Trade mark application number 1977977 (class 14) – BARTON - in the name of NATOWatchBands.com, LLC.

[2021] ATMO 31

TRADE MARKS ACT 1995

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

ReTrade mark application number 1977977 (class 14) – BARTON - in the name of NATOWatchBands.com, LLC.

Delegate:  Nicole Worth

Representation:                  Applicant: Alison McGinn and Vina Ngo, Banki Haddock Fiora

Decision:  2021 ATMO 31

Trade Marks Act 1995 (Cth) – s 33 proceedings – ground for rejection under s 41 – geographical name and surname - trade mark to some extent inherently adapted to distinguish – evidence of use sufficient for certain goods – goods amended - application accepted.

Background

1.  On 31 December 2018 NATOWatchBands.com, LLC (‘Applicant’) filed an application to register the trade mark detailed below.

Trade Mark:  BARTON              (‘Trade Mark’)

Application No.:              1977977

Filing Date:  31 December 2018

Goods/Services:             Class 14: Watch bands; watch straps; watch parts and fittings; watch straps made of metal, leather, nylon or plastic; watches; jewellery; trinkets (jewellery); decorative articles of precious metals for personal use. (‘Goods’).

2. The application was examined as required by s 31 of the Trade Marks Act 1995.[1] The examiner initially raised a ground for rejection under s 41(4) which, upon review, was changed to a ground for rejection under s 41(3) (in effect a new ground for rejection was raised). The basis of the ground for rejection was that the word BARTON was both a geographical name, being the name of a suburb in the Australian Capital Territory (‘ACT’), and the surname of a significant number of Australians; such words lacking the requisite inherent adaptation to distinguish the Goods to qualify for registration at first instance.

[1] Any reference to parts, sections or regulations in this decision are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise indicated.

3.  Over several stages of correspondence the Applicant filed submissions that the Trade Mark was inherently distinctive or, in the alternative, that it should rightly be considered under s 41(4). The Applicant also filed evidence of use of the Trade Mark and proposed amending the Goods to ‘watch bands’ and ‘watch straps’ only.

4.  The examiner was not persuaded and maintained the ground for rejection, the result being that the Applicant then requested a hearing. The matter came before me, a delegate of the Registrar of Trade Marks, to decide per s 33. The hearing was held via video conference on 3 February 2021. Alison McGinn and Vina Ngo appeared for the Applicant, and prepared written submissions and further evidence for my consideration.

5.  I mention that the purpose of the decision here is not to review the examiner’s decision, but to consider the ground for rejection afresh.

Evidence

6.  The evidence filed in this matter comprises declarations by the following persons:

·     Edward Vantrease Leigh, President of the Applicant, with exhibits TL-1 to TL-8, dated 28 February 2020.

·     Alexander Keechle, CEO of the Applicant, with exhibits AK-1 and AK-2, dated 5 August 2020 (‘Keechle 1’).

·     Alexander Keechle with exhibit AK-3, dated 26 January 2021.

·     Vina Ngo, solicitor with Banki Haddock Fiora, with exhibit VN-1, dated 21 January 2021.

7.  In summary the Leigh and two Keechle declarations show that the Applicant was incorporated in the USA in 2015 and it provides interchangeable watch bands made from a variety of materials under the name BARTON. It sells its watch bands exclusively online, including via its website ‘ and via the Amazon Australia website ‘ It also promotes its goods via Facebook® and Instagram®, as well as through Google® advertising. Its first sale to Australia was made on 23 January 2016 and it has made a modest amount of sales since then, although sales have increased each year. It declares to be somewhat hampered in its efforts to sell to Australian customers because it does not have a registered trade mark here, and is therefore unable to participate in Amazon’s ‘Brand Registry’’ (about which more is said later) and is hesitant to increase expenditure on Google® advertising. The Leigh and Keechle evidence is discussed in further detail at ‘Use of the Trade Mark’.

8. The Ngo declaration provides information about the suburb of Barton. A Wikipedia® entry shows that at the 2016 census, Barton had a population of 1,439 people; it houses a number of Commonwealth government departments and national institutions; and contains several heritage listed buildings (Barton being one of the first suburbs to be built in the ACT). Of suburb amenities it states ‘Barton mainly contains government or national institutions and so has few commercial areas such as shops’. A guide titled Barton guide, moving to Canberra on ‘ notes:

For those living in Barton due to the limited space available apartment living is the order of the day. Barton’s limited space is mainly taken up with government buildings and national institutions. It therefore has little space for a commercial precinct but shopping and entertainment options are not far away.

An article written in The Canberra Times titled ‘A weekend in your suburb: 36 hours in Barton’ details a number of fine dining restaurants, clubs and bars, a park and a lakeside area. It also notes the ‘Realm precinct’ (named for a hotel, the Hotel Realm) as a place for beauty and pampering treatments, housing a spa, hairdresser, health club and notes nearby plastic surgeons. Lastly a Weekend Notes article of the top five things to do in Barton lists a food market, fine dining restaurants, an historic hotel and two parks.

The Law

Section 41

9.  Section 41 relevantly provides:[2]

[2] Notes have been omitted.

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.

(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.

(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.

10.     A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, I am not entitled to reject the Trade Mark unless satisfied that the combined effect of its inherent adaptation to distinguish (if any), any past or intended use of it, and any other circumstances, has not or will not render the Trade Mark distinctive or capable of distinguishing.

Inherent Adaptation

11.   The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the Goods from the similar goods or closely related services of other traders. This is to be 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.[3]

[3] Clark Equipment Company v Registrar of Trade Marks (Clark Equipment) [1964] HCA 55, [5].

12.     The High Court has described the consideration as a two step process:[4] the first being the determination of the ‘ordinary signification’ of the sign in Australia to those who would purchase, consume or trade in the goods; and then having determined the ordinary signification, considering the likelihood of the sign being desired for use by other traders.

[4] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, [2014] HCA 48, [71].

13. Turning first to the ordinary signification of the word, I look to the examiner’s research conducted during examination of the Trade Mark. A search of the Australian electoral roll indicates that Barton is a surname, occurring 5134 times on the roll. Entries in the Macquarie Dictionary regarding the word Barton are all related to the surnames of individuals, the most notable of which is Sir Edmund Barton, Australia’s first prime minister. There are also several entries in the Gazetteer of Australia, the most significant being the suburb Barton in the ACT. The examiner’s Google® search of the sole word Barton shows webpages relating to the suburb in the ACT, to the electoral division of Barton in NSW, and to Australia’s first prime minister. Google® searches of the words ‘Barton watches’ and ‘Barton watch bands’ results in webpages all of which are related to the Applicant’s goods. A further Google® search of ‘Barton jewellery’ results in webpages from a number of different traders using Barton as a surname.

14.     The Applicant also contends that the dictionary meaning of Barton is ‘farmyard’, but does not cite a source or illustrate any usage in Australia. An internet search using the ‘define’ function of Google® reveals entries in, amongst others, the Collins Dictionary and the Oxford English Dictionary. The former notes that it is an archaic word for farmyard in British English. The latter defines it also as ‘farmyard’ and gives it a ‘frequency’ score of 3, meaning that ‘These words are not commonly found in general text types like novels and newspapers, but at the same [sic] they are not overly opaque or obscure’. The only Australian source I have been able to find which uses the word to mean farmyard, via internet searching limited to Australian webpages, is a piece in Spectator Australia titled ‘Mind your language. How ‘barley’ cropped up’ which states:

Barley was the default kind of cereal crop in much of England in the early Anglo-Saxon period, and bere [from which ‘barley’ derives] is much more often found in place-names than wheat. Barton is one, meaning ‘barley-enclosure’…it survived into the 19^th century as a common noun for farmyard.

From the Middle Ages, Barton signified the farm retained by the lord of the manor and not let out to tenants.[5]

[5] Accessed 9 February 2021.

Given there appears to be so little use of the word in Australia, and that use which I have found refers (at least in part) to a feudal system absent in Australia, I consider that the definition of Barton as ‘farmyard’ contributes only negligibly to its ordinary signification to the Australian public. Accordingly, I have not considered it further in the discussion below.

15.     Similarly, the Applicant posited at the hearing that the Trade Mark may be construed as an invented word by those unfamiliar with either its surnominal or geographical significance. Whilst I acknowledge that this may be true, I consider that the proportion of such people would be very low and so does not bear on the question before me.

16.     The prominence of Sir Edmund Barton in Australia’s history and the frequency with which the surname occurs in the Australian population suggest that the ordinary signification of the word Barton to most Australians would be that of a surname. Surnames always have at least a degree of inherent adaptation to distinguish: under the 1905 and 1955 Acts surnames were held to be inherently non-distinctive, though they could be deemed distinctive. The definition of a trade mark was expanded in the 1995 Act to include any sign that was capable of distinguishing goods or services, and a ‘name’ was expressly included in the definition of a ‘sign’ in s 6. Together with the previously mentioned presumption of registrability, a surname is taken to be capable of distinguishing unless the Registrar finds that it is not.[6]

[6] See Garrett Electronics Inc. [2015] ATMO 48, [15]-[17] for the evolution of this principle, reflected in Part 22.16.2 of the Trade Marks Manual of Practice and Procedure which states ‘Surnames, unless they also have a meaning which refers directly to the goods or services in question, always have at least a limited degree of inherent adaptation to distinguish’.

17.     The consideration of the likelihood of other traders desiring to use the surname Barton is a nuanced one, informed by factors including its frequency in the Australian population; whether the goods are specialised or commonplace; whether there are barriers to enter the industry; and whether it is common practice in the particular industry to use surnames to distinguish goods.[7] As already indicated the surname Barton appears 5134 times on the Australian electoral roll. As pointed out by the Applicant’s attorney, it is not so common as Smith or Brown (which appear, respectively, 133,415 and 65,112 times on the Australian electoral role). Nor is it infrequent. Previous benchmarks used by the Registrar have included surnames that occurred 400 times on the electoral roll[8] and around 750 times on the electoral roll depending on the surrounding circumstances[9]. Surnames which met this benchmark were not necessarily refused registration, but their frequency raised the possibility of a ground for rejection based on surnominal significance. The nature of most of the Goods, particularly the goods of interest being watchbands composed of varying materials, is such that they may be produced by anyone with sufficient interest to develop expertise. (The exception is ‘watches’ and ‘watch parts and fittings’, which are likely to require special expertise and equipment to produce). Materials such as nylon, leather, canvas, silicon and metal or metal fittings would not, as far as I am aware, be difficult to source. With the exception of ‘watches’ and ‘watch parts and fittings’, there are no particular technological or legal barriers that I am aware of, and no evidence has been presented of any. The market for the goods of interest is relatively niche, although the market for the entire specification of goods is quite vast (particularly respect of jewellery, ranging from hobbyists selling their wares at markets to more established operations). From my own knowledge it is common to use surnames in respect of jewellery and watches (Cartier, Chanel, Tissot, Hermès to name only a few). I am not certain, and no evidence has been presented, as to whether it is common to use surnames in respect of the goods of interest, but it seems a natural extension that a jeweller or watchmaker may also provide watch bands.

[7] Garrett Electronic Inc, ibid; Vectura GmbH [2016] ATMO 77, [28]; Brock Beauty Inc [2016] ATMO 44; Tchen Kil Tchun [2014] ATMO 28.

[8] Which was criticised in Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Autralia) Ltd, [1998] FCA 689.

[9] Which is no longer identified in the Trade Marks Manual of Practice and Procedure.

18.     Given the factors above, I consider there to be a reasonable prospect of other traders wishing to use the surname Barton in respect of the Goods. That being the case the Trade Marks falls for consideration under s 41(4), based on surnominal significance.

19.     More than one basis may exist for a ground for rejection, and each is to be assessed on its own merits. The delegate in Tchen Kil Tchun noted in similar circumstances (wherein the word Lancaster held both surnominal and geographical significance):

I also highlight the fact that there are two distinct bases for the s 41 objection in this case and that one does not “subsume”, as it were, the other. The likelihood of other traders in relevant goods wanting to use the name Lancaster for its geographical significance is one thing. In principle there in in addition effectively a separate cohort of actual or potential traders in such goods who are themselves named Lancaster and who might want or need to use the name for that reason.[10]

[Emphasis original]

[10] Tchen Kil Tchen, supra, [15].

20. I turn then to a consideration of the geographical significance of the word Barton. The word is likely to signify a suburb to those who reside in or near the ACT and to those who travel to the ACT - particularly those connected to government on account of the government departments in Barton, but also to tourists given the proximity of Barton to several of the ACT’s major attractions. The suburb is not, however, broadly recognised amongst the Australian public in the way that Bondi or St Kilda is. To that extent, there is an ordinary geographical signification to a sector of the Australian public denoting the suburb Barton.

21.     As to whether other traders are likely to think of and desire to use the name, there is no de minimus guideline in respect of a geographical name. It depends, as with all signs, upon where in the spectrum of inherent distinctiveness the name lies.[11] At one end are the names of places connected, or potentially connected, to the goods or services in question, such as Michigan,[12] Oregon,[13] Colorado,[14] and Oxford,[15]. As stated by Kitto J in respect of Michigan:

[T]he name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there.[16]

In respect of suburbs specifically Full Court mentioned, in MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors, (regarding the name The Chifley Tower):

The Chifley Tower is not part of the common heritage in the sense that a town, suburb or municipality is…

[I]t cannot be said that it is likely that a trader operating from The Chifley Tower will, without impropriety, wish to use the name “Chifley Tower” in relation to property management services (other than as the trader’s place of business). The position is different from that of a town, suburb or municipality, since it could reasonably be expected that traders might wish to use those geographic locations in connection with their services.[17]

[Emphasis added]

[11] Recognised by Middleton J in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367, [64], where he accepted that a ‘sliding scale’ of geographical names inherently adapted to distinguish exists.

[12] Clark Equipment, supra.

[13] Blount Inc v Registrar of Trade Marks [1998] FCA 440.

[14] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184.

[15] Re Chancellor, Masters and Scholars of the University of Oxford T/A Oxford University Press v the Registrar of Trade Marks [1990] FCA 175.

[16] Clark Equipment, supra, [6].

[17] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616.

22.     At the other end of the spectrum are names whose geographical signification is fanciful when viewed in the context of the goods (such as ‘North Pole Bananas’ or ‘Monte Rosa Cigarettes’[18]) or which carry other primary significations despite the existence of locations with that name (such as Phoenix[19] or Magnolia[20]). As noted by Rigby LJ in respect of Magnolia:

[A] word does not become a geographical name simply because some place upon the earth’s surface has been called by it.[21]

[18] Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd, supra, [64].

[19] Unilever PLC [2001] ATMO 39.

[20] Re Magnolia Metal Company's Trade-marks (Magnolia Metals) [1897] 2 Ch 371.

[21] Ibid, 627.

23.     The name Barton lies between the two ends. It is on the one hand a moderately populated suburb in which the Goods could conceivably be produced. Although it does not have a large commercial precinct, it is not purely residential either and houses a number of businesses related to refinement or luxury (such as fine dining restaurants and spas), a fitting association for jewellery and watches. On the other hand, it has no particular connection with the Goods, or any goods for that matter (although I bear in mind that an existing connection is not necessary for a ground for rejection to arise). I note further that the goods of interest, being watch bands and watch straps, are not usually of the kind where geographic provenance is relevant. The geographical name Barton is also unlikely to be recognised by the public unless they have had reason to travel to the suburb (representing a relatively small sector of the Australian public).

24.     Weighing these factors I consider there is a moderate prospect of other traders wishing to use the geographical name Barton in respect of their similar goods. Accordingly, the Trade Mark falls for consideration under s 41(4) based on geographical significance.

25.     The Registrar is not entitled to reject a trade mark under s 41(4) before taking into account the combined effect of its degree of inherent adaptation to distinguish, any use or intended use of it, and any other circumstances. I turn then to the evidence of use of the Trade Mark.

Use of the Trade Mark

26.     The Applicant was incorporated in the USA in 2015 and provides interchangeable watch bands made from a variety of materials. The Applicant has sold more than one million watch bands in over 90 countries. The watch bands are marketed exclusively online direct to the consumer, including Australian consumers, by way of a number of online platforms including the Applicant’s own website ‘ Extracts of the website obtained via The Internet Archive’s Wayback Machine are in evidence, the earliest of which is dated 31 January 2016. They show use of the word BARTON in plain text and in logo form.

27.     The first sale to Australia was made on 23 January 2016 via the website. The Applicant also commenced selling its products via the Amazon Australia website ‘ shortly after it launched in April 2017. Sales, particularly prior to the filing date, have been modest but have grown each year. Similarly advertising expenditure for the Australian market has been modest, particularly prior to the filing date, although it too has grown each year (particularly in the years after the filing date). Data relating to impressions, interactions and conversions[22] for each of the Applicant’s advertising campaigns shows that they too have increased each year, the number of impressions reaching the order of millions by 2019.

[22] Keechle 1, [11]: ‘Impressions denote the number of times people have been shown the advertisement or the advertisement has been displayed. Interactions denote the number of engagements people have with an advertisement such as like, comments, shares, retweets. Conversions denote the number of actual sales that came from an advertisement’.

28.     Various online blog posts and articles that discuss BARTON watch bands are exhibited which indicate that the watch bands have been developing a following, it seems in the USA and possibly the UK, since around 2016. There are also around 2000 reviews of Barton watch bands upon the amazon.com website, although there is nothing to indicate that these reviews are from Australian customers. The Leigh declaration includes an internet link to what is declared to be a large number of Google® reviews. The Registrar’s delegates do not generally access website links included in a party’s material. The information upon those websites may change and there is no certainty that what might be viewed by the delegate is the same as was viewed by the party at the time the material was prepared. To that end I have not viewed the material, noting in any event that the country in which the reviewer resided would not necessarily be identified.

29.     The Applicant has maintained Facebook® and Instagram® profiles since at least 29 November 2016 and 31 January 2016 respectively (based upon the earlies posts in evidence).[23] As at 2020 both profiles had significant followings, but there is no information regarding the size of their following before the filing date.

[23] Keechle 1, exhibit AK-2.

30.     In respect of online sales in Australia the Applicant explains that the number of sales via the Amazon Australia website is hampered because it cannot participate in the Amazon Brand Registry. The Amazon Brand Registry provides enhanced abilities and protections for traders, however it requires a registered and active trade mark. In relation to Google® the Applicant declares that it intends to increase advertising and marketing but is hesitant to increase its expenditure due to its lack of trade mark registration in Australia.

31.     I note that significant parts of the evidence relate to the period after the filing date, in particular figures which show growth (be it growth in sales, advertising expenditure, or data relating to online traffic). Whilst the weight accorded to such evidence may vary, and it is not decisive of itself, such evidence nonetheless may shed light upon the inherent capabilities of a trade mark as at the filing date.

32.     I note also that there is no evidence relating to any goods other than watchbands made of various materials.

33.     In all I consider that it is shown the Trade Mark has been used for approximately 3 years prior the filing date in respect of ‘watch bands; watch straps; watch straps made of metal, leather, nylon or plastic’. During that time, whilst sales in Australia remained modest, growth has occurred each year and, tellingly, has continued to occur in the years beyond the filing date. The avenues by which the Applicant has advertised the Trade Mark indicate increasing exposure, and it is reasonable to suppose that once the Applicant takes full advantage of the Amazon Australia platform and invests further in Google® shopping advertising that such exposure will continue to increase.

Decision

1. Section 33 of the Act relevantly provides:

   (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.

   35.     A ground for rejection exists under s 41(4) in relation to the application as applied for.

   36.     In weighing the evidence of use of the Trade Mark with the extent to which it is inherently adapted to distinguish the Goods, I am satisfied that it could proceed to registration under the provisions of s 41(4) in relation to the goods ‘watch bands; watch straps; watch straps made of metal, leather, nylon or plastic’. I am not so satisfied, however, in respect of the remaining items listed in the Goods, of which no evidence is adduced that shows use of the Trade Mark upon them.

   37.     On 6 April 2021 I informed the Applicant that it was my intention to reject the Trade Mark unless the Goods were amended to ‘watch bands; watch straps; watch straps made of metal, leather, nylon or plastic’.

   38.     On 8 April 2021 the Applicant agreed to the amendment and the specification has been amended accordingly.

   39.     As such the Trade Mark may proceed to registration under the provisions of s 41(4), with an endorsement added to the Register to reflect as much.

   Nicole Worth
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   15 April 2021