30 April 2010

Delegate Finds LEAFGUARD not Capable of Distinguishing

Richard Jelacic v Leafguard Gutter Systems Inc [2010] ATMO 20

Leafguard applied to register the trade mark LEAFGUARD  on 12 Feb 2007 in respect of gutters, machines for producing gutters and installation of gutters. The application was advertised for opposition purposes on 13 March 2008. Jelacic filed a notice of opposition on 29 May 2008. Jelacic's grounds were based on s41 and s43.  I will just consider s41, because the opponent, representing himself, became a bit confused and there was nothing in the s43 ground.


S41 is concerned with the inherent ability of a trade mark to serve as a "badge of origin", that is, its capability to distinguish the goods or services of the applicant from the goods or services of other persons. The question to be asked is whether the word is one which other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods. In terms of s41, if the Registrar finds that the trade mark is not inherently adapted to distinguish then the onus is on the applicant to establish that, because of the extent to which the applicant has used the trade mark before the filing date, it does distinguish the designated goods or services from the goods or services of other persons.

Jelacic adduced evidence that the words "Leaf Guard" were used in patents from 1988 to 1990. Other evidence showed use in newspaper advertisements and internet examples. There was an issue with the dates, but the Delegate was satisfied that they indicated use in Australia. Leafguard contended that the capacity to distinguish should be tested as at the filing date of the application. However, evidence as to how traders will behave is relevant, provided their behaviour is not improperly motivated. The Delegate was satisfied that the words "Leaf Guard" are used or likely to be used in Australia to describe an addition to a roof gutter designed to keep leaves out. However, it was "difficult to see" how other traders would need the words for machines for producing gutters. On the other hand, the Delegate found that the ability of LEAFGUARD to distinguish the service of installing gutters was limited and the onus passed to Leafguard to show, through use, that it had become capable of distinguishing. But Leafguard had elected not to provide evidence. So this ground for opposition was established for the installation services and not the machines.

I like this case because it's not often a self-represented party has a win, or at least a partial win.

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