Karen Jane Phillips v Global Creatrix Pty Ltd - [2022] ATMO 82

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 & Ferguson

Decision: 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

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 82
Decision Date: 23 May 2022

CaseChat Overview and Summary

This matter concerned an opposition by Karen Jane Phillips to the registration of the trade mark "INSTITUTE OF WOMEN" (application number 1865808) by Global Creatrix Pty Ltd, in classes 41 and 44. The opposition was brought before Katrina Brown, a Hearing Officer for the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the trade mark "INSTITUTE OF WOMEN" was capable of distinguishing the applicant's services from those of other persons, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved assessing whether the trade mark was inherently adapted to distinguish the services, and if not, whether use of the trade mark prior to the filing date had resulted in it actually distinguishing the services as being those of the applicant.

The Hearing Officer found that the words "INSTITUTE OF WOMEN" were "utterly devoid of the capacity to distinguish" the applicant's services. While the applicant had provided evidence of use of the trade mark, including in stylised forms with additional elements such as a device and the tagline "Life without limitation," the Hearing Officer determined that these stylised forms did not constitute use of the trade mark as applied for. The use of the stylised forms, which included additions that substantially affected the identity of the mark, did not assist in demonstrating that the plain words "INSTITUTE OF WOMEN" had, in fact, distinguished the applicant's services at the filing date. Consequently, the ground of opposition under section 41 of the Act was established.

As the opposition under section 41 had been established, the Hearing Officer refused to register the trade mark. Costs were awarded against the applicant in accordance with the usual practice.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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.

Decision

Reasons for decision

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 BrownHearing OfficerOppositions and Hearings23 May 2022

Ratio Decidendi

Legal Principle Established

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…

Delegate:	Katrina Brown
Representation:	Opponent: IP Wealth Pty Ltd Applicant: Benjamin Fitzpatrick of Counsel, instructed by Spruson & Ferguson
Decision:	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.