Afterpay Australia Pty Ltd

[2022] ATMO 178

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2109740 (Classes 9, 36, 42) – BONDI MINT- in the name of Afterpay Australia Pty Ltd.

Delegate:	Blake Knowles
Representation:	Applicant: Gilbert Tsang of counsel instructed by Baker & McKenzie.
Decision:	2022 ATMO 178 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 41 of the Act – s 41 considered – goods and services amended – trade mark application accepted for registration.

Background

1.     This is a decision on examination of trade mark application number 2109740 (‘Application’) filed by Afterpay Australia Pty Ltd (‘Applicant’). The Application was filed on 6 August 2020 (‘Relevant Date’) for the trade mark BONDI MINT (‘Trade Mark’) in respect of goods and services in Classes 9, 36, and 42.

2.     Prior and subsequent to the hearing, the Applicant requested that the goods and services be amended as follows, with items struck out to be deleted, and a proposed limitation in bold:

Class 9: Computer software including downloadable computer programs and recorded computer software; computer software, including downloadable computer programs and recorded computer software for facilitating financial transactions; computer software including downloadable computer programs and recorded computer software for facilitating transfer of funds; a system comprising computer hardware and software for allowing goods and services to be purchased electronically via the Internet or via other electronic devices, such as tablets, mobile phones, electronic terminals and automatic teller machines; magnetically encoded cards including credit cards, debit cards and gift cards; chip cards and smart cards; encoded cards for use in relation to the electronic transfer of funds

Class 36: Financial and monetary services including card operated financial services, computerised financial services in the nature of on-line financing via the Internet and electronic means, conducting of financial transactions, financial payment services, financial transaction services, electronic payment services, payment of bills and accounts for others, payment transaction card services, computerised transfer of funds, electronic funds transfer, transfer of funds, provision of transactional services relating to point-of-sale transactions, card accessed financial services and card operated financial services

Class 42: SAAS (software as a service), except for the creation of currencies including cryptocurrencies; providing temporary use of on-line non downloadable software for processing electronic payments; providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks hosting computer sites (web sites); creating, designing and maintaining website-based indexes of information for others (information technology services)

(‘Amended G&S’)

3.     As required by the Trade Marks Act 1995 (Cth),[1] the Application was examined. The examiner raised a ground for rejection under s 41 on the basis that the Trade Mark was not capable of distinguishing the services in Class 36 having regard to the matters set out under s 41(3), and also not capable of distinguishing the goods and services in Classes 9 and 42 having regard to the matters set out under s 41(4). The examiner considered that the Trade Mark indicates that the goods or services originate from or otherwise relate to a place where money is coined by a public authority located in Bondi, New South Wales. The examiner also subsequently determined that the Trade Mark describes goods or services provided in relation to the minting of cryptocurrency in Bondi. The Applicant filed several rounds of submissions contending that the Trade Mark was sufficiently inherently adapted to distinguish, but ultimately the examiner maintained the ground for rejection.

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

4.     The Applicant requested a hearing by videoconference. The matter was heard before me, as a delegate of the Registrar, on 6 October 2022.  The Applicant was represented by Gilbert Tsang of counsel instructed by Elias Nassif of Baker & McKenzie. I have formed my decision based on the material on file, and the submissions of the Applicant.  

Discussion

5. Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Amended G&S of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Amended G&S, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Amended G&S, I must then determine 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 that it did not in fact distinguish the Amended G&S based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Amended G&S (s 41(4)).

6.     The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:

His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the 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.[2]

[2] (1964) 111 CLR 511, 514 (Kitto J).

7.     In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[3]

[3] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

8. A trade mark consisting solely of the name of a geographical location, or a combination of a geographical name and a word that is descriptive in relation to the relevant goods and services, is unlikely to be sufficiently inherently adapted to distinguish and will generally fall for consideration under either ss 41(3) or (4).[4]

[4] See Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Kitto J), Blount Inc v Registrar of Trade Marks [1998] FCA 440 (Branson J), Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93 (Allsop CJ, Perram, and Markovic JJ), and Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367 (Middleton J).

9.     Bondi is a well-known beach side suburb located in Sydney, New South Wales. The suburb is home to many businesses. As such, the term Bondi would potentially be desired for use by many traders to indicate the origin of their goods and services.  

10.     However, the Trade Mark must be assessed in its entirety to determine its ordinary signification. In my view, the Trade Mark as a whole conveys two possible ‘ordinary significations’, namely (i) a mint (being a place where money is coined) in Bondi, or (ii) mint (being a perennial herb or derivative product) originating from Bondi.

11.     Turning to ordinary signification (i), I note that a ‘mint’ has a very specific purpose, which is the manufacture or ‘minting’ of currency (particularly coins). A mint is not a financial institution analogous to a bank, nor does a mint engage in financial brokerage or advisory services or the facilitation of financial transactions.

12.     I consider that other traders would only desire to use the Trade Mark based on signification (i) in respect of currency or services that directly facilitate the creation of currency (including cryptocurrency). To the extent that goods or services may merely utilise or involve currency, or facilitate the use, investment, or transfer of currency, I consider that the connection between the Trade Mark and such goods and services is very tenuous.   

13.     None of the items contained within the Amended G&S are currency or services relating to the creation of currency. The Amended G&S encompass goods and services that facilitate financial transactions and the extension of credit. Such transactions would involve the transfer of currency. However, it would be incorrect to conflate such activities with currency, and the creation of currency, per se. In the context of the Amended G&S, the term ‘mint’ in isolation has no obvious descriptive or other meaning desirable for use by other traders, nor does the Trade Mark as a whole.

14.   Turning to ordinary signification (ii), this meaning also has no obvious descriptive or laudatory relationship to the Amended G&S.

15. I do not consider that the Trade Mark has an ordinary signification desired for use by other traders in relation to the Amended G&S. As such, I consider it is sufficiently inherently adapted to distinguish the Amended G&S, and I withdraw the ground for rejection raised under s 41.

Decision

1. Under s 33(1), unless I am satisfied that there are grounds for rejecting the Application or I am otherwise satisfied that the Application has not been made in accordance with the Act, I must accept the Application. Therefore, the Application should be accepted for the Amended G&S, namely:

   Class 9: Computer software, downloadable computer programs and recorded computer software for facilitating financial transactions; a system comprising computer hardware and software for allowing goods and services to be purchased electronically via the Internet or via other electronic devices, such as tablets, mobile phones, electronic terminals and automatic teller machines; magnetically encoded cards including credit cards, debit cards and gift cards; chip cards and smart cards; encoded cards for use in relation to the electronic transfer of funds

   Class 36: Computerised financial services in the nature of on-line financing via the Internet and electronic means, conducting of financial transactions, financial payment services, financial transaction services, electronic payment services, payment of bills and accounts for others, payment transaction card services, computerised transfer of funds, provision of transactional services relating to point-of-sale transactions

   Class 42: SAAS (software as a service), except for the creation of currencies including cryptocurrencies; providing temporary use of on-line non downloadable software for processing electronic payments; providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks

   Blake Knowles
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   11 October 2022