‘Curveball’ Trade Mark Decision Handed Down On Common Usage Term

“Curvaceous”, an everyday term frequently used to describe ‘fuller figured’ women has come under the spotlight in a surprise decision by the Registrar of Trade Marks.

Curvaceous For Women With Curves

In July 2020, SJT Enterprises Pty Ltd filed an application to register the trade mark ‘Curvaceous For Women With Curves’, the brand name of its plus size retail clothing operation.

The application was initially rejected on the grounds that ‘curvaceous’ is an example of everyday vocabulary that is used in the ordinary course of business by other traders in the retail clothing industry, and that it lacked the necessary degree of distinctiveness, either inherent or acquired.

Not satisfied with the outcome, SJT Enterprises requested a hearing.

The Initial Application

Initially the examiner rejected the application under Section 41(3) of the Trade Marks Act 1995, stating:

Your trade mark is the words CURVACEOUS FOR WOMEN WITH CURVES.

A curvaceous woman has a body with attractive curves. CURVACEOUS is descriptive of clothing designed to be worn by curvaceous women. The words FOR WOMEN WITH CURVES serve to define the word CURVACEOUS and describes further the clothing goods and the retail of these goods. As a trade mark needs to be something that other traders do not use in the normal course of their trade, everyday language and vocabulary should remain available for all traders to use. Your trade mark is descriptive with regard to the services you have claimed and it is unable, by itself, to distinguish your services from those of other traders in the same industries.

Other traders are likely to need to use it in relation to their goods and/or services in the normal course of trade.

Section 41(3)(a) of the Trade Marks Act in particular, provides that inherent adaption
is to be the starting point for an assessment. Under this section, a trade mark cannot be deemed as being capable of distinguishing the designated goods or services from the goods or services of other persons, where the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

The Trade Marks Act also provides a defence against infringement, stating that a person does not infringe a registered trade mark when a trade mark cannot be deemed capable of distinguishing the designated goods or services from the goods or services of other persons, where the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

To determine whether there has been an infringement, the Registrar undertakes an analysis, with reference to all relevant matters, of the extent to which the trade mark’s inherent adaptation distinguishes the applicant’s designated services from the services of other traders.

The High Court in the 2014 case of Cantarella Bros Pty Ltd v Medena Trading Pty Ltd, described the consideration as a two-step process:

1. A determination of the ‘ordinary signification’ of the sign in Australia to those who would purchase, consume or trade in the goods; and
2. Once ordinary signification is established, a consideration of the likelihood of the sign being desired for use by other traders.

This process involves an assessment of the trade mark in its entirety (or ‘as a whole’, as confirmed by the Registrar in the Curvaceous For Women With Curves hearing), rather than dissecting the trade mark, or scrutinising it in segments.

Consideration of the likelihood of the sign being desired for use by other traders was discussed in Registrar of Trade Marks v Du Cros. In this case it was confirmed that the answer depends on “whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.”

Similarly, in Clark Equipment v Registrar of Trade Marks, Kitto J confirmed that “traders in the ordinary course of their business and without any improper motive 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.”

The examiner did not proceed to a consideration of the application under Section 41(4).

The Hearing

In April 2021, the matter proceeded to a hearing where the registrar considered again the examiner’s grounds for rejection. Initially, the registrar considered inherent adaptation of the trademark under Section 41, to ascertain whether it was possible “to distinguish the Applicant’s designated services from those of other traders”. In doing so, the registrar remarked that this was just the starting point for an assessment under Section 41.

From this initial assessment, the registrar found that due to use of the word “curvaceous” by several traders other than the applicant, as well as the “common practice of naming categories of clothing after types of figures or body shapes”, that term alone was not sufficiently adapted to distinguish the applicant’s services.

However, the registrar also noted that this finding alone was not in itself enough to reject the application. Accordingly, she continued to consider the trade mark as a whole – “Curvaceous For Women With Curves”.

Again, the registrar found that the full trade mark too had an ordinary signification, and so was not satisfied that it was sufficiently adapted, stating that it is “plausible that the Trade Mark, despite being comprised of several words which are unpunctuated, is one that other traders would think of and desire to use.”

However, she also found that there was no evidence that traders do in reality “think of and desire to use” the particular trade mark, and “that ‘curvaceous’ is not as common as ‘plus size’ or other descriptions of body type”. For these reasons, she stated that it was necessary for the application to proceed to further consideration under Section 41(4), an assessment that had not been undertaken in the initial examination.

Assessment under Section 41(4) requires the registrar to take into account the combined effect of the trade mark’s degree of inherent adaptation to distinguish, as well as any use or intended use of the trade mark, and any other circumstances.

“Any Other Circumstances”

In considering ‘any other circumstances’ under Section 41(4), the registrar first turned to the applicant’s use of the trade mark. She noted that SJT Enterprises had been using the word “curvaceous”, and operating the website “www.curvaceous.com.au” since 2007, which she considered a significant period of time. She also emphasised that any “acquired distinctiveness”, attained through use of the trade mark had the capacity to impact on the distinctiveness of the trade mark “Curvaceous For Women With Curves”, as a whole.

In assessing the ways in which the trade mark had been used by the applicant, the registrar noted that the applicant had invested significant sums in advertising in the four financial years preceding 2020 (including Google Adwords, Facebook, Mailchimp and radio advertising), and had spent substantial amounts on search engine optimisation. Each of these advertising strategies had contributed to increased (and increasing) exposure, including strong organic search engine results, with the registrar finding that the Australian results of a Google search of the word ‘curvaceous’, returned the top eight results to the applicant.

Upon weighing the evidence of the ways in which the applicant used the trade mark against the measure of inherent distinctiveness the trade mark was found to possess, the registrar ultimately accepted the application. She noted that “use of the words CURVACEOUS FOR WOMEN WITH CURVES has been demonstrated for more than nine years … At the same time, the leading word of the Trade Mark, being the word ‘curvaceous’, has been shown to have acquired a degree of distinctiveness which sufficiently imbues the Trade Mark. Growth in sales has occurred each year, and is projected to increase significantly. The avenues by which the Applicant has advertised indicates increasing exposure, and in particular organic internet search results predominantly relate to the Applicant.”

Conclusions

This case demonstrates that when considering whether or not a common usage term will be registrable, the outcome may depend significantly on the ways in which, and how long, the trade mark has already been used by the applicant. Consideration of these elements, in conjunction with other supporting evidence such as sales, particular actions taken that have potential for establishing marketplace recognition, and other relevant factors, will establish whether or not the trade mark has acquired the requisite degree of distinctiveness.

The case also establishes that where that common term is accompanied by other words, it is possible to acquire necessary distinctiveness when viewed in the context of that trade mark in its entirety, particularly with reference to the requisite “other circumstances”.

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Article by Daniel Abraham | Registered Attorney & Principal at Platform®IP

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