National Health Call Centre Network Ltd
[2014] ATMO 6
•28 January 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1497299 (9; 16; 41; 42; 44) - NATIONAL HEALTH SERVICES DIRECTORY - in the name of National Health Call Centre Network Ltd.
Delegate: | Heath Wilson |
Representation: | Applicant: Michael Hall of Counsel instructed by Brett Doyle of Clayton Utz. |
Decision: | 2014 ATMO 6 Section 41 of the Trade Marks Act 1995 – limited inherent adaptation to distinguish – other circumstances and evidence of use not sufficient to show trade mark capable of distinguishing – application rejected. |
Background
The National Health Call Centre Network Ltd (‘the Applicant’) filed an application to register a trade mark (‘the Trade Mark’) on 20 June 2012, the current details of which are:
Trade Mark No. 1497299
Trade Mark: NATIONAL HEALTH SERVICES DIRECTORY
Specification of Goods and Services:
Class 9: Computer hardware, software and firmware including apps for tablet computers, mobile phones and other portable electronic devices; downloadable electronic publications; apparatus for recording and/or reproduction of sound and/or images including DVDs, compact discs, cassettes and magnetic data carriers; fridge magnets
Class 16: Printed matter and publications; stationery
Class 41: Education and training services, seminars and conferences including such services provided online; occupational health and safety services; information services related to the foregoing services
Class 42: Health information networks and portals including technology (computer) support services; consultancy in relation to occupational health and safety; information services related to the foregoing services
Class 44: Mental health services and psychology/psychiatric services; information services related to the foregoing servicesThe trade mark application was examined under the provisions of section 31 of the Trade Marks Act 1995 (‘the Act’). A ground for rejection was initially raised under (the pre-15 April 2013) section 41(5) of the Act[1] on the basis that the expression comprising the Trade Mark indicated “that the goods and services [the Applicant] provide are, or are in relation to, a nationwide directory for health services.”
[1] As the Trade Mark was filed prior to the amendments introduced by the Raising the Bar Legislation commencing on 15 April 2013, the now repealed provisions of section 41 of the Act apply (See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50).
In response, the Applicant submitted two statutory declarations of John Cowell (General Counsel of the Applicant), the first dated 12 March 2013 with exhibit JC-1 and the second dated 24 July 2013 with annexures A to D. Neither was sufficient to overcome the ground for rejection and the Applicant requested to be heard under section 33(4) of the Act.
Prior to the hearing, the Applicant supplied the statutory declaration of Brett Doyle dated 14 November 2013 with exhibit BD-1 and later supplied the Office (on 3 December) with a third statutory declaration of John Cowell dated 15 November 2013 along with a new exhibit JC-1. Mr Doyle stated at the hearing that the third statutory declaration of John Cowell was intended to replace and update the two declarations previously filed. Any reference in these reasons to the declaration by Mr Cowell is to the declaration dated 15 November 2013.
On 19 November 2013, I heard this ex parte matter in Sydney. The Applicant was represented by Michael Hall of Counsel with Brett Doyle of Clayton Utz, Lawyers attending. Various representatives of the Applicant were also present.
The Law
Prior to 15 April 2013, section 41 of the Act relevantly provided:
41Trade mark not distinguishing applicant’s goods or services
(1)…
(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.
(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.
(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.
Branson J in Blount Inc v Registrar of Trade Marks[2] set out the approach to section 41 of the Act:
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)).
[2] Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498.
Once the Registrar decides that the application is only to some extent (or indeed not at all) inherently adapted to distinguish the designated goods or services, the determination largely becomes one of fact. The Applicant needs to establish that the Trade Mark does distinguish, or is capable of distinguishing, the designated goods and services from those of other traders.
Discussion
The Trade Mark is ‘NATIONAL HEALTH SERVICES DIRECTORY.’ To determine whether it is inherently adapted to distinguish I must decide whether other traders of the designated goods or services are likely, in the ordinary course of their business (and without improper motive) to desire to use the expression ‘National Health Services Directory’ upon or in connection with the goods or services.[3] It is not whether other traders are currently using that expression in the course of trade that I must consider, but rather “the common right of the public to make honest use of words forming part of the common heritage, - for the sake of the signification they ordinarily possess”.[4] Conducting a search over the Internet for uses of the expression can assist, but such a search is not necessarily conclusive in deciding the overall issue.
[3] See F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555.
[4] See Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514; [1965] ALR 344 at 345–6, per Kitto J.
The Trade Mark clearly describes a nationwide directory of health services and I note that Mr Cowell himself says (my emphasis):
The NATIONAL HEALTH SERVICES DIRECTORY is a “consolidated and comprehensive national directory of health services and provider information. It is a strategic component of the National Health Reform Agenda and a joint initiative of all Australian governments.[5]
[5] Statutory declaration of John Cowell at paragraph 8.
The ordinary meaning of the expression is evident when considered in light of the designated goods and services. The use of a trade mark means use upon, or in physical or other relation to, the goods or services (ss7(4) and 7(5)). It is this scope of notional use that I must consider when determining whether the Trade Mark is inherently adapted to distinguish the designated goods and services.
A directory of national health services (or a national health services directory) can be provided either in print or in an electronic format (encompassing products such as portable hard drives, software applications and DVDs). The Trade Mark used in relation to the goods in classes 9 and 16 would accordingly be an expression that other traders (operating without improper motive) would be likely to desire to use. Classes 41, 42 and 44 in the specification respectively include education and training; health information networks and portals; and mental health services and psychology/psychiatric services. It is my conclusion that the Trade Mark is not inherently adapted to distinguish these services and must accordingly be considered under the provisions of 41(5) or 41(6) of the Act.
Mr Hall argued that the fact the Trade Mark comprises four words must give the Trade Mark a scintilla of inherent adaptation to distinguish the designated goods and services. The more words that comprise a trade mark, he submitted, the more distinctive a trade mark must become. I cannot agree with that bald proposition. Each trade mark must be assessed on its own merits and regardless of how many words it contains, if the expression is one which other traders would desire to use upon or in connection with the goods or services, it must lack inherent adaptation to distinguish those goods and services. This is particularly the case for trade marks comprising slogans and descriptive expressions such as “MAKE YOUR JOB EASY!” for services in classes 35, 37, 39, 40, 41, 43 and 44[6], “LOCAL DIRECTORIES YOUR LOCAL PHONE BOOK” in classes 16 and 35[7], “HELPS BABY BREATHE EASIER, NATURALLY” in class 5[8] and “REAL DAIRY ICE CREAM” in class 30.[9] All of the aforementioned trade marks were assessed under section 41(6) of the Act and therefore the fact that they comprised four or more words was not considered relevant in assessing whether they were to any extent adapted to distinguish the claimed goods or services.
[6] Kennards Hire Pty Limited [2012] ATMO 39.
[7] Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2010] ATMO 37.
[8] Valeant Pharmaceuticals International v Care Pharmaceuticals Pty Ltd [2008] ATMO 51.
[9] Unilever Plc and Unilever Australia v Regal Cream Products Pty Ltd [2011] ATMO 98.
I do, however, accept that a descriptive word or expression can be recognized under the Act as distinctive or at least having the capacity, at some future time, to become distinctive. It can accomplish this via the provision of evidence of use that is sufficient to satisfy the Registrar that the trade mark can be accepted under the provisions of sections 41(5) or 41(6) of the Act.
In terms of the inherent distinctiveness of the expression forming the Trade Mark, Mr Doyle referred me to the decision of Application by Hardings Manufactures Pty Ltd t/a Wyandra Industries[10]. In that decision, Chief Assistant Registrar Farquhar was determining an opposition to the trade mark “Wyandra Golden Crumpets” under the provisions of the Trade Marks Act 1955 (Cth). She said:[11]
It seems to me that “golden”, although bearing a considerable degree of descriptive reference to bakery goods, and being commonly used by traders in their marks and everyday reference to those goods, nevertheless has some spark of inherent adaptedness to distinguish which puts it on the other side of the boundary from those descriptions which can never serve to distinguish one trader’s goods from another’s.
[10] Application by Hardings Manufactures Pty Ltd t/a Wyandra Industries (1985-1987) 8 IPR 147.
[11] (Supra) at p154.
While I am not convinced that the situation before me is entirely analogous to that in the above case, the particular order that the words comprising the expression appear in the Trade Mark is not entirely commonplace. It is for that reason that I find the Trade Mark ‘National Health Services Directory’ when considered in its entirety in relation to all of the designated goods and services, possesses a modicum (to use a word other than ‘spark’ or ‘scintilla’) of inherent adaptation to distinguish.
I find that the Trade Mark applied upon or in relation to all of the designated goods and services is to some extent inherently adapted to distinguish, but I am unable to decide on that basis alone whether it is capable of distinguishing. As a result, the provisions of section 41(5) of the Act are applicable and I will now turn to the consideration of whether the Trade Mark does or will distinguish the goods and services taking into account the factors then mentioned in s41(5)(a) of the Act.
The Applicant’s Evidence
The Cowell declaration annexes a Heads of Agreement between the States and Territories of Australia dated 10 February 2006. The parties to the Agreement agreed to establish the Applicant, which was subsequently incorporated on 30 August 2006. The declaration also indicates that “The NATIONAL HEALTH SERVICES DIRECTORY commenced operation on 1 July 2012” (after the date of filing). A tool for mobile devices for accessing the directory (“the App”) was made available to the Australian public from August 2012. However, it was not until 6 December 2012, that then Federal Minister for Health Tanya Plibersek officially launched the internet directory to provide patients in Australia with information about their local health services. I note that the printed press release exhibited with the declaration only once mentions the expression ‘the National Health Services Directory’ which appears in the body of the document.
The Applicant’s product was named the ‘National Health Services Directory’ and patients can use the directory via a computer or by downloading the free App onto their mobile device. The evidence indicates that it is a program that enables users to locate their nearest doctor, pharmacy, hospital and emergency department and provides certain information about them (such as opening hours, bulk billing, etc.). There is no evidence that the Applicant provides or intends to provide mental health services or education and training services to the Australian public. In addition, there is no indication of Trade Mark use on or in relation to printed publications or stationery.
The initial promotion of the Applicant’s product was predominantly aimed at health care professionals, with the exception of some website promotions and the official launch of the product on ‘the Today Show’ on Channel 9. The publications referred to in exhibit JC-1 (Tab 3) of the Cowell declaration are independent reviews of the Applicant’s product from December 2012. In these examples, the product is sometimes referred to by the acronym “NHSD”. In one example, the article states that “The NHSD is a consolidated and comprehensive national directory of health services and provider information”.
Any kind of use at all will not suffice. The evidence from the Applicant must demonstrate use as a trade mark or a badge of origin. In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH[12] it was noted that:
In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears.
[12] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874.
The words making up the Trade Mark appear in a number of forms in the evidence before me, some of which do not contribute at all to distinguishing any of the designated goods or services. Elsewhere in the evidence, the Trade Mark is used alongside the device of a stylised magnifying glass:
(‘the NHSD Logo’)
I note that the Applicant has also applied to register the NHSD logo (Trade Mark no. 1578872) which is, at the time of writing, pending acceptance.
The Applicant’s own promotional brochure displays a picture of the App itself with the acronym NHSD appearing alongside the magnifying glass device. Such use is clearly not use of the Trade Mark. Accepting that the following comments were made in the context of the Trade Marks Act 1994 (UK), I note that Jacob J said in British Sugar Plc v James Robertson & Sons Ltd:[13]
I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. 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.
[13] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 302.
If a trader uses an expression with a low level of inherent adaptation to distinguish in a descriptive way, such use will not serve to distinguish the goods to which it is applied from those of other traders. Instead it is likely to have the opposite effect and emphasise the non-distinctive nature of the expression.
Throughout the Applicant’s evidence, the use varies from describing “a National Health Services Directory” to advertising “the National Health Services Directory.” For example, one of the Applicant’s web pages uses the expression in both forms on the same page directly alongside each other. It states “What is the National Health Services Directory?” and also “Why does Australia need a National Health Services Directory?” (My emphasis). Evidence such as this highlights the importance of the context in which such an expression is used.
While it is clear that there has been substantial expenditure on developing the software application known as the ‘National Health Services Directory’, the amount of expenditure on actually promoting the name as a Trade Mark to the Australian public is much less evident. I note from the evidence that funding for the marketing of the product to the Australian public had been approved by the previous government, but at the time of the Cowell declaration that funding had been withheld.
As I have already mentioned, the majority of the evidence is targeted at health professionals with the Applicant’s website (shown at “Tab 4” to exhibit JC-1) offering information brochures for pharmacies, general practice, specialists and allied health professionals. Electronic newsletters have recently been sent out to those professionals involved in the development of the directory. In addition, various medical conferences are listed where the Applicant’s product has been or will be publicized. The focus is once again on health care professionals, and I have not been provided with any information regarding whether these conferences are open to the public or the nature and extent of the publicity for the Trade Mark at these events.
The declaration of Brett Doyle annexes the results of a questionnaire concerning the Trade Mark. The survey is of various stakeholders within the health and medical sector. The questionnaire was sent out on 23 September 2013 on a “Health Direct” letterhead (“Health Direct” being the Applicant’s trading name) and generated 23 responses from the 82 forms sent out. Of those 23 responses, around half recognized the expression ‘National Health Services Directory’ as being associated with the Department of Health and/or (not surprisingly, given the letterhead used) “Health Direct”. Others either did not recognize the Trade Mark or mistakenly attributed it to another entity. In my view, this indicates that even within such a targeted survey of stakeholders any association with the Applicant is not well-known. Furthermore, I am not convinced that those people surveyed who acknowledged that the Applicant was the operator of the directory, saw the Trade Mark as a badge of origin for the Applicant’s goods and services.
In short, there has been some use demonstrated of the Trade Mark in the course of trade for some of the goods and services. However, there is also use of the words ‘national health services directory’ for the apparent purpose of describing the product itself, a concurrent use of the acronym NHSD and use of the Trade Mark (or the acronym) accompanied by the stylised device of the magnifying glass. The marketing of the goods and services provided under the (claimed) Trade Mark that has occurred to date has been limited in scope to medical professionals. In addition, the use has been confined to the promotion of a software application which provides information about health services. As a result, for many of the designated goods and services there is no evidence of use or intended use at all.
As a consequence, I am not satisfied that the provisions of s41(5)(b) of the Act can be applied. I find that there is a ground for rejecting application 1497299.
Decision
Section 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.
Note:For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note:For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:For applicant see section 6.
I reject trade mark application no. 1497299.
Heath Wilson
Hearing Officer
Trade Marks Hearings
28 January 2014
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