Instant Consult Pty Ltd

[2022] ATMO 110

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2070969 (Class 44) – INSTANT CONSULT – in the name of Instant Consult Pty Ltd.

Delegate:	Blake Knowles
Representation:	Applicant: Dr Robert Burrell of GO Trademarks.
Decision:	2022 ATMO 110 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – s 41 considered – trade mark rejected.

Background

1.     This is a decision on examination of trade mark application number 2070969 (‘Application’) filed by Instant Consult Pty Ltd (‘Applicant’). The Application was filed on 21 February 2020 (‘Relevant Date’). The Application is for the trade mark INSTANT CONSULT (‘Trade Mark’) and seeks registration in respect of Class 44: General practice (GP) medical services; Medical services; Health care; Physicians' services; Provision of pharmaceutical information; Medical advisory services; Medical health assessment services; Provision of medical information (‘Services’).

2.     The Trade Mark was examined as required by the Trade Marks Act 1995 (Cth).[1] The examiner raised a ground for rejection under s 41 on the basis that the Trade Mark was not to any extent inherently adapted to distinguish the Services and therefore fell for consideration under s 41(3). The Applicant subsequently filed submissions and evidence in response to the examiner’s report. The examiner maintained the ground for rejection, and the Applicant requested a hearing by written submissions and paid the relevant fee. I have decided this matter as a delegate of the Registrar based on the submissions and evidence filed during examination and additional evidence and submissions subsequently filed by the Applicant.

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

Evidence

3.     The Applicant relies on two declarations, namely, (i) a declaration by Bianca Brown, director of the Applicant, made on 10 March 2022 (with Annexures A to E), and (ii) a declaration by Asaf Twina, trade marks attorney acting for the Applicant, made on 4 May 2022 (with Exhibits AT1 to AT3).

4.     Ms Brown declares that the Applicant was incorporated on 7 March 2017, and that it has used the Trade Mark since 2017 extensively and continuously throughout Australia in relation to telehealth services.

5.     Ms Brown opines that based on her enquiries, she is of the firm view that the Applicant is the leading provider of telehealth services in Australia and has been so since at least the beginning of 2021. Ms Brown declares that as at the date of the declaration, the Applicant has provided the Services under the Trade Mark to over 287,000 patients in Australia.

6.     Ms Brown declares that the Applicant has operated its website at the domain (‘Website’) since early 2018. Ms Brown annexes an Internet Archive Wayback Machine printout of the Website dated 16 March 2018. The printout indicates that in addition to being used as part of the domain name itself, the Trade Mark is used in small text on the webpage, and the words INSTANT CONSULT are also used as part of a composite mark in the header of the website, namely:

(‘Composite Mark’)

7.     Ms Brown declares that the Applicant also provides the Services via downloadable applications available from the Apple and Google Play stores. Each of the applications has approximately 2,500 reviews as at the date of the declaration. Ms Brown annexes screenshots from each of the stores which demonstrate use of the Trade Mark as the name of the applications.

8.     Ms Brown declares that the Applicant has engaged in extensive marketing since 2018, working with pharmacies such as TerryWhite, Chemmart, Chemist Warehouse, Guardian Pharmacies, and Blooms The Chemist, in addition to smaller independent chemists. Ms Brown annexes a flyer which is a sample of the Applicant’s marketing material. Also annexed are invoices issued to customers of the Applicant which display both the Trade Mark and the Composite Mark.  

9.     Mr Twina in his declaration annexes numerous online reviews before the Relevant Date which comment positively on the Services provided under the Trade Mark.

Discussion

10. Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Services of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Services, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Services, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that it did not in fact distinguish the Services based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the combined effect of the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Services (s 41(4)).

11.     The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:

His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]

[2] (1964) 111 CLR 511, 514.

12.     In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[3]

[3] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

13.     In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Full Federal Court said:

In trade mark law, a finding that a “word” mark is not to any extent inherently adapted to distinguish a trader’s goods from the goods of others means that the word, in relation to those goods, serves a purely descriptive function.  The rationale for not allowing such words to be registered as trade marks is that the registration would result in an appropriation of the common stock of language that all should be free to use for its ordinary meaning.[4]

[4] [2020] FCAFC 186, [51] (Middleton, Yates and Lee JJ).

14.     In Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd, Finn J held that:

Nonetheless words which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish: [Coats at 984-985]. Distinctly, that a descriptive statement is commonly associated with a particular trader’s goods or services does not, in and of itself, mean that that statement is inherently adapted to distinguish that trader’s goods or services. It may, for example, be naturally applied to goods or services of that type by whomsoever manufactured or supplied: [Coats at 984-985].

Fifthly, a descriptive word may to a degree be inherently adapted to distinguish because the description itself involves an unfamiliar, obsolete, unexpectedly evocative or purely emotive usage: cf J P Coats at 380; Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) CLR 190 at 194.[5]

[5] [2004] FCA 968, [38]-[39].

15.     In Aldi Foods Pty Ltd v Moroccanoil Israel Ltd, Perram J (with whom Allsop CJ and Markovic J agreed), said:

Further, it is not just the desire of traders to use the word which is relevant; it is also their potential desire to use words nearly resembling that word. So here one must examine not just the inherent adaptability to distinguish the Respondent’s goods of MOROCCANOIL but also of MOROCCAN OIL, MOROCCAN-OIL and perhaps, without deciding, OIL OF MOROCCO. The necessity so to reason was referred to by Kitto J in Clark (at 513) and reflects the reality that once registration of a mark is achieved, it will be infringed not only by persons using it without its owner’s permission but also by those using ‘a sign that is substantially identical with, or deceptively similar to, the trade mark’: s 120(1) of the Act. Furthermore, account must be taken of the fact that no attempt has been made in this case to limit the mark by stylistic or device elements; it is purely a word. As Yates J explained in Apple at 517 [18] that matters because it means that if the word proceeds to registration it will give the Respondent a monopoly on the use of the word (or words) in whatever form they may be ultimately rendered. [6]

[6] [2018] FCAFC 93, [125].

16. The basis for the examiner’s initial objection was that the Trade Mark indicated that the Applicant provided medical consultation services in an instant or immediate fashion, and as such, it entirely lacked any inherent adaptation to distinguish the Services. The Applicant responded that the words INSTANT CONSULT could refer to a wide range of services and it is not a combination that would be associated with the provision of medical services. The Applicant also suggested that the absence of words such as MEDICAL, DOCTOR, BEAUTY and the like create enough ambiguity such that the mark merely alludes to the services provided. The Applicant argued that even if the Trade Mark is not sufficiently inherently adapted to be prima facie registrable, it is not in the category of marks that entirely lacked inherent adaptation to distinguish, and as such, it should be considered under s 41(4). The Applicant referred to the declaration of Ms Brown, and argued that the duration of use, strong turnover, and number of clients provided the Services under the Trade Mark sufficed to satisfy the requirements of s 41.

17. The examiner issued a second report maintaining the ground for rejection and confirming that the Trade Mark was to be assessed under s 41(3). The examiner considered that the evidence submitted fell short of the high threshold required for registration of a trade mark that entirely lacks inherent adaptation to distinguish. The examiner also referred to the fact the Applicant often used the Composite Mark, and that evidence of this use was of ‘limited import’ in determining registrability of the Trade Mark.

18. In its hearing submissions, the Applicant accepts that the Trade Mark has descriptive properties in relation to the Services, but argues that this does not mean it has no inherent adaptation to distinguish. The Applicant submits that the Trade Mark is not directly descriptive of GP or medical services, nor is it directly descriptive of the means or manner by which the Services are provided. The Applicant instead submits that the Trade Mark is merely evocative of the advantages and attributes of the Services, and ought to be assessed under s 41(4).

19.     The Applicant refers to various decisions of the Registrar which held that the marks in question had some degree of inherent adaptation, namely AUDIOLINE,[7] INSTANSEAL,[8] MASTERLEASE,[9] and CARSGUIDE.[10] The Applicant submits ‘even though the derivation [of the Trade Mark] is utterly obvious, it is a term coined by our client, just outside the common stock of words and phrases’ and that ‘it is slightly awkward to express orally, suggesting that it has the ‘requisite spark of trade mark identity’.

[7] Audioline Pty Ltd v Moss [1999] ATMO 9.

[8] Re Den Norske Stats Oljeselskap AS [1999] ATMO 7.

[9] General Motors Acceptance Corporation [2002] ATMO 72.

[10] Gregory Paul Roebuck v News Limited [2014] ATMO 19.

20.     The Applicant asserts that the evidence of use is sufficient to justify acceptance, referring to the Applicant’s turnover figures and advertising and promotional expenditure. The Applicant argues that there is ample use of the Trade Mark as a plain word mark including in promotional material and invoices, and that the evidence indicates that consumers respond to and use the Trade Mark as a badge of origin independent of any device or stylisation. Further, given the Services are provided online, consumers access them via an Internet search and in the process of searching will come to rely upon the Trade Mark to designate trade origin.  

21. I am satisfied that the Trade Mark lacks any inherent adaptation to distinguish and is therefore appropriately considered under s 41(3). While the Trade Mark does not refer specifically to medical or telehealth services, the ordinary signification that emerges from the Trade Mark, from the perspective of those who would consume or trade in the Services, is a consultation that is available instantly (relatively speaking), as opposed to a consultation that requires an appointment in advance. This reference to an important characteristic and quality of the Services is direct and obvious.

22.     Having determined the ordinary signification, I am satisfied that there is a likelihood that the Trade Mark may be desired for use by other traders providing the Services. The desirability of use lies in the fact that Trade Mark immediately conveys to the consumer that the relevant services can be obtained instantaneously, which would be an important purchasing consideration amongst many consumers of the Services.

23.     Turning to the evidence provided by the Applicant, I note that the Applicant’s business has grown significantly since it was launched in 2017, and there has been appreciable use of the Trade Mark between 2017 and 2021. Use of the Trade Mark (as opposed to the Composite Mark) includes use as the identifier of the domain name for the Website, in small text on the Website, on invoices and promotional material, and as the name of the Applicant’s downloadable applications.

24. However, given the Trade Mark falls for consideration under s 41(3), I am only able to take into account use that occurred before the Relevant Date. The extent of this use is relatively modest, although the evidence does indicate that the Applicant had established itself in the relevant market relatively quickly and the Trade Mark had generated some recognition among consumers by the Relevant Date. Nevertheless, given the directly descriptive nature of the Trade Mark and the limited extent of use at the Relevant Date, I am satisfied, on the balance of probabilities, that the Trade Mark did not in fact distinguish the Services of the Applicant from those of other traders as at the Relevant Date.

Decision

1. Under s 33(3)(b), if I am satisfied that there is a ground for rejection and the Applicant has been given an opportunity to be heard, then I must reject the Application.

2. Therefore, I reject the Application for all of the Services.

   Blake Knowles
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   5 July 2022