Re Trade Mark Application number 1983275 (35, 37) - Caravan Fix in the name of Action Smart Group IP Pty Ltd
[2021] ATMO 8
•28 January 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade Mark Application number 1983275 (35, 37) – CARAVAN FIX - in the name of Action Smart Group IP Pty Ltd.
Delegate:
Debrett Lyons
Representation:
Applicant: Mark Metzeling of Macpherson Kelley Pty Ltd
Decision:
2021 ATMO 8
Trade Marks Act 1995 (Cth) – Request to be heard under s 33(4) in relation to a ground for rejection under s 41 of the Act – mark to some extent inherently adapted to distinguish the designated services – evidence of use insufficient – trade mark rejected
Background
Action Smart Group IP Pty Ltd (‘Applicant’) has applied to register the trade mark detailed below under the Trade Marks Act 1995 (‘Act’).
Application Number:
1983275
Filing Date:
Priority Date:
15 January 2019
31 August 2017
Services:
Class 35: Retail and wholesale services, including online retail and wholesale services excluding wholesale of aeroplanes; advertising; business management; business administration; franchise services including business advisory services, and assistance, relating to the establishment and operation of franchises; business consultancy relating to the administration of information technology
Class 37: Automotive repair; panel beating; maintenance and repair of vehicles including, repair of hail damage to vehicles; refurbishment of vehicles; rental of vehicle maintenance equipment; vehicle damage evaluation; information, support, assistance, consultancy and advisory services in relation to the foregoing
Trade Mark:
CARAVAN FIX
(‘Trade Mark’)
The Trade Mark was examined as required by s 33 of the Act and an examiner raised a ground of refusal under s 41 of the Act in respect of the class 37 services (‘Services’); there was no objection in relation to class 35.
Correspondence between the Applicant and this Office continued, without progress, through several examination reports which considered evidence of use of the Trade Mark by way of declarations from Mr Adam Blackwell made 28 July 2020 with Exhibits AB-01 to AB-21 (‘Blackwell’) and Mr Mark Stephen Metzeling made 13 August 2020 with Exhibit MSM-01 (‘Metzeling’). Ultimately, the Applicant requested to be heard and, as a delegate of the Registrar of Trade Marks, I heard this matter on 3 November 2020. Mark Metzeling of Macpherson Kelley Pty Ltd, representing the Applicant, made oral submissions after having earlier submitted an outline argument in accordance with my directions.
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).
The application is a divisional filing from, now lapsed, application 1870196 which had been filed for, inter alia, the following class 37 services:
Automotive repair; panel beating; maintenance and repair of vehicles including, repair of hail damage to vehicles; refurbishment of vehicles; rental of vehicle maintenance equipment; vehicle damage evaluation; information, support, assistance, consultancy and advisory services in relation to the foregoing
The Office raised a ground for refusal under s 41(3) in respect of those services. Likewise, s 41(3) was given as the basis for rejection of the Trade Mark in respect of the Services. The Applicant made tiered submissions to me, as follows:
Ground 1
The decision of the examining officer to raise an objection on the basis of s41(3) of the Trade Marks Act 1995 (Cth) was wrong, as the correct basis for the objection should have been s41(4).
Ground 2
In the event that the Hearing Officer agrees with our submissions regarding point 1, that based on the evidence and submissions filed to date the Subject Trade Mark does (or at the very least will in the future with continued use) distinguish the designated services as being those of the applicant and is therefore entitled to be accepted for registration.
Ground 3
In the event that the Hearing Officer agrees with our submissions regarding point 1, but disagrees with our submissions on point 2, that the Hearing Officer rules that the Applicant be given 30 days to file a divisional trade mark application for the Subject Trade Mark for the services in class 37 only, thereby removing class 37 from the Subject Trade Mark application; and that once class 37 is removed from the Subject Trade Mark application, leaving it solely in relation to class 35, it be permitted to proceed to registration.
Ground 4
In the event that the Hearing Officer disagrees with our submissions regarding point 1, that based on the evidence and submissions filed to date the Subject Trade Mark did as at the priority date distinguish the designated services as being those of the applicant and is therefore entitled to be accepted for registration.
Ground 5
In the event that the Hearing Officer disagrees with our submissions regarding point 1 and point 4, that the Hearing Officer rules that class 37 be removed from the specification of the Subject Trade Mark application; and that the Subject Trade Mark application in relation to class 35 be permitted to proceed to registration.
Discussion
For the reasons which follow the decision which I have come to is in line with the Applicant’s Ground 3 scenario, subject to my comments in [23] below.
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]. [2]
[2] [2017] FCAFC 56 at [236].
Whilst it is not my task to evaluate the examination process, an instructive starting place is the examiner’s rationale for the s 41(3) objection, namely, that:
Your trade mark is not capable of distinguishing your services from those of other traders in the market place. Consumers are unlikely to associate CARAVAN FIX with one particular trade source. Other traders should be able to use CARAVAN FIX in connection with goods or services similar to yours.
It is useful, too, to remind ourselves of the note to s 41 which states that:
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 …the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services
Insofar as it might be said that the words ‘caravan fix’ indicate the kind or intended purpose of the Services, the Applicant submits that the courts have assessed inherent adaptation to distinguish taking account of factors such as whether the mark is somehow awkward because of word ordering,[3] or is syntactically unusual and outside typical word usage[4], or the mark broadly describes the goods, services or their subject matter, but not with any real specificity[5].
[3] Roebuck v News Ltd [2014] ATMO 19 regarding the trade mark CARSGUIDE. At paragraph 35 the word-ordering, which here was the fact the words were joined together as one word, gave the mark the ‘requisite spark of trade mark identity’.
[4] Red Energy Pty Ltd v Registrar of Trade Marks [2018] FCA 1449 regarding the trade mark EVENPAY.
[5] Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664 at [95] regarding the trade mark TENNIS WAREHOUSE
During examination the Applicant was provided by examples of how the words ‘caravan’ and ‘fix’ appeared together at various online locations. The examples are of limited relevance since for the most part the words appeared in a grammatically correct form, as in ‘fix your caravan’. The Applicant observed that addition of a possessive pronoun such as ‘your’ or ‘my’ (‘fix my caravan’) naturally resulted in a descriptive term, but not so when the word order was reversed – examples such as ‘your caravan fix’ or ‘my caravan fix’ which treat the word ‘fix’ as a noun, raise the question of what is a ‘caravan fix’. The Applicant submits that:
The ordinary use of FIX in this way, as a noun, is only done correctly when referring to a craving, (one of the various possible meanings for ‘FIX’). So, it only makes sense in the form:
“GET YOUR CARAVAN FIX”;
“SATISFY YOUR CARAVAN FIX”;
Etc.
Accordingly, taking into account the ordering and spelling of the Trade Mark as applied for, the ordinary meaning and its double-meaning/pun potential, it’s evident CARAVAN FIX doesn’t directly describe the class 37 services.
I am in broad agreement with these submissions. The Trade Mark examiner determined that the ordinary meaning of the word ‘fix’ was ‘to repair’. The Macquarie Dictionary provides other meanings but even if the Services are solely repair services, I am in agreement with the Applicant that the more common expression would be ‘caravan fix-ups’ and that the Trade Mark carries with it the intended double meaning of some caravan craving.
In short, the Trade Mark is syntactically incorrect as it relates to repair services and it carries a dual meaning. In my assessment, it has what is sometimes described as, ‘a trade mark quality’ to it, in spite of its apparent suggestiveness. The Applicant’s reference to marks already on the Register includes, aptly in my view, registration 1664008 for PURE BLONDE in class 32 where ‘blonde’ describes the beer type and ‘pure’ describes the quality of the product, but the mark hints at hair colour and is prone to call to mind other expressions such as ‘natural blonde’.
Further, as explained by the High Court[6], the determination of ordinary meaning should be followed by an enquiry to determine if there is there a real and tangible likelihood that other traders may legitimately desire to use the mark in connection with their own goods or services. From what I have said above, it is plain that other traders wishing to convey that they offer caravan repair services can choose from a variety of grammatically correct expressions (which might use the words ‘fix’ and ‘caravan’). The Metzeling declaration states at a time well after the priority date that there were no entities in Australia using the expression ‘caravan fix’ as a trade mark, or descriptively, to provide caravan repair services. Indeed, the one instance of its use (at a caravan and camping show) is descriptive (‘get your camping and caravan fix at …’) and only underscores the point that the Trade Mark has a dual meaning.
[6] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 at [71].
The changes to s 41 brought about by the Trade Marks Amendment Bill 2006 resulted in renumbering of what were ss 41(6) and 41(5) to what are now ss 41(3) and 41(4). What should be remembered is that the wording of s 41(6) was also changed from ‘not inherently adapted to distinguish’ to ‘not to any extent inherently adapted to distinguish’, as now appears in s 41(3)(a). What followed, it was hoped from the Trade Marks Amendment Bill, was an understanding that s 41(3) now applies only if the mark does not have inherent adaptation to distinguish to any extent. Paragraph 4.7.1 of the Explanatory Memorandum to the Trade Marks Amendment Bill explained that the amendment to what was s 41(6) would ‘clarify that subsections 41(5) and (6) of the Act refer to gradations of the same test, and that subsection 41(6) applies only where there is no inherent adaptation to distinguish.’
That noted, over the years the courts have used words such as a ‘spark’ or ‘scintilla’ or ‘modicum’ to measure whether a mark has ‘any extent’ of inherent adaptation to distinguish and in doing so have set a qualifying test having a low threshold.
In the result, I find that a ground for rejection exists under s 41(4) of the Act and so it now falls to me to determine whether the Blackwell declaration assists the Applicant. Blackwell attests to use of the Trade Mark since mid 2014. It should be understood that the Applicant has principally promoted the Services under the Trade Mark to insurance companies, industry organisations and holiday and camping ground businesses, rather than to the caravan owning public. Whilst there has been, for example, general radio advertisement and use of the Trade Mark in print, the Applicant has largely chosen to target caravan insurance providers such as the IAG Group (which includes the NRMA), RACQ, RACV, QBE Insurance Group Limited and Suncorp Group. The Trade Mark has not been promoted to the public at large to the same degree. To the extent that the Applicant has sought to promote its business through camping and caravanning organisations, it relies for proof of exposure on the membership numbers of those organisations or on the number of maintained camping grounds, rather than on direct evidence of public recognition. I recognise that this may be a way of proving acquired distinctiveness through use, but I find that the evidence now before me is beset with troubling imperfections. When the Explanatory Memorandum to the Trade Marks Amendment Bill spoke of ‘gradations of the same test’ it recognised that there is a continuum of inherent capacity to distinguish from low to high. I would place the Trade Mark at the lower end thereof and in so doing a corollary burden is assumed by the Applicant to show a higher level of proof of actual distinctiveness. The Blackwell declaration shows use of the Trade Mark but it also attempts to garner weight from use of the domain name <caravanfix.com.au>, periodic use in the form ‘Caravan Fix Australia’, or use of the Trade Mark with the logo shown below:
I find that the Trade Mark should be refused under the provisions of s 41(4) since there is insufficient evidence to satisfy me that the Trade Mark has acquired a level of acquired distinctiveness through use which might have justified registration.
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 have found that a ground exists under the Act for rejecting the Trade Mark. That decision is open to appeal within a prescribed period which cannot be altered. The Trade Mark will not be refused during the appeal period. However, the Applicant has requested that it be given 30 days from the date of this decision to file a divisional trade mark application for the Services, thereby allowing registration in relation to the remaining class 35 services in respect of which there is no objection. I cannot expressly allow that request and remind the Applicant that under the Act a divisional application can be filed during the pendency of this application, but not afterwards. I also remind the Applicant that 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, it is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[7]
[7] [2014] FCA 1304, [232].
Accordingly, it is for the Applicant to take steps it thinks proper to preserve what it can of this application, separately from the decision which may be taken regarding the filing of a divisional application.
Debrett Lyons
Hearing Officer
Oppositions and Hearings
28 January 2021
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