Rebecca Ann McKean

[2017] ATMO 147

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1739402, 1739403(5, 35) – MEDIHEMP - in the name of Rebecca Ann McKean.

DELEGATE:

Cristy Condon

REPRESENTATION:

Applicant  Dr Robert Burrell instructed by Trademark Works

DECISION:

2017 ATMO 147

Trade Marks Act 1995– s 33 proceedings – s 41 considered – s 41(4) applies - Trade Mark applications refused.

Background

1. On 4 December 2015, Rebecca Ann McKean (‘the Applicant’) applied to register a trade mark under the Trade Marks Act 1995 (‘the Act’). Two applications were filed in respect of the trade mark and the current details of those applications are:

Trade Mark Nos:     1739402 (class: 5) and 1739403 (class: 35)

Trade Mark:             MEDIHEMP (‘the Trade Mark’)

Specification of Goods and Services:

Class 5: Acne creams (pharmaceutical preparations); Anti-bacterial pharmaceutical preparations; Anti-cancer pharmaceutical preparations; Chemico-pharmaceutical preparations; Elixirs (pharmaceutical preparations); Filled ampoules of pharmaceutical preparations; Materials for use in applying pharmaceutical preparations; Pharmaceutical preparations; Pharmaceutical preparations containing vitamins; Pharmaceutical preparations for animals; Pharmaceutical preparations for skin care; Pharmaceutical preparations for topical use; Pharmaceutical products; Pharmaceutical substances; Pharmaceutical drugs; Drugs; Tablets (pharmaceuticals); Wipes (tissues) impregnated with pharmaceutical lotions; Transdermal patches for administering pharmaceuticals; Preparations for body care (pharmaceuticals); Plant extracts for pharmaceutical use; Moisturisers (pharmaceuticals); Medical foodstuff additives for pharmaceutical use; Oils adapted for medical use; Oils adapted for pharmaceutical purposes; Extracts of plants  in  capsule  form  (for  pharmaceutical  use);  Digestives  for

pharmaceutical purposes; Chemical preparations for pharmaceutical purposes; Capsules for pharmaceutical purposes; Biological preparations for pharmaceutical purposes; Homeopathic pharmaceuticals; Natural pharmaceutical products; Pharmaceutical sweets; Pharmaceutical tonic preparations; Skincare preparations (pharmaceutical); Syrups for pharmaceutical purposes; Therapeutic drugs (medical); Anti-cancer drugs; Drugs for medical purposes; Dietary food preparations for medical use (medical food); Dietary food supplements; Mineral dietary supplements for humans; Plant compounds for use as dietary supplements (medicinal); Plant extracts (dietary supplements); Vitamin supplements; Vitamin drinks; Analgesics; Adhesive bandages (dressings); Compresses; Detergents for medical purposes; Dog washes; Energy drinks (adapted for medical purposes); First-aid boxes (filled); Food for babies; Gum for medical purposes; Herbs for medicinal purposes; Herbs for smoking (for medicinal purposes); Infusions for medicinal purposes made from herbs; Extracts of medicinal herbs; Antiseptics; Cough syrups; Protein dietary supplements; Herbal remedies; Skin care products (medicated); Dietetic infusions for medical use; Protein preparations for use as additives to foodstuffs for human consumption (adapted for medical purposes); Dietetic foods for use in clinical nutrition; Cough mixtures; Mixtures of germicides and antiseptics in ointment form; Medicines for human use; Medicines for veterinary purposes; Liniments; Medicinal infusions; Medicinal tea; Mineral waters for medical purposes; Mud for baths; Mouthwashes for medical purposes; Narcotics; Nutritional supplements; Sedatives; Sunburn ointments; Suppositories; Tissues impregnated with pharmaceutical lotions; Vaginal washes; Biological agents (bacterial, fungal or other fungicides, weedkillers, herbicides, insecticides, parasiticides, pesticides); Sanitary preparations for medical purposes

Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or  sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Advertising; Marketing

(‘Designated Goods and Services’)

1. The applications were examined under s 31 of the Act and a ground for rejection was raised by the examiner under s 41(4) of the Act in respect of both applications. In the case of trade mark application 1739402 the first examination report stated:

   Your trade mark is the obvious joined words MEDI HEMP.

MEDI is a common prefix referring to goods relating to medicine or medical applications.

The word HEMP indicates the cannabis plant.

Your  trade  mark  therefore  indicates  that  your  goods  contain  or  are  used  in association with cannabis for medical purposes.

Other traders should be able to use MEDIHEMP in connection with goods or services similar to yours.

1. In the case of trade mark 1739403 the first examination report stated: Your trade mark is the obvious joined words MEDI HEMP.

   MEDI is a common prefix referring to goods relating to medicine or medical applications.

   The word HEMP indicates the cannabis plant.

   Your trade mark therefore indicates that your services are in relation to goods that contain or are used in association with cannabis for medical purposes.

   Other traders should be able to use MEDIHEMP in connection with goods or services similar to yours.

1. The Applicant was given the option of supplying evidence of use to overcome the s 41(4) ground for rejection but instead, the examiner received submissions from the Applicant who argued that the Trade Mark was capable of distinguishing its goods and services from those of other traders.

1. The examiner was not convinced by the submissions made by the Applicant and issued a second examination report for each application. The Applicant provided submissions and again argued that the Trade Mark was capable of distinguishing its goods and services from those of other traders. The examiner maintained the s 41(4) ground for rejection for both of the applications and the Applicant was again invited to provide evidence of use to overcome the ground for rejection.

1. The Applicant did not supply evidence at any time in the examination process and unconvinced by the Applicant’s submissions, the examiner issued a third examination report which maintained the s 41(4) ground for rejection in respect of both applications (‘the applications’).

1. On 15 March 2017 the Applicant requested to be heard. The hearing was set down for 17 October 2017 in Canberra. The matter was allocated to me to decide as a delegate of the

Registrar of Trade Marks. I duly issued directions allowing the Applicant an opportunity to file written submissions and any additional material. On 10 October 2017 the Applicant filed written submissions which also consisted of the following information called ‘The Applicant’s Evidence’:

i.   Extract from the New Shorter Oxford English Dictionary.

ii.   Sawler J, Stout JM, Gardner KM, Hudson D, Vidmar J, Butler L, et al. (2015) ‘The Genetic Structure of Marijuana and Hemp’. PLoS ONE 10(8): e0133292. Article from the blog ‘leaf science’ Koppel BS, Brust JC, Fife T, Bronstein J, Youssof S, Gronseth G, Gloss D (April 2014). ‘Systematic review: Efficacy and safety of medical marijuana in selected     neurologic              disorders:     Report     of    the     Guideline      Development Subcommittee of the American Academy of Neurology’. Neurology. 82 (17): 1556–63.           PMC          4011465      Freely     accessible.       PMID     24778283. doi:10.1212/WNL.0000000000000363. type="1">

I heard the matter on the scheduled day and the Applicant was represented by Dr Robert Burrell. Ms. McKean also attended the hearing and personally made submissions in support of the Trade Mark’s acceptance for the Designated Goods and Services.

1. The Applicant has provided no properly filed evidence and, therefore, I am unable to provide any information about the Applicant and any use of the Trade Mark by it.

1. I am a delegate of the Registrar of Trade Marks and I am to decide this matter as required by s 33 of the Act which provides:

Application 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.

Note:        For this Act see section 6.

(2)   The Registrar may accept the application subject to conditions or limitations.

Note:        For limitations see section 6.

(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.

Note:        For this Act see section 6.

(4)   The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:        For applicant see section 6.

1. Under s 33, a ‘presumption of registrability’ applies to the examination of the Trade Mark. That means I must accept the applications for registration on behalf of the Registrar of Trade Marks unless I am satisfied that there is a ground for rejecting them.1

2. In Blount Inc. v Registrar of Trade Marks Branson J described what is required for the Registrar to be ‘satisfied’ of a matter:

   Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.2

3. In other words, if a ground for rejection is less probable and the Registrar is equally unsure of whether or not a trade mark is capable of distinguishing, such doubt should be resolved in the Applicant’s favour.

Section 41

1. Section 41 of the Act relevantly 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.

…

(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

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

2 [1998] FCA 440; (1998) 40 IPR 498, (504).

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…

1. When I follow the provisions of s 41 through, the first step is for me to consider whether the Trade Mark is inherently adapted to distinguish the Designated Goods and Services from the goods and services of other persons and, if it is not, then I must reject the applications for the Trade Mark. In deciding this question it is first necessary to consider the ordinary signification of the word MEDIHEMP.3 Once I have established the ordinary signification I must then decide whether other traders in the ordinary course of their business legitimately need to use MEDIHEMP, or something so similar to it, to indicate their own similar goods and services. In other words:

…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…by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.4

3 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337, 361-2 (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’); Telstra Corporation Limited v Phone Directories Australia  Pty  Ltd  [2015] FCAFC 156.

4 Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 514 (Kitto J).

1. As I indicated earlier, the Applicant has not provided any evidence of her use of the Trade Mark on, or in relation to, the Designated Goods and Services so she will not be able to overcome the ground for rejection if I am satisfied that either ss 41(3) or 41(4) of the Act apply to either, or both, of the applications.

1. Dr Burrell for the Applicant firstly argued that the provisions of s 41 of the Act do not apply to the applications and that the Trade Mark is inherently adapted to distinguish the Designated Goods and Services. The following is a broad summary of the submissions made by Dr Burrell:

·     The examiner has imposed a higher test for inherent adaption than what should be applied.

·     While conceding that the meaning of the Trade Mark could be deciphered it is not a word defined in any dictionary and nor is it one other traders needed to use.

·     There are more descriptive words than the Trade Mark in relation to the goods and services that could be used by other traders.

·     Other jurisdictions have accepted the Trade Mark prima facie for the designated goods and/ or services including New Zealand, The United Kingdom and the United States of America.

·     Ms. McKean explained at the hearing that she chose the Trade Mark because it was a softer and more comfortable word for people to say out loud especially for those people who are uncomfortable saying ‘cannabis’ and/or ‘marijuana’.

Inherent adaptation to distinguish

18.As outlined in the written submissions, Kitto J in Clark Equipment Co v Registrar of Trade Marks5 sets out the test for determining whether a mark is sufficiently adapted to distinguish. I also note that since the Cantarella6 decision, the Full Court in Telstra Corporation Limited v Phone Directories Australia Pty Ltd7 has commented on the test for determining whether a

5 Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511

6 See f/n 3.

7 [2015] FCAFC 156.

mark is sufficiently adapted to distinguish and has applied the following two stage enquiry taken by the High Court of Australia in Cantarella:

1.What is the ordinary signification of the Trade Mark? (‘first stage’)

2.Is it the case that other traders without improper motive might need to use the Trade Mark in respect of their similar goods or closely related services? (‘second stage’)

1. The Applicant submits:

   Therefore,  the  key  issue  in  the  present  case  is  determining  the  ordinary signification of MEDIHEMP in relation to the specified goods and services, and, in particular, whether the word makes a “direct” reference to the character and quality of those goods and services, or merely a “covert and skilful allusion” to those goods and services. Once that signification has been determined, the question can then be asked as to the likelihood of other traders thinking of “medihemp” and wishing to use it for the sake of that signification.

The Ordinary Signification of the Trade Mark

1. The ordinary signification of a trade mark must be assessed in the context of its use in relation to the designated goods and services. In this case, it is how the word MEDIHEMP will be perceived when it is used on, or in relation to, the Designated Goods and Services (for the most part these are pharmaceutical goods and the retailing, wholesaling, advertising and marketing of these goods).

1. It is clear that the Trade Mark is formed by joining the prefix ‘MEDI’ and the word ‘HEMP’. I find the conjoining of these elements forms a portmanteau and not an invented word per say. Although the Trade Mark is a portmanteau it is pronounced as two single words. Contextually it is still MEDI HEMP. In terms of the Designated Goods and Services, I find that ‘MEDI’ is a commonly used shortened form for the words MEDICINE, MEDICINAL or MEDICAL and, as the examiner stated in the second examination report for each application, the primary definition for ‘HEMP’ in the Macquarie Dictionary is: ‘a tall, annual herb, Cannabis sativa, native to Asia but cultivated in many parts of the world, and yielding hashish, bhang, cannabin, etc’.

1. It is well known that the Cannabis plant has medicinal properties. I am satisfied that the Trade Mark’s ordinary signification is medicinal/medical hemp. In the context of the Designated Goods and Services potential purchasers and other traders would not struggle to reach this conclusion.  In terms of trade mark 1739403 specifically, the ordinary signification

of the Trade Mark is a shop or online trader that sells medicinal hemp and/or other medicinal cannabis products.

1. I now turn to the second stage of the test for assessing the inherent adaption of a trade mark. I accept that there may be other ways to describe a product which contains medicinal cannabis/marijuana or hemp seed oil and a service that sells these types of goods. In this regard I note the following comments made in Austereo Ltd v DMG Radio (Australia) Pty Ltd8:

   [W]ords which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen  for  that purpose can properly be said to have some degree of inherent adaptation to distinguish: Re the Application of J P Coats Ltd (1936) 53 RPC 355 at 380. Distinctly, that a descriptive statement is commonly associated with a particular trader’s goods or services does not, in and of itself, mean that that statement is inherently adapted to distinguish that trader’s goods or services. It may, for example, be naturally applied to goods or services of that type by whomsoever manufactured or supplied:9

2. The manner in which other people are using the Trade Mark is helpful, but not determinative, in considering the second stage, that is, whether other traders would desire to use the word in relation to the Designated Goods and Services. A ‘Google’ search for ‘MEDIHEMP’ unqualified yields more than 21,000 results and the first few pages are referencing companies that offer hemp products for medicinal purposes, for example, an Austrian company that manufactures  and  sells  organic  hemp  seed  oils,  et  al,  under  the  stylised  trade  mark

   and a South African retailer trading under   which retails CBD oils (Cannabidiol – a compound found in the cannabis plant) among other medicinal goods.

1. I am satisfied that, given the Trade Mark consists of the prefix MEDI, a commonly used prefix in the pharmaceutical/alternative medicine market, and the word hemp which is an ingredient of the goods, it is the case that other traders would legitimately desire to use the Trade Mark to indicate their own similar goods or services. Indeed, I am satisfied that they are in fact doing so.

8 [2004] FCA 968, [38].

9 Ibid at 380.

1. The Applicant submits at [17] ‘the Examiner’s decision puts Australia out of line with the approach adopted in other English speaking jurisdictions, including New Zealand, the United States and the United Kingdom’10. Having determined that the ordinary signification of the Trade Mark is medicinal hemp and that other traders need to use the Trade Mark to indicate their own similar goods and services I cannot be swayed by the fact that Australia may be ‘out of line’ with the approach in other jurisdictions.

1. I find that the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the Designated Goods and Services from those of other persons and therefore a ground for rejection under s 41(4) applies.

Decision

1. I am satisfied that there is a ground for rejecting trade mark application numbers 1739402 and 1739403 under s 41(4) of the Act. In these circumstances where I have no evidence before me to consider, the Registrar must reject the application and, as delegate of the Registrar, I now reject trade mark application numbers 1739402 and 1739403.

Cristy Condon Hearing Officer

Trade Marks Hearings 23 November 2017

10 See, in class 5, New Zealand Trade Mark Application: 1037158; US Serial Number: 79182193; UK Application: WO0000001286919 and, in class 35, New Zealand Trade Mark Application: 1037158; US Serial Number: 79182193 and UK Application: WO0000001286919.