Voltage LLC

[2024] ATMO 132

TRADE MARKS ACT 1995

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

Re:International Registration 1627693 (Australian trade mark 2230928) (class 9) – VOLTAGE (figurative) – in the name of Voltage LLC

Delegate:

Nicholas Barbey

Representation:

Holder: Melissa McGrath of counsel instructed by Davies Collison Cave Pty Ltd

Decision:

2024 ATMO 132

Trade Marks Regulations 1995 (Cth) – reg 17A.24 final decision on examination – s 41 of the Trade Marks Act 1995 (Cth) considered – trade mark not capable of distinguishing – evidence of use insufficient – extension of protection refused

Background

1. On 11 June 2021, Voltage LLC (‘Holder’) applied to extend protection to Australia of international registration 1627693 under the provisions of the Trade Marks Act 1995 (Cth) (‘Act’) and Trade Marks Regulations 1995 (Cth) (‘Regulations’). This application is referred to as an International Registration Designating Australia (‘IRDA’). Details of the IRDA are set out below:

   Trade mark:    (‘Trade Mark’)

   Application number:      2230928

   Filing date:  11 June 2021

   Priority date:  11 June 2021

   Specification:  Class 9: cable connectors; junction sleeves for electric cables; cables, electric; electric wires and cables; electric cables and wires; solar batteries; solar-powered rechargeable batteries; wire connectors; wires, electric; battery chargers; battery chargers for mobile phones; cables for electrical and optical signal transmission systems; cell phone battery chargers; coaxial cables; electric cable connectors; connection cables; copper wire, insulated; earth cables; electric cables; electric wire and cable; electric wires; electric cables, wires, conductors and connection fittings therefor; electrical cables; electrical cables for use in connections; electrical wires; electronic cables; insulated copper wire; insulated copper electrical wire; jumper cables; optical fiber cables; plastic covered electric wires; power cables; rubber covered electrical wires; solar-powered battery chargers; none of the foregoing being in connection with vehicles, including parts, equipment or accessories for vehicles, or repair, maintenance or testing of vehicles, including the repair, maintenance or testing of parts, equipment or accessories for vehicles

   (‘Goods’)

   Endorsement:                  The mark consists of Capital letters “VOLTAGE” with a stylized letter “V” whose left is a schematic of the solar panel design and a stylized letter “A” designed as an inverted letter “V”. “VOLTAGE”

1. The IRDA was examined as required by reg 17A.12 of the Regulations and a first examination report raising, inter alia, a ground for rejection under s 41 of the Act issued to the Holder.[1] The ground for rejection was expressed as:

   [Y]our trade mark is, or has as its main feature, VOLTAGE.

   VOLTAGE is electromotive force or electric potential expressed in volts. It is used on various electrical goods, including those you have claimed, to indicate their voltage capability. This is something that other traders who sell various electrical or power related goods would need and want to use in the ordinary course of business.

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

   I note the slight stylisation on the V and the A missing the crossbar. These are not enough to distinguish your mark as a whole.

   [1] A ground for rejection under s 44 of the Act was also raised. However, the Holder subsequently overcame this ground for rejection by obtaining a letter of consent from the proprietor of the earlier conflicting trade mark.

2. The Holder responded asserting that the Trade Mark was not directly descriptive of the Goods and ‘“voltage” would typically be expressed in the short form “V” or “VOLTS”’.[2] Reference was made to existing trade marks[3] on the Australian Register of Trade Marks (‘Register’) and emphasis was placed on the stylisation of the Trade Mark which makes it clear that the Holder ‘does not seek a monopoly in relation to the plain word VOLTAGE’.[4]

   [2] Response to Notification of Provisional Refusal dated 11 July 2022, 2–3.

   [3] See Australian trade mark registrations 1199717, 1314552, 1856306, 1963881 which are reproduced at [20] of this decision.

   [4] Response to Notification of Provisional Refusal dated 11 July 2022, 2.

3. A second examination report issued to the Holder which maintained the ground for rejection. Relevantly, it highlighted that ‘the [T]rade [M]ark is comprised of a common English word with a directly descriptive meaning in the context of the [G]oods’ and the ‘only adaptation to distinguish in the [Trade Mark] is the slight stylisation on the letter V and the missing crossbar on the letter A’.[5] The examiner maintained that the Trade Mark is ‘something so nearly resembling a term likely to be desired for use by other traders, namely, the word VOLTAGE’ and did not consider the precedent on the Register to be persuasive.[6]

   [5] Adverse Examination Further Report dated 19 July 2022, 2.

   [6] Ibid.

4. The Holder replied with submissions disputing the grounds for rejection. Emphasis was placed on the ‘stylised rendition’ of the Trade Mark which the Holder characterised as ‘impactful and memorable’.[7] In its view, the stylisation is such that ‘the relevant consumer could interpret the [Trade Mark] as VOLT CHERVON GE, OLTAGE with a stylised V, or a stylised incarnation of the word VOLTAGE’.[8] The Holder reiterated that, when considered as a whole, the Trade Mark ‘holds no ordinary signification to Australian consumers in respect of the class 9 goods’.[9]

   [7] Response to Further Examination Report dated 20 April 2023, 2.

   [8] Ibid.

   [9] Ibid 3.

5. Unpersuaded, the examiner issued a third examination report which maintained the ground for rejection under s 41 of the Act. At this point, the Holder requested to be heard and a hearing was scheduled. The Holder filed submissions (‘Submissions’) and evidence prior to the hearing. As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 1 May 2024. Melissa McGrath of counsel, instructed by Stuart Green and Judy King of Davies Collison Cave Pty Ltd, made oral submissions on the Holder’s behalf.

6. At the outset, I note that the ground for rejection must be considered afresh and a presumption of registrability exists which provides that the Registrar must accept the IRDA unless satisfied that there are grounds for rejecting it or the IRDA has not been made in accordance with the Regulations.

Evidence

1. To support the acceptance of the IRDA, the Holder filed a declaration made on 23 April 2024 by Katrin Comage (Senior Director of Operations for the Holder) with Exhibits 1 to 7 (‘Comage Declaration’). The Comage Declaration contains a blanket statement that its contents are strictly confidential.[10] This statement does not reconcile with the discussion of publicly available records and information that occurs within the declaration. Plainly, the Holder has an interest in preserving its confidential information. However, the Registrar must provide reasons for her findings. In discharging this duty, information claimed to be confidential may require discussion. This is particularly relevant when no effort has been made to identify the allegedly confidential information. Accordingly, if this decision inadvertently discloses commercially sensitive information, then any such disclosure has arisen by the Holder’s failure to specifically identify the information as confidential.

   [10] Comage Declaration, [4].

2. According to the Comage Declaration, the Holder was founded in 2013 and is headquartered in the United States of America (‘USA’) with an office also in Germany. It is described as being ‘a provider of utility scale wire solutions and services’ and goods sold by the Holder include ‘wire and cables for solar applications, wire assembly products and industrial cables’.[11]

   [11] Ibid [11]–[12].

3. The Holder promotes the Goods via its website accessible at < (‘Website’) as well as on social media. The Website ‘has been active since at least 2021’ and the Trade Mark has been used in relation to various items in the Goods ‘from 2021 to date’.[12] Screenshots of the Website, dated between December 2021 and April 2024, demonstrating use of the Trade Mark in relation to wires, cables and wire assembly components are exhibited.[13] Ms Comage explains that the Holder ‘regularly attends energy industry conferences to promote the [G]oods’ and examples of attendance at three conferences between 2023 and 2024 are provided.

   [12] Ibid [14].

   [13] Ibid Exhibit 3.

4. Ms Comage asserts that the Holder ‘plans to commence use of the Trade Mark in Australia once the obstacle raised against the [IRDA] pursuant to Section 41(4) of the Act is resolved’.[14] In this regard, the Holder has obtained registration of the Trade Mark in Japan, Europe, the United Kingdom and the USA.[15] Ms Comage declares that she is ‘not aware of any complaint or confusion having arisen from the use of the Trade Mark in these markets’.[16]

   [14] Ibid [18].

   [15] The registration in the USA contains the disclaimer of ‘No claim is made to the exclusive right to use “VOLTAGE” apart from the mark as shown’.

   [16] Comage Declaration, [20].

Section 41

1. Section 41 of the Act relevantly provides:

   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.

   …

   (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.

1. To assess the merits of the s 41 ground for rejection, consideration must be given to the extent of the Trade Mark’s inherent adaptation to distinguish the Goods. This is determined:

   [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.[17]

   [17] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).

2. The majority of the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’)[18] indicated that the test for distinctiveness under s 41 of the Act involves a
   

   [18] [2014] HCA 48 (‘Cantarella’).

   [19] Ibid [71] (French CJ, Hayne, Crennan and Kiefel JJ).

   two-step process. First, the ordinary signification of the trade mark, in Australia, to persons who will purchase, consume or trade in the goods must be discerned.[19] Once the ordinary signification is established, consideration must then be given to whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.

3. The Holder’s asserts that the Trade Mark is inherently adapted to distinguish because it ‘does not describe the [G]oods’.[20] Attention was drawn to the stylised rendering of the Trade Mark including the letter ‘V’ which ‘has been specifically created in the image of a solar panel in the shape of a V’ and the letter ‘A’ which is depicted ‘without cross bar to create a distinctive look’.[21] In the Holder’s opinion, this stylisation ‘has impact which can, of itself distinguish the goods of the [Holder]’ and is consistent with trade marks already on the Register.[22] The Holder further submitted that ‘traders refer to V or VOLTS’, not voltage, to indicate the capacity of an electrical item.[23]

Ordinary signification

[20] Submissions, [32].

[21] Ibid [17].

[22] Ibid [19], [24].

[23] Ibid [33].

1. The Trade Mark consists of the word ‘VOLTAGE’ presented in a stylised manner. ‘VOLTAGE’ may be defined as ‘electromotive force or electric potential expressed in volts’.[24] It describes the capacity of electrical goods and is used to indicate their electric potential or compatibility. The Submissions state that ‘VOLTAGE’ is the ‘rating provided to indicate the amount of voltage that can safely be transmitted by the subject item’.[25] I agree and consider this to be its ordinary signification. As such, ‘VOLTAGE’ simply indicates a characteristic of the various cables, wires and battery items claimed within the Goods.

   [24] Macquarie Dictionary (online at 9 July 2024) ‘Voltage’ (def 1).

   [25] Submissions, [32].

2. The Holder points out that the Trade Mark is not for the plain word ‘VOLTAGE’ and insists that consideration must be given to the alleged impact of the stylised elements. Evidently, the Trade Mark contains a stylised ‘V’ and ‘A’ and it is trite that the Trade Mark must be considered ‘as a total composition’.[26] However, the way these letters have been depicted adds little to the non-distinctive word element of the Trade Mark. The minor replication and segmentation of the internal leading diagonal stroke of the ‘V’ is far from striking. Meanwhile, the impact of the omitted crossbar from the ‘A’, if noticed, is negligible. In my view, the presence of this minimal stylisation does not imbue the Trade Mark with prima facie distinctiveness when considered as a whole. Put differently, the overwhelmingly dominant feature of the Trade Mark remains the word ‘VOLTAGE’ notwithstanding the stylisation.

Other traders

[26] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61] (Dodds-Streeton J).

1. Pursuant to Cantarella, the next step involves determining whether other traders would legitimately desire to use the Trade Mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of their own similar goods and/or services.

2. Here, the Trade Mark consists of the word ‘VOLTAGE’ presented with minimal stylisation. I accept that other traders will not, in good faith, desire to use the Trade Mark in the exact manner applied for. However, I am satisfied that other traders who provide cables, wires and battery goods would legitimately desire to use a mark nearly resembling the Trade Mark, namely the word ‘VOLTAGE’, for its ordinary signification in connection with their own similar goods and/or services.

3. The Holder contends that the Trade Mark is analogous to stylised trade marks already on the Register which incorporate the word ‘VOLTAGE’. In the Holder’s view, it is a ‘nonsense’ to maintain the ground for rejection based on ‘a lack of stylisation in the face of the balance of the marks’ reproduced below:[27]

   [27] Submissions, [24].

   Trade mark:  Hi-Voltage

   Application number:      1199717

   Filing date:  19 September 2007

   Specification:  Class 9: (including) application software; computer software

   Class 42: (including) computer security services (design and development of secure computer hardware, software and systems); development of software

   Trade mark:  

   Application number:      1314552

   Filing date:  12 August 2009

   Specification:  Class 7: (including) machines and machine tools

   Class 9: (including) scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; alarms in this class; batteries

   Class 11: (including) lights and lighting apparatus

   Trade mark:  

   Application number:      1856306

   Filing date:  19 July 2017

   Specification:  Class 9: (including) car batteries; battery chargers; power units (batteries)

   Class 11: (including) LED lighting apparatus; vehicle lights

   Trade mark:  VOLTAGE MI

   Application number:      1963881

   Filing date:  30 October 2018

   Specification:  Class 7: (including) machines and machine tools

   Class 9: (including) electrical amplifiers for use with musical instruments; electric leads for amplifiers; music reproducing apparatus (other than musical instruments)

4. I acknowledge that consistency in decision making within the Trade Marks Office is desirable. However, the probative value of comparing the Trade Mark with the above is limited, especially when reliance is placed on such a small sample size. Be that as it may, each trade mark application must be assessed on its own merits and the state of the Register does not override the application of the long established tests for determining distinctiveness. It follows that the existence of these purportedly analogous trade marks does not alter my view that the Trade Mark is not inherently adapted to distinguish the Goods.

5. In my assessment, the stylised letters endow the Trade Mark with a degree of inherent adaptation to distinguish the Goods. It follows that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Goods. Hence, the Holder’s evidence of use falls for consideration under s 41(4) of the Act.

Evidence of use

1. The evidence shows that there has been no use of the Trade Mark in Australia. The Holder conceded as much at the hearing. Instead, reliance was placed on overseas use of the Trade Mark from December 2021 onwards. This use appears to have been predominantly in the USA and in respect of a confined set of goods in the nature of solar wires and industrial cables. Meanwhile, the evidence reveals that the Holder’s social media and LinkedIn accounts each have a modest following at best.[28]

   [28] Comage Declaration, Exhibits 4, 5.

2. Photographs of the Trade Mark being used at ‘energy industry conferences’ in Germany, Portugal and the USA have also been provided. However, no particulars regarding the reach of these conference including by whom they were frequented has been disclosed. Similarly, no advertising expenditure and turnover figures relating to the use of the Trade Mark overseas have been provided. The absence of such figures makes it difficult to discern the true extent to which the Trade Mark has been used and whether such use has spilled over into Australia.

3. In terms of intended use, the Holder ‘plans to commence use of the Trade Mark in Australia once the obstacle raised’ is overcome.[29] However, no details regarding how the Holder intends to enter the Australian market have been foreshadowed. Thus, its claim amounts to little more than a bare assertion. Likewise, the fact that the Trade Mark has obtained protection in overseas jurisdictions also does not speak to how it intends to use the Trade Mark in Australia.

   [29] Ibid [18].

4. Having regard to the entirety of the evidence together with the extent that the Trade Mark is inherently adapted to distinguish the Goods, the combined effect is not sufficient to satisfy me that the Trade Mark does or will distinguish the Goods as being those of the Holder. Therefore, a ground for rejection under s 41(4) of the Act exists.

Decision

1. Regulation 17A.24 of the Regulations relevantly provides:

   Final decision on examination

   (1)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.

   …

   (3)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.

2. I am satisfied on the balance of probabilities that there is a ground for rejecting the IRDA under s 41(4) of the Act. Accordingly, I reject trade mark 2230928 in accordance with reg 17A.24(3) of the Regulations. 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 IRDA be in accordance with the court’s direction or order.

Nicholas Barbey

Hearing Officer

Delegate of the Registrar of Trade Marks

23 July 2024