Re Trade Mark application number 1699854 (5, 40, 42) - Cell Therapies- in the name of Cell Therapies Pty Ltd

[2020] ATMO 102

TRADE MARKS ACT 1995

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

ReTrade Mark application number 1699854 (5, 40, 42) – CELL THERAPIES– in the name of Cell Therapies Pty Ltd

Delegate:	Nicholas Smith
Representation:	Applicant: Stephen Rebikoff of Counsel instructed by Ian Drew and Nicholas Butera of Davies Collison Cave Pty Ltd
Decision:	2020 ATMO 102 Request to be heard under section 33(4) of the Trade Marks Act 1995 in relation to ground for rejection under section 41 of the Act – s 41 considered – trade mark is not to any extent inherently adapted to distinguish the designated services – evidence of use insufficient – trade mark application rejected

Background

1. On 12 June 2015, Cell Therapies Pty Ltd (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (‘Act’).

Application Number:	1699854
Priority Date:	12 June 2015
Goods and Services:	Class 5: Pharmaceutical and veterinary preparations and substances; preparations for destroying vermin; pesticides; herbicides; fungicides and other agrochemicals in this class; serums; antibodies; test kits in this class Class 40: Custom manufacturing services; custom manufacture of medical devices, pharmaceuticals, diagnostic tests and testing kits; information, advisory and consultancy services in relation to the aforementioned Class 42: Research and design services; medical research and design services; development of computer software including in relation to pharmaceuticals and treatments; information, advisory and consultancy services in relation to the aforementioned (‘Applicant’s Goods and Services’)
Trade Mark:	CELL THERAPIES	(‘Trade Mark’)

2. The Trade Mark was duly examined under s 31 of the Act and a ground for rejection was identified by the examiner under s 41 of the Act. The examiner stated (paraphrased), that cell therapy refers to therapy and treatment involving the injection and use of cellular material, and hence when used in relations to pharmaceuticals, serums, test kits and similar goods, the Trade Mark is directly descriptive of the Applicant’s goods and has no capacity to distinguish. This is because the Trade Mark directly indicates the intended purpose of the goods and the field of medicine in which they are being utilized. The examiner reached a similar conclusion in respect of manufacturing research and design services, while with respect to the pesticides, herbicides and fungicides claimed by the Applicant in class 5, he noted that the Trade Mark was to some extent, but not sufficiently capable of distinguishing and there was insufficient evidence of use.

3. Between 2018 and 2020 the Applicant provided various submissions (‘Applicant’s Submissions’) and evidence in response to the ground for rejection, including a statutory declaration of Dominic Wall, Chief Scientific Officer of the Applicant, with Exhibits DW-1 to DW-15, made on 23 November 2018 (‘Wall Declaration’). In response this office issued 3 further adverse reports, each maintaining the ground of rejection under s 41.

4. On 29 November 2019, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. As a delegate of the Registrar of Trade Marks I heard this matter on 14 April 2020. Stephen Rebikoff of counsel instructed by Ian Drew and Nicholas Butera of Davies Collison Cave, representing the Applicant, made oral submissions. In addition, in accordance with the pre-hearing directions I had given, the Applicant filed written submissions and the following 5 additional declarations that it sought to rely on:

·     Declaration of Dr Hitoshi Kusano, President and Managing Director of PharmaBio Corporation dated 7 April 2020 (‘Kusano Declaration’);

·     Declaration of Dr Hidemasa Miyauchi, Executive Director of PharmaBio Corporation dated 7 April 2020 with Exhibit HM-1 and Confidential Exhibit HM-2 (‘Miyauchi Declaration’);

·     Declaration of Klaus Wehling, Founder and CFO of Orthogen AG dated 2 April 2020 (‘Wehling Declaration’);

·     Declaration of Nicholas Patrick Butera, legal practitioner employed by the Applicant’s representatives dated 2 April 2020 with Exhibits NBP-1 to NBP-2 (‘Butera Declaration’); and

·     Declaration of Nathan Smith, Portfolio Project Manager for the Applicant dated 6 April 2020 with Exhibit NS-1 (‘Smith Declaration’). 

5. I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection.  I have relied on the material identified above in the file as well as the oral submissions made on 14 April 2020[1].

[1] I note that the Applicant has filed a substantial number of declarations to support various applications for extensions of time in respect of this application. As this is not relevant to my consideration of the s41 ground of rejection I have not considered them.

Legislative framework

6. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[2] Regarding the present application, the only ground for rejection identified is under s 41 of the Act. I accept the Applicant’s submission that the capacity of the Trade Mark to distinguish the Applicant’s Goods and Services must be assessed at the priority date, being 12 June 2015 (‘relevant date’)  however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.[3]

[2] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].

[3] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32].

7. 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.

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).

8. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[4] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

[4] (1998) 40 IPR 498, 505.

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][5]

[5] [2017] ATMO 25, [38]-[40].

9. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to 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”: Cantarella at [59].

(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (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”: Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71]. [6]

[6] [2017] FCAFC 56 at [236].

Is the Trade Mark to any extent inherently adapted to distinguish the Applicant’s Goods and Services from the goods or services of other persons?

10. The Applicant concedes in its submissions that the Trade Mark lacks inherent distinctiveness but submits that the Trade Mark is to some extent inherently adapted to distinguish the Applicant’s Goods and Services (that is, s 41(4) applies). Its submissions in respect of this point are summarised below:

·As a matter of plain language, the ordinary signification of CELL THERAPIES is treatments on or involving the use of cells.  This connotes an indirect reference to the field of medicine or medical research known as regenerative medicine and cellular therapeutics.  While the words CELL THERAPIES have a relationship to the Applicant’s Goods and Services as those goods are provided in the broad field of cellular therapeutics and regenerative medicine, it is not directly descriptive of any aspect of those goods and services as the goods and services do not involve the development or supply of any therapies, rather they involve the provision of infrastructure to enable those therapies or treatments be supplied by the Applicant’s clients.  The Applicant submits that it is a manufacturing and consulting business, not a research institution or pharmaceutical company.

·The Applicant’s Goods and Services are not limited to the field of regenerative medicine or cellular therapeutics but extend to more general pharmaceutical consulting and manufacturing services.

·The Trade Mark consists of plural form of ‘cell therapy’ which would be ungrammatical when taken to refer to cellular therapeutics or cell-based therapy.

·There is no evidence that any other trader in Australia uses the Trade Mark in connection to the Applicant’s Goods and Services, and very few of the international participants in the Applicant’s industry have names that even refer to ‘cells’.

11.     I agree with the Applicant’s submission that the ordinary signification of ‘cell therapies’ is treatments on or involving the use of cells.  Indeed, the Applicant, on its website uses the term for its ordinary signification, with the statement ‘Cell Therapies vision is to become the leading manufacturing and distribution centre of excellence for cellular therapies in the Pan-Asian region’.

12.     I do not accept the Applicant’s submissions that the nature of the Trade Mark, being the plural form of the phrase ‘cell therapy’ has any relevance in determining whether it is inherently adapted to distinguish.  While in some cases linguistic ambiguity has sufficed to prevent a mark from being directly descriptive, in the present case, it is entirely common for a trader to wish to use the plural form to advertise that they are offering more than one type of the good or service described.  It would be entirely unexceptional for an entity offering multiple types of treatments on or involving the use of cells to use the term cell therapies to describe their offerings.  As noted above, the Applicant, on its website, uses the term ‘cell therapies’ precisely for its descriptive meaning without the reader needing to engage in any search for meaning.

13.     I do not accept the Applicant’s submission that the Trade Mark is somewhat inherently adapted to distinguish the Applicant’s Goods and Services because it is not directly descriptive of the goods and services the Applicant provides.  I am not required to consider whether the Trade Mark is inherently adapted to distinguish the goods and services the Applicant provides, rather I must consider whether the Trade Mark is inherently adapted to distinguish the Applicant’s Goods and Services.  As such the Applicant’s submission that no other trader in the field of regenerative or cellular therapeutics in Australia uses the mark is not relevant as I am required to consider traders in the Applicant’s Goods and Services, which is a much broader range of products then the Applicant’s specialized products.

14. The Applicant has submitted, in paragraph 22-23 of its submissions that because the specification of the Applicant’s Goods and Services is broader than cellular therapeutics and regenerative medicine the Trade Mark does not directly describe those services and hence is somewhat adapted to distinguish. I do not accept this submission and refer to the Note to s 41 which states that marks that are not inherently adapted to distinguish are mostly marks that consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value geographical origin, or some other characteristic of the goods or services.

15.     The Applicant’s Goods, broadly categorized, are ‘pharmaceutical and veterinary preparations and substances and preparations for destroying vermin’; the remaining aspects of the specification being goods that would fall into the above classes.  I consider that when the Trade Mark is used in respect of the Goods it would describe a pharmaceutical preparation/ veterinary preparation whose characteristic is that it is for the purpose of treating cells or involves the use of cells.  This could include a preparation involving the use of cells for the purpose of destroying vermin.  In short, the Trade Mark is an apt or ordinary way of describing a subset of the Applicant’s Goods and I consider it likely that other traders who are offering multiple preparations involving the treatment of or use of cells would think of and would legitimately desire to use the Trade Mark or some mark nearly resembling it.  Accordingly, the Trade Mark is not to any extent inherently adapted to distinguish the Goods.

16. The Services relate to custom manufacturing and research and advisory services in respect of medical products and pharmaceutical treatments. It is trite to point out that a trader involved in manufacturing or advising in respect of a particular good may need to use the name of that good to describe the services that they offer. Hence, other traders that offer manufacturing, research and or advisory services in respect of treatments on or involving the use of cells (being services that fall within the Services) might legitimately need to use the words ‘cell therapies’ to describe the services they offer. I consider that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Goods and Services (that is, s 41(3) applies).

17.     I make a specific exception to the above conclusion involving the specification for ‘pesticides; herbicides; fungicides and other agrochemicals in this class’.  There is no evidence before me or basis to conclude that other traders for these products might legitimately need to use the words ‘cell therapies’ to describe these goods.  I find that the Trade Mark is inherently adapted to distinguish these specified goods.  The discussion below regarding whether the use of the Trade Mark does in fact distinguish the Applicant’s Goods and Services does not include any discussion relating to ‘pesticides; herbicides; fungicides and other agrochemicals in this class’.

Did the Trade Mark in fact distinguish the Applicant’s Goods and Services?

Legal principles

18.     As the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Goods and Services, the Trade Marks must be rejected unless the evidence before me establishes that the Applicant has used the Trade Mark before the priority dates to such an extent that the Trade Mark does in fact distinguish the Applicant’s Goods and Services as being those of the Applicant.  To establish that a sign which is not to any extent inherently adapted to distinguish does in fact distinguish typically requires evidence of extensive widespread use and exposure to the Australian public of that Trade Mark over a long period of time and this use must have occurred before the priority date(s).

19.     Use as a trade mark is:

[U]se of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[7]

[7] Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19].

20.     The Applicant’s evidence as to its use of the Trade Mark is not insignificant, being use for 13 years at the priority date. However, as the Delegate in Mount Everest Mineral Water Ltd cautioned:

It is convenient first to dispose of a myth: that is, given sufficient use, any sign might qualify as a trade mark and be registrable under the provisions of subsection 41(6).  This is not true as is stated in Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 (‘Go On ..’); implied in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘PERSIAN FETTA’); and discussed in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (TREAT’), where Jacob J said:

There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords.

A moment’s reflection reveals that a trader’s repeated use of an inherently unadapted sign for the sake only of its ordinary meaning serves solely to reinforce its ordinary meaning in the eyes of the public.  The word ‘soap’, used on ‘soaps’, is only descriptive and when used solely to describe the nature of the goods can never change its meaning.  Such a sign is incapable of taking on an additional meaning as indicating only the goods of one trader.  But that is not to state that a sign which lacks any inherent adaption to distinguish cannot take on another meaning as a trade mark and denote the goods or services of a trader.  The acquisition of this other meaning depends entirely on a number of factors including:

·     whether the sign is, effectively, the only ‘normal’ way to describe or identify the goods or services in question such that other traders are likely to require in good faith to want or need to use it, and,

·     whether the sign is the only, or the most appropriate, sign to use to denote the nature or origin of the goods.

·     The way the sign has been used by the owner;

·     whether the sign is used by other traders for the sake of its ordinary meaning;

·     how the particular market has been educated concerning that use; and,

·     how the market perceives that sign in denoting the goods in respect of which it is used: see Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241; (‘OREGON’) Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525; (2002) 56 IPR 452; [2003] AIPC 91-841 (‘Terracotta Colour’).[8]

[8] 2012 ATMO 65, [16]-[17].

21.     In Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks Yates J summarized the issue in these terms (in respect of s41(6) of s41 as it stood prior to the Raising the Bar legislation, which is equivalent to the current s41(3):

Section 41(6) recognises that a sign may be descriptive but still distinctive. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297, Middleton J observed (at [60]) that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive. His Honour quoted the following observations of Lockhart J in Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 335-336:

The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re application of H N Brock & Co Ltd, for a trade mark (“Osowoolo”)and trade marks (“Orlwoola”) (1909) 26 RPC 683, 850, 854 (the Orlwoola case) and Re application of Joseph Crosfield & Sons Ltdto register a trade mark (“Perfection”) (1909) 26 RPC 837 (the Perfection case).

If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.

A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (supra) (at 857-858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.

Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the [identity] of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, par 25.8.[9]

[9] [2015] FCA 756; (2015) 114 IPR 81, [128].

22.     Most recently, in Primary Health Care Limited v Commonwealth of Australia the court made the following comments:

An essential characteristic of a trade mark is that it is used to distinguish the goods or services of a trader from the goods or services of other traders: s 17 of the TMA; E & J Gallo Winery v Lion Nathan Pty Ltd (2010) 241 CLR 144 at [42]. A trade mark may in fact distinguish goods and services, or it may not. If a trade mark is not capable of distinguishing designated goods or services, then it may be used but cannot be registered. If it is not registered, the owner does not acquire the monopoly on the use of the trade mark conferred under s 20 of the TMA.[10] 

…

As Yates J observed in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 at [34], mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. Whether the appellant used the word mark to distinguish the Services, and the extent to which it achieved distinctiveness, involved an evaluative judgment. The primary judge found that the appellant had used the word mark to distinguish its operation of its medical centres, but had not used the mark to distinguish the Services.[11] 

[10] [2017] FCAFC 174, [219].

[11] Ibid [373].

23. In summary when evaluating the evidence of the Applicant for the purposes of s 41(3)(b), I must consider whether it establishes that the Trade Mark has a new and secondary meaning different from its primary descriptive one and thus, at the filing date, had ceased to be purely descriptive. Another way to look at it is whether consumers regard the Trade Mark alone as a badge of trade origin in the sense that they would rely upon that Trade Mark alone as an indication of trade origin for the Applicant’s Goods and Services. In particular, I must look at:

• the way the Trade Mark has been used by the Applicant;
• how the particular market has been educated concerning that use; and
• how the market perceives the Trade Mark in denoting the services in respect of which it is used.

24.     I note that much of the evidence filed by the Applicant (such as the presentation in Confidential Exhibit DW-2 to the Wall Declaration) shows of the trade marks consisting of the stylized word ‘Cell Therapies’ with devices consisting of a series of ovals (‘Figurative Marks’) and use of the words Cell Therapies Pty Ltd.  The Applicant submits that these uses are use of the Trade Mark on the basis that the Figurative Marks and Cell Therapies Pty Ltd are substantially identical to the Trade Mark.  As it is not determinative of the outcome I have not made a finding on this point but rather, for the purpose of taking the Applicant’s evidence of use at its highest, I have accepted the Applicant’s submissions.

Summary and evaluation of the Applicant’s evidence

1. The Wall Declaration conveys the following information. 

   ·The Applicant’s predecessor in title was the Centre for Blood Cell Therapies (CBCT), a centre within the Peter MacCallum Cancer Institute, in Melbourne Australia.  In 2002 the CBCT was commercialised, the Applicant was incorporated and commenced use of the Trade Mark.  The Applicant remains 97% owned by Peter MacCallum Cancer Institute.

   ·The Applicant operates as a fee-for-service contract manufacturer with the aim of translating research findings into approved therapies.  This includes contract development manufacturing, apheresis (a process involving the extraction of particular constitutes of a patient’s blood) management, clinical trial support and consulting and advisory services for companies in the field of the development, testing and manufacture of cellular therapies.  Each of the above services is provided by reference to the Trade Mark.

   ·The Applicant has entered into a number of partnerships to expand its service offerings and assist with research and development work.

   ·The declarant states that he cannot recall any other trader using the Trade Mark as a business or trading name in relation to medical research and cell therapy, and given the usage of the Trade Mark from 2002 onwards, believes that the Trade Mark operates to distinguish the Applicant’s Goods and Services from those of third parties.

2. The Wall Declaration provides details of the Applicant’s revenue received as a result of the goods and services provided by reference to the Trade Mark between 2006 and 2015.  This information indicates that the Applicant’s business is a small, specialist business but one that has grown over time.

3. The Wall Declaration provides evidence of the use of the Trade Mark in advertising, including on the Applicant’s website, brochures, official stationery and attendance at conferences.  The Applicant is also a regular sponsor of the International Society for Cell and Gene Therapy (‘ISCT’).

4. The Kusano, Miyauchi and Wehling Declarations are of a similar nature and convey the following information:

   ·Dr Kusano is the President and Managing Director of PharmaBio Corporation, a Japanese company providing similar goods and services to the Applicant and has extensive experience in the medical industry.  The Declarant has known of the Applicant and its use of the Trade Mark since 2010.  The Applicant and PharmaBio have an ongoing relationship and the declarant is aware of the Applicant’s use of the Trade Mark in respect of marketing, both jointly by the Applicant and PharmaBio and separately in respect of various conferences Dr Kusano has attended.  Dr Kusano consider the Applicant to be well known in the cell and tissue research and manufacturing industry and considers that when he hears the words ‘Cell Therapies’ in relation to a provider of cell manufacturing and advisory services, he would exclusively associate that name with the Applicant.

   ·Dr Miyauchi is an executive director at PharmaBio Corporation.  He has known of the Applicant and its use of the Trade Mark since 2004.  He gives similar evidence to Dr Kusano as to the reputation of the Applicant in his eyes as a provider of cell manufacturing and advisory services.

   ·The Miyauchi Declaration exhibits a document prepared by Roots Analysis, a company that provides market research and consulting to the pharmaceutical industry that identifies the Applicant as one of the significant contract development and manufacturing organisations in the field of cellular and tissue therapies.  I note that this information lists well over 50 companies in this area including 3 companies in Australia.

   ·Mr Wehling is the founder and CEO of Orthogen AG, a German company, which has between 2005 and 2012, worked with the Applicant which manufactures a number of Orthogen’s products in Australia.  Orthogen then sold its Australian subsidiary to the Applicant.  Mr Wehling gives similar evidence to Dr Kusano as to the reputation of the Applicant in his eyes as a provider of cell manufacturing and advisory services and the use of the Trade Mark in Australia.

5. The Butera Declaration contains various exhibits including copies of 9 articles published in Australian newspapers that refer to the Applicant and the first page of a Google search result for the phrase ‘cell therapies’.  Notably the vast majority of results refer to the Applicant.

6. The Smith Declaration refers to the Applicant’s role in the ISCT.  The declarant notes that the Applicant has a longstanding relationship with ISCT with Dr Dominic Wall being a previous past president of the Australia/NZ branch of ISCT.  In 2019 the Applicant was a Gold Sponsor of the 2019 annual meeting, was a separate sponsor of various events, maintained a large sized conference booth, and contributed 8 different speakers and 18 staff members in total to the event.  

   Consideration

1. The key concern I have with the Applicant’s evidence and the Applicant’s submissions is that they refer to the Applicant’s use of the Trade Mark and reputation in the Applicant’s specialist industry. The requirement under s 41(3) is a reputation (and hence a secondary meaning) in the market as a whole, which in the case of the market for the Applicant’s Goods and Services, is a significantly broader market than the Applicant’s specialist industry. In the case of the Applicant’s Goods, that is a very broad market that would include all potential purchasers of pharmaceutical and veterinary preparations (being drugs intended for human or veterinary use). In the case of some (but not all ‘development of computer software’ being a very broad category) of the Services, that is obviously a much more specialist market but still significantly broader than the market for the services the Applicant offers. As such the evidence of the Applicant’s specialist reputation provided in the Kusano, Miyauchi and Wehling Declarations are of little relevance since they concern solely the manner in which the Trade Mark is used in respect of the Applicant’s business, not the broad category of goods and services for which the Applicant seeks to register the Trade Mark. .

2. Reviewing the evidence of use in the context of the market for pharmaceutical and veterinary preparations, the use is manifestly inadequate to show that the Trade Mark has acquired a secondary meaning through use.  As of the relevant date, the Applicant had operated a specialist business under the Trade Mark for 13 years (a significant period, but mere length of use is insufficient to show secondary meaning has been achieved) however the Applicant’s turnover, in the context of the broad market for pharmaceutical and veterinary preparations (and even the narrower market for manufacturing, research and advisory services) is relatively insignificant.  Equally the fact that the Applicant had been referred to in 9 newspaper articles, mostly involving commentary provided by Dr Wall does not show any secondary meaning among the broad market for the Applicant’s Goods and Services.  While I accept the Applicant’s evidence that, as a result of its 13 years of trading, it may have had some reputation in respect of cell manufacturing and advisory services, I am not in any way satisfied that, given the highly descriptive nature of the Trade Mark, the consumers in the market for the Applicant’s Goods and Services regarded the Trade Mark alone as a badge of origin separate from its descriptive nature; i.e. that the mark uniquely identifies the goods and services provided by the Applicant, as opposed to goods and services relating to treatments on or involving the use of cells.  To put it another way, I am unpersuaded that a consumer seeing a pharmaceutical preparation with the words ‘cell therapies’ would see that product and think that the words referred to the Applicant; rather they would assume that the product treating cells or on involved the use of cells to provide various treatments.  The same could be said for an entity seeking research and development assistance for cell therapies.

3. In my evaluative judgement, the evidence before me is insufficient to persuade me that the trade mark CELL THERAPIES has achieved distinctiveness in respect of any of the Applicant’s Goods and Services, save ‘pesticides; herbicides; fungicides and other agrochemicals in this class’. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[12]

   [12] [2014] FCA 1304, [232].

   34. In circumstances where a ground for rejection has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has not been established. In the present case, given that the Applicant has not sought such an amendment and provided no evidence of any use of the Trade Mark for pesticides; herbicides; fungicides and other agrochemicals in this class’ or any intention to use, I decline to offer such an amendment. I find that the application to register the Trade Mark must be rejected under s 41 of the Act.

   Decision

   35. 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.

   36. As I am satisfied that there is a ground for rejection under s 41(3) of the Act in relation to the Trade Mark, I reject the application to register the Trade Mark.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   9 June 2020