Opposition by Brickfields Consulting Pty Ltd to registration of trade mark application number 1875371 (class 42) – PLACE VISIONING - in the name of Andrew Hoyne Design Pty Ltd

[2021] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by Brickfields Consulting Pty Ltd to registration of trade mark application number 1875371 (class 42) – PLACE VISIONING - in the name of Andrew Hoyne Design Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Chris Burgess of Counsel instructed by MacPherson Kelley Applicant: Ian Horak of Counsel instructed by Media Arts Lawyers
Decision:	2021 ATMO 15 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss41 and 58 pressed – section 41 considered trade mark not to any extent inherently adapted to distinguish – trade mark refused.

Background

1. This matter is an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Andrew Hoyne Design Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:	PLACE VISIONING (‘the Trade Mark’)
Trade mark application:	1875371
Filing Date:	6 October 2017 (‘Priority Date’)
Specification:	Class 42: Design services; Design services for architecture; Design services for artwork; Design services relating to printing; Environment design services; Graphic design services; Interior design services; Design of products; Design of printed material; Graphic design of promotional matter; Web site design; Web site design consultancy; Urban design; Urban planning; Environmental consultancy services; Design planning (‘Applicant’s Services’)

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 29 March 2019. As one of 13 different opponents (eight of whom were represented by the same attorneys and filed identical evidence in support of their respective oppositions), Brickfields Consulting Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose on 24 May 2019 followed by a rectified Statement of Grounds and Particulars (‘SGP’) on 28 June 2019. Thereafter the Opponent (and seven others) and Applicant filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

   3.     As the evidence relied upon is the same in the other eight oppositions represented by the same attorneys, it was accepted that the outcome of this opposition will govern the outcome in the remaining oppositions.

2. I heard, by way of video conference, the matter in Canberra on 20 October 2020 as a delegate of the Registrar of Trade Marks. Chris Burgess of Counsel, instructed by of MacPherson Kelley and Trade Mark Attorneys, appeared for the Opponent. Ian Horak of Counsel, instructed by Media Arts Lawyers, appeared for the Applicant.

   Grounds of Opposition

3. The SGP nominated grounds of opposition under ss 41, 43, 58, 59, 62 and 62A of the Act. The onus is upon the Opponent to establish one of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663, and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

4. The Opponent pressed ss 41 and 58 of the Act at the hearing.

5. The time at which the grounds of opposition must be established is the Priority Date, being the date of the application for registration of the Trade Mark. [2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 95.

   Evidence

   8.     The evidence consists of the following declarations:

Declarant	Position	Date Made	Comments
Evidence in Support
Jeanette Charlotte Lambert	Director of the opponent and senior strategist	18.10.19	(‘Lambert 1’)
Gilbert Patrick Rochecouste	Managing Director and Founder of Village Well	18.10.19	(‘Rochecouste’)
Rita Khodeir	Opponent’s solicitor	21.10.19	(‘Khodier’)
Clare Meyrick	Chief Executive Officer of the Horney Institute	18.10.19	(‘Meyrick’)
Matthew Gollan	Director of Reactivate Consulting Pty Ltd	18.10.19	(‘Gollan’)
Stuart O’Brien	CEO of Houston Group	18.10.19	(‘O’Brien’)
Vince Frost	Executive Creative Director and CEO of Frost Collective	21.10.19	(‘Frost’)
Michelle Tabet	Director of Michelle Tabet Pty Limited (trading as Left Bank Co)	18.10.19	(‘Tabet’)
Craig Devitt	Director of Hundredweight	18.10.19	(‘Devitt’)
Andrew Howe	Director of Element Advisory Pty Ltd	18.10.19	(‘Howe’)
Evidence in Answer
Bryan St James	Partner and Chief Operating Officer of the applicant	14.01.20	(‘St James’)
Michael Simonetti,	Managing Director of AndMine	14.01.20	(‘Simonetti’)
Paul Garbett	Director of Naughtyfish Pty Ltd	9.01.20	(‘Garbett’)
Daniel Dwyer	Director Group Operations at Churches of Christ Community Care (trading as Fresh Hope)	10.01.20	(‘Dwyer’)
Scott Ginnivan	Managing Director of Made & Crafted	13.01.20	(‘Ginnivan’)
Annette Harcus	Principal and Creative Director at Harcus Design	10.01.20	(‘Harcus’)
Grant Leslie Flannigan	Development Director at EG Development Management	8.01.20	(‘Flannigan’)
David Randerson	Architect for DKO Architecture	10.01.20	(‘Randerson’)
Emily LaVigne	Development Manager  at University of New South Wales	10.01.20	(‘LaVigne’)
James Milligan	CEO Milligan Group (Real Estate Development)	10.01.20	(‘Milligan’)
Kylie Jackson	National Marketing Manager for Stockland Retirement Living	10.01.20	(‘Jackson’)
Lisa McCutchion	General Manager Innovation Communication & Sustainability at Frasers Property Australia	9.01.20	(‘McCutchion’)
Tony Leung	Managing Director of a+ design group	13.01.20	(‘Leung’)
Evidence in Reply
Jeanette Charlotte Lambert	Director of the opponent and senior strategist	17.03.20	(‘Lambert 2’)
Ethan Kent	Senior Fellow at Project for Public Spaces	18.03.20	(‘Kent’)
Linda Fritz Corkery	Professor of Landscape Architecture, People and Place at the University of Sydney	16.03.20	(‘Corkery’)
Kenneth Maher	Fellow at Hassel architecture, placemaking, design and urban planning practice	16.03.20	(‘Maher’)
Jennifer Di Bartolomeo	Head of Corporate Marketing and Communications, Real Estate, AMP Capital	16.03.20	(‘Bartolomeo’)
Malcolm Snow	Chief Executive of the ACT City Renewal Authority	13.03.20	(‘Snow’)
Seamus McCartney	Head of Creative Strategy, Place and Urban Insights at Lendlease	13.03.20	(‘McCartney’)
Rita Khodeir	Opponent’s solicitor	17.03.20	Annexing Meriel Pickering declaration made 7.10.19 (‘Khodeir 2’)

1. The Applicant objected to the evidence of Khodeir 2, which was served in reply. The objection was based on the evidence not being properly responsive to the evidence provided by the Applicant. Therefore, says the Applicant, it should have been provided in support and, in those circumstances, it is not properly served.

2. I agree with the Applicant’s characterisation of Khodier 2 and, therefore, will not consider it in my decision.

   The Opponent

3. Lambert 1 (at [2]) states that the Opponent is involved in the ‘placemaking’ industry, which is a multi-disciplinary and people centred approach to the creation and revitalisation of ‘places’, that is real properrty. At [6] Lambert 1 continues to state that the Opponent was incorporated (as ‘Place Associates’) on 15 June 2011 and changed its name (but not services or operations) in 2015.

4. At Lambert 1 [7], the Opponent is described as specialising in delivering customer and market insights that ‘enable its property clients to develop the most dynamic and innovative property solutions.

5. Lambert 1, at [9], cites the first adverse examination report relating to the Trade Mark’s application:

   ‘VISIONING is defined as creating a vision in relation to the future. As a whole, your trade mark indicates that your goods and services relate directly to creating a vision of place/s in the future or are on this subject. Other traders will need to use this phrase or something very similar in relation to their own similar goods/service.’

6. Lambert 1 asserts that, based on Ms Lambert’s experience working in the placemaking industry since 2005, the terms ‘place vision’ and ‘place visioning’ are generic descriptive terms that are commonly used, and have a well understood meaning within that industry.[3]

   [3] Lambert 1, at [16].

7. Further, ‘the term ‘Place Vision’ means a collective vision for a ‘place’ (e.g. a public space or a building) that has been developed by a strategist in consultation with either stakeholders or a community. The term ‘Place Visioning’ means the process of producing and delivering an agreed ‘Place Vision’ to a community, stakeholder or client.[4]

   [4] Ibid, at [17].

8. Ms Lambert also stated that ‘[b]ased on [her] experience working in the industry, [she] is also aware that the words Place Vision and Place Visioning can be and are used interchangeably.’[5]

   [5] Ibid, at [18].

9. Further, Ms Lambert states that the term ‘place visioning’ was used by her then placemaking business as early as 2009,[6] and promoted as a service in 2013.[7]

   [6] Ibid, at [20].

   [7] Ibid, at [21].

   The Applicant

10. St James, at [10] and [11] states that the Applicant is ‘a strategic consultant offering strategies and recommendations in relation to the creation and development of places, property branding, property marketing and image making services.’ Its core focus is on places and property. It provides services in four broad categories:

    ·     Strategy and recommendation services;

    ·     Property branding;

    ·     Property marketing; and

    ·     Image making.

11. At [20] to [22], St James states that the Applicant developed the Trade Mark as an original and unique identifier of the Applicant’s Services during the period July 2015 and September 2016. St James Confidential Annexure BSJ-1 shows the various ‘brainstorming’ results on Post-it easel pads.

12. I note that St James Annexure 2 contains photographs of the entrance to the Applicant’s offices, as shown (with small TM symbol after word visioning):

13. At [66] St James states that the declarant does not consider that ‘Place Visioning’ and ‘Place Vision’ are interchangeable terms. However, he states in the same paragraph that ‘“Place Vision” is a term commonly used in the property marketing, placemaking and branding or urban planning industries to describe a high-level outcome delivered by service providers.’

    The Law in Respect of s 41

14. Section 41 of the Act provides:

    41 – Trade Mark not distinguishing applicant’s goods or services

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

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

    (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

    (3)This subsection applies to a trade mark if:

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

    (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

    (4)This subsection applies to a trade mark if:

    (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

    (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

    (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

    (iii)any other circumstances.

    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.

    Note 3: 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 (5) and 7(3) and section 8).

    (5)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).

    23. Mr Horak raised the issue of the ‘presumption of registrability’ in s 41 matters in his submissions relating to the Opponent’s onus. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

    Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[8] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

    [8] (1998) 40 IPR 498, 505.

    The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

    The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

    Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

    The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

    Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

    Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

    (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

    (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

    (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] 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 [Applicant’s Services]. [that is, s 41(4) applies][9]

    [9] [2017] ATMO 25, [38]-[40].

    24.     In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’), the Full Court summarised the principles in respect of s 41 as follows:

    (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

    
    
    

    (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

    
    
    

    (3) The question of whether a trade mark is adapted to distinguish the services of the applicant 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

    
    
    

    (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

    
    
    

    (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

    
    
    

    (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

    
    
    

    (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

    
    
    

    (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

    
    
    

    (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

    
    
    

    (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

    
    
    

    (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

    
    
    

    (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[10]

    Is the Trade Mark to any extent inherently adapted to distinguish the Applicant’s Goods and Services from the goods or services of other persons?

    [10] [2017] FCAFC 56 at [236].

    25.     The Opponent submitted that the Trade Mark has no inherent adaptation to distinguish, applying the Clarke Equipment test (see [23(3) and (4)] above). Mr Burgess points out that the Trade Mark is a direct reference to the service that is being provided (the delivery of a place vision).

    26.     Mr Burgess submitted that the dictionary definitions of the words ‘place’, vision’, and ‘visioning’, along with the Applicants evidence at St James [66] establishes the descriptive nature of the Trade Mark.

    27.     Mr Burgess pointed to a non-exhaustive list of relevant descriptive uses of the term ‘place visioning’ in the placemaking industry prior to 2015, for example Rochecouste Exhibits GPR-3 and GPR-9, Lambert 1 Exhibit JCL-5 and JCL-6, and Khodier 1 Exhibit RK-1.

    28.     The Applicant does not concede in its submissions that the Trade Mark lacks inherent distinctiveness but submits that the Trade Mark has no readily and directly discernible meaning and rather bespeaks a sign which is a covert or skilful allusion.

    29.     Mr Horak submitted that the Trade Mark is not one that other traders would need to use, because it is not directly descriptive of the relevant services. Further, the Trade Mark is a wholly made up or invented phrase and would present to consumers in this manner.

    30.     The Full Court of the Federal Court considered what qualifies as an invented word in Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks[11]:

    “However, the mere fact that a word is newly coined, ie that the particular array of letters has not previously been used to constitute a word, is not sufficient to establish its character as an invented word. In Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (the Rohoe case) there was unanimity on the appropriate principle to be applied, though division on its applicability to the word “Rohoe” there under consideration. In addition to its being newly coined Dixon J said at 181:

    The materials from which such a word has been fashioned cannot be neglected and if it is compounded of elements of which the source is manifest and the intended meaning is transparent, it becomes a question whether there is anything more than a colourable attempt at reproducing some of the sounds and all the sense of an expression belonging to common speech.

    …. In order to qualify as an invented word under s 24(1)(c) of the Act, a word must be both newly coined and convey no obvious meaning to ordinary Australians. The word “hairfusion” fails the second limb of this test, being obviously composed of the elements “hair” and “fusion” and conveying the meaning of the fusion, mixing, integration or joining of hair.” (citations omitted)

    [11] Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 at p3, refusing registration of HAIRFUSION in Part A under s 24 of the 1955 Act.

    31.     In Apple Inc v Registrar of Trade Marks, Yates J adopted a similar approach, finding that even if Apple Inc was the first to use the combination APP STORE, “… the words in that combination bore no more than their ordinary signification when applied to the designated services in class 35.”[12]

    [12] Apple Inc v Registrar of Trade Marks (2014) 109 IPR 187 at [212].

1. Here, the use of the words ‘place’ and ‘visioning’ results in an obvious intended meaning which references the various design, planning, and consultancy provided by the Applicant’s Services.  As mentioned above, St James [66] somewhat incongruously concedes ‘“Place Vision” is a term commonly used in the property marketing, placemaking and branding or urban planning industries to describe a high-level outcome delivered by service providers.’

   33.     The St James Confidential Annexure BSJ-1 ‘brainstorming’ examples show many words being modified by the suffix -ing, including VISION/VISIONING. I cannot accept that adding -ing to this commonly used industry term ‘Place Vision’ can be considered allusive covert or skillful. With this suffix it retains its descriptive nature.

   34.     The likelihood of other providers of similar and services wishing to use Place Visioning in relation to their services is well within the measure set out in Clark Equipment[13], namely that adaptation to distinguish is to be tested by reference to the likelihood that other persons, being actuated only by proper motives, would want to use the trade mark in connection with similar services.

   [13] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514.

   35.     In Cantarella,[14] the High Court emphasised the “requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business.”[15]

   [14] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 (Cantarella) at [70] – [71].

   [15] Cantarella at [44].

   36.     In Kenman Kandy, the Full Court observed that the ultimate question under s 41 requires “a practical evaluative judgement about the effects of the relevant mark in the real world”.[16] The effect of registration of the Trade Mark in the property marketing, placemaking and branding, or urban planning industries would be precluded from using this aptly descriptive term in connection with the services it [plainly describes.

   [16] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 944 at [47] per French J.

   37.     In my opinion, the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services. Therefore, I am required to reject the application only if the Applicant has not used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Applicant’s Services as being those of the Applicant.

   38.     The Applicant has lead evidence of 11 persons (clients or others who appear to be associated with its business) who assert that they have not been aware of other traders using the term ‘Place Visioning’. This evidence does not address the ordinary signification of the words ‘Place Visioning’ or ‘Place Vision’. Further the fact that some persons associated with the Applicant are not aware of other traders engaging in the generic descriptive use of ‘Place Visioning’ does not mean such use is occurring (or, indeed, that such use ought to be allowed into the future).

   39.     No evidence of use by the Applicant is shown before December 2016, less than 12 months before the Priority Date. Use of the Trade Mark by the Applicant is invariably in association with the Applicant’s name and appears to be part of a list of services offered by the Applicant.

   40.      While there is evidence that the Applicant has used the TM symbol adjacent to the words of the Trade Mark, this does not mean that there has been relevant use as a trade mark, on an objective and substantive test. Use of TM goes to the Applicant’s formal subjective intention, but is of limited use in answering this question.[17]

   [17] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 644 at [134],

   41.     Due to the vitiating aspects of the Applicant’s evidence discussed above, I am not satisfied that the Applicant used the Trade Mark before the priority date in respect of the application to such an extent that the Trade Mark does in fact distinguish the designated services as being those of the Applicant.

   42. Therefore, the Opponent has established a ground of opposition under the provisions of s 41. Having found in favour of the Opponent in terms of s 41 there is no need for me to discuss the other grounds set out in the SGP, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

2. Section 55(1) of the Act applicable to this matter provides:

   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.

3. I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1875371.

   Costs

4. The Opponent has sought an award for costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent is the successful party, I award costs against the Applicant at the official scale set out in Schedule 8 to the Regulations.

5. Costs in relation to the other opponents to the Trade Mark were not specifically canvassed at the hearing. Those parties are at liberty to apply for limited costs.

   
   Jock McDonagh
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   26 February 2021