Openfit, LLC
[2022] ATMO 96
•14 June 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2180786 (class 41) – 600 SECS - in the name of Openfit, LLC
Delegate: Katrina Brown Representation: Applicant: Kate Andean of Banki Haddock Fiora Decision: 2022 ATMO 96
Trade Marks Act 1995 (Cth) – s 33 proceeding – s 41 – trade mark is to some extent, but not sufficiently inherently adapted to distinguish – no evidence provided – trade mark application rejected.Background
This matter is an ex parte proceeding pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’) concerning an application to register the following trade mark:
Trade mark no: 2180786
Trade mark: 600 SECS (‘Claimed Mark’)
Applicant: Openfit, LLC (‘Applicant’)
Filing date: 21 May 2021
Designated services: Class 41 - Entertainment services, namely, an ongoing series in the fields of exercise, fitness and nutrition provided through non-downloadable webcasts, podcasts, radio broadcasts, cable television, and the internet; providing fitness information and on-line instruction in the field of physical exercise and tracking progress of workouts, via a website; providing fitness information on a website via a global computer network; publication of on-line diaries (blogs) and providing non-downloadable electronic publications in the nature of articles, videos, brochures in the fields of exercise, fitness and nutrition via a website; educational services and on-line educational services, namely, providing instruction in the fields of the use of exercise equipment and physical exercise, and instructional materials distributed in connection therewith; physical fitness training services, namely, tracking progress of workouts for others; entertainment services, namely, conducting contests; education and entertainment services, namely, providing non-downloadable audio clips, video clips, musical performances, musical videos, film clips, photographs, audio visual materials and information all in the field of exercise and fitness, via a website; entertainment services, namely, providing temporary use of non-downloadable electronic games; educational services, namely, providing web-based and classroom training in the field of the use of exercise equipment and physical fitness for certification of and continuing education for instructors and distribution of training material in connection therewith; educational services, namely, conducting classes, seminars, conferences, workshops, and field trips in the field of the use of exercise equipment and sales techniques and distribution of training material in connection therewith; provision of training, namely members training in the field of the use of exercise equipment and sales techniques; educational services, namely, offering of assessments and surveys in the field of educator training and performance for the purpose of improving teaching procedures; physical fitness training services and consultancy; providing information in the field of exercise training services and on-line educational services, namely, providing instruction in the field of nutrition, and instructional materials distributed in connection therewith; educational services, namely, providing web-based and classroom training in the field of diet and nutritional programs for certification of and continuing education for instructors and distribution of training material in connection therewith; educational services, namely, conducting classes, seminars, conferences, workshops, and field trips in the field of diet and nutritional programs; provision of training, namely, to members in the field of diet and nutritional programs (‘Designated Services’).
The application was examined and a ground for rejection was raised under s 41(4) of the Act as the examiner was of the opinion that the Claimed Mark was to some extent, but not sufficiently, inherently adapted to distinguish the Designated Services. The ground for rejection was articulated in the first examination report as follows:
Your trade mark is 600 SECS.
This is an abbreviation for 600 seconds. This indicates that you provide educational and informative content which lasts for 600 seconds, or 600 SECS.
Your trade mark is therefore not capable of distinguishing your claimed services from those of other traders, as it refers to an aspect of the services. It is unlikely consumers will view your trade mark as a distinctive badge of origin which distinguishes your services in the marketplace.
Other traders should be able to use 600 SECS, or something similar, in connection with services similar to yours.
In support of the application, the Applicant made submissions that the Claimed Mark was capable of distinguishing the Designated Services. However, the examiner did not find those submissions persuasive and maintained the s 41 ground for rejection.
After the third examination report the Applicant requested to be heard. This matter came before me, a delegate of the Registrar of Trade Marks, on 21 March 2022. Kate Andean of Banki Haddock Fiora made written and oral submissions on behalf of the Applicant.
As a preliminary matter I note that the focus here is not to review the examiner’s decision and rationale but rather, to consider afresh the ground for rejection that was raised.
Section 41
Section 41 of the Act relevantly provides:
(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.
…
(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.
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.[1]
[1] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
This is a two-step process.[2] The first step is to identify the signification which the words ordinarily possess (ordinary signification). The second step is to determine whether other traders might legitimately need to use the words for the ordinary signification in respect of their own similar goods and services.
Ordinary signification
[2] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).
The ordinary signification is the ordinary meaning of the words to any person in Australia concerned with the Designated Services.[3]
[3] Ibid [70].
The Claimed Mark consists of the numeral ‘600’ and the word ‘SECS’. The word ‘secs’ is a well-known and commonly used reference to ‘seconds’, a basic unit of time. This is supported by the Macquarie Dictionary which defines ‘secs’ as ‘seconds’. I am satisfied that this meaning is retained when the word is in capitals (i.e., SECS). As such, the ordinary signification of ‘600 SECS’ is a length of time, namely 600 seconds.
Despite accepting that ‘600 SECS’ conveys a sense of time the Applicant asserts that the actual meaning of the phrase is unclear. The Applicant submits that:
The present application is analogous to trade marks comprising foreign words, such as the trade marks considered in Cantarella Bros. Like words in languages other than English, 600 SECS may have a literal meaning, being 10 minutes, that is discernible after investigation or research. However, just as they would likely not immediately understand the Italian words “cinque stelle” or “oro” (as was the case in Cantarella Bros), consumers seeing 600 SECS in the marketplace would not understand what the mark means.
I do not find the Applicant’s position persuasive. Whilst a consumer may not know that 600 seconds equates to 10 minutes, this does not mean that the phrase is ambiguous. Unlike the foreign words ‘cinque stelle’ or ‘oro’, ‘600 SECS’ has a meaning in English that is discernable without investigation or research. Seconds are a recognised unit of time of which the average consumer is familiar. A consumer seeing ‘600 SECS’ in the marketplace would readily understand that the length of time being referred to is 600 seconds (that is, 600 units of 1 second). To put it another way and using the foreign word analogy put forward by the Applicant, ‘600 SECS’ does not need to be translated into 10 minutes to convey a meaning to those concerned with the Designated Services.
In a similar vein, the Applicant asserts that the present application is analogous to an acronym which, whilst having a specific meaning to the creator, does not have an immediate meaning to a consumer without further investigation. As stated above, in my assessment ‘600 SECS’ has an immediate meaning which does not require investigation.
Other traders
Having determined the ordinary signification, the enquiry turns to whether other traders might legitimately desire to use the phrase ‘600 SECS’, or something so nearly resembling it, for its ordinary signification in respect of their own similar services.[4]
[4] Ibid [71].
The Applicant highlights that the examiner was only able to provide evidence of three traders using ‘600 seconds’ in relation to services similar to the Designated Services. Evidence demonstrating that other traders are using the Claimed Mark or something so nearly resembling it, for its ordinary signification can be instructive, but it is not determinative. The ‘other traders’ test posits an ‘essentially hypothetical question’;[5] it has been said that ‘the question is not one of “need” but whether traders are likely, with no improper motive, to desire to use words for the ordinary signification which they possess’.[6] The practical approach to the question was considered by the Full Federal Court in Telstra Corporation Ltd v Phone Directories Co Pty Ltd:
If a word mark is taken as an example, the ordinary signification of the mark, and the question of “whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods” … are closely related questions. Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required.[7]
[5] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (Kenny J), [96]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [146] (Besanko, Jagot & Edelman JJ).
[6] Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235, [158] (Burley J).
[7] [2015] FCAFC 156, [126] (Besanko, Jagot & Edelman JJ).
The Claimed Mark is a combination of a numeral followed by a recognised abbreviation of a measurement of time. The words are arranged in a grammatically correct manner without any embellishment or device. The Claimed Mark has an ordinary meaning which describes an aspect of the Designated Services, namely their length or duration. It strikes me as a combination of words which other traders, without improper motive, may desire to use to indicate that their own similar services are offered in blocks of 600 seconds.
In my assessment, the Claimed Mark is to some extent, but not sufficiently inherently adapted to distinguish the Designated Services. No evidence of use has been filed. Consequently, it is not necessary to consider the combined effect of the inherent adaptation to distinguish, use, intended use or any other circumstances.
Decision
I am satisfied that there is a ground for rejecting the Claimed Mark under s 41 of the Act. In accordance with s 33(3) of the Act, I reject trade mark application number 2180786.
However, if the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s order or direction.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
14 June 2022
Key Legal Topics
Areas of Law
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Intellectual Property
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Statutory Interpretation
Legal Concepts
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Appeal
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Jurisdiction
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Statutory Construction
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