Multiplan Pty Ltd

[2022] ATMO 220

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2155383 (classes 37, 40 and 42) - MULTIPLAN - in the name of Multiplan Pty Ltd

Delegate:

Tracey Berger

Representation:

Applicant: Lance Scott of Gestalt Law Pty Ltd

Decision:

2022 ATMO 220

Trade Marks Act 1995 (Cth) – s 33 proceeding – s 41 – trade mark is to some extent but not sufficiently inherently adapted to distinguish – evidence of use sufficient – trade mark application accepted

Background

1. This matter is an ex parte proceeding pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] concerning an application by Multiplan Pty Ltd (‘Applicant’) to register the trade mark MULTIPLAN (‘Trade Mark’) under trade mark application number 2155383 (‘Application’) filed on 11 February 2021 for:

Class 37:  Building and construction services; building construction consultancy; construction project management; construction consultancy and supervision; on site building project management; civil construction services; civil engineering (construction and maintenance); development of land (construction); infrastructure construction services; building project management; construction project management; installation and repair services; advisory services relating to building; advisory services relating to construction; construction of steel fabrications; providing information on construction, restoration and installation

Class 40:  Custom construction of goods; custom fabricating, making or manufacturing of goods or materials (for others); custom steel cutting; custom fabrication of steel construction elements; custom steel rolling and fabrication to the order and specification of others; custom fabrication of steel construction elements; custom manufacture of steel construction elements; custom manufacturing services; custom processing services; steel cutting; metal coating, polishing, abrading and cutting services

Class 42:  Construction drafting; civil engineering design services; engineering consultancy; engineering project management services; architectural project management; off-site building project management; design of scale models; research in the field of building construction; steel drafting services; steel detailing services; preparation and provision of reports relating to design, architecture, and engineering; structural and mechanical engineering services; engineering services; engineering consultancy services; engineering design services; engineering drawing services; design of buildings; architectural design services; construction design services; steel modelling services; construction drafting; construction planning; surveying services; professional, design, consultancy and technical services relating to the production and testing of metal products and building materials; scientific and industrial research; computer-aided design services for the construction industry; computer-aided engineering design and drawing services; computer-aided design services relating to architecture

(‘Services’)

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

2.     The Application was examined and a ground for rejection was raised under s 41(4) on the basis that the Trade Mark indicates that the Applicant provides services related to creating multiple designs or proposals pertaining to construction or engineering.

3.     In support of the Application, the Applicant filed submissions and a declaration of Iann Pitout, General Manager of the Applicant, made on 1 September 2021 with Annexures IP-1 to IP-3 (‘Pitout 1’).  This declaration was intended to demonstrate that the term ‘MULTIPLAN’ does not have a meaning and is not used in the relevant industry by the Applicant or other traders to describe ‘multiple plans’.

4.     The objection was maintained in two further examination reports before the Applicant filed another response with a declaration of Iann Pitout made on 1 August 2022 with Annexures EV1 to EV3 (‘Pitout 2’).  The purpose of Pitout 2 was to demonstrate that as a result of the Applicant’s use of the Trade Mark since 1993, the Trade Mark does or will distinguish the Services.

5.     The Examiner was not persuaded by the evidence.  Although Pitout 2 included confidential annual revenue figures for 1994-2020, the Examiner regarded the evidence of use as insufficient because the evidence did not demonstrate use for all of the Services, the Trade Mark is sometimes used with a distinctive device and examples of use were only provided for 1997, 2007 to 2011 and 2022.  Accordingly, the Examiner maintained the s 41(4) ground for rejection.

6.     The Applicant did not respond to the fourth examination report and requested a hearing.  The matter came before me, a delegate of the Registrar of Trade Marks, on 7 December 2022.  Prior to the hearing, the Applicant filed written submissions and a declaration of Iann Pitout made on 2 December 2022 with Annexures IP-1 and IP-2 containing further examples of use of the Trade Mark solus, recent revenue figures and clarifying the services offered.  At the hearing, Lance Scott of Gestalt Law Pty Ltd made oral submissions via videoconference on the Applicant’s behalf.

Discussion

7. As a preliminary matter, I note that the ground is to be considered afresh and that pursuant to s 33(1), I must accept the Application unless I am satisfied that there are grounds for rejecting it.

8.     Section 41 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.

9.     The inherent adaptation of a trade mark is assessed:

[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.[2]

[2] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

10.   Determining the inherent adaptation of a trade mark to distinguish is a two-step process.[3]  Firstly, I must identify the signification which the words ordinarily possess (ordinary signification). Then having regard to the ordinary signification, I must determine whether other traders might legitimately need to use the words for their ordinary meaning in respect of their own similar goods and services.

[3] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

11.   The Applicant submits that MULTIPLAN is a neologism which does not make direct reference to the Services. The Trade Mark is comprised of the element ‘multi-’ which is a well-known abbreviation for ‘multiple’ and the common English word PLAN which is defined as a design, proposal, strategy, programme or schedule.  I am satisfied that in the context of the Services, the Trade Mark conveys that the Applicant provides multiple designs or proposals relating to construction and engineering.

12.   Having determined the ordinary signification, the enquiry turns to whether other traders might legitimately desire to use the Trade Mark or another mark nearly resembling it.  The Applicant contends that it is unclear how or why other traders would want to refer to ‘multiple plans’ and what qualities these words indicate.  The Applicant notes that Pitout 1 was filed to show that the Trade Mark has no meaning and despite Mr Pitout’s long career, he has never encountered another trader using the term MULTIPLAN.   Mr Scott acknowledged that the fact that other traders have not used the mark is not determinative but argued the absence of any use by other traders over a long period does indicate that other traders do not want or need to use the same or similar mark. 

13.   I consider that other traders may genuinely wish to use the term MULTIPLAN or a similar mark to indicate their drafting, drawing and design services relating to the provision of multiple designs or proposals for construction or engineering.    However, I do not regard the meaning conveyed by the mark as being sufficiently direct with respect to many of the services claimed (eg. Steel cutting, metal coating etc) such that other traders need to use the term MULTIPLAN or a similar mark.

14.   In my assessment, the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish drafting, drawing and design services relating to the provision of multiple designs or proposals for construction or engineering (‘Drafting Services’) but is inherently distinctive for the other services claimed in the Application.

15.   Having found that the Trade Mark may be regarded as to some extent inherently adapted to distinguish the Drafting Services, I must consider the ‘combined effect’ of the inherent adaptation to distinguish, use or intended use of the Trade Mark and any other circumstances, to determine whether the Trade Mark will or will not distinguish the Drafting Services from those of other persons.

Evidence of Use

16.   The Applicant declares that since it commenced trading in October 1993, it has continuously used the Trade Mark in relation to construction services, design and shop detailing services, specialising in steel drafting, precision modelling and detailing services.  The Applicant is one of Australia’s oldest and largest construction modelling and shop detailing service providers, with a team that grew over the years from 3 to 40 people.  The Applicant claims it is well known in the shop detailing and steel fabrication industries.

17.   The Applicant attests that its services are highly specialised involving complex projects in the commercial, mining, infrastructure and industrial fields.  The Applicant initially specialised in platework and mechanical packages such as Run of Mine bins used in mining, crushing and screening chutes, transfer chutes, conveyors and shuttle conveyors.  As technology has developed, the Applicant has adapted its service offerings so it no longer provides its customers with physical technical drawings but rather delivers the projects electronically using sophisticated software packages providing for example, 3D models and building information modelling.  The Applicant declares in Pitout 2 that the Services claimed in the Application accurately describes the services offered by the Applicant under the Trade Mark either directly to customers or to its project partners.

18.   The Applicant’s Services are provided across Australia including in WA, ACT, QLD and NSW.  Customers of the Applicant include ASX 200 companies such as BHP Billiton, Rio Tinto, Hamersley Iron and Fortescue Metals Group and historical clients such as Civmec. 

19.   Pitout 2 contains a list of the Applicant’s key projects including various mines, Sydney North West Rail Link stations, stadium structures including Perth Optus Stadium access structures and Docklands Stadium mobile stands, aged care facilities, office complexes, National Museum temporary display gallery, South Flank Shiploader and Offshore Subsea Persephone.

20.   The Applicant’s business has generally increased year on year with significant annual revenue growth from 2015 to 2021.  The business growth is due to word-of-mouth recommendations and successful tenders for projects rather than traditional marketing. 

21.   Prior to 2020, the Applicant operated a website at and extracts from this website, using the Wayback Machine, demonstrating use of the Trade Mark have been provided for 2007, 2009,  2011, 2016,  2018, 2019 and 2020.  These extracts show use of the Trade Mark and also in the following stylised forms:

Further, the extracts demonstrate use of the Trade Mark for a broad range of services including structural steel design and drafting, platework, construction modelling, detailing and conveyors.

22.   In 2020, the Applicant refreshed its brand and adopted a stylised Logo  (‘M Logo’).  As part of the brand refresh, the Applicant developed a new website at Since 2020, the Services have been promoted under the Trade Mark alone and in close proximity to the M Logo on the Applicant’s website, on social media such as LinkedIn and in industry directories.

23.   Although the Trade Mark has been used in the form applied for as well as in other forms and in conjunction with device elements, the essential element of each of the different forms of the mark is MULTIPLAN and it is this element that consumers will recall and use to identify the Applicant and its Services. 

24.   Given the Applicant’s longstanding use of MULTIPLAN, I am satisfied that the Applicant has used the Trade Mark in relation to the Services for many years and the Trade Mark does or will distinguish the Services.

Decision

25. Section 33 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.

26.   I have found that the Trade Mark is sufficiently inherently adapted to distinguish the Services except the Drafting Services.  With respect to the Drafting Services, the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Drafting Services from those of other persons. However, due to the extent to which the Trade Mark is inherently adapted to distinguish and the evidence of use of the Trade Mark, I am satisfied that the Trade Mark is in fact capable of distinguishing the Drafting Services. Accordingly, I accept the Application, with an appropriate endorsement to be added to the Register.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

14 December 2022