Chinasom Uzodimma Elekwachi

[2022] ATMO 217

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2117718 (Class 41) – The Journal of Biblical Evidence & Practice – in the name of Chinasom Uzodimma Elekwachi.

Delegate:

Debrett Lyons

Representation:

Applicant: self-represented

Decision:

2022 ATMO 217

Request to be heard under s 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – s 41 considered – trade mark rejected.

Background

1. This is a decision on examination of trade mark application number 2117718 (‘Application’) filed by Chinasom Uzodimma Elekwachi (‘Applicant’) on 5 September 2020 for The Journal of Biblical Evidence & Practice (‘Trade Mark’) in respect of class 41 services, being “Freelance journalism; dissemination of educational material” (‘Services’).

2. The Application was examined as required by the Trade Marks Act 1995 (Cth).[1] Through the course of several reports, the examiner of the Application maintained a ground for rejection under s 41 on the basis that the Trade Mark was not inherently adapted to distinguish the Services. In the end a Hearing was suggested by the examiner and the Applicant acceded to that suggestion. A Hearing originally scheduled for 16 September 2022 did not proceed however the Registrar has now delegated me to make that decision on the basis of the written record.

   [1] Unless otherwise stated, references to sections or regulations are references to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or a regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

3. My decision has been make taking into consideration the Application, the examiner’s reports and the Applicant’s responses thereto, the material provided in support of the Applicant’s submissions, and the law discussed hereunder.

   Discussion

4. Section 33(1) provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it, or the application has not been made in accordance with the Act. There is no suggestion that the Application failed to comply with formality requirements but as stated, a ground of refusal under s 41 was maintained.

   Section 41

5. Section 41 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. In Cantarella Bros Pty Limited v Modena Trading Pty Limited, the High Court of Australia formulated a two-step method for determining inherent adaptation to distinguish.[2]   The first step requires assessment of the ordinary signification of the sign to persons who will purchase, consume or trade in the relevant goods and/or services.  If there is no ordinary signification, the sign is to be considered inherently adapted to distinguish.  Where there is an ordinary signification the second step requires determination of whether there is a legitimate desire for other traders to use the sign.  If such a desire is likely, the sign is not inherently adapted to distinguish.

   [2] [2014] HCA 48 (French CJ, Hayne, Crennan, and Kiefel JJ) (“Cantarella”).

   Ordinary Signification

7. The Trade Mark is composed of ordinary English language words arranged in a grammatically sensible way which, as a whole, are readily understood. The word “journal” is defined as a daily record of, for example, occurrences, experiences or observations, or as a periodical or magazine, especially one published by a learned society. The word “biblical” means pertaining to the Bible; “evidence” means ground for belief, or that which tends to prove or disprove something; and “practice” means the repeated performance or systematic exercise for the purpose of acquiring skill or proficiency, or the action or process of performing or doing something (as opposed to theorizing or speculating on it) [3].

   [3] All definitions are taken from The Macquarie Dictionary.

8. I find that the ordinary signification of the Trade Mark is that of a record, periodical or magazine that contains information or observations relating to evidentiary or practitioner matters connected with the content and/or teachings of the Bible.

   9.        I observe that the Application was not made in class 16 which includes journals or class 9 which includes electronic journals.  Nevertheless, the Trade Mark continues to directly describe the purpose of the Services (freelance journalism, and dissemination of educational material) as being provided to create or contribute to a Journal concerned with information relating to evidence or practical ability in the content/teaching of the Bible.

   Legitimate desire for other traders to use the Trade Mark

9. In Registrar of Trade Marks v W & G Du Cros Ltd, Lord Parker of Waddington 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.[4]

   [4] (1913) AC 624, 634-5 (‘Du Cros’).

10. In citing Du Cros with approval, Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

    [W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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.[5]

    [5] (1964) 111 CLR 511, 514.

11. Thus, applying the two-step process formulated in Cantarella, and my findings regarding the ordinary signification of the Trade Mark together with the likelihood that other traders would wish to use legitimately the Trade Mark in connection with their own services, I find that the Trade Mark is to no extent inherently adapted to distinguish the Services from the similar services of other persons.

    Consideration of s 41(3)

    13. Because the Trade Mark is to no extent inherently adapted to distinguish, it is necessary, in accordance with s 41(3)(b), to consider whether 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 Applicants Services] as being those of [the Applicant]’.

12. The Applicant has provided material said to show use of the Trade Mark in respect of the Services. Much of it has been considered carefully by the examiner and the Applicant is aware of the shortcomings by way of that which has been explained in the several examination reports. I have looked at the material and a question may have arisen as to whether the use shown is in relation to goods rather than the Services. However, it is not necessary for me to reach a conclusion on that matter for the reason that the Applicant has declared that first use was in October 2020. Section 41(3)(b) can only take account of use occurring before the priority date, here, 5 September 2020. Accordingly, the operation of the Act brings the s 41 enquiry to a close with my finding that the Trade Mark is not adapted to distinguish the Services as those of the Applicant.

    Decision

13. Under s 33(1), I am satisfied that there are grounds for rejection and so I refuse to register the Trade Mark.

    Debrett Lyons

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    13 December 2022