Hunter Water Corporation

[2019] ATMO 17

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1753769 (11,32,37,39,40,41,42) – Hunter Water- in the name of Hunter Water Corporation.

Delegate:	Debrett Lyons
Representation:	Applicant: Sparke Helmore Lawyers.
Decision:	2019 ATMO 17 Request to be heard under section 33 of the Trade Marks Act 1995 – Section 41 considered - Trade Mark rejected.

Background

1. In this matter Hunter Water Corporation (‘the Applicant’) made an application to register the trade mark Hunter Water (‘the Trade Mark’) under the provisions of the Trade Marks Act 1995 (‘the Act’) on 19 February 2016 (‘the filing date’) for a range of goods and services in classes 11, 32, 37, 39, 40, 41 and 42.

2. The Trade Mark was examined as required under section 31 of the Act and after four examination reports a ground for rejection under section 41 of the Act was maintained, resulting in a request by the representatives for the Applicant, Sparke Helmore Lawyers, to be heard under section 33 of the Act and for a decision to be issued on the written record.

3. I note here that the Applicant’s representatives wrote to this office requesting an amendment to the Trade Mark application under section 63 of the Act “to strike Classes 11 and 32 from the Application for the purposes of the hearing.” I note, too, that earlier on 12 September 2018 the Applicant’s representatives had responded to an Examination Report dated 11 October 2017 requesting that classes 11, 32 and 37 be deleted from the application.

4. On 2 November, 2018, the matter was delegated to me to make a decision on behalf of the Registrar of Trade Marks.  I then wrote to the Applicant’s representatives inviting them no later than 30 November 2018 to submit anything further they might wish to rely upon before I made my written decision.  In so doing I sought clarification of the inconsistency referred to above.

5. On 30 November 2018 a letter was received from the Applicant’s representatives stating that there were no further submissions or evidence to be filed and that this office should make its decision on the basis of submissions and evidence already on file.  Further, it was clarified in that letter that “in line with the request for amendment filed with IP Australia on 26 October 2018, [the Applicant] wishes to strike Classes 11 and 32 from the Application[1]. … [W]e request that the Registrar disregards paragraph [3] of our submission of 12 September 2018, whereby our client proposed striking class 37 from the Application, in addition to Classes 11 and 32.

[1] Those goods being:

6. Accordingly, the registrability of the Trade Mark is assessed with respect to its application to the following services (‘the Services’):

Class 37: Sewer pipe cleaning; Sewer pipe maintenance; Sewer pipe renovation; Sewer pipe servicing; Disconnecting unused service lines (eg gas, mains water, electricity)

Class 39: Distribution of water; Storage of water; Supply of water by pipeline; Water distribution; Water supply services; Water supplying 

Class 40: Treatment (purification) of water; Treatment of waste water; Treatment of water; Water pollution control; Water purification; Water treating 

Class 41: Education information; Education services; Educational seminars; Providing facilities for educational purposes; Provision of educational information; Provision of facilities for education; Publication of educational materials 

Class 42: Analysis of water; Water analysis

7. Whilst this decision is not a review of the examiner’s decision, I observe in broad terms that the matter has reached me because the examiner maintained an objection under section 41 of the Act that the Trade Mark lacked inherent adaptation to distinguish the Services and the evidence provided by the Applicant asserting use of the Trade Mark over a 24 year period was insufficient to persuade the examiner that the Trade Mark did in fact distinguish the Services.

The Law

8. Section 41 of the Act relevantly provides:

41Trade 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).

9. Under section 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. In other words, “a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.[2]

[2] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].

‘Inherently adapted to distinguish’

1. In relation to the test for the Trade Mark’s inherent adaptation to distinguish its goods, in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) Kitto J repeated the words of Lord Parker of Waddington in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[3], relevantly stating:

   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]

   [3] (1913) AC 624, at pp 634, 635.

   [4] (1964) 111 CLR 511 at 513–14; [1965] ALR 344 at 345–6.

1. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of section 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]. [5]

   [5] [2017] FCAFC 56 at [236].

1. The ordinary signification of the Trade Mark is to be determined by reference to the audience who would avail themselves of the Services, in this case essentially all that part of the Australian public in the larger Hunter valley region of New South Wales. As stated, this decision is not a re-appraisal of the office’s examination process, but contextually I am required to observe that the examiner’s objection was that the Trade Mark indicates that the Services relate to water and are provided in the Hunter region, a significant geographical region in NSW and it followed that it was likely that other traders would want to use Hunter Water without improper motive to describe their similar services.

2. What I also observe is that during correspondence with the office concerning class reduction, the Applicant explained that it made that request to bring the scope of the application into line with what it described as the “core services” offered by the Applicant.[6] What is clear to me is that not all of the Services are described by the Trade Mark in the same way. Almost invariably in the case of longer, multi-class applications which come under scrutiny from section 41, there are greater and lesser degrees to which the at-issue trade mark is capable of distinguishing the goods or services. So, for example, in this case were the class 37 services (Disconnecting unused service lines (eg gas, mains water, electricity)) restricted to gas and electricity disconnection then in my assessment the Trade Mark is entirely arbitrary and registrable. So, too, the capacity of the Trade Mark to distinguish the class 41 services (Education information; Education services; Educational seminars; Providing facilities for educational purposes; Provision of educational information; Provision of facilities for education; Publication of educational materials) may exist but for the fact that the class 41 specification is cast so broadly that it would encompass services such as “educational seminars regarding water conservation in the Hunter River region of New South Wales”. Finally, it requires no explanation that the Trade Mark lacks any capacity to distinguish all of the nominated services in classes 39, 40 and 42 since those services relate to water.

   [6] Of course, what it did was delete the classes of goods so in reality there was no alteration to the scope of the application in terms of the services claimed.

3. Accordingly, I find that in accordance with section 41(3)(a) of the Act the Trade Mark is not to any extent inherently adapted to distinguish the Services from the goods or services of other persons.

The Applicant’s Evidence

1. Although the initial question of determining a trade mark’s inherent adaptability does not involve a consideration of the use of the applied for trade mark,[7] the situation is different once section 41(3) of the Act is enlivened. Section 41(3)(b) now directs that

the Registrar takes into account use of the Trade Mark before the filing date to determine the extent that the Trade Mark does in fact distinguish the Services as being those of the Applicant.

[7] See Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7].

1. On 15 May 2017 the Applicant’s representatives wrote to the office with submissions to which I will return, enclosing a Statutory Declaration of Samantha Sneddon, Marketing and Communications Manger for the Applicant, made 12 May 2017.  Ms Sneddon declares that she has been with the Applicant since 1996 and has access to its records for the purposes of her declaration.  That said, she then states that the (whole of her) declaration is confidential.  I have respected that claim as best I can.

2. Some of the information, for example, that the Applicant is a State Owned Corporation established in 1992, or that the Applicant provides services to over half a million Australians[8], are matters of public record.  Other information, being exhibits providing an annual breakdown of total revenue and advertising expenditure, are expressly marked confidential and so all I might say about those figures in broad qualitative terms is that annual revenue from the Applicant’s customers is very high and that annual advertising spending is quite modest.

   [8] Sneddon [13].

3. Ms Sneddon’s declaration, together with its exhibits, is more than 500 pages in length.  She declares to continuous use of the Trade Mark since 1992[9] and at various places to use of a logo which includes the words “Hunter Water” for more than 20 years.  

   [9] Ibid. [15].

4. Ms Sneddon provides a history of the Applicant’s business.  She claims that together with its predecessors (the Hunter Water Board, the Hunter District Water Board; and the Hunter District Water Supply & Sewerage Board) the Applicant has a combined history of more than 125 years providing water supply, sewerage and storm-water drainage services.   Nonetheless, as noted already, Ms Sneddon declares that first use of the Trade Mark was in 1992.  She states that the Trade Mark was adopted as an abbreviation for the Hunter Water Corporation.[10]  There is no claim to use of the Trade Mark (or some other mark) prior to 1992.

   [10] Sneddon [4].

5. Ms Sneddon has defined the signs which the Applicant has used in connection with its business.  The “Trade Marks” are defined as the Trade Mark, plus the logo mark which appears below, which is now the subject of Registration 1753770 from 16 February 2016 and entered on the register on 8 November 2017 (“the Logo Mark”).[11]

[11] Id.

1. Ms Sneddon declares to use of the “Trade Marks” since 1992 but at other times claims use of the Logo Mark for more than 20 years.  However, it seems that these statements are not entirely accurate since she also declares that under a rebranding strategy a number of earlier logo-style registrations were allowed to lapse in 2015.  Those earlier registrations were for the trade marks shown hereunder:

2. Little turns on this inconsistency since I am not required to consider these trade marks in detail.  The newer, Logo Mark is now registered and, as I have noted, there is no evidence of use of any other mark prior to the establishment of the Applicant in 1992.  Accordingly, there is no reason to give any weight to Ms Sneddon’s submission that the now lapsed registrations for the older logo mark shown above should assist registration of the Trade Mark.

3. More generally, I observe that in spite of the volume of the material provided by Ms Sneddon, there are critical deficiencies in terms of the way it relates to the Trade Mark.  Importantly, there are no consistent indicators of how the material correlates to the Services provided under the Trade Mark.  Whilst, for example, there is useful information on water use and conservation offered to schools as part of the education curriculum, there are larger parts of the Services left unsupported by evidence of use.  The same criticism applies, a fortiori, to the confidential exhibits providing an annual breakdown of total revenue and advertising expenditure.  Those exhibits only give blanket figures without regard to class coverage.  I have already remarked that the annual advertising spending is relatively modest.  Since there are only global figures the possibility exists that nothing may have been spent on the promotion of some Services.

1. Moreover, these composite figures were provided in support of the application as it was filed – that is to say at a time when the office was asked to consider goods classes 11 and 32 as well – and it is reasonable to assume, especially in relation to annualized revenue, that a significant proportion of that money is attributable to use of the Trade Mark in connection with those goods which are now excised from the application for the purposes of this consideration. 

2. A further deficiency exists because the great bulk of the Applicant’s evidence shows trade mark use of one or other of the stylised trade marks, principally the Logo Mark.  I note that it is the Applicant’s constant protestation that the evidence also shows use of the Trade Mark.  The Applicant claims that “the evidence … shows repeated use of the Word Mark in isolation. In addition, in circumstances where the HUNTER WATER logo is present on printed matter (for example), the [Trade Mark] is also used in addition to, and separately from, the [Logo Mark].”  In support of that claim the Applicant refers to printed matter which refers, for example, to an invitation to “[v]isit the Hunter Water stall” at certain events, or advertising material stating that “Hunter Water is helping to detect leaks”. 

3. My conclusion is that the Applicant’s submissions do not properly distinguish trade mark use from other forms of use of the words “Hunter Water”.  By its own admission, the putative Trade Mark was adopted as a simple truncation of the Applicant’s corporate style and my observation is that a great many references in the evidence to “Hunter Water” are merely references to that legal entity.  In other instances, the usage is essentially descriptive – “Hunter Water is the most pure”[12] – is not obviously trade mark usage of the words “Hunter water” and mere initial capitalization of both of those words does not make it so.  Nor, for that matter did I detect any obvious claim in the printed matter that the Applicant regarded the words “Hunter Water” as another trade mark.  For the most part, the Logo Mark is present in printed material.  Albeit an inconclusive factor if taken alone, it is noteworthy that nowhere do symbols like ä or (even inappropriately) â appear with the words “Hunter Water”, nor did I observe a footnoted or other claim that the plain words were regarded by the Applicant as its trade mark.  In short, I am not satisfied that the Trade Mark does in fact distinguish the Services of the Applicant from those of third parties by reason of use. 

   [12] A phrase I have coined to illustrate the point.

4. I should add, finally, that the submissions include something of a parity argument premised on the prior registration by this office of the trade mark SYDNEY WATER.[13] I see that this trade mark was accepted carrying the endorsement, “Provisions of s41(6) applied”, a shorthand indication that the trade mark was prima facie lacking any adaptation to distinguish the relevant services under the now repealed form of section 41. I do not know what evidence was filed to support registration of that trade mark and I have not been provided with any better information. The acceptance of that trade mark does not assist me or alter my reasoning.

   [13] Regn. 1164716 from 5 March 2007 in classes 37, 39, 40 and 41.

5. Section 41(3) of the Act applies and the application to register the Trade Mark must be rejected.

Decision

1. Section 33 of the Act relevantly provides:

33Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

(2)The Registrar may accept the application subject to conditions or limitations.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

1. For the reasons given I reject the application to register the Trade Mark. 

Debrett Lyons
Hearing Officer
Oppositions and Hearings
6 February 2019

Class 11: Apparatus for purifying water; Apparatus for supplying water; Apparatus for the distribution of water; Apparatus for waste water purification; Apparatus for water filtering; Apparatus for water supply; Apparatus for water supply purposes; Drinking water filters; Drinking water supply apparatus; Drinking water supply installations; Installations for purifying water; Installations for the abatement of water pollution; Installations for the distribution of water; Installations for the purification of waste water; Installations for the recycling (purification) of waste water; Installations for the treatment (clarifying) of water; Installations for the treatment of drinking water; Installations for waste water engineering; Installations for water distribution; Installations for water filtering; Installations for water filtration; Installations for water purification; Installations for water purifying; Installations for water supply; Pressurised water installations; Pressurised water reservoirs; Pressurised water tanks; Stainless steel water supply apparatus; Waste water treatment apparatus; Waste water treatment installations; Water distribution installations; Water filtering apparatus; Water filtering installations; Water filtration apparatus; Water filtration installations; Water purification apparatus; Water purification installations; Water supply installations; Water taps being parts of water supply installations; Water treatment apparatus; Water treatment filters; Sewerage installations 
Class 32: Drinking water; Water (beverage) other than for medical use; Water for drinking (other than for medical purposes)