Parish of Pokolbin Incorporated

[2014] ATMO 98

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1494664(33, 35, 41, 43) - PARISH OF POKOLBIN - in the name of Parish of Pokolbin Incorporated.

Delegate:

Iain Campbell Thompson

Representation:

James Omond of Omond & Co

Decision:

2014 ATMO 98

Section 176(1A) proceedings: section 177 – Trade Mark not capable of distinguishing as it is geographical – Application rejected.

Background

1. These are proceedings under subsection 176(1A) of the Trade Marks Act 1995 (‘the Act’) concerning the certification trade mark filed by Parish of Pokolbin Incorporated (‘the Applicant’) which is detailed below:

Application No: 1494664

Priority Date:  5 Jun 2012

Goods/Services:              Class 33: Wine; spirits (beverages); liqueurs

Class 35: Tourism promotions (for others); advertising; organisation of exhibitions for commercial or advertising purposes; organisation of trade expositions or shows for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; promotion (advertising) of business; promotion (advertising) of travel; cellar door sales of wine

Class 41: Arranging of festivals; music festival services; organisation and conducting of dance, music and other entertainment festivals; organisation of festivals; wine tasting events

Class 43: Provision of information relating to restaurants; restaurant services; advisory services relating to catering; booking of catering services; catering services; accommodation bureaux (hotels, boarding houses); accommodation finding services for tourists; accommodation reservation services; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of information relating to the availability of accommodation; provision of information relating to the booking of accommodation; rating holiday accommodation

(‘the Goods and Services’)

Trade Mark:  PARISH OF POKOLBIN

(‘the Trade Mark’)

1. The Trade Mark was examined as mandated by section 31 of the Act and the Examiner reported a ground for rejection in terms of subparagraph 177(1) as follows:

   Your trade mark is PARISH OF POKOLBIN.

   The PARISH OF POKOLBIN is part of the land title system under which land holdings were established and registered in the late 1880s and is therefore descriptive of a geographical area in the Hunter Region in New South Wales.

   Other traders should be able to use PARISH OF POKOLBIN in connection with goods or services similar to yours.

2. The legal representative of the Applicant filed Certification Rules and argument seeking to have the above ground favourably reconsidered.  However, the Examiner maintained the ground.

3. Subsequently, the Applicant requested to be heard.  The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 3 September 2014.  Mr James Omond of Omond & Co represented the Applicant.

Onus, Standard of Proof and Relevant Date

1. In regard to where the onus lies in these proceedings I adopt the words of Murphy J in Phone Directories Co Australia Pty Ltd v Telstra Corporation Ltd [2014] FCA 373 (2014) 106 IPR 281 (‘Yellow’) at [30]:

   There is a general presumption of registrability in favour of the applicant: Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse”) at [26] to [27] and the authorities cited therein.

   The onus of proof in [proceedings] before a delegate of the Registrar and on appeal to the Court rests upon the opponent to registration: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 (“Food Channel”) at [32] per Keane CJ, Stone and Jagot JJ.

   Accordingly, in the YELLOW Appeals as the opponents to registration, PDCA and Yellowbook must prove the grounds of opposition they rely upon. But where the enquiry proceeds to s41(6) of the Act (as I have found) or s41(5), then the onus shifts to Telstra as the applicant for the mark to persuade the Court of its entitlement to registration.

2. Absent an opponent in these ex parte proceedings, I must be satisfied that the ground as stated by the Examiner is well-taken. If well-taken, the onus then shifts to the Applicant under section 176(1A) to persuade me of its entitlement to registration.

3. As regards the standard of proof, as noted by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241:

   Each of s 33(1) and s 41 involves the concept of the Registrar being "satisfied". Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

4. The relevant date at which the grounds must be considered is the filing date of the application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The Applicant has filed a statutory declaration by Mr James Omond, registered trade mark attorney, who is the legal representative of the Applicant in these proceedings.  Mr Omond states:

   The Applicant was founded in August 2010 to distinguish products produced or services supplied within the boundaries of the Parish of Pokolbin. The Applicant has used the trade mark “PARISH OF POKOLBIN” since that date, although several members of the Association had started the process to establish the Association three to four years earlier, and had been using the mark in that time.

   Exhibit JO-2 is a printout of the home page of the Applicant’s website at As can be seen from this, the Vision and Mission of the Applicant is:

   Vision Statement

   To protect the unique character, heritage and lifestyle of the Parish of Pokolbin, and to enhance its growth and prosperity through the ongoing promotion of wine, heritage and tourism.

   Mission Statement

   We will contribute towards the future of Hunter Valley Wine Country by inspiration, guidance and marketing of wine and tourism that is strategically focused towards the future of the Parish of Pokolbin through its economic contribution and its promotion of its unique character, lifestyle and heritage.

   Exhibit JO-3 is the artwork for the roadside signs marking the boundary of the area covered by the Parish of Pokolbin.

   Attached as Exhibit JO-4 are examples of the different usage made of the trade mark by wine producers and accommodation providers who are members of the Applicant.

   Exhibit JO-5 is not able to be provided electronically, and will be sent by mail to the Trade Marks Office.

Discussion

Legislative provisions

1. Section 177 of the Act provides:

   177Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services

   (1)In addition to any other ground on which:

   (a)an application for the registration of a certification trade mark may be rejected; or

   (b)the registration of a certification trade mark may be opposed;

   the application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified.

   Note 1:For applicant see section 6.

   Note 2:For approved certifier see paragraph 173(2)(c).

   Note 3:Division 2 of Part 4 sets out the main grounds for rejecting an application, but section 41 does not apply to certification trade marks (see section 170).

   (2)In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account:

   (a)the extent to which the certification trade mark is inherently adapted so to distinguish those goods or services; or

   (b)the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods or services.

2. Accordingly, not only must the Trade Mark be capable of distinguishing the goods and services certified by the Applicant from those goods or services which are not certified but also in assessing whether the Trade Mark is so capable, I must take into account the extent to which the Trade Mark is inherently adapted to distinguish those goods and services or the extent to which it has become so adapted because of use or other circumstances.

3. If I am satisfied, on balance, that the Trade Mark lacks sufficient inherent adaption to distinguish the goods and services certified by the Applicant from those which are not so certified on a prima facie basis (s 177(2)(a)) or, in the alternative, that it has not become so adapted because of its use or other circumstances (s 177(2)(b)), I must, in terms of section 176 of the Act, reject the application.

Inherent Adaptation

1. The assessment of inherent adaptation is informed by the tests set out in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5] where Kitto J stated:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship 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 businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion 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 Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish 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.

Applicant’s submissions

1. I consider the Applicant’s submissions fall under two main headings:

   The use of the term ‘Parish’ in describing a geographical area is somewhat archaic or obsolescent in modern parlance and its use is most common in relation to land title; and

   The Trade Mark Examiner’s Manual indicates that certification trade marks with a geographical signification may be more readily registrable than standard trade marks containing similar geographical content.

2. In relation to the first subparagraph above the Applicant submits:

   In considering the nature of the old-title term “Parish” in the consideration of the application to register “Rothbury” as a geographical indication, Rothbury Wines Pty Ltd v Murray Tyrrell, Tyrrell’s Vineyards Pty Ltd and Trevor Drayton [2008] ATMOGI 1 (13 June 2008), [‘Rothbury’] Deputy Registrar Arblaster found:

   53.         Like other declarants for the Objector, Mr Thomson indicates, with the use of exhibits, that the use of the parish name is rarely used, being linked, in his experience, to the sale of property.

   113.       ... As Mr Catterns observed, however, parishes in Australia are now so obscure that their only real facility is on title deeds to identify real property when transferring land. The declarants in support of the Objector who live in the area largely state that they were unaware of ‘the Parish of Rothbury’ until it arose in the context of this dispute and I consider that most Australians who live within an administrative parish would be unaware of where its boundaries run....

   114.       ... [an old-title parish] is itself artificial and refers to an area whose boundaries are not generally recognised or appreciated, even by those who live there.

   Summary

   3.           The administrative Parish of Rothbury, and its boundaries, are unknown to many of its residents and the term appears to be used only in relation to identifying real property in the transfer of land title.

3. And I note that the Trade Mark Examiner’s Manual states:

Differences between a certification trade mark and a standard trade mark

Certification trade marks serve a different purpose to standard or collective trade marks. For example, use of a certification trade mark on goods does not indicate who made or manufactured the goods. Rather, a certification trade mark indicates that the goods are certified as meeting a particular standard of quality or accuracy, or as having a particular composition, mode of manufacture, geographical origin or some other characteristic.

Standard trade mark protection can give rise to exclusive property rights being given to a person for their own personal business use. To ensure that trade mark owners do not obtain monopoly rights over words or devices etc. that should be commonly available to other traders, the Registrar is careful in the assessment of trade marks which contain descriptive or geographic references.

By contrast, certification trade marks are not primarily filed by a person seeking a monopoly right to the exclusion of all others. Certification trade marks are generally filed by a representative body from an industry group who wants to regulate a scheme which identifies a characteristic of particular goods or services. As such, trade marks containing descriptive or geographic references may more easily meet the requirements for protection as a certification trade mark (in comparison to protection as a standard trade mark). [Stress added]

Certification trade marks and geographical indications (GIs)

Under the TRIPS agreement, Australia is obliged to provide a mechanism for the protection of Geographic Indications (GIs) in Australia. There are two ways to protect GIs in Australia:

·registration of the GI as a certification trade mark

·protection of GIs for wine or grape products through the provisions of the Australian Grape and Wine Authority Act 2013. More information on this can be found in Part 32B – Examination of Trade Marks for Wine (in Class 33).

What are geographical indications (GIs)

Section 6 of the Act defines a GI in relation to goods as:

a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.

The following are examples of GIs for cheese:

Stilton

Roquefort

Grana Padano

Parmigiano Reggiano

Each of these types of cheese come [sic] from specific regions in Europe. The unique characteristics of each cheese is [sic] due to the specific recipes and regions where they are produced.

Registration of GIs as certification trade marks

The certification trade mark provisions are the principle way to protect a GI in Australia. As with other certification trade marks, GIs must meet the requirements of the Act relating to certification trade marks.

TEQUILA (1377413) is an example of a GI protected in Australia by registration as a certification trade mark.

Assessment

1. The Applicant does not debate that the Trade Mark has geographical significance but argues that the term ‘Parish of Pokolbin’ is somewhat archaic and on this basis is inherently adapted to distinguish the Goods and Services.  In support of this submission the Applicant quotes the comments of the Deputy Registrar in relation to the term ‘Parish of Rothbury’.  Of course, the trade mark under consideration was ‘Rothbury’ rather than ‘Parish of Rothbury’ and so the comments are ‘obiter’.  The expression ‘Parish of Pokolbin’ is in my consideration more precise than is the word ‘Pokolbin’ as the Parish boundaries are defined with sufficient precision to be used in land titles and do not have to be further explained.  If the area referred to by the Trade Mark is not in accordance with the definition of the Parish of Pokolbin, then prima facie the Trade Mark would appear to contain a connotation which would be likely to deceive or cause confusion in terms of section 43 of the Act.

2. Further, two observations are pertinent in relation to the comment in the Trade Mark Examiner’s Manual that ‘trade marks containing descriptive or geographic references may more easily meet the requirements for protection as a certification trade mark (in comparison to protection as a standard trade mark)’.  Firstly, the passage quoted makes no comment on trade marks that consist of a geographic reference.  Secondly, the Trade Mark Examiner’s Manual is a guide and does not have the force of law.

3. Mr Omond also pointed to the registration of certification mark 1377413(33) TEQUILA as being persuasive of official practice concerning certification trade marks.  The official file shows that evidence addressing both use and other circumstances was led by the owner of that certification trade mark and an endorsement reflecting this has been entered onto the Register of Trade Marks.

4. A conclusion that the Trade Mark is not to any extent capable of distinguishing the Goods and Services certified by the applicant or an approved certifier from Goods and Services not so certified is in my consideration unavoidable.

5. Subsection 177(2) states that in deciding whether the Trade Mark is capable of distinguishing goods or services certified by the applicant or an approved certifier, I must take into account the extent to which the certification trade mark is inherently adapted so to distinguish those goods or services or the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods or services.

6. The evidence submitted by the Applicant shows, at best, two years of use before the relevant date. The evidence does not show use of the Trade Mark in relation to the vast bulk of the Goods and Services but only in relation to wine and accommodation. In the light of the Trade Mark’s lack of inherent adaption to distinguish and the very limited use it enjoyed before the filing date, I am not satisfied, in terms of section 177 of the Act, that the Trade Mark is capable of distinguishing the Goods and Services.

Decision

1. Section 176 of the Act provides:

   176Acceptance or rejection of application

   (1)The Registrar must accept the application if:

   (a)the application is made in accordance with this Act; and

   (b)there are no grounds for rejecting the application; and

   (c)the Commission has given a certificate under subsection 175(2).

   Otherwise the Registrar must reject the application.

   (1A)However, the Registrar must give the applicant an opportunity to be heard before rejecting the application solely because one or both of the conditions in paragraphs (1)(a) and (b) are not met.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:For limitations see section 6.

   (3)The Registrar must:

   (a)give to the applicant notice in writing of his or her decision; and

   (b)advertise the decision in the Official Journal.

2. I reject application 1494664.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

9 October 2014