Australian Postal Corporation

[2000] ATMO 108

TRADE MARKS ACT 1995

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

Re:Trade mark application number 759015(38 and 39) - Post Office- in the name of AUSTRALIAN POSTAL CORPORATION trading as AUSTRALIA POST

Background

This application was filed under the provisions of s48 of the Trade Marks Act 1995 ("the Act"), having been divided out from application 671003.  It thereby has a priority date of 30 August 1995.

The applicant is Australian Postal Corporation, trading as Australia Post ("Australia Post").  The trade mark is Post Office, and the services in respect of which the applicant seeks registration are:

Class 38: Electronic mail delivery services; electronic mail communication services including e-mail, facsimile services, telegraph services

Class 39:  Mail delivery services; courier services

The application was filed on 6 April 1998. An examiner issued a first report on 26 August 1998, advising the applicant that there was a ground for rejection in terms of s41 of the Act. A response, dated 27 April 2000, was received in due course, the applicant having applied for, and been granted, two extensions of time in which to put its application in order for acceptance. Evidence was filed, but failed to satisfy the registrar's delegate, a Principal Examiner, that the application should be accepted in terms of s41. The ground for rejection was maintained, with advice as to what additional evidence would be necessary for reconsideration of the application, in the form of a second examiner's report, issued on 8 May 2000. In its response, dated 23 May 2000, the applicant provided survey evidence of the extent to which Post Office was recognised in the Australian population as being associated only with the applicant. Neither the survey nor the submissions which accompanied it convinced the acceptance officer that the applicant had overcome the grounds for rejection, and a third adverse report was issued on 24 May 2000. This maintained the ground for rejection and advised that the application was being referred to the Hearings Section.

On 25 May, through its attorneys, Griffith Hack of Melbourne, the applicant requested a hearing.  The hearing was duly set down.  It was conducted by telephone in Canberra on 20 June 2000, with Mr Stephen Wilson making his submissions on behalf of the applicant by telephone from Melbourne.  As delegate of the registrar, I conducted the hearing and must now decide whether the application is to be rejected or accepted.

Evidence

Two statutory declarations by Constantine Lakoumentas constitute the evidence filed in support of this application.  Mr Lakoumentas is Corporate Solicitor for Australia Post. 

The first declaration is dated 27 April 2000, and sets out the history and extent of use of these words by the applicant and its predecessors.  The services for which the applicant has applied are stated to comprise 70% of its very large and lucrative business.  Thirty-five exhibits showing the words in use, and demonstrating different aspects of the history and business of the applicant, accompany the declaration.

The second declaration is dated 23 May 2000.  It sets out the nature and summarises the findings of an independent survey of the general population, conducted by Newspoll Market Research, in early May of this same year.  The survey itself forms an exhibit to the declaration.

Submissions

Mr Wilson pointed to the evidence as showing over 100 years of use of these words by Australia Post and its predecessors, and as showing that there is an enormous volume of sales, under the proposed trade mark, of the services for which it has applied.  These factors, together with the existence of more than 4,500 outlets Australia-wide, and a high level of recognition in the marketplace not just of the connection between Australia Post and Post Office, but of Post Office as being a trade mark, all argued for acceptance of the trade mark, in his view. 

Mr Wilson drew my attention to a previous decision of the registrar which, he stated, showed that it was s 41 (5) that was the relevant provision. Application 676333 for the trade mark Bank Of Scotland had been accepted under s 41(5) for banking services, on evidence of 300 years use, none of which had been in Australia. Postal services, like the banking sector, have been a highly regulated environment, he submitted, so it followed that the delegate's conclusion should be the same in respect of Post Office as it had been in respect of Bank Of Scotland. Mr Wilson quoted from a note on the latter file, in which the delegate stated that "such a protracted period of use (300 years) is an exception to the general rule that use produces acquired, not inherent distinctiveness."

The law

The Act provides as follows

Trade mark not distinguishing applicant's goods or services

41.(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.

(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.

(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.

(6) If the Registrar finds that the trade mark is not 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.

The construction of subsections 3 - 6 of this provision was analysed by Branson, J in Blount Inc v Registrar of Trade Marks [1] .  Her Honour set out the enquiry to be made in the following terms:

[1] 40 IPR 498 at 504

Each of ss 33 (1) and 41 involves the concept of the registrar being "satisfied". Where the Act requires the registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities: Rejfek v McElroy ( 1965) 112 CLR 517; at 521.

Subsections (3)-(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.

The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41 (2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33 (1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41 (4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

Discussion

In deciding whether Post Office is capable of distinguishing the specified services from those of others, I 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".

Inherent adaptation cannot be acquired and is not affected by use in the marketplace[2].

It is usual, in assessing the extent of inherent adaptation of a word mark, to turn first to the dictionary to establish the accepted meaning.  Unlike Bank of Scotland, Post Office is a dictionary term. It is defined as follows[3]

[2] Burger King Corp. v Registrar of Trade Marks (1973) 128 CLR 417 at 424

[3] Oxford Dictionary (2^nd ed)

1. (With capital initial.) The public department charged with the conveyance of letters, etc., by post. In early use, sometimes meaning the office of the master of the posts, or postmaster (general); in other instances it is difficult to separate it from the local centre or head quarters of the department, the General Post Office in London or other capital.

The name appears first under the Commonwealth [ie 1652], the earlier name having been letter-office.

and

2. a. A house or shop where postal business is carried on, where postage stamps are sold, letters are registered and posted for transmission to their destinations, and from some of which letters received from places at home and abroad are delivered.

The name is now commonly applied even to small branch offices, sub-offices, or receiving-houses, which sell stamps and receive letters for transmission, but from which letters are not delivered, this being generally done directly from the central or head office of a town or district. ....

The Macquarie Dictionary[4] tells us much the same, but more briefly:

[4] Version 1.5, Macquarie Multimedia

1. A department of government responsible for a country's postal and telecommunication services.

2. A local office of this department for receiving, distributing and transmitting mail, selling postage stamps, providing telecommunications services, etc.

Both dictionaries show that is also used adjectivally.

These definitions clearly apply to physical mail delivery and courier services and to well-established message services such as telegrams.  However, "high tech" services are also designated.  The examiner pointed out to the applicant that the words appeared to be used on the internet in a generic sense "to designate a central sending and/or receiving area for information or electronic mail." The applicant responded that "several" of the web-site entries referred to the applicant's services.  No further information about the electronic services was provided.  I note only that the term does appear to have penetrated cyberspace. The following 1994 definition appears in the Free On-Line Dictionary of Computing (FOLDOC):

Post Office Protocol

messaging protocol (POP) A protocol designed to allow single user computers to retrieve electronic mail from a POP server. The POP server might be a computer with a permanent Internet connection whereas its clients might only connect to it occasionally, e.g. by modem.

Netlingo (the Internet Language Dictionary) provides similar information, also showing current use of  "post", "posting" and "postmaster" for services and activities provided on-line.

The inference must be, I think, that Post Office is the normal description of the services for which Australia Post seeks to register it.  It appears to fall within the scope of  "trade marks that are not inherently adapted to distinguish goods or services" because they "consist wholly of a sign that is ordinarily used to indicate..the  kind...of goods or services"[5].

[5] Note to s 41(6) of the Act, approved as fairly reflecting "the trend of judicial authority" by Wilcox J in Ocean Spray Cranberries, Inc v Registrar of Trade Marks [2000] FCA 177 at paragraph 30.

However, it is not sufficient to look only at dictionary definitions in assessing adaptation to distinguish.  Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 explained that

".. the question whether a mark is adapted to distinguish [must] 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."

I am hesitant to conclude that this question can here be answered in the affirmative, at least in respect of the physical postal services in class 39, for reasons of history.  The words have never been available to the public as part of the common heritage. 

The conundrum is the effects of long-standing regulation and monopolisation of the service on the name. Postal services have been a government monopoly, administered since federation through a department of the Commonwealth government.  Did that monopoly in the service extend to a monopoly in the name Post Office? And if it did, does it still?  It may be that no trader other than the successor in business of the government department formerly known as the Australian Postmaster General's Department, could have ever used the term in reference to its own mail and courier services in Australia without an improper motive.  But just as it is not proper to take into account the effects of registration or of use in considering inherent adaptation to distinguish[6], it is not proper either to take into account the effect of a statutory monopoly[7].  Had it not been for the statutory monopoly imposed as a matter of public policy, I think it is reasonable to suppose that many traders might today be offering post office services without improper motive and in the ordinary course of their business. 

[6] W & G du Cros Ltd's Appn (1913) 30 RPC 660 (HL) at 671- 672

[7] Three unpublished previous decisions of the Registrar have dealt with the issue of statutory monopolies.  In Re TM appn 399568 by Pamela Elizabeth Grant, decided under the 1955 Act, the registrar's delegate considered the Sate Lotteries Amendment Act, 1984 (NSW) in connexion with the registrability of the words Instant Lottery.  In Re TM appn 446946 in the name of Australian National Airlines Commission, which was also decided under the 1955 Act, the delegate considered Section 25 of the Australian Airlines Act in relation to the registrability of the words Australian Airlines.  In Re TM appn 750158 in the name of Telecommunications Industry Ombudsman Limited, issued 19 August 1999, the delegate considered s 128(3) of the Telecommunications Act in relation to the registrability of the words Telecommunications Industry Ombudsman under the 1995 Act.

Future use is also  a  relevant consideration to inherent adaptation.  I think it is common knowledge that government services have shrunk over recent years, with departments becoming more like businesses, and less protected from competition.  The similar departments in other countries which offer the same services, and already use the name Post Office in connection with their own businesses, would appear to have some entitlement to use that term here.  In this particular respect, I consider that Post Office again differs from Bank of Scotland.  Clearly, there are postal authorities in other countries using the same term in connection with their own mail delivery services, and projecting those services via the Internet and other electronic connections worldwide. 

I fnd myself obliged to conclude that although it is not likely that other traders physically present in Australia today will want to use Post Office, without improper motive and in the ordinary course of their business, in connection with their own similar services, Post Office has no inherent adaptation to distinguish and must therefore be considered in terms of s 41(6).

That being the case, the enquiry to be made is a factual one[8].  Has the applicant demonstrated that Post Office at the relevant date did distinguish its services in Australia?

[8] Oregon, supra at 508.

To this end, Australia Post has provided a market survey.  It was conducted in May 2000, nearly five years after the relevant date, which is of course the filing date of the parent application, 30 August 1995.  While I do not suppose that the extent of recognition shown in the survey would have varied greatly between the filing date and the date of the survey, this temporal gap is something of a defect in the evidence. 

The survey was professionally conducted and polled the general population nationwide, covering both urban and rural Australia.  This is appropriate, as the whole population uses the physical mail services of the opponent.  The results are said to show that "64% of  people expect a service by the name of Post Office to be provided by one particular supplier and ... 51% of people associated the word Post Office with Australia Post".  It also shows that "39% recognise the words Post Office as a brand of mail service."

However, there is no information in the evidence to show precisely what questions were asked.  The questionnaire used is not included.  Whilst I do not wish to criticise the professionalism of the survey in any way, I am reluctant to accept the conclusions without being sufficiently apprised of the material on which the conclusions were based.

I am also conscious that the application covers a broad range of services.  I do not think I can conclude that the survey addresses the extent to which the general public would identify the more recent, "high tech" electronic services which are encompassed by the specification as emanating from the applicant.  Indeed, I would think that the users of those services are not necessarily going to be the general public, but are a special segment which would have to be separately identified and surveyed in order to produce any convincing data.

It is also surprising to me that the survey results do not establish a higher rate of recognition.  In British Sugar Plc v James Robertson & Sons Ltd[9] , Jacob J considered whether a recognition rate of 61% was sufficient to establish that the word TREATS was capable of distinguishing the registered owner's dessert sauces.  He concluded that it was not. I think I may have some regard to this as a yardstick.  However, I also note the remarks of Branson J in Oregon[10] :

[9] [1996] RPC 281 (CD) at 306

[10] supra, at 509

It is not, in my view, necessary as a matter of law for a statistically sound market survey to be undertaken before it can be established that a trade mark  does distinguish an applicant's goods from the goods of another person.  In each case, the evidence relied on by the applicant is to be evaluated in the light of any evidence to the contrary effect and having regard to the evidence which the applicant might reasonably be expected to be able to obtain in all the circumstances of the case.

I think that I must conclude, even so far as the traditional mail services of the applicant are concerned, that the survey evidence does not establish that, according to the balance of probabilities[11], the words Post Office are recognised by a sufficient proportion of the population as identifying the services of the applicant and no other. 

[11] Id, at 504

My conclusion is therefore that the applicant has not established that Post Office does distinguish its designated services. Consequently, the registrar must reject the application in terms of s41(2).

Decision

I reject application 759015.

Arminel Ryan

Senior Examiner

12 October 2000