Darwin Funeral Services Pty Ltd

[2019] ATMO 142

TRADE MARKS ACT 1995

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

ReTrade Mark Application number 1874441 (45) – DARWIN FUNERAL SERVICES - in the name of Darwin Funeral Services Pty Ltd

Delegate:	Nicholas Smith
Representation:	Applicant: Andrew Sykes of counsel instructed by Jacqueline Leong of Phillips Ormonde Fitzpatrick
Decision:	2019 ATMO 142 Trade Marks Act 1995 (Cth) – Request to be heard under section 33(4) of the Trade Marks Act 1995 - s 41 considered – trade mark is not to any extent inherently adapted to distinguish the designated services – evidence of use insufficient – trade mark application rejected

Background

1. On 6 September 2017, Darwin Funeral Services Pty Ltd (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (‘Act’).

Application Number:	1874441
Filing Date:	28 September 2017
Services:	Class 45: Burial (funeral) services (‘Applicant’s Services’)
Trade Mark:	DARWIN FUNERAL SERVICES	(‘Trade Mark’)

2. The application was examined as required under s 31 of the Act. On 24 October 2017 IP Australia issued a first adverse examination report, identifying a ground for rejection pursuant to s 41 of the Act (‘First Report’).  The examiner stated (paraphrased) that as the Trade Mark refers to the provision of funeral services in Darwin other traders should be able to use DARWIN FUNERAL SERVICES or something nearly resembling this in connection with goods and services similar to the Applicant’s Services.

3. On 15 May 2018, the Applicant filed a Response to the First Report, including a Statutory Declaration of Brendan Roderick John McNamee, co-owner and director of the Applicant, with Exhibits BM-1 to Confidential BM-28 made on 14 May 2018 (‘McNamee 1’) which purported to give evidence of use of the Trade Mark. On 15 June 2018 IP Australia issued a second adverse examination report, maintaining the ground for rejection pursuant to s 41 of the Act (‘Second Report’).  The examiner noted that, while the duration of use was significant, the sales revenue and expenditure on advertising was neither significant nor sufficient to displace the descriptive meaning of the words.  Furthermore much of the use of the Trade Mark was alongside a distinctive image element which amounted to use with additions that substantially affected the identity of the Trade Mark. 

4. On 30 September 2018, the Applicant filed a Response to the Second Report, including a Statutory Declaration of Brendan Roderick John McNamee with Exhibit Confidential BM-1, made on 27 September 2018 (‘McNamee 2’) which provided confidential sales figures from 2007 to 2017. On 31 October 2018 IP Australia issued a third adverse examination report, maintaining the ground for rejection pursuant to s 41 of the Act (‘Third Report’). The examiner noted that, while the sales figures were of a reasonably high amount, they were insufficient to apply the provisions of s 41(3) of the Act.

5. On 24 April 2019, the Applicant filed a Response to the Third Report, including written submissions and the following statutory declarations:

• Brendan Roderick John McNamee with Exhbits BM1 to BM8, made on 20 February 2019 (‘McNamee 3’) which provided further evidence of the use of the Trade Mark. 

• Dominic Fracaro, company director of Parkmore Investments Pty Ltd trading as Airducter, a supplier of commercial and industrial air-conditioning services, made on 23 April 2019 (‘Fracaro Declaration’).  The Fracaro Declaration gives evidence that the declarant and his company has provided metal liner products to the Applicant since 1983 and that the Applicant has a well known reputation in the Northern Territory.  

• Giuseppe Randazzo, company director of North West Constructions, a company that supplies wooden coffins, including for the Applicant, made on 24 April 2019 (‘Randazzo Declaration’). The Randazzo Declaration gives evidence that the Applicant has been involved in funeral services for 55 years and has a well-known reputation in the Northern Territory. 

• Graeme Lee, operations manager with Hellmann Worldwide Logistics Pty Ltd, a company that handles overseas reparations for the Applicant, made on 17 April 2019 (‘Lee Declaration’). The Lee Declaration gives evidence that the declarant has, in various capacities, assisted the Applicant with reparations since the 1970s, that there are no other funeral homes using the name/mark Darwin Funeral Services in the Northern Territory and that the Applicant has a well-known reputation in the Northern Territory. 

• John Anictomatis, businessman and former administrator of the Northern Territory, made on 18 April 2019 (‘Anictomatis Declaration’). The Anictomatis Declaration gives evidence that the Applicant has been involved in funeral services for 55 years and has a well-known reputation in the Northern Territory.  The Anictomatis Declaration also notes that the Applicant will repatriate 3-4 Greek-Australians to Greece for burial each year and the Declarant assists the business with translation and authentication of documents.

• Reverend Patricia Willams OAM, Honorary Associate Priest of Christ Church Cathedral in Darwin, made on 17 April 2019 (‘Williams Declaration’). The Williams Declaration gives evidence that the Applicant has a well-known reputation in the Northern Territory. 

6. On 22 May 2019 IP Australia issued a fourth adverse examination report, maintaining the ground for rejection pursuant to s 41 of the Act (‘Fourth Report’). The examiner noted that much of the evidence showed use of the business name rather than the Trade Mark. On 24 June 2019, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act.

7. As a delegate of the Registrar of Trade Marks I heard this matter on 4 September 2019.  Andrew Sykes, representing the Applicant, made oral submissions after having earlier provided me with an outline of written submissions in accordance with the pre-hearing directions I had given.  Also present were Jacqueline Leong of Phillips Ormonde Fitzpatrick and Charlotte Walker, manager of the Applicant.

Legislative framework

8. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. Section 17 of the Act defines a trade mark as:

What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

9. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[1] Regarding the present application, the only ground for rejection identified is under s 41 of the Act.

[1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].

1. Section 41 of the Act 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).

1. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[2] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [2] (1998) 40 IPR 498, 505.

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] 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 [Applicant’s Services]. [that is, s 41(4) applies][3]

   [3] [2017] ATMO 25, [38]-[40].

2. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

   (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).
   
   (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
   
   (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
   
   (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
   
   (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
   
   (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
   
   (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
   
   (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
   
   (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
   
   (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
   
   (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
   
   (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71]. [4]

   [4] [2017] FCAFC 56 at [236].

3. The Applicant concedes in its submissions that the Trade Mark lacks inherent distinctiveness but submits that the Trade Mark is to some extent inherently adapted to distinguish the Applicant’s Services (that is, s 41(4) applies). Its submissions in respect of this point are summarised below:

• The Trade Mark does not immediately give the impression of a common spoken phrase, unlike ‘funeral services in Darwin’ or ‘funeral services from Darwin’, which denote the relationship between the services and the location.

• The words ‘funeral services’ are not directly descriptive of burial services.

• A finding that the Trade Mark is not to any extent inherently adapted to distinguish will ordinary involve finding direct meaning without the possibility of unspecific meaning.  The Applicant refers to cases involving the marks TENNIS WAREHOUSE, SOUNDS DIFFERENT and ASK A LOCAL, all of which were found to be, to some extent inherently adapted to distinguish.

• As Darwin is a very small city, the market for burial services in the city is small and as such it is difficult to say conclusively that the Trade Mark lacks all inherent ability to distinguish due to other traders wanting to use it as a direct reference to their services since other traders may want to provide funeral services over a broader geographic area.   

1. I do not accept any of the Applicant’s submissions on this point and consider that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services (that is, s 41(3) applies). The ordinary signification of ‘Darwin Funeral Services’ are funeral services offered in Darwin. The Applicant seeks to register the mark for ‘Burial (funeral) services’. The Trade Mark, consisting of a geographical term and a direct description of the services offered, is directly descriptive of the Applicant’s Services and other traders wishing to offer funeral services in Darwin might legitimately need to use the Trade Mark in respect of the Applicant’s Services for its ordinary meaning, that is funeral services offered in Darwin. In particular I do not accept the Applicant’s submissions that traders would not want to use a term that consists of ‘geographical reference + goods/services’ to describe their services; such a combination is very common across industries in Australia.

2. Furthermore while I note that the Applicant can point to certain examples where this office has registered marks that consist of ‘geographical reference + goods/services’, such examples are isolated and I am not aware of all of the circumstances surrounding their acceptance or registration. Furthermore, the prima facie acceptance of such trade marks runs against the accepted approach of s 41, reflected in the note to s41 which states (paraphrased) that trade marks that are not to any extent inherently adapted to distinguish are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate… the geographical origin of the services. Such is the case with DARWIN FUNERAL SERVICES.

3. As the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services, the Trade Mark must be rejected unless the evidence before me establishes that the Applicant has used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Applicant’s Services as being those of the Applicant. To establish that a sign which is not to any extent inherently adapted to distinguish does in fact distinguish typically requires evidence of extensive widespread use and exposure to the Australian public of that Trade Mark over a long period of time and this use must have occurred before the filing date. I note the Applicant’s Submissions that there is a public interest in the Trade Mark being registered; that is not a relevant consideration in the application of s 41(3) of the Act. The only matter I am permitted to consider is as stated above; whether at the filing date the Trade Mark did in fact distinguish the Applicant’s Services as being those of the Applicant.

4. Use as a trade mark is:

   [U]se of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[5]

   [5] Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19].

5. The Applicant’s evidence as to its use of the Trade Mark is significant and long-standing.  However as the Delegate in Mount Everest Mineral Water Ltd observed:

   It is convenient first to dispose of a myth: that is, given sufficient use, any sign might qualify as a trade mark and be registrable under the provisions of subsection 41(6).  This is not true as is stated in Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 (‘Go On ..’); implied in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘PERSIAN FETTA’); and discussed in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (“TREAT’), where Jacob J said:

   There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords.

   A moment’s reflection reveals that a trader’s repeated use of an inherently unadapted sign for the sake only of its ordinary meaning serves solely to reinforce its ordinary meaning in the eyes of the public.  The word ‘soap’, used on ‘soaps’, is only descriptive and when used solely to describe the nature of the goods can never change its meaning.  Such a sign is incapable of taking on an additional meaning as indicating only the goods of one trader.  But that is not to state that a sign which lacks any inherent adaption to distinguish cannot take on another meaning as a trade mark and denote the goods or services of a trader.  The acquisition of this other meaning depends entirely on a number of factors including:

·     whether the sign is, effectively, the only ‘normal’ way to describe or identify the goods or services in question such that other traders are likely to require in good faith to want or need to use it, and,

·     whether the sign is the only, or the most appropriate, sign to use to denote the nature or origin of the goods.

·     The way the sign has been used by the owner;

·     whether the sign is used by other traders for the sake of its ordinary meaning;

·     how the particular market has been educated concerning that use; and,

·     how the market perceives that sign in denoting the goods in respect of which it is used: see Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241; (‘OREGON’) Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525; (2002) 56 IPR 452; [2003] AIPC 91-841 (‘Terracotta Colour’).[6]

[6] 2012 ATMO 65, [16]-[17].

1. In Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks Yates J summarized the issue in these terms (in respect of s 41(6) of s 41 as it stood prior to the Raising the Bar legislation, which is equivalent to the current s 41(3):

   Section 41(6) recognises that a sign may be descriptive but still distinctive. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297, Middleton J observed (at [60]) that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive. His Honour quoted the following observations of Lockhart J in Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 335-336:

   The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re application of H N Brock & Co Ltd, for a trade mark (“Osowoolo”)and trade marks (“Orlwoola”) (1909) 26 RPC 683, 850, 854 (the Orlwoola case) and Re application of Joseph Crosfield & Sons Ltdto register a trade mark (“Perfection”) (1909) 26 RPC 837 (the Perfection case).

   If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.

   A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (supra) (at 857-858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.

   Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the [identity] of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, par 25.8.[7]

   [7] [2015] FCA 756; (2015) 114 IPR 81, [128].

2. Most recently, in Primary Health Care Limited v Commonwealth of Australia the court made the following comments:

   An essential characteristic of a trade mark is that it is used to distinguish the goods or services of a trader from the goods or services of other traders: s 17 of the TMA; E & J Gallo Winery v Lion Nathan Pty Ltd (2010) 241 CLR 144 at [42]. A trade mark may in fact distinguish goods and services, or it may not. If a trade mark is not capable of distinguishing designated goods or services, then it may be used but cannot be registered. If it is not registered, the owner does not acquire the monopoly on the use of the trade mark conferred under s 20 of the TMA.[8] 
   …
   

   [8] [2017] FCAFC 174, [219].

   [9] Ibid [373].

   As Yates J observed in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 at [34], mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. Whether the appellant used the word mark to distinguish the Services, and the extent to which it achieved distinctiveness, involved an evaluative judgment. The primary judge found that the appellant had used the word mark to distinguish its operation of its medical centres, but had not used the mark to distinguish the Services.[9] 

3. In summary when evaluating the evidence of the Applicant for the purposes of s 41(3)(b), I must consider whether it establishes that the Trade Mark has a new and secondary meaning different from its primary descriptive one and thus, at the filing date, had ceased to be purely descriptive. Another way to look at it is whether consumers regard the Trade Mark alone as a badge of trade origin in the sense that they would rely upon that Trade Mark alone as an indication of trade origin for the Applicant’s Services. In particular, I must look at:

   • the way the Trade Mark has been used by the Applicant;
   • how the particular market has been educated concerning that use; and
   • how the market perceives the Trade Mark in denoting the services in respect of which it is used.

4. The Applicant (and its predecessors in title) has traded in the Northern Territory under the name ‘Darwin Funeral Services’ since 1963 and was the first and only funeral home in the Northern Territory until 1975.  The Applicant claims (though provides no documentation to support this calculation) to have approximately 65-70% of the market share of funeral services in the Northern Territory and conducts over 400 funeral services in the Northern Territory per year.  The Applicant provides evidence of sales figures since 2007, which on its face are unimpressive but may reflect the small size of the market in the Northern Territory.

5. The Applicant provides evidence of marketing in the form of stationary, business cards, its website, funeral notices, online reviews, advertising in online magazines and business directories and signage relating to funerals.  The Applicant provides evidence of marketing expenditures since 2011, which again are unimpressive but may reflect the small size of the market.   

6. Much of the Applicant’s evidence consists of documents bearing the Trade Mark alongside graphic devices or as part of the business name of the Applicant. Whether or not this use was use of the Trade Mark by the Applicant was the subject of some discussion between the Applicant and the Examiner, but the matter can be disposed of simply. Rather than analyzing each item of the Applicant’s (voluminous) evidence I have, for the purposes of this decision, accepted the Applicant’s submissions that each item of evidence amounts to use of a trade mark, an even then, for the reasons set out below, find that the evidence is insufficient for the purposes of s 41(3).

7. The Applicant also provides evidence of use and reputation in the form of several declarations from longtime suppliers or individuals with a past relationship with the Applicant (each of the declarations in paragraph 5 above other than McNamee 3).

8. As noted in the discussion in British Sugar Plc v James Robertson & Sons Ltd[10]  referred to in paragraph 17 above there are marks for which no amount of use could possibly result in the term becoming distinctive.  The example provided in that case was SOAP (for soap).  In the present case a trade mark such as DARWIN FUNERAL SERVICES for ‘Burial (funeral) services’ while perhaps not unregistrable regardless of the amount of use, comes very close to that standard and would require a very considerable amount of evidence that the Trade Mark has, in the market, established a new and secondary meaning different from its descriptive meaning.

   [10] [1996] RPC 281

9. The Applicant has provided the Applicant’s Services for a long time in Darwin.  It clearly has a considerable market share and reputation in the Darwin community, noting what appears to be the very limited number of funeral homes in the Darwin area.  However, given the highly descriptive nature of the Trade Mark I am not satisfied that at the filing date, the consumers in the market for the Applicant’s Services regarded the Trade Mark alone as a badge of origin separate from its descriptive nature; i.e. that the mark uniquely identifies the funeral services provided by the Applicant (based in Darwin) over all others.  As noted above, the raw figures for number of burials, sales figures and marketing expenditures are unimpressive.  Furthermore there is limited direct evidence (as opposed to testimonials as to reputation) of how the particular market (many of which may not be aware of the reputation of any particular funeral home) has been educated concerning the use of the Trade Mark or more generally that the market for the Applicant’s Services would see the Trade Mark and identify it as connoting the services offered by the Applicant instead of funeral services offered in the Darwin area. 

10. Much of the Applicant’s evidence goes towards establishing that consumers aware of funeral homes in the Darwin region would be aware of the reputation of the Applicant. The requirement under s 41(3) is a reputation in the market as a whole, which in the case of the market for the Applicant’s Services, is a significantly broader market. In my evaluative judgement, the evidence before me is insufficient to persuade me that the wholly descriptive trade mark DARWIN FUNERAL SERVICES has achieved distinctiveness and as such the application to register the Trade Mark must be rejected under s 41 of the Act.

Decision

1. Section 33 of the Act relevantly provides:

33Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

(2)The Registrar may accept the application subject to conditions or limitations.

(3)If the Registrar 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;

the Registrar must reject the application.

1. As I am satisfied that there is a ground for rejection under s 41(3) of the Act in relation to the Trade Mark, I reject the application to register the Trade Mark.

Nicholas Smith
Hearing Officer
Oppositions and Hearings
1 October 2019