Wesbeam Holdings Pty Ltd

[2006] ATMO 73

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1012448(19, 35, 37) - E-PURLIN - in the name of Wesbeam Holdings Ltd.

Delegate:	Alison Windsor
Representation:	Applicant:  David Stewart of Minter Ellison Lawyers
Decision:	Section 41 - Application to proceed to acceptance

Background

1. On 23 July 2004, Wesbeam Holdings Ltd filed an application to register the trade mark E-PURLIN for goods and services in three classes as follows:

   Class 19:Timber and timber products in this class including timber building products, such as building timber, manufactured timber, sawn timber and worked timber

   Class 35[1]:        Retail and wholesale of timber products and materials

   Class 37:Building construction services including building services relating to construction and fabrication utilising timber and/or wood products or materials

   [1] The application was originally filed in class 42, the class being corrected after advice from the examiner.

2. The trade mark was examined in the normal course of events, with an adverse report issuing. This report raised grounds for rejection under the provisions of section 41 of the Trade Marks Act 1995 (“the Act”).  The ground stated that the claimed trade mark simply indicated the goods for sale, purlins[2], in combination with the single letter ‘e’.  Such a combination, the examiner said, was likely to be needed by other traders for use in connection with similar goods.

   [2] According to the Macquarie dictionary, a ‘purlin’ is a timber or piece laid horizontally on the principal rafters of a roof to support the common rafters.

3. Following receipt of submissions from the applicant’s agent, a second report issued, written by a different examiner.  This report withdrew the previously stated ground for rejection in respect of class 19, but raised a ground in respect of the services claimed in class 35.  The examiner stated that it was common in respect of services in class 35 to use the letter ‘e’ to refer to electronic goods, or goods available electronically via a computer network. 

4. Following receipt of this report, the applicant asked to be heard.  The request for a hearing advised that the applicant intended to rely on the resulting written decision in order to finalise a number of other trade mark applications which are still under examination because of similar objections to those raised in respect of the instant application. 

5. I heard the matter in Canberra on 16 May 2006.  The applicant was represented by David Stewart, accompanied by Ashleigh Owens, both of Minter Ellison Lawyers.  Mr Barney Naser from the applicant company also attended.  The hearing was held by video conference.

   Submissions

6. The applicant’s submissions during the examination process are summarized as follows:  

   • the applicant had previously registered trade mark number 1012509

   ‘E-BOARD’ for the same goods and services

   • Consistency in decision making in the examination process particularly for a family of marks owned by the same entity is in the public interest
   • The addition of the letter “e” in front of words such as ‘form’, ‘purlin’ or ‘chord’ is an unusual juxtaposition
   • It is very uncommon to associate on-line services with building products or services and therefore unlikely that other traders involved in ‘timber and timber products’ or ‘building construction services’ would want to use these combinations
   • Although the goods claimed can be ordered electronically, the etymology of the mark does not involve the word ‘electronic’, but refers to the word ‘engineered’
   • The applicant expressed its inability to understand why one of its family of trade marks proceeded to registration without objection, while the others were unable to do so.

7. For clarity, I include here a list of the other trade marks the applicant is referring to, indicating their current status.  By the time this application came to be heard, three of the family of ‘e-‘ trade marks had been registered.  They are italicized in the table below.

Application number  and class	Trade mark	Status
1012447 (19,35,37)	E-FORM	Under examination
1012453 (19,35,37)	E-CHORD	Lapsed (advertised 24/8/2006)
1012463 (19,35,37)	E-JOIST	Under examination
1012467 (19,35,37)	E-STRUT	Under examination
1012471 (19,35,37)	E-PLANK	Lapsed (advertised 24/8/2006)
1012476 (19,35,37)	E-STICK	Registered
1012509 (19,35,37)	E-BOARD	Registered
1012532 (19,35,37)	E-BATTEN	Under examination
1012535 (19,35,37)	E-BEAM	Under examination
1035573 (19,35,37)	E-HIP	Lapsed (advertised 10/8/2006)
1035574 (19,35,37)	E-RAFTER	Lapsed (advertised 10/8/2006)
1035575 (19,35,37)	E-SHED	Lapsed (advertised 10/8/2006)
1035576 (19,35,37)	E-HANGER	Lapsed (advertised 10/8/2006)
1056234 (19,35,37)	E-BEARER	Under examination
1056236 (9,16,38,42)	E-HOUSE	Registered
1056363 (19,35,37)	E-LINTEL	Under examination
1104970 (19,35,37)	E-FRAME	Under examination

1. In their submissions at the hearing, the applicant stressed the need for consistency in administrative decision making.  In support of the maintenance of the objection, the examiner had referred to a comment in the British Sugar decision[3] where Justice Jacobs rejected an argument about the state of the Register being support for acceptance of a particular kind of trade mark.  The applicant rejected this argument on the basis that the situations were very different.  In the current situation, they said,

   “the applicant seeks like treatment of the mark ‘E-PURLIN’ following the very recent acceptance of three of a family of marks, all owned by the same entity.  In British Sugar it was stated that the Register does not indicate what is actually happening out in the market and that the court could have no idea what the circumstances were which led the Registrar to put the marks concerned on the Register.  Here, the acceptance of the applicant’s E-HOUSE, E-STICK and E-BOARD marks occurred merely 5, 6 and 16 months ago respectively. The applicant submits that:

   (a)  the short space of time between the registration relied upon and the application for the ‘E-PURLIN’ mark distinguishes the instant case from British Sugar;

   (b)  the short space of time ensures that there is no difference as to what is happening ‘out in the market’ within the space of approximately one year;

   (c)  The short space of time, and the fact that the applicant owns the previously registered marks means that the Examiner can be aware of the ‘circumstances which led the Registrar to put the marks concerned on the Register.’

   The applicant respectively submits that British Sugar does not apply in or alternatively can be distinguished from, these factual circumstances.

   [3] British Sugar plc v James Robertson & Sons [1996] RPC 281 at 305

2. As part of their submissions, the applicant provided evidence of use of the trade mark in respect of the goods in class 19.  The evidence consists of a statutory declaration made by Denis Anglin Cullity, director of the applicant company, with annexes DC1 to DC6.  The evidence goes to show the trade mark in use on the relevant products, as well as its relationship to other members of the family of trade marks and their relevant goods. 

3. It also provides information about competing products in the market, two of which are of particular interest.  These are industry accepted terms, namely Z-PURLIN which refers to a product which has what could be seen as a z-shaped profile, and C-PURLIN, a similar product with a rather square c-shaped profile.   A comment is made that a product with an e-shape would not be appropriate as a purlin, and this comment is understandable when the evidence, showing how the goods are attached within a building roof, is referred to.

4. The applicant submitted that the trade mark ‘e-purlin’ is an invented word, coined by one John Emery of REB Design in or about 23 July 2004.  It is applied to products which the applicant describes as ‘a sub category of Wesbeam engineered LVL (laminated veneer lumber) e-stick roofing products.’  The letter ‘e’, the applicant advises, therefore refers to ‘engineering’, not ‘electronic’.

5. At the Hearing, I invited the applicant to provide me with further information, especially anything relevant to the services claimed in class 35.  On 20 June 2006, I received a second declaration from Mr Cullity with additional examples of the trade mark in use on the goods, as well as information pertinent to the advertising of these goods.

   Consistency in decision making

6. The applicant has put significant weight in its submissions on the question of consistency in administrative decision making.  I am in agreement with the concept – administrative decisions should be consistent if at all possible.  However, in the hypothetical circumstance where a decision was made in error, it would be most inappropriate for any decision maker to perpetuate this error.  Therefore, rather than simply follow the decisions made in respect of the three trade marks which have achieved registration, I consider I must thoroughly investigate the issues raised in respect of this trade mark, to ensure the eventual decision is correct.

7. By making this comment, I am not stating a belief that the three marks referred to were unsound acceptances.  While the contents of all three files are available to me, I do not have access to the complete thought processes of the examiners who examined them.  In order to ensure my decision is sound, it is necessary that I go through a similar thought process to that presumably undertaken by the examiners of the registered marks, taking into account the information which has been provided to me.

   Discussion

8. The relevant section of the Act in this matter is section 41. Section 41 looks at the question of whether a trade mark has the capacity to distinguish one trader’s goods and/or services from the similar goods and/or services of others.

9. A trade mark is capable of distinguishing if it passes the test of not being one that other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their own goods or services[4]. 

   [4]F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 at 555 (the Barrier Cream case)

10. At the time this application came to the hearing, grounds for rejection in terms of section 41 referred to only one class of the three claimed in the application, namely class 35. From this, it can be taken that the examiner was satisfied the trade mark was capable of distinguishing for the goods in class 19, and the services in class 37.

11. However, I am aware that the initial objection raised to this application was in respect of the goods in class 19. It appears appropriate for me to consider this matter, especially since the applicant has notified me that it intends to rely on this decision in putting together arguments to attempt to secure acceptance of a number of its other trade marks. If I can clarify the status of this trade mark in respect of the section 41 issue for all three classes, the applicant will have a better idea of where it stands in respect of the remainder of its ‘family’ of marks.

12. The Trade Marks Office Manual of Practice and Procedure at Part 22, paragraph 14.1, refers to trade marks specifically including the letter ‘e’.  It says:

    With the increasing use and importance of electronic forms of communication, in particular the Internet, to conduct business and advertise goods and services, it has become increasingly commonplace for traders to adopt trade marks featuring the prefix "e". The prefix is commonly understood to mean "electronic" and it is often used, in combination with a word or phrase, to indicate goods which incorporate electronics or electronic technology or services provided by electronic means, that is, online or via the Internet. As such, a trade mark consisting only of the prefix "e" and a word or phrase which has a direct reference to the goods or services claimed will be considered to have little or no inherent adaptation to distinguish.

    Examiners will need to consider if the material in the trade mark, apart from the prefix "e", has any inherent adaptation to distinguish. The presence of the prefix "e" in a trade mark is unlikely to add to the mark's registrability unless it is rendered in a very distinctive way.

    For example, a ground for rejection would be raised against e-toys as a trade mark in respect of a broad claim for class 28 goods as it would be considered to have a reference to electronic toys. Similarly, it would have direct reference if the specified services were the retailing of toys.

    Trade marks such as e-commerce for business services and e-print for printing services will be treated as having no inherent adaptation to distinguish, or insufficient to be capable of distinguishing.

    However, if a trade mark consists of the prefix "e", and a word having no direct reference to the specified goods or services (such as e-magic), or if the reference is allusory (such as e-wonder), then the trade mark will be accepted prima facie under s41(3).

    Examiners should also keep in mind that single letters are not usually considered to be inherently adapted to distinguish. Adding a descriptive word to a single letter is unlikely to add sufficient adaptation to distinguish to allow prima facie acceptance whether the letter is an "e" or any other letter.

13. The first examiner’s report relied on the final paragraph above in formulating the grounds for rejection.  The examiner did not specify the classes to which the ground for rejection was applicable, but from the wording she used, it appears to refer only to the goods in class 19.  The examiner did specify that she considered the combination of the letter ‘e’ and the word ‘purlin’ to be one which other traders should be able to use in connection with similar goods and services.  She invited the applicant to provide evidence of use to support its trade mark.

14. Following the applicant’s submissions in response, a second report issued.  This report specifically took note of the applicant’s following comment:

    In any event, it is extremely unusual that traders would use the letter ‘E’ in front of words like ‘FORM’, ‘PURLIN’ or ‘CHORD’.  It is very uncommon to associate on-line service with building products or services.  It is therefore equally unlikely that other traders involved in ‘timber and timber products’ or ‘building construction services’ would want to use unique combination of elements forming such marks as ‘E-FORM’, ‘E-PURLIN’ or ‘E-CHORD’. This is evidenced by the fact that no other traders opposed our client’s trade mark registration for ‘E-BOARD’ during its period of advertisement.

15. The examiner withdrew the grounds for rejection in respect of class 19.  However, she then raised grounds for rejection against class 35, presumably on the basis of the wording at the end of the first part of paragraph 14.1 quoted above:  “a trade mark consisting only of the prefix "e" and a word or phrase which has a direct reference to the goods or services claimed will be considered to have little or no inherent adaptation to distinguish.”

16. I am satisfied that the ground for rejection in respect of section 35 is simply incorrect.  The guideline specifies, in respect of services, that a ground for rejection exists if the trade mark consists only of the prefix "e" and a word or phrase which has a direct reference to the services claimed.  The services are retailing and wholesaling of products.  I do not consider it important for this exercise what the products are.  While the expression claimed as a trade mark includes a term descriptive of the particular products sold, it is not descriptive of the services.  Terms such as ‘e-sale’ or ‘e-buy’ would attract the ground for rejection.  I do not believe the applicant’s term, ‘e-purlin’, fits into this category.  I am satisfied no ground for rejection exists in respect of the applicant’s claimed services in class 35.

17. What remains to be decided is whether E-PURLIN is capable of distinguishing the applicant’s goods in class 19 and services in class 37. 

18. I am satisfied there is no ground for rejection appropriate to class 37. The term E-PURLIN is not one that other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their own building construction services. While it may consist of a word descriptive of certain goods (‘purlin’) and a single letter ‘e’, I am satisfied that in respect of the class 37 services it has sufficient inherent adaptation to distinguish to meet the requirements of section 41(3).

19. In respect of the goods in class 19, the position of the trade mark is not so clear.  The guidelines in the manual advise the examiner that single letters are not usually considered to be inherently adapted to distinguish, and adding a descriptive word to a single letter is unlikely to create a trade mark with sufficient adaptation to distinguish to allow prima facie acceptance, whether the letter is an "e" or any other letter.

20. What is important to note here is the wording of the guideline.  It says “adding a descriptive word to a single letter is unlikely to add sufficient adaptation to distinguish to allow prima facie acceptance ….”.  Use of the phrase “is unlikely” allows for a degree of flexibility in the way word constructions of this nature are viewed, and thus some flexibility in deciding on their degree of inherent adaptation to distinguish.  On one hand, if the single letter is highly stylized, it will add a significant amount of capacity to distinguish to a descriptive word.  On the other, a simple letter ‘a’ for instance, will add nothing to the construction.  (‘A’ is simply the indefinite article referring to a single member of the class of words immediately following, setting up a construction such as ‘a purlin’.)  Neither the letter ‘z’ or ‘c’ will add anything to the word ‘purlin’, as these two letters are in use in the trade as descriptive adjuncts to that word.

21. However, the letter ‘e’ does not have any particular connotation for goods in class 19.  Adding it to a word descriptive of a piece of building material does add something to the construction.  The question is whether it adds enough so that the trade mark as a whole is sufficiently inherently adapted to distinguish such that it is prima facie acceptable for possible registration.

22. The examiner’s original ground for rejection said that the combination of letter and word was one which other traders should be able to use for their similar goods.  I am not satisfied that other traders need to be able to add the letter ‘e’ to their product names in this particular field.  The situation may be different for goods in other trades, and would certainly be different for those goods where electronic operation is the norm.  But in respect of this particular trade mark, I consider the trade mark E-PURLIN has just sufficient inherent adaptation to distinguish the applicant’s class 19 goods from those of other traders in the same field. 

    Decision

23. I find there are no grounds for rejection applicable to any of the three classes claimed in this application.  Therefore, I will accept trade mark application 1012448 for possible registration.

    Alison Windsor
    Hearings Officer
    Trade Marks Hearings
    IP Australia
    9 August 2006