Featurespace Limited

[2023] ATMO 115

TRADE MARKS ACT 1995

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

ReInternational Registration 1581612 (9, 35, 42) - Australian Trade Mark Application number 2164174 (9, 35, 42) – FEATURESPACE- in the name of Featurespace Limited.

Delegate:	Nicholas Smith
Representation:	Holder: Michael Seifried of FB Rice Pty Ltd
Decision:	2023 ATMO 115 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA to be accepted for possible extension of protection to Australia

Background

1. On 2 December 2020, Featurespace Limited (‘Holder’) applied to extend protection to Australia of International Registration 1581612 under the provisions of the Trade Marks Act 1995 (‘Act’) and Trade Marks Regulations 1995 (‘Regulations’).  Such an application is referred to as an International Registration Designating Australia (‘IRDA’).  The current details of the IRDA appear below:

Application No.:	2164174
International Reg.	1581612
Filing Date:	2 December 2020
Priority Date	2 December 2020
Goods and Services:	Class 9: Computer software; computer hardware; computer databases; apparatus for the processing of data; electronic databases; computer databases; computer software for data processing; computer software for data analysis and statistical analysis; computer software for predictive modelling of human behaviour; computer software for fraud detection and risk management; downloadable electronic publications Class 35: Business advisory services; business data analysis; data processing; database management; business statistical analysis; business risk management consultancy; analysis of gambling data for business purposes; analysis of customer data for business purposes; analysis of payment data for business purposes; information, advisory and consultancy services in relation to all of the aforesaid; maintenance of databases; updating of computer databases. Class 42: Technological and scientific research services; design and development of computer software and hardware; design and development of computer databases; design and development of computer algorithms; providing software as a service; technical support, maintenance and updating of computer software; database design and development; technical data analysis services; technical statistical analysis and predictive modelling services; technical analysis of gambling data; technical analysis of customer data; technical analysis of payment data; computerised analysis of data; information, advisory and consultancy services in relation to all of the aforesaid.  (‘Holder’s Goods and Services’)
Trade Mark:	FEATURESPACE	(‘Trade Mark’)

1. The IRDA was examined as required under reg 17A.12 of the Regulations. On 2 June 2021 IP Australia issued a first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA, identifying a ground for rejection pursuant to s 41 of the Act in respect of the Holder’s Goods and Services (‘First Report’). With respect to the s 41 ground, the examiner stated that the Trade Mark is not capable of distinguishing the specified goods and services because the term Feature Space refers ‘to the collections of features, related to some properties of the object or event under study, that are used to characterise’ data and hence is descriptive of goods and services (which include the Holder’s Goods and Services) relating to data collection and analysis. The examiner concluded that other traders should be able to use FEATURESPACE in connection with the Holder’s Goods and Services or similar goods and services.

2. Between September 2021 and February 2023, the Holder and this office engaged in further correspondence with IP Australia issuing three further examination reports maintaining the s 41 ground for rejection in respect of the Holder’s Goods and Services. The Holder then requested to be heard by the Registrar of Trade Marks under reg 17A.17 of the Regulations.

3. This matter was listed for hearing on 2 May 2023.  On 26 April 2023 the Holder filed written submissions that supplement the earlier submissions made by the Holder to the examiner (‘Holder’s First Submissions’).  The Holder’s First Submissions indicated that they would rely on the evidence previously filed in this matter, being a declaration of Donald Riddick, Chief Legal Officer of the Opponent dated 30 January 2023 with Exhibits 1-16 (‘Riddick 1’) but they sought the right to file additional evidence in the event the Delegate indicated that they were not minded to allow the extension of protection based upon the initial evidence and submissions (and provided a summary of the additional evidence they intended to provide).  At the hearing, I indicated that I would not be providing an initial opinion as to whether the extension of protection of the IRDA would be granted absent additional evidence and all the evidence the Holder wished to rely on should be before me prior to me issuing a decision in this matter.  Following further discussion, I closed the hearing and later issued directions providing the Holder with a further opportunity to file evidence. 

4. The matter was relisted for a further hearing on 11 July 2023 and on 6 July 2023 the Holder filed written submissions that supplemented the earlier submissions made by the Holder to the Examiner (collectively ‘Holder’s Submissions’).  The Holder also filed additional evidence in this matter being a second declaration of Donald Riddick, Chief Legal Officer of the Opponent dated 5 July 2023 with Annexures DR-1 to DR-12 (‘Riddick 2’).  At the hearing Michael Seifried of FB Rice Pty Ltd made further oral submissions to support the Holder’s Submissions. 

5. The present matter is a hearing under reg 17A.17 (which is similar in nature to a request for hearing under s 33(4) of the Act). As noted in MHFC Holdings Pty Ltd[1]  as well as other decisions of the Registrar (Teraglow Pty Ltd[2] and TOM Organic Pty Ltd[3]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 41 ground for rejection under this Act as it applies to the IRDA for the Holder’s Goods and Services.

   [1] [2016] ATMO 96, [9] (Hearing Officer Wilson).

   [2] [2016] ATMO 32 (Hearing Officer Worth).

   [3] [2018] ATMO 46 (Hearing Officer Worth).

   Legislative framework

6. Reg 17A.24 of the Regulations provides that:

   (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.

   …

   (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.

7. Regarding the present application, the only unresolved ground for rejection identified is under s 41 of the Act. The capacity of the Trade Mark to distinguish the Holder’s Goods and Services must be assessed at the filing date, being 2 December 2020 (‘relevant date’) however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.[4]

   [4] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968, [32] (Finn J).

8. Section 41 of the Act provides:

   41 – Trade Mark not distinguishing applicant’s goods or services

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:        For goods of a person and services of a person see section 6.

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)the time of production of goods or of the rendering of services.

   Note 2: For goods of a person and services of a person see section 6.

   Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (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).

9. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act, which corresponds to Reg 17A.24:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[5] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [5] (1998) 40 IPR 498, 505 (Branson J).

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Applicant’s 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 [Applicant’s Services]. [that is, s 41(4) applies][6]

   [6] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).

10. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

    (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

    (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
    
    (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
    
    (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

    
    (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
    
    (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
    
    (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
    
    (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (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”: Cantarella at [59].
    
    (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
    
    (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
    
    (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
    
    (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[7]

    [7] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

11. As noted in paragraph 6 above, the process I am required to undertake is not a review of the examiner’s reasoning.  However, it is useful to understand how the examiner considered the question of inherent adaption to distinguish in respect of the Trade Mark. The term FEATURESPACE does not have a dictionary definition.  Nor do the dictionary definitions of FEATURE and SPACE necessarily result in a term that is descriptive in respect of the Holder’s Goods and Services (as opposed to, for example GREENAPPLE in respect of apples).  Rather in the examination reports the Examiner stated that ‘Feature space is a term that refers to the collections of features, related to some properties of the object or event under study, that are used to characterise your data. FEATURESPACE is descriptive of goods and services related to data collection and analysis.’  The examiner then provided links to websites that either implicitly or explicitly provided definitions of ‘feature space’. 

1. However, in viewing the website links provided by the Examiner to the Holder, I am not satisfied that there is a precise and consistent definition for the term ‘feature space’. Definitions appearing in the websites identified by the Examiner included:

   ·Feature space just refers to the collections of features that are used to characterize your data. For example, if your data is about people, your feature space might be (Gender, Height, Weight, Age).

   ·The set of all possible combinations of predictor variables

   ·An example of a vector space

   ·Space associated feature vector

2. The Holder submits that the Trade Mark has no dictionary meaning, that the term ‘feature space’ is not in common use in Australia or elsewhere (noting that a Google search result for the term in 2021 resulted in references to the Holder appearing in the first two pages or results) and that the term does not have a sufficiently precise meaning in respect of the Holder’s Goods and Services for an ordinary signification to be established.  I accept the Holder’s submissions.  While there is clearly some use of the Trade Mark to refer to an aspect of machine learning, the use is so limited, and the meaning so imprecise, that I am not satisfied that the search results definitively identify an ordinary signification for the Trade Mark, such that I can then determine if other traders in the Holder’s Goods and Services may want to use that term in respect of their goods.

3. I note that in Mark Foy's Limited v Davies Coop and Company Limited (‘Tub Happy’), Dixon CJ stated that:

   It is, I think, a mistake first to assume that words like “Tub Happy” do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is.  Indeed to institute a search for a meaning 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 goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.

   The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude. [8]

   [8] [1956] HCA 41; (1956) 95 CLR 190, 194.

4. In order to reach the conclusion that the Trade Mark has the proposed signification, I would have to view the material identified by the Examiner, conclude that because certain individuals have used the term ‘feature space’ in varying ways online it must have an ordinary signification and then synthesize the proposed signification from that (very limited and apparently diffuse) use.  This assumption is precisely the error identified in Tub Happy.

5. In Red Energy Pty Limited v Registrar of Trade Marks, which concerned the trade mark EVENPAY, the Federal Court stated:

   In my view on the material before me, it would seem that EVENPAY does not have an ordinary meaning or signification in respect of the designated Goods or Services. In this respect:

   (a) EVENPAY appears to present as an invented word.
   
   (b) EVENPAY appears not to have a meaning in the context of these services that a consumer would immediately perceive.
   
   (c) EVEN would seem to have multiple meanings, adding to the ambiguity and richness of meaning from a consumer standpoint. Those meanings include being divisible by two, level, smooth or balanced. It is also used as an adverb to give emphasis to an action, as in ‘she will even travel to...’.
   
   (d) Further, the apparent lack of any ordinary signification or meaning appears to be reinforced by the removal of the space between EVEN and PAY.
   
   

   [9] [2018] FCA 1449, [13] (Beach J).

   (e) Further, whilst being formed from the combination of two words, the combination seems to me to be syntactically unusual which takes it outside of ‘the common stock’.[9]

6. I consider the Trade Mark to have each of the features identified by Beach J in the case above.  I do not accept that the Trade Mark has the signification identified by the Examiner.  I cannot, either through the use of ordinary dictionary definitions or the material identified by the Examiner, identify any particular ordinary signification of the Trade Mark, and certainly not one that would amount to a direct reference to the character and quality of the Holder’s Goods and Services.  As such, I do not need to consider the second of the two steps established by Cantarella, and I find that the ground for rejection has not been established.

   Decision

7. 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.

8. As I am not satisfied that there is a ground for rejecting the IRDA under section 41 of the Act I must accept the IRDA for possible extension of protection in Australia. As a delegate of the Registrar, I now do so.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   15 August 2023