Safari Snorkel mark distinctive overall – but is it a pyrrhic victory?

Ironman 4×4 Pty Ltd v Australian Performance Development Pty Ltd [2013] ATMO 107 (23 December 2013)

In a case involving the rarefied world of air rams and air intake snorkels for vehicles, an opposition against the composite mark below (featuring the words SAFARI SNORKEL) has failed.

The grounds pressed before Hearing Officer Jock McDonagh were lack of distinctiveness (s41) and lack of a relevant intention to use the mark (s59).

Distinctiveness

The opponent argued that the mark was essentially comprised of the shape of an air ram for an air intake snorkel, and that the words contained in the mark were “wholly overwhelmed” by the shape elements.

The Hearing Officer dismissed this ground summarily. It was considered that the composite mark as a whole was distinctive, which included consideration of the inherent distinctiveness of the word SAFARI in relation to the goods (it was noted that the applicant already owned a registration for the word mark SAFARI in relation to snorkels).

Intention to use

The opponent submitted that the applicant did not intend to use the mark, and that the verbal element Safari Snorkel in the composite mark was merely a “colourable flourish” used in order to get the mark onto the register. Put another way, the opponent argued that the mark was filed “simply for the purpose of gaining some advantage over competitors … without an intention to use it as a badge of origin”.

The Hearing Officer, referring to (albeit post-filing date) use of the mark at issue, was comfortable that the later use supported the prima facie presumption that the applicant intended to use the mark as at the filing date. The opponent therefore did not rebut that presumption and the ground failed.

Comment

Under s41, the decision simply confirms that it will be an uphill battle to successfully oppose a “combination” mark, which contains a distinctive verbal element, based on lack of distinctiveness.

Such decisions will not always be straightforward though, as can be demonstrated by a couple of earlier decisions from the UK and EU.

In Case T-137/12 FunFactory GmbH v OHIM (13 January 2013), the General Court rejected an application for the shape mark below (filed in respect of vibrators in class 10), based on lack of distinctiveness under article 7(1)(b) of the CTM Regulation (a provision somewhat similar to s41 of the Australian Trade Marks Act).

While it is difficult to see, the mark contains the verbal element FUN FACTORY. The General Court recognized that the word FUN was present in the mark, but decided that the additional word FACTORY was not legible. Considering the only verbal element, the General Court memorably stated that FUN was (as loosely translated from the original French) a “description of their destination” in relation to the goods, and that the word FUN was a “weak distinctive part of a complex mark” (similarly to the argument run by the opponent in Safari Snorkel).

The Safari Snorkel decision also brings to mind that of Mr Geoffrey Hobbs QC, sitting as a Deputy High Court Judge in Whirlpool Corporation & Ors v Kenwood Ltd [2008] EWHC 1930 (Ch) (4 August 2008) (as upheld by the Court of Appeal). In that case, Whirlpool – owner of the KitchenAid brand of mixers – tried to prevent the use by Kenwood of a similarly shaped mixer, known as the kMix. The attack was based on its CTM registration for the shape mark (shown below left), in which the word mark KitchenAid is incorporated (though it is very difficult to see).

Whirlpool’s registration included a verbal description to the effect that “The mark consists of a fanciful electric beating and mixing machine configuration upon which the word KitchenAid appears”.

Mr Hobbs QC decided that the kMix did not infringe based on the equivalent of s120(2) of Australia’s Trade Marks Act. The infringement case based on Europe’s “anti-dilution” provision also failed. An appeal to the Court of Appeal was dismissed.

The Whirlpool decision simply shows that obtaining a shape mark registration, where the overall distinctiveness of the mark is achieved by the addition of a verbal element, will limit the scope of enforcement rights.

The relative difficulty in making out the ground based on lack of intention to use was also confirmed, and the case provides a reminder that there is a continued debate under Australian law as to whether the ground under s59 should be assessed as at the filing date (as it was here), or as at some later date.