Case: Registrar of Trade Marks v W &amp; G Du Cros Ltd [1913] AC 624
Outcome: cited
was common ground between the parties that the relevant principle governing inherent adaptability was that stated by Kitto J in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 at 514 where, after discussing the well-known observations of Lord Parker of Waddington in Registrar of Trade Marks v W &amp; G Du Cros Ltd [1913] AC 624 at 634 635, his Honour said: ... the question whether a mark is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives&#8212;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&#8212;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. In Air Express International (Australia) Pty Ltd v Australian European Insurance (Brokers) Pty Ltd (1999) 49 IPR 435 , in dismissing opposition to an application for registration of the letters "AEI" and a logo comprised of those letters in a stylised format, the Deputy Registrar of Trade Marks said (at 439 440): The question of trade marks consisting of three letters has long been an issue for the registrar. Under the old law, the Trade Marks Act 1955 (Cth), where it was a question of whether a trade mark was distinctive, three letter marks were, in the main, treated as not prima facie qualified for registration. This view was in line with Lord Parker's dictum that "initials are even less adapted for trade mark purposes than names": Re W &amp; G du Cros Ltd's Application (1913) 30 RPC 660 at 672. Under the old legislation, it was the registrar's practice, prima facie, to accept three letter marks only if the letters formed a pronounceable word. The test under the new law, however, is not whether the trade mark is distinctive, but whether it is capable of distinguishing. The registrar, to this end, has adopted a new practice based on an assessment of the likelihood of others' needs to use letters, particularly as initials. It is useful for me to quote from the Trade Marks Office Draft Manual of Practice and Procedure at 22.9. 9. Letters Trade marks consisting of one or two letters are prima facie unfit for registration because of a common need for their use in the general market place. The likelihood of other traders needing to use simple unembellished combinations of one or two letters in the form of initials or abbreviations is quite high. One or two letter trade marks, unless represented in a very unusual manner, possess little inherent adaptation to distinguish and can only be registered with significant evidence of use in terms of s 41(5) and (6). There is likely to be less need for use of combinations of three or more letters and such trade marks are prima facie capable of distinguishing. For information on how the courts have treated letter trade marks, see Registrar of Trade Marks v W &amp; G Du Cros Ltd (W &amp; G case ) 29 RPC 74 and RPC 653. 9.1 One and two letter trade marks One and two letter trade marks without significant get up are not prima facie registrable. ... 9.2 Three or more letter trade marks Trade marks consisting of three or more letters are prima facie capable of distinguishing unless they lack inherent adaptation to distinguish because they are well known acronyms or abbreviations used on or in relation to the goods and/or services concerned. The issue of pronunciation is not relevant ... The submission from Mr Condon is that the application trade marks are merely part of the applicant's trade name and he cites Re Application by American Tobacco Co [1996] ATMO 29 ; (1996) 35 IPR 98 as support. That case, however, finds that the words "The American Tobacco Company" are generic and are therefore not capable of distinguishing one American tobacco company from another. The AEI trade marks in suite do not suffer from a generic application of that kind. The American Tobacco Co case is therefore not to the point. The evidence of the opposition certainly establishes that there is indeed one other service provider with the same initials. However, I think that a single example is not enough to find that the registrar's practice in relation to three letter marks is not a good one. AEI has not been shown to have any meaning that renders it not capable of distinguishing and I do not agree with Mr Condon that the fact it coincides with the initials of the company name of its owner indicates that it lacks that capacity. In short, I do not think it is likely that many other insurance suppliers and brokers are likely to want to use the initials AEI. I therefore find that, in terms of s 41, there is no ground for rejection.