Ramesh Manocha

[2022] ATMO 155

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2101456 (Class 41) – HEALTHED – in the name of Ramesh Manocha.

Delegate:	Blake Knowles
Representation:	Applicant: Tim O’Callaghan of Piper Alderman lawyers.
Decision:	2022 ATMO 155 Request to be heard under s 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – s 41 considered – specification amended and trade mark accepted under s 41(4).

Background

1. This is a decision on examination of trade mark application number 2101456 (‘Application’) filed by Ramesh Manocha (‘Applicant’) for HEALTHED (‘Trade Mark’) in respect of Class 41: Education; providing of training; cultural activities (‘Services’).

2. The Application was filed on 6 July 2020 as a divisional of trade mark application number 1996469 (‘Parent Application’), which was itself a divisional of trade mark number 1837955 (‘Grandparent Application’). The Grandparent Application was lodged on 12 April 2017 (‘Relevant Date’), which under s 6 of the Trade Marks Act 1995 (Cth)[1] is also deemed to be the filing date of the Parent Application and the Application.

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

3. The Application was examined as required by s 31. The examiner raised a ground for rejection under s 41 on the basis that the Trade Mark was only to some extent inherently adapted to distinguish the Services and therefore fell for consideration under s 41(4). The Applicant subsequently filed submissions and evidence in response to the examiner’s report. The examiner maintained the ground for rejection. The examiner also initially raised an objection that the Application did not meet the requirements to qualify as a divisional application under s 46. However, the issue raised by the examiner regarding the divisional claim have now been resolved following the lapsing of the Parent Application.

4. The Applicant requested a hearing by videoconference. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 5 September 2022. Tim O’Callaghan of Piper Alderman lawyers appeared on behalf of the Applicant. I have decided this matter based on the evidence and submissions filed by the Applicant.

5. Subsequent to the hearing, the Applicant advised that he was prepared to amend the Services as follows if it would lead to acceptance of the Application:

   Class 41: Education; providing of training; cultural activities; all of the aforementioned in the field of continuing professional development for health care workers

   (‘Proposed Amendment’)

   Evidence

6. The Applicant relies on a declaration that he made on 2 April 2022, with Exhibits RM-1 to RM-11. The declaration annexes an earlier declaration made by the Applicant on 26 November 2018 in support of the Parent Application, with Exhibits RM-1 to RM-28.

7. The Applicant is a provider of health education services delivered to health professionals throughout Australia. He first used the Trade Mark in relation to health education services in 2004. The services are designed to allow healthcare professionals to obtain continuing practice development (‘CPD’) points required to maintain their registration.

8. Prior to the Covid-19 pandemic, the Applicant’s business model relied on delivering education services at face-to-face seminars. The Applicant generated revenue by charging a fee for attendance at these seminars. As a consequence of Covid-19, the Applicant changed his business model to focus on delivering free professional development webcasts and podcasts to health professionals. Revenue under this business model is generated by sponsorship.

9. The change in the Applicant’s business model has resulted in the Applicant generating significantly more content and attracting a significantly higher number of registrations for his seminars. The Applicant’s annual revenue since 2008, which is significant given the specialised nature of the Applicant’s education services and the limited target market, has remained high notwithstanding that he no longer charges a fee for attendance. The Applicant also spent a significant amount on promotion of the Trade Mark between 2016-2018.

10. The Applicant’s health education services have since 2004 been promoted under the Trade Mark primarily via the website (‘Website’). As of 2 April 2022, the Applicant employs twelve staff to generate content by interviewing health professionals to create podcast material. The Applicant provides various metrics regarding use of the Trade Mark after the Relevant Date, including the number of views on the Website, the number of healthcare professionals exposed to the Trade Mark, the number of webcasts and podcasts posted, the number of webcast registrations, the number of online learning module enrolments, and the number of recipients of promotional emails. These figures are significant and indicate considerable market presence and consumer recognition.

11. The Applicant declares that in addition to being promoted via the Website, the Trade Mark has also been promoted via Facebook, Apple and Google Play stores, brochures, flyers, articles, and other marketing materials. The Applicant annexes numerous examples of the Trade Mark in use, including historical Website extracts obtained from the Wayback machine, promotional emails, screenshots from Facebook and Apple and Google Play stores, prospectuses sent to potential sponsors, promotional flyers, and educational materials and programs. 

12. The evidence indicates that the Applicant has used the Trade Mark either as plain words or in slightly stylised form, or as part of composite marks, including:

    Discussion

13. Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Services from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Services, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Services, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that it did not in fact distinguish the Services based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the combined effect of the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Services (s 41(4)).

14. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:

    His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]

    [2] (1964) 111 CLR 511, 514.

15. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[3] The High Court also confirmed that the test in Cantarella does not encompass desire by other traders to use a sign which in relation to the goods or services is allusive or metaphorical.[4]

    [3] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

    [4] Ibid, [59].

16. The Applicant concedes that the Trade Mark is not sufficiently inherently adapted to distinguish and falls for consideration under s 41(4) as determined by the examiner. I agree with this assessment. The word HEALTH relates to activities with a health focus, and ‘ED’ is an abbreviation for education. As such, the ordinary signification of the Trade Mark is that the services are for health education. Other traders may have a legitimate desire to use the Trade Mark to convey that their services are also related to health education.

17. While I consider that the Trade Mark has an ordinary signification that others may desire to use, I do not consider that the Trade Mark is the most direct or desirable way to refer to education or training services for health professionals, particularly in the context of CPD. By way of comparison, CPD services for lawyers or accountants are unlikely to be referred to as ‘law ed’ or ‘accountancy ed’ seminars notwithstanding that each term has a perceptible meaning. The Applicant also submits that many may read the Trade Mark as being the past tense of the word ‘health’, which is a nonsense word.

18. On balance, I consider that the Trade Mark has a reasonable (although not high) degree of inherent adaptation to distinguish for the purposes of assessing registrability under s 41(4).

19. Turning to the evidence, the examiner considered that it demonstrated mostly use of the Trade Mark with additions or alterations that substantially affect its identity (particularly composite marks including a distinctive device). The examiner also indicates that use of the Trade Mark in plain word form is primarily in a descriptive context.

20. While I agree with the examiner that the Applicant often uses various composite marks (which are not substantially identical to the Trade Mark), I consider that such use is co-extensive with use of the Trade Mark as a plain word or with inconsequential variations, particularly given the Applicant’s business has an online focus and the Trade Mark is the identifier in the domain name of the Website. In Sports Warehouse, Inc v Fry Consulting Pty Ltd (‘Sports Warehouse’), Kenny J held that use of a domain name constituted use of TENNIS WAREHOUSE as a trade mark, on the basis that descriptive prefixes and suffixes of the domain name could be disregarded.[5] Similarly, I consider that use of the domain name is use of HEALTHED with additions not substantially affecting its identity. I also accept that the Trade Mark would be used aurally in the course of delivering webcasts and podcasts.

    [5] [2010] FCA 664, [154].

21. Further, I am not required to discount entirely use of the Trade Mark as a component in various composite marks. In Sports Warehouse, Kenny J held:

    I accept, as Sports Warehouse contended, that a sign may be registrable as a trade mark even though it is used together with another trade mark, and that there can still be use of a mark where it is a component of a larger composite mark: see Chocolaterie Guylian at 93 [97]; also E & J Gallo Winery at 662 [68]-[69]; also E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 at 108 [186] (Flick J). Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 74 IPR 246 (‘Colorado’) is not authority for the contrary proposition. Each case turns on its own facts and the trade mark in question viewed in the context of those facts.[6]

    [6] Ibid, [133].

22. Regarding the issue of whether the Trade Mark is used ‘as a trade mark’, i.e. whether it acts as a badge of origin or merely descriptively, there is often no clear distinction between the two types of use[7] and a sign may perform both functions, particularly where the public has been educated to see the otherwise descriptive elements as also indicative of trade source. In this case, I consider that the evidence primarily demonstrates trade mark use, and it would be recognised as such among the target market.

    [7] See Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [146] (Katzmann J).

23. Overall, I consider that there has been significant use of the Trade Mark (including with additions or alterations not substantially affecting its identity), and that the recognition and reputation accruing to it are not diminished by the concurrent use of various composite marks incorporating the Trade Mark. The device elements in the composite marks are not so significant that they overwhelm the word HEALTHED as the key distinguisher of trade source of the Services. Further, consumers exposed to the various composites are also highly likely to have been exposed to the plain word mark. It would be illogical to suggest that recognition of the respective marks would be compartmentalised in the minds of consumers, such that they recognise the composite marks as a badge of origin but regard the word mark as merely descriptive.  

24. The use of the Trade Mark must also be considered in the context of a specialised market in which the Applicant has established a significant presence (as demonstrated by the appreciable turnover over many years, which I also infer will continue into the future). The evidence of use after the Relevant Date also confirms that the Trade Mark is likely to continue accruing reputation and recognition in the market, particularly as the change of the Applicant’s business model has resulted in the business attracting many more customers.  

25. On balance, taking into account the level of inherent adaptation to distinguish in the Trade Mark, the extent of use of the Trade Mark over a long period of time, and the likely use of the Trade Mark into the future, I cannot be satisfied that the Trade Mark is not capable of distinguishing the Services.

26. I note however that the Services broadly cover activities extending beyond the field in which the Trade Mark has acquired reputation. Such services may be quite different in nature to CPD services for healthcare professionals. For example, the Services would cover general health education or training services provided to school children or other members of the community. As such, I consider that the Proposed Amendment suggested by the Applicant appropriately defines the scope of any rights that should be granted by registration. 

    Decision

27. Under s 33(1), if I am not satisfied that there are grounds for rejection, I must accept the Application.

28. Therefore, I accept the Application, subject to the Proposed Amendment and an endorsement indicating that the provisions of s 41(4) have been applied.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    8 September 2022