Raymond Hoser
[2017] ATMO 87
•14 August 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1744650 (41 and 44) – reptile man - in the name of Raymond Hoser.
| Delegate: | Heath Wilson |
| Representation: | Applicant: Self-represented. |
| Decision: | 2017 ATMO 87 Request to be heard under section 33(4) of the Trade Marks Act 1995 in relation to a ground for rejection under section 41(4) of the Act – evidence of use considered - application rejected. |
Background
On 27 December 2015, Raymond Hoser (‘the Applicant’) applied to register a trade mark under the Trade Marks Act 1995 (‘the Act’). The current details of that trade mark application are:
Trade Mark No. 1744650
Trade Mark: reptile man (‘the Trade Mark’)
Specification of Services:
Class 41:
Study and demonstration in all forms and all media type, of snakes, reptiles and other wildlife, including plants and animals; also animal related entertainment in person or other forms and other activities covered by this class
Class 44:
Capture and handling, in all forms and all media type, of snakes, reptiles and other wildlife, including plants, and animals; also the removal of unwanted snakes, reptiles and other wildlife from private premises of persons, companies and other entities in accordance with state and federal wildlife laws, as well as provision of information on such reptile related matters, including general zoological and reptile-related consultancy work and publications in books, journals, online and the like
The Trade Mark was duly examined under section 31 of the Act and a ground for rejection was identified by the examiner under section 41(4) of the Act. The first examination report provided the following reasons:
Your trade mark is the phrase REPTILE MAN.
The Macquarie Dictionary defines the word REPTILE as ‘any of the Reptilia, a class of cold-blooded vertebrates, including the lizards, snakes, turtles, alligators, and rhynchocephalians’. The word MAN is defined as ‘a man involved in servicing or supplying some specified item’.
Taken as a whole and applied to the services that you have claimed in Class 41 and Class 44, your trade mark is descriptive, as it indicates that these wildlife related services are delivered by a man specialising in the Reptilia class of cold-blooded vertebrates.
The Applicant subsequently provided submissions arguing that the Trade Mark was capable of distinguishing its services from those of other traders. In addition, he supplied a statutory declaration under his name made on 4 April 2016 with exhibits 1 to 10.
The examiner was not convinced by the evidence and submissions of the Applicant and issued a second examination report setting out detailed reasons for maintaining the objection and the possible options for the Applicant.
The Applicant requested a hearing on the ground for rejection under section 41(4) of the Act and the hearing was set down for 22 June 2017 in Canberra. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks and I issued directions allowing the Applicant an opportunity to file written submissions and any additional material. The Applicant filed written submissions.
I heard the matter on the scheduled day and the Applicant personally made submissions over the phone to supplement his written summary of argument.
Under section 33, a ‘presumption of registrability’ applies to the examination of the Trade Mark. In other words, “a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.[1] Branson J in Blount Inc. v Registrar of Trade Marks explained what is required for the Registrar to be ‘satisfied’ of a matter:
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 (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). 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.[2]
[1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].
[2] [1998] FCA 440; (1998) 40 IPR 498, (504).
For the avoidance of doubt, this presumption of registrability applies to all aspects of section 41 of the Act. Consequently, if a ground for rejection is less probable and the Registrar is equally unsure of whether or not a trade mark is capable of distinguishing, such doubt should be resolved in the Applicant’s favour.
Section 41
Section 41 of the Act relevantly provides:
41Trade mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:For goods of a person and services of a person see section 6.
Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
The Applicant firstly argued that the provisions of section 41 of the Act do not apply to the Trade Mark as it is inherently adapted to distinguish the designated services from those of other persons. The following points are a broad summary of the arguments made:
While conceding the descriptive nature of the Trade Mark for some of the services, the Applicant argued that the registration of the expression ‘reptile man’ as a trade mark would not prevent other persons from using it descriptively, as such use would not amount to infringement of the Trade Mark.
The Applicant argued that there are more descriptive expressions than the Trade Mark in relation to the services.
The Applicant pointed to the state of the Register of Trade Marks and highlighted a number of trade marks he argued were descriptive and had nevertheless proceeded to registration.
Is the Trade Mark capable of distinguishing?
The test for the inherent adaptability of a trade mark to distinguish its goods from those of other traders was set out by Kitto J in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[3] as follows:
…the question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders 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…
[3] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537, (555).
The oft-quoted comments by Kitto J in the earlier decision of Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’)[4] have relevance to the Applicant’s arguments:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. [Emphasis added]
…
[T]he 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.
[4] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, (513); [1965] ALR 344, [345]–[346].
The above test is applicable to the consideration under section 41 of the Act, as was made clear in the case of Verrocchi v Direct Chemist Outlet Pty Ltd:
The proper test for assessing the inherent capacity of the registered trade mark to distinguish the designated services for the purposes of s 41(3) still remains that articulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 at [59] recently endorsed this test, and in so doing made the following observations:
The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from [Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 (‘Du Cros’)]... is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[5] [Emphasis added]
[5] [2015] FCA 234, [103]-[104].
As mentioned above, the main argument is that the Applicant’s registration as a trade mark of the expression ‘reptile man’ would not prevent other traders from using the words in question in a descriptive sense rather than as a badge of origin.
At the hearing, the Applicant referred to a previous decision concerning a different trade mark owned by the Applicant.[6] In that decision, the delegate found that the expression ‘hands on’ for similar class 44 services was inherently adapted to distinguish and also emphasised Clark Equipment, finding in relation to that trade mark that he was not satisfied that ‘other traders would, without improper motive, want to use the expression for the sake of its ordinary meaning in a manner which would infringe a trade mark granted in respect of it’.[7] However, I do not understand that decision to be stating a different principle of law when the decisive point in accepting that trade mark was the particular manner of use of ‘hands on’ by other persons in relation to those services, and in particular that those other persons “do not use the expression ‘hands on’ prominently to extoll a point of difference, or as prominent description, in relation to the similar services...”[8]
[6] Raymond Hoser [2017] ATMO 61.
[7] Ibid, [19].
[8] Ibid.
The Applicant also highlighted (amongst other cases) the decision of Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd[9]. (‘Lift Shop’). Lift Shop was an infringement action under section 120 of the Act which highlighted the fact that descriptive use of ‘Lift Shop’ would not necessarily infringe a composite trade mark containing those words.
[9] [2014] FCAFC 75.
The particular words from Clark Equipment: ‘which would infringe a trade mark granted in respect of it’ indicate that the potential effects of the putative registration should be considered, but that “That ultimate question must not be misunderstood.” To illustrate the point, Clark Equipment concerned a trade mark application for registration of the word MICHIGAN in respect of ‘tractor shovels, front-end loaders, crawler-type and truck-mounted excavator cranes, power shovels and cranes, bulldozers, tractor dozers, tractor scrapers, tractor loggers, and accessories and attachments therefor’. Kitto J found, inter alia,:
[Other traders] may well wish by such means to take legitimate advantage of a reputation which they believe or hope that the State of Michigan possesses among Australians for the quality of its manufacturing products, and it would be contrary to fundamental principle to grant a registration which would have the effect of denying them the right to do so by using the name of the State. It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as "made in Michigan" or in some other ways indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business.[10] [Emphasis added]
[10] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, 517.
Similarly, it is no answer here to say that even if the Trade Mark were registered, other traders in this industry would still be able to describe themselves as a ‘Reptile Man’. Such a proposition approaches the question under section 41 from the wrong angle as inherent adaptation concerns the common right of the public to make honest use of words forming part of the common heritage.[11]
[11] Also see the relevant comments in Wattyl Australia Limited v Orica Australia Pty Limited [2003] ATMO 7 and Sustainable Living Fabrics Pty Ltd v Instyle Contract Textiles Pty Ltd [2011] ATMO 66, [30] – [38].
The ‘ordinary signification’ of the Trade Mark
Having considered the inherent nature of the Trade Mark in relation to the designated services and all the material before me, I consider that the Trade Mark consists of a known phrase within this particular industry, which is not allusive, and is unambiguous in meaning. I find that other persons would recognize the expression as the examiner has done, that is, these are demonstration, handling and removal services conducted by a man specializing in reptiles. Viewed in the context of the designated services, the relevant Australian consumers and traders would not need to embark on a search for meaning to reach this conclusion.
The consideration under section 41 is not limited to one literal interpretation, as the Applicant has argued. However, the fact that there may be other alternatives to the expression ‘Reptile Man’ (such as ‘Herpetologist’ or ‘Reptile Expert’) in describing a person providing the designated services is, I accept, a relevant issue. In that regard, I note the following comments made in Austereo Ltd v DMG Radio (Australia) Pty Ltd:
[W]ords which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish: Re the Application of J P Coats Ltd (1936) 53 RPC 355 at 380. Distinctly, that a descriptive statement is commonly associated with a particular trader’s goods or services does not, in and of itself, mean that that statement is inherently adapted to distinguish that trader’s goods or services. It may, for example, be naturally applied to goods or services of that type by whomsoever manufactured or supplied: ibid at 380.[12]
[12] [2004] FCA 968, [38].
It is true that a search (without context) for the expression ‘reptile man’ on the internet will yield results that include a man who has the characteristics of or some visual similarities with a reptile, but I find that would not be the ordinary signification of the Trade Mark to traders and consumers of the designated services.
The Trade Mark must be assessed in the context of its use in relation to the applied-for services. In this case, it is how the expression ‘Reptile Man’ will be perceived when used upon or in relation to the capture and handling of wildlife and how it would be perceived in relation to the study and demonstration of reptiles and other wildlife.
The manner in which the expression ‘Reptile Man’ is being used by other persons is instructive in determining whether other traders would desire to use the expression. A search for the precise expression using the ‘Google’ search engine reveals a number of examples (some Australian based and some overseas) referring specifically to a man conducting reptile shows for educational/demonstration services at schools and for children’s parties. One of the examples in the searches is the Applicant’s use, but he is by no means the only person to use the expression (for the sake of the ordinary signification it possesses) in relation to the services.
I find that other persons dealing in the same services (and acting without improper motives) would ordinarily desire to use the expression ‘Reptile Man’ for the sake of its ordinary meaning.
The State of the Register
As mentioned earlier, the Applicant highlighted a number of trade marks (some registered) which in fact demonstrate that there are instances where the provisions of section 41 have been applied after those trade mark owners have provided evidence demonstrating that their trade marks were capable of distinguishing. The Applicant also referred to his own trade mark registration for the expression ‘Snake man’ (trade mark no. 1214301) for similar services as those in the specification of the Trade Mark. I note that this trade mark was accepted under the (now repealed) provisions of then subsection 41(5) – which is the equivalent of section 41(4) as it currently stands. This trade mark has some conceptual relevance to the Trade Mark but is nonetheless different with a differing level of capacity to distinguish the services. The Applicant presumably had produced evidence sufficient for that trade mark to be accepted under the relevant provisions and I find that evidence is likewise necessary for the registration of the Trade Mark.
With regard to other examples given, in the case Ocean Spray Cranberries Inc v Registrar of Trade Mark the court was provided with examples of other registered trade marks containing the word ‘Classic’. In that judgment, Wilcox J extracted and then commented on Jacob J’s paragraph from the British Sugar case:
"Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence."[13]
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not. [14]
[13] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, [305].
[14] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579, (590).
From the examples provided to me, I am not satisfied that there is a relevant body of analogous acceptances that would affect the outcome of my decision. Each trade mark must be assessed on its own merits.
For the reasons highlighted by the Applicant, the Trade Mark can be properly said to have some degree of inherent adaptation to distinguish (s41(4)), but not sufficiently in this case to make an otherwise apt descriptive expression capable of distinguishing on its face. I find on the balance of probabilities, the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated services. The ground for rejection under section 41(4)(a) of the Act is appropriate.
Evidence of Use
I will now consider whether the Applicant’s evidence of use and intended use of the Trade Mark is sufficient for it to be accepted. As it is of particular relevance to the evidence produced, I will mention the comments on determining trade mark use as set out in Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH:
In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears.[15]
[15] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874, [30]
The Applicant’s declaration indicates that he has been using the expression since 2011. The first exhibit supporting such use is a school newsletter stating that “Raymond Hoser (Australia’s Reptile Man) presented three 90 minute sessions of Australia’s only ‘Hands on’ Reptiles to the students, giving them a better understanding of the living creatures, their life style and habitat”.
The second exhibit is an extract from the Applicant’s website at ‘ It is not clear from the evidence when this website first went live, nor how many visitors there may have been to the website over the years. Although there is no information when the domain name was registered, I would, for the sake of completeness, state that mere registration of a domain name containing or consisting of a claimed trade mark cannot be considered trade mark use.[16]
[16] Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544, [50].
Having said that, the Applicant’s website contains numerous references to the Applicant as ‘the Reptile Man’, ‘Reptile Man Ray Hoser’ and information on how to book ‘Australia’s Reptile Man’ also describing his reptile shows as ‘Reptileman reptile shows’.
Exhibit 3 is claimed to be evidence that only the Applicant uses ‘Reptile Man’ as a badge of origin. That said, the exhibit is insufficient to verify this claim merely being a screenshot of a search on ‘Google Maps’ for ‘Reptile Man’ yielding the result of the geographic location of ‘Snakebusters’[17] in Melbourne.
[17] From the information provided, I understand that ‘Snakebusters’ is a business owned by the Applicant.
Exhibit 4 is a ‘Google’ search for the expression ‘reptile man’ with the first displayed result being a link to the Applicant’s website ‘ and mentioning the Applicant in the description. The remainder of the search results is not, however, provided and I cannot assess the significance of this result.
Exhibit 5 is an email dated July 2015 from a customer of the Applicant to the email address ‘[email protected]’ with the title ‘Reptile Man’ and exhibit 6 is a ‘Twitter’ account referring to the Applicant at #reptileman.
Although the Applicant declares that exhibit 7 “states bluntly ‘Raymond Hoser is The Reptile Man’” this is simply not an accurate statement. The exhibit is an online article from the Sunday Mail dated 1 November 2015 which is in fact entitled “Raymond Hoser is the reptile man who took on the Irwins in a four-year court battle and won.” Taken in the context in which they appear, the words “reptile man” are descriptive of a man who handles reptiles, rather than evidence of their use as a badge of origin, particularly given they are not capitalized and do not present as a title for the Applicant.
Turning to exhibits 8 and 9, these are further examples from social media dated from July 2015, this time on the ‘Snakebusters’ Facebook page. The relevant posting from a user states: “Yes the reptile man Raymond hoser is the best”. From 2016, another example provides: “You did well to get the reptile man Ray Hoser this year”. Once again, exhibit 10 to the declaration highlights another Facebook comment from August 2015, namely: “Reptile Man Raymond rocks”.
It may be argued that some of the above instances constitute use of the Trade Mark as a trade mark, but the majority do not and it is indicative of the descriptive nature of the expression that when a third party refers to the ‘Reptile Man’ that person also finds it necessary to specifically name the Applicant (i.e. ‘Reptile Man Ray Hoser’).
I have had careful regard to the evidence of use and intended use of the Trade Mark by the Applicant along with the level of inherent adaptation of the Trade Mark to distinguish the designated services from those of other persons. Taken as a whole, this evidence is not sufficient to demonstrate the capacity of the Trade Mark to distinguish. I find under section 41(4)(b) of the Act that the Trade Mark does not and will not distinguish the designated services.
Decision
Section 33 of the Act relevantly provides:
33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
(2)The Registrar may accept the application subject to conditions or limitations.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
I am satisfied that there is a ground for rejecting trade mark application no. 1744650 under section 41(4) of the Act. In those circumstances, the Registrar must reject the application and, as delegate of the Registrar, I now do so.
Heath Wilson
Hearing Officer
Oppositions and Hearings
14 August 2017
17
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