BLU-RAY mark held to be generic in Australia

Australia
Blu-Ray Disc Association [2011] ATMO 51 (June 17 2011) concerned an application by Koninklijke Philips Electronic NV (the holder) to extend its international registration for the mark BLU-RAY to Australia for a variety of goods in Class 9, including disc players and recorders, blank discs, recorded discs, TVs, video cameras, digital cameras and personal computers. The application was refused on the basis that BLU-RAY had become generic in Australia.

The examiner had issued a Notice of Provisional Refusal in respect of all the goods covered by the registration on the basis that, under section 41(5) of the Trademarks Act 1995 (Cth), the mark BLU-RAY is not capable of distinguishing the holder’s goods. Specifically, the examiner regarded the term BLU-RAY as having become generic, being used in Australia to denote any “large capacity optical disc format that operates with a high frequency blue-violet laser to enable recording, rewriting and play-back of high definition video as well as storing large amounts of data”.

There are several successive questions that need to be asked to determine whether a mark is capable of distinguishing goods and services under Section 41(2).

First, under Section 41(3), the registrar must consider to what extent the mark is 'inherently' adapted to distinguish the designated goods and services. A mark is inherently adapted to distinguish if other traders could not legitimately want to use the mark in the ordinary course of business and without any improper motives.

If other traders would not have a reasonable desire to use the mark, the mark is inherently adapted to distinguish under Section 41(3) and therefore capable of distinguishing goods and services under Section 41(2).

If, on the other hand, other traders might have some legitimate desire to use the mark, then the registrar is required to consider a range of additional issues in order to decide whether the mark is capable of distinguishing goods and services under Section 41(2). The extra considerations are set out in Section 41(5) and include any use or intended use of the mark by the applicant.

Philips argued that the relevant date for evaluating the desire of other traders to use the mark is the date of filing the application. On this basis, it argued that so long as the mark was not generic at the time of filing, any subsequent generic use should be irrelevant.

However, the delegate did not accept this argument. He noted that, although evidence of subsequent generic use is not relevant under Section 41(3), it is relevant when considering the additional questions under Section 41(5). That is, if a mark is found by an examiner to have been inherently adapted to distinguish at the filing date under Section 41(2), then evidence of later generic use will not change this. If, however, the examiner finds that the mark is only to some extent inherently adapted to distinguish, then any subsequent generic use will be relevant to the consideration under Section 41(5) of whether the mark is nevertheless capable of distinguishing goods and services. 

It was accepted that Blu-Ray had been a coined or invented expression when it was first adopted between 2002 and 2004. However, the examiner had not been convinced that, at the time of filing, BLU-RAY was inherently adapted to distinguish goods and services. This meant that analysis of the extra considerations under Section 41(5) was required, including consideration of any subsequent generic use.
The delegate found that, despite the best efforts of Philips, ordinary consumers did not regard BLU-RAY as an indication of source but rather as a descriptive term. This was because:
  • BLU-RAY had been used by the holder and its licensees to describe a quality or characteristic of the products to which it was applied rather than as a product name or brand (uses referred to in the decision included ‘SONY BLU-RAY PLAYER’, ‘Samsung 7.1 Channel Blu-Ray Home Theatre Package’ and ‘On Blu-Ray and DVD’);  
  • articles and press releases both internationally and in Australia referred to the growth of Blu-Ray as a format or digital medium rather than a trademark; and
  • the holder had provided very little evidence of growth in Australia of the use of BLU-RAY “as a trademark”. 
 
The delegate was of the view that, although BLU-RAY had not been generic at the filing date, its subsequent use by the holder and its licensees had caused it to become generic and descriptive and it was no longer used “as a trademark” in Australia. The delegate therefore refused to extend protection in Australia to the mark BLU-RAY in respect of the goods listed, citing Section 41(5) as the ground for rejection.

This decision indicates that, unless a mark is inherently adapted to distinguish goods or services, any evidence of generic use (even after the filing date) may be taken into account in determining whether the mark complies with the requirements of Section 41.

To the extent that a trademark might have become generic since filing, it is therefore important for the applicant to bring compelling evidence to demonstrate use of the mark as a trademark or brand in Australia, as opposed to generic or descriptive use. In the absence of such evidence, the mark may be rejected on the basis that it has become generic and is no longer appropriate for trademark registration.

Sarah Lux, Allens Arthur Robinson, Sydney
 

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