Case Notes, s 41 TMA - adapted to distinguish?

Name of one of Burkina Faso’s 45 provinces rejected under s 41 TMA because it is a geographic location

Mantra IP Pty Ltd [2017] ATMO 10 (7 February 2017)

Registration sought for the mark BALÉ in respect of various services in classes 39 and 43 relating to holiday reservations, travel and accommodation services.

Opposed pursuant to s 41 TMA on the grounds that the mark is a geographic indicator.

Bale is the name of geographic locations in Croatia and Ethiopia.   Balé is the name of one of the 45 provinces of Burkina Faso which, according to the hearing officer (who appears to have relied on his own Wikipedia searches) is “known for its Deux Balé Forest which is populated by savannah elephant herds“.

Here are some Deux Balé Forest elephants:



The Applicant submitted that “the Registrar can reasonably infer, by virtue of the relative obscurity of this province to an Australian audience, that the number of travellers who would be interested in a holiday would be an extraordinarily small subset of the relevant consumer base.”

It continued “that the number of Australians visiting Balé, Burkina Faso, and therefore the number of consumers who would understand the ordinary signification of the mark to mean ‘Balé, Burkina Faso’, would be very low. The Applicant, a large and sophisticated hotel operator, was not aware of the place until the Hearing Officer brought it to our attention. We were not aware either, and neither was the original examiner. It is submitted it is not a well-known destination for Australians.”

While acknowledging that the applicant’s submissions “have their appeal“, the HO was unpersuaded.  He accepted “that it would be absurd for every geographical location to be held to lack inherent adaptation to distinguish tourism services is persuasive” and that “at this time, Balé is seemingly unknown as a destination for tourists.”

But concluded:

“However, to paraphrase the words of Kitto J from Clark Equipment … if it is reasonable to suppose that tourism services may be provided in connection with Balé in the future, the Trade Mark cannot be considered to distinguish the Amended Services from the services of other traders. I am satisfied that such an assumption is reasonable, and on that basis the Trade Mark is not to any extent adapted to distinguish the Amended Services and, therefore, a ground for rejecting the application exists under s 41.”

The basis for this conclusion seems to be the HO’s reasoning that:

“Africa is a well-known destination for wildlife tourism. Of especial interest to some tourists are ‘the Big Five’ which is a set of five different African animals, one of which is elephants. It is reasonable to suppose that, if it is not already, in the future Balé may well become a recognised destination for those people hoping to catch a glimpse of the elephants that live there. Should this occur, the ordinary signification of Balé, to persons wishing to travel to Africa to see elephants, is that Balé is a geographical location where elephants can be seen.”

The Applicant’s contentions that the mark had acquired distinctiveness were also unsuccessful.

The application was rejected.

Case Notes, s 41 TMA - adapted to distinguish?

Simple ≠ generic – Apple Inc [2015] ATMO 25

If you have more than two people living in your house you probably have multiple Apple devices half of which use the old plug and half the new.  Well, it’s the old plug we’re interested in here – it looks like this:

™ 1480025

Apple applied to register this as a trade mark in relation to electrical connectors and so forth in early 2012 (with a Convention priority date of 11 July 2011).

The examiner raised a ground of objection under s 41(5) as it stood at the relevant time.  After five adverse reports, Apple sought a hearing. You can find the decision here.

The hearing officer considered that the examiner had incorrectly relied, at least in part, on the view that “the more ‘simple’ a trade mark is, the more likely it is that another trader would, actuated only by proper motives, require to use that trade mark.”

He said:

I do not consider that this necessarily holds true and does not address the real issue which is enunciating why another trader, actuated only by proper motives, would need to use the Trade Mark. Simplicity is often the essence of a good trade mark. To drawn an analogy, the word trade mark OXO, used in relation to beef cubes or beef concentrate for cookery, is obviously an extremely simple, yet effective, trade mark – it contains oblique reference to the nature of the goods, it is a palindrome and may even be inverted or read in a reflection and yet it still reads OXO. Obviously, that trade mark is very simple but its simplicity does not prevent it acting as a very effective trade mark.

The hearing officer considered that it is not obvious why other traders would, without improper motive, need to use the Trade Mark on their similar goods and therefore took the view that s 41(5) was the appropriate sub-section to apply.  (Note the use of the word “need” here – consistent with the majority of the High Court in Cantarella and different from earlier authority that used “want” or desire”).

The use of the mark by the relevant date was very significant (as you can imagine) and there was survey evidence which showed that 32% of consumers identified the mark as being associated with Apple.  The hearing officer considered this to be sufficient to support registration pursuant to s 41(5).  The mark was accepted for possible registration.

Case Notes, s 41 TMA - adapted to distinguish?

AUSTRALIA’S CHEAPEST CHEMIST Trade Mark invalid – first FCA application of Cantarella

In the first application of the High Court’s decision in Cantarella Bros v Modena Trading [2014] HCA 48 (Cantarella) by the Federal Court, Justice Middleton has found that the trade mark depicted below, which was registered in respect of “Retailing, online retailing and mail ordering services; all relating to pharmacies” in class 35 and “Medical, hygienic, beauty care services all relating to pharmacies; all of the foregoing being pharmacy advisory and pharmacy dispensary services” in class 44 is invalid.

Australia's Cheapest Chemist TMThe trade mark was registered without limitation as to colour and was therefore registered for all colours: s 70 TMA.

The owners of the mark accepted that it was only to some extent adapted to distinguish the relevant services.  Sub-sections (5) and (6) of the former s 41 of the TMA were therefore applicable.

On the question of inherent adaptation, Middleton J cited the question posed by Stone J in Kenman Kandy:

[161]…the question is whether if the [appellant’s mark] were to be registered as a trade mark, other persons trading in [the same market] and ‘being actuated only by proper motives’ would think of this [mark, or a sign that is substantially identical with, or deceptively similar to, the mark] and want to use it in connection with their goods in any manner that would infringe the appellant’s trade mark.

His Honour pointed out that Justice Stone then articulated a “subsidiary and difficult question” when the mark “has associations that deprive it of the inherent capacity to distinguish.”

In this case, the three dominant words AUSTRALIA’S CHEAPEST CHEMIST signify geographic location, price and nature of the business, respectively.  His Honour considered that these words, considered either separately or combined, did not have the required distinctiveness.  The addition of the prefix “Is this?” did not assist.  His Honour concluded therefore that the trade mark was not at all inherently adapted to distinguish.  This conclusion sits comfortably with the High Court’s view, expressed in Cantarella, that words having a “direct reference” to the relevant goods or services are “prima facie not registrable”.

Section 41(6) was therefore applicable and his Honour found that the mark was not distinctive in fact as at the filing date.

The registration of the mark was therefore invalid.

Although Cantarella was referred to by his Honour in setting out the principles relevant to the question of inherent adaptation to distinguish, he did not refer to it again in the context of application to the facts in the case.  This is unusual but is perhaps explicable on the basis that Cantarella was decided after Middleton J had reserved and, in any event, his Honour was of the view that “the proper test for assessing the inherent capacity of the registered trade mark … still remains that articulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511″ and that the High Court in Cantarella had “recently endorsed this test.”

s 41 TMA - adapted to distinguish?

Section 41 and Cantarella: Are there new rules on inherent adaptation to distinguish?

Capacity to distinguish an applicant’s goods or services from those of other traders is a prerequisite to registration of a trade mark.  Section 41 of the Trade Marks Act (1995) (Cth) (TMA) provides the legislative framework for determining whether this criterion is met.  This provision was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act (2012) (Cth) which took effect on 15 April 2013.

The amendments, however, did not substantially affect the steps that need to be taken in determining capacity to distinguish.  The High Court’s decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 315 ALR 4 (Cantarella), although decided under the previous s 41 TMA, is therefore applicable under the new version.

Section 41 (old and new) provides the following structure for determining capacity to distinguish.

First, the extent to which the mark is “inherently adapted” to distinguish must be considered.  If a mark is sufficiently inherently capable of distinguishing the applicant’s goods or services from those of other traders, it may proceed to registration (unless other grounds of opposition are made out).

If the mark is “to some extent, but not sufficiently” inherently adapted to distinguish, the Registrar must consider (a) the extent to which it is so adapted; (b) the use, or intended use, of the mark; and (c) “any other circumstances” before deciding whether the mark can or will distinguish the designated goods or services.

If the mark is “not to any extent inherently adapted to distinguish”, the Registrar must consider whether the mark, as a result of use before the filing date, did at that time in fact distinguish the applicant’s goods or services.

Cantarella appears to provide a new methodology for determining whether a mark is inherently adapted to distinguish – at least for word marks.

The old test

In  Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Clark Equipment), Kitto J explained that whether a trade mark is “inherently adapted to distinguish” is tested by 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.” (at 514).

In setting out this test, Kitto J directly applied (and quoted in full) the following passage from Lord Parker of Waddington’s speech in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 (Du Cros):

“The applicant’s chance of success in this respect (i.e. 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 connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” (at 634-635)

Kitto J’s test from Clark Equipment has long been settled law in Australia on the issue of inherent adaptation to distinguish.

The question in Cantarella

At issue in Cantarella was whether the marks ORO and CINQUE STELLE were inherently adapted to distinguish goods and services in relation to coffee.  The words mean GOLD and FIVE STARS, respectively, in Italian.

There was some evidence of the use of ORO (and variants) by other traders but not of CINQUE STELLE (although there was evidence of use of FIVE STAR and 5 STELLE) in relation to coffee.  It was uncontroversial that Italian is the second most widely spoken language in Australia (after English) and that more than 350,000 Australians speak Italian at home.

The new (?) test

The majority of the High Court held that, in determining whether a mark is inherently adapted to distinguish, consideration of the ordinary meaning of any words comprising the mark is “crucial” (compare Dixon CJ’s view, expressed in the TUB HAPPY case that searching for a meaning as a first step is a “mistake”: Mark Foy’s Ltd v Davies Coop (1956) 95 CLR 190).  This is regardless of whether the mark consists of English or foreign words.  Only after the “ordinary signification” is established can an enquiry can be made as to whether other traders “might legitimately need to use the word in respect of their goods”.  (Note the inclusion of the word “need” here – compare Kitto J’s use of “want” and Lord Parker’s use of “desire”).

In relation to a foreign word, the majority said that if “it is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods” (emphasis added) then it is prima facie not registrable.  If the foreign word contains only an “allusive reference” to the relevant goods, then it is prima facie registrable.  It is not absolutely clear that the Court intended this rule also to apply to English words but it seems that it did.  There is no indication that it intended to create a new special rule for foreign words.

The High Court explained that, in Du Cros, Lord Parker was “not referring to the desire of traders to use words, English or foreign, which convey an allusive or metaphorical meaning.”  His Lordship was only referring to words having a direct descriptive meaning.  This is why English words carrying directly descriptive meanings such as ROHOE, BARRIER and WHOPPER were not registrable whereas words carrying only allusive references, such as TUB HAPPY, were.

Once the “ordinary signification” is established, consideration may then be given to whether other traders might want (or need) to use the words for that ordinary signification.

Thus, the High Court has set out a new two-part test for whether a mark is inherently adapted to distinguish – at least for word marks.  First, the ordinary meaning of the words to the target audience must be considered.  Then, if the word or words has an ordinary meaning, consideration must be given to the question of whether other traders might legitimately need to use the word, or words, in respect of their goods or services, for that ordinary meaning.

Not so fast

But perhaps this is reading too much into Cantarella.

Justice Middleton recently delivered judgment in Verrocchi v Discount Chemist Outlet Pty Ltd [2015] FCA 234.  His Honour said at [103], in relation the respondent’s cross-claim seeking to have the applicant’s trade mark removed from the register pursuant to s 41 TMA:

“The proper test for assessing the inherent capacity of the registered trade mark to distinguish the designated services for the purposes of s 41(3) still remains that articulated by Kitto J in Clark Equipment…”

He said the “High Court in Cantarella… recently endorsed this test.”


s 41 TMA - adapted to distinguish?

High Court finds Oro and Cinque Stelle ARE inherently adapted to distinguish coffee

This morning the High Court, by majority, allowed Cantarella’s appeal. More to follow on this when I have read the decision.

Case Notes, s 41 TMA - adapted to distinguish?

“Yellow” not inherently adapted to distinguish – who knew?

The Federal Court has found that YELLOW (the word, not the colour) is not inherently adapted to distinguish for the purposes of s 41 of the Trade Marks Act 1995 (Cth) for various goods and services relating to telephone directories.

Telstra applied for the mark in 2003.  By then Telstra had branded its business directories YELLOW PAGES and printed them on yellow paper for nearly three decades.  The judge found, however, that prior to the lodgement date (which is the relevant date for removal applications), it had not used the word YELLOW, or indeed the colour yellow, “as a trade mark“.  As a result, the mark’s lack of inherent adaptability could not be remedied by pre-lodgement use via s 41(6) TMA.

The Court accepted that Telstra had made extensive use of the mark, as a trade mark, after the lodgement date, but this use is not relevant to distinctiveness under s 41(6).

On the question of inherent adaptation to distinguish, Murphy J pointed out that:

  1. Whether a trade mark is inherently adapted to distinguish is determined by reference to the test stated by Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 at 635:

…whether other traders are likely, in the ordinary course of their business 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.

This, his Honour said,”reflected the natural disinclination of the Courts to allow traders to obtain a monopoly, through registration of a trade mark, in words or signs that others may legitimately desire to use”.

The evidence showed that “business directories around the world are often named Yellow Pages, and yellow coloured pages and yellow covers are commonly used on print business directories“.

His Honour considered YELLOW to be descriptive of the relevant goods and services because:

1. “yellow is a word in ordinary usage which describes a primary colour“;

2. “the word yellow is not a made up, meaningless or fanciful word which is distinctive as a result“;

3. “the word yellow is not distinctive on the basis that it is dislocated from or inappropriate to the designated goods and services, such as in the often used example of “North Pole bananas”“; and

4. yellow is not an “arbitrary term” but rather “yellow was the colour commonly used in respect of print and online directories by Telstra and other traders in Australia and also by other traders overseas.”

As a result, the Court reversed the findings of the Trade Marks Office which, after opposition proceedings, permitted the mark to proceed to registration.

In obiter comments, the Court also rejected the mark as being deceptively similar to several other marks on the register at the relevant date (s 44, TMA) including YELLOW DUCK, THE YELLOW ENVELOPE and YELLOW ZONE.

In the same judgment, Murphy J upheld Telstra’s challenge to the registration of YELLOWBOOK by another party on the grounds that it is deceptively similar to YELLOW PAGES (Telstra’s registered mark) and pursuant to s 60 (likely to cause confusion due the reputation of another mark) and s 43 (unlawful because use likely to be misleading or deceptive).

Murphy J’s application of s 41 TMA may have to be reconsidered in the light of the High Court’s decision in Cantarella which will be heard later this year.

s 41 TMA - adapted to distinguish?

Special leave granted for coffee trade mark fight over use of ORO and CINQUE STELLE

The High Court has granted special leave in a case concerning the question of the inherent capacity to distinguish of foreign word marks – which the appellant says “has not been considered by this Court before.”

The case is an appeal from Modena Trading v Cantarella Bros [2013] FCAFC 110.  In that case, Mansfield, Jacobson and Gilmour JJ unanimously allowed an appeal from Emmett J [2013] FCA 8 in which his Honour found that the words ORO and CINQUE STELLE (which mean GOLD and FIVE STAR, respectively, in Italian) were inherently adapted to distinguish coffee products.

The Full Court considered that they were not, and ordered their removal from the Register of Trade Marks.