Red Energy Pty Limited

[2018] ATMO 66

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1746950 (9, 16, 35, 36, 37, 38, 39, 40, 41, 42) - EVENPAY- in the name of Red Energy Pty Limited.

Delegate:	Iain Campbell Thompson
Representation:	Applicant: Bill Ladas of King & Wood Mallesons, submissions via videoconference
Decision:	2018 ATMO 66 Trade Marks Act 1995 Section 41, trade marks to be considered as a whole - resort to dictionaries, consideration of trade mark as a whole, trade mark denotes a bill payment option, ground under subsection 41(3) for rejecting application. Consideration of evidence of usage – use at the priority date not such that Trade Mark signified only the Applicant’s services. Trade Mark rejected.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) Red Energy Pty Limited (‘the Applicant’) has filed the application to register the trade mark which appears below:

Application No:         1746950

Priority Date:             9 May 2013 (Divisional of application 15561060: ‘the Parent’)

Goods/Services:         Class 9: Directories (electric or electronic); apparatus for recording, transmitting and reproducing data; telecommunications hardware and software; computer software; computers; computer software for systems management; computer software for database management; computer software for energy management; downloadable publications; DVDs and CD-ROMs, including pre-recorded DVDs and CD-ROMs; recorded media containing energy management related information and data; digital and magnetic devices able to store and/or process information, including those containing integrated circuit cards and/or memory chips; gas meters; gasometers; gas testing instruments; gas apparatus in this class; gas monitoring instruments; gas testing instruments; electrical equipment for the generation and transmission of electricity; transformers (electricity); electric conductors; electric cables; meters; regulators; switches, monitors, controllers, filters, transformers, circuit breakers, and capacitor banks all for evaluating, monitoring, managing, controlling, supplying, converting, conditioning and testing energy operations, usage, power quality and energy efficiency; computer programmes and recorded software distributed online; electronic publications including those sold and distributed online

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed material and stationery; databases and directories in printed form

Class 35: Advertising and promotion services; business administration; office functions not including transcription of communications; organisation and management and supervision of customer loyalty programmes; organisation and administration services relating to the supply of benefits for customer loyalty and frequent buyer or frequent flyer schemes; organisation and management of customer loyalty programmes whereby customers obtain an discount on their utilities bills by obtaining these services; organisation and management of discount card loyalty schemes; sales promotion through customer loyalty programmes; compilation and provision of online directories; compilation of directories for publishing on the internet; retail and wholesale of industrial oils and greases, lubricants, fuels and illuminants; retail and wholesale of household and office appliances; retail and wholesale of electrical and gas supply equipment and appliances; business and commercial information services; business management and consultancy services; project management services; business management consultancy services in relation to energy usage, energy cost reduction, energy management and energy information management; retailing and wholesaling in relation to apparatus of lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes including air conditioning; production of home shopping programmes including production of advertisements and commercials for the promotion of industrial oils and greases, lubricants, fuels, illuninants [sic], household and office appliances, electrical and gas supply equipment and appliances; advertising and promotional services including on-line advertising and promotional services in relation to the promotion of industrial oils and greases, lubricants, fuels, illuminants, household and office appliances, electrical and gas supply equipment and appliances

Class 36: Issuing of tokens of value in relation to customer loyalty schemes; issuing of vouchers or tokens of value in relation to the supply of benefits for customer loyalty and frequent buyer schemes; financial services in this class including financial services relating to supplying and provision of energy, including electricity and gas; issue of charge and/or identification cards for use of pre-pay metering system; issue and redemption of tokens, vouchers and points; financing services including provision of prepay services; electronic payment services including provision of prepay services; electronic payment services including electronic fund transfer services and on-line transaction services, home banking, Internet banking, charge card, credit card, debit card, discount card and provision of payment, billing and fund transfer facilities including those utilising communications networks, such services being accessed by telecommunications equipment provided to customers for paying for use of energy, including electricity and gas; pre-payment metering system provided to customers for paying for use of energy, including electricity and gas; provision of sponsorship; all of the aforesaid being in relation to the supply of energy including electricity and gas; banking services; billing services

Class 37: Building construction; repair; installation services; construction, installation, maintenance and repair of domestic or commercial electricity or gas supply components; installation, maintenance and repair services in relation to the provision, supply and distribution of electricity and gas; installation, maintenance and repair services in relation to plant, apparatus and equipment used in the production, generation, distribution, transportation and supply of energy, including electricity and gas; electrical contracting services being installation, maintenance and repair; rental in relation to apparatus for drying and ventilating

Class 38: Telecommunication services; communications by any means; transmission of information on a wide range of topics, including online and over a global computer network; providing user access to a global computer network and online sites containing information on a wide range of topics; wireless broadcasting and communication services; provision of wireless application protocol services including those utilising a secure communications channel; Internet and web portal services

Class 39: Distribution and transportation of energy, including electricity and gas; supply of electricity and gas; consultancy services in relation to the distribution and transportation of energy; provision of energy including electricity and gas; provision of supply services in the energy industry, including electricity and gas

Class 40: Production and generation of energy, including electricity and gas

Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes; education services relating to the environment, including environmental protection, and to the production, generation, distribution, transportation, supply and usage of energy, including electricity and gas; education services and providing information and instruction in the management, efficient utilisation and conservation of energy and on the use of solar energy, wind power, sump oil, liquid petroleum gas, electricity, gas and of heat pumps; publication services in this class; electronic publication of information on a wide range of topics, including online and over a global computer network

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; creating indexes of online information including websites and information sources; advisory services in relation to the consumption and conservation of electricity and gas provided to residential, commercial and industrial consumers; research services relating to the environment, including environmental protection, and the production, generation, distribution and transportation of energy; research services relating to energy efficiency and conservation; design and project management services to develop and achieve energy savings opportunities; computer consultancy services; computer software and website development and design; software maintenance and support; information and consultancy services relating to all the aforesaid

(‘the Specification’)

Trade Mark:               EVENPAY

(‘the Trade Mark’)

1. In the course of satisfying the requirements of section 31 (that the Registrar examine and report on an application for registration), an examiner raised a ground for rejection in terms of section 41 of the Act that, in effect, at the priority date the Trade Mark denoted a particular payment option that was offered under the same expression by a number of traders and that the services of so doing are amongst those included in the Specification. This ground is in common with the examiner’s ground for rejection in relation to the Parent.

2. Having filed both evidence of use of the Trade Mark and submissions and reached an impasse, the Applicant requested a hearing.  That hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 9 April 2018.  At the hearing, which was via videoconference, the Applicant was represented by Bill Ladas of King & Wood Mallesons.

The Ground for rejection

1. The ground for rejection is under subsection 41(4) of the Act. Section 41 of the Act provides:

41Trade 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).

1. Although this decision is not a review of the examiner’s reports, it is useful to start with an outline of both the examiner’s research and the ground as stated in the first and a subsequent report.

2. The ground for rejection is one under subsection 44(4) based on the examiner’s research via the Google^® search engine on 12 September 2014 which found the following:

3. The research on the Parent revealed:

4. The ACTEWAGL website explains that EvenPay is one of the payment options available to customers:

   With EvenPay your bill payments are spread out over the entire year based on your history – so you’ll pay the same amount every month or fortnight. Every six months we’ll take another look to make sure your payments still cover your use and let you know if we recommend any changes.

   How does this work?

   The annual total of your ActewAGL account (including current account balance) is averaged out on a monthly or fortnightly basis and deducted from your nominated savings, cheque or credit card account.

   For example, if your annual bills total $1,200 and you want your direct debit payments deducted monthly through EvenPay, you will potentially pay $100 each month.

   We will assess your account every 6 months and if your annual usage varies, we may re-calculate your payment amount and adjust your deductions accordingly and we’ll notify you in writing of the changed amount.

5. The Icon Water website explains:

   Evenpay

   With EvenPay your bill payments are spread out over the entire year based on your history – so you’ll pay the same amount every month or fortnight. Every six months we’ll take another look to make sure your payments still cover your use and let you know if we recommend any changes. How does this work? The annual total of your ActewAGL and Icon Water account (including current account balance) is averaged out on a monthly or fortnightly basis and deducted from your nominated savings, cheque or credit card account. For example, if your annual bills total $1,200 and you want your direct debit payments deducted monthly through EvenPay, you will potentially pay $100 each month. We will assess your account every 6 months and if your annual usage varies, we may re-calculate your payment amount and adjust your deductions accordingly and we’ll notify you in writing of the changed amount.

6. I note as well that Synergy had, at the date of the examiner’s research on the Parent, recently stopped offering its customers a payment service under the expression EvenPay.  By implication, this had been an on-going service offered by Synergy up to the time it was cancelled.

7. On the basis of the above, the examiner expressed a ground of rejection in the following terms:

   Your trade mark is EVENPAY, which is the words EVEN and PAY joined together.

   The word EVEN is defined as “equal in quantity” while the word PAY is defined as “payment”.

   As a whole, the trade mark indicates that your goods and/or services allow for payments which are equal in quantity. For example, the trade mark indicates that you are providing software and financial services which allow the even payment of bills.

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

8. The examiner subsequently maintained the ground for rejection stating:

   The trade mark is the words EVEN and PAY joined together. Therefore, “even pay” is clearly “something nearly resembling” EVENPAY. The word EVEN is defined as “equal in quantity” while the word PAY is defined as “payment”. This directly describes a nature of your goods and services therefore is something other traders are likely to desire to use, without improper motive, in relation to their own goods and services.

   The ordinary signification of the words is that they describe equal payments. Market place use by other traders shows that this is not only likely to be needed by other traders, but has in fact been used by other traders.

   I have considered your submissions in relation to examples of the trade mark in use. The test for distinctiveness is based on whether other traders are likely to use the word, not whether they in fact are using it. I also note that this application has the same filing date as 1556106 therefore it is not clear why use in the market place at that time would no longer be relevant. However, the following links show the term is in current use:

   type="1">

   The application of section 41 in the light of both the current structure of section 41 and the decision of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[1] (‘Cantarella’) was discussed in Primary Health Care Ltd v Commonwealth of Australia[2] where Rangiah J (with Katzmann J and Greenwood J agreeing) stated:

   [1] ) [2014] HCA 48; (2014) 254 CLR 337.

   [2] [2017] FCAFC 174 at [222].

   There are a number of well-established principles concerning the interpretation and application of s 41(3) of the TMA. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 at [236], the Full Court summarised the 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].

1. Accordingly, it is appropriate to first consider the ‘ordinary signification’ of the Trade Mark.  It is, in my consideration, to fall into error to assume that the ‘ordinary signification’ of a word (or words) that form a trade mark is dictated only by the dictionary definition(s) of the word(s).  Consideration must be afforded to ‘the ordinary signification’ of the word, or words, and is 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’: Canterella.  This consideration thus includes how the word or words are used in the relevant trade and how they are likely to be understood by the public: the word or words may have taken on a particular significance in the trade or to the public other than those which appear in a dictionary.  These considerations may be illuminated by the dictionary definitions thereof but those dictionary definitions do not dictate the outcome of the considerations if the word or words have a particular denotation in the trade and/or amongst the public.

2. Here the Macquarie Dictionary defines the word ‘even’ as follows:

   even¹

   /ˈivən/ (say 'eevuhn)

   adjective 1.  level; flat; without irregularities; smooth: an even surface; even country.

   2.  on the same level; in the same plane or line; parallel: even with the ground.

   3.  free from variations or fluctuations; regular: even motion.

   4.  uniform in action, character, or quality: an even colour; to hold an even course.

   5.  equal in measure or quantity: even quantities of two substances.

   6.  same: letters of even date.

   7.  divisible by 2, thus, 2, 4, 6, 8, 10, and 12 are even numbers (opposed to odd, as 1, 3, etc.).

   8.  denoted by such a number: the even pages of a book.

   9.  exactly expressible in integers, or in tens, hundreds, etc., without fractional parts: an even kilometre; an even hundred.

   10.  exactly balanced on each side; equally divided.

   11.  leaving no balance of debt on either side, as accounts; square, as one person with another.

   12.  calm; placid; not easily excited or angered: an even temper.

   13.  equitable, impartial, or fair: an even bargain; an even chance.

   –adverb 14.  evenly.

   15.  Also, Poetic, e'en. still; yet (used to emphasise a comparative): even more suitable.

   16.  Also, Poetic, e'en. (used to suggest that something mentioned as a possibility constitutes an extreme case, or one that might not be expected): the slightest noise, even, disturbs him; even if he goes, he may not take part.

   17.  Also, Poetic, e'en. just: even now.

   18.  Also, Poetic, e'en. Archaic fully or quite: even to death.

   19.  Also, Poetic, e'en. indeed (used as an intensifier for stressing identity or truth of something): he is willing, even eager, to do it.

   20.  Also, Poetic, e'en. Archaic exactly or precisely: it was even so.

   –verb (t) 21.  to make even; level; smooth.

   –phrase 22. break even, to have one's credits or profits equal one's debits or losses.

   23. even out (or off),

   a.  to make even.

   b.  to become even.

   24. even steven(s), Also, even Steven(s), even stephen(s), even Stephen(s). Colloquial equal in some way: after this round of the comp, the teams are even stevens; we're about even steven in our contribution to household expenses.

   25. even up, to place in an even state as to claim or obligation; balance: to even up the score.

   26. get even, to get one's revenge; square accounts: *they would stop at nothing to get even. –albert facey, 1981.

   27. I can't even, Colloquial (an expression of exasperated anger, disappointment, etc.)

   [Middle English; Old English efen]
   –evener, noun
   –evenness, noun
   –evenly, adverb

   © Macquarie Dictionary Publishers, 2017

   [Stress added]

3. The Applicant submitted that in view of the multiplicity of denotations, the meaning of the Trade Mark is unclear.  However, as was observed by Dixon J in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd[3] in considering the meaning of a trade mark:

   But again I think that the question depends upon the use to which it is intended to put the word-mark. Doubtless a word is no less invented because, when it comes to be affixed to an article, its meaning is determined and perhaps explained. But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements.

   [Stress added]

   [3] [1946] HCA 15; (1946) 72 CLR 175.

4. Here the context of the Trade Mark in relation to the Specification includes, inter alia, account payment services.

5. Accordingly, whilst the Applicant submitted otherwise, the word ‘even’ does not admit of a plurality of meanings in the context of its usage within the trade and how it is understood by the public in relation to account payment services.  Therefore, it is the definition at item 5 within the Macquarie Dictionary entry which is relevant and the expression ‘even pay’ is a normal and natural way to denote a payment service made in even amounts.

6. Including Synergy, who announced the closure of the particular payment option, the examiners’ researches showed four Australian traders (and one overseas trader) who, at the time of those researches, used (or had used) the expression ‘Even Pay’ or ‘EvenPay’ to denote a method of paying utilities accounts so that the payments are evenly spread out in in approximately equal amounts in weekly, fortnightly, or monthly, intervals over a year.

7. The Applicant argues that:

   The Australian usages of the expression are of other traders using the expression as trade marks in relation to services – the need for them to explain the services, does, the Applicant submits, illustrate this;

   The post priority date usages are not relevant to considerations of inherent adaptation at the priority date;

   The overseas usage is not relevant since the situation must be considered in the context of the Australian marketplace.

8. The only Australian trader making an overt trade mark claim for the expression ‘Even Pay’ is the Applicant who similarly explains the services offered on its website with the following:

   What EvenPay™ is

   EvenPay™ is a great way to help smooth energy bills out over time. Instead of paying larger amounts less frequently, you pay the same amount in more frequent, but smaller, increments – helping to make paying your bill more manageable. We do this by estimating your payments to try and balance them with your estimated annual usage. The rates you pay for electricity and, or, gas, don’t change as a result of choosing EvenPay™.

9. The Applicant, and other traders, carry similar explanations of other payment options on their websites; for instance, the Applicant has a payment option called ‘Direct Debit’ with the explanation:

   Lots of people like the no-hassles approach to having direct debit with us. Fill in the online direct debit form or download and print and send the form, below. Alternatively, you can call our team on 131 806 and request a copy of the form to be sent to you.

10. The explanation of a payment method does not, therefore, give it a trade mark status.

11. It is not clear to me why, in the light of the above, the usages of EVENPAY by traders other than the Applicant should be considered to be trade mark use: the only truly distinguishing feature between the expression’s usage by the Applicant and those usages of other traders is that the Applicant claims it as a trade mark and other traders do not.

12. Concerning post priority date usages, I note that in Blu-Ray Disc Association[4] the Registrar’s delegate, Mr Wilson observed:

    While inherent adaptation is determined as at the filing date, I do not believe it follows that later events are entirely irrelevant to the determination. The capability of a sign to distinguish under subsection 41(3) and (5) has been described as a “fitness for a future role”[5]. In addition, Justice Sundberg made it clear in Chocolaterie Guylian N.V. v Registrar of Trade Marks[6] that:

    In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the “evaluative judgment” (see French J in Kenman Kandy [2002] FCAFC 273; 122 FCR 494 at [47]) required under s 41(3).

    Evidence of subsequent use is therefore admissible, but only to the extent that it supports an inference that the trade mark was capable of distinguishing at the priority date. The evidence would not be relevant to subsection 41(3) if all it demonstrated was a capacity to acquire its distinctiveness in the future, or that the Australian public has since been educated to view the mark as a ‘badge of origin’. That evidence is more appropriate for the application of subsection 41(5).

    Similarly, if a trade mark has become less distinctive over time, this subsequent use should also not be ignored. Descriptive use of the trade mark after filing would be of assistance in resolving the issue of whether there existed a limited inherent adaptation to distinguish at the lodgement date.

    General authority for taking into account post-filing events is not new. In Conde Nast Publications Pty Ltd v Virginia Taylor[7] Burchett J made the observation that:

    ...it is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.

    [4] [2011] ATMO 51; (2011) 93 IPR 273 at [17].

    [5] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579 at 586.

    [6] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [at 54].

    [7] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864; (1998) 41 IPR 505 (at 509).

13. The expression forming the Trade Mark is thus, prima facie, one which is required (and in fact used) in the normal course of trade, and without improper motive, by other traders to fairly and normally denote a bill paying service which is amongst those services included in the Specification.  In the circumstances of this matter, I consider that it may be taken as a ‘given’ that that is also how the expression forming the Trade Mark was understood by the relevant public at the priority date of the Trade Mark.

14. The matter, accordingly, falls for consideration under either subsection 41(3) or 41(4) of the Act and, as it denotes ‘the kind’ of service, may be appropriately considered under subsection 41(3).

15. With the foregoing in mind, I turn to a discussion of the Applicant’s evidence and submissions.

Evidence

1. The Applicant submitted declarations to support its submissions to the examiner in relation to both the Trade Mark and the Parent and relied upon these at the hearing:

   1556106 EVENPAY (9, 16, 35, 36, 37, 39, 39, 40, 41 and 42)

   Declaration of Iain Graham, Chief Executive Officer of the Applicant, made on 20 August 2015, with exhibits lG-1 to lG-16.

   1746950 EVENPAY (9, 16, 35, 36, 37, 38, 39, 40, 41 and 42)

   Declaration of Caroline Baker, employee of King & Wood Mallesons, made on 14 August 2017, with exhibits CB-1 to CB-3.[8]

   [8] This declaration exhibits, inter alia, that of Mr Graham.

2. The Applicant is an electricity supplier in Victoria, New South Wales and South Australia.  To judge by the confidential figures supplied by the Applicant, the major market for its services is in Victoria with very few customers in New South Wales and South Australia.

3. Mr Graham states that the Applicant ‘has offered the EVENPAY service since the company launched in 2004’ but does not provide any corroborative evidence in support for this.

4. Mr Graham also states that:

   Under the EVENPAY service, [the Applicant] allows its customers to make payments over a period of 12 months that effectively results in consistent billings on a weekly, fortnightly or monthly basis, rather than differing amounts.

   […]

   Given my role and my knowledge of the Australian market and [the Applicant’s] business in Australia, and the natural tendencies of staff and consumers to report the use of any third party mark that is similar to one or more of the RED Trade Marks or [the Trade Mark], I am confident that any such use by a rival in the marketplace would have been brought to my attention for appropriate action.

5. Ms Baker, in her declaration, provides examples of the use of the Trade Mark and confidential figures relating to the number of subscribers to the service offered thereunder.

The Applicant’s submissions

1. Mr Ladas submitted:

   The online materials relied on by the examiner in respect of the Parent have not been provided in the 1st and 2nd reports in respect of the Application. It may be that the Examiner is relying on materials provided during the course of examination of the Parent.

   At the general level, it is submitted that it is an unsatisfactory state of affairs for an Examiner not to provide the materials on which an examination objection is based, simply as a matter of procedural fairness and economy. These matters make up an essential part of the Applicant’s right to be heard.

2. I am not certain where these submissions lead – it is without doubt that the Applicant has the materials which were relied upon by the examiner in relation to both the Parent and the Trade Mark (and, indeed, the Applicant bases a part of its arguments for acceptance upon both of those materials).  It is difficult to understand how, when the Applicant possesses these materials, and the Trade Mark claims the priority date of the Parent, there could be any question about the procedural fairness afforded to the Applicant.

3. Mr Ladas went on to submit:

   […] proceeding on the basis that the materials provided during the course of examination of the Parent are relevant, it is submitted that they do not detract from the Applicant’s case, consisting as they do of:

   a. examples of the Applicant’s own use of EVENPAY – which supports acceptance;

   b. unsubstantiated third party use of EvenPay as a trade mark (eg. EvenPay payment option at [full URL not provided]) – this use is not relevant to section 41 for the reasons outlined in the Burrell & Handler text as outlined above;

   c. overseas uses from after the Priority Date that have nothing to do with the perceptions of consumers in the Australian market (eg. relating to the “City of Fort Collins”) – this material is irrelevant;

   d. various results relating to “even pay” taken out of context (eg. “I’m so poor I can’t even pay attention!”) – this material is irrelevant.

4. There is some difficulty with the Burrell & Handler passage referred to by Mr Ladas because it approaches the question via the concepts of ‘distinctiveness’ and ‘descriptiveness’ rather than the issue in question – that of ‘inherent adaptation to distinguish’. As the Notes to subsection 41(4) record, ‘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; or, the time of production of goods or of the rendering of services’. The word ‘descriptive’ is not mentioned within section 41 or its Notes. As Unilever Australia Ltd v Societe Des Produits Nestlé S.A.[9] shows, a trade mark might not be in the slightest bit descriptive of the goods concerned but yet lack in any inherent adaptation to distinguish those goods.  To take an example: in relation to hotel or restaurant services, does the expression ‘Five Star’ describe in any way the service being offered?  One cannot deduce anything from the expression about the exact nature of the service being offered.  Rather than being ‘descriptive’ of hotel or restaurant services, the expression ‘Five Star’ denotes the quality of the service, food, accommodations, etc that one might expect from such establishments and for that reason lacks any inherent adaptation to distinguish in respect of those services.

   [9] [2006] FCA 782; 154 FCR 165; (2006) 69 IPR 255.

5. It follows that an ‘ordinary signification’ of a trade mark may not be a descriptive one and yet that trade mark may lack inherent adaptation to distinguish.  The words ‘distinctiveness’ and ‘descriptiveness’ used within the Burrell & Handler passage relied upon by Mr Ladas thus address only a part of the question facing a decision maker.

6. There are four Australian traders who used the expression ‘Even Pay’ or ‘EvenPay’ in relation to their billing services at or before the times of the examiners’ researches.  In the trade (which is in effect those suppliers who bill household utilities) there are not a great number of utilities suppliers, so the percentage of traders using the expression ‘Even Pay’ is not particularly small in this context.  Additionally, the Applicant’s submissions that the use of the expression ‘Even Pay’ by other Australian traders are trade mark usages would have more teeth if they were more obviously trade mark use and, as Mr Graham mentions, the Applicant had taken ‘appropriate action’ in relation to such usages.

7. As I have intimated, the ground lies under subsection 41(3) as the Trade Mark indicates ‘the kind’ of account paying service. The extent of the use of the Trade Mark by the Applicant, which is largely limited to Victoria, without particularly large numbers of customers availing themselves of the service at the priority date, indicates that the Trade Mark had not come to signify only the services of the Applicant and had displaced its denotation of a particular kind of bill paying service.

Disposition

1. I turn to consideration of the registrability of the Trade Mark in relation to Classes of goods and services in the Specification other than Class 36.

2. In Apple Inc v Registrar of Trade Marks[10] Yates J observed:

   The parties nevertheless made brief submissions in relation to the registrability of the mark in respect of the designated services in Classes 38 and 42, separately from the application for registration in respect of the designated services in Class 35.

   Apple submitted that APP STORE “does not inherently refer to the Class 38 and 42 services ...”. It pointed to the references in the specification to “telecommunication services” and “providing consulting services and technical trouble shooting support for computer software”. The designated services in Classes 38 and 42 are, of course, more broadly specified than captured by those two examples.

   The Registrar submitted that each of the designated services in Classes 38 and 42 are services that a customer might reasonably expect to obtain from a supplier of apps of an online store. In particular, the Registrar submitted:

   They include services that are within the purview of the Class 35 services, as after-supply services, maintenance, repair, technical and like services (“help”), and as services that are otherwise similar to the provision of the Class 35 retail services. They would reasonably be understood as being offered by or under the aegis of the same supplier. As such, the term APP STORE well describes the provision of those services in the online (wired or wireless) environment.

   The Registrar’s submission reflects the finding of the delegate quoted at [63] above.

   I do not propose to consider this aspect of the trade mark application as if it were a divisional application for the designated services in Classes 38 and 42. Within the context of the present application, I am persuaded that the designated services in Classes 38 and 42 do cover services that one might reasonably expect an “app store” to provide, especially where the apps are provided to the customer by downloading them using the Internet, which is undoubtedly the way in which Apple has delivered its App Store service.

   I should make it clear that, quite properly, the Court has not been called upon to tease out from Apple’s specification those services in Classes 38 and 42 that might conceivably be registrable from those that are clearly not registrable. However, taking the two examples brought forward by Apple (see [234] above), I am satisfied that each can be seen as covering an aspect of operating an “app store”, such as Apple’s App Store . Thus, APP STORE, when applied to those services, is simply descriptive of the kinds of services that can be supplied through or might be involved in operating an “app store”.

   [10] [2014] FCA 1304; (2014) 227 FCR 511; (2014) 322 ALR 1; (2014) 109 IPR 187 at [234].

1. The situation before me is somewhat analogous.  In its submissions the Applicant stated:

   In the meantime it is submitted that it is clear – notwithstanding the reference to software in the 1st report - that EVENPAY does not in its ordinary signification directly describe (for example):

   Class 9 Computer software; electronic publications including those sold and distributed online etc.

   Class 16 Paper … etc.

   Class 35 Advertising and promotion services etc.

   Class 37 Building construction etc.

   Class 38 Telecommunications services etc.

   Class 39 Distribution and transportation of energy etc.

   Class 41 Education etc.

   Class 42 Scientific and technological services etc.

2. The Applicant has not made submissions about these ancillary goods and services in Classes 9, 16, 35, 37, 38, 39, 40, 41, and 42 beyond those submissions at paragraph [43], above, and its assertion that the Trade Mark is not ‘directly descriptive’ of those ancillary goods and services. As previously discussed, the issue under section 44 is not one of ‘direct description’ – it is whether or not the Trade Mark is inherently adapted to distinguish the goods and services within the Specification from those of other traders. It is, in effect, in terms of Note 1 to subsection 41(4), ‘the kind’ of service.

3. I observe that registration of the Trade Mark in respect of, for example, electronic publications, printed material, advertising services, supply and distribution of electricity and gas, educational services, and advisory services in Class 42 would result in ‘the impairment’[11] of the right of traders other than the Applicant to promote their similar bill paying services, distribute materials concerning their ‘Even Pay’ service, and educate the public about the service by reference to the expression ‘Even Pay’ for the sake of its ordinary meaning.  As a further example, if the Trade Mark were registered for software research, design, and software (goods), that would impair the right to use the Trade Mark by other traders for the sake of its ordinary meaning in respect of their similar goods and services offered in connection with their Even Pay services or the development thereof.

   [11] Cantarella at [59].

4. In these circumstances it is appropriate that the Registrar reject the application in its entirety which, as one of her delegates, I now do.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
9 May 2018