Vectura GmbH
[2016] ATMO 77
•27 September 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia number 1712464 - (5, 10) - FOX - in the name of Vectura GmbH.
| Delegate: | Katrina Brown |
| Representation: | Blake Knowles of Cullens Pty Ltd. |
| Decision: | 2016 ATMO 77 Trade Marks Regulations 1995 – reg 17A.24 – s 41 – IRDA capable of distinguishing – IRDA accepted for possible extension of protection to Australia. |
Background
This matter is pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (‘the Regulations’) involving an application for extension of protection to Australia of the following International Registration Designating Australia (‘IRDA’):
| IRDA No: | 1712464 |
| International Registration No: | 1259729 |
| Trade Mark: | FOX (‘the Trade Mark’) |
| Holder: | Vectura GmbH (‘the Holder’) |
| Priority date: | 28 November 2014 |
| Goods: | Class 5: Medical and veterinary preparations and articles; pharmaceutical preparations; biological preparations for medical purposes; pharmaceutical preparations formulated for pulmonary delivery via inhalation; pharmaceutical preparations for the prevention or treatment of diseases or conditions of the respiratory and cardiovascular systems; none of the aforementioned goods including medicated confectionery |
A first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA was issued on 20 August 2015. The basis of the provisional refusal was a ground for rejection under s 41(4) of the Trade Marks Act 1995 (‘the Act’).
The examination report stated:
Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods. This is because your trade mark is FOX. This word is also the surname of many Australians.
People will often provide goods and/or services using their surname. The more common a surname is, the more likely it is that other traders may wish to use it.
Other traders with this surname should be able to use it in connection with goods or services similar to yours.
As a guide, a surname is considered a relatively common one if it has 750 or more entries on the Australian electoral roll. The surname in your trade mark occurs 7,259 times. It is likely that a significant number of traders with this surname may need to use it in connection with their goods or services.
While I understand FOX has a meaning other than just a surname, this number is still more than 9 times the 750 figure and a very common surname in Australia.
The provisional refusal applied to all of the goods for which protection was sought in Australia.
The Holder provided submissions in response to the s 41 ground for rejection but the examiner was not persuaded. After three examination reports, the Holder requested to be heard on the matter.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 9 September 2016. Mr. Blake Knowles of Cullens Pty Ltd (‘the Holder’s Representative’) made written submissions and oral submissions via teleconference on behalf of the Holder.
Section 41
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 ground for rejection that has been raised.
The grounds for rejecting an IRDA are set out in reg 17A.28 which relevantly provides:
17A.28 Grounds for rejecting IRDA
(1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).
(2)Sections 39 to 44 apply in relation to an IRDA as if:
(a) a reference in those sections:
(i)to an application for the registration of a trade mark were reference to an IRDA; and
(ii)to an applicant were reference to the holder of the IRDA;…
In this matter the ground for rejecting the IRDA is that pursuant to s 41 of the Act.
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 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.
…
(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…
Pursuant to reg 17A.24 the Registrar must accept an IRDA unless satisfied that there are grounds under the Act for rejecting it.
Inherent adaptation to distinguish
As outlined in the written submissions, 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.[1]
[1] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.
In this matter, the Trade Mark consists of the word ‘fox’ in plain text. In making my determination as to whether the Trade Mark is inherently adapted to distinguish I must first consider the ordinary signification of the word ‘fox’ to persons in Australia who purchase, consume and trade in the designated goods.[2] Once the ordinary signification is established an inquiry can then be made into whether other traders might legitimately need to use the word ‘fox’ in relation to their goods.[3]
[2] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 [70] (‘Cantarella’).
[3] Cantarella [71].
Fox is a surname that occurs on the Australian electoral roll 7259 times (referred to as the ‘SFAS value’). The current office practice in relation to surnames is set out in the Trade Marks Office Manual of Practice and Procedure (‘the Manual’). The Manual relevantly provides:
The SFAS value gives a measure of the commonness of the surname and therefore of the likelihood that a trader with that name would wish to use the name in connection with his or her goods or services. The more common the surname, the less inherent adaptation to distinguish it will have. As a general rule, an SFAS value of 750 or more will tend to indicate that the surname is sufficiently common to warrant raising a ground for rejection. However, the nature of the goods and/or services must be taken into account, that is whether they are specialised, commonplace or somewhere between these extremes.[4]
[4] Part 22.16.1.
In accordance with the above wording, office practice is that an SFAS value of 750 or more tends to indicate that a surname is sufficiently common to warrant raising a ground for rejection. This should not be misinterpreted as meaning that a ground for rejection is warranted in all circumstances where the surname has an SFAS value of 750 or more. A decision to reject a trade mark should not be based solely on the fact that it is comprised of a surname which appears an arbitrary number of times among the Australian adult population.[5]
[5] Garrett Electronics Inc. [2015] ATMO 48 [22] (‘Garrett’).
This echoes that of Wilcox J in Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd. His Honour made the following comments with regard to SFAS results at a time when office guidelines referred to a limit of 400 Australian surnames:
I gather from Mr Homann's reasons there is a policy document issued by the Registrar of Trade Marks that decrees a mark, to be registrable, should not comprise or include a name that occurs more than 400 times in the Australian Electoral Register. The policy document is not before the Court, so I do not know what rationale it advances for this dictat. Why 400? The answer does not matter. The policy has no foundation in the Act; so it is devoid of any legal justification. It is not for the Registrar to impose non-statutory restrictions on the words that may be registered as trade marks.[6]
[6] [1998] FCA 689.
The consideration as to whether a trade mark containing or consisting of a surname is capable of distinguishing is multifaceted; the SFAS value is but one of the relevant factors. Other factors that should be taken into account include any alternate meanings of the word/s, the nature of the designated goods or services and whether it is common for traders in those goods or services to use their surname as a trade mark.[7]
[7] Garrett [25].
As previously stated ‘fox’ has an SFAS value of 7259. To put that into perspective, the SFAS value of Smith is 114997 and Brown has an SFAS value of 54896. As pointed out by the Holder’s Representative, an SFAS value should be viewed in light of the total Australian population which is currently approximately 24 million.[8]
[8] Australian Bureau of Statistics, Population Clock <>
The word ‘fox’ has multiple meanings other than that of a surname, including the following which are set out in the Holder’s submissions:
any of the various wild flesh-eating mammals of the dog family
the fur of said mammal/s
a cunning or sly person
to act craftily
to deceive, baffle or trick.[9]
[9] Hearing submissions [17].
The Holder’s Representative states that the primary meaning of ‘fox’ is not that of a surname.[10] In their opinion, in the context of marketing and branding, the word ‘fox’ is associated with the animal and evokes the idea of cunning and resourcefulness in the mind of a consumer.[11] Whilst I would not go quite so far as to say that the word ‘fox’ is primarily a reference to an animal, this meaning may be more commonly attributed to the word by a consumer than some of the alternate meanings of the word.
[10] Hearing submissions, Executive summary [3].
[11] Hearing submissions [18].
At the time of examination, some of the designated goods in this matter were quite broad such as a claim in class 5 for: medical and veterinary preparations and articles. During the course of examination the Holder offered to narrow their specification to:
Class 5: Pharmaceutical preparations formulated for pulmonary delivery via inhalation; pharmaceutical preparations for the prevention or treatment of diseases or conditions of the respiratory and cardiovascular systems: none of the aforementioned goods including medicated confectionary.
Class 10: Drug delivery devices; inhalers; metered dose inhalers; active dry powder inhalers; nebulisers for respiration therapy; respirators for artificial respiration; parts and fittings for all the aforesaid goods.
In the written submissions[12] and also at the hearing, the Holder’s Representative made it plain that their submissions are on the basis of the above goods and not in relation to the broader claims that were made at the time of filing the application. As such, I will proceed on the basis that the goods set out at [21] of this decision are those for which the Holder seeks protection.
[12] Hearing submissions, Executive summary [1].
The goods for which protection is sought in class 5 are pharmaceutical preparations for the treatment of respiratory and cardiovascular conditions. They are not as commonplace as clothing or confectionery. Nor do they appear to be commonplace medicinal goods such as (for example) ibuprofen or paracetamol.
The specialised nature of the goods is supported by the Holder’s assertion that the goods for which protection is sought are generally produced by complex manufacturing processes and require considerable investment on the Holder’s part. The hearing submissions contain the following example of a drug delivery device that the Trade Mark is currently used on:[13]
[13] Hearing submissions [28].
I note that the goods in class 10 for which protection is sought include drug delivery devices. This is a broad claim and could include devices such as needles or syringes which are far less sophisticated drug delivery devices than the above example provided by the Holder.
My attention is also drawn to the fact that the goods for which protection is sought are highly regulated. The Therapeutic Goods Act 1989 (‘TGA Act’) governs the manufacture of therapeutic goods in Australia and imposes licensing requirements, periodic reviews and inspections and penalties for non-compliance. These are significant barriers to traders entering the relevant market and as such the market is relatively narrow.
In their written submissions for the hearing, the Holder’s Representative also provided a list of manufacturers from the Therapeutic Goods Administration website.[14] The list contains the trading names of 387 manufacturers, although some appear to be duplicates. Of the 387 manufacturers listed approximately 12 clearly incorporate a surname in their trading name. On the basis of this information, it does not appear to be common for traders in these goods to use their surname as a trade mark.
[14] Ibid Annexure C.
Thus my determination as to whether the word ‘fox’ is capable of distinguishing the goods for which protection is sought is based on the following considerations:
the word ‘fox’ has an SFAS value of 7259;
the word ‘fox’ has several meanings other than that of a surname;
the goods are relatively specialised (with the exception of the broad claim for drug delivery devices);
the market for the goods is highly regulated and consequently relatively narrow;
it does not appear to be common practice in Australia for traders of the goods to use their surname as a trade mark.
Considering all of the above and the presumption of registrability, I find that the IRDA is inherently adapted to distinguish the following goods for which protection is sought:
Class 5: Pharmaceutical preparations formulated for pulmonary delivery via inhalation; pharmaceutical preparations for the prevention or treatment of diseases or conditions of the respiratory and cardiovascular systems: none of the aforementioned goods including medicated confectionary.
Class 10: Inhalers; metered dose inhalers; active dry powder inhalers; nebulisers for respiration therapy; respirators for artificial respiration; parts and fittings for all the aforesaid goods.
Decision
Regulation 17A.24 provides:
17A.24 Final decision on examination
The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a)it is not in accordance with this Division; or
(b)there are grounds for rejecting it.
The Registrar may accept the IRDA subject to conditions or limitations.
The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a)it is not in accordance with this Division; or
(b)there are grounds for rejecting it, in whole or in part.
I accept the IRDA for possible extension of protection in Australia for the goods set out in [29] of this decision. The International Bureau has been notified.
Katrina Brown
Hearing Officer
Trade Mark Hearings
28 September 2016
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