Major Intellectual LLC

Case [2022] ATMO 87

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2112459 (Class 43) – CARBONE – in the name of Major Intellectual LLC.

Delegate: Blake Knowles
Representation: Applicant: Shauna Ross of counsel instructed by King & Wood Mallesons.
Decision: 2022 ATMO 87
Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – s 41 considered – trade mark rejected.

Background

  1. This is a decision on examination of trade mark application number 2112459 (‘Application’) filed by Major Intellectual LLC (‘Applicant’). The Application was filed on 18 August 2020 (‘Relevant Date’). The Application is for the trade mark CARBONE (‘Trade Mark’) and seeks registration in respect of Class 43: Restaurant services; bar services (‘Services’).

  2. As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined. The examiner raised a ground for rejection under s 41 on the basis that the Trade Mark was not capable of distinguishing having regard to the matters set out under s 41(4). The Applicant subsequently filed submissions and evidence in response. The examiner maintained the ground for rejection, and the Applicant requested a hearing.

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

  3. The matter was heard by me, as a delegate of the Registrar of Trade Marks, by videoconference on 2 May 2022. The Applicant was represented by Shauna Ross of counsel instructed by King & Wood Mallesons. I have formed my decision based on the material on file, including written submissions and evidence, and the oral submissions presented at the hearing.

    Evidence

  4. The Applicant relies on two declarations by Sarah Goddard, solicitor of King & Wood Mallesons, dated 2 March 2021 (with Exhibits SG-01 to SG-05) and 28 April 2022 (with Exhibits SG-1 to SG-11).

  5. Ms Goddard declares that the Applicant operates a website (‘Website’) to advertise and promote the Services. Ms Goddard annexes Internet Archive Wayback Machine extracts which confirm the Website has operated since 2013, and that a ‘Reservation Tab’ was introduced at some point in late 2013. Ms Goddard also annexes confidential website analytics which indicate that there have been visits to the Website from Australians in a five-month period falling between 2021 and 2022. Ms Goddard also provides additional information and analytics regarding Australian visitors for another website where the Applicant sells pasta sauces.

  6. Ms Goddard declares that the Applicant operates an Instagram account (under the handle @majorfoodgroup). The account as of 19 April 2022 had over 115,000 followers. Annexed to the declaration are screenshots which indicate that the Trade Mark is promoted via the Instagram account. Ms Goddard also provides confidential analytics which indicates that the Instagram account has an audience in Australia.

  7. Ms Goddard annexes extracts from websites TripAdvisor, Facebook, and…

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Details
AGLC
Major Intellectual LLC [2022] ATMO 87
Case
[2022] ATMO 87
Decision Date

CaseChat Overview and Summary

This matter concerned an application by Major Intellectual LLC for registration of the trade mark CARBONE in Class 43, heard by Blake Knowles, delegate of the Registrar of Trade Marks. The dispute arose from the Applicant's attempt to register the trade mark for services including the provision of food and drink, and temporary accommodation.

The primary legal issue before the delegate was whether the trade mark CARBONE was capable of distinguishing the Applicant's services in Australia, as required by the *Trade Marks Act 1995* (Cth). This involved assessing whether the trade mark possessed inherent adaptability to distinguish, whether there had been any use of the mark in Australia, evidence of intended use, and whether the mark had acquired an appreciable reputation amongst Australian consumers.

The delegate considered evidence of the Applicant's operations in the United States, including website analytics, social media presence, and media coverage in Australian publications. While this evidence indicated some awareness of the Applicant's restaurants in Australia, the delegate found that the trade mark had only a modest level of inherent adaptability to distinguish and that there was no significant use or reputation established in Australia. The delegate also noted that the word "carbone" translates to "coal" in Italian, which could have a descriptive connotation in relation to certain services.

Ultimately, the delegate concluded that the grounds for rejection under section 41 of the *Trade Marks Act 1995* were made out. Consequently, the Application for the trade mark CARBONE was rejected for all services.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The matter was heard by me, as a delegate of the Registrar of Trade Marks, by videoconference on 2 May 2022. The Applicant was represented by Shauna Ross of counsel instructed by King & Wood Mallesons. I have formed my decision based on the material on file, including written submissions and evidence, and the oral submissions presented at the hearing. Evidence The Applicant relies on two declarations by Sarah Goddard, solicitor of King & Wood Mallesons, dated 2 March 2021 (with Exhibits SG-01 to SG-05) and 28 April 2022 (with Exhibits SG-1 to SG-11). Ms Goddard declares that the Applicant operates a website (‘Website’) to advertise and promote the Services. Ms Goddard annexes Internet Archive Wayback Machine extracts which confirm the Website has operated since 2013, and that a ‘Reservation Tab’ was introduced at some point in late 2013. Ms Goddard also annexes confidential website analytics which indicate that there have been visits to the Website from Australians in a five-month period falling between 2021 and 2022. Ms Goddard also provides additional information and analytics regarding Australian visitors for another website where the Applicant sells pasta sauces. Ms Goddard declares that the Applicant operates an Instagram account (under the handle @majorfoodgroup). The account as of 19 April 2022 had over 115,000 followers. Annexed to the declaration are screenshots which indicate that the Trade Mark is promoted via the Instagram account. Ms Goddard also provides confidential analytics which indicates that the Instagram account has an audience in Australia. Ms Goddard annexes extracts from websites TripAdvisor, Facebook, and Google which contain reviews of the Applicant’s restaurants from people identifying as Australians. Ms Goddard annexes various media articles, including from the Australian Financial Review, Business Insider Australia, Nine Honey Travel, Virgin Australia Travel, Escape and the Daily Telegraph which all refer to the Applicant’s restaurants. I note that the Australian Financial Review article dated 14 October 2019 is titled ‘Is this New York’s ultimate steakhouse?’ and the Business Insider Australia article dated 19 April 2018 is titled ‘15 under-the-radar restaurants where you’re most likely to dine next to a billionaire’. Also annexed are various articles from overseas publications. Ms Goddard also provides:·confidential information regarding the Applicant’s significant revenue derived from restaurants branded under the Trade Mark in New York, Las Vegas, Miami, and Dallas in the last five years. ·a copy of email correspondence with an Australian company that expressed an interest in distributing the Applicant’s products in Australia, and correspondence with a foreign company (with an office in Australia), that expressed a similar interest. ·an extract from the Australian Bureau of Statistics which indicates that as of 30 September 2020, the population of Australia was approximately 25.6m people. ·an extract from the Collins Dictionary showing that the Italian word ‘carbone’ translates to ‘coal’ in English. Discussion

Decision

Reasons for decision

In summary, I consider that (i) the Trade Mark has some level of inherent adaptation to distinguish in relation to the Services, (ii) there is no use of the Trade Mark in Australia (or, alternatively, that the extent of use has been modest), (iii) there is no evidence of intended use of the Trade Mark in relation to proposed restaurants or bars located in Australia, (iv) there is no appreciable reputation in the Trade Mark amongst a significant number of Australian consumers, and (v) there are no other relevant circumstances favouring acceptance. Having regard to the combined effect of all relevant factors, I am satisfied that grounds for rejecting the Trade Mark exist under s 41. Decision Under s 33(3)(b), if I am satisfied that there is a ground for rejection and the Applicant has been given an opportunity to be heard, then I must reject the Application. Therefore, I reject the Application for all of the Services. Blake KnowlesHearing OfficerDelegate of the Registrar of Trade Marks31 May 2022

Ratio Decidendi

Legal Principle Established

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