Wendy Grey Reid

[2017] ATMO 144

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1801947(11) - LAMPSHADE WITH STITCHES - in the name of Wendy Grey Reid.

Delegate:	Jock McDonagh
Representation:	Applicant: Self represented (via video)
Decision:	2017 ATMO 144 Trade Marks Act 1995 - section 38 – whether application should not have been accepted – trade mark not inherently adapted to distinguish the applied-for goods – whether reasonable to revoke acceptance – acceptance revoked – application returned to examination.

Background

1. This decision is pursuant to section 38 of the Trade Marks Act 1995 (‘the Act’).  It arises from the Registrar of Trade Marks’ intention to revoke acceptance of trade mark application 1801947 (‘the Application’) in the name of Wendy Grey Reid (‘the Applicant’), relevant details of which are below.

Priority Date:	11 October 2016
Goods:	Class 11: Bedside lamps; Electric lamps; Electrical lamps; Electrical lamps for indoor lighting; Electrical lamps for outdoor lighting; Filters for use with lamps; Halogen lamps; Hanging ceiling lamps; Hanging lamps; Incandescent lamps; LED lamps; Lamp fittings; Lamp shades; Lamp standards; Lamps; Lamps for festive decoration; Lamps for lighting purposes; Lampshade holders; Lampstands; Lighting lamps; Lights for incandescent lamps; Pedestal lamps; Reading lamps; Shades for lamps; Spot lamps; Spot lamps for household illumination; Standard lamps; Standing lamps; Studio lamps; Table lamps; Wall lamps; Washstand lamps; Apparatus for lighting; Apparatus for lighting for use in bathrooms; Apparatus for lighting for use in kitchens; Apparatus for lighting powered by electricity; Bulkhead lights; Ceiling light fittings; Ceiling lights; Cord pendants (light fittings); Decorative electric lighting apparatus; Decorative electric lighting apparatus for use in patios; Decorative electric lighting installations; Decorative lighting sets; Decorative lights; Desk lights; Dome lights; Electric apparatus for lighting; Electric indoor lighting apparatus; Electric indoor lighting installations; Electric lanterns for lighting purposes; Electric light fittings; Electric lighting apparatus; Electric lighting fittings; Electric lighting installations; Electric lighting installations for exterior use; Electric lighting installations for interior use; Electric lights; Electric lights for festive decorations; Electrical appliances for lighting; Electrical lighting fixtures; Filters for lighting apparatus; Filters for lighting appliances; Filters for use with lighting apparatus; Fittings for wall lights (other than switches); Flange light fittings; Incandescent lighting fixtures; Indoor electrical lighting fixtures; Installations for electric lighting; Installations for lighting; LED lighting apparatus; Lanterns for lighting; Light assemblies; Light diffusers; Light filters (other than for medical or photographic use); Light fittings; Light hanging apparatus; Light installations; Light shades; Lighting apparatus for architecture; Lighting apparatus for installation as an integral part of kitchen furniture; Lighting elements; Lighting fixtures; Lighting fixtures for commercial use; Lighting fixtures for household use; Lighting installations; Lighting ornaments (fittings); Lighting units; Lights; Lights for ceiling mounting; Lights for track mounting; Lights for wall mounting; Outdoor lighting; Outdoor lighting fittings; Screens for directing light; Shades for lighting apparatus; Shades for lighting installations; Spot lights; Spot lights for household illumination; Wall lights (‘the Goods’)
Trade Mark:	(‘the Trade Mark’)	(‘the additional marks’)

1. The Application was examined as required by section 31 of the Act and, aside from the additional marks being removed from the application, no formal ground for rejection was raised.

2. I note that the additional marks were each the subject of a trade mark application (1819526 and 1819529) in Class 11, lamp shades, and filed on 9 January 2017. Both are subject to adverse reports in the examination process with section 41(3) grounds for rejection raised by the Examiner.

3. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 9 March 2017. 

4. However, on 8 May 2017 and after an internal review of the Application, a delegate of the Registrar issued a Notification of Proposal to Revoke Acceptance (‘the Notification’) which relevantly stated:

   Trade mark application 1801947 was advertised as accepted in the Official Journal of Trade Marks on 9 March 2017. However, it has now come to my attention that the trade mark should not have been accepted.

   A distinctiveness issue was not raised at the time of examination under Section 41(3) of the Trade Marks Act (1995) (Cth). The trade mark comprises of a series of cross shaped stitches applied to the side of a lampshade. This is a commonplace design feature of the goods claimed in your application. This can also be a functional aspect resulting from the manufacturing process of such goods. Other traders should be able to use this, or something nearly resembling this, in connection with goods similar to yours.

   Furthermore, an amendment to the image of the trade mark was processed without a written request from you in the appropriate form under section 65 of the Act. This will also need to be rectified.

   Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance in accordance with section 38 of the Trade Marks Act 1995.

5. The Applicant requested to be heard.  A hearing then took place in Canberra by way of video link on 24 August 2017 before me, a delegate of the Registrar.  Ms Wendy Reid, the Applicant, represented herself.  Prior to the hearing the Applicant filed written submissions in support of the Application.

6. It should be noted that the video link was at times technically unsatisfactory, with the audio in particular being occasionally broken and unintelligible. I am satisfied that with the assistance of the Applicant’s written submissions I was able to receive the basis of the Applicant’s position. I was able to explain the process being undertaken and the effect of revocation to the Applicant.

Discussion

1. Section 38 of the Act provides:

   38Revocation of acceptance

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)it is reasonable to revoke the acceptance, taking account of all the circumstances.

   (2)If the Registrar revokes the acceptance:

   (a)the application is taken to have never been accepted; and

   (b)the Registrar must examine, and report on, the application as necessary under section 31; and

   (c)sections 33 and 34 again apply in relation to the application.

2. As a preliminary matter, I note that the application of section 38 is discretionary (that is: “…the Registrar may revoke the acceptance…”).

3. The provisions of section 38 require that both limbs of the test (i.e. ss 1(a) and 1(b)) must be satisfied before the Registrar of Trade Marks may revoke acceptance[1]. For the avoidance of doubt, I would also add that these elements must be satisfied before the Registrar issues a letter of intention to revoke.

   [1] Globalscope Pty Ltd [2016] ATMO 14

4. Guidance provided in the Trade Marks Office Manual of Practice and Procedure (“the Manual”)[2]:

   The information must support a conclusion that it is reasonable to revoke acceptance taking into account all the relevant circumstances.

   [2] At Part 38.2.3

5. With the above principles in mind, I turn to the issue under section Section 38(1)(a).

6. The Notification states that:

   ‘[a] distinctiveness issue was not raised at the time of examination under Section 41(3) of [the Act]. The trade mark comprises of a series of cross shaped stitches applied to the side of a lampshade. This is a commonplace design feature of the goods claimed in your application. This can also be a functional aspect resulting from the manufacturing process of such goods. Other traders should be able to use this, or something nearly resembling this, in connection with goods similar to yours.’

7. Section 41 relevantly 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.

   …

   (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)…

8. Section 41 must be assessed having regard to section 33 of the Act, which embodies a so-called ‘presumption of registrability’.[3]  Accordingly the Registrar must accept the application, including in circumstances where the Registrar is equally unsure as to whether or not the Trade Mark is capable of distinguishing, unless satisfied the ground for rejection exists.

   [3] Amendments were made to the Act to clarify that the presumption applies to section 41: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), s 113.

9. In Clark Equipment Co v Registrar of Trade Marks (‘Clark’)[4] Kitto J stated that whether a trade mark is adapted to distinguish 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.

   [4] [1964] HCA 55; (1964) 111 CLR 511, 514.

10. While Clark refers to the use of words as trade marks, the principle is still applicable to other types of trade marks.

11. The Trade Mark is, or has as its main feature, a vertical row of cross-stitching along what appears to be the join, or seam, of a lampshade.

12. It appears to me, and I consider that it should also have appeared to the original trade mark examiner, that it is likely that lampshades would feature a row, or rows, of stitches along a seam in order to join the ends of material used to create a lampshade. A cross-stitch is likely to be an appropriate and common form of stitching for sewing seams.  Other traders should be able to use a row of cross-stitches in connection with goods similar to the Applicant’s.

13. I also note that, as mentioned in [3] above, the Applicant’s additional marks (1819526 and 1819529 in Class 11, lamp shades) were subject to adverse reports. The applications also involved forms of stitching on lampshades, which formed the basis of the adverse reports.

14. The Applicant’s submissions are essentially that the Applicant has been selling these type of lampshades for over 10 years and the Applicant has made significant sales of lampshades during this time. The Applicant stressed that the stitching is non-functional and is used merely to distinguish the Applicant’s lampshades and other relevant goods from those of other traders.

15. Without evidence to the contrary, I consider that upon seeing the Trade Mark in respect of the goods applied for, an average consumer would perceive the Trade Mark merely as functional stitching on the goods. The relevant consumers are likely to be exposed to the use of designs similar to the Trade Mark by different undertakings on their products as functional stitching that do not indicate a particular trade origin. I do not find it likely that, without first being educated, the relevant consumers would rely on the mark alone to identify a particular undertaking from which the goods originate.

16. I also consider that it would be appropriate for the Trade Mark to be reexamined alongside the additional marks to allow the Applicant to deal with the similar objections at the same time.

17. I am satisfied that the grounds for revoking the Trade Mark have been made out and I am satisfied that the trade mark should not have been accepted and it is reasonable in the circumstances to revoke the acceptance of the Trade Mark.  I am returning the Trade Mark to examination where the Applicant will get a further 15 months in which to deal with it.

Jock McDonagh
Hearing Officer
Trade Marks and Designs Oppositions and Hearings
22 November 2017