Trade mark application number 2024351 (16) - CO: YELLOW - in the name of Tama Group

[2021] ATMO 123

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2024351 (16) - CO: YELLOW - in the name of Tama Group

Delegate:	Louise Tuohy
Representation:	Applicant: Ian Horak of Counsel instructed by Dr Jasmin Whittaker of Collison & Co
Decision:	2021 ATMO 123 Trade Marks Act 1995 (Cth) – Ex parte matter pursuant to section 33(4) – section 41 considered - trade mark to proceed to registration in respect of some of the goods in class 16

Background

1. This decision follows from an ex parte hearing at the request of the Tama Group (‘Applicant’) pursuant to s 33(4) of the Trade Marks Act 1995 (Cth)(‘Act’) in relation to the following trade mark application:

   Application Number:             2024351

   Trade Mark:  (‘Trade Mark’)

   Filing Date:  19 July 2019

   Specification:  Class 16: Plastic materials for packaging and wrapping for agricultural use, namely, plastic films, plastic sheeting for wrapping bales of cotton and agricultural crops, and plastic materials in sheet form for wrapping bales of cotton and agricultural crops (‘Goods’)

   Endorsement:  The Trade Mark is a colour mark. It consists of the colour(s) yellow as applied to plastic film or sheeting for wrapping bales of cotton and agricultural crops in its entirety as shown in the representative(s) attached to the application form.

2. The application was examined as required by s 31 of the Act. The first examination report issued on 24 October 2019 raised a ground for rejection under s 41(3) of the Act as follows:

   Your trade mark is the colour YELLOW as applied to the goods you have claimed.

   Colours are commonly applied to goods, and often used in relation to services. For this reason consumers are unlikely to assume that colours identify the particular trader supplying the goods or services.

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

3. On 2 June 2020 the Applicant submitted a response to the first examination report including evidence. The examiner issued a second examination report maintaining the ground for rejection under s 41(3) of the Act on 30 June 2020. The Applicant did not respond to the second examination report, instead it exercised its right to be heard in relation to the s 41 ground for rejection.

4. The matter came before me, a delegate of the Registrar of Trade Marks on 20 September 2021. Ian Horak of Counsel, instructed by Collison & Co, represented the Applicant, making verbal and written submissions on its behalf.

Evidence

• Declaration of Matan Inbar, Product Manager of the Applicant made on 21 May 2020 with Exhibits MI1 to MI12 (‘Inbar declaration’).

• Declaration of Jim Bible, Farm Manager of Agriland Pty Ltd, made on 6 September 2021 (‘Bible declaration’).

• Declaration of Mitchell Reynolds, Storeman of Auscott Limited, made on 6 September 2021 (‘Reynolds declaration’).

• Declaration of James Toscan, Farm Manager of Cavaso Farming, made on 6 September 2021 (‘Toscan declaration’).

• Declaration of Daniel Taunton, Director/Manager of Taubro Ag/Tauroma Farming made on 8 September 2021 (‘Taunton declaration’).

• Declaration of Jasmin Whittaker, Trade Mark Attorney of Collison & Co for the Applicant, made on 9 September 2021 with Exhibits JW1 to JW3 (‘Whittaker declaration’), including statements from Michael Seery, Harry Cush and Paolo Cavazzini.

• Declaration of Hamish Johnstone, Senior Manager of Carbrooke Farms made on 10 September 2021 (‘Johnstone declaration’).

• Declaration of Eyal Linn, Product Manager of the Applicant made on 12 September 2021 with Exhibits EL1 to EL7 (‘Linn declaration’).

Legislative Background and Reasoning

Section 41

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.

   (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.

1. Section 41 must be assessed having regard to s 33 of the Act, which embodies a ‘presumption of registrability’. Section 33(1)(b) compels the Registrar to accept a trade mark for registration unless the Registrar is satisfied that grounds exist for rejecting the application.

2. To determine the merits of the ground for rejection under s 41, the extent of the Trade Marks inherent adaptation to distinguish the Applicant’s Goods must be assessed. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that this was to be assessed:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[1]

   [1] [1964] HCA 55, [5]; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’) [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ).

3. The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the services to which the proposed trade mark is to be applied. 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 services. ^[2]

   [2] Cantarella, [71], although this process was formulated in the context of goods, it is equally applicable to services.

4. The Applicant submits that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish in relation to the Goods for which registration is sought such that s 41(4) of the Act applies. It alleges that the colour yellow has no ordinary signification and is not a colour that other traders would, without improper motive, wish to use in relation to plastic wraps for baling cotton (I note the specification includes plastic materials for wrapping agricultural crops generally).

5. The Applicant relies on the observations of Mansfield J in Philmac Pty Limited v Registrar of Trade Marks (‘Philmac’), a case concerning the assessment of the inherent adaptation of colours to distinguish goods. His Honour pointed to three considerations being: whether the colour denotes a meaning; whether the colour has some practical utility; or whether the colour was a naturally occurring result of the manufacturing process.[3] Further, consideration must be given to whether the colour sought to be registered is in respect of goods in a market in which there is a proven competitive need for the use of colour, and in which, having regard to the colour chosen and the goods on which it is sought to be applied, other properly motivated traders might naturally think of the colour and wish to use it in a similar manner in respect of such goods.[4]

   [3] [2002] FCA 1551, [53] to [55].

   [4] Ibid [57] (Mansfield J).

6. In this instance the Trade Mark is the single colour yellow and is the colour of the goods being ‘plastic materials for packaging and wrapping for agricultural use, namely, plastic films, plastic sheeting for wrapping bales of cotton and agricultural crops, and plastic materials in sheet form for wrapping bales of cotton and agricultural crops’. Having regard to the considerations outlined in Philmac I note that the colour yellow is known for its function of visibility,[5] and while the Inbar declaration states that the colour yellow was chosen as a visual badge of origin, the evidence does not show the colour yellow enjoys a functional advantage over the variety of other colours used in wrapping products. Further, there no suggestion that the colour yellow has meaning in relation to cotton and agricultural production, and the colour yellow of the Applicant’s Goods is not a natural effect from the normal manufacturing process.

   [5] Ibid [54] (Mansfield J).

7. Nonetheless, different coloured bale wraps used in the production of cotton and agricultural crops can be seen across the Australian country side and have been a common item for a substantial period of time. Given the variety of coloured wrap products in the market, I consider there is a competitive need for manufacturers to use and access the full spectrum of colours. The Applicant chose the colour because it was an obvious and apt choice for application to its Goods. It follows that the colour yellow the subject of the Trade Mark, or any shade of yellow that might be deceptively similar to that colour, applied to the Goods is, in my opinion, a colour that another trader in the same class of goods might legitimately desire to use.[6] Consequently, I find that the Trade Mark is not to any extent inherently adapted to distinguish the Goods of the Applicant. As such s 41(3) of the Act applies.

   [6] Ibid [58] to [59], [67]. (Mansfield J).

8. Section 41(3) provides that an application must be rejected if the Applicant cannot prove distinctiveness in fact. If the Applicant can prove the Trade Mark did in fact distinguish the Goods at the filing date, then no ground for rejection exists.

Consideration of the Evidence

1. The Inbar declaration submits that the Applicant was established in 1950 in Israel. The Applicant employs more than 1,000 people worldwide, has 11 production sites and maintains 18 sales and marketing companies in its main markets including Australia.

2. The Applicant’s main area of specialisation is in packaging and protective products for agriculture. The Applicant’s Trade Mark is the colour yellow applied to plastic film or sheeting for wrapping bales of cotton and agricultural crops. More specifically, the Inbar declaration explains that the product associated with the Trade Mark is a round module cotton wrap (‘product’) that comes in rolls with 24 wrap portions, also known as TamaWrap cotton wraps (formally TamaRMW). The product is patented[7] and complements John Deere cotton harvesters that bale the cotton in a continuous process without stopping the harvester. An example of the product appears in Exhibit EL1 and I reproduce this below: 

   [7] Australian Patent No. 2003292463, and Australian Patent No. 2005300259.

3. The Trade Mark was first introduced in Australia in March 2009 at the beginning of the crop harvesting season. The Applicant’s product bearing the Trade Mark is available for purchase at agricultural retailers across Australia.

4. The confidential sales figures provided in the Inbar and Linn declarations for a ten year period up to the filing date are in my assessment substantial even taking into account fluctuating sales over the period due to the effect of drought stress on crop production. The figures also show the Applicant has distributed into the market place a substantial number of units during the same period.

5. The Inbar declaration provides confidential advertising expenditure which is a percentage of the sales gross revenue and comprises a significant market spend. Evidence of promotional materials used by the Applicant in the Linn and Inbar declarations feature text and graphics which utilise the colour yellow. These materials include YouTube promotional videos, brochures, posters, stubby holders, and advertisements printed on the packaging of the product and published in magazines. An example of these uses appears on the Applicant’s Australian website, and I reproduce this below:

1. The Applicant’s promotional activities include displays at the conferences, a rewards program and field support to farmers.

2. The evidence also includes the Applicant’s promotional material used in the United States. These materials feature yellow wrapped bales of cotton, and text and graphics which utilise the colour yellow.

3. The Applicant’s evidence of customer perception of its product is provided by owners of farming businesses, farm managers and storemen, who are involved in the repeat purchase of the Applicant’s product.[8] The deponents live across the major cotton production areas of New South Wales and Queensland and purchase the product because it fits with their cotton harvesters. The deponents buy the product due to its reliability and high quality and claim that they are not aware of any other companies that manufacture cotton bales in yellow. All the deponents agree that the colour yellow identifies as the Applicant’s ‘quality’ round module cotton wraps. 

   [8] Tuanton, Johnstone, Bible, Reynolds, Toscan and Whittaker declarations. 

4. The evidence before me establishes that the Trade Mark is a visual feature of the product being yellow coloured cotton module wraps. The wraps have been manufactured by the Applicant and sold in Australia since 2009 through agricultural retailers.

5. It is apparent from the evidence that the Applicant does not rely on the colour yellow alone to distinguish its product, as its TAMAWRAP trade mark features in the promotion of the product. However, I am satisfied from viewing the promotional materials that the colour yellow has been to a significant extent drawn to the attention of consumers as a distinguishing feature of the Applicant’s product and the use of the colour yellow was also use as a trade mark. I also note that the Trade Mark is uniformly advertised in markets similar to Australia.

6. The statements from individuals involved in cotton production are persuasive. The deponents live in the major cotton production areas and purchase the product due to its quality and because it fits with their cotton harvesters. All the deponents accept that the colour yellow identifies as the Applicant’s round module cotton wraps.

7. As assessed the sales generated from the product over the ten year period up to the filing date are substantial. The unit numbers indicate a strong customer base which bears out the deponents support for the product.  

8. I consider that because of the specialised marketplace in which the Applicant operates, and by the Trade Mark’s exposure through sales and promotion, the Trade Mark is capable of distinguishing the Applicant’s cotton module wraps. However, I do not consider that the Trade Mark distinguishes the Applicant’s wider range of plastic films and sheeting and materials in sheet form for wrapping bales of agricultural crops, because there is no evidence provided which shows use of the Trade Mark in relation to these goods.

Decision

1. Section 33 of the Act 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.

   (2)  The Registrar may accept the application subject to conditions or limitations.

   (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.

2. Under s 33 of the Act, I must accept the Trade Mark application unless there are grounds under the Act for rejecting it. 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 provision of s 41(3) in relation to the goods ‘plastic materials for packaging and wrapping for agricultural use, namely, plastic films and plastic sheeting for wrapping bales of cotton, and plastic materials in sheet form for wrapping bales of cotton’. I am not 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.

3. On 14 October 2021 I informed the Applicant that it was my intention to reject the Trade Mark unless the Goods were amended to ‘plastic materials for packaging and wrapping for agricultural use, namely, plastic films and plastic sheeting for wrapping bales of cotton, and plastic materials in sheet form for wrapping bales of cotton’.

4. On 14 October 2021 the Applicant agreed to the amendment and the specification has been amended accordingly.

5. As such the Trade Mark may proceed to registration under the provision of s 41(3), with an endorsement added to the Register to reflect as much.

Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
15 October 2021