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					                               TRADE MARKS ACT 1995

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

Re:      Opposition by 1300 Australia Pty Ltd to registration of trade mark application
         992065(35) - 1800-BLINDS, 1800BLINDS (Series) - filed in the name of
         1800 Blinds Pty Ltd.

DELEGATE:                  Iain Thompson
REPRESENTATION:            Opponent: Celia Davies of Freehills Patent & Trade Mark Attorneys
                           Applicant: Ed Heerey, counsel, instructed by Gilbert + Tobin
DECISION:                  2008 ATMO 57
                           Section 52 opposition – section 41 – 1800-BLINDS has no inherent
                           adaptation to distinguish the applicant’s services – only slight evidence of
                           prefiling use – application rejected, registration refused.
                           Costs awarded to opponent.



Background
1. In this matter, 1800 Blinds Pty Ltd of Minto, New South Wales, (‘the applicant’)
      has applied to register a trade mark, under the Trade Marks Act 1995 (‘the Act’),
      current details of which appear below:

Application No:          992065
Priority Date:           7 March 2004
Goods:                   Class: 35 Sales of vertical blinds, venetian blinds, holland
                         blinds, timber venetians, timber verticals, canvas awnings,
                         aluminium awnings, roman blinds, security doors, flyscreens,
                         curtains, pleated blinds, louvre blinds, timber shutters, metal
                         shutters, aluminium shutters
Trade Mark:              1800-BLINDS (series)
                         1800BLINDS

2. After examination of the application, it was accepted and advertised for possible
      registration in the Australian Official Journal of Trade Marks on 13 October
      2005.

3. On 13 January 2006, 1300 Australia Pty Ltd, of Yarraville, Victoria, (‘the
      opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade
      mark. The Notice includes the following grounds of potential relevance:

           (b) The trade mark is not capable of distinguishing the applicant's
           services in respect of which the Trade Mark is sought to be registered, or
           any of them, from the goods or services of other persons, and the trade
                                          2

        Mark was not distinctive in fact of the Services (or any of them) as at the
        priority date of the Opposed Application.

        (d) The Trade Mark or some sign contained within the trade mark has
        some connotation such that use of the Trade Mark in relation to the
        Services, or any of them, would be likely to deceive or cause confusion.

4. Of the above grounds, the opponent relied on that under section 41 of the Act at a
   hearing before me, as a delegate of the Registrar of Trade Marks on 19 June 2008.
   For the sake of completeness I find that the grounds other than section 41
   mentioned in the Notice (which appear to include most grounds available under
   the Act) have not been established by the opponent.

5. I conducted the hearing as a delegate of the Registrar of Trade Marks in
   Melbourne on 19 June 2008. Celia Davies of Freehills Patent & Trade Mark
   Attorneys represented the opponent. Ed Heerey, counsel, instructed by Gilbert +
   Tobin, represented the applicant.

6. At the end of the hearing I reserved my decision which I now provide along with
   my written reasons.

Evidence
7. There are two declarations in evidence: one in support of the opposition and one
   in answer.

8. The declaration in support of the opposition is by Roanne Karla de Menezes, a
   legal practitioner with Freehills Patent & Trade Mark Attorneys. This declaration
   is quite short and exhibits the following passage from the Trade Marks Manual of
   Practice and Procedure:

        A section 41 ground for rejection will apply in relation to trade marks that
        simply consist of 13/1300/1800 and other descriptive or non distinctive
        elements (in the same way that those elements on their own would attract
        a ground for rejection). Examiners will need to consider if the material in
        the trade mark, apart from the 13/1300/1800 element, has any inherent
        adaptation to distinguish. For example, 1800 RABBIT is not considered
        to be prima facie capable of distinguishing “the sale of pet rabbits” and a
        section 41(6) ground for rejection would be appropriate.

        The ground for rejection applies irrespective of whether the trade mark is
        a valid phoneword. Ownership or authorised use of the mark is not
        sufficient on its own to justify the withdrawal of the section 41 ground for
        rejection. However, if the owner has been using the phoneword for a
        sufficient period of time to have enabled it to acquire a secondary
                                           3

         meaning indicating trade origin, evidence provisions may support
         acceptance of the mark.

9. The evidence in answer is a declaration by Geoffrey Phillip Munro who is
   Director and Secretary of the applicant.

10. Mr Munro’s declaration makes the following claim as to confidentiality:

         The information concerning the Applicant's business, commercial or
         financial affairs which is disclosed in this Statutory Declaration
         (particularly in relation to sales information, details of advertising and
         promotional activities as well as details of past, present or potential
         customers of the Applicant's services, and including the information set
         out in Confidential Exhibits A and B) is information which is
         commercially sensitive and confidential to the Applicant. Disclosure
         would cause significant damage and harm to the Applicant.

11. On the face of it, all of the information included in the declaration is information
   concerning the applicant’s business. Thus, at one level, I am requested by the
   applicant to give my reasons in this matter without any reference to the
   declaration in this decision. I could do this, but the reasons for my decision
   would be opaque. However, the fact that the applicant has put the declaration in
   suggests that this is not what the applicant intended. I will therefore be as
   circumspect as necessary in giving my reasons but will need to refer to some
   information concerning the opponent’s business in the course of making my
   decision.

12. The Confidential Exhibits A and B are not in evidence as the opponent did not
   agree to be bound by the confidentiality agreement which related to those
   exhibits. While the applicant has some dissatisfaction with this, I consider that
   such agreements should only be entered into where immediacy of commercial
   damage to a party is demonstrated and not merely asserted and that it is preferable
   for matters such as these to be fully ventilated in as open and transparent a
   manner as possible. The interests of a particular trader must be weighed against
   the interests of all traders – in particular the opponent, the Courts if there should
   be an appeal, the Registrar in being able to discuss issues freely and openly, and
   the public in having matters before the Registrar conducted as transparently as is
   possible.

13. Here, I observe, that it would seem that the opponent is apparently not a trade
   rival of the applicant in its blind selling business but is seemingly a purveyor of
                                           4

   personalized telephone numbers. Of course, I have no knowledge of the content
   of the confidential exhibits but it is difficult to see how the opponent could benefit
   from the information in them.

14. Mr Munro attests:

        The Applicant is a manufacturer, supplier and installer of window
        furnishings. The Applicant registered the company name 1800-Blinds Pty
        Ltd (ACN 103 478 468) on 23 January 2003. The Applicant has also
        registered the following company names:

             • 1800-BLINDS Services Pty Limited (ACN 111 049 453) on 21
               September 2004; and

             • 1300-BLINDS Pty Limited (ACN 110 220 776) on 27 July 2004.

        The Applicant developed the 1800BLINDS trade mark (the Trade Mark)
        in 2002 as we believed this was an original and unique concept for the
        Australian market. Both the name and telephone number equivalent to
        1800BLINDS were available and we believed that both the telephone
        number and the tagline “Know the Name, Know the Number” would
        distinguish the Applicant from other traders in the marketplace.

        The Applicant commenced use of the Trade Mark in Australia on or
        around 23 January 2003. The Trade Mark was initially used in New South
        Wales and is currently used in Sydney, Brisbane and Melbourne as well
        as the Central Coast and South Coast of New South Wales. The Applicant
        plans to expand use of the Trade Mark to all states of Australia.

15. I note here that the priority date of the application is 7 March 2004 and that the
   applicant thus states it had some fourteen months of use of the trade mark before
   that date. I will also assume that the first use of the trade mark in Brisbane and
   Melbourne and the Central and South Coasts of New South Wales was after the
   priority date and before the statutory declaration was sworn. As it is obviously in
   the applicant’s interests to be specific about the use of the trade mark before the
   priority date, and the evidence taken as a whole suggests that the trade mark was
   used in or near Sydney before the priority date, I will (in the absence of better and
   more specific evidence) assume that such was the case.

16. Mr Munro goes on to aver:

        The Applicant offers a range of services relating to the manufacturing,
        supplying and installation, of blinds under the Trade Mark. As far as I am
        aware, the Applicant is the only company which manufactures vertical
        blinds at the client's premises.
                                                5

17. Again, I will assume that the only services the applicant performs is the
    manufacture, supply and installation of blinds. If the applicant in fact performs
    the range of services in respect of which trade mark registration is sought, it is
    obviously in the applicant’s interests to attest to these services more fully and
    specifically.

18. Mr Munro attests to the advertising of services under the trade mark – again this
    part of his declaration is expressed in extremely general terms. At the hearing,
    Ms Davies submitted that there is no advertisement which could be confidently
    said to be antecedent to the priority date. This part of the evidence is expressed in
    terms that certain advertisements appeared within the period of time 2003 to
    2004. The problem is that the advertisements in evidence do not have any date
    ascribed to them and there is no way of ascertaining whether they appeared before
    or after the priority date. Once more, as it is very obviously in the applicant’s
    interests1 to affirmatively demonstrate which advertisements appeared before the
    priority date, one is left to wonder whether the applicant may not have
    demonstrated this because it cannot.

19. The other problem with such general statements within statutory declarations is
    that, while they may be true, they are no truer than other generalized statements
    such as, “The first advertisements of the services offered under the trade mark
    appeared within the period 1980 to 2008.” If the first advertisement appeared in
    2007, there is nothing overtly wrong in the claim yet the lack of precision in the
    claim makes any ascertainment of the exact facts impossible.

20. A similar observation extends to the applicant’s evidence of its Internet website.
    The declaration attests that this was established in the period 2004 to 2006 and
    includes ‘screen shots’ of pages from its website as an exhibit. These screen shots
    include reference to the services being offered in Sydney, Wollongong, South
    Coast, Central Coast, Melbourne, Peninsula, Brisbane and surrounding areas.
    One might gain the impression that this evidence accurately reflects the
    applicant’s website and hence the extent of its services at the time it was created
    in the period 2004 to 2006. However, the Internet archive, web.archive.org/web,
    shows that a quite different version of the webpage was first created in 2005 and

1
 See also paragraph 42 of these reasons – in proceedings under subsection 41(6) the onus is on the
applicant to establish its entitlement to registration.
                                         6

   that the sole reference to any geographical area is shown as Campbelltown, New
   South Wales.

21. The declaration also exhibits a number of responses to questionnaires about the
   trade mark. These are unsworn responses to a proforma questionnaire containing
   leading questions and are from an area in and around Sydney. I weight them
   accordingly.

22. An example of the applicant’s trade mark in use appears below. I will assume
   that any use of the applicant’s trade mark antecedent to the priority date was in
   similar form.




23. Finally, Mr Munro attests:

        The Opponent has filed and served, as its only Evidence in Support of its
        Opposition, a copy of IP Australia's new Phonewords Policy as set out in
        Part 22 of the Trade Marks Examiners' Manual. In the present case, the
        Applicant has already proved to the satisfaction of the Registrar that it
        owns the phone number associated with the Trade Mark and the evidence
        of use filed in support of the Application enabled it to be accepted under
        the provisions of sub-section 41(5) of the Trade Marks Act 1995. In the
        circumstances, the Applicant believes that the Application has already
        been examined and accepted in a way which is consistent with the new
        Phonewords Policy.

        In any event, as the new Policy has come into effect well after the
        acceptance of the Application, the Applicant believes that the new Policy
        should not be applied retrospectively to trade marks which have already
        been accepted for registration.

24. The Trade Mark’s Manual of Practice and Procedure (‘the Manual’) is, of
   course, a set of administrative guidelines, rather than ‘policy’ or law. The Manual
   does not create law. Hopefully, sections such as that quoted above accurately
                                                    7

   reflect law, rather than create it.             There is no question, therefore, than the
   statement, or any principle, in the above passage might be applied retrospectively
   – the quoted passage reflects the law as it has always prevailed to such trade
   marks. The reason that such sections appear in the Manual is for the guidance of
   examiners, applicants and practitioners in the field who may be contemplating the
   registrability of such indicia.

25. And, of course, the evidence of the entry in the Manual is not evidence as to a
   ‘fact’ that existed at, or after, the priority date of the application but reflects a
   state of law which has always existed. As such, it was sufficient to put the
   applicant on notice about the ground that was to be pursued in the matter and the
   nature and type of evidence which would be required during proceedings.

26. There is also, of course, no question that, in considering this matter, I am or may
   be reliant on the Manual as a source or cause for my reasons and decision.

27. I will discuss the submissions of the parties as they become relevant to my
   discussion of the issues under section 41 of the Act.

Section 41
28. Section 41 of the Act provides:

         Trade mark not distinguishing applicant's goods or services
        41.(1) For the purposes of this section, the use of a trade mark by a
        predecessor in title of an applicant for the registration of the trade mark is
        taken to be a use of the trade mark by the applicant.
        Note 1: For applicant and predecessor in title see section 6.
        Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised
        use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in
        title (see subsection 7(3) and section 8).
        (2) 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 (designated
        goods or services) from the goods or services of other persons.
        Note: For goods of a person and services of a person see section 6.
        (3) In deciding the question whether or not a trade mark is capable of
        distinguishing the designated goods or services from the goods or services of
        other persons, the Registrar must first take into account the extent to which
        the trade mark is inherently adapted to distinguish the designated goods or
        services from the goods or services of other persons.
        (4) Then, if the Registrar is still unable to decide the question, the following
        provisions apply.
                                                    8

        (5) If the Registrar finds 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 is unable to decide, on that basis alone, that the
        trade mark is capable of so distinguishing the designated goods or services:
           (a) the Registrar is to consider whether, because of the combined effect of
           the following:
              (i) the extent to which the trade mark is inherently adapted to
              distinguish the designated goods or services;
              (ii) the use, or intended use, of the trade mark by the applicant;
              (iii) any other circumstances;
        the trade mark does or will distinguish the designated goods or services as
        being those of the applicant; and
           (b) if the Registrar is then satisfied that the trade mark does or will so
           distinguish the designated goods or services—the trade mark is taken to
           be capable of distinguishing the applicant's goods or services from the
           goods or services of other persons; and
           (c) if the Registrar is not satisfied that the trade mark does or will so
           distinguish the designated goods or services—the trade mark is taken not
           to be capable of distinguishing the applicant's goods or services from the
           goods or services of other persons.
        Note 1: For goods of a person and services of a person see section 6.
        Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade
        mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1)
        and 7(3) and section 8).
        (6) If the Registrar finds that the trade mark is not inherently adapted to
        distinguish the designated goods or services from the goods or services of
        other persons, the following provisions apply:
           (a) if the applicant establishes that, because of the extent to which the
           applicant has used the trade mark before the filing date in respect of the
           application, it does distinguish the designated goods or services as being
           those of the applicant—the trade mark is taken to be capable of
           distinguishing the designated goods or services from the goods or services
           of other persons;
           (b) in any other case—the trade mark is taken not to be capable of
           distinguishing the designated goods or services from the goods or services
           of other persons.
        Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade
        marks that consist wholly of a sign that is ordinarily used to indicate:
          (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other
          characteristic, of goods or services; or
          (b) the time of production of goods or of the rendering of services.
        Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade
        mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1)
        and 7(3) and section 8).

29. The scheme and operation of section 41 were discussed by Branson J in Blount
   Inc v Registrar of Trade Marks [1998] FCA 440 where she said:

        Subsections (3) to (6) of s 41 of the Act are designed to control the
        process by which the Registrar is to reach a conclusion as to whether the
        trade mark for which registration is sought is capable of distinguishing the
                                  9

applicant's goods or services in respect of which the trade mark is sought
to be registered (“the designated goods or services”). If the trade mark is
not so capable, the application for its registration must be rejected (s
41(2)). Subsection (3) requires the Registrar first to “take into account the
extent to which the trade mark is inherently adapted to distinguish the
designated goods or services from the goods or services of other persons”.
Having taken such matter into account, it is theoretically open to the
Registrar to conclude:

      (a) that the trade mark is 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; or

      (b) 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; or

      (c) 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 there is uncertainty, on that basis
      alone, that the trade mark is actually capable of so distinguishing
      the designated goods or services.

The structure of s 41 of the Act dictates that if the Registrar reaches
conclusion (a) above, then he or she will decide the question whether or
not the trade mark is capable of distinguishing the designated goods or
services from the goods or services of other persons by reaching the
answer that it is so capable by reason of its inherent adaptability to
distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be
required, by reason of the terms of s 33(1) of the Act, to accept the
application unless he or she is satisfied that the application has not been
made in accordance with the Act, or that there are grounds, independent
of capacity to distinguish, for rejecting the application.

If the Registrar reaches conclusion (b) or (c) above, he or she is, within
the meaning of s 41(4) “unable to decide the question”. That is, he or she
is unable, simply by taking into account the extent to which the trade
mark is inherently adapted to distinguish the designated goods or services,
to answer the question whether or not the trade mark is capable of
distinguishing the designated goods or services from the goods or services
of other persons.

If the Registrar reaches conclusion (b) above, then the provisions of
paragraphs (a) and (b) of s 41(6) are brought into operation. If the
applicant establishes that, because of the extent to which the applicant has
used the trade mark before the filing date of the application, the trade
mark does distinguish the designated goods or services as being those of
the applicant, the Registrar will not reject the application pursuant to s
41(2). The Registrar will, in such circumstances, accept the application
unless he or she is satisfied that the application has not been made in
                                          10

        accordance with the Act, or that there are grounds, independent of
        capacity to distinguish, for rejecting the application (s 33(1)). If the
        applicant fails to establish that because of the extent to which the
        applicant has used the trade mark before the filing date of the application,
        the trade mark does distinguish the designated goods or services as being
        those of the applicant, the Registrar must reject the application pursuant to
        s 41(2).

        If the Registrar reaches conclusion (c) above, then the provisions of
        paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the
        Registrar, having considered the combined effect of the matters listed in
        subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade
        mark does or will distinguish the designated goods or services as being
        those of the applicant, he or she will not reject the application pursuant to
        s 41(2). The Registrar will, in such circumstances, accept the application
        unless he or she is satisfied that the application has not been made in
        accordance with the Act, or that there are grounds, independent of
        capacity to distinguish, for rejecting the application (s 33(1)). If the
        Registrar, having considered the combined effect of the matter listed in
        subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade
        mark does or will distinguish the designated goods as being those of the
        applicant, the Registrar must reject the application (s 41(2)).

30. The start point in my considerations is thus subsection 41(3) and an assessment of
   the extent to which the trade mark is inherently adapted to distinguish the
   designated goods from the goods of other persons.

31. The inherent adaptation of the trade mark is to be assessed according to the tests
   in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 (‘the
   Michigan case’) at 513:

        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. The interests of strangers and of the
        public are thus bound up with the whole question, as Hamilton L.J.
        pointed out in the case of R.J. Lea, Ltd. (30 RPC 216 at 227); but to say
        this is not to treat the question as depending upon some vague notion of
        public policy; it is to insist that the question whether a mark is adapted to
        distinguish be 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 connection with similar goods in
                                            11

         any manner which would infringe a registered trade mark granted in
         respect of it.

32. Mr Heerey at the hearing submitted that the applicant has a monopoly in the
    phone number and expression 1800-BLINDS and that no other trader can
    therefore have an honest need to use it. However, I think this argument does not
    carry much weight for two reasons.

33. Firstly, there are a few ‘monopolies’ that traders might enjoy in indicia that they
    might regularly use in trade – as in, for example, company names or business
    names. Such monopolies have no basis in the consideration of whether a trade
    mark is inherently adapted to distinguish and such monopolies can transpire to be
    ephemeral. Hearing Officer Forno addressed the question of inherent adaptation
    in a similar context to that of the subject application in Australian National
    Airlines Commission's Application (1989) 16 IPR 270.2 Mr Forno cites, at 274,
    the following passage from the Michigan case, above, (at 513) and observed with
    some prescience regarding the trade mark (Australian Airlines) in question:

         It is undeniable that a mark which, considered by itself, would seem
         unadapted to that purpose, because its natural signification is against a
         notion that goods to which it is applied are the goods of the applicant and
         of no one else, may yet come by actual use or by virtue of special
         circumstances to be so closely associated with applicant's goods in the
         minds of the relevant public that its apparently disqualifying signification
         is effectually obscured, and distinctiveness in fact is thus achieved. But
         although such a measure of practical success with the mark may well
         provide a sufficient foundation for a passing-off action, the Trade Marks
         Act does not accept it as necessarily sufficient for the special protection
         which it affords to registered trade marks.

34. In interpreting his Honour's comments, Mr Forno continues at 274:

         What his Honour there said in relation to a passing off action is equally
         applicable, I think, to any other remedy to which a plaintiff is entitled to
         have recourse in order to protect its rights, including any statutory remedy
         which the Parliament may see fit to confer. The general inference to be
         drawn from the passage above cited is that a mark must qualify for
         registration under the Trade Marks Act by virtue to its own inherent
         nature without reference to “special circumstances” which may lead to the
         achievement of distinctiveness in fact.



2
 And see Telecommunications Industry Ombudsman [1999] ATMO 82; Re Application By Australian
Postal Corporations (t/as Australia Post) (2000) 50 IPR 103.
                                           12

35. The second problem with a hypothesis that, as the applicant has a monopoly in the
   phone number, no other trader can have an honest need to use it, is that the
   proposition does not address the heart of the question in the test posited by Kitto J
   in Michigan. That test is not by reference to whether other traders might honestly
   want to use an identical word, for the sake of its ordinary significance, to the trade
   mark proposed for registration, but whether other traders might, in the normal
   course of trade, want to use a word for the sake of its ordinary significance that so
   nearly resembles the trade mark that it would prima facie (if used by those other
   traders) give rise to an action for infringement. While there might be defenses to
   such an action, (for example, that the allegedly infringing use was not use of a
   trade mark) or a counterclaim for expungement, the process under section 41 is
   designed to prevent the very great inconvenience and expense to other traders of
   such actions (and defenses or counterclaims) occurring where the sign relied on
   by the owner of a trade mark registration ought not to have been registered: Sports
   Break Travel Pty Limited v P & O Holidays Limited [2000] FCA 924 (the
   SCHOOLIES trade mark); Larry Powell v Glow Zone [1997] FCA 1401 (the
   CAPS THE GAME trade mark).

36. Therefore, I turn now to a discussion of the inherent nature of the trade mark.

37. The nature and operation of personalised or vanity telephone numbers was
   discussed at some length by Jacob J, in Phonenames Ltd v 1-800 Flowers Inc
   [2000] FSR 697, and to the best of my knowledge, such telephone numbers
   operate in Australia in the same way:

         It is fair to assume at the date of the application, early 1993, the return of
         letters to telephones was clearly both foreseeable and intended. And so it
         has been. Modern telephones all have letters on their number buttons. I
         suspect that most people who have had a new phone in the last few years
         do not yet make use of the letters: some [may] have wondered why they
         are there and others may not even have noticed them. But there can be no
         doubt that alpha-numeric buttons are here to stay and that people will
         gradually make more and more use of them for telephone number
         purposes (they have other uses too).....

         Technical developments in the phone industry have meant that telephone
         numbers no longer have as much “locality” about them. In particular
         freephone numbers have none. This makes it possible to run a nation-wide
         franchising business using just one number. You can have a central
         operator system to take “orders” or to put you in contact with the local
         franchisee. It is also possible for the telephone company to arrange that its
                                           13

        system itself detects the locality of a caller and routes the phone call to the
        nearest centre using that number (“origin dependent routing”). In that way
        the “owner” of the number can license the number to a variety of different
        users.....

38. In his decision, which was upheld on appeal at 1-800 Flowers Inc v Phonenames
   Ltd [2001] EWCA Civ 721, Jacob J went on to find:

        Although the applicants claim some use in the UK before their date of
        application they do not suggest that by reason of that use their mark
        acquired any factual distinctiveness. So the question is whether the mark
        is ‘capable of distinguishing’ having regard to its inherent nature.

        I have come to the conclusion that it is not. Consider first the position if
        the mark had been 0800 FLOWERS. At the time of application the
        number 0800 was, as Mr Hobbs QC for the applicants, conceded
        “freighted with telephonic significance”. That does not mean, however,
        that the general public would at the time have realised that the whole
        mark was something that you could actually dial. At that time the use of
        letters on buttons had only just commenced and there can have been few
        telephones which carried letters. Nor had there been any education of the
        public about the letters. So at the time of application the public would
        have been puzzled by the mark – 0800 says something about freephone,
        but FLOWERS would have little meaning, so somewhat “de-freighting”
        the mark as a whole. The mark would, however, not have been a puzzle to
        anyone who knew of the coming return of letters to phone buttons. He or
        she would have understood at once that 0800 FLOWERS was an encoded
        phone number – and particularly so in relation to the specification of
        services, namely receiving and transmitting orders for flowers.

        [The Hearing Officer] accepted that 0800 FLOWERS did not have any
        inherent capacity to distinguish in 1993.... He was right because, anyone
        knowing the facts would say, correctly, that the mark had a direct
        reference to the character of the service to be provided under the mark.
        Section 10 in its reference to “capacity” to distinguish must include
        within its scope the foreseeable future. In the future, as perceived in 1993,
        0800-FLOWERS would very likely be taken by anyone knowing the facts
        to be a phone number for ordering flowers. That would be so, whether or
        not anyone actually used that number for that purpose in the future – it
        would be the future growth in the practice of traders generally to use 0800
        (word) which would have that effect. So the mark would convey a clear
        descriptive meaning in the future, irrespective of any use by the mark
        owner.”

39. I agree. I will add that the trade mark 1800-BLINDS is not completely lacking in
   adaptation to distinguish the applicant’s services because it is a telephone number;
   rather, it is so lacking because it is a generic telephone number. Consider the
   position of another seller of blinds who wishes to use a very similar telephone
                                                 14

    number, such as 1801-BLINDS or 1800-BLINDZ. That trader has an honest need
    to use this generic number in the normal course of trade, for the sake only of the
    significance of the telephone number, and yet might find itself in peril of an
    action for infringement.

40. However, the situation is, of course, entirely different for vanity phone numbers
    that do not employ generics such as hypothetical examples of 1800-WOMBAT
    for a roofing service, or 1815-WATERLOO for plumbing services. Although
    such trade marks might be little more than mnemonics for the number which lie
    behind them, they do appear to be functioning as trade marks which have
    sufficient inherent adaptation so as to be capable of distinguishing.

41. Thus, as I observed at the hearing, the grounds for rejection of this trade mark
    should properly be regarded as falling within section 41(6) as the trade mark is
    one without any inherent adaptation to distinguish the services of the applicant.

42. By the language of subparagraph 41(6)(a),3 the onus is on the applicant to satisfy
    me that the trade mark does distinguish the services of the applicant by virtue of
    the use of the trade mark before the priority date.

43. I have already adverted to the considerable difficulties that the applicant’s
    evidence presents in attempting to establish an accurate picture of the applicant’s
    use of the trade mark before the priority date of the application. The evidence of
    the applicant is much too general for any such picture to be established.

44. The evidence, considered as a whole, suggests that use before the priority date
    was confined to an area in or close to Sydney and that use was relatively slight
    and had been for a period of only fourteen months.

45. The use of the trade mark that did take place was in the form shown above in my
    discussion of the evidence. The examples in evidence, like that shown above,
    make no claim for a trade mark status of the expression 1800-BLINDS but appear
    to stress its status as a vanity telephone number by use of the expression “Know
    the name, know the numbers.” Radio advertising before the priority date is
    mentioned but no examples, scripts, or copy, are given. While I agree with Mr


3
  … if the applicant establishes that, because of the extent to which the applicant has used the trade
mark before the filing date in respect of the application, it does distinguish the designated goods or
services as being those of the applicant …
                                           15

   Heerey that some advertising at least can be inferred before the priority date, such
   inferences, while the onus is quite clearly on the applicant, are not appropriate
   from evidence which is so vague, particularly in the instance of an opposed
   application. In my consideration, such inferences would be guesses rather than
   logical inferences. Such material and information as is required is within the
   applicant’s control, and if it is to establish its entitlement to registration, such
   information and material, expressed in an accurate and explicit manner, with
   attention to specifics, is central to any prospects of success for the applicant.

46. What I am to consider, in terms of subsection 41(6), is whether because of the
   extent to which the applicant has used the trade mark before the filing date in
   respect of the application, it did distinguish the designated services as being those
   of the applicant. Jacob J considered a similar provision under the British Act in
   the “Treats Case”, British Sugar Plc v. James Robertson & Sons Ltd. [1996]
   R.P.C. 1 at page 34:

        Take a very descriptive or laudatory word. Suppose the proprietor can
        educate 10% of the public into recognising the word as his trade mark.
        Can that really be enough to say it has a distinctive character and so is
        enough to let the proprietor lay claim to the word as a trade mark
        altogether? The character at this stage is part distinctive but mainly not. I
        do not think it would be fair to regard the character of the word as
        distinctive in that state of affairs. But if the matter were the other way
        round, so that to 90% of people it was taken as a trade mark, then I think
        it would be fair so to regard it. This all suggests that the question of
        factual distinctive character is one of degree. The proviso really means
        “has the mark acquired a sufficiently distinctive character that the mark
        has really become a trade mark.” In the case of common or apt descriptive
        or laudatory words compelling evidence is needed to establish this. And
        in particular mere evidence of extensive use is unlikely to be enough on
        its own. Of course the power of advertising may be able to turn almost
        anything (save a pure description) into a trade mark, but it must be shown
        in a case of this sort that the mark has really become accepted by a
        substantial majority of persons as a trade mark - is or is almost a
        household word.

47. Perhaps, in view of the comments of, for example, Branson J in Blount, above, the
   above observations of Jacob J about the trade mark achieving the status of a
   ‘household word’ are capable of some adjustment to, ‘a household word in the
   particular trade’ as it is difficult to see how, for example, OREGON as a trade
   mark on a chainsaw could become a household word. Such a trade mark might
                                                16

   more readily achieve a similar status to a household word, however, amongst
   those who use and sell chainsaws.

48. Factual distinctiveness is thus achieved when a trade mark has transcended the
   lack of adaptation in its origins to the extent that public recognition of the trade
   mark is such that when it is seen by the public, its origins are not (or are hardly)
   considered, as in, for example, SMITHS (for potato crisps) or OXFORD (for
   dictionaries and other reference works). Such trade marks have developed a
   secondary meaning as denoting the goods or services of their owners.

49. Such is not the case here. Not only had the use of the trade mark 1800-BLINDS
   been very slight before the application date but it had been in a manner which
   reinforces its status as only being a generic telephone number. There has been no
   education of the public that it is considered to be a trade mark via the use of the
   symbol ™ or similar. And the main use of the trade mark that was antecedent to
   the priority date had apparently been confined to a geographical area on the
   outskirts of Sydney.

50. Thus, in term of subparagraph 41(6)(b), the trade mark is taken not to be capable
   of distinguishing the designated services from the services of other persons.

51. Accordingly, in terms of subsection 41(2), I reject the application because the
   trade mark is not capable of distinguishing the applicant’s services in respect of
   which the trade mark is sought to be registered from the services of other persons.

52. It follows that the opponent has established its opposition to the registration of the
   trade mark.

Decision
53. Section 55 of the Act provides:

         Decision
         55. Unless the proceedings are discontinued or dismissed, the Registrar
         must, at the end, decide:
            (a) to refuse to register the trade mark; or
            (b) to register the trade mark (with or without conditions or limitations) in
            respect of the goods and/or services then specified in the application;
         having regard to the extent (if any) to which any ground on which the
         application was opposed has been established.
         Note: For limitations see section 6.
                                             17

54. I refuse to register application 992065.

Costs
55. The opponent has established its opposition to the registration of the trade mark
   and is thus entitled to its costs at the scale set out in the regulations – I therefore
   order such costs against the applicant.


Iain Thompson
Hearing Officer
Trade Marks Hearings
03 July 2008

				
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