Brillient Investment Publishing Pty Limited

[2019] ATMO 127

TRADE MARKS ACT 1995

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

ReTrade mark application number 1896585 (36) – CERTIFIED PORTFOLIO PHILOSOPHY - in the name of Brillient Investment Publishing Pty Limited

Delegate:                 Robert Wilson

Representation:       Applicant: Phillips Ormonde Fitzpatrick

Decision:                   2019 ATMO 127

Trade Marks Act 1995 (Cth) – ex parte– whether ground for rejection of application for certification trade mark under s 177 – meaning of ‘capable of distinguishing’ under s 177 – certification trade mark not capable of distinguishing – application rejected

Background

1. On 21 December 2017 Brillient Investment Publishing Pty Limited (‘the Applicant’) filed an application to register the certification trade mark detailed below:

Application Number:

1896585

Services:

Class 36: Financial services including financial management services relating to business, profession and retirement; financial analysis; financial portfolio management; investment portfolio management services; monitoring of financial portfolios; portfolio investment management; portfolio management; portfolio analysis, financial valuations, fiscal valuations; financial management; financial assessments; fiscal assessments; investment services; administration of investments; administrative services relating to investments; management of investment; financial services relating to financial investment philosophy; management of geopolitical financial risks; risk profiling; quantitative and qualitative financial analysis, portfolio diversification, dynamic asset allocation, tactical asset allocation, strategic asset allocation, currency management, securities selection and blending, valuation services in this class; pension, retirement and superannuation plans and funds; advisory, support, information and consultancy services relating to the foregoing

(‘the Certification Services’)

Trade Mark:

CERTIFIED PORTFOLIO PHILOSOPHY

(‘the Certification Trade Mark’)

2. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’) and on 16 May 2018 the examiner issued an adverse report. The report indicated that, amongst other things, there was a ground for rejecting the application under s 177 of Act. Under that section, the application must be rejected if the Certification Trade Mark ‘is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified’. The basis for the examiner’s view was stated in the report thusly:

For financial services, PORTFOLIO PHILOSOPHY is a term used to refer to the theories, ideas, actions and considerations a company takes when creating a portfolio of financial investments and assets for clients. …

Other traders should be able to use CERTIFIED PORTFOLIO PHILOSOPHY in relation to their similar services.

3. In deciding whether or not the Certification Trade Mark is capable of distinguishing the Registrar is required to take into account the extent to which the Certification Trade Mark is inherently adapted to distinguish or the extent to which it has become adapted to distinguish as a result of use or other circumstances.[1] Accordingly, the examiner indicated that the Applicant might be able to overcome the ground for rejection if it supplied ‘substantial evidence of use and/or other circumstances’. In addition to the s 177 issue the examiner requested that the Applicant provide a copy of the certification rules and queried some items in the specification of the services in the original application.

[1] Trade Marks Act 1995 (Cth) s 177(2).

1. The Applicant responded to the adverse report on 26 June 2018. The Applicant’s response was prepared and filed by the Applicant’s representatives Phillips Ormonde Fitzpatrick. In its response, the Applicant provided a copy of its certification rules and requested an amendment to its services. The examiner was satisfied and the Certification Services is the specification so amended. The Applicant did not address the s 177 issue in its response and on 9 August 2018, the examiner issued a second adverse report in which he maintained the ground for rejection of the application.

2. The Applicant responded to the second report on 1 November 2018. The submissions made in response expressed the Applicant’s view that the Certification Trade Mark is inherently adapted to distinguish. The examiner was not so persuaded and issued a third adverse report on 27 November 2018. On 15 January 2019 the Applicant requested a hearing by way of written submissions.

3. I have been allocated as a delegate of the Registrar of Trade Marks to consider the matter and either accept the application or if satisfied that there are grounds for rejecting the application, reject it, as required by the Act. On 9 August 2019 the Applicant was asked whether it wished to file further submissions or evidence to support its application. The Applicant declined the offer. I will therefore take into account the Applicant’s submissions contained in its response of 1 November 2018. These are the Applicant’s only submissions on the question of the distinctiveness of the Certification Trade Mark. The Applicant has not filed evidence to support its application. I will also take into account other material on file, in particular I will consider the research conducted by the examiner.

Summary of the relevant law in respect of certification trade marks

7. Part 16 of the Act deals with certification trade marks. Certification trade marks serve a different purpose to standard trade marks. A certification trade mark is a sign used, or intended to be used, to distinguish goods or services which are dealt with in the course of trade and certified by a person, or by another person approved by that person, in relation to quality, accuracy or some other characteristic.[2] Most of the provisions of the Act which relate to trade marks apply to certification trade marks and so apply as if a refence to a trade mark included a reference to a certification trade mark.[3] Notably, s 41 of the Act, which concerns the ground for rejecting an application for a standard trade mark on the basis of lack of distinctiveness, does not apply to certification trade marks, and, instead, Part 16 carries a similar provision which is set out and discussed below.

[2] Trade Marks Act 1995 (Cth) s 169.

[3] Trade Marks Act 1995 (Cth) s 170.

8. A certification trade mark may only be used in accordance with the rules governing the use of the certification trade mark.[4] It is a requirement that a person who has filed an application for the registration of a certification trade mark file a copy of the rules governing the use of the certification trade mark.[5] The Registrar must send a copy of the rules to the Australian Competition and Consumer Commission (‘the Commission’).[6] The Commission must consider the application and rules and if satisfied as to certain matters issue a certificate to that effect and send a copy of the certificate to the Registrar.[7] The Registrar must accept the application if:

• the application is made in accordance with the Act;

• there are no grounds for rejecting the application; and

• the Commission has issued the aforementioned certificate.

Otherwise the Registrar must reject the application but not before giving the applicant an opportunity to be heard.[8]

[4] Trade Marks Act 1995 (Cth) ss 171, 172.

[5] Trade Marks Act 1995 (Cth) s 173.

[6] Trade Marks Act 1995 (Cth) s 174.

[7] Trade Marks Act 1995 (Cth) s 175.

[8] Trade Marks Act 1995 (Cth) s 176 (the opportunity to be heard does not apply if the basis of rejection is that the Commission has not issued a certificate).

9. Section 177 of the Act is reproduced below:

Section 177 – Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services.

(1)   In addition to any other ground on which:

(a)   an application for the registration of a certification trade mark may be rejected; or

(b)   the registration of a certification trade mark may be opposed;

the application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified.

Note 1: For applicant see section 6.

Note 2: For approved certifier see paragraph 173(2)(c).

Note 3: Division 2 of Part 4 sets out the main grounds for rejecting an application, but s 41 does not apply to certification trade marks (see section 170)

(2)   In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account:

(a)   the extent to which the certification trade mark is inherently adapted to distinguish those goods and services; or

(b)   the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods and services.

1. As indicated above, s 177 of the Act provides that an application for a certification trade mark must be rejected if the trade mark is not capable of distinguishing goods or services certified by an applicant or an approved certifier from goods or services not so certified.[9] This characteristic may be inherent in the certification trade mark—as contemplated by s 177(2)(a)—or the certification trade mark must have acquired that characteristic ‘because of its use or other circumstances’—as contemplated by s 177(2)(b). It is notable that s 177(2) does not provide for intended use to be taken into account in assessing a certification trade mark’s ability to distinguish (unlike, say, s 41(4)). Further, s 177(2)(b) does not refer to a particular point in time at which a sign must have acquired such ability to distinguish. That particular point in time is relevant to many aspects of standard trade marks, for example, s 41(3) of the Act and in the absence of contrary case law it seems to me that point in time ought to be the filing date of the application. It is necessary, therefore, that a certification trade mark which lacks inherent adaptation to distinguish must be have become adapted to distinguish as at the date the application to register it was filed.

   [9] Trade Marks Act 1995 (Cth) s 177(1).

2. Section 41 of the Act deals with the distinctiveness of standard trade marks but, as stated, the Act specifically precludes s 41 from applying to certification trade marks.[10] As there is a dearth of case law concerning the application of s 177 it is tempting to turn to the case law which surrounds s 41; however, to do so demands caution as the function of the two types of trade mark is quite different. A comparison of the two sections is, nevertheless, instructive.

   [10] Trade Marks Act 1995 (Cth) s 170.

3. Section 177 of the Act provides both a ground for rejecting an application to register a certification trade mark, and a ground for opposing the registration of a certification trade mark. We are concerned here with s 177 as it applies to the rejection of applications. In respect of the rejection of applications, the wording of s 177(1) has similarities to the wording of s 41(1). In essence, s 41(1) states:

   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 from the goods or services of other persons. (emphasis added)

In essence, s 177(1) states:

An application for the registration of a certification trade mark must be rejected if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified. (emphasis added)

1. The function of a standard trade mark is to distinguish the trade origin of goods and services. The function of a certification trade mark is to indicate to consumers that the goods or services of interest have been certified by a particular person in relation to quality, accuracy or some other characteristic.

2. The 1929 United Kingdom case of Wilson’s and Mathieson’s Ltd’s Application[11] concerned, inter alia, the registration of a ‘standardization mark’ under s 62 of the Trade Marks Act 1905 (UK). Standardization trade marks are an early form of certification trade marks. In that case, Tomlin J stated:

   It is not for me to express any view as to the wisdom or unwisdom of the registration of that class of mark as a trade mark under the Act, but it seems to be obvious that it would be desirable that a mark of that kind should, on the face of it, express what it is, namely a mark in the nature of a testing or certifying mark under Section 62, and that it should not blossom out into a design such as is commonly found in ordinary trade marks, and such as may, in certain circumstances, lead to confusion. So far as this mark is concerned, it is a mark which, beyond the initials B.W.A., of course contains no clue at all as to whether it is a testing or certifying mark.

   [11] (1929) 46 RPC 80, 89.

3. Another UK case, Union-Nationale Inter-Sydicale des Marques Collectives’ Appn[12] considered whether it was necessary that a standardization trade mark should identify the particular characteristics certified; Sterndale MR and Warrington LJ rejected the notion.[13] It is apparent, then, that at least one characteristic that a sign must have to be capable of distinguishing as a certification trade mark is that it is apparent that the sign is being used as a certification trade mark and not, for example, as a standard trade mark (‘the first characteristic’). As discussed above, this characteristic may be inherent in the sign or it must have been acquired by the application date. The case law surrounding s 41 provides some limited assistance in the assessment of this characteristic. What assistance it provides is discussed later in this decision.

   [12] (1922) 39 RPC 346.

   [13] Ibid 356–7, 362.

4. It seems to me, that there is a second characteristic that a sign must have to avoid rejection under s 177. Section 177 refers to ‘goods or services certified by the applicant or an approved certifier’ and ‘goods or services not so certified’. It seems obvious that ‘goods or services not so certified’ includes not only goods or services which are not certified at all, but goods or services which have been certified by a person or entity other than the applicant or an approved certifier: ‘an approved certifier’ being a person approved by the applicant as contemplated by s 169 of the Act. The ability to distinguish goods or services certified by the applicant from goods or services certified by another person is, therefore, also a necessary characteristic (‘the second characteristic’). This is an ability to distinguish which is much closer to that dealt with by s 41. The case law surrounding s 41 might, therefore, provide useful guidance in assessing this characteristic of a sign. The application of that case law is discussed below.

5. If an enquiry shows that a sign lacks either the first characteristic or the second characteristic this will mean that it fails the test of ability to distinguish required under s 177 and the application to register it must be rejected.

Discussion

The first characteristic

1. The sign under consideration here is CERTIFIED PORTFOLIO PHILOSOPHY. If this was an assessment of distinctiveness under s 41 we would start by turning to the leading case of Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’).[14] That case requires that a two part process be undertaken in assessing distinctiveness.  The first part is an enquiry into the ordinary signification of the sign in connection with the relevant goods and services: in this case those are the Certification Services. The second step is an enquiry as to whether it is likely that other traders might need legitimately need to use the sign in connection with those goods or services. The first enquiry ­is an appropriate starting point in assessing the first characteristic.

   [14] [2014] HCA 48.

2. An enquiry into the ordinary signification of CERTIFIED PORTFOLIO PHILOSOPHY in connection with the Certification Services reveals that a ‘portfolio philosophy’ is, as indicated by the examiner, ‘a term used to refer to the theories, ideas, actions and considerations a company takes when creating a portfolio of financial investments and assets for clients’. The Applicant does not dispute this finding. The addition of ‘certified’, as submitted by the Applicant, ‘is an indication that the services are indeed being provided by someone who is certified in a particular investment philosophy’. It is not appropriate in considering the first characteristic to now engage in the second enquiry from Cantarella. Rather, having found the ordinary signification of the sign the question now to be asked is whether it is apparent from the ordinary signification whether the sign is being used as a certification trade mark. I am satisfied that the inclusion of the word ‘certified’ is sufficient to give the sign the first characteristic. If the sign was simply PORTOFLIO PHILOSOPHY it would not inherently possess the first characteristic.

The second characteristic

1. As discussed above, the second characteristic is an ability to distinguish which is much closer to that dealt with by s 41. Turning again to Cantarella, the first enquiry of determining the ordinary signification of the sign is also an appropriate starting point in considering this characteristic; this enquiry was undertaken above. The second enquiry from Cantarella, while not exactly applicable, is a useful guide; with slight rewording an appropriate enquiry can be formulated. An appropriate enquiry at this point is whether traders who provide goods or services which are certified by a person or entity other than the Applicant or a certifier approved by the Applicant might legitimately need to use the sign in respect of their goods or services. The Applicant has relevantly submitted:

   A Google Search for CERTIFIED PORTFOLIO PHILOSOPHY does not seem to produce any results showing that the mark is in use by traders other than the applicant in respect of the claimed services.

   We therefore respectfully submit that the term CERTIFIED PORTFOLIO PHILOSOPHY is not used by any other person or entity. The applicant argues that there is no defined, consolidated, integrated or coherent body of knowledge with the sole objective of delivering formal education as described in neither the applicant’s course curriculum that course candidates may be subject to, nor certification and recertification standards successful candidates would be obliged to meet. The applicant strongly believes this is what distinguishes its proposed use of the term from any other individuals or entities potential use.

2. The Applicant also submitted:

   The certification rules will allow the public to know precisely what is being certified as the mark itself does not precisely identify the particular characteristic being certified but is merely illusory.

3. I am not persuaded by the Applicant’s submissions. The Certification Trade Mark is a simple combination of words which indicates that the Certification Services are being provided by someone who is certified in a particular (but unspecified) investment philosophy. As discussed above, it is not necessary that a certification trade mark identify the particular characteristic which is certified; indeed, a brief look at the certification trade marks on the Register show that very few do this. That the Certification Trade Mark does not do this, does not, in my view, mean that traders are unlikely to legitimately wish to describe their services as being provided by someone who has a ‘certified portfolio philosophy’, for example, ‘We provide financial services. We have a certified portfolio philosophy.’ That there is no evidence of other traders using those words to describe their services while potentially informative, is not determinative.

1. I am of the view that the Certification Trade Mark does not inherently have the second characteristic. The Applicant has provided no evidence which might show that the Certification Trade Mark has acquired the second characteristic because of its use or of any other circumstances. I find, therefore, that the Certification Trade Mark is not capable of distinguishing the Certification Services certified by the Applicant or an approved certifier from goods or services not so certified.

Decision

1. I am satisfied that there exists a ground for rejecting the application under s 177(1) of the Act. Accordingly, I reject the application.

Robert Wilson
Hearing Officer
Hearings and Oppositions
22 August 2019