Australian Rail Track Corporation Limited

[2018] ATMO 69

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1797598 InlandRail (with device) and 1797602 Inland Rail (9, 36, 37 and 39) in the name of Australian Rail Track Corporation Limited.

Delegate:

Heath Wilson

Representation:

Applicant: Sonia Stewart of Counsel instructed by Brett Doyle of Clayton Utz.

2018 ATMO 69

Decision:

Request to be heard under section 33(4) of the Trade Marks Act 1995 – consideration of grounds for rejection under section 41 of the Act – evidence of use, intended use or other circumstances sufficient under section 41(4) – Trade Marks accepted for possible registration.

Background

1. On 20 September 2016, Australian Rail Track Corporation Limited (‘the Applicant’) filed two trade mark applications for registration under the Trade Marks Act 1995 (‘the Act’). The applications were allocated trade mark nos. 1797598: and 1797602: Inland Rail (collectively, ‘the Trade Marks’).

2. The trade mark applications both claimed an identical specification of goods and services namely:

   Class 9: Data processing equipment; computer software; vehicle tracking apparatus; telecommunications equipment; electronic apparatus for monitoring trains and other vehicles; electronic apparatus for monitoring railway track; global positioning system (GPS) apparatus; electronic equipment and apparatus

   
   Class 36:

   Property management; property investment; property development; leasing and access services to real property; investment services including investment in property and transport infrastructure

   
   
   Class 37:

   Construction, installation, maintenance and repair of transport infrastructure and transport logistics systems

   
   Class 39: Transport services; providing access to transport infrastructure including railway track use time to others; location and tracking of goods; transport logistics; monitoring transport infrastructure and transport services; information, consultancy and advisory services in respect of the foregoing services

3. The Trade Marks were examined as required under section 31 of the Act. The first examination report for trade mark no. 1797602 raised a potential ground for rejection under sections 41(3) for classes 37 and 39 and section 41(4) for classes 9 and 36. The first examination report for trade mark no. 1797598 raised a potential ground for rejection under section 41(4) for all the goods and services of that application.

4. The reasoning for raising the ground for rejection was substantially the same for each Trade Mark, namely:

   The Macquarie Dictionary defines the word INLAND as, inter alia, relating to or situated in the interior part of a country or region: inland cities and the inland, the Australian outback and its inhabitants. The word RAIL is defined as the railway, as a means of transportation: to travel by rail.

   In relation to the goods and services you have claimed, this indicates that you are providing hardware and software, as well as property, construction, maintenance and logistics services relating to a railway situated in the interior part of a country, for example in the Australian outback.

   Other traders should be able to use INLAND RAIL in connection with goods or services similar to yours.

5. The report on trade mark no. 1797598 contained the additional paragraph:

   Please note that the additional elements contained in your trade mark are not sufficient to alter the nature of your trade mark when viewed as a whole to such an extent to make the trade mark capable of distinguishing the goods and services claimed. This is because despite the addition of two stripes and the stylisation of the words, the main feature of your trade mark remains to be the words INLAND RAIL.

6. In response, the legal representatives of the Applicant provided submissions arguing that the ground for rejection under section 41 of the Act was not warranted and supplied the Statutory Declaration of Gavin Shawn Carney (General Counsel and Company Secretary of the Applicant) made 10 May 2017 with Annexures A to G (‘Carney’).

7. The second examination reports, which were issued on 1 June 2017, maintained the grounds for rejection and indicated that evidence could be supplied under sections 41(3) and 41(4) of the Act. The reports stated that the evidence provided earlier was considered insufficient for the grounds for rejection to be withdrawn.

8. The Applicant requested a hearing on 21 June 2017 and the matter was promptly set down to be heard. As it transpired, the Applicant was not adequately prepared to be heard at the time and the matter was returned to examination. On 1 December 2017, the Applicant responded to the second examiner’s report providing further submissions and the statutory declaration of Dr. Timothy John Kuypers (Founder and Principal of Walbrook Partners) made 30 November 2017 (‘Kuypers’). The submissions and declaration were provided to support the argument that the Trade Marks were capable of distinguishing the designated goods and services.

9. The third examination reports, issued on 10 January 2018, maintained the grounds for rejection under the Act. On 1 February 2018, the Applicant again requested that the two trade mark applications be set down for hearing.

10. The date of the hearing was scheduled for 23 February 2018. Prior to the hearing the Applicant’s legal representatives provided extensive written submissions along with the Statutory Declaration of John Fullerton (Chief Executive Officer of the Applicant) made 29 January 2018 with annexures A to Z and AA to EE (‘Fullerton’).

11. Fullerton incorporates and updates the information in Carney. It was confirmed at the hearing that nothing within Fullerton was considered by the Applicant to be confidential material.  As a delegate of the Registrar of Trade Marks, I heard the matters on the scheduled date. Sonia Stewart of Counsel made submissions on behalf of the Applicant instructed by Brett Doyle of Clayton Utz.

The Law

1. Section 41 of the Act relevantly provides:

41Trade 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).

‘Presumption of Registrability’

1. Under s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. In other words, “a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.[1]

   [1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].

2. The changes brought about by the IntellectualProperty Laws Amendment (Raising the Bar) Act 2012 reinforced that the presumption of registrability applies to all aspects of section 41 of the Act including (for the avoidance of doubt) when assessing a trade mark that is to some extent, but not sufficiently, inherently adapted to distinguish the designated goods/services.

‘Inherently adapted to distinguish’

1. In Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) Kitto J repeated the words of Lord Parker of Waddington in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[2], relevantly stating:

   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.[3]

   [2] (1913) AC 624, at pp 634, 635.

   [3] (1964) 111 CLR 511 at 513–14; [1965] ALR 344 at 345–6.

2. The majority judgment of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’), stated (emphasis added):

   The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from [Registrar of Trade Marks v W & G Du Cros Ltd [1913] UKHL 588; [1913] AC 624 (‘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. [4]

   [4] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 4, [59] (My emphasis in bold).

3. The first Trade Mark (1797598) consists of the expression ‘InlandRail’ and while it is conjoined, both words are recognizable English words and visually distinct from each other, such that they would be read separately. Additionally, there is a minor stylistic flourish appearing at the commencement of the Trade Mark that to my mind is no more than a mere embellishment[5] and does not contribute in any significant way to the inherent distinctiveness of that Trade Mark as a whole.

   [5] See Clement et Cie's Trade Mark (1899) 16 RPC 611 at 618; Reemark [2000] ATMO 112.

4. The second Trade Mark (1797602) is simply the expression ‘Inland Rail’ without the aforementioned embellishments. Any distinction between the two trade marks is immaterial in my view and in both instances it is necessary to consider the expression itself to determine the capacity of each Trade Mark to distinguish the designated goods and services. In other words, to put it in the words of the relevant consideration above from Clark Equipment, the Trade Marks ‘nearly resemble’ each other, such that use of one Trade Mark would constitute use of the other. For the sake of brevity, I will therefore refer to them collectively as ‘the Trade Marks’ in the assessment that follows.

5. At the hearing, Ms Stewart and Mr Doyle were critical of the approach taken in examination in relation to the relevant tests for section 41 of the Act. In particular, Ms Stewart pointed out that obviousness of meaning of the words contained within the Trade Marks does not equate to the relevant ‘ordinary signification’. If the examiner’s reasoning could be said to have taken such a general approach, I do not think that position is correct. While this decision is not a review of the examination, I will briefly address the issue for the sake of completeness and consistency.

6. The simple fact that words comprising a trade mark have a meaning in and of themselves does not necessarily equate to an ordinary signification. The words must convey a meaning or idea ‘sufficiently tangible’ in relation to the designated goods/services.  As was submitted to me by Ms Stewart at the hearing, that question is not decided in a vacuum, but I take this submission to mean that the ordinary signification of a trade mark must be considered in the context of the designated goods and services. For clarity, it does not, however, mean that use of the Trade Marks by the Applicant can be considered on the initial question.  As was reiterated by the Full Bench of the Federal Court of Australia in Primary Health Care Limited v Commonwealth of Australia:

   The fact that a term has acquired a secondary meaning through use or by repute is not relevant to the question of whether it is inherently adapted to distinguish an applicant’s goods or services. “Inherent adaptability” “depends on the nature of the trade mark itself” and “cannot be changed by use or otherwise”: Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 424 (Gibbs J).[6]

   [6] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [87].

7. Turning to consider the Trade Marks, the expression ‘Inland Rail’ has a commonly understood meaning which would be evident to persons concerned with the designated goods and services. That meaning was effectively articulated by the examiner in the reasoning from the first examination reports extracted earlier. Australians who will purchase, consume or trade in those goods/services do not need to institute a search for meaning in relation to the Trade Marks as they do not amount to a ‘covert and skillful allusion[7].’ In making this finding, I have noted the contents of Kuypers in this regard and his understanding of the term ‘Inland Rail’ where he declares:

   As at today’s date, I understand the words ‘Inland Rail’ to refer to the 1,700km rail route that will link Melbourne and Brisbane via regional Victoria, New South Wales and Queensland to be owned by the ARTC.

   [7] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 at p201.

8. Kuypers also provides a distinction between “below rail” and “above rail” and an explanation that the Applicant will be the “below rail” operator for the proposed rail line. There is no doubt that the particular knowledge of Dr Kuypers is relevant insofar as he is a person in Australia ‘who will purchase, consume or trade in the goods’ but his specialist view at the time of making the declaration may not necessarily be representative of all persons concerned with the designated goods and services at the priority date. In that respect, Dr Kuypers’ view is informative, but cannot be considered conclusive in light of the established tests.

9. Ms Stewart also pointed out that the Trade Marks consist of, or comprise the words ‘Inland Rail’ rather than ‘Inland Railway’ which would be more apt for normal description in relation to the designated goods and services. This is a valid point, but it does not make the Trade Marks inherently adapted to distinguish. I refer to the relevant comments made in Austereo Ltd v DMG Radio (Australia) Pty Ltd:

   [W]ords which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish: Re the Application of J P Coats Ltd (1936) 53 RPC 355 at 380. Distinctly, that a descriptive statement is commonly associated with a particular trader’s goods or services does not, in and of itself, mean that that statement is inherently adapted to distinguish that trader’s goods or services. It may, for example, be naturally applied to goods or services of that type by whomsoever manufactured or supplied: ibid at 380.[8]

   [8] [2004] FCA 968, [38].

10. Similarly, if it were the case that as at the priority date the words ‘Inland Rail’ are commonly associated with the Applicant, it would not necessarily follow from this fact that the Trade Marks are inherently adapted to distinguish. 

11. The ordinary signification of the Trade Marks to persons concerned with the goods and services is evident on its face. That said, if the term ‘Inland Rail’ has a level of inherent capacity to distinguish it is likely to be revealed by answering the second limb of the test; whether other traders would be likely to (without improper motive) desire to use for the Trade Marks for the sake of the meaning previously discussed.

‘Other traders’

1. The practical approach to the question was considered in Telstra Corporation Limited v Phone Directories Company Pty Ltd as follows:

   If a word mark is taken as an example, the ordinary signification of the mark, and the question of “whether other traders are likely, in the ordinary course of their business 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” (Registrar of Trade Marks v Du Cros at 635 per Lord Parker) (or to note alternative formulations: such traders actuated only by proper motives “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” (Clark Equipment v Registrar of Trade Marks at 514 per Kitto J), or “a trader might without any improper motive, want to use to describe his goods” (Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 (“Burger King”) at 425 per Gibbs J (as his Honour then was), or “other traders might legitimately need to use the word in respect of their goods” (Cantarella at 20-21 [71])) are closely related questions. Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required. Burger King appears to be such a case (see Gibbs J at 425). In other cases, evidence might be called on the issue of the ordinary signification of the word mark as happened in Faulding. Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse v Fry Consulting”) at 543544 [102] per Kenny J), but would be considered in light of all of the evidence in the case. It is important to note the possible dual significance of such evidence. Evidence of other traders using the word yellow or the colouryellow in connection with their print and online directories could be evidence of the ordinary signification of theYELLOW mark and of the fact that other traders might want to use the word to describe their goods or services.[9]

   [9] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [126] (My emphasis in bold).

1. The written submissions from the Applicant provide at paragraph (30)(a):

   Other traders did not in fact use, and indeed had no need to use, the words inland rail in good faith as a bona fide description of their goods or services, and, still less so they have any good faith to use those words now, having regard to the Applicant’s reputation in them.

2. It is no answer to the second element of the test to highlight the specialised nature of the goods and services or some kind of monopoly that an applicant may have since attained and then submit that other traders have no legitimate desire to use the Trade Marks for the sake of their ordinary signification. As explained by Burley J in the recent case of Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd:

   As the plurality in Cantarella noted at [44], the requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business, and from the wider point of view of the public, has been applied for at least a century. Where the authorities refer in this context to the importance of the meaning of a word to persons who are “concerned” with them (eg Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [1946] HCA 15; (1946) CLR 175 at 185 (Dixon J); FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537 (Faulding) at 557 per Kitto J), or who wish to “describe their goods” (Mark Foy’s at 201 – 202 (Williams J)), they plainly mean other traders who perceive a need or have a legitimate desire to so use the words in relation to their goods.[10]

   …

   [A]s indicated above, the question is not one of ‘need’ but whether traders are likely, with no improper motive, to desire to use words for the ordinary signification which they possess.[11]

   [10] Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235, [88].

   [11] Ibid, [158].

3. In the current matter, I note the criticisms made by the Applicant’s representatives that instances of descriptive use of the expression ‘Inland Rail’ were not provided to the Applicant during examination. Nevertheless, a perfunctory search for and analysis of the term ‘Inland Rail’ reveals significant trade mark use by the Applicant but also instances of use by other persons referring in a descriptive sense to a rail route. There is, as mentioned, a dual significance to evidence such as this and it cannot be easily dismissed.

4. On its face, the Trade Marks are less likely to be desired by others to be used for the sake of their ordinary signification in relation to goods such as computer software and electronic equipment. The same can be said for property management and real estate services. The likelihood that other traders would desire to use the expression is higher for services in classes 37 and 39 including those related to the construction of transport infrastructure, their repair and maintenance, and transport services. 

5. As I have said, the likelihood that other traders would desire to use the Trade Marks for the sake of their ordinary signification is lower for some of the goods and services than it is for others. While the meaning of the words ‘Inland Rail’ is evident,  it is less evident, on the material before me, that other traders (operating without improper motive) would likely think of the Trade Marks and want to use them in connection with similar goods/services in any manner which would infringe a registered trade mark granted in respect of it.[12] In addition, I have mentioned the factor that ‘Inland Rail’ is not an expression that is the “sole one(s) applicable to particular goods, irreplaceable by any other that the riches of the English language can proferr.”[13] Finally, Ms Stewart highlighted the state of trade marks on the Register and the most analogous example provided was that of ‘STATERAIL’ (Trade mark registration no. 915359) registered under the provisions of the (now repealed) section 41(5) of the Act in relation to similar services in class 39. While each trade mark is assessed on its own merits and circumstances, I note that the current section 41(4) is the equivalent of the previous section 41(5).

   [12] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at p514.

   [13] Eutectic Corporation v Registrar of Trade Marks (1980) 32 ALR 211, (220).

6. Taking into account all the above factors, I find that there remains a likelihood of other traders desiring to use the Trade Marks for the meaning they possess. I am not convinced that the Trade Marks are completely devoid of inherent adaptation to distinguish services such as those in classes 37 and 39, but it nevertheless falls at the lower end of the continuum for trade marks that may be considered under section 41(4) of the Act.

7. I therefore find it appropriate to assess the Applicant’s evidence of use of the Trade Marks under section 41(4) and take into account the use or intended use, the extent to which the Trade Marks are inherently adapted to distinguish the designated goods and services, and any other circumstances that may be appropriate for the Registrar to consider.

Evidence of Use

1. In terms of assessing evidence of trade mark use, the context of such use will be all-important[14] to determine whether the Trade Marks are capable of distinguishing. It must also be noted that, as a general principle, certain trade marks may perform a dual function and use of a trade mark may be concurrently descriptive and distinctive depending on context.[15] Such evidence of use in relation to words which are not invented is not unusual, but it does make the assessment and the Applicant’s task more challenging. As was explained in the Cheesy Twists case:

   Where the word has or a combination of words have a clear meaning in ordinary use, the question will be much more difficult as the word or combination of words may either have taken on a secondary meaning indicating the origin of the goods or may simply convey an ordinary meaning (ie some message other than the trade origin of the goods): see Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 at 286. It is well established that there is not a true dichotomy between words capable of being used as a badge of trade origin and words that are descriptive: see Johnson & Johnson at 347 per Gummow J and at 339 per Lockhart J.[16]

   [14] Shell Co of Australia Ltd v Esso Oil (Aust) Ltd (1963) 109 CLR 407.

   [15] See Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874 (‘Cheesy Twists’).

   [16] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874, [23].

2. As the relevant assessment is under section 41(4), the post filing date use evidenced is relevant, and I note in addition from the evidence that there are also numerous instances of use and promotion of the Trade Marks occurring before 20 September 2016.

3. Fullerton provides that the Applicant is a statutory body owned by the Federal Government of Australia and is responsible for the management of over 8,500km of interstate track across Australia. The Applicant initially received investment funding from the Australian Government in November 2013 to develop a business case for the new railway line from Melbourne to Brisbane reaching 1,730km in length. This became known as the Inland Rail Project. Ms Stewart also pointed out in detail the significance of this project and also the subsequent budget allocation in 2017-2018 of $8.4 billion to build the rail freight corridor.

4. Although it has been submitted that the Inland Rail Project has been promoted to industry stakeholders since 2008, the evidence indicates that it was not until 2013 in line with the announcement of the Federal Government funding, that significant public use of the Trade Marks in relation to the designated services occurred.

5. It is clear from the evidence that there is no specific advertising and promotional budget for the Trade Marks, but I do not find the absence of such evidence to be fatal to the acceptance of the applications. The capacity of a trade mark to distinguish its goods and services from those of other traders can be demonstrated in a number of ways.

6. Turning to the nature of the evidence supplied, annexure A to Fullerton is a final report dated July 2010 regarding the Inland Rail Alignment Study. There is no indication in Fullerton of which Australian consumers would have been exposed to this final report, so its value in establishing use of the Trade Mark in the course of trade is negligible.

7. Media releases were published on 28 August 2013 and 7 March 2014 from the Australasian Railway Association (annexures J and L) entitled ‘Inland Rail getting the attention it deserves’ and ‘Inland Rail to meet to promote benefits to regional Australia’ both using the expression on multiple occasions in an non-generic way. Within these articles there is also reference to symposiums held in regional NSW to engage with stakeholders.

8. The Applicant published a media release in 9 April 2014 entitled ‘Key Inland Rail and ATMS Appointments Announced’ referring to the word Trade Mark (‘Inland Rail’). This media release was subsequently followed by regular media releases on 29 May 2014, two 2 October 2014 media releases, 30 October 2014, 14 November 2014, 5 February 2015, and 6 March 2015. These releases act as promotion and education of the use of the Trade Marks and again specifically mention stakeholder meetings in NSW and Queensland with the aim of gaining industry approval at various stages throughout the process.

9. The Applicant’s advertisement from June 2015[17] bore the Trade Marks and was seeking an expression of interest in assembling a Panel of Providers for the provision of Community Engagement and Consultation Services. Another media release followed shortly afterwards from the Hon Warren Truss MP (Former Deputy Prime Minister and Former Minister for Infrastructure and Regional Development) and indicated that the “First Inland Rail tender [had been] awarded”. The program is in line with the details of the Applicant’s business case[18] and indicates the Applicant was building further awareness amongst customers, stakeholders and the Australian community.

   [17] Annexure T to Fullerton.

   [18] Annexure F to Fullerton.

10. Annexure F to Fullerton is the Programme Business Case from March 2016 entitled ‘The Case for Inland Rail’. This is a public document bearing the Trade Marks and contains instances of both potentially descriptive use (although I note the words are always capitalized[19]) but more prevalently shows evidence of use as a trade mark. In that regard, examples from the document can be seen below:

    The Inland Rail Business Case developed by ARTC provides the most detailed assessment to date of why Inland Rail is needed and how it can be delivered.

    …

    This new rail line, Inland Rail, provides an opportunity to make a step change in the capacity, capability and interoperability of our national freight rail system.

    …

    An analysis of the potential demand for Inland Rail shows there is a strong appetite among freight customers for Inland Rail’s road competitive service.

    [19] I will revisit the significance of this later in my decision.

11. The media articles, media releases and other public documents continued throughout 2015 and into 2016. I note that the Trade Marks are prevalent on the material and are functioning as the Applicant’s brands.

12. In terms of the post-priority date evidence (i.e. after 20 September 2016), an ‘Inland Rail Information Centre’ was opened in Toowoomba to give feedback and provide information on ‘Australia’s largest infrastructure project’.[20] Other associated annexures detail information sessions run by representatives of the Applicant in Toowoomba, Queensland and in regional NSW, including Parkes.

    [20] Annexure Z to Fullerton.

13. Dr Kuypers provides independent expert evidence in his declaration as he is the principal of a consultancy firm that provides advice on rail safety as well as a special advisor at HoustonKemp Economists providing evidence-based economic analysis to private sector corporations, governments, trade associations and law firms.[21] It should be noted that his declaration was made after he had read Carney and all the correspondence between the office and the Applicant regarding the Trade Marks. Due to his position and expertise, Dr Kuypers also has specific knowledge of the Applicant’s ‘Inland Rail Project’ and he declares:

    [21] Kuypers, [3].

    I am aware that the term “Inland Rail” has been used extensively since 2007 to designate the rail line that will be owned and operated by ARTC between Melbourne and Sydney[22] by-passing the Sydney metropolitan area. Instances of this use include:

    [22] I assume this is an error and was meant to read ‘Brisbane’.

a)Studies commissioned by the Federal Government and other parties;

b)Conferences;

c)The activities of the Implementation Group chaired by the former Deputy Prime Minister, John Anderson;

d)Publically available ARTC Reports;

e)Meetings of local government councils;

f)Advertisements in newspapers such as the Financial Review; and

g)Media releases published on the Australasian Railway Association’s (ARA) website.

…

In my view, and based on my extensive experience within the Australian rail industry, when I or any other person in the transport industry sees or hears the words ‘inland rail’, there is no doubt in my mind that they are understood as a reference solely to the ARTC’s Inland Rail project, its infrastructure or associated activities. I believe that this is true as of today’s date and was also the case as at 20 September 2016.[23]

[23] Kuypers, [22] and [28].

1. The above statement is a reflection of the substantial amount of use and promotion conducted by the Applicant of the Trade Marks to date. Apart from the above media releases, public documents and consultation, I also have before me some evidence of use from the Applicant’s website (‘ and use upon the Applicant’s stationery.[24]

   [24] Fullerton, [25].

2. A point was made by Ms Stewart that the use of the expression ‘Inland Rail’ in the Applicant’s evidence invariably appears with the two words capitalized. The submission was that this signifies to the public that the words are being used in a trade mark sense and educates them in that regard. However, I am not convinced that this fact alone is as significant as, say, the use of a ‘™’ symbol to indicate common law use of a trade mark. Regardless, trade mark use is to be judged objectively[25] and what is paramount is the particular context in which the Trade Marks appear. In that respect I find that when ‘Inland Rail’ is mentioned within the Applicant’s evidence, it is consistently and overwhelmingly referred to, not in a generic sense, but as the name of the Applicant’s project.

   [25] See Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 1001; (1994) 49 FCR 89.

3. Having considered the strength of all the evidence provided to me, I am satisfied that the Trade Marks do sufficiently distinguish the designated goods and services as being those of the Applicant. In case I am wrong in that finding and the Trade Marks are not yet distinctive, then assuming the Applicant’s project goes ahead as envisioned, I am satisfied that due to the significant impact to a substantial area of Australia, the amount of Australian consumers and traders involved with or affected by the project and the nature in which the Trade Marks have been used to date, that they will do so in the near future. 

4. In order to give effect to the presumption of registrability referred to earlier, section 41 of the Act is framed in the negative. That is, under section 41(2) of the Act, a trade mark is taken not to be capable of distinguishing the designated goods or services only if subsection (3) or (4) applies. Relevantly, subsection 41(4) applies if the trade mark is to some extent, but not sufficiently inherently adapted to distinguish the designated goods or services AND the trade mark does not or will not distinguish having regard to the factors in s41(4)(b). If, on the other hand, it is found that the trade mark does or will distinguish, subsection 41(4) does not apply and it follows that there is no longer a ground for rejection under section 41 of the Act.

5. As a result of the evidence of use, intended use and other circumstances supplied to the Registrar, I find that the Trade Marks do or will distinguish the goods and services from those of other traders and should be accepted for possible registration with the following endorsement:

   ‘Evidence and/or other circumstances provided under subsection 41(4).’

Decision 

1. Section 33 of the Act relevantly provides:

33  Application 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.

1. As a delegate of the Registrar of Trade Marks, I am not satisfied that there are grounds under the Act for rejecting the Trade Marks. I am further satisfied that the applications have been made in accordance with the Act. In that context, I accept the Trade Marks for possible registration with the aforementioned endorsement.

Heath Wilson

Supervising Hearing Officer

Oppositions and Hearings

11 May 2018