Coffs Ex-Services Memorial & Sporting Club Ltd v Coffs Harbour Catholic Recreation & Sporting Club Limited

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Coffs Ex-Services Memorial & Sporting Club Ltd (t/a C.Ex Coffs Club & C.Ex Group) to registration of trade mark application 1314130(41, 43) - CLUB COFFS - filed in the name of Coffs Harbour Catholic Recreation & Sporting Club Limited.

Delegate: Alison Windsor

Representation: Opponent: Dermot Ryan SC, and Christopher Freeman of Counsel, instructed by Slater & Gordon Lawyers
Applicant: Maeve McCarthy of Counsel instructed by Eastern Commercial Lawyers

Decision: 2011 ATMO 118
S52 Opposition: grounds pursued under ss 41, 42(b), 43 and 58 – trade mark not inherently adapted to distinguish – evidence does not show use of substantially identical trade mark – provisions of subsection 7(1) may not be applied – trade mark not capable of distinguishing – opposition successful – costs awarded against Applicant.
Background

Coffs Harbour Catholic Recreation & Sporting Club Limited (‘the Applicant’) applied under the provisions of the Trade Marks Act 1995 (‘the Act’) to register a trade mark. The application was filed on 10 August 2009 (‘the priority date’), for services in classes 41 and 43 shown below:
Class 41: Arranging of entertainment; arranging of exhibitions for entertainment purposes; arranging of musical entertainment; booking of entertainment; children's entertainment services; club entertainment services; club services (entertainment or education); conducting of exhibitions for entertainment purposes; country clubs (providing entertainment and sporting facilities); dissemination of entertainment material; entertainment; entertainment information; event management services (organization of educational, entertainment, sporting or cultural events); live entertainment; organisation of entertainment for wedding celebrations; party planning (entertainment); providing facilities for entertainment; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of club entertainment services; provision of entertainment facilities; provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes; provision of live entertainment; theatre restaurants (entertainment)
Class 43: Arranging for the provision of drink; arranging of wedding receptions (food and drink); club services for the provision of food and drink; food and drink catering; hospitality services (food and drink); preparation of food and drink; providing food and drink; providing information, including online, about services for providing food and drink, and temporary accommodation; takeaway food and drink services; theatre restaurants (provision of food and drink)
The trade mark which is the subject of the application consists of the words ‘Club Coffs’ (‘the Trade Mark’).
The application was examined as required by section 31 of the Act and, no grounds for rejection having been identified, it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks dated 10 December 2009.
On 5 March 2011 Coffs Ex-Services Memorial & Sporting Club Ltd (trading as C.Ex Coffs Club & C.Ex Group) (‘the Opponent’) filed a Notice of Opposition (‘the Notice’) to registration of the trade mark. The parties then filed and served their evidence in support and in answer, after which the Applicant asked to be heard.
As a Delegate of the Registrar of Trade Marks I heard the parties in Sydney on 11 August 2011. The Opponent was represented by Dermot Ryan SC and Christopher Freeman of Counsel, instructed by Slater & Gordon Lawyers. The Applicant was represented by Maeve McCarthy of Counsel instructed by Eastern Commercial Lawyers.
Evidence provided
The evidence provided in this matter consists of the following declarations:
Evidence in Support
·     John Rafferty, made 5 September 2010, with Annexures A and B[1]

[1] Annexure A consists of a chronology prepared by the Opponent in relation to the dispute in the New South Wales Supreme Court between the parties over use of the Trade Mark. Annexure B consists of a copy of the Plaintiff’s Court Book submitted for the Supreme Court action between the parties which will be explained later in this decision.
Evidence in Answer
·     Carl Mower, made 7 December 2010 with Attachments 1 to 5 and Exhibit CM-3.[2]
·     Carl Mower, made 22 December 2010 with Exhibit CM-4
[2] Exhibit CM-3 consists of a copy of the Defendant’s Court Book submitted for the previously mentioned court action.
The three declarations noted above comprise approximately 2200 pages of attachments, annexures and exhibits. Most of the material provided consists of copies of the court books which were submitted during legal proceedings between the parties in the Equity Division of the Supreme Court of New South Wales in 2010.[3] The court books include copies of additional affidavits made by both of the previously noted declarants as well as affidavits deposed by other persons in support of the relevant party’s position in the action. The evidence provided is therefore targeted towards the plaintiff’s pleadings and the respondent’s defence as required for the Supreme Court action rather than addressing the grounds for opposition . I will give a brief summary of the evidence of both parties at this point, and elaborate where necessary during my discussions later in this decision.
[3] Supreme Court of New South Wales Proceeding No. 291872 of 2009 reported at [2010] NSWSC 605.
The Opponent’s evidence
John Rafferty is the Chief Executive Officer of the Opponent. In his affidavit[4] for the Supreme Court action which forms part of Annexure B to his declaration provided as evidence in support, he states that the Opponent was established in 1949 when a small committee was formed (called the Coffs Ex-Services Memorial Club) to look after ex-services people and their families in Coffs Harbour. The Opponent opened for business as a club in 1957 and currently it occupies a site in the main street of the town of Coffs Harbour in New South Wales. He indicates that the Opponent’s club is the largest registered Club between Newcastle and Tweed Heads with approximately 28,500 members, 262 gaming machines and an annual turnover of AUD$30 million. The original club amalgamated with the Woolgoolga Bowling Club in 2001 and in 2008 with the Urunga Golf and Sporting Club, both of which then became part of a club group.
[4] Made 17 December 2009
Prior to 1996, Mr Rafferty states, the club operated under the name ‘Coffs Harbour & District Ex-Servicemen and Women’s Memorial Club Limited’ and adopted the colours blue and gold in its branding (the use of which colours has continued up to the present). In 1996 the club was re-branded ‘Coffs Ex-Services Club’ and it used this branding from 1996 up until 2008. The name was used with various slogans such as ‘We are Number One’ and ‘You’re Number One in the Centre of Everything’.
In 2008 Mr Rafferty says that the club decided that it wanted a new brand for the group of clubs to reflect its amalgamation with the Urunga and Woolgoolga clubs. At a meeting in April 2008 it was decided to rename the club group as the ‘C.EX Group’, and the following logo was adopted for the group:
In 2009 another re-branding exercise was undertaken, resulting in the adoption of the coloured logos shown here:
The new logos were first advertised in the local press in early July 2009 and on the same day the Opponent issued its first magazine, entitled ‘Xcite’, to the public with its new brand and logo. On 17 July 2009 advertisements including the new branding appeared on local television channels and on 18 July 2009 the branding was formally introduced to the public when the Opponent held its 60^th anniversary ball.
Mr Rafferty gives details of instances of confusion between the Opponent’s and Applicant’s clubs which he says have occurred subsequent to the Applicant’s adoption of the name ‘Club Coffs’ in its advertisements beginning in July 2009. A number of affidavits from individuals attesting to knowledge of these events were provided for the court proceedings, and they form part of the previously mentioned court book. Many of these affidavits have been made by staff members or other members of the Opponent’s club, and they attest to interactions with members of the public who attended the Opponent’s club for events which were in fact offered by the Applicant’s club.
On 17 December 2009, following an exchange of correspondence between the Opponent’s and Applicant’s legal representatives, the Opponent commenced its action in the Supreme Court of New South Wales.
The Applicant’s evidence
Carl Mower is the Chief Executive Officer of the Applicant. In respect of the Supreme Court proceedings, he swore affidavits on 19 January 2010, 17 March 2010 and 27 April 2010. These affidavits appear as part of Exhibit CM-3 to his declaration provided as evidence in answer to this opposition as do separate affidavits of Kevin McLaughlin and two other persons.
Mr Mower states that he was offered the position of CEO of the Applicant in February 2009.[5] He says that following his acceptance of the position he investigated the matter of a new name for the Applicant’s club, something which had been raised during his interview for the position, and which had been identified as a requirement during a strategic planning session conducted by the Applicant in August of the previous year.
[5] Affidavit made 19 January 2010
In April 2009 Mr Mower states that he suggested to the Applicant’s board that the club name should change to ‘Club Coffs’, which suggestion he says was positively received. In early June 2009 the Applicant’s board decided to change its trading name to ‘Club Coffs’, and in mid-June decided on a logo using the words. The chosen logo is shown here:
On June 24 2009 Mr Mower, having already registered the relevant domain name, applied to register the business name ‘Club Coffs’.[6] The new trading name and logo were introduced to club members at a special general meeting on 12 July 2009. Advertising using the new name and the associated logo appeared in the local press on 29 July 2009, with television advertising beginning on 3 August 2009. Mr Mower states that he made agreements and arrangements for advertising in both print media and television to continue and expand over the following months. External signage on the club itself was updated in mid-August 2009. The club website was launched on 3 August 2009 at
[6] Mower affidavit, 27 April 2010, states that “in anticipation of being offered and accepting the position of Chief Executive Officer and being responsible for the rebranding of the Club, after checking that the “clubcoffs.com.au” domain name was available I registered [it] on 24 February 2009.”
Additional advertising occurred in October 2009 through placement of a club newsletter in “The Coffs Coast Advocate”, a local newspaper, as well as via a banner sign at a sports stadium owned by the Coffs Harbour City Council. The Applicant launched a loyalty card program in February 2010 as well as participating in a Southern Cross Media promotion in the same month.
Mr Mower says that since 17 February 2010 signage at the Applicant’s club has included a disclaimer stating that it has no connection with the Opponent’s club.
Exhibit KM-1 to the McLaughlin declaration consists of a copy of a book written about the history of the Applicant’s club from its inception in 1968 up until its 25^th anniversary in 1994. Apart from identifying the length of time for which the club has existed, the book itself does not provide any information relevant to either the Applicant’s or Opponent’s use of the trade mark under consideration. However, the Opponent’s pleadings and the Rafferty affidavit which both form part of the Opponent’s court book note that the Applicant began operation as a licensed club late in 1969 on a site which is approximately one kilometre west of the Opponent’s club. The Applicant’s club was generally known as the ‘Catholic Club’ or the ‘Coffs Harbour Catholic Club’ until the re-branding exercise in 2009. It operated a website under the ‘Coffs Harbour Catholic Club’ name for a number of years. The club has a membership of approximately 6000 members.
Supreme Court Proceedings
This matter was settled on the basis of an undertaking made by the Applicant that was acceptable to the Opponent and to the Court. Proceedings were dismissed save as to the matter of costs and the reasons provided by Lindgren J relate to the question of costs, with only enough reference to the arguments and evidence in the matter as is required to explain his reasoning.
The Opponent in this opposition was the plaintiff in the court matter. In that proceeding the Opponent claimed that the defendant (the Applicant in this opposition) had contravened sections 52 and 53(c) and (d) of the Trade Practices Act 1974 (‘the TPA’) as well as engaging in passing off because of its use of the name ‘Club Coffs’. The Applicant had registered that name as a business name on 24 June 2009, had announced the name change to its members on 12 July 2009 and had launched it publicly on 29 July 2009. Lindgren J noted that the application for registration as a trade mark was filed but had not been finalised when the Court issued its reasons on 2 June 2010.
In giving a brief history of the original action, Lindgren J observed that the Opponent “has never itself used ‘Club Coffs’ as its name or badge. It relies on the general reputation associated with that name in the minds of the public”. He also observed that the Opponent used signage on its premises and documentation in which the word “Coffs” was very prominent. He noted that the Opponent had rebranded itself in 2008, and again in 2009 when the first attempt at re-branding proved not to be particularly successful. He stated that the two clubs engaged in their rebranding exercises quite independently of each other, with no suggestion that either club had intentionally or deliberately sought to trade off the re-branding activities of the other.
The undertaking offered by the Applicant and accepted by the Court is as follows:
On a no admissions basis:
1.The [Applicant] undertakes through its counsel to the Court that from fourteen days from today on a permanent basis it will include the words “On West High” on all external signage and advertising of the [Applicant].
2.For the avoidance of doubt, this undertaking of the [Applicant] does not relate to any internal signage, uniforms, advertising or promotional material of the [Applicant] club and does not include the [Applicant’s] domain name.
The Notice, Onus and Relevant Date.
The Notice nominated grounds for opposition under the following sections of the Act:
In its submissions for the hearing, the Opponent advised that it did not intend to pursue the grounds nominated under sections 44 and 62A. I therefore treat those two grounds as abandoned.
The onus is on the Opponent to establish one or more of the grounds which it has pursued. The standard of proof is the balance of probabilities.[7]
[7] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [26]; Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])
The date at which any ground must be established is the application filing date, that is, 10 August 2009. In respect of section 58, however, use prior to the application date by either party will be relevant.
Discussion
The Opponent submitted that the terms of settlement of the Supreme Court proceedings between the parties have effectively removed any freedom that the Applicant may have had “to claim the trade mark and use it in commerce”. The Applicant submitted that the Supreme Court proceedings are relevant to this opposition because the judgment “creates an estoppel (or further or alternatively that the Delegate should be reluctant to depart in the Opposition Proceedings from the findings made)” in respect of certain issues.[8] This opposition, however, is to be decided as at 10 August 2009, well prior to the finalisation of the Supreme Court proceedings. The result of the proceedings will therefore have no effect on my decision.
[8] These issues include matters of intentional or deliberate copying and intentional deception on the Applicant’s part; as well as use of the Trade Mark as a business name or trade mark and development of a reputation in the Trade Mark on the part of the Opponent.
A convenient place to begin my consideration of the Applicant’s trade mark is by assessing it in respect of the provisions of section 41 of the Act.
Section 41 – trade mark not distinguishing Applicant’s services
Section 41 of the Act relevantly provides:
(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).

Section 41 of the Act provides a scheme for assessing the amount of inherent adaptation to distinguish the goods or services of one person from the similar goods or services of another residing in the trade mark. The scheme of section 41 and how it should operate was discussed at some length by Branson J in the Oregon decision[9]. Her words are often quoted and I will not quote them again here. However, in essence Branson J described what the Registrar must do in making a decision under section 41 of the Act. The Registrar is to consider subsections 3 to 6 of section 41, which will result in her reaching one of the following conclusions:
(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 (41(3)); 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 (41(6)); 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 (41(5)).
[9] Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998)40 IPR 498
Branson J determined that if the Registrar reached conclusion (b) or (c) then she is, within the meaning of subsection 41(4) “unable to decide the question”. A decision in respect of paragraph (b) brings into operation the provisions of subsection 41(6). If the Registrar considers that the trade mark is devoid of adaptation to distinguish the Applicant’s goods or services, the onus then falls on the Applicant to substantiate that, because of the extent to which it has used its trade mark before the filing date, the trade mark does do the job of distinguishing the Applicant, and did so at the application date.
If the Registrar reaches conclusion (c) then the provisions of paragraphs (a), (b) and (c) of subsection 41(5) are brought into operation. The Registrar may then consider the combined effect of the matters set out in those paragraphs in section 41(5), and decide whether or not the trade mark does already distinguish, or is capable in the future of distinguishing, the Applicant’s goods and services.
The Opponent submitted the following as part of its arguments that the Trade Mark does not meet the requirements of section 41:
An important applicable principle is that ordinary or technical words which are merely descriptive of the character or quality of goods or services (i.e. “Club”) are not inherently adapted to distinguish; Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417. Equally, the name of a geographical location (i.e. “Coffs”) is not inherently adapted to distinguish – another trader could legitimately use that term in relation to services provided in or associated with such a place.
As Stone J summarised the position in Kenman (at [145])[10]:
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 the present case the joinder of the common word “club” with the geographical name (albeit abbreviated) “Coffs” does not meet the negative test recognised by the authorities, namely that the application mark have no associations or significations that prevent it from being inherently adapted to distinguish.
[10] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCA 573; (2002) 56 IPR 30
In support of these contentions the Opponent also referred me to the Persian Fetta[11] and Colorado[12] decisions which it considered to be relevant to the arguments in respect of the Trade Mark and its status in respect of the provisions of section 41.
[11] Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 90 IPR 117
[12] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246
In rebuttal, the Applicant argued the following:
The Applicant accepts of course, that a mark which consists of the name of a place, with no addition save a description or designation of the goods, will rarely be prima facie distinctive. However, that is not the type of sign under consideration here. Like the “Home Beautiful” mark that was discussed in Pacific Publications Pty Ltd v IPC Media Pty Ltd,[13] the “Club Coffs” mark reverses the usual and expected syntactical order of the words, so that the noun “Club” is placed before the abbreviated geographical name “Coffs” to create something which is unusual and unexpected, with the consequence that the words lose, to an extent, their ordinariness, the combined words taking on a unity of expression which they would not otherwise have. The syntactical reversal results in a capacity of the mark to “arrest and to … appeal to the imagination” in the manner described in Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968[14] where the mark under consideration was “sounds different” used in relation to radio broadcasting services. The [Persian Fetta] decision thus does not assist the Opponent as it was concerned with a phrase in which there was no syntactical reversal.
[13] [2003] FCA 104; (2003) 57 IPR 28
[14] [2004] FCA 968; 61 IPR 257
The relevant date at which the decision about the Trade Mark’s amount of inherent adaptation to distinguish must be made is the priority date.[15] The Trade Mark must be considered as a whole, it should not be dissected and grounds for refusal relevant to the individual parts applied as if to the whole.
[15] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at 30
The so-called “negative test” expounded by Stone J in Kenman refers to ‘associations or significations that prevent it from being inherently adapted to distinguish’, and the Opponent has submitted that a combination of the word ‘club’ with the word ‘Coffs’ puts the Trade Mark squarely into this category of trade marks. I agree with this submission.
The word ‘club’ is relevantly defined in the Macquarie Dictionary[16] as follows:
· a group of persons organised for a social, literary, sporting, political, or other purpose, regulated by rules agreed by its members.
· the building or rooms owned by or associated with such a group, sometimes lavishly decorated and furnished, and offering dining, gambling, theatrical, and other facilities to members.
[16] The Macquarie Dictionary Online , Macquarie Dictionary Publishers Pty Ltd.
In Australia, the word ‘Coffs’ signifies only one thing – it is an abbreviation or a shorthand reference to the large coastal town of Coffs Harbour which is located on the mid North Coast of New South Wales and is a very popular holiday and tourist destination. The combination of the two words thus has the clearly defined meaning as a reference to a club of some description situated in the town of Coffs Harbour. This construction places the Trade Mark firmly into a category of trade marks which “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 [services]”.[17]
[17] Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 at 513 (the Michigan case)
The Trade Mark as filed is a simple combination of the words ‘Club’ and ‘Coffs’. It contains no devices, embellishment or colours within it. I am satisfied that the provisions of subsection 41(5) apply to the Trade Mark. I consider that the inversion (referred to by the Applicant as “syntactical reversal”) of the words which comprise the Trade Mark is sufficient to provide it with some slight amount of inherent adaptation to distinguish, and thus remove it from the purview of subsection 41(6). The onus then falls upon the Applicant to provide evidence of use or of other circumstances sufficient to satisfy me that the Trade Mark does or will distinguish the Applicant’s services.
The Applicant states that it first used the Trade Mark on 29 July 2009, which is a matter of days prior to the priority date of 10 August 2009. The evidence provided shows use of the logo shown previously at paragraph 17 which, while it incorporates the Trade Mark, is significantly different in appearance.
The Applicant did not provide any evidence about income or advertising expenditure accruing to it since the priority date of the Trade Mark. The greatest bulk of the evidence provided shows use of the Trade Mark in the logo form shown previously. While there is some reference to the Applicant by the plain words ‘Club Coffs’ in press clippings forming part of the evidence, these instances are few and far between, and most of them incorporate use of the logo as well.
From February 2010 the Applicant amended its logo by incorporating into it a reference to its street address, resulting in the following:
When considering use of a trade mark in trade, the provisions of Section 7 of the Act may be taken into account. Sub section 7(1) of the Act, provides:
(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Both versions of the logo for which the Applicant has provided evidence of use contain significant additions to the plain words for which it applied. These additions do affect the identity of the Trade Mark. A number of decisions made by the Registrar have determined that the term “substantially affect the identity of the trade mark” is akin to the term “substantially identical” as it is found in section 44 of the Act, for example.[18] In effect, for the provisions of subsection 7(1) to be relevant to an applicant’s claimed use of its trade mark in trade, the use demonstrated must be in respect of a version of the Trade Mark which passes the test for substantial identity.
[18] See,for example: AMW Projects Pty Limited v Ray Mullins & Sons Pty Limited [2000] ATMO 17; 48 IPR 409; Kiwi Munchies Pty Ltd v Ingham's Enterprises Pty Ltd [2004] ATMO 30 (3 June 2004) (unpublished); Link Recruitment Pty Ltd V Link Employment And Training Inc [2006] ATMO 39; 69 IPR 614
The generally accepted articulation of the test for substantial identity may be found in the words of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407. Windeyer J stated that substantial identity between trade marks is to be judged by comparing the marks side by side, noting their similarities and differences and assessing these elements while having regard to the essential features of the registered trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
In comparing the Trade Mark with the two logos for which evidence has been provided, it is clear that there are points of similarity, namely the words ‘Club Coffs’. The logos, however, contain devices, additional words as well as colours, all of which are features which serve to create dissimilarities between the logos and the Trade Mark. In particular, the logo which includes the words ‘On West High’ must be seen as having a different identity because the addition of the street address clearly identifies the club as one at a specific location, a feature which does not exist in either the Trade Mark or the logo shown at paragraph 17. I am satisfied that the logos which the Applicant has used and the Trade Mark for which is has applied are deceptively similar, but they are not substantially identical. The provisions of subsection 7(1) therefore do not assist the Applicant.
Having found that the provisions of subsection 7(1) may not be applied in the Applicant’s favour, it is likewise not possible for the provisions of subsection 41(5) to be met. The Applicant has not established via the evidence of use which it has provided that the Trade Mark is adapted to distinguish its services. Thus the ground for opposition raised under section 41 is established.
As I have found one ground for opposition has been established, it is not necessary for me to consider any of the other grounds pursued at the hearing, though these and any others could be relied upon at a hearing in the Federal Court should this decision be appealed.
Decision
Section 55 of the Act provides the following:
Decision
55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The ground for opposition under the provisions of section 41 has been established. I refuse to register trade mark application 1314130.
Costs
Costs normally follow the event and I see no reason to depart from that practice in this instance. I award costs against the Applicant according to the Official Scale.
Alison Windsor
Hearing Officer
Trade Marks and Designs Hearings
24 November 2011

Delegate:	Alison Windsor
Representation:	Opponent: Dermot Ryan SC, and Christopher Freeman of Counsel, instructed by Slater & Gordon Lawyers Applicant: Maeve McCarthy of Counsel instructed by Eastern Commercial Lawyers
Decision:	2011 ATMO 118 S52 Opposition: grounds pursued under ss 41, 42(b), 43 and 58 – trade mark not inherently adapted to distinguish – evidence does not show use of substantially identical trade mark – provisions of subsection 7(1) may not be applied – trade mark not capable of distinguishing – opposition successful – costs awarded against Applicant.

[2011] ATMO 118

24 November 2011