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

[2017] ATMO 79

TRADE MARKS ACT 1995

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

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

Delegate:	Nicholas Smith Decision on the Written Record
Decision:	2017 ATMO 79 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 41 considered – ground not established – trade mark to proceed to registration

Background

1. This is an opposition brought by Peter Lynch (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark subject of the application detailed below in the name of CMD Holdings Pty Ltd and Knockout Events Australia Pty Ltd (‘Applicant’): 

Application Number:	1711864
Filing Date:	4 August 2015
Goods and 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) (collectively ‘Applicant’s Goods and Services’)
Trade Mark:	WINTER WONDERLAND       (‘Trade Mark’)

2. Following the advertisement on 7 January 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 6 March 2016 and a Statement of Grounds and Particulars (‘SGP’) that same day. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 11 April 2016. The SGP raised a single ground of opposition under s 41 of the Act.

Evidence

3. Neither party filed any evidence in relation to this opposition. The Opponent provided to the office 7 pages of attachments to the SGP. These are not evidence in the opposition, have not been provided in declaratory form in accordance with Reg 21.17, and their provenance and reliability has not been verified in any way. As these attachments have not been provided in evidence the Applicant has not hand an opportunity to answer them.. On 17 March 2016 this office wrote to the Opponent, informing him that if he wished to rely on the attachments to the SGP, the attachments must be filed in the form of a declaration at the appropriate time (i.e. during the evidence stage). The Opponent evidently chose not to take that step. I have received no submissions from the Opponent requesting that I take the attachments into account pursuant to reg 21.15(4) or 21.19 of the Trade Marks Regulations 1995 and in circumstances where the Opponent had the opportunity to file the attachments as evidence, was specifically informed of the requirement to re-file them and chose not to, I shall not take them into account in making my decision.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities.  By letter from IP Australia dated 11 January 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party  filed any submissions.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A, 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.

The Parties

6. I have been provided no information about either party.  In the SGP the Opponent states that the ‘activity of the registrant [sic] is descriptive of a winter themed activity that may include ice skating and falling snow as seen in the northern hemisphere’ but I have no evidence before me that the Applicant conducts such an activity.  I note from the Register of Trade Marks that the Applicant owns a trade mark registration (registration number 1581346) for WONDERLAND FUN PARK for services in Class 41 including such things as ‘organisation of entertainment events’ and ‘provision of entertainment facilities’.  This registration, which dates from September 2013, was granted pursuant to ss 44(3)(a) and (4) which indicates that the Applicant was able to provide evidence of its use of the WONDERLAND FUN PARK mark for services in Class 41 before then.

Grounds of Opposition, Onus and Standard of Proof

7. As indicated above the SGP nominates a ground of opposition under s 41. To successfully oppose the application the Opponent bears the onus of proof. ^[1] 

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

8. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 4 August 2015, being the filing date of the application in Australia (‘relevant date’).

Discussion

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

Section 41

9. The relevant provisions of the Act with respect to the s 41 ground are is reproduced below:

Section 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.

5. 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[3] (‘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:

   [3] (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][4]

   [4] [2017] ATMO 25, [38]-[40].

6. Paraphrasing what the same Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd[5]:

   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.][6]  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.

   [5] [2015] ATMO 69 at [16]-[18]. I have in the main also retained the Hearing Officer’s original footnotes.

   [6] See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [26]-[29], [40] for a full discussion on this point,

   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. [7]

   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[8]] and restated in [Clark], [FH Faulding & Co Ltd v Imperial Chemical Industries Ltd[9]] and [Burger King Corporation v Registrar of Trade Marks[10]], 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. [11]

   [7] (1964) 111 CLR 511, 514. The case concerned possible registration of the claimed trade mark MICHIGAN in Part B of the then two part Register as a mark ‘capable of becoming distinctive’ under s 25(1) of the now repealed Trade Marks Act 1955.  Under s 26 of that Act a trade mark could not be considered distinctive unless it was ‘adapted to distinguish’ the relevant goods or services.

   [8] (1956) 95 CLR 190.

   [9] (1965) 112 CLR 537.

   [10] (1973) 128 CLR 417.

   [11] (2014) 254 CLR 337, [70]-[71].

7. The ground based on s 41 of the Act is particularised in the SGP as follows:

   The mark is too descriptive of the service being provided.  The registration of this mark will prevent other users of the words, in ordinary language, who have been using the words as part of their advertising and branding for many years to describe their business activity.  See exhibits.  The activity of the registrant [sic] is descriptive of a winter themed activity that may include ice skating and falling snow as seen in the northern hemisphere – i.e. a winter wonderland.  On their own the words are not capable of distinguishing the trader.  The trader should add a prefix to the mark to distinguish them.  

8. As noted above, the onus is on the Opponent to establish 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, which presents a significant challenge for the Opponent in circumstances where it has filed no evidence and made no submissions.

9. The definition for the word ‘wonderland’ in the Macquarie Dictionary, taken into account pursuant to reg 21.15(4) of the Trade Marks Regulations 1995 relevantly includes ‘a wonderful country or region: a wonderland of snow; a winter wonderland.’  The Opponent has not provided any evidence, as opposed to assertions, that the phrase ‘winter wonderland’ is one other traders would want or need to use to refer to their similar goods or services.   

10. As noted above, 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 circumstances where the Opponent has filed no evidence, made no submissions and the Trade Mark does not, on the face of it, indicate the kind, quality or some other characteristic of any of the Applicant’s Goods and Services I find that the Opponent has failed to discharged the onus it bears in establishing the ground of opposition under s 41.

Decision

1. The Opponent has failed to establish the ground of opposition it nominated in the SGP.  Trade Mark application no. 1711864 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Nicholas Smith
Hearing Officer
Trade Marks Hearings
1 August 2017