Australian College of Natural Medicine Pty Ltd

[2015] ATMO 15

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1543029 - WELLNATION CLINICS – and 1543030  -  WELLNATION  - in the name of Australian College of Natural Medicine Pty Ltd

Delegate:	Debrett Lyons
Representation:	Applicant:  Robert Gregory of Maddocks, Solicitors
Decision:	2015 ATMO 15 Ex parte hearing: Section 41 – trade marks inherently adapted to distinguish – both acceptable for registration under s.41(3)

Background

1. On 26 February 2013, Australian College of Natural Medicine Pty Ltd (“the Applicant”) filed two applications under the provisions of the Trade Marks Act 1995 (“the Act”) to register similar trade marks as shown below:

Number:  1543029
Date filed:                 23 February 2013
Trade Mark:             WELLNATION CLINICS

Goods/services:        Class 3: Beauty therapy preparations

Class 5: Pharmaceutical preparations, natural therapy preparations for medicinal purposes

Class 16: Paper, cardboard and goods made from these materials; printed matter and printed publications; periodical publications; publications containing information in relation to health and wellbeing; books; educational, instructional and teaching material except apparatus; brochures, flyers, leaflets and other printed advertising materials

Class 35: The wholesale and retailing of products used in treatment by natural therapy and to assist in natural therapies

Class 41: The provision of education and training in beauty techniques and treatments and natural therapy including but not limited to acupuncture, homeopathy, naturopathy, western herbal medicine, nutritional medicine, holistic counselling, remedial massage, massage therapy, traditional Chinese medicine remedial massage, aromatherapy, musculoskeletal therapy, reflexology preventative health care and clinical diagnosis

Class 44: The provision of beauty services and care and services of natural therapies including but not limited to massage including oriental and remedial massage, reflexology, acupuncture, naturopathy, homeopathy herbal medicine, nutrition, aromatherapy services

Number:  1543030
Date filed:                 26 February 2013
Trade Mark:             WELLNATION

Goods/services:        same as above

1. The applications were examined as required by section 31 of the Act and the first official reports raised grounds for rejecting the trade marks under section 41 of the Act.

2. The grounds for rejection were raised against application 1543030 in respect of all of the nominated goods and services. The grounds for rejection were raised against application 1543029 in respect of all but the class 16 goods which were found acceptable for registration. The examiner invited evidence of use suggesting that it may enable acceptance of the trade marks based on section 41(5) of the Act, that is, that the trade marks are to some extent inherently adapted to distinguish.

3. Further correspondence between the examiner and the Applicant’s attorney, which included the provision of declaratory statements, did not overcome the grounds for rejection and so the Applicant exercised its right under section 33(4) to be heard before the Registrar decided whether to accept or reject the applications.

4. A hearing was convened for that purpose in Melbourne on 14 November 2014 and, acting as a delegate of the Registrar, I took oral and written submissions from Robert Gregory of Maddocks, Solicitors, representing the Applicant.  I note that separate written submissions were made for each of the trade mark applications but given the degree of commonality in those submissions I will discuss the matters together.

Evidence of record

1. Three declarations were submitted in support of the applications, being those of:

• Carolyn Barker made 3 July 2014;

• Marc Hertz made 3 November 2014; and

• David Hoey made 6 November 2014.

Discussion and reasons

Section 41 – trade mark not distinguishing applicant’s goods or services

1. Section 41 of the Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into effect on 15 April 2013. Since the filing date of the applications is earlier than the operative date of the amendment to section 41, it is the un-amended form of the section which applies to this matter.[1] 

   [1] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50

2. Section 41 in its un-amended form provided:

   (1)  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).

   (2)  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 (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.

   (3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: 

   (a) the Registrar is to consider whether, because of the combined effect of the following: 

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii) the use, or intended use, of the trade mark by the applicant;

   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and 

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services - the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

   Note 1: For goods of a person and services of a person see section 6.

   Note 2: 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 (1) and 7(3) and section 8).

   (6)  If the Registrar finds that 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, the following provisions apply: 

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant-the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b) in any other case-the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1: Trade marks that are not to any extent 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: 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 (1) and 7(3) and section 8).

3. Australian courts hold that the essential or primary function of a trade mark is to act as an indication of the trade source of the goods or services in relation to which the sign is to be used.[2] Whether an applicant’s choice of sign for use as a trade mark is initially adapted to fulfill this function will depend on its successful negotiation of former section 41, discussed by Branson J in the Oregon decision, Blount Inc v Registrar of Trade Marks [1998] 40 IPR 498 where she said (in part):

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that 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; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   [2] See E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2010) 241 CLR 144; 84 ALJR 352; [2010] HCA 15 at [41] – [43] (HCA).

4. Accordingly, the first consideration must be to what extent the trade marks are inherently adapted to distinguish the Applicant’s goods and services from the similar goods and services of other persons.

5. To reiterate the point made by Branson J, inherent adaptation to distinguish refers to the quality of a trade mark itself and is something which cannot be acquired through use.  In the Michigan decision,[3] Kitto J said the following about inherent adaptation to distinguish:

   That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. 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. and G. Du Cros Ltd. (1913) AC 624 at 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 (ie. 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 connection 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. (30 RPC 216 at 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [3] Clark Equipment Co V Registrar of Trade Marks (1964) 111 CLR 511

6. The examiner’s contention was that “research indicted the term is used to describe the desired outcome of the use of health, wellbeing and beauty products and services”.   The research to which the examiner referred was an internet search.

7. In response to that internet research, the Applicant’s submission is that in all cases but five instances, use of the term “wellnation” on websites with an Australian domain name are in reference to the Applicant.[4]   The Applicant argues further that the examiner’s references to other traders that are using the term “wellnation” in connection with similar goods or services are sourced from the United States of America.

   [4] Mr Hertz's declaration at [7]-[8], Exhibit MH-3 and Mr Hoey's declaration at [19].

8. Mr Hertz is a solicitor in the employment of the Applicant’s representative.  In his declaration there is evidence that of the eight business names registered in Australia that contain the term “wellnation”, all are registered by the Applicant.  His declaration is also evidence of the fact that the term “wellnation” does not appear in an Australian dictionary. 

9. The Applicant’s position is that the trade marks are acceptable for registration under section 41(3), not just as the case may be for the class 16 goods but for all of the goods and services of both applications. In the alternative, the Applicant submits that the declarations of Ms Carolyn Barker and Mr David Hoey provide sufficient basis for acceptance under section 41(5).

10. I pause at this point to make the preliminary finding that I do not believe a useful distinction can be drawn between WELLNATION and WELLNATION CLINICS.  Within the context of the applied-for goods and services, the meaning of the word “clinics” is entirely descriptive and I conclude that the success or failure of the Applicant turns entirely on the adaptability of the term “wellnation” to distinguish the goods and services of the Applicant from those of other traders.

11. The meaning of the word “nation” is well understood and comprehends at its core the idea of a large body of individuals or peoples.  That is not to say that the word is without its nuances and it can on occasion refer to a set of commonly held beliefs and ideals, or even a set of policies and governance practices.  

12. The word “well” has in English a great variety of meanings but in the conjoined term “wellnation” is most likely to function as an adjective and to carry the broad sense of meaning in satisfactory condition or circumstances.  More particularly, within the context of the applied-for goods and services, it is likely to be understood to mean, of good health, or free or recovered from infirmity or disease.  Colloquially, we might say: “He is not a well man”.  Indeed it is that type of example which underlines the apparent juxtaposition of these words in the term “wellnation”, for in my assessment the word “well” when used in the above sense has a personal element to it and it is not a word normally applied collectively to a large group.  We see that borne out even in group address by common expressions such as: “Is everyone well?”

13. To my mind, unless the examiner’s research shows that before the filing date of the applications the term “wellnation” was commonly used in relation to these goods or services my decision would be to regard the trade marks as having sufficient inherent adaptability to distinguish such that the trade marks are registrable for all of the nominated goods and services under section 41(3).

14. Turning to the research, I am in favour of much the Applicant has had to say of it.  Examples of use came from the United States.  I would not necessarily exclude the information for that reason alone, but what does strike me about the material is that it shows use of the term as the name of certain movements or programmes and not in a purely descriptive sense.  Moreover, I observe that for the small difference it makes, the citations almost invariably are to “well nation” and not “wellnation”.

15. I am able to verify for myself that a very significant percentage of the Google hits are references to the Applicant’s own website and I can see no other evidence from dictionaries or elsewhere that the term “wellnation” is in common use in Australia.  In short, I do not think that the examiner’s research supports the broad claims said to rest on it and I find that, at the priority date, the Applicant was entitled to registration for all of the goods and services without the need for anything more. 

16. In essence, I would regard “wellnation” to be a contrived term.  Both constituent words “well” and “nation” are capable of a range of meanings and I would consider the word “nation” as one to which the word “well” is not ordinarily applied.  Indeed, as I have said, I find the juxtaposition of the two words noteworthy.  I find that the trade marks lack direct meaning and are sufficiently adapted to distinguish.  There is nothing to cause me to think the other traders are likely, in the ordinary course of their businesses and without improper motive, to desire to use the same marks in connection with their own similar goods or services.

Decision

1. Section 33 of the Act provides:

   (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.

   (2)  The Registrar may accept the application subject to conditions or limitations. 

   (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.

   (4)  The Registrar may not reject an application without giving the applicant an opportunity of being heard. 

2. I am satisfied that there are no grounds for rejection of the applications which may now proceed to registration.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
9 February 2015