Opposition by Australian Traditional Medicine Society Ltd to registration of trade mark application number 2099988 (classes 35 and 44) - Accredited Nutritionist (composite) - in the name of Dietitians Association...

[2024] ATMO 119

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Traditional Medicine Society Ltd to registration of trade mark application number 2099988 (classes 35 and 44) - Accredited Nutritionist (composite) - in the name of Dietitians Association of Australia

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Martin Earley of Baxter Patent Attorneys Pty Ltd

Applicant: Richard Arthur of Counsel instructed by Katie Innes from BAL Lawyers

Decision:

2024 ATMO 119

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 41 and 43 – s 41 established – trade mark refused.

Background  

1. On 6 July 2020 (‘Relevant Date’) Dietitians Association of Australia (‘Applicant’) filed an application to register a trade mark under the Trade Marks Act 1995 (Cth)[1] with the following details:

   Trade mark application number: 2099988

   Trade mark:

   (‘Trade Mark’)

   Services: See Schedule 1 to these reasons (‘Designated Services’)

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) (‘Act’) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

2. The Trade Mark was examined and acceptance was advertised on 7 December 2020. On 3 February 2021, Australian Traditional Medicine Society Ltd (‘Opponent’) filed its Notice of Intention to Oppose. On 3 March 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 23 December 2021, the Applicant filed its Notice of Intention to Defend.

3. On 24 March 2022 the Opponent filed its Evidence in Support (‘EIS’), being a declaration of Charles Wurf, Chief Executive Officer of the Opponent, dated 24 March 2022 with Exhibits CW-01 to CW-11 (Wurf-1).

4. On 27 June 2022 the Applicant filed its Evidence in Answer (‘EIA’), being a declaration of Robert John Hunt (‘Hunt’), Chief Executive Officer of the Applicant, dated 27 June 2022 with Exhibits RH-01 to RH-44.

5. On 30 August 2022 the Opponent filed its Evidence in Reply (‘EIR’), being a declaration of Charles Wurf, dated 30 August 2022 with Exhibits CW-12 to CW-15 (‘Wurf-2’).

6. The parties requested to be heard by teleconference. On 20 March 2024 the Opponent filed its written outline of submissions (‘Opponent’s Submissions’). On 28 March 2024 the Applicant filed its written outline of submissions (‘Applicant’s Submissions’). As a delegate of the Registrar of Trade Marks, I heard the matter on 3 April 2024. The Opponent was represented by Martin Earley from Baxter Patent Attorneys Pty Ltd. The Applicant was represented by Richard Arthur of Counsel instructed by Katie Innes from BAL Lawyers.

Onus and grounds

1. The Opponent has the onus of establishing at least one of its grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3] The Opponent presses grounds of opposition under ss 41 and 43.

Evidence

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

EIS

1. Wurf-1 provides background regarding the nutritionist services provider industry, the Opponent, its business and trade marks. Much of Wurf-1 is simply argumentation rather than evidence. Wurf-1 also provides dictionary definitions for the terms ‘accredited’, and ‘nutritionist’.

2. The Exhibits to Wurf-1 in summary consist of:

   • Exhibit CW-01 being a copy of the Opponent’s corporate constitution, referring to accredited members and accredited course throughout;
   • Exhibit CW-02 being a copy of the Opponent’s membership application form which lists membership requirements;
   • Exhibit CW-03 being a copy of the Opponent’s minimum standards to become a member of the Opponent;
   • Exhibit CW-04 being screen captures of the Australian Natural Therapists Association’s (‘ANTA’) website referring to its members being ‘accredited’ and having ‘professional accreditation’;
   • Exhibit CW-05 which consists of screen captures of the Australasian Association & Register of Practicing Nutritionists (‘AARPN’)’s website and Exhibit CW-06 being its membership eligibility guidelines;
   • Exhibit CW-07 which consists of screen captures of the Nutrition Society of Australia Inc’s (‘NSA’) website and Exhibit CW-08 being its membership requirements;
   • Exhibit CW-09 being screen captures of one of the Applicant’s websites;
   • Exhibit CW-10 which is an undated screen capture of apparently one of the Applicant’s websites enabling users to search a ‘Register of Accredited Practicing Dietitians’; and
   • Exhibit CW-11 being an undated screen capture of NSA’s website.

EIA

1. Hunt provides a description of the Applicant and its activities. The Applicant’s purpose is to, ‘represent, promote and advance both nutrition and dietetics in Australia’.[4] The Applicant has more than 8000 members and Hunt states that, ‘[t]here are 6,845 members who, provided they meet the criteria’ are eligible to use the Applicant’s credential and the Trade Mark.[5] Hunt provides the background of the Opponent’s accredited nutritionist credentialling program.

   [4] Hunt, [14].

   [5] Hunt, [27].

2. Hunt includes copies of the Applicant’s strategic plans for the years 2007 to 2010, 2011 to 2014, 2015 to 2017, 2018 to 2021 and 2022 to 2025.[6] Hunt also provides copies of the annual reports of the Applicant for the financial years ending December 2010, 2012, 2013, 2014, 2016, 2017, for an interim period until 30 June 2018, the financial year ending 30 June 2019 and financial year ending 30 June 2021.[7] Historical copies of the constitution of the Applicant for the years 1997, 2002, 2005, 2009, 2010, 2012, 2013, 2017 and 2020 (which is the current constitution of the Opponent) are also present.[8]

   [6] Hunt, Exhibits RH-2 to RH-6.

   [7] Hunt, Exhibits RH-7 to RH-14.

   [8] Hunt, Exhibits RH-15 to RH-23.

3. It is relevant to mention that the evidence, including the annual reports and strategic plans, reflect that the Applicant has used a number of different trade marks throughout its history. This includes, for example, the following trade marks:

[9] (‘DAA Logo’) [10] (‘Dietitians Logo’)

[9] Hunt, Exhibits RH-08 to RH-13 in the years 2010 to 2018.

[10] Hunt, Exhibit RH-14 in the financial year 2020-2021.

1. It has used a variety of trade marks containing the words ‘accredited nutritionist’ for a number of years including the following from 2006:

1. Rebranding activities occurred in 2016 and the Applicant registered trade mark 1764928 in Australia which I reproduce below:

1. Hunt also states that in or about December 2019 the Applicant commenced work again to refresh its brand. On 26 April 2020, the Applicant filed a number of applications to register trade marks in Australia. In April 2020, the Applicant sought registration of the following trade marks:

1. These trade marks are said to have not met the requirements for registration and ‘[a]s a result of the response from IP Australia, the Applicant sought further advice … to make the design more distinctive’.[11] After further design work, the Applicant filed the applications for the following trade marks:

(‘2089105’)

[11] Hunt, [44].

1. On 25 May 2020, 2089105 was registered as a trade mark. The Applicant also applied to register the Trade Mark. Hunt states that since 2020, ‘the Applicant has used the Trade Mark … consistently’.[12] Hunt references several apparent examples of the use of trade marks in the various annual reports, in extracts of its websites, template certificates and in a template letter of offer for membership and credentialing. It provides examples of members who it says have been authorised to use the Trade Mark and attaches its current style guide.

   [12] Hunt, [51].

EIR

1. Wurf-2 seeks to refute various statements in Hunt and in summary submits that the Applicant is not the sole peak representative body in Australia for nutritionist services or accreditation. It submits that Allied Health Professions Australia (‘AHPA’) are the peak body for representing allied health professions in Australia. The Exhibits to Wurf-2 consist of:

   • Exhibit CW-12 being an undated screen capture of the AHPA’s website;
   • Exhibit CW-13 consisting of a copy of the Opponent’s constitution dated 17 November 2019;
   • Exhibit CW-14 being an undated screen capture of the mission statement of the Opponent; and
   • Exhibit CW-15 being an undated table of requirements for accreditation for the Opponent, AARPN and ANTA.

Consideration

Section 41

1. Section 41 relevantly provides:

   41Trade 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.

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

2. In deciding whether the s 41 ground of opposition can be established, I must ask whether the Trade Mark is capable of distinguishing the Designated Services as those of the Applicant from those of other traders. If I am satisfied that the Trade Mark is not so capable, s 41 requires that the Trade Mark be rejected. Relevant to the assessment of capacity to distinguish is whether the Trade Mark has inherent adaptation to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Designated Services, the s 41 ground of opposition will not be established. However, if I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish, the next question will be whether it has any inherent adaptation to distinguish the Designated Services. If the Trade Mark has no inherent adaptation, the ground of opposition will be established only if I am satisfied that at the Relevant Date it did not in fact so distinguish, taking account of the extent of the Applicant’s use.[13] If the Trade Mark has some inherent adaptation to distinguish, the ground of opposition will be established only if I am satisfied that, after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant’s use, and other relevant circumstances, the Trade Mark does not and will not distinguish the Designated Services.[14]

   [13] Section 41(3).

   [14] Section 41(4).

3. Regarding the ground of opposition under s 41, the SGP states,

   The applicant name is Dietitians Association of Australia and the trademark application is for Accredited Nutritionist. ATMS offers professional membership to natural medicine practitioners who are then called Accredited Members. ATMS has more than 1,900 Accredited Members who are nutritionists. ATMS members routinely use combinations of the words Accredited and Member and Nutritionist. Other professional associations, including Australia Natural Therapists Association, Australasian Association & Register of Practicing Nutritionists and Nutrition Society of Australia provide professional membership for nutritionists.

4. The Opponent submits that the words of the Trade Mark are descriptive and commonly used by other traders and that the Applicant cannot claim to have, nor should they be allowed to have, a monopoly in the words ‘accredited nutritionist’.[15] The Opponent notes that the Trade Mark features two simple curving blue lines that are in the shape of a lower case letter ‘a’ around the words and submits that this is not a distinctive logo.[16] The Opponent submits that the Trade Mark is, ‘a simple stylisation and consumers are unlikely to recognise the stylised elements as belonging to the Applicant’.[17]

   [15] Opponent’s Submissions, [21].

   [16] Opponent’s Submissions, [24].

   [17] Opponent’s Submissions, [28].

5. The Opponent refers me to Primary Health Care Limited v Commonwealth of Australia[18] where the primary judge found that a trade mark consisting of the words ‘Primary Health Care’ surrounded by a rectangular border had no inherent adaption to distinguish. The Opponent also refers me to Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft where an applicant sought protection of the word ‘BAYER’ printed in roman capital letters horizontally and again vertically, so that the printings intersected and the letter ‘Y’ was common to both, with the whole being enclosed within a circle.[19] The High Court found that the trade mark did not meet the distinctiveness requirements.

   [18] [2016] FCA 313 (Jagot J) (‘Primary Health Care’).

   [19] Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71 (Kitto J).

6. A ‘nutritionist’ is ‘someone who studies food and nutrition’[20] and often will also provide advice or counselling in that regard to patients. The word ‘accredited’ refers to a person who has been officially recognised and conferred with credentials of some kind.[21] I would have little trouble finding that the combination of the words ‘accredited nutritionist’ is devoid of inherent adaptation to distinguish any of the Designated Services. These words either directly describe the Designated Services or refer to their intended subject matter.

   [20] Macquarie Dictionary (Online, accessed 11 June 2024) ‘nutritionist’.

   [21] Macquarie Dictionary (Online, accessed 11 June 2024) ‘accredited’.

7. The Applicant refers me to Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), where Dodds-Streeton J noted that:

   It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive. When assessing whether a combination trade mark such as the Fry trade mark is adapted to distinguish, it is necessary to consider the combination as a total composition, rather than the individual constituent elements in isolation.[22]

   [22] [2012] FCA 81, [61].

8. The Trade Mark is a combination of words and a device.  I must not concern myself with any individual portion of the Trade Mark. I must consider the Trade Mark as a whole.[23] The Applicant submits that, ‘when considered as a whole consisting of both the descriptive words and the distinctive and prominent design element, the [Trade] Mark is inherently adapted to distinguish the services of the Applicant from the services of other traders’.[24]

   [23] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380 (Lawrence J).

   [24] Applicant’s Submissions, [5.27].

9. The words ‘accredited nutritionist’ in the Trade Mark are highly prominent and central to the overall combination. These words are surrounded by a double lined border appearing to be a speech balloon. Borders often, including in this case, promote and embellish the words which they surround. The words of the Trade Mark are dominant and the effect of the combination of elements does not take the Trade Mark very far beyond the descriptive significance that inheres in the words ‘accredited nutritionist’. The total combination of features in the Trade Mark or the double lined border in the Trade Mark would not, ‘strike the eye and fix in the recollection’.[25] It is likely that other traders of the Designated Services may desire to use a trade mark with the same words combined with a border, such as a speech balloon. Overall, I consider it likely that a person may desire to use a trade mark so nearly resembling the Trade Mark for the sake of its ordinary signification.

   [25] Ford-Werke AG's Appn (1955) 72 RPC 191, 195 (Lloyd-Jacob J).

10. However, I do not consider the double lined border to be of no significance. In this respect the Trade Mark, as a total combination, has some, though not sufficient, inherent adaptation to distinguish the Designated Services. I should reject its registration only if I am satisfied that, after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant’s use, and other relevant circumstances, the Trade Mark does not or will not distinguish the Designated Services.

11. I next consider the Applicant’s use of the Trade Mark. Hunt states that the Applicant has used the Trade Mark consistently from 2020.[26] The Applicant provides little evidence of its use of the Trade Mark, or a trade mark which is substantially identical with the Trade Mark, beyond its activities in the development of the Trade Mark. Whilst Hunt states that 6,845 members are eligible to use the Trade Mark, examples of the alleged authorised use of the Trade Mark by its members are few. The Applicant’s 2020-2021 annual report provides statistics about the Applicant’s credentialling program and its membership. However, this report and its statistics does not specifically reference the Trade Mark. There is use shown of trade marks, such as the Dietitians Logo and the DAA Logo, shown on the Applicant’s websites and at Exhibit RH-42 to Hunt. However, none of these trade marks constitute use of the Trade Mark as the they contain additions or alterations which substantially affect its identity. The EIA also consists in part of corporate or internal documents of little impact in educating the public that the Trade Mark operates as a badge of origin. The period of the Applicant’s use of the Trade Mark is limited. That use is also limited to use in relation to credentialling services and nutritionist services. The use of trade marks with additions or alterations that substantially affect the identity of the Trade Mark throughout the evidence does not assist the Applicant. I am satisfied that, after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant’s use, and other relevant circumstances, the Trade Mark does not and will not distinguish the Designated Services

    [26] Hunt, [51].

12. Accordingly, the s 41 ground of opposition has been established.

Decision

1. Section 55 relevantly provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, 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.

1. The ground of opposition under s 41 has been established. Accordingly, I refuse to register trade mark 2099988.

2. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or discretion.

Costs

1. The Opponent has sought its costs, which generally follow the event. I award costs against the Applicant in accordance with schedule 8 to the Trade Marks Regulations 1995 (Cth).

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

28 June 2024

Schedule 1

Class 35: Administration of business affairs; Administration relating to business planning; Advice relating to business management; Advice relating to business organisation; Advisory services for business management; Association services being the provision of business support or advice; Business administration; Business advertising services relating to franchising; Business enquiries; Business management; Business promotion services; Business surveys; Conducting of internal business communication surveys; Consultancy relating to business management; Consultancy relating to business promotion; Evaluation of business opportunities; Promotion (advertising) of business; Providing information, including online, about advertising, business management and administration and office functions; Provision of business assistance; Surveys for business purposes; Writing of business project reports; Writing of business project studies; Advertising; Advertising services provided by television; Advertising services provided over the internet; Advertising services provided via a data base; Arranging exhibitions for advertising purposes; Billboard advertising; Collection of information relating to advertising; Direct mail advertising; Direct market advertising; Dissemination of advertising material; Dissemination of advertising matter; Distribution of advertising material; Electronic advertising services; Event management services in the relation to the organization of exhibitions or trade fairs for commercial or advertising purposes; Graphic advertising services; Market research for advertising; Online advertising on a computer network; Organisation of exhibitions for commercial or advertising purposes; Outdoor advertising; Preparation of advertising material; Production of advertising films; Production of advertising material; Production of visual advertising matter; Recruitment advertising; Research services relating to advertising; Updating of advertising material; Writing advertising copy; development of advertising concepts; Administration relating to marketing; Design of marketing material; Direct marketing; Marketing; Production of sound recordings for marketing purposes; Promotional marketing; Transcription of communications (office functions); Association services being the promotion of the interests of members of the association; Compilation of medical reports; Administrative services for medical referrals

Class 44: Advisory services relating to medical problems; Advisory services relating to medical services; Alternative medical services; Complementary medical services; Consultancy and advisory services in relation to medical services; Gastroenterology (medical services); General practice (GP) medical services; Medical services; Oncology (medical services); Paediatric medical services; Providing information including online, about medical services, and veterinary services; Provision of medical services; Aged care services (medical and nursing services); Arranging of medical treatment; Provision of medical treatment; Behavioural analysis for medical purposes; Genetic testing for medical purposes; Preparation of psychological profiles for medical purposes; Psychological testing for medical purposes; Conducting of medical examinations; Dietetic counselling services (medical); Provision of dietetic advice; Health care; Health care consultancy services (medical); Information services relating to health care; Preparation of reports relating to health care matters; Provision of health care services; Lifestyle counselling (medical advice); Medical advice for individuals with disabilities; Medical advisory services; Medical assistance; Provision of medical assistance; Medical care services; Medical clinic services; Medical counselling; Medical diagnostic services (testing and analysis); Medical examination of individuals; Advisory services relating to health; Consultancy relating to health care; Health counselling; Health screening; Medical health assessment services; Personal care services (medical nursing, health, hygiene and beauty care); Medical treatment services; Palliative care services (medical and nursing services); Preparation of reports relating to medical matters; Provision of medical information; Services for the preparation of medical reports; Advisory services relating to nutrition; Consultancy relating to nutrition; Counselling relating to nutrition; Nutrition consultancy; Nutritional advisory services; Provision of information relating to nutrition; Advisory services relating to diet; Counselling relating to diet