Deborah Brooks v Simone Peters - [2024] ATMO 149

TRADE MARKS ACT 1995

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

Re:Opposition by Deborah Brooks to registration of trade mark application number 2292024 (class 44) – Mind + Gut - in the name of Simone Peters

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Self represented

Applicant: By George Legal

Decision:

2024 ATMO 149

Trade Marks Act 1995 (Cth) – opposition under section 52 – sole ground of opposition under s 41 not established - trade mark to proceed to registration

Background

This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Deborah Brooks (‘Opponent’) to registration of the following trade mark:

Trade mark number: 2292024 (‘Application’)

Trade marks: MIND + GUT (‘Trade Mark’)

Applicant: Simone Peters (‘Applicant’)

Filing Date: 30 April 2021[2] (‘Relevant Date’)

Specification: Class 44: Dietetic counselling services (medical); Gastroenterology (medical services); Medical care services; Hypnotherapy; Dietary and nutritional advice; Psychological or psychiatric counselling (‘Applicant’s Services’)

Endorsement: Evidence and/or other circumstances provided under subsection 41(4).

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

[2] The Application is a divisional of trade mark number 2173129.

The Trade Mark was examined and advertised as accepted for possible registration on 26 May 2023.
On 20 July 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 19 August 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 6 September 2023.
Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following Evidence in Support (‘EIS’):

Declaration of Deborah Brooks dated 28 December 2023, (‘Brooks’) with Appendix A (1) to (3) and B.

The Applicant filed the following Evidence in Answer (‘EIA’):

Declaration of Simone Peters dated 2 April 2024 with Annexures SP-1 to SP-30 (‘Peters’).

Declaration of Nik Sheng Ding (‘Ding’) dated 7 March 2024.

Declaration of Peter Raymond Gibbons (‘Gibbons’) dated 19 March 2024.

The Opponent filed the following Evidence in Reply (‘EIR’):

Second Declaration of Deborah Brooks dated 1 June 2024 (‘Brooks 2’).

Once time for filing evidence had ended, both parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I have decided this matter based on the particulars set out in the SGP and the evidence of the parties.

Grounds and onus

The SGP nominates a ground of opposition under s 41.
The Opponent carries the burden of establishing the ground of opposition on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date.[4]

Summary of Evidence

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [133].

EIS

Brooks states that the specific use of the words Mind and Gut describes an area of research and practice and attaches a number of documents in support including:

research publications from 1989 – 2023 referencing the physiological connection known as the Mind Gut Connection. I note there is no use of Mind + Gut.
web based examples referring to the Mind Gut Connection. I note one undated use of Mind + Gut in respect of an educational course for foods for the mind and gut in Melbourne entitled ‘Food for the Mind + Gut’.

Brook claims that other traders are, have, and will legitimately want to use the words Mind and Gut as a reference to their own goods and services. In support Brook annexes extracts of the following business names (both cancelled and registered) from the Australian Securities & Investments Register (‘ASIC’) which include the words Mind and Gut:

Mind Gut Co.

Mind Gut Harmony

MIND GUT PSYCHOLOGY

The Mind & Gut Clinic

Mind and Gut Directed Hypnotherapy Clinic

Mind Gut Balance

Mind Gut Connection

Mind Gut Connexion

I note that none of the extracts include a date of registration of these business names.

The remainder of Brook provides comment, opinion and submissions on the s 41 ground of opposition which I do not need to summarise as it is not evidence, and has no probative value concerning the ground of opposition nor any bearing on my decision.

EIA

Ms Peters is a psychophysiologist with a PhD in psychology and established a multi-disciplinary gastroenterology clinic based in Melbourne under the Trade Mark (‘Clinic’) in 2016. Ms Peters claims that she was closely involved in the creation of the Clinic and runs the Clinic on a day-to-day basis.
Ms Peters registered the company The Mind & Gut Specialist Clinic Pty Ltd in February 2016 of which she is sole director, and the business name ‘Mind plus Gut Clinic’ in 2017.
Peters attests that the Clinic offers a range of treatments to patients affected by disorders of the gastrointestinal tract, including hypnotherapy, behavioral therapy, dietary therapies and psychological counselling.
Peters declares that by January 2020, the Clinic had grown to include 9 dietitians, psychologists and hypnotherapists working from 2 locations in Melbourne. In March 2024, the Melbourne Gut Clinic invited the Clinic to establish rooms at its practice. Peters provides a snip from The Melbourne Gut Clinic’s website at as seen below:

Peters claims that the Clinic has offered its services remotely via telehealth since 2016 to patients located across Australia and that over 25,000 individual patients have been treated by the Clinic since 2016. Peters claims that although a referral is not required to be seen at the Clinic, around 70% of patients come via referrals from other medical practitioners.
Peters annexes examples of use of the Trade Mark including on referral letters, information sheets, welcome pack emails, signage, business cards and patient referral forms. I note use of the Trade Mark in the following forms:

Mind + Gut Clinic Mind + Gut

Peters also claims use of the Trade Mark on appointment confirmations and reminder emails for patients and invoices, but provides no evidence in support.
Peters claims that the Clinic’s services have been promoted via the Clinic’s website at (‘Clinic’s Website’) since 2016. Peters states the Clinic’s Website allows patients to book online and annexes printouts from the Clinic’s Website including Wayback Machine[5] printouts from 2017 to 2022 where I note use of the Trade Mark in the following additional form: .
[5] >
Peters provides Google analytics on the Clinic’s Website showing that in the period October 2023 to March 2024 there were 2484 interactions with the website and 1267 website clicks from the website.
Peters provides follower numbers, likes and screenshots for the Clinic’s social media sites: Facebook® from 2016 and Instagram® from 2022. The likes and follower numbers for both sites are very small.
Peters provides turnover for the Clinic’s services from 2017 to April 2023 which shows year on year growth and marketing expenditure from 2020 – 2022. Peters claims the Clinic has predominantly relied on word-of mouth referrals by both health practitioners and patients.
Peters provides examples of the Clinic’s promotional activities including:

sponsorship of an exhibitor at Australian Gastroenterology Week
online and in print publications
interviews on podcasts and TV programs
listing of the Clinic is six heath care directories
presentations by Ms Peters where she claims she is typically introduced, amongst other things, as being the founder of the Clinic and/or she mentions the Clinic during introductory remarks or in the course of a presentation. Peters lists twenty such presentations
an example of a post on a third party social media account
mentions during promotion of the Nerva app, which Peters states she developed in conjunction with Mindset Health

Ding and Gibbons are both gastroenterologists with extensive experience and both attest to referring patients to the Clinic and to their knowledge of use of the Trade Mark by Peters since March 2016.

EIR

Ms Brooks in Brooks 2 declares that she is ‘not disputing the presence of the Mind + Gut Clinic and business name in the public domain and the associated endeavours in the marketplace undertaken by Simone Peters using her registered business name. She has to this point demonstrated that use of said business name has been successful and sufficient.’
Ms Brooks states that she is opposing the right to the exclusive use of the term Mind Gut Connection to the exclusion of other traders who legitimately wish to use this phrase.

Discussion and Reasons

Section 41 relevantly provides:
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).

Determining the merits of the ground of opposition under s 41 requires consideration be given to the extent, if any, of a trade mark’s inherent adaptation to distinguish the goods and services. According to Kitto J in Clark Equipment Co v Registrar of Trade Marks this is assessed:
[B]y reference to the likelihood that 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[6]
[6] [1964] 111 CLR 511, 514.
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[7] explained that the test for inherent distinctiveness under s 41 involves a two-step process. Firstly, to ascertain what is the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods or services.[8] Secondly, once the ordinary signification is established, to ask whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods or services.
[7] [2014] HCA 48.
[8] Ibid [71].
What is crucial is how the word or words are understood by the target audience, being those who purchase, consume or trade in the goods and services. The relevant enquiry is whether the trade mark as a whole, that is, the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods or services. When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable. In Diamond T Motor Car Co’s Application, Lawrence J said:
.... in order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves...[9]
[9] (1921) 38 RPC 373, 380.
It is not a requirement that the words comprising a trade mark be totally meaningless for a trade mark to be registrable. As Wilcox J acknowledged (despite finding that the trade mark there in question did describe the goods), in Ocean Spray Cranberries Inc v Registrar of Trade Marks:
In reaching the above conclusion, I have not overlooked two matters relied on by Ms Baird. First, she says, a mark need not be "absolutely unsuggestive of qualities" of the goods for which registration is sought, provided it does not amount to a normal description.[10]
[10] [2000] FCA 177, [34].
When assessing marks for inherent distinctiveness, consideration of their ‘ordinary signification’ should not only be whether they had ‘direct’ reference to the character and quality of goods or services.[11]
[11] Verrocchi v Direct Chemist Outlet Pty Ltd [2015] FCA 234.
The SGP relevantly provides that the Trade Mark is not inherently adapted to distinguish the Services from the services of other traders as:

the words MIND and GUT are descriptive and the Trade Mark therefore lacks sufficient distinctiveness;
the words MIND and GUT are descriptive of the mind-gut connection; and
the words MIND and GUT should therefore be available for use by other traders and are actually in use by other traders either separately or in combination in business names, without any improper motive in connection with similar Services.

Firstly, on the claim in the SGP that the Trade Mark is descriptive of the mind-gut connection and the Opponent’s statement in Brooks 2 that the Opponent is opposing the right to the exclusive use of the term Mind Gut Connection, clearly the Trade Mark is not MIND GUT CONNECTION.
I am required to decide whether MIND + GUT possesses any ordinary signification and, if it does, whether or not other traders might think of MIND + GUT and want to use it for that ordinary signification and not necessarily to denote trade origin. To this end, the Opponent’s evidence is of little assistance.
I am aware there are a number of definitions of MIND and GUT in the Macquarie Dictionary Online, the most relevant of which are:

Mind – ‘that which thinks, feels, and wills, exercises perception, judgment, reflection etc., as in a human or other conscious being’ and ‘the psyche; the totality of conscious and unconscious activities of an organism’.

Gut – ‘the alimentary canal between the pylorus and the anus, or some portion of it’ and ‘the substance forming the case of the intestine; intestinal tissue or fibre’.

Even without the definitions, I consider that the general public would know the meaning of the ordinary words MIND and GUT.
I consider the words MIND and GUT have a direct reference to services which, for MIND, are related to the mind and, for GUT, are related to the gut and, as individual words or together, are apt for normal description.[12] However, the Trade Mark is more than the words MIND and GUT. Therefore, it is necessary to consider the Trade Mark as a total composition, rather than the individual constituent elements in isolation,[13] and then assess whether there is a direct reference to the character or quality of the Services.
[12] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, [34] (Wilcox J).
[13] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61] (Dodds-Streeton J).
The Trade Mark contains the mathematical symbol + between the words MIND and GUT. The meaning of the + symbol is well known to the general public as meaning ‘with the addition of’ or ‘in addition to’. Of itself, this + symbol is unlikely to render an otherwise non-distinctive trade mark consisting of two descriptive words, inherently distinctive. I consider that even with the + symbol, the ordinary signification of the Trade Mark does not change namely that the Applicant’s dietetic counselling, gastroenterology, medical care, hypnotherapy, dietary and nutritional advice and psychological or psychiatric counselling services relate to treating conditions of the MIND together with the GUT.
However, even though the words in the mark relate to the MIND and the GUT, to me, it is uncommon to use the + symbol to combine grammatically coordinate words. Rather it is more common and expected to use the word AND or an ampersand. I therefore consider there is some imagination in using the + symbol. Thus, while the words MIND and GUT are themselves descriptive, the + symbol is a speck of inherent adaptation to distinguish, creating a visually effective trade mark.
I must now consider whether it likely that other traders will think of, or desire to use the Trade Mark, or something closely resembling it, in respect of the Services. The Opponent’s evidence of business names[14] which contain the words MIND and GUT are undated and there is no evidence as to whether the business names are or were ever in use, and if so, in respect of what goods or services. The Opponent’s evidence of research publications[15] and web-based examples[16] show a number of references to the physiological connection known as the Mind Gut Connection but only one undated instance of use of MIND + GUT by a third party, which is as part of a title of an educational course regarding food for the mind and gut.
[14] Brooks Appendix A (3).
[15] Ibid Appendix A (1).
[16] Ibid Appendix A (2).
While the evidence has clear limitations, the meaning of the words MIND and GUT and the + symbol are clear. The combination of the Opponent’s evidence together with the meanings of the elements in the Trade Mark satisfies me that at the Relevant Date, other traders would legitimately desire to use the Trade Mark, or at a minimum, some mark nearly resembling it (e.g. MIND & GUT or MIND AND GUT) in respect of their own similar services.
Bearing the above in mind, I am satisfied that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Services from the services of other persons such that it is accordingly appropriate to consider the Trade Mark under the provisions of s 41(4) and therefore the Applicant’s evidence of use, intended use and any other relevant circumstances.

The Applicant’s evidence shows that the Applicant has established use of the MIND + GUT mark since 2016,[17] being 5 years before the Relevant Date, in respect of a range of treatments for patients affected by disorders of the gastrointestinal tract, including hypnotherapy, behavioral therapy, dietary therapies and psychological counselling across Australia. The Applicant has provided patient numbers, turnover for the Clinic’s services for four years before and two after the Relevant Date, and marketing expenditure for a year before and two after the Relevant Date. Under s 41(4), I may take into account intended use of the Trade Mark and in doing so, I can be informed and make inferences based on the Applicant’s use after the Relevant Date.[18]
[17] Corroborated by Ding and Gibbons.
[18] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968 (Finn J).
Given the services provided by the Applicant are a range of treatments to patients provided by dietitians, psychologists and hypnotherapists, it is unsurprising that the Applicant’s promotional expenditure is small and that the interactions with the Clinic’s Website and website clicks and follower numbers, likes and screenshots for the Clinic’s social media sites are low. It is further unsurprising that much of the Applicant’s growth predominantly relies on word-of mouth referrals by both health practitioners and patients. Further the types of promotion used by the Applicant such as sponsorships, interviews, publications, heath care directories and presentations are understandable. One would not expect the Services to be advertised and promoted as if they were entertainment services with a big budget spend.
Since 2017, the extent of use has trended upwards, as demonstrated by the growth in revenue year on year and the number of clinics where the Services are provided and practitioners growing over the years. Further, the Opponent does not dispute the presence of the Mind + Gut Clinic and business name in the public domain and the associated endeavours in the marketplace undertaken by the Applicant and that the Applicant has demonstrated that use of Mind + Gut Clinic has been successful and sufficient.[19]
[19] Brooks 2 [13].
I am satisfied that the Applicant has used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact or will distinguish the Applicant’s Services by indicating a connection in the course of trade with the Applicant. Accordingly, the s 41 ground of opposition is unsuccessful.

Decision

I have found the Opponent has not established the ground of opposition pursuant to s 41. Trade Mark application number 2292024 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that the registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

The Applicant sought an award of costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

23 August 2024