Just Cuts Franchising Pty Limited
[2023] ATMO 77
•15 June 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2129022 (classes 41 & 44) – stylecuts (in colour) – in the name of Just Cuts Franchising Pty Limited
Delegate:
Tracey Berger
Representation:
Applicant: Sonia Stewart of Counsel, instructed by LegalVision ILP Pty Ltd
Decision:
2023 ATMO 77
Trade Marks Act 1995 (Cth) – section 33 proceeding – section 41 considered – trade mark capable of distinguishing some services and distinctive in fact of other services – application amended - trade mark application accepted for remaining services
Background
1. On 15 October 2020, Just Cuts Franchising Pty Limited (‘Applicant’) filed an application under the Trade Marks Act 1995 (Cth)[1] for registration of the trade mark detailed below:
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
Trade Mark Number: 2129022 (‘Application’)
Trade Mark: (‘Trade Mark’)
Services:Class 41: Beauty school services; Academy education services; Business educational services; Conducting of educational conferences; Conducting of educational courses; Dissemination of educational material; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events; Publication of educational materials
Class 44: Hairdressing; Hairdressing salons; Beauty consultancy; Beauty salon services; Beauty salons; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Hair styling; Hair care services; Hair dressing salon services (collectively ‘Applicant’s Services’)
Endorsement: The applicant claims the colours blue and grey as a distinctive feature of the trade mark.
2. I have hereinafter referred to the Applicant’s Services as follows:
‘Hairdressing Services’: Hairdressing; Hairdressing salons; Beauty consultancy; Beauty salon services; Beauty salons; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Hair styling; Hair care services; Hair dressing salon services
‘Hairdressing Education Services’: Beauty school services; Academy education services; Conducting of educational conferences; Conducting of educational courses; Dissemination of educational material; Publication of educational materials; all the foregoing relating to hairdressing.
‘Non-hairdressing Education Services’: Beauty school services; Academy education services; Conducting of educational conferences; Conducting of educational courses; Dissemination of educational material; Publication of educational materials; none of the foregoing relating to hairdressing; Business educational services; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events
3. The Trade Mark was examined and on 28 January 2021, an examination report issued raising a ground for rejection under s 41 on the basis that the Trade Mark is descriptive of “providing consumers with, educating consumers about, or are otherwise provided in relation to stylish haircuts”. Accordingly, other traders are likely to want to use the term ‘style cuts’ to indicate services relating to stylish or styled haircuts. The slight stylisation and colour limitation was not sufficient to render the mark inherently capable of distinguishing the Applicant’s Services.
4. In response, the Applicant filed a declaration of Denis Kevin McFadden, director of the Applicant, made on 26 October 2022 with Annexures DKM-1 to DKM-12. The Examiner issued a second examination report maintaining the ground for rejection under s 41(3) and noting concerns with the evidence filed including whether it showed use of the Trade Mark as a badge of origin.
5. The Applicant requested an oral hearing. On 24 February 2023, the Applicant filed a written summary of its submissions and a declaration of Denis McFadden made on 24 February 2023 with Annexures DKM-A to DKM-H.
6. The hearing took place on 3 March 2023 before a delegate of the Registrar of Trade Marks where Sonia Stewart of Counsel, on instructions from LegalVision ILP Pty Ltd, made submissions on behalf of the Applicant. That delegate is not presently available and the matter was allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks. I have reviewed the hearing and file. My following decision and reasons reflect a consideration of s 41 afresh and are not a review of the decision of the examiner.
Section 41
7. Section 41 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.
8. Section 33 provides what is often referred to as a ‘presumption of registrability’ in stating that the Registrar must accept an application unless satisfied that there are grounds for rejecting it. Justice Branson found in Blount Inc v Registrar of Trade Marks[2] that ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus on to an applicant which was not the intention of the legislation. Thus, s 41 was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”) to address that inconsistency. The Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) states:
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.[3]
[2] [1998] FCA 440.
[3] The EM,146.
9. The Amending Act was not intended to alter the relevant standard for registrability. In this regard, the EM goes on to state:
Note that while the amendment 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.[4]
[4] Ibid.
10. 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.
11. All trade marks examined will fall into one of three categories:
i.trade marks that are sufficiently inherently adapted to distinguish and are therefore prima facie capable of distinguishing;
ii.trade marks that have some limited inherent adaptation to distinguish but are not prima facie capable of distinguishing;
iii.trade marks that have no inherent adaptation to distinguish.
12. To determine the merits of the s 41 ground for rejection, the extent of the Trade Mark’s inherent adaptation to distinguish the Applicant’s Services must be considered. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[5] indicated that the test for distinctiveness under s 41 is a two-step process. First, it is necessary to determine the ordinary meaning of the trade mark in Australia to persons who will purchase, consume or trade in the goods and services.[6] Once the ordinary signification is established, consideration must then be given to whether other traders might legitimately desire to use the trade mark for the sake of its ordinary signification in respect of the same or similar services.[7]
[5] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).
[6] Ibid, [71].
[7] Ibid.
13. The Applicant contends that the Trade Mark is inherently distinctive for at least some of the Applicant’s Services as the mark is syntactically or lexicographically unusual like the mark PERFECTLY YOU.[8] This grammatical “quirk” constitutes a sufficient spark or scintilla of distinctiveness for the mark to qualify for consideration under s 41(4). Moreover, the Applicant notes that the Examiner seemed to focus on the Hairdressing Services in class 44 without considering the distinctiveness of the Trade Mark for the other services.
[8] Wella Aktiengesellschaft v Registrar of Trade Marks [1995] FCA 1139 (Lehane J).
Ordinary Signification
14. The Trade Mark is comprised of two common English words with well-known meanings. The word ‘style’ means “a mode of fashion, as in dress, especially good or approved fashion; elegance; smartness”[9] or to design or shape something such as hair[10] and ‘cut’ means “to trim by clipping, shearing, paring, or pruning”.[11] In the context of the Applicant’s Services, the ordinary signification of the Trade Mark is to design or shape the hair in a fashionable way by trimming the hair.
[9] Macquarie Dictionary (online at 31 May 2023) ‘style’ (def 5).
[10] Collins Dictionary (online at 31 May 2023) ‘style’ (def 5).
[11] Macquarie Dictionary (online at 31 May 2023) ‘cut’ (def 8).
Other Traders
15. Once the ordinary signification of the Trade Mark has been determined, the next step involves the application of the longstanding test articulated in Registrar of Trade Mark v W & G Du Cros[12] and Clark Equipment Co v Registrar of Trade Marks[13] namely whether other traders would legitimately desire to use the Trade Mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of their own goods and/or services.
[12] [1913] AC 624, 634-635 (Lord Parker).
[13] [1964] HCA 55, [5] (Kitto J).
16. Although the Trade Mark is not the most common way to refer to the provision of a fashionable or stylised haircut, I am of the opinion that the ordinary meaning of the mark is so obvious with respect to the Hairdressing Services, that other traders may legitimately want to use the Trade Mark, or some mark nearly resembling it, in relation to their Hairdressing Services.
17. In relation to the class 41 services, I am not satisfied that other traders, without improper motive, are likely to want to use the Trade Mark, or a mark nearly resembling the Trade Mark, in relation to their education and event management services other than for Hairdressing Education Services. In my opinion, the term ‘stylecuts’ has an unusual syntax and does not have any direct meaning in relation to the other class 41 services and hence, the Trade Mark is not one which other traders are likely to wish to use for such services. For the Hairdressing Education Services, the ordinary meaning is not as descriptive as for Hairdressing Services but I believe that other traders may wish to use the Trade Mark, or a similar mark, in relation to Hairdressing Education Services about how to give a stylish cut but that likelihood is lower than for Hairdressing Services.
18. There is a “continuum of distinctiveness – from highly descriptive trade marks to highly distinctive trade marks”.[14] For the Hairdressing Services, the Trade Mark falls closer to the highly descriptive end of the spectrum whereas for the Non-Hairdressing Education Services in class 41, the mark is closer to the allusive end and the Hairdressing Education Services fall in between.
[14] Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [638] (Katzmann J).
Inherent adaptation to distinguish
19. The combination of the ordinary signification of the Trade Mark and the legitimate desire for other traders to use the Trade Mark, or a mark nearly resembling it, in connection with their own Hairdressing Services and Hairdressing Education Services means that the Trade Mark has no inherent adaptation to distinguish the Hairdressing Services and some limited inherent distinctiveness in relation to Hairdressing Education Services. Pursuant to s 41(3), I must now consider whether the Applicant has used the Trade Mark before the filing date in respect of Hairdressing Services to such an extent that the Trade Mark does in fact distinguish the Hairdressing Services. I must also consider whether under s 41(4), taking into consideration the combined effect of the inherent adaptation to distinguish, use or intended use of the Trade Mark, and any other circumstances, whether the Trade Mark will or will not distinguish the Hairdressing Education Services of the Applicant from those of other traders.
20. I have found that the Trade Mark is not one which other traders are likely to wish to use in relation to the Non-Hairdressing Education Services. Accordingly, the mark qualifies for registration under s 41 for:
Class 41: Beauty school services; Academy education services; Conducting of educational conferences; Conducting of educational courses; Dissemination of educational material; Publication of educational materials; none of the foregoing relating to hairdressing; Business educational services; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events
Evidence of use
21. Mr McFadden declares that he coined the mark STYLE CUTS and first used this mark in 1983 when he opened a hairdressing and beauty salon under the house mark JUST CUTS. In 1994, Mr McFadden expanded his use of STYLE CUTS to franchising and hair and beauty education services. When the Applicant was incorporated on 15 September 1994, the STYLE CUTS brand, including the goodwill, was assigned to the Applicant.
22. The Applicant has franchised salons in Australia, New Zealand and the United Kingdom providing about 100,000 haircuts per week. It is the largest hairdressing franchise in the Southern Hemisphere with an extensive franchise network of salons throughout Australia, staffed by a significant number of qualified stylists seeing tens of thousands of Australian customers per week. Each of these customers is exposed to the Trade Mark for the duration of their visit through store signage and instore use of the mark both visually and aurally.
23. Every franchisee and salon operates under the authorisation and control of the Applicant under the terms of a Franchise Agreement. The Applicant’s Team Member Handbook specifies the requisite branding, signage, use of the Trade Mark, appearance of the salon and staff, how phone calls are taken, appointments are made and how customers are greeted and farewelled.
24. The Applicant’s Services offered under the Trade Mark are promoted on its website at its mobile app available on the App store and Google Play store, instore posters, coupons, competitions, price lists, on social media (Facebook, Instagram, LinkedIn, Twitter and YouTube), mobile app advertising and mainstream media advertising including advertisements in magazines and industry publications. Many of the examples of the Applicant’s promotions demonstrate that it partners with other well-known brands such as the Wiggles, Men in Black movie, Spiderman 2 movie, Lego movie, Peppa Pig, Dora the Explorer, Grant Denyer and Cadbury.
25. The Applicant was appointed the official hair and beauty salon for the 2000 Sydney Olympic Games where the Applicant’s franchisee network serviced tens of thousands of athletes, sports officials, tourists, media representatives and visitors over the 54 days of the Games.
26. For over 20 years, the Applicant has used and promoted the Trade Mark at its ‘Cut-a-Rama’ annual fundraising event.
27. The Applicant has provided examples of Google customer reviews in which customers refer to having received a ‘style cut’.
28. The Applicant is the owner of registrations for various marks containing or consisting of STYLE CUTS in Australia and New Zealand including the following registered Australian trade marks:
| Trade Mark | Priority Date | Goods/Services | Endorsement |
| 1217176 STYLE CUTS | 1/1/2008 | Class 3: Hair care products, including shampoos, conditioners and styling products such as mousses, gels, shine enhancers, strengtheners, heat stylers, frizz controllers and texturising pomades | Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. |
| 1262413 STYLE CUTS | 15/9/2008 | Class 35: Franchising services Class 41: Beauty education services including cosmetics schools and academies; all the aforementioned services excluding hairdressing Class 44: Beauty care services including cosmetics salons; all the aforementioned services excluding hairdressing | N/A |
| 1511199 | 29/8/2012 | Class 3: Perfumes; essential oils, soaps; cosmetics; eye shadows; lipsticks; foundations; skin cleansers; skin toners; skin and hair moisturisers; non-medicated toilet preparations; preparations for the hair and scalp; hair colouring preparations including hair colourants and dyes; hair lotions; hair care products; hair sprays; hair powders; hair dressings, hair lacquers hair creams hair tonics hair oils, dentifrices; shampoos, treatments, conditioners, hair waving preparations, hair styling and finishing products, and styling products; mousses, gels, glazes, glosses, shine enhancers, strengtheners, heat stylers, frizz controllers and texturising pomades; hair preservation treatments, hair desiccating treatments Class 5: Medicated toilet preparations; medicated preparations for the hair, scalp, nails and skin; pharmaceutical and medicinal preparations Class 8: Hand tools and implements; electric and non-electric devices and instruments for the cutting, trimming and removal of hair; electric and non-electric devices and instruments for the styling of hair; razors, razor blades, razor cases; shavers, shaver cases; hair trimmers; hair clippers; beard clippers; hair removing tweezers; hair waving tongs; hand instruments for hair curling; crimping irons; gas operated hair styling brushes and gas operated hair styling tongs; hair tongs; non-electrical hair-setting apparatus and instruments; non-electrical hair curling apparatus; electrical hair styling products and hair styling apparatus; electrical hair curling instruments; electrical hair straighteners; electrical hair waving apparatus; electric hair curlers; electrically heated curling irons; electrical hair curling apparatus Class 9: Sunglasses Class 11: Electrically heated haircare appliances; apparatus and appliances for drying the hair; hairdryers and attachments therefor, including nozzles, diffusers, air concentrators and cases; travel hair dryers; hair drying appliances (not being machines) Class 21: Brushes; combs; sponges; cleaning cloths; cosmetic utensils; paper towel dispensers; soap dispensers; bowls; basins; boxes; comb cases; dishes; small domestic utensils and containers; perfume sprayers; electrically heated combs and brushes Class 26: Hair rollers, hairclips, hair slides and ornaments (not of precious metals or coated therewith), for the hair; electrically heated rollers, electrically heated roller apparatus for hair, electrical hair-setting apparatus and instruments Class 35: Franchising | N/A |
| 1638556 JUST CUTS STYLE CUTS | 5/8/14 | Class 35: Business consultancy services relating to the promotion of fund raising campaigns; Business promotion services; Consultancy relating to business promotion; Consultancy relating to sales promotions; Demonstration of goods for promotional purposes; Discount services (retail, wholesale, or sales promotion services); Export promotion services; Fashion show services (advertising or promotional services); Modelling for advertising or sales promotion; Online promotion on a computer network; Organisation and management of incentive and sales promotion programmes (frequent buyer programmes); Organisation of fashion shows for promotional purposes; Organising of prize draws for promotional purposes; Point of purchase promotions (for others); Production of fashion shows for advertising or promotional purposes; Production, organisation and presentation of fashion shows for advertising or promotional purposes; Promotion (advertising) of business; Promotional advertising services; Promotional marketing; Promotional services; Sales promotion (for others); Sales promotion services; Sales promotion through customer loyalty programmes (for others); Sales promotions at point of purchase or sale (for others); Sales promotions by issuing redeemable coupons (for others); Sales promotions through customer loyalty programmes (for others); Sponsorship (promotion and marketing services); Trade promotional services; Business advertising services relating to franchising; Business advice relating to franchising; Business assistance relating to franchising; Business consultancy relating to franchising; Business consultation services relating to franchising; Franchising consultancy and business support services; Franchising services (group purchasing, group advertising); Management advisory services related to franchising; Provision of business advice relating to franchising; Provision of business information relating to franchising Class 41: Organisation of promotions (entertainment events); Organisation of promotions (sporting events); Beauty school services Class 44: Consultancy services relating to personal appearance (hair, beauty, cosmetics); Hair care services; Hair colouring services; Hair cutting services; Hair dressing salon services; Hair styling; Hairdressing; Hairdressing salons; Shampooing of the hair; Advisory services relating to beauty treatment; Beauty consultancy; Beauty consultation; Beauty counselling; Beauty salon services; Beauty salons; Beauty treatment services; Consultancy relating to beauty; Consultancy relating to beauty care; Personal care services (medical nursing, health, hygiene and beauty care) | Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. |
29. The Applicant generates very substantial revenue of which over 90% is for services provided under the Trade Mark. The Applicant has provided annual revenue and advertising figures for the class 41 services and the class 44 services from 1989 to 2022.[15]
[15] Only annual revenue and advertising figures for the class 44 services prior to the filing date are relevant to the consideration under s 41(3).
30. The Applicant has used the mark STYLE CUTS for almost 40 years prior to the filing date of the Application including in its current form for a decade. It is clear from the McFadden declarations that the Applicant uses STYLE CUTS as a trade mark frequently using the phrase ‘STYLE CUTSTM cuts’. In my opinion, this is use of STYLE CUTS as a badge of origin.
31. Where the Applicant does not use STYLE CUTS in combination with a descriptor, for example, “Good Morning, just a Style Cut for you today?”, the Applicant argues that this reinforces that STYLE CUTS is a trade mark of the Applicant. The Applicant contends that this question is analogous to asking “Can I have a Coca-Cola?” where the user is asking for a Coca-Cola drink as compared to a Pepsi or other cola beverage. When a customer is asked in a salon whether the customer would like a ‘Style Cut’, the customer will understand ‘Style Cut’ to be a reference to a particular type of cut offered by the Applicant’s salons and that STYLE CUTS is a trade mark of the Applicant because of the other uses of the Trade Mark in the salon.
32. On my assessment of the evidence, given the Applicant’s longstanding use on a substantial scale of STYLE CUTS, I am satisfied that the Trade Mark was distinctive in fact of the Applicant’s Hairdressing Services at the priority date of the Application.
33. Although the Applicant provided revenue and advertising figures for the class 41 services, there are few, if any, examples of use of the Trade Mark in relation to the Hairdressing Education Services. Moreover, unlike for the class 44 services, the Applicant has not provided the percentage of revenue or expenditure attributable to services offered under the Trade Mark. In the circumstances, there is not sufficient evidence for me to be satisfied that the Trade Mark is capable of distinguishing the Hairdressing Education Services.
Decision
34. I have found that the Trade Mark is sufficiently inherently adapted to distinguish the Non-Hairdressing Education Services. Hence the Trade Mark should be accepted for registration for these services under s 41(2).
35. In relation to the Hairdressing Education Services, I have found that the Trade Mark is to some extent inherently adapted to distinguish but that the evidence of use filed is not sufficient for me to be satisfied that the Trade Mark should be accepted for registration under s 41(4) for these services.
36. In Apple Inc. v Registrar of Trade Marks,[16] Justice Yates found that the fate of a trade mark application must be determined as a whole. In circumstances where an opposition has been established in respect of some, but not all, of the goods or services under consideration, the Registrar may proceed to reject the application in its entirety, following that authority. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods or services for which a ground of opposition has been established.
[16] [2014] FCA 1304, [232].
37. Accordingly, I offered the Applicant the opportunity to amend the class 41 specification to read:
Beauty school services; Academy education services; Conducting of educational conferences; Conducting of educational courses; Dissemination of educational material; Publication of educational materials; none of the foregoing relating to hairdressing; Business educational services; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events
38. The Applicant agreed to the proposed amendment and that amendment has now been made.
39. In relation to the Hairdressing Services, I have found that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Hairdressing Services. However, due to the longstanding use of STYLE CUTS on a substantial scale, I am satisfied that at the priority date, the Trade Mark did in fact distinguish the Hairdressing Services from the similar services of other traders and should be accepted for registration under s 41(3).
40. Accordingly, I accept the Application, with an appropriate endorsement to be added to the Register, for the following services:
Class 41:
Beauty school services; Academy education services; Conducting of educational conferences; Conducting of educational courses; Dissemination of educational material; Publication of educational materials; none of the foregoing relating to hairdressing; Business educational services; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events
Class 44:
Hairdressing; Hairdressing salons; Beauty consultancy; Beauty salon services; Beauty salons; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Hair styling; Hair care services; Hair dressing salon services
Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
15 June 2023
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