Proposed revocation of acceptance of trade mark application number 2152027 (35, 41) – RV 24/7 - in the name of Campfire Creative Agency Pty Ltd - [2021] ATMO 107

TRADE MARKS ACT 1995

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

Re:Proposed revocation of acceptance of trade mark application number 2152027 (35, 41) – RV 24/7 - in the name of Campfire Creative Agency Pty Ltd

Delegate:

Louise Tuohy

Representation:

Benjamin Fitzpatrick of Counsel instructed by Spruson & Ferguson

Decision:

2021 ATMO 107

Trade Marks Act 1995 (Cth) – section 38 – revocation of acceptance – section 41 – whether reasonable to revoke acceptance – acceptance revoked – application returned to examination

Background

Campfire Creative Agency Pty Ltd (‘Applicant’) applied to register a trade mark under the provisions of the Trade Marks Act 1995 (Cth) (‘Act’). The current details of the trade mark application appear below:
Application Number:  2152027
Trade Mark:  RV 24/7 (‘Trade Mark’)
Filing Date:  4 February 2021
Specification:  Class 35: Online retail services; Retail services; Retailing of goods (by any means)
Class 41: Entertainment; Provision of entertainment services via an online forum; Television entertainment; Production of television programs (‘Services’)
The application was submitted through the assisted filing service[1] and, after the Applicant elected to file it under pt 4 of the Act, the Trade Mark was examined as required under s 31 of the Act. The application passed examination without an adverse report and on 19 February 2021 was accepted for possible registration. However, on 1 April 2021 and as a result of an internal review of the application, a delegate of the Registrar issued a Notification of Proposal to Revoke Acceptance (‘Notification’) which stated:
Trade mark application 2152027 will soon be advertised as accepted in the Official Journal of Trade Marks. However, it has now come to my attention that the trade mark should not have been accepted.
Acceptance of this application has been reviewed and it was found that grounds for rejection should have been raised under section 41(4) of the Trade Marks Act, 1995. RV is a commonly used acronym for Recreational Vehicle. RV 24/7 is descriptive when used in relation to retail and wholesale of vehicles and in relation to entertainment and television program entertainment services that are vehicle related and are provided continuously around the clock or 24/7. As such, it has insufficient inherent adaptation to distinguish these services and other traders in similar services would be reasonably expected to desire the use of the ordinary description RV 24/7.
In consideration of this matter I am aware of the applicant’s earlier registration 2061577 4WD 24/7 and have noted some other inconsistencies on the Register. However, I also note that the state of the Register indicates the weight of precedent in favour of section 41 grounds for rejection in relation to 24/7 trade mark applications.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance in accordance with section 38 of the Trade Marks Act 1995.
[1] Trade Marks Regulations 1995 (Cth) pt 3A.
In response to the Notification the Applicant requested to be heard. On 17 June 2021, a delegate of the Registrar of Trade Marks heard the Applicant regarding the intention to revoke acceptance. Benjamin Fitzpatrick of Counsel represented the Applicant, making verbal and written submissions on its behalf.
The delegate who initially heard the matter is presently not available. For this reason the matter has been handed to me to decide, in my capacity as a delegate of the Registrar of Trade Marks. I have read the Applicant’s written submissions and viewed the recording of the hearing. What follows is my decision, with reasons, based upon the written submissions and the recording.

Discussion

Section 38 of the Act provides:
38 Revocation of acceptance
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.
(2) If the Registrar revokes the acceptance:
(a) the application is taken to have never been accepted; and
(b) the Registrar must examine, and report on, the application as necessary under section 31; and
(c) sections 33 and 34 again apply in relation to the application.

Section 38 gives the Registrar a discretionary power to revoke the acceptance of an application to register a trade mark. The principles summarising the operation of s 38 of the Act were set out by the Registrar’s Delegate in Ladbrokes Digital Australia Pty Ltd[2] and I extract them below:
[T]wo factors must be satisfied before acceptance may be revoked. Firstly, the Registrar must be satisfied that the Application should not have been accepted having regard to all of the circumstances, known or unknown at the time, that existed when the Application was accepted. Secondly, that it is reasonable to revoke the acceptance, taking into account all of the circumstances that exist. If acceptance is revoked, the Application is taken never to have been accepted and is returned to examination so that the Applicant may address the circumstances that should have prevented acceptance.
The specific error that led to the acceptance or the cause for that error do not require identification. As stated by the Deputy Registrar in Fpinnovation Pty Ltd:
If a ground of rejection or refusal did exist then it may be possible to say there was an error but this is both unnecessary and unhelpful because if a ground existed then the trade mark in question should not have been accepted or registered.[3]
Nevertheless, the revocation must be reasonable and the reasons for it more than a mere difference of opinion as to the registrability of a trade mark.[4]
[2] [2016] ATMO 116 [7] -[9] (Hearing Officer Wilson).
[3] [2012] ATMO 74, [29] (Hearing Offficer Arblaster).
[4] See, eg. Aceto Balsamico Del Duca di Adriano Grosoli SrL v Registrar of Trade Marks [2008] ATMO 2; Re Bobart [2010] ATMO 43.
The Notification states that a ground for rejection exists under s 41 of the Act. Section 41 of the Act provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Section 41 must be assessed having regard to s 33 of the Act, which embodies a ‘presumption of registrability’. Section 33(1)(b) compels the Registrar to register a trade mark applied for unless the Registrar is satisfied that grounds exist for rejecting the application.
To determine the merits of the s 41 ground for rejection, the extent of the Trade Mark’s inherent adaptation to distinguish must be assessed. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated the relevant test:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]
[5] [1964] HCA 55, [5]; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ).
The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the services to which the proposed trade mark is to be applied.[6] The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar services.
[6] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ), although this process was formulated in the context of goods, it is equally applicable to services.
The Trade Mark is made up of two elements ‘RV’ and ‘24/7’. The Macquarie Dictionary shows the top result for a definition of ‘RV’ is ‘recreational vehicle’. The phrase ‘recreational vehicle’ is defined as ‘a motor vehicle or trailer equipment with the facilities of a home, as kitchen, beds, bathroom, etc’. With respect to the ‘24/7’ element the Macquarie Dictionary defines it as a colloquial abbreviation of ‘twenty-four hours a day, seven days a week’.[7]
[7] Macquarie Dictionary (online at 9 September 2021) ‘RV’ (def1); ‘recreational vehicle’; ‘24/7’.
It is clear from the definitions above that the ordinary signification of ‘RV 24/7’ in the context of retail services is a retail establishment that offers recreational vehicles and this service is provided twenty-four hours a day, seven days a week. The use of the Trade Mark in connection with retail services is a direct reference to the kind and function of the services.
The Applicant submits that it is unlikely that there are any traders who sell recreational vehicles continuously. However, a 24/7 service capacity is entirely possible, and a vast array of businesses engaged in retail connect with customers 24/7 through the deployment of online technologies. The Applicant also submits that it is not aware of any evidence of traders using this combination of elements to describe retail services. I agree with the Applicant that there is no evidence before me of other traders using the Trade Mark to describe retail services. While evidence demonstrating that other traders are using the Trade Mark or something nearly resembling it, for its ordinary signification can be instructive, the absence of it is not determinative. I refer to the observations of Murphy J in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited:
[I]t is not necessary for an opponent to registration to establish that the trade mark is required by other traders. It is enough if innocent traders want to use it. For example in Clark Equipment at 513 to 514 Kitto J spoke to the “desire” of other traders to use the same mark, and said that traders may “think of the word and want to use it”. In Burger King at 425 Gibbs J took the reference to “likelihood” by Kitto J as a reference to whether another trader “might”, without improper motive, want to use the mark.[8]
[8] [2014] FCA 373, [200].
It follows that the on the plain meaning of the expression RV 24/7, there is a reasonable prospect of other traders wishing to use the expression, or some mark so nearly resembling in connection with retailing services.
In relation to the Applicant’s class 41 services, Part 22.21 of the Trade Marks Manual of Practice and Procedure states ‘examiners should raise a ground for rejection under s 41 where a trade mark directly describes the potential subject matter of… services in class… 41’. In relation to the Applicant’s entertainment and television program entertainment services in class 41 I do not believe that 24/7 directly describes the subject matter. The element RV, when expanded, potentially describes the subject matter of the class 41 services and, at best, 24/7 could be interpretated as describing an aspect of the services. Therefore, I am satisfied that the Trade Mark as a whole is sufficiently unusual and is not one which other traders will legitimately need to use to describe the content of their similar services in class 41.
I find that a ground for rejection exists under s 41 of the Act in relation to the Applicant’s services in class 35. Therefore, I am satisfied the application should not have been accepted, taking into account all of the circumstances that existed at the time.
The second limb of s 38 is not limited (as s 38(1)(a) is) and requires me to be satisfied that, taking into account all of the circumstances existing at the time of the decision whether to revoke, it is reasonable for me to revoke acceptance of the application.
In this regard, I have received no submissions as to the existence of circumstances which show that the Applicant would be inconvenienced by revocation.
The Applicant submits that it would be willing to exclude ‘wholesaling of motor vehicles’ from the class 35 services to overcome the objection. However, the exclusion proposed attempts to exclude services which are not actually included in the original specification. As such, it does not assist the Applicant in the circumstances.
The Applicant requested expedited examination of the Application. An Early Notice of Acceptance was sent to the Applicant on 19 February 2021 which indicated that the Trade Mark would be advertised as accepted after 4 July 2021. Approximately 5 weeks later on 1 April 2021, prior to the advertisement of the Trade Mark, IP Australia issued the Notification. While it could be said there is a degree of prejudice caused to the Applicant upon having acceptance of its trade mark application revoked, I add that, revocation is not fatal to the application. The application will be subjected to the very sort of assessment and consideration which it should reasonably and properly have received in the first place. The evidence of use and other circumstances provisions of s 41 of the Act will be available to the Applicant and the Applicant will be allowed a fifteen-month period within which to overcome any objections and to put the application into order.
Balancing the inconvenience to the Applicant caused by the revocation, and the need to ensure that the Trade Mark Register is as consistent and accurate as possible, I am satisfied that it is reasonable to revoke acceptance under s 38 of the Act and return the application to examination, allowing the Applicant the opportunity to appropriately overcome any grounds for rejection.

Decision

I am satisfied, in terms of s 38 of the Act, that the application should not have been accepted and that it is reasonable to revoke its acceptance. Accordingly, I revoke acceptance of trade mark 2152027 and the application will be returned to examination.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

22 September 2021