Domain Shield Pty Ltd - [2014] ATMO 30

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1510454(35, 45) - DOMAIN SHIELD - in the name of Domain Shield Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Applicant: Erhan and Alkan Karabardak of Cooper Mills Lawyers

Decision:

2014 ATMO 30

Ex parte Hearing. Subsection 41(2): subsection 41(3) - Trade Mark has no inherent adaptation to distinguish and subsection 41(6) therefore applies; exclusion of impugned services from Application gives rise to ground under section 43.

Application rejected.

Background

Domain Shield Pty Ltd (‘the Applicant’) is the applicant[1] for registration under the Trade Marks Act 1995 of the trade mark which appears below:

Application No: 1510454

Priority Date: 24 August 2012

Services:Class 35: Providing information, including online, about advertising, business management and administration and office functions; discount services (retail, wholesale, or sales promotion services); presentation of goods on communication media, for retail purposes; retail services; retailing of goods (by any means)
Class 45: Compilation, creation and maintenance of a register of domain names; registration of domain names

Trade Mark: DOMAIN SHIELD

(‘the Trade Mark’)
[1] The Applicant was formerly Sarar Pty Ltd.

During examination the examiner reported that there are grounds for rejecting the application under section 41 of the Act in the following terms:
My research (examples attached) indicates that the expression DOMAIN SHIELD is commonly used to refer to a product that conceals or shields the personal details of a registrant which are usually publicly available with a registered domain name.
With the above in mind, your trade mark is not prima facie capable of distinguishing the claimed Class 35 retailing and presentation services. This is because it indicates that the retailing and presentation services are about or relate to DOMAIN SHIELD(S). Similarly, your trade mark is not prima facie capable of distinguishing the claimed Class 45 services because it indicates that the services involve or relate to the provision of DOMAIN SHIELD(S).
Other traders should be able to use DOMAIN SHIELD, or some mark so nearly resembling it, in connection with goods or services similar to yours.
The research enclosed with the Examiner’s First Report included the following:
2:44:23 PM]:
If you are worried about your private information being posted on the web then a much better alternative is to purchase a Domain Shield from the registrar (it’s sometimes known as ID Protect, Whois Privacy Protect or something similar, it depends on which domain registration company you are using). By paying an additional fee you can switch your whois info from Public to Private. This reduces the chances of someone stealing your identity and makes it harder for spam companies to add your email to their spam list.
2:45:56 PM]:
Getting British Business Online (Official Rep) over 3 years ago
On the WHOIS website they say that the domain name owner can opt out of WHOIS if the domain name is not trading. They say that the registrant (GBBO) has to initiate the opt-out.
Hi Francis,
I can confirm that the only way this would be possible is if you buy a domain shield but this is something that is not offered with GBBO domains.
[12/12/2012 4:54:15 PM]:
Domain Shield (Page Heading)
Do you want to protect your privacy? Add Private Registration to your domain name(s) and DNProtect.NET will provide alternate contact information for the listing of your domain name registration(s) in the public WHOIS database.
When you register a domain name you have to specify correct contact information which is recorded in WHOIS database. According to ICANN policies all your private information stored in WHOIS database is instantly made public. So your contact data becomes available for collecting by spammers, telemarketers and any other persons.
Domain Names with Private Registration receive:
● Privacy - Alternate contact information will be used to keep your personal information private
● Protection - Prevent e-mails from spammers and calls from telemarketers
● Value - For only a nominal fee per year, you will have the peace of mind that your e-mail address, home address, or phone number information will not be misused
● Full Control - Unlike other proxy services, you remain the registrant for the private domain name
How does this work?
● DNProtect.NET enters its own contact information rather than yours into the Whois database. This allows you to manage your online whois identity with complete privacy.
● We accept all incoming email and forward it to a private email account known only to the registrant (s) and dnprotect.net. Before they are forwarded, we take care to filter the messages for spam and virus infected files.
● We maintain a separate database that contains the real owners of every domain registered through our service that can not be accessed by the public. The benefit of anonymity will only be revoked if you violate our usage policy, break the law or use it to send out spam.
(1 of 3) [12/12/2012 4:54:41 PM]:
What is BT Domain Shield?
BT Domain Shield is a product that enables you to mask your Whois information in order to add an additional layer of protection from fraudulent activity like spamming and phishing.
If your domain name has the shield installed, BT populate your Whois information with random contact details.
Attempts to access the Whois data are then filtered, so that only legitimate emails are passed on to you.
BT Domain Shield is currently available for gTLD domain names (names that end with .com, .net etc). You can be [sic] purchase them when you register your domain name.
(1 of 5) [12/12/2012 4:59:27 PM]:
The domain name DomainShield.com – registered in 1999, according to top WHOIS tool, DomainTools – was sold on NameJet a couple of days ago. Sure enough, it justifies its own name by having a “domain shield” plastered on its contact information, but those familiar with NameJet user names will not have a problem guessing who [...]
(2 of 2) [12/12/2012 5:02:43 PM]:
[How to register a domain name]
[…]
One other factor to consider is that when you register a domain, your registration details become public knowledge. Depending on the extension of your domain, you can choose to protect your identity by using a ‘Domain Shield’ package. This withholds your personal data from the external world and ensures any strategic domain purchases remain confidential.
The Examiner invited the Applicant to submit evidence of the use of the Trade Mark.
Thereafter the Applicant made two rounds of submissions in order to address the ground for rejection which the Examiner maintained, stating the ground to be under subsection 41(5) of the Act. The Applicant also offered to exclude the impugned services. However, the Examiner maintained the grounds asserting that “… the requested restriction to the claimed services would be likely to deceive or cause confusion. That is, if domain name shield services are not covered by the specification, the trade mark DOMAIN SHIELD would be misdescriptive as it would likely mislead ordinary consumers into engaging your services for something other than what the trade mark suggest [sic][2] your services entail”.
[2] However, the ground for rejection is not that the Trade Mark suggests the services entail … – the ground is that the Trade Mark states that the services are ... If the Trade Mark is merely suggestive, it may neither directly state the nature of the services nor be misdescriptive of them.
Subsequently the Applicant requested to be heard.
The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 26 March 2014. Erhan Karabardak and Alkan Karabardak of Cooper Mills Lawyers represented the Applicant.

Submissions

In summary the Applicant’s submission are that:
The primary basis for rejection of the mark – in effect that it is generic and descriptive – is not borne out by the examples of use cited against the mark nor, one and a half years after that ground was first raised, any increased descriptive use of the phrase “domain shield” in Australia or elsewhere;
Alternatively, the amendment proposed by the Applicant to carve out the cited descriptive meaning of “domain shield” is sufficient to address the issue, and the suggestion to the contrary by the Examiner wrongly assumes that the phrase “domain shield” is susceptible of only one meaning and that there is a real, tangible and immediate risk of confusion among Australian consumers;
Further, the actual use to which the Applicant has and will continue to put the mark demonstrates that the Applicant does not and will not use DOMAIN SHIELD in a descriptive or misleading manner.
The Applicant explains that it is an accredited domain name registrar. A statutory declaration by Eric Karabardak, a director of the Applicant, dated 14 March 2014, states:
since 22 August 2012 the Applicant has been the registrant of the domain name domainshield.com.au;
since 24 August 2012 the Applicant has been registered in respect of the business name DOMAIN SHIELD,2 and has since that date traded under that name;
since 24 September 2012 the Applicant has operated a commercial website from (Applicant’s Website);
since 24 September 2012, each page of the Applicant’s Website has featured a logo which consists of a shield device and the words “Domain Shield”;
that logo also features on stationery and communications with customers, and as a hyperlink to the Applicant’s Website on third party websites listing accredited domain name registrars;
the Applicant promotes its business by a variety of online channels, including Twitter, YouTube and through the Google “AdWords” service;
the Applicant has been growing its client base since it commenced trading as Domain Shield, and has customers throughout Australia and in some overseas jurisdictions;
the Applicant intends to continue to grow its business and increase its marketing spend into the future.
The Applicant has also provided a declaration by Mr Simon Johnson who, after listing his experience and publications concerning the Internet states that, “Prior to becoming aware of the Application, I had not heard of the phrase Domain Shield used in any context, in connection with domain names.”

Section 41

At the filing date of the Application section 41 of the Act provided:
41Trade mark not distinguishing applicant’s goods or services
(1)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).
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
The way in which section 41 operates was discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 where she said:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

Thus the initial step towards answering the question implicit within subsection 41(2) is to first take into account the extent to which the trade mark is inherently adapted to distinguish the designated services from the services of other persons in terms of subsection 41(3).
The test for inherent adaptation to distinguish is the familiar one within Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 (‘Michigan’) at [5] where Kitto J stated:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship 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 Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish 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, 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.
Here the Examiner has pointed to uses of the words ‘domain shield’ which show that the expression is used to denote a domain name administration product that conceals or shields the personal details of a domain name registrant which are usually publicly available with a registered domain name.
The references supplied to the Applicant by the Examiner show that the term ‘domain shield’ is a technical term which is not only used by suppliers of the service but also by commentators who use the term in a familiar manner which assumes that their audience will readily understand it.
The Applicant argues that:
In the present case, it can be accepted that the term “domain” is likely to be taken by consumers as being synonymous with “domain name”, at least in respect of the services for which registration is sought. It does not follow, however, that by extension a “domain shield” inherently implies something that protects a registrant’s personal information, and no express reference is made in the phrase to the same.
The Examiner accepts that that is the case. In other words, this is not a situation where the mark has no inherent adaptation to distinguish. Further, the Examiner accepts that the mark has some inherent adaptation to distinguish, as shown by his invitations for the Applicant to supply evidence of use as contemplated by section 41(5).
The Applicant’s primary submission is that DOMAIN SHIELD in fact is inherently and prima facie adapted to distinguish, and that no further inquiry is necessary under section 41. The following factors support that conclusion:
First, the mere fact that a combination of words might be construed as describing something does not lead to the conclusion that the relevant phrase therefore automatically is descriptive. A “domain shield” in the present context might be capable of being construed as “something that protects a domain name”, but the Examiner does not suggest that the phrase bears any such generic definition. If anything, a “shield” is something one would expect to protect against attack. It is unclear, then, how it is that a domain name (as opposed to, say, a website) can be attacked or otherwise needs to be shielded. As the Applicant notes in its evidence, it chose the word element “shield” on the advice of a marketing consultant to instil a feeling of confidence in consumers. There is no suggestion of anything being “shielded” in a literal sense. At best, the Applicant helps its clients manage their domain names and brands, and its services are “protective” only in that sense.
Secondly, the Examiner’s various assertions that “DOMAIN SHIELD” is “commonly used” (First Report) to refer to a product that conceals or shields personal details of a domain name registrant or potentially “generic” (Second Report), and that “my research indicates that it is being commonly used and understood” (Third Report) as denoting such a product are not borne out by a proper consideration of the relevant research.
The Applicant’s analysis is set out in the Second Response at [15], but in summary:
(a) the use of “Domain Shield” by BT (a UK based telecommunications company) in the materials is always in the context of “BT Domain Shield”;
(b) the use of “DOMAIN SHIELD” at the website dnsprotect.net is not used other than as part of the website masthead, and the legitimacy of that website is in doubt given that it lacks any means of actually taking up the services on offer from what appears to be a US trader;
(c) the passing references to a “domain shield” by two South African companies are in identical terms such that the legitimacy of at least one such use is in doubt.
Thirdly, there is no evidence of descriptive use of “domain shield” in Australia or, indeed, any use of the phrase in Australia other than as a reference to the Applicant.
Fourthly and on a related point, in practical terms it is only a domain name registrar who would be able to reliably offer a product that masks a registrant’s details. In Australian, however, a domain name registrar is not permitted to offer a product whereby a .au domain name registrant’s details are masked in any way.14 To adopt the words of Kitto J in Clark Equipment, this is not a situation where another trader actuated only by proper motives could make honest use of the phrase “domain shield” in connection with such a product.
Finally and perhaps most saliently, the Examiner has placed too much emphasis on the proposition found in the Second Report that “the internet facilitates the development of new language and new uses of existing language which quickly becomes generic.” The Applicant notes that the Examiner ostensibly has not revisited his previous research to see whether his conclusion that other traders are likely to want to use the phrase “domain shield” is borne out. To the contrary, the Applicant’s searches for use of the phrase “domain shield” on the Internet demonstrate that the phrase is not becoming generic at all, even though its purported generic sense pertains to online privacy.
Notwithstanding the passage of over a year since the Examiner’s initial research:
(a) in the October 2013 Search, the number of “hits” on Google for the phrase was very low – only 4,990;
(b) four of the first ten results in the October 2013 Search were references to the Applicant or the Applicant’s Website;
(c) two of the remaining results were references to the “BT Domain Shield” product in the UK and the mysterious dnsprotect.net website;
(d) the fifth result was a company selling a “Clip Art” of, among other things, a medieval shield, which would be entirely unexpected if there was widespread generic use of the phrase “domain shield”;
(e) in the March 2014 Search, the number of “hits” on Google had dropped to 3,940 (notwithstanding that the Applicant has in the same period increased its promotional activity online, which one would expect to contribute (and has contributed) additional hits);
(f) the only sponsored advertisements that appear in the March 2014 Search (on pages 2 and 3 of the results) are for the Domain.com.au real estate website.
As a preliminary observation, the Examiner, correctly in my consideration, cited examples of the use of the expression ‘domain shield’ as denoting a service offered to domain name registrants which are from dates prior to the filing of the Trade Mark. Events subsequent to the filing date may cast a backwards shadow; however, the inherent adaptation of the Trade Mark to distinguish the services of the Applicant is assessed as at the date the Application was filed. The Applicant’s observations concerning the Examiner’s non-provision of further examples from after the priority date thus has no basis.
In my consideration the fact that is central in this matter is that the expression ‘domain shield’ does have a technical meaning in relation to services which fall within the services in respect of which the registration of the Trade Mark is sought. The expression ‘domain shield’ is used by major Internet companies in the United Kingdom, South Africa and the USA as a part of the provision of domain name registry services. It is also used by two ‘bloggers’ or commentators.
I am not persuaded by the evidence of Mr Simon Johnson that the term ‘domain shield’ does not have the meaning ascribed to it by the Examiner – in my consideration all that Mr Johnson’s evidence establishes is that he was unaware of the expression’s technical meaning. In this regard see Eutectic Corporation v Registrar of Trade Marks (1980) 1A IPR 550 where the trade mark EUTECTIC had a denotation unknown to a number of experts and was found by the Court to lack inherent adaptation to distinguish the applicant’s goods because of its technical meaning.
Neither do I think that it is relevant here that the Trade Mark has a technical meaning unknown to Australians: Powell v Glow Zone Products Pty Ltd [1996] FCA 1021; 36 IPR 343; [1996] AIPC 37-896. The allegation in that case was that the trade mark CAPS THE GAME was, in effect, generic at the time of filing of the impugned registration. At the time of filing of the impugned registration, CAPS was a game known only to Americans. What a more relevant factor for consideration may be is whether the goods or services are likely to be imported into Australia. I also observe that it is possible that an Australian domain name registrar would register within domains other than the .au domain administered by the Australian Domain Name Administrator (auDA).
Additionally, I do not consider that whether the service is presently ‘allowed’ in Australia is relevant here. It is apparent from the auDA rules that collection of registrant contact information by domain name registrars is mandatory. However, the details entered in the register of domain names may be the name of the registrar of record or their reseller with (in the instance of Registrant Contact) the express written consent of the registrant. In any event, such rules may prove to be ephemeral: in Australian National Airlines Commission's Application (1989) 16 IPR 270 the trade mark was protected by statute and Registrar’s Delegate Mr Forno cited, at p 274, the following passage from the Michigan case at p 513:
It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose, because its natural signification is against a notion that goods to which it is applied are the goods of the applicant and of no one else, may yet come by actual use or by virtue of special circumstances to be so closely associated with applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks.
Mr Forno observed with some prescience regarding the trade mark in question (AUSTRALIAN AIRLINES) in applying Kitto J’s comments:
What his Honour there said in relation to a passing off action is equally applicable, I think, to any other remedy to which a plaintiff is entitled to have recourse in order to protect its rights, including any statutory remedy which the Parliament may see fit to confer. The general inference to be drawn from the passage above cited is that a mark must qualify for registration under the Trade Marks Act by virtue to its own inherent nature without reference to “special circumstances” which may lead to the achievement of distinctiveness in fact.
It is almost otiose to observe that the ground for rejection does not arise because the word ‘domain’ has one particular meaning and the word ‘shield’ has another particular meaning which, when the meanings are combined, gives the Trade Mark a resultant particular meaning which lacks inherent distinctiveness in relation to the services. Rather, the ground for rejection arises because the expression ‘domain shield’ itself has a particular meaning which lacks inherent adaptation in relation to the services.
Finally, the issue is not whether the Applicant uses the Trade Mark in relation to a domain name ownership identity masking service or not. The issue is the inherent adaptation of the Trade Mark which has its touchstone in the need that other traders honestly have to use those words for sake of their ordinary significance in relation to services which fall within the specification in respect of which registration is sought.
I am not certain of the Examiner’s rationale in stating that the ground is one under subsection 41(5): if the expression ‘domain shield’ has a particular technical meaning in relation to the services and the use of that expression is open to all traders it is difficult to understand how the ground could be other than one under subsection 41(6). The Applicant in its submissions concedes that if the Examiner’s objection is well-founded the Trade Mark is, in effect, generic. The fact that there might be alternative expressions that other traders might use (such as ID Protect or Whois Privacy Protect suggested at item 1 in [3], above) does not in my consideration impact on the inherent adaptation of the Trade Mark. The words ‘bike’, ‘cycle’ and ‘bicycle’ equally lack any inherent adaptation for all that those words may be used interchangeably in relation to two-wheeled velocipedes.
The conclusion that the ground is one under subsection 41(6) appears to me to be inescapable.
In terms of subsection 41(6) I am to assess whether because of the extent to which the Applicant has used the Trade Mark before the filing date in respect of the application, it does distinguish the designated services as being those of the Applicant.
Mr Eric Karabardak in his declaration states that the Trade Mark was first used by the Applicant throughout Australia in or about August 2012. That asserted use consisted of:
On 22 August 2012 the applicant registered the domain name domainshield.com.au (Domain Shield Domain Name), with the intention of operating an online business from the homepage (Domain Shield Website). The name Domain Shield was chosen after consultation with a friend who is a branding and marketing professional who suggested that the domain would instil confidence in people by using the term shield.
Between August 2012 and September 2012 the applicant designed the Domain Shield Website with the intention that it be launched as a website through which it could offer the following services:
i. brand protection services;
ii. trade mark registration services;
iii. domain name registration and management services;
iv. domain name protection and brokerage services;
On or about 17 August 2012 the Applicant applied for accreditation with auDA (.au Domain Administration Ltd) ('auDA') as the regulator of internet domain names ending in the ".au" country code.
Apart from being located at the Domain Shield Website (itself based around the Domain Shield Domain Name), the website was designed to feature the trade mark in a prominent position on each page. The particular depiction of the trade mark, included on each page of the Domain Shield Website, was as follows:

On 24 August 2012, the applicant applied for the business name DOMAIN SHIELD.
That business name has been registered to the applicant since 24 August 2012.
First commercial use
On or about 24 September 2012 the Domain Shield Website went live. A copy of the website as it appeared on launch is included as Exhibit EK-1.
The trade mark subsequently has been used by the applicant in the following circumstances:
Accreditation as a Domain Name Registrar
The applicant was granted accreditation by auDA on 17 September 2012. A copy of the auDA accreditation certificate is included as Exhibit EK-2.
Since that date, the Domain Shield Logo has been featured on the auDA website at and also on the AusRegistry website which identifies auDA's accredited registrars. The logo that features on that page also is a hyperlink by which consumers seeking the applicant's service can be redirected to the Domain Shield Website. A copy of the auDA and Ausregistry accredited registrar pages is included as Exhibit EK-3.
Since at least 24 September 2012 to date, the applicant has maintained the Domain Shield Website as a going concern. The Domain Shield Website effectively has at all times contained the Domain Shield mark since launch. A copy of the current website homepage as at 12 March 2014 is included as Exhibit EK-4.
The Applicant has since then applied for accreditation as an ICANN Registrar, which will enable the Applicant to sell .com, .net, .org and .info domain names, and a .nz Registrar (with the NZ Domain Name Commission), which will enable the Applicant to sell .nz domain names.

In terms of Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 1063; (1995) 30 IPR 517; [1995] AIPC 91-119, it is doubtful that use of the Trade Mark occurred until around 24 September 2012 when the Applicant’s website went live and commercial transactions in relation to the Trade Mark became possible. Thus use of the Trade Mark did not occur until after the filing date.
Accordingly, there is a ground for rejecting the Trade Mark in terms of subsection 41(6) of the Act and the evidence filed by the Applicant does not overcome the ground for rejection.

The Exclusion

The Applicant has request that, should I find that the ground under section 44 is established that the proposed amendment to the specifications of services (by excluding identity masking services) should put the Application in order for acceptance.
However, the Examiner has objected that the exclusion renders the Trade Mark deceptive in terms of section 43 of the Act which 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.

In Parker-Knoll Limited v Knoll International Limited [1962] RPC 265 at page 174 Lord Denning said of the differences between ‘confusion’ and ‘deception’:
Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
It is true to observe that on many occasions a ground under section 43 lurks in the shadows of a ground under section 41: if a trade mark is completely descriptive of the goods or services in respect of which registration is sought, that trade mark may also be completely misdescriptive if the goods or services are not as described by trade mark.
This is, in my consideration, one of those occasions: if the ground under subsection 41 is well-taken (as I believe it is) then the Trade Mark becomes misdescriptive in relation to domain name services where the service of masking the identities of registrants is not available. At the very least, the use of the Trade Mark, if those identity masking services are not available, would be confusing – confusion does not necessarily need to persist until the point of purchase to found a ground under the Act: see Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159 per Keane CJ, Dowsett & Nicholas JJ at [115].

Decision

Section 33 of the Act 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.
Note:For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.
(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.
Note:For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:For applicant see section 6.
I am satisfied that there are grounds for rejecting application 1510454, the evidence does not overcome the grounds for rejection, and I consequently reject the Application.

Iain Thompson

Hearing Officer

Trade Marks Hearings

7 April 2014