Re Trade Mark Application number 1790252 (35,44) Ramsay Pharmacy in the name of Ramsay Health Care Investments Pty Limited
[2020] ATMO 11
•30 January 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade Mark Application number 1790252 (35,44) – RAMSAY PHARMACY - in the name of Ramsay Health Care Investments Pty Limited.
Delegate:
Debrett Lyons
Representation:
Applicant: Daniel Wilson, of Spruson & Ferguson, Patent & Trade Mark Attorneys.
Decision:
2020 ATMO 11
Trade Marks Act 1995 (Cth) – Request to be heard under 33(4) of the Trade Marks Act 1995 in relation to a ground for rejection under section 41 of the Act – trade mark accepted for registration
Background
Ramsay Health Care Investments Pty Limited (‘Applicant’) has applied to register the trade mark detailed below under the Trade Marks Act 1995 (‘Act’).
Application Number:
1790252
Filing Date:
17 August 2016
Services:
Class 35: Retailing services, including pharmacy retail services; wholesaling and retailing of pharmaceutical substances, medical and scientific apparatus and equipment, cosmetic substances and toiletries; the bringing together for the benefit of others, of a variety of goods (excluding the transport thereof) enabling customers to conveniently view and purchase these goods; retail and wholesale services; business advice and consultancy relating to franchising; business administration, management and information services, including such services provided to pharmacies; market research services; advertising services; accountancy services
Class 44: Pharmacy services; medical services; medical analysis and treatment; medical diagnostic services (testing and analysis); medical health assessment services; optometric and optical services; lifestyle counselling (psychological and medical); pharmacy advisory services; pharmacy dispensary services; professional consultancy services and providing product information to consumers in relation to health, beauty, cosmetics, skin and hair care and perfumery; providing information, including online, about medical services, pharmacy services, health, hygiene and beauty care services
(‘Services’)
Trade Mark:
RAMSAY PHARMACY
(‘Trade Mark’)
The Trade Mark was examined as required by s 33 of the Act and on 11 November 2016, a First Examiner’s Report raised grounds of refusal under ss 41 and 44 of the Act. The s 41 ground was based on the surnominal significance of RAMSAY which appears 2854 times on the Australian electoral roll. The Examiner contended that other traders with this surname should be able to use RAMSAY in connection with similar goods or services and that “a significant number of traders” may need to do so. The Examiner also noted that RAMSAY referred to locations in Queensland and South Australia and so was of the view that the use of the Trade Mark in connection with the Services would indicate that the Services were “provided at a PHARMACY in the location of RAMSAY, Queensland and/or South Australia”.
The s 44 ground for rejection was based on the following prior trade mark registrations:
4. Registration No.
5. Trade Mark
6. Classes
7. 891833
8. 42
9. 1144828
10. 41, 44
11. 1144830
12. 41, 44
13. 1305135
14. 3, 9, 16, 18, 44
15. 1503375
16. 35, 44
Those registrations are owned by Ramsay Health Care Limited, a related entity to the Applicant, and so after submissions filed by the Applicant on 18 January 2017 which included provision of a letter from Ramsay Health Care Limited consenting to its use and registration of the Trade Mark, a Second Examiner’s Report dated 14 February 2017 retracted the s 44 ground for rejection but maintained the s 41 ground.
A further two rounds of submissions and reports ensued in which it was clarified that the surnominal meaning of RAMSAY gave rise to a ground for rejection under s 41(4) of the Act and the place-name references gave rise to a ground under s 41(3) of the Act.
On 9 May 2019, the Applicant filed further submissions with evidence of its use of the Trade Mark by way of a declaration from Peter Giannopoulos (‘Giannopoulos’).
A Fifth Examiner’s Report issued on 28 May 2019 maintaining the ss 41(3) and 41(4) grounds for rejection and on 16 July 2019 the Applicant requested to be heard. As a delegate of the Registrar of Trade Marks I heard this matter on 1 October 2019. Daniel Wilson, of Spruson & Ferguson, Patent & Trade Mark Attorneys, representing the Applicant, made oral submissions after having earlier submitted an outline argument in accordance with the pre-hearing directions given by this office.
Legislative framework
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. Section 17 of the Act defines a trade mark as:
What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[1] As stated, the single ground for rejection identified is under s 41 of the Act.
[1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].
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).
A preliminary point is that of the so-called ‘presumption of registrability’, explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act as follows:
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[2] (‘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:
[2] (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][3]
[3] [2017] ATMO 25, [38]-[40].
In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Federal Court summarised the governing principles 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]. [4]
[4] [2017] FCAFC 56 at [236].
Unlike trade marks having surnominal significance, this Office does not follow any form of de minimus guideline in respect of trade marks having a geographical reference. The Applicant submits that:
a geographic trade mark is less likely to distinguish “in fact” the more geographically significant the location to which it refers. The primary signification (or “ordinary signification”) of such a trade mark is likely to remain instead a reference to the geographic location and thereby will not “in fact distinguish the designated goods or services as being those of the applicant”.
The question of whether other traders are likely to want to use the geographic trade mark, by contrast, is not relevant to this determination. This was confirmed by Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 who in considering a trade mark in which the word OREGON was the prominent element made the following remarks at 508:
Such question is concerned with the issue of whether a word is adapted to distinguish one trader’s goods from the goods of all others, not with the issue whether the trade mark does in fact distinguish one trader’s goods from the goods of all others.
The question of whether a geographic trade mark “does in fact distinguish” is instead “entirely one of fact” (Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 508).
I observe that in Clark Equipment, Kitto J considered the registrability of geographical marks at [514]-[516] but in doing so made reference to trade marks “of prima facie geographical signification”, which referenced “the name of a place or of an area, whether it be a district or a county, a state or a country” together with “the names of large and important industrial towns or districts, and also of smaller towns or districts if they are a seat of manufacture of the goods for which registration is sought.”
Those points of reference stand in contrast to the Trade Mark before me, where the name “Ramsay” is that of a place in Queensland with a population of 310. It is also the name of an electorate in South Australia comprising several suburbs, none named “Ramsay”. To regard those references as important or direct enough to engender the Trade Mark with an ordinary geographical significance is unjustified in my view. Accordingly, I do not consider that a ground for rejection arose under s 41(3) of the Act.
What remains for consideration is the surnominal significance of the name, “Ramsay”, and in that regard I find that the examiner was correct to apply s 41(4) of the Act on the basis that the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the Services from the goods or services of other persons.
The Applicant’s business is significant and long-standing. Giannopoulos shows that the Applicant’s, core, private hospital business was established in 1964 and that today in Australia it owns 72 such hospitals and day surgeries. It now employs over 30,000 people and attends to over one million patients a year.
It has over that time registered various marks which include the name “Ramsay” as their formative element as shown in paragraph 3 above. Together with a device element, the words “Ramsay Pharmacy” are also registered. That mark, according to Giannopoulos, has been used since 2013/4 in 40 dispensaries within hospitals owned by the Applicant and in 60 retail pharmacies franchised by the Applicant.
The Applicant’s submissions can be distilled as follows. In its “Note 1”, s 41 provides examples of trade marks which are generally considered “not inherently adapted to distinguish goods or services”. Surnames are not there mentioned; the only reference in the Act to surnames is in the definition of the word, “sign”. What the Applicant submits, in short, is that decisions of this Office have come to the consensus that “a practical evaluative judgment” of what the Trade Mark will signify is the normative touchstone[5]. I agree that is so and I find in this case that the relationship between the Applicant’s core private hospital business and that of the provision of the Services is an intimate one. If that finding was not self-evident then I refer here to the Applicant’s submission that:
The provision of pharmacy services, for example, is limited to pharmacists registered with the Pharmacy Board of Australia being persons who are then eligible to own and operate businesses trading in pharmacy services subject to further approval under Section 90 of the National Health Act 1993 (Cth) and in accordance with the Community Pharmacy Agreement. This is an agreement between the Pharmacy Guild of Australia (being a body which represents the owners of community pharmacies) and the Australian Government.
The majority of registered pharmacists, that being said, are not owners of pharmacies who trade in pharmacy services as such but are instead only employed by such businesses. By way of illustration, there were approximately 25,000 registered pharmacists but fewer than 4,000 owners as of March 2015. … It follows that there are significant barriers to entry for suitably qualified traders, being, the regulatory framework and start-up costs associated with this type of enterprise.
[5] Garrett Electronics Inc [2015] ATMO 48 at [18].
Moreover, Giannopoulos attests to use of the Trade Mark across a wide network described earlier and exhibits an array of pharmacy store signage, stationary items and catalogues which show the words “Ramsay Pharmacy”. I see that a good deal of this material uses a logo or design element in addition to the words. In another case that defect might have been fatal to the application but here, when I take correct balance of the use, the degree to which the words themselves show some inherent adaptation to distinguish the Services, and the weight of the Applicant’s very closely allied core business under “Ramsay”- formative marks, I find that the Trade Mark should be registered subject to an endorsement that the provisions of s 41(4) were applied.
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 the application for the Trade Mark may be accepted subject, as said, to an endorsement that the provisions of s 41(4) were applied.
Debrett Lyons
Hearing Officer
Oppositions and Hearings
30 January 2020
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