Australian Trade Mark Application Nos. 1849841 LAW PARTNERS (Word) and 1849879 LAW PARTNERS (Stylised) in Class 45 in the name of Law Partners Compensation Lawyers Pty Ltd as trustee for the Law Partners Unit Trust

[2021] ATMO 22

TRADE MARKS ACT 1995

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

Re:Australian Trade Mark Application Nos. 1849841 LAW PARTNERS (Word) and 1849879 LAW PARTNERS (Stylised) in Class 45 in the name of Law Partners Compensation Lawyers Pty Ltd as trustee for the Law Partners Unit Trust

Delegate:

Debrett Lyons

Representation:

Applicant: Vivian Tran, Solicitor, of Spruson & Ferguson

Decision:

2021 ATMO 22

Trade Marks Act 1995 (Cth) – Request to be heard under s 33(4) in relation to a ground for rejection under s 41 of the Act – trade marks not to any extent inherently adapted to distinguish the designated services – evidence of use sufficient to engage s 41(3) – applications accepted.

Background

1. In this matter Law Partners Compensation Lawyers Pty Ltd as trustee for the Law Partners Unit Trust (‘the Applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) for the registration of two trade marks, the word mark LAW PARTNERS and the logo-style version thereof which appears below:

1. The applications, 1849841 (‘the Word Mark’) and 1849879 (‘the Logo Mark’) (together, ‘the Trade Marks’), were both made on 6 June 2017 (‘the filing date’) in respect of the following services in Class 45:

   Advisory services relating to the law; legal advice; legal advocacy services; legal enquiry services; legal information research services; legal information services; legal services; legal support services; personal legal services; provision of legal research; provision of legal services; solicitors' services (‘the Services’)

1. The Trade Marks were examined as mandated by s 31 of the Act and First Examination Reports raised grounds for objection under s 41(3) and s 44 of the Act. Correspondence with the Applicant’s representatives resolved the s 44 issue leaving only the s 41 complaint that the Trade Marks essentially comprised of the words, LAW and PARTNERS, which are descriptive of the Services.

2. In response thereto, the Applicant’s submissions were supported by evidence submitted under the declaration of Adrian Pin made 9 January 2020 with Annexures A to L (‘the First Pin Declaration’) which attests to continuous use of the Word Mark since 2004 and the Logo Mark since 2011. Several rounds of examination reports and replies did not overcome the objection under s 41(3) in spite of additional evidence in the form of a further declaration of Adrian Pin made 16 March 2020 (‘the Second Pin Declaration’) with confidential promotional expenditure and revenue for the period, 1 July 2008 to 30 June 2018 and six declarations made by third-party traders of services similar to the Services (‘the Third-Party Declarations’).

3. Ultimately, the Applicant requested to be heard and, as a delegate of the Registrar of Trade Marks, I heard this matter on 1 March, 2021 by video-conference where Vivian Tran, Solicitor, of Spruson & Ferguson, represented the Applicant and made oral submissions after having earlier submitted an outline argument in accordance with directions given by this office.  In attendance was Daniel Wilson, Principal of that same firm.

Legislative framework

1. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. Section 17 of the Act defines a trade mark as:

   What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

2. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[1] As stated, the single ground for rejection identified is under s 41 of the Act.

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

3. Section 41 of the Act provides:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

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

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

(iii)any other circumstances.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

Discussion

1. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Federal Court summarised the governing principles as follows:

   (1)   

   In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

   
   
   

   (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

   
   
   

   (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

   
   
   

   (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

   
   
   

   (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

   
   
   

   (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to 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”: Cantarella at [59].

   
   
   

   (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

   
   
   

   (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (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”: Cantarella at [59].

   
   
   

   (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

   
   
   

   (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

   
   
   

   (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

   
   
   

   (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71]. [2]

   [2] [2017] FCAFC 56 at [236].

10. It is useful, too, to remind ourselves of the note to s 41 which states that:

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 …the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services

11. In my consideration, the Trade Marks can be treated identically for the purposes of the assessment of their inherent adaptation to distinguish the Services.  The Logo Mark differs from the Word Mark only in features of colour, font, graphical elements and added matter of no distinctive value whatsoever[3].  In what follows my comments are applicable to both Trade Marks.

[3] Arguably the Logo Mark also omits spacing between the principal words but, again, this does not alter my analysis.

12. Insofar as the words ‘law’ and ‘partners’, when combined, might ordinarily be used to indicate the kind, quality or purpose of the Services it is the Applicant’s submission that though a trade mark may be comprised of elements considered as descriptive, registration is not precluded provided the combination of those elements does not amount to a normal description of the goods or services (Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at [34]), or provided the combination is peculiar, poetic or the use obsolete (J & P Coats Ltd’s Appn (1936) 53 RPC 355 at 380) or if the mark prompts a mental search for its meaning (Dixon CJ in Mark Foy’s Ltd v Davies Coop & Co Ltd [1956] HCA 41).

13. I am in agreement with the Applicant that, as a broad generalization, the courts have assessed inherent adaptation to distinguish taking account of factors such as whether the mark is somehow awkward because of word ordering,[4] or is syntactically unusual and outside typical word usage[5], or the mark broadly describes the goods, services or their subject matter, but not with any real specificity[6].  Here, I see nothing poetic, obsolete or difficult to decipher in the Trade Marks.   The Third-Party Declarations express the views of legal practitioners that ordinarily the partners of a law firm refer to themselves as simply ‘the partners’ and I recognise that there is something unusual or even syntactically incorrect in applying the expression ‘law partners’ to describe the members of a legal partnership.  However, that is not the critical question since it is not to say that ‘law partners’ does not relate directly to ‘legal advocacy services’ (to take an example from the Services) in the same manner as does, ‘accountant partners provide accountancy services’; both might benefit grammatically by changing the initial noun to its adjectival form, but I see nothing in the assembly of the words ‘law partners’ which has what is described as, ‘a trade mark quality’ to it.  I find the ordinary signification of the Trade Marks to be directly descriptive of the Services.

[4] Roebuck v News Ltd [2014] ATMO 19 regarding the trade mark CARSGUIDE. At paragraph 35 the word-ordering, which here was the fact the words were joined together as one word, gave the mark the ‘requisite spark of trade mark identity’.

[5] Red Energy Pty Ltd v Registrar of Trade Marks [2018] FCA 1449 regarding the trade mark EVENPAY.

[6] Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664 at [95] regarding the trade mark TENNIS WAREHOUSE

14. That said and as explained by the High Court[7], the determination of ordinary meaning should be followed by an enquiry to determine if there is a real and tangible likelihood that other traders may legitimately desire to use the Trade Marks in connection with their own goods or services. It could be argued that, here, those ‘other traders’ are limited to the legal fraternity and that none would ordinarily choose to use a solecism, but this was not argued by the Applicant and I find it to be an unnecessary consideration when, to ordinary folk, the Trade Marks are plainly descriptive of the Services. I find that the Trade Marks are not to any extent inherently adapted to distinguish the Services in terms of s 41(3)(a) of the Act.

[7] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 at [71].

15. It now falls to determine whether the two Pin declarations assist the Applicant under s 41(3)(b) in the sense that they show use of the Trade Marks before the filing date to such an extent that the Trade Marks do in fact distinguish the Services as being those of the Applicant.

16. As stated, the First Pin Declaration attests to use of the Word Mark since 2004 and the Logo Mark since 2011.  It follows from what I have said in [11] and subject to the proviso that use of the Word Mark has been use in a trade mark sense that I am prepared to look at use from 2004 as potentially assisting both of the Trade Marks.

17. The First Pin Declaration describes the many ways in which the Trade Marks have been used and promoted.  These include advertisements published in newspapers and publications targeted at those who work in law enforcement, emergency and medical services; on billboards; on vehicle livery; by way of radio/television advertising; through sponsorship of the Parramatta Eels Rugby League Club during the 2012 season; via Google Ads and a website, operational since at least 2008.   The declaration provides (confidentially) the amount of the Applicant’s total promotional expenditure for the period between 2004 to the date of the  declaration, 9 January 2020.  Likewise, confidential details of the Applicant’s total turnover for the period from 2005 to 9 January 2020 were provided.  

18. Let me say having respect for the confidentiality claim that the total turnover is more than significant and the total promotional expenditure is simply staggering.  Given that fact that the First Pin Declaration was made more than two years after the filing date, it was not surprising that the trade mark examiner requested an annual breakdown of the advertising spend and revenue to assess the prefiling use of the Trade Marks.  This was provided, again confidentially, by the Second Pin Declaration and I can once more state in qualitative terms that the (somewhat) reduced figures continue to be enormous, the advertising expenditure especially. 

19. The revised figures breakdown use for the years 2008 -17 and in spite of the trade mark examiner’s recognition that the figures were ‘significant’, the view was taken that s 41(3) was not overcome. My task is not to reassess the examiner’s position but rather to look at the matter afresh. In doing so, I am convinced by the evidence that the Trade Marks do in fact distinguish the Services as being those of the Applicant. Simply because a trade mark entirely lacks inherent adaptation to distinguish does not mean that it is not capable of acquiring distinctiveness through use—that scenario is explicitly contemplated by s 41(3). The issue has been well-discussed elsewhere but it is worth repeating Middleton J’s observation in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive[8]. 

[8] (2010) 191 FCR 297, [60].

20. That is not to say that any use, no matter how much there is of it, will transform a descriptive expression into a trade mark and in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks, Yates J repeated that whether the applicant used the word mark to distinguish its services, and the extent to which it achieved distinctiveness, involves an evaluative judgment[9]. In the present case, the Trade Marks are not examples of s 41(3) signs that are so descriptive that they can never be registered (eg., ‘Soap’ for soap). The manner of use as set out in the First Pin Declaration has been as a trade mark, not for its ordinary meaning and there is good evidence that the target market has been educated such that a potential client would see the word Law Partners, and think it refers to the Applicant’s firm and not any other set of partners practising law.

[9] [2015] FCA 756 at [34].

21. I find that the Trade Marks do in fact distinguish the Services as being those of the Applicant.

Decision

22. Section 33 of the Act relevantly provides:

33Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

(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.

23. I have found that no ground exists under the Act for rejecting the Trade Marks. Accordingly, I accept both applications on the basis of evidence provided under s 41(3)(b).

Debrett Lyons

Hearing Officer

Trade Marks Hearings

19 March 2021.