Recently the Australian press ran a story about an internationally famous Australian boy band being denied protection for its trademark because an officer in the Australian Trademarks Office (ATMO) had never heard of it. On January 24 2015 News Ltd reported that an application by the production company behind 5 Seconds of Summer to register ‘5SOS’ as a trademark had been rejected for this reason.

This story is only partly correct. The application in question, 1556294, was in fact accepted for registration in early December 2014, nearly two months before a reporter decided to ‘name and shame’ Hearing Officer Iain Thompson for his apparent ignorance of global teen culture. However, it is true that the application to register 5SOS for various goods and services – including recordings in Class 9, printed matter in Class 16, clothing in Class 25 and entertainment services in Class 41 – was rejected a number of times by the examiner.  Eventually, the applicant requested a hearing which resulted in acceptance, but not before the specifications of goods and services had been amended a number of times, including deletion of Class 25 in its entirety.

The lesson for all trademark applicants is that it does not matter how famous you are (or think you are) – the rules of trademark registration are the same for everybody. There are circumstances in which notoriety may enable a trademark to be registered, despite the existence of one or more barriers. In such cases it will generally be up to the applicant to satisfy the examiner that its trademark is sufficiently well known to justify registration. In general, nobody is entitled to expect a trademark examiner simply to take ‘official notice’ of fame.

So, what happened to 5SOS? And what should other trademark applicants do to ensure that they do not find themselves in a similar predicament?

Barriers to trademark registration
The two main barriers that may prevent a trademark from being registered are descriptiveness and deceptive similarity to prior applications and registrations.

A trademark that describes the goods or services, and is therefore likely to be required for non-trademark purposes by other traders, will be denied registration. A well-known Australian example of this type of mark is AUSSIE HOME LOANS.

Additionally, a trademark that is similar to one that is the subject of an earlier application or registration may encroach on the rights of the prior owner, and may result in consumer confusion. The potential for consumers to be deceived or confused by similarity between trademarks is another reason for which registration may be denied.

It is apparent that 5SOS has no inherent descriptive significance. The difficulty encountered by 5 Seconds of Summer was due to similarities with prior trademarks. There are a number of pre-existing Australian applications and registration in Classes 9, 16, 25 and 41 for trademarks that consist of, or include, the letters ‘SOS’.

While the band’s 5.83 million Twitter followers would no doubt argue that they would not be confused between SOS and 5SOS, the trademark laws do not play favourites. Assuming that neither trademark has acquired special notoriety, it would be easy for consumers to be confused about whether goods marked 5SOS were somehow related to those marked SOS, or any similar minor variation.

Notoriety
It is a matter of common experience that if a trademark becomes sufficiently well known and uniquely associated with its owner, it will be widely recognised as serving to distinguish the specific goods or services of that trader from other similar goods or services. Even a trademark as descriptive as AUSSIE HOME LOANS can be registered if the applicant can furnish sufficient evidence to establish that it has become distinctive (it is Australian Trademark Registration 747823).

However, the key word here is ‘evidence’. No trademark applicant is entitled to expect that a decision maker – whether an examiner, a hearing officer or a judge in the Federal Court – will simply accept that a trademark is famous. In the case at hand, the applicant did not even attempt to prove fame or notoriety. Rather, it relied on an argument that the trademark would be pronounced ‘five-soss’ and would therefore be readily distinguished from prior SOS trademarks that would most likely be pronounced ‘ess-oh-ess’. But as the hearing officer pointed out in his written decision (One Mode Productions Limited [2014] ATMO 89), while the applicant "submitted that the pronunciation of the Trade Mark is similar to 'five soss', this conclusion is, in my view, only probable if one is familiar with the musical group and what they call themselves".

This is doubtless correct. What was missing from the applicant’s evidence was a showing that a sufficiently large proportion of the relevant consuming public were familiar with 5 Seconds of Summer and the common pronunciation of the abbreviation 5SOS.

Proving fame
The article published by News Ltd implicitly ridiculed the hearing officer for having "never heard" of 5 Seconds of Summer, despite them being "one of the biggest bands in the world". At present, 5 Seconds of Summer is enjoying a high level of international fame. However, the band's Wikipedia entry reveals that this is a comparatively recent development. The band formed  in 2011 and did not release its first single until November 2012. Its fame grew in 2013 after being selected to support One Direction on that band’s tours of the United Kingdom, the United States, Australia and New Zealand. However, it was really only with the launch of the band’s first worldwide single and album in February and June 2014, respectively, that 5 Seconds of Summer rose to its current heights of notoriety.

The 5SOS trademark application was first filed in May 2013 and initially examined in June 2013. The hearing was eventually held in June 2014 and the hearing officer’s decision published on September 24 2014. For most of this period, the band was not sufficiently famous to establish that 5SOS would be differently pronounced by consumers from similar prior trademarks. Even now, the 5SOS trademark may not be notorious enough among a broad cross-section of consumers, or have been famous for long enough, to overcome the remaining similarity barriers.

The fact is that nobody – not even one of the biggest teen sensations in the world – gets special treatment at the ATMO, unless they can show they deserve it. 

Comment
Applicants will sometimes be required to provide evidence in order to secure registration of their trademarks. In particular, when objections to registration are raised based on descriptiveness or on similarity with prior trademarks, an applicant may need to establish that it has been using a trademark during a relevant period of time, and possibly also that the trademark has acquired a substantial reputation such that it is recognised as distinctive by the relevant consuming public.

It is important to understand the nature, quality and quantity of evidence that may be required. The task of examiners and other decision makers within the ATMO is to apply the rules without fear or favour. Personal knowledge of a trademark – or of a band or other famous persons or entity – cannot be substituted for actual evidence of reputation. 

Further, the evidence must support the arguments for registration of the trademark. If, for example, it is necessary to show that most consumers would know to pronounce 5SOS as ‘five-soss’, rather than ‘five-ess-oh-ess’, the evidence must establish this.

Sometimes there is just not enough evidence available to overcome an objection to registration. The law will often require a showing that a trademark enjoys an established reputation among a broad range of consumers. This kind of notoriety can take years – not mere months – to develop.  It may be that one day, 5 Seconds of Summer will have been famous enough for long enough to register 5SOS in relation to any goods or services with which the band may wish to involve itself.  But it is not there yet.

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.