Cashcard Australia Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application number 1042552(9) to register a trade mark by Cashcard Australia Ltd
-and-

Examiner’s objection thereto.

Delegate: Debrett Lyons

Representation: Applicant: Gary Nock of Cullen & Co., Patent & Trade Mark Attorneys

Decision:
2007 ATMO 70

Section 41(3) : not inherently adapted to distinguish ; Section 41(6) : use not sufficient to invoke s. 41(6)(a) ; Application rejected.

Background

On 3 April 2003 (‘the priority date’), Cashcard Australia Ltd (‘the applicant’) filed trade mark application number 949380 for the trade mark CASHCARD covering classes 9, 36 and 38.
Following examination of that application, a divisional trade mark application, number 1042552, was filed in class 9 on 18 February 2005 (‘the application’).
The class 9 goods of the application are:
Financial transaction devices in this class including, debit and credit cards and encoded fund transfer transaction cards, encoded cards, magnetic data carriers, recording discs, financial transaction apparatus including automated teller machines and automatic vending machines, electronic publications including those sold and distributed on line, downloadable electronic publications, electronic apparatus and software for processing of financial transactions, apparatus for recording, transmission or reproduction of sound or images.
On examination, objection was raised under section 41(6) of the Trade Marks Act 1995 (‘the Act’) that the trade mark was of a sort other traders needed to use to indicate the nature or type of their goods.
Both survey evidence and evidence of use of the trade mark was filed by the applicant but it did not persuade the Examiner to accept the application and in consequence the applicant asked for a Hearing.
The matter came before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, for Hearing in Brisbane on 25 July, 2007. The applicant was represented by Gary Nock of Cullen & Co., Patent & Trade Mark Attorneys.
Submissions and Reasoning
Section 33(1) of the Act states:
Application 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.

Section 41 of the Act states in its entirety :
Trade 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.
(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.
(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.
(6) If the Registrar finds that the trade mark is not 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.
Section 41 of the Act provides a scheme for the assessment of the inherent adaptation of a trade mark to distinguish the goods and services of an applicant from the similar goods or services of other traders. The operation of section 41 was described in full by Branson J in Blount Inc v Registrar of Trade Marks [1998] 440 FCA (1 May 1998); 40 IPR 498 and its effect is that if a trade mark lacks adaptation to distinguish the particular goods or services (whether inherently or through use), the application must be rejected.
The Blount case is authority for the principle that section 41(3) directs that the first enquiry must be of the extent to which the mark is “inherently adapted” to distinguish the nominated goods from the like goods of others. The accepted test in that regard is set out in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511, at 513 where Windeyer J observed:
That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. 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. and G. Du Cros Ltd. (1913) AC 624 at 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 (ie. 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 connection 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. (30 RPC 216 at 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
I also take guidance from Note 1 to section 41(6), which reads:
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
[1] In the case of Ocean Spray Cranberries Inc v Registrar of Trade Marks, 2000 [FCA] 177 it was said:
  (b) the time of production of goods or of the rendering of services[1].
In assessing the application, the examiner stated that “[t]he Macquarie Dictionary defines CASHCARD as a card which allows one to perform certain banking activities via an automatic teller machine” and so the trade mark was wholly lacking inherent capacity to distinguish the applicant’s goods.
Mr. Nock disagreed. He was critical of the examiner’s reliance on the Macquarie Dictionary entry for ‘cashcard’ and at the Hearing he provided me with copies of relevant pages from the 1987, Second Edition. The word ‘cashcard’ does not appear in that edition. Mr. Nock stated that the 1987 publication date is three years after the applicant starting using the trade mark. He argued:
it is apparent that the Macquarie dictionary entry for the alleged meaning of “cashcard” was only entered into that dictionary a number of years after the present applicant commenced using its trademark. We submit that the Macquarie dictionary has erroneously entered a meaning for “cashcard” that, in fact, should relate to the applicant's trademark. In this regard, the Macquarie dictionary does include definitions for words that are, in fact, registered trademarks. See Siromark and Siroset, both of which are registered trademarks in Australia but also have definitions in the Macquarie dictionary.
I observe that the imprint page from that dictionary carried the statement: A number of words entered in this dictionary are derived from trademarks. However, the presence or absence of indication of this derivation should not be regarded as affecting the legal status of any trademark.
There is, however, no evidence either way as to whether the entry for ‘cashcard’ in some later edition of that dictionary was the result of its use by the applicant (as Mr. Nock implies), or was the result of those two words becoming conjoined in the popular lexicon.
Mr. Nock further submitted: ‘Cards that are used to access automatic teller machines are most commonly called “ATM cards”, “debit cards”, “credit cards”, “plastic cards” or simply “cards”’. Again, there was no evidence before me of that claim.
In the absence of any reliable evidence as to how the word ‘cashcard’ came to gain its dictionary status, or of how the average Australian in fact refers to these cash dispensing cards, I am faced with an application for a trade mark consisting of two ordinary words, both apt to describe the goods, but which when conjoined, form a trade mark any trader using or providing these types of cards would need or require to use in the ordinary course of trade in respect of their similar goods.
I decide that the trade mark has no inherent adaptability whatsoever to distinguish the applicant’s goods for the purposes of section 41(3). The only remaining question is whether pre-application use serves to distinguish the applicant’s goods and so bring the application within section 41(6)(a) of the Act.
Evidence of use
Preliminary Issue
The applicant is the proprietor of trade mark registration number 427344 for the composite mark which appears below:

The evidence shows use of that trade mark and, most typically, the trade mark below:

Mr. Nock sought to convince me that those uses were in fact use of two trade marks, one being the “CC” logo and the other being the word mark, CASHCARD. He reminded me of the Federal Court decision in Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (61 IPR 242) which considered whether "PRO BIO Living Waters" was a single trade mark or two marks. The Federal Court in that case decided, on the evidence before it in a trade mark infringement action, that ‘as used and as it would be understood by consumers, Pro-Bio is used to denote the company that is the origin of the range of waters collectively marketed and distinguished in the course of trade under the name Living Waters. Living Waters is thereby used as a separate trade mark.’(at p.247)
I do not find that case assists me. The trade marks shown above in paragraphs 19 and 20 consist of a “CC” device together with a stylized version of the word CASHCARD. They are shown in close proximity to each other and against a coloured or toned background which acts as a ‘border’ to the two elements. The device element appears either above or before the word element. In the evidence there is no use of the device element on its own. I do not see any compelling parallels with the Living Waters case which turned in its own unique facts.
Accordingly, evidence showing only the use of the trade marks in paragraphs 19 and 20 above must be given reduced weight in deciding the question of whether the trade mark of the application has achieved distinctiveness through use.
Mr. Nock drew my attention to the 24 November 2004 Statutory Declaration of Mr. Robert Cornish, a director of the applicant. That declaration was prepared in relation to the parent application, number 949380. In paragraph 3 of his declaration, he states:
The Cashcard network was first launched in 1984. My Company first commenced using The Trade Mark CASHCARD in 1984 and has continuously used The Trade Mark since that date. My Company has used The Trade Mark in respect of all of the goods and services specified in trade mark application no. 949380 and repeated above at paragraph 1 of this My Declaration.

In paragraph 5, Mr. Cornish states:
The Trade Mark is used on all of My Company's documentation. The Trade Mark is also used in marketing of all of My Company's products and services. The Trade Mark is visible on nearly all automatic teller machines in Australia in varying degrees, from full signage (where the automatic teller machine has The Trade Mark as its primary trade mark, for trade marks under the direct control of My Company) to partner signage where The Trade Mark is displayed to identify acceptability of cards at the automatic teller machine. Further, My Company's network member institutions and partner institutions often use The Trade Mark within their own documentation to identify their membership of the network and acceptance points for cards, automatic teller machines and EFTPOS. The network member institutions and partner institutions typically also use The Trade Mark in their internet sites.

Those claims are supported by seven exhibits but the vast bulk of that material evidence shows the trade mark in paragraph 20 of this decision. The ‘Trade Mark’ as defined in the Cornish declaration is not, for the greater part, the trade mark of application no. 949380 or the trade mark of this application. Indeed, it is only a single exhibit which shows use of the word CASHCARD alone. Even then, it is not shown as a pure word mark, but in a slightly stylised font of upper case red letters, set against a yellow banner. The exhibit is entitled, “ATM Branding Manual”, and for the most part shows stylisations of how that trade mark and myriad other decalcomania might be applied to automatic teller machines. I observe the dominant lettering on those machines is “ATM”.
For the reasons given above, that evidence is essentially the only usage which could support a claim of acquired distinctiveness of the trade mark of the application.
In paragraph 13 of his declaration, Mr. Cornish states:
Actual advertising spending to date by all the regional banks, building societies and other members of the Cashcard networks has not been collated. However, the CASHCARD trade mark is displayed on almost every one of the 22,000 automatic teller machines in Australia. The CASHCARD trade mark is printed on every receipt for each transaction conducted at each of My Company's own automatic teller machines, which totals approximately 100 million transactions per year.

The existence of 22,000 ATM machines Australia-wide, all carrying a trade mark is a fact to reckon with, however on this occasion I have before me use of a different mark, in bold colours and even then, swamped in my opinion by the sheer visual busyness of the other signage appearing on the machines, that I can not accept the applicant’s argument of acquired distinctiveness through such exposure.
I am reminded of the UK case of British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (British Sugar) where at 302 Jacob J stated:
I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords. In the former case Lord Russell said (at 145):
“A word or words to be really distinctive of a person’s goods must generally speaking be incapable of application to the goods of anyone else.”
It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader.
I decide that the Cornish declaration does not assist the applicant.
The applicant also relied upon two surveys. I will refer to these as the “Zoomerang” survey of December 2005 and the “Daemon” survey of August 2006. Mr. Nock noted that the survey evidence showed “that 74% of respondents stated that the CASHCARD name is well recognized by cardholders”.
The Zoomerang survey is particularly unhelpful. Of the many questions put to respondents, there are only two to consider. Under the sub-heading “Now with regard to our company brand and logo…”, question 4 asks: “when you see the Cashcard Logo(the card symbol), do you associate it with Cashcard ( the company)” and question 5: “when you see the Cashcard Logo, do you associate it with the supply of an ATM?”.

Quite aside from the ongoing problem that the survey refers to either the logos shown in paragraphs 19 or 20 (or perhaps the CC Device component on its own) and not to the trade mark of the application, the two questions themselves are utterly ‘leading’ and are of no probative worth whatsoever.
The Zoomerang survey is of no benefit to the applicant and I accord it no weight.
The Daemon survey was produced in answer to the examiner’s call for market evidence. Mr. Nock’s claim of 74% recognition of the CASHCARD name derives from the following part of that survey:

The respondents who took part in the Daemon survey are described as both ‘cardholders’ and ‘Cashcard customers’. It is unclear to me whether the applicant’s own customers were being surveyed. If that were the case, then clearly they would comprise a skewed survey group. The evidence is simply unclear on this point and so I must treat the Daemon survey with caution.
Moreover, the 74% response rate was of respondents who agreed or ‘somewhat’ agreed with the proposition that the Cashcard name is well recognized by cardholders as it appears on ATM machines. I have already described the cacophony of signage that appears on those machines as shown by the Cornish declaration. Once again I consider the question ‘leading’ and the findings ambiguous. Had the question been put another way, I would have no surprise if the results were entirely different. In short, I do not think that the Daemon survey can support any type of claim that there is 74% public recognition of the applicant’s trade mark.
Nothing else in the Daemon survey assists me and in my opinion there are aspects of the survey which go against the applicant, for example:

Taken in its whole, I find the evidence of little weight in persuading me that the trade mark has acquired distinctiveness through use.
Finally, I have something to say more generally of the applicant’s claims to use and reputation of the trade mark, leaving to one side the persistent flaw in the evidence concerning the non-correspondence of the trade mark of the application with the trade marks shown in evidence. It is this. Mr. Nock submitted:
The applicant has provided evidence of use that establishes that the mark was first adopted in 1984 and has been continuously used since then. Use of the trademark from 1997 to 2003 is shown to have generated revenue of $350 million. Use of the trademark from 1997 to 2003 (i.e. prior to the filing that the present application) is approximately $200 million in revenue.

As with other aspects of the evidence in this case, the unexamined claim of business revenue is impressive. What is not explicit is the characterization of that revenue. In paragraph 4 of the Cornish declaration, it is said:
My Company is a provider of goods and services in relation to automatic teller machine networks, automatic teller machine management services, EFTPOS services, internet and phone payments, bank account payments, computer software and computer systems related to all of the above and customer support services in relation to the above. Now shown to me and attached hereto as Exhibit RTC-1 is a business overview providing a summary of goods and services provided by My Company under The Trade Mark.

What is clear from that business overview and from the other exhibits (some of which are confidential) is that the trade mark is only visible to the public on ATM machines, at the applicant’s website and in the magazine, Banking and Finance. What emerges from the evidence as a whole is that the applicant essentially conducts a business-to-business enterprise where its customers are banks and building societies. The revenue claims appear to be a consolidation of all income streams from the various aspects of the applicant’s business as set out in the Cornish declaration above. It can be said without compromising the confidentiality of the documents in evidence that the revenue derived from the use of ATM machines is only one part of the applicant’s total income. It can also be observed the applicant’s business is almost invariably described by the services it provides. The link with class 9 goods is unexplained.
In this case the applicant has not done enough to satisfy me that the trade mark, through use, does distinguish the claimed goods as being those of the applicant and is thus capable of distinguishing those goods from the goods of other traders. The applicant would need to narrow and refine the evidence it relies upon were this mark ever to achieve registration. It would also need the assistance of a well-constructed market survey and appropriate trade evidence.
Decision
For these reasons I decide that application number 1042552 is rejected.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
8 November 2007

Although contained in the statute when enacted, the Notes to the Trade Marks Act do not prescribe rules of law. The Reader's Guide at the commencement of the Act explains the function of Notes in this way:
"Notes are to be found throughout the text. They are designed to help you find your way through the Act. They may tell you that certain words or terms are defined and where to find the definition; they may alert you to other provisions in this Act and in other legislation that are relevant to the text you are reading; or they may draw your attention to information that may help you to understand the contents or legal consequences of certain provisions or how to comply with them."
Notwithstanding that the Note referred to by Mr Cobden does not have legislative force, I accept it fairly reflects the trend of relevant judicial authority.

[2007] ATMO 70

8 November 2007

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