Is "sounds different" a trade mark?

The Federal Court has found that "sounds different" is not capable of distinguishing services related to radio broadcasting on the rather surprising grounds that the public had been educated to associate the strapline with the applicant's radio network.

DMG applied to register "sounds different" as an Australian trade mark in connection with its radio broadcasting services. It had not used the sign before the date of application but, after making the application, it had used it extensively as the "positioning statement" (or strapline) for its NOVA radio network. As a result of the use after the application had been made, the public had in fact come to associate "sounds different" with DMG (i.e., it had become distinctive in fact). Austereo, having lost its opposition to registration before the Registrar appealed to the Federal Court .

The judge found that "sounds different" does have some inherent capacity to distinguish radio broadcasting services, but not enough to warrant registration in its own right. It was therefore necessary to consider whether use or other circumstances were sufficient to render "sounds different" registrable under Trade Marks Act (Cth) s 41(5) .

His Honour rejected Austereo's argument that only use prior to the date of application could be taken into account in deciding whether the mark was registrable under ). Use after the date of application could be taken into account, however, the use made here did not support registration as "sounds different" had been used in such "close temporal or spatial relationship" to NOVA that the public had been educated to associate the two.

One problem with this analysis, with respect, is that it does not leave much, if any, scope for use or other circumstances to support registration of a trade mark. Indeed, one might have thought that the point of allowing use after the priority date to be taken into account was to test the extent that the public had been educated to treat the sign as a trade mark. In reaching his conclusion, the judge drew support from Jacob J's ruling in British Sugar v James Robertson [1996] RPC 281. At 306, Jacob J noted that the issue is a question of degree and identified the real question as being whether the mark had acquired a sufficiently distinctive character to be registrable. British Sugar was a case where the trade mark, "Treat" had been held to be devoid of any capacity to distinguish, so was not really applicable. Moreover, the finding that the public did associate "sounds different" with DMG (or its NOVA radio network) would appear to result in a positive answer to Jacob J's question.

Further, even if "sounds different" had been registrable, it would not have been registrable for "production of radio programmes". While DMG did in fact produce radio programs, that production was entirely subsumed within its broadcasting activities. This finding too might come as a surprise to some trade mark practitioners. It is, with respect, perhaps consistent with those cases that have held that purely internal use is not trade mark use.

Posted: Monday - 04 October, 2004 at 12:30 PM         |

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