P4L Corporation Pty Ltd

[2018] ATMO 138

TRADE MARKS ACT 1995

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

Re:      Trade mark application number 1755913 (35, 44) - MORE CARE 4 LESS COST

(stylised) - in the name of P4L Corporation Pty Ltd.

DELEGATE:

Nicole Worth

REPRESENTATION:

Applicant:  written  submissions  prepared  by  Carmen  Champion  of Counsel, instructed by Eakin McCaffery Cox Lawyers.

DECISION:

2018 ATMO 138

Trade Marks Act 1995 (Cth) – section 33 proceedings – section 41 – trade mark not inherently adapted to distinguish – evidence of use not sufficient – application rejected.

Background

1. This matter is pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’). On 1 March 2016 P4L Corporation Pty Ltd (‘the Applicant’) applied to register the trade mark detailed below.

   Trade Mark:            (‘the Trade Mark’)

   Priority Date:         1 March 2016

   Services:Class 35: Retail, including online retail, and wholesale services, including pharmacy retail and wholesale services; retail and wholesale services relating to medicines, prescription medicines, vitamins, minerals, health products, healthcare products, beauty products, household products, cosmetics, fragrances, electrical goods, Manchester, stationery, cards, gift cards, books, calendars, snack bars, confectionery and giftware; business franchising services including group purchasing services and group advertising services; advertising, marketing and promotional services; business management; business administration; office functions; advisory, consultancy and information services in relation to the aforementioned services.

   Class 36: Pharmacy advisory services and pharmacy dispensary services; healthcare services,  including healthcare consultancy services and information services relating to healthcare; beauty services, including beauty consultancy and consultation services; hygienic and beauty care for human beings and animals; advisory, consultancy

and information services in relation to the aforementioned services.

1. The application was examined and a ground for rejection under s 41 of the Act was raised on the basis that the Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s services from those of other persons. After four examination reports the examiner remained of the view that s 41(4) of the Act was applicable, and so the Applicant requested to be heard by way of written submissions.

1. The matter was allocated to me as a delegate of the Registrar. Written submissions were prepared for my consideration by Carmen Champion of counsel, instructed by Eakin McCaffery Cox Lawyers. Below are my reasons, based upon the submissions of counsel as well as the Applicant’s evidence of use described in more detail later in this decision.

1. As a preliminary matter I mention that the focus of the decision here is not to review the examiner’s decision and arguments, but rather to consider afresh the ground for rejection that has been raised.

Section 41

1. Section 41 of the Act relevantly 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.

   …

   (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.

1. A presumption of registrability is embodied in s 33 of the Act which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (shifting the onus which existed under the previous 1955 Act, wherein an applicant bore the onus to establish registrability). Accordingly, I am not entitled to reject the Trade Mark unless satisfied that the combined effect of its inherent adaptation to distinguish, any past or intended use of it, and any other circumstances, has not or will not render the Trade Mark distinctive or capable of distinguishing.

Inherent adaptation to distinguish the Applicant’s services

1. The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the Applicant’s services from the similar services or closely related goods of other traders. This is to be tested:

   [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

2. Further, and as pointed out in the Applicant’s submissions, a trade mark need not be absolutely unsuggestive of the qualities of the relevant goods or services2 and a mark may have a descriptive element but still serve as a badge of origin3 (although I note the subsequent comment in that decision that ‘the use of descriptive words may, however, make it more difficult to establish that the words do so distinguish the product’).

1. I note first that the Trade Mark possesses a degree of stylisation in that the words within it vary in font, the number ‘4’ is substituted for the word ‘for’, and the number ‘4’ is represented in three dimensional form. Of itself this stylisation is unlikely to render an otherwise non-distinct trade mark distinctive. Nonetheless the Trade Mark is not utterly unembellished.

1  Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48.

2 Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, [34].

3 Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438, [33].

1. As to the ordinary signification conveyed by the words, I turn first to the substitution of the number ‘4’ for the word ‘for’. This is an extremely common mechanism in trade marks: a search of the Australian online database of trade marks reveals more than 1,800 marks which contain ‘4’ and ‘for’ as search terms.4 It is also commonly used colloquially by the general public: an internet search for the suffix ‘4 less’ (by way of example) provides approximately 2.69 million results including the Applicant’s ‘Pharmacy 4 Less’ as well as ‘Rugby League 4 Less’, ‘Top PC 4 Less’ and ‘Rugs 4 Less’, amongst many others. Accordingly, in the context of the Trade Mark the ordinary signification of ‘4’ is a colloquial expression of ‘for’.

1. I acknowledge that there is a lack of specificity in the words ‘more care’ within the phrase ‘More Care 4 Less Cost’ (unlike, for example, the relatively unambiguous phrases ‘Vitamins 4 Less’, ‘Cosmetics 4 Less’ or ‘Fragrance 4 Less’, also used by the Applicant judging by its evidence of use). Nonetheless, I do not consider that this lack of specificity renders the meaning of the Trade Mark vague or obscure. In the context of pharmacy, healthcare and beauty services and the retail of healthcare, skin care and hair care products, I consider that the words ‘more care’ convey that one is able to obtain more products and services relating to health, skin, hair and beauty care. When considered as part of the entirety of the Trade Mark they convey that one is able to do so ‘for less cost’ than, for example, obtaining them elsewhere.

1. That the ordinary signification of the words ‘more care for less cost’ is readily apparent is illustrated by the examples of use of the expression found by the examiner.5 They include (emphasis added):

   ·‘Home Health Care, Inc. has an innovative Insurance Solutions program with specialists who can maximize our clients’ insurance-covered options so they receive more care for less cost every time.’6

   ·‘Sense, Respond, Adapt: Managing the Unpredictable in Real-Time –…The results are more care for less cost and new predictive analytics that can be generated by any healthcare organization.’7

   ·‘By opting direct payment, you as a patient take control of your healthcare costs. Get more care for less cost.’8

4 Although most commonly because of the mechanism described here, it is not always the case the trade marks containing both ‘4’ and ‘for’ as search terms contain it.

5  Being the results of an internet search for the expression, appended to the second examination report. All websites were accessed on 2 November 2016.

6 From From all those environments, collaborative doctor, nurse, staff and management teams have applied Adaptive Design to surgery and medicine, nursing and support services, outpatient services and independent clinics to create more care for less cost.’9

·‘Mobility offers a great way to provide more care for less cost because it allows services to be scaled a lot more broadly through telehealth…’10

1. In none of those examples is it necessary to institute a search for meaning11 despite the words ‘more care’ having varied meanings attributable to them – what is encompassed by the word ‘care’ is derived from the context in which it is used.

1. Accordingly, in the context of the services in respect of which the Applicant seeks registration, the ordinary signification of the Trade Mark is that one is able to obtain more health/skin/hair/beauty care products and/or services for less cost. To that end, I consider that although the Trade Mark possesses a degree of stylisation and lack of specificity in meaning, it is not so inherently adapted to distinguish the Applicant’s services from those of others to be registrable on that basis alone. It is accordingly appropriate to consider the Trade Mark under the provisions of s 41(4).

Section 41(4)

1. As indicated by the legislation, it is necessary to consider whether the Trade Mark does or will distinguish the Applicant’s services having regard to:

   ·    the extent of its inherent adaptation to distinguish;

   ·    the use it has had and/or its intended future use; and

   ·    any other circumstances.

1. The extent of the Trade Mark’s inherent adaptation to distinguish has already been considered and the Applicant has not submitted any other circumstances which support acceptance of the application. Therefore, the query turns to the evidence of use filed by the Applicant and whether it shows that the Trade Mark does or will distinguish the Applicant’s services from those of others.

8 From From Foy’s Ltd v Davies Coop & Co Ltd [1956] HCA 41, per Dixon C.J. at [2] wherein his Honour stated ‘Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods’.

1. The Applicant relies upon three declarations made by Feras Karem, Chief Executive Officer and Managing Director of the Applicant, which outlines the use of the Trade Mark by the Applicant. The declarations are dated 1 March 2018 (‘Karem 1’), 18 May 2018 (‘Karem 2’) and 25 June 2018 (‘Karem 3’). I have summarised the evidence as follows.

1. Since 2007 the Applicant has conducted a franchise pharmacy business trading under the name ‘Pharmacy 4 Less Discount Chemist’. The business commenced with the opening of a pharmacy store in Hornsby, NSW. Since then a further 48 stores have opened in NSW, QLD, VIC and TAS. A list of those stores in exhibited to Karem 3 although it is not stated when each of those stores opened, or whether they opened before or after the filing date. A document entitled ‘Full Service Franchise Model 2016’ (annexed to Karem 2 although not referred in that declaration) states under ‘Our Brand’ that the Applicant has ‘grown into an organization with stores throughout NSW and VIC’, indicating that as at the creation of that document the expansion of stores into QLD and TAS had not yet taken place.

1. The Applicant claims to have used, since 2007, various registered and unregistered trade marks that include the combination ‘4 Less’. Karem 1 states that prior to May 2015 a variant of the Trade Mark was used as an unregistered mark, shown below. I note it does not contain the numeral ‘4’ within the tagline ‘More care, less cost’ and the stylisation of the ‘4 Less’ component is different to that of the Trade Mark.

Karem 3 claims that since 2007 the Applicant has developed and used a range of brands incorporating ‘4 Less’, shown below under ‘Claimed Trade Marks’, and is the owner of the registered trade marks also shown below. The Trade Mark was chosen because it was consistent with this usage of ‘4 Less’.

Claimed Trade Marks

Registered Trade Marks

1361199  

1755902 PHARMACY 4 LESS

1755905  

1. Use of the Trade Mark itself commenced in June 2015 when it appeared in the Applicant’s catalogue, pages of which are shown below (taken from additional correspondence filed by the Applicant on 22 March 2018), as well as appearing in the Applicant’s Chatswood and Curlewis stores (photographs of which are also shown below, taken from Karem 3). It has since been used in brochures, business cards, store and bus signage and online advertising. Karem 3 states that the primary brand and business name for the franchise continues to  be   while the Trade Mark acts as a

   secondary brand or tagline.

The images above are taken from what is said to be the June 2015 catalogue, from left to right being the cover page (which does not show the Trade Mark), page 2 (showing the Trade Mark at the top of the page), and page 5 (showing the Trade Mark at the bottom of the page).

1. The Applicant spends a substantial sum per year on advertising, claimed to take place via brochures, television, radio and other advertising methods including a website and social media. It currently prints and distributes more than 1 million catalogues every three weeks. It also maintains a website which is claimed to attract more than 70,000 views per month. I note that these figures do not appear to be specific to the Trade Mark, but rather to the suite of trade marks the Applicant uses including its trade mark PHARMACY 4 LESS.

1. A ‘Corporate Brand Style Guide’, dated 27 January 2016, is in evidence (annexed to Karem 2 although not referred to in that declaration). It relates primarily to the stylised PHARMACY 4 LESS DISCOUNT CHEMIST trade mark, although it does provide font, colour and material specifications for use of the Trade Mark. Karem 3 also refers to the ‘current franchise agreement’ which specifies use of the Applicant’s ‘Brand’, although

‘Brand is not defined in that agreement as any particular trade mark(s) (or at least, not in the selection of pages provided).

1. The Applicant submits that on account of its use since 2007 of trade marks incorporating ‘Pharmacy 4 Less’, and the ‘4 Less’ device being ‘the most prominent feature’ of the business name and brand, the ‘4 Less’ component would have acquired considerable recognition amongst consumers in NSW, QLD, VIC and TAS. Further, the Applicant submits that it has used a family of marks which incorporate the ‘4 Less’ device, and so consumers would be caused to wonder whether two marks that share that component come from the same source. To that end, it is submitted, the use of the ‘4 Less’ device as a prominent part of the Trade Mark would have created an immediate link between the Trade Mark, the Applicant and the Applicant’s franchised business.

1. In terms of quantity the Applicant’s evidence is extensive: largely because many copies of its catalogues have been filed (each of them being 24 pages long). However, the evidence also shows that the Trade Mark itself was in use for only nine months prior to filing and has been used for an approximate period of only 2.5 years in total. Short use (or indeed no use, where intended use is asserted) is not fatal to an application, but it must necessarily be countered with extensive exposure (or extensive planned exposure) of the relevant trade mark to establish that it has or will become distinct in that short period of time. I note also that the trade mark has been used apparently in only NSW and VIC until 2016, after which it expanded also to QLD and TAS.

1. Additionally, it is evident that the Trade Mark has never been used on its own to identify trade source: the catalogues within which it appears are headed with the stylised PHARMACY 4 LESS DISCOUNT CHEMIST trade mark; the stores in which it appears are PHARMACY 4 LESS DISCOUNT CHEMIST stores; and other uses such as upon business cards, upon a bus, and upon the Applicant’s Facebook page feature the stylised PHARMACY 4 LESS DISCOUNT CHEMIST trade mark (albeit the undated Facebook page shows the Trade Mark with greater prominence than the other uses described in this paragraph). Whilst I acknowledge that it is a commercial reality that multiple trade marks are often used together, it must be borne in mind that the monopoly sought is of the Trade Mark alone. The Registrar is therefore in the difficult position of having to  assess acquired distinctiveness from evidence that shows the Trade Mark always to be used with other indicia that identify the Applicant. The High Court noted in Samuel Taylor Pty Ltd v

The Registrar of Trade Marks12 that “it is difficult to see how the critical words could have acquired a distinctiveness of their own” when the trade mark in question was always used with another. This may result in the sort of ‘limping trade mark’ referred to in Philips Electronics BV v Remington Consumer Products,13 which I consider to be the case here.

1. As to the use of a ‘family’ of trade marks by the Applicant, the common feature of which is argued to be the ‘4 Less’ component, I note firstly that the stylisation of that component has changed over time, and secondly that the ‘4 Less’ component has a lower degree of inherent distinctiveness than does the Trade Mark (given its meaning is quite clear and its stylisation only minimal). It is not stated when use of the ‘4 Less’ component in its current form (wherein the ‘4’ is represented three dimensionally) commenced. There is no evidence of its use before June 2015. Prior to then it appears that the ‘4 Less’ component was used as in the trade mark below, wherein the ‘4’ appears to contain a Greek cross, a symbol commonly associated with medicine (and likely incorporated for precisely that reason). For this reason the ‘4 Less’ component arguably bore a somewhat different character throughout the majority of its use than the form in which it is currently used.

1. Given the short period of use of the Trade Mark; the changing character of the ‘4 Less’ component over time and its low level of inherent distinctiveness in its current form; and the fact that the Trade Mark has never been used on its own or even primarily to identify the Applicant; I am not satisfied that the Trade Mark does or will distinguish the Applicant’s services from those of others. I am accordingly not satisfied that the Trade Mark ought to proceed to acceptance under the provisions of s 41.

Decision

1. Section 33 of the Act relevantly provides:

   (1)    The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)     the application has not been made in accordance with this Act; or

   (b)    there are grounds under this Act for rejecting it. Note: For this Act see section 6.

   …

   (3)If the Registrar is satisfied that:

   (a)     the application has not been made in accordance with this Act; or

12 [1959] HCA 69, [5].

13 (1997) 40 IPR 279 at 301.

(b)    there are grounds under this Act for rejecting it; the Registrar must reject the application.

Note: For this Act see section 6.

1. I have found, on the basis of the combined effect of the inherent adaptation of the Trade Mark and the use made of it thus far, that the Trade Mark does not (and, on the evidence before me, will not) distinguish the Applicant’s services from those of others. I accordingly reject trade mark application number 1755913. If, however, 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 direction or order.

Nicole Worth Hearing Officer

Hearings and Oppositions 5 September 2018