Marriott Worldwide Corporation

[2016] ATMO 1

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1578000 (35, 43) - FAIRFIELD- in the name of Marriott Worldwide Corporation.

Delegate:	Robert Wilson
Representation:	Applicant: Mr Sam Hallahan of Corrs Chambers Westgarth
Decision:	16 ATMO 1 Ex parte proceeding – Ground for rejection under s 41 of the Trade Marks Act 1995 considered – whether geographical restriction to specification of services able to overcome s 41 ground for rejection – trade mark application rejected

Background

1. On 2 September 2013 Marriott Worldwide Corporation (‘the Applicant’) applied to register a trade mark the details of which are shown below:

Application No.:	1578000
Priority Date:	2 September 2013
Services:	Class 35: Advertising services, franchise services, namely, offering business management assistance in the establishment and operation of hotels, restaurants, bars, spas, recreational and fitness facilities, and retail stores; business management services, namely, management and operation of hotels, restaurants, bars, recreational and fitness facilities and retail stores for others; retail store services; business center services; business management consultation services; providing facilities for the use of office equipment and machinery; business administration services; business meeting planning services, providing convention and conference facilities for trade exhibitions and business meetings; management of office and retail space; all other advertising services in this class; business management; business administration; office functions Class 43: Hotel services; restaurant services; provision of general purpose facilities in hotels for meetings, conferences and exhibitions; provision of banquet and social function facilities in hotels for special occasions; and reservation services for hotel accommodations; all other food and drink provision services in this class; temporary accommodation (‘the Applicant’s Services’)
Trade Mark:	FAIRFIELD	(‘the Applicant’s Trade Mark’)

1. The Applicant’s Trade Mark was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner was satisfied that grounds for rejecting the application existed under sections 41 and 44 of the Act. In her first adverse report the examiner cited trade mark number 1041232 as she considered it to be deceptively similar to the Applicant’s Trade mark for the purposes of s 44 of the Act. Trade mark 1041232 was removed from the Register of Trade Marks on 26 August 2015 as its registration had not been renewed. Consequently, trade mark 1041232 is no longer an impediment to the acceptance of the application and the ground for rejection pursuant to s 44 need not be discussed further in this decision.

2. Section 41 of the Act provides:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

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

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

(iii)any other circumstances.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)        the time of production of goods or of the rendering of services.

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

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

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

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

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

1. In respect of the ground for rejection raised pursuant to s 41 the examiner wrote in her first report dated 15 November 2013 (‘the first report’):

   Your trade mark is, or has as its main feature, FAIRFIELD. This is the name of:

   A city and electoral district (state level) in New South Wales

   A suburb of Brisbane, Queensland

   A suburb of Melbourne, Victoria

   Other traders should be able to use FAIRFIELD in connection with goods or services similar to yours. This is because other traders are entitled to describe their services as being provided from or in relation to this location.

2. The examiner informed the Applicant that it might be able to overcome the ground for rejection if it supplied evidence of use in terms of s 41(3) of the Act. That the examiner referred to s 41(3) of the act indicates that she considered that the Applicant’s Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services from those of other persons. The Applicant did not provide any evidence of use of its trade mark in response to the first report—or any subsequent reports—but responded with brief submissions as to why it considered the s 41 ground for rejection was incorrectly raised. The examiner was not persuaded by the Applicant’s submissions and issued a further adverse report on 21 October 2014 (‘the second report’).

3. The Applicant responded to the second report on 11 December 2014 offering to amend their specification and submitting that the amendment would overcome the ground for rejection under s 41. The suggested amendment was to add the following to the specification of both classes of the Applicant’s Services (‘the Proposed Amendment’):

   none of the foregoing services being provided in or in relation to any geographic location with the name Fairfield.

4. The examiner was not satisfied that the amendment would overcome the ground for rejection and stated in her third adverse report dated 24 December 2014 (‘the third report’) that:

   The proposed amendment has not been made as it is considered that this would not overcome the grounds for rejection and would render the subject application misdescriptive.

5. It was not stated in the third report but the reference to ‘misdescriptive’ suggests the examiner considered the Proposed Amendment would give rise to a ground for rejection of the application pursuant to s 43 of the Act which provides:

43 – Trade Mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. The Applicant responded to the third report with further submissions including that the amended specification would not cause the application to fall foul of s 43. The examiner was not persuaded by the submissions. The specification was not amended and the examiner issued a fourth adverse report dated 14 May 2015 (‘the fourth report’) maintaining the ground for rejection pursuant to s 41 and indicating—explicitly this time—that the Proposed Amendment, if made, would give rise to a ground for rejection pursuant to s 43 of the Act.

2. The Applicant’s response to the third report includes the following:

   It is our understanding, on the basis of the third report and your conversation with Mr Hallahan, that you agree that [the Proposed Amendment] would overcome the issue you have previously raised regarding the distinctiveness of the trade mark.

The Applicant’s statement, above, does not reflect the records of conversation on the relevant file held by IP Australia. It is also somewhat at odds with the fourth report which includes the following statement by the examiner:

I am maintaining the existing Section 41(3) grounds for rejection and also advise that the proposed exclusion does not appropriately mitigate issues with the inherent distinctiveness of the subject application, primarily as consumers cannot be aware of the exclusion proposed.

1. Rather than respond to the fourth report, on 6 August 2015 the Applicant requested to be heard in relation to their application as provided for by s 33(4) of the Act. I heard the matter as a delegate of the Registrar in Sydney on 16 October 2015. The Applicant was represented by Mr Sam Hallahan of Corrs Chambers Westgarth Lawyers.

About the Applicant

1. In written submissions provided prior to the hearing Mr Hallahan provided a brief background of the Applicant:

   Marriott operates more than 700 properties around the world under the trade mark FAIRFIELD, which it has registered in more than 25 countries. Marriott therefore seeks to register and use the trade mark FAIRFIELD in Australia.

Discussion

The section 41 ground for rejection

1. The Applicant has not submitted that the Applicant’s Trade Mark when considered in respect of the Applicant’s Services possesses any inherent adaptation to distinguish. The Applicant accepts that ‘Fairfield’ is the name of three suburbs in Australia and has stated in its written submissions:

   [The Applicant] accepts, of course, that a trade mark that is also a geographical name will lack inherent distinctiveness if the place or region known by that name has a reputation for the designated goods or services (see e.g. Clark Equipment).[1] [The Applicant] also recognises that it is the Trade Marks Office policy to reject a trade mark that is also the name of an Australian town or locality ‘if the goods or services claimed are of a general nature frequently found in all towns irrespective of population size’ (Trade Marks Office Manual of Practice and Procedure (TMO Manual) at 22.15.2). While [the Applicant] is not aware of any written decisions considering the issue, it is presumed that the Trade Marks Office considers that other traders may legitimately need to use the name of the town or locality in relation to their own goods or services provided from or in relation to that town or locality, and that they would be prevented from doing so if such a word were registered as a trade mark. While [the Applicant] considers that s 122(1)(a)(i) would adequately protect the interests of such traders, notwithstanding the safeguard, it is apparent that the Trade Marks Office considers that such trade marks lack inherent distinctiveness on the basis of the test set out in Cantarella Bros,[2] Clark Equipment, FH Faulding,[3] etc.

   [1] Clark Equipment v Registrar of Trade Marks (1964) 111 CLR 511 (‘Clark Equipment’).

   [2] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 (‘Cantarella Bros’).

   [3] FH Faulding & Co Ltd v Imperial Chemical Industries Ltd (1965) 112 CLR 537 (‘FH Faulding’).

2. I am satisfied that if used in connection with the Applicant’s Services the Applicant’s Trade Mark lacks inherent adaptation to distinguish those services. As my decision does not turn on the issue, it is not necessary that I decide whether the Applicant’s Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services—and falls to be considered under s 41(3)—or whether it is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Services, and therefore falls to be considered under s 41(4). The Applicant has not provided any evidence of use to overcome this ground for rejection. Nor has it provided any formal or detailed evidence of its intention to use the mark in Australia, or of any relevant ‘other circumstances’ indicating favourable consideration pursuant to s 41(4). Consequently, I am satisfied that the Applicant’s Trade Mark is not capable of distinguishing the Applicant’s Services from the goods or services of other persons.

3. Rather than relying on evidence of use, the Applicant is seeking to rely on the Proposed Amendment to overcome this ground for rejection. In its submissions the Applicant refers to the Applicant’s Services once amended by the Proposed Amendment as ‘the Amended Services’; I will also adopt this terminology in this decision. In respect of the Amended Services the Applicant submits:

   The Amended Services exclude any of the relevant services provided in or in relation to any geographical location with the name Fairfield. This means that anyone wishing to use the word Fairfield in relation to goods or services provided in or in relation to any place known as Fairfield will not be prevented from doing so by a trade mark registration for [the Applicant’s Trade Mark] in respect of the Amended Services (if they were not already permitted to do so pursuant to s 122(1)(a)(i)).

   [The Applicant] submits that [the Applicant’s Trade Mark] is distinctive in respect of the Amended Services because no other traders could legitimately need to use the word Fairfield in relation to any goods or services which have no relationship with any place in Australia known by the name Fairfield [sic].[4] For example:

   (a)Nobody operating a hotel in Newcastle (or any other place not named Fairfield) has a legitimate need to use the word Fairfield in relation to their hotel services;

   (b)Nobody operating a restaurant in Alice Springs (or any other place not named Fairfield) has a legitimate need to use the Fairfield in relation to their restaurant services;

   (c)Nobody providing business centre services in Adelaide (or any other place not named Fairfield) has a legitimate need to use the word Fairfield in relation to their business centre services.

   As such, the trade mark FAIRFIELD in respect of the Amended Services passes the test for inherent distinctiveness as set out in Cantarella Bros and other cases such as Clark Equipment and FH Faulding, and no ground for rejection exists under section 41.

   [4] This sentence is rather convoluted and difficult to follow. I suspect the Applicant intended that the sentence should have ended with ‘not known by the name Fairfield’. Nevertheless, the examples given provide some clarity to the Applicant’s argument.

4. The Applicant also addressed the issue of the awareness, or lack of it, of the geographical restriction in the Amended Services, and averred:

   [The Applicant] is not aware of any authority for the position that consumers’ awareness of the terms of [an] applicant’s specification of goods has any bearing on the assessment of inherent distinctiveness of a trade mark. The test for inherent distinctiveness is a practical one which considers the legitimate needs of other traders – if registration of the trade mark could prevent other traders from using words (or other signs) that they should legitimately need to use (on the basis of the ordinary signification of those words), then the trade mark lacks inherent adaptation to distinguish. Therefore, if the trade mark is not such a word, then the trade mark is inherently adapted to distinguish (and consumers’ awareness of the designated goods or services does not come into it).

   Therefore, given that:

   (a)    no other traders could legitimately want to use the word Fairfield in relation to the Amended Services; and

   (b)   registration of [the Applicant’s Trade Mark] in respect of the Amended Services would not prevent other traders from using the word Fairfield in relation to goods or services provided in or in relation to any geographical location with the name Fairfield,

   [the Applicant] submits that there is no basis under section 41 for refusing to accept Marriot’s application.

5. I am not persuaded by the Applicant’s submissions. Branson J observed in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498, 506-7 (‘Oregon’):

   In the Clark Equipment case[5] at 514, Kitto J explained that the basic reason for the frequent refusal to register as a trade mark a word of prima facie geographic significance was the requirement 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 actuated by proper motives might want to use the word in a manner which would impinge [sic] a registered trade mark granted in respect of it. His Honour went on at 515 to observe:

   The consequence is that the name of a place or of an area, whether it be a district or a country, a state or a county, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant’s goods; there is necessarily great difficulty in  proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make. (emphasis added)

   [5] Clark Equipment v Registrar of Trade Marks (1964) 111 CLR 511 (‘Clark’).

1. Kitto J further stated in Clark:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not ‘adapted to distinguish’ the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. 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.[6]

   [6] Ibid, 513-14.

1. Kitto J also noted in Clark:

   It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as ‘made in Michigan’ or in some other way indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word ‘Michigan’ that he may fairly want to make in the course of his business.[7]

   [7] Ibid, 517.

2. The effect of the proposed amendment does not limit the geographical scope of protection of the Applicant’s Trade Mark and thus stop protection from extending to any place called ‘Fairfield’. If registration were to be granted for the Applicant’s Trade Mark with the Amended Services, it would remain open to the Applicant to bring an action for infringement under Part 12 of the Act against anyone using ‘Fairfield’ in respect of similar services: notwithstanding that Fairfield was their place of business. Such a person would have to rely on s 122; they would not be able to rely on the exclusion contained in the Amended Services.

3. Being of prima facie geographical significance the inherent nature of the Applicant’s Trade Mark is that it is not adapted to distinguish the Applicant’s Services or the Amended Services. The effect of granting registration risks denying the use of ‘Fairfield’ to a person who is likely to want to use it, legitimately, in connection with goods and/or services for the sake of the geographical reference. Consequently, I am not satisfied that the Proposed Amendment overcomes the ground for rejection under s 41 of the Act.

The section 43 ground for rejection

1. As the Proposed Amendment does not overcome the ground for rejection under s 41, it is unnecessary that I consider whether that amendment would give rise to a ground for rejection pursuant to s 43.

Conclusion

1. The Applicant’s Trade Mark is not capable of distinguishing either the Applicant’s Services or the Amended Services from the goods or services of other persons. Accordingly, I reject trade mark application 1578000 in accordance with ss 33 and 41 of the Act.

Robert Wilson
Hearings Officer
Trade Marks Hearings
6 January 2016