress of an order for food or beverages, delivery of an order, the status of an order and estimated delivery time for an orderClass 12: Autonomous delivery vehicles; autonomous delivery drones
On 21 December 2020, the Applicant’s representative informed IP Australia that a divisional application had been filed in respect of the goods in class 9. The divisional application was examined and the specification of the parent (being the present Trade Mark application) was subsequently amended in the manner set out at [33] of this decision.
Accordingly, trade mark application number 1956914 can now proceed to registration.
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
23 December 2020
Annexure – Australian Trade Mark Number 1067267
Class 6: Metallic cylinder locks and keys for doors, for furniture, for windows and window fittings, for vehicles travelling by land, air or on water, for automation (robot), for oil tank locking device, for cash registers, for coins and bank notes controlling equipment, for boxes, for suitcases and for containers of all types; window, door and furniture fittings made from die-cast zinc, steel, brass and aluminium; metallic door closers and locks; metallic door stops; metallic strike plates; door handles of metal
Class 9: Mobile alarm system consisting of control board (panel), control unit, sensor strands, alarm siren, emergency call button, mains cord and battery; electric control board, electric alarm appliance, electric control appliance, switch cabinet, passive infrared detectors, ultrasonic detectors, infrared barrier, light intensity variation barrier, E-Field fence, sensor cable, electro-mechanical and electronic detectors, normally closed mechanical switch, solenoid- operated switch, seismic detector, electro-mechanical key switch with blocking function, electro-mechanical switch, electronic coder, localization panel, alarm switching relay, electric switches, battery, accumulator, battery charger, visual and acoustical signal device, electronic siren, distributor, flexible cable connection, automatic dialling equipment, all the aforementioned products either as component or as integral part of alarm systems, also suitable for land vehicles; access control systems, consisting of a microprocessor-controlled central unit, card reader, data video terminal with control equipment, printer, access control appliance and floppy disc control unit; closed circuit television equipment, consisting of film camera, fast changing magazine, central control unit, release units and control call out button, video camera, video monitor, weather-protected housing for cameras, objectif, manual and automatic camera changeover switch, video sensors, quadrant generator for video monitor, all the aforementioned either as components or as integral part of closed circuit television system; microwave fence, consisting of transmitter, receiver, electronic supply unit and control unit; control systems for large distance for sensitive microphones on (in) walls of strong rooms or safes, consisting of test transmitter and test generator with warning; digital and analogous alarm transmission device for the public telephone net, consisting of transmitter and receiver; wireless alarm and transmission systems, consisting of transmitter and receiver in the uhf-field as wireless device for long distance; fire detection systems, consisting of electronic and computer controlled central units for evaluation (interpretation) of messages of infrared and thermo detectors; closed circuit television systems, consisting of video cameras, monitor and sound transmitter; danger warning systems computer supported, consisting of appliance used in building techniques; hand fire detector, automatical fire detectors, with mechanical, electronic, thermic or infrared contactor for locks and fittings provided for alarm release; cash registers; electric locks; electric cylinder locks and keys for doors, for furniture, for windows, for window fittings, for vehicles, for aircrafts, for ships, for robots, for oil tank locking devices, for cash registers, for coin and bank notes monitoring equipment, for clocks, for electric and electronic devices and appliances, for tools, for warehouse and office furniture, for boxes, for suitcases, for containers, for window fittings, for door fittings, for furniture fittings; electric door openers; electrically operated door closers; door viewers being peepholes (magnifying lenses) for doors; electrical coin and bank note monitoring equipment
Class 20: Non-metallic locks for vehicles, furniture, office furniture, warehouse furniture and containers; non-metallic door, window and furniture fittings; non-metallic door closers and door stops
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