MHFC Holdings Pty Ltd - [2016] ATMO 96

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application numbers 1712701 (41) - MELBOURNE CITY FOOTBALL CLUB; and 1717890 (41) MELBOURNE CITY FOOTBALL CLUB and DEVICE in the name of MHFC Holdings Pty Limited.

Delegate:	Heath Wilson
Representation:	Applicant: Andrew Fox of Counsel instructed by Robynne Sanders of DLA Piper.
Decision:	2016 ATMO 96 Requests to be heard under section 33(4) of the Trade Marks Act 1995 – assessment of trade mark no. 1712701 under section 41 – assessment of trade mark no. 1717890 under section 44 – trade marks rejected.

Background

This matter involves requests to be heard under section 33(4) of the Trade Marks Act 1995 (‘the Act’) in relation to trade mark application nos. 1712701 and 1717890. The reasons that follow will address the two trade mark applications separately. I will firstly set out my decision for the earlier filed trade mark application, followed by my decision on the later filed trade mark.

Trade Mark no. 1712701: ‘The Word Trade Mark’

On 16 January 2014, MHFC Holdings Pty Ltd (‘the Applicant’) applied to register a trade mark ‘MELBOURNE CITY FOOTBALL CLUB’[1] (‘the parent’) for goods and services in classes 9, 18, 25, 28 and 41. During examination, a ground for rejection under section 41 of the Act was raised on the basis that the words comprising the parent did not distinguish the designated goods/services from those of other traders.
[1] Trade Mark Application no. 1601282.
The Applicant subsequently filed a divisional trade mark application under section 45 of the Act essentially separating the class 41 services from the parent. After the class 41 services were removed, the parent proceeded to acceptance under the provisions of section 41(4) and is currently the subject of separate opposition proceedings. The current details of the divisional trade mark application that I must consider are set out below:
Trade Mark No. 1712701
Trade Mark: MELBOURNE CITY FOOTBALL CLUB (‘the Word Trade Mark’)
Priority Date: 16 January 2014
Specification of Services:
Class 41: Entertainment; sporting and cultural activities; education; providing of training; sporting services; organisation of sporting events; provision of entertainment, training, recreational, sporting and cultural activities and facilities; instruction and educational services; football academy services; football coaching, football schools and schooling; arranging and conducting of education and training in relation to football; arranging, conducting and provision of football instructional courses; football entertainment services; entertainment in the nature of football games; physical education; fitness training services; physiotherapy training; education and training in relation to sports medicine; sport and holiday camp services (in the nature of entertainment); rental of sporting equipment; practical training and demonstrations; arranging, organising and conducting of conferences, conventions, seminars, events and exhibitions; arranging, organising and conducting of games, contests and competitions; organising community sporting and cultural events; hospitality services (entertainment); lotteries; gaming services; arranging, organising and conducting of award ceremonies; provision of museum facilities; provision and management of stadium facilities and services; rental of stadium facilities; presentation of live performances; sports club services; health club services; provision of health club, fitness club and gymnasium facilities; provision of sports information services; provision of information relating to football; sporting information services, namely scouting of players; sporting services, namely provision and management of sports kit; fan club services; fan club membership scheme services; box office services; booking and ticketing services for sports, entertainment, cultural and educational events; entertainment, training, recreational, and sporting information services provided via the Internet and other communications networks; education and entertainment services provided by means of radio, television, telephony, the Internet and online databases; provision of cinematographic and video entertainment; entertainment and educational services featuring electronic media, multimedia content, audio and video content, movies, pictures, photographs, graphics, images, text and related information provided via the Internet and other communications networks; film production; production of video recordings, sound recordings, DVDs, CDs, CD-ROMs, video and audio tapes; production and distribution of television and radio programmes; production of sporting events for television and radio; publication of magazines, books, texts and printed matter; publishing by electronic means; providing online electronic publications (not downloadable); provision of television programmes, radio programmes, films, audio and/or visual material and games online (not downloadable); publication of news online; information relating to sport and entertainment provided online from a computer database or the Internet; information, advisory and consultancy services in relation to all of the aforesaid; all of the foregoing services promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of football (soccer)
The Word Trade Mark was examined as required under section 31 and a ground for rejection was again raised under section 41(3) (i.e. ‘trade mark not distinguishing applicant’s services’). The objection was initially framed in the first report as follows:
Your trade mark is MELBOURNE CITY FOOTBALL CLUB.
This indicates that your goods and services are provided by, or in relation to, a football club in the City of Melbourne.
Other traders should be able to use MELBOURNE CITY FOOTBALL CLUB in connection with goods or services similar to yours.
Following two further examination reports and provision of evidence by the Applicant, the examiner was not satisfied that the Trade Mark did distinguish the designated services as being those of the Applicant. The Applicant was given an opportunity to be heard and it requested a hearing.
I am a delegate of the Registrar of Trade Marks and prior to the hearing I was provided with extensive evidence, some of which was before the examiner, some produced for the opposition proceedings of the parent, and finally evidence specifically filed for the matters before me. The details of all material filed for trade mark applications nos. 1712701 and 1717890 are:

Statutory declaration of Simon Pearce (Director of the Applicant) made 13 April 2015 with exhibits (‘Pearce 1’).
Statutory Declaration of Scott Munn (Chief Executive Officer of Melbourne City FC Pty Ltd) made 21 April 2015 with exhibits SM-1 to SM-50 (‘Munn 1’).
Statutory Declaration of Simon Pearce made 1 July 2016 with exhibits SP-1 to SP-44 (‘Pearce 2’).
Statutory Declaration of Scott Munn made 1 July 2016 with exhibits SM-1 to SM-66 (‘Munn 2’).
Statutory Declaration of Robynne Sanders (Applicant’s attorney) made 5 September 2016 with exhibits RLS-1 to RLS-13 (‘Sanders’).
Applicant’s written submissions dated 5 September 2016 in relation to Trade Mark application no. 1712701.
Applicant’s written submissions dated 5 September 2016 in relation to Trade Mark application no. 1717890.

On 8 September 2016, I heard the matters in Canberra. Andrew Fox of Counsel appeared for the Applicant with Robynne Sanders of DLA Piper also in attendance.

The Role of the Registrar under section 33(4):

As it was an issue featuring prominently in the hearing, I find it necessary to address the nature of a request to be heard in relation to a ground for rejection raised in examination. The following comments are applicable to both trade mark applications before me.
Section 33(4) of the Act provides that the Registrar must, before rejecting an application, provide the Applicant with a reasonable opportunity of being heard. Mr Fox directed me to the decision of Minister for Immigration and Citizenship v Li[2] and the nature of a review of an administrative decision. However, the opportunity of being heard under section 33(4) of the Act is a fresh consideration of the application by the Registrar. There will undoubtedly be factors raised in examination reports that have some relevance to my determination but, as I said in another ex parte decision:
My decision is not a review of the examiner’s approach and nor I am bound in any way to follow it. If that were the case, a request for a hearing under section 33(4) of the Act would be of no utility, as the outcome would necessarily be the same.[3]
[2] [2013] HCA 18.
[3] Apple, Inc. [2015] ATMO 74.
With regard to the Applicant’s criticisms of some of the examination reports and the assertion that they fail to address all the particular arguments made by the Applicant, I rely on the comments made in the case of Applicant WAEE v Minister for Immigration & Multicultural & Indigenous Affairs:
It is plainly not necessary for the Tribunal to refer to every piece of evidence and every contention made by an applicant in its written reasons. It may be that some evidence is irrelevant to the criteria and some contentions misconceived. Moreover, there is a distinction between the Tribunal failing to advert to evidence which, if accepted, might have led it to make a different finding of fact (cf Minister for Immigration and Multicultural Affairs v Yusuf (2001) 206 CLR 323 at [87]-[97]) and a failure by the Tribunal to address a contention which, if accepted, might establish that the applicant had a well-founded fear of persecution for a Convention reason. The Tribunal is not a court. It is an administrative body operating in an environment which requires the expeditious determination of a high volume of applications. Each of the applications it decides is, of course, of great importance. Some of its decisions may literally be life and death decisions for the applicant. Nevertheless, it is an administrative body and not a court and its reasons are not to be scrutinised `with an eye keenly attuned to error'. Nor is it necessarily required to provide reasons of the kind that might be expected of a court of law.[4]
[4] [2003] FCAFC 184; 75 ALD 630; [46]; also see Karen Lee [2016] ATMO 19 [11]-[14].
In other words, it should not be inferred from an examiner omitting to refer to or address a particular argument that it was not considered or taken into account in deciding the overall matter.
I am to consider the same grounds for rejection under sections 41 and 44 of the Act that resulted in the requests to be heard. As with all grounds for rejection, a presumption of registrability applies in that consideration. In relation to this presumption, French J in Registrar of Trade Marks v Woolworths[5] said: ‘the decision to reject an application regularly made must now be based upon positive satisfaction that a ground for rejecting it is made out’ and ‘if the matter is left in doubt, then the application should be accepted’[6] and finally ‘the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’[7] I now turn to the specific ground for rejection on the Word Trade Mark.
[5] [1999] FCA 1020 [47] (French J) (‘Woolworths Metro’).
[6] Ibid [33].
[7] Ibid [34].

Section 41

Section 41 of the Act relevantly provides:

41Trade 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.
(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.

‘Inherently adapted to distinguish’

At this stage of proceedings, trade marks or signs[8] are taken to be capable of distinguishing their designated goods/services unless the Registrar of Trade Marks finds that they are not. The Registrar can find that such a trade mark does not distinguish by virtue of section 41(3) or section 41(4). In this instance, the ground for rejection to the Word Trade Mark was raised under section 41(3).
[8] See section 6 for the definition of a ‘sign’ and section 17 for the definition of a ‘trade mark’.
Mr Fox argued that the Word Trade Mark was at least to some extent inherently adapted to distinguish the designated services and that the appropriate consideration should instead be under section 41(4) of the Act. In doing so, Mr Fox made a number of propositions concerning the approach to the initial question that I have difficulty accepting.
In the Applicant’s submissions under the heading ‘Is the Trade Mark inherently adapted to distinguish?’ the question was framed by the Applicant’s representative as: ‘Would other traders legitimately want to use MELBOURNE CITY FOOTBALL CLUB as a trade mark?’
A trade mark is not to be tested on whether other traders would want to use it as ‘a trade mark’ or as a ‘sign used to distinguish goods provided in the course of trade’[9] but rather for the sake of the signification the words forming the trade mark ordinarily possess. That is, the Trade Mark is to be primarily tested using the oft-quoted formulation from the Clark Equipment case:
[B]y 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.[10]
[9] See the definition of ‘a trade mark’ under section 17 of the Act.
[10] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 [514] (‘Clark Equipment’).
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Limited[11] affirmed the above test from Clark Equipment. The High Court also made clear that once the ‘ordinary signification’ of a word had been established, then the enquiry becomes ‘whether other traders might legitimately need to use the word in respect of their goods’.[12] In this regard, the majority said:
When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods.[13]
[11] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 [70].
[12] Ibid [71].
[13] Ibid [59].
In relation to material that may be taken into account under the question of inherent adaptation to distinguish, I mention the following comments of Lindgren J in Kenman Kandy (Australia) Pty Ltd v Registrar of Trade Marks:
While inherent adaptation to distinguish requires attention to be focused on the mark itself, and is intended to stand in sharp contrast to a mark’s capacity to distinguish arising from use, the notion of ‘the mark itself’ does not exclude from consideration the nature of the range of goods within the class or classes in respect of which registration is sought, or the various ways in which the mark might, within the terms of the registration, be used in relation to those goods. Indeed, those matters must be taken into account.[14]
[14] Kenman Kandy (Australia) Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30, [84] (Emphasis in bold).
Also, in Burger King Corporation v Registrar of Trade Marks Gibbs CJ observed:
Inherent adaptability is something which depends on the nature of the trade mark itself ... and is therefore not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.[15]
[15] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417, [424].
In accordance with the above authority, it does not assist the assessment of inherent adaptation (and indeed would not be appropriate) to consider the actual use of the Word Trade Mark undertaken by the Applicant. I must instead consider the range of uses that the Trade Mark might be put to within the scope of the trade mark application. Evidence of what other traders are doing is relevant, but the Applicant’s actual use of the Word Trade Mark is only relevant once it is decided whether s41(3) or s41(4) applies.
Turning to the inherent nature of the Word Trade Mark it must, as Mr Fox correctly points out, be considered as a whole. Mr Fox highlighted the particular combination of words and argued that ‘the correct identification for the relevant political and geographic area is ‘City of Melbourne’’ and in relation to the Word Trade Mark: ‘it is not a grammatically correct way to refer to a geographic area.’ The argument was that this provides the Word Trade Mark with at least a scintilla of inherent adaptation to distinguish the designated services.
The Trade Mark is Melbourne City Football Club. It may be arguable whether a more grammatically correct description is ‘City of Melbourne Football Club’ but I find the Word Trade Mark nevertheless remains an apt description for a football club originating from (or based in) the city of Melbourne. I note the following comments made in Austereo Ltd v DMG Radio (Australia) Pty Ltd:
[W]ords which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish: Re the Application of J P Coats Ltd (1936) 53 RPC 355 at 380. Distinctly, that a descriptive statement is commonly associated with a particular trader’s goods or services does not, in and of itself, mean that that statement is inherently adapted to distinguish that trader’s goods or services. It may, for example, be naturally applied to goods or services of that type by whomsoever manufactured or supplied: ibid at 380.[16]
[16] [2004] FCA 968, [38].
Nevertheless, apart from the ordinary descriptive meaning of the expression, I find that the particular form of words comprising the Word Trade Mark is particularly commonplace and ‘naturally applied’ in relation to the sport of football (or soccer). The general public would not need to look as far afield as ‘Manchester City Football Club’ to find examples of traders using similar grammatical constructions for the sake of the signification that they possess. There is, for instance, a Brisbane City Football Club, an Adelaide City Football Club and even a Queanbeyan City Football Club. The Word Trade Mark is therefore not a unique expression (as the Applicant submits) and I am not convinced that its particular arrangement, perceived in the context of the designated services, imbues the Word Trade Mark with any inherent adaptation to distinguish.

The Sanders declaration contains (amongst other things) information regarding the National Club Identity Policy for the Football Federation of Australia (‘FFA’) and the Australian Football League Rules.[17] In essence, a decision to name a team or club playing in a major league or a team in a competition regulated by the FFA requires approval or consent. According to the evidence, this is similarly the case for the Australian Football League, Australian Rugby League and Australian Rugby Union. However, the above examples solely concern the naming of particular club to participate within a league and does not cover all instances where other persons offering class 41 services may think of the Word Trade Mark (or something like it) and wish to use it in the course of trade without improper motive.
[17] Sanders, (exhibits RLS-10 to RLS-12).
The Applicant also mentioned that the spectre of possible litigation by the Applicant meant that other traders would not be likely to want to use the Trade Mark ‘as a trade mark’. On this point, I find it is worth highlighting Kitto J’s comments in Clark Equipment:
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.[18]
[18] Ibid, [513].
Finally, Mr Fox argued that if the ground for rejection under section 41(3) applies to the Word Trade Mark, it does not apply to all of the designated services in class 41 of the specification. After considering the scope of the services, I am of the view that even if I were to find that section 41(4) rather than section 41(3) applies to some of the services in class 41, such a finding would not assist the Applicant. This is because any evidence provided by the Applicant is predominantly for services to which section 41(3) applies (broadly, sporting, training and club services).
Additionally, if it could argued that use of the Word Trade Mark in relation to a broad claim for ‘education services’ should attract an objection under section 41(4) rather than s41(3), I note that the claim is not as broad as it first appears. On closer inspection, the end of the specification in class 41 provides: ‘all of the foregoing services promoting or marketing or otherwise relating to or associated with or indicating a connection with the game of sport of football (soccer)’.
In order to resolve the determination under section 41(3), I will now consider the evidence provided by the Applicant and decide whether the Trade Mark does in fact distinguish all the designated services from those of other traders.

Applicant’s Evidence of Use

On 5 June 2014 (five months after the priority date for the Word Trade Mark), it was publicly announced in Australia (via media release) that the football club known as the Melbourne Heart would become the Melbourne City Football Club. The Applicant and the club had been acquired by the City Football Group Ltd (‘CFG’). The CFG also owns the Manchester City Football Club and the New York City Football Club. According to the Applicant, the name ‘Melbourne City Football Club’ (and presumably the identical acronym ‘MCFC’) was selected to associate more closely with the name ‘Manchester City Football Club’ and leverage the success and popularity of that club in the United Kingdom.[19]
[19] Munn 2, [9].
Section 41(3)(b) of the Act clearly provides that it is only trade mark use before the filing date of the application that may be considered in assessing whether a trade mark has the capacity to distinguish. However, the bulk of the Applicant’s evidence before the relevant date concerns promotions and other use in the United Kingdom and Australia of the name ‘Manchester City Football Club’.
The Applicant argues that this is a form of ‘brand extension’ and supports acceptance of the Word Trade Mark. However, ‘Manchester City Football Club’ is not the same, or substantially the same, as the Word Trade Mark. This is not trade mark use because it constitutes an alteration that substantially affects the identity of the Word Trade Mark.[20] I am not satisfied that the use of the name of another club assists the Word Trade Mark in demonstrating a capacity to distinguish the designated services.
[20] See section 7(1) of the Act.
The Applicant’s submissions additionally refer to Munn 1[21] and argue that the registration of the Applicant’s 12 internet domain names on 10 July 2013 is evidence of use of the Word Trade Mark. Despite the Applicant’s arguments to the contrary, there is authority making it clear that the mere registration of a domain name, without more, does not constitute use of a trade mark in the course of trade.[22]
[21] Paragraph 17.13.2.
[22] See, for example, Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664, [153].
Ultimately, I find that there is no use of the Trade Mark prior to 16 January 2014 in Australia. I am therefore satisfied that the ground of rejection under section 41(3) of the Act exists in relation to trade mark application no. 1712701.

Trade Mark No. 1717890: ‘The Composite Trade Mark’

Trade mark application no. 1626860 (‘the parent’) was filed by the Applicant on 5 June 2014 for goods and services in classes 9, 16, 18, 25, 28 and 41. A ground for rejection under section 44 of the Act was raised during examination on the basis that the parent was deceptively similar to pending trade mark application nos. 1602282, 1602285 and 1603470.
I note the examiner of the parent did mention the option of the Applicant seeking deferral of acceptance to await the ultimate fate of the cited trade mark applications. Instead, a divisional was filed by the Applicant on 28 August 2015 separating the class 41 services from the parent. The parent was ultimately accepted under the provisions of section 44(3)(b) of the Act. As with the Applicant’s word trade mark no. 1601282, it has now been opposed by the owners of the cited trade marks.
The details of the resulting divisional application (which is the subject of my decision) are:
Trade Mark No: 1717890
Priority Date: 5 June 2014
Series Trade Mark:

‘The Composite Trade Mark’

Specification of Services:

Class 41: Entertainment; sporting and cultural activities; education; providing of training; sporting services; organisation of sporting events; provision of entertainment, training, recreational, sporting and cultural activities and facilities; instruction and educational services; football academy services; football coaching, football schools and schooling; arranging and conducting of education and training in relation to football; arranging, conducting and provision of football instructional courses; football entertainment services; entertainment in the nature of football games; physical education; fitness training services; physiotherapy training; education and training in relation to sports medicine; sport and holiday camp services (in the nature of entertainment); rental of sporting equipment; practical training and demonstrations; arranging, organising and conducting of conferences, conventions, seminars, events and exhibitions; arranging, organising and conducting of games, contests and competitions; organising community sporting and cultural events; hospitality services (entertainment); lotteries; gaming services; arranging, organising and conducting of award ceremonies; provision of museum facilities; provision and management of stadium facilities and services; rental of stadium facilities; presentation of live performances; sports club services; health club services; provision of health club, fitness club and gymnasium facilities; provision of sports information services; provision of information relating to football; sporting information services, namely scouting of players; sporting services, namely provision and management of sports kit; fan club services; fan club membership scheme services; box office services; booking and ticketing services for sports, entertainment, cultural and educational events; entertainment, training, recreational, and sporting information services provided via the Internet and other communications networks; education and entertainment services provided by means of radio, television, telephony, the Internet and online databases; provision of cinematographic and video entertainment; entertainment and educational services featuring electronic media, multimedia content, audio and video content, movies, pictures, photographs, graphics, images, text and related information provided via the Internet and other communications networks; film production; production of video recordings, sound recordings, DVDs, CDs, CD-ROMs, video and audio tapes; production and distribution of television and radio programmes; production of sporting events for television and radio; publication of magazines, books, texts and printed matter; publishing by electronic means; providing online electronic publications (not downloadable); provision of television programmes, radio programmes, films, audio and/or visual material and games online (not downloadable); publication of news online; information relating to sport and entertainment provided online from a computer database or the Internet; information, advisory and consultancy services in relation to all of the aforesaid; all of the foregoing services promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of football (soccer)

The Composite Trade Mark was duly examined in accordance with the Act and a ground for rejection under section 44 was maintained on the basis of its similarity to the following trade marks (‘the cited trade marks’):

Trade Mark No.

Trade Mark

Priority Date

Specification of Goods and Services

1602282

Melbourne City Football Club

23 Jan 2014

Class 41: Sports club services

1602285

Melbourne City Football Club

29 Jan 2014

Class 26: Club badges (for wear, not of precious metal)

Class 41: Sports club services

The cited trade marks are owned by Melbourne City Football Club, Inc. and are currently pending. One of the bars to acceptance of the cited trade marks is the presence of the Word Trade Mark in class 41 which has an earlier priority date. The acceptance of the cited trade marks is currently deferred, pending the outcome of the Applicant’s divisionals (and also the outcome of its opposition to the parent applications).
After two adverse reports, the Applicant requested to be heard on the issues preventing acceptance of the Composite Trade Mark. As mentioned earlier, I heard the matter concurrently with the Word Trade Mark. The material referred to in paragraph 6 of this decision was also relied upon in support of the acceptance of the Composite Trade Mark.

Section 44

Section 44 of the Act relevantly provides:

44Identical etc. trade marks
(1)…
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note:For limitations see section 6.

One of the requirements for the ground for rejection under section 44 of the Act is that the other trade mark(s) have an earlier priority date to the applied-for trade mark. In this matter, both of the cited trade marks predate the Composite Trade Mark.

‘Similar Services’

The next consideration should be whether the respective services in class 41 are similar because as French J said in Registrar of Trade Marks v Woolworths:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.[23]
[23] [1999] FCA 1020, [39].
Returning to first principles, ‘similar services’ are services that are the same or of the same description as the other services.[24] The relevant test in determining the similarity of services has generally been equated with the ‘similar goods’ test explained in Jellinek’s Appn[25]. The Assistant-Comptroller in re an Application by John Crowther & Sons (Milnsbridge) Ltd. elaborated on that test:
In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (1946) 63 RPC 59 , Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description.[26]
[24] Section 14(2) of the Act.
[25] (1946) 63 RPC 59.
[26] (1948) 65 RPC 369, [372]
Should I determine that the Composite Trade Mark was substantially identical with, or deceptively similar to, the cited trade marks, the Applicant provided me with suggestions for amendments to the Applicant’s class 41 specification, purportedly removing services that are not similar to the cited trade marks’ ‘sports club services’. However, I do not understand the rationale for the Applicant’s particular suggestions. For example, the Applicant understandably concedes that its ‘fan club services’ are similar to ‘sports club services’ in the specifications of the cited trade marks, but for some reason its ‘fan club membership scheme services’ are not. Another example is that ‘Entertainment in the nature of football games’ is conceded as similar to ‘sports club services’ but ‘football entertainment services’ are not. Also, according to the Applicant, ‘provision of training’ (but not ‘providing of training’) is similar to sports club services.
Putting the unhelpful suggestions from the Applicant to one side, I nevertheless find that the expression of ‘sports club services’ sitting within class 41 is very broad in nature and is not, in my view, limited to services likely to be offered by sports fan clubs. Such an expression is likely to generally include the provision of entertainment and sporting activities as well as training and coaching in relation to the game or sport of football (soccer). For this reason, I find that ‘sports club services’ are similar to the overwhelming majority (if not all) of the services in the specification of the Composite Trade Mark.
Even if I happened to be wrong in relation to specific items within the Applicant’s specification of services, I do not find it appropriate here to carve up the specification of services for the Composite Trade Mark. In any event, the Applicant has not assisted its position in this regard, and I consider that I have not been provided with a ‘principled basis upon which I could approach such a task’.[27]
[27] See Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373, [231] and, on appeal, Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [13].

‘Substantially Identical/Deceptively Similar’

Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd set out the relevant test for determining whether two trade marks are substantially identical, stating:
[the trade marks] should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[28]
[28] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, [414]-[415].
On a side by side comparison, it is evident that the Composite Trade Mark and the cited trade marks are not substantially identical. While the words within the trade marks are identical, it is the particular visual differences between the two that informs my finding. I find that the decisive issue is whether the respective trade marks are deceptively similar.
For a finding of deceptive similarity, two trade marks must so nearly resemble each other that deception or confusion will be the likely result.[29] In Australian Woollen Mills Ltd v F. S. Walton and Company Ltd, Dixon and McTiernan JJ said:
[T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[30]
[29] See section 10 of the Act.
[30] (1937) 58 CLR 641, [658].

The common element between the trade marks is the expression ‘Melbourne City Football Club’. This expression is precisely the same in all the trade marks and it is the only element of the cited trade marks. The cited trade marks cannot be referred to in any other fashion.
On the other hand, the Composite Trade Mark features the expression ‘Melbourne City Football Club’ prominently around the border of a circular device incorporating a number of pictorial elements and the acronym ‘MC FC’.
With regard to the acronym, even the most casual observer of the Composite Trade Mark would realize immediately that ‘MC FC’ is an acronym for the expression ‘Melbourne City Football Club’ because of its relative proximity to that expression within the mark. I find that the meaning of the acronym would also be evident to a consumer who only knew of the cited trade marks.

While the Composite Trade Mark consists of a number of visual elements, when a trade mark combines a device with a word, customers will naturally refer to the word when ordering a product (or engaging services).[31] Those words are identical. A customer of the respective sporting club services would therefore have no option but to refer to both trade marks as ‘Melbourne City Football Club’.
[31]See Sizzler Restaurants International Inc. v Sabra International Pty Ltd (1990) 20 IPR 331.
As I have found earlier, the expression ‘Melbourne City Football Club’, on the face of it, lacks inherent adaptation to distinguish the class 41 services. In the Frigiking Trade Mark case[32], it was made clear that the court’s deliberations must ‘necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’. Matter which is common to the trade should be to some extent discounted in the comparison between two trade marks[33] however, it cannot be completely ignored, particularly where one of the trade marks consist solely of the shared word element. In Mount Everest Mineral Water Limited, Delegate Thompson commented in relation to two composite trade marks:
How should composite trade marks which contain shared elements of varying inherent adaptation to distinguish (which lie at or between the postulated adaptive extremes of, for example, NORTH POLE for ‘bananas’ or GOBI DESSERT for ‘ice-creams’ at one end and FRENCH WINE for ‘wines’ at the other) be compared with other trade marks which share those elements? It is generally true to observe that where one of the trade marks consists solely of the shared element (whatever its inherent adaptation to distinguish might be), the matter may be relatively straightforward: that is where the rights sought or granted must lie and the trade marks should on the face of it be considered to be deceptively similar in terms of section 44 of the Act. But what of situations such as that before me where both sets of trade marks under consideration share elements which are of obviously low adaptive strength along with other matter that may or may not be of great assistance in distinguishing the trade marks from one another? [34]
[32] [1973] RPC 739, [752].
[33] Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 58 RPC 127.
[34] Mount Everest Mineral Water Limited [2012] ATMO 65, [15] (emphasis added in bold)
The situation here is one where the cited trade marks and their capability (or otherwise) to distinguish sports club services is yet to be resolved. However, the wording of section 44 clearly contemplates deceptive similarity on the basis of a trade mark whose registration is being sought, and until the section 41 issue has been properly tested, I must consider use of the cited trade marks in a normal fair manner upon or in relation to the services. In that context, the inevitable conclusion is that the Composite Trade Mark and the cited trade marks are deceptively similar.
If further authority were required on this point, I mention Wilcox, Heerey and Lindgren JJ’s findings in the case of Sports Café Ltd v Registrar of Trade Marks.[35] In that case, the composite trade mark: was found to be deceptively similar to the plain word trade mark: ‘The Sports Café’ as a result of the entire expression appearing within the other trade mark:
Different considerations apply to the appellant's word mark. The word mark must be considered on the basis that it will not be used in conjunction with a substantial and distinctive geometric device, such as the large circle and smaller oblong employed in the appellant's device mark. The geometric device is the factor that makes the appellant's device mark unlikely to deceive. Take it away, and there is left only three words that are identical to three of the four words included in the cited mark. Those three words might be used in a manner that would cause confusion to someone who knew of the cited mark. We agree with Burchett J that the appellant's word mark is deceptively similar to the cited mark.
[35] [1998] FCA 1614.
The respective trade marks are deceptively similar. Accordingly, I turn to consider whether any of the exceptions under section 44(3) of the Act may be applied.

Section 44(3)(a): Honest Concurrent Use

The relevant date for the assessment of honest concurrent use under section 44(3)(a) of the Act is the date of the application. [36] Consequently, the relevant date for the Composite Trade Mark is 5 June 2014.
[36] See Tivo Inc. v Vivo International Corporation Pty Ltd [2012] FCA 252, [244]-[245] (‘Tivo’) and Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [163]-[164].
The Applicant’s submissions argue that the use of the Word Trade Mark should be taken into the consideration of whether honest concurrent use applies to the Composite Trade Mark. However, as I have found earlier, the Word Trade Mark was not officially launched until 5 June 2014, which is the priority date for the Composite Trade Mark. In addition, the Composite Trade Mark is not ‘Melbourne City Football Club’, nor is it (as I have found above) substantially identical to it. The Applicant therefore cannot rely on its use of the Word Trade Mark for the application of section 44(3)(a).
The fact that there is no evidence of concurrent use between the trade marks before the relevant date means that it is unnecessary for me to consider in further detail the remaining criteria for examining evidence of honest concurrent use.[37] I accept the Applicant’s assertion that the adoption of Composite Trade Mark was honest, and the degree of likely confusion between the trade marks has been addressed earlier. However, absent any evidence of Trade Mark use at the relevant time, the Applicant cannot satisfy the Registrar that the honest concurrent user provision should be applied.
[37] As set out in McCormick & Company Inc. v McCormick [2000] FCA 1335, [30].
For the avoidance of doubt, it also follows that the Applicant cannot rely on prior use of the expression ‘Manchester City Football Club’, as it would also constitute an alteration that substantially affects the identity[38] of the Composite Trade Mark. In other words, it is simply not use of the Composite Trade Mark and I cannot assess the criteria using a different trade mark as a basis. Despite the Applicant’s submissions on this point, I also do not find that any argument referring to the ‘Manchester City Football Club’ as an extension of the brand is relevant to honest concurrent use of the Composite Trade Mark.
[38] See section 7(1) of the Act.
I am not satisfied that there has been any use of the Composite Trade Mark before its priority date and I refuse to apply the provisions of honest concurrent use.

Section 44(3)(b): ‘Other Circumstances’

Turning to the consideration of whether the Composite Trade Mark may be accepted having regard to any ‘other circumstances’, the relevant date for that question was also discussed in Tivo:
In Hills Industries, Lander J considered that, on the better view, for the purposes of the exercise of discretion under s 44(3)(b), only those circumstances prevailing prior to the priority date were relevant. … :
s 44 in general assumes an inquiry as at the priority date and as was said in Southern Cross at CLR 595; ALR 118; IPR 468, “the rights of the parties are to be determined as at the date of the application”.[39]
[39] Ibid, [295]
Mr Fox pointed to a number of factors as ‘other circumstances’ that may be taken into account. Some of these circumstances included:

a)The development and extent of the use of the Composite Trade Mark in Australia since the priority date.
b)The Applicant’s business association with CFG and the purported extension of the ‘Manchester City Football Club’ brand referring to the particular arrangement of the words and a device element within the Composite Trade Mark.
c)The submission that the owner of the cited trade marks does not have evidence of trade mark use sufficient for those applications to be accepted.
d)The Applicant argued that the Composite Trade Mark is within the domain of section 122(1)(fa) of the Act, being a trade mark to which the Applicant could obtain registration, referring to Unilever (Australia) Limited v PB Foods Limited.[40]
[40] (1999) 47 IPR 358.

In relation to the first factor listed, I note the extent and nature of the Applicant’s use of its Composite Trade Mark after the priority date is significant, but giving this information substantial weight in the consideration is at odds with the comments regarding the date of assessment in Tivo. In any event, such use after the priority date is not likely to reduce any risk of confusion and I refer to the relevant comments of the delegate in Accentuation Pty Limited v Accenture Global Services GmbH:
I think it is likely, given the extent of its advertising campaign, that many consumers would now be aware of ACCENTURE, however that does not in my opinion reduce the likelihood of deception occurring between these trade marks. What it does do, I think, is increase the likelihood of consumers being confused into thinking that ACCENTUATION is connected in some way to the now more familiar ACCENTURE.[41]

And she went on to observe that:

An applicant who opts to use its trade mark prior to registration does so at its own risk. The applicant as a client of the opponent since 1995 when it traded under the name Andersen Consulting, was aware of the opponent as a provider of similar services under the trade mark ACCENTUATION. Accenture chose to launch its trade mark with a 'saturation marketing' campaign in the full knowledge of the opponent's trade mark and thus took a calculated risk. This does not create an 'other circumstance' that would make it proper to apply the provisions of subsection 44(3)(b). Indeed, a large corporation that knowingly opts to use a similar trade mark in respect of similar services in a similar location to that of another smaller trader would appear to be operating with a blatant disregard for the common law rights of the smaller trader.[42]
[41] [2004] ATMO 6, [43].
[42] Ibid, [45].

For factor b), I have already addressed the difficulty with the brand extension argument in the above reasons. It will suffice here to state that I am not convinced that a business relationship with Manchester City Football Club, if the relevant consumer was aware of it, would be attributed solely to the Applicant and not the owner of the cited trade marks (given the similarity between the two trade marks).
Turning to factor c), the Applicant obtained via the Freedom of Information Act 1982 (Cth) the examination file for trade mark application no. 1646757 and highlighted the examiner’s opinion in the second report that found, amongst other things, that the evidence did not establish use of the trade mark as applied for. Nonetheless, there are a number of reasons why this evidence should not be a factor in the consideration of the acceptance of the Composite Trade Mark.
The trade mark referred to in the evidence is a logo trade mark (no. 1646757) and is not one of the cited trade marks. The evidence was produced in examination for a particular purpose (i.e. to establish honest concurrent use for a ground for rejection under section 44). In that context, the examiner simply stated that the evidence was not use of the logo trade mark. It does not follow, and it is pure speculation at this stage, to allege that the owner of cited trade marks would not be able to demonstrate sufficient use of the cited trade marks as trade marks for them to be accepted.
Finally, with regards to the above reason provided by the Applicant at d), I am not satisfied that this defence to an infringement action is applicable in the current circumstances. Section 122(fa) of the Act specifically refers to whether ‘the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it’. Of course, the opinion of the Registrar as to the rejection of a trade mark application does not mean that this defence cannot be relied upon in potential infringement actions before the court.[43] However, I believe that is a matter outside my purview here.
[43] Unilever Australia Ltd v PB Foods Ltd [1999] FCA 1083, [12].
In summary, I have considered all submissions regarding the application of the other circumstances provision. I am not satisfied on the material before me that it is proper to apply the provisions of section 44(3)(b) and allow the Composite Trade Mark to proceed to acceptance.
I am satisfied that there is ground for rejection under section 44(2) of the Act in relation to the Composite Trade Mark.

Decision

Section 33 of the Act relevantly provides:

33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.

(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.
Note:For this Act see section 6.

As a delegate of the Registrar of Trade Marks I am satisfied that there is a ground for rejecting trade mark application nos. 1712701 and 1717890. In those circumstances, the Registrar must reject the trade mark applications under section 33(3) of the Act. I now do so.

Heath Wilson
Hearings Officer
Oppositions and Hearings
3 November 2016