Exhibitions and Events Australia Pty Ltd
[2016] ATMO 71
•15 September 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1673101 (35, 41) - HOME SHOW - in the name of Exhibitions and Events Australia Pty Ltd.
| Delegate: | Katrina Brown |
| Representation: | A.D.B Fox of counsel instructed by R. Sanders of DLA Piper |
| Decision: | 2016 ATMO 71 Trade Marks Act 1995 – s 33 proceedings – s 41 – trade mark not capable of distinguishing – evidence not sufficient to overcome ground for rejection – trade mark application rejected. |
Background
This matter is pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) involving an application for the registration of the following trade mark:
| Trade Mark No: | 1673101 |
| Trade Mark: | HOME SHOW (‘the Claimed Mark’) |
| Applicant: | Exhibitions and Events Australia Pty Ltd (‘the Applicant’) |
| Filing Date: | 6 February 2015 |
| Services: | Class 35: Organising, arranging, conducting and managing exhibitions, trade shows and trade fairs; organising, arranging, conducting and managing events for advertising purposes, business purposes, trade purposes, commercial purposes; advertising and promotional services; event management services; providing consumer advice being market advice; providing business information; market advice for consumers; business information; commercial information and advice for consumers; product and services comparison services; demonstration of goods; dissemination of advertising matter; distribution of samples; sales promotion for others; price comparison services; public relations; publicity (‘the designated services’). |
The application was examined and grounds for rejection were raised including a ground for rejection under s 41(3) of the Act. In respect of the s 41(3) ground for rejection, the first examination report stated:
Your trade mark is just the words HOME SHOW (with no other content).
This indicates that your services are home show services.
Other traders should be able to use HOME SHOW in connection with goods or services similar to yours.
The Applicant was given the option of supplying evidence of use or amending the specification to overcome this ground for rejection.
To support the trade mark application, the Applicant submitted the declaration of Robert Graeme Uthmeyer (Director of Exhibitions and Events Australia Pty Ltd) made on 26 June 2015 with accompanying exhibits RGU-1 to RGU-46 (‘Uthmeyer 1’).
The examiner was of the opinion that the evidence of use provided in Uthmeyer 1 was not sufficient to overcome the ground for rejection. The second examination report stated:
The applicant's evidence is impressive. The applicant has used the term HOME SHOW over a long period. The applicant has spent considerable sums on publicity and other material in conjunction with such events and has a good turnover for a considerable period of time.
However, the mark, as applied for, is a simple, basic description and the evidence needs to show that the "bare words" HOME SHOW are distinctive of the applicant's services and that other traders could not honestly call similar events a home show. It does not do that.
The evidence shows use of the words either pendant on something else (COURIER MAIL, HERALD SUN, HIA with a device) or use of the words with a device. If anything, the evidence supports the suggestion that the words are just a description. The event is not a home show as such but the Courier Mail home show.
After the fourth examination report the Applicant requested to be heard on the matter.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 21 March 2016. Mr. Fox of counsel, instructed by Ms. Sanders of DLA Piper, made written and oral submissions on behalf of the Applicant.
Evidence
The evidence in this matter consists of the following declarations:
Robert Graeme Uthmeyer made on 26 June 2015 with accompanying exhibits RGU-1 to RGU-46 (‘Uthmeyer 1’);
Robert Graeme Uthmeyer made on 10 March 2016 with accompanying exhibit RGU-47 (‘Uthmeyer 2’);
Adam Michael Katz (DLA Piper) made on 4 March 2016 with accompanying exhibits AMK-1 to AMK-7 (‘Katz Declaration’).
As previously stated Mr. Robert Graeme Uthmeyer is the Director of the Applicant. The Applicant, or its predecessors, has operated an event purportedly called Home Show since 1975.[1] The event brings together consumers interested in procuring building renovation products or building services, with traders who offer such products and services.[2]
[1] Uthmeyer 1 [9]. From 1973 to 1975 the event was called Homes Show.
[2] Hearing submissions 1 [2.1].
Mr. Uthmeyer declares that the event has been run annually in Melbourne from 1975.[3] In the late 1970s the event expanded to Brisbane and Perth, and later to Sydney in 1982.[4] It appears that the events are now held biannually in Melbourne, Brisbane and Perth and annually in Sydney.[5]
[3] Uthmeyer 1 [9].
[4] Ibid [12].
[5] Ibid RGU-5.
It is declared that the Claimed Mark has been used continuously in relation to the event since 1975.[6] As the number of events increased, co-branding arrangements were entered into whereby the Claimed Mark and the trade mark of a major sponsor are shown together in advertising and promotional activities.[7] Mr. Uthmeyer gives the following examples: Courier Mail Home Show; Herald Sun Home Show; Sunday Mail Home Show; HIA Home Show; RACV Home Show.[8]
[6] Ibid [18].
[7] Ibid [20].
[8] Ibid [20].
Revenue figures for the HIA Melbourne Home Show, Herald Sun Home Show and the Sydney Home Show have been provided for the period between 2005 and 2014.[9] Revenue figures for the HIA Perth Home Show and the Perth Home Show have been provided for the period between 2010 and 2014.[10] Revenue figures for the Courier Mail Home Show and the Sunday Mail Home Show have been provided for the period between 2011 and 2014.[11] I would characterise these figures as significant.
[9] Ibid RGU-8.
[10] Ibid RGU-8.
[11] Ibid RGU-8.
Attendance figures and revenue from ticket sales for each of the above mentioned events in 2014 have been provided.[12] The Applicant has advertised the events in printed publications, online and on television and radio since acquiring the Claimed Mark in 2009. The Applicant has provided approximations of the amount that has been spent on this advertising.[13] In addition to the above advertising, the Applicant: distributes merchandise, such as bags, at each event;[14] erects signage bearing the Claimed Mark both inside and outside the events;[15] and uses the Claimed Mark on presentations, ticketing, security passes, direct marketing, social media and on the Applicant’s website.[16]
[12] Ibid [34].
[13] Ibid [38].
[14] Ibid [40].
[15] Ibid [42].
[16] Ibid [43] – [48]; [62]; [66] – [77].
The following third party declarations from vendors who exhibit at the Applicant’s events have also been provided (collectively referred to as ‘third party declarations’):
Joe Hayden Pierce (Director of Woolstore Melbourne Pty Ltd) made on 11 March 2016 with accompanying exhibits JHP-1 to JHP-2 (‘Pierce Declaration’);
Dino Scaramuzzo (Director of Ironing Systems (Australia) Pty Ltd) made on 11 March 2016 with accompanying exhibits DS-1 to DS-2 (‘Scaramuzzo Declaration’);
Darren Evans (Director of Sola Solutions Pty Ltd) made on 11 March 2016 with accompanying exhibits DE-1 to DE-2 (‘Evans Declaration’);
Hans Vanderstadt (Director of Camberwell Electrics (Sales) Pty Ltd made on 11 March 2016 with accompanying exhibits HV-1 to HV-2 (‘Vanderstadt Declaration’).
Section 41
As a preliminary matter I mention that the focus here is not to review the examiner’s decision and arguments, but rather to consider afresh the grounds for rejection that have been raised.
Section 41 of the Act relevantly 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.
…
(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…
Pursuant to s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it.
Inherent adaptation to distinguish
The inherent adaptation of a trade mark is to be tested:
[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. [17]
[17] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.
The signification which the words ordinarily possess (ordinary signification) is the ordinary meaning of the words to people in Australia who purchase, consume and trade in the designated services.[18]
[18] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 [70] (‘Cantarella’).
In this matter, the Claimed Mark consists of the words ‘home show’ in plain text. As conceded by the Applicant’s representative a ‘home show’ is an event at which exhibitors display goods and or services relating to the home.[19] I believe that the relevant consumer would have no hesitation in understanding this to be the ordinary signification of ‘home show’.
[19] Hearing submissions 9 [6.14].
Having determined the ordinary signification, the enquiry turns to whether other traders might legitimately need to use the word in respect of their services.[20]
[20] Cantarella [2014] HCA 48 [71].
The Claimed Mark is a most apt way to describe, succinctly and exactly, the essential characteristic of the designated services. As such, other traders are likely to want to use the Claimed Mark for the sake of its ordinary signification. For example, other traders who are organising, arranging, conducting and managing exhibitions, trade shows and trade fairs relating to the home are likely to want to use the Claimed Mark to signify that their services are in relation to an event at which exhibitors display goods and or services relating to the home, that is a ‘home show’.
The Applicant’s representative argues that other traders are not using the Claimed Mark in relation to the designated services. In his opinion, this represents a unique circumstance which should be taken into account when considering the operation of s 41(3) of the Act. In counsel’s words:
[T]he evidence establishes that there has been no ‘need’ (or interest or any likelihood) on part of rival traders, over the past 40 years, to use the Trade Mark in respect of their goods. Rather, the evidence establishes that the Applicant has benefited from an essentially permanent hiatus in the relevant industry with respect to use of that word by others.[21]
[21] Hearing submissions 9 [6.15].
The assessment of whether a trade mark is inherently adapted to distinguish is based on the nature of the trade mark itself,[22] not by reference to whether traders other than the Applicant are in fact using the expression in relation to their same or similar services. Evidence establishing that the Applicant or its predecessor has been using the Claimed Mark as a trade mark for 40 years is certainly relevant to whether the Claimed Mark does in fact distinguish the designated services. However it is not relevant to the initial consideration of the extent to which the Claimed Mark is inherently adapted to distinguish the designated services.
[22] Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, 424.
In my opinion the Claimed Mark has no inherent adaptation to distinguish the designated services. Having taken into account the presumption of registrability, I am nevertheless satisfied that the Claimed Mark is not inherently adapted to distinguish the designated services.
However, I am not entitled to reject the Claimed Mark unless I am satisfied that it is not capable of distinguishing the designated services having regard to the combined effect of its inherent adaptation to distinguish and any evidence of use. Accordingly, I will now consider the Applicant’s evidence of use.
Evidence of use
The Applicant’s Representative states that the following trade marks (owned by the Applicant) were accepted on the basis of the same evidence, similar evidence and or less evidence than what has been submitted in this matter.[23]
Note: In trade mark no. 1674482 the words that are beneath ‘home show’ are ‘Australia’s No. 1 Building & Renovation Expo’.
[23] Hearing submissions 2 [3.1].
Firstly, I note that a ground for rejection under s 41 of the Act was not raised in relation to Registrations 809724 and 809725 and therefore evidence was not required. I also note that the evidence needs to show use of the trade mark as applied for, or with differences that do not substantially affect the identity of the trade mark. For example evidence that showed use of Registration 1037388 HOME IDEAS SHOW would not demonstrate use of the Claimed Mark, as the addition or removal of the word ‘ideas’ is a difference that substantially affects the identity of the trade mark.
Decisions made on the basis of evidence involve weighing up the evidence provided in combination with the trade mark’s level of inherent adaptation to distinguish the claimed goods and or services. As such the evidence sufficient to address a ground for rejection under s 41(4) may not be sufficient to address a ground for rejection under s 41(3). All of the above registrations, with the exception of Registrations 809724 and 809725, were considered to be to some extent, but not sufficiently, inherently adapted to distinguish the claimed services.[24] In the current matter, the Claimed Mark is not to any extent inherently adapted to distinguish the designated services.
[24] Section 41(4) of the Act, or its predecessor s 41(5) as it existed prior to the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
The evidence provided in this matter clearly demonstrates that the Applicant (or a predecessor) has used the words ‘home show’ for an extensive period of time in Australia; some 40 years prior to the filing date of the trade mark application.[25] Counsel draws my attention to the fact that the length of the Applicant’s use exceeds the length of use in the seminal s 41(6)[26] case of Blount Inc v Registrar of Trade Marks.[27] The mere fact that a trade mark has been used in the course of trade for a considerable length of time does not mean that it is capable of distinguishing. As Jacobs J astutely commented in British Sugar PLC v James Robertson & Sons Ltd:
There is an unspoken and illogical assumption that 'use equals distinctiveness'. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word 'Soap' as a purported trade mark for soap, the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.[28]
[25] Uthmeyer 1 [18].
[26] Being the predecessor to the current s 41(3) of the Act, in force prior to the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
[27] [1998] FCA 440.
[28] [1996] RPC 281, 302.
The use must be use as a trade mark. Trade mark use is:
[U]se of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[29]
[29]Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19].
The Applicant has provided a number of exhibits and asserts that these demonstrate use of the Claimed Mark as a badge of origin in relation to the designated services. Much of the Applicant’s evidence shows ‘home show’ used in the following ways (this is not exhaustive but rather indicative of the examples provided):
| Uthmeyer 1 RGU-6 | Uthmeyer 1 RGU-7 |
| Uthmeyer RGU-15 | Uthmeyer 1 RGU-7 |
| Uthmeyer 1 RGU-7 | Uthmeyer 1 RGU-9 |
| Uthmeyer RGU-15 | Uthmeyer RGU-15 |
| Uthmeyer 1 RGU-13 | Uthmeyer 1 RGU-16 |
| Uthmeyer 1 RGU-16 | Uthmeyer 1 RGU-17 |
| Uthmeyer RGU-22 | Uthmeyer 1 RGU-25 |
| Uthmeyer 1 RGU-25 | Uthmeyer 1 RGU-29 |
As illustrated by the above examples, the evidence overwhelmingly shows the words ‘home show’ used in close proximity to other indicia such as THE SUN, HERALD SUN, HIA and various device elements.
The presence of multiple indicia is not fatal to the application. The question is whether the evidence before me demonstrates that the Claimed Mark is acting, in its own right, as a badge of origin notwithstanding the presence of other signs. This requires consideration from an objective viewpoint of the purpose and nature (that is, the context) of the use.[30]
[30] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 425, albeit a discussion in the context of infringement proceedings.
For the most part the Claimed Mark is displayed prominently in the above examples. The words ‘home show’ are the largest or equally largest in terms of font size. However, the prominence of the words does not necessarily mean that they will be perceived as a badge of origin.
The relative distinctiveness of the words is also relevant to determining how a consumer is likely to perceive the Applicant’s use of the Claimed Mark. In this regard THE SUN, THE COURIER MAIL, SUNDAY MAIL, HERALD SUN, HIA and the hand device are highly distinctive when used in relation to the designated services. Comparably, the Claimed Mark describes the designated services and its strength as a brand is therefore diminished.
As explained by the Applicant’s representative at the hearing, the Applicant and its predecessors enter into licensing agreements with a primary sponsor for each of their events. The effect of these agreements is described in Uthmeyer 2 as:
The primary sponsor has the right, under the licence agreement, to have their trade mark appear near HOME SHOW in marketing and signage etc.[31]
[31] [9].
Whilst I appreciate that these agreements may refer to the Claimed Mark and the major sponsor’s trade mark as separate signs and that there are conditions of how the trade marks can be used, the question is whether consumers, who encountered examples like those shown in [32] of this decision, would view them as separate trade marks. In my opinion, placing the major sponsor’s name in such close proximity to the descriptive words ‘home show’ has the effect of substantially diluting any trade mark significance which may have attached to the words ‘home show’.[32]
[32] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 [133].
I am not convinced that upon seeing the type of use shown in the examples above that the words ‘home show’ would be perceived by the purchasing public as a trade mark. In my opinion the Claimed Mark would be viewed as a descriptive adjunct to the more distinctive terms (such as HIA, THE SUN, and THE COURIER MAIL) or as part of a composite trade mark such as the example from Uthmeyer RGU-13 reproduced above.
The Applicant’s evidence contains limited references to the words ‘home show’ which are not shown in close proximity to a major sponsor. However that use does not clearly impart trade mark significance either. For example, the declarant of Uthmeyer 2[33] states that exhibitors and attendees have used words to the following effect:
I love exhibiting at the HOME SHOW
The HOME SHOW is the best exhibition
I love coming to the HOME SHOW
The HOME SHOW is the best exhibition
I’m at the HOME SHOW[34]
[33] Similar statements are made in the third party declarations.
[34] [33] – [34].
Whilst these statements may be using the Claimed Mark as a trade mark, it is equally likely that the words ‘home show’ are being used for their ordinary signification. That is, when an exhibitor or attendee says ‘I’m at the home show’ they are simply indicating that they are attending an event at which products and services for the home are exhibited rather than indicating the trade source of the event.
The evidence also contains examples of the words ‘home show’ being used as part of domain names, for example: melbournehomeshow.com.au;[35] sydneyhomeshow. com.au.[36] In my opinion this use is likely to be viewed as indicating the website of an event held in Sydney and Melbourne at which exhibitors display products and services related to the home. In the unlikely event that trade mark significance was to be imparted by these examples the significance would be attributed to the phrases ‘Melbourne home show’ or ‘Sydney home show’. Assuming for the moment that the domain name signifier ‘.com.au’ may be discounted (which I do not concede but will consider for the purposes of this point) it is unlikely that the words ‘home show’ within those domain names would be acting as the badge of origin.
[35] Uthmeyer 1 RGU-6.
[36] Ibid RGU-7.
Given that the examples of use provided by the Applicant overwhelmingly show the words ‘home show’ used as part of many different composite trade marks or as a descriptive adjunct to the trade mark of a major sponsor, the figures that have been provided such as revenue, advertising and marketing costs and online and social media marketing numbers are not solely attributable to the Claimed Mark.
The Applicant has provided third party declarations from four individuals whose companies have exhibited at the Applicant or a predecessor’s event for approximately 15 to 20 years. The declarants attest to associating the words ‘home show’ with the Applicant and state that they would be confused if anyone other than the Applicant ran an event under the name ‘home show’.
The fact that the declarants associate the words ‘home show’ with the Applicant does not on its own demonstrate the capacity of the Claimed Mark to distinguish the Applicant’s services from those of another trader. In this regard, I note the following from Chocolaterie Guylian N.V. v Registrar of Trade Marks:
The cases confirm that association evidence on its own does not prove distinctiveness; the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods.[37]
[37] [2009] FCA 891 [100].
It is necessary to establish that the association is because of the use of the words ‘home show’ as a trade mark. For the reasons discussed above, the evidence before me does not establish that the Claimed Mark is acting in its own right as a badge of origin.
When I weigh the evidence before me together with the fact that the Claimed Mark is not to any extent inherently adapted to distinguish the designated services, I find that the combined effect does not support a finding that the Claimed Mark distinguishes the designated services as being those of the Applicant.
Decision
Section 33 of the Act provides:
Application 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 on the balance of probabilities that there is a ground for rejecting the Claimed Mark under s 41 of the Act.
In accordance with s 33(3) of the Act, I reject trade mark application number 1673101.
However, if the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.
Katrina Brown
Hearing Officer
Trade Mark Hearings
15 September 2016
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