Mobile Skips (Australia) Pty Ltd

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2297940 (class 39) – MOBILE SKIPS - in the name of Mobile Skips (Australia) Pty Ltd

Delegate:

Nicole Worth

Representation:

Applicant: Andrew Sykes, of counsel, instructed by Buchanan Law Firm Pty Ltd

Decision:

2024 ATMO 180

Trade Marks Act 1995 (Cth) – s 33 – ground for rejecting application under s 41(3) – not to any extent inherently adapted to distinguish services – evidence of use does not show distinctiveness in fact – application rejected.

Background

On 2 September 2022, Mobile Skips (Australia) Pty Ltd (‘Applicant’) filed trade mark application number 2297940 (‘Application’) to register the trade mark detailed below:
Trade mark: MOBILE SKIPS (‘Trade Mark’)
Filing date: 2 September 2022
Services:Class 39: Collection and clearance of waste and rubbish; Storage, handling and transport of waste and rubbish; Removal and dumping of waste and rubbish; all of the aforesaid services by the provision of trailerable bins capable of being towed by a standard domestic motor vehicle or a light commercial motor vehicle.
The application was examined as required by s 33 of the Trade Marks Act 1995 (Cth) (‘Act’).[1] The examiner of the application raised a ground for rejecting in the Application under s 41(3) on the basis that:
Your trade mark is MOBILE SKIPS.
The Macquarie Dictionary defines MOBILE as 1. movable; moving readily or 2. able to be transported from one location to another, while a SKIP IS a container designed to be attached to a crane or cable for transporting materials or reuse in building operations. Your trade mark therefore indicates that your claimed waste transport, removal and storage services utilise movable, or MOBILE SKIPS.
Other traders should be able to use MOBILE SKIPS, or something very similar, in connection with goods or services similar to yours.
[1] Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.
The Applicant responded by filing evidence of use and a copy of the Registrar’s decision made in respect of a previous application by the Applicant to register MOBILE SKIPS. Both of these will be discussed in more detail later in the decision. The examiner maintained the ground for rejection in a further examination report, after which the Applicant requested to be heard. Along with its request for hearing the Applicant filed a declaration exhibiting an expert report for consideration in the upcoming hearing (also discussed in more detail later).
I heard the matter, as a delegate of the Registrar of Trade Marks, on 12 August 2024. Andrew Sykes of counsel, instructed by Scott Buchanan of Buchanan Law Firm Pty Ltd, prepared written submissions for the Applicant (‘Applicant’s Submissions’) and also spoke at the hearing on the Applicant’s behalf.

Evidence

The evidence filed in support of the application comprises the following declarations:
·     Jacob Spencer, Managing Director of the Applicant, with exhibits JS-1 to JS-17, dated 7 February 2024 (‘Spencer’). Paragraphs 25, 26, 27, 29, 32, 33, 36, 37, 39, 40, and 41 of the declaration, and any exhibits referred to therein, are claimed to be confidential.
·     Scott Buchanan, director and principal layer of Buchanan Law Firm Pty Ltd, with exhibits SB-1 to SB-12, dated 7 February 2024 (‘Buchanan’). Paragraphs 12 to 22 of the declaration, and any exhibits referred to therein, are claimed to be confidential.
·     Scott Buchanan with single exhibit SB-1, being an expert report by Michael Simonetti (Managing Director of digital agency ANDMINE) dated 23 May 2024 (‘Simonetti Report’).
A summary of the relevant facts and statements is below.
The Applicant is the registered owner of the following composite trade marks, registered in respect of a broad range of waste removal services in class 39:

Registration No. 1387633	Registration No. 2140816	Registration No. 2140817
Filing date: 8 Oct 2010	Filing date: 3 December 2020	Filing date: 3 December 2020

The Applicant was previously unsuccessful in securing registration of the plain text words MOBILE SKIPS. The previous application was in respect of a broader range of services than is the case here. Its’ details are below.
Trade Mark:   MOBILE SKIPS
Application No.:       2140815
Filing Date:                   3 December 2020
Services:Class 39: Clearance (removal and transportation) of waste; Collection (transport) of waste and trash; Collection of commercial waste; Collection of domestic waste; Collection of waste materials; Collection of waste skips; Disposal (transport) of waste; Dumping (transportation) of waste; Handling (transport) of waste products; Removal of waste; Storage and transport of waste and trash; Storage of waste; Transport and storage of waste; Transportation of waste; Waste collection; Waste removal (transport); Waste storage; Waste transport; Transport and storage of trash; Handling (transport) of rubbish.
The previous application was the subject of a decision of the Registrar,[2] wherein MOBILE SKIPS was rejected under s 41(3) of the Act on the basis that the expression had no inherent adaptation to distinguish the Applicant’s services, and the Applicant’s evidence of use did not prove distinctiveness in fact.
[2] Mobile Skips (Australia) Pty Ltd [2022] ATMO 124, [41]-[42] (‘Mobile Skips’) (Hearing Officer Knowles).
Spencer refers to his evidence given in the proceedings relating to the previous application, and states that rather than repeat all its details, he affirms the accuracy of his earlier evidence and confirms that since then the Applicant has continued to grow its business and reputation in the Trade Mark. For context some of the descriptions of the earlier evidence given in the decision in respect of the previous application are below:
Mr Spencer declares that the Applicant’s business was established in 2006 by Mr Cameron Griffiths who coined the term ‘Mobile Skips’. The Trade Mark has been used by the Applicant’s business since 2006 in relation to transportable domestic waste bins. In addition to using the Trade Mark, the Applicant also uses a composite mark (and variations thereof) which has been registered since October 2010 (trade mark number 1387633):
…
Mr Spencer declares that the Applicant’s business operates a franchise model under which independent franchisees have the exclusive right to operate under the Trade Mark in their territory. As at the date of Mr Spencer’s first declaration, there were seventeen franchises across New South Wales, Queensland, South Australia, Victoria, and Western Australia.
…
Mr Spencer declares that the innovation in the Applicant’s product means that its bins are perfectly suited for waste removal in residential areas given they are readily transportable on wheels, are secured by lockable lids, and can fit down driveways and in undercover garages. The bins are targeted at consumers who are undertaking DIY tasks such as home clean ups and minor renovations, and tradespeople who are conducting jobs at residential homes.
…
Mr Spencer declares that the Applicant has a hugely successful relationship with Bunnings and that as of 3 December 2020, 128 Bunnings stores had skips in their car parks available for hire. Annexed to the declaration are photos of skips available at numerous Bunnings stores in New South Wales, Victoria, Queensland, South Australia, and Western Australia prior to the Relevant Date. Also annexed is a Bunnings advertisement video dated 22 February 2016 and an infomercial released in 2019. The videos collectively have over 23,000 views.
Mr Spencer declares that the Trade Mark has been used on the Applicant’s website (‘Applicant’s Website’) since 2006. Google analytics indicate that there were over 82,000 searches for the Applicant’s Website in 2020. The business has also been promoted through Google Ads continuously since December 2011. These ad campaigns have resulted in between 1,000 to 2,500 clicks each year from 2011 to 2020. Further, Mr Spencer indicates that the Applicant’s Website received between 10 to 80 referrals per day from the Bunnings website during 2020. Mr Spencer annexes Internet Archive Wayback Machine extracts which demonstrate continual use of the Trade Mark on the Applicant’s Website (in addition to use of the Composite Mark and variations thereof) from 2009.
Mr Spencer declares that the Applicant operates Facebook and Instagram social media accounts, and states that a post dated 5 February 2019 reached over 119,700 people and received 138 likes and 31 shares.
…
Mr Spencer provides confidential booking numbers and revenue figures relating to the Services provided under the Trade Mark, including forecasted figures until 2024. The aggregated figures are significant and revenue has grown consistently since 2006…
…
Mr Spencer declares that at the inception of the Applicant’s business, the phrase ‘mobile skip’ was not commonly used to refer to transportable waste bin products. Mr Spencer states that the terms ‘mobile skip’ and ‘mobile skips’ were also not commonly searched on the Internet prior to commencement of the Applicant’s business.[3]
[3] Ibid [6]-[19].
Spencer goes on to state that rather than the small skip market in general, the market in which the Applicant more accurately competes is that of particularly small or mini waste bins that are ‘trailerable’ skip bins mounted on a trailer, and can be towed by a domestic vehicle. Spencer claims that this is an emerging market and the Applicant is the leading operator in Australia.[4]
[4] Spencer, [14].
The Applicant is declared to have a 75% market share of the Australian ‘trailerable’ skip bin market (based upon the proportion of total skip bin assets operated by the Applicant in the market of 22 other competitor’s businesses in Australia identified by the Applicant).[5] The decision in respect of the previous application noted that the Applicant’s then-stated market share was only 0.5% of the small skip bin market in Australia, however Spencer declares that the small skip bin market is much larger than the ‘trailerable’ skip bin market, hence the revised market share figure.
[5] Spencer [16]-[17], Exhibit JS-1.
Similarly, Spencer declares to have attracted to the Applicant’s website approximately 75% of the monthly organic website visits across Australia for all competitors as at the filing date.[6] A screenshot of the Applicant’s website at ‘mobileskips.com.au’ as at 7 December 2022 shows use of the composite marks reproduced in paragraph 7 above. Similar use is shown in extracts from the Wayback Machine dating between 2008 and 2012, wherein the composite marks are shown on their own and upon images of skip bins.[7] Google Analytics data shows a significant number of users going to the Applicant’s website per month in 2022 and a significant number of searches for the Applicant’s website in 2022.[8]
[6] Spencer [18], Exhibits JS-1 and JS-2. The competitors appear to be the same 22 businesses identified by the Applicant in respect of its calculation of market share.
[7] Spencer, JS-11.
[8] Spencer, confidential [36]-[37] and confidential Exhibits JS-12 and JS-13.
As at the filing date, the Applicant had received approximately 4,500 independent 5 star ratings from ‘productreivew.com.au’.[9]
[9] Spencer, Exhibit JS-3.
The Applicant’s agreement with Bunnings continues to contribute significantly to the exposure of the Trade Mark,[10] and contributed significantly to the Applicant’s overall revenue in the 2022 financial year.[11]
[10] Spencer, confidential [26] and confidential Exhibit JS-5.
[11] Spencer, confidential [27].
Promotion via online media channels and through Google Ads has continued since Spencer’s evidence given in respect of the previous application. Confidential data from Google Ads indicates steadily growing ‘clicks’ in the years 2011 to 2022 resulting from the Applicant’s Google Ads campaigns.[12]
[12] Spencer, confidential [32] and confidential Exhibit JS-7.
Confidential net sales data (by dollar value) and number of ‘hires’ shows appreciable sales and steadily increasing growth.[13]
[13] Spencer, confidential Exhibits JS-15 and JS-16.
Spencer reiterates his assertion from the previous proceedings that the Trade Mark does not have an ordinary signification but is rather a coined phrase. He points to the competitors identified in the declaration (in respect of calculating the revised market share) and states that many of those businesses do not resort to using the Trade Mark to describe their services. In that exhibit (JS-1 of Spencer) I note a number of trading names including ‘City Haul Mobile Skips’, ‘Mobile Skip Bin’, ‘Super Mobile Skip Bins’, ‘Brizzy Mobile Skips’, ‘Zoom Mobile Skips’, ‘Singh’s Mobile Skips’, ‘Mandurah Mobile Skips’ and ‘Monsta Mobile Skips’ (as well as a business which formerly traded as ‘Sydney Mobile Skips’ but as of the date of Spencer trades under ‘Small Skip Bins’). Spencer asserts such use is dishonest use by copycat businesses.
Buchanan states that Buchanan Law Firm Pty Ltd has been instructed on several occasions to send cease and desist letters to certain of the Applicant’s competitors. All of the information relating to the cease and desist letters is claimed to be confidential. In general terms, cease and desist letters were sent by the Applicant’s legal representative to competitors perceived to use trade marks that infringed MOBILE SKIPS, and a number of those competitors complied with the Applicant’s demands.
Buchanan also asserts that the decision issued in respect of the previous application made a finding that use of the composite marks (as depicted in registrations 1387633 and 2140816) effectively amounted to use of the trade mark MOBILE SKIPS and that the chevron device represents an addition not substantially affecting the identity of the MOBILE SKIPS trade mark. This is based on the following passage from that decision:
I am satisfied that prior to the Relevant Date the Trade Mark was often used in the manner applied for, or with additions not substantially affecting its identity. Examples of such use include as the identifier of the domain name for the Applicant’s Website and on the Applicant’s Website itself. The words MOBILE SKIPS also appear in certain contexts on vehicles and bins that their use at times is sufficiently independent of associated device elements to constitute use as plain words. I also accept that the Trade Mark would appear as plain words in Internet search results, and I can reasonably infer there has also been extensive aural use by the Applicant and its customers and prospective customers in the course of their dealings. I consider that use of the Trade Mark as a plain word mark (including with permissible additions) is sufficiently co-extensive with use of the Composite Mark, such that the question of which mark is actually used in individual instances is not a determinative factor in my decision.[14]
[14] Mobile Skips (n 2) [47].
Buchanan states that it is difficult to reconcile the finding that MOBILE SKIPS entirely lacked any adaptation to distinguish with the Office’s decision to register the trade marks depicted in registrations 1387633 and 2140816, being trade marks with additions allegedly not substantially affecting the identity of MOBILE SKIPS.
The Simonetti Report provides, amongst other things, information pertaining to the use of and searches for the term ‘mobile skips’ online. The earliest use found, by way of the Wayback Machine, was 29 June 2007 upon a third party’s website (incidentally one of the competitors identified in Exhibit JS-1 of Spencer) which stated ‘Cheaper than a skip, simply pick up a Trailer Trash Mobile Skip from one of our depots, fill it and bring it back to us…’[15] Google searches for the term ‘mobile skips’ did not, according to Google Trends, occur before March 2007,[16] and Mr Simonetti concludes from this that ‘…it was not a commonly used term on or before the adoption of the brand by Mobile Skips (Australia) Pty Ltd’.[17] In respect of traffic to the Applicant’s website, the Simonetti Report estimates that approximately 3.05% of Australians over the age of 15 (or 1 in 32 people) have visited the Applicant’s website. On this basis Mr Simonetti concludes ‘[b]ased on this substantial visitor numbers I conclude that the brand reputation in Australia for ‘MOBILE SKIPS’ is most prominent’.[18]
[15] Simonetti Report, p 26.
[16] Simonetti Report, p 25.
[17] Simonetti Report, p 26.
[18] Simonetti Report, p 29.

Section 41

Section 41 relevantly 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).

A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, if I consider the Trade Mark has some inherent adaptation to distinguish the designated services, I am not entitled to reject it unless satisfied that the combined effect of its inherent adaptation to distinguish, any past or intended use of it, and any other circumstances, has not or will not render the Trade Mark distinctive or capable of distinguishing. If I consider the Trade Mark has no inherent adaptation to distinguish, I am not entitled to reject it unless I am satisfied that it does not in fact distinguish the designated services, having regard to the extent to which the Trade Mark was used before the filing date of the application.

The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the Applicant’s designated services from those of other traders.
Inherent adaptation to distinguish goods or services is to be tested:
[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.[19]
[19] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (‘Clark Equipment’) (Kitto J).
Inherent adaptability depends on the trade mark itself. It cannot be acquired and the inherent nature of the trade mark itself cannot be changed through use or otherwise.[20]
[20] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7] (Gibbs J).
The majority of the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd[21] described the consideration as a two step process: the first being the determination of the ‘ordinary signification’ of the sign in Australia to those who would purchase, consume or trade in the goods; and then having determined the ordinary signification, considering the likelihood of the sign being desired for use by other traders.
[21] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).
The Macquarie Dictionary provides the following definitions for the words ‘mobile’ and ‘skip’:
mobile: adjective 1. movable; moving readily.
skip: noun 1. Also, skip bin. a container designed to be attached to a crane or cable for transporting materials or refuse in building operations.[22]
[22] Macquarie Dictionary Online, 2024 Pan Macmillan Australia, accessed 9 September 2024.
I am aware from my own knowledge that ‘skip’ is also used generally to refer to containers used for transporting refuse, not necessarily just those designed to be attached to a crane or cable. This is reflected in other dictionaries’ definitions, such as ‘skip noun container for waste 2. a large open container for putting old, broken building materials, rubbish, etc. in.’[23]
[23] Oxford Learner’s Dictionaries, 2024 Oxford University Press, accessed 9 September 2024.
It therefore follows that the ordinary signification of the expression MOBILE SKIPS is movable containers for waste. Each word has an ordinary meaning which is retained when the words are combined, and the ordinary meaning of the composite expression is derived from the meaning of its component parts.[24] The alleged lack of use prior to 2007 does not change this outcome. As noted in Primary Health Care Limited v Commonwealth of Australia:
The applicant further submitted that evidence to the effect that the expression [Primary Health Care] was not widely understood by the public meant that it had no ordinary meaning. This submission must also be rejected. It is a non sequitur. That an expression may not be widely understood does not mean that it has no ordinary meaning. In Eutectic Corporation v The Registrar of Trade Marks (1980) 32 ALR 211; 1A IPR 550, cited with apparent approval by Gageler J in Cantarella at [91], Rogers J accepted that the word “eutectic” was not in ordinary use by members of the community, that most users of the applicant’s goods did not know or had forgotten its meaning, and there was no evidence of its use by other traders. Nevertheless, he found that it was an English word and a basic term in metallurgy, meaning melting at low temperature or melting readily. He concluded at 220 that as long as “there remains a need and use for that word by other traders in an honest description of their goods and the word retains its primary and technical meaning, it should remain free in the public domain”, citing Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 514. Accordingly, he dismissed an appeal from a decision refusing to register the word as a trade mark in respect of certain goods for welding, soldering and brazing.[25]
[24] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [84] (Greenwood, Katzmann and Rangiah JJ).
[25] Ibid [85].
Whether or not the Applicant coined the Trade Mark likewise does not alter my conclusion. In similar circumstances, the appellant in Apple Inc. v Registrar of Trade Marks asserted that it was the first to use the expression APP STORE. Justice Yates nonetheless found:
[E]ven if it be assumed that Apple was the first to use the expression “app store”, it would not follow from that fact that APP STORE was, or was to some extent, at the filing date, inherently adapted to distinguish the designated services in Class 35.
Generally speaking, newly-coined expressions will not be taken to be inherently adapted to distinguish if they comprise ordinary English words (even, in some cases, foreign words) that retain the signification which they bear as a matter of ordinary language in relation to the goods or services for which registration is sought. As Dixon J observed in Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited [1946] HCA 15; (1946) 72 CLR 175 at 184:
... I think that the question depends upon the use to which it is intended to put the word-mark. Doubtless a word is no less invented because, when it comes to be affixed to an article, its meaning is determined and perhaps explained. But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration ...
In Eastman Photographic Materials Company, Limited v The Comptroller-General of Patents, Designs, and Trade Marks [1898] AC 571, Lord Herschell explained:
... An invented word is allowed to be registered as a trade-mark, not as a reward of merit, but because its registration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases.
It may, no doubt, sometimes be difficult to determine whether a word is an invented word or not. I do not think the combination of two English words is an invented word, even although the combination may not have been in use before; nor do I think that a mere variation of the orthography or termination of a word would be sufficient to constitute an invented word, if to the eye or ear the same idea would be conveyed as by the word in its ordinary form. ...
In the present case, even if Apple was in fact the first to use the combination “app store”, I am satisfied that, at the filing date, the words in that combination bore no more than their ordinary signification when applied to the designated services in Class 35.[26]
[26] [2014] FCA 1304, [209]-[212].
As in the two cases just cited, the words MOBILE SKIPS retain their ordinary meaning in the Trade Mark, and there is nothing about their combination which imbues the Trade Mark with distinctiveness.
The narrowing of the services from the previous application to the current specification of services does not assist the Applicant. If anything, the Trade Mark is now even more apt for use in respect of the designated services, given they have been defined to precisely those services conducted by way of mobile skips.
The availability of alternative descriptions for mobile skips, such as ‘rolling bins’ or ‘trailer bins’, does not negate or lessen the force of the ground for rejection. As stated by Kitto J in Clark Equipment Company v Registrar of Trade Marks:
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 ways 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.[27]
[27] Clark Equipment (n 19) [8].
This is reflected in the decision in respect of the previous application:
I accept that there are other terms that are more commonly used in relation to the Services. However, even considering the availability and greater popularity of the other terms, I consider that the ordinary signification that emerges from the Trade Mark is directly descriptive, referring to a skip bin that is readily movable.[28]
[28] Mobile Skips (n 2) [41].
I am therefore satisfied that the Trade Mark has an ordinary signification. Because of this ordinary signification, I consider that it is likely that other traders will desire to use the Trade Mark in good faith to describe their own similar services. Indeed, other traders have been shown to use the Trade Mark, and whilst the Applicant alleges that such use is infringing or copycat use, I am not persuaded that this is the case. The alleged lack of use prior to the commencement of the Applicant’s business and the subsequent use by at least 22 other traders may reflect a desire to replicate a successful business, not necessarily a desire to imply an association with the Applicant. Similarly, that some traders have complied with the demands of the Applicant’s cease and desist letters may reflect only a desire not to get involved in expensive or protracted legal disputes, and not necessarily any acknowledgement that use of MOBILE SKIPS (of similar) infringes the Applicant’s rights.
The Applicant makes the further argument that:
[R]egardless of whether the logos are simply a word mark with “permissible additions” for the purpose of s.7(1) of the TMA or not, that fact remains that on the Registrar’s own findings the use of the words MOBILE SKIPS is “co-extensive” with use of the logo. If the logos are not substantially identical the word mark MOBILE SKIPS they must at least be deceptively similar to MOBILE SKIPS. And, hence, if another trader was to use MOBILE SKIPS infringement would occur regardless.
Therefore regardless of whether or not MOBILE SKIPS can be said to have a ordinary signification (which was a focus of the Previous Application Decision) it is simply not possible to see how other traders can legitimately want to use MOBILE SKIPS for such signification in this small market that the Applicant dominates. Use that infringes the rights of a trade mark owner can never be ‘legitimate’. Nor can use that would obvious pass off on the reputation of a market leader and misled consumers.
However, this position relies on the premise MOBILE SKIPS, in plain text, would be found to be a trade mark of the Applicant. I am not persuaded that this would be so, given the Trade Mark’s ordinary signification. Such circumstances are reflected in the defences to infringement under s 122.
I consider that the ground for rejection correctly falls under s 41(3). I therefore turn to consider whether the Trade Mark is shown to be distinctive in fact of the designated services, at the filing date.
I address first the issue of whether or not the use of the words MOBILE SKIPS accompanied by a chevron device is use within the meaning of s 7(1), that is, use of the Trade Mark with additions or alterations not substantially affecting identity. I am not persuaded that this is so. The chevron device significantly impacts the identity of the Trade Mark. Its size and position are not subordinate to the words, rather it has at least an equal presence. The chevron device has no ordinary signification such that it may be discounted to a greater or lesser degree, nor is it a common decorative feature, such as an underline, border or background shape. On the contrary, the composite trade marks shown in the evidence are significantly different to the plain words, such that I do not take use of one to be use of the other.
Nor do I consider that the delegate in the decision regarding the previous application made the finding posited by the Applicant (namely that use of the composite mark fell within the bounds of s 7(1)). The delegate notes that the Trade Mark was ‘often’ used in the manner applied for, or with additions not substantially affecting identity. But in none of the examples he gives of such use does he identify use of the composite mark. On the contrary, he points to use of the words that ‘at times’ is sufficiently independent of associated device elements to constitute use as plain words.[29] The ‘permissible additions’ the delegate refers to relate not to the chevron device but to the examples he gives of use of the plain word: as the identifier of the domain name for the Applicant’s website; on the website itself; upon vehicles or skips bins where sufficiently independent of the device; as part of Internet search results; and inferred aural use by the Applicant and its prospective customers. He then concludes that the use of the plain words and of the composite mark was ‘sufficiently co-extensive’ such that the question of which one was used in individual circumstances was not determinative of the final outcome that the Trade Mark was not distinctive in fact.
[29] Mobile Skips (n 2) [47].
I accordingly do not take the use of the composite marks, being the words MOBILE SKIPS accompanied by a chevron device, to amount to use of the Trade Mark within the meaning of s 7(1).
I infer considerable use of the Trade Mark online from material filed by the Applicant relating to online use. Many Australian customers will have been exposed to the Trade Mark as part of the Applicant’s website address, upon review sites and social media platforms, and will have entered the words ‘mobile skips’ as search terms. I also take note of the now-narrower designated services, the Applicant’s dominant market share, and the growth in website traffic, positive reviews and sales in the period since the previous application.
I observe some use of the plain words upon the Applicant’s website, although the website invariably also shows one or more of the composite marks in a more prominent manner. This is not fatal to the application, but it does obscure the degree to which the plain words might identify the Applicant in their own right. Examples of such use is below, taken from Exhibit JS-11 of Spencer which shows iterations of the Applicant’s website over time.

Additionally, I note the reference to use of MOBILE SKIPS upon vehicles and bins ‘sufficiently independent’ of the device in the previous decision. I have perused the exhibits to Mr Spencer’s declarations given in the previous application and it is not immediately obvious to me which uses upon vehicles or bins are referred to. All of the uses upon vehicles and skip bins are accompanied by a chevron device, albeit in different arrangements. It is possible that one or more of these arrangements are the basis for the refence to ‘sufficiently independent’ use, but without any identification of them and they not being obvious to me, I do not take them into account.
Nonetheless, bearing the above factors in mind, I am not satisfied that at the filing date the ordinary signification of the Trade Mark was displaced and it had a new, secondary signification as a badge of origin for the Applicant’s services. It can be seen from the Applicant’s own evidence that other traders use the expression MOBILE SKIPS. Whilst the Applicant contends that their use is not legitimate, the basis for this claim is primarily that ‘mobile skips’ was not used as a search term prior to 2007 (and the Applicant alleges it coined the trade mark shortly before then, in 2006). I do not consider that the lack of searches for ‘mobile skips’ prior to 2007 indicates that any subsequent use by other traders is not in good faith. Rather I consider it just as likely that, as the mobile skip market grew (which may or may not be based on the Applicant’s success with its own business), other traders wished to join that market using an expression that was entirely apt to refer to their services.
As to the considerable use of the Trade Mark online, there are two points to consider. The first is that use of words in plain text is a function of the online environment. Consumers are more familiar with searching online using plain text (as opposed to image searching), and search results and website addresses are usually provided in plain text. Whilst there is likely to be a degree of consumer recognition of the Trade Mark by virtue of its use as part of the Applicant’s website address, social media profile names, and upon productreview.com.au, I am not satisfied that consumers would rely on the words MOBILE SKIPS alone to identify the Applicant, especially in contexts outside of the online environment.
The second is that there is a well-established principle that use does not necessarily equate to distinctiveness. This was reflected by the High Court in British Sugar Plc v James Robertson & Sons Ltd wherein Jacob J said:
There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark.[30]
[30] [1996] RPC 281, 302.
This principle was also reiterated by Yates J in Buchanan Turf Supplies v Registrar of Trade Marks who stated that ‘Mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes’.[31]
[31] [2015] FCA 756, [34].
Whilst the Applicant has made considerable use of the Trade Mark online for a number of years, there is limited other evidence that attests to the recognition of the plain words as a badge of origin by consumers. I acknowledge the Simonetti Report which gives Mr Simonetti’s opinion that the Trade Mark has a strong reputation amongst consumers. However, that opinion is based primarily upon the extent of website traffic, and not on any evidence of direct appreciation of the Trade Mark. Even then, although the extent of website traffic is considerable and indicative of a successful business, it is not so extensive that it compels an inference that participants in the relevant market must be familiar with the Trade Mark.
In all, the evidence before me is insufficient to satisfy me that the directly descriptive expression MOBILE SKIPS has achieved distinctiveness, even in the narrower market reflected in the designated services. As such the application to register the Trade Mark must be rejected under s 41 of the Act.

Decision

Section 33 of the Act relevantly provides:
33 Application 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.
(2) The Registrar may accept the application subject to conditions or limitations.
(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.
I am satisfied that there is a ground for rejection under s 41(3) of the Act in relation to the Trade Mark. Accordingly, I reject the application to register the Trade Mark.

Nicole Worth

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

25 September 2024

[2024] ATMO 180

25 September 2024

Key Legal Topics

Areas of Law

Commercial Law

Statutory Interpretation

Legal Concepts

Statutory Construction