BeerCo Limited - [2022] ATMO 165

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2109854 (Class 32) – BeerCo figurative – in the name of BeerCo Limited.

Delegate: Blake Knowles

Representation: Applicant: Andrew Sykes of counsel, instructed by Media Arts Lawyers.

Decision: 2022 ATMO 165
Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – s 41 considered – trade mark not capable of distinguishing – application rejected.
Background

This is a decision on examination of trade mark application number 2109854 (‘Application’) filed by Beerco Limited (‘Applicant’). The Application was filed on 6 August 2020 (‘Relevant Date’), for the following trade mark:
(‘Trade Mark’)
Registration is sought for Class 32: Beer (‘Goods’). Prior to the hearing, the Applicant also requested that the Application be subject to the following colour endorsement: ‘The trade mark registration is limited to the colours RED and GREEN as shown in the representation of the trade mark above’ (‘Colour Limitation’).
The Trade Mark was examined as required by the Trade Marks Act 1995 (Cth).[1] The examiner raised a ground for rejection under s 41 on the basis that the Trade Mark was to no extent inherently adapted to distinguish the Goods and therefore fell for consideration under s 41(3). The Applicant filed submissions and the examiner maintained the ground for rejection.
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).
The Applicant requested a hearing by videoconference. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 5 September 2022. Andrew Sykes of counsel appeared on behalf of the Applicant, instructed by Christopher Cao of Media Arts Lawyers.
Evidence
The Applicant relies on a declaration by Christopher Cao, Trade Marks Attorney for the Applicant, made on 23 August 2022, with Exhibit CC-1.
Mr Cao declares that the Trade Mark has been registered in numerous other jurisdictions, namely, New Zealand, Singapore, the Philippines, Indonesia, Japan, and Cambodia (‘Overseas Registrations’). Certificates for the Overseas Registration are annexed to the declaration.
Discussion
Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Goods of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Goods, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Goods, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 165
Decision Date: 23 May 2022

CaseChat Overview and Summary

This matter concerned an application by BeerCo Limited for a trade mark, which the delegate of the Registrar of Trade Marks, Blake Knowles, was required to determine. The applicant had requested a hearing under section 33(4) of the *Trade Marks Act 1995* (Cth) in relation to a ground for rejection under section 41 of the Act. The applicant sought to rely on overseas registrations as evidence of the trade mark's distinctiveness.

The primary legal issue before the delegate was whether the trade mark was capable of distinguishing the applicant's goods from those of other traders, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved assessing the trade mark's "inherent adaptation" to distinguish, and if insufficient, considering whether it had in fact distinguished the goods through use at the relevant date or intended use thereafter.

The delegate applied the principles established in *Clark Equipment Co v Registrar of Trade Marks*, which dictate that a trade mark's capacity to distinguish is assessed by considering the likelihood that other traders, acting honestly, would desire to use the same or a similar mark for their own goods. The delegate noted that the applicant had not provided any evidence of actual use or intended use of the trade mark. Consequently, the delegate was satisfied that the trade mark was not capable of distinguishing the applicant's goods, having regard to the matters set out under section 41(4) of the Act.

As a result of being satisfied that there was a ground for rejection and that the applicant had been given an opportunity to be heard, the delegate rejected the application pursuant to section 33(3)(b) of the *Trade Marks Act 1995* (Cth).

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The Applicant requested a hearing by videoconference. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 5 September 2022. Andrew Sykes of counsel appeared on behalf of the Applicant, instructed by Christopher Cao of Media Arts Lawyers. Evidence The Applicant relies on a declaration by Christopher Cao, Trade Marks Attorney for the Applicant, made on 23 August 2022, with Exhibit CC-1. Mr Cao declares that the Trade Mark has been registered in numerous other jurisdictions, namely, New Zealand, Singapore, the Philippines, Indonesia, Japan, and Cambodia (‘Overseas Registrations’). Certificates for the Overseas Registration are annexed to the declaration. Discussion Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Goods of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Goods, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Goods, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that it did not in fact distinguish the Goods based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the combined effect of the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Goods (s 41(4)). The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:His Lordship said: “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. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2] [2] (1964) 111 CLR 511, 514.

Decision

Reasons for decision

For these reasons, and noting that the Applicant has not filed any evidence of use or intended use, I am satisfied that the Trade Mark is not capable of distinguishing, having regard to the matters set out under s 41(4). Decision Under s 33(3)(b), if I am satisfied that there is a ground for rejection and the Applicant has been given an opportunity to be heard, then I must reject the Application. Therefore, I reject the Application. Blake KnowlesHearing OfficerDelegate of the Registrar of Trade Marks23 September 2022

Ratio Decidendi

Legal Principle Established

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Delegate:	Blake Knowles
Representation:	Applicant: Andrew Sykes of counsel, instructed by Media Arts Lawyers.
Decision:	2022 ATMO 165 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – s 41 considered – trade mark not capable of distinguishing – application rejected.