Silver Top Taxi Service Pty Ltd v Taxi's Combined Services Pty Limited

[2017] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Silver Top Taxi Service Pty Ltd to registration of trade mark application 1427083(39) - SILVER SERVICE - filed in the name of Taxi's Combined Services Pty Limited.

Delegate:	Cristy Condon
Representation:	Opponent Davies Collison Cave Applicant Minter Ellison
Decision:	2017 ATMO 19 Trade Marks Act 1995 (Cth) Section 52 proceedings; s 41 - trade mark not capable of distinguishing – s 41 evidence not sufficient - opposition successful – trade mark refused.

Background

1. This matter is pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) and concerns an application (‘Application’) for the following trade mark:

   Trade Mark No:     1427083

Applicant:               Taxi’s Combined Services Pty Limited

Priority Date:         25 May 2011

Services:                  Class 39: Services in this class relating to the hiring and   transportation by means of taxi (‘Services’)

Trade Mark:          Silver Service (‘Trade Mark’)

Endorsements:       Provisions of subsection 41(5) applied. Provisions of   paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.   Provisions of subsection s44(4) and/or Reg 4.15A(5)   applied.

1. The Application was examined and during this time a ground for rejection was raised under the then in force s 41(5) of the Act. Amendments to this section of the Act have subsequently been enacted.[1]  Grounds for rejection were also raised under s 44 in respect of trade marks 725487, 824751, 1002877 and 1303264. 

   [1] The equivalent section of the Act can now be found in s 41(3).

2. Taxi’s Combined Services Pty Limited (‘Applicant’) provided evidence of use during the course of examination and the Trade Mark was advertised accepted for possible registration on 15 January 2015 with the relevant endorsements (refer to [1] of this decision). 

3. On 16 March 2015 Silver Top Taxi Service Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose and on 17 April 2015 it filed a Statement of Grounds and Particulars which nominated grounds for opposition pursuant to ss 41, 44, 58A, 58, 60, 42, and 62A. On 20 May 2015 the Applicant filed a Notice of Intention to Defend.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing.  The parties chose to avail themselves of this opportunity.  The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 5 December 2016.  Mr. Peter Creighton-Selvay of Counsel, instructed by Mr. George McCubbin of Minter Ellison made written and oral submissions on behalf of the Opponent.  Mr. Michael Hall of Counsel, instructed by Ms. Elizabeth Godfrey of Davies Collision Cave made written and oral submissions on behalf of the Applicant. 

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)          to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established.

Grounds of Opposition, Onus and Standard of Proof

1. In its written and oral submissions the Opponent has stated that it is only pursuing the ss 41, 44 and 58A grounds for opposition. To successfully oppose the Application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has established a ground of opposition under s 41. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

2. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 25 May 2011, being the filing date of the Application.[4] 

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

3. I mention also that the focus here is not to review the examiner’s decision and arguments, but rather to consider afresh the grounds for rejection that have been raised.  

Preliminary Matters

1. The oral hearing began with the Opponent’s Counsel addressing an issue that had arisen in relation to the Opponent’s Evidence In Reply which concerns the declaration of Pamela Peters, Emeritus Professor, dated 10 February 2016 (‘Peters’).  In regard to this evidence the Opponent submits:

   First, the phrase SILVER SERVICE is defined by the Macquarie Dictionary as follows:

   noun 1. the serving of food, using a fork and spoon, from platters directly to         the plate of the person sitting at table.

   —     adjective 2. of or relating to silver service: a silver service waiter.

   3. of, relating to, or designating a product, service, etc., which is of superior

   quality.

   [from the silver plate and utensils typifying luxury and style]

   Emeritus Professor Peters, an Emeritus Professor in the Department of Linguistics at Macquarie University and one of the members of the Editorial Committee of the Macquarie Dictionary between 1986 and 2006, has explained that each of the numbers"1", "2" and "3" in the definition of "silver service" at paragraph 5.2 above refer to a different meaning or 'sense' of the phrase.

   The third definition, being "of, relating to, or designating a product, service, etc., which is of superior quality', was introduced into the Macquarie Dictionary entry for "silver service" in December 2009. That is, well before the Priority Date.

   As explained by the Macquarie Support team, "Definition 3 has come about from definition 1, with people using the term in a similar manner but outside of the dining / food industry. Any type of exceptional service, an exceptional performance, etc." (emphasis added). The evidence of Emeritus Professor Peters makes clear that, for a new definition to be included in the dictionary, the definition must be in general and common usage in Australia before the date of inclusion. The opinion of Emeritus Professor Peters is that, for the definition of SILVER SERVICE to have been amended to include the third definition, "while "silver service" traditionally had a narrow meaning referring to a method of serving food, it has expanded its range of meanings in general Australian usage".

   Second, although the third definition of SILVER SERVICE was only introduced into the Macquarie Dictionary in December 2009, it is clear that this meaning of the phrase was, in fact, in general and common usage in Australia from the early 1990s.[5]

   [5] Opponent’s written submissions [5.2 to 5.6].

2. The Applicant has raised objections concerning the admissibility of the Peters declaration into the proceedings (which was clearly adduced by the Opponent to address the question as to the ordinary signification of the phrase SILVER SERVICE).  In its submissions the Applicant, as I see it, raises five points as to why it said that Peters should not be admitted as evidence in this opposition.  Firstly, it is alleged that Peters is not Evidence in Reply; Secondly, and relatedly, it was not clear up until Peters was filed that the Opponent was asserting that SILVER SERVICE had some meaning in addition to that in relation to fine dining; Thirdly, it is not a question of just proving a dictionary definition exists and that the question goes further than that to show ordinary signification of the phrase; Fourthly, that to admit Peters would be contrary to Raising the Bar amendments in the sense that the Applicant was taken by surprise and that there are no longer provisions for further evidence so the Applicant was therefore at a disadvantage; and Fifthly, that the sample size and the content of information given to Emeritus Professor Peters with which to make her decision was questionable. 

3. I have considered the Applicant’s objections and, in the interest of brevity, I state that I am allowing Peters. I am a hearing officer and, as such, I am not bound by the rules of evidence. The Opponent filed Peters as part of its Evidence in Reply and within the appropriate time frame. The Applicant could have filed its own evidence addressing the ordinary signification of the Trade Mark during the Evidence in Answer stage and it chose not to do so. For the sake of completeness I am also satisfied that the ordinary signification of the Trade Mark was always an issue and this is confirmed by the s 41 particulars in the SGP which provide:

   SILVER SERVICE is descriptive as it indicates that the services covered by the application are of a particular standard or quality. SILVER SERVICE is therefore not capable of distinguishing Taxis Combined Services Pty Limited’s (Applicant’s) services in respect of which the trade mark is sought to be registered from the goods and services of other persons.

Evidence

1. The evidence in this matter therefore consists of:

   Declarations filed on behalf of the Opponent:

   ·    Kevin Gange, a director of the Opponent, dated 28 August 2015 accompanied by Exhibits 1 to 14 (‘Gange’).

   ·    George McCubbin, a solicitor for the Opponent, dated 28 August 2015 with Exhibits GAM-1 to GAM-12 (‘McCubbin 1’) and two subsequent declarations dated 10 February 2016 (‘McCubbin 2’) and (‘McCubbin 3’) accompanied by Exhibits GAM-13 to GAM-19.

   ·    Pamela Peters, Emeritus Professor, dated 10 February 2016 (defined above as Peters) accompanied by PP-1 to PP-2.

   Declarations filed on behalf of the Applicant:

   ·    Shi Lao, National Manager, Merchant Partners of the ultimate holding company of the Applicant, dated 7 December 2015 accompanied by Exhibits 1 to 12. (‘Lao’)

   ·    Jonathon Purchase, Manger of Silver Service Taxis Pty Ltd, dated 20 February 2014 (‘Purchase’) which appears as Exhibit 3 to Lao.

   ·    Douglas Lawman, a solicitor employed by an associated entity of the Applicant, dated 8 December 2014 (‘Lawman’) which appears as Exhibit 8 to Lao.

The Opponent

1. According to Gange the Opponent is a company that provides taxi transport services in the state of Victoria.  It has continuously provided these services since the Opponent’s registration on 8 December 1936. He also states at [5] - [6]:

   The Opponent has been very successful and has grown to become one of the largest taxi transport service providers in the State of Victoria with a fleet of over 2,000 taxis servicing metropolitan Melbourne, which represents approximately 50% of all taxis servicing metropolitan Melbourne. Further information concerning the Opponent can be accessed via links to its website at Now produced and shown to me and marked EXHIBIT KFG-1 are selected printouts of the Opponent's website detailing general background on the Opponent and the types of services offered to consumers by the Opponent.

   In 2014 the Opponent expanded its operations into New South Wales with the introduction of its Premier Prestige taxi service.  Further information concerning the Opponent's Premier Prestige taxi service can be accessed via links to its website at Now produced and shown to me and marked EXHIBIT KFG-2 are selected printouts of this website.

2. The Opponent is the registered owner of Australian Trade Mark Registration No. 1002877 for SILVER TOP SILVER SERVICE, which covers the following services:

   Class 39: Transportation services, including limousine services, cab services and taxi services; travel arrangements in relation to taxis; taxi reservation and taxi booking services; taxi transport, taxi hire, services in this class provided  by taxi operators or taxi fleets;  chauffeur services; transportation of goods; parcel  delivery services

The Applicant

1. Lao deposes the Applicant is a taxi network and provides booking services to taxi drivers. It is one of a number of many wholly owned subsidiaries of Cabcharge Australia Limited (the ultimate holding company of the Applicant).  As such the Applicant’s evidence is expressed in terms of the “Cabcharge group of companies” (‘Cabcharge’ or the ‘Group’).  Lao states at [5] - [6]:

   The Application relates to the Group's offering of its Silver Service taxi services
   throughout Australia, since at least 1997 and having used the SILVER SERVICE
   trade mark ever since then, either through a Group entity or by authorising it to
   non-Group taxi networks.

Taxis Combined made the application for the SILVER S[E]RVICE trade mark, on behalf of, and to be used by, the Group in accordance with each entities' respective offering within the Group. This is not to say that each entity within the Group does or will use the SILVER SERVICE trade mark but that each entity is authorised by Taxis Combined to do so if it wishes.

1. The Applicant was incorporated on 4 June 1974.  Cabcharge was incorporated on 14 July 1980.  Both companies were incorporated in New South Wales.  Lao states further:

   The Group, through its various networks, provides taxi services pursuant to each piece of legislation relevant to the State or Territory in which the network operates; namely New South Wales, Victoria and South Australia. [6]

   [6] Lao [15].

2. In addition to the Trade Mark the Applicant owns the following registered trade marks:

   Trade Mark No.: 705074
              Trade Mark:
              Owner: Taxis Combined Services Pty Ltd
              Filing Date: 22 March 1996
              Services: Services in this class relating to hiring and transportation by means of taxi

Trade Mark No.:  1303264
           Trade Mark: YELLOW CABS SILVER SERVICE
           Owner: Yellow Cabs South Australia Pty Ltd
           Filing Date: 10 June 2009
           Services: Transportation services, including limousine services, cab services and taxi      services; travel arrangements in relation to taxis; taxi reservation and taxi booking    services; taxi transport, taxi hire, services in this class provided by taxi operators or    taxi fleets, chauffeur services; transportation of goods; parcel delivery services;        passenger transport services; car rental, truck rental and related transport services

Discussion and Reasons - Section 41

1. At the time of examination s 41 of the Act relevantly provided:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  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.

   (2)  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 (designated goods or services) from the goods or services of other persons.

   (3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)  the Registrar is to consider whether, because of the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances;

   the trade mark does or will distinguish the designated goods or   services as being those of the applicant; and

   (b)  if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)  if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   (6)  If the Registrar finds that 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, the following provisions apply:

   (a)  if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b)  in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

2. Although s 41 has been amended since the examination stage it is the superseded legislation quoted above that applies in these proceedings. S 33 of the Act remains unchanged and states that the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it.

Inherent adaptation to distinguish

1. The inherent adaptation of a trade mark is the principle used to determine the descriptive nature of a trade mark.  This is to be tested:

   [B]y 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.[7]

   [7] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.

2. In applying this test, consideration is given to the trade mark as a whole.[8]  When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable.[9]  The relevant enquiry is whether the trade mark as a whole, that is, the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods and/or services.  In this instance, the question is whether the phrase SILVER SERVICE, being the combination of the words SILVER and SERVICE, is capable of distinguishing the designated services.  

   [8] Hudson’s Trade Mark (1886) 3 RPC 155.

   [9] Diamond T Moto Car Co’s Application (1921) 38 RPC 373, 380.

3. The Opponent has filed evidence in Peters which shows the phrase SILVER SERVICE appears in the Macquarie Dictionary and is defined as: “of, relating to, or designating a product, service, etc., which is of superior quality”.  According to Peters [22] this definition was ‘in use by individuals in Australia by the early 1990’s and spread into general and common usage across Australia from the early 2000’s. 

4. The Opponent further submits:

   One industry in which there has been extensive usage of the phrase SILVER SERVICE is the automotive transport industry. The evidence clearly establishes the use of the phrase SILVER SERVICE in relation to buses since at least 1989, limousines since at least 1991, and chauffeured cars since at least 1994.

   Further, it is apparent that the use of the phrase SILVER SERVICE is, and has for quite some time been, widespread amongst taxi operators throughout Australia. The evidence filed in this Opposition establishes that there are "at least 20 taxi service providers that provide taxi transport services in Australia by reference to the phrase "silver service" and numerous advertisements in the Yellow Pages and White Pages for "silver service cabs", "silver service taxis", "silver service luxury cars", and "silver cab services".

   It is apparent that many of these taxi operators have used the phrase SILVER SERVICE for many years. For example, the Opponent adopted the phrase SILVER SERVICE in 2000, to indicate "the service provided was a premium or `silver' service", Taxico has offered a "Silver Service" since at least February 2005, and Swan Taxis has offered "Silver Service Vehicles" since at least August 2007. Indeed, the phrase SILVER SERVICE has become so ubiquitous in the taxi industry throughout Australia, as indicating a premium or superior taxi service, that the Victorian Taxi Services Commission has stated that "Silver Services fees are not part of the metered fare and they must be paid in full by the passenger" and the Tasmanian Department of State Growth — Transport has stated that "Some of these taxis may be labelled as 'silver service' taxis".

1. I am satisfied that the evidence filed by both parties shows that taxi and hire cars are among the most highly regulated industries in Australia.  Entry restrictions and fare regulations are heavily regulated in each State and Territory.  In the state of Victoria, for example, the term SILVER SERVICE is recognized as indicating a higher standard of taxi service such that the fee for this service is not part of the standard fee but is an additional charge on top of this fee.[10] 

   [10] See McCubbin at [9] – [10].

2. I am satisfied that the Trade Mark is descriptive of the quality of the Services and a ground for rejection applies under s 41(5). This finding is not fatal to the Application as the Applicant has filed its evidence of use of the Trade Mark. I will now consider this use.

Use of the Trade Mark

1. Lao attests to the history and use of the Trade Mark by the Applicant and he states at [17]-[19]:

   Since at least 1997, the Group has been using each of, or a combination of, the SILVER SERVICE Marks as part of its taxi service offerings.

In addition to its own taxi networks, Cabcharge has authorised Yellow Cab Co, which provides services in Brisbane, Hobart, Warwick, Yeppoon and Rockhampton and Aerial Taxis which operates in Canberra to use certain trade marks, including the SILVER SERVICE Marks in connection with taxi services provided in Brisbane and Rockhampton, and Canberra, respectively.

The Group operates these networks in New South Wales, South Australia and Victoria and has become each of those states' largest fleet of taxis. In each of those States, the Group operates a SILVER SERVICE taxi service using the various trade marks owned by the Group including the SILVER SERVICE trade mark and the SILVER SERVICE logo.

1. Lao also attests at [27] that one of the most used ways to advertise the SILVER SERVICE trade mark is on the taxi itself.  For the purpose of illustrating how the Applicant is using the Trade Mark on certain taxis I have reproduced the image contained in Lao below:

1. This image shows that the words on the roof of the taxi are: Silver TAXI Service and the trade mark on driver’s side door is in fact very similar to the Applicant’s other trade mark 705074 (‘Cab Charge Silver Service logo’) the details of which appear at [18] of this decision.  Another slightly different version of advertising the Applicant’s badge of origin on the taxi fleets is shown in this photo below also reproduced from Lao [27]:

1. It follows, according to Lao that ‘ any consumer seeing one or more of the SILVER SERVICE taxis driving around each of these cities would in turn read the words SILVER SERVICE that flank this roof sign and immediately identify the provider of the taxi cab as a member of the Cab Charge group’ at [27]. Pages 11 to 13 of Lao attempt to show examples of how the Trade Mark is advertised in print media. These examples show the words SILVER SERVICE but always within or in close proximity to the stylised Cab Charge Silver Service logo. By way of example, the advertisement below shows the Cab Charge Silver Service logo and a booking internet address in which the phrase SILVER SERVICE appears (the address, however, for obvious reasons can only be accessed using plain typescript and thus is advertised in that way.):

2. The following advertisement is one of very few examples where I could identify the Trade Mark as applied for but even then it still arguably limps along with the Cab Charge Silver Service logo which indicates the badge of origin of the Services which can be seen in the bottom left hand corner of the advertisement, viz:

3. Purchase and Lawman also show many print media examples of the Cab Charge Silver Service logo and the taxi booking website addresses and but these Internet addresses alone are not sufficient to demonstrate use of the Trade Mark to the level necessary in order to discharge the s 41(5) ground for rejection.

4. The Applicant has provided substantial advertising and sales figures in its evidence[11] but I am not satisfied that these figures relate to the Applicant’s use of the plain words SILVER SERVICE as a Trade Mark but rather the Applicant’s Cab Charge Silver Service logo or another trade mark that is being used on the Applicant’s taxi fleets as depicted in the photos at [28] and [29]. 

   [11] Purchase; Confidential Exhibit “A”.

5. I note also that the Trade Mark has proceeded to registration in other jurisdictions including the United Kingdom and Singapore, however, this fact is not of any persuasive weight due to the reasons I have detailed below. 

6. I have carefully assessed whether the Applicant is using the Trade Mark and I am satisfied on the balance of probabilities that the Applicant is providing a silver service in the taxi and hire car industry. In most cases it is using SILVER SERVICE descriptively but to the extent it is not, its use is insufficient, pursuant to s41(5) to render the Trade Mark distinctive of the Services. Therefore, the Applicant’s evidence fails.

7. I am satisfied that the phrase SILVER SERVICE is commonly understood to indicate a higher quality of service in the taxi and hire car industry.  The evidence provided by the Applicant fails to show it has educated the market that the plain words SILVER SERVICE indicate a taxi related service provided by the Applicant.  Based on the evidence I have before me I am not prepared to give the Applicant a monopoly right in these plain words when it is clear to me that the Applicant’s badge of origin apparently resides in its Cab Charge Silver Service stylised logo or another similarly rendered composite trade mark. 

Decision

1. I have found the Opponent has established the ground for opposition it raised pursuant to s 41 of the Act. As the Delegate of the Registrar I accordingly refuse to register trade mark 1427083 one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that rejection shall not occur until the appeal has been decided or discontinued.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under section 221 of the Act as per the amounts allowed under Schedule 8 of the Trade Marks Regulations 1995. 

Cristy Condon
Hearing Officer
Trade Marks and Designs Oppositions & Hearings
28 February 2017