Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited
[2011] ATMO 78
•12 August 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Phone Directories Company Australia Pty Ltd to registration of trade mark application 1136210 (38, 42) - ASK A LOCAL - filed in the name of Telstra Corporation Limited.
Delegate:
Claudia Murray
Representation:
Opponent: Mr Chris Round, partner of Middletons law firm, Melbourne.
Applicant: Davies Collison Cave, Patent and Trade Mark Attorneys, Melbourne, provided written submissions for consideration at the hearing.
Decision:
2011 ATMO 78
Section 52 opposition - opposition successful under section 41 – ‘Ask a local’ not capable of distinguishing under subsection 41(3) - evidence of use and/or other circumstances in terms of subsection 41(5) not persuasive – registration refused – costs awarded against applicant.
Background
1. Telstra Corporation Limited (‘the applicant’) filed trade mark application number 1136210 on 19 September 2006 for the plain words trade mark:
ASK A LOCAL
2. As a divisional application under the provisions of section 45 of the Trade Marks Act 1995 (‘the Act’), the application takes its filing date of 13 December 2004 from its parent application, number 1034104. The parent application covered goods and services in classes 9, 38, 41 and 42. It was also subject to opposition by the same opponent involved in this proceeding, but the application was withdrawn at the very end of the opposition process. The present (divisional) application was originally filed in respect of services in classes 38, 41 and 42 of the International (Nice) Classification of Goods and Services. However, a ground for rejection under section 41 of the Act was raised against the application during examination. In response, the applicant agreed to delete some services, including all of those in class 41. The ground for rejection was then withdrawn. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 28 May 2009, covering the following services:
Class 38: Telecommunication of information (including web pages), computer programmes and any other data; information services related to telecommunications; transmission of information on a wide range of topics, including on-line transmission
Class 42: Research services
3. On 27 August 2009, Phone Directories Company Australia Pty Ltd (‘the opponent’) filed notice of opposition to registration of the trade mark. Eighteen grounds of opposition were listed in the notice.
4. Evidence in support, answer and reply was duly served and filed. On 22 December 2010, the Office received a request from the opponent for the opposition to be heard in Melbourne. I heard the matter, as a delegate of the Registrar of Trade Marks, on 11 March 2011. Mr Chris Round, partner of Middletons law firm, Melbourne, represented the opponent. The applicant’s representatives, Davies Collison Cave, Patent and Trade Mark Attorneys, Melbourne, provided written submissions for consideration at the hearing.
Evidence
5. The evidence in relation to this opposition comprises:
Evidence in Support
ØStatutory declaration of Lisa Maree Egan, with Exhibits LME-3 to LME-5, dated 27 November 2009.
ØStatutory declaration of Catherine Ross McGarry, with Exhibits CRM-46 to CRM-61, dated 2 December 2009.
Evidence in Answer
ØStatutory declaration of Christopher James Doody, dated 30 May 2008.
ØStatutory declaration of Stephen Thomas Harvy, dated 6 June 2008.
ØStatutory declaration of Stephen Thomas Harvy, dated 23 December 2008.
ØStatutory declaration of Stephen Thomas Harvy, dated 26 August 2009.
Evidence in Reply
ØStatutory declaration of Christopher John Round, dated 7 October 2010.
6. The evidence shows that the applicant and opponent have occupied respective niches in what is essentially the same field of activity for some years, and that each claims it has developed rights in the word ‘local’, as applied to regional directory publications.
7. Mr Doody is the Regional Marketing Manager of Telstra Country Wide, a business unit in the applicant company. His declaration states that the ASK A LOCAL trade mark is used extensively by the applicant ‘in connection with a range of telecommunications goods and services and related informational services.’ He states that it was first used by the applicant in March 2004 during an advertising campaign in Newcastle associated with a football team known as the Newcastle Knights. The campaign ran until mid September 2004 and offered broadband access and a number of free local phone calls. It was extended in the years 2004, 2005 and 2006 in the Newcastle region.
8. Mr Doody then describes a similar campaign under the ASK A LOCAL trade mark in association with the Penrith Panthers football team from February or March 2005 until March 2006. During this campaign he says that the ASK A LOCAL trade mark was advertised widely, including on point of sale materials, in the press (including featuring in the Penrith Press, Hawkesbury Courier and Blue Mountains Gazette), and on outdoor advertising (including advertising on the back of buses and at railway stations).
9. Mr Doody also exhibits examples of the applicant’s use of the tag line ‘LOCAL PEOPLE, LOCAL KNOWLEDGE, LOCAL SOLUTIONS’ which appeared in a number of its advertising and promotional materials in the ‘Southern Region’ and in the Northern Territory from about 2000.[1]
[1] Statutory declaration of Christopher James Doody, dated 30 May 2008, paras 8-18.
10. Mr Harvy is the Group Product Manager for the Yellow Pages® printed directory products at Sensis Pty Ltd, a wholly-owned subsidiary of the applicant. In his first declaration, he states that the applicant has been producing and distributing its Yellow Pages® directories branded with the word ‘local’ on the covers since at least 1997 when the phrase ‘All the local answers’ appeared on the covers. He states, ‘From at least 1999, Telstra’s local directories were referred to as Yellow Pages® local directories, and this phrase appeared on their covers. The word LOCAL has been used by Telstra continuously on the Yellow Pages® local directories since 1997.’ Local Yellow Pages® directories are distributed to a wide variety of different regions in the cities of Sydney, Melbourne, Brisbane, Adelaide and Perth.
11. Mr Harvy says that the applicant has used the following expressions, which include the word ‘local’, in advertising and promoting its directories business in the years since 1997:
· YOUR YELLOW PAGES LOCAL DIRECTORY
· YOUR LOCAL YELLOW PAGES/DIRECTORY
· YOUR LOCAL DIRECTORY
· YOUR LOCAL DIRECTORY HAS ARRIVED
· THERE IS A BETTER WAY TO FIND YOUR LOCAL CUSTOMERS
· YOUR NEW (AND IMPROVED) YELLOW PAGES LOCAL DIRECTORY
· EXPECT MORE LOCALS TO POP IN (OR POP UP) / EXPECT MORE LOCAL BUYERS TO POP UP
· THE LOCAL YELLOW PAGES DIRECTORY
· NEED IT LOCALLY
· EASTERN SUBURBS YELLOW PAGES LOCAL DIRECTORY
· GET TO KNOW YOUR LOCALS
· MEET THE LOCALS
· YELLOW PAGES LOCAL - SORTED
· THE LOCAL IS CLOSING
· ADVERTISE IN YOUR LOCAL YELLOW PAGES DIRECTORY AND THE LOCALS WILL FIND YOU;
· LOCAL MAPS, LOCAL INFORMATION, LOCAL BUSINESSES, LOCAL PRODUCTS (or similar variations)
· YELLOW PAGES LOCAL
· IMPROVE YOUR LOCAL BUSINESS LANDSCAPE
· TARGET PEOPLE LOOKING TO SHOP LOCALLY
· YELLOW LOCAL
· YOUR LOCAL IS NOW OPEN FOR BUSINESS
· DISCOVERING YOUR LOCAL COMMUNITY
· YOUR LOCAL SHOPPING CENTRE or LOCAL SHOPPING CENTRE
· LOCAL DIRECTORY
· THE LOCAL KNOW-IT ALL
· LAST CALL AT YOUR LOCAL
· LAST CHANCE TO GET IN WITH THE LOCALS
· YOUR LOCAL AREA.[2]
[2] Statutory declaration of Stephen Thomas Harvy, dated 6 June 2008, paras 10-19.
12. Exhibit LME-4 of the declaration by Lisa Maree Egan is a declaration by Daniel Aran Stoten, a director of the opponent. Mr Stoten describes the opponent’s use of the word ‘local’. He says that, since 1993, the opponent has produced, published and distributed business directories in regional areas of Queensland and the Northern Territory. From late 2004, this has extended to New South Wales. Mr Stoten declares that his business has used the word ‘local’ extensively in its advertising and promotion since 1993 and that this has been ‘in accordance with a carefully planned business and branding strategy.’ He continues:
The word ‘local’ has been increasingly incorporated in the branding of [the opponent’s] Directories Products and Directories services, to emphasise the Business’s general business ethos of being closely in touch with the needs of the local communities in which the Business distributes its Directories Products and provides its Directories Services.
In addition to the use of “local” on the covers of the Business’s telephone directories, the Business has consistently used the word “local” on the internal pages of the telephone directories both in its trade marks and taglines as a means of reinforcing the Business’s brand and business ethos.
13. Mr Stoten declares that the opponent has registered and traded under over a hundred business names incorporating the word ‘local’ throughout the period 2004 to 2008. From 2003, it operated a website with the address Later, from 2005/6, it began operating an ‘interactive phone book search website’ at
[3] Declaration by Daniel Aran Stoten, dated 16 December 2008, paras 63-71. (Exhibit LME-4 to the statutory declaration of Lisa Maree Egan, dated 27 November 2009.)
14. The opponent owns the following trade mark registrations, featuring the word ‘Local’:[4]
[4]Declaration by Catherine Rose McGarry dated 8 June 2007, para 24. (Exhibit LME-3 to the statutory declaration of Lisa Maree Egan, dated 27 November 2009.)
TM No.
Trade Mark
Priority Date
Class of Goods/Services
1135498
14 Sep 2006
16, 35
1175776
11 May 2007
9, 16, 35
Grounds of opposition
15. Just prior to the hearing, the opponent indicated that despite the many grounds of opposition listed in its notice, it now intended to rely only upon grounds under section 41 and 59 of the Act. At this point, for completeness, I find that none of the other grounds listed have been made out.
Section 41 - Trade mark not distinguishing applicant’s goods or services
The legislation
16. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. This issue lies at the heart of much of the evidence which has been exchanged between the parties. The section relevantly provides:
(2)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 (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.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account 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.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2: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 (1) and 7(3) and section 8).
(6)If the Registrar finds that 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, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
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: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 (1) and 7(3) and section 8).
Submissions
17. Mr Round argued for the opponent that:
In the divisional application, the Applicant seeks registration for the very services for which a trader would expect the Trade Mark to be used. If one was intending to "ask a local" about something, they would be requesting information or conducting research. These are the very services claimed by the Applicant in the divisional application….[T]he Applicant is intending to use the Trade Mark for services that other traders may wish to offer by reference to the Trade Mark…
The evidence makes it clear that large numbers of traders use the Trade Mark for a range of services including those covered by the divisional application.
18. Mr Round then went on to refer to various references to the use by third parties of the phrase ‘ask a local’, included in his declaration, and also that of Mr Stoten, which I have referred to above. He pointed out that the evidence of Mr Stoten went unchallenged by the applicant in its evidence in answer. He continued:
The evidence filed by the Opponent shows clearly that the Trade Mark is an expression that is in common use both in Australia and internationally. If, after assessing the extent to which the application mark is inherently adapted to distinguish, the examiner is unable to decide if the trade mark is capable of distinguishing, section 41(4) of the Act provides that a mark with some inherent adaptability to distinguish may be accepted if the applicant is able to satisfy the registrar that it meets the requirements of subs 41(5) of the Act.
This opposition is one of a number of oppositions filed by the Applicant and the Opponent concerning numerous trade marks that include the word "local". Last year with respect to Australian trade mark application no. 1135497 "Local directories your local phonebook", the current Applicant argued successfully that that trade mark had no inherent adaptation to distinguish the current Opponent's goods or services and therefore that mark should have been accepted under section 41(6) of the Act…
Quite clearly the Trade Mark when applied to the services for which the divisional application seeks registration should have been examined under section 41(5) of the Act…
The Applicant has only been able to produce limited evidence of use of the Trade Mark, which appears in the Doody Declaration. There is no evidence of use of the Trade Mark in any of the Harvy declarations.
The Opponent submits that the evidence provided by the Applicant in support of the Trade Mark application does not demonstrate use of the Trade Mark for the divisional application's services and certainly falls short of the substantial and persuasive evidence of use threshold required to justify registration of a trade mark with no inherent adaptation to distinguish the Applicant's services in any case.
On the basis that the Trade Mark should have been examined under section 41(5) of the Act and the use of the Trade Mark set out in the Applicant's evidence does not concern the services the subject of the divisional application, the Opponent submits this ground should be made out.
19. The applicant’s written submissions summarised its response in terms of the section 41 ground as follows:
a)The Trade Marks Office correctly found the ASK A LOCAL trade mark to be prima facie distinctive of the Applicant's services
b)The ASK A LOCAL trade mark does not directly describe the subject services and has a fanciful element and is prima facie distinctive
c)Evidence of third party usage per se and moreover, evidence of third party usage that post dates the filing date is not relevant to an inquiry under subsection 41(3)
d)If, in the alternative, the Hearing officer considers that the ASK A LOCAL mark should be assessed under subsection 41(5) considering the combined effect of the extent to which the trade mark is inherently adapted to distinguish the designated services; the use of the trade mark by the Applicant; the other circumstances; the ASK A LOCAL mark should proceed to registration on the basis that the ASK A LOCAL mark does or will distinguish the designated services as being those of the Applicant.
Discussion
20. Subsections 41(5) and (6) of the Act focus upon evidence of trade mark use. However, if a trade mark is determined to be inherently adapted to distinguish an applicant’s goods or services, then it is acceptable for registration under subsection 41(3), without reference to the later subsections of section 41. The manner in which section 41 operates in conjunction with the presumption of registrability was examined closely by Branson J in the Oregon case. After examining the interaction of the subsections, she found:
The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken into account 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, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so "establish" by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.
It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant's goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.[5]
[5] Blount v Registrar of Trade Marks (1998) 83 FCR 50, 40 IPR 498 (the Oregon case) (at [20] to [49]).
21. So, in the context of this opposition, the onus on the opponent to make its case upon the balance of probabilities,[6] translates to the opponent bearing an initial onus of establishing on the balance of probabilities that the opposed trade mark is not, or is not sufficiently, inherently adapted to distinguish the applicant’s services from the goods or services of other persons as to qualify for registration on that basis alone. Under those circumstances, the onus shifts back to the applicant, who must then demonstrate, by means of evidence or other circumstances, that the trade mark actually does or will distinguish its services.
[6] Pfizer Products Inc v Karam (2006) 70 IPR 599; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 (at [22] to [26]).
22. The delegate’s decision referred to by Mr Round, involving the same opposing parties as this case, but with reversed roles, was Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2010] ATMO 37 (25 May 2010). Hearing Officer Iain Thompson decided that matter, taking into consideration evidence very similar to that before me here. Many of his observations, including those upon the nature of the relationship between the opposing parties and their respective use of the word ‘local’ are also relevant to this case. He observed:
It is, I consider, with reference to traders producing telephone directories which target specific areas or localities, nearly impossible to avoid use of the words, ‘local directories,’ ‘local telephone directories,’ ‘local phone books,’ ‘local phone directories,’ ‘local listings,’ ‘local businesses’ and similar phrases employing the use of the word ‘local’. The opponent’s evidence aptly illustrates this and the applicant’s own evidence tends to support this view; the earlier McGarry declaration talks at paragraph 19.3 of ‘Local Banking institutions,’ at paragraphs 24.3 and 24.14 it talks of ‘local newspapers’ and at paragraph 32 it states “[the applicant] intends to increase the number of local phone directories it provides in these States and Territory, in addition to commencing the publishing of local phone directories in Victoria, South Australia, Western Australia, Tasmania and the Australian Capital Territory.”
I note that the word ‘local’ (as the opponent’s evidence illustrates) is used by advertising people to stress the notion that we live in a community rather than a society – the word ‘local’ is one which tends to be ‘loaded’ – and it is used as such in the opponent’s operations as shown in its evidence.[7]
[7] Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2010], op. cit., paras 43-44.
23. I consider that the phrase ‘ask a local’ has a little more capacity to distinguish the applicant’s services than ‘Local directories your local phone book’, which Mr Thompson determined to be ‘not to any extent inherently adapted to distinguish’ the telephone and street directories and associated services covered by trade mark application number 1135497. However, I agree with the opponent that, notwithstanding the removal of class 41 services which occurred during the examination of the trade mark, the expression ‘ask a local’ is not, in the terms of subsection 41(3), sufficiently inherently adapted to distinguish the applicant’s remaining services as to be capable of distinguishing them on that basis alone. The test for inherent adaptation was discussed in Clark Equipment Co v Registrar of Trade Marks[8] where Kitto J said:
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.
[8] [1964] HCA 55; (1964) 111 CLR 511, para 5.
24. The opponent has persuaded me that other traders might indeed desire to use the expression ‘ask a local’ in relation to their own similar services. While the applicant is correct in pointing out that the examples of third party use set out in the Round declaration post date the filing date of this application, that is not the end of the enquiry. To borrow Mr Thompson’s words again:
This ‘lack of use by others in trade’ argument has obvious problems – it may be, for instance, that no trader apart from a putative applicant uses the colour BLUE on its service stations; however, this fact on its own does not change the intrinsic nature of the colour trade mark BLUE on service stations as regards that colour’s inherent adaptability to distinguish in respect of service station goods and services: Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; Philmac Pty Limited v The Registrar of Trade Marks [2002] FCA 1551. The fact that no other trader is using the trade mark in the ordinary course of trade and without improper motive is not determinative, per se, of the inherent adaptability of the proposed trade mark to distinguish – however, the fact that other traders are innocently using a sign in the ordinary course of trade in relation to their similar goods or services provides corroboration of a finding of lack of inherent adaptability. In fact, the answer to the question of inherent adaptability lies in consideration of the intrinsic nature and attributes of the trade mark itself and whether, in future, it will or is likely to be innocently needed by other traders to use in relation to their similar goods or services in the normal course of trade.
The absence of other traders, or other traders who are likely to need to use an expression, is a factor to be considered in any assessment of the capacity of a trade mark to become distinctive, or whether it has in fact become distinctive. It is one factor to be taken into account in considering a matter under either of subsections 41(5) or (6). It is not a factor in the evaluation of the prima facie inherent adaptability of a trade mark to distinguish – that assessment lies in the inherent qualities of the trade mark.[9]
[9] Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2010], op. cit., paras 38-40.
25. The expression ‘ask a local’ has a straightforward and unambiguous meaning even when applied to transmission of information services, including telecommunication and on-line transmission, and to research services. Clearly, users of such services would have an expectation that they would be receiving locality-specific knowledge or information, such as might be provided to an enquirer by a local inhabitant, privy to any regional idiosyncrasies. In the present era of global communications, large companies famously (or infamously) outsource their ‘help’ lines to operators who must respond to complicated, often locality-specific enquiries from customers in countries far removed from the location of those operators. The idea of being able instead to ‘ask a local’ in such circumstances is indisputably an attractive one for customers, and it would have consequentially high appeal from the perspective of traders in the communications field. I find that the provisions of subsection 41(5), not 41(3), apply to the opposed trade mark.
26. The provisions of subsection 41(5) have been reproduced above. The Trade Mark Examiner’s Manual puts the tests succinctly thus:
Overall, section 41(5) of the Act requires the Registrar to consider a balance of the shortfall of inherent adaptation against the:
· extent of use (in time, area, volume or market share terms) - a quantitative question
· manner of use - a qualitative question
· any other circumstances.[10]
[10] Part 22, section 5.
27. Here, as I have already discussed, I am persuaded that the shortfall in inherent adaptation, if not complete, is nevertheless considerable. Balanced against this significant shortfall, the applicant’s use of ‘ask a local’, as documented in its evidence, has itself significant deficiencies.
28. Firstly, while the applicant’s sales and advertising figures given in the Doody declaration are considerable, the period and extent of use appear limited to the two campaigns in Newcastle and Penrith, between 2004 and 2006.
29. Secondly, the Doody declaration shows the applicant’s use of the phrase to be subsidiary to the prominent use of the trade mark TELSTRA, and usually in the following contexts: ‘Ask a local 1800 503 477’ and ‘Call 1800 687 829 to ask a local’. The most generous description of such use is that it is, at best, in the nature of ‘limping’ trade mark use, as described by Justice Jacob:
…what we have here is a kind of "limping mark", always used with what is obviously a proper trade mark. The same was true of Treat which was always used with "Silver Spoon". Neither sign was ever used by the proprietor on its own. And this was evidence of a lack of capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that part of a sign - a "sub-sign" - cannot also be a trade mark: both Ford and Fiesta are obviously valid marks. But there are these other cases, where a sign proffered as a valid mark cannot really stand up on its own.[11]
[11] Philips Electronics BV v Remington Consumer Products [1998] RPC 283, at 312.
30. The third criterion available for consideration under subsection 41(5) is ‘any other circumstances’. The applicant argued that I should consider the previous acceptances of the opposed application, and also its parent, as a relevant ‘other circumstance’, together with its documented use of the word and phrases including the word ‘local’ since 1997. It continued:
Currently, the Applicant uses the word LOCAL in connection with its business directories and revenue generated from the provision of these directories exceeds millions of dollars annually. The Applicant's longstanding use of trade marks which incorporate the word "LOCAL" and significant reputation in the word "LOCAL" renders it more likely that consumers will understand the services provided under the ASK A LOCAL mark to originate from the Applicant.
31. I do not accept either of these suggestions as properly satisfying the third criterion set out under subsection 41(5). The first seems to me to be an entirely circular argument which does not take into account the fact that the decision I might make under section 41 in relation to this opposition would effectively supplant the earlier decision taken during examination. And in regard to the applicant’s second point, I would refer to Hearing Officer Thompson’s comments quoted above about the ‘loaded’ nature of the word ‘local’, and the ‘near impossibility’ of avoiding its use, when providing services in the field occupied by both the applicant and the opponent. I seriously doubt that any amount of use of the word ‘local’, however longstanding, by either party could ever entitle either of them to claim their customers would be likely to associate its use exclusively with them.
32. Having considered the applicant’s case against the criteria set out in subsection 41(5), I am not satisfied that the trade mark ASK A LOCAL ‘does or will distinguish the designated services from the goods or services of other persons.’ The opponent has made out its ground of opposition under section 41.
Other ground of opposition
33. Mr Round also pressed a ground of opposition under section 59. However, there is no need to explore that ground further, as the opponent has succeeded under section 41. As with the outstanding grounds originally listed in the notice of opposition, the additional ground of opposition under section 59 would be again available to the opponent in the event of an appeal from this decision.
Decision
34. Subsection 55(1) of the Act provides:
(1) Unless the proceedings are discontinued or dismissed, 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.
35. The opponent has met the onus upon it, according to the balance of probabilities, in terms of the ground of opposition argued under section 41. I therefore refuse to register trade mark number 1136210.
Costs
36. The opponent has sought its costs in this matter and it is usual for costs to follow the event. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant.
Claudia Murray
Hearing Officer
Trade Marks Hearings
12 August 2011
8
0