International Registration 1368594 (14, 18, 25, 28, 29, 30, 31, 32, 35) Australian Trade Mark Application number 1878246 (14, 18, 25, 28, 29, 30, 31, 32, 35) – #SANTACLARA- in the name of the Lidl Stiftung & Co. KG

[2019] ATMO 156

TRADE MARKS ACT 1995

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

ReInternational Registration 1368594 (14, 18, 25, 28, 29, 30, 31, 32, 35) Australian Trade Mark Application number 1878246 (14, 18, 25, 28, 29, 30, 31, 32, 35) – #SANTACLARA- in the name of the Lidl Stiftung & Co. KG

Delegate:	Nicholas Smith
Representation:	Holder: Written submissions by Shauna Ross, instructed by Sparke Helmore
Decision:	2019 ATMO 156 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA accepted for possible extension of protection to Australia in respect of goods in class 31.  For the remainder of the goods and services, the Trade Mark is insufficiently inherently adapted to distinguish – no evidence of use provided –extension of protection refused

Background

1. On 3 April 2017, Lidl Stiftung & Co. KG (‘Holder’) applied to extend protection to Australia of International Registration 1368594 under the provisions of the Trade Marks Act 1995 (‘Act’) and Trade Marks Regulations 1995 (‘Regulations’).  Such an application is referred to as an International Registration Designating Australia (‘IRDA’).  The current details of the IRDA appear below:

Application Number:	1878246
International Reg.	1368594
Filing Date:	3 April 2017
Priority Date	11 October 2016
Goods and Services:	See Annexure 1 (‘Holder’s Goods and Services’)
Trade Mark:	(‘Trade Mark’)

1. The IRDA was examined as required under Reg 17A.12 of the Regulations. On 22 November 2017 IP Australia issued a first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA, identifying grounds for rejection pursuant to ss 41 and 43 of the Act (‘First Report’). With respect to the s41 ground, the examiner stated (paraphrased) that as Santa Clara is the name of cities in the United States of America and Cuba (and the name of a county in the United States of America as well as other geographical locations) other traders should be able to use the Trade Mark or something nearly resembling this in connection with goods similar to the Holder’s Goods and Services.

2. Following an amendment to the Holder’s Goods and Services, the s 43 ground for refusal was withdrawn on 18 March 2019. On 22 May 2019 IP Australia issued a further report indicating that it was withdrawing the refusal in respect of the Holder’s Goods in classes 29, 30 and 31 but maintaining the section 41 opposition in respect of the remaining Holder’s Goods and Services. After further correspondence between the examiner and the attorneys for the Holder failed to overcome the s 41 objection in respect of the other goods and services subject to the specification, the Holder requested to be heard by the Registrar of Trade Marks under reg 17A.17 of the Regulations.

3. The present matter is a hearing under Reg 17A.17 (which is similar in nature of to a request for hearing under s 33(4) of the Act). As noted in MHFC Holdings Pty Ltd  as well as other decisions of the Registrar (Teraglow Pty Ltd and TOM Organic Pty Ltd), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. As noted in MHFC, 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, including with respect to the examiner’s decision, on 22 May 2019, to withdraw the refusal in relation to the Holder’s Goods in classes 29, 30 and 31. Rather this proceeding will consider afresh the s 41 ground for rejection under this Act as it applies to the IRDA as a whole, not the IRDA in respect of the Holder’s Goods and Services other than the goods in classes 29, 30 and 31.

4. Initially the matter was listed for an oral hearing, but on 6 September 2019, the Holder indicated that it would seek rely on written submissions only.  Shauna Ross, Counsel, instructed by Sparke Helmore, made written submissions in this matter on 8 October 2019 that supplement the earlier submissions made by the Holder on 21 February 2019 and 2 May 2019. 

5. On 15 October 2019, noting that the submissions by Ms Ross were limited to the application of the s 41 ground to the Holder’s Goods and Services other than the goods in classes 29, 30, and 31, I sent an e-mail to the Holder’s representatives providing them with the opportunity to file additional submissions that deal with the application of s 41 to the Holder’s Goods in classes 29, 30 and 31. On 29 October 2019, I received a communication from the Holder’s representative indicating that they did not seek to file any additional submissions.

   Legislative framework

6. Reg 17A.24 of the Regulations provides that:

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

   (a)it is not in accordance with this Division; or

   (b)there are grounds for rejecting it.

   …

   (3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   (a)it is not in accordance with this Division; or

   (b)there are grounds for rejecting it, in whole or in part.

7. Section 41 of the Act provides:

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

   1.(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.

   1.(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.

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

   a.(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.(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.

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

   d.(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

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

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

   b.(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).

   a.(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).

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, which corresponds to Reg 17A.24:

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 (‘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:

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 Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [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 Services] 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 [Claimed 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 Services]. [that is, s 41(4) applies]

In the present case the Holder has provided no evidence of use of the Trade Mark. The Holder’s Submissions refer to a promotional Christmas campaign run in the EU and the reputation of the Holder more generally. Such material should be in the form of a declaration, but even if accepted as evidence going to s 41(4) (either as evidence of use or other circumstances), such evidence is so minimal that is has no probative value.

As such the ground for rejection under s 41 will apply if the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Holder’s Goods and Services from the goods and services of other persons, being the test in s 41(4). It is not necessary to conclude that the Trade Mark is not to any extent inherently adapted to distinguish, being the test in s 41(3).

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]. 

(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].

As noted in paragraph 4 above, the process I am required to undertake is not a review of the examiner’s reasoning.  However, it is useful to understand how the examiner considered the question of inherent adaption to distinguish in respect of the Trade Mark.  In particular the Examiner in its second report on 18 March 2019 noted that:

IP Australia office practice treats hashtags in a similar way to domain names. That is, it is the words following the # which are the distinguishing element of a hashtag and this is the element which is considered when assessing the inherent adaptation to distinguish. For more information, please refer to guidance at Part 22.14.5 of the Trade Marks Examiners Manual on our website.

In the same Manual, Part 22.15.1 explains IP Australia office practice regarding geographical names. Trade mark material that is the name of a place with the potential to have a connection with the goods or services is not prima facie registrable. It is not necessary to establish that a place has a reputation. It is sufficient that the goods or services have a potential connection with the geographical name, now or in the future.

The holder wishes protection for a range of common place goods that are manufactured and/or available around the globe. The holder also seeks protection for services of the type which are frequently offered online. Hence the conclusion that, if not now, the SANTA CLARA locations referred to in my first refusal certainly have the potential for future connection with the goods and services.

Furthermore in the examination report dated 22 May 2019, withdrawing the refusal in respect of the Holder’s Goods in Classes 29, 30 and 31, the examiner stated:

Having considered your submissions, I am withdrawing the refusal in relation to goods in Classes 29, 30 and 31.

While the SANTA CLARA valley retains some agriculture, the valley and the city of the same name are largely urbanised which reduces the likelihood of any future export market for the relevant goods. The Cuban SANTA CLARA is equally unlikely for similar reasons.

The Holder’s submissions in respect of s41 are summarised below:

••         The Trade Mark is different to the words ‘SANTA CLARA’ as the trade mark adds a hashtag and removes the space between the two words.  

••         When a trade mark contains a geographical name, one must consider whether the geographical location has any connection or potential connection to the goods and services, such that other traders would desire to use it for its geographical meaning.  In the present case the reputations of Santa Clara, USA and Santa Clara, Cuba are distinct and unrelated to the Holder’s Goods and Services.  In particular the fact that Santa Clara, USA has the capacity to produce a wide variety of goods does not equate with it having a reputation or potential reputation in the Holder’s Goods and Services.  This distinguishes this mark from cases such as Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd, where the mark BOHEMIA was rejected on the basis of the existence of a significant reputation.   Rather given the nature of Santa Clara, USA or Santa Clara, Cuba to the extent that the Trade Mark is a geographical reference it is a fanciful or arbitrary reference akin to ‘North Pole for bananas’

••         In the alternative, the term Santa Clara has no ordinary signification to the target audience in Australia since it has no presence in the Macquarie Dictionary.

••         Regardless of the above, the Holders Goods and Services contain various items that specifically are highly unlikely to be produced in the geographic locations, such as milk, dahl, or fish jelly. 

I agree with the Examiner that the addition of the hashtag does not add anything to the overall distinctiveness of the mark, since the hashtag is simply an identifier that is added to a social media post or message and it is the words following the hashtag which are to be considered when assessing the inherent adaption to distinguish. Equally the removal of the space between ‘Santa’ and ‘Clara’ adds little to the distinctiveness of the Trade Mark; given the common usage of ‘santa’ as a geographical location (of Spanish origin) (Santa Fe, Santa Cruz, Santa Barbara), the mark is likely to be read as ‘santa clara’. I also note that there is no evidence before me as to the specific reputation or use of Santa Clara in respect of the Holder’s Goods and Services. Finally, I am unpersuaded by the Holder’s Submissions that by reason of the term Santa Clara not being in the Macquarie Dictionary, it has no ordinary signification to Australian consumers; the Holder has failed to identify any authority to suggest that only well-known geographical terms or geographical terms listed in a dictionary should be subject to s 41 of the Act.

I do not accept that geographical terms are inherently incapable of ever being used as trade marks.  However, in the case of Clark Equipment, Kitto J when considering the registrability of geographical names said at [514]-[516]:

The fact that this is the test is the basic reason for the frequent refusal, exemplified in this Court by the case of Thomson v B Seppelt & Sons Ltd (1925) 37 CLR 305, to register as a trade mark a word of prima facie geographical signification. It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Ltd v Registrar of Trade Marks (1954) 71 RPC 150, at p 154. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with bananas: A Bailey & Co Ltd v Clark, Son & Morland Ltd (the Glastonbury Case) (1938) AC 557, at p 562; (1938) 55 RPC 253, at p 257 (see also the Livron Case (1937) 54 RPC 327, at p 339), or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. Compare the case of a descriptive word: Dunlop Rubber Co's Application (1942) 59 RPC 134. But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place. A descriptive word is in like case: the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. This may seem at first blush a paradox, as Lord Simonds and Lord Asquith suggested in the Yorkshire Copper Works Case (1954) 71 RPC 150, at pp 154, 156, but surely not when Lord Parker's exposition of the subject is borne in mind.

The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make. The leading authorities on the subject include the Yorkshire Copper Works Case (1954) 71 RPC 150 (the judgment of Lord Evershed in that case when it was in the Court of Appeal (1953) 70 RPC 1 contains a valuable discussion of the topic), the Glastonbury Case (1938) AC 557; (1938) 55 RPC 253 and the Liverpool Electric Cable Co Ltd's Application (1929) 46 RPC 99. These cases show, as the Registrar said in "Dan River" Trade Mark (1962) RPC 157, at p 160, in a decision which was endorsed by Lloyd-Jacob J, that there is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns or districts if they are a seat of manufacture of the goods for which registration is sought.

Bennett J in Bavaria NV v Bayerischer Brauerbund eV made the following comments:

This has led to the rejection of a word of prima facie geographical signification, particularly when it is used simpliciter and where goods of the kind for which it is sought to be registered are produced at the place or in the area (Clark Equipment at 515-516), or if it is reasonable to suppose that such goods in the future would be produced there (Chancellor, Masters and Scholars of the University of Oxford (Trading as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1 at 23 per Gummow J). This is because other traders have a legitimate interest in using the geographical name to identify their goods and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration (Clark Equipment at 514-515). Justice Gummow in University of Oxford came to the view that, if a court is in doubt as to the likelihood of another trader legitimately wishing to use a mark, the application should be refused (at 25). In Clark Equipment, Kitto J held that the word MICHIGAN was not adapted and was not capable of becoming adapted to distinguish earth-moving and other equipment. Similarly, OXFORD was refused for printed publications (University of Oxford) and COLORADO refused for bags (Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506). In each case, the registration sought was of a word mark that connoted a geographical location.

In the present case, the Trade Mark consists of a geographical term with essentially minor additions or alterations, the effect of which is minimal.  The Holder’s Goods and Services are an extraordinarily broad range of goods ranging from luggage, gemstones, clothing, footwear, headgear, foodstuffs and a range of business and other services relating to the above goods.  Given the range of goods and services for which the Trade Mark is sought to be registered, even given the small size of the respective geographical locations, it is almost certain that some of the Holder’s Goods and Services are produced at either of the geographical locations or may in future be produced there. 

This is not a case, as suggested by the Holder, of ‘North Pole for bananas.’  Not only are the Holder’s Goods and Services a broad range of goods that may well be produced at the geographical locations, I have been provided with no evidence about the geographical locations to suggest that the production of the Holder’s Goods and Services at that location is in any way fanciful and with the exception of the class 31 goods, have no other basis to reach such a conclusion.

With respect to the Holder’s Goods in classes 29, 30 and 31, I accept the examiner’s logic in respect of the goods in class 31, namely that the Santa Clara locations, as urban areas, are inherently unlikely to produce the agricultural products in class 31 and as it is not reasonable to suppose those goods will be produced there in the future.  However the Holder’s Goods in classes 29 and 30 include numerous processed food products that are commonly produced or created in urban areas.  Examples of urban areas that produce such processed food products would include NEW YORK frozen pizza, MELBOURNE meat pies, TOKYO sushi. 

Following the logic in Clark Equipment, the Trade Mark is plainly not inherently adapted to distinguish the Holder’s Goods and Services other than the Holder’s Goods in class 31 and as there is no significant evidence of use of the Trade Mark or other circumstances s41(4) applies and the the application to extend protection to the Trade Mark must be rejected in respect of the Holder’s Goods and Services other than the Holder’s Goods in class 31.

Decision

Regulation 17A.24 provides:

17A.24Final decision on examination

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

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it.

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

(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it, in whole or in part.

I accept the IRDA for possible extension of protection in Australia in respect of the Holder’s Goods in class 31.  

With respect to the Holder’s Goods and Services in all other classes, given that I am satisfied that there is a ground for rejection and the Holder has been unable to overcome it, I must reject the IRDA in accordance with reg 17A.24 for those Goods and Services, which I now do. If, however, the Registrar has been served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Nicholas Smith
Hearing Officer
Oppositions and Hearings
1 November 2019

Annex 1 – Holder’s Goods and Services

Class 14: Gemstones, pearls and precious metals, and imitations thereof; jewels; jewellery boxes and watch boxes; time instruments; key rings and key chains

Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols; saddlery, whips and animal apparel; walking sticks; traveling trunks; valises; worked or semi-worked hides and other leather; boxes of leather or leatherboard; casings, of leather, for springs; furs sold in bulk; leather luggage straps; imitation leather hat boxes; curried skins; faux fur; cases of leather or leatherboard; leather cloth; leather and imitation leather; straps (leather -); animal skins

Class 25: Clothing; headgear; footwear

Class 28: Decorations for Christmas trees and artificial Christmas trees; toys, games, playthings and novelties; sporting articles and equipment

Class 29: Fish, seafood and molluscs; meat; dairy products and dairy substitutes; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs and egg products; pre-packaged dinners consisting primarily of seafood; antipasto salads; stewed apples; eggplant paste; food served in casseroles consisting primarily of meat, fish, poultry, game and vegetables; organic nut and seed-based snack bars; stock; broth [soup]; stock cubes; caesar salad; caponata; chile con queso; chili con carne; chop suey; dahls; dairy puddings; artificial milk based desserts; desserts made from milk products; dips; dolmas; condensed tomatoes; stews; falafel; prepared meals made from meat [meat predominating]; prepared meals made from poultry [poultry predominating]; prepared meals containing [principally] eggs; prepared meals containing [principally] chicken; prepared meals containing [principally] bacon; prepared meals consisting substantially of seafood; prepared meals consisting principally of game; instant soup; fish in olive oil; fish stock; fish cakes; fish jellies; fish sausages; meatballs; fruit desserts; fruit-based snack food; chicken salad; frozen french fries; frozen pre-packaged entrees consisting primarily of seafood; chile rellenos; filled potato skins consisting primarily potato, meat and cheese; stuffed olives; cooked meat dishes; cooked truffles; frozen cooked fish; soup stock in the form of granules; chilled meals made from fish; potato fritters; bottled vegetables; vegetable-based entrees; vegetable-based snack foods; vegetable stock; prepared vegetable dishes; vegetable chips; salted nuts; corned beef hash; frozen prepared meals consisting principally of vegetables; chicken balls; legume salads; soy-based snack foods; instant stew; instant miso soup; yoghurt desserts; potato flakes; potato-based gnocchi; potato dumplings; potato pancakes; potato fritters; mashed potato; potato salad; potato snacks; mincemeat made from fruits; stuffed cabbage rolls; coconut shrimp; canned pork and beans; soups; croquettes; beef jerky; bologna; matzo ball soup; powdered milk for food purposes; mixes for making soup; sugar-coated fruits on a stick; nut-based snack foods; nut-based food bars; spiced nuts; prepared nuts; olives stuffed with feta cheese in sunflower oil; olives stuffed with red peppers; olives stuffed with red peppers and almonds; olives stuffed with almonds; olives stuffed with pesto in sunflower oil; omelets; breaded and fried jalapeno peppers; vegetable marrow paste; pollen prepared as foodstuff; quenelles; rhubarb in syrup; beef stew; hash brown potatoes; roast chestnuts; roasted nuts; potato-based snack foods; snack foods based on nuts; meat-based snack foods; tofu-based snacks; snack foods based on vegetables; snack foods based on legumes; soy burger patties; potato sticks; canned soups; vegetable and meat extracts for soups; soup concentrates; soup pastes; frozen appetizers consisting primarily of chicken; frozen appetizers consisting primarily of seafood; tofu; tofu burger patties; vegetable burgers; vegetarian sausages; clam juice; hazelnuts, prepared; prepared snails [escargot]; stock [prepared]; soya [prepared]; ready cooked meals consisting wholly or substantially wholly of meat; ready cooked meals consisting wholly or substantially wholly of game; ready cooked meals consisting wholly or substantially wholly of poultry; pre-cooked miso soup; pre-cooked soup; pre-cooked curry stew; pre-packaged dinners consisting primarily of game; cooked meals consisting principally of fish; chilled foods consisting predominately of fish; prepared meals consisting primarily of meat substitutes; white pudding; sausages in batter; tzatziki; prepared salads; onion rings

Class 30: Ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; processed grains, starches, and goods made thereof, baking preparations and yeasts; sugars, natural sweeteners, sweet coatings and fillings, bee products; french toast; flavoured popcorn; snack food products consisting of cereal products; snack food products made from potato flour; snack foods prepared from maize; snacks manufactured from muesli; flaky pastry containing ham; pretzels; brioches; burritos; calzones; cheeseburgers [sandwiches]; chimichanga; chinese steamed dumplings (shumai, cooked); chow mein [noodle-based dishes]; crackers made of prepared cereals; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with herbs; crackers flavoured with cheese; crackers flavoured with spices; crepes; egg pies; empanadas; enchiladas; chocolate-based ready-to-eat food bars; tortillas for making fajitas; pastries containing vegetables and fish; rice-based prepared meals; prepared meals in the form of pizzas; prepared meals containing [principally] pasta; pies containing meat; meat pies; fresh pies; fresh pizza; fresh sausage rolls; stir fried rice cake [topokki]; spring rolls; prawn crackers; fish crackers; fried corn; chilled pizzas; frozen pastry stuffed with meat; frozen pastry stuffed with vegetables; filled baguettes; chinese stuffed dumplings (gyoza, cooked); filled bread rolls; vegetable pies; pellet-shaped rice crackers (arare); rice based dishes; meals consisting primarily of pasta; corn kernels being toasted; toasted sandwiches; chips [cereal products]; cereal-based snack food; gimbap [korean rice dish]; mincemeat pies; flapjacks; hamburgers contained in bread rolls; millet cakes; snack food products made from cereal flour; snack food products made from rice flour; snack food products made from soya flour; snack foods made from corn; snack foods made from corn and in the form of puffs; snack foods made from corn and in the form of rings; puffed corn snacks; cereal snack foods flavoured with cheese; caramel coated popcorn with candied nuts; sticky rice cakes (chapsalttock); shrimp dumplings; preserved pizzas; korean-style cooked dish consisting primarily of dough flakes with broth [sujebi]; cheese curls [snacks]; microwave popcorn; sandwiches containing fish fillet; sandwiches containing meat; caramel coated popcorn; crackers filled with cheese; mung bean pancakes (bindaetteok); nachos; ready-made dishes containing pasta; noodle-based prepared meals; pastries containing vegetables and meat; pastries containing vegetables and poultry; pies; pies containing fish; pies containing poultry; pies containing vegetables; pies containing game; pies [sweet or savoury]; stir-fried rice; pancakes; prepared savory foodstuffs made from potato flour; savory pastries; pizza crust; prepared pizza meals; quesadillas; quiches; prepared rice dishes; rice dumplings; rice crackers; rice cakes; rice biscuits; rice salad; rice-based snack food; risotto; salted tarts; samosas; sandwiches; pork pies; sesame snacks [confectionery]; snack foods made from wheat; snack food products made from cereal starch; snack food products made from maize flour; snack food products made from rusk flour; snack foods made of whole wheat; cheese flavored puffed corn snacks; extruded wheat snacks; crumble; sushi; tabbouleh; tamales; frozen pizzas; frozen pastry stuffed with meat and vegetables; tortilla snacks; tortillas; dry and liquid ready-to-serve meals, mainly consisting of rice; dry and liquid ready-to-serve meals, mainly consisting of pasta; boxed lunches consisting of rice, with added meat, fish or vegetables; ready to eat savory snack foods made from maize meal formed by extrusion; meals consisting primarily of rice; snack foods consisting principally of bread; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; snack foods consisting principally of extruded cereals; prepared meals containing [principally] rice; soft pretzels; poultry and game meat pies; wrap [sandwich]; sausage rolls; prepared foodstuffs in the form of sauces; pasta-based prepared meals; onion biscuits; baked goods, confectionery, chocolate and desserts; none of the aforementioned goods consisting only of dry or fresh pasta or noodles

Class 31: agricultural crops and horticulture products; fresh fruits and vegetables; none of the foregoing being plants or plant material of the genera Hemerocallis, Lycopersicon, Rubus or Zea; aquacultural crops; forestry products; fresh nuts and herbs; fungi

Class 32: Non-alcoholic beverages; preparations for making beverages; non-alcoholic beer; malt beer

Class 35: Business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services; advertising, marketing and promotional services; retailing and wholesaling relating to precious stones, pearls and precious metals, and imitations thereof, jewellery, jewellery and watch boxes, chronometric instruments, key rings and key chains; retailing and wholesaling relating to luggage, bags, pocket wallets and other carry cases, umbrellas and parasols, saddlery, whips and animal clothing, walking sticks, trunks, travelling bags, unworked or semi-worked pelts or other leather, boxes of leather or leatherboard; retailing and wholesaling relating to casings, of leather, for springs, hides sold by quantity, luggage straps of leather, hat boxes of imitations of leather, curried skins, fake fur, boxes of leather or leatherboard, artificial leather, leather and imitations of leather, leather straps, pelts; retailing and wholesaling relating to clothing, headgear, footwear; retailing and wholesaling relating to festive decorations and artificial Christmas trees, toys, games, playthings and novelties, sporting articles and equipment; retailing and wholesaling relating to fish, seafood and shellfish, meat, dairy products and substitutes therefor, processed fruits and vegetables (including nuts, pulses) and processed mushrooms, birds' eggs and egg products, packaged meals consisting primarily of seafood, antipasti salads, apple compote; retailing and wholesaling relating to aubergine paste, casseroles (savoury dishes), organic nut-based and seed-based snack bars, broth, broths (soups), stock cubes, caesar salads, caponata, chile con queso, chili con carne (meat chilli dish), chop suey (vegetable dishes with and without meat), dahl soups, milk based desserts, desserts based on artificial milk, desserts made of milk products, dips (milk products); retailing and wholesaling relating to dolmas (oriental dish), concentrated tomatoes, stews, falafel, prepared dishes consisting of meat (consisting primarily of meat); retailing and wholesaling relating to prepared meals consisting of poultry (consisting primarily of poultry), prepared meals consisting primarily of eggs, prepared meals consisting primarily of chicken, prepared meals consisting primarily of bacon, prepared meals consisting primarily of seafood, prepared meals consisting primarily of game; retailing and wholesaling relating to prepared soups, fish in olive oil, fish stock, fish crackers (snacks), fish dumplings, fish jellies, fish sausages, meatballs, fruit desserts, fruit snacks, poultry salads, frozen french fries, frozen pre-packaged main meals consisting primarily of seafood, stuffed chillies (chiles rellennos), filled potatoes, filled olives, cooked meat dishes; retailing and wholesaling relating to cooked truffles, cooked fish, frozen, granulated stock, chilled meals made from fish, vegetables in batter, vegetables in jars, vegetable main courses, vegetable snacks, vegetable broths, prepared vegetable dishes, vegetable fritters, salted nuts, corned beef hash, frozen prepared dishes consisting primarily of vegetables, chicken dumplings; retailing and wholesaling relating to pulse salads, soya-based snack dishes, instant stews, instant miso soup, yoghurt desserts, potato flakes, potato gnocchi, potato dumplings, potato pancakes, potato fritters, mashed potato, potato salads, potato snacks, fruit mincemeat, stuffed cabbage rolls, coconut shrimps, preserved pork with beans; retailing and wholesaling relating to soups, soups, croquettes, air-dried beef, bologna sausage, matzah ball soup, milk powder for foodstuffs, soup mixes, sugar-coated fruits on sticks, nut snacks, nut-based food bars, spiced nuts, nuts, prepared, olives filled with feta cheese in sunflower oil, olives filled with pepperoni, olives filled with pepperoni and almonds; retailing and wholesaling relating to olives with almond fillings, olives with pesto fillings in sunflower oil, omelettes, breaded and fried jalapeno chillies, field pumpkin pastes, pollen prepared as foodstuff, quenelles, rhubarb in syrup, beef ragout, rosti, roasted chestnuts, roasted nuts, potato-based snacks, nut-based snacks, meat-based snacks, tofu-based snacks, vegetable-based snacks; retailing and wholesaling relating to pulse-based snacks, soya steaks for hamburgers, potato sticks, canned soups, soup extracts, soup concentrates, soup pastes, frozen starters consisting primarily of chicken, frozen starters consisting primarily of seafood, tofu, tofu steaks for hamburgers, vegetarian rissoles, vegetarian charcuterie, clam juice; retailing and wholesaling relating to processed hazelnuts, processed snails (escargots), processed meat stock, processed soya, ready cooked meals consisting wholly or substantially wholly of meat, ready cooked meals consisting wholly or substantially wholly of game, ready cooked meals consisting wholly or substantially wholly of poultry, pre-cooked miso soup, pre-cooked soups, pre-cooked curry stew; retailing and wholesaling relating to pre-packaged main meals consisting primarily of game meat, cooked dishes consisting primarily of fish, primarily fish-containing, chilled foodstuffs, prepared dishes consisting primarily of meat substitutes, white pudding (sausage with oat flakes), sausages in batter, tzatziki (greek yoghurt dip), prepared salads, onion ring; retailing and wholesaling relating to ice, ice creams, frozen yogurt, sorbets, coffee, tea, cocoa and substitutes therefor, edible salt, condiments, spices, flavourings for drinks, processed cereals and starches for foodstuffs, and goods made therefrom, baking preparations and yeast, sugar, natural sweeteners, sweet glazes and fillings and bee products for food, french toast; retailing and wholesaling relating to flavoured popcorn, snack products consisting of cereals, snacks prepared from potato flour, snacks prepared from corn, snacks produced from muesli, puff pastry containing ham, pretzels, brioches, burritos, calzone, cheeseburgers (sandwiches), chimichangas, chinese steamed dumplings (cooked shumai), chow mein (noodle dishes), crackers made from processed cereals, meat-flavoured crackers; retailing and wholesaling relating to vegetable-flavoured crackers, herb-flavoured crackers, cheese-flavoured crackers, spiced crackers, pancakes, egg pate, empanadas, enchiladas, ready-to-eat chocolate-based food bars, fajitas, pastries containing vegetable and fish fillings, prepared rice-based dishes, prepared dishes in the form of pizzas, prepared dishes primarily containing farinaceous food pastes, pies containing meat, meat pies; retailing and wholesaling relating to fresh pies, fresh pizza, fresh sausage rolls, fried rice cakes (topokki), spring rolls, prawn crackers, fried corn, frozen pizzas, frozen pasta filled with meat, frozen pasta filled with vegetables, filled baguettes, filled ribbon vermicelli, filled chinese dumplings (cooked gyoza), filled bread, vegetable pies, pressed rice crackers (arare), rice-based dishes; retailing and wholesaling relating to dishes consisting primarily of pasta, roasted corn, toasted sandwiches, chips [cereal products], cereal-based snack food, dried seaweed rolls (gimbap), mincemeat pies, oat biscuits, hamburger rolls, millet cakes, snack products made from cereal flour, snack products made from rice flour, snack products made from soya flour, corn-based snack dishes, snack dishes made from corn in the form of baked goods; retailing and wholesaling relating to snack dishes made from corn in the form of hoops, snack dishes made from popcorn, snack dishes made from cheese-flavoured cereals, caramelised popcorn containing candied nuts, sticky rice cakes (chapssaltteok), shrimp dumplings, preserved pizzas, korean noodle soup (sujebi), cheese puffs, macaroni cheese, lasagne, macaroni salad; retailing and wholesaling relating to microwave popcorn, sandwiches containing fish fillets, sandwiches containing meat, caramel-coated popcorn, cheese-filled crackers, mung bean pancakes (bindaetteok), nachos, prepared noodle dishes, pasta meals, pasta salad, pasta dishes, pies consisting of vegetables and meat, pies consisting of vegetables and poultry, pies, pies containing fish, pies containing poultry, pies containing vegetables; retailing and wholesaling relating to pies containing game, pies (sweet or savoury), stir-fried rice, pancakes, prepared savoury foods made from potato flour, savoury pastries, pizza bases, prepared pizza dishes, quesadillas, quiches, ravioli, prepared rice dishes, rice dumplings, rice crackers, rice cakes, rice biscuits, rice salads, rice-based snack food, risotto, salted tarts, samosas, sandwiches, pork pies, sesame snacks, snack dishes made from wheat; retailing and wholesaling relating to snacks made from cereal starch, snacks made from corn flour, snacks made from breadcrumbs, snacks made from wholegrain wheat, cheese flavoured puffed corn snacks, spaghetti and meatballs, tinned spaghetti in tomato sauce, extruded wheat snacks, crumble, sushi, tabbouleh, tamales, frozen pizzas, frozen pastries filled with meat and vegetables, tortilla snacks, tortillas; retailing and wholesaling relating to dried and liquid prepared dishes consisting primarily of rice, dried and liquid prepared dishes consisting primarily of pasta, packaged food consisting of rice with meat, fish or vegetables, ready-to-eat savoury snacks made from extruded corn flour, dishes consisting primarily of rice, snacks consisting primarily of bread; retailing and wholesaling relating to packaged lunch dishes consisting primarily of rice, containing meat, fish or vegetables, snacks consisting primarily of pressed cereals, prepared dishes consisting primarily of rice, soft pretzels, game and poultry meat pies, wraps (sandwiches), sausage rolls, prepared food in the form of sauces, prepared meals consisting of pasta, onion crackers; retailing and wholesaling relating to pastries and confectionery, chocolate and desserts; retailing and wholesaling relating to agricultural, horticultural and forestry products, and aquaculture products, fresh fruits and vegetables, fresh nuts and herbs, mushrooms; retailing and wholesaling relating to non-alcoholic beverages, preparations for making beverages, non-alcoholic beers, malt beer; retail services relating to food; retail services in relation to foodstuffs; retail services in relation to festive decorations; wholesale services in relation to foodstuffs; wholesale services in relation to festive decorations; retail services via catalogues related to foodstuffs; online retail store services relating to clothing; mail order retail services related to foodstuffs; mail order retail services connected with clothing accessories