Vehicle manufacturers of all stripes very often use model numbers as sub-brands. These are important ways of communicating to members of the public about the nature of a particular model or style of vehicle.
But sometimes these model numbers serve as more than just a badge of origin. They can also give informed consumers, or at least sales people, very specific information about the style, the engine capacity, and the vintage.
In 2001, iconic Japanese car manufacturer Toyota applied for an Australian trade mark registration for the model number “LS430”. This was an application for a sub-brand of Toyota’s Lexus marque. It was unsurprisingly filed in respect of “ motor cars and parts thereof” in class 12.
The application was rejected by the examiner. The examiner considered the trade mark was one which traders, and certainly car traders, would need to use as a product, model, or catalogue code. Toyota called for an oral hearing on the matter before a delegate of the Trade Marks Registrar. Here is a link to the decision: http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO/2001/50.html
Toyota’s main argument was summarised by the delegate as follows:
“ There is… no evidence to suggest the letters LS are ordinarily used in the motor vehicle trade to refer to any characteristic or quality of motor vehicles, nor is there any evidence of this as far as the numeral 430 is concerned. [Toyota’s attorney] stated that the letters LS were not of the category used in the industry to indicate level of equipment or standard items (such as “GL”). Similarly the numeral 430 would not ordinarily be required by others to identify any characteristic of a motor vehicle. A combination of the letters and numerals would further decrease the prospect of others legitimately requiring to use this particular combination.”
Toyota further argued, amongst other things, that “the examiner should have been satisfied on the balance of probabilities that LS430 was inherently adapted to distinguish, especially since he had no evidence to support his assertion that LS430 would be legitimately required by other motor vehicle traders as a production code and model or catalogue number.” I don’t think it is overstating it to say that Toyota sought to shift the onus to the Trade Marks Register: in essence, the delegate prove the fact that other manufacturers would not need the mark. This was a curious position to take, a stretch of the general presumption of registrability which is contained in the Australian legislation.
At the conclusion of oral submissions, Toyota’s attorney invited the delegate to find evidence for himself, from the internet or motor magazines or newspapers, of the use of the LS430 mark. Oddly, Toyota did not file any evidence of use the mark, which might otherwise have demonstrated to the examiner or to the delegate that the mark has acquired distinctiveness through use in Australia.
In any event, the delegate took up Toyota’s invitation to look for himself. The delegate:
“examined the LEXUS internet web site at www.lexus.com. Information on that site included:
* There were essentially seven models of LEXUS, with the following prefixes:
* LS – “top of the range” luxury sedan,
* ES – “entry level” luxury sedan,
* LX – “top of the range” luxury sports utility vehicle (“SUV”),
* RX – “entry level” luxury SUV,
* GS – “top of the range” luxury :”performance ” sedan,
* IS – “entry level” luxury :”performance ” sedan, and
* SC – a sports convertible.
* Each model prefix was followed by a three digit number (either 470, 430 or 300), which apparently related to the engine displacement of the particular model in centilitres; thus the LX470 has a 4.7 litre engine, the LS430 a 4.3 litre engine, and any “300” has a 3 litre engine.
* The actual models listed on the web site were the LS430, ES300, LX470, RX300, GS430, GS300, IS300 and SC430.
* The web site included a comparison chart between various LEXUS models and those manufactured by other makers, which included:
* The Mercedes S430 (with 4.3 litre engine) as an equivalent model, and
* The Lincoln LS, as a model listed, but not necessarily as a direct equivalent.”
Toyota is far from the only motor vehicle company which engages in this sort of practice. I’ll write on this industry standard in model identification another time.
This search of the Lexus website and the quite plain explanation of the meaning of the sub-brand acronym LS430 was an unfortunate outcome for Toyota, and an improbable omission. In Raytheon Company [2009] ATMO 111 http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO/2010/111.html I successfully argued that the acronym “MALD”, which stood for “Miniature Air-Launched Decoy”, had acquired distinctiveness through use. The fact that an acronym has a particular meaning is not fatal to a trade mark application for the acronym if the applicant can provide evidence of use. Leaving the delegate the opportunity to easily find evidence explaining the meaning of the acronym, and not providing evidence to explain that it had become inherently adapted to distinguish, was, with respect, a strategy error.
The delegate properly noted that, “Given the direct correlation of the number to the engine displacement, and the examples of other vehicle model numbers similarly using the engine displacement as part of a model number (eg “S430”), I cannot conclude that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services”, and in the absence of any evidence to displace that conclusion, rejected the application.