Entain Group Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2299366 (41) – QUADDIE COVER - in the name of Entain Group Pty Ltd

Delegate: Bianca Irgang

Representation: John Swinson Legal

Decision: 2024 ATMO 187
Request to be heard under section 33 of the Trade Marks Act 1995- no ground for rejection under section 41(4) - application accepted.
Background

This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (Cth)(‘the Act’):
Trade Mark No: 2299366
Trade Mark: QUADDIE COVER(the ‘Trade Mark’)
Filing Date: 9 September 2022
Applicant: Entain Group Pty Ltd (‘the Applicant)
Specification of Services:
Class 41: Wagering services; Betting information services; Betting on horses; Betting services; Gambling; Gambling services; Provision of amusement facilities
The application was examined as required under section 31 of the Act and accepted for possible registration. The Applicant was advised on 22 November 2022 that the Trade Mark had been examined early and had been accepted but in accordance with international agreements that Australia is party to, the Trade Mark could not proceed to registration at this time. Formal acceptable of the Trade Mark was sent to the Applicant on 10 February 2023. On 10 March 2023, acceptance was revoked and a late ground for rejection was raised under section 41(4). The examiner’s report provided:
As per the letter of Notice of Intention to Revoke Acceptance issued on 10th March 2023, a late Section 41(4) ground for rejection has been identified for this application. I apologise for any confusion or inconvenience caused.
Your trade mark is QUADDIE COVER.
A QUADDIE (quadrella) bet is a type of bet aimed at picking the winners of four nominated races. A COVER bet allows betters to get their stake back (or a similar promotional offering, such as a free bet) if their selection doesn't win but meets certain other criteria. Therefore, as a whole, your trade mark indicates that the claimed services are, or are conducted in relation to, a COVER bet for QUADDIES (quadrellas).
Other traders should therefore be able to use QUADDIE COVER in connection with goods or services similar to yours.
The Applicant was given the option of providing evidence of use of the Trade Mark to overcome the ground for rejection. The Applicant’s legal representative responded by providing writing submissions arguing that the Trade Mark was analogous to the decisions issued by IP Australia being Sportsbet Pty Ltd [2023] ATMO 82 (26 June 2023) and Sportsbet Pty Ltd [2023] ATMO 89 (6 July 2023) (‘the Sportsbet decisions’). Therefore, the Trade Mark should be accepted.
The examiner maintained the ground for rejection under section 41(4). The second report from the examiner stated:
Your submissions have referenced the recent cases Sportsbet Pty Ltd [2023] ATMO 82 (26 June 2023) and Sportsbet Pty Ltd [2023] ATMO 89 (6 July 2023), regarding the marks QUADDIE RESCUE, EXOTIC RESCUE, FIRST4 RESCUE, QUINELLA RESCUE and TOTE RESCUE. I acknowledge the similarities between the marks in these cases to the subject mark, however, I do not find that entirely analogous considerations apply to the word COVER as they do to the word RESCUE.
The Macquarie Dictionary defines COVER as to insure against risk, or, adequate insurance against risk as loss, damage, etc. In the betting industry, a COVER bet is a type of bet that covers a number of potential outcomes of an event; essentially, being a form of insurance for a bet. For example, if one of the legs of the bet loses, then the consumers bet will be covered, such as in the form of a refund, credit, bonus bet or other promotional offering. The ordinary meaning of QUADDIE COVER would therefore indicate that the services are conducted in relation to providing COVER (a type of insurance/a cover bet) for QUADDIE (quadrella) bets, based on the ordinary definitions of COVER and its specific use in the betting industry. As such, I do not find this combination of words to be only a covert and skilful illusion such as in the Sportsbet ‘RESCUE’ cases, but rather, that they convey a descriptive ordinary meaning that is of a direct reference to the claims. It is therefore likely that other traders would have a fair desire to use the mark, or something nearly resembling it, in relation to their own similar goods or services.
Based on the reasoning above, I am maintaining the ground for rejection at this time. To progress the application, you are welcome supply evidence of use in terms of subsection 41(4) of the Trade Marks Act 1995
The Applicant responded by filing the following evidence:
·Declaration of Jefferson Jarvis , Corporate Counsel at the Applicant, dated 24 June 2024 and accompanied by Exhibits JJ-001 to JJ-006.
The examiner considered the evidence and was not satisfied that it was sufficient to overcome the s 41(4) ground for rejection and maintained the objection.
Duly the Applicant requested to be heard on the matter as allowed by section 33(4) of the Act. Once the hearing was set down the Applicant filed additional written submissions prepared by Professor John Swinson of John Swinson Legal.
The hearing took place on 27 August 2024. Professor John Swinson made representations on behalf of the Applicant. I conducted the hearing and the following constitutes the reasons for my decision made as a Delegate of the Registrar of Trade Marks.
The Law
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 personand services of a personsee 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).
The first step, in terms of subsections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the services of the Applicant from the similar goods and/or services of other persons.
The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks[1] where Kitto J said:
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.
[1] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ;
The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their services” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[2]
[2] (1965) 112 CLR 537) [6].
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[3] noted the following part of Kitto J’s test:
"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"
[3] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.
Considering this passage the majority of the High Court explained that the inherent adaptability of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, which may be characterised as “the target audience”[4]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade marks to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[5].
[4] Ibid [28], [30].
[5] Ibid [73].
Superimposed on this test for inherent adaptability is the so called ‘presumption of registrability’ (which was formulated under the Act), whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it. A trade mark that has an obscure reference to the Applicant’s services is not a word or phrase that is likely to be understood by others as a description/direct reference.
The ground for rejection as stated by the examiner is that the Trade Mark has limited inherent adaptation to distinguish the designated services as the expression QUADDIE COVER indicates that the services claimed in Class 41 consist of, or relate to, a QUADDIE bet which is a type of bet aimed at picking the winners of four nominated races. A COVER bet allows betters to get their stake back (or some other promotional offering) if their selection doesn't win but meets certain other criteria. Therefore, as a whole, the Trade Mark indicates that the claimed services are, or are conducted in relation to, a COVER bet for QUADDIES. Other traders should be able to use QUADDIE COVER, and similar terms, in connection with goods or services similar to those claimed by the Applicant in class 41.
In terms of the ‘other traders’ test in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[6] the likelihood of other traders desiring to use the Trade Mark in relation to the designated services may be tested by appropriate examples from the marketplace. On that point I note that there are a number of examples on the Official File of other traders using the term Quaddie when it comes to a type of bet aimed at picking the winners of four nominated races. The same applies for a type of bet called a Cover bet.
[6] (1913) AC 624, [634].
When I consider the basic meaning and understanding that is attributed to a Quaddie and/or Cover bet by the target audience for the gambling services offered by the Applicant, I can see that a number of Australian customers would have the general understanding that the Trade Mark indicates that the services offered by the Applicant are, or are conducted in relation to, a COVER bet for QUADDIES.
Professor Swinson argued that the Trade Mark was prima facie inherently adapted to distinguish the designated services and should be accepted. He stated that consistency, justice and fairness dictate that section 41 be applied consistently to all trade mark applicants and referred to the Sportsbet decisions he believed were analogous to the present situation.
In the TUB HAPPY case[7] which “described the test for a word having ‘direct reference to the character or quality of the goods’ as lying ‘in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess’. His Honour considered ‘TUB HAPPY’ to be allusive such that it did not convey a meaning or idea ‘sufficiently tangible’ to amount to a ‘direct reference’ to the character or quality of the goods”.[8]
[7] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41.
[8] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 [52] (French CJ, Hayne, Crennan and Kiefel JJ).
The applicant has argued:
…there have been two relevant decisions of the Trade Marks Office which are directly on point, namely Sportsbet Pty Ltd [2023] ATMO 82 (26 June 2023) and Sportsbet Pty Ltd [2023] ATMO 89 (6 July 2023). In these cases, it was decided that a combination of two terms, similar to the combination here, was not directly descriptive but rather involves a search for meaning which does not preclude the marks from qualifying for acceptance.
For example, in Sportsbet Pty Ltd [2023] ATMO 89 (6 July 2023), the Hearing Officer stated:
“The Pending Marks are EXOTIC RESCUE, FIRST4 RESCUE, QUINELLA RESCUE and TOTE RESCUE where EXOTIC/FIRST4/QUINELLA/TOTE are each a type of bet which would be commonly understood by a significant proportion of Australian consumers with an interest in betting. The word ‘rescue’ is a common English word meaning to save.
From the commonly understood meanings of the two words comprising each of the Pending Marks, it is possible to ascertain that the ordinary signification of each of the marks is to indicate a product or service that will save or rescue an exotic/first4/quinella/tote bet. However, it is not apparent what this means. Taking for example a first4 bet which requires a customer to pick the first four finishers in a single race in the correct order, it seems that the ordinary signification of the mark FIRST4 RESCUE would indicate that the customer’s bet is not lost if one or more of the horses failed to place as predicted. The Revocation Notices state that the Pending Marks indicate that the customer’s bet will be ‘rescued’ by offering a bonus credit or cash back if the bet placed loses in a fashion that meets the criteria of the promotion. In my view, this meaning cannot be ascertained from any of the Pending 2 Marks and at most, the marks convey only a ‘covert and skilful allusion’ to the Goods and Services.”
The exact same logic applies in the present case. QUADDIE COVER conveys only a covert and skilful allusion to the services of the present application, being betting services.
I agree with the Applicant on its characterization of its Trade Mark and the general understanding that the average Australian consumer is likely to have when faced with the Trade Mark. It is possible to ascertain that the ordinary signification of the Trade Mark is to indicate a product or service that will permit betters to get their stake back (or some other promotional offering) if their selection doesn't win but meets certain other criteria for their quinella bet. However, it is not apparent what this means as exactly what stake the betters get back is dependent on what the Applicant offers by way of this service and may be subject to change based on promotional offers. As such, I am satisfied the meaning of QUADDIE COVER is analogous to TUB HAPPY as it is metaphorical, covert or allusory because it does not carry a direct and clear explanation of the purpose of the services.
Having taken into account the presumption of registrability I am not satisfied that the first element of the ground for rejection exists under section 41(4)(a) of the Act with regards to all the services in the application. I accept the Trade Mark for all services in class 41 for possible registration.
Decision
Section 33 of the Act relevantly provides:
33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
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 not satisfied a valid ground for rejection of the application exists under subsection 41(4).
I accept trade mark application no. 2299366 in its entirety.
Bianca Irgang
Hearing Officer
Trade Marks Hearings & Opposition
30 September 2024

Delegate:	Bianca Irgang
Representation:	John Swinson Legal
Decision:	2024 ATMO 187 Request to be heard under section 33 of the Trade Marks Act 1995- no ground for rejection under section 41(4) - application accepted.

[2024] ATMO 187

30 September 2024