Richland Express Pty Limited
[2024] ATMO 232
•29 November 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application numbers 2280018 (classes 34 and 35) - RICHLAND EXPRESS - and 2280015 (classes 34 and 35) - RICHLAND BRANDS - both trade marks being in the name of Richland Express Pty Limited
Delegate: | Benjamin Goldsworthy |
Representation: | Applicant: Sonia Stewart, of Counsel, instructed by LegalVision ILP Pty Ltd |
Decision: | 2024 ATMO 232 Trade Marks Act 1995 (Cth) – s 33 – ground of rejection under s 41 considered – ordinary signification refers to a geographical location overseas – no inherent adaptation to distinguish – evidence not sufficient – s 41 ground for rejection established – trade marks rejected. |
Background
This matter concerns applications made by Richland Express Pty Limited (‘Applicant’) under the Trade Marks Act 1995 (Cth) (‘Act’)[1] for the registration of trade marks (‘Trade Marks’) with the following details:
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
Trade mark number: 2280015
Filing date: 5 July 2022
Trade mark: RICHLAND EXPRESS
Specification: Class 34: Articles for smokers; Ashtrays for smokers; Battery powered lighters for smokers; Holders for cigars; Hookahs; Apparatus for filling cigarettes; Apparatus for rolling cigarettes; Apparatus for self rolling cigarettes; Apparatus for stuffing cigarettes; Books of cigarette papers; Cigarette cases; Cigarette filters; Cigarette holders; Cigarette lighters, other than for use in motor vehicles; Cigarette paper; Cigarette paper tubes; Cigarette paper tubes incorporating filter tips; Cigarette tips; Cigarette tubes without a filter; Cigarette wrappers; Cigarettes; Electrical cigarette lighters (smokers’ requisites); Electronic cigarette lighters; Electronic cigarette liquid [e-liquid]; Electronic cigarettes; Flavorings, other than essential oils, for use in electronic cigarettes; Flavourings, other than essential oils, for use in electronic cigarettes; Holders for cigarettes; Liquid solutions for use in electronic cigarettes; Papers for cigarettes; Raw snuff; Herbs for smoking; Smoking herbs, other than for medical purposes; Substances for smoking (none being for medicinal or curative purposes); Tips of yellow amber for cigar and cigarette holders; Absorbent paper for tobacco; Flavorings, other than essential oils, for tobacco; Flavourings, other than essential oils, for tobacco; Holders for tobacco; Leaf tobacco; Cigarette tobacco; Cigarettes containing tobacco substitutes, not for medical purposes; Raw tobacco; Smoking tobacco; Tobacco; Tobacco boxes; Tobacco cases; Tobacco filters (holders); Tobacco free cigarettes, other than for medical purposes; Tobacco pouches; Tobacco smoke filters; Tobacco substitutes (other than for medical purposes); Vaporisers (vaporizers) being smokers’ requisites (‘Designated Goods’)
Class 35: Presentation of goods on communication media, for retail purposes; Online retail services; Retail services; Retail services for goods (by any means); Wholesale services (‘Designated Services’)
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Owner: Richland Express Pty Limited
Trade mark number: 2280018
Filing date: 6 July 2022
Trade mark: RICHLAND BRANDS
Specification: Class 34: Articles for smokers; Ashtrays for smokers; Battery powered lighters for smokers; Apparatus for filling cigarettes; Apparatus for rolling cigarettes; Apparatus for self rolling cigarettes; Apparatus for stuffing cigarettes; Books of cigarette papers; Cigarette cases; Cigarette filters; Cigarette holders; Cigarette lighters, other than for use in motor vehicles; Cigarette paper; Cigarette paper tubes; Cigarette paper tubes incorporating filter tips; Cigarette tips; Cigarette tubes without a filter; Cigarette wrappers; Cigarettes; Electrical cigarette lighters (smokers' requisites); Electronic cigarette lighters; Electronic cigarette liquid [e-liquid]; Electronic cigarettes; Flavorings, other than essential oils, for use in electronic cigarettes; Flavourings, other than essential oils, for use in electronic cigarettes; Herbs for smoking; Holders for cigarettes; Holders for cigars; Hookahs; Liquid solutions for use in electronic cigarettes; Papers for cigarettes; Raw snuff; Smoking herbs, other than for medical purposes; Substances for smoking (none being for medicinal or curative purposes); Tips of yellow amber for cigar and cigarette holders; Absorbent paper for tobacco; Cigarette tobacco; Cigarettes containing tobacco substitutes, not for medical purposes; Flavorings, other than essential oils, for tobacco; Flavourings, other than essential oils, for tobacco; Holders for tobacco; Leaf tobacco; Raw tobacco; Smoking tobacco; Tobacco; Tobacco boxes; Tobacco cases; Tobacco filters (holders); Tobacco free cigarettes, other than for medical purposes; Tobacco pouches; Tobacco smoke filters; Tobacco substitutes (other than for medical purposes); Vaporisers (vaporizers) being smokers' requisites (‘Designated Goods’)[2]
Class 35: Presentation of goods on communication media, for retail purposes; Online retail services; Retail services; Retail services for goods (by any means); Wholesale services (‘Designated Services’)
[2] As there are only minor differences in the language of the specifications in each of the applications, I refer to the goods specified in each of the applications for the Trade Marks both as the ‘Designated Goods’ throughout these written reasons.
The Trade Marks were each examined under s 31 and the examiner raised a ground for rejection under s 41. The basis for the ground of rejection was that each Trade Mark has ‘as its main feature, RICHLAND. This is the name of a city in the USA’ and other traders, ‘are likely to need to use it in relation to their goods and/or services in the normal course of trade. This is because traders commonly use place names to indicate the origin of their goods and services.’[3] Further, ‘BRANDS and EXPRESS are clearly descriptive words which do not add to the distinctiveness of the trade mark. They are clearly not part of the name of the geographical location. EXPRESS is a commonly used term for goods and services being made available quickly and BRANDS describes a type of product manufactured by a particular company under a particular name.’
[3] The examination reports for each of the Trade Marks were materially the same.
In response, the Applicant provided various submissions and evidence. However, the examiner maintained their position and the Applicant ultimately requested to be heard. I heard the matter by teleconference on 17 June 2024. Sonia Stewart, of Counsel, appeared on behalf of the Applicant instructed by Graci Chen and Sarina Cali from LegalVision ILP Pty Ltd.
An aspect of procedural fairness requires that an applicant be notified of the material relied upon in reaching a decision about a ground of rejection. To ensure the Applicant had a proper opportunity to be heard, on 29 August 2024 I provided the Applicant with copies of examination research documents produced by the examiner for each of the Trade Marks and allowed additional time for the filing any additional written submissions or evidence. On 11 September 2024 the Applicant filed additional written submissions and an additional declaration.
While it has been necessary to look at the examination reports and research documents to understand the issues raised, this is not a review of the examination. My role is to consider the applications to register the Trade Marks afresh. I am to decide the matter as a delegate of the Registrar of Trade Marks.
Evidence
The Applicant provides the following declarations in respect of both Trade Marks:
- a declaration of James Murray, Chief Executive Officer of the Applicant, dated 18 December 2023, with Annexures JM-1 to JM-9 and Confidential Annexures JM-10 to JM-13 (‘Murray-1’);
- a declaration of James Murray, dated 12 June 2024, with Annexures JM-14, JM-16 and JM-21 and Confidential Annexures JM-15, JM-17 to JM-20, JM-22 (‘Murray-2’);
- a declaration of Sarina Cali, dated 11 September 2024, with Annexure SC-1 (‘Cali’).
Across two declarations, James Murray declares that the first use of RICHLAND EXPRESS in relation to the Designated Goods and Designated Services occurred in 2007 and the first use of RICHLAND BRANDS in December 2019. Where it purports to offer examples of historical use of the Trade Marks, the Applicant’s evidence relies on a variety of words and sentences which include the word ‘Richland’, such as in the words ‘Richland Express’ or ‘Richland Brands’ and the corporate name ‘Richland Express Pty Limited’.
Much of the evidence also shows use of either of the following logo trade marks:
(‘Richland Express Logo’) (‘Richland Brands Logo’)
Murray-1
I now summarise the contents of Murray-1. Annexure JM-3 to Murray-1 consists of screen captures of the Opponent’s website (‘Express Website’), the earliest being dated 12 September 2009. These show the Richland Express Logo, the words ‘Richland Express’ and the Express Website domain address in relation to cigarettes, roll your own tobacco, cigars and smoking accessories. Under the heading ‘Merchandise’, the screen capture also mentions ‘sourcing and manufacture of products from China, including merchandise, retail impulse, Display and POS’. Other screen captures of the Express Website, dated 30 May 2010, 19 February 2011, 9 April 2013 and 27 February 2015 show the Richland Express Logo and the words ‘Welcome to Richland Express’. A screen capture of the Express Website, dated 13 June 2016, shows the Richland Express Logo and the words ‘website coming soon’. Other screen captures of the Express Website are dated 9 October 2017, 18 March 2018 and 19 December 2019 appear to show the Richland Express Logo in relation to unspecified tobacco goods.
A screen capture of the website (‘Brands Website’) dated 9 August 2020 bears the Richland Brands Logo in relation to unspecified goods or services. Screen captures of the Brands Website dated 27 October 2020, 29 October 2020, 25 February 2021, 12 March 2022 and 26 October 2023 all show the Richland Brands Logo and the words, ‘helping tobacco retailers succeed by treating them the Richland way’. Another screen capture dated 2 March 2022 contains, for example, the words ‘Richland Brands office will be closed for business from…’ and the Richland Brands Logo. Screen captures of the Brands Website, dated 1 March 2023 and 18 October 2023, show the Brands Website domain address and the Richland Brands Logo in relation to unspecified goods or services. Confidential Annexure JM-4 to Murray-1 shows website metrics of the monthly ‘visits for the last 12 months’ for the Brands Website.[4]
[4] Murray-1, [15].
Various examples of internal emails which use the domain address of the Brands Website are also shown at Confidential Annexure JM-4, dated in January and February 2020. Undated photographs of the Applicant’s premises show the words ‘Richland Brands’ and the Richland Brands Logo on signs, at Annexure JM-5. Confidential Annexure JM-6 to Murray-1 contains various other internal documentation which mentions the words ‘Richland Express Pty Limited’ and the Richland Express Logo. An internal letter to the Applicant’s staff, dated 16 December 2020, displays the Richland Brands Logo in the header and refers to the ‘Richland team’ and, under the name of the sender, signs off with the words ‘Richland Brands’ and mentions the Brands Website. Also in Confidential Annexure JM-6 to Murray-1 is a ‘National Price List’ (‘Price List’), apparently issued 24 February 2022, which shows the Richland Brands Logo at the top of each page, whilst listing various individual brands of cigarettes, tobacco and cigars under several names including ‘Reef’, ‘Harvest’, ‘MUZA’, ‘Manitou Organic’, ‘Jet Clove’ and ‘Tycoon Filtered Cigars’. At the bottom of the Price List is the address for the Brands Website. A spreadsheet, dated 20 August 2018, shows the Express Website address and Richland Express Logo, listing a similar collection of brands of cigarettes, tobacco, cigars and papers as in the Price List. The level of distribution of this document is not specified. Various other internal emails show the Richland Brands Logo and Brands Website address, including one email chain, dated in January 2020, which mentions changes to be made to websites of the Applicant noting that, ‘[w]e have been Richland Brands for some time now’.
At Confidential Annexure JM-7 to Murray-1 are copies of five email chains, providing Price Lists sent to what appear to be retailer customers of the Applicant. One email, dated 24 February 2022, states, ‘find attached Richland price list’ and has as its subject line, ‘Richland Price list & Promotional Advice’. This email refers to the Price List dated 28 February 2022. Another two emails to a retailer dated 26 February 2019 use the words, ‘important information regarding Richland’s position in the market’ and ‘…Richland will continue with their current price list…’.
At Annexure JM-8 to Murray-1 is a newspaper article from the Sydney Morning Herald, titled ‘A hard sell in a dark market’, dated 24 April 2010, which states that,
‘Richland Express has broken industry taboos by creating cheap house brands on contract for sale exclusively by Coles. The directors say that in a dark market - one without advertising - cigarettes brands thrive or wither by the support of the retailer. Richland Express is the only new company in recent times to have won shelf space alongside the big three existing companies’.
Annexure JM-9 shows an online news article originating from the New Zealand website dated 20 March 2010, which also mentions Richland Express.
Murray-1 declares that there have been sizeable numbers of customers serviced every year since 2011 to 2023 (January to October). Confidential Annexure JM-10 to Murray-1 shows the ‘annual revenue figures for Goods and Services provided under the Marks from 2010 to 2022.’[5]
[5] Murray-1, [25].
Eleven tax invoices issued to tobacconist retailers are shown at Confidential Annexure JM-11 to Murray-1, all of which contain the Richland Express Logo in the header and usually the words ‘Richland Express Pty Ltd’. These also mention the domain address of the Express Website. These are dated 13 January 2009, 10 March 2010, 9 March 2011, 8 March 2012, 7 March 2013, 6 March 2014, 5 March 2015, 4 March 2016, 3 March 2017, 2 March 2018 and 1 March 2019. Confidential Annexure JM-12 to Murray-1 consists of copies of five tax invoices issued to retailers showing the Richland Brands Logo in the header usually with the words ‘Richland Express Pty Ltd’ dated 13 December 2019, 15 October 2020, 5 November 2021, 14 February 2022 and 13 September 2023. All the invoices are for roll your own, tobacco, cigars and/or cigarettes and some are issued to large retailers. The volume of Designated Goods sold is relatively low and the tax invoices are issued to retailers located in New South Wales, Victoria, Queensland, Western Australia, South Australia and the Australian Capital Territory.
Confidential Annexure JM-13 consists of the same Price List dated 20 August 2018 which is at Confidential Annexure JM-5. Other Price Lists also show the Richland Brands Logo and Brands Website address in relation to cigarettes, cigars and roll your own tobacco, each issued 11 February 2020, 12 January 2021, 5 May 2022, 28 June 2020 or 23 February 2023.
Murray-2
Confidential Annexure JM-15 to Murray-2 includes website metrics of the monthly ‘visits for the last 12 months’ for the Brands Website[6] with various undated screen captures of the Brands Website. Also included are dated screen captures of the Brands Website including a screen capture, dated 1 March 2023, showing the Richland Brands Logo and the words, ‘helping tobacco retailers succeed by treating them the Richland way’. Another screen capture dated 18 October 2023, refers to the history of the Applicant and as it being the fastest growing tobacco company in Australia. Another screen capture of the Brands Website, dated 7 March 2024, shows the words ‘[o]ur products’ for ‘Richland Brands’, referring to ‘tobacco products’. In addition to this, there are a number of undated screen captures of the Brands Website.
[6] Murray-2, [15].
Undated photographs, at Annexure JM-16 to Murray-2, of the premises of the office of the Applicant show ‘Richland Brands’ is listed as the occupier of an office in a building. Undated business cards of employees also mention the Applicant’s Website at Annexure JM-21 to Murray-2. These show the Richland Brands Logo and the Brands Website domain address.
The breakdown of customers and corresponding turnover figures for January 2023 – May 2024 appear at Confidential Annexure JM-17 to Murray-2.
Confidential Annexure JM-18 to Murray-2 consists of eight tax invoices showing both the Richland Brands Logo and words ‘Richland Express Pty Limited’. These show the wholesale of tobacco, cigarettes, cigars and other tobacco accessories such as filters, dated 11 August 2023, 20 December 2023, 22 December 2023, 24 January 2024, 14 March 2024, 21 May 2024 or 24 May 2024.
Confidential Annexure JM-19 to Murray-2 is ‘a table outlining the sales figures and the corresponding number of [Stock Keeping Units] sold in Australia’.[7] These sales figures indicate the sales volume for the years 2010 to 2023, using the words ‘packets’ and ‘pouches’. The numbers are substantial in every year. There is a broad statement in Murray-2 that, ‘every one of the [Stock Keeping Units] sold and which appears in… Confidential Annexure JM-19 included either RICHLAND EXPRESS or RICHLAND BRANDS as the brand name of the trader…’.[8] Murray-2 indicates that the number of units sold indicate individual Stock Keeping Units sold by the Applicant in Australia, namely: (a) packets or cartons of cigarettes; (b) pouches or cartons of pouches of roll your own tobacco; and (c) packages containing single or multiple cigars.[9]
[7] Murray-2, [12].
[8] Murray-2, [15].
[9] Murray-2, [12].
Letters dated in April 2024 at Confidential Annexure JM-20 executed by senior employees of three prominent retailer groups of cigarettes and tobacconists. Each declares that their business has conducted ongoing business with the Applicant, ‘trading as Richland Brands’, for more than 15 years across numerous retail locations across Australia. No specific mention of particular Designated Goods or Designated Services is made in any of these letters.
Various business materials and internal documentation including copies of business cards are at Annexure JM-21 to Murray-2, which show the Brands Website address and email address. Annexure JM-21 also includes a Price List, issued 28 February 2024, showing the domain address of the Brands Website address and the Richland Brands Logo in relation to cigarettes, cigars and roll your own. Also appearing are various examples of cigarette packaging, single cigar packaging, cigar tins, and loose tobacco pouches (‘Packaging’). I extract examples of the Packaging at Schedule 1 to these written reasons.
Eighteen examples of email chains between officers of the Applicant and its customers and suppliers are at Confidential Annexure JM-22 to Murray-2. There is roughly one email chain for every year, dated in the years 2010 to 2024, and they show either, the words ‘Richland Express Pty Limited’, the Richland Brands Logo, the Richland Logo and the addresses of the Brands Website or the Express Website. All of these are in relation to cigarettes and/or tobacco. One email, dated in 2016, shows a major retailer’s spreadsheet specifying ‘Richlands’ under the heading for a column titled ‘Who is Supplier?’. Another email to a retailer customer from an employee of the Applicant, dated 30 August 2023, refers to a ‘Richland Price List’. Murray-2 declares that the Trade Marks, ‘also feature on our call script when consumers call our offices, where our employees answer the telephone with, “Hi, you have reached Richland Brands, how can I help?”. Prior to 2019, I recall that employees were instructed to say, “Hi, you have reached Richland Express, how can I help?”’.[10]
[10] Murray-2, [19].
Cali
Annexure SC-1 to Cali is the significant part of Cali. SC-1 consists of an extract of a Wikipedia Article concerning the location known as Richland, in the United States of America. It shows that as of 2020, Richland had a population over 60,000 and it is near two other cities (Pasco and Kennewick) and as such the overall area is sometimes also known as the ‘tri-cities’. Richland is said to be known for technology and research facilities and as the location of a former nuclear reactor site. Richland also has agriculture, including some internationally renowned wines. Richland is located at the confluence of two rivers and is near the Columba Basin which is said to have excellent agriculture. Richland also said to be host to food processing facilities of a major food production company. I have noted that throughout the Wikipedia article there is no mention of tobacco or tobacco goods as having been produced in Richland or nearby regions.
I otherwise refer to the evidence throughout these written reasons where relevant.
Consideration
Section 41
Section 41 provides a possible ground for rejection under s 33 as follows:
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).
In deciding whether a s 41 ground of rejection exists, I must ask whether the Trade Marks are capable of distinguishing the Designated Goods and Designated Services as those of the Applicant from those of other traders. If I am satisfied that the Trade Marks are not so capable, s 41 requires that the Trade Marks be rejected.
Relevant to the assessment of capability to distinguish is whether the Trade Marks have ‘inherent adaptation’ to distinguish the Designated Goods and Designated Services from similar goods and services offered by other traders. If the Trade Marks have ‘sufficient inherent adaptation to distinguish’, a s 41 ground for rejection does not exist. However, if I am satisfied that the Trade Marks do not have sufficient inherent adaptation to distinguish, the next question will be whether they have any inherent adaptation to distinguish. If the Trade Marks have no inherent adaptation, they must be rejected only if I am satisfied that at their respective filing dates they did not in fact so distinguish, taking account of the extent of the Applicant’s use.[11] If the Trade Marks have some inherent adaptation to distinguish, they should be rejected only if I am satisfied that, after considering the level of inherent adaptation of the respective Trade Marks, the extent of the Applicant’s use, and other relevant circumstances, the Trade Marks did not or would not distinguish the Designated Goods and Designated Services.[12] In deciding the matter I must: (1) identify the ordinary signification of the trade mark, if any; and (2) determine the desire of other traders to legitimately make use of the trade mark for the sake of its respective ordinary signification in respect of similar goods and services.[13]
[11] Section 41(3).
[12] Section 41(4).
[13] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).
Signs that are geographical references have a long history of consideration under s 41 and its predecessors; this includes consideration of those which refer to overseas locations.[14] Signs which reference geographical locations are not automatically unregistrable simply because a place might exist with the name of the relevant trade mark.[15]
[14] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 (Kitto J) (‘Clark Equipment’) for MICHIGAN; Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184 (Kenny, Gyles and Allsop JJ) for COLORADO; Oxford University Press v Registrar of Trade Marks [1990] FCA 175 (Gummow J) (‘Oxford’) for OXFORD; Blount Inc v Registrar of Trade Marks [1998] FCA 440 (Branson J) for OREGON.
[15] Re Magnolia Metal Co’s Trade Mark (1897) 14 RPC 621 (CA) (UK), 627-628 (Lindley, Lopes, and Rigby LJJ).
In Clark Equipment Company v Registrar of Trade Marks (‘Clark Equipment’), Kitto J stated that whether a trade mark consisting of a word is ‘adapted to distinguish’ certain goods 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, 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[16]
Ordinary signification
[16] Clark Equipment (n 14) [5]. This was also referenced in Cantarella (n 13) [26].
The ordinary signification is the ordinary meaning of the words RICHLAND EXPRESS or RICHLAND BRANDS to persons in Australia who purchase, consume or trade in the Designated Goods and Designated Services (‘Relevant Persons’).
The Applicant submits that even if Richland is a location in the United States of America it does not have an ordinary signification and notes that the test should be considered from the perspective of an Australian consumer or trader. It submits that there is no evidence that Australian consumers or traders would be aware of the location.
The word EXPRESS means to operate or deliver goods or services at a high speed or pace. Murray-1 itself notes that there were concerns within the Applicant, ‘as to whether, from a branding perspective, the word EXPRESS may give consumers the conceptual impression of being associated with logistics and freight’.[17] The word BRANDS refers to one or more signs or labels placed on or around goods or services to signify a trade origin. I consider the additional words BRANDS and EXPRESS to have a merely descriptive impact on the overall Trade Marks.
[17] Murray-1, [7].
The evidence confirms that Richland is a moderately sized location in the state of Washington in the United States of America.[18] It also appears to be known to have excellent agriculture, including internationally known viticulture.[19] Overall the evidence suggests that at Richland there is industry focused on technology and research, agriculture and the processing of agricultural goods.[20]
[18] Annexure SC-1 to Cali.
[19] Ibid.
[20] Ibid.
I also note that the Court in Henley Arch Pty Ltd v Henley Constructions Pty Ltd[21] had no difficulty finding that the name of the Australian suburb HENLEY had a relevant ordinary signification, and that ultimately it had no inherent adaptation to distinguish various services, despite the suburb being a relatively unknown small suburb which had a population of only 478 persons.
[21] [2021] FCA 1369 (Anderson J).
Whilst Richland is located in the United States of America, I am satisfied that the words RICHLAND BRANDS refer to Designated Goods and Designated Services originating from the geographical location of Richland. Further, I am satisfied that the words RICHLAND EXPRESS refer to quickly available Designated Goods and Designated Services from Richland.
Desire of other traders to legitimately use the Trade Mark
I must now consider the desire of other traders to legitimately make use of the Trade Marks to refer to their similar goods and services for the sake of the ordinary signification of the Trade Marks. The Applicant asserts that other traders are not likely to desire such use of the Trade Marks.
Reflecting the difficulties that trade marks which consist solely of geographical signification face, in Clark Equipment, Kitto J stated:
… the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if the goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods... [22]
[22] Clark Equipment (n 14) [7] (Kitto J) (emphasis added).
Similarly, in Oxford University Press v Registrar of Trade Marks, Gummow J stated:
The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[23]
[23] Oxford (n 14) [41] (emphasis added). This point was also emphasised in INDITEX, SA [2024] ATMO 11, [11] (Hearing Officer Smith).
The evidence reflects that the Richland has over 60,000 residents.[24] There is agriculture noted as occurring in the area as early 1942 and it is placed at the confluence of the Yakima and Columbia Rivers. There also appears to be industry, including a nuclear reactor. Richland is described as having technology, agriculture and processing facilities for agricultural products in Annexure SC-1 to Cali. Richland is located in the middle of other areas known as Benton City, Pasco and Kennewick. The Columbia Basin is said to grow excellent agriculture and Richland is said to produce internationally renowned viticulture. It would not be unreasonable to suppose that the Designated Goods and Designated Services can be produced or offered from Richland.[25] Nothing suggests that it would be fanciful for them to be produced or offered from there,[26] or that the idea of using that name in relation to the Designated Goods and Designated Services in the circumstances would simply not occur to another trader.[27] There are no clear barriers in the form of industrial requirements or other practical impossibilities, to the manufacture of the Designated Goods in Richland. I note that tobacco goods are produced from a variety of locations. The Applicant itself produces its goods in places such as Germany and Luxembourg. The Designated Goods and Designated Services are neither especially uncommon, highly specialised nor technical in terms of their production. The Designated Services all appear to be the types of services which may be delivered from anywhere in the world as they are specified in the Applicant’s Services in broad terms, for example being ‘online’ and ‘by any means’.
[24] Examination Research, (dated 30 June 2022) 3.
[25] Cf “Tijuana Smalls” Trade Mark* [1973] RPC 453 (Graham J) which concerned the sign TIJUANA SMALLS in relation to cigars, where the Court found that ‘Tijuana’, a location in Mexico, was an ‘arid area which is quite unsuitable for growing tobacco’, where ‘little agricultural activity is carried on’.
[26] Yorkshire Copper Works Limited's Application for a Trade Mark [1954] 71 RPC 150 (Lord Asquith) where the Court noted the example in the town of ‘MONTE ROSA’ (in Switzerland) in relation cigarettes (and ‘NORTH POLE’ in relation to bananas). See also, In the matter of Trade Mark Applications by Cavalla Ltd [1965] AOJPTMD, Vol 36, No 6, 246-249 (Assistant-Registrar Ashton) which concerned an application for ST MORITZ, the name of a luxury location in Switzerland, in respect of class 34 tobacco, cigarettes and cigars. The delegate, in refusing the application, noted that persons could produce cigarettes in the town at some point in the future.
[27] Clark Equipment (n 14) [6].
Whilst I do not have any specific evidence before me that tobacco is commercially grown in Richland, neither did the Court in Clark Equipment have evidence that the relevant goods were manufactured in the State of Michigan when refusing registration of the trade mark MICHIGAN.[28] I consider it reasonable to suppose that the Designated Goods and Designated Services may be offered from, or manufactured at, the location of Richland in the future, if not already. I consider it likely that other traders would legitimately desire use of something nearly resembling the Trade Marks, using the term Richland for the sake of its ordinary signification as a source of tobacco or related products.
[28] Clark Equipment (n 14) [8].
After considering the likelihood that other traders may desire the use of the Trade Marks for the sake of their respective ordinary significations, I find that the Trade Marks have no inherent adaptation to distinguish the Designated Goods and Designated Services.
Evidence of the Applicant’s use of the Trade Marks
I must now consider the Applicant’s use of the Trade Marks and determine whether the Trade Marks have been used to such an extent that each of the Trade Marks did distinguish the Designated Goods and Designated Services as being those of the Applicant. When evaluating the evidence of the Applicant for the purposes of s 41(3), I must consider whether it establishes that the Trade Marks have new and secondary meanings different from those primary descriptive meanings such that, at the filing date, the Trade Marks had ceased to be purely descriptive and acquired secondary meaning. Put another way, I should consider whether consumers regard each of the Trade Marks as a badge of trade origin in the sense that they would rely upon the Trade Marks alone as an indication of trade origin for the Designated Goods and Designated Services. In particular, I should examine:
- the way the Trade Marks have each been used by the Applicant;
- how the particular market(s) for the Designated Goods and Designated Services have been educated concerning that use; and
- how the market(s) perceive the Trade Marks in denoting the Designated Goods and Designated Services in respect of which they are used.
It is useful to flag at this point the breadth of the specification for the Designated Goods and Designated Services in the applications. I note that there are little to no examples in the evidence of the Applicant using the Trade Marks in relation to those Designated Services being retail services. Broadly speaking the evidence shows the use of signs in relation to the following of the Designated Goods: cigarettes, herbs for smoking, raw snuff, smoking herbs, other than for medical purposes, substances for smoking (none being for medicinal or curative purposes), cigarette tobacco, leaf tobacco, raw tobacco, smoking tobacco, tobacco, papers and tobacco pouches.
I also note that much of the evidence is dated after the filing dates of the Trade Marks.[29] As I am satisfied that the Trade Marks each lack any adaptation to distinguish the Designated Goods and Designated Services, evidence of events occurring after these dates do not assist the Applicant.
[29] The filing dates being 5 July 2022 for RICHLAND EXPRESS and 6 July 2022 for RICHLAND BRANDS.
The Applicant draws my attention to the difficulties that producers of tobacco goods face in terms of advertising and promotion of their trade marks. In Australia, the appearance of all tobacco packaging is prescribed by the Tobacco Plain Packaging Act 2011 (Cth) and the Tobacco Plain Packaging Regulations 2011 (Cth). These laws prescribe the mode of marketing and labelling, including the appearance and size of any brand, business or company name or any variant name. This use must be in plain font and without the use of logos and be located at particular areas of the packaging. Ultimately, these laws regulate the manner in which end-consumers are likely to encounter any trade marks on any packaging for the Designated Goods and the manner of any Designated Services concerning the tobacco products. These requirements have been in place for the majority of the claimed period of the Applicant’s operations in Australia.
The Applicant submits that the sales figures are a powerful indicator that there has been use of the Trade Marks such that they in fact distinguish the Designated Goods and Designated Services. The sales figures of the Applicant have certainly been substantial. However, it is useful to consider to what specifically the sales figures refer in terms of use of a trade mark. In this respect, as an example,[30] I extract an enlarged image of the relevant portion of the Packaging for cigarette packets, on which the Applicant relies to demonstrate its alleged use of the Trade Marks:
[30] Please see the annexure to these reasons, below, for further examples and for illustrations as to where this information appears on the packaging.
For any use of a sign to assist it must be use as a trade mark. That is, it must be use as a badge of origin for the Designated Goods or Designated Services. The Applicant submits that the use of the words ‘Richland Express Pty Limited’ on the Packaging in the manner above is use as a trade mark. They also correctly note that it is possible for a sign to operate as a trade mark even alongside other trade marks.[31] In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd the High Court referred to situations where several signs are used in combination stating, ‘[w]here there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also’.[32] A trade mark, used in combination with other trade marks may, for example, be used as a trade mark in part because it was used, ‘to provide a visual prompt to the consumer’.[33]
[31] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’); RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10, [111] (Nicholas, Burley and Hespe JJ) (‘RB (Hygiene Home)’); Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [133] (Kenny J) (‘Sports Warehouse’); Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2014) 106 IPR 291, [245] (Murphy J).
[32] Self Care (n 31) [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[33] RB (Hygiene Home) (n 31) [93].
The individual examples of use of the corporate name ‘Richland Express Pty Limited’ on the Packaging are always to the side of other leading signs, such as the words ‘Tycoon’, ‘Easy’ and ‘Reef’. The placement of these other signs on the Packaging is always more prominent and in the position where a consumer of tobacco products would expect to see a trade mark. By contrast, the placement of the words ‘Richland Express Pty Limited’ is always at the periphery of the Packaging, in smaller font, usually next to the barcode. In summary, the placement of all signs on the Packaging appears to reflect the requirements under the plain packaging legislation.
On an objective assessment of the images of Packaging at Annexure JM-21 to Murray-2, the other signs placed on the front of the packaging, such as ‘Tycoon’ and ‘Reef’, do the work of distinguishing the Designated Goods from other traders. Even if end-consumers were likely to consider that portion of the Packaging which contains the words ‘Richland Express Pty Limited’, those words appear to be the name of a corporation. The end-consumers of the Designated Goods and Designated Services would most likely turn their attention to, or be prompted by, that portion of the Packaging which shows signs such as ‘Tycoon’ when considering the trade origin of the tobacco goods. I do not consider it likely, for example, that an end-consumer would refer to the Designated Goods, for example, as RICHLAND EXPRESS or the RICHLAND BRANDS cigarettes. The effect of the close use of two or more signs will not necessarily result in use which demonstrates factual distinctiveness for the purposes of s 41. For these reasons, the sales figures, whilst substantial, reflect a low effect in educating the public that the Trade Marks indicate a trade origin.
The evidence includes other examples of the use of the corporate name ‘Richland Express Pty Ltd’ and the words ‘Richland Express’ and ‘Richland Brands’. However, I again consider use of the corporate name to be here of little impact. The examples of use of the isolated words ‘Richland Express’ and ‘Richland Brands’ in relation to the Designated Goods and Designated Services are few in number. As with the packaging discussed above, these often also appear to refer to the corporation being the Applicant rather than a badge of origin for the Designated Goods and Designated Services. The appearance of the Trade Marks is also often alongside the more prominent (and inherently distinctive) Richland Brands Logo or Richland Express Logo. For completeness I note that I also do not consider the use of the Richland Express Logo or the Richland Brands Logo to be use of a trade mark which is without additions or alterations which substantially affect the identity of the Trade Marks.[34] A side by side comparison of the Richland Brands Logo and/or the Richland Express Logo with either of the Trade Marks results in a total impression of dissimilarity, due in large part to the appearance of a lotus flower device in each of the logos.
[34] Section 7(1).
The Applicant also relies on the use of the domain names for the Brands Website and the Express Website, and their appearance in email addresses of the Applicant’s employees, asserting that this amounts to use of the Trade Marks. I agree that so far as ‘www’ and ‘.com’ appearing in the domain names of the websites are concerned, these are additions or alterations that do not substantially affect the identity of the Trade Marks.[35] However, this does not automatically mean that use of the domain names each constitute use as a trade mark. In this respect I note the observations of Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd that, ‘… not all domain names will be used as a sign to distinguish the goods or services of one trader from the goods or services of another trader. … whether or not a domain name is used as a trade mark will depend on the content in which the domain name is used…’.[36]
[35] Sports Warehouse (n 31) [154] (Kenny J).
[36] Ibid [153].
Consumers would not likely view the use of the domain names as anything more than the addresses for websites. The screen captures of the Brands Website and the Express Website mostly include the Richland Brands Logo or the Richland Express Logo which appear to do the work of distinguishing any Designated Goods or Designated Services. The email chains in evidence showing correspondence between the Applicant and retailer customers, whilst also of some assistance, are also not of such volume or effect as to indicate that there is a trade source in the words forming each of the Trade Marks. For similar reasons to those concerning the use of the website domain addresses, the email addresses do not appear as a badge of origin.
It is also relevant that the Applicant’s use of signs which include the word ‘Richland’, shown in screen captures of the Brands Website and the Express Website, whilst generally referring to tobacco products are often not specific enough for me to draw conclusions about to which of, if any, the various Designated Goods or Designated Services the use of the trade marks relate. There is no indication of the visitor numbers for the Brands Website or the Express Website prior to the filing dates of the Trade Marks. To any extent they could be relevant, I also note that the visitor numbers to what appears to be the Brands Website, at Confidential Annexure JM-4 to Murray-1 and Annexure JM-15 to Murray-2, are relatively moderate and indicate the evidence of use of the Trade Marks on the Brands Website is not compelling. I add that the effect of any use of signs on the Trade Marks on the Brands Website or Express Website on any end-consumer, in terms of the distinctiveness, of would be low.
I further note that the end-consumers of the Designated Goods and Designated Services, other than wholesale consumers, would not have had access to the mostly confidential and/or internal documents and emails throughout the evidence.
Tellingly, the Applicant’s use of RICHLAND EXPRESS is not such that RICHLAND EXPRESS did in fact distinguish the Designated Goods and Designated Services. Therefore, it is not surprising that its use, including in combination with evidence of use of the trade mark RICHLAND BRANDS, is not such that RICHLAND BRANDS did in fact distinguish the Designated Goods and Designated Services.
Overall, I am satisfied that as at the respective filing dates the Trade Marks, noting the extent of the Applicant’s use of the Trade Marks, did not each distinguish the Designated Goods and Designated Services.
Accordingly, the s 41 ground for rejection has been established.
Decision
Section 33 provides:
33 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.
(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.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
I am satisfied that there is a ground for rejecting the Trade Marks under s 41. In accordance with s 33(3), I reject trade mark application numbers 2280018 and 2280015.
If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 November 2024
Schedule 1
Single cigars
Cigar tins
Pouches
Cigarette packets
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10
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