Wesbeam Holdings Limited

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2140228 (19) - Colour: blue pantone 3015U - in the name of Wesbeam Holdings Limited

Delegate:	Louise Tuohy
Representation:	Applicant: Megan Evetts of counsel, instructed by Bennett & Co
Decision:	2022 ATMO 116 Trade Marks Act 1995 (Cth) – section 33 proceedings – s 41 – trade mark not capable of distinguishing – evidence not sufficient – trade mark application rejected

Background

1.     This decision follows from an ex parte hearing at the request of Wesbeam Holdings Limited (‘Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’) in relation to the following trade mark application:

Application Number:             2140228

Trade Mark:  

The Trade Mark is a colour mark. It consists of the colour(s) Pantone 3015U as applied to the exterior of the goods covered by the application as shown in the representation(s) attached to the application form. (‘Claimed Trade Mark’)

Filing Date:  2 December 2020

Specification:  Class 19: Laminated veneer lumber (‘LVL’) (‘Designated Goods’)

2. The application was examined as required by s 31 of the Act and grounds for rejection were raised under s 41(3) and s 44 of the Act. The first examination report issued on 11 December 2020 and raised the grounds for rejection as follows:

Section 41(3)

Your trade mark is the colour BLUE.

Colours are commonly applied to goods. For this reason, it is unlikely consumers to assume that colours identify the particular trader supplying the goods. Timber and lumber goods, such as you have claimed, are often colour coded to help identify particular features or qualities of the goods. My research indicates that the colour BLUE is commonly used by a number of traders to indicate that timber has been treated for resistance to termites. As your trade mark indicates a quality or function of your goods, it is not capable of acting as a badge of origin for your goods.

Other traders should be able to use the colour BLUE, or one so similar, in connection with goods or services similar to yours.

Section 44

Trade Mark Number: 700016

Your trade mark closely resembles the earlier trade mark [700016] because both marks claim the colour BLUE. As the earlier mark does not indicate which particular shade of BLUE they are using, there is a real and tangible danger of confusion between the marks.

AND

The goods are similar because the earlier mark's claims for flooring materials and particle board in Class 19 are similar to your claim for laminated veneered lumber also in Class 19.

3.     In support of the application the Applicant made submissions and filed the following declarations:

• Declaration of Jessie Mileto, Owner of BOM Timber, made on 8 February 2021.
• Declaration of Daryl Prothero, Managing Director of Oxley Frame and Truss, made on 8 February 2021.
• Declaration of Bruce Biddle, Trade Manager of Margaret River Mitre 10,…