Century 21 Real Estate LLC

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1502579(36) - SMARTER. BOLDER. FASTER - in the name of Century 21 Real Estate LLC.

Delegate:

Iain Campbell Thompson

Representation:

Applicant: Gabriella Rubagotti of Counsel instructed by Baker & McKenzie

Decision:

2014 ATMO 15

s41(6) trade mark has no inherent adaptation to distinguish the services of the Applicant – s41(2) application rejected.

Background

In this matter Century 21 Real Estate LLC (‘the Applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:
Application No: 1502579
Priority Date:  17 July 2012
Services:  Class 36: Real estate brokerage services
Trade Mark:  SMARTER. BOLDER. FASTER
The examiner cited a ground for rejection of the trade mark in terms of section 41 of the Act[1] stating:
Your trade mark is, or has as its main feature, the words SMARTER. BOLDER. FASTER.
These laudatory words merely extol the virtues of the brokerage services claimed in this application, that they are SMARTER, BOLDER AND FASTER than other similar services, or that the services are provided by persons who are SMARTER, BOLDER and FASTER.
The simple combining of these laudatory words is not sufficient to make this trade mark prima facie capable of distinguishing.
Other traders should be able to use SMARTER. BOLDER. FASTER in connection with goods or services similar to yours.
[1] That is the Act prior to the 2013 amendments
The examiner went on to state “You might be able to overcome this problem if you supply evidence of use under subsection 41(5) of the Act”.
The Applicant responded to the report stating, inter alia:
As the Examiner is undoubtedly aware, a phrase such as SMARTER. BOLDER. FASTER. is subject to the same test of distinctiveness as single word marks, namely:
".,.whether other traders are likely, in the ordinary course of their businesses and without proper motive, to desire to use the same mark, or some mark closely resembling it": W & G Du Cros Ltd's Appn (1913) 30 RPC 660 at 672.
Marks which fall into the category of those that other traders are likely to desire to use without improper motive in relation to their similar services are those that are descriptive of the character or· quality of the services. This, in practice, would require that the words in question have significations and associations that invite confusion with the services: Stone J in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 at 532-533.[2]
We submit that in the present instance, SMARTER. BOLDER. FASTER. does not have any significations or associations in relation to the services claimed, namely:
"Real estate brokerage services"
[2] However, here Stone J spoke only of “Signs that are descriptive of the character or quality of the relevant goods or which use a geographical name” not signs which lack inherent adaptation for some other reason such as being laudatory or a surname..
The submissions continue in similar kind, going as far as to invoke Diamond T Motor Car Co's Application (1921) 33 RPC 373 and submitting that the trade mark must be considered as a whole. The fallacy in this submission is illustrated by consideration of the following expression proposed as a trade mark in relation to ‘soups’: “Absolutely the Best Chowder Ever Made”. The fact that the proposed trade mark is comprised of six words rather than one or two has no impact on the lack of any inherent adaptation of the expression to distinguish in respect of soups.
The Applicant drew the examiner’s attention to the registration of the same trade mark in Canada and the United States and stated:
As outlined by Hearing Officer Terry Williams in the decision in Unilever PLC [2001] ATMO 39:
"Finally, I should allow for the pattern of overseas registrations. Individually, no one of them is decisive However, if it is said that the matter approaches the borderline, it would be difficult to justify placing additional obstacles in the way of a trade mark that is already accepted in comparable jurisdictions under analogous circumstances."
Of course the critical word in the above passage is the word ‘borderline’ and, as I will explain below, this matter is, in my consideration, far from borderline. There are also the further questions as to whether the USA and Canada are comparable jurisdictions and whether the circumstances before me are analogous.
The examiner issued a further report in response to the submission maintaining the ground for rejection. Subsequently the Applicant requested to be heard.
I am a delegate of the Registrar of Trade Marks and on 10 February 2014 I heard the submissions of the Applicant presented by Ms Gabriella Rubagotti of Counsel instructed by Baker & McKenzie in Sydney.
The Applicant’s submissions
Ms Rubagotti submitted:
In examining an application for registration, there is a presumption of registrability. This is reflected in s.33(1) of the Trade Marks Act which relevantly provides:
(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.
(3) If the Registrar is satisfied that:
…
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
In Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 50, French J stated (at [34]):
The mandatory language of s.33 and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition. This will have an impact upon the way in which the Registrar approaches the question whether a mark proposed for registration is deceptively similar to others. The condition of refusal of an application is that the Registrar is satisfied that there are grounds for rejection. If not so satisfied the Registrar must accept the application.
Although French J's observations in Woolworths concerned rejection pursuant to s.44 of the Trade Marks Act, his Honour's observations carry equal force in assessing whether a mark ought to be rejected under s.41.2 So much is apparent from the following observations of his Honour in Kenman Kandy (Aust) Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 at [50], which were made in connexion with a rejection under s. 41:
... it is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s.33. To the extent that critical criteria upon which registration might be rejected are in doubt, the application should be accepted. Closer adversarial scrutiny may occur in opposition - Registrar of Trade Marks v Woolworths at 377.
I diverge from Ms Rubagotti’s submissions to observe that the qualifying words, above, are ‘To the extent that critical criteria upon which registration might be rejected are in doubt’. The obverse side of this ‘rule’ is that if the “critical criteria” upon which registration might be rejected are not in doubt, the application must be rejected.
I return to Ms Rubagotti’s submissions:
In this case, the critical criterion upon which the Examiner rejected the application is but one: the trade mark is comprised of laudatory words and thus is a mark that other traders may desire to use. See: second adverse report (last sentence).
In the applicant's submission, this criterion is open to doubt: in particular, the inclusion of laudatory words in a trade mark is not, as the Examiner would have it, conclusive of the question whether a trade mark lacks an inherent capacity to distinguish a trader's services.
It follows that the application should be accepted.
Section 41
On the filing date of the application section 41 read:
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).
The scheme and operation of section 41 was discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241 (‘Blount’):
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 assessment of the inherent adaptation of the trade mark to distinguish the designated services of other persons is to be on the balance of probabilities – that is, in the words of Branson J in Blount:
Each of s 33(1) and s 41 involves the concept of the Registrar being "satisfied". Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
In other words, when assessing the inherent adaptation of the trade mark to distinguish the Applicant’s services it is not necessary for me to be convinced beyond any doubt that the trade mark lacks inherent adaptation – I need only to be satisfied on the balance of probabilities that it is so.
The assessment of inherent adaptation lies in the application of the well known test in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5] where Kitto J stated:
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.

Ms Rubagotti argued that the trade mark has no signification or association in relation to real estate brokerage services. Ms Rubagotti submitted:
In Kenman Kandy[3], Stone J held (at [145] and [147]):
Signs that are descriptive of the character or quality of the relevant goods or which use a geographical name in connection with them cannot be inherently distinctive because the words have significations or associations that invite confusion and because registration of a trade mark using such words would preclude the use by others whose goods have similar qualities or which have a connection with the relevant areas.
In my opinion it is the absence of these associations and significations that makes a sign inherently adapted to distinguish one trader's goods from those of another. In other words the concept is negative not positive.
[3] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494; [2002] AIPC 91-817; 56 IPR 30
However, I consider that it is clear that Stone J spoke only of descriptive and geographical words. More to the point are the words of Bennett J in Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; (2006) 69 IPR 255 at [27] which are more apposite here:
Nestlé submits that GO ON... is not descriptive of the goods for which the trade mark is registered; it has no reference to any characteristic of the goods; not to their quality, type or origin. "Go on ... ice cream" does not make any allusion to the quality of the goods themselves and is not an expression usually applied to or descriptive of ice cream. Accordingly, Nestlé submits, cases that relate to descriptive marks can be distinguished.
I accept that the trade mark is not descriptive of the goods to which it is applied and does not indicate a characteristic of them. GO ON... can be viewed as an exhortation, not describing the goods at all but an emotive direction to do something or take action and, as used by Nestlé, to taste ice cream. As Dixon CJ explained in Mark Foy’s Limited v Davies Coop and Company Limited [1956] HCA 41; (1956) 95 CLR 190 at 194 (‘the Tub Happy Case’) :
‘Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.’
However, the fact that the trade mark is not descriptive of the goods does not mean that it has an inherent capacity to distinguish. [Stress added]
Ms Rubagotti went on to submit that:
Although more often observed of combination marks, having regard to the composition of the applicant's trade mark - SMARTER. BOLDER. FASTER. - it is appropriate to note that, in determining whether a trade mark is inherently adapted to distinguish, the mark must be looked at as a whole: Diamond T Motor Car Company [1921] 2 Ch 583 [‘Diamond T’].
Thus, as Dodds-Streeton J held in Fry Consulting Pty Ltd v Sports Warehouse Inc. (No.2) (2012) 288 ALR 727 at [61] (of combination marks):
It is established that a... mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive. When assessing whether a combination trade mark ... is adapted to distinguish, it is necessary to consider the combination as a total composition, rather than the individual constituent elements in isolation.
Put another way, as P.0. Lawrence J held (at 588) in Diamond T, "it is wrong ... to dissect the mark and to show that each of its component parts is not distinctive in itself and then, as the result of this process, to conclude that the mark as a whole is not distinctive".
This, however, is the approach taken by the Examiner. Thus the Examiner determined that the "real estate brokerage services" for which registration is sought, or indeed the people delivering them, may be described as smarter or bolder or faster.
In my consideration, this is not the approach which has been taken by the examiner. The examiner has somewhat inevitably and unavoidably explained the ground as a whole but has stated that each part of the trade mark lacks inherent distinctiveness. In effect it becomes necessary in order to explain the lack of inherent adaptation of the trade mark as a whole to state that each word within the trade mark is laudatory and that the collocation of these particular laudatory words with others does not add adaption to this particular end result.
However, the hearing is not a review of the examiner’s objections – it is a look at the trade mark, and the objection, afresh.
Ms Rubagotti explained that the trade mark is a hendiatris – that is, it is a phrase which adds emphasis by using three words to express the one idea. Examples of hendiatris include, ‘location, location, location’ (for real estate purchasers), ‘wine, women, song’ (a hedonistic lifestyle), Liberté, Egalité, Fraternité, French for "Liberty, equality, fraternity (evoking brotherhood)[4]. Ms Rubagotti submitted that the trade mark expresses one idea, namely “surpass”, that, she stated, is the overall idea conveyed by the trade mark. Ms Rubagotti continued:
There is nothing in this overall idea that signifies or invites an association with "real estate brokerage services". And, as Stone J held in Kenman Kandy (considered above) this absence of signification and association makes the trade mark inherently adapted to distinguish the applicant's services.
Even if it is determined, contrary to the applicant's submission, that one or more of the individual elements of the mark, considered in isolation, is descriptive and thus lacks a capacity to distinguish, it does not follow that the trade mark as a whole - i.e. a mark comprising an unusual combination of words separated by full stops and conveying an overall idea devoid of signification or association - is similarly incapable of distinguishing the applicant's services.
[4] The national mottos of France and the Republic of Haiti.
The task before me, however, is not to assess the idea of the trade mark alone but rather the inherent adaptation of the trade mark itself to distinguish the services of the applicant: thus it is not relevant that the idea of the trade mark might have no descriptive character, signification or association in relation to the services. To draw an analogy, the expression ‘Go On ..’ has no descriptive character, signification or association with ice-cream and yet lacks any inherent adaptation in relation to those goods as the words are an exhortation to sample or try that other traders should be free to use.[5]
[5] Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255
Accordingly, I am to first take into account the extent to which the trade mark is inherently adapted to distinguish the applicant’s real estate brokerage services from the similar services of other real estate brokerage companies.
The assessment is to be based on the nature of the trade mark itself – not by reference to whether traders other than the Applicant are using the expression in relation to their similar services, although if other traders are using the expression , that fact may confirm[6] a finding that the trade mark lacks inherent adaptation to distinguish. Parallels may be drawn here with descriptive words and common surnames: the word ‘whopper’ prima facie lacks inherent adaptation to distinguish in relation to hamburgers whether or not other traders are actually using the word in relation to their hamburgers; the surname ‘Thompson’ which occurs over 23,000 times on the Australian electoral roll may lack inherent adaptation to distinguish in relation to ‘t-shirts’ whether or not any other trader is in fact using the surname ‘Thompson’ in relation to ‘t-shirts’.
[6] On the other hand, the circumstance of use of the sign by other traders might confirm that it is a trade mark.
In my consideration, any real estate brokerage may, without improper motive, wish to claim that its sales staff is ‘smarter, bolder and faster’ and (to paraphrase Clarke Equipment, above) ‘will want to use that in connexion with similar [real estate brokerage services] in a manner which would infringe the trade mark SMARTER. BOLDER. FASTER if it were registered.’
I further consider that the ground for rejection more properly falls under subsection 41(6) although this finding does not affect the outcome of this matter.
Ms Rubagotti put in some informal evidence of the use of the trade mark; that is to say, this was the results of her Google® search of the expression ‘smarter bolder faster’ which shows use of the expression in Australia. It is not clear to me that the expression is used is used in Australia by the Applicant – the use might be by an Australian subsidiary or affiliate although which is not obvious. The use dates from around 2011 and takes a form similar to that below:
Whether the ground for rejection lies under subsection 41(5) or subsection 41(6) the use of the trade mark is not such that it could acquire distinctiveness and could taken to be capable of distinguishing the designated services (whether at the date of filing or at some future date). The use is obviously only as a laudation of the Applicant’s staff and lies in the shadow of the CENTURY 21 trade mark. In the latter regard Jacob J said in Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 when he said:
... what we have here is a kind of "limping mark", always used with what is obviously a proper trade mark. The same was true of TREAT which was always used with SILVER SPOON. Neither sign was ever used by the proprietor on its own. And that was evidence of a lack of a capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that a part of a sign -- a "subsign" -- cannot also be a trade mark: both FORD and FIESTA are obviously valid marks. But there are these other cases, where the sign proffered as a valid mark cannot really stand up on its own.
While it is true that two trade marks of approximately equal inherent adaptation may not suffer in each other’s presence, such is not the case here: in this regard see Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438; (2004) 61 IPR 242; [2004] AIPC 91-983; [2005] ALMD 363.
If a sign such as SMARTER. BOLDER. FASTER. for real estate brokerage services is ever to acquire distinctiveness, it will be as a result of not only extensive use as a trade mark (rather than as a laudation of staff members) but also public education that the expression is a trade mark and is being used as such.
In my consideration the trade mark is one that falls within the purview of subsection 41(6) and the Applicant has not established that, because of the extent to which the Applicant had used the trade mark before the filing date in respect of the application, it did then distinguish the designated services as being those of the Applicant. Therefore the trade mark is taken not to be capable of distinguishing the designated services from the services of other persons. However, I also note that, in terms of the ground for rejection under subsection 41(5) as stated by the examiner, I am not satisfied by the material before me that the trade mark ever will distinguish the services of the Applicant.
I therefore reject application 1502579(36) for registration of the trade mark SMARTER. BOLDER. FASTER.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
26 February 2014

[2014] ATMO 15

26 February 2014

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