Expensify, Inc. - [2023] ATMO 173

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia number 2240706 (35, 42) –EASY MONEY– in the name of Expensify, Inc.

Delegate:	Bianca Irgang
Representation:	Holder: David Moore of Henry Hughes IP Ltd
Decision:	2023 ATMO 173 Trade Marks Regulations 1995 (Cth) – reg 17A.24 – consideration of section 41 of the Trade Marks Act 1995 (Cth) – ground for rejection – trade mark descriptive and likely to be used by other traders without improper motive – IRDA rejected.

Background

Expensify, Inc. (‘the holder’) has applied for the extension of protection of its trade mark to Australia. Details of its international Registration Designating Australia (‘IRDA’) are as follows:
Trade Mark No:2240706
IR Number: 1637245
Trade Mark: EASY MONEY (‘the Trade Mark’)
Filing Date: 28 July 2021
Specification of Services:
Class 35: Providing online business management services; provision of business administration and management services in the fields of procurement, invoicing, expense and expense account management and reimbursement, and data analytics therefor; provision of business administration and management services in the fields of employee expense and expense account management, and data analytics thereof; tracking and monitoring business-related expenses for reimbursement, business administration and management purposes.
Class 42: Hosting a website featuring on-line non-downloadable software which enables users to perform scanning and character recognition of receipts, odometer readings, and business cards for use in an automated generation of expense reports that are categorized according to individuals, entities, and/or expense categories; hosting a website featuring non-downloadable computer software which enables users to perform scanning and character recognition to track expenses and payments; providing temporary use of online non-downloadable software which enables users to perform scanning and character recognition of receipts, odometer readings, and business cards for use in an automated generation of expense reports that are categorized according to individuals, entities, and/or expense categories; software as a service (SAAS) services featuring a computer software platform which enables users to perform scanning and character recognition of receipts, odometer readings, and business cards for use in an automated generation of expense reports that are categorized according to individuals, entities, and/or expense categories; providing on-line non-downloadable software for use in procurement, invoicing, expense management and reimbursement, and data analytics therefor; providing on-line non-downloadable software for use in employee expense account management, and data analytics therefor; application service provider (ASP) featuring e-commerce software for use as a payment gateway that authorizes processing of credit cards and direct payments for merchants; providing a web-based electronic financial platform for corporate buyers and sellers, namely, platform as a service (PAAS) featuring computer software for transaction and payment processing services, financial record-keeping, management of identity and compliance data, and management of financial data
The IRDA was examined and, on 10 March 2022 the examiner issued a Notice of Provisional Refusal on the basis that there was a ground for rejection under section 41(4) of the Trade Marks Act 1995 (‘the Act’) in respect of all the services in classes 35 and 42. The examiner’s first report provided:
Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark is EASY MONEY.
The term EASY MONEY is defined as money obtained without especial hardship or effort (Merriam-Webster Dictionary).
Therefore, your trade mark indicates that your business and software related services assist in the provision of money to your customers, with minimal hardship or effort. The ability to obtain/manage money without much effort or hardship is desirable for consumers and this phrase is one that is commonly used within the relevant marketplace to indicate goods and services that allow the consumer to obtain and/or manage money easily. Your trade mark is likely to be seen as a descriptor of your services rather than a badge of trade origin. Other traders should be able to use EASY MONEY in connection with goods or services similar to yours.
The holder responded by submitting submissions by way of its representative David Moore of Henry Hughes IP Ltd. The examiner maintained the ground for rejection under section 41(4). The second report from the examiner focused on addressing the holder’s submissions on how the target audience may or may not view the Trade Mark.
Thereafter, the holder requested extensions of time which were granted before the holder requested to be heard on the matter by way of written submissions as allowed by section 33(4) of the Act. The following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

The Law

17A.28 Grounds for rejecting IRDA

(1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).
(2)Sections 39 to 44 apply in relation to an IRDA as if:

(a)a reference in those sections:

(i)to an application for the registration of a trade mark were a reference to the IRDA; and
(ii)to an applicant were a reference to the holder of the IRDA; and

(b)the reference in paragraph 41 (6) (a) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and

(c)each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark registered by another person included a protected international trade mark held by another person; and

(d)each reference in subparagraphs 44 (1) (a) (ii) and (2) (a) (ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.

Discussion

The ground for rejection is that pursuant to section 41 of the Act which states:

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 holder from the similar 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 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 EASY MONEY is one that is commonly used across a variety of industries to indicate goods/services that allow customers to easily manage/access money. For example, the Trade Mark may indicate that the services the holder provides are intended to provide and/or manage money with little effort expended.
In terms of the ‘other traders’ test in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[3] 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 EASY MONEY when It comes to procurement, invoicing, expense account management and reimbursement, payment processing and managing finances. The Cambridge Online Dictionary defines EASY MONEY as meaning:
Easy money: 1. (noun) Money that is easily and sometimes dishonestly earned
2. (noun) money that you get with little effort
3. (noun) (finance) money that is cheap and easy to borrow
4. money that is easy to earn
[3] (1913) AC 624, [634].
When I consider the basic meaning and understanding that is attributed to the expression EASY MONEY I am not only influenced by the above definitions but also by the basic understanding of the words EASY and MONEY, which can simply be understood by the general Australian consumer to make money or finance simple/uncomplicated. I note that these words are descriptive and indicate that the services offered by the holder are in relation to easy money or money/finances that may be uncomplicated or earned, obtained, borrowed or managed with little effort on the part of the recipient.
The holder has submitted that the Trade Mark capable of distinguishing the designated service as other traders in the same services would not need to use the expression EASY MONEY in the ordinary and legitimate course of trade.
In the TUB HAPPY case[4] 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”.[5]
[4] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41
[5] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 [52] (French CJ, Hayne, Crennan and Kiefel JJ).
The holder has argued:
The Examiner has claimed that EASY MONEY indicates that the applicant’s services “assist in the provision of money to your customers”. This is quite simply an incorrect characterisation of the applicant’s services.
It is clear from the principles above that distinctiveness tests must be applied in connection to the applicant’s actual goods or services. Broadly speaking, the relevant services covered by the EASY MONEY application can be described as business management and business administration in the field of expense tracking, and hosting of websites and software for scanning and character recognition of receipts and other items for expense tracking and record keeping purposes.
However, I disagree with the holder on its characterization of its services. The services for which the Trade Mark seeks registration are incredibly broad and may be characterized as the above as well as many other financial software services including credit card processing and direct payments for merchants along with providing a web-based electronic financial platform for corporate buyers and sellers, namely, platform as a service (PAAS) featuring computer software for transaction and payment processing services, financial record-keeping, management of identity and compliance data, and management of financial data.
The holder’s claimed services may be qualified as being in fields such as procurement, invoicing, expense account management and reimbursement, payment processing and managing finances for example, there is no real need for academic exercise or cognitive leap for the average consumer to conclude that the holder provides services that are intended to provide and/or manage money with little effort expended. The meaning of EASY MONEY is not analogous to TUB HAPPY as it is not metaphorical, covert or allusory but rather it carries a direct and clear explanation of the purpose of the associated services – to make money/finances uncomplicated. As outlined by the examiner in the first report, the ability to manage money with minimal effort or hardship is desirable for consumers and explains why the phrase EASY MONEY is one that is commonly used across a variety of industries to indicate services that allow customers to without complication manage/access money.
Having taken into account the presumption of registrability I am nevertheless 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 IRDO. I acknowledge that the Trade Mark has a an element of distinctiveness to it and this provides the Trade Mark with some inherent adaptation to distinguish the designated services from those of other traders which is why I am satisfied that only a ground for rejection exists under section 41(4).
However, a ground for rejection under section 41(4) need not be fatal to the application, I must also be satisfied that the Trade Mark does not and will not distinguish the designated services as being those of the holder having regard to the factors set out in section 41(4)(b). Accordingly, I will now consider the holder’s evidence of use, intended use and any other circumstances that may be relevant in the consideration. To this end, the holder provided significant comment in relation to ‘other circumstances’ but no evidence of use or intended use of its Trade Mark.
The holder has referred me to Part 23.2.5 of the Trade Marks Manual of Practice and Procedure which specifies that “when assessing trade marks which are to some extent, but not sufficiently inherently adapted to distinguish (i.e. s 41(4)), the Act specifies that the Registrar is to consider ‘any other circumstances’ in combination with the trade mark’s inherent adaptation” for example an “overseas registration… in similar jurisdictions”. The holder states:
In New Zealand, the EASY MONEY trade mark has been registered (see NZ TM No. 1199841) for the same Class 35 and 42 services specified under this application. We submit that this provides additional weight to the arguments outlined above, as the intellectual property office of a similar jurisdiction has recognised the distinctiveness of the EASY MONEY mark. Comparison with New Zealand
New Zealand Application No. 1199841 EASY MONEY in classes 35 and 42 (IR 1637245) was submitted to the Intellectual Property Office of New Zealand (“IPONZ”) on 6 January 2022 and accepted on 28 June 2022, following a minor amendment to the description of services. We attach full particulars of the registration together with a copy of the provisional refusal from IPONZ showing that the only issue raised by the examiner was a request to change the word “featuring” to the word “namely”.
New Zealand’s Trade Marks Act 2002 provides that:
“The Commissioner must not register –
(a) a sign that is not a trade mark:
(b) a trade mark that has no distinctive character:
(c) a trade mark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services”.
The NZ examiner therefore concluded that the application for EASY MONEY (covering the same services in classes 35 and 42 as Australian Application No. 2240706) was not contrary to this section of the Act.

Each case must be assessed on its merits - with regard to the relevant judicial tests and not with regard to the state of the Register or overseas registrations. In this regard, I refer to the comments of Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579; (2000) AIPC 91-539 at paragraph 35 where, after approving the reasoning of Jacob J. in British Sugar plc v. James Robertson & Sons Limited [1996] RPC 281 at 305 to the effect that a comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, his Honour observed:
‘I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.’
The holder’s arguments that the Trade Mark has obtained registration in New Zealand is not a sufficient reason to accept EASY MONEY in Australia. The registration of a trade mark in another country even with similar legislation is not necessarily a precedent for its registrability in Australia. This is because I cannot be aware of all the surrounding circumstances which may have been applied by the examiner in relation to this Trade Mark when they made the decision to accept the Trade Mark for registration in New Zealand.
I am not satisfied that the current circumstances before me make it proper to accept for registration this Trade Mark.

Decision

Regulation 17A.24 provides:

17A.24Final decision on examination
(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a)it is not in accordance with this Division; or
(b)there are grounds for rejecting it.

(2)The Registrar may accept the IRDA subject to conditions or limitations.
(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a)it is not in accordance with this Division; or
(b)there are grounds for rejecting it, in whole or in part.

I reject IRDA no. 2240706 (International Registration No 1637245), and hence extension of protection is refused.

Bianca Irgang
Hearing Officer
Trade Marks Hearings & Opposition
31 October 2023