Trade mark application number 1977391 (class 6) – Quickfix in the name of Allegion (New Zealand) Limited.

[2022] ATMO 45

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1977391 (class 6) – Quickfix in the name of Allegion (New Zealand) Limited.

Delegate:	Tracey Berger
Representation:	Vincent Powell of AJ Pietras IP Limited
Decision:	2022 ATMO 45 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 41 considered – evidence sufficient - trade mark capable of distinguishing –trade mark application accepted

Background

1. On 21 December 2018 (‘Relevant Date’), Allegion (New Zealand) Limited (‘Applicant’) filed an application to register the following trade mark:

   Trade Mark:           Quickfix (‘Trade Mark’)

   Application No:         1977391 (‘Application’)

   Goods: Class 6: Metal locks (non electric); Lock parts of metal; Door handles of metal; Door bolts of metal; Door fittings of metal; Furniture for doors (metal); Mechanisms of metal (non-electric) for locking doors (‘Goods’)

2. The Application was examined as required by s31 of the Trade Marks Act 1995 (Cth)[1] and a first examination report issued raising grounds for rejection under s41(4) and s44.  The three citations were withdrawn during the examination process but the s41 objection was maintained following five adverse reports.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’).

3. As noted in the first examination report, the Macquarie Dictionary defines the word FIX as: ‘to make fast, firm or stable; to place definitely and more or less permanently and to repair’.  Accordingly, the Examiner objected to the Application on the basis that “Your trade mark therefore indicates that your goods are ones used to quickly construct or repair locks, door handles and door fittings and the like”.

4. The Applicant filed submissions arguing that the Trade Mark is a coined term that cannot be found in the dictionary without dissecting the mark and is similar to examples given in the Australian Trade Marks Office Manual of Practice & Procedure (‘Manual’) namely SURELOCK (class 12), CLICKFAST (class 6) and TRAKGRIP (class 12). 

5. The second Examiner’s report maintained the s41 objection stating:

   The words QUICK FIX carries an ordinary signification that the goods claimed are a QUICKFIX or a QUICK FIX. Meaning, the goods claimed are ones that are an easy remedy or solution to a problem. Given the ordinary meaning of the words, other traders are likely to have a legitimate desire to use the same or similar trade mark during the ordinary course of trade without improper motive.

6. Between February 2020 and August 2021, the Applicant provided various submissions and evidence including a Declaration made 24 February 2021 by Craig Patterson, Marketing Manager for the Applicant, with Exhibits CP01-CP04 (‘Patterson Declaration’).  The Patterson Declaration outlines the Applicant’s intended use of the Trade Mark in Australia anticipating that it will obtain about 5% of the market share of door furniture kits, generate millions of dollars in sales annually of Goods bearing the Trade Mark and spend some hundreds of thousands of dollars on promoting the Goods.  The Applicant’s Goods had already received some recognition in receiving the ‘Product Design’ award in the Australian “Good Design” Awards in 2019.  Mr Patterson explains that the Goods are partially assembled door furniture which are more efficient to install than traditional door furniture which is assembled on site.  The Trade Mark was chosen to be “eye-catching”, unique and allude to the easy installation of the Goods. 

7. In response, this office issued 3 further adverse reports, each maintaining the ground for rejection under s41 on the basis that the Trade Mark has a “clear and obvious meaning” as indicating “that the goods claimed are ones that are an easy remedy or solution to a problem”.

8. On 26 November 2021, the Applicant exercised its right to be heard under s33(4) of the Act. A hearing was scheduled and the Applicant was invited to file additional submissions or evidence in advance of the hearing. Written submissions were filed and I was delegated to hear this matter by video conference on 16 February 2022. Vincent Powell of AJ Pietras IP Limited presented submissions on behalf of the Applicant. I have subsequently referred to Mr Powell’s written and oral submissions as the ‘Hearing Submissions’.

9. Subsequent to the hearing, at my invitation, the Applicant provided additional written submissions (the ‘Applicant’s Second Submissions’) and evidence of its use of the Trade Mark in form of a Declaration of Craig Patterson made 16 March 2022 with Exhibits CP-001 to CP-013 (‘Second Patterson Declaration’).

10. As a preliminary observation, I note that the ground for rejection must be considered afresh. Furthermore, 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 under the Act for rejecting it or the application has not been made in accordance with the Act.

    Section 41

11. Section 41 relevantly 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.

    …

    (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).

12. To assess the merits of the s 41 ground for rejection, consideration must be given to the extent of the Trade Mark’s inherent adaptation to distinguish the Services. This is determined:

    [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.[2]

    [2] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).

13. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[3] indicated that the test for distinctiveness under s 41 of the Act is a two-step process. First, the ordinary signification of the trade mark in Australia, to persons who will purchase, consume or trade in the goods, must be discerned.[4]  Once the ordinary signification is established, consideration must then be given to 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.

    [3] [2014] HCA 48 (‘Cantarella’) (French CJ, Hayne, Crennan and Kiefel JJ).

    [4] Ibid [71].

    Ordinary Signification of the Trade Mark

14. The Examiner originally contended that the Trade Mark was not capable of distinguishing the Applicant’s Goods because, based on the dictionary definition of the elements ‘quick’ and ‘fix’, the Trade Mark indicates the Goods are used to construct or repair locks, doorhandles and door furniture.  I agree with the Applicant, and presumably the Examiner concurred after considering the Applicant’s response to the first report, that such a meaning is not descriptive of the Goods themselves.

15. The Examiner then settled on the Trade Mark having an ordinary signification as indicating the Goods are “an easy remedy or solution to a problem”.  The Applicant’s Submissions allege that this ordinary meaning is not descriptive of the Goods.  The Applicant noted that the various dictionary definitions for “quick fix” have three common elements of being (i) easy, (ii) a solution or remedy and (iii) such solution/remedy is temporary.  The Applicant states that its Goods are neither a solution to a problem nor temporary in nature.  The Goods could be said to be a solution to opening/closing or securing a door but I do not think that consumers would classify the Goods in this manner.  Door handles and locks are not, in my view, regarded by consumers or those in the trade, as being a ‘quick fix’ for opening/closing doors or as a solution to any other problem, but rather are an essential part of the door itself. 

16. The Applicant points out that QUICKFIX and mis-spellings such as QIKFIX have been registered for numerous other goods and services by this office in classes 9, 30, 32, 35, 38, 41 and 42.  In each case, it could be said that the ordinary signification of the Trade Mark is that it indicates that the goods or services claimed are an easy, but temporary, solution to a problem. For example, registration No. 1635653 QIKFIX covering “provision of hyperlinks on a website” in class 38 and “creating indexes of online websites and information sources” in class 42.  The services could be said to provide a ‘quick fix’ for providing hyperlinks and indexes on websites.  The Applicant submits that the present case is akin to the earlier registrations in that the ordinary meaning proposed by the Examiner is not directly descriptive of the Goods but one step removed so at best the meaning of the Trade Mark is allusive.

17. In my opinion, neither of the ordinary significations posed by the Examiner are the meaning that consumers are likely to call to mind.  The word ‘quick’ is generally understood as meaning fast or rapid.  Whilst the Macquarie Dictionary, defines ‘fix’ as “to place definitely and more or less permanently”[5], other dictionaries such as the Oxford English Dictionary define the term as “to fasten, make firm or stable in position; to place, attach, or insert and secure against displacement”[6].  In the context of the Goods, I consider that this is the ordinary meaning likely to be called to the mind of consumers and such consumers will understand the Trade Mark as indicating that the Goods can be rapidly fastened or installed.  I note that this is the meaning the Applicant’s own evidence indicates that the Trade Mark is intended to convey.

    [5] Macquarie Dictionary (online at 21 March 2022) ‘fix’ (def 2).

    [6] Oxford English Dictionary (online at 21 March 2022) ‘fix’(def 1a).

Other traders

1. The next step involves determining whether other traders would legitimately desire to use the Trade Mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of their own good and/or services.

2. In terms of the likelihood of other traders desiring to use the Trade Mark in relation to the designated goods, this may be tested by appropriate examples from the marketplace.[7]On that point I note that there are four examples of other traders using the term “Quick Fix” on the Official file.  These Internet extracts were provided to the Applicant in advance of the hearing and show reference to :

   i.“Quick Fix Locker Locks” and “quick fix assembly” for locks at align="left">ii.“Quick Fix- Round and square Faces”, “Quick Fix- Round and Square Slimline Faces”, “Quick Fix Types Q, K. Z and Y” by Lock Focus;

   iii.“Quick-Fix fixing” for lock installation at and

   iv.Cowdroy “Quick Fix” door tracks.
   
   

   [7]  Registrar of Trade Marks v. W. & G. Du Cros Ltd (1913) AC 624, 634.

3. These extracts did make me wonder whether a ‘fix’ was part of a lock or otherwise had a descriptive meaning in the trade.  My own research did not reveal this to be the case and the Applicant’s Second Submissions confirm this understanding. 

4. The Applicant addressed these references in the Submissions arguing that anything can be found on the Internet given the vast amount of material available online and that a small handful of other traders using Quickfix (or a variation thereof) as a trade mark does not mean that the Trade Mark cannot distinguish the goods of one trader from another.  In the Applicant’s Second Submissions, the Applicant contends that the above examples are not descriptive use but rather use of Quick Fix as a trade mark.  I agree these examples are use of Quick Fix as a trade mark and regard this as an indication that other traders may legitimately wish to use the Trade Mark for the same or similar goods.

5. The Applicant points to registration of the Trade Mark in New Zealand and third party registrations for QUICK FIX for different goods in the EU, India, Japan, Germany and Indonesia.  I do not find these third party registrations persuasive given the goods covered are different.  Although I agree with the Applicant that the tests for distinctiveness in Australia and New Zealand are comparable, there can be differences in the state of the Registers and/or practice or other reasons which can lead to different outcomes on the question of distinctiveness.   

6. I consider that the Trade Mark is to some extent inherently adapted to distinguish the Applicant’s Goods under s 41(4)(a) so I must consider the ‘combined effect’ of the inherent adaptation to distinguish, use or intended use of the Trade Mark, and any other circumstances, to determine whether the Trade Mark does or will distinguish the Applicant’s Goods and Services.

   Consideration of the Evidence

7. The Second Patterson Declaration outlines the Applicant’s use of the Trade Mark for the Goods since its first sales in August 2020.  The figures provided show rapid growth in sales reaching some hundreds of thousands of dollars in the first year and with thousands of units of Goods bearing the Trade Mark now being sold monthly at a unit price of about $45.  Mr Patterson avers that the Applicant has reached the anticipated 5% market share based on his research of competitors and the market but has plans to continue to grow sales through new marketing efforts.

8. The Goods are sold in Queensland, NSW, Victoria and Western Australia with plans to expand to other States and Territories.  Orders for Goods bearing the Trade Mark may be made through the Applicant’s website or from stores.  Stores that stock the Goods include independent stores and the three largest hardware chains, Mitre 10, Home Timber & Hardware and Bunnings which have about 1000 stores combined across Australia.

9. Developers of large projects or large building companies also approach the Applicant directly through one its sales offices in Brisbane, Melbourne, Perth or Sydney.  For large projects, the Applicant employs hardware specialists in these offices to consult on and help facilitate the installation of its Quickfix door furniture kits.  The Applicant is targeting this market and  expects this to result in large orders for big projects such as fitting out all the doors in a new hotel.

10. The Goods bearing the Trade Mark are advertised by various means including:

    ·     the Applicant’s Australian website which received about 20,000 views per month from August 2020 to February 2022.

    ·     social media including Facebook and Instagram.

    ·     radio including a Triple M advertisement in Melbourne from September-December 2021 which according to the radio station owner’s statistics was heard during the course of the campaign by: over 400,000 people at least 8 times; over 90,000 tradies at least 25 times and over 230,000 people looking to renovate in the next 12 months an average of over 9 times.

    ·     the Applicant’s September 2021 catalogue (distributed to 20,000 retail and building partners), PowerPoint training modules and videos featuring the Goods bearing the Trade Mark for the Applicant’s consultants to use with customers in its Australian offices, promotional brochures of the Applicant

    ·     third party catalogues including Bunnings which was distributed to 100,000 households in April 2021, and Mitre 10.

    ·     third party websites such as and which was the most visited shopping site in Australia in the first quarter of 2019 with 40 million visits.

11. Although the Trade Mark has only been used for a relatively short period of time, the use made to date has been significant.  Sales of Goods bearing the Trade Mark appear to be growing rapidly and this seems likely to continue given the Applicant’s plans to expand its sales to other geographic areas and customer markets.   Based on the actual evidence of use, it appears probable that the Applicant will achieve the annual anticipated sales outlined in the Patterson Declaration.  I consider that because of the Trade Mark’s exposure through sales and promotion, the Trade Mark is capable of distinguishing the Applicant’s Goods.

    Decision

12. Section 33 of the Act relevantly 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.

13. In weighing the evidence of use of the Trade Mark with the extent to which it is inherently adapted to distinguish the designated services, I am satisfied that the application may be accepted with an endorsement added to the Register to reflect that it was considered under s 41(4).

    Tracey Berger
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    25 March 2022