Major League Baseball Properties Inc v the National Magazine Company Limited - [2015] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by Major League Baseball Properties Inc to extension of protection of international registration designating Australia 1097869 (IR 829549) RED in Classes 16, 38 & 41 held by The National Magazine Company Limited

Delegate:	Michael Kirov
Representation:	Opponent: Relied on written submissions prepared by Spiro Pappas of Chrysiliou IP Holder: Represented by Griffith Hack, but opted not to appear or to rely on written submissions
Decision:	2014 ATMO 35 Regulation 17A.34 opposition: s 41 of the Trade Marks Act 1995 (pre-15 April 2013) considered – trade mark not inherently adapted to distinguish – insufficient use shown – extension of protection refused.

Background

Trade mark application number 1097869 is the Australian designation of an application under the Madrid Protocol by The National Magazine Company Limited (“the Holder”) to extend protection of the trade mark subject of its international registration 829549 to Australia (“the IRDA”). After examining the IRDA, IP Australia advertised on 14 June 2007 its intention to extend protection for goods in Class 16 and services in Classes 38 and 41. Major League Baseball Properties, Inc. (“the Opponent”) subsequently opposed this on 14 December 2007 pursuant to reg 17A.34 of the Trade Marks Regulations 1995 (“the Regulations”).
Relevant details of the opposed application are set out below:

Application Number: 1097869

Priority Date: 28 July 2005

Goods:Class 16: Printed matter, publications, newspapers and magazines, periodicals, books, posters, brochures, catalogs, almanacs; photographs
Services:Class 38: News agencies
Class 41:Editing services, publication of texts other than publicity texts, online electronic publishing of books and periodicals; organization of competitions (education and entertainment); photographs, photographic reporting; news reporters services;

Trade Mark: RED (“the Opposed Mark”)

For their evidence the parties rely on the following declarations:

Evidence in Support

▪ Michelle Gai Gorton made on 13 March 2009, with Annexures MG-1 and MG-2
▪ Lawrence William Greene made on 2 December 2011, with Exhibits A to V

Evidence in Answer

▪ Ian Birch made on 2 May 2013, with Exhibits IB-1 to IB-8

Ian Birch has held the position of “Editorial Development Director” with the Holder (trading as Hearst Magazines UK) since December 2011, but has worked with the Holder or its predecessors in title in various positions since 1998. He explains that:
4. [The Holder] was established by William Randolph Hearst in 1910. It is a wholly owned subsidiary of one of the world’s largest diversified media companies, Hearst Corporation. [The Holder’s] major interests include magazines, newspapers and business publishing, cable networks, television and radio broadcasting, internet business, TV production and distribution, newspaper features, distribution and real estate.
5. [The Holder] publishes 20 consumer titles, namely All About Soap, Best, Company, Cosmopolitan, Country Living, ELLE, ELLE Decoration, Esquire, Good Housekeeping, Harper’s Bazaar, House Beautiful, Inside Soap, Prima, Red, Real People, Reveal and Zest. [The Holder] publishes three magazines, Men's Health, Runner's World and Women's Health through Hearst-Rodale UK, a joint venture with Rodale Inc.
In particular, Mr Birch notes that the Holder produces a printed monthly magazine in the United Kingdom aimed at “women with a median age of 42” (“RED magazine”). He says that, “The print version of RED magazine has continuously been distributed in the UK and, amongst jurisdictions outside of the UK, in Australia since 1998” and he annexes a “spreadsheet detailing the number of print editions sold through news agents in Australia in the period of February 2007 to July 2012.”
As to “adoption and use of the trade mark RED,” Mr Birch says:
7. The RED magazine was launched in 1998 as a joint venture between Emap and Hachette. At that time I was charged with, amongst other things, developing a title for the new women’s magazine. I chose the trade mark RED as I considered it to be an apt word to express a mood, an energy and an excitement.
Mr Birch annexes “a selection of recent magazine covers of the Red magazine” (being one for each of the years 2006 to 2013) and says that, “The manner in which the trade mark is depicted on those covers has substantially remained unchanged since the magazine was launched in 1998.” The 2006 cover is reproduced below:

While most of the matters he mentions below took place well after the filing of the opposed application in 2005, Mr Birch adds that:
Additional elements have appeared in conjunction with the trade mark RED, for example:
a. the tagline FOR THE BEST THINGS IN LIFE since first publication in 1998. The tagline was removed from the cover page of the magazine between June 2008 and May 2009.
b. the (part) domain name online.co.uk, namely since December 2010.
c. the word DIRECT since first publication in 1998. The first RED DIRECT website was launched in 2004. RED DIRECT is now part of the website at >
Mr Birch also confirms that the Holder is the owner of the two Australian trade mark registrations detailed below, one divided out from the other, which date from 1998:

Registration Number: 757399

Priority Date: 15 January 1998

Goods:Class 16: Printed matter, printed publications, magazines, journals; periodical publications; newspapers; books; newsletters; guides; all of the above relating to lifestyle

Trade Mark:

(“the Holder’s RED Logo”)

Registration Number: 824308

Priority Date: Same as registration 757399

Goods:Class 9: Publications in electronic form relating to lifestyle supplied on-line from databases or from facilities provided on the Internet (including web sites); audio and visual recordings; CD-ROMs; CDIs, electronic publications; pre-recorded videos, discs, cassettes; all of the above relating to lifestyle
Services:Class 41: The provision of information relating to lifestyle including information provided on-line

Trade Mark: Same as registration 757399

Turning to the Opponent, Lawrence William Greene does not say what his connection is, although I note his “business address” is that of a well known firm of IP lawyers in New York and I accordingly assume he would be acting for the Opponent in a legal capacity. He provides details of the Opponent’s Australian and worldwide registrations for trade marks featuring the element REDS and of their use for many years in connection with an American Major League baseball team called the “Cincinnati Reds” (“the Club”) and the Club’s associated licensed merchandise. He says that:
This opposition is based upon (a) [the Opponent’s] senior trademark rights in Australia, namely, Australian Trademark Registration No. 595264 for the mark REDS and design, which registered on February 4, 1993 in Class 16 for “paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks” and Australian Trademark Registration No. 554894 for CINCINNATI REDS, which registered on April 30, 1991 in Class 16 for “printed matter including books, magazines, calendars and other publications; albums; photographs, posters, stickers, decalcomanias, labels not of cloth; paper and cardboard novelty items in this class including pennants; table covers/napkins/mats in this class; stationery including writing implements; cards in this class; teaching materials in the form of games; wrapping paper, paper tissues and all other paper goods in this class”; and (b) the worldwide fame and, in particular, the fame in Australia of the REDS club and the associated MLBP REDS Marks.[1]
[1] Mr Greene had earlier defined “MLBP REDS Marks” as “the trademarks and service marks comprising the word REDS alone and/or with other words and/or designs [as exhibited to the declaration] which are used to identify the goods and services associated with, relating to and/or promoting [the Opponent], the [Cincinnati Reds] Club and/or their affiliated and related entities.”
The matter was scheduled for hearing before me, as a delegate of the Registrar of Trade Marks, on 10 February 2015 in Sydney. However the Holder’s attorneys, Griffith Hack, advised via email on 14 January that neither they nor the Holder would be attending and that nor would the Holder be filing written submissions. The attorneys added that, “The [Holder] wishes to have the matter decided with reference to the evidence filed, which the [Holder] feels speaks for itself.”
On 27 January the Opponent’s attorneys filed written submissions prepared by its attorney Spiro Pappas in accordance with my earlier directions (“the Submissions”). However Mr Pappas subsequently advised via email on 6 February that the Opponent too had decided not to attend the hearing and “will instead rely on its written submissions and evidence filed in the proceedings.”

Grounds of Opposition and Onus

The Opponent’s Notice of Opposition lists a number of specific grounds corresponding to various provisions of the Trade Marks Act 1995 (“the Act”), although the Submissions confirm that only the grounds in the Notice based on sections 41, 42(b), 44 and 60 of the Act are pressed. That said, I have only found it necessary to address the Opponent’s s 41 ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities[2] and that, as indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[3] the relevant date at which the rights of the parties are to be determined is the filing date. In this case the relevant date is 28 July 2005 (“the Relevant Date”).

Discussion

[2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].

[3] (1954) 91 CLR 592 at 595.

Section 41

The ground based on s 41 of the Act is indicated in the Notice as follows:
The [Opposed Mark] is not capable of distinguishing the goods [sic] covered by the opposed trade mark application from the goods or services of other persons. Accordingly, the [Opposed Mark] must be refused pursuant to the provisions of Section 41 of the Act.
As from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. As noted in the Submissions, the Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[4] Accordingly the repealed section remains relevant here and all references to s 41 hereafter in this decision are to the section as it stood prior to its amendment, as set out below:
[4] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.

Trade mark not distinguishing applicant's goods or services

41.(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).

In Phone Directories Company Australia Pty Ltd v Telstra Corporation Ltd[5] (“YELLOW”), Murphy J noted “the correct approach to s 41” as follows:
[5] [2014] FCA 373 (11 April 2014); (2014) 106 IPR 281 at [155]-[156].
[155] A key consideration in s 41 is 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. In Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56–7 ; 40 IPR 498 at 504–5 [“Blount”], Branson J explained that s 41(3)–(6) are intended to control the process by which the registrar (and it follows the court) reaches a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the designated goods or services. Branson J construed the section to describe the appropriate process and I agree with her Honour’s approach.
[156] Sundberg J adopted the same approach to s 41 in Chocolaterie Guylian[6] at [9], succinctly describing the process as involving the following steps:
[6] Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60.
(a) The registrar must first “take into account the extent to which the trade mark is inherently adapted to distinguish” the relevant goods [or services] from the goods [or services] of others: s 41(3);
(b) If that consideration leads to a conclusion that the trade mark is capable of distinguishing the goods [or services] from those of others, then, so long as the registrar is not satisfied that any other grounds for rejecting the [application for registration] exist, she must accept the [application for registration] …;
(c) However, if the registrar is “unable to decide” whether the trade mark is capable of distinguishing the goods [or services] by the “inherently adapted” consideration alone, then either s 41(5) or s 41(6) applies: see s 41(4). Section 41(5) will apply if the registrar finds that the trade mark “is to some extent inherently adapted to distinguish the … 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 … goods [or services]”. By contrast, s 41(6) will apply if the registrar finds that the trade mark “is not to any extent inherently adapted to distinguish”.
(d) If the registrar finds the trade mark is to some extent inherently adapted (s 41(5)), the registrar is then required to consider whether the trade mark “does or will distinguish the … goods [or services] as being those of the applicant”, by taking into account the combined effect of the following three matters (s 41(5)(a)):
the extent to which the trade mark is inherently adapted to distinguish;
the use, or intended use, of the trade mark by the applicant; and
any other circumstances.
(e) After taking those matters into account, the trade mark is “taken to be capable of distinguishing the applicant’s goods [or services] from the goods [or services] of other persons” only if the registrar is “satisfied” that the trade mark in fact does or will so distinguish the goods: s 41(5)(b). If the registrar is not so satisfied, then the trade mark is taken not to be capable of distinguishing (see 41(5)(c)), a ground for rejecting the [application for registration] will thereby exist and the registrar is then required to reject the [application for registration] …
(f) In the alternative scenario that the registrar finds that the trade mark is not to any extent inherently adapted to distinguish (s 41(6)), then the trade mark is taken not to be capable of distinguishing the goods [or services] unless the applicant “establishes” that, because of the extent to which the applicant has used the trade mark prior to the relevant filing date of the application, the trade mark does in fact distinguish the goods [or services] as being those of the applicant: s 41(6)(a) and (b).
In accordance with Branson J’s analysis at 504 in Blount, the first issue which arises for consideration is that under s 41(3), namely “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”. Referring to a decision of a delegate of the Registrar, U.B. Natural Pty Ltd v Red Bull GmbH[7] (“Red Bull”), the Submissions maintain that the Opposed Mark contains no inherent adaptation to distinguish the Applicant’s designated goods or services. Other traders would, it is said, legitimately desire to use the word “red” in respect of their own similar goods and services.
[7] [2010] ATMO 106.

In Red Bull the essential question for determination was to what extent, if any, the trade mark shown below was inherently adapted to distinguish “energy drinks” in Class 32, the opposed application already having been voluntarily endorsed with a limitation of the mark to the colour red as indicated:

The Registrar’s delegate’s conclusion was that had the trade mark under consideration not been rendered in a somewhat unusual font and been limited to the colour red, then she would have agreed with the opponent that the trade mark contained no inherent adaptation to distinguish the goods (and accordingly that s 41(6) would then need to be considered). As the delegate put it at [42]-[43]:
The application was accepted at examination under the provisions of subsection 41(5). I am satisfied that the trade mark is not totally devoid of adaptation to distinguish, and therefore the provisions of that subsection are appropriate. While I do not find that the chosen font is particularly unusual, I consider that the combination of the type and the colour to which it is restricted is sufficient to remove the trade mark from being the word ‘red’ simpliciter. There is at least an amount of adaptation to distinguish within the trade mark as applied for.
However, I am also satisfied that the amount of adaptation to distinguish is slight, and quoting Justice Kenny again (paragraph 110):[8]
Since the trade mark … has a relatively low level of inherent adaptation to distinguish compared to many other marks, it will require a correspondingly higher level of use and other circumstances to satisfy the Court that it does or will distinguish the designated services see Chocolaterie Guylian at 88 [83]; Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; (2006) 154 FCR 165 at 177 [57] (Bennett J); Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51 at 59-60 [42] (Wilcox J); also Shanahan’s Australian Law of Trade Marks and Passing Off (Mark Davison, Tracey Berger and Annette Freeman; 4th edition; Lawbook Co; Sydney; 2008) (‘Shanahan’s’) at [25.650]. The less the mark is inherently adapted to distinguish, the more the actual use of the mark (or other circumstances) will be required to satisfy the Court that the trade mark does or will distinguish the designated services. … The evidence of use must be for the trade mark that is the subject of the trade mark application: Shanahan’s at [25.655] and Woolworths Ltd v BP Plc at 126-7 [121]-[123] (in relation to s 41(6)).
(Emphasis added by the Registrar’s delegate)
[8] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664.
The Submissions duly observe:
In stark contrast to [the trade mark in Red Bull], the [Opposed Mark] is merely the word RED simpliciter. The [Opposed Mark] is devoid of any adaptation to distinguish.
The Submissions go on to note that, pursuant to s 41(6) of the Act, the [Opposed Mark] is taken not to be capable of distinguishing the designated goods or services unless the Applicant “establishes” that, because of the extent to which the trade mark had been used before the Relevant Date, it did in fact distinguish those goods or services. After reviewing the evidence of claimed use of the Opposed Mark contained in Birch, with which review I essentially agree, the Submissions make the point that the only use in Australia shown since the relevant date is on the cover of the Red magazine and associated websites and that this is use of the Opponent’s RED Logo and not of the Opposed Mark in any event. Accordingly, it is submitted, the opposed application must be rejected in accordance with s 41(3) of the Act.
In YELLOW, Murphy J had similar submissions before him. He had to determine to what extent, if any, Telstra’s claimed (word) mark YELLOW was inherently adapted to distinguish, as his Honour put it, “broad classes of goods and services which include print and online telephone directories and related goods and services.” The relevant reasoning is set out at [162] to [234] of the judgment[9] and I will not repeat it all here. Essentially, though, Murphy J begins by considering several well known Federal Court decisions where applicants were seeking to register a particular colour per se as a trade mark, highlighting that the consensus in those decisions appears to be that such an application would inevitably fall for consideration under s 41(6). Of word marks denoting a colour, he similarly concluded at [170]:
[170] Of course, the present application is for a word denoting a colour rather than a colour itself. But, in my view it is difficult to draw a distinction between a word denoting a colour and a colour when dealing with the issue of a trade mark’s inherent capacity to distinguish.
[9] With his Honour’s principal reasons conveniently summarised at [178]-[185].
Murphy J’s ultimate finding was that Telstra’s claimed word mark contained no inherent adaptation to distinguish its goods or services of interest. He lists several specific reasons why he reached this conclusion at [178]-[185] of his judgment which I note appear equally applicable to the Opposed Mark. One of the reasons not applicable to the present matter (given at [181]-[183]) is based on there having been evidence before the Court that traders other than Telstra had in the past used the word “yellow” and/or the colour yellow both in Australia and overseas in relation to business directories. However, Murphy J does not suggest that this was determinative in his ultimate finding, but rather sees it as confirmation that other traders are indeed likely to want to use the word. In this regard he concludes at [232]-[234]:
[232] Policy considerations also point away from allowing Telstra exclusive rights to the word yellow in respect of the broad classes of goods and services designated. Registration would significantly restrict use of the word and Telstra should not be allowed to “enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure”: Joseph Crosfield & Son’s Application (Perfection) [1910] 1 Ch 118 at 128; (1909) 26 RPC 837 at 854 per Cozens-Hardy MR.
[233] In my view the widespread pre-lodgment date use by other traders in Australia and overseas of the colour and the word yellow in respect of print and online directories tends to show that other traders, acting innocently, will want to use the word yellow or a similar mark in a way that would infringe the yellow trade mark.
[234] While the issue is not straightforward I consider that the yellow mark has no inherent adaption to distinguish the designated goods and services.
It is convenient here to note that one of the reasons Murphy J did not find the issue straightforward was because of the wide range of goods and services covered by Telstra’s application. In this regard he acknowledged that, in principle, the word “yellow” might arguably have at least some inherent adaptation to distinguish some of Telstra designated goods or services, in particular those goods or services unrelated to print or online business directories. However, he did not believe it was the Court’s role unilaterally to determine which they might be, particularly when neither party had argued the Court should do so:
[231] Telstra was resistant to cutting down the breadth of the designated goods and services, and it took a similar approach before the Delegate: PDCA v Telstra at [23].[10] Contrary to [the opponent’s] contention, I consider the court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the court should do so, or identified a principled basis upon which the court could approach such a task.[11]
[10] Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2011) 93 IPR 513.
[11] See also Apple Inc v Registrar of Trade Marks [2014] FCA 1304 (3 December 2014) at [232]-[239], where Yates J was similarly reluctant to consider each and every item in a broad suite of specifications.
Murphy J went on to consider Telstra’s evidence of claimed use of the word “yellow” as a trade mark in relation to, inter alia, printed and online business directories. However despite the claimed use going back to 1975, he did not consider it met the requirements of s 41(6), particularly because most of the use shown was of the trade mark YELLOW PAGES rather than YELLOW solus or was use in conjunction with other elements or as an element within a logo. Indeed, he indicated he would have refused the application even if he had been considering the YELLOW trade mark under s 41(5) of the Act and could take Telstra’s post-filing date use into account. As he put it at [16]-[20]:
[16] I consider that the applicants made out their opposition to the registration of the yellow trade mark under s 41 of the Act. In my view the yellow mark has no inherent adaptability to distinguish Telstra’s designated goods and services from the goods or services of other persons under s 41(3) of the Act. The word yellow is inherently descriptive of that colour, which is a colour commonly used in print and online business directories in Australia and overseas. In my view other traders are likely, without improper motive, to want to use the word yellow in a manner which would infringe the yellow trade mark if registered.
[17] The onus therefore falls on Telstra under s 41(6) of the Act to establish that the extent of its use of the yellow trade mark prior to the lodgment date means that the mark in fact distinguished its goods and services. In my view Telstra’s evidence fell short of establishing any use of the yellow mark before the lodgment date and its application therefore fails.
[18] This is not to say that Telstra did not use the word yellow pre-lodgment date as it plainly did. But in my view it did not use the word as a trade mark. If, contrary to my view, it is accepted that Telstra did use the word yellow as a trade mark, its use was light and insufficient to in fact distinguish Telstra’s designated goods and services. Accordingly, I refuse registration of the yellow trade mark.
[19] While it is strictly unnecessary to decide, if contrary to my finding, the yellow trade mark is accepted as being to some extent inherently adapted to distinguish Telstra’s designated goods and services, then the onus falls on Telstra under s 41(5) of the Act. Under this provision Telstra must establish that the combined effect of:
(a) the extent of the mark’s inherent adaptability to distinguish;
(b) the use or intended use of the mark; and
(c) any other circumstances;
means that the mark does or will distinguish its designated goods and services.
[20] In my view Telstra failed to establish this. Taking Telstra’s case at its highest, the extent of the yellow mark’s inherent adaptability to distinguish must be low and its pre-lodgment date use of the mark was light. It used the yellow mark extensively post-lodgment date but this cannot be determinative. Telstra failed to establish that the combined effect of the matters under s 41(5) is such that the yellow trade mark does or will distinguish the designated goods and services. The lack of the mark’s capacity to distinguish is partly demonstrated by Telstra’s 2009 abandonment of its attempt to rebrand its goods and services as yellow, and its return to yellow pages as the umbrella brand. If it was necessary to decide the question I would refuse registration under s 41(5) of the Act.
I have reached the same conclusions as regards the Opposed Mark. It is not necessary, (nor has it been submitted), that I consider each of the designated goods and services individually and form a view as to whether in some cases s 41(5) might be applicable and in others s 41(6). In either case the Holder would need to rely on significant use. Moreover, as the Submissions highlight and as Murphy J’s judgment illustrates, that use must be of the mark as applied for. In the present case, then, it is use of RED solus which may be significant, not use of the word “red” (or “Red”) as an element within a more complex mark such as the Holder’s RED Logo or in collocations such as REDDIRECT.
While I accept that the Holder’s RED magazine has enjoyed continuous, albeit reasonably modest, sales in Australia since 1998, the sole use shown in the Holder’s evidence of a mark containing or consisting of the element RED is of the Holder’s RED Logo on the cover of the RED magazine and on associated websites. Moreover, as the Submissions note, there is “no evidence to show how many Australian consumers would have accessed the websites” in any event. I agree with the Submissions that:
In summary, the Birch Declaration fails to show any use of the RED trade mark in simple typescript before the [Relevant Date]. While it appears that there was use of the [Holder’s RED Logo] prior to [the Relevant Date], this trade mark is not the subject of the Opposed Application. In this regard, the comments of Kenny J in Guylian at paragraph 110 are relevant:
The evidence of use must be for the trade mark that is the subject of the application: Shanahan’s at [25.655] and Woolworths Ltd v BP Plc at 126-7 (in relation to s 41(6)).
To conclude, I find that the Opposed Mark contains little or no inherent adaptation to distinguish the designated goods and services and that the application accordingly falls for consideration under ss 41(5) or 41(6) of the Act. In either case the onus is then on the Holder to demonstrate significant use of the applied for mark as indicated in those provisions. This it has not done.
I find that the Opponent has established its s 41 ground of opposition.

Decision

Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in
respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
As the Opponent has established its s 41 ground in relation to all of the designated goods and services, I accordingly refuse to extend protection of the Opposed Mark to Australia.

Costs

As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Holder as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Trade Marks Hearings
4 May 2015