Trade Mark application number 2029538 (6) –PAVILION– in the name of Stratco (Australia) Pty Limited

[2021] ATMO 153

TRADE MARKS ACT 1995

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

Re:Trade Mark application number 2029538 (6) –PAVILION– in the name of Stratco (Australia) Pty Limited

Delegate:	Bianca Irgang
Representation:	Applicant: Phillips Ormonde Fitzpatrick
Decision:	2021 ATMO 153 Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection exists under section 41(3) – evidence insufficient to overcome section 41 ground for rejection - Trade Mark rejected.

Background

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

   Trade Mark No: 2029538

   Trade Mark:  PAVILION (‘the Trade Mark’)

   Filing Date: 10 February 2016 (Divisional)

   Applicant: Stratco (Australia) Pty Limited (the ‘applicant’)

   Specification of Goods:

   Class 6: Ironmongery; Articles of metal for use in building; Articles of metal hardware; Beams of metal; Boards of metal; Building panels of metal; Buildings of metal; Decking of metal; Domestic buildings of metal; Doors of metal; Down pipes of metal; Enclosures of metal (other than for showers); Fence posts of metal; Fences of metal; Fittings of metal for fences; Framework of metal for building; Guttering of metal; Hardware of metal for doors; Lift-up doors of metal; Metal blocks for use in flooring construction; Metal building elements for floors; Metal building materials; Metal components for doors; Metal components for windows; Metal connectors for fastening together parts of fences; Metal fittings for buildings; Metal fixing products; Metal flooring; Metal rollers for sliding doors; Metal roofing materials; Metal sheds; Metallic balcony enclosures; Panels of metal for doors; Pergolas of metal; Poles of metal; Posts of metal; Purlins of metal; Railings of metal in the nature of fences; Reinforcing materials of metal for building; Roller doors of metal; Roller shutters of metal; Roofing materials of metal incorporating guttering; Roofing sheets of metal; Sheds (buildings) of metal; Sheets of metal; Tubes of metal; Vents of metal; Vertically raisable rolling doors (metal); Articles of metal for use in construction; Cladding made of metal; Cladding of metal for buildings; Cladding of metal for construction and building; Cladding panels of metal for roofing; Facade construction components of metal; Facade elements of metal; Facade facings of metal; Facades of metal; Facings of metal for building; Fittings of metal for building; Structural support members of metal; all of the foregoing excluding tanks of metal, chains of metal, common metal chains (other than jewellery), metallic wires (non-electric), and cables of metal, non-electric (the ‘goods’)

2. The application was examined as required under section 31 of the Act and grounds for rejection were raised under section 41(3). This ground for rejection was raised as a late ground for rejection in the examiner’s second report. The examiner’s report provided:

   Following my examination of the file and consultation with a Principal Examiner, I am raising a late grounds for rejection. Your application for the word PAVILION in Class 6 should have been subject to an objection under section 41(3) of the Trade Marks Act 1995. I apologise that this was overlooked in the earlier examination/s. I am aware that this may cause inconvenience to you, given the age of this application and that it is a divisional application. Nonetheless, the plain word PAVILION has a very clear ordinary signification in relation to the goods claimed, and a section 41(3) objection is warranted.

   As noted in the first examination report, the Macquarie dictionary defines the word PAVILION as: '1. a light, more or less open structure for purposes of shelter, pleasure, etc., as in a park. 2. a projecting element, architecturally defined, at the front or side of a building'. Your trade mark is descriptive of the metal building structures and parts you have claimed in Class 6, as it indicates that your goods may be used for or as a PAVILION.

   PAVILION is a very well-known word used to describe outdoor structures. Your goods are, for all intents and purposes, pavilions. I do agree with you that the word PAVILION has a “luxury” air, and that pavilions are often spacious and/or public structures. Nonetheless, even the most restrictive definition of a PAVILION would include the goods you claim in Class 6, such as buildings of metal and pergolas of metal. The other goods you claim in Class 6 are metal building materials which are likely to be used in the construction of pavilions. (I note also that you have not provided evidence of use in relation to most of these building materials).

3. Thereafter, the applicant requested to be heard on the matter as allowed by section 33(4) of the Act. The hearing was requested on the written record and no submissions were filed by the applicant. However, evidence had been filed during examination after the first report was issued. The following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

   The Law

4. Section 41 of the Act provides:

   41 Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:          For goods of a person and services of a person see section 6.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.

   Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)    the time of production of goods or of the rendering of services.

   Note 2:       For goods of a personand services of a personsee section 6.

   Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:       For applicant and predecessor in title see section 6.

   Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

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

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

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

   [1] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at 345–6, (Kitto J)

7. The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their services” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[2]

   [2] (1965) 112 CLR 537).

8. The ground for rejection as stated by the examiner is that the Trade Mark has limited inherent adaptation to distinguish the designated goods as the word PAVILION is commonly used in the marketplace to describe the structures that are included in, built and constructed from the applicants goods. For example, the Trade Mark may indicate that the goods are used to build PAVILIONS.

9. In terms of the ‘other traders’ test in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[3] the likelihood of other traders desiring to use the Trade Mark in relation to the designated goods may be tested by appropriate examples from the marketplace. On that point I note that there are a number of examples on the Official File of other traders using the term PAVILIONS when it comes to various structures. When I consider the basic meaning and understanding that is attributed to the word PAVILION, I note that this word is descriptive and indicates that the goods offered by the applicant relate to pavilions. 

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

10. Having taken into account the presumption of registrability I am nevertheless satisfied that the first element of the ground for rejection exists under section 41(3) of the Act with regards to all the goods in the application.

11. However, a ground for rejection under section 41(3) need not be fatal to the application, I must also be satisfied 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 as being those of the applicant having regard to the factors set out in section 41(3)(b). Accordingly, I will now consider the applicant’s evidence of use. To this end, the applicant has provided some evidence which was filed over the course of the examination which I will now consider.

12. The declaration of Michael Stenhouse (the ‘Stenhouse declaration’) states that the applicant was established in South Australia over 70 years ago and that its operations and product range has increased significantly over that time. According to the Stenhouse declaration the applicant is one of Australia’s largest producers and marketers of steel building products for the housing, home improvement and construction industries and has manufacturing facilities in all states of Australia along with a growing network of building and home improvement stores across Australia. The applicant employs more than 1000 people in a variety of roles, across Australia and internationally.

13. Mr Stenhouse explained that since at least 1957, the applicant has invested significantly in designing new and innovative products under various trade marks. The applicant’s Good Neighbour fencing and its Outback verandah system are just two examples of the applicant’s products that Mr Stenhouse highlights are well known Australia wide. He estimates that the applicant’s market share of the patio market across Australia would be around 15 percent.

14. Mr Stenhouse avers the applicant’s design team spent years designing the patio product that was to be sold under the Trade Mark. PAVILION branded goods are structures designed for outdoors, that can be attached or separate from a main building, that conceal unsightly fasteners, gutters and downpipes, provide more of a seamless, sophisticated look compared to the standard patio. According to the applicant goods sold under the Trade Mark also utilize aluminium composite panels (popular in commercial and architectural projects), integrated LED lighting and insulated roof panels.

15. The Stenhouse declaration outlines that in early 2014, the applicant coined the Trade Mark “PAVILION” for its patio product because it wanted to use a word that was suggestive of the luxury nature of its new patio product. The applicant is not aware of any other businesses, in the same market, using PAVILION as a trade mark, with respect to their goods. Since July 2014, the goods sold under the Trade Mark has been promoted by the applicant in various ways across Australia, including its website maintained at social media accounts, through printed brochures, catalogues and point of sale advertising, and through participating in trade exhibitions and garden shows. The applicant has also advertised its goods sold under the Trade Mark by way of prime-time television and radio commercials across Australia, on billboards on major highways across Australia, and via print and media publications including newspaper and magazine features[4].

    [4] Exhibits MS1 through toe MS12 accompanying the Stenhouse declaration

16. I note from Confidential Exhibits MS13 and MS14 accompanying the Stenhouse declaration that that the advertising expenditure and sales figures for the goods sold under and by reference to the Trade Mark are reasonable. However, I am still confronted with the fact that less than two years’ worth of use before the priority date of this divisional application is very little time for a highly descriptive Trade Mark to accrue enough reputation to become capable of distinguishing.

17. While I am satisfied that the applicant has spent considerable funds and time in developing its goods to be sold under the Trade Mark, the vast majority of the applicant’s evidence of use of the Trade Mark demonstrates that the Trade Mark is used in very close combination with the word STRATCO and/or other trade mark material, including visual adaptation that removes it from being the plain word PAVILION solus. While it is common practice to combine trade marks and use them in conjunction with each other, I nonetheless do not consider the applicant’s evidence sufficient to demonstrate that the Australian marketplace has come to associate the plain word PAVILION with the applicant’s goods. It does not seem likely that consumers recognise the use of plain word PAVILION on outdoor metal structures as a badge of origin for the applicant absent considerable additional context, such as knowing that they are reading the applicant’s catalogue, are on the applicant’s premises, or are aware that they are reading an advertisement produced by the applicant with STRATCO in prominent positions. Given this, even if the applicant should remove all reference to this application being a divisional, the applicant’s evidence would be insufficient to overcome any section 41 ground for rejection.

18. I am satisfied, notwithstanding the evidence of the Applicant, that the Trade Mark was not capable of distinguishing at the Relevant Date.

    Decision

19. Section 33 of the Act relevantly provides:

    33Application accepted or rejected

    (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

    (a)the application has not been made in accordance with this Act; or

    (b)there are grounds under this Act for rejecting it.

    Note:For this Act see section 6.

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

    Note:For limitations see section 6.

    (3)If the Registrar is satisfied that:

    (a)the application has not been made in accordance with this Act; or

    (b)there are grounds under this Act for rejecting it;

    the Registrar must reject the application.

    Note:For this Act see section 6.

    (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

    Note:For applicant see section 6.

20. Therefore, I reject trade mark application no. 2029538 in its entirety.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings & Opposition
    13 December 2021