INTEGRATED COMBAT CENTRE – in the name of Tong Martial Arts Pty Limited

[2023] ATMO 175

TRADE MARKS ACT 1995

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

ReTrade mark application number 2258949 (41) – INTEGRATED COMBAT CENTRE – in the name of Tong Martial Arts Pty Limited

Delegate:	Nicholas Smith
Representation:	Applicant: Michelle Lee of GLMR
Decision:	2023 ATMO 175 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 41 of the Act – section 41 considered – trade mark is not to any extent inherently adapted to distinguish the designated services – insufficient evidence of use supplied – trade mark application rejected

Background

1.       On 25 March 2022, Tong Martial Arts Pty Limited (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (Cth) (‘Act’)

Application Number:	2258949
Filing Date:	25 March 2022
Services:	Class 41: Instruction in martial arts; Organisation of training, sporting and cultural activities, all related to martial arts; Provision of training, sporting and cultural activities, all related to martial arts; Provision of apparatus for training, sporting and cultural activities; Mentoring (education and training); Practical training (demonstration) (‘Applicant’s Services’)
Trade Mark:	INTEGRATED COMBAT CENTRE	(‘Trade Mark’)

1. The Trade Mark was duly examined under s 31 of the Act and a ground for rejection was identified by the examiner under s 41 of the Act. The examiner stated (paraphrased), that the Trade Mark consisted of the words INTEGRATED COMBAT CENTRE, which refers to a centre involved in the teaching, instruction and practice of integrated combat, being a form of fighting incorporating multiple styles, systems and techniques. As such the Trade Mark acts to describe the services offered rather than as a badge of trade origin. Other traders may desire to be able to use the Trade Mark in connection with the Applicant’s Services.

2. On 28 October 2022 the Applicant responded to the rejection, attaching a declaration of David Tong, Director of the Applicant, with exhibits DT-1 to DT-11 made on 19 October 2022 (‘Tong 1’). This material was insufficient to persuade the examiner, who issued a further examination report on 25 November 2022 maintaining the s 41 ground for rejection in respect of the Applicant’s Services. On 11 May 2023 the Applicant responded to the rejection, attaching a second declaration of David Tong, with exhibits DT-1 to DT-7 made on 8 May 2023 (‘Tong 2’). This material was insufficient to persuade the examiner, who issued a further examination report on 8 June 2023 maintaining the s 41 ground for rejection. The Applicant then requested to be heard by the Registrar of Trade Marks under s 33 of the Act.

3. This matter was listed for hearing by written submissions on 13 September 2023.  Michelle Lee of GLMR represented the Applicant, filing written submissions on 7 September 2023.  These submissions consisted of a further declaration by David Tong with Annexures DT-1 to DT-14, containing a mixture of evidence of use of the Trade Mark, some of which had been part of Tong 1 and 2, and submissions on distinctiveness (which have been treated as such) (‘Applicant’s Submissions’ or ‘Tong 3’). 

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

   Legislative framework

   6. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[4] Regarding the present application, the only unresolved ground for rejection identified is under s 41 of the Act. The capacity of the Trade Mark to distinguish the Applicant’s Services must be assessed at the filing date, being 25 March 2022 (‘relevant date’) however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.[5]

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

   [2] [2016] ATMO 32, [5] (Hearing Officer Worth).

   [3] [2018] ATMO 46, [5] (Hearing Officer Worth).

   [4] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

   [5] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

5. Section 41 of the Act provides:

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

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

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

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

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

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

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

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

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

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

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

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

   (iii)any other circumstances.

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

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

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

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

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

   (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

6. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

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

   [6] (1998) 40 IPR 498, 505 (Branson J).

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

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

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

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

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

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

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

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

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Applicant’s Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Goods]. [that is, s 41(4) applies][7]

   [7] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).

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

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

   (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
   
   (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
   
   (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

   
   (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
   
   (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
   
   (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
   
   (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

   
   (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
   
   (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

   
   (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

   [8] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

   (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].[8]

8. The examiner concluded that the Trade Mark was not to any extent inherently adapted to distinguish the Applicant’s Services from the services of others, that is s 41(3) of the Act applies. The Applicant’s Submissions do not explicitly challenge this conclusion but implicitly submit that the Trade Mark is inherently adapted to distinguish because the words in the mark are largely evocative, there is no dictionary definition for ‘integrated combat’ and there are no other instances of other traders using the term. The Applicant also submits that the words in the Trade Mark are individually capable of having multiple meanings and hence it is not possible to characterise the phrase comprising the Trade Mark as having a singular meaning.

9. I do not accept the Applicant’s Submissions on this point and consider that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services (that is, s 41(3) applies). The ordinary signification of the Trade Mark is a centre teaching, performing or otherwise specialising in integrated combat, that is fighting styles that take lessons and skills from a variety of disciplines. There is no support for the submission that the Trade Mark is primarily evocative. Moreover, the fact that the individual words comprising the trade mark have multiple meanings and there is no dictionary definition for the compound term integrated combat is irrelevant; the Trade Mark consists of three words that taken together have a clear ordinary signification, and that signification is directly descriptive of the Applicant’s Services. Other traders may legitimately desire to use the Trade Mark or similar mark to indicate that they offer similar services, namely teaching or exhibition of integrated combat skills.

10. As the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services, the Trade Mark must be rejected unless the evidence before me establishes that the Applicant has used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Applicant’s Services as being those of the Applicant.  To establish that a sign which is not to any extent inherently adapted to distinguish does in fact distinguish typically requires evidence of extensive widespread use and exposure to the Australian public of that Trade Mark over a long period of time and this use must have occurred before the filing date. 

11. Use as a trade mark is:

    [U]se of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[9]

    [9] Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19] (Black CJ, Sundberg and Finkelstein JJ).

12. The Applicant gives evidence in Tong 1, Tong 2 and Tong 3[10] that the Applicant had used the Trade Mark for approximately 8.5 years at the relevant date to promote its martial arts training business located in Peakhurst, New South Wales.  The turnover and number of transactions disclosed correspond to a successful martial arts centre located in a single location.  The Applicant has also engaged in some promotion using the Trade Mark, on social media and through search engine advertisements, but spend is modest, as one would expect for a business that, albeit obviously successful, trades out of a single location.  The Applicant has had some publicity in the local media and has also displayed the Trade Mark on training equipment, flyers and on the premises where the Applicant conducts its business.  

    [10] Tong 3 repeats and exhibits much of the same information already provided in Tong 1 and 2.

1. When considering the evidence of use, I note the comments of the Delegate in Mount Everest Mineral Water Ltd:

   It is convenient first to dispose of a myth: that is, given sufficient use, any sign might qualify as a trade mark and be registrable under the provisions of subsection 41(6).  This is not true as is stated in Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 (‘Go On ..’); implied in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘PERSIAN FETTA’); and discussed in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (“TREAT’), where Jacob J said:

   There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords.

   A moment’s reflection reveals that a trader’s repeated use of an inherently unadapted sign for the sake only of its ordinary meaning serves solely to reinforce its ordinary meaning in the eyes of the public.  The word ‘soap’, used on ‘soaps’, is only descriptive and when used solely to describe the nature of the goods can never change its meaning.  Such a sign is incapable of taking on an additional meaning as indicating only the goods of one trader.  But that is not to state that a sign which lacks any inherent adaption to distinguish cannot take on another meaning as a trade mark and denote the goods or services of a trader.  The acquisition of this other meaning depends entirely on a number of factors including:

   ·     whether the sign is, effectively, the only ‘normal’ way to describe or identify the goods or services in question such that other traders are likely to require in good faith to want or need to use it, and,

   ·     whether the sign is the only, or the most appropriate, sign to use to denote the nature or origin of the goods.

   ·     The way the sign has been used by the owner;

   ·     whether the sign is used by other traders for the sake of its ordinary meaning;

   ·     how the particular market has been educated concerning that use; and,

   ·     how the market perceives that sign in denoting the goods in respect of which it is used: see Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241; (‘OREGON’) Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525; (2002) 56 IPR 452; [2003] AIPC 91-841 (‘Terracotta Colour’).[11]

   [11] 2012 ATMO 65, [16]-[17] (Hearing Officer Thompson).

2. In Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks, Yates J summarised the issue in these terms (in respect of s 41(6) of s 41 as it stood prior to the Raising the Bar legislation, which is equivalent to the current s 41(3)):

   Section 41(6) recognises that a sign may be descriptive but still distinctive. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297, Middleton J observed (at [60]) that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive. His Honour quoted the following observations of Lockhart J in Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 335-336:

   The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re application of H N Brock & Co Ltd, for a trade mark (“Osowoolo”)and trade marks (“Orlwoola”) (1909) 26 RPC 683, 850, 854 (the Orlwoola case) and Re application of Joseph Crosfield & Sons Ltdto register a trade mark (“Perfection”) (1909) 26 RPC 837 (the Perfection case).

   If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.

   A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (supra) (at 857-858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.

   Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the [identity] of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, par 25.8.[12]

   [12] [2015] FCA 756; (2015) 114 IPR 81, [128].

3. Most recently, in Primary Health Care Limited v Commonwealth of Australia the Full Federal Court made the following comments:

   An essential characteristic of a trade mark is that it is used to distinguish the goods or services of a trader from the goods or services of other traders: s 17 of the TMA; E & J Gallo Winery v Lion Nathan Pty Ltd (2010) 241 CLR 144 at [42]. A trade mark may in fact distinguish goods and services, or it may not. If a trade mark is not capable of distinguishing designated goods or services, then it may be used but cannot be registered. If it is not registered, the owner does not acquire the monopoly on the use of the trade mark conferred under s 20 of the TMA.[13] 

   …

   As Yates J observed in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 at [34], mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. Whether the appellant used the word mark to distinguish the Services, and the extent to which it achieved distinctiveness, involved an evaluative judgment. The primary judge found that the appellant had used the word mark to distinguish its operation of its medical centres, but had not used the mark to distinguish the Services.[14] 

   [13] [2017] FCAFC 174, [219].

   [14] Ibid [373].

4. In summary when evaluating the evidence of the Applicant for the purposes of s 41(3)(b), I must consider whether it establishes that the Trade Mark has a new and secondary meaning different from its primary descriptive one and thus, at the filing date, had ceased to be purely descriptive and had acquired a secondary meaning. Another way to look at it is whether consumers regard the Trade Mark alone as a badge of trade origin in the sense that they would rely upon that Trade Mark alone as an indication of trade origin for the Applicant’s Services. In particular, I must look at:

   • the way the Trade Mark has been used by the Applicant;
   • how the particular market has been educated concerning that use; and
   • how the market perceives the Trade Mark in denoting the Applicant’s Services in respect of which it is used.

5. The market for the Applicant’s Services is a broad one and I am unsatisfied that the Applicant’s evidence establishes anything other than the fact that the Applicant has a successful business operating in the St George area in Sydney. I am not satisfied that the market for the Applicant’s Services, which is Australia-wide, has been educated to recognise the Trade Mark as connoting the Applicant rather than for its descriptive meaning. While the Trade Mark is not a trade mark (such as ‘soap’ referred to in the paragraph above) for which no amount of use could possibly result in the term becoming distinctive, given the size of the market and the lack of evidence of consumer appreciation of the Trade Mark in that market, I am not satisfied that at the filing date, the consumers in the market for the Applicant’s Services regarded the Trade Mark alone as a badge of origin separate from its descriptive nature; i.e. that the mark uniquely identifies the martial arts training services provided by the Applicant. In my evaluative judgement, the evidence before me is insufficient to persuade me that the descriptive trade mark INTEGRATED COMBAT CENTRE had achieved distinctiveness as a matter of fact at the relevant date. As such the application to register the Trade Mark must be rejected under s 41 of the Act.

   Decision

   20. 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.

6. As I am satisfied that there is a ground for rejection under s 41(3) of the Act, I reject the application to register the Trade Mark.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   1 November 2023