Commonwealth v Primary Health Care Ltd
[2014] ATMO 92
•24 September 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by the Crown in right of the Commonwealth of Australia and 8 Others to registration of trade mark applications 1326966 & 1326967(35) - PRIMARY HEALTH CARE & PRIMARY HEALTH CARE DEVICE - filed in the name of Primary Health Care Limited.
Delegate: | Jock McDonagh |
Representation: | Opponent: Julia Baird SC, instructed by the Australian Government Solicitor Applicant: John Hennessy SC, instructed by Gilbert + Tobin Lawyers |
Decision: | 2014 ATMO 92 Section 52 opposition to registration – 41, 42 and 43 grounds pressed - s 43 ground of opposition established – registration refused |
Background
This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade marks filed by Primary Health Care Limited (‘the Applicant’). Relevant details of the applications are set out below.
Trade marks: | PRIMARY HEALTH CARE |
Trade mark applications: | 1326966 1326967 (“PHC mark”) (“PHC logo”) |
Filing Date: | 6 October 2009 |
Specification: | Class 35: Medical centre business management; medical centre business administration; service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders |
Endorsements: | Provisions of subsection 41(5) applied. |
The applications were examined in compliance with section 31 of the Act and, following a divisional application that removed classes 9 and 42 specifications from the parent applications, were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 13 October 2011.
The Crown in right of the Commonwealth of Australia together jointly with the eight Crowns in the right of the various States and Territories (‘the Opponents’) filed Notices of Opposition (‘the Notices’) to the registration of the application on 12 January 2012. Thereafter the Opponents and Applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the matter in Sydney on 18 June 2014 as a delegate of the Registrar of Trade Marks. Julia Baird SC, instructed by the Australian Government Solicitor, represented the Opponents. The Applicant was represented by John Hennessy SC, instructed by Gilbert + Tobin Lawyers.
Grounds of Opposition
The Notices nominated all of the grounds of opposition available under the Act and listed on the pro-forma Notice. The onus is upon the Opponents to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also 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 time at which the grounds of opposition must be established is the date of filing of the applications for registration[2].
[2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595
Evidence
The evidence consists of the following declarations:
| Declarant | Position | Date Made | Exhibits |
| Evidence in Support | |||
| Professor Chris Baggoley (“Commonwealth”) | Chief Medical Officer, Australian Government | 13.12.12 | CJB-1 |
| Jenny Cleary (“Northern Territory”) | Acting Executive Director, Top End Hospital Network, NT Department of Health | 27.12.12 | JEC-1 |
| Dr Rosscoe Taylor (“Tasmania”) | Chief Health Officer and Director of Public Health Tasmanian Government | 18.12.12 | RT-1 |
| Nicki Dantalis (“South Australia”) | Director Corporate Governance and Policy, Health System Development, SA Department of Health and Aging | 20.12.12 | ND-1 |
| Ross O’Donoughue (“Australian Capital Territory”) | Executive Director Policy and Government Relations ACT Government Health Directorate | 21.12.12 | RO-1 |
| Professor Gary Geelhoed (“Western Australia”) | Chief Medical Officer, Western Australia, and principal medical advisor to WA Minister for Health and WA Department of Health | 2.01.13 | GCG-1 |
| Catherine Katz (“New South Wales”) | Director Inter-Government and Funding Strategies Branch and integrated Care, Strategies and Resources Division, NSW Ministry of Health | 21.12.12 | CK-1 |
| Professor Jeannette Rosita Young (“Queensland”) | Chief Health Officer, Queensland | 9.01.13 | JRY-1 |
| Professor Christopher Willima Brook (“Victoria”) | Executive Director, Wellbeing Integrated Care and Aging Division (“WICA”) Victorian Department of Health, and Adjunct Professor of the School of Medicine, Deakin University | 10.01.13 | CWB-1 |
| Evidence in Answer | |||
| David Peter Neil Symons (“Symons”) | Media consultant | 5.07.13 | DS-1 |
| Joseph Max Kosterich (“Kosterich”) | General practitioner | 26.06.13 | JK-1 |
| Peter Julian Stiebel (“Stiebel”) | General practitioner | 24.06.13 | PS-1 |
| Stephen Thomas Moore (“Moore”) | General practitioner | 28.06.13 | SM-1 |
| Randa Ramzy Selim (“Selim”) | General practitioner | 28.06.13 | RS-1 |
| Mark Harold George Overton (“Overton”) | General practitioner | 28.06.13 | MO-1 |
| Anne Louise Gilroy (“Gilroy”) | General practitioner | 4.07.13 | AG-1 |
| Frances Claire St John (“St John”) | Lawyer for Applicant’s legal representatives | 11.07.13 | FSJ-1 to FSJ-5 |
| Claire Gabriel (“Gabriel”) | Executive Medical Director of Applicant | 1.07.13 | CG-1 |
| Edmund Gregory Thomas Bateman (“Bateman”) | Managing Director of Applicant | 9.09.13 | EB-1 to EB-32 |
| Mendel (Michael) Monk (“Monk”) | Executive Medical Director of Applicant | 1.07.13 | MM-1 |
| Milton Sales (“Sales”) | General practitioner | 31.07.13 | MS-1 |
| Frances Claire St John (“St John 2”) | Lawyer for Applicant’s legal representatives | 24.07.13 | FSJ-6 |
| Marshall Andrew (“Andrew”) | General practitioner | 16.07.13 | MA-1 |
| John Rogers (“Rogers”) | General practitioner | 9.07.13 | JR-1 |
| Nicolas Aitken (“Aitken”) | Consultant for Applicant | 10.07.13 | NA-1 |
| Lauren Eade (“Eade”) | Lawyer for Applicant’s legal representatives | 7.08.13 | LFE-1 |
| Siabon Seet (“Seet”) | Partner in Applicant’s legal representatives | 12.08.13 | SS-1 to SS-13 |
Ms Baird, for the Opponents, pressed only the grounds under each of sections 41, 42 and 43 of the Act.
Discussion
The Applicant has been providing business management and administration services to medical centres since 1985. It began providing such services for a 24-hour medical centre owned by Dr Edmund Bateman. It provides administrative support services to general practitioners (GPs), medical specialists, physiotherapists, nurses and allied healthcare workers operating in medical centres owned and maintained by the Applicant. There are now some 87 such centres throughout Australia.[3]
[3] Bateman, particularly at paragraphs 16 to 18, 27 to 31, and 34.
In 2010, prior to this opposition, the Applicant pursued legal proceedings in the Federal Court against Australian General Practice Network Limited (“the Network”) (and others). The suit concerned the use or anticipated use of PRIMARY HEALTH CARE in the names or trade marks of various ‘divisions’ of the Network; for example Central Queensland Primary Health Care Network Pty Ltd.[4]
[4] Seet, paragraphs 2 to 12.
During the course of the Federal Court proceedings, the ‘divisions’ of general practice within the Network were re-branded as “Medicare Local”, and the Network and others gave evidence that they did not intend to use any words incorporating the term “primary health care” as a corporate name, trade mark or domain name.[5]
[5] Seet, paragraphs 30 and 31.
The Federal Court proceedings were discontinued, on terms including that the Applicant was not restrained from taking further action in relation to use of PRIMARY HEALTH CARE as a trade mark or badge of origin; however, the Applicant could take no action in relation to the use of the phrase as a descriptive term.[6]
[6] Seet, paragraph 38.
There was a great deal of evidence filed by all parties, but especially the Opponents. Much of the Opponents’ evidence was directed to government and policy considerations relating to what was considered to be “primary health care” from the point of view of each of the governments of the Commonwealth, States and Territories.
Baggoley sets the scene for all of the Opponents’ perception of what “primary health care” entails. Baggoley points to the World Health Organisation (WHO) International Conference on Primary Health Care, held at Alma-Ata in the then USSR in September 1978. That conference published a declaration, which considered community health to be a human right and made a number of points including Article IV, which states inter alia:
Primary health care is essential health care … made universally accessible to individuals and families in the community … at a cost that the community and country can afford to maintain … [i]t forms an integral part … of the country’s health system … [i]t is the first level of contact of individuals, the family and community with the national health system … and constitutes the first element of a continuing health care process.
Many of the Opponents’ submissions went to the descriptive nature of the words in both the PHC mark and the PHC logo, particularly with regard to the WHO Alma-Ata Declaration, and the how this related to the grounds of opposition.
Apart from Bateman’s detailed description of the formation of the Applicant and its consequent business activities conducted in association with the PHC mark and PHC logo, most of the declarations were from GPs who used or had used the Applicant’s services and associated the words “primary health care” with the Applicant’s services. I note also, that such declarations relied on annexed affidavits from the Federal Court proceedings.
Bateman, in paragraphs 42 to 48 details the use of the trade marks in relation to its medical centres. Bateman states that the PHC mark, and sometimes the PHC logo, are consistently and prominently displayed at each of the premises operated by the Applicant throughout Australia; exhibits EB11 and EB-12 showed the signage used at the various locations. Exhibit EB-15 showed the PHC logo on the uniforms worn by support staff (including nurses and receptionists) at each of the 87 medical centres operated by the Applicant.
Grounds of Opposition
Section 43 provides:
43Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
To establish a ground of opposition under section 43, there must be an inherent connotation within the trade mark which is likely to deceive or cause confusion. The comments of Gyles J in Pfizer Products Inc v Karam[7] outlined the history of section 43 of the Act, stating that:
[7] Pfizer Products Inc v Karam (2006) 70 IPR 599 (at [52 -53]).
Section 43 does not have a long pedigree. It was enacted pursuant to Australia’s obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS and the 1992 Working Party Report led to a 1994 Bill containing the following cl 42(2):
‘An application for the registration of a trade mark in respect of particular goods or services must be rejected if the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion regarding:
(a)the nature, quality, origin, intended purpose, or some other characteristic, of the goods or services; or
(b) any connection or relationship that they may have with any particular person.’That Bill was enacted but never came into force. In the 1995 Bill (and Act) cl 42(2) of the 1994 Bill was replaced by what is now s 43 of the 1995 Act. The Explanatory Memorandum stated that cl 43 provides:
‘That an application for registration must be rejected if the trade mark ... because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods or services.’
[Emphasis added]It seems that the final form of s 43 is a wider version of the earlier clause with a similar purpose.
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question…
Placing particular emphasis on a strict dictionary definition of the word “connotation” may have the effect that if trade marks consisted only of obvious or primary meanings (i.e. not secondary or implied) these would not amount to “connotations” and would therefore fail the threshold test. Under such an interpretation, an opposition under section 43 would fail, despite the use of the trade mark being likely to deceive or cause confusion in the Australian marketplace.
However, as Hearing Officer Heath Wilson observed in Mount Everest Mineral Water Ltd v Himalayan Mineral Water [2010] ATMO 85, paragraphs [9] and [10]:
[I]t is clear from the Explanatory Memorandum and the 1994 Bill referred to above that this was not the intention of the section at the time it was introduced. A direct expression may, (if not technically a connotation), still amount to a signification inherent to the trade mark. Therefore, if a trade mark consists of a direct statement that the goods will originate from a particular region or outlines the nature of the goods, and there is scope within the goods/services for that statement to be misdescriptive, confusion will result. The intention for section 43 to also cover misdescriptive trade marks has its roots in the provisions of the 1905 Act, as stated in Re “Orlwoola” Trade Mark[8] where Cozens-Hardy MR decided:
If the goods are wholly made of wool the words are the natural and almost necessary description of them. If they are not made wholly of wool it is a misdescription which is so certain to deceive that its use can hardly be otherwise than fraudulent. In either case the words are utterly unfit for registration as a trade mark.
Almost eighty years later, in relation to section 28(a) of the Trade Marks Act 1955[9], the trade mark BUBBLE UP & DEVICE was also held by King J to be misdescriptive if it was applied to non-aerated beverages in class 32.[10] While not explicitly clarified in more recent Hearings decisions on section 43, it appears that a similar reasoning has been applied in Westchester Media Company, L.P v Australian Polo Magazine Pty Ltd[11] where the delegate commented that she would have found magazines bearing the trade mark “POLO Magazine” which did not contain material on the game of Polo to be misleading to the purchasing public. Another potentially descriptive trade mark was considered in Effem Foods Pty Ltd v Star-Kist Foods, Inc[12] where the delegate noted that: “the term "meaty bone" is a powerful description and, conversely, potentially misdescriptive where the goods are not meaty bones.”
[8] Re “Orlwoola” Trade Mark (1909) 26 RPC 850 (CA UK) at 860.
[9] The predecessor to section 43 of the Trade Marks Act 1995.
[10] Seven-Up Co v Bubble Up Co Inc (1987) 9 IPR 259.
[11] Westchester Media Company, L.P v Australian Polo Magazine Pty Ltd [2000] ATMO 100
[12] Effem Foods Pty Ltd v Star-Kist Foods, Inc (2000) 50 IPR 121
I find that section 43 is intended to cover circumstances including the opposed application. While it might be the case that the various health care professionals who lease rooms from the Applicant and utilize its services associate the words “primary health care” with the Applicant’s medical centre business management and administration services, the same cannot be said of the many patients attending the Applicant’s premises to consult the various health care professionals.
I consider that such potential consumers of health care services would firstly (and primarily) view the words PRIMARY HEALTH CARE as a trade mark that denotes a connection between the Applicant and its medical centres. Accordingly, the denotation is firstly as a trade mark of the applicant, despite any descriptive matter contained within. The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the services provided. It does not follow that all trade marks containing descriptive matter would attract a section 43 objection. Only if there is a real and tangible danger that the consumer’s expectations may turn out to be false and result in confusion, would section 43 be triggered.
“…Likely to deceive or cause confusion”
As addressed above, if a trade mark contains a description of the services, deception or confusion is likely to result if the trade mark is used for services which are not of that description.[13] The opposed trade marks include a description of services that are not in fact provided by the applicant.
[13] Westchester Media Co, LP v Australian Polo Magazine Pty Ltd (op.cit).
Patients attending the Applicant’s medical centres are likely to believe that the Applicant is responsible for the health and medical services provided by practitioners within the medical centres. Patients are unlikely to appreciate that the Applicant is responsible only for the provision of management and administrative services to the health and medical practitioners, and not for professional governance or the quality of the health care.
It is also possible for patients who are aware of the literal meaning of “primary health care” or the meaning as stated in the WHO Alma-Ata Declaration to mistakenly believe that the Applicant was in some way associated with government provided, or sponsored, community health initiatives.
I am satisfied that the connotation that the Applicant provides primary health care services is likely to cause confusion. Therefore, I am satisfied that the ground of opposition under section 43 of the Act has been established
Decision
Section 55: Decision
(1) Unless subsection (3) applies to the proceedings, 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.
Subsection (3) is not applicable in this case. The ground of opposition under section 43 of the Act has been established. I accordingly refuse to register trade mark applications 1326966 and 1326967.
I have only found it necessary to address the section 43 ground in this decision. Of course, should the decision be appealed, it is open to the Opponents to plead any ground it considers relevant in proceedings before the Court.
Costs
In the event that the Opponents prevailed, Ms Baird sought an award of costs in the Opponents’ favour. As the successful party, the Opponents are entitled to their costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Regulations, with costs for the second opposition to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.
Jock McDonagh
Hearings Officer
Trade Marks Hearings
24 September 2014
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