Peter Lynch v CDM Holdings Pty Ltd and Knockout Events Australia Pty Ltd

[2017] ATMO 123

TRADE MARKS ACT 1995

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

Re:Opposition by Sydney Santa Spectacular Pty Ltd to registration of trade mark application 1711864 (25, 28, 41, 43) - WINTER WONDERLAND - filed in the name of CDM Holdings Pty Ltd and Knockout Events Australia Pty Ltd.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Self represented Applicant: Mark My Words Pty Ltd
Decision:	2017 ATMO 123 Trade Marks Act 1995 Section 52 opposition to registration - section 41 - no evidence filed in support of opposition - opposition not established

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) CDM Holdings Pty Ltd and Knockout Events Australia Pty Ltd (‘the Applicants’) have applied to register the trade mark appearing below:

Application No:           1711864
Priority Date:               4 August 2015

Goods/Services:          Class 25: Apparel (clothing, footwear, headgear); Articles of clothing for theatrical use; Babies' pants (clothing); Boys' clothing; Casual clothing; Children's clothing; Clothing; Clothing for babies; Combinations (clothing); Girl's clothing; Gloves (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Men's clothing; Plush clothing; Women's clothing

Class 28: Articles of clothing for toys; Balloons (toys); Children's toys; Model figures (toys or playthings); Model vehicles (toys or playthings); Musical toys; Plush toys; Toys (playthings); Toy vehicles

Class 41: Theme park services; Amusement parks; Event management services (organisation of educational, entertainment, sporting or cultural events); Arranging group recreational activities; Arranging the provision of recreation facilities; Provision of facilities for recreation; Provision of recreational activities; Provision of recreational events; Recreation information; Recreational services; Organisation and conducting of dance, music and other entertainment festivals; Amusement park services; Amusement rides; Amusements; Conducting of exhibitions for amusement purposes; Provision of amusement facilities; Children's entertainment services; Conducting of exhibitions for entertainment purposes; Entertainment; Live entertainment; Management of entertainment events; Management of entertainment services; Organising of entertainment and social events; Production of fashion shows (entertainment); Production of live entertainment; Providing facilities for entertainment; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of live entertainment; Theatre restaurants (Entertainment); Theatre services; Organising ice-skating shows; Provision of ice-skating rinks

Class 43: Theatre restaurants (Provision of food and drink); Food and drink catering; Preparation of food and drink; Providing food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation; Snack bars (provision of food and drink); Takeaway food and drink services; Catering services; Restaurant services; Restaurants; Cafes; Coffee bar and coffee house services (provision of food and drink)

Trade Mark:                WINTER WONDERLAND

(‘the Trade Mark’)

1. The Trade Mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 7 January 2016.

2. On & March 2016, Sydney Santa Spectacular Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose followed, on 7 April 2016, by a Statement of Grounds and Particulars (‘the SGP’). The SGP cites one ground of opposition, under section 41 of the Act, which I will further discuss below.

3. Neither party to this matter has filed evidence or submissions.

4. Now in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, is has been allocated to me, one of her delegates, for my decision.

Onus

1. The Opponent bears the onus of establishing its ground of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[2].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Section 41

1. Section 41 of the Act provides:

   41Trade mark not distinguishing applicant’s goods or services

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

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

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

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

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

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

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

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

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

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

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

   (iii)any other circumstances.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)    the time of production of goods or of the rendering of services.

   Note 2:For goods of a person and services of a person see section 6.

   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).

2. The recent decision of the Registrar’s delegate in Peter Lynch v CMD Holdings Pty Ltd and Knockout Events Australia Pty Ltd[3] forms a perfect analogy to the matter before me as it involves the identical trade mark, the same Applicants, and the same lack of evidence before the Registrar’s delegate.  The delegate said (with footnotes omitted):

   [3] 2017 ATMO 79.

   Given the circumstances leading up to this opposition it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

   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 (‘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:

   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]

   Paraphrasing what the same Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd:

   As mentioned in paragraph [7] above the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the [Trade] Mark is not sufficiently adapted to distinguish the Applicant’s Goods and Services as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3) [as it stood prior to the Amending Act.] In this regard both parties agreed that, as Mr Rubetzki put it:

   When assessing whether a mark is sufficiently adapted to distinguish the Applicant’s Goods and Services, it should be presumed that the mark is sufficiently adapted to distinguish unless the Registrar is satisfied otherwise. However, if it is necessary to consider the mark under ss 41(3)(b) or (4)(b) (as they now stand), the Applicant must demonstrate that the criteria referred to in those sub-sections are made out.

   Consideration of the Opposed Mark under section 41(3)

   In accordance with Branson J’s analysis then, the first issue which arises for consideration is “the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.” Justice Kitto in Clark Equipment Company v Registrar of Trade Marks stated that:

   [T]he question whether a mark is adapted to distinguish [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, 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.

   More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited considered the former s 41(3) and in particular the question of whether a trade mark is inherently adapted to distinguish in some detail. In a joint judgment the majority of the Court explicitly approved Kitto J’s above-quoted words and went on to say at [70]-[71] (with original footnotes omitted and my emphasis added in bold):

   Interpretation of s 41(3)

   [70] In accordance with the principles established in [Mark Foy’s Ltd v Davies Coop & Co Ltd and restated in [Clark], [FH Faulding & Co Ltd v Imperial Chemical Industries Ltd and [Burger King Corporation v Registrar of Trade Marks, determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.

   [71] As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.

3. The delegate went on to discuss the ground as particularised in the SGP and found that as no evidence had been filed by the opponent, the ground could not be established.  Likewise here, in my view, further discussion of the ground as stated in the SGP is otiose as that ground cannot be established in the absence of evidence filed by the Opponent which shows that the Trade Mark lacks inherent adaptation to distinguish.  The SGP consists of legal argument which is not evidence and furthermore has not been filed as such.  In the absence of evidence the Opponent therefore could not be held by the Registrar to have demonstrated that other traders (without improper motive) are likely to require the Trade Mark to use for the sake of its ordinary meaning in the course of trade in respect of their similar goods or services.

4. The ground under section 41 of the Act has not been established by the Opponent.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. As the opposition has not been established, I decide to register the Trade Mark.

3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the Court’s order or directions.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
20 October 2017