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’)

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.
On May 31, 2022 the Applicant responded to the rejections,…

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 172
Decision Date: 4 October 2022

CaseChat Overview and Summary

This matter concerned an application by Carolyn Anna Hall to register the trade mark "CITY HALL" for certain services. The application had been rejected by the examiner on the grounds that the trade mark was not capable of distinguishing the applicant's services from those of other persons, pursuant to section 41 of the *Trade Marks Act 1995* (Cth). The applicant requested a hearing before the Registrar of Trade Marks to consider this ground for rejection.

The legal issue before the Registrar was whether the trade mark "CITY HALL" was capable of distinguishing the applicant's services. This required an assessment of whether the trade mark was inherently adapted to distinguish the services and, if not sufficiently inherently adapted, whether it had acquired distinctiveness through use by the filing date of the application, or would do so in the future, considering various factors. The Registrar was required to consider this ground afresh, not as a review of the examiner's decision.

The Registrar considered the provisions of section 41 of the Act, which outlines the circumstances under which a trade mark is taken not to be capable of distinguishing. This includes situations where the trade mark is not inherently adapted to distinguish and has not acquired distinctiveness through use, or where it is only partially inherently adapted and does not and will not distinguish the services, having regard to its inherent adaptability, the use or intended use, and other circumstances. The Registrar found that the trade mark "CITY HALL" was not inherently adapted to distinguish the applicant's services, as it did not indicate their kind, quality, intended purpose, or other characteristics. Furthermore, the Registrar was unpersuaded that other traders would not wish to use the mark or a similar mark for their own services.

Ultimately, the Registrar was satisfied that the trade mark "CITY HALL" was inherently adapted to distinguish the applicant's services. As the ground for rejection under section 41 of the Act was not established, the Registrar accepted the application for registration of the trade mark.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

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.Decision15. 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. 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 SmithHearing OfficerOppositions and Hearings4 October 2022

Ratio Decidendi

Legal Principle Established

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. 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. 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 framework6. 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). 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).

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

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’)