eBet Limited

[2016] ATMO 40

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1617447 (7, 9, 38, 41) - EBET- in the name of eBet Limited.

Delegate:	Iain Campbell Thompson
Representation:	Applicant: Peter Franke and Sarah Herbert of Franke Hyland.
Decision:	2016 ATMO 40 Trade Marks Act 1995 – s33 proceedings: subsection 41(4) – specifications of goods and services limited prior to hearing – goods and services provided in a specialised market – consideration of evidence of use – provisions of subsection 41(4) applied.

Background

1. In this ex parte proceeding under section 33 of the Trade Marks Act 1995 (‘the Act’) eBet Limited (‘the Applicant’) seeks registration of the trade mark appearing below:

Application No:           1617447
Priority Date:               15 April 2014
Goods/Services:          Class 7: Card and ticket vending machines

Class 9: Electronic or multimedia publications on recorded media (audio, video or text), all being in relation to networked gaming systems; computer hardware, firmware and software for networked gaming machines, cash dispensing and receiving machines, bar code analysis, bar code, card and ticket reading machines; bar code validators; ticket and card analysing and modifying machines; automated teller machines; cash receiving or dispensing machines
Class 38: Telecommunications services all being in relation to networked gaming systems
Class 41: Online publication of books and journals, publication of multimedia publications all being in relation to networked gaming systems[1]

Trade Mark:                EBET

(‘the Trade Mark’)

[1] The goods and services were amended by the Applicant to those above before the hearing by inserting the qualifying phrase ‘all being in relation to networked gaming systems’ where it occurs within the specification.

1. An examiner of trade marks has objected that there is a ground for rejecting the Trade Mark pursuant to section 41 of the Act in the following terms:

   [The Trade Mark] is EBET.

   The prefix “e” is commonly understood to mean “electronic” and it is often used, in combination with a word or phrase, to indicate goods and services which incorporate electronics or electronic technology or are provided by electronic means, that is, online or via the internet.

   As such, your trade mark EBET indicates that your goods and services are online or electronic betting, or in relation to electronic betting.

   Other traders should be able to use EBET in connection with goods or services similar to yours.

2. The examiner then indicated that the ground might be overcome if the Applicant provided evidence which addressed the provisions of subsection 41(3).

3. The Applicant has restricted the specification of goods and services so as to exclude betting and gaming services.  The Applicant has also tendered two declarations as to the use of the Trade Mark, these being by:

   Robert Fredericks, Chief Financial Officer of the Applicant, made on 18 November 2015 with Exhibits A to C; and,

   Peter Walford, Acting Chief Executive Officer of the Applicant, made on 30 May 2016 with Exhibits A- G.

4. As a delegate of the Registrar of Trade Mark I heard the submissions of the Applicant put to me by Peter Franke and Sarah Herbert of Franke Hyland by videoconference in Canberra on 25 May 2016.

5. Put briefly, the Applicant has used the Trade Mark since 1999 in relation to a range of goods and services which link the gaming machines of various traders in New South Wales, Queensland and Victoria.  The Applicant thus does not (as reflected in the amended specification of goods and services) offer gaming or betting services.

Section 41

1. Section 41 of the Act provides:

   41Trade 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).

2. In terms of subsection 41(1) the Trade Mark must be rejected if not ‘capable of distinguishing’ the Applicant’s services in respect of which the Trade Mark is sought to be registered.  Trade marks which are ‘capable of distinguishing’ are at a lower threshold of inherent adaptation to distinguish than are those trade marks which are ‘distinctive’. 

3. Setting to one side those trade marks which are either ‘distinctive’ or ‘capable of distinguishing’ (and thus immediately registrable in terms of section 41), the question of whether or not a trade mark falls foul of either subsection 41(3) or subsection 41(4) depends on the Registrar being satisfied as to the degree of the lack of ‘inherent adaptation’ to distinguish the particular goods or services of that trade mark.

4. As explained by Branson J in Blount Inc v Registrar of Trade Marks[2]:

   Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

   [2] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241

5. The consideration of inherent adaptation to distinguish is the familiar one oft quoted from Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 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.

6. I digress here to observe that the Trade Mark Examiner’s Manual states:

   14.1  E trade marks

   With the increasing use and importance of electronic forms of communication, in particular the Internet, to conduct business and advertise goods and services, it has become increasingly commonplace for traders to adopt trade marks featuring the prefix "e". The prefix is commonly understood to mean electronic and it is often used, in combination with a word or phrase, to indicate goods which incorporate electronics or electronic technology or services provided by electronic means, that is, online or via the Internet.  As such, a trade mark consisting only of the prefix "e" and a word or phrase which has a direct reference to the goods or services claimed will be considered to have little or no inherent adaptation to distinguish.

   Examiners will need to consider if the material in the trade mark, apart from the prefix "e", has any inherent adaptation to distinguish. The presence of the prefix "e" in a trade mark is unlikely to add to the trade mark's capacity to distinguish unless it is rendered in a very distinctive way.

   For example, a ground for rejection would be raised against e-TOYS in respect of a broad claim for class 28 goods as it would be considered to have a reference to electronic toys.  Similarly, it would have direct reference if the specified services were the retailing of toys.

   Trade marks such as e-COMMERCE for business services and e-PRINT for printing services are not prima facie capable of distinguishing.

   However, if a trade mark consists of the prefix "e", and a word having no direct reference to the specified goods or services (such as e-magic for non-magic related goods/services), or if the reference is allusory (such as e-wonder), then the trade mark will be prima facie capable of distinguishing.

7. In my consideration, the qualification introduced to the specification of goods and services, ‘all being in relation to networked gaming systems’ places the Trade Mark, when considered in relation to those goods and services, into consideration under subsection 41(4).  This is because the reference to the character of the goods or services in the Trade Mark is no longer as direct: the specification no longer includes the services of electronic betting or gaming.  Therefore, in terms of subsection 41(4), the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish.  I am therefore to consider the extent to which the Trade Mark is inherently adapted to distinguish the goods or services from the goods or services of other persons together with the use, or intended use, of the Trade Mark by the applicant and any other circumstances.

8. When considering the evidence of use of the Trade Mark, and its capacity to acquire distinctiveness, I take account of the fact that the amendment of the specification of goods and services places those goods and services within a specialised market: the goods and services are not offered to the public at large.  Rather the goods and services provided or offered under the Trade Mark are to the owners of gaming machines.  Trade marks within a specialised market may more readily gain acquired distinctiveness because constant recognition is more readily achieved in a specialised marketplace.  The Trade Mark has had substantial use within this marketplace: the Applicant’s declarations show an increasing arc of sales of goods and revenue from services and hence exposure of the Trade Mark in that marketplace.

9. Taking the above factors into account, I consider that it is appropriate to apply the provisions of subsection 41(3) and accept the Trade Mark for possible registration

Decision

1. 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.

2. I will accept the Trade Mark subject to the endorsement:

   The provisions of subsection 41(4) applied.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
24 June 2016