Fire Rescue Victoria v CBS (Aust) Pty Ltd

[2022] ATMO 209

TRADE MARKS ACT 1995

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

ReOpposition by Fire Rescue Victoria to registration of trade mark application 2064637 (25) – FIRE RESCUE – in the name of CBS (Aust) Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: David Larish of Counsel, instructed by King & Wood Mallesons

Applicant: Ben Fitzpatrick of Counsel, instructed by Actuate IP

Decision:                   2022 ATMO 209

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 41 considered – inherent adaptation of words on clothing considered – trade mark has no inherent adaptation to distinguish – registration refused

Background

1. This decision concerns an opposition brought by Fire Rescue Victoria (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) to registration of the trade mark the subject of the application detailed below. The application is in the name of CBS (Aust) Pty Ltd (‘the Applicant’):

Application Number:	2064637
Filing Date:	30 January 2020
Specification:	Class 25: Casual shirts; Denim shirts; Open-necked shirts; Polo shirts; Printed t-shirts; Shirts; Short-sleeve shirts; T-shirts; Polo tops; Shirt jackets; Sweatshirts; Clothing; Occupational clothing (other than for protection against accident or injury); Ready-made clothing; Ready-to-wear clothing. (‘the Applicant’s Goods’)
Trade Mark:	FIRE RESCUE	(‘the Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

3. Following advertisement of the application’s acceptance in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration and a Statement of Grounds and Particulars (‘the SGP’). The SGP nominated grounds of opposition under ss 41, 42(b), 44, 58, 58A, 59, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend.

Evidence

4. The Opponent filed Evidence in Support of its opposition, being:

·Declaration made on 3 June 2021 by Margot Stork, the Executive Director of Strategic Services of the Opponent, with Exhibits MS-01 to MS-15 (‘the Stork declaration’).

5. The Applicant filed Evidence in Answer, being:

·Declaration made on 7 September 2021 by Andrew Hough, the Director of the Applicant, with Annexures AH-1 to AH-16 (‘the Hough declaration’).

6. The Opponent filed Evidence in Reply, being:

·Declaration made on 9 November 2021 by Emma Courtney Drinkwater, an employee of King & Wood Mallesons, the representative of the Opponent, with Exhibit ECD-01 to ECD-17.

7. Once the time allowed for filing evidence had ended the parties requested to be heard. 

8. In my capacity as a delegate of the Registrar of Trade Marks, I heard the matter on 21 November 2022. David Larish of Counsel, instructed by King & Wood Mallesons, appeared on behalf of the Opponent. Ben Fitzpatrick of Counsel, instructed by Actuate IP, appeared for the Applicant. Both representatives’ oral submissions were supplemented by written submissions which were filed prior to the hearing.

The Opponent

9. According to the Stork declaration:

The Opponent is the State of Victoria’s fire and rescue service, and services communities across Melbourne and Victoria’s major regional centres. It is a statutory body, established under section 2 of the Fire Rescue Victoria Act 1958 (Vic) … The Opponent is the owner of the FIRE RESCUE VICTORIA trade mark and related trade marks incorporating ‘Fire Rescue Victoria’ or acronyms thereof.

10.     The Register of Trade Marks records the Opponent as the owner of applications to register the trade marks shown below. All the applications have the status ‘Published: Under examination – Deferred’. All have priority dates which are later than the Trade Mark. All the applications cover a broad range of goods including clothing, footwear and headgear in Class 25.

Application Number	Trade Mark
2116049	FIRE RESCUE VICTORIA
2116050	FRV
2116051
2116052

The Applicant

11.     According to the Hough declaration, the Applicant was incorporated on 5 July 2011. It is further declared that the Applicant, ‘has been continuously promoting and selling a range of clothing goods including t-shirts, shirts, and jumpers and hoodies since around 2011’.

Grounds of Opposition, Onus and Standard of Proof

12.     As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 41, 42(b), 44,  58, 58A, 59, 60 and 62A; however, at the hearing Counsel for the Opponent pressed only the grounds under ss 41, 42(b), 44 and 60. As will become apparent it is necessary only that I consider the ground pursuant to s 41.

13.     The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 30 January 2020, being the filing date of the application (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Syone and Jagot JJ).

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelham JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Section 41

14.     Section 41 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).

15.     The Opponent submitted that the Trade Mark ‘is not to any extent inherently adapted to distinguish the Applicant’s Goods from the goods of other persons’. The case law setting out the necessary considerations for determining whether a trade mark is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington 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.[4]

[4] (1913) AC 624, 634-5.

16.     In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]

[5] (1964) 111 CLR 511, 514.

17.     In Cantarella Bros Pty Limited v Modena Trading Pty Limited the High Court adopted a two part test for determining inherent adaptation to distinguish of signs.[6] The first step requires assessing the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the relevant goods and/or services. If there is no ordinary signification the sign is to be considered inherently adapted to distinguish. Where there is an ordinary signification the second step is necessary. That step involves determining whether there is a legitimate desire for other traders to use the sign. If such a desire is likely, the sign is not inherently adapted to distinguish. Such legitimate desire exists on a continuum. At one end of the continuum are signs for which there is a high likelihood that other traders will wish to use them; such signs are considered to be bereft of inherent adaptation to distinguish. At the other end of the continuum are signs which, notwithstanding their ordinary signification, it is highly unlikely that other traders will wish to use them. Such signs approach being inherently adaptation to distinguish.

Ordinary Signification

[6] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

18.     In respect of the ordinary signification of the Trade Mark, the Opponent submitted:

‘Fire Rescue’ is an ordinary English phrase. It is a directly descriptive term denoting the rescue of persons or property from fire.

When used in respect of [the Applicant’s Goods], the ordinary signification of [the Trade Mark] is that the person wearing the clothing:

(a)is providing a fire rescue service, including as part of an organisation which provides fire rescue services. This involves indicating the kind, intended purpose or some other characteristic of [the Applicant’s Goods], ie clothing for fire rescue personnel: cf note 1 to s 41 …

(b)is otherwise seeking to associate him or herself with a fire rescue service. This involves indicating the intended purpose or some other characteristic of [the Applicant’s Goods] (ie clothing connoting, or associating the wearer with, a fire rescue service): cf note 1 to s 41 …

The Applicant’s evidence confirms the ordinary signification, stating that clothing bearing the mark is targeted at 24–49 year old males, particularly those with interests including … the fire brigade and trades … The Applicant’s online store is also asserted to operate from domains including the word ‘Firefighter’ …

19.     In respect of the likelihood that other traders might desire to use the Trade Mark, the Opponent submitted:

[I]t is plain that other traders are likely to want to use [the Trade Mark], or words deceptively similar to it, in connection with their goods. This arises in two different ways.

Firstly, a fire department or service may want to use or incorporate [the Trade Mark] in [goods such as the Applicant’s Goods] worn by personnel in the course of their work. This is the case for the Opponent … among other fire departments.

For example, the Opponent hand others have used FIRE RESCUE VICTORIA or FIRE RESCUE since 2017 …

Secondly, clothing brands may also wish to use or incorporate [the Trade Mark] in [goods such as the Applicant’s Goods] for sale to the general public. There is ample evidence of this having occurred, including before [the Relevant Date]. For example:

(a)A basic Google search for ‘fire rescue clothing’ and ‘fire rescue shirt’ comes up with various images for items of clothing containing the words ‘FIRE RESCUE’ or ‘FIRE & RESCUE’ …

(b)T-shirts branded with FIRE RESCUE were available to Australian consumers before [the Relevant Date] from a variety of sources …

20.     The evidence filed in this matter supports the Opponent’s submissions.

21.     In response to the Opponent’s submissions, above, the Applicant submitted:

[The Trade Mark] is of itself capable of distinguishing within the meaning of section 41 …

Contrary to the Opponent’s assertion, [the Trade Mark] has no direct meaning in relation to [the Applicant’s Goods]. It is not apt for normal description. When used in relation to [the Applicant’s Goods the Trade Mark] does not even have a ‘cloudy suggestion’,[7]

The Opponent’s case on section 41 is fundamentally flawed as it impermissibly elides any proper consideration of [the Applicant’s Goods]. …

[T]he selective quote from Cantarella … mischaracterises the decision by suggesting that any term that has a known meaning will lack distinctiveness irrespective of the goods involved. It is readily apparent from the decision, including paragraph 71, that the enquiry is necessarily anchored to the designated goods. To find otherwise would be to wrongly render otherwise inherently adapted marks susceptible to attack pursuant to section 41 …

This fundamental misconception permeates the Opponent’s section 41 submissions.

For example, … the assertion that [the Trade Mark] ‘is a directly descriptive term denoting the rescue of persons or property from fire’ ignores the goods designated in the Application.

Similarly, [the Opponent’s assertion regarding the ordinary signification of the Trade Mark] impermissibly conflates asserted (and unfounded) perceptions of the person wearing the goods rather than the proper enquiry as to whether the trade mark could be said to be directly descriptive of any character or quality of [the Applicant’s Goods] themselves. …

[I]t invites error to characterise the test as whether ‘other traders are likely to want to use [the Trade Mark], or words deceptively similar to it, in connection with their goods’. For the reasons detailed above, it is readily apparent from the authorities, including Cantarella, that the desire must arise from the mark being descriptive, or laudatory, of a character or quality of the designated goods. The Opponent’s characterisation ignores this and seeks to enlarge section 41 to encompass any desire of a trader that may arise irrespective of the goods involved.

[7] Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190, 201 (Dixon CJ, Williams and Kitto JJ).

22.     I agree with the Applicant’s interpretation of the cases that the ordinary signification of the Trade Mark must be assessed in connection with the Applicant’s Goods. This decision concerns words on clothing; words which have the potential to convey a message. A pivotal question to be answered in this decision is whether such words are fundamentally different to words such as ‘cotton’, ‘large’ or ‘waterproof’. Those words have an obvious, descriptive, ordinary signification in connection with goods such as the Applicant’s Goods.

23.     In some instances, the words which appear on a good are the primary, or sole, reason for the existence of that good: signs are an obvious example of this.[8] Clothing can be similar. A person might purchase a particular item of clothing, primarily because of the words (or other design) upon it: they might need a hat, but the particular hat they purchase is, in some cases, determined by what words are displayed on the hat. It is illustrative to consider the nature of words on signs and their ordinary signification in connect with those goods. Signs may simply bear words or they may bear graphic designs of some sort. This discussion will focus on signs which bear only words; in particular, words on signs for doors and on road signs.

[8] ‘signs’ is italicised in this sentence to distinguish it from ‘sign’ as used in the definition of a trade mark in s 17.

24.     When considered in the context of signs for doors, words such as ‘Open’, ‘Closed’, ‘Exit’, ‘No Entry’ and ‘Staff Only’ seem to have an ordinary signification to persons who will purchase, consume or trade in those goods. In the context of signs for doors, the words are descriptive of the words upon them. A purchaser could walk into a shop which sells signs for doors and state, ‘I would like to purchase an “open” sign’ or ask the question, ‘Do you sell “exit” signs?’. Similarly, a person could walk into a shop which sells road signs and ask the question, ‘Do you sell “no through road” signs?’ or ‘Do you sell “changed speed limit” signs?’. In all of those examples it is almost certain that the trader would understand the request. The words, ‘open’, ‘exit’, ‘no through road’ and ‘changed speed limit’ act as terms which are directly descriptive of signs: they describe the words upon the sign. In this way, the words are as equally descriptive of signs, as ‘cotton’, ‘large’ or ‘waterproof’ are descriptive of clothing.

25.     In the above examples, the words have the ordinary signification of describing the words upon the sign because of the nature of the words in relation to the signs. The words in the examples are commonly seen on signs, and to those persons who will purchase, consume or trade in the signs discussed, they have an ordinary signification. However, if a purchaser were to walk into a store which sells signs for doors and ask the question, ‘Do you sell “Banana” signs?’, the purchaser may well be greeted with a puzzled look and receive the response, ‘I don’t understand what you mean’. Simply from my own experience, a door sign with the word ‘banana’ on it would seem to be uncommon (or non-existent). In the context of signs for doors (and road signs) the word ‘banana’ would, on the face of it, seem to have no ordinary signification. When determining the ordinary signification of words in relation to signs (or any good or service), in some instances it is going to be obvious that there is an ordinary signification; however, in respect of other words evidence might be required to settle the question.

26.     In the case of clothing a similar situation exists. A person could walk into a clothing shop and ask the question, ‘I would like to buy an “I’m with stupid” t-shirt’ or ‘Do you sell “World’s Best Dad” baseball caps?’. It is likely that in both of those examples the questions would be readily understood by the trader. ‘I’m with stupid’ and ‘World’s Best Dad’ are, in the writer’s experience, examples of words which have an obvious ordinary signification in connection with the respective goods and can be considered to be directly descriptive of those goods. It is common at events, such as concerts, to see individuals walking around wearing clothing bearing words such as ‘Security’ and ‘Staff’: the purpose of the words upon those goods being to make the role of the wearer clear. A person who walks into a clothing store which sells such clothing and asks the question ‘Do you have a “Security” bomber jacket?’ or asks for a ‘Staff’ t-shirt will likely be understood. Those words are likely to have an ordinary signification in connection with those goods, and can, again, be considered to be directly descriptive.

27.     In its evidence, the Opponent provided examples of people wearing clothing bearing the words ‘Fire Rescue’. In some instances, those words appear on a uniform along with other symbols common to emergency services uniforms. Other evidence shows websites and images of clothing, primarily t-shirts, bearing simply ‘Fire Rescue’ and no other words. The Applicant made a number of criticisms of these examples, which I have considered. Nevertheless, to the extent that evidence is required to establish what seems to me fairly obvious, I am satisfied that ‘Fire Rescue’ has—and had at the Relevant Date—an ordinary signification in connection with the Applicant’s Goods in the same way that ‘Security’ and ‘Staff’ do. I am satisfied that a customer could walk into a clothing store which sells such items and state, as examples, ‘I would like to buy a “Fire Rescue” hat’ or ‘I would like to buy an extra-large, cotton, “Fire Rescue” t‑shirt’, and be readily understood. The words are descriptive of the goods and indicate that the goods bear the words ‘Fire Rescue’. Having determined the ordinary signification of the Trade Mark, the likelihood that other traders will wish to use it for its ordinary signification must be considered.

Other traders test

28.     It is not necessary that evidence be provided to establish that other traders are, without improper motive, likely to wish to use the Trade Mark for its ordinary signification in connection with the Applicant’s Goods. It is open to the Registrar to decide this in the absence of evidence, and I am inclined to this view. Nevertheless, the evidence in this matter, including the Applicant’s evidence, supports the view that other traders are likely to wish to use ‘Fire Rescue’ on goods such as the Applicant’s Goods.

Inherent adaptation to distinguish

29.     The combination of the ordinary signification of the Trade Mark and the legitimate desire for other traders to use ‘Fire Rescue’ in connection with their own goods for their ordinary signification means that the Trade Mark is to no extent inherently adapted to distinguish the Applicant’s goods from the goods or services of other persons. That is not the end of the matter, however. Section 41(3) requires a consideration as to whether 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 Applicant’s Goods] as being those of [the Applicant]’.

Evidence of use

30.     The Applicant submitted that it has continuously used its trade mark ‘in relation to its goods including t-shirts, shirts, jumpers and hoodies across the full range of its promotional, advertising and packaging materials since approximately 2011’. The Applicant referred to paragraphs 10 to 27 and Annexures AH‑3 to AH‑15 of the Hough declaration to support its submission.

31.     Annexure AH-3 is declared to be a copy of a 2011 invoice to a manufacturer. It is also declared that the invoice ‘is not publicly available and is confidential and commercially sensitive’ and the information in the invoice is ‘to be exempt from public disclosure’. Without going into specific details, the invoice is of very limited assistance to the Applicant due to the nature of the goods in the invoice and the quantities involved.

32.     Annexure AH-4 exhibits another invoice with a similar confidentiality statement. This too is of very limited assistance to the Applicant for similar reasons.

33.     Annexure AH-5 is declared to be ‘a photograph of a t-shirt featuring the Applicant’s Fire Rescue Trade Mark’. The photograph is declared to have been taken around November 2011. The photograph shows a black t-shirt with the words ‘Fire Rescue’ embroidered on the right breast and is reproduced below. The manner in which the words are displayed on the t‑shirt is typical of the manner these words have been used in examples provided by the Opponent. This use is not clearly use as a trade mark and does not assist the Applicant.

34.     Annexure AH-6 is declared to be ‘copies of various graphic designs for [the Applicant’s Goods] from 2014’ as provided by a graphic design company. The annexure consists of two images, which are reproduced below. These images do not assist the Applicant.

35.     It is declared in the Hough declaration that ‘Since around 2011, [the Applicant’s Goods] have been sold and distributed through a variety of channels, including online sales from various stores and offline sales at physical market stalls and direct to consumers’. In respect of online sales it is declared that:

[T]he Applicant has continuously operated an online store which is and/or has been linked with several different third-party drop-shipping providers … The Applicant’s Goods are offered for sale under [the Trade Mark] …

The declaration provides links to websites showing t-shirts bearing the words ‘FIRE RESCUE’ typically on the left breast (essentially the same design t-shirt in the image reproduced, above). Other images show hoodies bearing the ‘MELBOURNE FIRE RESCUE’ logo shown above. These images do not demonstrate use of FIRE RESCUE in a manner which is likely to be seen as a trade mark and, consequently, do not assist the Applicant.

36.     The remaining annexures are in the same vein as those already discussed and, for various reasons, are of little or no assistance to the Applicant.

37.     The evidence before me shows that the Applicant has not used the Trade Mark before the Relevant Date in respect of the application to such an extent that the Trade Mark does in fact distinguish the Applicant’s Goods as being those of the Applicant. Consequently, I am satisfied that the Trade Mark is not capable of distinguishing the Applicant’s Goods from the goods or services of other persons. The ground of opposition under s 41 is therefore, established.

Decision

38.     Section 55 relevantly provides:

55Decision

(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.

39.     I have found the Opponent has established the ground of opposition it raised pursuant to s 41. As a delegate of the Registrar of Trade Marks, I accordingly refuse to register the Trade Mark.

Costs

40. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
2 December 2022