Bendigo Cemeteries Trust
[2014] ATMO 82
•10 September 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1532825(12, 16, 25, 35, 42, 45) - Remembrance Parks Central Victoria - in the name of Bendigo Cemeteries Trust.
Delegate: | Iain Campbell Thompson |
Representation: | Applicant: Ed Heerey of Counsel instructed by Robert Gregory of Maddocks, Lawyers |
Decision: | 2014 ATMO 82 s41, Trade Mark lacks inherent adaptation to distinguish, application rejected. |
Background
1. In this matter Bendigo Cemeteries Trust (‘the Applicant’) has made application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which is detailed below:
Application No: 1532825
Priority Date: 21 December 2012
Goods/Services: Class 12: Motor vehicles associated with cemetery management and funeral services
Class 16: Printed matter and materials, photographs, stationery, office materials, vehicle decals and livery, brochures and pamphlets
Class 25: Clothing, footwear, headgear and associated apparel
Class 35: Cemetery management and business administration, crematoria business administration, office administration, website branding
Class 42: Website development
Class 45: Funeral and crematoria services including its associated bereavement counselling; funeral services (including pre-paid funeral services), burial, cremation, grave digging, undertaking, embalming
(‘the Goods and Services’)
Trade Mark: Remembrance Parks Central Victoria
(‘the Trade Mark’)
The Trade Mark was examined as is mandated by section 31 of the Act and the Examiner reported grounds for rejection of the Trade Mark under section 41 of the Act. I note that as from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed section 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[1] Accordingly the repealed section remains relevant here and all references to section 41 hereafter in this decision are to the section as it stood prior to its amendment, as set out in paragraph 10 below That said, the Examiner’s objection was in the following terms:
Your trade mark is, or has as its main feature, REMEMBRANCE PARKS CENTRAL VICTORIA.
REMEMBRANCE PARKS is commonly used to describe PARKS that are built in REMEMBRANCE of a person or persons.
Your trade mark as a whole is descriptive because it indicates the geographical origin, character and intended purpose of the funeral related goods and services. A PARK in CENTRAL VICTORIA dedicated for the REMEMBRANCE of a person or persons.
Other traders should be able to use REMEMBRANCE PARKS CENTRAL VICTORIA in connection with goods or services similar to yours.
[1] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50
3. The Applicant’s legal representatives made two rounds of submissions seeking to have the ground for rejection favourably reconsidered; however, the Examiner maintained the ground. Subsequently, the Applicant requested to be heard.
4. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 3 September 2014. Mr Ed Heerey of Counsel, instructed by Mr Robert Gregory of Maddocks Lawyers, appeared for the Applicant.
Onus & Standard of Proof
5. In regard to where the onus lies in these proceedings I adapt the words of Murphy J in Phone Directories Co Australia Pty Ltd v Telstra Corporation Ltd [2014] FCA 373 (2014) 106 IPR 281 (‘Yellow’) at [15]:
There is a general presumption of registrability in favour of the applicant: Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse”) at [26] to [27] and the authorities cited therein.
The onus of proof in [proceedings] before a delegate of the Registrar and on appeal to the Court rests upon the opponent to registration: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 (“Food Channel”) at [32] per Keane CJ, Stone and Jagot JJ.
Accordingly, in the YELLOW Appeals as the opponents to registration, PDCA and Yellowbook must prove the grounds of opposition they rely upon. But where the enquiry proceeds to s41(6) of the Act (as I have found) or s41(5), then the onus shifts to Telstra as the applicant for the mark to persuade the Court of its entitlement to registration.
6. Absent an opponent in these ex parte proceedings, I must be satisfied that the ground as stated by the Examiner is well-taken. If well-taken, the onus then shifts to the Applicant under subsections 41(5) or (6) to persuade me of its entitlement to registration.
7. In Yellow, Murphy J also referred to the standard of proof at [36]:
It is unnecessary to descend into the differing views to explain my conclusion on this issue as that terrain is already well trodden. For the reasons stated in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR 787 (“Pfizer Products”) at [18] per Gyles J, Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 (“Chocolaterie Guylian”) at [26] per Sundberg J, Sports Warehouse at [39] per Kenny J, and Allergan, Inc v Di Giacomo [2011] FCA 1540 at [11] to [12] per Stone J, I respectfully prefer the view that the Act does not impose a requirement on an opponent to a trade mark to show that it is “clearly” not to be registered. The onus is to be discharged to the ordinary civil standard.[2]
[2] See Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521.
Evidence
8. The Applicant has filed a statutory declaration by Graham Fountain, Chief Executive Officer of the Applicant made on 13 June 2014 which, it is submitted by Mr Heerey, goes to the use or intended use of the Trade Mark.
Submissions
9. Mr Heerey’s submissions may be summarised under four main headings as follows:
The ground under subsection 41(5) is conceded in respect of those services in Classes 35 and 45.
The Trade Mark is prima facie registrable in respect of the goods and services claimed in Classes 12, 16, 25 and 42 and that, if necessary the claim in Class 12 could be amended to ‘motor vehicles’.[3]
The declaration filed by Mr Fountain made in support of the application should provide sufficient basis for the acceptance of the Trade Mark under subsection 41(5).
State Government legislative provisions dictate that there are not many traders in Victoria who run crematoria.
[3] As this amendment has the effect of broadening the specification of goods in Class 12, it is not an allowable amendment.
Section 41
For the sake of completeness, I confirm that, in my consideration, the Trade Mark is sufficiently inherently adapted to distinguish the goods and services it covers in Classes 12, 16, 25 and 42, and the “website branding” services it covers in Class 35, as to be prima facie registrable for those goods and services. However, I also consider it one which (to some greater extent or other) lacks inherent adaptation to distinguish the remaining services of the Applicant in Classes 35 and 45 for the following reasons. At the filing date of the application section 41 provided:
41Trade mark not distinguishing applicant’s goods or services
(1)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).
(2)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 (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.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)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).
(6)If the Registrar finds that 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, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
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: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).
In Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241 Branson J described the scheme and operation of section 41 of the Act as follows:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that 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; or
(c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).
The start-point for my considerations is thus, in terms of subsection 41(3), to take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
Inherent adaptation is to be assessed according to the familiar test in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215(the Michigan case) where Kitto J said at [5]:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. 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.
Accordingly, I am to assess the extent to which it is likely that a trader (other than the Applicant) in the funerals and/or crematoria business would think of the words Remembrance Parks Central Victoria (or words so similar that they would infringe a registered trade mark granted in respect of those words) and, without improper motive, want to use them in respect of its similar goods and services.
While the Applicant concedes that subsection 41(5) applies to the application, it is instructive to consider the way in which Mr Fountain describes the Applicant’s services:
Since its formation, the Applicant has enjoyed a long history as the responsible authority for various public remembrance and memorial parks located in Central Victoria.
Viewed in this manner, the Trade Mark simply and succinctly states what the Applicant does and where it does it. It is thus difficult to apprehend on what basis one might conclude that the Trade Mark is to any extent adapted to distinguish the services of the Applicant.
Thus, if the evidence filed by the Applicant as to the use or intended use of the Trade Mark were sufficient to address the provisions of subsection 41(5), I would have some difficulties in accepting the Trade Mark for registration in any event as my view is that the ground more properly lies under subsection 41(6).
However, in my consideration, the evidence submitted by the Applicant does not go to the use or intended use of the Trade Mark. The documentation submitted with Mr Fountain’s declaration includes the Applicant’s 2013 Annual Report which describes the selection by the Applicant of a new brand. The new brand selected by the Applicant is that below:
The materials submitted by the Applicant appended to Mr Fountain’s declaration include pamphlets, brochures, stationery etc which are all headed with the above trade mark. Where the expression ‘Remembrance Parks Central Victoria’ is used on its own in the Applicant’s evidence it refers to the Applicant as its business name, not as its trade mark.
Mr Heerey submitted in this regard that an applicant’s business name can be, or become, a trade mark. I am in agreement with this submission. However, where the business name is being used to refer to a trader, rather than to its goods and/or services, that name is not being used as a trade mark: it is not being used to distinguish goods or services in trade.[4] Rather, it is being used to refer to the trader itself. Further, where the business name has very low inherent adaptation to distinguish, and it is being used close to a distinctive trade mark such as that shown at paragraph 18, above, that name may be doomed to shuffle forever in the shadow of that distinctive trade mark as a kind of limping trade mark of the ilk referred to by Jacob J in Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279.
[4] See section 17 of the Act.
Accordingly, (setting to one side my reservations as to whether subsection 41(6) should apply) if the Applicant continues to use the Trade Mark as it has used it, the Trade Mark will never meet the test in subsection 41(5) that the Registrar be satisfied that ‘the trade mark does or will so distinguish the designated goods or services’.
Accordingly I reject the Application in respect of services in both Class 35 (except for ‘website branding’) and Class 45.
If the Applicant applies within two weeks to delete the Class 45 services from the Application and restrict those in Class 35 to ‘website branding’, the Application may then proceed to acceptance. If the Application is not then so amended, I reject it in its entirety.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
11 September 2014
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