Richland Express Pty Limited - [2024] ATMO 232

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’)
---
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;…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] ATMO 232
Decision Date: 29 November 2024

CaseChat Overview and Summary

This matter concerned two trade mark applications, RICHLAND EXPRESS and RICHLAND BRANDS, filed by Richland Express Pty Limited. Both applications sought registration for goods in Class 34 (articles for smokers) and services in Class 35 (retail and wholesale services). The applications were initially examined and a ground for rejection under section 41 of the *Trade Marks Act 1995* (Cth) was raised, asserting that the marks were not capable of distinguishing the applicant's goods and services from those of other traders, primarily because "RICHLAND" is a geographical location and "EXPRESS" and "BRANDS" are descriptive terms.

The delegate of the Registrar of Trade Marks was required to determine whether the trade marks RICHLAND EXPRESS and RICHLAND BRANDS were capable of distinguishing the applicant's designated goods and services from those of other persons. This involved assessing whether the marks were inherently adapted to distinguish, and if not, whether they had acquired distinctiveness through use prior to their filing dates. The delegate also needed to consider the ordinary signification of the marks and the likelihood that other traders would need to use them in the normal course of trade.

The delegate found that "RICHLAND" refers to a geographical location in the United States, and evidence indicated that this location is known for agriculture and technology, with no apparent connection to the tobacco industry. The terms "EXPRESS" and "BRANDS" were considered descriptive. Applying the principles from *Cantarella Bros Pty Limited v Modena Trading Pty Limited*, the delegate assessed the inherent distinctiveness of the marks and the extent of use. Despite substantial evidence of use by the applicant since 2007, including sales figures and marketing materials, the delegate concluded that the marks were not inherently adapted to distinguish and that the use, while extensive, was not sufficient to overcome the lack of inherent distinctiveness, particularly given the geographical signification of "RICHLAND" and the descriptive nature of "EXPRESS" and "BRANDS".

Consequently, the delegate determined that the trade marks RICHLAND EXPRESS and RICHLAND BRANDS were not capable of distinguishing the applicant's goods and services from those of other persons. Therefore, the applications for registration were rejected under section 41 of the *Trade Marks Act 1995* (Cth).

Orders