Fairfax Digital Australia & New Zealand Pty Ltd and Fairfax Media Limited v REA Group Ltd
[2018] ATMO 21
•15 February 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Fairfax Digital Australia & New Zealand Pty Ltd and Fairfax Media Limited to registration of trade mark application 1486181(35, 36) - realestate.com.au - in the name of REA Group Ltd.
Delegate: Debrett Lyons Representation: Opponent: Christian Dimitriadis of senior counsel and Justine Beaumont of counsel instructed by Norton Rose Fulbright.
Applicant: Natalie Hickey of counsel instructed by King & Wood Mallesons.Decision: 2018 ATMO 21
Section 52 opposition: section 41 pressed – ss41(6) applicable – ground of opposition not established – trade mark to proceed to registration.Background
REA Group Ltd (‘the Applicant’) maintains a portal style website resolving from the domain name <realestate.com.au> where real estate agents list and consumers view residential or commercial property. It is the putative use of that name as a trade mark and the attempt to register it as such which gives rise to this opposition brought under
section 52 of the Trade Marks Act 1995 (‘the Act’).
Details of the trade mark application are set out below.
Trade mark: realestate.com.au (‘the Trade Mark’)
Trade Mark app. no: 1486181
Filing Date: 18 April 2012
Specifications: Class 35: Advertising of real estate property services provided through a web portal
Class 36: Real estate property services provided through a web portal
(‘the Services’)
During the course of examination, the Applicant restricted a broader specification to the Services and the Trade Mark was accepted under the provisions of section 41(6), applicable at the time.
Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks dated 26 June 2014.
On 25 August 2014 Fairfax Digital Australia & New Zealand Pty Ltd and Fairfax Media Limited (‘the Opponents’) filed a Notice of Intention to Oppose registration, followed on 24 September 2014 by a Statement of Grounds and Particulars (‘the SGP’).
The Applicant then filed its Notice of Intention to Defend. Thereafter the parties filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’) and subsequently requested to be heard.
The Opponents were not the only parties to oppose the application, but they were the only parties not to have been heard when, acting as a delegate of the Registrar of Trade Marks, I heard the parties in this opposition in Canberra on 22 November 2017. The Opponents were represented by Christian Dimitriadis (SC) and Justine Beaumont of counsel, instructed by Norton Rose Fulbright. Rebecca Brenikov of that firm was in attendance. Natalie Hickey of counsel, instructed by Bill Ladas of King & Wood Mallesons, appeared for the Applicant. Also in attendance was Tim Guy from the Applicant. Both sides made oral and written submissions.
Prior to that hearing, other oppositions to the application had been fully determined. Decisions of this Office had issued in the cases of First National Group of Independent Real Estate Agents v REA Group [2016] ATMO 102 (‘First National’) and Real Estate Institute of Australia & Ors v REA Group [2017] ATMO 82 (‘REI’).[1] The Applicant had been before the Federal Court, resulting in the decision of Bromberg J in REA Group v Real Estate 1 (2013) 217 FCR 327 (‘Real Estate 1’) which is also of relevance in this opposition.
[1] Decisions in the First National and REI cases rejected the oppositions and, subject to the outcome in this matter, ordered registration of the Trade Mark subject to the application of section 41(6)(a). Those decisions were not appealed to the Courts.
Evidence
The evidence in these proceedings consists of the following declarations:
Evidence in Support
·Declaration of Georgina Hey made on 3 February 2015 (‘Hey’)
Evidence in Answer
·Declaration of Bill Ladas (‘Ladas 1’) made on 22 April 2015 with Exhibits BL-1 to BL-9; and
·Declaration of Bill Ladas made on 23 April 2015 with Exhibits BL-10 to BL-15.
With the exception of BL-9, Ladas 1 exhibits evidence adduced in Real Estate 1.
Ground of Opposition and Legislative Framework
The SGP nominated a single ground of opposition under the Act based on section 41 which deals with a trade mark’s capacity to distinguish an applicant’s goods or services.
The SGP relevantly provides as follows:
1.2 The Opposed Mark does not possess the capacity to distinguish the Applicant’s Services from those of other traders because:
(1) The Opposed Mark is descriptive of the Applicant’s Services in that it directly indicates the nature of the Applicant’s Services, namely real estate and related advertising services provided through a website within the .au internet domain space; and
(2) the addition of the “.com.au” element is not sufficient to render the Opposed Mark distinctive.
1.3 Other traders are likely to need to use, or do commonly use, the words “realestate” and “realestate.com.au” in connection with their own services which are the same as or similar to the Applicant’s services
It is common ground that it is section 41 as it stood prior to the amendments to the Act introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012[2] which governs this opposition.[3] That iteration of section 41 provided:
[2] Section 3, Schedule 6, item 113 substituted a new section 41.
[3] Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50 (24 June 2013)
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).
Section 41 provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. The relevant form of section 41 came into force in 1995 along with the current Act and was first considered in detail by the Federal Court in Blount Inc v Registrar of Trade Marks [1998] FCA 440 (‘Blount’). In that case Branson J explained the structure and operation of the section as follows:
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)).
The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken 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, is able to answer positively 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, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so “establish” by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.
It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant’s goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.
Whilst the Opponents bear the onus to establish the ground of opposition and show that the Trade Mark is not capable of distinguishing the Services, should the determination come to be made under section 41(6) then it is the Applicant which then bears the onus to show that the Trade Mark has in fact become distinctive of the Services.[4] The filing date is the relevant date on which to establish factual distinctiveness[5] and the standard of proof required is the ordinary civil standard based on the balance of probabilities.[6]
[4] Telstra v Phone Directories (2015) 237 FCR 388 at [132] (per Besanko, Jagot and Edelman JJ).
[5] Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511 at [59].
[6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].
Discussion
In the introduction to their written submissions, the Opponents state that the Trade Mark application “constitutes a classic example of an attempt to ‘enclose part of the great common of the English language and exclude the general public… from access to the enclosure’.[7]” They go on to submit that the Trade Mark “is so descriptive of real estate services offered through a web portal that no amount of use could give it the distinctiveness required to meet the test in section 41(6)(a)”.
[7] Joseph Crosfield & Sons Appn (“Perfection”) (1909) 26 RPC 837 at 854.
Further, the Opponents submit that, in any event, the Applicant has not discharged its onus to prove that at the filing date the Trade Mark was “100% distinctive in fact” of the Services because:
(i) the evidence of use is not evidence of trade mark use, but rather use to denote the Applicant or its business; use to identify the Applicant’s web address; or use to describe the services provided at the Applicant’s website; and
(ii) where the use has been in a trade mark sense, it has been in conjunction with, or as part of a composite mark which also includes, the following logo (commonly coloured red but sometimes shown in greyscale, hereinafter the “house device”):
The Opponents go on to “acknowledge that other oppositions to REA’s trade mark application brought by third parties on similar grounds have been refused in recent decisions. For the reasons outlined […], a different result should apply here.”
Furthermore, the Opponents submit that the decisions made by delegates in First National and REI should not prohibit a different finding here, for the following reasons:
·those oppositions were dealt with on the papers, on different evidence and without the benefit of submissions from the opponents in question;
·those delegates, perhaps without the aid of submissions from the Opponents, did not consider the decision of Bromberg J in Real Estate 1 in its proper context and in its entirety; and
·the delegates in the earlier decisions misapplied some fundamental principles.
The Applicant refutes each of those submissions. The scheme of the discussion which follows is to take the Opponents’ arguments, largely in the order they have been just presented, with consideration given to the elaborated submissions made by both sides.
Inherent adaptation to distinguish
21. The classic test for inherent adaptation to distinguish is laid out in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55 (‘Clark Equipment’) 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] UKHL 588; (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.[at 5]
When that passage was more recently considered by a differently constituted High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (2014) 254 CLR 337 (‘Cantarella’) the majority uncovered a two-step process. They stated:
It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[at 7]
So directed, my first step is to consider the ordinary signification of the Trade Mark from the viewpoint of persons who will avail themselves of the Services.[8] The High Court in Cantarella continued:
Once the “ordinary signification” of a word ... is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[8]
[8] Ibid. [51].
The Applicant’s written submissions were that:
… realestate.com.au … is a domain name. By its very nature only the registrant of the domain name could use it, whether as an internet address, as a trade mark or both. realestate.com.au is not a term readily capable of common speech.
It follows from the above that there is no reason why ‘the public’ would want to use realestate.com.au. By way of example, “I’m going down the road to look at some realestate.com.au” makes no sense. [It is virtually impossible to contemplate a day to day situation in which anyone would want to refer to the domain name other than as the Applicant’s trade mark.]
Any suggestion that the public “will want to use the words realestate.com.au for the sake of the signification which they ordinarily possess” highlights both the specialised manner in which the Applicant has itself used the brand name, and also the nonsensical nature of the claim in light of the brand identity acquired by realestate.com.au.
The trade mark realestate.com.au is far too vague and indeterminate … to meet the requirement of a direct description. It may well tell the user that the subject matter on the website would in some way relate to real estate (for example, the construction of real estate, which services would fall in class 37), but it does no more than convey an indirect meaning in respect of the Services specified in the Application. An additional word is needed to make the point plain (eg. realestateconstruction.com.au). A salient example of a mark that might convey a direct meaning is carsales.com.au (a mark registered in plain capitals in respect of advertising services in class 35 with an endorsement under section 41(5): AU TM 1208748).
…
That there is a large number of ‘home’ or ‘property’ related words (and variations) is apparent when contemplating the brand names used by the Applicant’s competitors in the property portal market. There are numerous names reflecting ‘property’, ‘homes’, ‘real estate’ which have found expression in property web portals. Just some examples are property.com.au; All Homes; Domain; and of course, realestate.com.au. The Applicant’s mark has not hampered legitimate traders in any way.
The Applicant’s submission is that the Trade Mark was, at the filing date, inherently adapted to distinguish the Services. As already indicated, the application for the Trade Mark was accepted subject to the provisions of section 41(6) of the Act and, by contrast, the Opponents’ submission is that it “seems uncontroversial” that section 41(6) is applicable since, in their assessment, the Trade Mark has no inherent capacity to distinguish the Services.
Plainly, the structure of the Trade Mark is that of Australian country coded top level domain name. The ordinary signification of the Trade Mark from the viewpoint of persons who wish to avail themselves of real estate property services, or the advertising of real estate property services, provided through a web portal, is of an internet address to reach that portal.
In the UK case of 1-800 FLOWERS Inc. - and – Phonenames Ltd [2002] FSR 191, the Court of Appeal (Gibson, Buxton and Parker LJJs) considered the registrability of the alpha-numeric telephone number 800-FLOWERS as a trade mark under section 10 of the Trade Marks Act 1994 (UK). Lord Justice Parker, who delivered the leading judgement, explained that:
As noted earlier, in support of its contention that the mark is distinctive within the meaning of the section, the Applicant does not rely on actual use of the mark; its case is that, judged as at the date when the application for registration was submitted (13 February 1993), the mark is "inherently capable" of distinguishing between services of the relevant type provided by the Applicant and similar services provided by others, and that it accordingly falls within section 10(2)(b). [at 82].
His Lordship continued,
… I am of the clear view that the inherent distinctiveness of the mark in 1993 has to be judged against the background of the increasingly widespread use of phonenames in the UK.
So judged, the mark does not in my judgment have the requisite inherent capacity to distinguish. In substance it is, as the [trial] judge rightly observed, no more than an encoded telephone number. I therefore conclude that the decision of the judge to uphold the ground of objection under section 10 was plainly correct. [at 87-8]
Lord Justice Buxton wrote, more pertinently to the matter before me, that:
I readily accept that in general terms an alphanumeric mark, or even a telephone number, is "capable of distinguishing" the services to which the mark is attached. The question, however, is whether this mark is capable of distinguishing these services. [at 122]
The Court of Appeal found that the trade mark did not distinguish the applicant’s flower selling services and refused registration. There was in that case no enquiry into whether the trade mark might suggest, for example, services relating to the cultivation (rather than the sale) of flowers. In the matter before me it is enough to observe that a footnote to section 41 of the Act[9] states: “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.”
[9] As the section now stands and as it stood under the repealed section relevant to this opposition.
In the High Court case of Mark Foy's Limited v Davies Coop and Company Limited [1956] HCA 41; (1956) 95 CLR 190 (‘Tub Happy’) Dixon CJ cautioned that “to institute a search for a meaning [to the Trade Mark] almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the [Services]”. That is not the case here. In my assessment the Trade Mark has an ordinary signification which is clear and immediate and does not involve the type of reflection or wonderment described by Dixon CJ in Tub Happy.
Returning to Cantarella and Clark Equipment and to the second-prong question of whether the Applicant has attained its object of distinguishing the Services from the services of others, the issue is whether other traders might in the ordinary course of their businesses and without any improper motive, desire to use the Trade Mark, or some mark nearly resembling it, upon or in connexion with their own services. I find that they would and so find that the Trade Mark is not to any extent inherently adapted to distinguish the Services from the goods or services of other persons.
Acquired distinctiveness – section 41(6)
With that finding I move directly to section 41(6) and to the Applicant’s submission that the Trade Mark did in fact distinguish the Services as at the filing date.[10] As stated, the Opponents’ claim is that “no amount of use could give [the Trade Mark] the distinctiveness required to meet the test in section 41(6)(a)”. I would support the Applicant’s objection that this claim goes beyond the basis for the opposition outlined in the SGP but I need say no more since nothing ultimately turns on the matter. Nonetheless it should be understood that the Applicant’s submissions are conditioned by the Opponents’ unsettling undertone throughout that even when analysed under section 41(6), no amount of use could give the Trade Mark distinctiveness.
[10] The Applicant points out that its registration 1075971 was accepted under section 41(5) for a far broader specification of goods and services than that of the Trade Mark.
In order focus explicitly on that debate, I will first consider the objections raised by the Opponents regarding the quality of the use of the Trade Mark for in my opinion that issue is set to obscure what has been meant by the courts and others when the expression “100% distinctiveness” has been used from time to time.
It will be recalled that the Opponents object that the evidence of use is either not evidence of trade mark use, or is not evidence of use of the applied-for Trade Mark, solus. So, for example, their written submissions includes the passages:
To the very limited extent that the opposed mark is used alone, it is not used as a trade mark. For example, the undated advertisement appearing at B2640 of JLW-14 (referred to in paragraph 54 of Whyte), includes the sentence “That’s why more than 500,000 online browsers…visit realestate.com.au every month,” and on the next page, “contact your agent about advertising on realestate.com.au today.” These references are either use as a web address or as a reference to the portal itself (as the guidelines say, a reference to the product not the brand). On page B2641 the branding appears, and it includes the house device and the tagline.
Similarly, other uses of the opposed mark do not amount to trade mark use but use as a business or company name (it appears that the applicant’s subsidiary is named realestate.com.au Ltd). See for example, the prospectus exhibited at BL-3 (Tab 6.3), pages B0145, B0151-B0159, and the early annual reports at B0252 and B0297. These uses refer to realestate.com.au as a corporate entity or business, or in some cases, refer to the website or portal itself. The radio advertisements exhibited at BL-11 to the second Ladas declaration also refer to realestate.com.au to denote the website itself. The TV advertisements exhibited at BL-12 display the composite mark and to the extent that the opposed mark is used orally, it is once again to refer to the website itself.
At the hearing, as now, that objection has not moved me. The “eligible use” of the Trade Mark, by which I mean pre-filing date use of the Trade Mark as applied-for, free of any infirmity described by the Opponents, is enormous by any measure. True, the evidence discloses examples of what might rightly be considered use which denotes the Applicant or its business, or use which simply identifies the Applicant’s web address, or use of the Trade Mark somehow in conjunction with the house device, for example, as shown below.[11]
[11] The subject of the Applicant’s registration no. 811931 registered with effect from 29 October 1999.
Nevertheless, those examples of non-trade mark use or use of signs departing from the Trade Mark by way of addition of the house device,[12] are of vanishing significance in the totality of the evidence of use in spite of what the Opponents have to say. A point I will return to shortly is that even if, through painstaking effort, some numerical percentage might be accorded to that defective use when examined against the whole, the slight diminution of the eligible use, measured as a percentage, does not disqualify the Trade Mark from so-called “100% distinctiveness” as that term has been used and understood over many decades.
[12] I would hesitate before using an expression such as “material particulars” since, in context, I regard the house device to be of very low distinctive value: see E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, 69.
The Opponents refer to the case of The Chancellor Master & Scholars of the University of Oxford trade as Oxford University Press & Anor v. The Registrar of Trade Marks, (1990) 17 IPR 509 (‘Oxford’) where at 528 Gummow J stated that “there are some trade marks no amount of use of which can serve to distinguish the goods with which the applicant is connected in the course of trade from those in respect of which no such connection subsists.” The Opponent’s acknowledge that Oxford was decided under the now repealed Trade Marks Act 1955 (‘1955 Act’), but cite the following passage from Cantarella:
…the provisions of the Act which specify the applications for registration which must be rejected cannot be understood fully without some reference to the interpretation of provisions in the Trade Marks Act 1905 (Cth) (the 1905 Act) and the Trade Marks Act 1955 (Cth) (the 1955 Act) which specified the kinds of trade marks which were registrable. This is because the statutory language which gives rise to the question on this appeal has a well-understood provenance. [22]
The Opponents repeat the well-known words of Jacob J from the UK case of British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (‘British Sugar’), who observed:
I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. 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. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd in the Privy Council and the United Kingdom case, Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd in the House of Lords. In the former case Lord Russell said:
“A word or words to be really distinctive of a person’s goods must generally speaking be incapable of application to the goods of anyone else.”
It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. [Citations omitted.](at page 302)
The Opponents argue that the evidence is “mere evidence of use” in the sense described by Jacob J and shows, at best, that at the filing date, people recognised the domain name as corresponding with the internet address for the Applicant’s website. That, it is said, does not equate to distinctiveness in the trade mark sense.
I do not agree. Bromberg J found that the term “realestate.com.au” could function both as a brand name and a domain name at the same time.[13] There is ample evidence of trade mark use.[14] Moreover, it is worth recalling that the caution about “mere evidence of use” expressed above in British Sugar was underscored by Jacob J in a final sentence: “This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark”, a reference to the fact that use of the word TREAT was frequently in close connection with the maker’s name and mark, “Robertson’s”. There is no such parallel in this case.
[13] See also Perram J. in Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544; 92 IPR 165 at [50] where it w I that ‘.com.au’ flags a commercial enterprise in much the same way as does a shop sign.
[14] As Bromberg J stated in Real Estate 1 at [47]: “To give some context to the magnitude of use involved, this number exceeded the number of visits made by unique browsers in June 2011 to the websites of some of the most well known daily metropolitan newspapers in Australia, such as The Age and The Australian. In the month of October 2011, the realestate.com.au website had visits from 6.8 million unique browsers and a total of over 16 million visits.”
The Opponents go on to state that:
The evidence shows that the words REALESTATE and REAL ESTATE, often in combination with the suffix, .com.au, are in widespread use by many traders in relation to the real estate services in question.
Ms Hey gives evidence that an internet search using the term realestate.com.au generated 270 million results: paragraph 12 of the Hey declaration. Exhibit GH-3 to the Hey declaration provides examples of other traders using “realestate” as part of their domain names, including examples which add other descriptive or non-distinguishing elements e.g. therealestate.com.au, realestateinvestar.com.au, 5starrealestate.com.au. Further examples appear at Exhibit GH-4 e.g. inspectrealestate.com.au, westrealestate.com.au, brisbanerealestate.com.au, nswrealestate.com.au, all owned by third parties.
In Real Estate 1, Bromberg J found at [133] that “..the evidence shows there are many property portals with domain names which are only slightly different to “realestate.com.au”.” His Honour also held at [133]-[134] that the evidence of search results demonstrated “the extensive use of the descriptive terms in question” and that “in this sphere of commerce, the phrase “real estate” in association with a top-level suffix is in common use.”
The Opponents argue that:
… it is important to recognise that the delegates determining the oppositions in First National and REI did not have the benefit of any submissions from the opponents in those matters … . The opponents also respectfully submit that the delegates in both earlier oppositions appear to have made errors which infected their decisions.
First, both delegates appeared to assume (First National at [25] and [38]; REI at [15] and [25]), wrongly, that the onus was on the opponent for all grounds, including under s 41(6) (despite acknowledging at [18] and [27] respectively that the opposed mark had to be considered under s 41(6)). The First National delegate also seems to have considered the relevant time for assessing distinctiveness as “now” rather than the filing date: see [28].
Secondly, the earlier delegates relied on parts of Bromberg J’s reasons in Real Estate 1 but ignored other parts. In particular, neither noted Bromberg J’s concern with the notion that REA should have a monopoly in this field of commerce in the “highly descriptive” term ‘Real Estate’, as is plain from his observations at [247] in relation to the composite realestate.com.au mark incorporating the distinctive house / arrow device (in the form the subject of e.g. registered trade mark number 811931) (composite mark):
…registration of REA’s realestate.com.au marks has effectively given REA a monopoly over two highly descriptive terms when used in combination. Those terms are likely to be the most common terms on a search results page where a search has been conducted for a residential real estate portal. The protection conferred by REA’s trade marks over the use of “realestate” and “.com.au” in combination, provides REA with a monopoly over the term “realestate” in circumstances where its rivals seeking also to use “realestate” or a close variant thereof as a second-level domain, do not forego the advantages of using “.com.au” in their domain names. The natural advantage of a domain name which incorporates “realestate” to the commercial success of property portals will be apparent from observations I have already made. There is also a natural advantage in the use of the suffix “.com.au”. It is troubling that terms that are highly descriptive of a particular area of commerce and which provide significant commercial advantage should not be readily available for use by all who seek to participate in that commerce. However, in the absence of a successful challenge[15] to the registration of REA’s realestate.com.au trade marks, whilst that may be troubling, REA is nevertheless entitled to the protection of the monopoly which has been conferred upon it. (emphasis added)
These remarks apply even more strongly to a mark which consists, in effect, only of the term REALESTATE.
Thirdly, both delegates relied heavily on Bromberg J’s conclusions in Real Estate 1 in relation to consumer recognition of REA’s domain names to the extent that they had become distinctive of its businesses (Nationwide at [27]-[28]; REI at [22], [24]). However, the statutory test under s 41(6) is different from the question that was considered by Bromberg J. The flaw in conflating, on the one hand, the threshold reputation required for the purpose of an action in passing off/ misleading and deceptive conduct under the Trade Practices Act 1974 and, on the other hand, distinctiveness for the purpose of trade mark registration, is plain from the decision of the Full Court in Oxford:
…a common law mark, even though it would support a passing off action, is not necessarily registrable. (per Gummow J at 524)
Of course, in any event, in Real Estate 1, REA failed to make out its pleaded causes of action in misleading and deceptive conduct and passing off. Furthermore, the delegates took out of context, Bromberg’s J’s comments cited in their decisions. A full reading of the judgment is necessary. In particular, Bromberg J observed at [125]ff that:
…each of the elements of the term “realestate.com.au” remain descriptive despite the combination of them into a single term. The phrase “real estate” is a very well-known and frequently used phrase. Whilst there are other ways in which to describe real property, there are not many and “real estate” is the description most commonly used. A “dot-com” is a company which conducts business on the internet and, in an internet address, “.com” indicates a commercial internet site: Shorter Oxford English Dictionary (6th ed, Oxford University Press, 2007) p 744. The term is obviously derived from the word “commercial” and it is the most common top-level domain used by commercial businesses. The top-level domain “.au” is a well-known abbreviation for Australia and, when used as part of an internet address, it is descriptive of the Australian location of the website concerned.
Secondly, the phrase “real estate” will not be regarded as a name in the sense of being a sign or badge of origin or identity. Real estate is a common English phrase which suggests no necessary connection with the existence of a business. It is a descriptive word which describes articles of trade and not the origin of those articles: Cellular Clothing at 337 (Lord Watson). It is only when “.com.au” is attached to “realestate” and the term “realestate.com.au” is viewed as a single expression, that the term begins to suggest a connection with a source business or brand. However, the very features (.com.au) which are essential for giving the term recognition as a name, are features which the cases indicate will commonly be ignored or be given little substantive attention by consumers.
…
A full reading of Real Estate 1 makes clear that the judgment is entirely consistent with the conclusion that realestate.com.au was not at the filing date distinctive of REA’s services in the trade mark sense.
Fourthly, while the delegate in REI referred to the concept of an otherwise descriptive mark having become ‘100% distinctive in fact’ (as referred to in Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 and Oxford University), he did not engage with the notion of whether the evidence proved that the opposed mark was “100% distinctive in fact” as at the filing date. This would involve a finding that as at the filing date, the opposed mark was 100% distinctive of REA’s business only and of no other business offering real estate services. …
[15] The respondents in Real Estate 1 did not challenge any of REA’s registrations for the realestate.com.au composite trade marks and therefore the Court did not rule on the registrability or otherwise of these marks
Now bearing the onus of proof, the Applicant responded to those claims asserting that that Opponents had not provided any material basis for disturbing the findings already made as to factual distinctiveness of the Trade Mark, having regard to (i) the close examination of the application, (ii) the findings of the Federal Court in Real Estate 1 made on an assessment of the same evidence relied upon in this opposition, and (iii) the decisions of this Office regarding section 41(6) made in the First National and REI cases.
The Applicant submitted that the Opponents’ arguments rest on the faulty premises of case authority made before the Act came into force, together with the characterization of section 41(6) as demanding proof of “100% distinctiveness”.
In my opinion, too much is made of the expression “100% distinctiveness (in fact)” in these proceedings. It is not a requirement of section 41(6) and is not a term used in the Act. Referring to Cantarella, it is not just statutory language which has a well-understood provenance; trade mark law has evolved its own lexicon which exists outside the language of the Act. “Per se distinctiveness”, for example, is synonymous with the idea of “100% inherent distinctiveness” but is not an expression found in the legislation. In Blount, Branson J explained that “[t]he Act appears plainly to disclose an intention that it should no longer be the case that a trade mark which is ‘100 per cent distinctive in fact’ should not be able to achieve registration.” In Oxford, decided under the 1955 Act, the Registrar conceded that the trade mark OXFORD was “100% distinctive” of the goods, being I might add, “Printed publications being goods in Class 16”,[16] a vastly broader specification than the Services here. In that case the Court had something to say of the lineage of the expression “100% distinctiveness”, as follows:
K.E. Shelley QC, by whom the expression "100% distinctiveness" was used in argument before the House of Lords in Yorkshire Copper Works Limited's Application (1953) 71 RP 150 at 151, was careful to define the meaning he attributed to it: "that the word 'Yorkshire', used adjectivally in relation to these particular goods, has lost its primary geographical significance to everyone concerned with the trade in those goods." That was not a trade in which members of the public would, in the ordinary way, be involved, as Lord Evershed M.R. pointed out in the Court of Appeal (70 RPC at 2). "Such a thing", Shelley QC pointed out of "100 per cent distinctiveness" in that sense, "can only happen in a very specialised field, in which everyone who deals with the goods is trained in his trade: it could not happen with goods sold to the general public (such as slippers, in the Glastonbury case): but we say it has happened here". It is in my opinion apparent that by the words, "everyone concerned with the trade in those goods", Shelley QC intended to comprehend those who buy the goods. [at 49]
[16] The class 9 goods of the original application having been deleted after the First Instance decision of King J but before the Full Court appeal.
It follows that I do not comprehend the term “100% distinctiveness” as it has appeared from time to time in case law, or sometimes used as a shorthand for the quality of a mark accepted under section 41(6), to mean anything more than a mark shown in fact to be distinctive. To the extent that the Opponents here might insinuate that the Applicant’s evidence of use falls short of proof of 100% distinctiveness in some sense of failing to show, in every instance, trade mark use, or suffering some other infirmity, then I reject that submission and find that there is ample evidence of use of the Trade Mark so as to prove distinctiveness in fact.
The question: “has this trade mark acquired 100% distinctiveness?” is another way of posing the question: “has the trade mark acquired a secondary meaning in the relevant marketplace?” If a trade mark has acquired the secondary meaning as denoting only the goods/services of the particular trader, it has become 100% distinctive. The distinction that might be drawn in Oxford between a finding of reputation made in the context of a passing off / misleading and deceptive conduct action, from a finding of factual distinctiveness in a registrability context, is one that had relevance to the law as it stood under the 1955 Act, but for present purposes it should be recognized that the issues are inter-related – ie, just because that distinction exists, it does not follow that a trade mark with a reputation has not become distinctive through use.
The Opponents’ remaining objections are not well taken in my view. I do not for one moment think that the Registrar’s delegates in either First National or REA failed to understand the shifting onus under section 41. Nor do I think that they misunderstood or misapplied the Court’s reasoning in Real Estate 1. I agree with the Applicant that the Opponents’ submissions in some instances take Bromberg’s words out of their proper context. In other instances all that might be said is that the judge expressed an obiter opinion on the potential tensions between trade mark law and domain name ownership.
In short, Bromberg J assessed the Applicant’s evidence and stated:
The manner in which consumers reach REA’s websites also strongly favours a finding that REA’s domain names are distinctive of its property portal businesses because those names are utilised by consumers when trying to locate those businesses: at [110]
Whilst the Trade Mark does not possess inherent distinctiveness, I agree with Bromberg J’s assessment that the evidence establishes trade mark use to such an extent as to render the Trade Mark distinctive for the Services on the filing date. I am satisfied that the provisions of section 41(6)(a) apply. The ground of opposition under section 41 has not been established.
Decision
Section 55 (1) of the Act provides:
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponents have not established a ground of opposition under the Act. All oppositions to registration of the Trade Mark having now been decided, I direct that trade mark application 1486181 may proceed to registration after one month from the date of this decision, subject to the endorsement that acceptance of the Trade Mark was by application of section 41(6)(a) of the Act.
If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.
Costs
Both parties sought their costs. The Applicant has been successful and I find that it is entitled to an award of costs. I award costs against the Opponents under section 221(1) of the Act in accordance with Schedule 8 of the Regulations.
Debrett Lyons
Hearings Officer
Trade Marks Hearings
15 February 2018