Bellevue Consultancy Services Pty Ltd

[2016] ATMO 33

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1724338 (29) & 1724339 (29) - CRADLE MOUNTAIN BEEF and CRADLE MOUNTAIN LAMB- in the name of Bellevue Consultancy Services Pty Ltd.

Delegate:	Nicole Worth
Representation:	Applicant:
Decision:	2016 ATMO 33 Section 38 – whether application should not have been accepted – trade mark not inherently adapted to distinguish goods – whether reasonable to revoke acceptance – acceptance revoked – application returned to examination.

Background

1. This decision is pursuant to s 38 of the Trade Marks Act 1995 (‘the Act’). It arises from the Registrar of Trade Marks’ intention to revoke acceptance of trade mark applications 1724338 and 1724339 in the name of Bellevue Consultancy Services Pty Ltd (‘the Applicant’), relevant details of which are below.

Application No.: 1724338	Application No.: 1724339
Trade Mark: CRADLE MOUNTAIN BEEF	Trade Mark: CRADLE MOUNTAIN LAMB
Class 29: Fresh meat	Class 29: Fresh meat
Filing date: 28 September 2015	Filing date: 28 September 2015

1. In this decision I will refer to the above trade marks collectively as ‘the Trade Marks’ and the applications as ‘the Applications’.

2. The Applications were examined as required by s 31 of the Act and no grounds for rejection or formalities objections were raised. In a notation within the files of the trade mark application the examiner of the Applications noted:

   Cradle Mountain is the name of a well-known mountain in north-western Tasmania. However, as research indicates and as the manual states (22.15.8) the goods the applicant has claimed ‘fresh meat’ are not associated with the geographical features of Cradle Mountain. There are areas around Cradle Mountain that have cattle grazing however, as Cradle Mountain is a National Park and a heritage listing no grazing is allowed. Mark is capable of distinguishing.

3. The Trade Marks were accepted for possible registration on 15 January 2016.

4. On 21 March 2016, after an internal review of the Applications, a delegate of the Registrar issued Notification(s) of Proposal to Revoke Acceptance (‘the Notifications’) which stated the following:

   During the examination process, the examiner did not adequately consider all of the available research on Cradle Mountain and the industries around the area.

   Information from among other sites, indicate that there is and has been a livestock industry (in this case, a [beef/lamb] industry), in and around the area known as Cradle Mountain since the 1800s, and although Cradle Mountain itself is a National park, the Cradle Mountain region is the wider area around the mountain, and therefore there is a high likelihood that other traders running [beef/lamb] in the vicinity of the Cradle Mountain region would wish to refer to their products in class 29 as Cradle Mountain [Beef or Lamb].

   Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke acceptance, (section 38 of the Trade Marks Act 1995).

5. The Applicant requested to be heard regarding the proposed revocations of acceptance. Prior to the hearing the Applicant filed written submissions in support of the Applications. The hearing took place in Canberra on 17 May 2016 before me, a delegate of the Registrar. Ms Natalie Talbot, a director of the Applicant, spoke at the hearing on the Applicant’s behalf. References to ‘the Applicant’ include references to Ms Talbot and the submissions she made.

Section 38

1. Section 38 of the Act provides:

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)    the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)    it is reasonable to revoke the acceptance, taking account of all the circumstances.

   (2)If the Registrar revokes the acceptance:

   (a)    the application is taken to have never been accepted; and

   (b) the Registrar must examine, and report on, the application necessary under section 31; and

   (c) sections 33 and 34 again apply in relation to the application.

2. Accordingly, two factors must be satisfied before acceptance may be revoked. Firstly the Registrar must be satisfied that the application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the application was accepted. The second is that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist. If acceptance is revoked, the application is taken never to have been accepted and is returned to examination so that the Applicant may address the circumstances that should have prevented acceptance.

3. The revocation provisions empower the Registrar to revoke the acceptance of an application that ought not to have been accepted. It is not necessary for the Registrar to identify a specific error that led to the acceptance or a special circumstance that warrants revocation.[1] The circumstances to which the Registrar may have regard are not limited in any way, the intention being ‘to put beyond doubt that the Registrar may take account of all circumstances when deciding whether to revoke the acceptance of a trade mark, and not just a limited sub-class of circumstances.’[2] As stated by the Deputy Registrar in Fpinnovation Pty Ltd[3]:

   If a ground of rejection or refusal did exist then it may be possible to say there was an error but this is both unnecessary and unhelpful because if a ground existed then the trade mark in question should not have been accepted or registered. That change shifted the focus of the decision maker away from identifying and error or omission and towards the grounds of rejection or refusal.

At the same time revocation must be reasonable and the reasons for it amount to than a mere difference of opinion as to the registrability of a trade mark.[4]

[1] As was the case prior to amendments made to the Act in 2006. Those requirements were removed due to the revocation provisions being interpreted more narrowly than intended, as explained in Explanatory Memorandum, Intellectual Property Laws Amendment Bill 2006 (Cth) 25 [14].

[2] Explanatory Memorandum, Intellectual Property Laws Amendment Bill 2006, 25 [14].

[3] [2012] ATMO 74, [29].

[4] See for example Aceto Balsamico del Duca di Adriano Grosoli SrL v Registrar of Trade Marks [2008] ATMO 2; (2008) 75 IPR 400; Re Bobart [2010] ATMO 43; (2010) 88 IPR 357.

Section 38(1)(a)

1. The Notifications do not explicitly state a ground for rejection, although I infer from the explanation given that it was a ground under s 41 of the Act that was considered to apply. Section 41 relevantly provides:

   (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.

   …

   (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.

2. Section 41 must be assessed having regard to s 33 of the Act, which embodies a so-called ‘presumption of registrability’.[5] Accordingly the Registrar must accept the application, including in circumstances where the Registrar is equally unsure as to whether or not the Trade Mark is capable of distinguishing, unless satisfied the ground for rejection exists.

   [5] Amendments were made to the Act to clarify that the presumption applies to section 41: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), s 113.

3. In Clark Equipment Co v Registrar of Trade Marks (‘Clark’)[6] Kitto J stated that whether a trade mark is adapted to distinguish is to be tested:

   [B]y 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.

   [6] [1964] HCA 55; (1964) 111 CLR 511, 514.

4. This test was applied in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd,[7] the majority of the High Court finding that the inherent adaptation of a word depended upon its ‘ordinary signification’ to those that would purchase, consumer and trade in the goods.

   [7] [2014] HCA 48.

5. Cradle Mountain is a mountain in north-western Tasmania, situated in the Cradle Mountain – Lake St Clair National Park. It is one of the principle tourist destinations in Tasmania. Areas surrounding the national park are used for agriculture, including livestock.

6. The ordinary signification or meaning of the words CRADLE MOUNTAIN BEEF and CRADLE MOUNTAIN LAMB is beef and lamb products from Cradle Mountain. This is not to say that the ordinary meaning is restricted to the precise area delineated as the topographical feature ‘Cradle Mountain’. Rather it extends to the area surrounding Cradle Mountain of which Cradle Mountain might be said to be a landmark or feature.

7. Given this ordinary meaning, it is likely that other traders will wish to use the words CRADLE MOUNTAIN BEEF or CRADLE MOUNTAIN LAMB to signify a connection between their beef or lamb products and that area. This is the ‘common right of the public’ spoken of in Clark, and CRADLE MOUNTAIN is the name ‘forming part of the common heritage’. This common right to use the name is not limited to those currently producing goods in or from the area, but also to those who may do so in the future, as recognised in Oxford University Press v the Registrar of Trade Marks:

   The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[8]

   [8] [1990] FCA 175, [41].

8. It seems that the reason the examiner did not raise the ground for rejection was because she focused her consideration upon the mountain and national park itself, wherein grazing by law does not take place, and not upon the surrounding region.

9. To that end, I am satisfied that a ground of rejection under s 41 of the Act exists.

10. The Applicant submitted that a number of circumstances ought to be taken into consideration in the determination of this application. In summary these are that the Applicant has the brand credentials to warrant use of the name CRADLE MOUNTAIN; that the Applicant has the desire to protect the provenance of the name CRADLE MOUNTAIN from those who illegitimately use the name; and that there are other examples of traders who identify their brands by virtue of a geographical name. I will discuss each of these in turn.

11. With regard to the Applicant’s brand credentials, the Applicant states that the family of Ms Talbot has been grazing cattle in the Cradle Mountain Highlands for over 7 generations and continues to produce beef and lamb from properties in the area for both the domestic and export markets. The family also operates the only abattoir in the area. Whilst I do not doubt the authenticity and provenance of the Applicant’s products, these factors of themselves do not inform the consideration of whether the words CRADLE MOUNTAIN BEEF and CRADLE MOUNTAIN LAMB will distinguish the Applicant’s goods from others who trade in beef and lamb products in or from the area. Were it the case that the Applicant was able to show extensive and long standing use of the geographical name as a trade mark, it might be possible to conclude that the name had come to identify the Applicant rather than the name of the place and therefore allow registration. As it is, however, the Applicant appears to have only recently developed the brand and not to have used it to the extent necessary to satisfy the provisions of s 41.

12. The Applicant also made submissions to the effect that the rationale of the revocation was based upon the Applicant’s own industry, people and heritage. There is no evidence to show that the internet references are in fact referring to the Applicant and/or the family that runs it. It may be that the Applicant has the most complete supply chain in that place, but this does not detract from the possibility that traders who graze livestock in the area may wish to use the name Cradle Mountain to indicate where their livestock is from (even if the livestock is processed elsewhere). The Applicant mentioned also the activities of the Tasmanian Mountain Cattlemen’s Association, the website of which was referred to in the Notifications (being the reference to However the intent of the reference was to show that this website, among others, indicated that has been a livestock industry in the area, not necessarily that the activities of the association were the basis for the revocation.

13. In relation to the Applicant’s desire to protect the provenance of the name Cradle Mountain, the Applicant alleges that traders sourcing meat from elsewhere are attempting to use the name Cradle Mountain and the Applicant therefore wishes to prevent them from doing so, thereby preserving the name’s integrity. This is a matter more relevant to opposing an application for a trade mark: if other traders are falsely claiming their products are from Cradle Mountain they may be in breach of s 43 of the Act and of the Australian Consumer Law (relating to misleading or deceptive conduct and false or misleading representations),[9] and their trade marks may be opposed on those grounds. Here however the Applicant is itself attempting gain a monopoly over the name, and the difficulty with its argument is that although granting the Applicant a monopoly may enable it to protect the provenance of the name Cradle Mountain, it would also bar those with a legitimate claim from using the name.

    [9] See ss 18 and 29 of Schedule 2 of the Competition and Consumer Act 2010.

14. Lastly, the Applicant raised a number of examples of brands which are identified by virtue of a geographical name, replicated below.

1. These are not necessarily the subject of registered trade marks, but rather are brands in the market place of which the Applicant is aware. It is important to note that none of those shown consist simply of the name of a place, but include also images, fonts and designs which instill them with significantly greater distinctiveness than would be the case had they consisted of the geographical names alone. They are therefore not comparable to a trade mark consisting only of the name of a place together with the name of the relevant good.

2. At the same time, I observe that some of the names contained within the above marks are registered as plain text trade marks. CAPE GRIM (registration number 1460598) was registered under the provisions of s 41, indicated by the endorsement ‘Provisions of subsection 41(5) applied’ appearing with that registration’s details. This means that the owner was able to show evidence of use of the trade mark sufficient to satisfy the examiner that CAPE GRIM had been used to such an extent that the name had come to identify the owner (in the context of beef products) rather than simply the name of the place. Neither HOPKINS RIVER (registration 758073) nor CAPE BYRON (registrations 1412213 and 921854, neither of which are in respect of meat products)[10] were registered under the provisions of s 41 It is possible that at the time of registration, the examiner considered it unlikely other traders would wish to use those names – whether it be to do with the nature of the goods relevant to those registrations or due to the small populations relevant to those areas. In any event, even in the case that those names were as non-distinctive as Cradle Mountain, the application here is to be assessed on its own merits and I am not bound to perpetuate any errors that may have taken place in the examination of those other applications.[11]

   [10] They are in respect of various marine apparatus and various ice cream products respectively.

   [11] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 at [35].

3. I mention also that the plain text trade mark CRADLE MOUNTAIN was registered in 1998 in respect of various dairy products (registration 753479). As with those cases mentioned above, it is possible that the examiner of the application considered it unlikely that others would wish to use the name. Nonetheless, it is incumbent upon me to assess the merits of this application according to its own facts and not to persist with a potential error for the sake of consistency. I note also that similar recent applications which combine the name Cradle Mountain with the name of the relevant goods (CRADLE MOUNTAIN DISTILLERY and CRADLE MOUNTAIN SINGLE MALT WHISKY) are likewise subject to revocations based upon s 41.

4. Bearing all of these factors in mind and taking account of all the circumstances that existed when the applications were accepted, I am satisfied that the applications should not have been accepted. The first limb of s 38 is accordingly established.

Section 38(1)(b)

1. The second limb of s 38 requires a consideration of whether revocation is reasonable, taking into account all of the circumstances existing at the time of the decision whether to revoke.

2. The advertisement of the acceptance of these applications was only relatively recent, being 18 February 2016 for both. I see that both applications have subsequently been opposed (on 15 April 2016), but that as yet no evidence in relation to the opposition matter has been filed.

3. The status of opposition proceedings already commenced is a relevant circumstance to consider.[12] However the opposition is in its very early stages, no evidence as yet having been filed.

   [12] See for example Jack Grieve [2010] ATMO 12 and Cooley Investments Pty Ltd [2011] ATMO 7.

4. I note the remarks of the delegate in Henkel AG & Co KGaA.[13] in similar circumstances:

   Further, while section 41 was nominated by the opponent as a ground of opposition, it was not the only ground raised, and it is possible that it might not have been fully addressed during the opposition process.

   Taking into account the circumstances I have described, it is appropriate that acceptance for protection is revoked. Arguably, it is in the best interests of the [applicant], as well as its potential opponent, that the [applications] be returned to, and tested by, the appropriate examination processes which have hitherto been omitted. They may then proceed, should this ultimately prove necessary, to the escalation of argument and expense associated with the adversarial forum of opposition. While the [applicant] understandably may not view it as an ideal option, revocation of acceptance need not be fatal to the [applications]. The provisions of [s 41] will be available to the [applicant], over the new fifteen month period allowed for it to put the [applications] into order.

   Finally, it is an important public interest, and therefore also a relevant circumstance in this matter that, wherever possible, the proper examination processes of the Office are consistently maintained. Revocation of acceptance of the [applications], allowing the valid ground for rejection to be raised, will serve that interest.

   [13] [2015] ATMO 13.

1. That being the case, I consider it is reasonable to revoke acceptance of the applications and return them to examination.

Decision

1. I am satisfied, in terms of s 38 of the Act, that the applications should not have been accepted and that it is reasonable to revoke their acceptance. Accordingly I revoke acceptance of trade mark applications 1724338, CRADLE MOUNTAIN BEEF, and 1724339, CRADLE MOUNTAIN LAMB, and the applications will be returned to examination.

Nicole Worth
Hearings Officer
Trade Marks Hearings
2 June 2016