An application filed by Eli Lilly and Company (“ELC”) to register the mark >HAIR in relation to “medical information services in the field of autoimmune diseases” in class 44 (the “Designated Services”) has been rejected in Australia.
The Registrar’s delegate held that when used in relation to the Designated Services, the >HAIR mark did not possess sufficient inherent adaptation to distinguish such services. As ELC did not file any supporting evidence which demonstrated use (or intended use) of the >HAIR mark for the Designated Services, the delegate concluded that the >HAIR mark was not capable of distinguishing the Designated Services. As such, a valid ground for rejecting ELC’s >HAIR mark existed.
When deciding this matter, the delegate referred to the ordinary signification of the word “HAIR” and concluded that “in the context of autoimmune diseases as a subject matter of information services, the word ‘hair’ appears to be particularly relevant”. Further, the delegate was satisfied that “there are autoimmune diseases which relate to or have an impact on human hair whether as a direct impact of the disease or as a side effect of treatment”. On this basis, the delegate concluded that the word “HAIR” designated the subject matter of the information offered.
The Registrar’s delegate also considered the presence of the additional “>” symbol (sometimes referred to as the “greater than sign” when used in mathematical contexts) when determining the level of distinctiveness possessed by ELC’s >HAIR mark. However, the delegate decided that the presence of the “>” symbol had little impact and “little more effect on the overall combination that a bullet point or a border device”, such that it amounted to “no more than an embellishment of the word “HAIR”. On this basis, the delegate concluded that when used in relation to the Designated Services, ELC’s >HAIR mark was to some extent (but not sufficiently), inherently adapted to distinguish such services to be registerable.
This decision provides a useful reminder that, unlike examination practices in many other countries (such as the US and EU), Australia’s trade mark legislation provides for a sliding scale of distinctiveness whereby marks in a middle category, that are to some extent inherently adapted to distinguish, are potentially registrable if they meet more flexible and generous requirements as to evidence of use.
At one end of the scale are marks are that are inherently capable of distinguishing the designated goods or services from the goods or services of other persons. No evidence of use is required to support registration.
At the other end of the scale are marks that are not to any extent inherently adapted to distinguish the designated goods or services from the goods and services of other persons (Section 41(3)). For marks in this category, the Applicant may file declaratory evidence of use to support a claim for acquired distinctiveness but such evidence is limited to only use (not intended use) of the relevant mark up to the priority date. In such circumstances, the Applicant’s evidence would need to demonstrate lengthy and widespread use of the relevant mark in Australia as a trade mark (rather than descriptive use for the designated goods and services) for a number of years.
However, in between these extremes is a category of marks that are considered to some extent, but not sufficiently, inherently adapted to distinguish the designated goods and services from the goods and services of other persons (Section 41(4)). For these marks, the Examiner may have regard to the combined effect of (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 and (iii) any other circumstances. Declaratory evidence which demonstrates use of the relevant mark, the Applicant’s intended use of the mark after the priority date, use of the mark in another country, or use for a more limited range of goods and services than those claimed in the application may be relied on to establish that the relevant mark had the capacity to distinguish the designated goods and services at the priority date.
In the above decision, the Registrar’s delegate held that ELC’s >HAIR mark did not have sufficient inherent adaptation to distinguish the Designated Services from the services of other persons. He then concluded that it was “likely that other traders of the Designated Services may desire to use a trade mark with the same word combined with a similar symbol or embellishment such as the ‘>’.”
The fact that ELC had secured registration of the >HAIR mark in the United Kingdom, New Zealand and Switzerland was insufficient to alter the delegate’s decision.
In the absence of any evidence of use (or intended use) of the >HAIR mark filed by ELC, the delegate concluded that the application for the >HAIR mark must be rejected.