Kelsian Group Limited

[2023] ATMO 126

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2258808 (classes 36, 39, 41 & 43) – BRILLIANT TRAVELS - in the name of Kelsian Group Limited

Delegate:

Tracey Berger

Representation:

Applicant: Sam Hallahan of Counsel instructed by Wallmans Lawyers

Decision:

2023 ATMO 126

Trade Marks Act 1995 (Cth) – request to be heard under s 33(4) – s 41 considered – no inherent adaptation to distinguish – evidence of use insufficient – trade mark application rejected

Background

1. This decision follows from an ex parte hearing at the request of Kelsian Group Limited (‘Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] in relation to trade mark application number 2258808 (‘Application’) filed on 25 March 2022 (‘Relevant Date’) for the trade mark shown below:

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Trade Mark:       BRILLIANT TRAVELS (‘Trade Mark’)

Services:             Class 36:  Agency services for arranging travel insurance

Class 39:  Agency services for arranging travel; Advisory services relating to travel; Arrangement of travel; Booking of tickets for travel; Computerised reservation services for travel; Information services relating to travel; Organisation of travel; Booking and reservation services for transportation for travel tours; Boat transport; Bus transport; Ferry-boat transport; Vehicle transport services; Booking of vehicle rental; Arranging of transportation for travel tours; Agency services for arranging transportation for tours; Arranging of sightseeing tours (not guided); Travel cruises; Arranging of cruises

Class 41:  Booking services for guided tours; Conducting guided sightseeing tours; Organising guided tours; Arranging of exhibitions for entertainment purposes; Organisation of exhibitions for cultural or educational purposes

Class 43:  Reservation of places at holiday resorts; Hotel information; Hotels; Travel agency services for making hotel reservations; Provision of carry-out foods and beverages; Provision of conference facilities; Provision of facilities for exhibitions; Cafes; Bar services; Holiday camp services (lodging); Booking of restaurant places; Provision of information relating to restaurants; Restaurant services; Arranging hotel accommodation; Booking of accommodation for travellers; Booking of hotel accommodation; Resort accommodation; Travel agency services for booking accommodation; Agency services for booking hotel accommodation; Hotel accommodation services

(‘Services’)

2.     The Application was examined as required by s 31 and grounds for rejection were raised under s 41 and s 44. 

3.     In relation to the s 41 objection, the Examiner referred to the Macquarie Dictionary meaning of BRILLIANT as ‘illustrious’ and concluded that the ordinary meaning of the Trade Mark was travel related services that are illustrious.  Hence other traders are likely to wish to use the Trade Mark in relation to their similar goods or services for its descriptive meaning. 

4.     In response to the objections, the Applicant filed letters of consent from the owners of the cited marks,[2] submissions and a declaration of Philip Boyle, General Manager (National Marketing) for the Applicant, made on 11 August 2022 with Annexures PB-1 to PB-27 (‘Boyle Declaration’), attesting to use of the Trade Mark since 12 November 2019.

[2] One of the cited marks was in the name of SeaLink Travel Group Limited, the former name of the Applicant, and this objection was withdrawn once the change of name was recorded.

5.     A further adverse examination report issued maintaining an objection under s 41(3) on the basis that the Trade Mark is entirely descriptive of the Services and the evidence of use of the Trade Mark for 2 years and 5 months before the Relevant Date does not establish that the Trade Mark was distinctive of the Services at the Relevant Date. 

6.     Following the Examiner’s second report, the Applicant requested a hearing via videoconference.  The matter was heard before me as a delegate of the Registrar of Trade Marks on 4 August 2023.  Prior to the hearing, the Applicant filed a written summary of its submissions and a declaration of Tasman Wylie, lawyer of Wallmans Lawyers, made on 28 July 2023 with Annexures TW-1 to TW-4 (‘Wylie Declaration’).  At the hearing, Sam Hallahan of Counsel appeared for the Applicant and made oral submissions.

7. As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the ground for rejection under s 41 identified by the Examiner and I am not bound by the Examiner’s findings. Whilst I may consider reasoning provided by the Examiner in support of the objection ultimately, I must make a decision based on my interpretation of the facts and law.

Applicant’s Evidence

8.     According to the Boyle Declaration, the Applicant is Australia’s largest land and marine tourism and public transport provider and has well established international operations.

9.     On 12 November 2019, the Applicant launched the Trade Mark as the brand linking all of its marine and tourism businesses including those listed below (‘Group Businesses’) and to provide its customers with a central location for its main offering being a travel and tourism cross-selling platform and holiday packaging travel agency: 

a.SeaLink;

b.Captain Cook Cruises;

c.Kingfisher Bay Resort Group;

d.The Jackson;

e.Murray Princess;

f.Adelaide Sightseeing;

g.Kangaroo Island Odysseys;

h.Flinders Rangers Odysseys;

i.Bells Functions;

j.Swan Valley Tours; and

k.Hop on Hop Off Sydney Harbour Explorer.

10.   Each of the Group Businesses has used the Trade Mark since 12 November 2019 in providing the Services to indicate it is part of the BRILLIANT TRAVELS ‘family’.  Mr Boyle declares that the Applicant considers ‘Brilliant Travels’ to be a “unique offering within the travel industry with its vertical integration of selling and marketing [of] a wide variety of different experiences”.  Despite the pandemic, the Group Businesses generated very substantial revenue in financial year (‘FY’) 2020/2021 and revenue increased over 13% for the first half of FY22.

11.   In addition to using the Trade Mark across the Group Businesses, on 1 July 2020, the Applicant rebranded its ‘Australian Holiday Centre’ travel agency business to BRILLIANT TRAVELS (‘Travel Agency’).  The rebranding of the Travel Agency was announced by electronic direct mail (‘EDM’) to over 270,000 Australian subscribers.  The Travel Agency consultants use the Trade Mark when answering the telephone and as part of their email signatures.  The gross sales and commission revenue for the Travel Agency in FY20 and FY21 is provided.

12.   The Applicant announced the launch of the Trade Mark on its website at (‘Website’), and its Facebook, Instagram and YouTube social media accounts.  It has continued to promote the Services offered under the Trade Mark on these channels and various examples are provided. The Applicant promotes the use of #brillianttravelsau (‘Hashtag’) on Facebook and Instagram.  Examples of posts using the Hashtag are included in the Boyle Declaration.

13.   In November 2019, the Applicant published the first edition of its BRILLIANT TRAVELS magazine, produced annually with an average print distribution of 10,000 copies.

14.   Also, from June 2020, the Applicant undertook a national television (‘TV Campaign’), digital and outdoor advertising campaign to promote its Services offered under the Trade Mark.  The TV Campaign ran for two weeks in June 2020 in Sydney, Melbourne, Brisbane and Adelaide and for two weeks in November 2020 in Sydney, Brisbane, Adelaide, Northern NSW, Southern NSW and Queensland with the advertisement featuring during a number of popular shows targeted at the 35-64 age bracket including Seven New[of] , ABC World News, Sunrise Weekend edition, Masterchef, The Chase, The Project and many others.

15.   The Applicant also undertook a radio advertising campaign in Tasmania and co-marketing activities with Tourism Australia that were distributed via print, digital, social and EDM in 2020.

16.   In addition, the Applicant pays to advertise in print media.  Examples of advertisements in Australian Geographic and the Sydney Morning Herald from March, June and August 2021 are annexed to the Boyle Declaration.  There are also examples of the Applicant’s Qantas Inflight and Digital Advertorial campaign from March, April and May 2022 together with the Applicant’s FY22 report summarising the reach of this campaign.

17.   The Services offered under the Trade Mark feature in third party articles and websites including an article in TravMedia, a global travel industry network and publication, on the Kangaroo Island Tourism Alliance website, Australias.guide website, South Australian Government website and Adelaide Economic Development Agency Experience Adelaide website.

18.   The Applicant routinely promotes its Services under the Trade Mark by EDM to its subscriber database.  The Boyle Declaration annexes details and examples of its EDMs to November 2021 and between February to June 2022.

19.   In March 2022, the Applicant launched its Brilliant Benefits membership program offering discounts on the Services which had over 14,000 members by 30 June 2022.

Discussion

20.   Section 41 relevantly 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.

21.   The test to determine whether a trade mark is inherently adapted to distinguish was set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’):[3]

[The] ultimate question must not be misunderstood.  It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others … the question whether a mark is adapted to distinguish [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, 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] (1964) 111 CLR 511, 514.

22.   In Cantarella Bros Pty Limited v Modena Trading Pty Limited,[4] the majority of the High Court indicated that the test for distinctiveness under s 41 involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as a trade mark to any person in Australia concerned with the goods or services to which the proposed trade mark is to be applied.[5] The second step involves the application of the test in Clark Equipment in deciding 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 goods.[6]

[4] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).

[5] Ibid, [70].

[6] Ibid, [71].

23.   The Applicant submits that the examiner erred in finding that the Trade Mark has no inherent adaptation to distinguish and argues that the Trade Mark has some inherent adaptation to distinguish the Services.  Furthermore, the Applicant contends that the evidence of use establishes that even if the mark falls for consideration under s 41(3), the Trade Mark did in fact distinguish the Services at the Relevant Date or if the mark falls within s 41(4), that the Trade Mark is capable of distinguishing its Services.

24.   The Applicant submits that the difference between a mark with no inherent adaptation to distinguish and some inherent distinctiveness is not apparent from Clark Equipment but that other cases elucidate the distinction.  In J & P Coats Ltd’s Application (‘J & P Coats’),[7] the Court found that even though ‘sheen’ described the character of the goods, it fell in the category of words that were “not the only or natural words which would be chosen for that purpose”[8] and based on the evidence, registration of ‘sheen’ “would not unduly inhibit competitors”.[9]  In Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd,[10] Justice Finn noted, in referring to J & P Coats, that “Nonetheless words which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish”.

[7] (1936) 53 RPC 355 (Luxmoore J).

[8] Ibid, 380.

[9] Bendigo and Adelaide Bank Ltd v Community First Credit Union Ltd [2021] FCAFC 31, [134] (Middleton, Burley and Thawley JJ).

[10] [2004] FCA 968, [38].

25.   The Applicant accepts that based on the dictionary definitions of the elements comprising the Trade Mark that the mark has a meaning as identified by the Examiner but argues that BRILLIANT TRAVELS is an uncommon and rarely used phrase.  In support of this contention, the Applicant points to the results of historical and current Google searches annexed to the Wylie Declaration.  The current Google search results exclusively refer to the Applicant’s businesses.  The historical search results, which were limited to results before the Applicant announced the adoption of the Trade Mark, predominantly refer to the Applicant and reveal only one result for a travel agent or business offering tourism-related services namely Dubai Travel Agencies.

26.   The term ‘Brilliant’ is a common English word that is well understood as meaning “distinguished; illustrious” as defined in the Macquarie Dictionary[11] or for its slang meaning ‘excellent’ or ‘wonderful’.  In my opinion, the ordinary signification of the Trade Mark to persons likely to purchase the Services is distinguished or excellent travel which is directly descriptive of the Services.

[11] (online at 17 August 2023), def 2 ‘brilliant’.

27.   Once the ordinary signification of the Trade Mark is established, the next question is whether other traders might legitimately need to use the Trade Mark in respect of the Services.  Whilst I note the results of the Google searches provided by the Applicant, the question is not just whether other traders wish to use the exact mark but also some mark nearly resembling it[12] such as ‘brilliant travel’.  Given the ordinary signification of the Trade Mark and descriptive meaning in relation to the Services, I am satisfied that other traders are likely to wish to use the mark, or some mark nearly resembling the Trade Mark, in relation to their own travel-related services. 

[12] Registrar of Trade Marks v W & G Du Cros Ltd (1913) AC 624, 634-635 (Lord Parker).

28.   Having taken into account the presumption of registrability, the combination of the ordinary signification of the Trade Mark and the legitimate desire of other traders to use the Trade Mark, or a mark nearly resembling it, in connection with their own services, I am satisfied that a ground for rejection exists under s 41(3).   

29.   I turn now to a consideration of whether the Applicant has used the Trade Mark to such an extent before the Relevant Date that the mark did in fact distinguish the Services at the time of filing the Application.

30.   The Applicant has used the Trade Mark for less than 2 ½ years before the Relevant Date.  Although the revenue of the Travel Agency operating under the Trade Mark is commercially appreciable, it is not overwhelming with the pandemic having a serious impact in FY20 and to a lesser extent in FY21.  The Applicant’s revenue from the Group Businesses is very substantial but use of the Trade Mark by these businesses appears to be limited to a reference that they are part of the ‘Brilliant Travels’ family and hence only a fraction of the revenue of the group can be attributed to use of the Trade Mark.  Further, the value of referrals to the Group Businesses from BRILLIANT TRAVELS is not significant.  The Applicant’s social media accounts have few followers and little customer engagement.[13]  Although the Applicant conducted an extensive television advertising campaign in 2020, other advertising before the Relevant Date is modest.[14]

[13] Boyle Declaration, Annexures PB-4 to PB-6 and [26].

[14] Ibid, [22].

31.   I am not satisfied that the Applicant has used the Trade Mark to such an extent that at the Relevant Date, the Trade Mark was distinctive of the Services.

Decision

32.   I have found that the Trade Mark has no inherent adaptation to distinguish the Services and that a ground for rejection exists under s 41(3).  Further, I am not satisfied based on my assessment of the evidence that at the Relevant Date, the Trade Mark did in fact distinguish the Services.  Accordingly, I refuse to register the Trade Mark.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

29 August 2023