Re: Opposition by Redlynch Pharmacy Pty Ltd to registration of trade mark application number 1849618 (35,44) - wholehealth - in the name of CPG (IP) Pty Ltd as Trustee For The CPG (IP) Unit Trust

[2020] ATMO 84

TRADE MARKS ACT 1995

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

Re:Opposition by Redlynch Pharmacy Pty Ltd to registration of trade mark application number 1849618 (35,44) – wholehealth – in the name of CPG (IP) PTY LTD as Trustee For The CPG (IP) Unit Trust

Delegate:	Debrett Lyons
Representation:	Opponent: Ethikate Brand & IP Protection Applicant: Redchip Lawyers Pty Ltd
Decision:	2020 ATMO 84 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 41, 42(b), 59, 62 and 62A of the Trade Marks Act 1995 pressed – s 41 established and opposition successful – trade mark refused registration

Background

1. This matter concerns an opposition originally brought by Esplorare Pty Ltd, now Redlynch Pharmacy Pty Ltd (‘the Opponent’), pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of wholehealth (‘the Trade Mark’), the subject of application 1849618 made by CPG (IP) PTY LTD as Trustee For The CPG (IP) Unit Trust (‘the Applicant’).

2. The application was made on 8 June 2017 (‘the filing date’) and was examined by this Office as mandated by section 31 of the Act. Following examination, the application was advertised in the Australian Official Journal of Trade Marks as accepted for possible registration for the following services:

   Class 35: Pharmacy retail services; Convenience store retailing; Department store retailing; Discount services (retail, wholesale, or sales promotion services); Hypermarket retailing; Management of a retail enterprise for others; Presentation of goods on communication media, for retail purposes; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail services

   Class 44: Pharmacy advice; Pharmacy advisory services; Pharmacy dispensary services; Advisory services relating to health; Consultancy relating to health care; Health assessment surveys; Health care; Health care consultancy services (medical); Health centers; Health centres; Health clinic services; Health counselling; Health risk assessment surveys; Health screening; Healthcare; Information services relating to health care; Medical health assessment services; Naturopathy; Aged care services (medical and nursing services); Nursing care; Homeopathic clinical services; Medical clinic services; Alternative medicine services; Provision of information relating to medicine; Sports medicine services

   (‘the Services’).

3. Thereafter, the Opponent filed a Notice of Intention to Oppose the registration and later filed a Statement of Grounds and Particulars (‘the SGP’) which was subsequently amended.  The Applicant then filed a Notice of Intention to Defend.

4. The parties each filed evidence after which they were invited to be heard.  Neither requested to be heard and so the matter is now to be determined on the basis of the written record, comprising the submissions made by both sides and the evidence filed in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).  I have been delegated by the Registrar to decide the matter.  Submissions on behalf of the Opponent were received from Ethikate Brand & IP Protection and on behalf of the Applicant from Redchip Lawyers Pty Ltd.

   Grounds of Opposition, Onus and Standard of Proof.

5. The onus of proof to establish at least one of the grounds listed in the SGP rests upon the Opponent.[1] The grounds pressed in the Opponent’s submissions were those premised on ss 41, 42(b), 59, 62 and 62A of the Act.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

6. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] I have been able to determine this matter under s 41 and the date at which that ground is to be determined is the filing date of the application.[3]

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

   Evidence

7. The Opponent’s Evidence in Support of its opposition comprises declarations by

   Harry Nina made 28 June 2018, and

   Neil Malcolm Scrymgeour made 28 June 2018.

8. The Evidence in Answer comprises declarations by:

   Mario Calanna made 15 October 2018 (Mario Declaration);

   Matthew Calanna made 15 October 2018;

   JoAnne Patricia Willoughby made 9 October 2018;

   Joyce Gregory dated 9 October 2018;

   Graham Koch made 10 October 2018;

   Darryl John Elsley made 9 October 2018;

   Craig Wallace made 10 October 2018;

   Alex McCormick made 11 October 2018;

   Michael Smith made 9 October 2018;

   Carmen Lisa Tomson made 9 October 2018;  and

   Sarah Standen made 9 October 2018 (Standen Declaration).

9. The Evidence in Reply comprises declarations by

   Vanessa Allen made 14 January 2019, and

   Frank Pappalardo made 14 January 2019.

   Consideration

   Section 41

10. As stated, I am able to determine this opposition under s 41 of the Act which requires that the Trade Mark must be capable of distinguishing the Services from the services of other traders. Negotiation of s 41 will depend on whether the Applicant’s chosen sign is adapted to perform this trade mark function. The section provides:

    41 – Trade Mark not distinguishing applicant’s goods or services

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

    Note:      For goods of a person and services of a person see section 6.

    (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

    (3)This subsection applies to a trade mark if:

    (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

    (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

    (4)This subsection applies to a trade mark if:

    (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

    (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

    (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

    (ii)the use, or intended use, of the trade mark by the applicant;

    (iii)any other circumstances.

    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).

    (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1: For applicant and predecessor in title see section 6.

    Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

11. As indicated above, the application was examined under s 31 of the Act. Section 33 then requires the Registrar to accept the application unless satisfied that there are grounds for rejection. The section thus embodies a “presumption of registrability” which was clarified by the amendments brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act. Accordingly, I am not entitled to reject the Trade Mark unless satisfied that it is not inherently adapted to distinguish and the use of it has not rendered, or will not render it, distinctive (whether that use is considered by itself, as is the case for trade marks under section 41(3), or considered in combination with a degree of inherent capacity to distinguish, as is the case for trade marks under section 41(4)).

12. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington 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 Act a monopoly in what others may legitimately desire.[4]

    [4] (1913) AC 624, 634-5.

13. In the High Court of Australia, Du Cros was cited with approval Kitto J in the case of Clark Equipment Co v Registrar of Trade Marks:

    [W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]

    [5] [1964] HCA 55, [5] (‘Clark Equipment’).

14. More recently the High Court discerned in Cantarella Bros v Modena Trading[6] that s 41 entails a two-step process, the first being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the Services; then consideration of the likelihood of the sign being needed by other traders.

    [6] [2014] HCA 48.

15. Appreciation of the ordinary signification of the Trade Mark involves an understanding of the consumers of the Services which in turn requires an understanding of the Services themselves.  The class 44 services are easy enough to comprehend.  The class 35 services are less clear;  expressions such as “hypermarket retailing” and “presentation of goods on communication media, for retail purposes” are open to interpretation.   In any case there does not appear to be a special class of consumer to be borne in mind when making this assessment.

16. To be clear, I do not find there would be any person who would not read the Trade Mark as a combination of the two words “whole” and “health”.  Nor do I find that any inherent adaptation to distinguish the Services is created by conjoining those words.  What I do find is that the words “whole health” are a ready way to describe goods or services directed towards holistic and integrative well-being.  If the matter was in any doubt, it is laid to rest by the Opponent’s evidence of use of the expression in this descriptive sense both in Australia and overseas from before the filing date of the Trade Mark.

17. The case of Australian College of Natural Medicine Pty Ltd[7] involved s 41 as it stood before the Raising the Bar amendments and involved consideration of the trade mark, WELLNATION CLINICS, applied for in several classes including: 

    Class 35: The wholesale and retailing of products used in treatment by natural therapy and to assist in natural therapies

    Class 44: The provision of beauty services and care and services of natural therapies including but not limited to massage including oriental and remedial massage, reflexology, acupuncture, naturopathy, homeopathy herbal medicine, nutrition, aromatherapy services

    [7] [2015] ATMO 15 (9 February 2015).

18. Finding that trade mark registrable I wrote that:

    The meaning of the word “nation” is well understood and comprehends at its core the idea of a large body of individuals or peoples. That is not to say that the word is without its nuances and it can on occasion refer to a set of commonly held beliefs and ideals, or even a set of policies and governance practices. 

    The word “well” has in English a great variety of meanings but in the conjoined term “wellnation” is most likely to function as an adjective and to carry the broad sense of meaning in satisfactory condition or circumstances. More particularly, within the context of the applied-for goods and services, it is likely to be understood to mean, of good health, or free or recovered from infirmity or disease. Colloquially, we might say: “He is not a well man”. Indeed it is that type of example which underlines the apparent juxtaposition of these words in the term “wellnation”, for in my assessment the word “well” when used in the above sense has a personal element to it and it is not a word normally applied collectively to a large group. We see that borne out even in group address by common expressions such as: “Is everyone well?”

19. By contrast, in LocalFitness IP Pty Ltd[8], decided after Raising the Bar reforms came in effect, I found that the trade mark LOCAL FITNESS had almost no inherent adaptation to distinguish certain class 35 and 41 services and the mark fell for consideration under s 41(4).

    [8] [2016] ATMO 23 (13 April 2016).

20. In Unilever Australia Ltd v Societe Des Produits Nestlé S.A.[9], Bennett J. wrote [30,33]:

    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). 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).

    ... A word descriptive of one category of goods may not be descriptive of a different category and thereby have a capacity to distinguish with respect to that different category. 

    [9] [2006] FCA 782.

21. I find that the Trade Mark is an apt way to describe the nature of many of the Services, bearing in mind Note 1 to s 41(4) (above) and its reference to signs ordinarily used to indicate the kind, quality or intended purpose of services. The Trade Mark may have some small inherent capacity to distinguish some services, for example, “Discount services (retail, wholesale, or sales promotion services)” (class 35) but only because it is not in my view possible to give that service a clear meaning.

22. In the result, I find that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish and so the combined effect of the evidence of use and the degree of inherent adaptation of the Trade Mark must be taken into account, per s 41(4) of the Act.

23. The Opponent’s submissions are that, to the extent that the Trade Mark has been used, the use is (i) not use as a trade mark; (ii) not use as a trade mark in the form for which it has been applied; and (iii) is limited to recent use in a small geographic region in north Queensland in relation to some, but not all, of the Services.

24. In particular, the Opponent’s assessment of the evidence in answer is that the Applicant owns and operates pharmacies in north Queensland under the business name “Calanna Whole Health Pharmacy” preceded by the particular store name or store location.  Far from the breath of the Services claimed, the Applicant’s offering is limited to standard retail pharmacy services with an intention to offer a whole health model of care to its customers.  Further, that the evidence of the Applicant’s trading style – using the word “Calanna” in both plain and logo forms – together with other evidence such as the Applicant’s own website, makes it clear that the words “whole  health” (more commonly than not used separately rather than conjoined) are used descriptively.

25. The Applicant’s own submissions give force to the Opponent’s assessment of the evidence in answer.  So, for example, the Applicant introduces itself as:

    the intellectual property holding entity for Calanna Wholehealth Pharmacy Group and authorises the use of the Wholehealth Trade Mark to the following entities:

    (i)  Calmar (NQ) Pty Ltd ACN 073 378 542;

    (ii)  The Calanna Hybrid Fixed Trust ABN 25 774 708 632 trading as:

    (A)  Calanna Whole Health Pharmacy McLeod Street;

    (B)  Calanna Whole Health Pharmacy Woree; and

    (C)  Calanna Whole Health Pharmacy North Cairns;

    (iii)  The Trustee for CPG Townsville Unit Trust ABN 65 634 147 637 trading as:

    (A)  Calanna Whole Health Pharmacy Aitkenville; and

    (B)  Calanna Whole Health Pharmacy Kirwan;

    (iv)  The Trustee for The CPG Atherton Unit Trust ABN 30 934 596 007 trading as Calanna Whole Health Pharmacy Atherton;

    (v)  The Trustee for CBT Pharmacy Unit Trust ABN 45 259 516 014 trading as Calanna Whole Health Pharmacy Currajong;

    (vi)  The Trustee for Calanna Pharmacy Edmonton Unit Trust ABN 68 159 025 783 trading as Calanna Whole Health Pharmacy Edmonton;

    (vii)  The Trustee for C and B Pharmacy Unit Trust ABN 71 540 613 924 trading as Calanna Whole Health Pharmacy Main Beach;

    (viii)  Dominic Eccles Pty Ltd & The Calanna Hybrid Fixed Trust & The Trustee for Calpharm Hyrbid Fixed Trust ABN 40 489 842 979 trading as Calanna Wholehealth Pharmacy Innisfail; and

    (ix)  The Trustee for the Wood Chem Unit Trust ABN 56 937 450 472 trading as Calanna Wholehealth Deeragun.

    (collectively referred to as Calanna Wholehealth Pharmacy Group)

26. This introduction is noteworthy for several reasons.  First, the name “Calanna” appears in essentially all the trading names and is prima facie the distinctive element of those names.  Secondly, the use of the words “whole health” is, on the face on it, descriptive and descriptively placed in each trading name.  Thirdly, the Applicant’s collective definition of the listed entities as the Calanna Wholehealth Pharmacy Group (emphasis added) is largely self-serving since use of the conjoined term “Wholehealth” is not otherwise generally in evidence.  Finally, and as the Opponent’s complains, there is no evidence of the legal relationship between the Applicant and any other entity and so there is no evidence of the asserted authorised use.

27. Nonetheless, the Applicant avers to its “development of ‘whole health’ as a supplementary branding element of the Calanna Wholehealth Pharmacy Group.  In particular, the Mario Declaration refers to the engagement in September 2015 of a branding and communication specialist to incorporate “Wholehealth” as a key branding element of the group.   

28. The specialist referred to was Sarah Standon who has also given evidence in her own right.  According to the Mario Declaration, her engagement was intended to “better incorporate the ‘Whole Health’ element which resonated and distinguished [the Applicant] from other providers … enabling customers and staff to continue to identify the services of the pharmacy group with the ‘Calanna’ name, whilst also recognising the ‘Whole Health’ brand”.

1. The Standon Declaration states that she was contracted by the Applicant “to develop a strategic marketing plan for the … business, as well as a rebrand of the then existing group name of the Applicant ‘Calanna Pharmacy’.   Her services were then provided from “in or about September 2016” onwards. 

2. In short, the rebranding or as what was sometimes called, “refreshing”, of the Applicant’s business image under this project began less than a year before the filing date. At its commencement there are declarations to the effect that “Calanna” was the primary indicator of trade source. The plans for use of the words “Whole Health” as a brand in its own right are largely aspirational and the submissions are couched in clouded language. In terms of s 41(4), when I weigh the evidence together with the very low inherent capacity of the Trade Mark to distinguish the Services, I find that the combined influence is not enough to support a finding that the Trade Mark does in fact, or will come to, distinguish the Services from the goods or services of other persons.

   Decision and Costs

3. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

4. The Opponent has established a ground of opposition.  I therefore refuse to register the Trade Mark.  The Opponent sought its costs in the event it was successful in this matter and I accordingly award costs against the Applicant at the official scale set out in Schedule 8 to the Regulations.

   Debrett Lyons
   Hearing Officer
   Hearings and Oppositions
   18 May 2020