Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks.

Re:  	Applications number 552419 and 552420, in the name of 
Dexion Group plc, to register a trade mark.

The above trade mark applications were lodged on 20.3.91, and seek registration in respect of various conveyor and hoisting machinery and of non-metal storage and shelving items.  The mark the subject of the applications is, in both instances, a tick in a circle as shown below.  However, for reasons which follow, it will be convenient to refer in the singular to "the mark", noting at all times that the mark is actually the subject of the two applications.

An examiner of trade marks has objected that the trade mark does not comply with the registrability requirements of s 24(1)e and s 25 of the Trade Marks Act.  It is said, specifically, that the device does not function as a trade mark, being used instead as a symbol of commendation.  The examiner has relied on the Macquarie Dictionary as showing that a tick is used to indicate approval, correctness, agreement or the presence of something.  The examiner has noted the evidence of use of the mark, on which the applicant is entitled to rely.  The examiner's assessment of this is that it does not show the mark used on its own - "wherever it is used it is accompanied by or rather totally overwhelmed by the word DEXION".  On that basis the examiner has maintained that the mark is neither distinctive nor capable of becoming distinctive.

In the face of this objection, the applicant requested to be heard in the matter.  At the hearing, on 28.2.94, it was represented by Catherine Chant, a solicitor of the attorney firm of Davies Collison Cave.

Ms Chant argued that the logo in question is in fact distinctive for the purposes of section 26 of the Act.  Here she noted the comments of Gibbs J in Burger King Corp v Registrar of Trade Marks, WHOPPER trade mark, (1973) 128 CLR 417, to the effect that some inherent adaptation to the task of distinguishing the applicant's goods from those of others must be found within the mark.  This, she argued, the applicant's mark was able to show.

While she noted the terms of the Macquarie Dictionary, Ms Chant argued that the applicant's mark did not convey any intelligible information about the applicant's goods, and that, on the strength of the dictionary entry, the mark was no more than a vague reference, not amounting to any sort of description or indication of approval.  She also stressed the stark simplicity of the applicant's logo.  

The device in question is not common in records of applications for the registration of trade marks.  Here Ms Chant noted that there were nine very much analogous applications, all of which had successfully been registered.  I must note that this is a point in the applicant's favour:  two unrelated proprietors have been able to register analogous devices, each in its separate field, though I will leave aside the question of a third, readily distinguishable, trade mark to which Ms Chant referred. 

I accept Ms Chant's argument that the applicant's mark, while not being strikingly original, none the less has some inherent aptitude to distinguishing the applicant's goods, even if not a great degree of it.  This may not always remain so and my own knowledge of the marketplace suggests that the tick device, in a circle or otherwise, may soon be seen as incapable of being annexed by any one trader.  That, however, is not something which I am satisfied is presently true in relation to conveying machinery or shelving. 

I will not go as far as saying that the meaning of the tick symbol is allusory or in any way less than direct.  What we have here is, with a minimum of stylisation, the graphical character which may be applied "to indicate examination or correctness" (Macquarie).  However, let me accept that the mark meets the test set out in Burger King, supra, of having some bare minimum of inherent adaptation.  Given this, has the mark been rendered distinctive, in terms of s 26(2), when regard is had to the extent of use or other special circumstances?  In my opinion it has not, and I set down my reasons for this.

Essentially, I do not accept Ms Chant's submission that the use of the mark in question, always inextricably from the distinctive word DEXION, has reinforced the perception that the mark is associated with the DEXION company in particular.  Nor do I accept that there is any suggestion that this association, even if it exists, has resulted in the present mark being seen as a distinctive indication of trade origin.

I note that, as Ms Chant has argued, it is common for traders to use two trade marks together, and that it does not necessarily follow from this that either of the marks in such a combination is not in use as a trade mark.  However, where a mark of questionable distinciveness is used in combination with one that is very clearly distinctive, it does make a considerable difference to the weight I can give to the extent of such use.  The matter must be looked at in correct perspective:  on the basis of the Macquarie Dictionary there is, in my opinion, good reason to hold that the mark sought to be registered is not prima facie distinctive.  If the applicant wishes to show that the mark is in fact distinctive it must do so by evidence and, per Samuel Taylor v Registrar of Trade Marks 102 CLR 650 at 657, it is difficult to see how, from this conjoined use, the critical element could have acquired a distinctiveness of its own.  That finding is not changed by the fact that the applicant has previously been able to register the device, in combination with the word DEXION, without disclaimer in terms of s 32.

That being so, I am not satisfied that the element sought to be registered was, at the date of application, distinctive of the applicant's goods.  I therefore refuse to accept the application for registration in Part A of the register.

My conclusion that the mark has some inherent adaptation to distinguish goes part way to deciding if the mark is capable, in the future, of meeting the twin tests of s 26(2).  Ms Chant went on to submit that the mark is registrable in Part B, as being one that is at least capable of becoming distinctive.  However, the mere possession of some inherent adaptation to distinguish does not resolve that matter.  The crucial enquiry in such a case is, per Burger King, supra, "whether the trade mark is capable in fact of distinguishing the goods, by reason of future use or other circumstances".  

Unless the applicant shows that its trade mark will, in the future, become distinctive in fact in terms of s 26 then it has not discharged the onus upon it.  The applicant need not and cannot, of course, provide absolute proof of this, but the case made must be a reasonable one.  

The present manner of use has not allowed present distinctiveness to be demonstrated.  Similarly, it will not allow me to find that any other result is, in the future, more likely than not.  It follows that I am required to also refuse to accept application 552419 and 552420 for registration in Part B, and this I do.

T. Williams
Hearing Officer
13 April 1994