This matter concerned an application by Daimler to register its AIRPANEL trade mark in Australia. The application was initially objected to by the Australian Trade Marks Office on the basis that ‘AIR PANEL’ was a commonly used term in connection with the goods covered under Daimler’s application being, motor vehicle and parts.

Initially Daimler submitted arguments against the objection, which was met with searches conducted by the Examiner to demonstrate that other traders already used AIR PANEL in connection with Daimler’s goods.

At the hearing, the issue at play was the interpretation of the ‘ordinary signification’ of AIRPANEL in connection with the goods. That is, was AIRPANEL on its own sufficient to convey a direct reference to the goods covered under the application.

Daimler argued that AIRPANEL was not a direct reference and was, in fact, an invented term and noted that the mark could not be descriptive, as ‘air does not pass through a panel’. Daimler also argued that the searches conducted by the Examiner were of no benefit in maintaining the objection on the basis that the search results were:

  • mostly after the relevant date;
  • referred only to overseas use; and
  • did not show any other trader using AIR PANEL as a trade mark.

The Hearing Officer largely agreed with Daimler’s argument, noting:

AIRPANEL is an invented word with no dictionary meaning. Combining the dictionary terms ‘air’ and ‘panel’ could result in a word that signifies a panel made of air, or a panel made to stop or control air. Neither of these significations amount to a direct reference to the character or quality of the Holder’s Goods.

In addition, it was made clear by the Hearing Officer that the searches conducted by the Examiner provided no basis to maintain the objection:

In order to reach the conclusion that the Trade Mark has the proposed signification, I would have to view the Search Results, conclude that because certain traders have used the term ‘air panel’ in respect of car parts, that it must have an ordinary signification and then synthesize the proposed signification from that (very limited and apparently diffuse) use. This assumption is precisely the error identified in Tub Happy.

The application has been accepted for registration.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.