APL Co Ltd

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1716834 (9, 36, 37, 39, 42) - AIRPORTLINKM7- in the name of APL Company Pty Ltd.

Delegate:	Mary-Ann Cooper
Representation:	Applicant: John Swinson, King & Wood Mallesons
Decision:	2018 ATMO 78 Section 33 ex parte proceedings: section 41 – trade mark capable of distinguishing – application accepted for possible registration.

Background

On 25 August 2015, BrisConnections Operations Pty. Ltd. (“BrisConnections”), the predecessor in title of APL Co Pty Limited (“the Applicant”), applied to register a trade mark under the Trade Marks Act 1995 (‘the Act’). The details of that application are as follows:
Trade Mark No: 1716834
Trade Mark: AIRPORTLINKM7 (‘the Trade Mark’)
Specification of Goods and Services:
Class 9:
Electronic apparatus for controlling toll points; encoded cards and other apparatus in this class for tolling and payment systems
Class 36:
Toll road operation services in this class; operation of tolling systems (including electronic tolling systems) and collection of tolls (for others); providing information and advice in relation to tolling systems and the collection of tolls; financial transaction and payment services; providing information and advice in relation to financial transactions and payments
Class 37:
Building, construction, installation, repair and maintenance services including such services relating to roads and other transport infrastructure; provision of information and advice in relation to building, construction, installation, repair and maintenance including the building, construction, installation, repair and maintenance of roads and other transport infrastructure
Class 39:
Toll road operation services in this class; transport services; providing information and advice in relation to transport and roads
Class 42:
Design, technological and engineering services including such services relating to roads and other transport infrastructure; industrial, technical and technological research services; construction drafting services; urban planning services; surveying services; installation, maintenance and updating of computer software including software relating to tolling and payment systems; providing information and advice in relation to design, technology, engineering, construction drafting, urban planning and surveying
In April 2016 the Applicant acquired BrisConnections’ assets, which included the Trade Mark. On 3 May 2016 the Trade Mark was assigned to the Applicant. This was recorded on the Register on 12 May 2016.
The application had been examined under s.31 of the Act and a ground for rejection was raised by the examiner under s.41(4) of the Act.
The reasons for the ground for rejection were expressed in examination reports dated 1 November 2015, 9 February 2017 and 15 August 2017. In the first and second reports the examiner considered the separate component words of the Trade Mark and concluded that it indicated the Applicant was “providing road, transport and toll goods and services to link an airport to the M7”. It was therefore considered that “combined, the words form an expression that results in the words as a whole conveying a meaning that is not inherently suggestive of a trade source” and “is not inherently capable of distinguishing the goods and services claimed.” The examination report suggested that the Applicant might overcome the ground for rejection if it provided evidence of use in terms of s.41(4) of the Act. The Applicant provided the submissions and the evidence requested (discussed below) however the objection was maintained. The word AIRPORTLINKM7 was considered to “directly suggest that your goods and services are related to or are for the purpose of providing the claimed services on or around the AIRPORTLINKM7 roadway” and has “an ordinary meaning of which consumers and traders dealing with the goods and services would be aware”. The examiner considered that the Trade Mark “is the name of a road” and that evidence indicated it “was used as a toll road name and not in fact [as] a badge of origin or trade mark”. It was stated that “the average consumer merely see[s] AIRPORTLINKM7 as the name of a road”. On this basis the examiner was “satisfied that the term AIRPORTLINKM7 is not inherently capable of distinguishing the goods and services claimed.”

Evidence and submissions

Following receipt of the first examination report of 11 November 2015, the Applicant’s representative provided submissions in response. In summary, it was submitted:
·The trade mark must be taken as a whole.
·The trade mark would be viewed by the public as a trade mark.
·The trade mark is not itself, and does not contain, a direct reference to the designated goods or services.
Referring to the relevant authorities, the Applicant noted that there is a “critical distinction between those words that make a direct reference to the goods as opposed to those that that make a covert and skilful allusion”. It was submitted that section 41 of the Act can only be assessed “by reference to the specific goods or services for which registration is sought” and that “the mark must be considered as a whole”, and to do otherwise was erroneous. The submission referred to Australian and European Union case law and claimed that the Trade Mark “has the fingerprint of the involvement of a particular economic undertaking” and does distinguish the Applicant’s goods and services. It was maintained that the Trade Mark was not a direct reference to the specified goods and services but an allusive or metaphorical reference and on this basis it was able to be registered. It was claimed that a person who offers services in connection with roads would not be precluded from having words available to describe their goods/services if the Trade Mark was registered. In any event, it was noted that, as the Applicant’s parent company (Transurban Ltd.) owns and/or operates 73% of the toll roads in Australia, the category of traders who could provide such services is very limited. In conclusion it was also contended that the presumption of registrability should apply.
As noted above, the objection was maintained in the second examination report which stated that consumers would naturally interpret the mark as a combination of known words AIRPORT, LINK AND M7”,.. “which all have ordinary meanings of which a person of average intelligence would be aware” and combined they are “not inherently suggestive of a trade source”.
On 3 July 2017 the Applicant responded with a statutory declaration from Mark Hourigan, the Head of Legal for the Transurban Queensland Group (Transurban Ltd. being the Applicant’s major shareholder and its operator and manager). The declaration reiterated the Applicant’s previous claims and outlined the history of the Trade Mark and its assignment. It was stated that the Trade Mark has been used in association with the goods and services which assist motorists “by providing a tollway and related goods and services in relation to a 6.7 kilometre twin tunnel.” It was stated, and confirmed by the exhibits, that the tunnel is not simply a link to the airport on the M7 motorway but has numerous entry and exit points. The specified goods and services were further described as including “the provision of electronic toll ‘tags’ to be installed in customer’s vehicles; electronic tolling systems including an online account linked to each customer’s toll ‘tag’ to log use and enable payment of tolls; information in relation to the tolling system and collection of tolls; periodic and ongoing construction, installation, repair and maintenance work for the Tunnel’s infrastructure; surveillance…to detect and monitor variations in traffic flow, general safety issues and traffic incidents; signs displaying ‘real time’ travel times to various destinations; radio re-broadcast system… and public address system to deliver messages to customers…”
As an alternative to its primary submission as reflected in its 16 January 2017 response, the Applicant claimed in summary that:
·    the Trade Mark has been in continuous use by the Applicant and its predecessor for over 5 years;
·    the Applicant has invested significant resources in advertising, promoting, maintaining and operating the goods and services under the Trade Mark;
·    it is easily identifiable by motorists in connection with the Applicant’s goods and services;
·    there was/is significant brand awareness and that the Trade Mark is now widely recognised as the Applicant’s toll road service.
·    The Trade Mark is not the official name of the road.
The declaration of Mark Hourigan claimed that the Applicant’s toll road services “an average of 18,901,000 trips through the Tunnel each year (based on financial figures over the past 5 years), equating to an average of 52,000 trips each day”.
Following receipt of the third examination report maintaining the objection under section 41, on 6 November 2017 the Applicant requested to be heard. The hearing was set down for 2 February 2018 in Canberra. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks.
In written submissions made prior to the hearing, the Applicant relied primarily on its original submission and evidence (as outlined above at paragraphs 5-6) and, maintaining that the Trade Mark is inherently adapted to distinguish the Applicant’s goods and services, reiterated that it:
·    must be considered as a whole;
·    would be viewed by the public as a trade mark; and
·    is not itself, and does not contain, a direct reference to the goods and services.
The Applicant again noted that the Trade Mark is not the name of a road or highway. In summary it was submitted that:
· the mark has no direct connection with the claimed goods or services; and
· it does not signify a link between the M7 motorway and the airport, and it could not be taken to have that meaning, because it is not used that way.
It was contended that, in its ordinary signification, the Trade Mark is not descriptive of the goods or services because those goods and services relate to toll road systems, road construction and transport. The Applicant maintained that the Trade Mark has “no meaning in respect of, and is not even suggestive of, tolling services, engineering services or transport services”. Specifically that “[t]he Mark does not contain a direct reference to tolling services, financial services, building or construction services, transport services or design, technical and engineering services relating to roads or any other of the claimed goods and services.”
In addition it was stated to be erroneous to “break down the trade mark into its elements and determine whether those elements are registrable by themselves”. Even if it is broken down, it was argued that the separate words “are not directly descriptive of the claimed services.”
Further, referring to the two-stage analysis in Cantarella, it was submitted that “once the ordinary signification of the mark has been considered, and it is determined that the ordinary signification has a direct reference to the character and quality of goods, or is not distinctive for some other reason (being a laudatory epithet, a geographical name, surname etc.) the second step of the test can be considered: whether other traders might legitimately need to use the mark in respect of their goods and services.”
In this context it was submitted that the Trade Mark does not indicate the kind, quality, quantity, intended purpose, value, origin or other characteristic of the claimed services, which primarily relate to toll road systems (or equipment used for toll roads), road construction and transport. According to the Applicant’s representative, it “does not, on its ordinary signification, contain a direct reference to the services. Although there may be some allusive or metaphorical connection to the services (which is really stretching things), this is not sufficient to maintain a section 41 objection in light of the clarifications of the test by the High Court in Cantarella….AIRPORTLINKM7 is not a direct reference to tolling services, financial services, building services or construction services, transport services or design, technical and engineering services relating to roads or any other of the claimed services.”
Noting that the Applicant did not consider it necessary to address the second limb of Cantarella, it was stated that “even if it were necessary… the Applicant submits that the Mark is not a term that other traders may legitimately have a desire to use in connection with specialised tolling systems or consultancy services relating to those systems”. This was claimed to be the case especially given the limited category of traders who provide such services and that “there are only six enterprises in total which own or partly own toll road assets in Australia” and that “Transurban Limited is also the only toll road operator in Queensland”, thereby further reducing the likelihood that another trader would have a legitimate desire to use the Trade Mark.
In summary, the Applicant contended that the Trade Mark was inherently adapted to distinguish the designated goods and services as to be prima facie registrable.
In the alternative, the Applicant submitted that, if it is decided that the Trade Mark is to some extent inherently adapted to distinguish, but not sufficiently so as to be registrable on that basis alone, then the Registrar should be satisfied that, through the Applicant’s continuous and extensive use of the Trade Mark over 5 years, it has “acquired distinctiveness” and therefore it should not be rejected under s.41[1].
[1] Noting that the s.41(4)(b) requirements do not require the Applicant to demonstrate the Trade Mark is distinctive, just that it will distinguish.
In this context, on the basis that the Applicant’s tolling services are used on average 57,019 times per day, it was claimed that the Trade Mark was easily identifiable by motorists in respect of its goods and services. The Applicant also claimed that signage around the toll point and the requirements for customers to make arrangements to pay the toll mean that motorists “would very likely be aware of the Mark”. The Applicant’s large customer base was said to demonstrate significant public awareness of its services as applied under the Mark, and the Applicant’s other marks, across the wider Brisbane region.
The final point was made that the presumption of registrability in s.33 of the Act applies.

The Hearing

At the hearing the Applicant’s representative, John Swinson, maintained that the Trade Mark is not the name of a road nor is it a geographical place. He said the name of the road through the tunnel is ‘M7’ and it serves many purposes other than as a connecting road to the Brisbane Airport. In addition he noted that there are other roads on which people could travel to and from Brisbane city and Brisbane airport.
Mr Swinson reiterated the submission that the Trade Mark is neither descriptive of, nor a direct reference to, tolling or construction services. He noted that the expression did not exist until it was created and adopted as a brand by the previous owners. He maintained that the Trade Mark is “wholly made up and wholly adapted to distinguish”.
Referring to the ‘Q1’[2] and ‘Accor’[3] cases he maintained that the Trade Mark is sufficiently inherently adapted to distinguish as to be registrable on that basis alone. In the alternative, he submitted that it satisfied s.41(4) by virtue of its use, intended use and other circumstances. In this context he pointed to the extensive advertising and other materials exhibited with Mr. Hourigan’s statutory declaration.
[2] Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 (‘Mantra IP’).
[3] Accor Australia and New Zealand Hospitality Pty Ltd v Liv Pty Ltd. [2017] FCAFC 56 (‘Accor’).

Consideration and reasons

Section 41 of the Act relevantly provides:
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).
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:       For applicant and predecessor in title see section 6.
Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
The test posed by s.41 is a negative one. That is, an application for registration of a trade mark must be rejected if the mark is not capable of distinguishing an applicant’s goods and/or services from the goods or services of others. A trade mark will not be considered so capable if:
· it is not to any extent inherently adapted to distinguish the goods and/or services from those of others and the mark has not been used as a trade mark before the filing date to such an extent that it does in fact distinguish the designated goods and/or services as those of the applicant (s.41(3)).
Or
· it is to some extent (but not sufficiently) inherently adapted to distinguish the applicant’s goods and services but, notwithstanding the combined effect of the extent of inherent adaptation, the use, or intended use of the mark by the applicant and any other circumstances, the mark does not and will not distinguish the designated goods and/or services. (s.41(4)).
It follows, therefore, if the Trade Mark is capable of distinguishing the Applicant’s goods and services from those of others, there is no basis for its rejection under s.41.

Section 41 of the Act and its predecessor provisions have been considered in numerous cases before the Registrar and the courts. The ongoing relevance of that case law was confirmed by the explanatory memorandum accompanying the amending legislation which introduced the current section 41. Specifically it was stated that:
The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.[4]
[4] Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) at page 146.
Therefore, although it was decided under section 41 as it stood prior to its amendment on 15 April 2013, the following passage from Cantarella is relevant in this context:
[I]t was common ground that the provisions of the Act which specify the applications for registration which must be rejected cannot be understood fully without some reference to the interpretation of provisions in the Trade Marks Act 1905 (Cth) ( “the 1905 Act") and the Trade Marks Act 1955 (Cth) ( “the 1955 Act") which specified the kinds of trade marks which were registrable. This is because the statutory language which gives rise to the question on this appeal has a well-understood provenance.[5]
[5] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 [22].
Therefore judicial authority regarding section 41 and its predecessors is relevant to the interpretation of the current provision.
The issue before me is whether the Trade Mark is capable of distinguishing the Applicant’s goods and services from the goods and services of other persons. The test to be applied by the Registrar is on the “balance of probabilities” and, where there is uncertainty, a presumption in favour of registration of the trade mark application is to be applied.[6]
[6] As confirmed by the EM which also stated at page 146:
The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. ... The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour…
As the legislation indicates, a trade mark’s capacity to distinguish an applicant’s goods or services from those of another involves as a first step consideration of whether, and the degree to which, the mark is “inherently adapted” to distinguish those goods or services. As the authorities confirm, “inherent adaptation to distinguish” refers to the quality of the trade mark itself and is not something which can be acquired through use, although later events may be relevant in determining inherent adaptation at lodgement.[7]
[7] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 [424]; Kenman Kandy [2002] FCAFC 273; 122 FCR 494 [83] and Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [54] and [59].
As Yates J observed in Apple Inc v Registrar of Trade Marks:
The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade. [8]
[8] Apple Inc v Registrar of Trade Marks [2014] FCA 1304 [11].
Kitto J’s oft-quoted statement in Clark Equipment Co v Registrar of Trade Mark^s(‘Clark Equipment’) is accepted as the test for inherent adaptation to distinguish:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd.[1913] UKHL 588; (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. 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.[9]
[9] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 [514].
The above passage was approved by the majority in the High Court decision of Cantarella in which a two-stage test was proposed for determining whether a trade mark is inherently adapted to distinguish the claimed goods or services. It was stated that:
As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word ... is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[10]
[10] CantarellaBros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 [71]
Following Cantarella, the determination of issues arising under s.41 of the Act essentially involves a two-step analysis as follows:

Ordinary signification

The majority in Cantarella provided some elaboration on what is meant by “ordinary signification” as follows:
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.[11]
[11] CantarellaBros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 [59].
It was the Applicant’s primary submission that the Trade Mark had no ordinary signification such that it was necessary to proceed to consider whether other traders might legitimately have a desire to use it in connection with their goods and /or services.
In this context, acknowledging that I am not conducting an assessment or review of the examiner’s decision, it is nevertheless pertinent to note that the examiner’s reasons for deciding to raise and maintain the ground for rejection.

Trade Mark as the name of a road

In the third examination report, discussed above at paragraph 4, the Trade Mark was identified as the name of a road and was therefore considered to have an ordinary meaning of which relevant persons would be aware. It was said to directly suggest that the designated goods and services “are related to or for the purpose of providing the claimed services on or around the AIRPORTLINKM7 roadway” and it followed that it had a limited inherent adaptation to distinguish the Applicant’s goods and services.
Throughout the exhibits attached to the statutory declaration, AIRPORTLINKM7 is variously referred to as a “a quality urban asset”, a “toll road”, an “urban tunnel”, “a 6.7 km road – 5.7 km of which is tunnel”, “a roadway” “a tunnel” (Exhibit MH-2); “a 6.7 km toll tunnel” (MH-6) “a 6.7 km. twin tunnel” (MH-7) “Australia’s largest infrastructure project” (MH-11) and “a 6.7 kilometre road and tunnel system” (MH-13). Such evidence does tend to suggest that the Trade Mark indicates a place rather than a brand. The examiner characterised this material as demonstrating that the Trade Mark was “not inherently suggestive of a trade source but is the name of a road.”[12] As a matter of fact, the Trade Mark is not the name of a road. The road is (as Mr Swinson pointed out) the M7. While the evidence supplied by the Applicant demonstrated extensive use of the Trade Mark and many varying references to it, it did not demonstrate that it had become generic as at the priority date or that it had lost its character as a badge of origin for the Applicant’s (or its predecessor’s) goods and services.
[12] Third Trade Mark examiner’s report, 2^nd last paragraph.
The authorities have considered circumstances in which a Trade Mark, notwithstanding it was also the name of a place, was registrable: MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 (‘MID Sydney’), Mantra IP Pty. Ltd. V Spagnuolo [2012] FCA 769 (‘Mantra IP’), Accor Australia & New Zealand Hospitality Pty. Ltd v Liv Pty Ltd [2017] FCAFC 56 (‘Accor’).
Most recently, in Accor, in relation to the application to register ‘Harbour Lights’, also the name of an accommodation tower, as a trade mark, the Full Bench of the Federal Court found no error in the primary judge’s conclusions:
The primary judge rejected the notion that because “Harbour Lights” is also the name of the building and the titles scheme, it is descriptive of either a geographical name or a geographical location. The primary judge reasoned that the circumstance that the services are connected with real property (a building complex) and involve the provision of a right to occupy, does not affect the inherent adaptability of the words to distinguish.
…..
The words are, of course, the name of a particular building complex configured in the way earlier described and thus the words necessarily identify (like all names attached to a particular building) a place on the planet as distinct from other places but that does not mean that the words thus become part of the “common heritage” giving rise to a “likelihood” that other traders would want to make honest use of the words in connection with similar services as an expression of the exercise of a “common right of the public”. The primary judge correctly concluded that the trade mark is inherently adapted to distinguish the designated services of the owner from the services of others. …[13]
[13] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 [237-8], [244].
Applying the above reasoning to the Trade Mark, just because it might also refer to the name of a particular tunnel or piece of infrastructure, and the designated goods and services are delivered in respect of that piece of infrastructure, it does not necessarily follow that the words comprising the Trade Mark have “become part of the ‘common heritage’ giving rise to a ‘likelihood’ that other traders would want to make honest use of the words in connection with similar services as an expression of the exercise of a “common right of the public”..’ or that this affects the Trade Mark’s inherent adaptability to distinguish the Applicant’s goods and services from those of others. As with the name of the building ‘Q1’ in Mantra IP, at its inception AIRPORTLINKM7 was not (and remains not) descriptive of the Applicant’s designated goods and services. I consider that its concurrent and subsequent use as the name of a piece of infrastructure cannot alter its inherent adaptation to distinguish the Applicant’s goods and services from those of others.
For the above reasons I am not satisfied that the Trade Mark is a “direct reference” to the geographical origin of the designated goods and services such that an objection in terms of ss.41(3) or (4) is appropriate on that basis.

The composition of the Trade Mark

Furthermore, as discussed above at paragraphs 4 and 7, the initial conclusions during examination appear to be the result of a dissection and analysis of the separate word components of the Trade Mark. For example, the Macquarie Dictionary definition of LINK was noted as “anything serving to connect one part or thing with another” but this ordinary meaning was then significantly conflated as being “commonly used in reference to roads which link two transport facilities together, being LINK roads” and the immediate conclusion was drawn that “[t]herefore, AIRPORTLINKM7 indicates that you are providing road, transport and toll goods and services to link an airport to the M7.” That is, in my view, the ordinary meaning of the word “link” has been conflated to indicate a meaning that references the designated goods and services rather than, as the authorities require, examining the trade mark as a whole for its inherent adaptation to distinguish.
In Diamond T Motor Car Co’s Application the court said:
…. in order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves...[14]
[14] (1921) 38 RPC 373 [380] (Lawrence J)
In addition, to embark on a search for meaning in the above manner by deconstructing the component parts of a trade mark is to fall foul of the reasoning in Mark Foy’s Ltd v Davies Co-operative & Co Ltd (Mark Foy’s). In that matter Dixon CJ said at paragraph 2 (emphasis added):
It is, I think, a mistake first to assume that words like "Tub Happy" do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning.[15]
[15] Mark Foy’s Ltd. v Davies Co-op Co. Ltd. [1956] HCA 41; (1956) 95 CLR 190
On its face, the Trade Mark is a coined or invented word and, notwithstanding the fact that its separate word components are ordinary English words, as a whole it has no ordinary meaning in relation to the designated goods and services and it is therefore not a word “forming part of the common heritage”.
In this context I note that the circumstances of this application are not analogous to those which were considered by the Full Court in Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 (Advanced Hair Studio) or the High Court in Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited. Although this Trade Mark is composed in part of ordinary words, they are not words that describe or refer to the goods and/or services, as in those cases. In the latter case, Dixon J said in relation to the proposed trade mark "Rohoe" there under consideration:
The materials from which such a word has been fashioned cannot be neglected and if it is compounded of elements of which the source is manifest and the intended meaning is transparent, it becomes a question whether there is anything more than a colourable attempt at reproducing some of the sounds and all the sense of an expression belonging to common speech.[16]
[16] Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited (the "Rohoe" Case) [1946] HCA 15;(1946) 72 CLR 175 [181].
In that application, the Court considered it clear that, among farmers and horticulturists at least, "rohoe" would be understood as an abbreviation of rotary hoe and therefore the trade mark was not inherently adapted to distinguish the applicant’s goods. AIRPORTLINKM7 is not such a word. Its elements do not manifest any reference to the designated goods and services. There is nothing in the material before me which indicates, and I do not accept that, on seeing the word AIRPORTLINKM7 for the first time, consumers would understand it to bear any reference to, for example, the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of tolling services or goods associated with such services.
In any event, it is not a requirement that the words comprising a trade mark be totally meaningless for it to be registrable. As Wilcox J acknowledged, despite finding that the trade mark there in question did describe the goods, in Ocean Spray Cranberries Inc v Registrar of Trade Marks:
In reaching the above conclusion, I have not overlooked two matters relied on by Ms Baird. First, she says, a mark need not be "absolutely unsuggestive of qualities" of the goods for which registration is sought, provided it does not amount to a normal description. I accept that statement. It illustrates that a question of degree is involved. In the present case, I think the mark goes well beyond being absolutely unsuggestive of the qualities of the goods. It employs an ordinary English adjective to make a claim of excellence.[17]
[17] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 [34]

Unlike the trade mark the subject of the above decision, the word AIRPORTLINKM7 cannot be seen to “amount to a normal description” of the designated goods and services.

Conclusions as to ‘ordinary signification’

When the Trade Mark is taken as a whole, it is not to any degree descriptive of the goods or services for which registration is sought. As I have mentioned, in Accor where, among other things, the capacity to distinguish under s.41 was in issue in respect of the Trade Mark “Harbour Lights”, the Full Bench found no error in the primary judge’s conclusions that ‘the words “Harbour Lights”, as a matter of ordinary signification, when used in connection with accommodation services, did not directly describe a characteristic of those services. Similarly, as a matter of ordinary signification, when used in connection with tolling services and equipment, I am satisfied that ‘AIRPORTLINKM7’ does not directly refer to or describe a characteristic of those goods or services. In other words, absent considerations of use, there is no ordinary signification of the Trade Mark, to an Australian concerned with the claimed goods and services.

Might other traders legitimately wish to use the Trade Mark?

Given the findings above, it is unnecessary to proceed to determine this limb of the Cantarella test. For the sake of completeness, however, the High Court in Cantarella said :
‘Once the ordinary signification of a word..is established an enquiry can be made into whether other traders might legitimately need to use the word in respect of their goods’[18]
[18] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 [51].
As found above, the Trade Mark does not have an “ordinary signification”. It is not descriptive of, nor does it amount to a “direct reference” to, the designated goods and services such that it is part of a “common heritage” of English words that other traders would desire to use in connection with similar goods or services.
To the extent that any doubt remains as to the capacity of the Trade Mark to distinguish the Applicant’s goods and services from those of others, I note that a presumption in favour of its registration is applicable.

Decision

Section 33 of the Act relevantly provides:

33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.

(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.
Note:For this Act see section 6.

For all the above reasons, I am satisfied that the Trade Mark is capable of distinguishing the Applicant’s goods and services in respect of which it is sought to be registered from the goods and services of other persons. There is nothing before me which establishes the ground for rejection under section 41 of the Act.
Accordingly, I accept the application for possible registration

Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
18 May 2018

[2018] ATMO 78

21 May 2018