Mackay Airport Pty. Limited

[2013] ATMO 17

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1327087 (35, 36, 37, 38, 39 and 42) – Mackay Airport (word mark) - in the name of Mackay Airport Pty. Limited.

Delegate:	John Spence
Representation:	Applicant: Mr. Andrew Musgrave of Counsel instructed by Ms. Sarah North of McCullough Robertson, Lawyers
Decision:	2013 ATMO 17 Section 33 – application for word mark having geographical and surname signification – ground of objection raised by examiner pursuant to s.41(6) – right to be heard exercised by Applicant pursuant to s.33(4) – whether mark capable of distinguishing services of Applicant – extensive evidence of use – acquired distinctiveness not established and s.41(6) not satisfied – ground for rejection established – application refused.

Background

1. On 21 October 2009 (“the Priority Date”) the company Mackay Airport Pty. Limited (“the Applicant”) made application for registration of a trade mark pursuant to the provisions of the Trade Marks Act 1995 (“the Act”) the short particulars of which are as follows:

Application Number:  1327087

Classes:  35, 36, 37, 38, 39 and 42

Services:Tourism promotions (for others); business information; business advisory services; business consultancy (Class 35)

Real estate leasing; real estate management; property leasing (real estate property only); provision of information in relation to real estate (Class 36);

Property development; aeroplane maintenance (Class 37);

Telecommunications security (providing secure connections and access including to computers and the global computer network); communication by electronic mail systems; data transmission by electronic mail; electronic mail; electronic data interchange services; computer aided transmission of messages and images; communication of data by means of telecommunications; data transmission services over telecommunications networks; digital network telecommunications services; fibre optic telecommunications services; telecommunications (Class 38);

Air transport; air transport of goods; air transport of passengers; air transportation services; airline transport; arrangement for the transportation of goods; arrangement of passenger transport; arrangement of taxi transport; arrangement of transportation; transportation by bus; packing of goods for transportation; transport by air; motor vehicle transport services; vehicle transport services; aircraft chartering; airport baggage handling; transportation of baggage; rental of motor vehicles; car parking (valet) services; provision of car parking facilities; travel arrangement; storage of goods; transport information services; motor vehicle hire services; passenger vehicle hire; car parking; provision of car parking facilities; provision of information relating to tourism (Class 39); and

Computer network services; development, maintenance and updating of a telecommunication network search engine (Class 42)

Mark:  Mackay Airport

(“the Trade Mark”).

1. Subsequently the Trade Mark has undergone the required examination process with three separate examiner’s reports having issued and with detailed submissions together with extensive supporting evidence of use having been made available by the Applicant in response to those objections which have been raised. Upon the issuing of the third report, in which the examiner has maintained his objections, the Applicant’s lawyers have requested to be heard in relation to this matter and pursuant to the provisions of Section 33(4) of the Act.

2. As a delegate of the Registrar of Trade Marks, I heard this matter in Canberra on 4 May 2012. On that occasion, the Applicant was represented by Mr. Andrew Musgrave of Counsel instructed by Ms. Sarah North, Solicitor, of McCullough Robertson, Lawyers. Mr. Musgrave appeared by way of telephone link-up.

3. The heart of the issue before me is whether the provisions of s41(5) or s41(6) applies and whether the Applicant has provided sufficient evidence of its use to satisfy me of its claim under one or other of these provisions.

4. Prior to the hearing the Applicant provided the following additional materials:

• A Statutory Declaration of John Andrejic made on 27 April 2012 (together with the accompanying exhibits numbered 1 to 32); and

• written submissions dated 3 May 2012.

Those materials were supplemented by oral representations made in the course of the hearing. As well, subsequent to the hearing, I received further materials, namely:

• additional written submissions dated 16 May 2012 and responding to questions on notice which had been raised by me pertaining to the potential application of Re Application by The College of Law Pty. Limited (1999) 47 IPR 404 and Yorkshire Copper Works Limited v. Registrar of Trade Marks (1954) 71 RPC 150; and

• correspondence dated 2 August 2012 from McCullough Robertson and making submissions in relation to the decision of Justice Reeves in the Federal Court of Australia in Mantra IP Pty. Limited v. Spagnuolo [2012] FCA 769; (2012) IPR 464 which was handed down on 19 July 2012.

I have taken account of these additional submissions in the course of arriving at my decision.

The Evidence

1. In conducting the hearing and in the subsequent determination of this matter, I have had available to me two declarations by Mr John Andrejic. Mr Andrejic is described as being the Chief Financial Officer of North Queensland Airport Group (a position which he has held since December 2008) and Company Secretary of Mackay Airport Pty. Limited (the Applicant) since 6 February 2009.

2. This evidence comprises:

   ·     the Statutory Declaration of John Andrejic made on 22 November 2011 together with the Exhibits 1 to 41 inclusive contained in two volumes (“the first Andrejic Declaration”);

   and

   ·     the Statutory Declaration of John Andrejic made on 27 April 2012 together with the Exhibits 1 to 32 inclusive contained in four volumes (“the second Andrejic Declaration”).

3. The first Andrejic Declaration (together with the accompanying exhibits) declares the following salient information, namely:

   i.   Mackay Airport consists of a domestic terminal and western and eastern general aviation precincts (covering approximately 24 hectares).

   ii.   The history and background to the use of the trade mark “Mackay Airport” by the Applicant and its predecessors in title extends over an eighty-year period with use of the Mackay Airport name commencing from at least 6 March 1931.

   iii.   Mackay Airport was under the control of the Commonwealth Department of Civil Aviation from 1941 until 4 October 1989 when ownership was transferred to the Mackay Port Authority, an entity owned by the Queensland Government.

   iv.   The Applicant, which was incorporated on 1 September 2008, is a proprietary company limited by shares and it is the corporate entity responsible for operating Mackay Airport. The Applicant forms part of the North Queensland Airports Group which is said to be ultimately owned by a consortium comprised of IIF Cairns Mackay Investment Limited (an entity advised by JP Morgan Asset Management), The Private Capital Groups The Infrastructure Fund (TIF) managed by Hastings Perron Investments, and Auckland International Airport Limited (AIAL).

   v.   On 10 December 2008 the Mackay Airport Property Trust (as Lessee from the Head Lessor) entered into a 99 year sublease of the airport with the Applicant as sub-lessee. The Applicant “owns and manages” Mackay Airport.

   vi.   In its capacity as the sub-lessee of the Mackay Airport site, the Applicant further sub-lets parts of the Mackay Airport to a range of tenant businesses and government agencies. The major tenants of the Applicant comprise administration offices, Air Traffic Control and tower facilities, airlines, car parking areas and facilities and road network corridors, car rental companies (including Avis Australia, Budget Australia, Europcar, Hertz Australia, Redspot and Thrifty Australia), freight and distribution centres, helicopter service providers, refuelling facilities, transport facilities (including bus, taxi, limousine, car and other transfer services), utility networks, and various food and beverage outlets.

   vii.   Several well-known domestic air flight carriers provide their services from Mackay Airport including Qantas Airways, Virgin Blue and Jetstar Airways. Whitsunday Helicopters and Mackay Helicopters also operate from Mackay Airport.

1. More than 26 businesses and nearly 150 people work at Mackay Airport on any given day including 23 permanent employees of the Applicant in positions covering professional, technical, clerical, administrative and operational roles across Mackay Airport’s business units.

   ix.   Evidence is provided of some 642 newspaper articles for the period from 25 November 1985 to 29 June 2011 which indicate use of the trade mark (Exhibit 10).

   x.   The Applicant has continuously used the trade mark “since its first use” and it intends to use the mark in the future. No other airport operator has used the mark.

   xi.   Passengers numbering in excess of one million persons who pass through Mackay Airport each year are exposed to the “Mackay Airport” trade mark by virtue of indoor and outdoor signage, posters, flyers, branded vehicles, billboards, and flight information display screens.

   xii.Turnover figures for the Applicant are approximately in the range from $9.8 million to $18.18 million per annum.

2. A multi-million dollar capital expenditure programme for Mackay Airport over an eight-year period is planned by the Applicant.

3. The “Mackay Airport” trade mark is used and promoted throughout the states and territories of Australia, including on the Applicant’s website

   xv.   Significant amounts are spent by the Applicant on promotion and advertising. The Applicant’s annual marketing expenditure budget is in the order of $200k. Promotional activities include the use of the trade mark on stationery, in publications and media releases, on radio and television, on Internet sites, on billboards and signage, through involvement in sponsorships, and through social media and directories (including the White Pages).

1. The second Andrejic Declaration (together with its accompanying exhibits) provides a copy of the Head Lease and Sub Lease documents pertaining to the Mackay Airport facility as well as examples of the numerous agreements, leases, sub-leases, licences and other documents between the Applicant and third parties. On behalf of the Applicant, the point is made that all operations undertaken by third parties at Mackay Airport are provided under agreement with the Applicant. If any third party wishes to provide goods or services at or from Mackay Airport it can only do so with the express authority of the Applicant under a licence, lease, sublease or other form of agreement.

The Law

10.  The law has long recognized that there are certain trade marks which are difficult to register because they lack the requisite quality of distinctiveness. Traditionally such marks have included the categories of descriptive words, laudatory expressions, surnames and marks which have geographical signification.[1] The justification for the adoption of this approach, expressed in its broadest terms, was stated by Lord Cohen in Yorkshire Copper Works Limited’s Application for a Trade Mark (1953) 71 RPC 150 at 157, lines 32-37 as follows:

The Court is careful not to interfere with other persons’ rights further than is necessary for the protection of the claimant, and not to allow any claimant to obtain a monopoly further than is consistent with reason and fair dealing.

[1] See, for example, Application by Joseph Crosfield & Sons Limited to Register a Trade Mark (1909) 26 RPC 837 (the “Perfection” case), Registrar of Trade Marks v. W & G Du Cros Limited (1913) 30 RPC 660, Thomson v. B. Seppelt and Sons Limited (1925) 37 CLR 305, Applications by The Liverpool Electric Cable Company Limited to Register Trade Marks (1926) 46 RPC 99, A. Bailey and Company Limited v. Clark, Son and Morland Limited (1938) 55 RPC 253, Yorkshire Copper Works Limited’s Application for a Trade Mark (1953) 71 RPC 150 and Clark Equipment Company v. Registrar of Trade Marks (1964) 111 CLR 511.

Section 41

11. At the heart of this matter is the application of the terms of Section 41.

12. This provision of the Act is expressed as follows:

TRADE MARKS ACT 1995 - SECT 41

Trade mark not distinguishing applicant's goods or services

(1)  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)  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 ( 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.

(3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)  the Registrar is to consider whether, because of the combined effect of the following:

(i)  the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)  the use, or intended use, of the trade mark by the applicant;

(iii)  any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)  if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services--the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c)  if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services--the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1:       For goods of a person and services of a person see section 6.

Note 2:       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 (1) and 7(3) and section 8).

(6)  If the Registrar finds that 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, the following provisions apply:

(a)  if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant--the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)  in any other case--the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

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:       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 (1) and 7(3) and section 8).

13.  The Section has received considerable attention and interpretation by the Courts. In particular, in BlountInc v. Registrar of Trade Marks (1998) 40 IPR 498; (1998) AIPC 91-408 Justice Branson analysed and explained the provisions and the scheme of the Section, and her remarks have been frequently referred to and adopted in subsequent decisions. A concise restatement of the relevant principles is to be found in the decision of Justice Kenny in Sports Warehouse Inc. v. Fry Consulting Pty. Limited (2010) AIPC 92-388 (at paragraph 14).[2]

[2] Other useful restatements of the relevant principles which are applicable in relation to a consideration of Section 41 are to be found in Ocean Spray Cranberries Inc. v Registrar of Trade Marks (2000) AIPC 91-539 per Justice Wilcox at paragraph 11, Chocolaterie Guylian NV v. Registrar of Trade Marks (2009) AIPC 92-355 per Justice Sundberg at paragraphs 8 and 9 and Berenger Blass Wine Estates Limited v Harris (2010) 83 IPR 92 per Hearing Officer Murray at paragraphs 27, 31, 32, 34, 35 and 40.

14.  It is well-established that descriptive use (that is, using everyday English words to describe the relevant services as offered by the Applicant) is not trade mark use. In Edgetec International Pty. Limited v. Zippykerb (NSW) Pty. Limited (No.2) [2012] FCA 281; (2012) 98 IPR 1 Justice Reeves observed (at paragraph 26):

In Mark Foy’s Limited v. Davies Coop & Company Limited [1956] HCA 41, (1956) 95 CLR 190 (Mark Foy’s), Williams J outlined why that is so (at 199) by reference to the speech of Lord Herschell in Eastman Photographic Materials Co. Ltd v. Comptroller – General of Patents, Designs and Trade Marks(1898) AC 571 as follows:

‘[A]ny word in the English language may serve as a trade mark – the commonest word in the language might be employed. In these circumstances it would obviously have been out of the question to permit a person by registering a trade mark in respect of a particular class of goods [or services] to obtain a monopoly of the use of a word having reference to the character or qualities of those goods [or services]. The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent the other members of the community from using for purposes of description a word which has reference to the character or quality of the goods [or services].’…

It follows from the decided cases that, where an applicant seeks to obtain registration in respect of an expression having a clear meaning or signification in ordinary use (that is, being part of the vocabulary of the English language and common property which should be available for use by all traders to describe their goods or services), it should be difficult for that party to establish that use of that expression is trade mark use or to obtain exclusive rights in respect of same and by virtue of registration.

Capacity to Distinguish

15. The issue which is proposed by Section 41(2) of the Act and which falls for consideration is whether the trade mark “Mackay Airport” is capable of distinguishing the Applicant’s services from the services of other persons. In deciding that matter, I am required by Section 41(3) to take into account “the extent to which the trade mark is inherently adapted to distinguish” the designated services from the services of other persons. Capability to distinguish the goods or services of one trader from those of others is critical to the concept of a trade mark (see the definition of a trade mark in Section 17). In considering whether a trade mark is capable of distinguishing the goods or service for which it is sought to be registered, account must be taken of the extent to which it is inherently adapted to distinguish those goods or services. It is important, therefore, to understand the meaning of the expression “adapted to distinguish”.

16. It should be noted that a number of the leading authorities were decided prior to the commencement of the 1995 Act and before the provisions of Section 41 were enacted. The issue arises as to the extent to which those decisions are able to be relied upon. In Blount Inc. v. Registrar of Trade Marks, op. cit., Justice Branson considered the issue as to whether the changes that were introduced by the Act affected those authorities which dealt with the 1955 Act. In expressing the view that the principles remained relevant, her Honour observed (at 37,248):

The notion of a trade mark being inherently adapted to distinguish the designated goods was of primary significance under the 1955 Act. There is no reason to think that the phrase “inherently adapted to distinguish the designated goods from the goods of other persons” appearing in s 41 (3) of the Act is not intended to be understood in the light of decisions under the 1955 Act, and comparable United Kingdom legislation which includes reference to inherent adaptability.

17.  This statement was referred to with approval by Justice Bennett in Unilever Australia Limited v. Societe des Produits Nestlé S.A. (2006) 69 IPR 255 at paragraphs 9 and 10 and by Justice Reeves in Mantra IP Pty. Limited v. Spagnuolo (2012) 96 IPR 464 at paragraphs 43 and 44. To similar purpose, reference is made to the decision of Justice Stone in Kenman Kandy Limited v. Registrar of Trade Marks (2002) AIPC 91-817; (2002) 56 IPR 30 at paragraphs 142-143. The effect of this reasoning is that decisions which issued prior to the 1995 Act are still relevant in considering the interpretation of the expression “adapted to distinguish”.

18.  The meaning of the expression “adapted to distinguish” has been considered in a long line of Australian authorities since the current Act was adopted.[3] From those decisions, there emerge a number of relevant general principles. In particular, many of the cases have as a common starting point reliance upon the decision of Justice Kitto in Clark Equipment Company v. Registrar of Trade Marks (1964) 111 CLR, 511 (“the “MICHIGAN” case). Drawing upon the words of Lord Parker in Registrar of Trade Marks v. W & G Du Cros Limited (1913) RPC 216 at 227, his Honour stated (at 514):

…this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons trading in goods [or services] 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

His Honour went on to observe (at 515):

But the probability that some competitor, without impropriety, may want to use the name of a place on his goods [or services] must ordinarily increase in proportion to the likelihood that goods [or services] of the relevant kind will in fact emanate from that place. A descriptive word is in like case: the more apt a word is to describe the goods [or services], the less inherently apt it is to distinguish them as the goods [or services] of a particular manufacturer.

[3] Saliently, and not exhaustively, those decisions include Blount Inc. v. Registrar of Trade Marks (1998) AIPC 91-408; Ocean Spray Cranberries Inc. v. Registrar of Trade Marks (2000) AIPC 91-539; Aldi Stores Limited Partnership v. Frito-Lay Trading Company GmbH (2002) AIPC 91-771; Kenman Kandy Australia Pty. Limited v. Registrar of Trade Marks (2002) AIPC 91-817; Philmac Pty. Limited v. Registrar of Trade Marks (2003) AIPC 91-841; Austereo Pty. Limited v. DMG Radio (Australia) Pty. Limited (2004) AIPC 92-016; Unilever Australia Limited v.Societe des Produits Nestlé (2006) 69 IPR 255; Woolworths Limited v. BP plc (2006) AIPC 92-224; Colorado Group Limted v. Strandbags Group Pty. Limited (2008) AIPC 92-272; Chocolaterie Guylian Nv v. Registrar of Trade Marks (2009) AIPC 92-355; Yarra Valley Dairy Pty. Limited  v. Lemnos Foods Pty. Limited (2010) 90 IPR 117; Sports Warehouse, Inc. v. Fry Consulting Pty. Limited (2010) AIPC 92-388; Mantra IP Pty. Limited v. Spagnuolo (2012) 96 IPR 464; and Fry Consulting Pty. Limited v. Sports Warehouse, Inc. (No. 2) (2012) AIPC 92-436.

19.  The relevant general principles, which are conveniently identified by Justice Bennett in Unilever Australia Limited v. Societe des Produits Nestlé (2006) 69 IPR 255 at paragraphs 28-36 inclusive, are encapsulated by Justice Reeves in Mantra IP Pty. Limited v. Spagnuolo (2012) 96 IPR 464 at paragraph 45 as follows:

·inherent adaptation to distinguish cannot be acquired by use and is to be assessed by reference to the perception and understanding of members of the public seeing it for the first time;

·an inherent capacity is an “essential permanent characteristic” and “intrinsic” to the trade mark itself;

·because an expression is not descriptive of any characteristics of goods or services, it does not necessarily follow that it is inherently adapted to distinguish ; and

·evidence of use is not considered in assessing inherent capacity to distinguish.

20.  Further, the test of inherent adaptability to distinguish looks to the future and seeks to know “What will be the effect of the mark after registration?” (per Justice Isaacs in Thomson v. B. Seppelt & Sons Limited (1925) 37 CLR 305; 31 ALR 438 and quoted with approval by Justice Stone in Kenman Kandy, op. cit., at paragraph 142). Applying these principles to the assessment which is required pursuant to Section 41 and in relation to the matter which is presently before me, the following analysis emerges. The effect of Section 41(2) is that a trade mark without a capacity to distinguish the designated goods or services must not be registered. Thus if the trade mark has no inherent adaptation to distinguish and the requisite evidence of use sufficient to establish distinctiveness is absent, it lacks a capacity to distinguish and it should not be registered.

21.  The examiner’s concerns are as set out in the official letters dated 28 January 2010, 6 January 2012 and 1 March 2012. The salient objections which were raised by the examiner are as follows:

• The trade mark “Mackay Airport” is not able to be accepted for registration pursuant to Section 41 of the Act because it does not distinguish the services of the Applicant from the services of other parties.

• The word MACKAY is both the name of a prominent Queensland coastal town and a surname. The word AIRPORT is an ordinary English expression with an established meaning.

• The particular combination MACKAY AIRPORT indicates that the services of the Applicant are provided to or from, or are about or related to, an airfield facility which is located at the city of Mackay. As such, other traders should be able to use the expression “Mackay Airport” in connection with similar goods or services.

• In this instance, the supporting evidence falls to be assessed pursuant to Section 41(6) of the Act. Only evidence of use up to the Priority Date may be considered.

• Applying the decisions of Aldi Stores Limited Partnership v. Frito-Lay Trading Company GmbH [2001] FCA 1874; (2001) 54 IPR 344 (the “CHEEZY TWISTS” case), E. & J. Gallo Winery v. Lion Nathan Australia Pty. Limited [2010] HCA 15; (2010) 86 IPR 224 (the “BAREFOOT” case) and British Sugar Plc v James Robertson & Sons Limited [1996] RPC 281 (the “TREAT” case), the examiner concluded that the “Mackay Airport” trade mark “is not to any extent inherently adapted to distinguish the designated services from the services of other persons”.

• Use of the words “Mackay Airport” consists “almost entirely” of use in one of two ways: either in conjunction with a device mark (which is the subject of registration under No. 1327083) and thereby failing to support the contention that the words on their own are capable of distinguishing the Applicant’s services, or “generic use” which does not indicate a trade source but rather which indicates merely a place or location (being the airport which is located at Mackay or which services Mackay). On that basis the evidence fails to satisfy the requirements of Section 41(6)(a).

• By way of example of other traders wishing to adopt the expression “Mackay Airport”, the examiner identified use of that expression by the Bureau of Meteorology on its website, use of a website for car hire with a main banner which reads “Mackay Airport Car Hire”, and use on the QANTAS website of the words “Mackay Airport” as a major heading in connection with its services.

22. The examiner concluded that the application is correctly considered under Section 41(6) of the Act. Moreover, the examiner was not satisfied that the trade mark “Mackay Airport” does distinguish the services of the Applicant from the similar or closely related goods and services of other traders.

Submissions

23. In the course both of written submissions and orally at the hearing, and in addition to the contents of the letter dated 3 February 2012 from McCullough Robertson, Mr. Musgrave has put forward well-reasoned and extensive arguments. In this regard, the essential submission of the Applicant is that the trade mark “Mackay Airport” is not in the nature of a geographical expression. The mark does not consist wholly of a description of the geographical origin of those services which are the subject-matter of the application. That submission on the part of the Applicant is said to be supported by the nature of the business operation which is conducted by the Applicant and the fact that the Applicant is the only entity entitled to use the name and to permit other parties to carry on business at the premises from which the Applicant operates at Mackay Airport. That factor is said to deprive the trade mark of the essential feature to which objection is taken (that is, that the mark has geographical significance). The Applicant’s case is that the Trade Mark is to some extent inherently adapted to distinguish the services offered by the Applicant and that it should be considered under Section 41(5).

The “Mantra” Decision

24.  Subsequent to the hearing, Justice Reeves handed down his judgment in Mantra IP Pty. Limited v. Spagnuolo (2012) 96 IPR 464 (the “Q1” case), being by way of an appeal against the decision of Hearing Officer Murray in Spagnuolo v. Mantra Pty. Limited (2010) 90 IPR 413. By correspondence dated 2 August 2012, the Applicant’s lawyers sought to rely on the “Q1” decision and to make submissions in relation to same. Hearing Officer Murray had earlier found that the three relevant applications for registration of the “Q1” mark in respect of a wide range of services pertaining to the conduct of a high rise apartment building situated at Surfer’s Paradise fell foul of the provisions of Section 43 of the Act.

25. On appeal, Justice Reeves considered the significance of Q1 in the context of s41. His Honour considered the decision of MID Sydney Pty. Limited v. Australian Tourism Company Limited (1998) 42 IPR 561 (the “Chifley Tower” case). He expressed the view (at paragraph 59) that the name of a privately owned building cannot be regarded as the equivalent of a geographical place name such that it is to be considered as part of the “common heritage” over which the public can claim to have a public right to make honest use of that sign in relation to its goods or services.[4]

[4] It should be noted that leave to appeal this decision to the Full Court was applied for and granted (Spagnuolo v. Mantra IP Pty. Limited [2012] FCA 1038), with Justice Logan recognising that “there is a very nice question indeed of trade mark law involved in this case” and noting that the appeal applicant “did enjoy success before the registrar”. That appeal did not ultimately proceed, the parties having apparently settled their differences.

26. The Applicant has sought to attach considerable weight to the judgment of Justice Reeves in the “Q1” case as supporting its position, and as such that decision requires due consideration. In particular it was submitted that the assessment of inherent adaptability to distinguish under Section 41(3) “proceeds on the basis of a practical real world assessment and with a presumption in favour of registration” (at paragraph 67). In the “Q1” case, the essential question which was put is whether ordinary members of the public on seeing the “Q1” sign for the first time would consider that it has any common meaning, or that it signifies a geographical place name, such that it is not inherently adapted to distinguish the relevant services. On this reasoning, the Applicant argued that the approach which has been taken by the examiner in relation to the expression “Mackay Airport” and the issue of inherent adaptation to distinguish is in error.

27.  As a result of the decision of Justice Reeves in the “Q1” case I accept that, as the law now stands, the name of a building ought not to be regarded as being a geographical place name or as forming part of the “common heritage”. However it is still open to me to consider the “Mackay Airport” trade mark and the registrability of same on a different basis. In particular, there are significant points of difference which exist between the “Q1” case and the matter which is presently before me, notably:

• The mark “Q1” is a sign or mark that was coined or made up;

• The “Q1” mark comprises the combination of a single letter of the alphabet conjoined with the ordinary numeral “1”. By contrast, the “Mackay Airport” trade mark comprises the combination of two ordinary English words being the geographical expression “Mackay” accompanied by the qualifying descriptive word “Airport”;

• The sign “Q1” is general, imprecise and vague in the impression which it conveys whereas the expression “Mackay Airport” is specific, precise and singular in its effect in indicating a reference to the airport located at Mackay;

• The sign “Q1” as a mark is arguably inventive, or at least original, when compared with the expression “Mackay Airport”;

• The sign “Q1” is not descriptive in the relevant sense since it suggests no known, obvious or established meaning or signification and since it is susceptible of a range of possible meanings. By contrast, the expression “Mackay Airport” can be said to be descriptive in the sense that it indicates the one particular place, location, site or destination and no other;

• The sign “Q1” is not the normal, apt or expected name, title or designation for a building. By comparison, the expression “Mackay Airport” is not merely a normal or usual designation: it is the proper and appropriate designation and the natural expression to use in indicating the airport located at Mackay. In the words of Justice Finn (in Austereo Pty. Limited v. DMG Radio (Australia) Pty. Limited (2004) 61 IPR 257) the words “Mackay Airport” are “the only or natural words which would be chosen for that purpose” (at paragraph 38). It is a sign which is immediately familiar and which can be taken to mean only one thing. The presence of that factor of necessity confers on the expression “Mackay Airport” the status of a descriptive statement thereby rendering it other than “adapted to distinguish”. No such difficulty can be said to arise in relation to the “Q1” trade mark;

• In the “Q1” case, an important factor is that on the relevant facts there was not found to exist a “common heritage”. That finding is less likely to apply in relation to the expression “Mackay Airport” and the particular circumstances of the present matter;

• In the “Q1” case, the MID Sydney decision was relied upon as establishing that the name of a large city building was not geographical in nature and that there was no right of common property or “common heritage” in respect of the name of a building. In relation to the present matter, the operation and function of an airport (as distinct from a high rise apartment block) may arguably be of a different nature in relation to the existence of a public right to make use of the expression “Mackay Airport”;

• In the “Q1” case, Justice Reeves recognized (at paragraphs 64-66) at least the possibility that there may be a “borderline exception” in respect of instances where a public space adjoining such a building had become a part of the common heritage (following the suggestion in the MID Sydney case that a building containing well-known public spaces may indeed “answer that description” and “form part of the common heritage”).

On that basis, it seems to me that there is scope for a distinction to be drawn between the “Q1” decision and the matter which is presently under consideration.

College of Law Decision

28.  At the hearing, I drew the attention of Mr. Musgrave to the decision of Re Application by The College of Law Pty. Limited (1999) 47 IPR 404 and I sought his views in relation to that decision. By written supplementary submissions dated 16 May 2012, Mr. Musgrave endeavoured to distinguish the College of Law case. However his argument on this issue proceeds on the premise that the “Mackay Airport” trade mark is inherently adapted to distinguish the services of the Applicant. I do not accept that premise, and I remain of the view that the College of Law case is relevant. In particular, I refer to the following statements of Hearing Officer Nancarrow, namely:

Despite the list of alternatives provided by Ms Gourley in her submissions, I believe that the words “The College of Law” provide nothing more than a description of the applicant’s business. It is a phrase that readily conveys the nature of the applicant’s educational and training services. As such, I cannot accept that this argument is helpful in showing that the mark has any inherent capability to distinguish the applicant’s services, or, therefore, is helpful in providing reason to consider the application under s 41(5). . . . (at 408 lines 34-40);

and

I am of the opinion that the mark THE COLLEGE OF LAW is entirely descriptive of the applicant’s services and lacks any inherent adaptation to distinguish those services from the similar services of other traders. This conclusion leads me to option (b) of the choices outlined above, as detailed by Branson J in Blount, above. The result of such a conclusion is that the mark can only be considered for registration under the provisions of s 41(6) (at 409 lines 46-51).

State of the Register

29. In support of the argument that the Section 41(5) ground (rather than Section 41(6)) should be applied in relation to the “Mackay Airport” trade mark, the Applicant has submitted (in the course of correspondence from McCullough Robertson dated 3 February 2012) that regard should be had to the presence on the Register of six existing “airport”-related word marks each of which was examined pursuant to section 41(5) and each of which was subsequently accepted for registration. In the submissions, the relevant details of those entries were quoted as being:

No. 825464 WHITSUNDAY COAST AIRPORT
No. 1068458   BRISBANE AIRPORT
No. 1252734   “Perth Airport”
No. 1280641   PERTH AIRPORT
No. 1320216   “Cairns Airport” and

[5] In relation to these entries, there are at least two anomalies. The entry No. 1068458 is indicated as being “BRISBANE AIRPORT” but in fact it is “BRISBANE DOMESTIC” (and therefore not an “airport” mark at all). The entry No. 1320216 “Cairns Airport” was the subject of a divisional application which was registered under No. 1431769.

No. 1324099   MELBOURNE AIRPORT[5].

30. With the exception of No. 1320216, as a condition of registration each of these entries is subject to a Section 41(5) endorsement. As well, my attention has been drawn to the decision of Hearing Officer Murray in D & M Group Pty. Limited v. Cairns Airport Pty. Limited [2012] ATMO 22 where, in the context of opposition proceedings (as distinct from the present matter which is ex parte in nature), an application for the trade mark “CAIRNS AIRPORT” (rendered in the form of a device) was allowed to proceed to registration (after being considered under Section 43 rather than pursuant to Section 41). In addition the point has been made that the Applicant already holds the registration No. 1327083 in respect of the following device mark, namely:

(“the Device Mark”). In that precise form (that is, as a composite mark), the Device Mark has succeeded in attaining acceptance in respect of a range of services located in Classes 35 and 39.[6]

[6] That mark (which has the priority date of 21 October 2009) can readily be distinguished from the “Mackay Airport” word mark which is presently under consideration because, being represented in combination form and incorporating a device, symbol or logo, it is more than merely the words “Mackay Airport” rendered in ordinary lettering and hence it has an enhanced claim to possessing a degree of inherent distinctiveness (thereby entitling it to fall for consideration within the scope of Section 41(5).

31.  In my view, the Applicant has sought to place undue significance on those prior entries. It is long-established under Australian law that the Registrar is not bound by his or her decisions (Re Rozenfeld (Lazaris) Pty Limited’s Application (1941) 11 AOJP 1047, the “Windsor” case). In MADAME Trade Mark [1966] RPC 541, Mr. Tookey, Q.C. stated:

Although uniformity of treatment is of course desirable as far as possible where examination of applications is concerned, I agree with the Registrar that each application must be dealt with on its own merits.

That approach was upheld by Justice Jacob in British Sugar plc v. James Robertson & Sons Limited [1996] RPC 281 at 306 who observed:

It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] RPC 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.

32.  In any event, the existence of a uniform or consistent practice in relation to “airport”-related word marks is by no means made out by the Applicant. Indeed, there are other instances where a different outcome has occurred.[7] For these reasons, I place no weight or significance on those “airport”-related entries which are relied upon by the Applicant. I have no knowledge or awareness as to what evidence or submissions might have been made available before the examiner in each of those other applications. Irrespective, I have reached my decision on the basis of the merits of this matter so far as I understand them.

[7] By contrast, I draw attention to the presence on the Register of the following examples of “airport” marks that have not achieved registration, namely Nos. 404765 “CAIRNS INTERNATIONAL AIRPORT”, 825463 “WHITSUNDAY AIRPORT”, 825465 “WHITSUNDAY INTERNATIONAL AIRPORT”, 954770 “1 AIRPORT DRIVE”, 954829 “NUMBER ONE AIRPORT DRIVE”, 1047485 “SYDNEY WEST AIRPORT”, 1125896 “MELBOURNE AIRPORT CORPORATE CENTRE”,117169 “BRISBANE AIRPORT”, 1197547 “Adelaide Airport Hotel”, 1235802 “Perth Airport Hotel”, 1258209 “SYDNEY AIRPORT TRAVEL”, 1271134 “perthairport.com.au”, 1299537 “Jandakot Airport”, 1317306 “DOMODEDOVO MOSCOW INTERNATIONAL AIRPORT”, 1372299 “SYDNEY AIRPORT SHUTTLE”, 1393409 “perthairport.com.au” and 1452650 “Sydney Airport Shuttle”

33. Despite the Applicant's submissions in the present instance, the trade mark in question comprises a simple combination of the individual words “Mackay” and “Airport” to form the composite expression “Mackay Airport”. The Trade Mark as filed is rendered in ordinary letters and in simple, unadorned form as a bare word mark. It contains no devices, embellishment or colours within it (unlike the existing registration No. 1327083). It cannot be said to be syntactically unusual. For reasons outlined by the examiner (in paragraph 21 above) there is nothing within the mark that could be regarded as being sufficient to provide it with some slight amount of inherent adaptation to distinguish and thereby remove it from the ambit of Section 41(6).

34. In short, applying the “Oregon” decision and the decided authorities referred to in paragraphs 16 to 20, it follows that since the Trade Mark lacks the capacity to distinguish the designated services as required by Section 41(2) the provisions of Section 41(6) and not 41(5) are properly applicable in relation to the present application. That being so, the supporting evidence which is required in order to satisfy the requirements of Section 41(6) must be substantial in nature and extent.

Issues

The Applicant’s Evidence

35.  The Applicant has put on a considerable volume of evidence of use on which it seeks to rely in support of its position and in order to demonstrate the presence and the strength of the “Mackay Airport” trade mark in the Australian market place. However that evidence in itself, while significant and needing to be taken into account, may not necessarily be conclusive and a proper assessment must be given to it in determining its due weight. In this regard, I am mindful of the observation of Justice Jacob in British Sugar plc v. James Robertson & Sons Limited [1967] RPC 281 at 302:

There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a product and be able to show massive use by him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark.

Later in the same decision his Honour remarked:

…the question of factual distinctive character is one of degree. The proviso really means ‘has the mark acquired a sufficiently distinctive character that the mark has really become a trade mark’. In the case of common or apt descriptive or laudatory words compelling evidence is needed to establish this. And in particular mere evidence of extensive use is unlikely to be enough on its own. Of course the power of advertising may be able to turn almost anything (save a pure description) into a trade mark, but it must be shown in a case of this sort that the mark has really become accepted by a substantial majority of persons as a trade mark – is or is almost a household word. [Original emphasis]

These statements are referred to with approval inter alia by Justice Wilcox in Ocean Spray Cranberries Inc. v. Registrar of Trade Marks (2000) AIPC 91-539 at paragraph 24; Justice Lindgren in Aldi Stores Limited Partnership v. Frito-Lay Trading Company GmbH (2002) AIPC 91-771 at paragraph 73; and Justice Sundberg in Chocolaterie Guylian NV v. Registrar of Trade Marks (2009) AIPC 92-355 at paragraph 87.

36.  Again, in Woolworths Limited v. BP plc (2006) AIPC 92-224 (at paragraph 117) the Full Court stated:

Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount v. Registrar of Trade Marks at 61G, citing with approval Jacobs J in British Sugar plc v. James Robertson & Sons Ltd at 286 and 302; and Koninklijke Phillips Electronics NV v. Remington Products Australia Pty Ltd at 101 [13]. It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark. The learned authors of Kerly’s Law of Trade Marks and Trade Names (14th  ed) at [8-025] state, albeit in the European context, that to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source: cf Unilever plc’s Trade Mark Applications [2003] RPC 35 at [31].

Use as a Trade Mark

37. The notion of use as a trade mark is said to be fundamental to the operation of the Act and flows from the nature of a trade mark as defined in Section 17 of the Act, namely:

A trade mark is a sign used, or intended to be used, to distinguish goods or services so dealt with or provided by any other person.

The word “sign” is defined in Section 6 of the Act as follows:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

Sub-section 7(5) is expressed in the following terms:

(5) In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

38. Though expressed in the context of discussing the definition of the expression “trade mark” as it appeared in Section 6(1) of the former 1955 Act, the following passage from the reasons of Justice Lockhart in Johnson & Johnson Australia Pty. Limited v. Sterling Pharmaceuticals (1991) 21 IPR 1; (1991) AIPC 90-823 at 37,829 (the Caplets case) is helpful:

[E]ssentially, so far as relevant, it is a mark used in trade to distinguish the goods of the person who uses it; it is a badge of origin of the goods indicating a connection in the course of trade between the goods and the person who applies it to the goods: see Attorney –General v Brewery Employees Union of New South Wales (1908) 6 CLR 469; Mark Foys Ltd v Davies Coop & Co Ltd (the Tub Happy case) (1956) 95 CLR 190; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (the Esso case) (1963) 109 CLR 407.

This passage is cited with approval by the Full Court (Justices Heerey, Allsop and Young) in Woolworths Limited v. BP Plc, op. cit., at paragraph 76.

39.  In most, if not all, instances the question whether there has been use as a trade mark will be determined by an objective examination of the relevant use in the context in which it appears. That context includes a consideration of the way in which the word is displayed in relation to the relevant goods or services or in advertisements of same: see Mars GB Limited v. Cadbury Limited [1987] RPC 387 at 402 per Justice Whitford and Johnson & Johnson, op.cit., at AIPC 37,851 per Justice Gummow. Paraphrasing the words of Justice Lindgren in Aldi Stores Limited Partnership v. Frito Lay Trading Company GmbH (2002) AIPC 91-771 (at para 76), whether the Applicant has used the words “Mackay Airport” as a trade mark, that is to say, by way of distinguishing its services from the services of others, raises the objective test whether they would be likely to be understood to do so by relevant readers and hearers in the circumstances in which the words were likely to be read or heard.

40.  In short, in the assortment of judicial descriptions as to the function of a trade mark which are available, the “common thread” is that “the mark must be intended to proclaim a connection with a particular trader” (per Justice Wilcox in Ocean Spray Cranberries Inc. v. Registrar of Trade Marks (2000) AIPC 91-539 at paragraph 40). In the present instance, the essential question which needs to be satisfied is whether or not, by use of the expression “Mackay Airport”, members of the public are being invited to regard that expression as a “badge of origin” and to use the services of the Applicant on the basis that those services are able to be distinguished from the services of other providers (see Justice Gummow in Johnson & Johnson, op. cit., at 37,852; Justice Merkel in The Coca Cola Company v. All-Fect Distributors Limited (1999) AIPC 91-453 at 39,071 and Aldi Stores Limited Partnership v. Frito-Lay Trading Company GmbH, op. cit., (per Justice Hill at paragraph 23).

1. In relation to the present matter, there are points of limitation and weakness in the evidence which has been provided by the Applicant. In his second report the examiner has provided an assessment of the evidence pursuant to Section 41(6) and in particular he has raised the following considerations which need to be taken into account, namely:

   ·     Is the sign used as a trade mark?

   ·     Has the Applicant clearly promoted the sign as a trade mark?

   ·     Does the evidence show that the sign is, as a matter of fact, operating in the market-place as an indication of trade origin?

   ·     Is the sign accepted by a substantial majority of persons in the relevant field as a trade mark?

   ·     Has the primary meaning of the sign been displaced to the extent that, in relation to the relevant services, it has come to denote those services which are provided by the Applicant?

42.  In the course of his assessment of this application, the examiner found that the evidence which was before him was flawed because it consisted “almost entirely” of use either in conjunction with the device mark which is the subject of registration under No. 1327083 (thereby failing to support the contention that the words per se are capable of distinguishing the Applicant’s services) or in a “generic” or descriptive sense in indicating use of a non-trade mark nature or not relating to the Applicant or to trade origin, or in relating to use by third parties. On that basis, the examiner found that the evidence failed to satisfy the requirements of Section 41(6)(a). I agree with the examiner in this regard. In relation to use of the device mark, I refer to the first Andrejic Declaration and in particular to Exhibits 4, 5, 13, 14, 16, 18, 20, 21 and 23 by way of example. In relation to “generic” or descriptive use, I refer to Exhibits 10, 15, 17, 19, 22, 24, 25, 27 to 34 inclusive, 36 and 37 of the first Andrejic Declaration. In relation to use by third parties, the examiner referred specifically (but without limitation) to three examples taken by him from the Internet, namely the Bureau of Meteorology, a website for car hire and the Qantas Airways website.

43.  The Applicant has made submissions and submitted evidence seeking to rebut those examples. The second Andrejic Declaration (being evidence which was not available to the examiner) is substantially directed at establishing the existence of extensive commercial relationships (notably by means of leasing arrangements) which have been entered into by the Applicant with third parties and which continue to exist. By this means, the Applicant seeks to demonstrate the extent of control, supervision and approval which it purports to exercise in respect of use of the “Mackay Airport” trade mark. However, in my view, the evidence which is put forward by means of the second Andrejic Declaration does little to change the situation. Indeed, that evidence goes to substantiate the fact that there exists a class of traders comprising some twenty-six different parties who conduct business at Mackay Airport or who have a business at Mackay Airport and who (in addition to the Applicant and members of the public) would presumably wish to make use of the expression “Mackay Airport” at some time and in conjunction with the normal conduct of their businesses. As such, this evidence serves to reinforce the real concerns which have been raised by the examiner both as to the use of the expression “Mackay Airport” by the Applicant and the nature of the Applicant’s evidence. The existence of such business relationships as may be in place does not serve to establish a distinctive reputation in favour of the Applicant and it does not equate to use of the expression “Mackay Airport” as a trade mark by the Applicant. Moreover the fact that those businesses are said to operate with the consent and licence of the Applicant to my mind does not serve to overcome the essential issue: the situation remains that there exist third parties who are likely to want to use the expression “Mackay Airport” independently and in conjunction with the conduct of their businesses or who are associated with the airport at Mackay rather than with the Applicant. As well, there is use by the general public: members of the public will presumably wish to use the expression “Mackay Airport” and to refer to that place or location without unfair inhibition or restraint.

44.  A clear example of the problem faced by the Applicant is provided by the material which demonstrates the appearance of the expression “Mackay Airport” in publications and newspaper articles. In this regard I refer to the first Andrejic Declaration at paragraph 55 (b) (ii) and Exhibit 10 where some 642 such entries are collated and put forward as examples of evidence of use and in favour of the Applicant’s argument. However this material in fact discloses the opposite of what is intended by the Applicant since typically it establishes the essentially descriptive, non-distinctive and “generic” use of the expression “Mackay Airport” by the world at large to indicate and refer to a well-known and familiar place or location in precisely the manner which is of concern to the examiner rather than identifying a connection with a “badge of origin” or a particular owner or trader.[8] In this instance (and indeed generally) evidence of use is provided by the Applicant but it is not necessarily evidence of use as a trade mark.

[8] By way of illustration, item 1 of Exhibit 10 is an article from the Daily Mercury newspaper dated 4 July 2011 which bears the headline “Mackay Airport closed” and the statements “The Mackay Airport has closed overnight” and “The Mackay Airport Cyclone Committee will continue to monitor the situation”. Item 642, being the text of an article which appeared in the Courier–Mail newspaper dated November 25, 1985 states”Passengers safe in jet alert. Mackay Airport was on full emergency alert yesterday . . . ”. Those articles which range in between are overwhelmingly to like effect.

Internet use

45.  There is another aspect of the Applicant’s evidence which requires consideration. At paragraph 55 (e) of the first Andrejic Declaration (at pages 16-18) together with the Exhibits therein referred to, the issue of Internet use is raised. In particular, the expression “Mackay Airport” is identified as being part of the Applicant’s domain name and as appearing on the Applicant’s web site as well as on a number of third-party web sites. The issue which then arises is whether use of the expression “Mackay Airport” as part of a domain name or on Internet sites constitutes use as a trade mark.

46.  The issue of Internet use and domain names is considered in established decisions such as Ward Group Pty. Limited v. Brodie and Stone Plc (2005) 64 IPR 1, Deutsche Telekom AG v. E! Entertainment Television Inc. (2006) AIPC 92-204, Sports Warehouse, Inc .v. Fry Consulting Pty. Limited (2010) AIPC 92-388 at paragraphs 141-156 and Solarhart Industries Pty. Limited v. Solar Shop Pty. Limited (2011) AIPC 92-422 at paragraph 48-62 where Justice Perram found that use of a domain name may constitute trade mark use (paragraph 53) and that each use of the expression SOLARHUT on the relevant website was trade mark use (paragraph 45) while at the same time use of a domain name merely to identify the name of a file accessed at the site is not trade mark use (paragraph 53). This issue is further discussed by Justice Reeves both in Mantra Group Pty. Limited v. Tailly Pty. Limited (No. 2) (2010) AIPC 92-376 at paragraph 50 (g) and in Edgetec International Pty. Limited v. Zippykerb (NSW) Pty. Limited (2012) FCA 281 where (at paragraph 24) it is said that use of a domain name to redirect potential customers to a website displaying one’s goods and services is analogous to using those words as a sign on the front of a shop to indicate the goods or services that are sold within. Conversely, in Matzka v. The Mind Gym Limited (2006) AIPC 92-170 the registration and use of the domain name “hhtp:// was not considered in itself to constitute use of the trade mark “mindgym”.

47.  In the present matter, the relevant context is one where the expression “mackayairport” appearing within the domain name can be said to be a descriptive use in the sense that it is a use of everyday English words to describe or indicate the location or site where the relevant services are provided or to which those services relate. As such, this kind of descriptive use (as with the expressions “Zippykerb” or “Kwik Kerber”) is arguably not trade mark use. Moreover the domain name is not the same as the Applicant’s trade mark “Mackay Airport” because it is specifically identified as being a domain name rather than anything else. That domain name is no more than an address on the Internet which provides a link to the Applicant’s website (in the same way as a name in a telephone directory will lead an enquirer to the telephone number or address of a particular party). Even though the trade mark can be said to appear within the domain name, that connection is too remote to constitute trade mark use. Or, putting the essential problem in a different way and paraphrasing the words of Justice Dodds-Streeton in Fry Consulting Pty. Limited v. Sports Warehouse Inc. (No. 2) (2012) AIPC 92-436 at paragraph 132, while it has been held that a domain name can in some circumstances constitute use of a trade mark, in this instance there is no evidence before me to establish that as at the priority date the “Mackay Airport” trade mark had acquired a reputation through use of the domain name among any consumers or any significant section of the public.

48.  The supporting evidence fails to demonstrate that the expression “Mackay Airport” has been used as a trade mark (see Justice Sundberg in Chocolaterie Guylian NV v. Registrar of Trade Marks (2009) AIPC 92-355 at paragraph 87). The evidence which has been put forward does not establish that the general public sees the expression “Mackay Airport” as a badge of origin. Evidence of an association between a sign and a service provider will not necessarily mean that members of the public rely on the signage to identify the origin of the services. By way of example the evidence which is given of the expression “Mackay Airport” appearing extensively in newspapers and publications as well as in the printed materials (timetables, ticketing and promotional materials) of third parties has the effect of indicating a dilution of any trade mark significance that might otherwise be said to attach to that expression. Moreover, the Applicant does not of itself provide many of the designated services (for example, an airline, or car hire, or a weather station as observed by the examiner). Rather, the Applicant provides a venue or facility whereby these services are able to be provided by third parties. The evidence as furnished shows that the words “Mackay Airport” are used descriptively and generically, as has been maintained by the Examiner.

49. Section 41(6) of the Act requires an applicant to establish at least two things: first, that there has been use of the trade mark that is the subject of the application before the filing date, being, of course, use as a trade mark; and, secondly, that because of the extent of that use before the filing date the trade mark does distinguish the designated goods or services as those of the applicant (see Woolworths Limited v. BPplc, op. cit., at paragraph 72). In any other instance, the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

1. I do not consider that the Applicant has adduced suitable or adequate evidence as would allow the conclusion to be drawn that the expression “Mackay Airport” has been used as a trade mark by it or that members of the public would treat the expression “Mackay Airport” as a badge of origin. The supporting evidence does not establish that the words “Mackay Airport” had by the Priority Date acquired a discernible connection with the Applicant. Rather, any connection with Mackay Airport would be generally understood descriptively or generically as indicating a location, site or destination. As such, the use which is established is a descriptive form of use and not a use indicating relevant commercial origin. Accordingly, in the present instance I am unable to find that the words “Mackay Airport” have been used as a trade mark by the Applicant in the requisite sense and to a sufficient extent as to satisfy the requirements of Section 41(6).

51. In this instance the evidence which has been provided, while extensive in volume, fails to establish that the Trade Mark meets the requirements of Section 41(6) or qualifies for acceptance pursuant to that provision.

Ownership

52.  There is another aspect of this matter which is troubling to me. Having regard to the evidence which is before me, I experience the real doubt that the Applicant can properly be said to be the owner of the “Mackay Airport” trade mark. By its own admission, the Applicant is not the owner of the Mackay Airport premises and facilities but rather its rights are limited to those of a sub-licensee. In this regard, there are two formal documents which are of particular relevance, namely:

·     the Head Lease (the date of which is not established by the evidence) which has been entered into between Queensland Airport Holdings (Mackay) Pty. Limited (A.C.N. 132 296 327) (as Lessor) and North Queensland Airports No. 3 (Mackay) Pty. Limited (A.C.N. 134 250 454) in its capacity as Trustee of the Mackay Airport Property Trust (as Lessee). A copy of this document (in executed but undated form) is Exhibit 9 to the second Andrejic Declaration; and

·     the Sub-Lease between North Queensland Airports No. 3 (Mackay) Pty. Limited in its capacity as Trustee of the Mackay Airport Property Trust (as Licensee) and Mackay Airport Pty. Limited (as Sub-Licensee). This document, dated 10 December 2008, is also in evidence as Exhibit 10 to the second Andrejic Declaration.

53.  The Head Lease grants a lease in respect of the “Airport Site” (and described as being a “lease of the premises”) from the Lessor to the Lessee commencing from 10 December 2008 and extending for a term of ninety-nine years with the relevant consideration being in the form of a “peppercorn” rent per annum together with a “premium”. Clause 24.2 of the Head Lease provides that the Licensee may appoint a body corporate approved by the Licensor to be the Airport Manager to operate and manage all or part of the Mackay Airport. So, by virtue of the Head Lease, the means is put in place whereby the Applicant is able to be appointed as the Airport manager and its services are limited to those matters pertaining to the management of the business and the conduct of the Airport. It follows that the Applicant is to be regarded as the third party in the chain of title and that such rights as it might have are not those of the owner. Moreover, presumably the Applicant (as Sub-Lessee) owes a fiduciary duty both to the Lessor (or Licensor) and to the Lessee (or Licensee). On this reasoning, ownership of the “Mackay Airport” trade mark should be held by the Head Lessor with appropriate rights being granted to the Applicant as Sub-Licensee or permitted user. This construction on my part is arrived at from the terms of the Head Lease document as I understand them.

54. Neither the Head Lease nor the Sub-Lease makes any direct reference, either express or implied, to the “Mackay Airport” trade mark (which nonetheless must presumably remain as a key asset). However there is specific provision for the ownership of all property (primarily meaning “real property”) to remain vested in favour of the Head Lessor. By inference, it can reasonably be presumed that the same rights would be intended to include the Trade Mark. Moreover, in Clause 22 of the Head Lease provision is made for a “Call Option” in favour of the Lessor and which confers on the Lessor the right to purchase the “Option Assets”. That term is stated to include “the Other Airport Assets” which in turn is defined to include “all other tangible personal property used by the Lessee in connection with the management, operation or maintenance of the Core Airport Infrastructure [as defined in the Airports Act] together with the Lessee’s interest in any computer programs, computer systems, technology or intellectual property used in connection with the management, operation or maintenance of the Airport” (see Clause 22.1(l)). In this wording, there is an apparent conflict between the expressions “tangible personal property” and “intellectual property” since the latter is generally regarded as being in the nature of intangible or incorporeal personal property.

55.  Clause 22.3 of the Head Lease provides that the Call Option may be exercised by the Head Lessor at any time during the Call Option Period (that is, within six months of the date of termination). There is no corresponding provision in the Sub-Lease. The reasonable inference which it is open for me to draw is that the intention is for the “Mackay Airport” trade mark and the rights (including ownership) in respect of same to remain vested in the entity Queensland Airport Holdings (Mackay) Pty. Limited as Head Lessor and Licensor since no provision to the contrary is expressed in the documentation so far as it is available to me. As such, it would seem appropriate that any application for registration of the trade mark “Mackay Airport” should be made in the name of the Head Lessor and with the rights of the Applicant being those of a permitted user or sub-licensee.

56.  There is another aspect of the ownership issue. In the supporting evidence, there appears a section under the heading “History of the Applicant and succession of title of Mackay Airport” (see the first Andrejic Declaration at paragraphs 4 to 13). That heading is misleading. The relevant paragraphs do not relate to the history of the Applicant (which only came into existence on 1 September 2008) but rather they give the history of the Airport (which is by no means the same thing).

57. Further, the Applicant repeatedly makes reference to the expressions “successors in title” (as in the first Andrejic Declaration at paragraph 20) or “predecessors in title” (see the second Andrejic Declaration at paragraph 16 and the written submissions at paragraphs 23 and 31). The term “predecessor in title” appears in Section 41(1) of the Act which provides that for the purposes of Section 41 the use of a trade mark by a predecessor in title of an applicant is taken to be a use of the trade mark by the applicant. Further, in Section 6 of the Act the expression “predecessor in title” is defined as follows:

Definitions

(1)  In this Act, unless the contrary intention appears:

"predecessor in title" , in relation to a person who claims to be the owner of a trade mark, means:

(a)  if the trade mark was assigned or transmitted to one or more than one other person before it was assigned or transmitted to the first-mentioned person--that other person or any one of those other persons; or

(b)  if paragraph (a) does not apply--the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first-mentioned person.

Note:          In the case of a trade mark that is neither registered nor the subject of an application for registration, the trade mark may be assigned or transmitted in Australia only in conjunction with the goodwill of a business concerned with the trade mark. If the trade mark is registered or the subject of an application for registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business.

As well, I refer in passing to Mantra IP Pty. Limited v. Spagnuolo (2012) 96 IPR 464 at paragraphs 24 and 88-92.

58.  I do not regard the Applicant as being the successor in title to the “Mackay Airport” trade mark. It seems to me that in this instance there is no direct line of succession and no continuity of title in favour of the Applicant. Clearly, there has been use of the “Mackay Airport” trade mark by the relevant prior owners of that facility but such use by them does not apply to the present situation. In this regard, I note that the Applicant commenced as from 1 September 2008 and that it did not exist prior to that date. The Applicant was established for the specific purpose of taking on the function of operating and managing Mackay Airport and its related facilities: it is essentially a management or service company. In the history of Mackay Airport, that appointment has taken place and occurred as a completely asynchronous, disjunctive and discontinuous event. The Applicant is not properly entitled to maintain a claim that it is the natural successor to the line of ownership. Such rights as the Applicant possesses in respect of the “Mackay Airport” trade mark are granted by way of sub-licence from the Head Licensor as owner and via the Licensee. In this instance, there has been no assignment or transmission of rights to the Applicant and there cannot be said to exist continuity of ownership or an unbroken chain of title in favour of the Applicant. The “predecessors in title” submission might arguably apply to the Head Lessor as owner, but it is difficult to sustain the contention that this submission extends to include the Applicant, a party which has not even been established as being a permitted user of the Trade Mark. For my part, I do not allow that in support of its application the Applicant can draw upon or place reliance on the prior use of the “Mackay Airport” trade mark by other parties.

59.  In the event, at most the Applicant can claim rights only as from 1 September 2008 (being the date of its formation) to 21 October 2009 (being the Priority Date). The supporting evidence which is available in respect of that period is not sufficient to establish the Applicant’s argument that the “Mackay Airport” trade mark is distinctive of the designated services of the Applicant.

Findings

60.  The expression “Mackay Airport” as a word mark fails to distinguish the services of the Applicant because it is likely to be required for use by many different parties (including members of the public). That expression cannot be said to be to any extent inherently adapted to distinguish the services of the Applicant. Apart from the Applicant, there is a multiplicity of other persons who potentially seek to use the expression “Mackay Airport” in a descriptive sense and in relation to services which correspond to the designated services appearing in the application. As was indicated in Colorado Group Limited v. Strandbags Group Pty. Limited (2007) 74 IPR 246, such use by persons other than the Applicant weighs heavily against the conclusion that the expression “Mackay Airport” distinguishes the services of the Applicant from the corresponding services of other parties.[9]

[9] In the Colorado case, Justice Kenny stated (at paragraph 29): “I agree in substance with Allsop J that it is likely that another trader will want to use the word “Colorado”, legitimately, with regard to his goods [or services], for the sake of the geographical reference which it is inherently adapted to make or the connotations that the geographic reference invokes. Accordingly, I agree in the conclusion of Gyles and Allsop JJ that the word “Colorado” alone is not inherently adapted to distinguish the designated goods or services of the first appellant from the goods or services of other persons.”

61. Further, the “Mackay Airport” trade mark is not adapted to distinguish because it is descriptive of the character of those services which are designated by the Applicant. That expression inherently refers to the conduct of airport services at Mackay. It does of and in itself describe those services in respect of which registration is sought. As such it is either descriptive in so doing or it is misdescriptive. In either event, the present application fails to satisfy the requirements of Section 41.

62. Having regard to those reasons which are expressed above, and allowing for the fact that the Applicant has argued forcefully that the present application should be allowed to proceed to acceptance, I am not persuaded or convinced by those submissions which have been put. I find that the word mark “Mackay Airport” has no inherent adaptability to distinguish and that the correct approach in this instance is to apply the provisions of Section 41(6) rather than 41(5). The “Mackay Airport” trade mark fails to satisfy the requirements of Section 41(6) and in turn of Section 41(2) and (3). As such, I reject the present application.

Decision

63. Section 33 of the Act provides as follows:

Application accepted or rejected

(1)  The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)  the application has not been made in accordance with this Act; or

(b)  there are grounds under this Act for rejecting it.

Note:   For this Act see section 6.

(2)  The Registrar may accept the application subject to conditions or limitations.

Note:   For limitations see section 6.

(3)  If the Registrar is satisfied that:

(a)  the application has not been made in accordance with this Act; or

(b)  there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note: For this Act see section 6.

(4)  The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note: For applicant see section 6.

I have earlier indicated my finding that the trade mark “Mackay Airport” is devoid of inherent adaptation to distinguish the services claimed in the application, and that I am not satisfied that the evidence as provided allows the provisions of Section 41(6)(a) of the Act to be applied. Accordingly, and subject to the expiry of any relevant appeal period, I reject the “Mackay Airport” trade mark application No.1327087.

John Spence
Hearing Officer
Trade Marks Hearings
13 March 2013