Van Ruth Pty Ltd

[2016] ATMO 60

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1591991(6,7) – shape: solid circular and grooved cylindrical base, a tapered shaft with 3 indentations, topped by a tapered circular cup - in the name of Van Ruth Pty Ltd.

Delegate:	Katrina Brown
Representation:	David Stewart of Counsel instructed by Catherine Toal of Williams + Hughes Commercial and Litigation Lawyers
Decision:	2016 ATMO 60 Trade Marks Act 1995 – s 33 proceedings – s 41 – trade mark not capable of distinguishing – evidence not sufficient to overcome ground for rejection – trade mark application rejected.

Background

1. This matter is pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) involving an application for the registration of the following trade mark:

Trade Mark No:       1591991

Applicant:                 Van Ruth Pty Ltd (‘the Applicant’)

Filing Date:               18 November 2013

 

Trade Mark:             

(‘the Claimed Mark’)[1]

[1] A larger representation is at [11] of this decision.

Endorsement:           The Trade Mark consists of the shape of a three-dimensional design, comprised of a solid circular and grooved cylindrical base, a tapered shaft with 3 indentations, topped by a tapered circular cup, as displayed in the drawings accompanying the application as shown in the representation(s) attached to the application form.

Goods:Class 6: Bore hole plugs and packers for use in earth drilling that are inserted into the drill hole or drill rod and placed by hydraulic pumping or mechanical means to facilitate valving, anchoring or obstructing the drill hole or drill rod

Class 7: Bore hole plugs and packers for use in earth drilling that are inserted into the drill hole or drill rod and placed by hydraulic pumping or mechanical means to facilitate valving, anchoring or obstructing the drill hole or drill rod

(‘the designated goods’).

1. The application was examined and a ground for rejection was raised under s 41(3) of the Act. The first examination report stated:

   Your trade mark is a plug shape mark.

   This is directly descriptive of the range of goods that you have claimed in classes 6 and 7, namely plugs.

   Other traders should be able to use a plug shape mark in connection with goods similar to yours.

2. The Applicant was given the option of supplying evidence of use to overcome the ground for rejection.

3. To support the trade mark application, the Applicant submitted the declaration of Peter Henrick Van Ruth (Director of Van Ruth Pty Ltd) made on 5 April 2015 with accompanying annexures PVR-1 to PVR-16 (‘Van Ruth 1’) (discussed in more detail below).

4. The examiner was of the opinion that the evidence of use provided in Van Ruth 1 was not sufficient to overcome the ground for rejection. The second examination report stated:

   Thank you for providing evidence of the revenue generated in relation to the applied for shape mark, which I note does appear to be significant. Additionally, copies of invoices dating from 1970s have been provided and, while these demonstrate a lengthy period of likely use of the shape mark, they refer to items functionally e.g. as “cement plug”. This makes it unclear whether the items referred to are those associated with the subject mark.

   …

   The type of evidence that would be helpful would be examples that show the shape being promoted as a trade mark. I note that you have included evidence from customers (Boart Longyear Pty Ltd and Australian Mining Services Pty Ltd) affirming their recognition of the plug shape mark through the particular features rendered in the representation, in particular the skirt shape at the top of the plug and the ridges at the bottom of the plug. While this is to be taken into consideration, it is insufficient to demonstrate the shape mark being used as a trade mark.

5. After the second examination report the Applicant requested to be heard on the matter. A supplementary declaration made by Peter Henrick Van Ruth on 8 March 2016 (‘Van Ruth 2’) was also submitted.

6. The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 15 March 2016. Mr. David Stewart of counsel, instructed by Catherine Toal of William + Hughes Commercial and Litigation Lawyers, made written and oral submissions on behalf of the Applicant.

Evidence

1. As mentioned above, the evidence in this matter consists of Van Ruth 1 and Van Ruth 2. The declarant, Mr. Peter Henrick Van Ruth, is the Director of the Applicant.

2. The Applicant is a family owned business which was established in 1972.[2] The Applicant manufactures and supplies specialised ground stability and water control equipment for the mining and drilling industry in Australia and also overseas.[3]

   [2] Van Ruth 1 [9].

   [3] Ibid [12].

3. The Claimed Mark is described in the endorsement as:

   The Trade Mark consists of the shape of a three-dimensional design, comprised of a solid circular and grooved cylindrical base, a tapered shaft with 3 indentations, topped by a tapered circular cup, as displayed in the drawings accompanying the application as shown in the representation(s) attached to the application form.

4. The declarant refers to the Claimed Mark as the ‘Van Ruth CW Plug’. It is depicted below:[4]

[4] Ibid [16].

1. The plug was invented in 1971 by the declarant’s father.[5] It is a device that is used to block and seal drill holes, predominantly for use in the mining and drilling industry. The declarant describes how the Claimed Mark works as follows:

   The Van Ruth CW Plug is typically deployed into a bore hole by means of hydraulic pumping through a drill string. Once the Van Ruth CW Plug has reached the desired level, and has left the drill string, the drill string is removed from the hole. When the Van Ruth CW Plug exits the drill string, the spring loaded slips latch onto the walls of the hole to mechanically lock the Van Ruth CW Plug in place. Concrete can then be poured down the drill hole.[6]

   [5] Ibid [13].

   [6] Ibid [17].

2. The declarant states that the shape of the Van Ruth CW Plug has remained substantially similar since its invention in 1971; the only difference being a slight amendment to the flaring lip of the cup.[7] This subtle difference is demonstrated in the following photographs:[8]

[7] Ibid [20] – [21].

[8] Ibid [20].

1. The declarant states that the Van Ruth CW Plug has been sold continuously in Australia since 1972. PVR-7 contains copies of quote requests and purchase orders from 1972 to 1999. In Van Ruth 2 it is declared that any references to ‘CW’ or ‘Van Ruth Plug’ on the quotes and purchase orders are references to the Claimed Mark.[9]

   [9] Van Ruth 2 [12].

2. The total revenue from the sale of Van Ruth CW Plugs in Australia has been provided for the period between 2000 and 2012.[10]

   [10] Van Ruth 1 [32].

3. The marketing of the Van Ruth CW Plug began in November 1975 when the declarant’s father wrote a paper for the Australian Drilling Association Limited symposium in Perth describing the structure and function of the Van Ruth CW Plug.[11] In 1977 an article about Van Ruth Products, including the Van Ruth CW Plug was published in the Goldfields Express.[12] The Van Ruth CW Plug was also depicted in the Applicant’s brochures which were distributed with shipments, mailed to existing customers, and hand delivered to prospective customers in the mining and drilling industry.[13] PVR-10 contains examples of these brochures.

   [11] Ibid PVR-8.

   [12] Ibid PVR-9.

   [13] Ibid [36].

4. The declarant states that the Van Ruth CW Plug is now primarily advertised through the Applicant’s website.[14] PVR-14 contains screenshots of the Applicant’s website from 1999 to 2014. Figures demonstrating the number of hits to the Applicant’s website have been provided for 2003 to 2015 including the number of hits for the page that is dedicated to the Van Ruth CW Plug.[15]

   [14] Ibid [39].

   [15] Ibid [41], PVR-15.

5. Van Ruth 1 contains third party declarations from the following individuals within the mining and drilling industry:

   · Declaration of Trevor Sadler (Senior Supervisor at Boart Longyear Pty Ltd) made on 7 October 2014 (‘Sadler Declaration’)[16]

   ·   Declaration of Adam Wenn (Technical Sales Manager at Australasian Mining Services Pty Ltd) made on 24 October 2014 (‘Wenn Declaration’).[17]

   [16] Ibid PVR-4.

   [17] Ibid PVR-5.

Section 41

1. As a preliminary matter I mention that the focus here is not to review the examiner’s decision and arguments, but rather to consider afresh the grounds for rejection that have been raised.

2. Section 41 of the Act 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.

   …

   (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…

1. Pursuant to s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it.

Inherent adaptation to distinguish

1. As outlined in the written submissions, the test for inherent adaptation equally applies to shape trade marks as it does to other types of signs.[18] The inherent adaptation of a trade mark 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.[19]

   [18] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 [146].

   [19] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.

2. In applying this test, consideration is given to the trade mark as a whole.[20] When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable.[21] The relevant enquiry is whether the trade mark as a whole, that is, the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods and/or services. In this instance, the question is whether the shape, being the combination of a solid circular and grooved cylindrical base, a tapered shaft with 3 indentations, topped by a tapered circular cup, is capable of distinguishing the designated goods.

   [20] Hudson’s Trade Mark (1886) 3 RPC 155.

   [21] Diamond T Moto Car Co’s Application (1921) 38 RPC 373, 380.

3. Shapes that are functional are less likely to be capable of distinguishing the designated goods. Counsel for the Applicant submits that the Claimed Mark is not functional and does not contribute any engineering advantage to the goods. As stated in Van Ruth 1, the Applicant’s point of view is that the shape of the Van Ruth CW Plug is unique and incorporates the following features, claimed to be aesthetic, in a configuration which is distinctive:

• the skirt of the cup;

• the segmented slips;

• the solid circular and grooved cylindrical base;

• the tapered shaft with three indentations; and

• the tapered circular cup.[22]

  [22] Van Ruth 1 [19].

1. I note that the declarant refers to the segmented slips. The endorsement does not refer to the segmented slips and as such they are not part of the Claimed Mark. From the evidence before me, the Claimed Mark is the shape of the Van Ruth CW Plug in its closed form. The segmented slips are only visible when the Van Ruth CW Plug has been deployed. In the closed form, the segmented slips presumably form part of what is described in the endorsement as the grooved cylindrical base. The following photographs are illustrative of the differences between the Claimed Mark (left photograph) and the shape of the bore hole plug when it has been deployed (right photograph).[23]

[23] Submissions for hearing [60].

1. In support of their view that the Claimed Mark is not functional, the Applicant has provided approximately 20 examples of other traders’ bore hole plugs of varying shapes.[24] The Applicant also explains that the elements of the Claimed Mark, such as the grooves on the cylindrical base and the tapered circular cup, could in fact differ in shape and size but still carry out the same function. For example, in relation to the grooved cylindrical base the declarant of Van Ruth 2 states:

   The ridges could be replaced with a pattern of any kind, including (by way of example) spots, stars, or hashes, or have no pattern at all. Each of these permutations would have substantially the same effect as the ridges used by the Applicant.[25]

   [24] Van Ruth 1 [23].

   [25] Van Ruth 2 [7].

2. As with descriptive words, the fact that there are different shapes available to other traders does not, of itself, mean that the Claimed Mark is registrable.[26] The question is whether the Claimed Mark, or something so nearly resembling, is one which other traders are likely to desire to use in the ordinary course of their business without improper motive.

   [26] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891.

3. In my opinion the Claimed Mark is one which other traders are likely to desire to use because it is functional. Each of the elements referenced in the endorsement carries out a function. The solid circular base enables the CW Plug to stand upright. The grooves on the cylindrical base assist the CW Plug to wedge in place and or grip the walls of the hole. As described in the Van Ruth Products Brochure from 1991, the taper of the shaft locks in the slips.[27] The function of the tapered circular cup is described in the original patent application:

   [A] ring formed of rubber or other suitable material, the outer periphery of which is provided with a flange adapted to bear against and seal on the inside surface of the drill system.[28]

   [27] Van Ruth 1 PVR-10.

   [28] Ibid PVR-17.

4. Even if I were of the opinion that some or all of the features were aesthetic, they are not so remarkable so as to render the Claimed Mark, as a whole, capable of distinguishing the designated goods.

Evidence of use

1. The designated goods are sold to a niche market being the mining and drilling industry.  The Applicant has provided third party declarations from two individuals within this market.[29]

   [29] Sadler Declaration and Wenn Declaration.

2. The declarants of the Sadler Declaration and the Wenn Declaration attest to being aware that the Applicant manufactures and sells a cementing and wedging plug known as the CW Plug or the Van Ruth Plug. They also attest to recognising this plug because of features such as the shape of the base, the taper of the body, the shape of the grips and the shape of the top of the plug.

3. The fact that the declarants associate these features with the Applicant does not on its own demonstrate the capacity of the Claimed Mark to distinguish one trader’s goods from those of another trader.[30] It is necessary to establish that the association is because of the use of the Claimed Mark as a trade mark. In this regard, I note the following from Woolworths Limited v BP Plc (No. 2):

   It is necessary for BP to establish that the association is referrable to the use of the mark as a trade mark…to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source.[31]

   [30] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [100].

   [31] [2006] FCAFC 132 [117].

4. The matter is ultimately whether the evidence before me demonstrates that the Claimed Mark is acting, in its own right, as a badge of origin for the Applicant in relation to the designated goods.

5. The evidence clearly demonstrates that the Applicant has used the Claimed Mark in relation to the designated goods for an extensive period of time in Australia; some 40 years prior to the filing date of the trade mark application.  However, it is not clear that the Claimed Mark has, or is, being used as a badge of origin.

6. In my opinion, the examples provided show the Claimed Mark being used to illustrate the designated goods. The following is an example from the Van Ruth Products Brochure used by the Applicant from 1985 – 1990.[32] It is indicative of the use shown throughout the evidence.

   [32] Van Ruth 1 PVR-10.

7. I do not believe that upon seeing the above material that the Claimed Mark would be perceived by the consumer as possessing the character of a trade mark. The consumer is likely to view the Claimed Mark as merely an illustration or representation of the CW Plug. There is nothing in the evidence to suggest that the Claimed Mark has been promoted as something apart from the goods. The Applicant’s own promotional material and articles written by third parties, such as the Goldfields Express article, [33] do not show a deliberate intent to educate the public as to the trade mark significance of the Claimed Mark.

   [33] Ibid PVR-9.

8. My impression of the evidence, as a whole, is that it is the words “Van Ruth”, “Van Ruth Products” or  (‘VRP logo’) that do the work of distinguishing the designated goods from those of other traders.

9. The promotional material shows the Claimed Mark in close proximity to the words “Van Ruth”, “Van Ruth Products” or the VRP logo.  For example, in the Van Ruth Product Brochures used from 1985-1990, 1991 and 1996,[34] the VRP logo and the words “Van Ruth Products” are displayed prominently at the top of each of the pages that contain the Claimed Mark. The same can be said of the screenshots provided from the Applicant’s website dated from September 1999 to August 2014.[35]

   [34] Ibid PVR-10.

   [35] Ibid PVR-12, PVR-14.

10. The contemporaneous examples show the VRP logo or the words “Van Ruth Products” displayed on the Claimed Mark. The following are examples of the Claimed Mark taken from the Applicant’s website.[36]

In the first example the VRP logo is displayed prominently on the tapered shaft of the Claimed Mark. Similarly, in the second example the words “Van Ruth Products” are displayed on the tapered shaft. The third example shows the VRP logo embossed on the base of the Claimed Mark.

[36] Ibid PVR-12, PVR-13, PVR-14.

1. Considering that the evidence does not establish a deliberate intent to educate the public, in my opinion it is more likely that a consumer would identify the VRP logo, “Van Ruth” or “Van Ruth Products” as indicating the trade origin of the goods.

2. It is fair to say that the Claimed Mark does not appear by itself in the evidence before me. As such, the revenue figures provided for the period of 2000 to 2012[37] are not solely attributable to the Claimed Mark. Similarly, the number of hits on the Applicant’s website for the page containing the CW Plug from 2003 to 2014[38] is not solely attributable to the Claimed Mark.

   [37] Ibid 1 [32].

   [38] Ibid PVR-15.

3. The evidence before me does not sufficiently demonstrate that the Claimed Mark has been used as a trade mark or that the purchasing public would recognise it as one. Therefore, I am not satisfied that the Claimed Mark does or will distinguish the designated goods.

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.

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.

1. I am satisfied on the balance of probabilities that there is a ground for rejecting the Claimed Mark under s 41 of the Act.

2. In accordance with s 33(3) of the Act, I reject trade mark application number 1591991.

3. However, if the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Katrina Brown
Hearing Officer
Trade Mark Hearings
8 August 2016