Midland Software Limited

[2014] ATMO 57

TRADE MARKS ACT 1995

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

Re:Extension of protection of International Registration Designating Australia 1533406 (International Registration 1049605) - PEOPLE FIRST- held by Midland Software Limited.

Delegate:	Hearing Officer: Jock McDonagh
Representation:	Holder: Jon Hawker, Rebecca Dutkowski and Sarah Poole of Marks & Clerk Australia, Patent and Trade Mark Attorneys
Decision:	2014 ATMO 57 Regulations 17A.24, 17A.25, Section 41: grounds for rejection under subsection 41(5) – trade mark to some extent inherently adapted to distinguish – no evidence of use provided – protection refused

Background

1. Midland Software Limited (‘the Holder) is the applicant for an international registration designating Australia (“IRDA”) under the Trade Marks Regulations 1995 (“Regulations”), made pursuant to section 189A of the Trade Marks Act 1995 (“Act”), of the trade mark which appears below:

Application No:         1533406 (International Registration No. 1141224)
Lodgement Date:       9 August 2012

Services:Class 9: Computer hardware and firmware; computer software; computer programs; software downloadable from the Internet; CDs; DVDs; electronic publications; downloadable publications; electronic training manuals and training materials; electronic databases

Class 35: Business administration; office functions; data processing; provision of business information; payroll advisory services; payroll preparation; payroll processing services; talent management services; workforce planning services; personnel management; outsourcing services; advice and consultancy in relation to all the aforesaid services
Class 42: Design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; technical advice in relation to computer software; leasing of data processing systems; advice and consultancy in relation to all the aforesaid services; electronic data storage

Trade Mark:               PEOPLE FIRST

(‘the Trade Mark’)

1. During examination the examiner reported that there are grounds for rejecting the IRDA under section 41 of the Act in the following terms:

   To be protected in Australia, your trade mark must be capable of distinguishing your goods/services from the similar goods/services of other traders in the market place.

   Your IRDA is refused because your trade mark is not capable of distinguishing the specified services. This is because your trade mark is the phrase PEOPLE FIRST.

   This is a laudatory term that describes your organisation’s commitment to its customers. It indicates that you place an emphasis on putting PEOPLE FIRST.

   Other traders should be able to use PEOPLE FIRST in connection with goods or services similar to yours.

   This refusal under sub section 41(5) applies to following goods/services:

   Class 35 – all services claimed

   Class 42 – all services claimed.

2. The examiner also reported that there are grounds for rejecting the IRDA under section 44 of the Act in the following terms:

   Your trade mark is substantially identical with, or deceptively similar to, the following trade marks, and is for similar or closely related goods and/or services:

   1083493, 1130528, 1266127, 1386466

   The refusal applies to the following goods/services:

   Class 35 – all services claimed.

3. The Examiner invited the Holder to submit written submissions and/or evidence in support of the claim for protection of the Trade Mark and/or apply for a hearing.

4. Thereafter the Holder made three rounds of submissions in order to address the grounds for rejection which the Examiner maintained under both sections 41 and 44, except that the citations under section 44 were only maintained for Trade mark registrations 1083493 and 1130528. The Holder also offered to amend the Class 35 services. However, the Examiner maintained the grounds asserting that “… this will not overcome the grounds for rejection in relation to the trade mark numbers 1083493 and 1130528. The applicant’s claim in class 35 does not include a claim for financial matters, these services belong in class 36, therefore the exclusion or limitation is unacceptable.”

5. In conclusion, the Examiner advised the holder that “I have carefully considered your submissions and I have discussed these matters with my Team Leader. Further submissions which debate the merit of both the grounds for rejection under subsection 41(5) and section 44 are very unlikely to be persuasive. Therefore, any further submissions must be accompanied by substantial evidence of use, or must otherwise advance the application towards acceptance.”

6. Subsequently the Holder requested to be heard.

7. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 20 March 2014.  Jon Hawker, Rebecca Dutkowski and Sarah Poole of Marks & Clerk Australia, Patent and Trade Mark Attorneys represented the Holder.

Submissions

1. The Holder’s submissions are that the Trade Mark is in fact sufficiently distinctive, the words PEOPLE FIRST are not descriptive of the goods and services offered, in that the ‘people’ involved in the Holder’s human resources software and software services are a step removed from the products themselves. That is to say that the relevant ‘people’ are customers of the Holder’s clients rather than of the Holder.

2. Further, the holder did not accept that the term PEOPLE FIRST was laudatory, and that the examples provided by the Examiner lacked a consistent idea, and in any event to be laudatory required the phrase “putting people first” rather than the two words of the Trade Mark.

3. Mr Hawker referred to registrations of the Trade Mark in the United Kingdom, Europe and Mexico, an accepted application in the United States, and a pending application in New Zealand. With the exception of an overcome distinctiveness objection in New Zealand, none of the other jurisdictions had raised such an objection. Acceptance and compliance reports from these jurisdictions were provided as an annexure to the submissions, which were said to evidence a lack of distinctiveness objections.

4. Mr Hawker repeated his arguments in responses to Examination that the PEOPLE FIRST was not directly descriptive of the goods and services offered by the Holder.

5. As evidence of an intention to use the trade mark, Mr Hawker included an annexure to the submissions (see below), which demonstrated the proposed branding of the Holder’s products and services later this year:

1. The Holder also provided further submissions relating to the section 44 citations, essentially arguing that the services of the financial institutions owning the cited trade marks were not similar to the Holder’s services. A copy of pages of the web site of the new owner of registration 1083493 was annexed to the submissions.

Section 41

1. At the filing date of the Application section 41 of the Act provided:

   41Trade mark not distinguishing applicant’s goods or services

   (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).

2. The way in which section 41 operates was discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 where she said:

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “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”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) 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; or

   (c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

3. Thus the initial step towards answering the question implicit within subsection 41(2) is to first take into account the extent to which the trade mark is inherently adapted to distinguish the designated services from the services of other persons in terms of subsection 41(3).

4. The test for inherent adaptation to distinguish is the familiar one within Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 (‘Michigan’) at [5] where Kitto J stated:

   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.

5. In the three reports, the Examiner has pointed to the words ‘people first’ as being likely to be needed by other traders in the ordinary course of their business. The Examiner had provided numerous examples shown in a Google search of the term.

6. Further, the Examiner, pointed out that the cited trade mark 1130528 [] had been accepted under the provisions of section 41(5) after providing evidence of use.

7. The Examiner suggested that the Holder consider providing evidence of use, intended use or information about other relevant circumstances which could be used to support the Holder’s case.  I agree with the Examiner's assessment of this trade mark, and consider that it could only progress if the Holder had provided had been additional material to assist me in deciding the issue.  The Holder, however, has not provided sufficient relevant evidence, and essentially persisted with the arguments which were insufficient to persuade the Examiner.

1. Although Regulation 21.17 requires evidence in proceedings to be in the form of a declaration, I am satisfied that the power to inform myself under Regulation 21.15(4)   empowers me to take into account the annexures provided.

2. The fact of registration in other jurisdictions does not provide evidence of distinctiveness under Australian statute and common law. It might provide some evidence of an intention to use its trade mark in those jurisdictions but prides no more weight than the fact that the Holder has applied in to extend protection to Australia.

3. The proposed branding shown in paragraph 13, above, while comprising the words PEOPLE FIRST is a device mark that provides considerably different distinguishing features to the Trade Mark.

4. There has been no evidence of actual use in Australia, or indeed other jurisdictions.

5. Without evidentiary support and as I am in the position of being 'unable to decide the question', there is nothing available to assist me in making my decision. Therefore, I am satisfied that there is a ground for rejection under the provisions of section 41 still relevant to this application.

6. Having so decided under section 41, I do not intend to further discuss the section 44 ground.

Decision

1. Regulations 17A.24 and 17A.25 (the equivalent provisions to sections 33 and 34 of the Act that apply to IRDAs) relevantly provide:

17A.24         Final decision on examination

1. The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
   (a)     it is not in accordance with this Division; or
   (b)     there are grounds for rejecting it.

2. The Registrar may accept the IRDA subject to conditions or limitations.

3. The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
   (a)     it is not in accordance with this Division; or
   (b)     there are grounds for rejecting it, in whole or in part.

17A.25         Notice of final decision on examination
(1)…

1. If the Registrar made a report under regulation 17A.16 in respect of the IRDA, the Registrar:
   (a)     must notify the International Bureau of the final decision on examination in accordance with rule 17 of the Common Regulations; and
   (b)     must notify the holder, in writing, of the final decision on examination…

1. The Holder has had an opportunity to be heard. At the end of the process, I am not satisfied that the applied-for words PEOPLE FIRST ‘does or will so distinguish the designated goods or services’. Consequently, I find, in terms of paragraph 41(5)(c), that it is not capable of distinguishing those goods or services in classes 35 and 42. I am therefore satisfied that there is a ground under section 41 of the Act for partially rejecting this IRDA. In accordance with subregulation 17A.24(3), I now partially reject trade mark application number 1533406, International Registration number 1141224, for goods or services in classes 35 and 42. Both the Holder and the International Bureau will be notified of this decision.

Jock McDonagh
Hearing Officer
Trade Marks Hearings
16 June 2014