Major Intellectual LLC
[2022] ATMO 87
•31 May 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe: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
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’).
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’).
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
Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Services of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Services, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Services, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that it did not in fact distinguish the Services based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the combined effect of the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Services (s 41(4)).
The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:
His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say 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 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.[2]
[2] (1964) 111 CLR 511, 514.
In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[3]
[3] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).
The basis for the examiner’s objection is that the ordinary signification of CARBONE in Australia is as a surname, and that others with that surname may legitimately desire to use CARBONE in relation to the Services. The examiner’s Search for Australian Surnames (‘SFAS’) enquiry found that CARBONE appeared 1,377 times on the Australian electoral roll.
The Applicant submits, and I accept, that in order to be prima facie registrable “there is no statutory requirement that a trade mark comprising a surname must have less than a particular number of persons with that surname in Australia”. The raising of a ground for rejection based solely on the number of times a surname appears on the electoral roll has been held to be ‘devoid of any legal justification’.[4] In Re Vectura, Hearing Officer Brown summarised the relevance of SFAS information in determining the capacity to distinguish of a trade mark consisting of a surname:
The consideration as to whether a trade mark containing or consisting of a surname is capable of distinguishing is multifaceted; the SFAS value is but one of the relevant factors. Other factors that should be taken into account include any alternate meanings of the word/s, the nature of the designated goods or services and whether it is common for traders in those goods or services to use their surname as a trade mark.[5]
[4] Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd [1998] FCA 689 (Wilcox J).
[5] [2016] ATMO 77.
In Henley Arch Pty Ltd v Henley Constructions Pty Ltd (‘Henley Arch’),[6] Anderson J considered the capacity to distinguish of the surname HENLEY in relation to building and construction services. That surname (and its alternative, HENLY) appeared on the electoral roll approximately 884 times. The evidence in that case also showed that several persons with that surname were licensed builders or building contractors. Further, the evidence established that there were numerous geographical locations in Australia named ‘Henley’. In relation to its meaning as a surname, Anderson J said “I accept Henley Constructions submission that people with surnames containing or consisting of Henley or Henly would reasonably want to use the mark ‘HENLEY’ or ‘Henly’ to describe the services which they provide.”[7] His Honour later said (in the context of considering Henley as the name of various geographical locations) that “The commonality of the goods and services provided is to be considered as well as the commonality of the name.”[8] Considering its ordinary signification as both a surname and the name of numerous geographical locations, Anderson J concluded that, without more, HENLEY was a non-distinctive mark.[9] However, his Honour also concluded that HENLEY had become capable of distinguishing at the priority date due to extensive use.[10]
[6] [2021] FCA 1369 (‘Henley Arch’).
[7] Ibid, [816].
[8] Ibid, [818].
[9] Ibid, [824].
[10] Ibid, [825]-[829].
The Applicant contends that a decisive factor in Henley Arch was the geographical reference inherent in the mark, a consideration which does not exist in this case. While I agree that the geographical reference was an important consideration in Henley Arch, it does not follow that Anderson J would have found HENLEY to be inherently adapted to distinguish had its only ordinary signification been as a surname. It was accepted by Anderson J that Henley was a surname, and that people with surnames containing or consisting of Henley would reasonably want to use it to describe their services. The logical extrapolation from these findings is that, notwithstanding its geographical meaning, Anderson J would still likely have concluded that the trade mark was not sufficiently inherently adapted to distinguish to have been prima facie registrable.
In Re Garrett Electronics Inc,[11] Hearing Officer O’Brien considered the capacity to distinguish of the trade marks GARRETT METAL DETECTORS and GARRETT in relation to metal detectors. The surname GARRETT appeared 1,983 times on the Australian electoral roll. In deciding that the Trade Mark was sufficiently inherently adapted to distinguish, Hearing Officer O’Brien said:
In order to determine how common is the business of manufacturing metal detectors in Australia, I conducted a Google search for ‘metal detector manufacture australia’. The search found three Australian based manufacturers, Minelab, TSS Co and ABM Metal Detectors.
As to whether it is common for traders in a particular industry to use their surname as a trade mark, for goods with which I am familiar such as clothing and wine, it is not uncommon for clothing designers and winemakers to do so although it appears to be more common for them to use their full name. I am not familiar with the goods of the present application and research was required on my part to find out what is common to the trade. An article on metal detection at identified 23 manufacturers of metal detectors located in various parts of the world. Five of the US based manufacturers, namely White’s Electronics, Fisher Lab, Garrett Metal Detectors (the holder), A.Gavalas & Co and Tesoro Electronics, use a trade mark containing a surname. The surnames are those of the founders of the respective businesses.
Thus my determination of the ordinary signification of Garrett for those persons who purchase, use or trade in metal detectors is based on the following facts:
- there are approximately 2000 adult Australians with the surname Garrett;
- the manufacture of metal detectors is not a common business in Australia;
- some of the manufacturers of metal detectors based in the United States use the surname of the founder of their business as a trade mark but this does not appear to be common practice in Australia for this industry.
I consider it highly unlikely that a person or persons with the surname Garrett will be manufacturing metal detectors in Australia and consequently I am satisfied that for those who purchase, use or trade in those goods the ordinary signification of Garrett is that of the name of a specific provider of those goods. In other words, Garrett is not a surname that is common to the trade or part of the common heritage. It is an indicator of trade source and capable of distinguishing the holder’s metal detectors from those of other traders.[12]
[11] [2015] ATMO 44.
[12] Ibid, [27] – [30].
I am satisfied that the ordinary signification of the Trade Mark is a surname of Italian origin. While Carbone only appears 1,377 times on the Australian electoral roll, I can logically infer that in addition to persons with the surname Carbone, there are many other people who have interacted with those persons in some way and who would therefore recognise Carbone as a surname. Further, while I accept that Carbone means ‘coal’ in Italian, this is only likely to be known to those Australians who speak Italian, many of whom would recognise Carbone as also being a surname. Having determined the ordinary signification of the Trade Mark, I must now consider whether there is a legitimate desire by other traders to use the Trade Mark having regard to its commonality as a surname and the nature of the Services.
Judicial notice can be taken of the fact that Italian cuisine is very popular in Australia.[13] It is also a matter of common knowledge that Italian restaurants are often (although not exclusively) operated by persons of Italian heritage. Italian restaurants are ubiquitous throughout Australia, ranging from cafes to more prestigious fine dining establishments. Australia is also home to numerous Italian restaurants that have achieved international recognition.[14] I also note that in recent years there have been a proliferation of temporary pop-up style restaurants and food vans that present a lower barrier of entry to the restaurant industry compared to traditional establishments.
[13] To the extent that any support for this statement is required, I note that an article published on the Roy Morgan website in 2019 indicates that Italian was the second most popular cuisine among Australians in 2017-2018 - ‘Chinese cuisine most popular, but Aussies still love McDonald’s’ (Webpage, 15 February 2019) <
[14] Davide Schiappapietra & Francesca Valdinoci, ‘Four of the world's best Italian restaurants are in Australia, say critics’ (Website, 2020) <
I consider, given the popularity and ubiquity of Italian cuisine in Australia, and the overall commonality of restaurant services, that persons of Italian heritage may wish, without improper motive, to use their surname in relation to restaurant and bar services that offer Italian style food and beverages. This group of Australians includes the not insignificant number with the surname Carbone. While the surname Carbone does not appear to be as common as other Australian surnames such as Smith, Brown, or Lee, it also does not appear to be especially rare. I also note that Carbone appears to be more prevalent as a surname than ‘Henley’ considered in Henley Arch. Further, the restaurant and bar services under consideration in this case are at least as common (probably more so) than the building and construction services considered in Henley Arch. While I acknowledge that the decision in Henley Arch was made based on the significance of Henley as both a surname and geographical location, Anderson J clearly accepted that other persons with the surname Henley would wish to use the trade mark to describe their services. Applying similar reasoning in this case, I am satisfied that the Trade Mark has some inherent adaptation to distinguish but is not sufficiently inherently adapted to be prima facie registrable.
Given that the Trade Mark has some degree of inherent adaptation to distinguish, it falls to be considered under s 41(4). Section 41(4) requires that I consider whether the Trade Mark does or will distinguish the Services (as at the Relevant Date), having regard to the combined effect of its level of inherent adaptation to distinguish, its use or intended use, and any other circumstances.
The Applicant contends that the use of the Trade Mark on the Website and the ability of Australian consumers to make a restaurant booking via the Internet (with such bookings by Australians having occurred since 2015) constitutes use of the Trade Mark in Australia. The Applicant refers to the making of reservations as a crucial integer in the trade, citing Carnival Cruise Lines Inc v Sitmar Cruises Limited (‘Carnival’), where Gummow J said:
It is appropriate now to consider more closely the nature of the arrangements pursuant to which bookings were made from Australia for Carnival cruises. Both Coulter Tours and Cruise World were appointed by Carnival as a general sales agent "on a non-exclusive basis". These firms were obliged to accept reservations from travel agents and to pass them on to Carnival on an "on request" basis. Final payment was to be received by Carnival in Miami 30 days before the departure date of the cruise in question. The gross commission of 20% received from Carnival by Coulter Tours or Cruise World was the only remuneration paid by Carnival; commissions to the local travel agents who dealt with the general sales agent were to be paid by the general sales agent out of that 20% commission. The local agent would contact the general agent seeking a particular booking for clients. The general agent would then forward the request to Carnival. The result would then be communicated by the general agent to the local agent, giving particulars of payment requirements and stating to the local agent that the reservation had been accepted. Carnival billed the general agent which in turn billed the local agent. The effect of the procedures was that the general agent brought about a contract made by it on behalf of its principal, Carnival, with the local agent on behalf of the passengers. The evidence indicates that in many cases, in the interval between the initial inquiry and the conclusion of the contract, there might be a number of communications on such matters as the location of available cabins.
Thus, whilst the course of trade involved the provision of the services contracted for by steps taken outside Australia (i.e. the cruise itself) crucial integers in that course of trade took place in Australia. The trade commenced with the various steps taken to encourage inquiries from prospective customers and advanced with the placing and acceptance of bookings. In relation to that course of trade, the marks "Fun Ship" and "Fun Ships" were used so as to indicate the connexion between Carnival and the services to be provided by means of its cruises, and to distinguish Carnival Cruises from those operated by other traders. Accordingly, in my view, before the dates of the relevant applications by Sitmar, there had been public use in Australia of "Fun Ship" and "Fun Ships" as trade marks so as to confer upon Carnival the statutory status of "proprietor" of those trade marks, within the sense of the High Court authorities to which I have referred. Thus, I would not accept the first of the three submissions by Sitmar on the proprietorship issue.[15]
[15] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 68, [55]-[56] (‘Carnival’) (citations omitted).
The Applicant also cites the decision in Aobao International Pty Ltd v Action North American, Inc. (‘Aobao’) where Hearing Officer Thompson, commenting on Carnival, said:
His Honour’s remarks were made in 1994 before the widespread adoption of the Internet. However, in the circumstances before me, the Holder’s website was freely accessible to Australians and Australians ordered from it. To draw an analogy from pre-Internet times, the website functioned much like a paper catalogue to which Australians had access; it resulted in the placement and the acceptance of orders by Australians from Australia on an ongoing basis.[16]
[16] [2018] ATMO 133, [32] (‘Aobao’).
I note that in Aobao the evidence established that the Holder of the trade mark had in fact made sales of goods directly to Australian consumers and the evidence also implied ongoing sales to Australians over a period of time.
The Applicant also refers to the decision in Hilton Worldwide Inc v Waldorf Australia Group Pty Ltd (‘Waldorf’), where Hearing Officer Thompson, citing Carnival, considered that the booking of rooms in the Waldorf Astoria and Waldorf Towers hotels in New York by Australian consumers via travel agents or via an online booking facility was sufficient to constitute use of Waldorf trade marks in Australia.[17]
[17] [2013] ATMO 20, [22] (‘Waldorf’).
Generally, the use of a trade mark on a foreign website accessible to Australian consumers is not sufficient in itself to constitute use of a trade mark in Australia. In Ward Group Pty Ltd v Brodie & Stone Plc, Merkel J said:
In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.[18]
[18] [2005] FCA 471, [43].
The evidence does not show that the Applicant has specifically directed or targeted the Services offered under the Trade Mark at Australian consumers. Many restaurants facilitate online reservations, either through their own website or through specialised booking providers. Such reservations are generally easy to make and do not requirement any tangible commitment (such as the payment of a deposit). Without more, the use of a Trade Mark on a foreign restaurant website with a booking facility is nothing more than an offer to the world at large. I consider, from the perspective of an Australian consumer, that the crucial integers in the provision of services from a restaurant located in a foreign country either take place at the restaurant itself or when food is ordered for delivery to a location in the foreign country. This is to be contrasted with the purchase of cruise services (as in Carnival) and booking of accommodation (as in Waldorf), which are more significant transactions. The booking of cruise and accommodation services often occurs a significant time in advance of travel and may often require payment up front (either in full or a deposit). Even when up front payment is not required, there is usually a deadline by which cancellation must be made before a cost is incurred. Providers of hotel accommodation (particularly in famous hotels) and cruise services are also more likely to focus on international customers when compared to providers of restaurant services, as such international customers would form a significant part of their target market.
On the current facts, I am not satisfied that the Applicant has used the Trade Mark in Australia. Even if I am incorrect on this point and the uses of the Trade Mark relied on by the Applicant are sufficient to constitute use in Australia, both the extent of Australian specific use by the Applicant and the level of likely recognition of the Trade Mark by Australian consumers are relatively modest. The evidence also does not show either any definite intention to use the Trade Mark in relation to Australian restaurants or plans by the Applicant to specifically target Australian consumers to entice them to visit the Applicant’s overseas restaurants.
I agree with the Applicant that the reputation in Australia of a trade mark that has been used overseas is a relevant consideration under s 41(4). I also accept that there is probably some level of recognition of the Trade Mark amongst some Australian consumers, particularly those who have visited the Applicant’s restaurants in the USA, those who follow the Applicant on social media, and those who have read one of the online reviews or media articles that refer to the Applicant’s restaurants.
However, occasional references in Australian media to the Trade Mark must not be given undue weight. There are many travel articles published in mainstream and other media on a regular basis. The focus of these articles is often attractions and places of interest (including restaurants) in foreign cities. I accept that some restaurants may attract regular and sustained media attention which significantly contributes to reputation in Australia. However, this is more likely to be the exception than the rule. Normally, most readers are unlikely to remember all or even most restaurants mentioned in various travel articles they read from time to time. Further, even if a consumer does recall a particular foreign restaurant from a media article, it does not necessarily follow in ordinary circumstances that they would associate that foreign restaurant with a similarly named restaurant in Australia. A connection is more likely to be made where the operator of a restaurant that is well known in another country announces plans to open a corresponding restaurant in Australia, as such openings will often be heavily promoted and create some anticipatory hype amongst Australian consumers.
On balance, considering the extent and nature of use of the Trade Mark, I do not consider that the likely level of recognition of the Trade Mark in Australia equates to a reputation amongst an appreciable number of Australian consumers, particularly considering that the target market for the Services is potentially the entire Australian adult population.
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 Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks
31 May 2022
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