Karen Jane Phillips v Global Creatrix Pty Ltd
[2022] ATMO 82
•23 May 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Karen Jane Phillips to registration of trade mark application number 1865808 (classes 41, 44) – INSTITUTE OF WOMEN - in the name of Global Creatrix Pty Ltd
Delegate: Katrina Brown Representation: Opponent: IP Wealth Pty Ltd
Applicant: Benjamin Fitzpatrick of Counsel, instructed by Spruson & FergusonDecision: 2022 ATMO 82
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 41, 42(b), 44, 58, 58A, 59 and 62A – s 41 established – registration refused.Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Karen Jane Phillips (‘Opponent’) to registration of the following trade mark.
Trade mark no: 1865808
Trade mark: INSTITUTE OF WOMEN (‘Trade Mark’)
Applicant: Global Creatrix Pty Ltd (‘Applicant’)
Filing date: 14 August 2017
Specification: Class 41: Mentoring (education and training); Life coaching services (training or education services); Career counselling (education or training advice); Conducting instructional courses; Conducting training seminars; Conducting workshops (training); Education services; Personal development courses; Practical training (demonstration); Providing courses of instruction; Vocational guidance (education or training advice)
Class 44: Provision of information relating to behavioural modification; Provision of information relating to psychology; Lifestyle counselling (psychological); Health counselling; Psychological counselling; Complementary medical services; Meditation services; Therapy services
(‘Applicant’s Services’)
The trade mark application was examined as required by s 31 of the Act. The Trade Mark was accepted with the following endorsements: evidence and/or other circumstances provided under s 41(4); provisions of subsection 44(4) and/or Reg 4.15A(5) applied. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 15 July 2019.
The Opponent filed a Notice of Intention to Oppose on 13 September 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 October 2019.
The Applicant filed a Notice of Intention to Defend on 24 December 2019.
The Opponent did not file any evidence in this matter.
The Applicant filed the following declaration as evidence in this matter:
·Declaration of Marilyn Wendy Schirmer (founding director of Applicant) made on 12 October 2020 with Exhibits 1 to 7 (‘Schirmer Declaration’).
Once the time allowed for filing evidence ended, the Applicant requested a hearing by written submissions. The Applicant filed written submissions, the Opponent did not.
The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] to [7] of this decision.
Grounds of opposition, onus, and relevant date
In the SGP, the Opponent adequately particularised grounds of opposition under ss 41, 42(b), 44, 58, 58A, 59 and s 62A of the Act.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all the Applicant’s
Services, there is no requirement for me to consider the other grounds of opposition.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 14 August 2017 being both the filing and priority date of the Trade Mark.
Section 41
Section 41 of the Act relevantly provides:
(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.
…
(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 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…
The inherent adaptation of a trade mark is assessed:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[3]
[3] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
This is a two-step process.[4] The first step is to identify the signification which the words ordinarily possess (ordinary signification). The second step is to determine whether other traders might legitimately need to use the words for the ordinary signification in respect of their own similar goods and services.
Ordinary signification
[4] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).
The ordinary signification is the ordinary meaning of the words to any person in Australia concerned with the Applicant’s Services.[5]
[5] Ibid [70].
The Trade Mark consists of common English words forming the phrase ‘Institute of Women’. In the SGP, the Opponent provides the meaning of the words ‘Institute’ and ‘Women’ (as defined in the Macquarie Dictionary) and asserts that the ordinary signification of the Trade Mark is that the Applicant’s Services are offered by ‘an establishment or organisation, or relating to a program or cause, for females or whose recipients of such services are females’.
The Macquarie Dictionary defines ‘institute’ as a society or organisation for carrying on a particular work; the word ‘women’ is defined as ‘female human beings’. Considering these definitions, in its simplest form the phrase ‘Institute of Women’ indicates an organisation that is for, or consists of, women. In the context of the Applicant’s Services, the ordinary signification of the phrase ‘Institute of Women’ is that the services originate from an organisation specialising in the provision of services by or to women.
Other traders
Having determined the ordinary signification, the enquiry turns to whether other traders might legitimately desire to use the phrase ‘Institute of Women’ for its ordinary signification in respect of their own similar services.[6]
[6] Ibid [71].
The Applicant asserts that other traders do not desire to use the Trade Mark because it is a covert and skillful allusion and there are a multitude of other terms available for honestly motivated traders to use.
Neither of these assertions is persuasive. Firstly, the Trade Mark consists of three dictionary defined words which, when taken together, describe a characteristic of the Applicant’s Services. The words are arranged in a grammatically correct manner without any embellishment or device. In my opinion, the Trade Mark is not a covert or skillful allusion. Secondly, s 41 is concerned with the nature of the trade mark itself.[7] The fact that there are other words that could be used to convey the same sentiment does not alter the non-distinctive nature of the Trade Mark.
[7] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7] (Gibbs J).
The Trade Mark has an ordinary meaning which directly describes a characteristic of the Applicant’s Services. It strikes me as a combination of words which other traders, without any improper motive, would desire to use for its ordinary signification in connection with their own similar services.
In my assessment, the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services. It is a combination of words which ‘cannot do the job of distinguishing without first educating the public that it is a trade mark’.[8] Accordingly, it should be considered under s 41(3) of the Act.
[8] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 306 (Jacob J).
As I have found that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services, the ground of opposition will be established if the Applicant has not used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Applicant’s Services.
Accordingly, I now turn to the evidence of use of the Trade Mark by the Applicant, or predecessors in title.
Evidence
In the Schirmer Declaration it is declared that the Trade Mark was first used by the Applicant’s predecessor in title in 2012 in relation to life coaching, mentoring, personal development courses and lifestyle counselling. Furthermore, it is declared that since then the Trade Mark has been used continuously by the Applicant, or a predecessor in title. As such, the Applicant is claiming approximately 5 years of use before the filing date.
The annual turnover in relation to the provision of services under the Trade Mark has been specified for the 2014 to 2018 financial years. However, the Applicant has not provided any means to contextualise these figures such as the average cost of its services or market share.
It is declared that since first use, the Trade Mark has been promoted in various ways including via the website ‘ (‘Applicant’s Website’), social media platforms including Facebook, Twitter, Instagram and LinkedIn, brochures, and magazine advertisements and at events including the Explosive Rapid Success events which were held in capital cities across Australia in 2013 and 2014.
Exhibits 4 to 7 to the Schirmer Declaration contain the only examples of the promotion and use of the Trade Mark. The examples contained in Exhibits 4 and 6 are not dated or are dated after the filing date. As such, these are of little assistance to the Applicant as factual distinctiveness is assessed at the filing date.[9]
[9] Apple Inc. v Registrar of Trade Marks [2014] FCA 1304, [220] (Yates J).
The examples of use dated before the filing date are limited in number and overwhelmingly show use of the ‘Institute of Women’ in the following stylised forms:
As stated in Woolworths Ltd v BP Plc (No 2):
The trade mark that is the subject of the application must conform with the trade mark that was used before the relevant filing date, because it is the extent to which that prior use has distinguished the designated goods or services as being those of the applicant which must be assessed.[10]
Use of the stylised forms will only constitute use of the Trade Mark if the additions or alterations do not substantially affect the identity of the Trade Mark.[11] In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton relevantly observed:
the addition or subtraction of a prominent element to or from a mark which is capable of distinguishing only as a combination is likely to affect the identity of the mark.[12]
[10] [2006] FCAFC 132, [79].
[11] The Act, s 7(1).
[12] [2012] FCA 81, [112].
The addition of the device element and the tagline ‘Life without limitation’ to the words ‘Institute of Women’, which I have already found to be utterly devoid of the capacity to distinguish the Applicant’s Services, forms a combination that is capable of distinguishing. Therefore, I do not consider use of these stylised forms to assist the Applicant in demonstrating that the plain words ‘Institute of Women’ did in fact distinguish the Applicant’s Services at the filing date.
The stylised forms are also used with the TM symbol after the words ‘Institute of Women’. I note that none of the examples of this type of use are dated before the filing date. Nevertheless, whilst the use of the TM symbol may indicate the subjective intention of the Applicant, it ‘says comparatively little about the use of the mark for the purposes of s 41’.[13]
[13] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, [134] (Kenny J).
The Applicant has also drawn my attention to the use of the domain name ‘ asserting that this amounts to use of the Trade Mark. I agree with the Applicant in so far as ‘www’ and ‘.com’ are additions or alterations that do not substantially affect the identity of the Trade Mark.[14] However, this does not automatically mean that use of the domain name constitutes use as a trade mark. In this respect I note the following observations of Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd:
Plainly enough, not all domain names will be used as a sign to distinguish the goods or services of one trader from the goods or services of another trader. Sports Warehouse is correct in its submission that whether or not a domain name is used as a trade mark will depend on the content in which the domain name is used. In this case, the domain name is more than an address for a website, the domain name is also a sign for the applicant’s online retailing service available at the website.[15]
[14] Ibid [154].
[15] Ibid [153].
Exhibit 5 to the Schirmer Declaration consists of five screenshots from the Applicant’s Website (sourced from a web archiving service) dated prior to the filing date. However, they largely consist of quotes from individuals and do not clearly show the nature of the services being promoted on the Applicant’s Website. As such it is difficult to conclude (based on the webpages before me) that use of the domain name is use in respect of the Applicant’s Services. Additionally, 4 of the 5 webpages display one of the stylised forms set out at [30] of this decision and do not contain any other reference to ‘Institute of Women’. In these circumstances, I am not satisfied consumers would necessarily view the use of the domain name as anything more than an address for a website. My impression is that it is the stylised forms (or entirely different signs contained on the webpages such as ‘Transformologist’ or ‘Creatrix’) that are typically acting as the key, distinctive identifiers of any services being advertised or promoted on the Applicant’s Website.
Furthermore, if I were to find that use of the domain name constituted use as a trade mark, the Applicant has not provided any indication of the exposure that its website had in the marketplace before the filing date, such as the number of visitors or hits. In the absence of this information, it is difficult to conclude that use of the domain name was to such an extent that the Trade Mark did distinguish the Applicant’s Services at the filing date.
When I weigh the evidence before me together with the extent that the Trade Mark is inherently adapted to distinguish, the combined effect is not sufficient to satisfy me that the plain words ‘Institute of Women’ did in fact distinguish the Applicant’s Services at the filing date.
The s 41 ground of opposition has been established.
Decision
Section 55 of the Act relevantly provides:
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has established the ground of opposition under s 41 of the Act. Accordingly, I refuse to register trade mark number 1865808.
Costs
The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Katrina Brown
Hearing Officer
Oppositions and Hearings
23 May 2022
Key Legal Topics
Areas of Law
-
Intellectual Property
-
Commercial Law
Legal Concepts
-
Statutory Construction
-
Remedies
-
Costs
-
Standing
-
Appeal
0
8
1