Open Universities Australia Pty Ltd v 1IQ Pty Ltd

[2012] ATMO 113

TRADE MARKS ACT 1995

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

Re:Opposition by Open Universities Australia Pty Ltd to registration of trade mark application 1418976(35) - Open Tafe - filed in the name of 1IQ Pty Ltd.

Delegate:	Iain Thompson
Representation:	Opponent: Mr Chris Round, solicitor, of Middletons Applicant: Mr Simon Smith, director of the Applicant
Decision:	2012 ATMO 113 s52 Opposition: s41 - inherent adaptation of trade mark Open Tafe in relation to brokerage of TAFE courses - s41(6): no evidence filed by Applicant; subparagraph 42(b) - use of Trade Mark in relation to the Services would be in breach of section 3.1.26A of the Education and Training Reform Act 2006 (Vic). Registration refused.

Background

1. In this opposition to registration of a trade mark under section 52 of the Trade Marks Act 1995 (‘the Act’), 1IQ Pty Ltd (‘the Applicant’) of Bayswater, Victoria, has applied to register the trade mark details of which appear below:

   Application No:           1418976
   Priority Date:               29 April 2011

   Services:Class 35: Referral, classified and advertising services provided online, in relation to educational courses provided by TAFE institutions allowing users to locate courses, gain information regarding courses and enrol in courses directly with TAFE institutions (‘the Services’)

   Trade Mark:                Open Tafe (‘the Trade Mark’)

2. The application was examined was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 18 August 2011.

3. On 18 November 2011, Open Universities Australia Pty Ltd (‘the Opponent’) served and filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice includes the grounds under section 41, subparagraph 42(b), and both sections 43 and 44 of the Act subsequently argued at a hearing. While I will decide this matter under section 41 and subparagraph 42(b) of the Act, and for the sake of completeness, I note that the other grounds listed on the Notice and not argued at the hearing have not been established and that any ground may be argued in an appeal of my decision before the Court where the hearing is de novo.

4. The hearing of the matter was before me as a delegate of the Registrar of Trade Marks in Melbourne on 20 September 2012.  Mr Chris Round, solicitor, of Middletons represented the Opponent.  Mr Simon Smith represented the Applicant in his capacity as Director of the Applicant.

   Onus

5. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   Evidence

6. The Opponent has served and filed evidence in support of its opposition, being a statutory declaration by Ms Melanie Anne Thornton who is General Counsel of the Opponent.  The Applicant did not serve and file evidence in answer; however, I note that Mr Smith sought to rely on various materials in his submissions at the hearing (to which Mr Round objected both because of these materials’ evidentiary nature and because of their relevance to the proceedings).  As far as these portions of Mr Smith’s submissions might be construed to be evidence, they tended to consist of material going to the conduct and operations of the Opponent or its personnel rather to any particular ground of Opposition concerning the Trade Mark and I do not place great weight upon them.

7. Ms Thornton’s declaration provides information regarding the background of the Opponent.  She states:

   The Opponent was established as an initiative of the Commonwealth Government to make higher education more accessible by increasing openness and removing barriers to participation for individuals who for reasons of location, educational background or personal circumstances are unable to attend conventional university study.

   The Opponent is owned and operated by the following 7 universities:

   (a) Curtin University;

   (b) Griffith University;

   (c) Macquarie University;

   (d) Monash University;

   (e) RMIT University;

   (f) Swinburne University; and

   (g) University of South Australia.

   The Opponent was registered as a company on 22 August 1991 originally under the name ‘Chni Pty Ltd’. The Opponent then changed its name on 4 December 1992 to ‘Open Learning Agency of Australia Pty Ltd’ and provided educational services under this name from that date.

   The Opponent changed its name again on 22 November 2004 to ‘Open Universities Australia Pty Ltd’. This is the Opponent’s current name and it has provided services under this name continuously since that date. The Opponent changed its name to its current name to:

   (a) more clearly demonstrate its core purpose of offering open access to university education in Australia; and

   (b) highlight its close relationship with partner universities.

   In addition to offering course from the above universities, the Opponent also offers study units and qualifications from 13 other universities and tertiary education providers including Australian Catholic University, Australian Computer Society, Charles Darwin University, La Trobe University, Learning Network QLD, Murdoch University, Polytech West, TAFE SA, University of New England and University of Western Australia.

   Since 1993 the Opponent has enrolled more than 144,000 students from 189 countries in courses.

8. Ms Thornton’s declaration provides the evidence in relation to the two major grounds of opposition – those under section 41 and subparagraph 42(b) of the Act. Mr Round submitted that the evidence supports a conclusion that the Trade Mark lacks inherent adaptation to distinguish the Applicant’s services because it only states what the services are, is accordingly required by other traders in the ordinary course of trade to so describe their services, and is in fact so used by other traders.

9. Ms Thornton’s declaration also addresses the ground under section 42(b) of the Act which alleges that the use of the Trade Mark would constitute a breach by the Applicant of the Education and Training Reform Act 2006 (Vic)

10. The Applicant’s submissions are, in general, that its services are very tightly restricted to avoid the section 41 ground and that otherwise the Opponent cannot establish its grounds under section 41 and subparagraph 42(b) of the Act.

    Section 41

11. Section 41 of the Act provides:

    41Trade mark not distinguishing applicant’s goods or services

    (1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:For applicant and predecessor in title see section 6.

    Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

    (2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

    Note:For goods of a person and services of a person see section 6.

    (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

    (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

    (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

    (a)the Registrar is to consider whether, because of the combined effect of the following:

    (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

    (ii)the use, or intended use, of the trade mark by the applicant;

    (iii)any other circumstances;

    the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

    (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

    (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

    Note 1:For goods of a person and services of a person see section 6.

    Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

    (6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

    (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

    (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

    Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

    (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

    (b)  the time of production of goods or of the rendering of services.

    Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

12. Branson J discussed the operation of section 41 in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241 where she stated:

    Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (‘the designated goods or services’). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to ‘take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons’. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

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

    (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

    (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

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

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

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

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

13. The initial step is consideration of the question whether or not the Trade Mark is capable of distinguishing the Services from services of other persons.  Accordingly, I must first take into account the extent to which the trade mark is inherently adapted to distinguish the Services from the services of other persons.

14. In Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (‘Clark’) at p514, Kitto J posited the test for inherent adaptation as follows:

    [T]he question whether a mark is adapted to distinguish [is to] 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.

15. I do not consider it is significant that within the Trade Mark the word ‘Tafe’ is not rendered in capitals as it usually is as an abbreviation of the words ‘Technical and Further Education’.  If other traders did indeed want or need to use the expression ‘Open TAFE’ (with the latter word capitalized) in respect of the Services as the Opponent alleges they might reasonably do, that use would, in terms of the test in Clark, infringe the Trade Mark, because the expressions ‘Open Tafe’ and ‘Open TAFE’ are substantially identical to each other: see also Morny Ltd’s Trade Marks (1951) 68 RPC 55; (1951) 68 RPC 131 (CA UK).

16. There is no dictionary definition of the expression ‘Open TAFE’ in the evidence and the Opponent has proceeded partly by analogy and partly by evidencing occurrences of usages of the expression ‘Open TAFE’ by other traders.  I note that while the Opponent has also evidenced informal usages of the expression ‘Open TAFE’ amongst the public who seek Open TAFE courses, it is the needs of traders that are central to the assessment of inherent adaptation.  Such informal usages may help shed some light on whether the expression is in common parlance in relation to services of the same ilk as the Services and could thus be wanted by traders, but it is the needs of traders themselves which are most relevant to the question of whether the Trade Mark would be wanted by other traders, without improper motive in the ordinary course of trade to use in respect of their services.  Such common parlance usages do indicate, however, that when the trade mark is used by traders, it is in the knowledge that the public will immediately know what the trade mark denotes and the commonplace usages thus signal that the trade mark is one which will have some attractiveness to traders and may lack inherent adaptation to at least some extent.

17. The Opponent likens the expression ‘Open TAFE’ to the expressions ‘Open University’, ‘Open Learning’ and ‘Open Education’ and Mr Round drew my attention to the following definitions of those expressions in the Ms Thornton’s declaration.

    At for the Proper Noun ‘Open University’:

    A UK[2] university offering distance learning taught courses, that are open to people without formal academic qualifications, teaching being by correspondence and online with mostly optional tutorials and for some courses compulsory summer schools.

    At for the term ‘Open Learning’:

    An approach to learning that gives students flexibility and choice over what, when, at what pace, where, and how they learn. Open learning often includes aspects of e-learning.

    At for the term ‘Open Education’:

    A collective term that refers to educational organizations that seek to eliminate barriers to entry. Such institutions, for example, would not have academic admission requirements. Such universities include Open University in Britain and Athabasca University in Canada. Such programs are commonly distance learning programs, but not necessarily.

    [2] Wikipedia also provides: Open Universities Australia (OUA) (previously The Open Learning Agency of Australia (OLA)) is an Australian open distance education organisation. Most students are based in Australia, however the courses are available to the rest of the world. Undergraduate courses offered have no first year entry requirements, and there are no quotas for most courses, hence the 'open' aspect.

1. I note that the first definition, above, is also in accordance with the discussion of the Opponent’s operations under the heading ‘Evidence’.

2. Ms Thornton’s declaration also gives the following usages of the same or similar expressions to the Trade Mark by other traders; she states:

   (a) Other traders, that do not appear to have any connection with the Applicant or the Applicant’s business, use variants of the term ‘Open Tafe’ in relation to education services. These traders include:

   (i) Tafe Open Learning which operates from the website Now produced and shown to me and marked exhibit MT-7 is an extract from the TAFE Queensland’s TAFE Open Learning guide which notes that ‘we offer distance and online programs which are self-paced, allowing you to study where and when you like.’

   (ii) OTEN - The Open Training and Education Network is run by TAFE Western Sydney and operates from the website Now produced and shown to me and marked exhibit MT-8 is an extract from the OTEN website which notes that ‘OTEN is the largest non-classroom (distance) education provider in Australia and a world leader in the use of cutting edge technologies and media in education.’ OTEN is often colloquially referred to as ‘Open Tafe’. Examples of such colloquial use are included at MT-8.

   (b) A number of entries are LinkedIn profiles and resumes which include references to ‘Open Tafe’. In some instances these were references to organisations such as OTEN while in other instances these were purely descriptive of distance education provided by online means.

   (c) The searches revealed a single entry for the Applicant, being the Applicant’s Website. As noted at paragraph 15, the Trade Mark is not in use by the Applicant for the provision of the Applicant’s Services.

3. Ms Thornton also exhibits several entries from on-line chat forums where the expression ‘Open TAFE’ is used by the participants:

   Hi everyone, I’m thinking of doing university and open tafe (that is: just doing tafe in your own time from home — so flexible time, no classes clashing etc) concurrently but here’s my question: Should I do an open tafe course that is related to my uni course, or not?

   We have an open TAFE online here in Australia that you could probably study through if you wanted to. Assuming you can’t find something local.

   hi: meeting with my boss went OK, have proposed new job description and also asked for funding to do an open tafe course in marketing. Looking forward to the possibility of having something to get my teeth stuck into!

   i still study its just from home u can do ur studing from home theres place such as open tafe or open university which is were they send u out all ur stuff and u just go in when theres a test.

   I can do a bachelor degree through open learning which is 3 years or should I be doing some open TAFE? (This would defeat the purpose or more practical work though?). They have an online Diploma of Web Development Course.

4. I think that the evidence discussed above leads to a conclusion that the word ‘open’ followed by another such as ‘university’, ‘TAFE’ or ‘education’ indicates a teaching institution where there are no enrolment tests and that the subject matter of which is usually delivered as some form of distance learning.

5. In its written submissions the Applicant describes its service proposed to be offered under the trade mark as being, in essence, a brokerage service.  I gather that the Applicant hopes that many TAFE institutions will list their courses, whether distance education or not, on the Applicant’s website where intending students might search for a course which most suits their needs.

6. This being the case, would other traders who wish to offer a similar brokerage service also want, without improper motive, to use the expression ‘Open TAFE’ only to describe the nature of their similar service?

7. In view of the above discussion of the definitions of the word ‘Open’ combined with a word which indicates some form of learning (and the usages of the expression ‘Open TAFE’ by other traders and also by the public) the answer to this question has to be ‘yes’.  While the Applicant’s proposed service appears to be unique, any trader who wishes in the future to offer a similar brokerage service in relation to distance education courses at TAFE colleges would almost inevitably need to use those words to describe the type of brokerage service that is being offered.  While the Applicant submitted at the hearing that not all of the courses proposed to be listed in its website are those offered by distance learning, I note that registration of the Trade Mark would interfere with the rights of other traders who wish to indicate that the service they offer concerns the brokerage of courses which are denoted by the Trade Mark.

8. In my consideration, the Trade Mark lacks any inherent adaptation in relation to the particular services.

9. The Opponent has established its opposition under section 41.

   Subparagraph 42(b)

10. Subparagraph 42(b) of the Act provides:

    42Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a)[…]

    (b)its use would be contrary to law.

11. In Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24; [2001] AIPC 91-724 Madgwick J stated at [26]:

    […] in my opinion the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase ‘if its use would be contrary to law’ should have an ambulatory meaning, depending upon what kind of tribunal is to apply it. Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged. The idea that ‘contrary to law’ in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar to determine or which are ‘clear cut’, is not sustainable. As a matter of practice, delegates of the Registrar have in some cases determined that a trade mark submitted for registration is contrary to law as a result of its being in breach of other legislation: see Re Application by Slaney (1985) 6 IPR 307 at 309 where a trade mark was found to be in breach of the Health Legislation Amendment Act 1983 (Cth) and Re Application by Athol Thomas Kelly (1987) 8 IPR 667 at 672 where it was found that the trade mark would infringe the Advance Australia Logo Act 1984 (Cth). I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not. Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power. The High Court so held in R v Quinn; Ex parte Consolidated Foods Corporation [1977] HCA 62; (1977) 138 CLR 1, of a power to remove a trade mark from the Register.

12. In order to found its ground under subparagraph 42(b) of the Act, the Opponent relies on section 3.1.26A of the Education and Training Reform Act 2006 (Vic) (‘the ETRA’) which provides:

    3.1.26A  Use of the term ‘TAFE’ or ‘technical and further education’

    (1)A person or body must not use the term ‘TAFE’ or ‘technical and further education’ in its name, or in a description of its activities, operations or services in connection with its operations in and from Victoria if having regard to the circumstances in which it is used it would be reasonably understood to indicate that—

    (a)the person or body using the term in its name is a TAFE institute; or

    (b)the activity, operation or service is being provided by a TAFE institute—

    unless the person or body is a TAFE institute.

    Penalty:20 penalty units in the case of a natural person and 100 penalty units in the case of a body corporate.

    Example

    A body that is not a TAFE institute (which includes the TAFE division of a university) and is not exempted under subsection (2) that offers education services using the name ‘Victoria TAFE Educators’ would contravene subsection (1).

    (2)Subsection (1) does not apply to—

    (a)a recognised TAFE Institute or a person or body that operates a recognised TAFE Institute; or

    (b)a recognised University; or

    (c)a prescribed person or body or person or body of a prescribed class of person or body; or

    (d)a person or body to whom the Minister has given approval under subsection (3) to use the term ‘TAFE’ or ‘technical and further education’ in its name or in connection with its activities, operations or services.

    (3)The Minister may give a person or body an approval to use the term ‘TAFE’ or ‘technical and further education’ in its name or in connection with its activities, operations or services despite the body or person not being a TAFE institute if satisfied that—

    (a)the person or body is established by or operates in association with one or more TAFE institutes, recognised TAFE Institutes or recognised Universities; or

    Examples

    1     A company established by a TAFE institute (or in which a TAFE institute is a participant) for the conduct of TAFE related programs or activities.

    2     A company established by one or more TAFE institutes to conduct professional development for staff of a TAFE institute or a body established by one or more TAFE institutes to represent or assist those TAFE institutes in workplace relations matters.

    (b)it is unlikely that a reasonable person would think that, because of the use of the term ‘TAFE’ or ‘technical and further education’ in the person or body’s name or in connection with its activities, operations or services, the person or body is a TAFE institute.

    (4)The Minister must ensure that notice of an approval given under subsection (3) is published in the Government Gazette.

    (5)In this section—

    recognised TAFE Institute means an institution that—

    (a)is established under an Act of the Commonwealth or another State or Territory; and

    (b)has similar functions to a TAFE institute relating to the provision of courses and programs for technical and further education;

    Note

    TAFE institute is defined in section 1.1.3(1).

    recognised University has the same meaning as in section 4.1.1.

13. The Opponent argues that its evidence shows that the Applicant is domiciled in Victoria and is thus subject to the ETRA and the circumstances of the use of the Trade Mark dictate that it would be reasonably understood to indicate either that the person or body using Trade Mark is a TAFE institute; or that the Services are being provided by a TAFE institute.

14. However, there is an additional problem for the Applicant as it uses the word ‘TAFE’ in the Services which, in my consideration, constitutes a description of its activities:

    Referral, classified and advertising services provided online, in relation to educational courses provided by TAFE institutions allowing users to locate courses, gain information regarding courses and enrol in courses directly with TAFE institutions

15. To an extent, the meaning of section 3.1.26A of the ETRA is problematical because it first relevantly states that a person must not (unless they are a TAFE or University) use the term ‘TAFE’ in its name, or in a description of its activities, having regard to the circumstances in which it is used it would be reasonably understood to indicate that it is in fact a TAFE. However, section 3.1.26A goes on to relevantly provide that the Minister may give a person or body an approval to use the term ‘TAFE’ or ‘technical and further education’ in its name or in connection with its activities, operations or services despite the body or person not being a TAFE institute if satisfied that it is unlikely that a reasonable person would think that, because of the use of the term ‘TAFE’ or ‘technical and further education’ in the person or body’s name or in connection with its activities, operations or services, the person or body is a TAFE institute.

16. I take this juxtaposition of provisions to mean, in effect, that a person or body (other than an exempt person or body) shall not use the term TAFE in their name or in a description of their activities unless it is both unlikely that a reasonable person would connect either the name or the description with an official TAFE institute and also[3] that the Minister has so concluded and given consent to the use of the term.

    [3] ETRA subsection (3).

17. The Applicant’s Services are, or would be, in terms of the ETRA, ‘in and from Victoria’. I have already decided in terms of section 41 of the Act that the Trade Mark lacks inherent adaptation to distinguish the Services; as such the Trade Mark amounts to a description of the Applicant’s activities. Additionally, I have already noted that the Services are a description of the Applicant’s activities. The Applicant does not fall into any of the classes exempt from the provisions 3.1.26A or if it does the Applicant has not furnished evidence of such exemption. Further, the Applicant has not provided a copy of a consent by the Minister.

18. It follows that, prima facie, if the Applicant used the Trade Mark in relation to the Services, it would be in breach of section 3.1.26A of the ETRA.

19. Accordingly, the ground under subparagraph 42(b) is established.

    Decision

20. Subsection 55(1) of the Act provides:

    55Decision

    (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

21. I refuse to register application 1419876.

    Costs

22. Having been successful in its opposition the Opponent is entitled to its costs which I award at the Official Scale against the Applicant.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    19 November 2012

    
    

Open Universities Australia is owned by seven Australian universities. It is governed by a Board of Directors consisting of nominees of the owner universities plus up to 5 independent Directors.