The Australia Day long weekend seems an appropriate time for the Australian press to run a story about an internationally famous Australian boy-band that was denied protection for its trade mark because an officer in the Australian Trade Marks Office had never heard of it.  Specifically, on 24 January 2015 – two days prior to Australia’s national day – News Ltd outlets reported that an application by the production company behind ‘5 Seconds of Summer’ to register ‘5SOS’ as a trade mark had been rejected for this reason.

The story, as it happens, is only partly correct.  It is also entirely unfair on the Trade Marks Office, and the officer in question, who was just doing his job.  The application in question, no. 1556294, was in fact accepted for registration in early December, nearly two months before an entertainment reporter discovered the story, and decided to ‘name and shame’ Hearing Officer Iain Thompson for his apparent ignorance of global teen culture.

It is true, however, 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 were amended a number of times, including deletion of class 25 in its entirety.

The lesson in this for all trade mark applicants is that it does not matter how famous you are (or think you are), the ‘rules’ of trade mark registration are the same for everybody!  Certainly there are circumstances in which notoriety may enable a trade mark 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 trade mark is sufficiently well-known to justify registration.  In general, nobody is entitled to expect that a trade marks examiner will simply take ‘official notice’ of fame.

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

Barriers to registration of trade marks

The two main barriers that may prevent a trade mark from being registered are: descriptiveness; and deceptive similarity to prior applications and registrations.

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

Additionally, a trade mark that is similar to one that is the subject of an earlier application or registration may encroach upon the rights of the prior owner, and may result in consumer confusion.  The potential for consumers to be deceived or confused by similarity between trade marks 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 trade marks.  Indeed, 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 trade mark laws do not play favourites.  The fact is that, assuming neither trade mark has acquired any special notoriety, it would be very easy for consumers to be confused about whether or not goods marked ‘5SOS’ are somehow related to those marked ‘SOS’, or any similar minor variation.

But surely notoriety must count for something?

It is a matter of common experience that if a trade mark becomes sufficiently well-known, and uniquely associated with its owner, then 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 trade mark as descriptive as AUSSIE HOME LOANS can be registered if the applicant is able to furnish sufficient evidence to establish that it has become distinctive (it is Australian trade mark registration no. 747823).

However, the key word here is ‘evidence’.  No trade mark 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 trade mark is famous.

Indeed, in the ‘5SOS’ case, the applicant did not even attempt to prove fame or notoriety.  Rather, it relied upon an argument that the trade mark would be pronounced ‘five-soss’, and would therefore be readily distinguished from prior ‘SOS’ trade marks 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 is missing in the applicant’s evidence is a showing that a sufficiently large proportion of the relevant consuming public are familiar with ‘5 Seconds of Summer’, and the common pronunciation of the abbreviation ‘5SOS’.

So why did ‘5 Seconds of Summer’ not prove their fame?

The article published by News Ltd implicitly ridicules the Hearing Officer for having ‘never heard’ of ‘5 Seconds of Summer’, despite them being ‘one of the biggest bands in the world’.

Yes, right now ‘5SOS’ is enjoying a high level of international fame.  However, the Wikipedia entry for the band reveals that this is a comparatively recent development.  The band formed only 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 UK, US, 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’ trade mark 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 24 September 2014.  For most of this period, the band was not sufficiently famous to establish that ‘5SOS’ would be differently pronounced by consumers than similar prior trade marks.  Even now, the ‘5SOS’ trade mark 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 Trade Marks Office, unless they can show they deserve it.  Fortunately, decisions on trade mark registration are not made by News Ltd entertainment reporters, but by trained and experienced officers who are familiar with the law, and how it is applied.

Conclusion – lessons for other applicants

Applicants will sometimes be required to provide evidence in order to secure registration of their trade marks.  In particular, when objections to registration are raised based on descriptiveness, or on similarity with prior trade marks, an applicant may need to establish that it has been using a trade mark during a relevant period of time, and possibly also that the trade mark 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 Trade Marks Office is to apply the rules without fear or favour.  Personal knowledge of a trade mark – or of a band or other famous persons or entities – cannot be substituted for actual evidence of reputation.

Furthermore, the evidence must support the arguments for registration of the trade mark.  If, for example, it is necessary to show that most consumers would know to say ‘5SOS’ as ‘five-soss’, rather than ‘five-ess-oh-ess’, then 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 trade mark 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, right now, it is not there yet!

Addressing objections to registration of a trade mark can be tricky, especially where evidence must be prepared to support an argument.  Watermark has a number of experienced specialist trade mark practitioners who can advise and assist in such cases.