Gregory Paul Roebuck v News Limited
[2014] ATMO 19
•27 February 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Gregory Paul Roebuck to registration of trade mark application 1374732 (9, 16, 35, 36, 38, 41) - CARSGUIDE - filed in the name of News Limited.
Delegate: | Claudia Murray |
Representation: | Opponent: Mr Ben Gardiner of Counsel, instructed by Mr Daniel Kovacs (not present) of Kliger Partners, Lawyers. Applicant: Mr Philip Kerr, Partner, assisted by Ms Kimberley Evans, Trade Mark Attorney, both of Allens Patent & Trade Mark Attorneys. |
Decision: | 2014 ATMO 19 Section 52 opposition – section 41 - opposition unsuccessful – application to proceed to registration - costs awarded against opponent. |
Background
Trade mark application number 1374732 was filed by News Limited, (‘the applicant’) on 28 July 2010, for the plain word trade mark:
CARSGUIDE
The application covers the following goods and services in the Nice Classification of Goods and Services:
Class 9: Electronic publications, including downloadable newspapers and magazines
Class 16: Paper, cardboard and goods made from these materials not included in other classes; printed matter and publications, including periodical publications, serial publications, newspapers, magazines, books, booklets, journals, brochures; photographs; instructional and teaching material (except apparatus)
Class 35: Advertising, promotional and marketing services in any form or media, including classified advertising, electronic billboard advertising, dissemination of advertising matter, rental of advertising space, updating of advertising materials, direct mail advertising; on-line trading and auctioneering; computerized data base management in the nature of information storage, retrieval and referrals in the field of motor vehicle sales and leasing; providing a searchable on-line advertising guide; business information services; including all of the aforementioned services provided online via a global computer network or global electronic communication network
Class 36: Financial services; insurance services; provision of information relating to finance and insurance; including the aforementioned services provided online via a global computer network or global electronic communication network
Class 38: Communications services including electronic communications and communication services provided by a global computer network; the provision of news and general information via electronic means; news information and news agency services; newspaper services provided via a global computer network or global electronic communication network; storage, transmission and retrieval of recorded messages and or images; providing multiple-user access to a global computer network; electronic bulletin board services
Class 41: Publishing services (including electronic publishing services); provision of entertainment, education, recreation, instruction, tuition and training; provision of information and advisory services relating to any of the aforesaid services.
A ground for rejection under the Trade Marks Act 1995 (‘the Act’) in terms of subsection 41(5) was raised against the application during examination. However, the applicant progressively filed a considerable body of evidence and eventually, at the sixth report, the examiner withdrew the objection and the application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 26 April 2012, subject to the following endorsement:
Provisions of subsection 41(5) applied.
On 25 September 2012, after obtaining an extension of time to do so, Gregory Paul Roebuck (‘the opponent’) filed a notice of opposition to registration of the trade mark. Seven grounds of opposition were listed in the notice.
Evidence in support, answer and reply was duly exchanged and filed. On 16 October 2013, the applicant requested a hearing on the opposition. A hearing was scheduled for 11 December 2013 in Canberra, before me, as a delegate of the Registrar of Trade Marks. On 19 November 2013, the opponent sought permission to serve and file further evidence, in the form of a new declaration by Daniel Charles Kovacs, dated that day.
I heard the opposition in Canberra on the scheduled date. As had been agreed between the parties earlier, I took submissions from both sides at the hearing on the question of whether the opponent’s further evidence should be allowed in. I undertook to address this matter in the course of my written decision with reasons, and I will do this shortly.
Mr Ben Gardiner of Counsel, instructed by Mr Daniel Kovacs (not present) of Kliger Partners, Lawyers, represented the opponent. The applicant was represented by Mr Philip Kerr, Partner, assisted by Ms Kimberley Evans, Trade Mark Attorney, both of Allens Patent & Trade Mark Attorneys.
Evidence
The evidence in relation to this opposition comprises:
Evidence in Support
ØStatutory declaration of Gregory Paul Roebuck, with Exhibits GPR-1 to GPR-3, dated 18 March 2012.
ØStatutory declaration of Daniel Charles Kovacs, with Exhibit DCK-1 to DCK-5, dated 21 March 2012.
Evidence in Answer
ØStatutory declaration of Agostino Giramondo, with Exhibit AG-1, dated 21 June 2013.
Evidence in Reply
ØStatutory declaration of Gregory Paul Roebuck, with Exhibits GPR-ER1 to GPR-ER4, dated 24 September 2013.
Mr Roebuck explains in his first declaration that he is a car enthusiast who has continuously operated a website called ‘Cars Guide’ since ‘at least’ March 2004. The website earns limited revenue via Google® AdWords®. Mr Roebuck declares that he does not have records dating back to 2004, but he does provide records for the years 2009 to 2012. He says:
My Website is designed to be an entertaining and informative website providing information on cars of interest to car enthusiasts. The content often relates to "classic" cars, racing cars, luxury cars, or cars with unusual features. My Website often contains video content. It also has facility for users to leave comments …
I have registered four "carsguide" domain names:
a) carsguide.com, which I believe was registered in the late 1990s and which was first used by me to point to My Website in or around March 2004;
b) carsguide.tv, which was registered in June 2005 and was first used to point to My Website shortly after registration in June 2005;
c) carsguide.co.nz, which was registered in June 2005 and was first used to point to My Website shortly after registration in 2005; and
d) carsguide.co, which was registered in July 2010 and was first used to point to My Website shortly after registration in 2010 …
I believe that My Website has received an average of 1200 page views per week since its inception. In some weeks there have been as many as 3000 page views.[1]
[1] Statutory declaration of Gregory Paul Roebuck, dated 18 March 2012, paras 4, 6 and 9.
Mr Giramondo is the applicant’s General Manager, Sales – Automotive. The applicant is a member of the News Group of companies ultimately owned by News Corporation in the United States. Mr Giramondo’s declaration sets out confidential sales and advertising figures associated with the CARSGUIDE trade mark, across a range of goods and services, which might fairly be described as substantial. He also declares:
The CARSGUIDE trade mark is used in relation to a printed and on-line magazine, a website (which among other things, contains search engines, 'blogs' and discussion forums and video recordings), advertising and classified advertising services and the publishing and delivery of weekly email newsletters. Among other things, the printed and on-line publications:
· provide relevant, timely, informative and engaging content for car buyers, sellers and owners;
· provide purchasers with search engine services and everything they need to find their next car, from cars from reputable dealers, private sellers and classified advertisements around the country;
· provide sellers with advertising space and assistance in selling their cars;
· offer access to comprehensive advice about cars and quality leads for the sale or purchase of cars;
· provide financial and insurance advice and online tools to assist readers with financial calculations relating to car purchases and maintenance;
· stream videos; and
· deliver comprehensive news and reviews covering issues from what cars are worth to where to get the best deal on new and used vehicles.
CARSGUIDE is Australia's biggest national motoring media brand and it has the backing of more than 130 metropolitan, suburban and regional News Limited publications, via which Goods and Services provided under the Trade Mark are regularly promoted. As at August 2011, when the Applicant originally filed evidence of use of the Trade Mark with IP Australia, the CARSGUIDE publication was supported by more than 120 News Limited publications.
The trade mark CARSGUIDE, as applied for, and various stylised CARSGUIDE trade marks with additions or alterations that do not substantially affect the identity of the Trade Mark as applied for, have been used by the Applicant for approximately twenty years in Australia.
The Trade Mark was first used in Australia, in the plain form ‘carsguide’, in relation to a printed publication in 1993, by the Applicant's predecessor in title, Herald and Weekly Times Pty Limited (which is part of the News Group of companies), in the Herald Sun publication. Online use of the trade mark subsequently commenced in 2002 or 2003 and has also been continuous since then.[2]
[2] Statutory declaration of Agostino Giramondo, dated 21 June 2013, paras 12 to 15.
Further Evidence
The principles for deciding whether it is appropriate to allow an application for further evidence[3] were set out in the UK case of Oxon Italia SpA’s Application[4]. In summary, they are: that the evidence could not reasonably have been obtained earlier; that the evidence would have an important influence on the result of the case; and that it is credible. There is also the question of the public interest in allowing the evidence in, bearing in mind that fresh evidence cannot be excluded on appeal to the court. As Hearing Officer Homann observed in Studio Buying Systems Srl v Buying Systems (Aust) Pty Ltd,[5] ‘Obviously it would be preferable for the matter to be finally decided by the registrar if the admission of further evidence would allow this to be done.’
[3] The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into effect on 15 April 2013. The amending Regulation has repealed regulation 5.15, which provided for the service of further evidence. However, the repealed further evidence provisions continue to apply here, because the opposition was commenced by a notice of opposition filed before 15 April 2013. (See regulation 22.9(1), Item 1.)
[4] [1981] FSR 408.
[5] (1991) 22 IPR 580 at 585.
The application for further evidence was accompanied by an explanatory statutory declaration by Daniel Charles Kovacs. The further evidence itself, also a statutory declaration by Mr Kovacs, was exhibited as DCK-(i) to his explanatory declaration. In the covering declaration, Mr Kovacs explained:
The Opponent instructed me for the first time on 18 November 2013 that he had conducted Google searches of the terms CAR GUIDE and CARS GUIDE. These searches showed a wide use of those phrases by traders other than the Applicant. On the basis of these instructions, I repeated these searches for the purposes of preparing a statutory declaration.
The evidence shows that the mark for which registration is sought, CARSGUIDE, or other marks which are substantially identical or deceptively similar to that mark, are commonly used by other traders in relation to the relevant goods and services. This is important to the consideration of whether the applied for mark is capable of distinguishing the Applicant's goods or services as required by s 41 of the Trade Marks Act 1995 (Cth).
A Hearings Section Duty Officer informed the opponent that, unless he provided more information supporting his request, she intended to refuse the application. Following this correspondence, further, more informative submissions were filed by Mr Gardiner (counsel for the opponent). On the strength of those, I advised the parties that I was inclined to allow the evidence in. It was agreed that both parties would be able to make further submissions upon this issue at the hearing.
At the commencement of the hearing, Mr Gardiner re-iterated the opponent’s case for admission of the further evidence. He submitted that, according to the well-established tests for the admissibility of such evidence, the new declaration by Mr Kovacs passed on all counts. He argued:
· The extent of the use by other traders of the words CAR GUIDE and CARS GUIDE only came to the Opponent’s attention after conducting a Google search of those phrases in November 2013. As soon as instructions were provided, the solicitor for the Opponent repeated those searches and prepared the statutory declaration. There is no basis for a conclusion that the Opponent failed to act diligently in preparing its evidence.
· The evidence may have an important bearing on the outcome of the proceeding. Use of a mark by other traders in good faith is strongly indicative that a mark is not inherently adapted to distinguish the goods or services of the Applicant in the relevant class. This is the first step in establishing an opposition based on s 41 TMA. It may be that the delegate accepts, as a matter of language and common experience, that the phrases CAR GUIDE and CARS GUIDE are commonly used by other traders in relation to the relevant goods and services but actual substantial evidence will assist that finding.
· The evidence is credible. It is a statutory declaration of a solicitor. It is not opinion. It does not rely upon recollection of facts. It is neither speculative nor contentious.
Further, Mr Gardiner submitted, there did not seem to be any prejudice to the applicant in having the evidence admitted, as it was ‘easily comprehended’, provided to the applicant ‘more than three weeks before the hearing’, and as the opponent had consented to the applicant filing any evidence in response up to the date of the hearing, its admission would not cause any delay to the hearing or any substantial further cost.
Finally, said Mr Gardiner, the evidence would assist me to arrive ‘at the correct decision, fully informed and based on the merits of the case’. Absent any prejudice to the applicant in admitting the evidence, this substantive consideration should overcome the opponent’s procedural failure.
In summary, Mr Kerr responded against the same criteria that:
· The Opponent cannot seriously suggest that it only occurred to him to conduct a Google search on 18 November 2013, particularly when the Opponent's evidence in support and evidence in reply includes materials obtained from the internet. To do so is disingenuous.
· The Opponent's sole ground of opposition is section 41 and the Opponent has continually emphasised throughout its arguments … that the point of time for assessing the distinctiveness of the Applicant's trade mark is at the Relevant Date, namely 28 July 2010. The further evidence tendered by the Opponent is not retrospective. The Google search results provide information about use of the words "car guide" and ''cars guide" by other traders in November 2013. On the Opponent's own arguments, this "further evidence" is irrelevant as it takes place after the Relevant Date …
· In addition, the further evidence indicates that the Opponent's Google searches were conducted using the search terms "car guide" and "cars guide". The Applicant's trade mark is CARSGUIDE, not "car guide" or "cars guide". For the evidence to have an important influence on the outcome of the opposition, the Opponent's evidence should be directed to the trade mark that has been applied for. In light of the above, the Applicant submits that the further evidence is not likely to have an important influence on the outcome of the opposition …
· [T]he Opponent's evidence does not include a copy of the search results returned by the Google search engine when those searches were conducted. Rather, the Opponent has chosen to provide only selected webpages that were returned in the search results. For the further evidence to be credible, the further evidence should include a copy of the full search results issued by Google and not simply images of the webpages that the Opponent considers to support its point. In addition, as noted above, … the Opponent's internet searches were not conducted using the Applicant's trade mark as a search term. Instead, the Opponent deliberately selected descriptive terms to use as its keywords. For the further evidence to be credible, the searches should have been conducted using the Applicant's trade mark CARSGUIDE …
· While there is a public interest in having the substantial issue of the opposition fully investigated, the Opponent's further evidence is not relevant. Furthermore, the Opponent's further evidence is not credible as it does not present an accurate picture. Accordingly, there is a greater public interest in the Delegate refusing to accept inaccurate evidence which could have been provided, accurately and more relevantly, during the earlier stages of the opposition.
· Because the further evidence is irrelevant and inaccurate (for the reasons explained above), the Applicant would be greatly prejudiced if the Delegate were to admit and take into account the Opponent's further evidence in the course of these proceedings.
According to the terms of regulation 5.15, I must not grant an application to file further evidence unless I am reasonably satisfied that it is appropriate to do so. In this case, there are factors weighing against such a conclusion and, on balance, I have decided not to admit the further evidence. I agree with Mr Kerr’s comments that the evidence could and should have been obtained earlier, that it is incomplete and is not directed at the specific trade mark CARSGUIDE at issue here. Further, despite the opponent’s assertions that no additional delay or cost was likely to be incurred by the applicant as a result of the evidence being allowed, in fact the request to file was received so close to the date of the hearing that Mr Kerr, although able on the day to make submissions in rebuttal of the request, protested that he had not had sufficient time even to determine whether the applicant would wish to file its own evidence in response, if necessary, let alone any opportunity to compile such evidence, at whatever additional costs might be incurred. An affirmative preliminary decision here would accordingly, at the very least, delay my decision upon the substantive matters of this opposition, in order that procedural fairness was afforded to the applicant on this point.
Finally, as Mr Gardiner himself suggested, corroborating evidence is essentially superfluous in relation to the self-evident point that ‘as a matter of language and common experience, the phrases CAR GUIDE and CARS GUIDE are commonly used by other traders in relation to the relevant goods and services’.
In light of all these circumstances, I am not satisfied that it is reasonable to delay my decision any further by allowing in prospective further evidence which has already unnecessarily complicated proceedings, but has no prospect of advancing the opponent’s case at all.
Ground of opposition
The onus is upon the opponent to establish one or more of his grounds of opposition. The Federal Court has referred to the standard of proof required in terms of a ‘balance of probabilities’.[6] The opponent indicated in his written submissions and at the hearing that it wished to press only the ground under section 41 nominated in the notice of opposition. I will discuss this ground below, noting for completeness that the other grounds listed in the notice of opposition have not been made out.
Section 41 - Trade mark not distinguishing applicant’s goods or services
[6] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12].
The legislation
Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. The section relevantly[7] provided:
[7] The Intellectual Property Laws Amendment (Raising the Bar) Act2012 came into full effect on 15 April 2013. The Act repealed section 41 of the Trade Marks Act 1995 and substituted it with a new section 41. However, as was common ground between the parties, the repealed provisions continue to apply here, because the subject application was filed prior to 15 April 2013.
(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).
Submissions
The opponent’s case, simply put, comes down to the position that the applied-for trade mark, CARSGUIDE, has little or no inherent capacity to distinguish, such that ‘it cannot be saved even by substantial use’. Further, the evidence of use filed by the applicant in support of its application does not support acceptance either under subsections 41(5) or (6). Mr Gardiner argued:
The Applicant seeks registration of the mark CARSGUIDE, in plain font, in relation to a wide range of goods and services including that for which it asserts use: a cars guide published both online and in its newspapers.
The Opponent contends that CARSGUIDE is so lacking in inherent adaptation to distinguish that even very substantial use of the mark would be insufficient to make it registrable as a trade mark. In fact, the Applicant’s evidence shows very little use (if any) of the mark CARSGUIDE. Instead, it shows use of a series of highly stylised marks which include the words CARS and GUIDE. These are not the mark for which registration is sought. The evidence does not show that CARSGUIDE had become, or was capable of becoming, distinctive of the Applicant’s goods or services as at the Relevant Date. Accordingly, the application for registration should be rejected pursuant to s 41 of the Trade Marks Act 1995 (Cth) (TMA) …
The elision of the words CARS and GUIDE in the mark for which registration is sought does not alter the meaning of the words and does not affect the inherent capacity of the mark to distinguish the Applicant’s goods or services. Use of the commonly used English phrases CARS GUIDE or CAR GUIDE would infringe the Applicant’s mark if it proceeded to registration.
The problem for the Applicant is that the word CARSGUIDE is simply the generic name of the type of goods or services it provides and it does not matter how much it is or has been used, it cannot be turned into a trade mark.
In response, Mr Kerr submitted for the applicant that the opposed trade mark did not fall under the provisions of subsection 41(6). Rather, being not the two words CARS and GUIDE, but one word CARSGUIDE, it was not a word in the English language. Accordingly, it was not a word entirely devoid of distinctiveness, or incapable of possessing a secondary meaning. By contrast, it was a word falling within the scope of subsection 41(5) because it contained, in the words of Hearing Officer Iain Thompson:
… the barest scintilla or spark of inherent capacity to distinguish the applicant’s goods from those of other traders … that glimmer, be it ever so faint, saves the trade mark from consideration under subsection 41(6).[8]
[8] Freelife International Holdings LLC [2009] ATMO 45 (30 June 2009) at [20].
Further, Mr Kerr argued that, whether this be tested in terms of either provision of section 41, the applicant had provided compelling evidence that the opposed trade mark had acquired a distinctive character as at the filing date of the application and was recognized by Australian consumers as a trade mark. He summarised that the applicant:
· Has used the CARSGUIDE Trade Mark throughout Australia for 20 years (and more than 15 years before the Relevant Date);
· Has promoted the CARSGUIDE Trade Mark extensively to consumers in a large variety of ways at a cost of approximately $30 million;
· Is the registered owner of the CARSGUIDE trade mark in the following forms:
and
· Has derived significant and substantial revenue - hundreds of millions of dollars in the five years prior to the Relevant Date- from the provision of goods and services under the CARSGUIDE Trade Mark; and
· Is recognised by the Australian public as the owner of “the Carsguide brand”.
Discussion
Subsections 41(5) and (6) of the Act focus upon evidence of trade mark use. However, if a trade mark is determined to be inherently adapted to distinguish an applicant’s goods or services, then it is acceptable for registration under subsection 41(3), without reference to the later subsections of section 41. The manner in which section 41 operates in conjunction with the presumption of registrability was examined closely by Branson J in the Oregon case. After examining the interaction of the subsections, she found:
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.[9]
[9] Blount v Registrar of Trade Marks (1998) 83 FCR 50, 40 IPR 498 (the Oregon case) (at [20] to [49]).
In the context of an opposition such as this, the opponent bears an initial onus of establishing on the balance of probabilities that the opposed trade mark is not, or is not sufficiently, inherently adapted to distinguish the applicant’s services from the goods or services of other persons as to qualify for registration on that basis alone. Under those circumstances, the onus shifts back to the applicant. In the case before me, the application has already been tested once in terms of subsection 41(5), and the material provided by the applicant found sufficient for acceptance under that provision. It is important therefore that I firstly determine whether the opponent has persuaded me instead that the trade mark CARSGUIDE contains not even the small whiff of inherent capacity to distinguish necessary to save it from the stricter requirements of subsection 41(6).
The test for inherent adaptation was discussed in Clark Equipment Co v Registrar of Trade Marks[10] where Kitto J said:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.
[10] [1964] HCA 55; (1964) 111 CLR 511, para 5.
The opponent has had no difficulty persuading me that other traders might indeed desire to use the expression ‘cars guide’ in relation to their own similar goods and services, despite a lack of evidence that this was the case at the time the application for CARSGUIDE was filed. To borrow Hearing Officer Thompson’s words again:
This ‘lack of use by others in trade’ argument has obvious problems – it may be, for instance, that no trader apart from a putative applicant uses the colour BLUE on its service stations; however, this fact on its own does not change the intrinsic nature of the colour trade mark BLUE on service stations as regards that colour’s inherent adaptability to distinguish in respect of service station goods and services: Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551. The fact that no other trader is using the trade mark in the ordinary course of trade and without improper motive is not determinative, per se, of the inherent adaptability of the proposed trade mark to distinguish – however, the fact that other traders are innocently using a sign in the ordinary course of trade in relation to their similar goods or services provides corroboration of a finding of lack of inherent adaptability. In fact, the answer to the question of inherent adaptability lies in consideration of the intrinsic nature and attributes of the trade mark itself and whether, in future, it will or is likely to be innocently needed by other traders to use in relation to their similar goods or services in the normal course of trade.
The absence of other traders, or other traders who are likely to need to use an expression, is a factor to be considered in any assessment of the capacity of a trade mark to become distinctive, or whether it has in fact become distinctive. It is one factor to be taken into account in considering a matter under either of subsections 41(5) or (6). It is not a factor in the evaluation of the prima facie inherent adaptability of a trade mark to distinguish – that assessment lies in the inherent qualities of the trade mark.[11]
[11] Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2010], ATMO 37 (25 May 2010, paras 38-40.
I agree with the opponent that the opposed trade mark CARSGUIDE has a straightforward and unambiguous meaning when applied to any of the goods or services covered by the opposed application. However, I also agree with the applicant that the fact that it is CARSGUIDE not CARS GUIDE or CAR GUIDE is relevant and should not be discounted. On this point, it was the opponent who drew my attention to the observations of Hearing Officer Thompson, this time in Reed Elsevere Properties, Inc,[12] where he commented in relation to an applied-for trade mark TOTALPATENT:
I do not consider that the elision of the space between the words TOTAL and PATENT alters the meaning of the words such that it affects their meaning or inherent adaptation to distinguish. And, in terms of the test in Clark, the use of the words TOTAL PATENT in respect of similar services should infringe a putative registration of the trade mark TOTALPATENT if it were granted.
[12] [2012] ATMO 46 (11 May 2012), para 17.
This may well be so, but I also note that Mr Thompson concluded:
While it is possible that the trade mark may contain a slight degree of inherent adaptation to distinguish, it is not necessary that I further discuss the degree to which the trade mark may be inherently adapted as the applicant has not adduced evidence which addresses either of subsections 41(5) or (6) of the Act. In terms of section 41(2) the trade mark is not capable of distinguishing the applicant’s services and must be rejected.[13] (Emphasis added)
[13] Ibid. para 24.
So, in that instance, it was by no means critical for a fine distinction to be drawn between any inherent adaptation to distinguish that might have been present in the trade mark TOTALPATENT, in contrast to the words TOTAL PATENT, and the delegate ultimately left the matter open. This is of course different from the situation here, where it will be remembered that the application was only accepted in the first instance under subsection 41(5) after the examiner was provided with persuasive evidence, and where (as the opponent himself has recognised) there is a very considerable volume of applicant’s evidence in answer before me now.
In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited,[14] the High Court considered the significance of use of the word BAREFOOT with a footprint device that was ‘an illustration of the word’. The majority said at page 69:
The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. (Emphasis added)
[14] [2010] HCA 15 (19 May 2010).
This principle is relevant to the circumstances of registration of the applicant’s two prior trade marks, numbered 1020829 and 1205499, mentioned by Mr Kerr and pictured earlier. These trade marks were filed in 2004 and 2007 respectively. Trade Mark 1205499 covers identical goods and services to those covered by the opposed application. The essential feature of both trade marks, and the word by which each would be identified, is CARSGUIDE. These are not, despite the opponent’s characterisations, highly stylised trade marks. Indeed, there is very little additional material in either trade mark[15] that might be seen to affect its substantial identity in terms of the High Court’s observations above, yet neither is registered under the provisions of subsection 41(5) or (6). This indicates that they were determined during examination to be capable of distinguishing in terms of subsection 41(3), without reference to the subsequent provisions of section 41 being required.
[15] The almost illegible words in trade mark no. 1020829 are CARSGUIDE.COM.AU
While I may entertain some reservations about these earlier conclusions, they do confirm to me an already established pattern of treatment[16] of the trade mark CARSGUIDE as having a definite degree of inherent capacity to distinguish, which the opponent’s submissions have not persuaded me should be altered. They also support my initial reaction, that while the expression ‘car guide’ would be a most obvious manner in which to describe the applicant’s goods and services, ‘cars guide’ is itself a little removed, being slightly awkward to express orally. By taking the next step and creating the combined form CARSGUIDE, the applicant has in my view also created a requisite spark of trade mark identity. Turning to vehicular metaphors, the trade mark CARSGUIDE has at least the equivalent of a ‘whiff of an oily rag’ of inherent capacity to distinguish, sufficient to power it over the qualifying line for subsection 41(5).
[16] Unilever PLC [2001] ATMO 39 (16 May 2001).
Taking all of the above into account, and despite the opponent’s assertions, I decline to find the trade mark CARSGUIDE entirely devoid of any capacity to distinguish the applicant’s goods. It is not quite in the ‘ordinarily used to indicate’, ‘soap for soap’ category described in the explanatory note to subsection 41(6), and envisaged by Jacob J in British Sugar PLC v James Robertson & Sons Ltd:
The phrase [‘devoid of any distinctive character’] requires consideration of the mark on its own assuming no use. It is the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark.[17]
[17] [1996] RPC 281 at 306 in relation to s. 3 (1) (b) of the Trade Marks Act 1994 (U.K).
Having come to this conclusion, I must now turn to the applicant’s evidence of use. While the opponent has not persuaded me that subsection 41(6) applies to the opposed trade mark, I am satisfied that his arguments have shifted the onus to the applicant, and that it is necessary for me to revisit the initial finding that the application was acceptable under subsection 41(5).
The provisions of subsection 41(5) have been reproduced above. The Trade Mark Examiner’s Manual explains:
If evidence of use establishes that the trade mark already distinguishes the applicant's goods or services, then the application will be accepted for registration. Where evidence of intended use or "other circumstances" is required, it need only show that, at some future date, the trade mark will distinguish the goods or services of the applicant from those of other traders. The more a sign with some adaptation to distinguish is used, or its intended use is promoted, the less likely it will be that other traders, having no improper motive, will need to use that sign in connection with their goods or services.
Overall, section 41(5) of the Act…requires the Registrar to consider a balance of the shortfall of inherent adaptation against the:
· extent of use (in time, area, volume or market share terms) - a quantitative question
· manner of use - a qualitative question
· any other circumstances.[18]
[18] Part 22, section 5.
The opponent has argued that:
In any event, the vast bulk of the very substantial volume of evidence relied upon by the Applicant (as set out in Giramondo 21/6/2013) is of use of marks other than CARSGUIDE. This evidence is intended to show very substantial use of the mark applied for and thereby to overcome the s 41 TMA objection. While the Applicant has used many different marks containing the words CARS and GUIDE in various forms, they have, on the whole, been highly stylised marks. Use of the mark applied for is very limited.
The applicant contends rather, and I agree, that the essential element of all the trade marks featured in its evidence of use is the word CARSGUIDE, and the very fact that it has shown use of that word in a variety of fonts, borders and stylisations (including those the subject of its two registered trade marks) ‘serves to emphasise to consumers that the CARSGUIDE trade mark is a distinctive trade mark in its own right.’ Mr Kerr submitted that the applicant relied heavily on section 7 of the Act, which provides in subsection (1) that:
If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
The applicant emphasised this point by quoting the Hearing Officer in Express Newspapers Ltd v Star Newspaper Co,[19] who stated:
[I]f registration of a name or word or other mark takes a particular form, then it is to be inferred that it is intended to confine the marks and its use to that form. If not registered in a particular form, then a mark may be safeguarded by use in some different form, provided that its name or other significance comes shining through.
[19] [1984] IPD 7090 (UK Reg).
I believe the applicant’s evidence demonstrates this to be the case. Further, although as the applicant readily admits, it has used the trade mark CARSGUIDE in conjunction with a variety of other trade marks throughout the course of its twenty year history, I do not find that use to be symptomatic of the kind of ‘limping’ trade mark Justice Jacob had in mind when he made the following comments; but rather I believe it to be equivalent to his examples of FORD and FIESTA:
…what we have here is a kind of "limping mark", always used with what is obviously a proper trade mark. The same was true of Treat which was always used with "Silver Spoon". Neither sign was ever used by the proprietor on its own. And this was evidence of a lack of capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that part of a sign - a "sub-sign" - cannot also be a trade mark: both Ford and Fiesta are obviously valid marks. But there are these other cases, where a sign proffered as a valid mark cannot really stand up on its own.[20]
[20] Philips Electronics BV v Remington Consumer Products [1998] RPC 283, at 312.
Finally, Mr Kerr also drew my attention to the applicant’s extensive evidence of use of its domain name ‘carsguide.com.au’ resolving to its website, the contents of which relate to the goods and services covered by its trade mark registrations. He said that this was demonstrated use of the word CARSGUIDE in plain font. Calculating from the monthly figures provided in evidence for the period from January 2007 to February 2011, he estimated more than 27 million unique browsers to the site prior to the filing date of 28 July 2010. While the ownership of a domain name containing a trade mark alone does not demonstrate trade mark use, the courts have recognized that use of that domain name in combination with the content of the website to which it resolves can constitute a use of the trade mark with additions or alterations not substantially affecting the identity of the mark.[21]
[21] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 at para 156.
In conclusion, having thoroughly considered the applicant’s evidence and submissions in support of its case for registration, I am persuaded that the provisions of subsection 41(5) may be appropriately applied to it, in respect of the full range of goods and services currently covered. While it may be true that the trade mark has not been shown to be distinctive in fact of the entire range at the time the application was filed, that is not a requirement of the provision. I am satisfied that the trade mark CARSGUIDE either was distinctive in fact at the time of filing, or has become since, in respect of the majority of the goods and services, and so is capable of distinguishing them all.[22] Despite, as I have discussed above, the significant shortfall in inherent capacity to distinguish of the opposed trade mark, I believe that the demonstrated manner and extent of its use tips the balance decisively in favour of this result.
[22] Re Pound Puppies Trade Mark [1988] RPC 530 at 533.
The opponent has not made out his ground of opposition under section 41.
Decision
Subsection 55(1) of the Act provides:
(1) Unless the proceedings are discontinued or dismissed, 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.
I find that the single ground relied on by the opponent has not been established. The trade mark may proceed to registration after one month from the date of this decision has expired. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.
Costs
The applicant has requested its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark opponent.
Claudia Murray
Hearing Officer
Trade Marks Hearings
27 February 2014
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