Dazzle and Shine Pty Ltd as Trustee for Agnes and Charlene Trust

[2020] ATMO 67

TRADE MARKS ACT 1995

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

ReTrade mark application number 1967620 (41, 43, 44) – CAMP JABIRU - in the name of Dazzle and Shine Pty Ltd as trustee for Agnes and Charlene Trust

Delegate:                 Robert Wilson

Representation:       Applicant: Michelle Cooper of Adams Pluck

Decision:                   2020 ATMO 67

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 41 – trade mark does not distinguish – evidence of use insufficient – application rejected

Background

1. On 8 November 2018, Dazzle and Shine Pty Ltd as trustee for Agnes and Charlene Trust (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:	1967620
Services:	Class 41: (services including) holiday camp services (entertainment); organisation and provision of wellness and health events Class 43: Holiday camp services (temporary accommodation); provision of camp ground facilities Class 44: (services including) wellness retreats and health retreats (‘the Applicant’s Services’) The full specification appears in the annexure to this decision.
Trade Mark:	CAMP JABIRU	(‘the Trade Mark’)

2. Any references to parts, sections or regulations, below, are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth) unless otherwise indicated.

3. The application was examined as required by s 31 and on 28 May 2019 the examiner issued an adverse report. The report indicated the examiner’s view that a ground for rejection of the application existed under s 41 on the basis that the Trade Mark ‘is a directly descriptive phrase which functions as a geographic name and an obvious description of the services claimed’. The Applicant responded with submissions and evidence of use of the Trade Mark. The examiner maintained the ground for rejection for two further adverse reports following which the Applicant requested to be heard.

4. The matter was set down for hearing on 20 April 2020. I was appointed as a delegate of the Registrar of Trade Marks to hear the matter. The Applicant was represented by Michelle Cooper of Adams Pluck. Ms Cooper’s oral submissions were supplemented by written submissions which were provided prior to the hearing. The evidence before me is the same as that which was before the examiner, being a Statutory Declaration made on 2 August 2019 by Colleen Hacker, a director of The Sensory Gym, with Annexures A to H (‘the Hacker declaration’).

The Law in Respect of s 41

5. 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).

6. The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire.[1]

[1] (1913) AC 624, 634-5.

7. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) stated:

[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]

[2] [1964] HCA 55, [5] (‘Clark Equipment’).

8. There are a number of cases which have dealt with the distinctiveness of signs which have a geographical signification. Clark Equipment is often cited in this regard. The words of Kitto J quoted above were made in the context of the word ‘Michigan’—a state of the United States of America—which the applicant in that case sought, unsuccessfully, to register in connection with earth‑moving equipment and the like. Kitto J continued after the passage above to state:

The fact that this is the test is the basic reason for the frequent refusal … to register as a trade mark a word of prima facie geographical signification. It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with bananas, or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. …

The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place on in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make.[3]

[3] Ibid [6]-[7] (citations omitted).

9. After referring to a number of earlier English authorities, Kitto J continued:

[T]here is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns and districts if they are a seat of manufacture of the goods for which registration is sought.[4]

[4] Ibid [7].

1. Another case frequently referred to in respect of signs with geographical significations is the Oxford case.[5] In that case Gummow J stated:

   The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[6]

   [5] Chancellor, Masters and Scholars of the University of Oxford v the Registrar of Trade Marks [1990] FCA 175.

   [6] Ibid [41].

2. The Applicant has referred me to more recent authority to be found in Cantarella Bros v Modena Trading (‘Cantarella’).[7] In that case the High Court indicated that the test for distinctiveness is a two step process. The first step being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods, then having determined the answer to that question to consider the likelihood of the sign being needed by other traders.

   [7] [2014] HCA 48.

3. The cases discussed above considered signs intended to be used in connection with goods; nevertheless, the case law is equally relevant where services are concerned, as is the situation here.

Ordinary Signification of the Trade Mark

1. The word camp has many common meanings, most relevant here are the following which have been sourced from the Macquarie Dictionary. The Macquarie Dictionary also has definitions for Jabiru which are provided below.

Camp:

• Noun: a group of tents, caravans, or other temporary shelters in one place.

• Noun: the place where the shelters are situated; a camping ground

• Verb: to establish or make a camp

Jabiru:

• Noun: The Australian subspecies of the black-necked stork.

• Noun: a town in central northern Northern Territory; established as a settlement for mining employees.

1. The Applicant ‘does not resile’ from the meanings of camp provided above and submitted:

   [T]he word CAMP is used descriptively in this composite mark. The Applicant previously sought registration for the word mark JABIRU on its own without this descriptive element as JABIRU is the essential element of its name. The inclusion of the word CAMP, however, in this composite mark should not be totally disregarded.

2. With respect to JABIRU the Applicant submitted:

   [T]he Macquarie Dictionary is the default dictionary used by trade mark examiners in Australia, and entries are ordered with a word’s central meaning first, this being the word’s most common meaning. …

   [T]he class of people who use the services of the Applicant, parents of children with special needs, are likely to have been exposed to jabiru on visits to zoos or wildlife parks with their children. Jabiru are on view at many of these around the country …

   It is submitted that the ordinary signification of the word JABIRU is an Australian stork. On this basis, there is no need to consider other meanings of the word JABIRU and whether CAMP JABIRU is a sign that would be needed by other traders.

3. There is no reason when considering the ordinary signification of a sign that consideration of the meaning of a particular element should be limited to what might be the primary or most commonly understood meaning of that element; JABIRU as a placename ought to be considered here, especially as this is the basis of the examiner’s proposed ground for rejection of the application.

4. There is no evidence filed by the Applicant which shows how well-known, or obscure, JABIRU is as a placename. Ms Cooper submitted on behalf of the Applicant that JABIRU is little known as a placename and indicated the she had not heard of the town prior to dealing with this matter. My own experience is that, having visited Jabiru, I am well aware of it as a location. Neither of these personal experiences is of much assistance in assessing how well known Jabiru is amongst the wider population. Importantly, as indicated above, it is necessary to determine the ordinary signification of the Trade Mark to persons who will purchase, consume or trade in the relevant services. It is useful at this point to consider more closely who those persons might be.

5. The Applicant has referred to ‘parents of children with special needs’ as ‘the class of people who use the services of the Applicant’. This may, in practice, be the case; however, it is notional use of the Trade Mark in connection with all the Applicant’s Services which must be considered here. Consider, for example, what is potentially the most problematic of the Applicant’s Services: provision of camp ground facilities. Due to the apparent popularity in Australia of holidaying in camp ground facilities (which includes caravan parks), it is clear that the potential consumers of those services constitute a large proportion of the Australian population. Although not stated in the dictionary definition, above, Jabiru is the main township within Kakadu National Park. It is a small town but is large enough to have a shopping centre, medical clinic and pharmacy, a police station, library, service station, nine-hole golf course and a 50-metre swimming pool. It also has accommodation services including a hotel, a resort and a caravan park.[8] The Crocodile Hotel at Jabiru appears to be particularly notable as it is, unusually, built in the shape of a crocodile. Kakadu appears to be visited by hundreds of thousands of people annually.[9] Given the importance of Jabiru within the park it is likely that a very high percentage of the people who have visited the park in the past—which over the years must be considerable—or who are planning a visit to Kakadu would be aware of the township of Jabiru.

   [8] Jabiru (Web Page) < align="left">[9] Kakadu National Park (Web Page, 31 March 2020) <>

   What is of primary relevance here is the ordinary signification of the Trade Mark as a whole rather than simply the ordinary signification of its component parts. The inclusion of CAMP in CAMP JABIRU, serves to emphasise the geographical significance of the JABIRU element. As a whole, the Trade Mark is likely to have the ordinary signification of a camping ground located in Jabiru. The Applicant submitted this was not the case and pointed to examples such as CAMP QUALITY, CAMP DIVERSITY and CAMP DAVID. In those signs, none of QUALITY, DIVERSITY nor DAVID are locations. The Applicant submitted:

   It is common for the name of camping programs to use aspirational rather than place names in their branding. … There is nothing to suggest that people on seeing the name CAMP JABIRU will assume that JABIRU is a place name.

6. There appear to be other examples of events or camping grounds with names in the form of CAMP [NAME] where the NAME element does not indicate the location of the event or camping ground. Nevertheless, this is not exclusively so. I note from the evidence that the Applicant conducts events at YMCA CAMP YARRAMUNDI. This is a described as ‘one of NSW’s premier outdoor education and camping venues since 1937’.[10] The venue is located at Yarramundi in New South Wales. It is very likely that anyone who is aware of the Sydney suburb of Yarramundi would immediately assume, quite correctly, that YMCA CAMP YARRAMUNDI is a camping ground at Yarramundi. Where the NAME element of a sign of the format CAMP [NAME] is a location of which a consumer is aware—rather than something aspirational or something which does not indicate a location—the ordinary signification of that sign to that person is likely to be a camping ground at that location.

   [10] The Y Outdoor Education and Camping (Webpage) <>

   There may well be many potential consumers or traders of the Applicant’s Services who have never heard of the town of Jabiru. To those people CAMP JABIRU would likely have no ordinary signification in connection with the Applicant’s Services—other than, say, it might be assumed to be common to see jabiru near a campsite bearing that name. However, I am satisfied that to a sufficient number persons in Australia who will purchase, consume or trade in the Applicant’s Services, the ordinary signification of the Trade Mark is a camping ground located in the vicinity of Jabiru in the Northern Territory. Further, it seems reasonable to infer that to any person resident in Jabiru who wished to trade in the Applicant’s services, the ordinary signification of the Trade Mark is a camping ground at Jabiru.  When used in connection with the Applicant’s Services the Trade Mark indicates that the services are provided at a camping ground in Jabiru. That is not the end of the inquiry; it is necessary to consider the likelihood of the sign being needed by other traders.

Likelihood the Trade Mark needed by other traders

1. The Applicant submitted that it is unlikely that other traders would need to use the Trade Mark in connection with the Applicant’s Services. The Applicant pointed to factors including: the nature of Jabiru as an ex mining town; the small population of Jabiru (1,081 people in 2016); that none of the existing accommodation venues use Jabiru in their names (instead they refer to Kakadu); and, that

   [T]here is no indication of anyone wishing to refer to [Jabiru] by name in their marketing for accommodation and it is not reasonable to suppose that future traders may have a desire to use the name of the location for any of the services claimed by the Applicant.

2. I am not persuaded by the Applicant that the factors above preclude a need for other traders to use CAMP JABIRU for their services. None of the Applicant’s Services are sufficiently unlikely to ever be provided at Jabiru that future traders are unlikely to need to use the Trade Mark in connection with those services for its ordinary signification. This is particularly so for traders based in Jabiru who provide those services at Jabiru either currently or any that might wish to do so in the future.

Conclusion on inherent adaptation to distinguish

1. Due to the ordinary signification, in Australia, of the Trade Mark to a significant number of persons who will purchase, consume or trade in the Applicant’s Services and the likelihood of other traders needing to use the Trade Mark, I am satisfied that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services from those similar services of other traders.

Can the application be accepted on the basis of acquired distinctiveness?

1. There exists the potential to accept the application, under s 41(3) on the basis of the Applicant’s use of the Trade Mark if evidence provided by the Applicant demonstrates use of the Trade Mark, before the filing date, to the extent that the Trade Mark does in fact distinguish the Applicant’s Services from those of other persons. The Applicant submitted:

   [W]e note that there is evidence of use of [the Trade Mark] for nearly a decade before the filing date of the Application and … invite the Hearing Officer to find that the mark is factually distinctive.

   The evidence shows use of this name in plain script in respect of specialised services for which professional qualifications are required. It is in respect of a niche market. In the circumstances, cumulated revenue in excess of [redacted] and advertising expenditure in excess of [redacted] is significant.

   The use of the plain script is supplemented with use of a corresponding device mark featuring a stylised JABIRU bird and this use reinforces the capacity of [the Trade Mark] as a whole to distinguish.

2. I note at this point that the Hacker declaration indicates that the declarant is ‘a Director of The Sensory Gym’ and that The Sensory Gym ‘is and has always been the exclusive user of the Word and Logo Trade Marks since its inception’. The declaration makes no statements regarding any relationship between The Sensory Gym and the Applicant, nor does it provide any indication as to why use by the Sensory Gym should be considered use by the Applicant. Ms Cooper submitted at the hearing that a relevant relationship does exist and indicated in follow up correspondence that:

   Sensory Gym Pty Ltd initially owned trade marks now recorded in the name of [the Applicant]. These rights were assigned by a deed dated 15 May 2018. Responsibility for the day to day running of the services provided under [the Trade Mark] remained with the Sensory Gym Pty Ltd following the assignment.

The Applicant offered to provide a further declaration, if necessary, confirming the above. However, as will be seen below, the evidence provided is insufficient to establish acquired distinctiveness, so it is unnecessary that the relationship be confirmed.

1. The Hacker declaration indicates that The Sensory Gym

   runs a paediatric occupational therapy practice in Western Sydney, which specialises in occupational therapy assessment, treatment and unique ‘intensive’ therapy programs for individuals of all ages.

   One such treatment program offered by the Company is a camp for children that experience challenges understanding and responding to sensory information … which aims to provide them with a typical camp experience with addition of occupational therapy intervention (‘the Program’).

   The Program is held up to 4 times each year at the local YMCA campgrounds in Western NSW and has approximately 180 participants per year …

   [The Sensory Gym] offers the Program under Word and Logo Trade Marks and the services associated with the Program are the services intended to be covered under Word and Logo Trade Marks.

2. I observe that ‘a paediatric occupational therapy practice … for individuals of all ages’ appears to be contradictory. Nevertheless, as stated above, in submissions, the Applicant indicated that ‘parents of children with special needs’ is ‘the class of people who use the services of the Applicant’. It is apparent that the number of people exposed to the Trade Mark in its use in connection with the services provided by The Sensory Gym is extremely small compared with the number of people for whom the ordinary signification of the Trade Mark is as discussed above. A comparison of the hundreds of thousands of visitors to Kakadu each year, and the approximately 180 participants per year that attend The Sensory Gym’s Camp Jabiru, plus their families, makes it immediately apparent that the use of the Trade Mark by The Sensory Gym is well short of the type of use which might possibly overcome the Trade Mark’s lack of inherent adaptation to distinguish.

3. The evidence provided by the Applicant fails to satisfy me, per s 41(3), that The Sensory Gym 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 Applicant’s Services from the goods or services of other persons. For the sake of completeness, had I found that the Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish some, or all, of the Applicant’s Services from the goods or services of other persons, the Applicant’s evidence would have been insufficient to satisfy me, per s 41(4), that the Trade Mark does or will distinguish the Applicant’s Services from the goods or services of other persons.

Decision

1. I am satisfied that there exists a ground for rejecting the application under s 41 and that the Applicant’s use of the Trade Mark is not sufficient to satisfy the Registrar that the Trade Mark has become distinctive of the Applicant’s Services. Accordingly, I reject the application.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
29 April 2020

Annexure

The Applicant’s Services

Class 41: Holiday camp amusement centre services; holiday camp services (entertainment); organisation and provision of wellness and health events; health education; physical health education; conducting fitness classes; recreation services; entertainment services; educational services; coaching (education and training); conducting of educational courses; educational instruction; creating, arranging and conducting workshops, seminars, conferences, exhibitions, symposiums and live performances; educational information, educational services and skills; mentoring

Class 43: Holiday camp services (temporary accommodation); provision of camp ground facilities

Class 44: Medical and health care resort services for treatment of children with autism spectrum disorder, attention deficit disorder, disorders of behaviour and conduct, mood disorders, learning difficulties, developmental dyspraxia, and general developmental challenges; wellness retreats and health retreats; physical therapy; rehabilitation services (health care); remedial therapy services; therapeutic treatment of the body; therapy services; advisory and consulting services relating to health care