Ladbrokes Digital Australia Pty Ltd
[2016] ATMO 116
•14 December 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade mark application number 1755346 (41) - ODDS BOOST- in the name of Ladbrokes Digital Australia Pty Ltd
Delegate:
Robert Wilson
Representation:
Applicant: King & Wood Mallesons
Decision:
2016 ATMO 116
Trade Marks Act 1995 - section 38 – whether application should not have been accepted – trade mark not inherently adapted to distinguish the applied-for services – whether reasonable to revoke acceptance – acceptance revoked – application returned to examination
Background
This decision is pursuant to section 38 of the Trade Marks Act 1995 (‘the Act’). It arises from the Registrar of Trade Marks’ intention to revoke acceptance of trade mark application 1755346 (‘the Application’) in the name of Ladbrokes Digital Australia Pty Ltd (‘the Applicant’). Relevant details of the Application are:
Trade Mark:
ODDS BOOST (‘the Trade Mark’)
Priority Date:
26 February 2016
Services:
Class 41: Wagering services (‘the Claimed Services’)
The Application was examined as required by section 31 of the Act and no ground for rejection was raised. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 21 July 2016. However, before that, on 23 June 2016 and as a result of an internal review of the Application, a delegate of the Registrar issued a Notification of Proposal to Revoke Acceptance (‘the Notification’) which stated:
The Trade Mark was not appropriately considered in terms of section 41 of the Act. A ground for rejection should have been raised in this regard, as the Trade Mark is descriptive. The mark ODDS BOOST, applied to the specified services, indicates that those services will allow the consumer to boost or increase their odds of winning and/or increase the amount won.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance [in accordance with s 38 of the Act].
You have one month from the date of this letter to apply to be heard on this matter or to submit a request for a decision on the written record.
The Applicant requested a hearing by way of written submissions. The Applicant’s representatives, King & Wood Mallesons, filed the Applicant’s written submissions on 31 October 2016. Annexed to the submissions was a Statutory Declaration made on 31 October 2016 by Patrick Brown, General Counsel and Corporate Affairs Manager of the Applicant (‘the Brown declaration’).
Rather unhelpfully, the following sentence appears at the bottom of the last page of the submissions: ‘This communication and any attachments are confidential and may be privileged.’ The Applicant has requested a hearing on the written record. Given the standing and experience of their representatives it is reasonable to assume that King & Wood Mallesons would be aware that this decision is destined to be published; or if not published, likely to be available to any party that might request a copy. To paraphrase the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd,[1] it is not clear to me how I could decide this matter without discussing the Applicant’s submissions or the Brown declaration. Seemingly barred from any discussion of those documents my hands would appear to have been effectively tied and the Applicant doomed to failure. This position is obviously extreme since the Applicant has filed the submissions and the declaration and must expect them to be discussed and considered. There appears to be little in the submissions which is commercially sensitive and that appears only in one paragraph the Brown declaration; that paragraph is specifically indicated to be confidential.
[1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Thompson).
I will proceed on the assumption that the words appearing at the end of the Applicant’s submissions have been included, without any specific consideration as to their necessity and potential impact in this matter. I will take care not to discuss any information which may be commercially sensitive but if I do my consolation lies in the fact that the Applicant, in being so unhelpfully general in its request for confidentiality, has brought the problem on itself.
Section 38
Section 38 of the Act provides:
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.
(2) If the Registrar revokes the acceptance:
(a) the application is taken to have never been accepted; and
(b) the Registrar must examine, and report on, the application necessary under section 31; and
(c) sections 33 and 34 again apply in relation to the application.
Accordingly, two factors must be satisfied before acceptance may be revoked. Firstly, the Registrar must be satisfied that the Application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the Application was accepted. Secondly, that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist. If acceptance is revoked, the Application is taken never to have been accepted and is returned to examination so that the Applicant may address the circumstances that should have prevented acceptance.
The specific error that led to the acceptance or the cause for that error do not require identification. As stated by the Deputy Registrar in Fpinnovation Pty Ltd:
If a ground of rejection or refusal did exist then it may be possible to say there was an error but this is both unnecessary and unhelpful because if a ground existed then the trade mark in question should not have been accepted or registered.[2]
[2] [2012] ATMO 74, [29] (Arblaster).
Nevertheless, the revocation must be reasonable and the reasons for it more than a mere difference of opinion as to the registrability of a trade mark.[3]
[3] See for example Aceto Balsamico del Duca di Adriano Grosoli SrL v Registrar of Trade Marks [2008] ATMO 2; Re Bobart [2010] ATMO 43.
Should the Application have been accepted?
The Notification states that a ground for rejection exists under s 41 of the Act. Section 41 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.
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.
Section 41 must be assessed having regard to section 33 of the Act, which embodies a so-called ‘presumption of registrability’.[4] Accordingly the Registrar must accept the application, including in circumstances where the Registrar is equally unsure as to whether or not the Trade Mark is capable of distinguishing, unless satisfied the ground for rejection exists.
[4] Amendments were made to the Act to clarify that the presumption applies to section 41: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), s 113.
In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that whether a trade mark is adapted to distinguish is to be tested:
[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.[5]
13. In its submissions the Applicant referred to Cantarella Bros Pty Ltd v Modena Trading Pty Ltd,[6] and made the following submissions:
The majority in [Cantarella] considered that a critical distinction must be drawn between words that make ‘a direct reference’ to the goods as opposed to those that make a ‘covert and skilful allusion’ (at [50]), before summarising the law on inherent adaptation to distinguish in the following terms (with our emphasis):
It is the ‘ordinary signification’ of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a to be drawn as to whether the word contains a ‘direct reference’ to the relevant goods (prima facie not registrable) or makes a ‘covert and skilful allusion’ to the relevant goods (prima facie registrable). When the ‘other traders’ test from Du Cros is applied to a word (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. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, ‘inherent adaption to distinguish’ requires examination of the word itself, in the context of its proposed application to particular goods in Australia.
That is, the test is a two-step process. First the ordinary signification must be determined. Only then is the likelihood of it being needed by other traders considered (at [71], with footnotes omitted):
As shown by the authorities in this Court, the consideration of the ‘ordinary signification’ of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has ‘direct’ reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the ‘ordinary signification’ of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods ...
[5] (1964) 111 CLR 511, 514.
[6] [2014] HCA 48 (‘Cantarella’).
The Applicant’s submissions indicate its concurrence with the currently accepted principles of assessment of inherent adaptation to distinguish in trade mark law; however, the Applicant submits that the examiner was correct not to raise a ground for rejection in respect of s 41. The Applicant’s submissions include the following:
[The Trade Mark] is capable of distinguishing the Claimed Services … for the following reasons:
(a) the Trade Mark is not directly descriptive of the Claimed Services; and
(b) the Trade Mark is not commonly used to describe all of the Claimed Services and nor would other traders legitimately need to use the word in respect of their goods.
Addressing the first limb of the test, we submit that the Trade Mark is syntactically unusual, and does not directly describe the restricted services.[7] Specifically, in respect of ODDS BOOST, the trade mark does not directly describe the services performed, being wagering services, which encompasses more than just allowing consumers to increase their winnings. We submit that the Trade Mark makes, at most, a ‘covert and skilful allusion’ to the Claimed Services, and is thus not descriptive when applying the first limb of the test in Cantarella. …
Although the Trade Mark may conceptually have some relation to betting or wagering, we submit that ODDS BOOST does not directly relate to the provision of wagering services. In particular, ‘BOOST’ is not a common term used in respect of wagering services in Australia.
[7] This is the only reference in the Applicant’s submissions to ‘the restricted services’. My assumption is that this is an error, and the intention was a reference to the Claimed Services.
In assessing the ordinary signification of the Trade Mark it is generally necessary to consider relevant research. I have considered the research conducted by the examiner. This research was conducted on the day the examiner accepted the Application and it is reasonable to assume that it reflects circumstances that existed when the Application was accepted—in line with the requirements of s 38. The examiner commenced her research by obtaining dictionary definitions of both ‘odds’ and ‘boost’. The definitions show that the words have simple, well understood meanings. The Macquarie Dictionary provided, amongst others, the following definitions:
·‘odds’: the ratio of money to be paid to a better if successful
·‘boost’: to increase; push up
The remainder of the examiner’s research consists largely of the results pages from a number of searches using an internet search engine. The searches conducted by the examiner were for the terms:
· “odds boost”;
· “odds boost” and wagering; and
· “odds boost” and bets.
Almost entirely the results show use of ‘odds boost’ in connection with services provided by the Applicant or as a reference to them. The examiner has saved only one page to her research which she arrived at by following the hyperlink associated with one of the search results. The page heading states, ‘Premier League betting update: Massive odds boost for Tottenham and Leicester’.[8] There is no apparent reference to the Applicant or services provided by it on the page. Use of ‘odds boost’ in this manner merely describes a characteristic of wagering services.
[8] Premier League betting update: Massive odds boost for Tottenham and Leicester (13 April 2016) HITC Sport < >
The search results generally have only a snippet of text associated with them. Some examples are:
·‘The Ladbrokes ‘Odds Boost’ allows you to increase the odds of any runner, in any race in horse racing …
·Odds boost with no limits every time you bet. Now you can boost your odds without any limits, every time you bet …
·Bookmaker boosting the odds for punters. The Odds Boost function does exactly what the name suggests – boosts the odds of your fancy …
·Click the Odds Boost Button; Watch your Odds increase as they’re Boosted …
·The Sydney Cup is another competitive betting race and there is very little … that value with the new odds boost betting function with Ladbrokes.
The expression ‘to boost your odds’ is a common one in English and is well understood to mean to increase your chances. The expression ‘odds boost’ while not so common is a combination of words the meaning of which holds no mystery in connection with the Claimed Services. As one of the examples above states ‘The Odds Boost function does exactly what the name suggests’. More recent research conducted shows the following use seemingly by the Applicant in promotions for its services:
·‘Get an odds boost every day with Ladbrokes Odds Boost’[9]
·‘Every time someone bets on your selection we communicate the return that you receive from the winning bet as an odds boost. … The more people that follow your selection and bet on it, the more your odds are boosted.’[10]
[9] Bonus Review (9 December 2016) Racingbase.com.au < Odds boost with no limits every time you bet (9 December 2016) The Great Tip Off <>
These examples show clearly ‘odds boost’ used to describe the character of wagering services if not by the Applicant itself, by traders with an association with the Applicant. While it is uncertain whether the examples above were in existence at the time the Application was accepted,[11] that the Applicant, or an associated entity used ‘odds boost’ in this manner no more than six months after the Application was accepted is able to cast light upon the circumstances present at that time.[12]
[11] The internet archive, Wayback Machine, found at < records a snapshot of the second example from 28 May 2016, some five weeks after the Application was accepted.
[12] Conde Nast Publications Ltd v Taylor (1998) 41 IPR 505, 509 (Burchett J).
It is clear from the research that the ordinary signification of ‘odds boost’ in connection with wagering services is that of a service which provides an increase to the odds provided in connection with a particular wager. I am not persuaded by the Applicant’s submissions that the Trade Mark is ‘at most a covert and skilful allusion to the Claimed Services’. The Trade Mark is not an invented term and is a direct reference to the character of the wagering services provided. Many of the examples of use of ‘odds boost’ found were in reference to services provided by the Applicant, but not all of them. It is apparent that other traders are not only likely to need to use the expression ‘odds boost’ in reference to wagering services, but were very likely doing so when the Application was accepted.
I find—the finding being more than a mere difference of opinion—that the Examiner incorrectly assessed the Trade Mark’s inherent adaptation to distinguish in deciding to accept the Application. I am satisfied that a ground for rejection exists under s 41 of the Act. Accordingly, I am satisfied that the application should not have been accepted, taking into account all of the circumstances that existed at the time.
Is revocation reasonable?
The second limb of s 38 requires a consideration of whether revocation is reasonable, taking into account all of the circumstances existing at the time of the decision whether to revoke. The Applicant has submitted the following:
[W]e submit that the Registrar cannot be satisfied that it is reasonable to revoke acceptance of the trade mark.
For the Registrar to be satisfied that it is reasonable to revoke acceptance of the trade mark, the reasons for the revocation must be more than a mere difference of opinion as to the registrability of the trade mark.[13]
[13] Fodmapped Foods Pty Ltd [2015] ATMO 99, [11].
The Hearing Officer in Glendon,[14] in determining whether it was reasonable to revoke the acceptance of the application considered the following factors (at [25]):
[14] Glendon Hardware Pty Limited [2010] ATMO 105.
· the good faith of the Applicant;
· the balance of convenience;
· any prejudice which the Applicant might be said to face as a result of the revocation (including the inconvenience and expense which the applicant might incur);
· whether or not the application was being opposed; and
· the public interest.
We submit that an assessment of these factors favour [sic] a conclusion that it is unreasonable to revoke acceptance of the trade mark. In particular, in light of our submissions relating to the inherent distinctiveness of the trade mark, and the Applicant’s honest use of the trade mark, the balance of convenience favours the Applicant. The public interest will not be negatively impacted if the trade mark is accepted, particularly as there is no risk of confusion in the marketplace.
The Applicant will suffer prejudice if the Trade Mark is not registered, as it has invested a significant amount of money in marketing the trade mark – including since it received the notice of acceptance. Attached to this letter is the statutory declaration of Patrick Brown … Mr Brown’s declaration details the expenditure by the Applicant on advertising the trade mark since the date the Notice of Acceptance was issued.
Furthermore, the Applicant may be affected by illegitimate use or registration of the Trade Mark, by competitors or otherwise, if it does not proceed to registration, and the Applicant may need to abandon use of the trade mark altogether to avoid the risk of other traders infringing the trade mark without the Applicant having the benefit of registration.
Finally, we submit that revocation of acceptance of the Trade Mark does not promote the principles of finality which govern an examiner’s decision. This was supported in the Glendon case, where the Hearing Officer found (at [16]) ‘that a revocation of acceptance should not be proposed lightly since the examiner has already exercised their delegation to accept the mark’.
The first consideration in assessing whether it is reasonable to revoke registration is whether a finding that a ground for rejecting the application exists is more than a mere difference of opinion. If this were the only consideration I would be satisfied that revocation is reasonable. However, other circumstances may be relevant. In considering other circumstances it is necessary that the Registrar be satisfied that revocation is reasonable.
The existence of circumstances which show that the Applicant would be inconvenienced by revocation do not support a view that revocation is unreasonable where the Applicant would have been similarly inconvenienced by those circumstances should the Application not have been accepted in the first place. Once accepted applications are subject to possible opposition. Therefore, acceptance of an application is not, and should not be taken to be, a guarantee that the applied for trade mark will proceed to registration. An examiner’s acceptance of an application is not the final step on the stairway to registration. Inconvenience or hardship brought on by the Applicant’s own actions will not support a view that revocation is unreasonable where those actions are undertaken on the assumption that an unregistered trade mark will become registered.
In the present matter, the Applicant requested expedited examination of the Application. An Early Notice of Acceptance (‘the Early Notice’) was sent to the Applicant on 13 April 2016—some six weeks after the Application was lodged. The Early Notice indicated that:
[The Trade Mark] must now be advertised in the Australian Official Journal of Trade Marks [(‘the Journal’)] to give other people an opportunity to oppose registration.
27. Under the heading ‘What should you do now?’ the Early Notice also indicated that the Applicant should ‘[w]ait until Advertisement occurs, at which time we will send you a Notice of Acceptance’. Approximately six weeks later, on the 23 June 2016—and prior to the advertisement in the Journal—IP Australia issued the Notification (of Proposal to Revoke Acceptance).
It is stated in the Brown declaration, beginning at para 6, that:
Since receiving the Notice of Acceptance,[15] the Applicant has invested a significant amount of money and resources into the advertisement of [the Trade Mark]. Much of this spend was committed prior to 23 June 2016.
[15] It appears that Mr Brown’s reference to ‘the Notice of Acceptance’ is a reference to the Early Notice.
[The Trade Mark] has been extensively promoted by the Applicant, both directly on the Applicant’s website and advertisements through television, outdoor signage, radio, press and other digital media.
Paragraph 8 of the Brown declaration includes a table of figures which is declared to show ‘estimated expenditure in Australia on advertising [the Trade Mark] from the date the Applicant received the Notice of Acceptance’. The table indicates that the Applicant has spent significant funds on advertising.
Mr Brown has declared further:
The Applicant has spent a considerable amount of money and internal resources on the development and promotion of [the Trade Mark] following receipt of the Notice of Acceptance.
Had the Application not been initially accepted, it is my belief that the Applicant may have not been inclined to invest as much into advertising of [the Trade Mark], and may have created a different trade mark to use in respect of the Applicant’s product.
Given the competitive nature of the gambling industry, in my view it is very risky for the Applicant to proceed with using [the Trade Mark] to the extent that it has without appropriate trade mark protection.
As a result of the Applicant’s expenditure on the advertising of [the Trade Mark], it is my belief that the Applicant will be unreasonably affected by the revocation of acceptance of the Application.
Any inconvenience that the Applicant might suffer as a result of its expenditure following its receipt of the Early Notice is of its own making. Mr Brown is correct to say that it is very risky for the Applicant to proceed to use the Trade Mark without appropriate trade mark protection. In using the Trade Mark before it was registered, and in the full knowledge that the Application was subject to possible opposition, the Applicant has accepted this risk. The Applicant is in the business of gambling—in that business, sometimes you win, sometimes you lose. It is not persuasive for the Applicant to argue that revocation is unreasonable because it gambled on the Trade Mark becoming registered in the full knowledge that this may not occur, and that the gamble has not paid off. There are no other apparent circumstances that would make revocation unreasonable.
I am satisfied that it is reasonable to revoke acceptance of the Application and to return it to examination.
Decision
I am satisfied, in terms of s 38 of the Act, that the Application should not have been accepted and that it is reasonable to revoke its acceptance. Accordingly I revoke acceptance of trade mark application 1755346 and the Application will be returned to examination.
Robert Wilson
Hearing Officer
Trade Marks & Designs Hearings
14 December 2016.
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