AAI Limited v Insurance Australia Group Limited
[2023] ATMO 90
•10 July 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Insurance Australia Group Limited to registration of trade mark application number 2141048 (class 36) - BUILD IT BACK BETTER - in the name of AAI Limited
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Miriam Stiel and Christina Linforth-Barker of Allens Patent & Trade Mark Attorneys Applicant: Dominique Griggs of Counsel instructed by Gadens |
Decision: | 2023 ATMO 90 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41 and 62A – s 41 established – evidence of use insufficient – registration refused |
Background
On 4 December 2020 (‘Relevant Date’) AAI Limited filed (‘Applicant’) an application for a trade mark under the Trade Marks Act 1995 (Cth)[1] outlined below:
Trade mark: BUILD IT BACK BETTER (‘Trade Mark’)
Services: class 36: insurance; insurance services; insurance management; insurance affairs; insurance advice; insurance brokerage; insurance consultancy; insurance underwriting; accidental, home, property and real estate insurance; actuarial services; financial services relating to insurance; insurance and financial research; research services relating to insurance; provision of facilities for reporting and for making insurance claims; provision of information and advice in relation to all of the foregoing services; provision of all the aforesaid services on-line, via a computer network, artificial intelligence, chat bot, machine learning, telephone, mobile devices, computers, and other mobile communication devices, or by other electronic means (‘Designated Services’)
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) (‘Act’) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
On 5 July 2021 Insurance Australia Group Limited (‘Opponent’) filed a Notice of Intention to Oppose, followed by a Statement of Grounds and Particulars on 5 August 2021. The Applicant filed a Notice of Intention to Defend on 3 November 2021. The Opponent filed Evidence in Support (‘EIS’) on 9 February 2022, which consists of a declaration of Mark Leplastrier, an Executive Manager in the Opponent’s Natural Perils team, of 9 February 2022 (‘Leplastrier Declaration’) with Exhibits ML-1 Tab 1 to ML-1 Tab 31. The Applicant filed Evidence in Answer (‘EIA’) on 9 May 2022 consisting of a declaration of Bernadette Norrie, Head of Suncorp Consumer Insurance at the Applicant, dated 9 May 2022 (‘Norrie Declaration’) with Annexures BN-1 to BN-16; and a declaration of Joshua Kelland, former Executive Manager of Product Optimisation and Development at the Applicant and current Head of AAMI and Bingle Insurance, of even date (‘Kelland Declaration’) with Exhibits JK-1 to JK-9. On 18 July 2022 the Opponent filed its Evidence in Reply (‘EIR’) being a declaration of Sally Kiernan, Executive Manager in the Marketing team of the Opponent, dated 15 July 2022 (‘Kiernan Declaration’) with Exhibits SK-1 to SK-4.
The period for evidence ended and both parties requested to be heard. The Opponent filed its outline of submissions on 28 March 2023 and Applicant on 4 April 2023. I heard the matter as a delegate of the Registrar of Trade Marks on 11 April 2023 by teleconference. Miriam Stiel and Christina Linforth-Barker from Allens Patent & Trade Mark Attorneys appeared on behalf of the Opponent. Dominque Griggs of Counsel, instructed by Sandra Camilleri and Harrison Richards of Gadens appeared on behalf of the Applicant. Tammy Dover from the Opponent was also in attendance as an observer.
Evidence
EIS
In summary, the Leplastrier Declaration contains evidence of general use of the terms ‘build it back better’, ‘building back better’ and ‘build back better’, mainly by governments, international bodies, in academia, think tanks and research institutes.
EIA
Norrie Declaration
The Norrie Declaration and Annexures provide sales figures and advertising expenditure, a product disclosure statement (‘PDS’), examples of marketing activity in the press, radio and social media where the Applicant has used the Trade Mark. In addition, BN-15 is a screen capture of a competitor insurer’s (‘Sure Insurance’) website and PDS offering insurance products with a resilience building focus.
Kelland Declaration
The Kelland Declaration details the background for the Trade Mark’s conception, starting with exploratory activities about the resilience of buildings and infrastructure, then informing the design of insurance products. An early program of strata insurance with a ‘resilience improvement’ feature in policies is said to be the genesis for an insurance product seeking to foster resilience in relation to which the Applicant went on to use the Trade Mark. Various other internal documents reflect the resilience building themes. An internal working group of the Applicant, concerning fostering of resilience, took the Trade Mark as its name. Documents about the selection of a product name and advice from marketing are provided.
EIR
The Kiernan Declaration consists in summary of examples of other insurance companies using the Trade Mark and similar terms in respect of insurance services, after the Relevant Date.
Grounds and onus
The relevant standard of proof is the civil standard on the balance of probabilities[2] and it is the Opponent who bears the onus of proof.[3] The Opponent asserts grounds of opposition under ss 41 and 62A. To succeed, the Opponent must establish at least one of those grounds of opposition.
Consideration
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J).
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
Section 41
The Opponent presses s 41, which relevantly provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
If I am satisfied that the Trade Mark is not capable of distinguishing the Designated Services from those of other persons, s 41 requires that the Trade Mark be rejected. Relevant to this assessment is whether the Trade Mark has ‘inherent adaptation’ to distinguish. If the Trade Mark has ‘sufficient inherent adaptation to distinguish’ the Designated Services, then a s 41 ground for rejection does not exist. However, if I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Designated Services, the next question will be whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that at the Relevant Date it did not in fact distinguish the Designated Services based on the extent of the Applicant’s use.[4] If the Trade Mark has some inherent adaptation to distinguish, it should be rejected only if I am satisfied that, even after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant’s use of the Trade Mark, and other relevant circumstances, the Trade Mark did not or would not distinguish the Designated Services.[5]
[4] Section 41(3).
[5] Section 41(4).
In deciding a trade mark’s inherent adaptation to distinguish, Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) explained:
[T]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[6]
[6] (1964) 111 CLR 511, 514 (‘Clark Equipment’), cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).
The majority in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’) held:
The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[7]
Ordinary signification
[7] Cantarella ibid [59].
When deciding a s 41 matter I must firstly consider any ordinary signification of the Trade Mark for the Designated Services. The Opponent asserts that the ordinary signification of the Trade Mark is descriptive of financial and insurance services which involve the rebuilding of homes and other assets to a better state than before damage by some disaster or other adverse event. That is, the Trade Mark describes the services as being services which facilitate rebuilding of a home or property to a better state than before, with a higher disaster-resilience. The Opponent asserts that the phrase is in common use, for it’s ordinary signification, in the finance and insurance industries.
The Opponent points to many examples of general use of the phrase ‘build it back better’, ‘building back better’ or ‘build back better’ since 2004 in the context of disaster recovery; climate change and weather events, including for buildings and infrastructure; and economic and social recovery from the impacts of the COVID-19 pandemic. These examples are extensive and go beyond a contextual use of the words, for example simply in the middle of the sentence. That is, the words are used as if they refer to a known concept, approach or theory associated with disaster recovery. The Applicant asserts that the words are nebulous in their reference; to what ‘it’ refers and by who, and what, is ‘build back’ is said to be unclear and that there is no mention of the Designated Services in the Trade Mark.
The individual words of the Trade Mark have clear ordinary meanings. The words ‘build back’ or ‘build it back’ mean to restore something to its original state. ‘better’ denotes an improvement of some kind. While this sheds some light on a potential ordinary signification of the Trade Mark, dissection of its words is not the approach required by law—it is the whole Trade Mark which I must consider. I must also consider the ordinary signification that the Trade Mark has for the Designated Services, all being insurance and related services. In the totality of the Trade Mark, in the abstract, the word ‘it’ is unspecific in what exactly is referenced and what exactly is built back. Whilst the Trade Mark does have an alliterative construction, with three repetitions of words beginning with the letter ‘B’, and the words ‘build it back’ are perhaps less common in use compared to the word ‘rebuild’, given the extensive evidence of a discourse around the specific phrase ‘build it back better’ and similar, I do not consider these points as conferring the Trade Mark with inherent adaptation to distinguish the Designated Services. Nor do I consider the asserted unclear reference to what is being built back as giving the Trade Mark any adaptation to distinguish. Readily, in the context of the Designated Services, what is built back is whatever property or subject matter is sought to be insured. Whether the word ‘better’ refers to the building process or the result of it is not clear. However, insurance services, especially those of a generalised nature very often involve the facilitation of ‘rebuilding’ or recovering a position once held, physical property, health or money. Insurance services also often offer coverage for the ‘rebuilding’ of some premises of property after some incident. The word ‘rebuild’ clearly is also operative in relation to physical buildings and premises. The words ‘rebuild’ or ‘recover’ have perhaps a slightly more common use than the words ‘build back’. However, ‘build back’ still carries a signification, offering an ordinary way to refer to rebuilding or recovery. That the word ‘build’ is a verb describing an activity which insurance services do not directly do does not make the words any less apt or relevant to the services. Within the language of the Designated Services is insurance services of a general or specific nature, relating to physical property, buildings and homes. In the context of ‘insurance services’ the words ‘build back’ would be received as referring to the rebuilding of property after some unspecified disaster.
In this matter the Opponent provided compelling evidence of the use of the words ‘build it back better’, ‘building back better’ and ‘build back better’, for various contexts involving natural and other disaster events. I pause here to note that these three phrases so nearly resemble one another. Given their close proximity in look, sound and meaning to the Trade Marks, use of the phrases ‘build back better’ and ‘building back better’ are reflective of the sentiment of Kitto J when he spoke of other traders’ ‘desire to use the same mark, or some mark nearly resembling it’.[8] The Opponent asserts that the words or words so nearly resembling the Trade Mark are in ‘common use’ and that ‘build it back better’ is a concept with a known meaning. These assertions are supported by the evidence.
[8] Clark Equipment (n 6) 514 (Kitto J) (emphasis added).
A Wikipedia extract in the Leplastrier Declaration Exhibit ML-1 Tab 1 notes that as a concept ‘build back better’ concerns improvement of land use, spatial planning and construction standards through recovery processes, with apparent expansion to represent a broader opportunity to build greater resilience in recovery. ML-1 Tab 2 contains an extract from a United Nations publication defining ‘build back better’ as, ‘the use of the recovery, rehabilitation and reconstruction phases after a disaster to increase the resilience of nations and communities through integrating disaster risk reduction measures into restoration of physical infrastructure and societal systems, and into the revitalization of livelihoods, economies and the environment’. Other evidence reflects a similar concern including state and local government documents, Hansard, an ABC radio program transcript noting the discrete conception of ‘build it back better’ as being words commonly used after a disaster. I need not list every single example and it is sufficient to say that there is overwhelming evidence of a concept in the words ‘build it back better’ or at least ‘build back better’ in line with meanings I describe above.
The concept of ‘build it back better’ appears to be one which has been widely propagated in public discourse and there is evidence of its interaction with, and relevance for, the insurance industry. There is a public discourse using this term and efforts around it in relation to disasters and unforeseen events. I recall here that disasters and adverse weather events are at the very core of insurance services. Exhibit ML-1 Tab 22 is an extract from an article from the Australian Institute of Architects, dated 26 November 2020. It discusses a meeting of peak construction bodies, including insurance professionals and other experts, reflecting a drive for resilience. This meeting was jointly convened by Master Builders Australia, a peak body, and the Insurance Council of Australia (‘ICA’) and is summarised as an effort to ‘build back better’ by one commentator. There is also a copy of the ICA’s submissions to the Tasmania Fire Service Act public consultation, which in part discusses the role of insurance and underinsurance to ‘build back better’. The material above in summary shows that the phrase ‘build it back better’, or something so nearly resembling it, is a known concept with an understood meaning.
The Applicant answers the Opponent’s evidence asserting this signification does not relate to the insurance context. In reply, the Opponent directs me to the Leplastrier Declaration at Exhibit ML-1 Tabs 23 and 24 and the Kiernan Declaration at Exhibits SK-2 to SK-4, which do relate to use in the context of insurance and suggest the words would be understood as having a meaning in those contexts. Exhibit ML-1 Tab 24 for example is a report by the ICA titled ‘Climate Change Impact Series: Tropical Cyclones and Future Risks’. This document, under the subtitle ‘The role of the insurance industry in building resilience’, notes work of the insurance industry as important to support efforts about ‘build back better initiatives’. This language is suggestive of several separate efforts among different insurers to put in place ‘build back better’ type arrangements. The Opponent otherwise submits that the examples of widespread use are still relevant. The evidence showing wide use for weather events and disasters reinforces the descriptive nature of the Trade Mark. It is apparent that the Trade Mark serves to provide information about the insurance offering.
The Trade Mark is said by the Opponent to be simply describing a feature of the insurance policy offered by the Applicant. In the Applicant’s PDS there are three instances where the Trade Mark appears; these are all descriptive uses which refer to the coverage of the policy. On page 6, under heading ‘what we cover’ the various available coverage is listed, including ‘damage to garden and plants’, ‘accidental breakage of glass’, ‘lock replacement’ and ‘build it back better’. Again, on page 52, under the heading ‘summary of covers’, covered subject matter is listed and build it back better’ appears alongside other general terms such as ‘mortgage discharge costs’ and ‘damage to gardens and plants’. In this context, the words of the Trade Mark merely describe one of several features of the cover or offering. Page 62 summarises the offering again in other words, that is, ‘cover for the costs associated with the purchase and installation of resiliency building enhancements’ in certain cases. Whilst I would not characterise the Trade Mark as shrouded or buried in the PDS, it is notable that the PDS displays the Applicant’s leading ‘Suncorp’ trade mark in relation to the Designated Services. Regardless, the manner in which the Trade Mark is used in the evidence tends to support that it has a readily understood ordinary signification for the Designated Services.
Screen captures from the Applicant’s website again show the words of the Trade Mark under the heading ‘Features’ for policy coverage for home and contents insurance. This context for the use of the Trade Mark by the Applicant supports the notion that use is descriptive and self-evident in meaning in relation to the Designated Services. There the Applicant’s marketing materials do offer some explanation of the words forming the Trade Mark as being essentially resilience building features, reflecting the commonly used meaning of the word. Some the material has the words, ‘How can Suncorp Insurance help build it back better?’ or the phrase is used contextually as part of a sentence, ‘…will build it back better’, which the Opponent says does not amount to use as a badge of origin. This is similar in BN-6, BN-7, BN-10, BN-11 and BN-13. In BN-14 is an article paraphrasing the Trade Mark as in the title as ‘Suncorp customers benefit from the opportunity to rebuild their home stronger’. At the hearing Counsel for the Applicant accepted that not all the Applicant’s examples of use were uses as a badge of origin, though it submits the alleged Trade Marks’ inherent adaptation to distinguish would mean many examples are such. Regardless, I consider this evidence shows how apt and readily the Trade Mark would be received as itself a summary of the resilience building offerings for the Designated Services.
Furthermore, the Applicant has drawn my attention to several registered trade marks which it suggests are analogous to the current circumstances. I do not consider these different earlier trade marks as relevant to the issue at hand. I am satisfied that the ordinary signification of ‘build it back better’ is that the Designated Services are ones which facilitate a building back of an insured person’s property in a way that was better than before damage has been suffered, with an emphasis on being more disaster-resilient. That kind of insurance can aptly be summed up as, ‘build it back better insurance’, as in the Applicant’s own use.
Desire of other traders to legitimately make use of the Trade Mark
Having found that there is an ordinary signification I must now consider whether other traders would be likely to desire use of the Trade Mark for the sake of the ordinary signification which I have noted.
In this respect the Opponent asserts the descriptiveness and aptness of the words mean such desire is likely. The evidence of widespread use of the term referring to a known concept reinforces this. The Opponent points to the Applicant’s own evidence as showing a likely desire or need for use of the Trade Mark. It directs me to evidence of advice from the Applicant’s marketing and portfolio team, that it was, ‘particularly important as it makes clear to the consumer what the feature will do’ in selecting a name; a statement by one employee that, ‘we believe the notion of “building it back” was particularly important to keep as it's relatively clear to the consumer what it may entail and has a clearer link back to home insurance’; and a statement by an employee that she is, ‘still stuck on build it back better’ and a response by another person, ‘I tend to agree. I think we need to make it as easy as possible for customers to understand exactly what it is.’ The Applicant notes that this material is merely a subjective opinion of a few people about the effect of the Trade Mark. Whilst I agree with that characterisation, I do think this material is relevant to the question of how the Trade Mark is likely to be received.
The Kiernan Declaration shows other examples regarding the honest desires of other traders to use the words. SK-2 shows an extract of a website dated 22 March 2022, quoting the RACQ's Chief Executive Officer as saying, ‘…when the next flooding event occurs, impacted homes will automatically be built back better…’. In the EIR, an article dated 7 March 2022 also notes, ‘[t]he Australian government needs to create a financially-sustainable disaster insurance model…’, involving insurance and reinsurance pools which use data to reduce risk, with the power to ensure insurance payments, ‘for every damaged property are used to rebuild in a disaster resilient way… … This process is often called Build Back Better’. An article at SK-4, from 27 June 2022, states that, ‘…insurers have been at the vanguard of calls to “build back better” after Australia’s record-breaking floods catastrophe…’ and quotes Chief Corporate Affairs Officer at Allianz Australia Nicholas Scofield as saying, ‘many claimants are keen to “build back better”, with some only realising they are in a flood-prone area following the recent catastrophe.’
Exhibits SK-2 to SK-4 are dated after the Relevant Date which mean they are not direct evidence of the circumstances that existed at the Relevant Date. In this respect the Opponent refers me to Sustainable Living Fabrics Pty Ltd v Instyle Contract Textiles Pty Ltd[9] where a delegate held it was logical and appropriate that post-priority date evidence be taken account of in deciding whether s 41 applied. I agree that SK-2 to SK-4 supports a conclusion that there is a known meaning and likelihood that other traders may wish to desire use of these. SK-3 reflects that ‘build it back better’ could even become an industry standard at some point by regulation where it advocates for government models. This material concerns that likelihood of how other traders would be likely to behave, even if dated after the Relevant Date. I consider it logical and appropriate to consider the material.
[9] [2011] ATMO 66, in particular [23] (Hearing Officer Kirov) citing Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, [54] (Sundberg J).
The Norrie Declaration declares other insurance providers do not have a similar product offering and thus it asserts they do not need to use the Trade Mark to describe their services. It then lists various prominent insurers which do not have a similar product. Similarly, at the hearing, Counsel for the Applicant noted that the Applicant, ‘was the first insurer in Australia to bring and introduce this kind of insurance into its home insurance’. Being first to market with a service does not entail a monopoly in words used to describe that service. That competitors have limited or no competing offering at one time should not be determinative. What matters is the likelihood that other traders may desire use in the future. It is likely that any insurance business would desire to make it clear that its policies or services operate in a manner reflects the goals of the ‘build it back better’ concept of building resilience against disasters and unforeseen events. At any rate, the Sure Insurance evidence shows another trader actually providing similar services. That Sure Insurance chose to use other words for a similar type of product offering also does not dispose of the matter; words do not need to be the only option to traders to ground a s 41 and the test is not one requiring necessity; it is based on desire. The words of the Trade Mark are highly descriptive, especially considering the comprehensive evidence in the EIS showing the Trade Mark as having a known and relevant meaning applicable to insurance services. The Applicant’s own use, evidence about the Trade Mark’s adoption, the EIS and EIR support a finding that other insurance providers may offer products which implement the ‘build it back better’ concept. The Opponent does not contest the uniqueness of the actual offering for build it back better insurance as such. As I have noted above, that the Applicant was perhaps one of the first, or even the first, to market with this kind of service does not determine the issue.
The Applicant gives emphasis to words, ‘in a manner that would infringe a registered trade mark in respect of it’ in Clark Equipment. It says that the examples are only examples which would not infringe and that they thus do not relate to the question at hand. Relevant here is what was said by the delegate in The Hospital Research Foundation Incorporated v St John Ambulance Australia South Australia Inc:[10]
Section 41 of the Act is concerned with the intrinsic qualities of the trade mark itself, separate from the effects of registration.[11] Justice Kitto’s statement in Clark Equipment, ‘- will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it’[12], is not authority for the relevance of potential infringement to the question of whether a trade mark is inherently adapted to distinguish a traders goods or services from those of other traders. It is the desire of a trader to fairly use the same sign,[13] or one so nearly resembling it,[14] in connection with their own goods or services that is relevant. In Burger King Corp v Registrar of Trade Marks Gibbs J explained that the reference to ‘likelihood’ by Kitto J in Clark Equipment was a reference to the possibility that another trader might, without any improper motive, want to use the trade mark in relation to their own goods and services.[15] This is not the desire to use any trade mark, but of a sign that forms part of the common heritage.[16]
[10] The Hospital Research Foundation Incorporated v St John Ambulance Australia South Australia Inc [2022] ATMO 23, [31] (Hearing Officer Brown).
[11] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [11] (Yates J).
[12] Clark Equipment (n 6).
[13] Clark Equipment (n 6) 514 (Kitto J).
[14] Du Cros [1913] AC 624, 635 (Lord Parker).
[15] Burger King Corp v Registrar of Trade [1973] HCA 15, [8]-[9] (Gibbs J). See also, Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110, [67] (Mansfield, Jacobson and Gilmour JJ).
[16] Clark Equipment (n 6).
Such arguments have not generally enjoyed successes in the history of s 41 and its predecessor equivalents.[17] If a certain use might not infringe, this does not of itself detract from the relevant desire in question. Even so, drawing on the words of Kitto J is sufficient to address this point, noting that the desire which is relevant relates to use for the sake of its ordinary signification for any use that would infringe.
[17] Addressing the reliance on s 64 of the predecessor 1955 Act in support of registrability which provided for certain infringement exemptions see Dan Shanahan, Australian Law of Trade Marks and Passing Off (LBC, 2e 1990) 121 citing Clark Equipment (n 6) 517 (Kitto J) which states as much as being no answer to the issue; Thomson v B Seppelt & Sons Ltd [1925] HCA 40 (Knox CJ, Isaacs, Higgins, Rich and Starke JJ) concerning the analogue provisions that would protect against infringement; Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 330, 322-323 (Dixon CJ, Williams and Kitto JJ) concerning the predecessor analogue in s 53A recalling the statutory purpose being it is intended only to ‘protect other traders in bona fide use of the word which has been registered and must be treated as adapted to distinguish such goods’; C Trippit & Sons’ Appn (1988) 11 IPR 596, 598-599 (Hearing Officer Homann) concerning the word ‘Merri Creek’ and s 64 of the 1955 Act; and Matsushita Electric Industrial Co Ltd’s Appn (1988) 15 IPR 125, 127 (Hearing Officer Hardie).
After assessment of the Trade Mark and the evidence, I consider it likely that other traders would desire to use the Trade Mark for the sake the ordinary signification. I find that the Trade Mark has no inherent adaptation to distinguish and from here should consider the evidence of the Applicant’s use, noting s 41(3).
Evidence of the Applicant’s use
Given my findings above, I must consider the Applicant’s use and whether at the Relevant Date the Trade Mark did in fact distinguish the Designated Services.[18] There is no evidence of the Applicant’s use before the Relevant Date. I am therefore satisfied that the Trade Mark did not in fact distinguish the Designated Services at the Relevant Date.
[18] Section 41(3).
In case my assessment that the Trade Mark lacks any inherent adaptation is wrong, I have also considered the Applicant’s evidence if the Trade Mark has some, though not sufficient, inherent adaptation to distinguish.[19] The Applicant claims sales of policies to a substantial number of customers, for insurance services bearing the Trade Mark by 31 March 2022, across all states and territories. A substantial turnover of the Applicant is mentioned, without specific reference to services or a particular Trade Mark. To act as a badge of origin the relevant test is whether the impugned words would appear, in the context in which they are used, to consumers as possessing the character of a brand.[20] For reasons already outlined above I consider most, if not all, of the use of the Trade Mark in the PDS and advertising or marketing activities as not appearing to have the character of a brand, so such use is not ‘as a badge of origin’.[21] The Opponent argued that because what is shown in that evidence is not use as a badge of origin, the advertising expenditure and the sales figures do not assist the Applicant. I agree I should consider the specific examples as being representative of what the expenditure represents in terms of use of, and what the sales represent in terms of use of the Trade Mark. Counsel for the Applicant notes that there is nothing to contradict the Norrie Declaration in terms of the manner which the Applicant has shown use by turnover and advertising expenditure. However, the vast majority of the examples of the Applicant’s purported use of the Trade Mark, including in policies, contextually present ‘build it back better’ as a mere feature of the Designated Services. The representative examples of marketing likely funded by the substantial advertising expenditure, mean that that amount does not assist the Applicant. One social media screenshot shows the words of the Trade Mark in the line ‘Build it Back Better with Suncorp Home Insurance’, thus inserting those words into a phrase with a readily apparent meaning, while overtly referring to Suncorp Home Insurance as the badge of origin of the services on offer. Similarly, the YouTube screen captures simply show the words ‘Build it Back Better’ with scenes of homes being rebuilt. Again, this does not appear to be use as a badge of origin. The number of policies sold, after considering the presentation of the words ‘build it back better’ in the PDS, is also not relevant for similar reasons.[22]
[19] Section 41(4).
[20] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 425 (Kitto J).
[21] The circumstances are similar to decision in United States Golf Association [2022] ATMO 88 (Hearing Officer Brown) where there was no evidence of use as a ‘badge of origin’ where the trade mark had some degree of adaptation.
[22] See also, paragraph [20] of these reasons concerning especially the Applicant’s PDS.
Transcripts of radio advertisements featuring the Trade Mark have also been provided including one with an estimated 8.7m impressions and one that was broadcasted from May to June 2022 with estimated 5.8m impressions. However, this shows contextual use saying, ‘[s]o, if your house is substantially damaged, with Suncorp Home Insurance, we’ll Build it Back Better with extra recommended resilience options, to help withstand severe weather’. This is use of the phrase for its ordinary English meaning, not as a badge of origin. A consumer on hearing these words would not necessarily identify ‘build it back better’ as a badge of origin. The evidence also contains examples of street sign advertising showing the words ‘We’ll Build it Back Better’ used alongside the brand Suncorp. Again, this does not appear to be use of the Trade Mark as a brand. BN-10 shows indoor and outdoor advertising signs from April 2021 to September 2021 and in shopping centres from October 2021 to March 2022. The Opponent also provides a copy of advertisements that were published in newspapers between April to June 2021 in various large Queensland newspapers again most examples showing the ‘We’ll Build it Back Better’ slogan. BN-12 is a copy of flyer distributed during the assessment of claim processes. There are copies of a newsletter sent to 1.09m customers as of March 2022 by email, but no indication of any analytics, such as the number of customers opening the email or otherwise engaging with the content. There are also various copies of communications concerning activities of the Applicant. Whilst seemingly substantial, this matter at times has no distribution rates and, again, the use of the Trade Mark does not appear to be as a brand, with the Suncorp trade indicia acting as the badge of origin.
The Norrie Declaration notes evidence of consumer feedback as recognition of the brand. A media company report concerning advertisements, showing apparently ‘positive reactions’; with feedback from consumers which notes it was, ‘interesting to see the strategies and materials that can improve a house's resilience’ and some other positive general statements. This does not refer to the recognition of the Trade Mark as such. In fact, the evidence tends to support there being a descriptive understanding of the Trade Mark by some persons, as some comments effectively summarise that the Trade Mark means the coverage is for building back with resilience.
There otherwise is nothing to suggest an intention to use the Trade Mark in the future other than how it has been used to date. It has been some time since the rounds of evidence so regarding the quantum of use of the Trade Mark, Counsel for the Applicant asked that I draw an inference that the use would continue, in furtherance of its argument that the Trade Mark could in the future distinguish. Even if I made that inference it should have as a corollary an inference that the type of use would likely continue as it has already. That is, in a way I consider other than as a badge of origin.
I am satisfied that at the Relevant Date it did not in fact distinguish the Designated Services based on the extent of the Applicant’s use. Even if the Trade Mark does have some inherent adaptation to distinguish, I am satisfied that, after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant’s use of the Trade Mark, and other relevant circumstances, the Trade Mark does not and will not distinguish the Designated Services.
Accordingly, the s 41 ground of opposition has been established.
Decision
Section 55(1) relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has established a ground of opposition under s 41 and it is unnecessary for me to consider the s 62A ground of opposition. I refuse the registration of the Trade Mark.
Costs
The Opponent sought costs in this matter. It is usual for costs to follow the event. I see no reason to depart from that principle and I award costs against the Applicant.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
10 July 2023
12
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