Mobile Skips (Australia) Pty Ltd

[2022] ATMO 124

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2140815 (Class 39) – Mobile Skips – in the name of Mobile Skips (Australia) Pty Ltd.

Delegate:	Blake Knowles
Representation:	Applicant: Andrew Sykes of counsel instructed by Buchanan Law Firm.
Decision:	2022 ATMO 124 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – trade mark not inherently adapted to distinguish – evidence of use insufficient under s 41(3) – trade mark rejected.

Background

1.     This is a decision on examination of trade mark application number 2140815 (‘Application’) filed by Mobile Skips (Australia) Pty Ltd (‘Applicant’). The Application was filed on 3 December 2020 (‘Relevant Date’).

2.     The Application is for the trade mark ‘Mobile Skips’ (‘Trade Mark’) in respect of 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 (‘Services’).

3.     The Trade Mark was examined as required by the Trade Marks Act 1995 (Cth).[1] The examiner raised a ground for rejection under s 41 on the basis that the Trade Mark was not to any extent inherently adapted to distinguish the Services and therefore fell for consideration under s 41(3). The Applicant subsequently filed submissions and evidence in response to the examiner’s report. The examiner maintained the ground for rejection, on the basis that the Trade Mark not capable of distinguishing in fact under s 41(3).

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

4.     The Applicant requested a hearing by videoconference and paid the relevant fee. The matter was heard before me as a delegate of the Registrar on 20 June 2022. Andrew Sykes of counsel appeared on behalf of the Applicant, instructed by Buchanan Law Firm. I have decided this matter as a delegate of the Registrar based on the material filed during examination and additional evidence and submissions subsequently filed by the Applicant.

Evidence

5.     The Applicant relies on four declarations in support of the application, namely:

(i)Declaration of Jacob Spencer, Managing Director of the Applicant, made on 18 December 2021, with Exhibits JS-1 to JS-99.

(ii)Second declaration of Jacob Spencer, made on 7 March 2022, with Exhibits JS-A to JS-B.

(iii)Declaration of Michael Simonetti, Managing Director of ANDMINE Pty Ltd (‘APL’), made on 5 April 2022, with Exhibits MS-1 to MS-2.

(iv)Declaration of Chadwick Holland, co-founder and CEO of Premier Waste Management Pty Ltd, made on 2 March 2022.

Spencer declarations

6.     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):

(‘Composite Mark’)

7.     Mr Spencer declares that Mr Griffiths obtained an Australian Innovation Patent (number 2016100763) titled “Transportable Waste Bin” which was granted in respect of the transportable nature of the waste bin which allows it to be moved by a trailer to a location, and be easily collected by a light vehicle.  

8.     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. 

9.     Mr Spencer declares that the Applicant’s business was sold to the Applicant in 2016. A copy of the sale of business agreement is enclosed (‘Sale Agreement’). The sale included the assets and goodwill of the Applicant’s business from three relevant entities, each associated with Mr Griffiths, being Mobile Skip Holdings Pty Ltd, MS Franchising Pty Ltd (the ‘Franchisor’), and Mobile Skips Trailers Pty Ltd (collectively, the ‘Vendors’). Initially the parties agreed that some intellectual property rights would be excluded from the sale and be the subject of a licence from the Vendors to the Applicant. These excluded assets included the Trade Mark and the Composite Mark. However, Mr Spencer declares that rights in the excluded assets were subsequently acquired by the Applicant from the Vendors in 2017. Copies of the licence and subsequent deed of termination, release, and assignment are annexed to the declaration.

10.     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.

11.     Mr Spencer declares that the Applicant licenses the Franchisor with the right to use and franchise all intellectual property rights associated with the Applicant’s business, including the Trade Mark, and the Franchisor then licenses individual business owners with the right to operate a business in a designated location under the Trade Mark. Mr Spencer declares that all goodwill generated by the franchised network and associated with the Trade Mark is owned by the Franchisor who in turn assigns this back to the Applicant via a licence agreement.

12.     Mr Spencer declares that the Trade Mark has been heavily promoted and advertised, including on franchisee trucks, uniforms, and skip bins. Some illustrative examples include:

13.     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.  

14.     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.

15.     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.

16.     Mr Spencer declares that the Trade Mark is referred to by consumers in connection with the Services. Annexed to the declaration is a copy of a pamphlet dated July 2018 containing positive reviews of the Applicant’s business. I note that several reviewers refer to the Applicant’s business by using the Trade Mark.

17.     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 also provides confidential marketing expenditure figures from 2018 and forecasted figures until 2024. Further, Mr Spencer provides figures relating to the number of trailers for hire since 2018 and forecasted figures until 2024. 

18.     Mr Spencer declares that the Applicant only services around 0.5% of the ‘small skip bin’ market, despite ‘impressive’ coverage around Australia. Mr Spencer states that the Applicant intends to significantly increase its revenue and market share by 2030. The forecast revenue, promotional expenditure, and trailer figures are consistent with Mr Spencer’s claims.

19.     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.

Simonetti declaration

20.     Mr Simonetti declares that he is Managing Director of APL, a digital agency retained by the Applicant’s solicitors to provide an independent expert report in respect of certain matters pertaining to the reputation of the Trade Mark. Annexed to the declaration is a copy of the report prepared by APL (‘APL Report’).

21.     The APL Report indicates that the term ‘mobile skips’ was not searched on Google in Australia before March 2007, and that the volume of online searches for the term ‘mobile skips’ historically is very small in comparison to searches for the term ‘skip bins’ or ‘skip hire’. The graph included in the report (shown below) indicates that searches for ‘mobile skips’ are approximately 1-2% of the number of searches for ‘skip bins’ and ‘skip hire’.

22.     The APL Report indicates that the term ‘mobile skips’ was only used on one Australian website, (‘Ttrash Website’) on or before 29 June 2007. An Internet Archive Wayback Machine capture for the Ttrash Website refers to the ‘Trailer Trash Mobile Skip’ and includes an image of a trailer mounted skip similar to those provided by the Applicant. 

23.     The APL Report refers to the approximately 3,800 reviews of the Applicant’s Services, the vast majority of which are highly positive reviews.

24.     The APL Report provides website analytics for visits to the Applicant’s Website which indicate that monthly visits and aggregated total visits between 2011 and 2022 were appreciable. The APL Report also includes Internet Archive Wayback Machine captures of the Applicant’s Website between 2009 and 2022. The APL Report concludes by stating:

The Applicant enjoys a widespread reputation in the MOBILE SKIPS brand. By 3 December 2020 there were over 185,000 Australians that had used the website which operates in the niche skip hire marketplace. Within this marketplace, considering the audience who has interacted with the brand, this is an extremely well-established position to hold in the market. Further, there is virtually no use of the term “MOBILE SKIPS” before it was used by Mobile Skips (Australia) and the only reference I’ve found online close to the 2006 commencement of Mobile Skips in the market is on or around 2007 with the term “Mobile Skip” (note non plural). Therefore the likely reputation enjoyed by Mobile Skips (Australia) as the MOBILE SKIPS brand is universal with the exception of some minor recent instances of competitors attempting to adopt or use the Mobile Skips within their particular branding.

Holland declaration

25.     Mr Holland declares that he has worked in the waste management industry since 2002. Mr Holland co-founded Premier Waste Management Pty Ltd (‘Premier’) in 2007, and the company subsequently grew to become one of the top five waste management companies in Victoria.

26.     Mr Holland declares he was first introduced to the Applicant’s business in 2007 or 2008, and that it was one of several new businesses at the time emerging in the waste management services sector and focusing on the provision of trailer bins to consumers. The other main trailer bin business of the time was ‘Trailer Trash’.

27.     Mr Holland declares that Premier had commercial relationships with both Trailer Trash and the Applicant’s business, and that Trailer Trash initially grew to be about three to four times the size of the Applicant’s business, before the latter grew under its current ownership structure.

28.     Mr Holland declares that the relevant segment of the waste management services market is in his experience known by the terms ‘Trailer Bins’ and/or ‘Trailer Skips’. Mr Holland explains that Trailer Trash, and another business ‘Rapid Waste’, have always described their service as being that of a trailer bin or a trailer skip, and not referred to their commercial offering as being ‘Mobile Skips’ because this is the brand of their main competitor and is not the correct description of the trailer waste segment in which they competed.

29.     Mr Holland declares that ‘Mobile Skips’ is well understood within the industry as being the proprietary brand owned by the successful and high-profile business of that name.

Discussion

30. Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Services of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Services, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Services, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that it did not in fact distinguish the Services based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the combined effect of the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Services (s 41(4)).

31.     The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:

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.[2]

[2] (1964) 111 CLR 511, 514.

32.     In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume, or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[3]

[3] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

33.     In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Full Federal Court said:

In trade mark law, a finding that a “word” mark is not to any extent inherently adapted to distinguish a trader’s goods from the goods of others means that the word, in relation to those goods, serves a purely descriptive function.  The rationale for not allowing such words to be registered as trade marks is that the registration would result in an appropriation of the common stock of language that all should be free to use for its ordinary meaning.[4]

[4] [2020] FCAFC 186, [51] (Middleton, Yates and Lee JJ).

34.     In Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd, Finn J held that:

Nonetheless words 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: [Coats at 984-985]. 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: [Coats at 984-985].

Fifthly, a descriptive word may to a degree be inherently adapted to distinguish because the description itself involves an unfamiliar, obsolete, unexpectedly evocative or purely emotive usage: cf J P Coats at 380; Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) CLR 190 at 194.[5]

[5] [2004] FCA 968, [38]-[39].

35.     In Aldi Foods Pty Ltd v Moroccanoil Israel Ltd, Perram J (with whom Allsop CJ and Markovic J agreed), said:

Further, it is not just the desire of traders to use the word which is relevant; it is also their potential desire to use words nearly resembling that word. So here one must examine not just the inherent adaptability to distinguish the Respondent’s goods of MOROCCANOIL but also of MOROCCAN OIL, MOROCCAN-OIL and perhaps, without deciding, OIL OF MOROCCO. The necessity so to reason was referred to by Kitto J in Clark (at 513) and reflects the reality that once registration of a mark is achieved, it will be infringed not only by persons using it without its owner’s permission but also by those using ‘a sign that is substantially identical with, or deceptively similar to, the trade mark’: s 120(1) of the Act. Furthermore, account must be taken of the fact that no attempt has been made in this case to limit the mark by stylistic or device elements; it is purely a word. As Yates J explained in Apple at 517 [18] that matters because it means that if the word proceeds to registration it will give the Respondent a monopoly on the use of the word (or words) in whatever form they may be ultimately rendered. [6]

[6] [2018] FCAFC 93, [125].

36. The examiner’s objection under s 41(3) was based on the meaning of MOBILE as ‘movable; moving readily’ and the word ‘SKIP’ as a ‘container designed to be attached to a crane or cable for transporting materials or refuse in building operations’, which when combined indicated that the services ‘are waste transport, removal and storage services which utilise mobile or movable skips’.

37.     The Applicant submits that the Trade Mark does not have an ordinary signification when the question is considered from the perspective of ordinary persons in the target audience. The Applicant refers to the APL Report and submits:

The evidence filed in this matter does not favour a finding of ‘ordinary signification’. The expert evidence from Mr Simonetti is telling. Trailer skips or trailer bins are not a new invention. If MOBILE SKIPS had ordinary signification akin in generic meaning to trailer skips or trailer bins from the perspective of “ordinary persons” in the “target audience” then why was nobody entering the term “MOBILE SKIPS” in the Google search engine before the trade mark was coined by the Applicant in 2006?

38. The Applicant submits in the alternative that even if the Trade Mark does convey an ordinary signification, then it is at most an indirect reference. This would mean the Trade Mark should be considered under the provisions of s 41(4) rather than s 41(3). The Applicant refers to the decision in Swancom v Jazz Corner Hotel (No 2) where O’Bryan J in obiter indicated that he considered the trade mark CORNER HOTEL to be to some extent inherently adapted to distinguish.[7]

[7] [2021] FCA 328, [162].

39.     The Applicant refers to the lack of Google searches for the Trade Mark before 2007, and the number of searches for the terms ‘Skip Bins’ and ‘Skip Hire’ compared to searches for ‘Mobile Skips’, and submits that the Registrar, bearing the onus of proof, cannot maintain that the Trade Mark is a direct reference to an ordinary signification in the light of this evidence.

40. I accept that the evidence indicates minimal use of ‘mobile skips’ on the Internet prior to 2007. However, I am required to consider the ordinary signification of the Trade Mark at the Relevant Date. The ordinary signification of the Trade Mark some thirteen years before the Relevant Date is of peripheral relevance. Further, on the question of distinctiveness, a trader who coins a term that is entirely descriptive often derives little benefit in seeking registration from being the first to use that term as a trade mark. The question of registrability under s 41 is concerned with the extent of use and other relevant factors, and is not decided by who was the first in time to use a particular term.

41. On balance, I consider that the Trade Mark at the Relevant Date entirely lacked inherent adaptation to distinguish in relation to the Services and therefore should be considered under s 41(3). 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 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. There is nothing unusual about the Trade Mark that serves to render it suitable for consideration under s 41(4). The fact that the Trade Mark may be somewhat tautological (given, as the Applicant correctly submitted, that all skips are movable in some way) does not negate the clear and direct meaning that emerges from the Trade Mark. I also note that at one stage prior to the Relevant Date, the Opponent’s Website stated: ‘Mobile skips was developed by Cameron Griffiths after spending considerable time living in the United States. Modifying the concept of a standard mini skip bin, Cameron adapted the idea of having skip bins or large rubbish bins on trailers. The mini skip bins, “Mobile Skips” named for their practicality and manoeuvrability was then born. 4m3 in size; they provide a terrific product for builders, DIY, major events and people looking to throw their rubbish out’ [emphasis added].

42.     Having determined the ordinary signification, I am also satisfied that there is a likelihood that the Trade Mark may be desired for use by other traders providing the Services. The desirability of use lies in the fact that other traders may wish to emphasise the mobility and manoeuvrability of their skip bins which renders them more suitable for particular tasks.   

43. As the matter falls for consideration under s 41(3), I must now consider whether the evidence provided by the Applicant establishes that the Trade Mark had in fact come to distinguish the Services of the Applicant at the Relevant Date. I am not permitted to take into account the evidence of intended use provided by the Applicant, although I acknowledge that this evidence predicted significant growth in the Applicant’s business. This would have been a relevant consideration had the Trade Mark fallen for consideration under s 41(4).

44.     In Darwin Funeral Services Pty Ltd,[8] Hearing Officer Smith assessed the registrability of DARWIN FUNERAL SERVICES, having regard to authorities regarding trade marks that have no inherent adaptation to distinguish. The delegate said:

In summary when evaluating the evidence of the Applicant for the purposes of s 41(3)(b), I must consider whether it establishes that the Trade Mark has a new and secondary meaning different from its primary descriptive one and thus, at the filing date, had ceased to be purely descriptive. Another way to look at it is whether consumers regard the Trade Mark alone as a badge of trade origin in the sense that they would rely upon that Trade Mark alone as an indication of trade origin for the Applicant’s Services. In particular, I must look at:

-     the way the Trade Mark has been used by the Applicant;

-     how the particular market has been educated concerning that use; and

-     how the market perceives the Trade Mark in denoting the services in respect of which it is used.[9]

[8] [2019] ATMO 142.

[9] Ibid, [21].

45.     The delegate, after assessing the evidence, held:

As noted in the discussion in British Sugar Plc v James Robertson & Sons Ltd referred to in paragraph 17 above there are marks for which no amount of use could possibly result in the term becoming distinctive. The example provided in that case was SOAP (for soap). In the present case a trade mark such as DARWIN FUNERAL SERVICES for ‘Burial (funeral) services’ while perhaps not unregistrable regardless of the amount of use, comes very close to that standard and would require a very considerable amount of evidence that the Trade Mark has, in the market, established a new and secondary meaning different from its descriptive meaning.

The Applicant has provided the Applicant’s Services for a long time in Darwin.  It clearly has a considerable market share and reputation in the Darwin community, noting what appears to be the very limited number of funeral homes in the Darwin area. However, given the highly descriptive nature of the Trade Mark I am not satisfied that at the filing date, the consumers in the market for the Applicant’s Services regarded the Trade Mark alone as a badge of origin separate from its descriptive nature; i.e. that the mark uniquely identifies the funeral services provided by the Applicant (based in Darwin) over all others.  As noted above, the raw figures for number of burials, sales figures and marketing expenditures are unimpressive.  Furthermore there is limited direct evidence (as opposed to testimonials as to reputation) of how the particular market (many of which may not be aware of the reputation of any particular funeral home) has been educated concerning the use of the Trade Mark or more generally that the market for the Applicant’s Services would see the Trade Mark and identify it as connoting the services offered by the Applicant instead of funeral services offered in the Darwin area.

Much of the Applicant’s evidence goes towards establishing that consumers aware of funeral homes in the Darwin region would be aware of the reputation of the Applicant. The requirement under s 41(3) is a reputation in the market as a whole, which in the case of the market for the Applicant’s Services, is a significantly broader market. In my evaluative judgement, the evidence before me is insufficient to persuade me that the wholly descriptive trade mark DARWIN FUNERAL SERVICES has achieved distinctiveness and as such the application to register the Trade Mark must be rejected under s 41 of the Act.[10]

[10] Ibid, [26]-[27].

46.     As a preliminary point, in considering the evidence, the Applicant submits that I should consider use of the Composite Mark and variations thereof as being use of the Trade Mark with additions not substantially affecting its identity, as permitted by s 7(1). The Applicant contends that it was incorrect for the examiner to discount such evidence and refers to various authorities which support this contention.[11]

[11] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 (French CJ, Gummow, Crennan, and Bell JJ); Accor Australia & New Zealand Hospitality Pty Ltd v LIV Pty Ltd [2017] FCAFC 56 (Greenwood, Besanko, and Katzmann JJ); Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664 (Dodds-Streeton J).

47.     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.

48.     I am satisfied that the extent of use of the Trade Mark prior to the Relevant Date was significant. The Applicant has generated appreciable aggregated revenue from its provision of the Services, and the annual revenue for 2017 to 2020 indicates significant recent growth. The partnership with Bunnings has no doubt also led to increased exposure. However, the extent of use of the Trade Mark must be considered in the context of a very large market for the Services (which basically encompasses any person who desires to dispose of significant amounts of waste). Mr Spencer in his first declaration states ‘Despite the Applicant’s impressive coverage around Australia (one of the highest in the industry), it only services 0.5% of the ‘small skip bin’ market’. As acknowledged in the Applicant’s submissions, this means that one out of every 200 small skip bins supplied in Australia is supplied by one of the Applicant’s franchisees. While the Applicant relied on this figure as advancing its case, I take the opposite view. A market share of 0.5% does not seem to be a particularly large number, and the Applicant cannot be characterised as a having a dominant or impressive market presence.

49. While there is no authority that suggests that use of an entirely descriptive Trade Mark must be ubiquitous in order to be registrable under s 41(3), I am satisfied based on the Applicant’s modest marketshare that the Trade Mark is unlikely to have acquired a secondary meaning as a brand and become distinctive in fact in the context of the skip bin market as a whole. While there would no doubt be a considerable number of consumers who see the Trade Mark as a badge of origin for the Services, there is likely to be considerably more who would merely perceive the Trade Mark as a direct reference to the kind of services offered rather than as an indicator of trade source.

50.     Further, while I consider the opinion of Mr Holland as being based on his honest beliefs and long experience in the waste management field, his knowledge of the Applicant’s business and use of the Trade Mark is based on their mutual dealings and as such may not be reflective of the perception of the Trade Mark in the industry more generally. Similarly, while I acknowledge Mr Simonetti’s evidence as having probative value, I do not consider the conclusion that he has reached that reputation in the Trade Mark is universal is justified based on the evidence as a whole.  

51. I am satisfied, after considering the extent of use of the Trade Mark at the Relevant Date, that the Trade Mark does not in fact distinguish the Services and there are grounds for rejecting the Trade Mark under s 41.

Decision

1. Under s 33(3)(b), if I am satisfied that there is a ground for rejection and the Applicant has been given an opportunity to be heard, then I must reject the Application.

2. Therefore, I reject the Application for all of the Services.

   Blake Knowles
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   28 July 2022