Precedent Productions Pty Ltd v Interested in Business Pty Ltd

[2018] ATMO 112

TRADEMARKSACT 1995

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

Re:Oppositions by Precedent Productions Pty Ltd to registration of trade mark applications 1749278 and 1749282 (35, 41) - The Local Business Awards, The Australian Local Business Awards (Logo Trade Marks) - in the name of Interested in Business Pty Ltd.

DELEGATE:

Decision on the Written Record Iain Campbell Thompson

REPRESENTATION:

Opponent: Wray & Associates – written submissions Applicant: Y Intellectual Property

DECISION:

2018 ATMO 112

Trade MarksAct1995

Section 52 opposition to registration: section 41 - Applicant's trade marks sufficiently inherently adapted to distinguish by reason of its get-up; sections 60 and 42(b): any confusion arises out of the inherently unadapted nature of the words ‘Local Business Awards’. Grounds of opposition not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Interested in Business Pty Ltd (‘the Applicant’) is the applicant for the registration of the trade marks appearing below:

Application No:         1749278

Priority Date:             31 Jan 2016

Services:Class 35: Business evaluation services; Business modelling services; Business statistical analysis; Conducting of business research; Conducting of internal business communication surveys; Conducting of market research; Consumer market information services; Efficiency or process auditing (examining, reviewing or assessing the working of a business or organization); Event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); Information services relating to businesses; Opinion polling; Organisation and management of incentive programmes; Organising of business competitions; Preparation of business reports; Preparation of business statistics; Business  appraisals;  Surveys   for  business  purposes;  Advisory

services relating to commercial planning; Advisory services relating to customer service; Compilation of directories for publishing on the Internet; Market surveys; Organising of prize draws for promotional purposes; Organising of trade competitions; Production of sound recordings for publicity purposes; Production of video recordings for publicity purposes; Publicity film production; Promotional marketing; Service to assist in establishing a network of business contacts; Sponsorship (promotion and marketing services); Team building (personnel management)

Class 41: Arranging of award ceremonies; Management of educational events; Management of education  services; Organisation of galas; Arranging of competitions; Arranging of conferences; Multimedia production, other than for advertising purposes; Publication of multimedia material online; Online (electronic) publication of news; Publishing of printed matter; Organisation of exhibitions for cultural or educational purposes; Production of radio and television programmes

Trade Mark:

(‘the LBA Trade Mark’)

Application No:         1749282

Priority Date:             31 Jan 2016

Services:Class 35: Business evaluation services; Business modelling services; Business statistical analysis; Conducting of business research; Conducting of internal business communication surveys; Conducting of market research; Consumer market information services; Efficiency or process auditing (examining, reviewing or assessing the working of a business or organization); Event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); Information services relating to businesses; Opinion polling; Organisation and management of incentive programmes; Organising of business competitions; Preparation of business reports; Preparation of business statistics; Surveys for business purposes; Business appraisals; Advisory services for business management; Advisory services relating to commercial planning; Advisory services relating to customer service; Compilation of directories for publishing on the Internet; Market surveys; Organising of prize draws for promotional purposes; Organising of trade competitions; Production of sound recordings for publicity purposes; Production of video recordings for publicity purposes; Publicity film production; Promotional marketing; Service to assist in establishing a network of business

contacts; Sponsorship (promotion and marketing services); Team building (personnel management)

Class 41: Arranging of award ceremonies; Management of educational events; Management of education  services; Organisation of galas; Arranging of competitions; Arranging of conferences; Multimedia production, other than for advertising purposes; Publication of multimedia material online; Online (electronic) publication of news; Publishing of printed matter; Organisation of exhibitions for cultural or educational purposes; Production of radio and television programmes

Trade Mark:

(‘the ALBA Trade Mark’)

1. Where appropriate I will refer to the above trade marks collectively as ‘the Opposed Trade Marks’.

1. The Opposed Trade Marks were examined as is prescribed by section 31 of the Act and were both advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 23 June 2016.

1. On 19 August 2016 Precedent Productions Pty Ltd filed Notices of Intention to Oppose followed, on 19 September 2016, by Statements of Grounds and Particulars which (as further discussed below) detail grounds under sections 41, 60 and 42 of Act.

1. On 12 October 2016 the Applicant filed Notices of Intention to Defend.

1. Thereafter the parties have filed the declarations mentioned below in support of their respective positions:

In Support

Steven Loe, Director of the Opponent, made on 17 January 2017, with exhibits SL-1 to SL22.10.

In Answer

Tara Johnston, Program Director of the Applicant, made on 24 April 2017, with exhibits TJ-1 to TJ-12.

In Reply

Steven Loe, made on 27 June 2017, with exhibits SL-23 to SL-59.

1. Thereafter, both parties were informed of their right to be heard or to make written submissions – the Opponent has filed written submissions.

1. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matters, they have been passed to me, one of her delegates, for my decisions based on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.

1. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed applications (or, in relation to the ground under section 60, the Act specifies the ‘priority date’ which is here the same as the filing date of the Opposed Trade Marks).

Evidence

The Opponent

1. Mr Loe’s evidence establishes that the Opponent runs a business awards program in Western Australia under the trade mark which appears below:

(‘the Opponent’s Logo Trade Mark’)

1. The Opponent further claims that the word trade mark LOCAL BUSINESS AWARDS (‘the Opponent’s Word Trade Mark’) has developed a significant reputation in relation to the business awards service that it provides and has filed considerable evidence which is stated to go to the use of the Opponent’s Word Trade Mark.

1. While the use of the Opponent’s Word Trade Mark appears to be subsidiary to the use of the Opponent’s Logo Trade Mark, for reasons which will become apparent it is not necessary to discuss Mr Loe’s evidence any further.

The Applicant

1. Ms Johnston’s evidence establishes that the Applicant runs business awards programs under, inter alia, the Opposed Trade Marks.

Other

1. I note here that although the Opponent mentions the Opponent’s Logo Trade Mark in its submissions that trade mark is not particularised in the Statement of Grounds and Particulars in relation to the grounds under section 60 and 42. In any event, if the grounds under sections 60 and 42 are not established in relation to the Opponent’s Word Trade Mark, they are logically also not established in relation to the Opponent’s Logo Trade Mark.

Section 41

1. Section 41 of the Act provides:

41  Trade mark not distinguishing applicant’s goods or services

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

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.

Note1:     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.

Note3:     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.

Note2:     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).

The Ground

1. In the Statements of Grounds and Particulars the Opponent asserts:

The [Opposed Trade Marks] contain, as [their] primary element, the words 'THE [AUSTRALIAN] LOCAL BUSINESS AWARDS'. Both the Class 35

Services and the Class 41 Services relate to the provision of services, including award programs and competitions, to local businesses. The words "LOCAL BUSINESS" are particularly prominent.

Accordingly, the primary element[s] of the [Opposed Trade Marks are] entirely descriptive of the claimed Class 35 Services and the Class 41 Services. The additional visual element in [the Opposed Trade Marks of] the Australia map is not a concocted or distinctive image, but is an image of Australia which is generic and commonly used in relation to class 35 and class 41 services. Further, the Australia map device is also descriptive of the word 'AUSTRALIAN' in the [ALBA Trade Mark]. Accordingly, when viewed as a whole, the [Opposed Trade Marks are] not inherently adapted to distinguish the Opponent's services from that of other traders.

Discussion

1. The  first  step  is  to  consider  the  extent  to  which  the  Opposed  Trade  Marks  are inherently adapted to distinguish.

1. In  Australian  Rail  Track  Corporation  Ltd1    the  Registrar’s  delegate  explained (footnotes omitted):

In Clark Equipment Co v Registrar of Trade  Marks  (‘Clark  Equipment’) Kitto J repeated the words of Lord Parker of Waddington in Registrar of Trade Marks v. W. & G. Du Cros Ltd., relevantly stating:

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.

The majority judgment of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’), stated (emphasis added):

The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from [Registrar of Trade Marks v W & G Du Cros Ltd [1913] UKHL 588; [1913] AC 624 (‘Du

Cros’)]... is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

[…]

As was reiterated by the Full Bench of the Federal Court of Australia in Primary Health Care Limited v Commonwealth of Australia:

The fact that a term has acquired a secondary meaning through use or by repute is not relevant to the question of whether it is inherently adapted to distinguish an applicant’s goods or services. “Inherent adaptability” “depends on the nature of the trade mark itself” and “cannot be changed by use or otherwise”: Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 424 (Gibbs J).

1 [2018] ATMO 69 from [15].

Other traders

The practical approach to the question was considered in Telstra Corporation Limited v Phone Directories Company Pty Ltd as follows:

If a word mark is taken as an example, the ordinary signification of the mark, and the question of “whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods” (Registrar of Trade Marks v Du Cros at 635 per Lord Parker) (or to note alternative formulations: such traders actuated only by proper motives “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” (Clark Equipment v Registrar of Trade Marks at 514 per Kitto J), or “a trader might without any improper motive, want to use to describe his goods” (Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 (“Burger King”) at 425 per Gibbs J (as his Honour then was), or “other traders might legitimately need to use the word in respect of their goods” (Cantarella at 20-21 [71])) are closely related questions. Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required. Burger King appears to be such a case (see Gibbs J at 425). In other cases, evidence might be called on the issue of the ordinary signification of the word mark as happened in Faulding. Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse v Fry Consulting”) at [102] per Kenny J), but would be considered in light of all of the evidence in the case. It is important to note the possible dual significance of such evidence. Evidence of other traders using the word yellow or the colour yellow in connection with their print and online directories could be evidence of the ordinary signification of the YELLOW mark and of the fact that other traders might want to use the word to describe their goods or services.

It is no answer to the second element of the test to highlight the specialised nature of the goods and services or some kind of monopoly that an applicant may have since attained and then submit that other traders have no legitimate desire to use the Trade Marks for the sake of their ordinary signification. As explained by Burley J in the recent case of Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd:

As the plurality in Cantarella noted at [44], the requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting

business, and from the wider point of view of the public, has been applied for at least a century. Where the authorities refer in this context to the importance of the meaning of a word to persons who are “concerned” with them (eg Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [1946] HCA 15; (1946) CLR 175 at 185 (Dixon J); FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537 (Faulding) at 557 per Kitto J), or who wish to “describe their goods” (Mark Foy’s at 201 – 202 (Williams J)), they plainly mean other traders who perceive a need or have a legitimate desire to so use the words in relation to their goods.

Submissions

1. The Opponent submits:

The components of the Applicant's Marks, namely:

(1)     the words, "THE LOCAL BUSINESS AWARDS" present in the [LBA Trade Mark];

(2)    the words, "THE AUSTRALIAN LOCAL BUSINESS AWARDS" present in the [ALBA Trade Mark]; and

(3)   the dotted outline of the Australian continent present in the [Opposed Trade Marks],

are descriptive and not special in character, when considered in the context of the Australian business awards industry and in light of the Applicant's lack of reputation and sufficient use before the Priority Date, or at all.

1. However, Burger King, above, cautions that (in assessing inherent adaptation to distinguish) I am to consider the nature of the expressions ‘The Local Business Awards’ and ‘The Australian Local Business Awards’ according to their ordinary meanings and without regard to any use that either party might have made of them.

Discussion

1. In my consideration the issue does not bear discussion at any length: if a business, shire council, or Chamber of Commerce in any area around Australia was to give awards to local businesses, the words ‘Local Business Awards’ are a normal and natural way of denoting the exact nature of the service. It is difficult to think of an expression which denotes the giving of local business awards any more plainly. The expressions ‘The Local Business Awards’ and ‘The Australian Local Business Awards’ are devoid of any inherent adaptation to distinguish services associated with providing local business awards.

1. However, the Opposed Trade Marks are composite and within the Opposed Trade Marks the words occur inside a frame composed of a map of Australia which is inherently adapted to distinguish the Services. The map is composed of dots of various shades and sizes and, while maps or outlines of Australia are commonly used in trade marks, it is sufficiently improbable that another trader would, without improper motive, need to use the particular rendition of that map which occurs within the Opposed Trade Marks for that particular rendition to be considered to be inherently adapted to distinguish.

1. Further it is difficult to apprehend why, without improper motive, another trader would need to use the particular rendition of the map of Australia in combination with either of the expressions ‘The Local Business Awards’ or ‘The Australian Local Business Awards’. The assessment of the inherent adaptation of a trade mark to distinguish particular goods or services is not a matter of dissecting a trade mark into its individual parts and assessing those components but of considering the trade mark as a whole: In

   Re Diamond T Motor Car Company.2

1. The Opposed Trade Marks have sufficient inherent adaptation to distinguish to be considered prima facie registrable.

1. The Opponent has not established its ground under section 41 of the Act.

Section 60

1. Section 60 of the Act provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note:       For priority date see section 12.

2 [1921] 2 Ch 583.

The Ground

1. In its Statements of Grounds and Particulars the Opponent asserts:

The [Opposed Trade Marks are] similar to the [Opponent’s Word Trade Mark] which has been used by the Opponent in respect of a wide range of services, including marketing services, the arranging and management of events and competitions, business assessment, data collection, advisory and consultancy services for local and small businesses in Australia (Opponent's Services) since 2008. In particular, the Opponent has been using [Opponent’s Word Trade Mark] in respect of arranging award programs for businesses. Both [of the Opposed Trade Marks] have as their primary element the words 'LOCAL BUSINESS AWARDS'.

The Opponent's Services provided under the [Opponent’s Word Trade Mark] are supported by a variety of high profile sponsors and partners, and have been promoted widely through a variety of advertising platforms. Through these marketing activities over a significant period of time, the Opponent has acquired a substantial reputation in Australia for providing the Opponent's Services under the [Opponent’s Word Trade Mark].

By reason of this reputation, use of [the Opposed Trade Marks] by the Applicant is likely to deceive or cause confusion.

Discussion

1. In McCormick & Co Inc v McCormick (‘McCormick’)3 Kenny J asked the question:

What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name

... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

1. Kenny J went on in McCormick4 to state concerning the assessment of reputation that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS

3 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

4 Op cit at [86].

Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. Further, the assessment of the reputation of a trade mark is to take place in the context of the marketplace for the goods and services. Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee5 said (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955) that the reputation required to be demonstrated was to be:

one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

1. However, in view of the entirely unadapted to distinguish nature of the Opponent’s Word Trade Mark upon which the Opponent founds this ground, any discussion of whatever reputation it might have would serve no useful purpose. Having found that the expressions ‘Local Business Awards’ or ‘Australian Local Business Awards’ that occur within the Opposed Trade Marks are devoid of any inherent adaptation to distinguish, the same must be equally true of the expression ‘Local Business Awards’ that forms the Opponent’s Word Trade Mark.

1. In Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd6 (‘Hornsby’) Stephen J said:

There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally

5 [2000] FCA 1587; (2000) 50 IPR 1.

6 [1978] HCA 11; (1978) 140 CLR 216; (1978) 18 ALR 639; [1978] ATPR 40-067; (1978) 52 ALJR 392;

(1978) 3 TPC 244; [1978] ASC 55-010; (1978) 1B IPR 818; 18 A Crim R 639

applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.

1. And (regarding the extent of use claimed by the Opponent) as observed by Jacob J in

   British Sugar: 7

There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods. ... I do not consider that the evidence filed to support the registration was anywhere near enough to support the conclusion that when the mark was registered, it was distinctive. Yes it had been used for about 5 years in conjunction with Silver Spoon, but it was not proved that the public regarded it as a trade mark – a reliable badge of trade origin – on its own.

1. Whilst ‘reputation’ and ‘inherent adaptation’ are different concepts they are interrelated and to find that the ground succeeds under section 60 would be tantamount to both allowing the Opponent a monopoly in the Opponent’s Word Trade Mark and, by inference, acknowledging an entitlement to registration of the Opponent’s Word Trade Mark which does not exist because that trade mark lacks any inherent adaptation to distinguish the Opponent’s services and no amount of use would render it in fact distinctive only of the Opponent’s services.

1. The Opponent has not established its ground under section 60.

7 [1996] RPC 281 at 303.

Subparagraph 42(b)

1. Subparagraph 42(b) of the Act relevantly provides:

42  Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if: […]

(b) its use would be contrary to law.

Ground

1. In its Statements of Grounds and Particulars the Opponent asserts:

Use of the [Opposed Trade Marks] would be contrary to law because [their] use would be misleading and deceptive and/or create a false representation, contrary to the Australian Consumer Law comprised in Schedule 2 of the Competition and Consumer Act 2010 (Cth).

A misleading, deceptive and/or false representation is likely to arise through use of the [Opposed Trade Marks] by the Applicant because consumers are likely to believe that the services supplied under the [Opposed Trade Marks] are somehow connected to, affiliated with, or sponsored by the Opponent or the Opponent's Services, given the Opponent's substantial reputation in Australia within the field of the Opponent's Services, including in respect of the [Opponent’s Word Trade Mark], as particularised […] above.

Discussion

1. I initially observe that (in terms of the ground as stated) what I am to consider is not the Opponent’s reputation but the reputation of the Opponent’s Word Trade Mark. However, whatever the reputation of that trade mark, the principle enunciated in Hornsby, above, here applies: the Opponent’s Word Trade Mark is devoid of inherent adaptation to distinguish and any bewilderment which may arise from the concurrent use of the parties’ trade marks must stem from the nature of the Opponent’s Word Trade Mark itself: as it describes the similar services of all people who provide local business awards it could equally be taken as referring to any one of such services.

1. The Opponent has not established its ground under paragraph 42(b) of the Act.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(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.

1. No ground of opposition has been established in relation to either application.

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

Costs

1. The Opponent has sought an award of costs in its favour; however, as the Applicant is the successful party it is appropriate that, as allowed by section 221 of the Act, I award costs against the Opponent as per Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 16 July 2018