Trade mark application number 2060104 (class 21) - BLUE PAN (Figurative)- in the name of The Cookware Company Global Sourcing Limited

[2021] ATMO 111

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2060104 (class 21) - BLUE PAN (Figurative)- in the name of The Cookware Company Global Sourcing Limited

Delegate:

Timothy Brown

Representation:

Applicant: Dr Ewen C Wynne of Wynnes Patent and Trade Mark Attorneys Pty Ltd

Decision:

2021 ATMO 111

Trade Marks Act 1995 (Cth) – section 33 proceedings – section 41 – trade mark not capable of distinguishing – evidence of use insufficient - trade mark application rejected

Background

1. On 2 January 2020, The Cookware Company Global Sourcing Limited (‘Applicant’) filed an application to register the following trade mark:

   Trade Mark Number: 2060104   

   Trade Mark:     (‘Trade Mark’)

   Filing Date:   2 January 2020

   Specification:                   Class 21: Cooking pots and pans; Non-electrical cooking utensils; Non-electric cooking pots, fondue sets, roasting apparatus and kettles; Woks; Containers for preparing, storing, keeping warm and serving foodstuffs and beverages, not included in other classes (‘Applicant’s Goods’)

2. The trade mark application was examined and a ground for rejection was raised under section 41(4) of the Trade Marks Act 1995 (Cth) (‘Act’) on the following basis:

   Your trade mark is, or has as its main feature, BLUE PAN.

   BLUE, as per the Macquarie Dictionary means of the colour blue or tinged with blue. PAN is defined as a dish commonly of metal, usually broad, shallow and open, used for culinary and other domestic purposes.

   Your trade mark thus indicates that the goods you have claimed in Class 21 are dishes, commonly of metal, which are used for culinary and other domestic purposes and, are BLUE in colour or tinged with BLUE colour.

   Other traders should be able to use BLUE PAN in connection with goods or services similar to yours. Please note that the blue colour of the word BLUE in the mark only substantiates the type of colour and does not render the mark enough capacity to distinguish

3. On the 28 April 2020, the Applicant responded to the first examination report, contending that the combination and arrangement of the elements of the Trade Mark were inventive and that the Trade Mark would be understood by consumers as indicating a badge of origin rather than a description of the Applicant’s Goods.

4. The examiner maintained the ground for rejection and on 1 April 2021 the Applicant requested a hearing by way of written submissions. Written submissions were filed the same day.

5. As a delegate of the Registrar of Trade Marks I will now decide this matter with reference to the written material on record. I note that this decision is not a review of the examiner’s decision. Rather, the ground for rejection raised under the Act will be considered afresh.

Evidence

1. The Applicant’s submissions explain that the Applicant is a cookware company formed in 2011 with sales offices in Europe, the United States and Asia, and production facilities in Korea, China and Germany.

2. The Applicant notes that it owns fourteen registered trade marks in Australia, including the following trade marks:

Trade Mark No.	Trade Mark	Specifications
1182263	GREENPAN	Class 21: Cooking pots; pots; non-electric cooking utensils; fish pans; woks; non-electric fondue sets and water kettles; receptacles for the kitchen and the household, not included in other classes; receptacles for preparing, preserving, keeping warm and serving food products and drinks, not included in other classes.
2086820	BLUEPAN	Class 8: Cutlery, including forks, knives and spoons; Cleavers; Mincing knives; Vegetable choppers; Vegetable slicers; Oyster openers; Can openers, non-electric; Non-electric cheese- and pizza knives. Class 11: Apparatus for cooking, heating, boiling and grilling food, namely electric steamers, electric grills; Barbecues, Table-top barbecues, Electric cooking utensils, namely electric skillets and electric waffle irons; and baking sheets for indoor and outdoor use.
2029816	(‘BLUE DIAMOND Trade Mark’)	Class 21: Cookware; Cooking pots and pans; Non-electrical  Cooking utensils; Non-electric cooking pots, fondue sets, roasting apparatus and kettles; Pots for cooking fish; Woks; Receptacles for the kitchen and household, not included in other classes; Containers for preparing, storing, keeping warm and serving foodstuffs and beverages, not included in other classes; Polishing gloves.

1. The Applicant also provided details regarding its use of the BLUE DIAMOND Trade Mark, outlining that the BLUE DIAMOND Trade Mark has been in continuous use since 29 June 2018. Extracts provided of the Applicant’s website, < sourced from the Wayback Machine[1] demonstrates use of the BLUE DIAMOND Trade Mark in connection with cookware from 29 June 2018. In its submissions the Applicant emphasised the consistent use of the word BLUE with a diamond shaped pattern within a white outline in both the Trade Mark and the BLUE DIAMOND Trade Mark. I note that none of this information was provided in the form of a declaration.

   [1] A digital internet archive service that facilitates viewing of captured versions of web pages.

Section 41

1. Section 41 of the Act provides:

   (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.

2. As a preliminary matter, I note that section 33(1) of the Act 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.

3. I also note that the relevant date of assessment is the filing date of the Trade Mark,[2] being 2 January 2020.

   [2] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [59] (Yates J).

4. Whether the Trade Mark is capable of distinguishing the Applicant’s Goods requires consideration of the extent to which the Trade Mark is inherently adapted to distinguish those goods from the goods of other traders.

5. The test for assessing whether a trade mark is ‘inherently adapted to distinguish’ was outlined in Clark Equipment Co v Registrar of Trade Marks by Kitto J:

   [t]he 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.[3]

   [3] (1964) 111 CLR 511, 514.

6. In Cantarella Bros Pty Limited v Modena Trading Pty Limited the High Court emphasised that ‘consideration of the “ordinary signification” of any word or words (English or Foreign) which constitute a trade mark is crucial’[4] and that ‘[o]nce the “ordinary signification” of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods’[5].

   [4] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

   [5] Ibid.

7. The Applicant submits that the Trade Mark is capable of functioning as a badge of origin because the combination and arrangement of the constituent parts of the Trade Mark are distinctive. In support of this argument, the Applicant pointed to the following features of the Trade Mark:

• The graphic word BLUE with a diamond pattern within a white outline;

• The white sparkle graphic on the letters B and E;

• The horizontal arrangement of the graphic words BLUE and PAN;

• The word PAN filled with a white colour.

1. The Trade Mark consists of the words BLUE and PAN presented in a stylised text and horizontal arrangement. BLUE is a term with many meanings, the most relevant to the present circumstances being the name of, and adjective, for the colour. The Macquarie Dictionary defines ‘blue’ as meaning ‘of the colour blue’[6] or ‘tinged with blue’[7]. The term PAN refers to, amongst other things, a metal container or receptable for culinary or domestic use.[8] Together the words BLUE PAN describe dishes or containers that are coloured blue.

   [6] Macquarie Dictionary (online at 13 September 2021) ‘blue’ (def 14).

   [7] Ibid (def 15).

   [8] Ibid (def 1-3).

2. The Applicant emphasises that it is the total combination of elements of the Trade Mark that is considered and assessed, not its constituent parts.[9] While this is the case, in my view, even accounting for the stylised aspects of the Trade Mark, consumers would understand the Trade Mark to be a description of the Applicant’s goods. The colours, sparkle and diamond pattern, and the overall arrangement of the elements are not visually conspicuous or otherwise inventive enough to create an impression distinct from the ordinary meaning of the word elements of the Trade Mark. Furthermore, despite the use of the colours white and blue in the representation of the Trade Mark, I note that the Trade Mark is not limited to colours and under section 70 of the Act would be taken to be registered for all colours. Accordingly, I am satisfied that Trade Mark has an ordinary signification which describes the Applicant’s Goods, that being containers or dishes that are the colour blue.

   [9] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380 (Lawrence J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61] (Dodds-Streeton J).

3. Turning to the question of 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 Applicant’s submissions state:

   [T]here is no indication or evidence to suggest that the trade mark for words BLUE PAN is in common use and serve[s] directly to designate the specified goods and that trade mark is required by other traders in the ordinary course of their business.

1. In Telstra Corporation Limited v Phone Directories Company Pty Ltd[10], a decision that involved an application to register the word ‘Yellow’ for, amongst other things, print and online telephone directories, the Full Federal Court stated:

   The word yellow describes a colour and, even without evidence, it would be appropriate to infer that at least some other traders might wish to use that colour. Furthermore, there was at the very least evidence in this case of not infrequent use of the colour yellow in connection with print and online directories.[11]

   [10] [2015] FCAFC 156 (Besanko, Jagot and Edelman JJ).

   [11] Ibid [117].

2. While in this matter, the Trade Mark is comprised of more than just the word BLUE, in my view other traders would still wish to use the Trade Mark, or something so nearly resembling it, for the sake of its ordinary signification. The Trade Mark is an apt way of describing blue coloured cookware goods or other domestic pan containers. It is not allusive, figurative or in any other manner an indirect reference to the Applicant’s Goods.

3. The Applicant has referred to several internet links from the examiner’s research, noting either that the links do not function or that they do not demonstrate use of the words BLUE PAN. The lack of use of the phrase BLUE PAN in these examples is not determinative. Nor does the absence of use indicate that traders would not desire to use the Trade Mark for the sake of its ordinary meaning. As observed by Murphy J in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited:

   [I]t is not necessary for an opponent to registration to establish that the trade mark is required by other traders. It is enough if innocent traders want to use it. For example in Clark Equipment at 513 to 514 Kitto J spoke to the “desire” of other traders to use the same mark, and said that traders may “think of the word and want to use it”. In Burger King at 425 Gibbs J took the reference to “likelihood” by Kitto J as a reference to whether another trader “might”, without improper motive, want to use the mark.[12]

   [12] [2014] FCA 373, [200].

4. As outlined above, I consider BLUE PAN and the Trade Mark to be an apt description of blue coloured pans. I also note that both the website link for < provided in the submissions and the Wayback Machine evidence demonstrating the Applicant’s own use of its BLUE DIAMOND Trade Mark feature cookware coloured or tinged in the colour blue. These products would aptly be described as ‘blue pans’, and in my view any trader of these goods would have a legitimate desire to use the Trade Mark, or something so nearly resembling it, to describe such goods.

5. As an observation, I also note that the examiner did not provide the Applicant with images of the web pages used in researching the initial decision. Rather hyperlinks were provided, which have in turn been included in the Applicant’s submissions. The content of websites is liable to change over time, and there is a general lack of certainty and risk in relying on hyperlinks. As the Applicant noted in its submissions, several of the hyperlinks, which were initially included in the second examination report, no longer function.

6. I accept that the stylisation and overall arrangement of the elements do afford the Trade Mark a degree of distinctiveness. Accordingly, I am satisfised that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods.

7. In order for a ground for rejection under section 41(4) of the Act to apply, I must also be satisfied that the Trade Mark does not and will not distinguish the designated goods having regard to the factors outlined in section 41(4)(b) of the Act.

8. While the Applicant has not explicitly made submissions in reference to section 41(4)(b), they have drawn my attention to other trade marks owned by the Applicant that contain one or more of features present in the Trade Mark. These trade marks are those referred to in [7] of this decision. In my view these trade marks do not assist the Applicant’s argument. Trade mark registration 2086820, BLUEPAN, was registered in respect to different goods than those currently under consideration while Trade Mark Registration 1182263, GREENPAN, was not initially capable of distinguishing and the Applicant needed to provide evidence in order for the trade mark application to be accepted for registration.

9. In respect of the BLUE DIAMOND Trade Mark, the Applicant states that it has been in use since 29 June 2018 and notes that the word BLUE is represented in the same manner as the Trade Mark. Furthermore, the Applicant submits that as of the filing date of the Trade Mark, the Australian public had come to regard the word BLUE, represented with a diamond-like pattern and blue colouring within a white outline, as a badge of origin. I do not find the linkage between the Trade Mark and the BLUE DIAMOND Trade Mark to be persuasive. Despite the common presence of the word BLUE, use of the BLUE DIAMOND Trade Mark is not use of the Trade Mark within the meaning of section 7 of the Act. The BLUE DIAMOND Trade Mark is ostensibly distinctive in its own right, and the inclusion of the word DIAMOND is a feature that substantially affects the identity of the trade mark. Furthermore, there is little evidence beyond the sales figures provided that contexualises the Applicant’s use of the BLUE DIAMOND Trade Mark. No details regarding the Applicant’s advertising expenditure have been provided, nor have meaningful examples been provided that might demonstrate that the word BLUE could function as a badge of origin in its own right. Accordingly, I do not consider the Applicant’s use of the BLUE DIAMOND Trade Mark a basis for finding that the Trade Mark does, or will, distinguishing the Applicant’s Goods from those of other persons.

10. Given the reasons outlined above I am satisfied on the balance of probabilities that the Trade Mark is not capable of distinguishing the Applicant’s Goods, and that there is a ground for rejection under section 41 of the Act.

Decision

1. 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.

2. I am satisfied that on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under section 41 of the Act.

3. Accordingly, under section 33(3) of the Act, I reject trade mark application 2060104.

Timothy Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

30 September 2021