Carolyn Anna Hall

[2022] ATMO 172

TRADE MARKS ACT 1995

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

ReTrade Mark application number 2139990 (35, 36, 42) – CITY HALL– in the name of Carolyn Anna Hall

Delegate:	Nicholas Smith
Representation:	Applicant: David Stewart of Bennett
Decision:	2022 ATMO 172 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 41 of the Act – section 41 considered – trade mark to be accepted for possible registration

Background

1.       On 1 December 2020, Carolyn Ann Hall (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (Cth) (‘Act’)

Application Number:	2139990
Filing Date:	1 December 2020
Services:	Class 35: Management consultancy services being business management, organizational planning and development, project advice, business risk management, process management; business insolvency services; advisory services relating to mergers, acquisitions, franchising; provision of business intelligence services; advertising services; marketing services; production and dissemination of advertising matter; business management assistance for commercial and industrial companies; business management and business organisation, consultancy and assistance; business information; commercial information; business research; statistical information and processing; sales promotion; purchase and rental of advertising space; purchase and rental of publicity and advertising materials; market research; opinion polling; organisation of exhibitions; radio, television, billboard and press advertising; publicity and promotional services; advertising agency services; marketing agency services; planning services for advertising; media buying, namely, the acquisition of advertising space in various forms of media for advertisements; market analysis; new product development services for investors; accounting; document reproduction; employment consultancy services; personnel management, selection and recruitment, outplacement services; provision of the aforesaid services on-line from a computer database or on the Internet; consultancy and advisory services relating to the aforesaid services Class 36: Advisory services relating to credit and debit control, investment, grants and financing of loans; financial consultancy and advisory corporate finance services, namely advising on financial affairs, financial evaluation and financial consultancy; corporate finance services, namely providing business advice relating to business sales and acquisitions, company flotations and investigation of businesses; fiscal assessment; monetary affairs; information risk management in the field of finance; advisory services relating to business liquidations Class 42: new product development services for investors (‘Applicant’s Services’)
Trade Mark:	CITY HALL	(‘Trade Mark’)

1. The Trade Mark was duly examined under s 31 of the Act and a ground for rejection was identified by the examiner under s 41 of the Act.[1]  The examiner stated in respect of the class 37 and 42 goods (paraphrased), that the Trade Mark consisted of two words being an administrative building of a municipal government and that the Trade Mark itself indicates that the Applicant’s Services are, or in relation to, a building used to provide administrative services for municipal government.   Other traders should be able to use the Trade Mark in connection with the Applicant’s Services.  

2. On May 31, 2022 the Applicant responded to the rejections, providing further submissions and a declaration of Carolyn Anna Hall (the Applicant) made on 26 May 2022 with Annexures CH-1 and CH-2 (‘Hall declaration’). The Hall declaration provides evidence of very limited use of the Trade Mark by the Applicant. The submissions were insufficient to persuade the examiner, who issued a further examination report maintaining the s 41 ground for rejection in respect of the Applicant’s Services. The Applicant then requested to be heard by the Registrar of Trade Marks under s 33 of the Act.

3. This matter was listed for hearing on 6 September 2022.  As a delegate of the Registrar of Trade Marks I heard this matter on that day.  David Stewart of Bennet, representing the Applicant, made oral submissions supported by short written submissions filed earlier that day. 

4. The present matter is a hearing under s 33(4) of the Act. As noted in MHFC Holdings Pty Ltd[2]  as well as other decisions of the Registrar (Teraglow Pty Ltd[3] and TOM Organic Pty Ltd[4]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 41 ground for rejection under this Act as it applies to the Trade Mark.

   Legislative framework

   6. 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. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[5] Regarding the present application, the only unresolved ground for rejection identified is under s 41 of the Act. The capacity of the Trade Mark to distinguish the Applicant’s Services must be assessed at the filing date, being 1 December 2020 (‘relevant date’) however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.[6]

   [1] An additional ground of rejection was also identified on the basis of the Applicant’s Services not being correctly classified and this ground has been resolved by amendment of the Applicant’s Services.

   [2] [2016] ATMO 96, [9] (Hearing Officer Wilson).

   [3] [2016] ATMO 32 (Hearing Officer Worth).

   [4] [2018] ATMO 46 (Hearing Officer Worth).

   [5] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

   [6] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

5. 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).

6. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act, which corresponds to Reg 17A.24:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[7] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [7] (1998) 40 IPR 498, 505 (Branson J).

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Applicant’s 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 [Applicant’s Services]. [that is, s 41(4) applies][8]

   [8] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).

7. In the present case the Applicant’s evidence of use prior to the relevant date is negligible, being the Applicant (a sole trader)’s website, with 1500 unique visitors and her LinkedIn page. As such a ground for rejection under s 41 will apply if the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Services from the goods and services of other persons, being the test in s 41(4). It is not necessary to conclude that the Trade Mark is not to any extent inherently adapted to distinguish, being the test in s 41(3).

8. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 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].[9]

   [9] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

9. The Applicant submits that the Trade Mark is inherently adapted to distinguish the Applicant’s Services from the goods and services of other traders for the reasons set out below:

   ·City Hall is not a term that is commonly used in Australia, where the common term is Town Hall and as such the mark is inherently distinctive.  

   ·Local Governments are not commercial entities and, subject to minor exceptions (events held in town halls), city halls/town halls are not ordinarily places in which commercial trading occurs.  The Trade Mark does not contain a direct reference to the Applicant’s Services nor would other traders want to use the word in connection with the Applicant’s Services.

10. The first point is unpersuasive.  I am satisfied that the vast majority of Australians understand the term City Hall, whether from the limited use in Australia or from exposure to the United States, as a reference to a municipal building providing local government services and such a term would be, to most Australians, be interchangeable from the term ‘town hall’.  That is the ordinary signification of the Trade Mark.

1. The second submission is far more persuasive.  The Applicant’s Services involve the provision of a broad range of management services and financial advice services.  The Trade Mark is neither descriptive of the Applicant’s Services nor descriptive of the place in which these services could be provided (they would not be provided by a municipality or a local government).  I am not satisfied that the Trade Mark signifies that the Applicant’s Services are provided from or in relation to a building used to provide administrative services for municipal government, indeed that does not seem possible.  I fail to see how any other traders would desire to use the words CITY HALL in respect of the Applicant’s Services or similar services.

2. In summary I am satisfied that the Trade Mark, in the context of the Applicant’s Services, does not indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the Applicant’s Services or the time of their production. I am unpersuaded that other traders, in the ordinary course of their business and without any improper motive, will think of or desire to use the Trade Mark, or something closely resembling it, in respect of the Applicant’s Services. I find that the Trade Mark is inherently adapted to distinguish the Applicant’s Services from the goods of other traders.  I find that the ground for rejection has not been established.

   Decision

   15. 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.

3. As I am not satisfied that there is a ground for rejection under s 41 of the Act, I accept the application to register the Trade Mark.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   4 October 2022