Law Partners Unit Trust v Australian Law Partners Pty Ltd

[2024] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Law Partners Compensation Lawyers Pty Ltd as trustee for the Law Partners Unit Trust to registration of trade mark application number 2097263 (class 45) – AUSTRALIAN LAW PARTNERS & Device - in the name of AUSTRALIAN LAW PARTNERS PTY LTD.

Delegate:

Timothy Brown

Representation:

Opponent: Khajaque Kortian of Spruson & Ferguson Patent and Trade Mark Attorneys.

Applicant: Justin Castelan of counsel, instructed by Go Trademarks.

Decision:

2024 ATMO 73

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 41 established – evidence of use insufficient – trade mark refused registration.

Background

1. This decision concerns an opposition brought by Law Partners Compensation Lawyers Pty Ltd as trustee for the Law Partners Unit Trust (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

   Trade mark number:   2097263

   Trade mark:                 (‘Trade Mark’)

Owner:  AUSTRALIAN LAW PARTNERS PTY LTD (‘Applicant’)

Priority date:              19 June 2020

Specification:             Class 45: Legal services and advice; provision of legal support and paralegal services; legal advisory and consultancy services; litigation services and advice; litigation support services; mediation and arbitration services; legal dispute management and resolution services; legal aid services; legal compliance auditing; legal compliance services (legal services); legal research, investigation and due diligence services; legal auditing services (legal services); legal enquiry services; legal services relating to personal injury; legal services in relation to public liability; legal services in relation to medical negligence; legal services in relation to class action claims; legal services in relation to motor vehicle accidents; legal services relating to workers compensation; legal services in relation to occupational health and safety; legal services in relation to industrial relations law; legal services in relation to criminal law and criminal compensation; legal services in relation to wills, estates and trusts; legal advocacy services; legislative advocacy services; judicial advocacy services; judicial enquiry services; legal watching services; association services (providing legal representation or legal advice to members of the association); legal project management services; certification of legal documents; notarial services; personal legal services; charitable services, namely mentoring (personal or spiritual); security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals; providing information, advice and consultancy in relation to all the aforesaid services; including provision of all the aforesaid services online, via a website, the internet, global computer networks or other computer networks, by electronic means or wireless technology, or accessible by mobile phones or other Internet-enabled devices

(‘Applicant’s Services’)

1. Following examination the Trade Mark was accepted and subsequently advertised for opposition on 22 September 2021.

2. The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 22 November 2021, followed by a Statement of Grounds and Particulars on 22 December 2021. On 7 April 2022, the Applicant filed a Notice of Intention to Defend the opposition.

3. The Opponent filed Evidence in Support of the Opposition on 11 July 2022. The Applicant filed Evidence in Answer on 14 October 2022. The Opponent filed Evidence in Reply on 19 December 2022.

4. Following the conclusion of the evidence period, the Opponent requested a hearing. On 25 January 2024, the matter was heard before me, a delegate of the Registrar of Trade Marks, via video conference. The Opponent was represented by Khajaque Kortian of Spruson and Ferguson. The Applicant was represented by Justin Castelan of counsel accompanied by Dukos Myrteza of the Applicant.

Grounds of Opposition, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP were ss 41, 42(b), 44, 58, 58A, 60, and 62A. At the hearing, the Opponent did not press s 62A.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, being 19 June 2020 (‘Relevant Date’).

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Preliminary Matter

1. On 25 January 2024, the Opponent filed a request that new evidence be considered under reg 21.19. The new evidence consisted of a declaration made by Khajaque Kortian on 25 January 2025 with Annexure KK-1. Annexure KK-1 consists of an Adverse Examination Report for Trade Mark Application Number 1719873 AUSTRALIAN LAW PARTNERS in the name of Duke Myrteza.

2. The Applicant objected to the inclusion of this material, noting the timing of the request, being the day of the hearing.

3. Reg 21.19 affords the Registrar discretion to consider whether available information is relevant and whether it should be considered when making a decision. However, reg 21.19 is not a substitute for the evidence stages of an opposition and the party seeking admission of new evidence must make a compelling case for its inclusion.

4. According to the Opponent, it only became aware that the Applicant intended to rely on evidence of honest concurrent use when the Applicant filed its written submissions. The Opponent submits that this was because the Trade Mark had not proceeded to acceptance on the basis of s 44(3)(a).

5. I do not find the Opponent’s reasons convincing. It was evident in the Applicant’s Evidence in Answer that the Applicant had used the Trade Mark prior to the Relevant Date. At that stage of proceedings, the Opponent should reasonably have entertained the possibility of the Applicant making a case for honest concurrent use and filed the material as Evidence in Reply. Furthermore, in my view, the Opponent’s material is of limited probative value and not crucial to the determination of the matter before me. Accordingly, I have not exercised my discretion to allow the new material into the hearing. The decision will be made with regard to the evidence properly filed during these proceedings.

Evidence

Opponent

1. The Opponent’s evidence consists of the following:

   Evidence in Support

• Declaration of Vivian Tran, Associate of Spruson and Ferguson Patent and Trade Mark Attorneys, made on 11 July 2022 (‘Tran’) with Exhibits A to O and Confidential Annexures D and G.

  Evidence in Reply

• Declaration of Marcus Frangos, Managing Solicitor of the Opponent, made on 19 December 2022 (‘Frangos’).

1. Also exhibited to Tran are the following declarations (filed in response to examination reports for trade mark applications 1849841 and 1849879):

• Declaration of Adrian Pin, Managing Director of the Opponent, made on 9 January 2020 (‘Pin 1’) with Annexures A to L including Confidential Annexures F, J, K and L;

• Declaration of Adrian Pin made on 16 March 2020 (‘Pin 2’) with Confidential Annexures A and B;

• Declaration of Rohan de Meyrick made on 19 August 2020;

• Declaration of Dean-Lloyd Del Monte made on 20 August 2020;

• Declaration of Dan Shillington made on 20 August 2020;

• Declaration of Ken Pryde made on 28 August 2020;

• Declaration of Greg Young made on 9 September 2020; and

• Declaration of Chris McArdle made on 11 September 2020.

1. The Opponent operates a legal service that was founded in 2004. According to Pin 1, the Opponent has continuously offered legal services under the trade mark LAW PARTNERS since 2004.

2. The Opponent is the owner of the following Australian trade marks:

Trade Mark No.	Trade Mark	Priority Date	Class
1362306	19 May 2010	45
1849841	LAW PARTNERS	6 July 2017	45
1849879	6 July 2017	45

(Collectively, ‘Opponent’s Trade Marks’)

1. Mr Pin opines that the Opponent has acquired a significant reputation in the Opponent’s Trade Marks. In support, Pin 1 includes evidence of the Opponent’s extensive marketing activities, including examples of advertising the Opponent’s Trade Marks via television network advertisement, YouTube, billboards and public signage, merchandise, publications, as well as sponsorships with various organisations and sports teams. The Opponent also promotes the Opponent’s Trade Marks through its website, (‘Opponent’s Website’). In further support, Pin 1 includes the Opponent’s total marketing expenditure between 2004 and 2020, and its annual turnover from 2005 to 2020.

Applicant

1. The Applicant’s evidence consists of the following:

• Declaration of Dukos Myrteza, Director of the Applicant, made on 14 October 2022 (‘Myrteza 3’) with Exhibits DM-1 and DM-2.

1. Exhibited to Myrteza 3 are the following declarations (previously filed by the Applicant in response to an adverse examination report):

• Declaration of Dukos Myrteza made on 2 March 2021 (‘Myrteza 1’) with Exhibits DM1 to DM7;

• Declaration of Dukos Myrteza made on 22 September 2021 (‘Myrteza 2’) with Exhibits DM1 to DM4.

1. The Applicant is a law firm based in Brisbane that provides legal services in the areas of commercial litigation, insolvency, defamation, consumer law, estate planning and personal injury law. According to Mr Myrteza, the Trade Mark was created and first used in September 2015 when the business name of the Applicant was initially registered.[4] The Applicant was subsequently registered as a company on 31 October 2017,[5] and at present operates in all Australian states and territories.[6]

   [4] Myrteza 1 [5].

   [5] Ibid Exhibit DM2.

   [6] Myrteza 2 [9]

2. According to Myrteza 1, the Trade Mark has been used continuously since 2015.[7] Mr Myrteza opines that since 2015, the Trade Mark has become synonymous with the Applicant’s business. In support, the Applicant’s Evidence in Answer includes the following examples of trade mark use:

   [7] Myrteza 1 [9].

• Displays and signage featuring the trade mark in or around the Applicant’s main offices;[8]

  [8] Ibid Exhibit DM4.

• A billboard displaying the Trade Mark at 19 Lang Parade, Milton, Qld.[9] According to Myrteza 1, this signage has been on continuous display since about 2016.

• Signage at the Applicant’s Gold Coast office, which has been on display since 2016.[10]

• Use of the Trade Mark on business cards,[11] and ‘marketing collateral’, such as folders, pens and shirts.[12]

• Use of the Trade Mark on the Applicant’s business correspondence, including emails, invoices, and letterheads.[13]

• Use of the Trade Mark on the Applicant’s social media, namely the Applicant’s Facebook, LinkedIn, and Twitter accounts.[14]

  [9] Ibid Exhibit DM5.

  [10] Ibid [13].

  [11] Ibid Exhibit DM3.

  [12] Ibid [19], Exhibit DM7; Myrteza 3 [6].

  [13] Myrteza 1 [15], Exhibit DM6.

  [14] Ibid.

1. In further support, Myrteza 1 includes the Applicant’s annual turnover from 2015 to 2020,[15] and advertising expenditure from 2015 to 2020. Myrteza 2 also details the number of clients the Applicant has acted for,[16] and a breakdown of rates and charges for the Applicant’s legal and conveyancing services.

   [15] Ibid [17].

   [16] Myrteza 2 [4].

2. Myrteza 1 references 6 new articles published by third-party media dating from 28 March 2017 to 15 November 2020 that feature the Trade Mark and the Applicant’s business.[17] These articles are included in Myrteza 2 at Exhibit DM4. According to Myrteza 1, Mr Myrteza has also made public appearances on free to air television and news programs providing public legal commentary. Myrteza 1 includes examples of this from April 2018 and November 2020.

Discussion and Reasons

[17] Myrteza 1 [20].

Section 41

1. Section 41 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.

   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.

   Note 2:       For goods of a person and services of a person see section 6.

   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 (see subsections (5) and 7(3) and section 8).

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:       For applicant and predecessor in title see section 6.

   Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

2. Whether the Trade Mark is capable of distinguishing the Applicant’s Services requires consideration of the extent to which the Trade Mark is inherently adapted to distinguish those services from the goods or services of other traders. The test for assessing this was outlined in Clark Equipment Co v Registrar of Trade Marks:[18]

   [t]he question whether a mark is adapted to distinguish 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.[19]

   [18] (1964) 111 CLR 511 (Kitto J).

   [19] Ibid 514.

3. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[20] indicated that the test for distinctiveness is a two-step process. First, it is necessary to establish the ordinary signification, or ordinary meaning, of the trade mark in Australia to those concerned with the relevant goods or services.[21] Then once the ordinary signification is established, consideration turns to whether other traders may legitimately desire to use the word in respect of their goods or services.[22]

   [20] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).

   [21] Ibid [71].

   [22] Ibid.

4. The primary area of contention between the parties was whether s 41(3) or s 41(4) applies to the Trade Mark. The Opponent advanced several reasons why the Trade Mark is not capable of distinguishing the Applicant’s services, namely:

• The words ‘AUSTRALIAN LAW PARTNERS’ convey the meaning that the Applicant’s Services are provided by Australian law partners or law partners in Australia;

• The words ‘AUSTRALIAN LAW PARTNERS’ have negligible stylisation; and

• The image of the Southern Cross is a well-known and significant element of the Australian flag that only serves to further convey that the Applicant’s Services are provided to, or by, Australians.

1. For these reasons, the Applicant submits that other traders would have a legitimate desire to use the Trade Mark for its ordinary signification in connection with the Applicant’s Services.

2. Conversely, the Applicant contends that the original examination decision to accept the Trade Mark for registration should not be disturbed. In the Applicant’s view, its evidence when considered under s 41(4)(b) demonstrates that the Trade Mark is capable of distinguishing the Applicant’s Services from those of other traders.

3. With respect to the question of whether the Trade Mark has no inherent capacity to distinguish, the Applicant submits that the Trade Mark has at least some capacity to distinguish for the following reasons:

• The word ‘PARTNERS’ was adopted by the Applicant in the Trade Mark to denote its business model where the Applicant would work with clients in partnership to achieve desired outcomes;

• The Southern Cross device, when taken together with the other elements of the Trade Mark, makes ‘a significant contribution to the descriptive message conveyed by the word component and to the distinctiveness of the Trade Mark as a whole’; and

• Other traders acting honestly would not desire to use the composite form of the Trade Mark without improper motive.

Ordinary signification

1. The Trade Mark is comprised of words ‘AUSTRALIAN LAW PARTNERS’ in conjunction with a device depicting the Southern Cross. The word ‘AUSTRALIAN’ is represented in a larger font than the words ‘LAW PARTNERS’ and is further emphasised with an underline. In the context of legal services, ‘AUSTRALIAN LAW PARTNERS’ would be understood as signifying a partnership of legal practitioners operating in Australia or a partnership of Australian legal practitioners.

2. I note the Applicant’s intentions in adopting the word ‘PARTNER’ was to denote a partnership with its clients. However, the Applicant’s intent has no bearing on how consumers or other traders might construe the Trade Mark. The signification of the words ‘LAW PARTNERS’ was considered in Law Partners Compensation Lawyers Pty Ltd as trustee for Law Partners Unit Trust (‘Law Partners’)[23], in which Hearing Officer Lyons stated:

   I recognise that there is something unusual or even syntactically incorrect in applying the expression ‘law partners’ to describe the members of a legal partnership. However, that is not the critical question since it is not to say that ‘law partners’ does not relate directly to ‘legal advocacy services’ (to take an example from the Services) in the same manner as does, ‘accountant partners provide accountancy services’; both might benefit grammatically by changing the initial noun to its adjectival form, but I see nothing in the assembly of the words ‘law partners’ which has what is described as, ‘a trade mark quality’ to it. I find the ordinary signification of the Trade Marks to be directly descriptive of the Services.[24]

   [23] [2021] ATMO 22.

   [24] Ibid [12].

1. The addition of the word ‘AUSTRALIAN’ only serves to indicate the origin or nationality of the service providers, or the geographical context in which the services are being provided. This aspect of the Trade Mark is further emphasised by the device element the Trade Mark, which depicts 5 stars in an arrangement readily recognisable as the Southern Cross. The Southern Cross is a symbol of historical import in Australia as demonstrated by its inclusion in the Australian flag. Combing the words ‘AUSTRALIAN LAW PARTNERS’ with a device depicting a Southern Cross and an underline does not, in my view, materially alter the ordinary signification of the Trade Mark. These elements only serve to further reinforce the Australian signification present in the Trade Mark.

2. In my view, taken together the ordinary signification of the Trade Mark in the context of the Applicant’s Services is that of services provided by a partnership of Australian lawyers or by a partnership of lawyers in Australia.

Desire of other traders

1. Turning to the question of whether other traders are likely to desire to use the Trade Mark in connection with the Applicant’s Services, the Applicant submits that other traders would not honestly and without improper motive desire to use the Trade Mark in the form in which registration is sought.

2. I do not find the Applicant’s submission persuasive. Although other traders may not need to use the Trade Mark in the exact form that it has been applied for, the test for inherent capacity to distinguish a trade mark is not so narrowly confined. As Perram J emphasised in Aldi Foods Pty v Moroccanoil Israel Ltd,[25] it is not just the desire of other traders to use the word which is relevant, ‘it is also their potential desire to use words nearly resembling that word’[26].

   [25] [2018] FCAFC 93.

   [26] Ibid [125]; see also: Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

3. In my assessment, other traders who offer legal services are likely to legitimately desire to use something nearly resembling the Trade Mark. The Trade Mark’s Southern Cross and use of the underline provide some degree of visual difference from the plain words ‘AUSTRALIAN LAW PARTNERS’. However, neither of these aspects are particularly distinctive, and even combined, do not mitigate the ordinary signification of the Trade Mark or the likelihood of other traders desiring to use the Trade Mark.

4. For these reasons, I consider the Trade Mark is to some extent, but not sufficient, inherently adapted to distinguish the Trade Mark.

Evidence of use of the Trade Mark and/or other circumstances

1. In order for a ground for rejection under s 41(4) to apply, I must also be satisfied that the Trade Mark does not, and will not, distinguish the designated services having regard to the factors outlined in s 41(4)(b). These factors include the extent to which the trade mark is inherently adapted to distinguish, the use or intended use of the trade mark by the Applicant, and any other circumstances.

2. The Applicant submits that the Evidence in Answer demonstrates that the Trade Mark does distinguish the Applicant’s Services from those of other traders. Reliance is placed on the Applicant’s use of the Trade Mark in its letterheads, invoices, email correspondence, signage in and around its Queensland based offices, as well as its advertising and marketing on social media platforms. Further attention is drawn to third-party news articles, television programs and YouTube videos referencing the Trade Mark.

3. The Opponent contends that the Applicant’s evidence does not demonstrate extensive use of the Trade Mark, and that the Australian public has not been exposed to the Trade Mark for a sufficient period of time. Specifically, the Opponent submits that the Evidence in Answer only demonstrates 4 to 5 years of use that is limited to the region of Queensland, and, notably, demonstrates that the Applicant is a small firm of 10 staff with relatively modest turnover.

4. I agree that the Applicant’s evidence falls short of establishing the Trade Mark does, or will, distinguish the Applicant’s Services from those of other traders. The Applicant’s turnover and marketing expenditure are detailed in Myrteza 1. The figures provided indicate that the Applicant’s business grew from 2015 to 2020. However, they are not indicative of a degree of exposure that would result in consumers identifying the Trade Mark, or something nearly resembling the Trade Mark, with a single source of origin rather than its ordinary meaning. This is particularly the case considering the Trade Mark is used in the legal industry, a very large market comprised of most of the adult Australian population. Similarly, the advertising expenditure detailed in the Applicant’s evidence is modest and reflects limited market exposure of the Trade Mark. This is reinforced in the examples of the Applicant’s marketing, which focus primarily on a handful of local signs and what the Applicant terms, ‘[m]arketing collateral’, being pens, business cards, shirts and folders.

5. The remainder of the Applicant’s evidence is also not compelling. Although the Applicant has referred to extensive advertising and marketing on its social media accounts, few details have been provided regarding the amount of followers, subscribers, or visitors to these accounts. Nor have any other details been provided that may otherwise reflect the amount of exposure the Trade Mark has had via these mediums. The details that can be gleaned from the Applicant’s evidence, indicate a modest social media presence. For example, the screenshot of the Applicant’s twitter page included in Myrteza 2 shows that as of 10 April 2018 the Applicant had 38 followers on Twitter.  The third-party media articles included in the Evidence in Answer only demonstrate that the Applicant has been involved in small number of public legal matters, and, in my view, do not illustrate the alleged distinctiveness of the Trade Mark in relation to the Applicant’s Services.

6. Whilst I acknowledge that the evidence demonstrates the Applicant has used the Trade Mark from 2015 to the Relevant Date, this is a relatively short period of time for the public to associate the Trade Mark, or something so nearly resembling it, exclusively with a single trade source. The use demonstrated over that period and the limited evidence from after the Relevant Date does not, in my view, indicate that the Trade Mark does, or will, distinguish the Applicant’s Services from those of other traders.

7. For these reasons, I am satisfied that the Trade Mark is not capable of distinguishing the Applicant’s Services. Accordingly, the ground of opposition under s 41 has been established.

Decision

1. Section 55 relevantly provides:

   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.

2. The Opponent has established the s 41 ground of opposition. Accordingly, I refuse to register trade mark application number 2097263.

Costs

1. Both parties sought an award of costs. As the Opponent was successful in the opposition, I award costs against the Applicant under s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

26 April 2024