The word "TAPESTRY" has been held to not be, to any extent, inherently adapted to distinguish "arranging and conducting of live exhibitions, functions, conferences, conventions, seminars and meetings in the fields of education, culture and entertainment for non-business and non-commercial purposes" services in class 41.
Hilton Worldwide applied to register TAPESTRY for "Entertainment services in the nature of presenting live dance, variety and musical performances; nightclub services; health club services, namely, providing instruction and equipment in the field of physical exercise; arranging and conducting of live exhibitions, functions, conferences, conventions, seminars and meetings in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes; theatre and opera reservations" in class 41.
The Examiner at IP Australia objected to the registration of the trade mark on the basis that it indicates that the "exhibition, function, conference, convention, seminar and similar services for the purposes of education, culture and entertainment are related to tapestries".
When written submissions did not overcome the objection, a Hearing was requested.
Hilton acknowledged that the word TAPESTRY had a meaning in relation to a specific object i.e. a piece of tapestry, but the word could not be descriptive of any services as it required an action or a verb which can be demonstrated or presented. It argued that as the word TAPESTRY does not have a "direct reference" to the services, the trade mark is capable of distinguishing the services when the Cantarella* test is applied to the mark.
The Delegate disagreed. He looked to dictionary definitions for the word TAPESTRY and also to what the word may mean to consumers in Australia who purchase, consume or trade in the relevant goods or services to consider the "ordinary signification" of the word. He concluded that those consumers would interpret the word TAPESTRY as being an "art form which can constitute the subject matter of an event". Thus, he held TAPESTRY would be interpreted as the subject matter of the services i.e. exhibitions, functions, conferences, conventions, seminars and meetings relating to the art form of tapestry and that other traders who arrange and conduct live events about tapestry may think of and legitimately desire to use the word TAPESTRY or a mark so resembling it.
The Applicant also relied on the state of the Register for comparable trade marks in Australia and the registration of the TAPESTRY trade mark in foreign jurisdictions to support the inherent distinctiveness of the TAPESTRY trade mark in Australia. Both these lines of argument were rejected by the Delegate on the basis that each trade mark application must be assessed on its own merits rather than the state of the Register. Although the evidence of registration in foreign jurisdictions may be relevant where a matter approaches "the borderline", this was not the case here and the foreign registrations were given no weight.
Notwithstanding the Delegate's finding, he agreed that the trade mark could be accepted if the Applicant deleted "arranging and conducting of live exhibitions, functions, conferences, conventions, seminars and meetings in the fields of education, culture and entertainment for non-business and non-commercial purposes" from the statement of services. The Applicant agreed to this and the mark has been accepted for the other services listed in the application.
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