VTech Communications (Australia) Pty Ltd

[2010] ATMO 124

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1336685(9) - DECT LONG RANGE 360 and device- in the name of VTech Telecommunications (Australia) Pty Limited.

Delegate:

Alison Windsor

Decision on the written record

Decision:

2010 ATMO 124

Section 41: grounds for rejection under subsection 41(5) – trade mark to some extent inherently adapted to distinguish – no evidence of use provided - application rejected

Background

1. VTech Telecommunications (Australia) Pty Limited (‘the applicant’) filed an application to register the following trade mark: 

1. The application was filed on 11 December 2009, for the following goods in class 9 of the Nice classification system:

   Wireless telecommunications apparatus and equipment; cordless telecommunication apparatus and equipment; telecommunication apparatus and equipment; broadband data and voice modems; broadband data and voice gateways; voice-over IP apparatus and equipment; electrical, electronical, optical, measuring-, signalling, control- or teaching apparatus and instruments included in class 9; apparatus for recording, transmitting, processing and reproduction of sound, pictures or data; computer and data processing apparatus and parts and fittings for the aforesaid goods; laptops and parts and fittings for the aforesaid goods; apparatus for navigation, namely GPS-apparatus; interactive, electronical, user focused software on data recording media and hardware, included in class 9, for its application; software for archiving of data, included in class 9

2. The trade mark application was accompanied by a request that its examination be expedited. Examination as required by section 31 of the Trade Marks Act 1995 (‘the Act’) followed, and the first official report issued on 14 January 2010.

3. The first report raised a ground for rejection under the provisions of subsection 41(5) of the Act, in the following terms:

   Your trade mark consists of DECT 360 LONG RANGE.

   DECT may be defined as: Digital Enhanced Cordless Technology/ Telecommunications and is extraordinarily common in relation to the goods claimed.

   360 commonly refers to the scope of a product (ie 360°) and is not considered distinctive in relation to the goods claimed.

   LONG RANGE may be defined as: designed to cover or operate over a long distance.

   Therefore, as a whole this indicates that the telecommunications products provided contain specific technology and have certain capabilities in relation to their coverage.

   Other traders should be able to use DECT 360 LONG RANGE in connection with goods or services similar to yours.

   Please note the inclusion of a simple disc element that is very common to many marketplaces is not significant enough to alter the nature of your trade mark when viewed as a whole.  This is because despite including this additional element the main feature of your trade mark remains the descriptive word elements DECT 360 LONG RANGE.

4. The report also made references to some minor classification matters (which are not relevant to the section 41 ground for rejection) and advised the applicant that the ground for rejection could be addressed via the provision of evidence of use. In respect of the evidence of use, the examiner said:

   Due to the nature of the trade mark you will need to provide substantial, persuasive evidence of use before your trade mark can be accepted.

5. The applicant responded to the first official report via its legal representative and disputed the examiner’s assessment of the trade mark, claiming that when the applicant’s trade mark is viewed as a whole, it is sufficiently distinctive to be registrable and therefore the ground for rejection should be withdrawn. 

6. In the second official report, the examiner disagreed with the legal representative’s assessment of the trade mark and maintained the ground for rejection.  She again suggested the provision of evidence of use in order to establish that the trade mark had a capacity to distinguish.

7. The representative responded again in similar terms to his previous letter. 

8. The next response from the examination section was a Notice of Intention to Reject the trade mark application.  This notice gave the applicant a number of options, one of which was to request a decision on the written record, which the applicant did in a letter dated 16 July 2010.

9. I have been delegated by the Registrar to consider this matter and decide it on the basis of the material present on the application file.  My reasons and ultimate decision follow.

Section 41 – Trade mark not distinguishing applicant’s goods or services

1. The only ground of rejection to be considered in this case is that provided by section 41 of the Act. It is appropriate that I consider the operation of this section of the Act in detail.

2. Section 41 works hand in hand, so to speak, with section 33 of the Act, which governs acceptance or rejection of applications and provides:

   Section 33. 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.

3. Section 41 is quite a lengthy section which, in its six subsections, provides a degree of detail which is necessary and appropriate for the operation of the section. Section 41 has been considered in a number of decisions from the courts since the Act came into force on 1 January 1996.

4. Justice Branson’s decision in the Oregon case provided the first analysis of the operation of section 41. Her comments have been referred to and approved by members of the judiciary in a number of subsequent decisions, some of which I will refer to as I discuss this case. Her comments have been summarised in the Trade Marks Examiner’s Manual at Part 22, paragraph 3.1, and I set out that summary here as a useful substitute for a bald quotation of the provisions of the section:

   ·     The primary consideration under both the 1995 Act and the 1955 Act is the extent to which the trade mark is inherently adapted to distinguish.  Branson J sees no reason to think that the expression "inherently adapted to distinguish the designated goods from the goods of other persons" is not intended to be understood in the light of decisions under the 1955 Act and comparable UK legislation which include references to inherent adaptability.

   ·     The test for adaptation to distinguish set out in the Michigan case, that is, "the likelihood that other persons trading in goods of the relevant kind, and being actuated only by proper motives … will think of the word and want to use it in connection with similar goods" is entirely appropriate for use under the Trade Marks Act 1995.

   ·     Having taken into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods or services of other persons the Registrar may conclude:

   (a)that the trade mark is sufficiently inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services [ie there is no ground for rejection pursuant to s41(2)]; or

   (b)that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but the examiner is unable to decide, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services [the provisions of paragraphs (a), (b) and (c) of s41(5) are then brought into operation]; or

   (c)that 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; [the provisions of paragraphs (a) and (b) of s41(6) are then brought into operation].

   · If the Registrar reaches conclusions (b) or (c), he or she is within the meaning of s41(4) "unable to decide the question". This might be taken as being undecided whether or not there is a ground for rejection under s41(2) but, as Branson J concludes, this state of being undecided does not mean that the application must be accepted in terms of s33(1). The question of whether the trade mark is to be taken as capable of distinguishing the designated goods or services from the goods or services of other persons must be decided by applying the provisions of either subsection (5) or (6).

   · Subsection (5) has the effect that an application must be rejected pursuant to s41 (2) unless the Registrar, after considering the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s41(5), is "satisfied" that the trade mark does or will distinguish the designated goods as being those of the applicant (see paragraph 3.5 on the meaning of "satisfied").

   ·     Subsection (6) has the effect that an application must be rejected unless the applicant is able to "establish" by placing before the decision maker material which establishes that, because of its use of the trade mark before the date of filing, the trade mark does distinguish its goods or services from those of other persons.  This is entirely a matter of fact and does not involve consideration of the likelihood of the word being one which other traders are likely to require to use.

5. Both sections 33 and 41 of the Act refer to the Registrar being ‘satisfied’. In Oregon at page 504 Branson J makes the following comments in regard to the Registrar being ‘satisfied’

   Each of ss 33(1) and 41 involves the concept of the registrar being “satisfied”. Where the Act requires the registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities: Rejfek v McElroy (1965) 112 CLR 517 at 521. That is, that the registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probably than not.

6. The applicant has disputed the relevance of the Oregon decision to its case, claiming that the ‘presumption of registrability’ applies to the application and that the application should have been accepted under the provisions of subsection 41(2).  In support of this contention, the applicant referred to the trade mark in the Kenman Kandy decision[1] which was accepted under that subsection of the Act. The applicant made specific reference to Justice Sundberg’s decision in respect of Chocolaterie Guylian N.V. v Registrar of Trade Marks 82 IPR 13 stating that “Sundberg J pointed out that in the cases of inherent distinctiveness under section 41(2) of the Act, the Registrar needed to be “clearly satisfied” that the trade mark was not sufficiently distinctive to be registrable before refusing registration of the mark”.

   [1] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, 56 IPR 30

7. I do not agree with the applicant’s understanding of Justice Sundberg’s comments in that particular case, which was an appeal from one of my own decisions.  Dealing first with the matter of the ‘presumption of registrability’, Sundberg J said the following

   In Blount 83 FCR at 58C, Branson J took the view that the question under s 41(2) whether a mark is capable of distinguishing is “governed entirely” by subss 41(3) – (6). Accordingly, her Honour considered that it is not the case, as might be expected from the terms of s 33, that the Registrar must accept an application if he or she is uncertain whether the mark is capable of distinguishing an applicant’s goods.

8. After considering the Kenman Kandy decision, which involved an application for the registration of a shape trade mark, and where “the only ground of possible rejection was s 41(2)”, he went on to say:

   There is a tension between the operation of the presumption and the text and structure of s.41. Section 41(3) required the Registrar to “take into account” the extent to which a mark is inherently adapted to distinguish in deciding whether or not it is “capable of distinguishing” the applicant’s goods. Section 41(4) then directs the decision-maker to subs 41(5) and subs 41(6), if they are “still unable to decide the question”. Section 41(5) will be applicable if there is a finding that the mark is to some extent inherently adapted, but the Registrar is “unable to decide, on that basis alone, that the mark is capable of … distinguishing”. Accordingly, where there remains some doubt after considering s 41(3) about a mark’s capability to distinguish, rather than resolving that doubt in favour of an applicant (by operation of a presumption), the statute expressly directs the decision-maker to consider the criteria in subs 41(5) or subs 41(6) (whichever is applicable).

9. After some further comments specific to the case under consideration, Justice Sundberg continued:

   Sections 41(3)-(6) contemplate that there are degrees to which a mark might be inherently adapted to distinguish:. The ultimate question under s 41(3) is whether the mark is inherently adapted to a sufficient degree to conclude that it is “capable of distinguishing”. In my view, the effect of the presumption of registrability on s 41(3) is that, in considering whether a mark is capable of distinguishing by reason of the “inherently adapted” criteria, it should be presumed that the mark is sufficiently adapted unless the Registrar is satisfied otherwise on the balance of probabilities. If the Registrar is otherwise satisfied, then he or she will be “unable to decide the question” (see s 41(4)) whether the mark is capable of distinguishing on the basis of any inherent adaptation alone, and must then proceed to consider s 41(5) or (6). Under those provisions, the presumption no longer has any operation, as the applicant is then required to either “satisfy” the Registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria set out therein is met. (Emphasis added.)

10. In respect of the standard of proof required of the Registrar when refusing to register a trade mark, Justice Sundberg discussed the authorities, including Lomas[2] (on which the applicant relied), and made the following comments:

    In my view, there is nothing in the relevant provisions that supports the imposition of a higher standard, even at the acceptance stage. The “presumption of registrability” arises from s 33 of the Act: … Section 33 does not speak of being “clearly satisfied”; it mandates acceptance of an application unless the Registrar “is satisfied that … that there are grounds for rejecting it”. On this point, I prefer the views expressed by Gyles J and in particular his honour’s observations that an acceptance that there is a presumption of registrability “says nothing as to the standard of proof” and does not import a higher threshold than the conventional balance of probabilities: see Pfizer (2006) 70 IPR 599 at [18]

    [2] Lomas v Winton Shire Council (2003) AIPC 91-839

11. In a more recent decision, Sports Warehouse[3], Justice Kenny agreed with Sundberg J in respect of both the standard of proof required, and the operation of section 41 of the Act. From this it is clear that the examiner at the time of examination was correct in raising a ground for rejection and applying the provisions of subsection 41(5) because she was satisfied that the applicant’s trade mark was not, prima facie, inherently adapted to distinguish the applicant’s goods from the goods of other traders.

    [3] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664

The ground for rejection

1. The examiner objected to the trade mark because she considered that the combination of features did not create a trade mark which was inherently adapted to distinguish – that is, despite there being a number of features in the trade mark, the combination formed a trade mark which clearly fitted the tests put forward by Kitto J in the Michigan case[4]:

   The applicant's chance of success in this respect (ie. 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 connection with their own goods

   [4] Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 at 513

2. The trade mark consists of a number of features, and for convenience, I show it again below:

3. While a trade mark should be considered as a whole and ultimate rights, should it be registered, reside in the whole combination, it is entirely appropriate to consider those parts which, when put together, make up the trade mark. Combining a number of items into one whole does not always result in a trade mark which is inherently adapted to distinguish. If this is the case, then the provisions of section 41(5) or 41(6) are available to the applicant to demonstrate the trade mark’s adaptation to distinguish.

4. In this case, the examiner researched the components of the trade mark and identified that the letters DECT are an acronym for the expressions ‘Digital Enhanced Cordless Technology’ or ‘Digital Enhanced Cordless Telecommunications’.  The research on the file, which I have confirmed by repeating a similar search via Google®, points to goods which operate via the DECT system being commonly available in the Australian marketplace.  Various sites on the Internet note that DECT is a standard for cordless telephones, originally developed in Europe, but now available almost worldwide.  Restricting the Google® search to retrieve only Australian sites demonstrates that cordless telephones using the DECT standard are freely available in Australia through a range of outlets.   

5. The remainder of the wording in the trade mark consists of a descriptive term – ‘long range’ – and the number 360.  ‘Long range’ has a transparent meaning both in isolation and when used with the term DECT.  It would not be unreasonable to assume that the number in the trade mark refers to a 360 degree coverage for the telephone system, that is, one which is receivable anywhere, and is not restricted to ‘line of sight’ of a transmitter/receiver.  When it is all put together, I am satisfied that the trade mark makes a definite reference to various characteristics of the goods the applicant is dealing in.  These references are such that other traders are likely to wish to describe their telephone equipment as ‘DECT long range 360’ or ‘DECT 360 long range’, with the reasonable assumption that the expression means ‘DECT long range telephone system with 360°coverage’.[5]

   [5] I note that the number 360 may have different connotations, such as a model number or other identifier.  I consider that it is as likely as not to be seen as I have seen it in the context of the trade mark as a whole.

6. Because of the descriptive nature of the most prominent parts of the trade mark, that is, those parts by which the trade mark will be identified and recalled, I am not satisfied that the trade mark, viewed as a whole, is inherently adapted to distinguish the applicant’s goods. However, it is not completely devoid of adaptation to distinguish. The trade mark as a whole, consisting of descriptive words in varying type sizes with the addition of a number and an offset black disc behind the number, has some adaptation to distinguish. The provisions of subsection 41(5) therefore apply and the onus now shifts to the applicant to provide supporting information to assist the Registrar in making her decision.

1. The examiner suggested that the applicant might consider providing evidence of use, intended use or information about other relevant circumstances which could be used to support the applicant’s case.  I agree with the examiner’s assessment of this trade mark, and consider that it could only progress if there had been additional material provided to assist me in deciding the issue.  The applicant, however, has chosen not to provide evidence of any kind, but to persist with the arguments which I have referred to previously.  

2. Without evidentiary support and as I am in the position of being ‘unable to decide the question’, there is nothing available to assist me in making my decision. Therefore, I am satisfied that there is a ground for rejection under the provisions of section 41 still relevant to this application.

Decision

1. I am satisfied that grounds for rejection under the provisions of subsection 41(5) apply to this application. Therefore, as required by the provisions of subsection 33(3), I reject the application.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

15 December 2010