Primary Health Care Limited v Commonwealth of Australia - [2016] FCA 313

FEDERAL COURT OF AUSTRALIA
Primary Health Care Limited v Commonwealth of Australia [2016] FCA 313

File number(s): NSD 1052 of 2014

Judge(s): JAGOT J

Date of judgment: 1 April 2016

Catchwords: TRADE MARKS – whether marks inherently adapted to distinguish – whether marks do or will distinguish – use of marks before the priority date – whether use likely to deceive or cause confusion – whether use contrary to law.

Legislation:
Trade Marks Act 1995 (Cth), ss 6(1), 14(2), 17, 33, 33(2), 41, 41(3), 41(5), 41(5)(a), 41(5)(a)(i), 45(1)(a)(iii), 45(1)(b), 41(6), 42, 43, 55, 55(1), 55(1)(a), 55(1)(b), 65(7), 74, 120(2), 122, 122(1)(g), 122(2)

Trade Marks Regulations 1995 (Cth)

Australian Consumer Law s 18 (Competition and Consumer Act 2010 (Cth) Sch 2)

Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)

Cases cited:
Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554; (2015) 112 IPR 494

Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1

Anheuser-Busch v Budvar [2002] FCA 390; (2002) 56 IPR 182

Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511

Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968; (2004) 209 ALR 93

Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428; (2009) 177 FCR 300

Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50

British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281

Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756; (2015) 114 IPR 81

Burger King Corp v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417

Burlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353

Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; (2014) 254 CLR 337

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; (2013) 299 ALR 752

Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60

Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511

Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; (2006) FCR 386

Commonwealth v Primary Health Care Ltd [2014] ATMP 92; (2014) 108 IPR 610

FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9

Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115

Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; (1991) 30 FCR 326

Kenman Kandy Australia Pty Ltd v Registrar of Trademarks [2002] FCAFC 273; (2002) 122 FCR 494

Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769; (2012) 205 FCR 241

Mark Foy’s Ltd v Davies Co-operative & Co Ltd [1956] HCA 41; (1956) 95 CLR 190

McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582

Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110; (2013) 215 FCR 16

Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525

Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373; (2014) 106 IPR 281

Registrar of Trade Marks v Muller [1980] HCA 35; (1980) 144 CLR 37

Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 93 FCR 365

Re Ocean Spray Cranberries Inc (1999) 46 IPR 601

Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398; (1988) 10 IPR 539

Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382

Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592

Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2000) 186 FCR 519

Thompson v B Seppelt & Sons Ltd [1925] HCA 40; (1925) 37 CLR 305

Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51

Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; (2006) 154 FCR 165

Dates of hearing: 15-18 December 2015
5 February 2016

Date of last submissions: 19 February 2016

Registry: New South Wales

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Trade Marks

Category: Catchwords

Number of paragraphs: 191

Counsel for the Applicant: Mr J M Hennessy SC

Solicitor for the Applicant: Gilbert + Tobin Lawyers

Counsel for the Respondents: Ms J Baird SC and Ms G Rubagotti

Solicitor for the Respondents: Griffith Hack Lawyers

ORDERS

NSD 1052 of 2014

BETWEEN:
PRIMARY HEALTH CARE LIMITED

Applicant

AND:
THE CROWN IN RIGHT OF THE COMMONWEALTH OF AUSTRALIA

First Respondent

THE CROWN IN THE RIGHT OF THE AUSTRALIAN CAPITAL TERRITORY

Second Respondent

THE CROWN IN THE RIGHT OF THE STATE OF NEW SOUTH WALES (and others named in the Schedule)

Third Respondent

JUDGE:

JAGOT J

DATE OF ORDER:

1 APRIL 2016

THE COURT ORDERS THAT:
1.The appeal be dismissed.
2.The applicant pay the respondents’ costs as agreed or taxed.
3.Any party wishing to vary the costs order may notify the other party and the Court within 14 days of the date of these orders.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT
JAGOT J:

1         THE APPEAL

[1]

2         STATUTORY PROVISONS AND PRINCIPLES

[8]

3         THE SCOPE OF THE REGISTRATION

[18]

3.1      The disputed matters

[18]

3.2      The competing submissions

[22]

3.3      Discussion

[53]

3.4      The proposed amendments

[72]

4         INHERENTLY ADAPTED TO DISTINGUISH THE SERVICES?

[84]

4.1      The competing submissions

[84]

4.2      Meaning of “primary health care”

[90]

4.3      Descriptive or allusive meaning?

[118]

5         MARKS DO OR WILL DISTINGUISH SERVICES?

[127]

6         MARKS LIKELY TO DECEIVE OR CAUSE CONFUSION

[161]

7         USE CONTRARY TO LAW

[189]

8         CONCLUSIONS

[191]

1.               THE APPEAL

The applicant is a company which describes itself as having provided medical centre business management and administration services and administrative support services to general practitioners, medical specialists, physiotherapists, nurses and allied health care workers since 1985, those services having been provided under the name PRIMARY HEALTH CARE since 1994.
On 6 October 2009 the applicant applied to register two trade marks for services, one being a word mark PRIMARY HEALTH CARE and the other being a logo as follows:
The applications initially related to services within classes 35, 42 and 44 (which includes medical services), but subsequently were confined to class 35, the services being defined in the specifications as:
Class 35: Medical centre business management; medical centre business administration; service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders.
These services are referred to as the Services below.
The respondents, the Crown in right of the Commonwealth and the Crowns in right of each of the States and Territories, opposed registration of the marks. On 24 September 2014, a delegate of the Registrar of Trade Marks decided that the respondents had established their grounds of opposition under s 43 of the Trade Marks Act 1995 (Cth) (the Act), which deals with trade marks likely to deceive or cause confusion, and did not decide whether the other grounds of opposition (relating to ss 41 and 42 of the Act) were also established (see Commonwealth v Primary Health Care Ltd [2014] ATMO 92; (2014) 108 IPR 610).
The applicant appeals against the delegate’s decision in respect of s 43. The respondents, by notice of contention, continue to oppose registration of the trade marks for the Services based on s 41 (trade mark not distinguishing of applicant’s services) and s 42 (use of trade mark contrary to law).
I have decided that the respondents have established their grounds of opposition under ss 41, 42 and 43 of the Act, with the consequence that the appeal should be dismissed.
2. STATUTORY PROVISONS AND PRINCIPLES
The priority date for the registration of the trade marks is the date on which the applications were filed (s 12 of the Act), 6 October 2009. Section 41 of the Act has been amended since the priority date by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 (Cth). Accordingly, these amendments do not apply to the applications. The provisions of the Act before amendment which apply to the applications include:
41 Trade mark not distinguishing applicant’s goods or services
(1)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.
(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.
(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.
(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.
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a)the trade mark contains or consists of scandalous matter; or
(b)its use would be contrary to law.
43Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
It is common ground that the appeal right granted by s 56 of the Act involves a hearing de novo (Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 (Jafferjee) at 119 and Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; (2006) 149 FCR 386 at [20] and [22]). It should also be noted that the evidence before me was more extensive than that placed before the delegate of the Registrar. Leaving aside the obligation in a hearing de novo to approach the matter “afresh and without undue concern as to the ratio decidendi of the Registrar”, the difference in evidence necessarily affects the weight which could be given to the decision of the delegate as a “skilled and experienced person” (Jafferjee at 126, Registrar of Trade Marks v Muller [1980] HCA 35; (1980) 144 CLR 37 at 41, Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 93 FCR 365 (Woolworths) at [32] citing, amongst other cases, Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398; (1988) 10 IPR 539 at 545 and Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511 (Apple) at [24]).
Subject to some questions about sub-ss 41(4) - (6), it was also common ground that the respondents bear the onus of establishing a ground of opposition (Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 at [14] – [36]). This follows from the obligation imposed by s 55 of the Act that the Registrar must decide to refuse to register the trade mark or to register the trade mark “having regard to the extent (if any) to which any ground on which the application was opposed has been established”. As a result it has been said that if “the matter is in doubt then the application should be accepted” (Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494 (Kenman Kandy) at [22]). Whilst it has also been said that a ground of opposition must be “clearly established”, for the reasons given by Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2000) 186 FCR 519 at [29] – [39] (citing Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 (Pfizer Products) at 606 [21] – [22]), I prefer the view that the civil onus applies in the usual manner. Kenny J also explained at [40] that, in respect of s 41(4) – (6):
there can be no place for any special standard in respect of sub-ss 41(5) or (6), because these provisions place the onus on the applicant for registration, Sports Warehouse, rather than on the opponent. That is, as noted earlier, these provisions require the applicant for registration to “satisfy” the Registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria are met: compare Chocolaterie Guylian [Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60; [2009] FCA 891] at 68-69 [21]. As Branson J said in Blount [Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50] at 56, referring to Rejfek v McElroy [1965] HCA 40; (1965) 112 CLR 517 at 521:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities . . . That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
Under s 41(5), the Registrar must be persuaded by the applicant on the balance of probabilities that the trade mark does or will distinguish, having regard to the considerations in s 41(5)(a). The standard is the same under s 41(6), where the applicant must establish on the balance of probabilities that the mark does distinguish “because of the extent to which the applicant has used the trade mark before the filing date”.
It follows that the respondents bear the onus of proving that the marks are not inherently adapted to distinguish the applicant’s Services from the services of others under s 41(3) (it being otherwise presumed that the marks are registrable by reason of s 33 of the Act) but, if that onus is not discharged, the applicant bears the onus of proving that s 41(5) or (6) applies (Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769; (2012) 205 FCR 241 at [32] – [38]).
As explained by Yates J in Apple:
[8]If the mark is inherently adapted to distinguish the designated goods or services, the conclusion might be reached that, by reason of that inherent adaptation alone, the mark is capable of distinguishing those goods or services as the applicant’s goods or services. If that decision is reached, the application must be accepted, if there is no other ground to reject it.
[9]However, the extent to which the mark is inherently adapted to distinguish the designated goods or services as the applicant’s goods or services may be uncertain, with the result that one is unable to decide, on that basis alone, whether the mark is capable of achieving that end. In that state of affairs, one turns to consider whether, under s 41(5) of the Act, the mark does or will distinguish the designated goods or services. In that regard, attention is directed to the degree to which the mark is inherently adapted to distinguish, the use or intended use of the mark by the applicant, and “any other circumstances”. The combined effect of these matters must be considered in order to come to a view as to whether the mark does or will, as a matter of fact, distinguish the designated goods or services as the applicant’s goods or services. If the combined effect of these matters results in the affirmative decision that the trade mark does or will so distinguish the designated goods or services, the mark is taken to be capable of distinguishing those goods or services from the goods or services of other persons, and the application must be accepted if there is no other ground to reject it. If the combined effect of these considerations is otherwise, the mark is taken to be not capable of distinguishing the applicant’s goods or services from the goods or services of other persons, and the application must be rejected.
[10]If the mark is not to any extent inherently adapted to distinguish the designated goods or services, then one considers whether, under s 41(6) of the Act, the mark does, as a matter of fact, distinguish the designated goods or services as the applicant’s goods or services. In that regard, attention is directed to the extent of the applicant’s use of the mark before the filing date of the application. If the applicant establishes that, by that use, the trade mark does, as a matter of fact, distinguish the designated goods or services as the applicant’s goods or services, the mark is to be taken to be capable of distinguishing those goods or services from the goods or services of other persons, and the application must be accepted, if there is no other ground to reject it. If, however, the applicant does not establish that fact, the mark is taken to be not capable of distinguishing the applicant’s goods or services from the goods or services of other persons, and the application must be rejected.

There was little, if any, dispute between the parties about the relevant principles.
Insofar as a trade mark being inherently adapted to distinguish is concerned (the s 41(3) issue on which the respondents bear the onus):
(1)“The question of distinctiveness is primarily one of fact for the trial judge” (Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 at 7).
(2)“The ultimate question in applying this test is whether the mark, considered apart from the effects of registration, is such that by its use the applicant is likely to attain its object of thereby distinguishing its goods from the goods of others…[which] requires a practical evaluative judgment about the effects of the relevant mark in the real world” (Kenman Kandy at [47]).
(3)It is thus relevant to ask whether others “are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their” goods or services (Kenman Kandy at [47], citing FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537 at 555).
(4)Further, inherent adaptability is:
something which depends on the nature of the trade mark itself...and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.
(Kenman Kandy at [47], citing Burger King Corp v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 424.) It has been said that:
[a] trade mark that is inherently adapted to distinguish goods is one that can “do the job of distinguishing without first educating the public that it is a trade mark.”
(Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 at [59], citing with approval British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 306. See also Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968; (2004) 209 ALR 93 (Austereo) at [48]). That a trade mark inherently adapted to distinguish must be “instantly adapted to distinguish” is necessary:
because otherwise it would be enlisting registration itself, as an aid in making a mark actually distinctive, and so preventing partly by statutory assistance other traders from using the mark if they so desired.
(Thompson v B Seppelt & Sons Ltd [1925] HCA 40; (1925) 37 CLR 305 at 312.)
(5)Thus, it “is insufficient that the mark may have the potential or capacity to acquire [a distinctive character] in the future” (Austereo at [30], cited with approval in Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; (2006) 154 FCR 165 (Unilever Australia)). It also follows that:
The more apt the word or expression is to describe the goods, the less it is inherently apt to distinguish them as the goods of a particular manufacturer (Clark Equipment at 515 [Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511]). The setting or context in which the use occurs is relevant in determining whether the use is descriptive or for the purpose of indicating a connection in the course of trade between the product and the trade mark applicant, as a badge of origin (Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 424–5; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 350–1).
(Unilever Australia at [31]).
(6)The test for a word directly referring to the character or quality of the good or service has been said to involve the:
probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.
(Mark Foy’s Ltd v Davies Co-operative & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 at 195.)
(7)As summarised by Yates J in Apple at [11]:
The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade.
It goes without saying that it is the distinctiveness of an applicant’s mark in relation to the goods or services for which registration is sought that is relevant (Apple at [14]). In addition:
The descriptive capacity of words and their capability to distinguish the goods or services of one person from those of others will vary, depending on occasion and circumstance.
(Apple at [16])
(8)Accordingly, Kitto J’s reference to “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” in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (Clark Equipment) at 514 was explained as follows in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110; (2013) 215 FCR 16 at [84]:
The expressions “the common right of the public” and “common heritage” employed by Kitto J in Clark Equipment are fluid and their content will vary according to the particular case. It seems to us that they refer to the knowledge base, primarily, of the traders in the particular goods and services, for it is the question of their likely use of the mark which is to be considered, although as we have already observed, it may extend to potential consumers.
As was put in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; (2014) 254 CLR 337 (Cantarella [2014] HCA 48) at [59]:
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).
At [44] the majority (French CJ, Hayne, Crennan and Kiefel JJ) said:
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 (Lord Parker), and from the wider point of view of the public (Hamilton LJ), has been applied to words proposed as trade marks for at least a century, irrespective of whether the words are English or foreign. The requirement has been adopted in numerous decisions of this Court dealing with words as trade marks under the 1905 Act and the 1955 Act. Those decisions show that assessing the distinctiveness of a word commonly calls for an inquiry into the word’s ordinary signification and whether or not it has acquired a secondary meaning.
Their Honours concluded at [70] – [71] that:
In accordance with the principles established in Mark Foy’s and restated in Clark Equipment, Faulding and Burger King, 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.
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.
(9)A related principle is that:
The registrability of a mark, including whether it is capable of distinguishing the applicant’s goods or services from the goods or services of others, must be assessed by reference to the scope of the registration that is sought.
(Apple at [17]). It follows that for a word mark without any accompanying stylistic devices, if registered, the monopoly is over use of the word(s) in respect of the goods or services (Apple at [18]). Further, the applicant’s actual use of the word is not the touchstone as, if registered, the monopoly extends to any use of the word(s) in respect of all of the services the subject of the specification (Apple at [19] – [21]).
Insofar as a trade mark being capable of distinguishing goods or services is concerned (the s 41(5) and (6) issue on which the applicant bears the onus):
(1)“…common sense suggests that significant promotion and use of a trade mark amongst people concerned with the relevant market will have a tendency to enhance, rather than diminish, the trade mark’s capacity to distinguish the goods in respect of which it is used from the goods of others. Certainly, the absence of evidence of promotion and use is likely to assume significance where distinctiveness resulting from use is in issue” (Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 (Blount) at 61 – 62).
(2)“A trade mark with a very low level of inherent adaptation to distinguish will require correspondingly high levels of use as a trade mark and other circumstances in order to permit registration (Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51). For common, descriptive or laudatory words, even extensive use is unlikely to be sufficient (Re Ocean Spray Cranberries Inc (1999) 46 IPR 601 at [24])” (Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; (2013) 299 ALR 752 (Cantarella [2013] FCA 8) at [107]).
(3)“The question to be considered under s 41(6) is whether the applicant has established 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 as being those of the applicant” (Blount at 60).
Insofar as use of a trade mark would be contrary to law is concerned (the s 42 issue, on which the respondents bear the onus), the respondents rely on s 18 of the Australian Consumer Law as set out in Sch 2 to the Competition and Consumer Act 2010 (Cth) (asserting that the use of the trade marks is likely to be misleading or deceptive). The issue is to be considered as at the priority date, albeit looking “forward to prospective conduct after registration was effected” (Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51 at [47]). Further, the requirement is that the use would, not might, be contrary to law (Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554; (2015) 112 IPR 494 (Accor Australia) at [257]).
Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):
(1)The section:
looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion…
(Woolworths at [79]).
(2)“In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582 at [26]).
(3)The purpose of s 43:
is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks…
(Pfizer Products at [53]).
(4)“Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).
(5)“The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).
(6)“In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating…at 595, per Kitto J” (Accor Australia at [269]).
(7)All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).
(8)The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595).
3. THE SCOPE OF THE REGISTRATION
3.1 The disputed matters
There is a fundamental difference between the parties about the nature of the Services and thus the scope of the registration sought.
The specifications considered by the delegate are set out above. Although the respondents’ arguments about problems with the scope of the specifications had been made clear from the outset, it was not until the last day of the hearing, when I raised the same issues, that the applicant proposed that the specifications be amended. I gave the applicant leave to file a document showing the proposed amendments after the hearing and the respondents leave to file further submissions in answer. As a result, I propose to deal with the specifications as relied upon throughout the hearing before I consider the proposed amendments.
The applicant contends that it provides the Services to medical professionals only. The respondent contends that, irrespective of the business model the applicant has adopted (discussed below), either all of the Services, or some of them, are provided both to medical professionals and to others (such as patients and others who deal with medical professionals in the Australian health care system) or, at the least, those others are “concerned with” the Services in the sense described in Cantarella [2014] HCA 48 at [71]. Putting it another way, also as discussed in Cantarella [2014] HCA 48 at [71], who is the “target audience” of the use of the trade marks in respect of the Services?
The use the applicant has made of the trade marks is also relevant to the operation of s 41. The dispute extends to the nature and extent of that use and not just the scope of the registration (or the use which fairly and reasonably could be made of the marks in respect of the Services if the marks are registered). As such, it is convenient to identify the different approaches which are apparent from the competing submissions of the parties.
3.2 The competing submissions
As noted above, the applicant described itself as having provided since 1985:
medical centre business management and administration services, and administrative support services to general practitioners, medical specialists, physiotherapists, nurses and allied health care workers…
It said it had done so under the marks, including as part of its corporate name, since 1994. According to the applicant:
the words [primary health care] when used as a name are not apt to describe the nature of the Services Primary Health Care provides to health care professionals; the Services are managerial and administrative in nature. At most, when used in connexion with the provision of Services to health care professionals it is a covert and skilful allusion to the nature of the services offered by those health care professionals…
According to the applicant, the delegate erred in refusing registration under s 43 of the Act (marks would be likely to deceive or cause confusion) because he considered use in relation to services in class 44 and did not limit his consideration to use within class 35. As noted above, class 35 services include “advertising; business management; business administration; office functions”. Class 44 services include, relevantly, “medical services”. As a result the delegate is said to have considered the perception of patients of health care professionals attending medical centres, which is outside the scope of the Services.
In this regard, the applicant noted that Dr Bateman established a medical centre in 1985. Dr Bateman also provided administrative and management support services to the health professionals (mostly, but not exclusively, general practitioners or “GPs”) who practised in the centre. These health professionals were not employed by Dr Bateman or the centre. They contracted to practice from the centre for a period and, in so doing, also contracted to be provided with, amongst other things cleaning and maintenance, administrative and management support services. In exchange, the contracting entity (not the applicant which had not yet been incorporated) took a percentage from the fees paid to the health professional.
The applicant was incorporated in 1994 and became Primary Health Care Limited when it listed on the Australian Stock Exchange in 1998. According to the applicant what it describes as its “medical centre division” operates as follows:
a)Primary Health Care identifies and leases a site and makes the premises suitable to house a medical practice;
b)Primary Health Care identifies suitable health care professionals and enters into service contracts with them. Pursuant to these contracts, health care professionals conduct their practices from the medical centre and Primary Health Care provides them with, inter alia, consultation rooms and Services such as reception, telephone and secretarial services, billing and invoicing their patients, book-keeping, accounting, information technology and property management services;
c)Primary Health Care only provides its Services to health care professionals pursuant to service agreements with those persons;
d)each health care professional then pays Primary Health Care a percentage of the gross income they generate from their practice; and
e)the health care professionals are Primary Health Care’s customers, not its employees.

It is convenient for me to note here that, in fact, and as the evidence discloses, the applicant ensures that the medical centre is fully equipped and supplied, provides all staff (including nurses, receptionists, and the like), and performs other functions as well including ensuring that the centre is properly cleaned and maintained and complies with all health and safety requirements (which I infer would apply). In other words, as far as the evidence discloses, the applicant does everything necessary to provide and operate a medical centre, including recruiting GPs to practice from the centre. The only thing the applicant does not do and is not responsible for is the provision of the clinical care which the contracting GPs provide to patients who attend the centre. As the applicant submitted:
the reason why corporate service providers, like Primary Health Care Ltd, use generic branding for the medical centres they service is pragmatic; the service provider does not want to hold themselves out as providing medical care to patients because, as Mr Bateman put it, “we don’t want the liability attached to that … and doctors don’t want us to be involved in their practice to that extent.”
These facts are important to the resolution of all aspects of the disputes between the parties. So too is the fact that, as will be apparent, the Services are but one part of the applicant’s overall activities which enable the operation of its medical centres. As such, it is not the case that any GP “purchases” the Services from the applicant. No GP can do so. A GP can enter into a contract with a subsidiary of the applicant in which the GP agrees to practice from one of the applicant’s fully equipped, staffed and supplied medical centres at which a range of services will be available to the GP, including but not limited to the Services, in exchange for a fee which is calculated as a percentage of the fees banked by the GP as a result of the GP’s practice.
These facts should be kept in mind when considering the applicant’s case which refers to the applicant providing health professionals with the Services.
The applicant contended that the brand “Primary Health Care” is used both as an umbrella brand for the whole of the business and as a brand by the medical centre division. The brand is used to market the Services to health professionals and within the medical centres but, as the applicant conducts itself, is said to be “not generally visible to members of the public attending the centres for consultations with health care professionals”. The applicant describes this as “consistent with the bounds of the Services”, subject to some minor exceptions. The exceptions are that in three medical centres the word combination “primary health care” appears as part of the name of the centre. Otherwise the centres are described by location. There is no reference to the brand on business cards of the health professionals within the centre, nor on any document provided to patients. As the applicant put it, “the brand is not used for what might be described as class 44 services”. Further, the applicant said:
What an applicant may do with a trade mark is not unfettered, rather it is confined by the goods or services in respect of which registration is obtained. The applications in question only cover the Services and do not cover any other goods or services, and in particular do not cover any Class 42 [which includes scientific and technological services] or 44 medical/testing services or related services.
The applicant said that at the priority date it was providing the Services to about 1,000 of the nearly 26,000 GPs in Australia, as well as to about 390 other health professionals, and was thus the largest single provider of medical centre management and administration support services (i.e. the Services) in Australia. The Services were provided through the 83 medical centres which the applicant was operating and managing in NSW, Victoria, Queensland, South Australia and the ACT. It also operated 96 laboratories and 773 collection centres in its pathology business and had 159 sites in its diagnostic imaging business, and developed, sold and supported a range of health-related software packages including Medical Director, a leading medical records management program used by clinicians, and PracSoft, a practice management program used by a large proportion of medical practices in Australia, and was ranked in the top 200 companies on the Australian Stock Exchange and had a market capitalisation in excess of $A 1.3 billion.
The applicant said that it advertises and promotes itself and its Services to health care professionals under the marks by multiple means and has an extensive marketing budget for this purpose. Further, the marks appear in relation to the applicant’s Services at its medical centres, on materials prescribing how operational functions are to be executed at medical centres, and information technology and training manuals used by staff at medical centres.
According to the applicant, the relevant class of persons in connection with the Services are the ordinary run of customers and potential consumers of the Services, being health care professionals. Health care professionals are a specialised market, are well educated and sophisticated, and understand that when the phrase “primary health care” is used in relation to the Services, it means the applicant including its Services. Further, those health care professionals who already receive the Services are aware of the nature of the Services and the fact that they are not the same as the “first level” health care services which those health care professionals provide to the public. Health care professionals who do not already receive the Services must enter into a service agreement before they can do so, and the negotiation process and contractual terms make plain the nature of the Services.
The applicant’s main competitors, it noted, are Sonic Health Care, Health Scope Medical Centres, Foundation Health Care, Alpha Health Care, Endeavour Health Care and Immediate Health Care. Both as at the priority date, and today, no other person providing the Services uses the word combination of “primary health care” or the word “primary” in connection with the provision of the Services or similar services.
Consistent with this approach, and in answer to the respondents’ case, the applicant observed that all the respondents had done was to “seek to establish that the Trade Marks are not inherently distinctive of medical and health care services (which services are irrelevant)”. The applicant reiterated that:
The claims that the Services of Primary Health Care encompass “services that are an integral part of the provision of primary health care in Australia” are not supported by any of the respondents’ evidence. The Services are business management and administration services, which happen to be delivered to medical practitioners operating in medical centres. It is the medical practitioners who provide medical and health care services by patients. Primary Health Care is not “the first point of contact with the health care system”, the medical practitioners are.
Section 41, submitted the applicant, expressly limits consideration of distinctiveness to the “particular goods and services ‘in respect of which the trade mark is sought to be registered’. It does not permit consideration of other goods or services (i.e. the medical services in class 44 which so concern the respondents) in respect of which registration is not sought”. The health care professionals who are the consumers of the Services do not use the phrase “primary health care” to describe the medical centre business management and administrative activities that make up the Services. The Services, it was submitted, are of a “fundamentally different nature and quality” to medical services and involve “fundamentally different customers and purchasers… [and] trade channels”. The distinction, said the applicant, is apparent from the evidence. All medical professionals who gave evidence, and others, recognised that the medical professional alone, not the applicant, provides clinical services to the patient. The administrative and support services which comprise the Services are not part of those clinical services. They are the services which the applicant provides to medical professionals. As a result, the respondent’s submission that the Services are “inextricably bound up with the provision of medical and clinical services” is incorrect. To the contrary:
The “medical centre business management” and “medical centre administration” Services are only able to be provided to health care professionals. The general public cannot purchase “management” and “administration” services in relation to a medical centre.
The applicant submitted that other examples supported the fundamental difference between the Services which it offers to health professionals and the clinical services which health professionals offer to patients, being:
(a)some barristers engage bookkeepers to provide services but that does not mean that those bookkeeping services are “inextricably bound up with” the legal services provided by the barrister, nor do they “critically enable” the provision of those legal services;
(b)serviced offices often provide cleaning and receptionist/telephone answering and appointment services, but that does not mean that those back office services form part of the business of the entities that operate from the serviced offices;
(c)tradespeople might employ an accountant to assist with lodging their tax returns with the Tax Office, but that does not mean that the accountancy services form part and parcel of, f [sic] the trade services;
(d)building management companies provide air-conditioning, maintenance, cleaning, security and concierge services to their tenants but this does not mean that they are part and parcel or inextricably bound with the professional services provided by the tenant firms who avail themselves of those premises and building management services;
(e)Mr Bateman provided a further example of the services provided by Westfield to Woolworths. Woolworths supermarkets may retain the premises and building management services of Westfield, but this does not mean that Westfield is providing Woolworths’ supermarket products and services; and
(f)similarly, no one would suggest that Westfield is providing the medical or dental services of the medical and dental centres housed in its premises that also retain Westfield’s building management services.
The applicant described the respondents’ case as one unsupported by authority because it depends on the proposition that:
because a mark may be directly descriptive in respect of one class of goods or services in one context, it is necessarily directly descriptive in relation to goods or services that may intersect or co-exist with that class.
To the extent a different conclusion was reached, the applicant noted the power under s 65(7) of the Act to amend the designated services so long as the amendments do not have the “effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted” (Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525 at [82], Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373; (2014) 106 IPR 281 at [231]), and submitted that the Court should exercise this power.
For their part, the respondents stressed that:
subject to any conditions or limitations that may be imposed on the registration, the rights in a registered mark are not limited to the manner or extent to which the applicant for registration may have used the mark in the past, or asserts that it intends to use the mark, whether that be in a particular geographic area, market or customer sector, or otherwise.
As such, the applicant’s past and present business model does not define the scope of the registration. Further, the respondents noted, the word mark is in plain type and accordingly the exclusive rights sought encompass all fonts and forms of the phrase “primary health care”. While the logo mark is a fancy mark in a rectangular label, it is the same ordinary phrase “primary health care” as the word mark together with the corporate identifier “limited” depicted so as to give prominence to the first word “primary”.
Against these observations, the respondents submitted that the phrase “primary health care” remains apt to describe medical, health and related services, including the Services. The Services, as the respondents put it, are:
the very means by which medical and allied, associated and community based health care services are able to be provided by primary health care professionals (such as doctors in general practice, practice nurses and other first level health care professionals). In the Australian context, the Services are part and parcel of general practice and the provision of primary health care more generally.
The respondents also contended that care was required in the applicant’s description of its activities. In fact, the applicant’s subsidiary Idameneo (No. 123) Pty Ltd (Idameneo) operates the medical centres and provides the Services, it being the contracting party with the health professionals who operate out of the medical centres. As the respondents put it:
The applicant promotes a model of delivery of medical and clinical services including primary health care through the medical centres its subsidiary, Idameneo, operates and the general practitioners and other healthcare professionals Idameneo contracts to provide medical and clinical services at those centres.
The applicant does so in the primary health care sector, a fact it acknowledged at the time Dr Bateman, the founder, adopted the name; the explanation for that being that he considered it to be “unique and memorable” and that it “reflected the services that would be available to patients attending the centres”.
Thus, in the respondents’ terms:
(1)The “applicant, or, more accurately, Idameneo, participates in the Australian health care system, and more particularly in the primary health care sector, providing medical and clinical care to members of the public. It is disingenuous to say that it (or Idameneo) does not do so because Idameneo does not employ, in the sense of meeting all the indicia relevant to employment law, the contracted medical and any other allied health practitioners…who directly provide medical and clinical care to members of the public without referral through the medical centres operated by Idameneo.”.
(2)“Idameneo’s revenue from its medical centre division is solely dependent upon the provision of medical and clinical care through its medical centres by general practitioners and other medical and any other allied health practitioners who are contracted to it and the receipt of payment for the provision of such care by those practitioners, be it from Medicare or insurers, or directly from patients”.
(3)The “context in which the applicant or Idameneo has provided the Services, or any of them, to medical practitioners is that of primary health care provision in the primary health care sector of the Australian health care system and the provision of the Services is a critical enabler of, and an incident of, the provision of medical care by its contracted medical practitioners”.
In support of the third of these propositions the respondents noted that the provision of medical services in Australia invariably requires:
(a)premises at which general practitioners practice and patients attend to consult with them – that is, surgeries, consulting and treatment rooms, medical centres, and that those premises be managed and administered to enable the consultations and resultant treatments;
(b)billing and invoicing of patients – and the receipt of income for the provision of such professional care;
(c)doctors’ receptionists, telephone answering services and administrative support – ensuring that patients present and see doctors in an orderly manner and with their records available and their Medicare and insurance status dealt with appropriately;
(d)the creation, management and maintaining accuracy and currency of patient files – enabling the doctor to be informed and to record the patients’ conditions and treatment, and the patients to have those files (satisfying medico-legal requirements);
(e)prescriptions, referrals, tests (e.g. blood tests), drugs, bandages and salves and the like necessary for patient care and treatment be ordered, received and available;
(f)typing, account-keeping, book-keeping, electronic file management and information management and other practice support.
As such, the distinction that the applicant sought to maintain between the provision of clinical services to the public by health professionals and the provision of the Services to health professionals by the applicant (or Idameneo) is misconceived. Whatever the past and current business model of the applicant:
the specification of the Services does not exclude their provision directly or indirectly to members of the public or individuals seeking primary health care, nor to dealings with other participants in the health care system such as government, hospitals, community or allied health professionals, professional organisations and suppliers.
Further, to some extent, every member of the public attending a medical centre is a consumer of some aspect of the Services. Moreover, participants in the secondary or tertiary health care sector and other participants in the primary health care sector are “likely to have dealings with medical centre management and administration – including as part of patient treatment”. The Services are thus provided not only to health professionals, but also to their patients and to other participants in the Australian health care system.
It follows, the respondents submitted, that if the marks are registered the applicant would be entitled:
to use and authorise the use of the trade marks in a manner visible to at least the following groups with whom it dealt (assuming it dealt in the Services): medical professionals such as general practitioners, specialist and consulting physicians and surgeons, allied health professionals, hospitals (most immediately obviously in dealings with patient files, billing and invoicing), medical products suppliers, government organisations and departments (including Medicare), insurers, professional bodies (such as the AMA), community health organisations and their personnel, and patients.
This would include use:
(a)as the name or on the signage of medical centres (as has already occurred in the present case at least at Leichhardt, Bankstown, Castle Hill, Werribee, and Sydney);
(b)on uniforms of staff who interact with patients (as has been the case with the applicant/Idameneo, and is the case with other corporatised medical service providers ); and
(c)on bills and invoices (although not in the case of the applicant / Idameneo),
and use on other indicia identifying practices, premises and personnel, each of which uses present to the above groups, including patients and their families.
The respondents also noted that:
similar services can reasonably be contemplated as including (at least) operating general practices, medical and allied health care centres and practices and other health care services, whilst closely related goods will include (at least) patient files and records: see s 14(2) and s 120(2) of the Act.
Section 14(2) provides that for the purposes of the Act, services are similar to other services if they are the same as the other services or if they are of the same description as that of the other services. Section 120(2) concerns infringement and provides that a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to services of the same description as that of services in respect of which the trade mark is registered.
3.3 Discussion

The applicant’s case is that the Services are all to be provided to health care professionals and are not to include clinical or medical care by those professionals to patients.
It may be accepted that health care professionals provide health care services. It may be accepted also that health care professionals carefully guard their clinical independence in the provision of clinical care to patients. As such, they see their clinical care, involving the professional doctor-client relationship in the case of GPs, as one thing and administrative and support services which enable them to provide that clinical care as another. But these matters do not control the scope of the registration.
Nor is it possible to control the scope of the registration by defining the services as services to medical professionals, as the applicant has sought to do (an attempt repeated more explicitly in the proposed amendments to the specification, discussed below). This is because the person paying for the services, the medical professional, is not the only person who receives the services or, at the least, is not the only person concerned with the services. The Services include reception and telephone answering services, patient booking services, patient file management services, information management services, billing and invoicing services, computerised file management, and ordering services, all said to be “to medical professionals”.
Assume then a member of the public who wishes to see a GP who is contracted to and has a practice located in one of the applicant’s medical centres (leaving aside, for the moment, the issue about Idameneo and how the marks have in fact been used). The patient calls the centre and speaks to a receptionist. On the applicant’s case, in answering the call, the receptionist is providing a service only to the GP the patient might wish to see and not to the patient. This is untenable. The GP who ultimately sees the patient pays for the service but the service cannot be said to be a service to the GP only. It is also a service to the patient, the cost of which is borne by the GP, at least insofar as the GP does not seek to recoup those costs in the consultation fee.
Having made the appointment, the receptionist makes a record of it so that the GP can know when the patient is scheduled to arrive. This is a service provided to the GP but, again, it is also a service to the patient. It ensures that a GP is available when the patient arrives. Assume that the receptionist, the day before the appointment, sends the patient a reminder. This is a service to the GP because it avoids late cancellations or patients failing to show up, but it is also a service to the patient reminding them of the time and place of the appointment. When the patient attends the centre, the patient is not greeted by the GP. The patient is greeted by the receptionist. The receptionist may provide a range of services to the GP and to the patient at this point, such as taking the patient’s name and address, Medicare and health cover details or letting the patient know when the GP is likely to be ready. When the patient sees the GP the patient then receives clinical care from the GP. After the patient has seen the GP the patient sees the receptionist again to pay the bill. The receptionist prepares the invoice, a service provided to the GP, but also to the patient who wants to receive the invoice. The receptionist takes the payment. In so doing, the receptionist may arrange for the patient to receive a Medicare or health cover rebate or arrange for the patient to assign the rebate to the GP, leaving the patient to pay the gap, if any, out of pocket. Again, these are services to the GP, but are also services to the patient.
The applicant’s receptionist training manual confirms these, and other, matters. For example, the receptionist must have available a list for patients of all specialist services available within the centre (such as radiology, dental, cardiology, physiotherapy etc) and their hours of operation. The function of the applicant and the obligations of the receptionist are described in the manual in this way:
As a service provider to medical professionals and the patients that attend to see those medical professionals, we must present in a professional and welcoming manner.
Receptionists are directed to “provide appropriate advice” to any patient who “requires directions”. They are instructed to “complete patient personal details and billing” including asking for the patient’s Medicare and health fund card. Receptionists are instructed about how to deal with emergency calls from a person. They are instructed about the steps that must be taken to deal with a patient who has had an abnormal test result, the objective being to try to ensure that the patient attends the centre to see a doctor. The receptionist must make a detailed file note of the attempt to contact and ensure the patient attends the centre. The receptionist is instructed to remind doctors of the policy that all patients are to be seen in order. They are instructed how to respond to a patient who enquires about the waiting time and how to manage queues of patients. They are instructed about requirements for patients who have claims for workers’ compensation, against Comcare, and against third parties.
Reality dictates that the applicant’s attempts to characterise the Services as services provided only to medical professionals cannot be accepted. The attempts reflect a misconception which affects the entirety of the applicant’s case.
Another misconception in the applicant’s case is apparent. It is the notion that the applicant is in the business of providing the Services to health professionals. This is inaccurate. The applicant is in the business of operating medical centres to which it recruits GPs and, as part of a much larger set of activities, it also provides the Services to the health professionals who have contracted to work from such a centre. No health professional can simply purchase the Services from the applicant. As part of the applicant’s overall activity, but not otherwise, the applicant provides the Services which of their very nature and in many respects are services to not only the GPs and allied health professionals, but also to members of the public and to others involved in the health system.
As noted, the applicant, on the evidence, does not offer any GP or allied health professional the Services in isolation. The applicant, for example, does not offer the Services to every GP or allied health professional. The Services are only available to a GP or allied health professional at the medical centre to which the GP or allied health professional has been recruited. Consistent with this, the applicant does not market the Services per se to GPs and allied health professionals. Rather, it markets to GPs and allied health professionals a form of practice from one of its medical centres. The form of practice is to work from a room in one of the applicant’s medical centres (GPs are recruited to specific centres and must practice from that centre) which will be fully equipped and supplied by the applicant, with all staff and services necessary for the operation of a medical centre being provided by the applicant in exchange for a fee which is calculated as a percentage of the money earned by the GP from providing clinical services to patients.
Against this background, I do not accept the attempted characterisation of the applicant as having provided the Services to GPs and health professionals and having done so using the marks to brand the Services. It might be different if, for example, the applicant was in the business of providing the Services to all GPs and health professionals and marketed the Services in that way. But this is not what the applicant does or has ever done.
As such, the focus of the applicant’s case is off target and at odds with the evidence. The consequences of this disconnect run through every aspect of the case. First, the Services cannot be considered as if they exist in isolation because that is not how the Services are provided. Second, no matter how often the applicant repeats it, I am unable to accept that the Services are directed only to GPs and health professionals; the public and other participants in the health care sector are provided with some of the Services and are potentially concerned with all of the Services. Third, this in turn affects the question of whether the marks are inherently adapted to distinguish when the Services are provided in and from a medical centre which, as discussed below, involves the quintessential form of primary health care. Fourth, this has led to the proposed amendments which, as discussed below, involve a form of self-negating description of the Services. Fifth, the applicant has tried to establish acquired distinctiveness by use of the marks in respect of the Services when the applicant does not market the Services at all in and of themselves, but markets to GPs and allied health professionals a particular form of practice in which, amongst many other things (including the basic requirements of rooms, equipment, medical supplies, cleaning and maintenance), the applicant also provides the Services.
To return to the immediate issue, the reality is that, at least insofar as the Services are concerned, the applicant is providing services to medical professionals within its centres, to patients of those centres, and to all other participants in health care who interact with any medical professional in one of its centres. The fact that the applicant (or Idameneo) receives payment for the provision of the Services directly from the medical professional does not mean that the Services are provided only to the medical professional. Nor does the fact that medical professionals understand that they alone provide clinical or medical services to patients mean that the Services are not provided to patients. The reasoning involved seems to involve a false syllogism: (i) only medical professionals provide clinical services to patients, (ii) the Services are not clinical services, (iii) therefore, the Services are necessarily not services to patients. Propositions (i) and (ii) may be accepted, but they do not lead to proposition (iii).
Moreover, the fact that the Services are not clinical services does not mean that they are irrelevant to the provision of clinical services. If the applicant (or Idameneo) did not provide the Services to a medical professional then, in the Australian health care system at least (which is highly regulated), someone else would have to provide those services (including the medical professional personally if they so wished) to enable the clinical services to be provided. Even a medical professional who did not wish to charge for their services would be bound by ethical (and presumably statutory) obligations to ensure that proper records of treatments, prescriptions and referrals are made and maintained. The existence of, and ability to access, those records is very closely related to, indeed part of, the provision of clinical services.
While there is a factual dispute between the parties about the extent to which the applicant (or Idameneo) has used the words “Primary Health Care” to brand its medical centres in some way or another (three centres according to the applicant and seven centres according to the respondent), it is not in issue that the applicant’s particular business model involves the marketing to and recruiting of GPs to work from its medical centres. The applicant, in substance, sells to GPs a form of practice. The thrust of the marketing is (and has been) that it may pay GPs for their practice and, for a fee calculated as a percentage from patient billings, will provide them with rooms within a large-scale multi-disciplinary centre from which to work, with all “nurses, receptionists, supervisors, accountants and administrative staff” provided as part of the centre, the patient benefits being identified as accessible health care when needed, no appointments necessary, Medicare services bulk-billed, comprehensive family practice with GP of choice and range of practitioners to choose from, continuity of care with availability of records and service by principal doctors, and “comprehensive one site health care for most services found outside major hospitals”.
Contrary to the respondents’ case, I have no doubt that the thrust of the applicant’s marketing has been and is intended to be to GPs and allied health professionals, not to the public. The occasional references to itself in its dealings with the public seem relatively few and far between compared to its continuing activity of recruitment of GPs to its centres. But by focusing on the Services which occur within the medical centres at which patients receive clinical care the applicant has created specifications in which many of the Services are services to more than merely the GP or other health professional, and are indivisible from or integral to the provision of clinical care by the GP or other health professional.
Given this, the fact that the applicant does not, as a general rule, brand its medical centres under its corporate name, require its corporate name to be displayed by the staff employed at the centre, or display its corporate name on business cards or other documents produced within the centre does not confine the scope of the registration, if the marks were to be registered. If the marks were registered, the applicant would fairly and reasonably be entitled to the exclusive use of the marks, which include the phrase “primary health care” in any form, in respect of (for example):
·patient booking services;
·patient records;
·unless prohibited by some law about the form an account may take, patient billing services;
·interactions with third party suppliers for all supplies required to operate the centre, including medical supplies;
·interactions with other participants in the health care sector (e.g. Medicare, specialists, hospitals, and other practitioners) about patient bookings, records and billings; and
·all activities carried out by the receptionists, supervisors, accountants and administrative staff which enable the centre to operate.
The analogies which the applicant sought to draw do not seem to me to be apt. For example, it is difficult to compare a barrister’s book-keeper with the applicant. A book-keeper does not provide the barrister’s premises and equipment, order the barrister’s supplies or employ the barrister’s receptionist, clerk or the like. The applicant does all these things (or their equivalent) in the context of the health care sector. If the applicant were truly offering mere administrative and office services it would not necessarily provide premises and employ nurses. Yet the provision of premises and employment of staff to assist GPs in providing clinical care at the medical centres are part of the applicant’s business model for recruiting GPs and others to its medical centres. A shopping centre owner such as Westfield leases space to a supermarket such as Woolworths. Westfield does not order produce for Woolworths, bill Woolworths’ customers for their groceries, employ the people at the Woolworths’ checkout, or clean and maintain the Woolworths supermarket or the like. The applicant, however, does all these things in the health care sector context, and more. Accordingly, the analogies make little sense.
It follows that, given the terms of the specifications and the nature of the Services, it is not merely the ordinary signification of the words “primary health care” to health professionals in private practice and available for recruitment by the applicant which is relevant. It is the ordinary signification of those words to all health professionals, other participants in the health care system in Australia, and the Australian public who are potential patients at the medical centres which is relevant. To the extent that the applicant’s case depends on the Services being confined to health professionals in private practice who had been or were available to be recruited to one of the applicant’s medical centres, and that therefore such health professionals are the only persons concerned with the Services, the case should not be accepted.
3.4 The proposed amendments
On the last day of the hearing, the applicant proposed the following amendments to the specifications (the additions are shown underlined):
Option A
Medical centre business management services to medical professionals; medical centre business administration services to medical professionals; Service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders; none of the aforementioned services being medical care by medical professionals to patients.
The addition of the words “to medical professionals” and the exclusion of “medical care by medical professionals to patients” do not change the position as set out above. This is because, as explained, these services are not only to medical professionals; they are services to all those the respondents described, being patients and other participants in the health care system. The fact that the Trade Marks Regulations 1995 (Cth) distinguishes between class 35 and class 44 services does not mean that the Services are services to health professionals alone. Option A thus achieves nothing.
After the hearing, and pursuant to leave, the applicant proposed two further amendments as follows:
Option B
Medical centre business management services provided directly to medical professionals but not including medical services or any services that entail dealing with patients or any other members of the general public attending medical centres; medical centre business administration services provided directly to medical professionals but not including medical services or any services that entail dealing with patients or any other members of the general public attending medical centres; Direct service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders, but not including medical services or services that entail dealing with patients or any other members of the general public attending medical centres.
Endorsements:
1.Registration of this trade mark is limited to the provision of the aforementioned services to medical professionals and does not extend to exclusive rights in any use that may be seen by patients or any other members of the general public attending medical centres.
Option C
Medical centre business management services provided directly to medical professionals but not including medical services or any services that entail interaction with patients or any other members of the general public attending medical centres; medical centre business administration services provided directly to medical professionals but not including medical services or any services that entail interaction with patients or any other members of the general public attending medical centres; Direct service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders, but not including medical services or services that entail interaction with patients or any other members of the general public attending medical centres.
Disclaimer:
1.Registration of this trade mark shall neither confer nor recognize any exclusive right to use that may be seen by patients or any other members of the general public attending medical centres, including but not limited to signage on or in medical centres, signage on medical centre staff uniforms, and on documentation generated in the course of interacting with patients or any other members of the general public attending medical centres.

In any event, in the present case, what the evidence discloses is that those involved in the health care sector who have reason to be aware of the applicant determine the meaning of the phrase “primary health care” by reference to context. If the context is the identity of a corporate entity which operates medical centres to which it recruits GPs and others, people involved in the health care sector who have reason to know of corporate medical service providers understand that the reference is to the applicant. As I have said, I am not persuaded that this means that there is a secondary meaning in connection with the Services. As such, the evidence does not enable me to conclude that the applicant’s use of the marks before the filing date “does distinguish the designated … services as being those of the applicant” in accordance with s 41(6).
The difficulty, in my view, comes back to the artificial construct which the applicant has sought to create. In the applicant’s business model, the Services are part of and subsidiary to the operation of the medical centres. They have no existence other than in that context. For these reasons, the attempt to prove acquired distinctiveness of the marks in connection with the Services cannot succeed.
Accordingly, and as provided for in s 41(6), the marks are taken not to be capable of distinguishing the Services from the services of other persons, and the applications for registration must be refused.
6. MARKS LIKELY TO DECEIVE OR CAUSE CONFUSION
The conclusions reached above also have consequences for the respondents’ case under s 43 of the Act – which requires an application for registration of a mark to be rejected if because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The delegate decided to reject the application on the basis of s 43. In so doing the delegate reasoned as follows:
(1)“While it might be the case that the various health care professionals who lease rooms from the Applicant and utilize its services associate the words ‘primary health care’ with the Applicant’s medical centre business management and administration services, the same cannot be said of the many patients attending the Applicant’s premises to consult the various health care professionals” (at [22]).
(2)“…such potential consumers of health care services would firstly (and primarily) view the words PRIMARY HEALTH CARE as a trade mark that denotes a connection between the Applicant and its medical centres. Accordingly, the denotation is firstly as a trade mark of the applicant, despite any descriptive matter contained within” (at [23]).
(3)“Patients attending the Applicant’s medical centres are likely to believe that the Applicant is responsible for the health and medical services provided by practitioners within the medical centres. Patients are unlikely to appreciate that the Applicant is responsible only for the provision of management and administrative services to the health and medical practitioners, and not for professional governance or the quality of the health care” (at [25]).
(4)“It is also possible for patients who are aware of the literal meaning of ‘primary health care’ or the meaning as stated in the WHO Alma-Ata Declaration to mistakenly believe that the Applicant was in some way associated with government provided, or sponsored, community health initiatives” ([26]).
The applicant’s case is that the delegate was in error in assuming that the Services involved services to the public. For the reasons set out above, I consider the delegate’s approach was correct and applies equally to the specifications as proposed to be amended.
The phrase “primary health care”, as it appears in the applicant’s marks, has a clear connotation (and did so at the priority date), the connotation being not the applicant as the source of the Services, but first level or first contact health care. The fact that GPs do not (and did not at the priority date) refer to themselves as primary health care providers, which I accept to be the case on the evidence, does not mean that GPs did not know about and understand the meaning of primary health care. As the discussion above about meaning discloses, I am satisfied that the evidence establishes that the phrase was known and understood by GPs to have the meaning of first level or first contact health care. The applicant’s submissions to the contrary do not reflect the full effect of the evidence and, as noted, focus on ambiguities which exist only at the outer reaches of the meaning of the phrase. As such, and for the reasons already given, I do not accept the applicant’s submission that:
a number of independent doctors gave evidence that, as at October 2009, the connotation alleged …was either not known to them, was unsettled or was not in common use in Australia.
A real likelihood of deception and confusion arises because while the Services are one part of the provision of primary health care the marks refer to “primary health care” generally. However, the applicant’s particular business model ensures that the applicant is not the provider of, nor responsible for, the clinical care provided by the contracted GPs, clinical care being a key component of primary health care. No one other than a person familiar with the details of the applicant’s business model would be capable of avoiding confusion when confronted with the use of the marks in respect of the Services. Persons familiar with the details of the applicant’s business model are a narrow class.
Contrary to the applicant’s submission, the evidence of the GPs called by the applicant which bears upon this issue supports the conclusion that there will be confusion. As discussed, that evidence does not establish that those GPs who did know about the applicant’s particular business model associated “Primary Health Care” with the applicant in respect of the Services. The evidence was instead that the GPs associated “Primary Health Care” with the applicant as an operator of medical centres. This is important because it is the medical centres in which primary health care as a whole (both the clinical services which the applicant in fact does not provide and the Services which the applicant does provide) is provided. Even the GPs who ran their practice from one of the applicant’s medical centres understood the applicant to be operating the medical centre as whole, rather than merely providing the Services. While those GPs knew that operating the medical centre as a whole did not mean the applicant was responsible for the clinical care the GP was providing, that distinction (between operating a medical centre but not providing or being responsible for the clinical care GPs provide at that centre) is a fine one. To expect anyone other than a person who is familiar with the applicant’s business model to understand that when the marks are used in respect of the Services they are intended to identify the applicant as the source of the Services alone and not the clinical care provided from the medical centre is far-fetched.
In the context of the applicant’s operation of medical centres from which primary health care is provided, the use of the marks on any document within the scope of the Services will almost certainly cause any person who notices the marks and is unfamiliar with the applicant’s business model to be confused about the nature of the services the applicant in fact provides (the Services or clinical care services?) and the responsibility for clinical care services provided from the applicant’s medical centres at which the Services are provided (the applicant’s responsibility or not?). It is possible that the respondents’ third kind of alleged confusion (government sponsored or funded or government responsibility in some way or not?) might also arise but I prefer not to decide the matter on that basis. In other words, inherent in the evidence from GPs upon which the applicant relies are the seeds of the confusion which I consider likely to occur in respect of the use of the marks.
In respect of the evidence that GPs who have worked within the applicant’s medical centres (or continue to do so) had never been asked by a patient about who Primary Health Care is or who is responsible for providing the patient with clinical care, two observations must be made. As noted, generally speaking, Primary Health Care has not badged its medical centres, which is a sufficient explanation for the first part of this evidence. Otherwise, no person, GP or otherwise, can give admissible evidence to the effect that a patient who attends a medical centre knows that the individual GP rather than the centre is responsible for the clinical care provided at the centre. What a patient would be likely to think would depend on a variety of circumstances. What I do infer is that, if I am correct that the proposed amendments do not achieve their object, the applicant will have the exclusive right to use the marks on a range of documents and other things which will be likely to be seen by patients because such uses are within the range of the Services. In those circumstances, use of the marks would be likely to deceive or cause confusion as indicated.
Insofar as the public are concerned, it follows that I accept the respondents’ submissions as follows:
the issue is not that the scope of the specifications includes medical care, the problem is that they don’t, although the Services are inextricably bound up with the provision of medical care. Medical care is precisely what a medical centre is supposed to provide; and the management and administration of such centres is to ensure that such care is delivered.
That patients may or may not know what the employment arrangement is between the doctor they see and the medical centre at which they see the doctor, is not to the point. They attend medical centres to receive medical care, other health care related treatments, tests and procedures – including day surgery, which the patients then receive and pay for.
Leaving the public aside, there are other problems.
I am satisfied that the use of the mark in connection with the Services is likely to deceive and cause confusion to any person who is not privy to the applicant’s particular business model. This is because the Services are part only of primary health care and the applicant is not providing or responsible for the clinical components of primary health care from its centres whereas by use of the marks, given their descriptive meaning, there is conveyed the false impression that the applicant is providing and/or is responsible for the first level or first contact care. The likelihood of persons being misled or confused would be avoided only in those persons who had become aware of the details of the applicant’s business model. It is only GPs and health professionals or others who had seen or had explained to them or otherwise knew about the applicant’s business model who would not be likely to be deceived or confused. This class of persons would know that the use of the marks in respect of the Services did not carry the descriptive meaning and that the Services constituted only one aspect of the provision of primary health care by and for which the applicant was responsible.
However, the same could not be said of any other person, including any medical professional or person working in the health sector who, as the respondents put it, had not become acculturated to the applicant’s business model. Those persons, who would be by far the bulk of medical professionals in Australia (given that no more than 5% of GPs in Australia work from one of the applicant’s medical centres, and a far smaller percentage of allied health professionals), and an even larger number of those working in the health sector who might be exposed to the trade marks, would be likely to be misled and confused by their use in respect of the Services. The confusion would arise in the respects identified above as applicable to members of the public.
It follows that I am unable to accept the applicant’s contrary arguments. To the extent it is necessary to deal with the detail of those arguments, I make the following comments.
I do not accept that there is an “irreconcilable tension” in the respondents’ case. The tension was said to arise because the respondents contend, on the one hand, that the services are part of the provision of primary health care and, on the other hand, that the applicant does not actually provide first level health care. As the applicant put it, the respondents “cannot have it both ways”. The tension, on examination, does not exist. The point the respondents make is that the Services are an indispensable part of the provision of primary health care but are not, in and of themselves, clinical or medical care. As clinical care is itself an indispensable part of the provision of primary health care, any use of the trade marks in respect of the Services will create confusion on the part of any person not acculturated to the applicant’s particular business model. The confusion will arise because the unacculturated person (be it a GP, a person working in the health system or a member of the public) will assume (wrongly) that the applicant is in fact providing or is otherwise responsible for the clinical or medical care component of the primary health care offered at the applicant’s medical centres, and is not providing merely the Services. In my view, for such a person, this confusion is not merely a real or tangible danger, but almost inevitable given: (i) the ordinary meaning of primary health care, (ii) the close, indeed, essential connection between the Services and the clinical care provided at the applicant’s medical centres, (iii) the artificiality of the distinctions the applicant relies upon, and (iv) the fact that, on the evidence, the Services are but one part of what the applicant actually does at its medical centres (for example, according to the evidence, the applicant provides all equipment used in the provision of health care, as well as nurses who, I infer, would themselves be providing clinical care).
For the reasons already given, the applicant’s case that the “relevant buying public” is the specialist market of health care professionals cannot be sustained. Even if, contrary to my view, the amended specifications had this effect, lack of confusion amongst health professionals is itself dependent not just on knowledge of the applicant on the part of those professionals but also knowledge of the applicant’s particular business model (which is not disclosed by the advertisements but would be disclosed only in discussions with a representative of the applicant or through reading the standard contract). As discussed, the number of health professionals who would not have knowledge of the applicant’s particular business model must be substantial. On this basis alone, leaving aside members of the public and others working in the health care system, the proposed marks are likely to deceive or cause confusion.
The applicant asserted but has not established that the market in which corporate medical service providers operate is a specialised market. More specifically, it is not the case that the Services constitute a highly specialised or technical field. As such, I do not agree that evidence was required before an inference of likely confusion by reason of the use of the marks may be drawn. Given the ordinary meaning of primary health care and the close connection between the Services and the provision of primary health care, in the context of government policy about primary health care as it existed at and from the priority date, I do not see why GPs and health professionals who have had no exposure to the applicant’s particular business model would be any less likely to be confused about the marks than a member of the public. Nor do I accept that the fact that this confusion should be mitigated before such a person enters into a contract with Idameneo means that the use is not likely to deceive or cause confusion. To the contrary, the connotation of the marks is likely to cause confusion to such GPs and other health professionals which will persist until they have had explained to them or read the contract. This is confusing in relation to the use of the mark within the meaning of s 43.
The same conclusion applies to others involved in the health sector who are exposed to the marks, with the caveat that such people will not be prospective contractors with Idameneo and thus will not have their confusion about the marks mitigated by having the true nature of the applicant’s activities explained to them either through discussions or through reading the standard contract. As one example, assume that the marks could be placed on documents which might be communicated as between a GP and a patient’s health fund in respect of billing and rebates (which would be within the specifications, as proposed and as amended). Persons exposed to the marks within the health fund who had no knowledge of the applicant’s business model would be in the same state of confusion as any member of the public and for the same reasons. They would see the marks and be caused to wonder whether the applicant, through one of the GPs in the centre, had itself provided the clinical care or was responsible for providing the clinical care by reason of the marks. They would not know that the marks were being used to signify only that the applicant was the source of the extremely limited activities within the range of the Services.
Given the evidence of the GPs called by the applicant, which associated “Primary Health Care” not with the Services but with the applicant as an operator of medical centres, it is not correct to say, as the applicant does, that there was no evidence of confusion. The evidence that was given by GPs and others involved in the health care system about the meaning depending on context does not assist the applicant. The evidence was to the effect that such people consider the context to work out whether “primary health care” refers to first level or first contact health care or the applicant company. The evidence did not relate specifically to the applicant as a provider of the Services. For example (with my emphasis added):
(1)Dr Hobbs was aware of the applicant for about 10 to 15 years from when he was a GP. Dr Hobbs said he had a general understanding of the services the applicant provides to GPs which included “back office support services and management support, support of information, communication” and the recruitment of GPs. He did not understand a reference to the applicant to be a reference to only the Services, but to:
a name that is being used by that company and the range of services that it is providing to its medical practices.
(That is, as I understand it, the full range of services involved in the applicant operating medical centres, being a range which remained “a small part of primary health care”.)
(2)Mr O’Donoghue, who had worked in the health care systems since 1990, disclosed considerable confusion about what the applicant did. He said:
As I understand it, they provide general practice services in the community. They’re – they’re – that’s the services that I’m familiar with. So they operate a large corporate general practice enterprise.
…
And by that, do you mean that they operate medical centres?---Yes. I don’t know whether they also employ other allied health professionals, but I know that they provide general practice as part of their repertoire of services.
And by that do you mean that there are general practitioners that work at medical centres---?---Yes.
--- that are operated by Primary Health Care?---Yes.
Thank you. Are you aware that they provide what has been described by a witness of the Commonwealth this morning as back office services to general practitioners at those centres?---I would imagine implicit in operating a general practice is the need to operate the administrative and record-keeping and other systems that would make a general practice work.
For the reasons given, this is necessarily evidence of confusion about the use of the marks. The marks are the corporate name (for the logo mark) and the phrase “Primary Health Care” (for the word mark). Mr O’Donoghue, who has worked in the health sector for 25 years, mistakenly believes that the applicant provides “general practice as part of their repertoire of services”. It is not difficult to understand this confusion, nor how it would extend to any use of the marks in respect of the Services.
(3)Ms Burke knew of the applicant and that it provided business support services that included the Services. He gave this evidence:
However, if you see the words being used in the context of a company like Primary Health Care providing services to healthcare professionals, then you understand that the words are referring to the company?---Yes. It’s a company name. Yes.

It must also be recalled that the witnesses who gave this evidence were either GPs who had worked for, or had particular knowledge of, the applicant’s business model or persons working in the health care system who, by reason of this and the earlier proceedings, had some reason to be aware of the applicant and, perhaps, its business model. As noted, given this knowledge, they still associated the phrase “primary health care” either with the applicant as a corporate entity or as a corporate entity operating medical centres and not as a provider of the Services (other than Dr Gabriel who, given her position as the applicant’s medical director and involvement in the 2010 proceedings and earlier proceedings before the Registrar, would be expected to focus on the subject-matter of the proposed registration). Their evidence, particularly that of Mr O’Donoghue, undermines the applicant’s submission that:
because the meaning of the words depends on the context in which they are used, there is no scope for either Trade Mark to imply the additional meaning contended for by the respondents.
Moreover, given that the logo mark is the applicant’s corporate name in a box and the corporate name is Primary Health Care Limited, the submission that the logo mark is in a different position from the word mark, in my view, is untenable.
I do not accept that the respondents have failed to prove that:
there is a real tangible danger of deception or confusion occurring in the case of a substantial number of people likely to be concerned in purchasing the Services.
First, the concept of “purchasing” contended for by the applicant is too narrow. A person need not “purchase” the Services in order to be deceived or confused by the use of the marks. Second, for the reasons given, I am persuaded that only those people who know the applicant’s particular business model are unlikely to be deceived or confused by use of the marks in respect of the Services. Otherwise, for the reasons given, I am satisfied that any other person who is exposed to the marks in respect of the Services will, at the least, be confused about whether the applicant was providing more than the Services (specifically whether the applicant was providing or was responsible for the clinical care provided at its medical centres) and will be likely to be deceived in this regard. Of necessity, a substantial number of people will be confused and be likely to be deceived.
The applicant’s submission that “the possibility of deception or confusion is fanciful” fails to confront the reality that the applicant operates medical centres, one small part of which is the provision of the Services, under a corporate name and marks “primary health care”, a phrase which describes the overall services provided from a medical centre, in circumstances where the applicant’s business model is to ensure that it does not in fact provide and is not responsible for a key element of “primary health care”, being the clinical care which GPs who practice from the centre provide to patients. Given this, I consider it fanciful to suggest that there will not be deception or confusion of a substantial number of people who are concerned with the Services.
The applicant’s reference to other corporate medical service providers who have the phrase “health care” as part of their name is misconceived. Those other corporations also have another word as part of their name (for example, Sonic Health Care, Foundation Health Care, Alpha Health Care, Endeavour Health Care and Immediate Health Care). Moreover, the evidence in the present case did not broach the question of potential confusion by reason of the use of these names. It is thus not the case that:
there was evidence before the Court that other corporate service providers which incorporate the words “health care” in their name do so without engendering the confusion or deception alleged by the respondents.
Mr Bateman’s evidence that he had not heard of such confusion does not prove its absence.
I do not accept the submission that:
the sales negotiations for the Services are conducted in a manner that does not leave the candidate doctor in any doubt as the nature of the Services provided or contractual terms proposed…
There is no sales negotiation about the Services per se. If a GP wishes to contract with Idameneo there is discussion about a contract which relates to all facilities and services which the applicant provides, not merely the Services. Moreover, while a GP will (or reasonably should) at that point understand that the applicant is not responsible for the GP’s provision of clinical care, I am satisfied that there is a real tangible danger of confusion on the part of a GP who is unfamiliar with the applicant’s business model up to that point. This is sufficient to satisfy s 43. It is not necessary the confusion continue. There is a real risk that GPs will enter into discussions with the applicant on the basis of the confusion. The situation is not analogous to Scotch Whisky Association or Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428; (2009) 177 FCR 300 in which any risk of confusion was negated by the nature of the consumer and the circumstances in which the consumer would purchase the goods in each case. In the present case the confusion arising in respect of the use of the marks in connection with the Services is likely to persist until the GP unfamiliar with the applicant’s business model is instructed about the applicant’s business model.
For these reasons, the respondents have also established the ground of opposition under s 43 of the Act.
7. USE CONTRARY TO LAW
The respondents’ case is that use of the marks in respect of the Services would be contrary to s 18 of the Australian Consumer Law (which proscribes conduct and representations in trade or commerce that are or are likely to be misleading or deceptive) on the basis that such use as at the priority date is in trade and commerce and misrepresents to persons that:
(a)the applicant provides primary health care services;
(b)the applicant is responsible for the health and medical services provided by practitioners within the Applicant’s medical centres; and/or
(c)the applicant is in some way associated with government provided, or sponsored, community health initiatives.
I accept propositions (a) and (b) of this submission. I consider that in the circumstances I have described and considered at the priority date the use of the marks in respect of the Services conveys at least the first two representations alleged by the respondents which are incorrect.
8. CONCLUSIONS
The respondent has established the grounds of opposition under ss 41, 42 and 43 of the Act. Registration of the trade marks should be refused.

I certify that the preceding one hundred and ninety one (191) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot.
Associate:
Dated: 1 April 2016

SCHEDULE OF PARTIES

NSD 1052 of 2014

Respondents

Fourth Respondent:

THE CROWN IN THE RIGHT OF THE NORTHERN TERRITORY

Fifth Respondent:

THE CROWN IN THE RIGHT OF THE STATE OF QUEENSLAND

Sixth Respondent:

THE CROWN IN THE RIGHT OF THE STATE OF SOUTH AUSTRALIA

Seventh Respondent:

THE CROWN IN THE RIGHT OF THE STATE OF TASMANIA

Eighth Respondent:

THE CROWN IN THE RIGHT OF THE STATE OF VICTORIA

Ninth Respondent:

THE CROWN IN THE RIGHT OF THE STATE OF WESTERN AUSTRALIA

File number(s):	NSD 1052 of 2014
Judge(s):	JAGOT J
Date of judgment:	1 April 2016
Catchwords:	TRADE MARKS – whether marks inherently adapted to distinguish – whether marks do or will distinguish – use of marks before the priority date – whether use likely to deceive or cause confusion – whether use contrary to law.
Legislation:	Trade Marks Act 1995 (Cth), ss 6(1), 14(2), 17, 33, 33(2), 41, 41(3), 41(5), 41(5)(a), 41(5)(a)(i), 45(1)(a)(iii), 45(1)(b), 41(6), 42, 43, 55, 55(1), 55(1)(a), 55(1)(b), 65(7), 74, 120(2), 122, 122(1)(g), 122(2) Trade Marks Regulations 1995 (Cth) Australian Consumer Law s 18 (Competition and Consumer Act 2010 (Cth) Sch 2) Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554; (2015) 112 IPR 494 Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 Anheuser-Busch v Budvar [2002] FCA 390; (2002) 56 IPR 182 Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511 Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968; (2004) 209 ALR 93 Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428; (2009) 177 FCR 300 Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756; (2015) 114 IPR 81 Burger King Corp v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 Burlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; (2014) 254 CLR 337 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; (2013) 299 ALR 752 Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; (2006) FCR 386 Commonwealth v Primary Health Care Ltd [2014] ATMP 92; (2014) 108 IPR 610 FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; (1991) 30 FCR 326 Kenman Kandy Australia Pty Ltd v Registrar of Trademarks [2002] FCAFC 273; (2002) 122 FCR 494 Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769; (2012) 205 FCR 241 Mark Foy’s Ltd v Davies Co-operative & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582 Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110; (2013) 215 FCR 16 Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525 Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373; (2014) 106 IPR 281 Registrar of Trade Marks v Muller [1980] HCA 35; (1980) 144 CLR 37 Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 93 FCR 365 Re Ocean Spray Cranberries Inc (1999) 46 IPR 601 Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398; (1988) 10 IPR 539 Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2000) 186 FCR 519 Thompson v B Seppelt & Sons Ltd [1925] HCA 40; (1925) 37 CLR 305 Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51 Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; (2006) 154 FCR 165
Dates of hearing:	15-18 December 2015 5 February 2016
Date of last submissions:	19 February 2016
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	191
Counsel for the Applicant:	Mr J M Hennessy SC
Solicitor for the Applicant:	Gilbert + Tobin Lawyers
Counsel for the Respondents:	Ms J Baird SC and Ms G Rubagotti
Solicitor for the Respondents:	Griffith Hack Lawyers

1 THE APPEAL	[1]
2 STATUTORY PROVISONS AND PRINCIPLES	[8]
3 THE SCOPE OF THE REGISTRATION	[18]
3.1 The disputed matters	[18]
3.2 The competing submissions	[22]
3.3 Discussion	[53]
3.4 The proposed amendments	[72]
4 INHERENTLY ADAPTED TO DISTINGUISH THE SERVICES?	[84]
4.1 The competing submissions	[84]
4.2 Meaning of “primary health care”	[90]
4.3 Descriptive or allusive meaning?	[118]
5 MARKS DO OR WILL DISTINGUISH SERVICES?	[127]
6 MARKS LIKELY TO DECEIVE OR CAUSE CONFUSION	[161]
7 USE CONTRARY TO LAW	[189]
8 CONCLUSIONS	[191]

NSD 1052 of 2014
Respondents
Fourth Respondent:	THE CROWN IN THE RIGHT OF THE NORTHERN TERRITORY
Fifth Respondent:	THE CROWN IN THE RIGHT OF THE STATE OF QUEENSLAND
Sixth Respondent:	THE CROWN IN THE RIGHT OF THE STATE OF SOUTH AUSTRALIA
Seventh Respondent:	THE CROWN IN THE RIGHT OF THE STATE OF TASMANIA
Eighth Respondent:	THE CROWN IN THE RIGHT OF THE STATE OF VICTORIA
Ninth Respondent:	THE CROWN IN THE RIGHT OF THE STATE OF WESTERN AUSTRALIA