Australian Stock Report Limited

[2010] ATMO 33

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1251084 (36, 38, 41) - AUSTRALIAN STOCK REPORT- in the name of AUSTRALIAN STOCK REPORT LIMITED.

Delegate:

Heath Wilson

Representation:

Applicant: Chris Round of Middletons.

Decision:

2010 ATMO 33

Ex parte – section 33 – ground for rejection under section 41 of the Trade Marks Act 1995 – inherent adaptation to distinguish – Whether two trade marks can operate simultaneously - Evidence sufficient only for the provisions of subsection 41(5) to be applied for some of the claimed services – Trade Mark may proceed to registration with amended specification under the provisions of subsection 41(5).

Background

1. On 11 July 2008, Australian Stock Report Limited (“the applicant”) applied to register the word trade mark “AUSTRALIAN STOCK REPORT” for the following services:

   Class: 36

   Financial services; stockbroking services; share brokerage services; stock brokerage services; administration of shares; management of shares and stocks; recording the transfer of shares; registration of shares; share portfolio management; provision of information relating to stock broking and sharebroking; quotation of stock exchange prices; financial analysis; the provision of the above services through the global communications network; advisory services in relation to finance and financial matters (such as shares, options and the stock market)

   
   
   Class: 38

   Telecommunications and communications services in relation to finance and financial matters (such as shares, options and the stock market), including daily communications by electronic mail providing computer links and the daily transmission of information via sms text messages; providing on-line access to publications in relation to finance and financial matters (such as shares, options and the stock market)

   
   
   Class: 41

   Education and training services (including conducting of classes, seminars, conferences and workshops) in relation to financial matters (such as shares, options and the stock market)

2. During the examination stage for the above application, a ground for rejection was raised by the examiner declaring that the trade mark “Australian Stock Report” had only a limited inherent adaptation to distinguish the above services from those of other relevant traders in the marketplace. This particular ground is contained within section 41(5) of the Trade Marks Act 1995 (“the Act”).

3. The applicant provided the examiner of this trade mark application with evidence comprising firstly of the statutory declaration of Matthew Julian Burns (Compliance Manager of the applicant) along with exhibits A-F (“the Burns Declaration”) and secondly, the statutory declaration of Marianne Pauline O’Hara (Customer Service and Compliance Manager of the applicant) with attached exhibits A-J (“the O’Hara declaration”). However, the above evidence did not satisfy the examiner that the trade mark was capable of distinguishing the applicant’s services. After the third examiner’s report, the applicant exercised its right to be heard on the matter under section 33(4) of the Act.

4. I heard this matter in Canberra on 3 March 2010 as a Delegate of the Registrar of Trade Marks. Chris Round of Middletons appeared on the applicant’s behalf. In support of its written submissions, the applicant relied on the entirety of the evidence provided during the examination stage.

Section 41: Inherent adaptation to distinguish

1. The oft-quoted test for the inherent adaptability of a trade mark to distinguish was set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555 as follows:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

2. The attorney for the applicant, Mr. Round, conceded that the trade mark “Australian Stock Report” had a limited inherent adaptation to distinguish the services and that section 41(5) of the Act was the appropriate ground for rejection. Other traders involved in the provision of the claimed services would be likely to desire to use the expression “Australian Stock Report” in the ordinary course of trade. I find that the trade mark is only to a limited extent inherently adapted to distinguish these particular designated services from those services of other persons. The applicant further submitted that the above evidence of use would be sufficient to allow the provisions of subsection 41(5)(b) to be applied to the trade mark, and result in the acceptance of the trade mark for registration.

Evidence of Use

1. The relevant provisions of section 41(5) of the Act state:

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).

Nature of the Trade Mark use

1. The applicant has produced evidence which shows the use of a number of trade marks. The most relevant instances include use of the words “Australian Stock Report” and (“the composite mark”). I also note that the applicant has applied to register this composite trade mark (application no. 1341170).

2. In most instances featuring the above device, it is clear that the device accompanies the words and constitutes more than a mere embellishment. The device is an addition or alteration which does substantially affect the identity of the trade mark as a whole (see section 7(1)). Accordingly, the use of the composite trade mark in the applicant’s evidence may not assist in rendering the words “Australian Stock Report” capable of distinguishing its services.

3. However, it has been established that two trade marks may co-exist on the same label (Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438) and not suffer from the company they keep. This is especially relevant in this matter as all the applicant’s trade marks include the words “Australian Stock Report” as a major element. In addition, the applicant’s evidence indicates a more prevalent use of the expression as opposed to the device. In Express Newspapers Ltd v Star Newspaper Co [1984] IPD 7090 (UK Reg), (where the trade mark in that case was used without the device contained in the registration), it was commented that:

   “…If not registered in a particular form, then a mark may be safeguarded by use in some different form, provided that its name or other significance comes shining through…”

4. If the above composite trade mark appears on the same document as the word trade mark “Australian Stock Report”, I do not think that this negates the trade mark use of the words solus in that document. Such trade mark use may still be taken into account in the assessment of evidence under section 41(5) of the Act.

5. The evidence features the device also used in conjunction with another expression, “ASRmoney” indicating a dual purpose for the device, as opposed to merely assisting the descriptive expression “Australian Stock Report” to distinguish its services. The addition of the device highlights the words “Australian Stock Report” and I do not think that a consumer would consider the device element to be of greater significance given the extent of trade mark use (as discussed below). While the words contained in the trade mark clearly have a descriptive element to them, the applicant demonstrates a considerable amount of use of the words “Australian Stock Report” as its badge of origin, rather than use solely in a descriptive sense. However, the determinative issue is whether the extent of the applicant’s evidence is sufficient to satisfy me that the words “Australian Stock Report” does (or will) distinguish the relevant services.

Extent of Trade mark use

1. The applicant has been using the trade mark “Australian Stock Report” since its business commenced in 2003 and provides members with information and education on share trading on the Australian Stock Exchange. The Burns declaration was produced as evidence in response to the first examination report. This evidence displays a trade mark (on the applicant’s “CFD and Trader’s report” from November 2008) which features another different logo from those referred to earlier, used in conjunction with the words “Australian Stock Report”. The printouts from the applicant’s website (exhibit B of the O’Hara declaration) display the use of this old logo as well as the composite trade mark. The applicant’s stationery and a webpage from 2008 is printed with the composite trade mark, but I find this evidence (by itself) insufficient to apply s41(5).

2. The O’Hara declaration contains the bulk of the applicant’s weightier evidence and indicates that the advertising expenditure and annual turnover in relation to the trade mark from 2005-2009 has been significant. The applicant further declares that the generated revenue is in relation to the services claimed in the application. The applicant has actively promoted its services to potential customers and members, primarily via electronic means.

3. A large majority of the applicant’s advertising is in the form of electronic mail and (amongst other things) provides links to financial databases for members of the company. These emails contain use of both the composite mark and the expression “Australian Stock Report” by itself. In addition, a large number of emails have been sent to members regarding educational seminars, VIP Trader’s Conferences and workshops relating to the stock market. The workshops and seminars have been held in locations in Australia including Sydney, Brisbane, Melbourne, Adelaide, Perth, Hobart and also in New Zealand. Due the extensive use of the trade mark in relation to advertisements for training services and the provision of online facilities, I am satisfied that the provisions of section 41(5) can be applied in relation to classes, seminars, conferences and workshops in relation to shares, options and the stock market in class 41 and daily communications by electronic mail providing computer links and the daily transmission of information via sms text messages; providing on-line access to publications in relation to shares, options and the stock market claimed in class 38.

4. The remaining issue is whether there is sufficient evidence to apply the provisions of section 41(5) in relation to the services claimed in class 36. As addressed above, the bulk of the evidence relates to the applicant’s workshops/conferences and online promotions, which are covered in classes 38 and 41 of the application. While it is evident that the applicant operates in this field, I am not satisfied that the applicant has demonstrated stockbroking services; share brokerage services or stock brokerage services as it appears to only provide information relating to stock broking and sharebroking, rather than buying and selling shares/stocks for a commission. I also find that the class 36 services of advisory services in relation to finance and financial matter (such as shares, options and the stock market) are not only broad in scope, but the required level of use or intended use is not reflected in the evidence.

5. Similarly, the remaining services claimed in class 36 are not sufficiently addressed in the evidence for the provisions of section 41(5) to be applied. I find that the level of evidence provided by the applicant is no broader than this, and an amendment to the services is therefore appropriate prior to the application of section 41(5) of the Act.

Decision

1. Section 33: Application accepted or rejected

2. 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.

3. The Registrar may accept the application subject to conditions or limitations.

4. 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.

5. From the extent of the evidence provided in support of this application, I am satisfied that the trade mark does or will distinguish the following services:

   
   Class 36

   Provision of information relating to stock broking and sharebroking; the provision of the above service through the global communications network

Class: 38 Daily communications by electronic mail providing computer links and the daily transmission of information via sms text messages; providing on-line access to publications in relation to shares, options and the stock market

Class: 41

Conducting of classes, seminars, conferences and workshops in relation to shares, options and the stock market

1. I will therefore allow the applicant one month in which to request the above amendments, after which trade mark application no. 1251084: “Australian Stock Report”may proceed to acceptance under the provisions of section 41(5) of the Act. However, if the Registrar does not receive a request for an amendment to the specification of services in that time, the above trade mark application will refused in its entirety.

2. If the Registrar has been served with a notice of appeal before that time, I direct that the application will not be amended or rejected until the appeal has been withdrawn, or in the event of a decision from the Federal Court, that the application be subject to that order.

Heath Wilson

Hearing Officer

Trade Marks Hearings

18 May 2010