Southerly Change Drinks Pty Ltd

[2024] ATMO 245

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2362221 (32) – WORLD FAMOUS IN AUSTRALIA - in the name of Southerly Change Drinks Pty Ltd

Delegate:

Louise Tuohy

Representation:

Applicant: Malcom Bell of Phillips Ormonde Fitzpatrick

Decision:

2024 ATMO 245

Trade Marks Act 1995 (Cth) – section 33 proceedings – section 41 – trade mark capable of distinguishing – application accepted

Background

1. This decision follows from an ex parte hearing at the request of Southerly Change Drinks Pty Ltd (‘Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] in relation to the following trade mark application (‘Application’):

   Trade mark number:  2362221

   Trade mark:  WORLD FAMOUS IN AUSTRALIA (‘Trade Mark’)

   Priority date:  25 May 2021[2]

   Specification:   Class 32: Soft drinks; carbonated non-alcoholic drinks; concentrates for use in the preparation of soft drinks, apart from concentrates for use in the preparation of chinotto soft drinks; non-alcoholic carbonated drinks (‘Designated Goods’)

   [1]  Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  

   [2] The Application is a divisional of trade mark number 2177854.

2. The Application was examined as required under s 31 and a ground for rejection was raised under s 41(4). The first examination report issued on 11 July 2023 and raised the ground for rejection as follows:

   Your trade mark is, or has as its main feature, WORLD FAMOUS IN AUSTRALIA.

   This is a laudatory phrase used as an indicator of quality for the goods claimed. Other traders should be able to use WORLD FAMOUS IN AUSTRALIA or similar in connection with goods or services similar to yours

3. In support of the Application the Applicant made submissions and filed the following declaration:

   • Declaration of Robert Priest, a Director of the Applicant, made on 27 August 2024, with Annexures RP-1 to RP-12 (‘Priest’).

4. The examiner did not find the Applicant’s submissions or evidence persuasive and maintained the s 41(4) ground for rejection. The Applicant did not respond to the second adverse report, instead it requested to be heard on the matter as allowed by s 33(4).

5. The matter came before me, a delegate of the Registrar of Trade Marks on 9 December 2024. Malcom Bell of Phillips Ormonde Fitzpatrick, represented the Applicant, making verbal and written submissions on its behalf. I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection. 

Legislative background and reasoning

Section 41

1. Section 41 provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in 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.

   (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.

2. Section 41 must be assessed having regard to s 33, which embodies a ‘presumption of registrability’. Section 33(3) compels the Registrar to accept a trade mark for registration unless the Registrar is satisfied that grounds exist for rejecting the application.

3. To determine the merits of the ground for rejection under s 41, the extent of the Trade Mark’s inherent adaptation to distinguish the Applicant’s Designated Goods must be assessed. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that this was to be assessed:

   [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.[3]

   [3] [1964] HCA 55, [5].

4. The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited indicated that the test for distinctiveness under s 41 involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied. The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar goods. ^[4]

   [4] [2014] HCA 48, [71], (French CJ, Hayne, Crennan and Kiefel JJ).

5. The Applicant submits that the phrase WORLD FAMOUS IN AUSTRALIA (‘WFIA’) is essentially meaningless. The Applicant states that the term WORLD FAMOUS means the subject is famous throughout the world, that is, its fame extends to all countries of the world. To add the words IN AUSTRALIA is to create a nonsense. To say that something is WORLD FAMOUS IN AUSTRALIA is not only redundant but so linguistically tortured as to be a completely unnatural term or phrase and not one which any trader would naturally wish to use in relation to their goods. It is not a phrase that would naturally come to mind to describe or refer to any goods, whether to indicate quality or otherwise.

6. The Applicant also notes that the trade mark WORLD FAMOUS IN NEW ZEALAND (‘WFINZ’) was accepted for registration by the Intellectual Property Office of New Zealand (‘IPONZ’) and then opposed by Anthony Brian Coombe. The opposition was unsuccessful [5] and the decision was appealed to the High Court of New Zealand. Woodford J dismissed the appeal holding that the trade mark WFINZ was not only not laudatory but ‘is an invented and fanciful slogan’ which ‘is an oxymoron that produces a quirky, original, and distinctive incongruous and self-contradictory statement’.[6]

   [5] Priest [6], Annexure PR-1 see Coca-Cola Amatil (NZ) Limited v Anthony Brian Coombe [2010] NZIPOTM 2 (12 April 2010) (Assistant Commissioner of Trade Marks B.F. Jones).

   [6] Priest [6], Annexure PR-1 see Anthony Brian Coombe v Coca-Cola Amatil (NZ) Limited CIV-2010-485-000816 [25].

7. In this matter what is important is how the Trade Mark is understood by the target audience which in this case is the public at large. The relevant inquiry is whether the Trade Mark as a whole, that is, the combination of elements in the matter in which they are arranged, is capable of distinguishing the Designated Goods. When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable. In Diamond T Motor Car Co’s Application, Lawrence J said:

.... in order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves...[7]

[7] (1921) 38 RPC 373, 380.

1. The Trade Mark as a whole is for the phrase WORLD FAMOUS IN AUSTRALIA, and even if the phrases WORLD FAMOUS or FAMOUS IN AUSTRALIA may not be inherently adapted to distinguish, the Trade Mark as a whole is a combination of contradictory or incongruous words, such as soft drink products that are world famous but only in Australia. Moreover, I do not consider that the unusual expression WFIA falls into the same category as the common phrases referred to above. The effect of the difference between WIFA and the grammatically correct slogans is similar to the effect created by the phrase ‘TGI Friday’s’ which, while an abbreviation of a common expression was sufficiently uncommon and unidiomatic to render the trade mark capable of distinguishing the then applicant’s services. As such the Trade Mark in the context of the Designated Goods, is not the usual or apt way to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the Designated Goods or the time of their production. 

2. I also note that the evidence of usage by third parties is limited. The Google searches undertaken by the examiner for WFIA solus lists famous Australians or attractions in Australia and the search for WIFA and ‘soft drinks’ lists the Applicant and then other uses generally outside the market for the Designated Goods.   

3. Having taken into account the presumption of registrability, as a result of the unusual nature of the Trade Mark, I do not consider it likely the other traders, without improper motive, will think of or desire to use the Trade Mark or something closely resembling it, in respect of the Designated Goods. I find the Trade Mark is inherently adapted to distinguish the Designated Goods from the similar goods of other traders.

Decision

1. 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.

   (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.

2. I am not satisfied that there exists a ground for rejecting the Application under s 41. I accept trade mark application number 2362221.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

13 December 2024