Our Community Pty Ltd

[2024] ATMO 19

TRADE MARKS ACT 1995

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

ReTrade mark application number 2236354 (35, 36) – INSTITUTE OF COMMUNITY DIRECTORS AUSTRALIA – in the name of Our Community Pty Ltd

Delegate:                 Robert Wilson

Representation:       Applicant: Amy Surkis of Counsel, instructed by Maddocks Lawyers

Decision:                   2024 ATMO 19

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 41 – not satisfied ground for rejection under s 41 exists – presumption of registrability – application accepted

Background

1. On 15 December 2021 Our Community Pty Ltd (‘Applicant’) filed an application (‘Application’) to register the trade mark detailed below.

Application Number:	2236354
Specification of Services:	Class 35: Advice relating to business management; Advice relating to business organisation; Advisory services relating to business planning; Business administration; Business administration advisory services; Business advisory services; Business consultation; Business organisation consultancy; Consultancy relating to business organisation Class 36: Advisory services relating to (financial) risk management; Advisory services relating to financial matters; Advisory services relating to financing; Charitable collections; Charitable fund raising; Charitable fundraising; Charitable services, namely financial services; Conducting of financial transactions; Consultation services relating to financial matters; Payment processing services (‘Applicant’s Services’)
Trade Mark:	INSTITUTE OF COMMUNITY DIRECTORS AUSTRALIA	(‘Trade Mark’)

First adverse report

2. The application was examined as required by s 31[1] and on 24 February 2022 the examiner issued an adverse report. The examiner indicated her view that there was a ground for rejecting the application under s 41. The examiner indicated her view that a ‘community director’ is ‘someone who provides various services to manage or support a community’. The examiner concluded that the Trade Mark ‘indicates that your services are provided by a society or organisation (INSTITUTE) that carries on the work of COMMUNITY DIRECTORS, in AUSTRALIA’ and that ‘Other traders should be able to use [the Trade Mark], or something very nearly resembling this term, in connection with goods or services similar to yours’. The examiner indicated that the Applicant ‘might be able to overcome this problem if [it supplies] evidence of use in terms of subsection 41(4)’.

[1] References to sections or regulations in this decision, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

Second adverse report

3. On 24 July 2023, the Applicant responded to the first adverse report. The Applicant filed a declaration made on 24 July 2023, by Denis Moriarty, ‘a Group Managing Director of [the Applicant] and the Institute of Community Directors Australia’ (‘Moriarty 1). The declaration included Exhibits 01 to 10.

4. After considering Moriarty 1, a second examiner issued a second adverse report on 18 August 2023. The examiner was not satisfied that the examples of use contained in the declaration were sufficient to establish that the Trade Mark did in fact distinguish the Applicant’s Services from the goods and services of other traders. The examiner gave the Applicant an opportunity to supply further evidence to overcome the ground for rejection.

Third adverse report

5. On 13 November 2023, the Applicant responded to the second adverse report. The Applicant filed a declaration made by Denis Moriarty on 13 November 2023 (‘Moriarty 2’). The declaration included Exhibits 11 to 33. On the same day the Applicant filed submissions in respect of the ground for rejection which were prepared by Maddocks Lawyers, the Applicant’s representative (‘Maddocks submissions’).

6. On 14 November 2023, the Applicant filed another declaration by Denis Moriarty. This one was made on 14 November 2023. The sole purpose of this declaration was to correct errors contained in certain exhibits to Moriarty 2 by refiling those exhibits. For the remainder of this decision a reference to Moriarty 2 is a reference to that declaration so corrected.

1. The examiner was not persuaded by the Maddocks submissions that the Trade Mark was inherently adapted to distinguish. Nor was the examiner satisfied that the evidence of use contained in Moriarty 1 and Moriarty 2, together, overcame the ground for rejection. On 22 November 2023, the examiner issued a third adverse report. The examiner, again, provided the Applicant with an opportunity to provide further evidence to overcome the ground for rejection. The examiner also indicated that it was open to the Applicant to request to be heard.

Request to be heard

8. On 27 November 2023 the Applicant requested to be heard. I am a delegate of the Registrar of Trade Marks and in that capacity I heard the matter on 22 January 2024. The Applicant was represented at the hearing by Amy Surkis of Counsel. Ms Surkis was instructed by Maddocks Lawyers. Ms Surkis’ oral submissions were supplemented by a written summary of submissions which was filed prior to the hearing. Ms Surkis indicated that in addition to her submissions the Applicant relied upon Moriarty 1, Moriarty 2 and the Maddocks submissions to support acceptance of the application.

The Applicant

9. According to Moriarty 2:

The Applicant … was established on 27 September 2000 as a privately held enterprise providing services to not-for-profit organisations, social enterprises and grant making organisations.

In 2011, [the Applicant] identified governance for not for profits as a big issue and began building a ‘Boards Centre’ on [the Applicant’s] website.

In 2014, [the Applicant] decided to create a sub brand for this offering and create an independent website with a new brand under the Trade Mark. …

The Institute of Community Directors Australia was launched on 17 February 2014 …

The Law in Respect of s 41

1. Section 41 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).

1. The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

   The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon 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. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire to use.[2]

   [2] (1913) AC 624, 634-5.

2. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

   [W]hether a mark is adapted to distinguish [will] 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.[3]

   [3] [1964] HCA 55, [5].

3. More recent authority is to be found in Cantarella Bros v Modena Trading.[4] In that case the High Court indicated that the test for distinctiveness is a two step process. The first step being to determine the ordinary signification of the sign comprising a trade mark, in Australia, to persons who will purchase, consume or trade in the goods, then having determined the answer to that question to consider the likelihood of the sign being needed by other traders.

   [4] [2014] HCA 48.

4. The adverse reports issued during examination indicated that the Applicant might overcome the ground for rejection by providing evidence of use ‘in terms of subsection 41(4)’. The reference to that provision indicates the examiner’s view that the Trade Mark is ‘to some extent, but not sufficiently, inherently adapted to distinguish’ the Applicants services from the goods and services of other traders, and that the Trade Mark ‘does not and will not distinguish’ having regard to the factors listed in s 41(4)(b). I am not bound by the examiner’s view as to inherent distinctiveness or factual distinctiveness. It is incumbent upon me to consider these matters afresh.

5. The wording of s 41 imports a presumption of registrability. I must be satisfied that either s 41(3) or s 41(4) applies to the Trade Mark before it is open to me to reject the Application. For the sake of emphasis, it is not the case that I must be satisfied that the Trade Mark is inherently adapted to distinguish, or does in fact distinguish, before accepting the application. If doubt remains as to whether the relevant provisions apply, that doubt must be resolved in the Applicant’s favour and the application cannot be rejected under s 41.

The ordinary signification of the Trade Mark

1. The question to be considered at this point is whether the Trade Mark has an ordinary signification and, if so, what that ordinary signification is. If the Trade Mark is found to have an ordinary signification it is necessary to then go on to consider the likelihood of the Trade Mark being needed by other traders. On the other hand, if it is found that the Trade Mark has no ordinary signification that is the end of the matter, the Trade Mark can be taken to be inherently adapted to distinguish the Applicant’s Services, and the application cannot be rejected under s 41. In this circumstance it is not necessary to go on to consider the likelihood of the Trade Mark being needed by other traders. Equally, if there is some doubt that that the Trade Mark has an ordinary signification, that doubt is to be resolved in the Applicant’s favour, and the application cannot be rejected.

2. The Trade Mark is comprised of a number of well understood, simple English words. In the usual syntax of the English language the words ‘community directors’ form a pair, the meaning of which warrants particular consideration. The Applicant submitted that its primary position is that the Trade Mark is inherently adapted to distinguish because ‘community directors’ is an invented phrase. It is declared in Moriarty 2 that ‘[t]his phrase was created by the Applicant as a new way for it to refer to individuals across various sectors who serve on boards of not for profit organisations or other similar organisations’. Mr Moriarty also declared, ‘[t]he phrase … does not have an established meaning in Australia. Unlike a “Company Director”, there is no formal position known as a “Community Director”’.

3. As will be seen below, whether or not the term ‘community director’ or ‘community directors’ was coined solely by the Applicant is not certain. In any case, were it so that the Applicant coined the term it does not necessarily follow that the term therefore lacked an understood meaning (an ordinary signification). Nor is it determinative that ‘community director’ is not a term, say, used in legislation, in the way that ‘Company Director’ is used in the Corporations Act 2001 (Cth). All words used to refer to things have been coined by someone at some point. The question requires further investigation. In considering this question, I will consider the research undertaken during examination along with the material relied upon by the Applicant.

Examination Research

1. During examination, and prior to the issuing of each of the adverse reports, research was conducted into the meaning of the Trade Mark as a whole and of the meaning of the individual elements of the Trade Mark. This research included a search for dictionary definitions. Not surprisingly, there was no dictionary definition found for the Trade Mark as a whole. Individual definitions were found for ‘institute’, ‘community’ and ‘Australia’. The dictionary searches included a search for ‘directors’ which returned no result. ‘Directors’ is, of course, simply the plural of ‘director’. Notably, however, there appears to be no dictionary search undertaken during examination for the meaning of ‘director’. Nevertheless, ‘director’ has a number of well understood meanings which are relevant to the present consideration. For the sake of completeness, I include a here two definitions of ‘director’ which are the most relevant. These definitions were obtained using the same research facility that would have been used during examination had ‘director’ been searched for. ‘Director’ means:

• ‘someone or something that directs’

• ‘commerce one of a body of persons chosen to control or govern the affairs of a company or corporation’.

1. The most relevant meanings of ‘community’ for our purposes are:

• ‘all the people of a specific locality or country: the new transport service is for the benefit of the whole community‘

• ‘joint possession, enjoyment, liability, etc: community of property’

1. Simply because ‘community’ and ‘directors’ each have understood meanings it does not necessarily follow that together they have an ordinary signification. To attempt to establish whether ‘community directors’ has an ordinary signification, internet research was carried out during examination. The search terms used included:

• define “community director”

• “community director” business services

• “community director” financial services

• “community director” charitable services

1. The search for ‘define “community director”’ returned some 296,000 results. Amongst the research appeared the following statements:

• Being a good community director is hard work. (Notably, this is use by the Applicant).

• A community director is involved in managing business processes and overseeing property for a community of homes or an apartment complex.

1. Research of the type referred to above frequently returns irrelevant and what appears to be manufactured (for want of a better term) results. For example, in the case of the search for ‘community director’ nearly all of the results are of doubtful legitimacy. The term seems to have been inserted frequently into random text, unrelated text, or multi-use template text—perhaps by some AI software—simply as a result of the term being entered as a search term into the search engine. For example, the result ‘Today’s top 688 Community Director jobs in Australia … New Community Director jobs added daily’, which appears on a recruitment website, is almost certainly of this type. ‘Community director provides clinical pharmacology expertise at a project level (including clinical development plan) and at study level …’ is without doubt another example of a manufactured result appearing on a different recruitment website.

2. The seemingly legitimate search results are almost entirely use by the Applicant: as in the first statement shown above. In almost all cases where the research appears to show use by entities other than the Applicant there is significant doubt in my mind that the search results are legitimate. The only result which appears to be likely to be genuine use by another entity is the second result listed earlier. If that result is, in fact, genuine it is noted that the website on which it appears is an overseas website and as such is of limited assistance in determining whether ‘community director’ has an ordinary signification in Australia.

3. The other search terms used during examination provide results which are no more helpful than those discussed above. It is apparent from the examination research that there is a complete dearth of use of the term ‘community director’ or ‘community directors’ in Australia by anyone other than the Applicant. This in itself is not determinative that the term has no ordinary signification, it is conceivable that a new term might be coined the meaning of which is obvious despite it never having been used before. Nevertheless, a simple consideration of the meaning of ‘community director’ reveals no obvious meaning and leaves me wondering just what such a thing might be. The Applicant submitted, that ‘[w]ithout an accepted meaning, the phrase cannot form part of the “common heritage”’.[5]

   [5] In reference to Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

4. On balance, I am not satisfied that the term ‘community director’—and by extension ‘community directors’—has an ordinary signification, in Australia to persons who will purchase, consume or trade in the Applicant’s Services. The consideration here is, of course, not simply whether ‘community directors’ has an ordinary signification but whether the Trade Mark as a whole does. Nevertheless, the lack of ordinary signification of ‘community directors’ strongly informs the assessment of the Trade Mark as a whole. Taking the absence of an ordinary signification of ‘community directors’ into account, I am also of the view that the Trade Mark, as a whole, lacks an ordinary signification, in Australia, to persons who will purchase, consume or trade in the Applicant’s Services. As a consequence, I am not satisfied that either s 41(3) or s 41(4) applies to the Trade Mark.

Application accepted

1. I am not satisfied that there exists a ground for rejecting the application under s 41. There has been no suggestion that any other ground for rejection applies and I see no need to consider any other ground.

Decision

1. I am not satisfied that there exists a ground for rejecting the application under s 41, or any other ground. Accordingly, I accept the application. Acceptance of the application will be advertised in the usual manner in due course.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
1 February 2024