Sportsbet Pty Ltd

[2023] ATMO 89

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 2306316 EXOTIC RESCUE, 2306319 FIRST4 RESCUE, 2306320 QUINELLA RESCUE and 2306321 TOTE RESCUE (all in classes 9 & 41) – in the name of Sportsbet Pty Ltd

Delegate:

Tracey Berger

Representation:

Applicant: James Neil, Clayton Utz

Decision:

2023 ATMO 89

Trade Marks Act 1995 (Cth) –section 38 proceeding – proposal to revoke acceptance – whether applications should not have been accepted – s 41 considered - acceptance not revoked

Background

1. This matter is in relation to a proposal by the Registrar of Trade Marks to revoke acceptance, pursuant to s 38 of the Trade Marks Act 1995 (Cth),[1] of trade mark application numbers 2306316 EXOTIC RESCUE, 2306319 FIRST4 RESCUE, 2306320 QUINELLA RESCUE and 2306321 TOTE RESCUE (‘Pending Marks’) all in the name of Sportsbet Pty Ltd (‘Applicant’) for:

Class 9: Electric and electronic apparatus for online transmission and viewing of sports, racing, amusement, entertainment and games information and events in the form of betting and wagering apparatus, devices and machines; computer hardware including hardware for the operation of online games; computer software and computer programs; software relating to betting, the storage and processing of information and data and for online transmission and viewing of sports and games information and events; downloadable software applications; software for use in games, gambling and betting apparatus, devices and machines; Internet gambling software; software for operation of online games; computer, video and CD ROM games; software for electronic games; interactive computer games; software and programs for interactive sports, racing, event wagering and other gambling solutions; data recording apparatus for use with games, betting and gambling apparatus devices and machines; USB flash drives; memory apparatus; parts and accessories for all the aforesaid goods, sold as a unit therewith; electronic publications

Class 41: Entertainment; sporting and cultural activities; gambling services; gaming services; betting on horses; betting services; providing information, including online, about education, training, entertainment, sporting and cultural activities; interactive entertainment; sporting and cultural education services; education services; on-line television entertainment services concerning gaming, entertainment and sports; provision of recreation and entertainment information including information on sports and games, betting, racing events, contingencies and odds; arranging and provision of sporting events; betting services; betting information services; wagering services; education services relating to responsible betting, gambling; sports wagering services and approved betting competitions; providing online electronic publications, not-downloadable; games services provided online from a computer network; providing information, consultancy and advisory services for the aforesaid

(‘Goods and Services’)

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2.    The applications for the Pending Marks were filed on 10 October 2022 and expedited examination was requested.  The Pending Marks were examined as required by s 31 and no grounds for rejection were identified during examination.  Each of the Pending Marks was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 11 March 2023.

3.    On 23 March 2023, an Examiner issued a Notice of Intention to Revoke Acceptance of each of the Pending Marks (‘Revocation Notices’) on the basis that a s 41(4) ground for rejection should have been raised during examination because (paraphrasing):

EXOTIC is a type of bet allowing punters to place a single bet in a specific or customised way to predict several outcomes of an event or multiple events.

FIRST4 is a bet type that requires the punter to pick the first four finishers in a single race in the correct order.

QUINELLA is a bet in which the first two places in a race must be predicted, not necessarily in the correct order.

TOTE is when all bets placed on an event or race are placed into a pool and the odds of an individual horse are calculated by dividing the total pool less any amount the house takes, divided by the amount wagered on that horse.

and

The additional word RESCUE within your mark is being used in a promotional context to indicate a service you offer will ‘rescue’ the client’s bet, usually in the form of bonus credit or cash back if the bet placed loses in a fashion that meets the criteria of the promotion. It is common for bookmakers to offer similar promotions when one selection within a multi bet does not win.

Other traders who offer similar promotional multi bet types should be able to use the mark or something nearly resembling it when describing their wagering products.

4. In response to the Revocation Notices, the Applicant asked to be heard under s 38. These matters were listed for hearing before me, a delegate of the Registrar of Trade Marks, on 1 June 2023 by way of written submissions. James Neil of Clayton Utz filed written submissions on behalf of the Applicant on 31 May 2023.

Legal Framework

5. Section 38 provides:

38  Revocation of acceptance

(1)  Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

(a)  the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

(b)  it is reasonable to revoke the acceptance, taking account of all the circumstances.

(2)  If the Registrar revokes the acceptance:

(a)  the application is taken to have never been accepted; and

(b)  the Registrar must examine, and report on, the application as necessary under section 31; and

(c)  sections 33 and 34 again apply in relation to the application.

6.    The Applicant argues that revocation is an "unusual step" and should only occur where an "error in examination, being an oversight, is obvious".  As the delegate’s following comments in Mt Shadwell Pty Ltd indicate, a difference of opinion is not a basis for revoking acceptance:

For the avoidance of doubt, section 84A (or section 38 for that matter) is not concerned with differences of opinion or cases where, upon a proper consideration of fact and law, reasonable minds might differ. It is focused on whether acceptance and registration of the Trade Mark should not have occurred. To answer the question it is necessary to consider whether a ground for rejection existed under the Act such that the Trade Mark should not have been registered.[2]

[2] [2018] ATMO 25, [21].

7.    Section 41 relevantly 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.

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.

The Applicant

8.    The Applicant is an online gambling company which in addition to the Pending Marks, also owns Australian trade mark registration number 2273405 for the words QUADDIE RESCUE (‘405 Mark’).

9.    The 405 Mark was filed on 30 May 2022, advertised for possible registration on 31 October 2022 and, in the absence of any opposition, was entered on the Register of Trade Marks on 10 January 2023.

10.   On 13 July 2022, the Applicant’s competitor, Entain Pty Ltd (‘Entain’) which operates the NEDS and LADBROKES betting platforms in Australia, filed trade mark application 2283061 for the words QUADDIE RESCUE in class 41.  That application was examined and an Examiner’s report issued raising objections under s 44 based on the Applicant’s prior

applications for the 405 Mark and  (number 2273470) which at the time were accepted for possible registration but not yet advertised for opposition.

11.   In August 2022, the Applicant wrote to Entain putting them on notice of its earlier application for and use of the 405 Mark.  Following that correspondence, the 405 Mark was advertised for opposition and proceeded to registration unopposed by Entain.

12.   Entain has filed notices of opposition to registration of each of the Pending Marks.

13.   The Applicant’s submissions are directed to whether or not the Pending Marks should not have been accepted and that it is not reasonable to revoke the acceptance of each of the Pending Marks in all the circumstances.

Discussion

14. The Applicant submits that the Registrar should not be satisfied that it is reasonable to revoke acceptance and thus s 38 is not enlivened. In the alternative, the Applicant argues that the Registrar cannot nevertheless be satisfied that Pending Marks should not have been accepted. I note that, in my view, the Applicant has reversed the considerations of s 38 in that the first question to be asked is whether the trade mark should not have been accepted. It is only if the Pending Marks should not have been accepted that I must then consider whether it is reasonable to revoke acceptance. Accordingly, I will first consider whether the Pending Marks should not have been accepted taking into account all of the circumstances that existed at that time

15.   The Revocation Notices state that a s 41 ground of rejection should have been raised during examination.  Section 41 must be assessed having regard to s 33, which embodies a ‘presumption of registrability’. Section 33(1)(b) compels the Registrar to accept a trade mark applied for unless the Registrar is satisfied that grounds exist for rejecting the application.

16.   The Applicant submits that each of the Pending Marks is inherently distinctive of the Goods and Services and notes the following summary by Bromwich J in a2 Milk Co Ltd v LD&D Australia Pty Ltd[3] on the current law on the test for inherent distinctiveness:

[3] [2021] FCA 1515 (emphasis in original).

21.The long-standing test for “adapted to distinguish” for the purposes of s 41 was explained by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514. This was quoted and adopted with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 at [26], where the plurality concluded that the assessment was to be made (emphasis added and spelling modernised by the latter High Court):

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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

22.In Cantarella, the plurality concluded that the emphasised words above were essential to the test: see Cantarella at [28]-[29], [70]. In other words, they accepted the proposition that the inherent adaptability of a trade mark consisting of a word is to be tested by checking the ordinary meaning (that is, ordinary signification) of the word to anyone purchasing, consuming or trading in the relevant goods. The plurality, in reasoning to that conclusion, observed (omitting footnotes):

[57]     In Clark Equipment, Kitto J considered for the purposes of registration in Pt B the word “Michigan”, which had acquired distinctiveness through twenty years of use in respect of the applicant’s goods despite the fact that it was a geographical name of a State in America. After approving Lord Parker’s test in Du Cros and Hamilton LJ’s observation in R J Lea, his Honour explained that directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly because use of them as trade marks will rarely eclipse their “primary” (that is, ordinary) signification. Such a word, his Honour said, “is plainly not inherently, ie in its own nature, adapted to distinguish the applicant’s goods”. Traders may legitimately want to use such words in connection with their goods because of the reference they are “inherently adapted to make” to those goods. Kitto J’s elaboration of the principle, derived from Lord Parker’s speech in Du Cros, applies with as much force to directly descriptive words as it does to words which are, according to their ordinary signification, geographical names.

…

[59]     The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

…

[71]     As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.

23.In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205; 124 IPR 264 at [236] the Full Court (Greenwood, Besanko and Katzmann JJ) summarised the principles applying to s 41, especially as they emerged from Clark Equipment and Cantarella, as follows:

(1)        In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2)         In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: ClarkEquipment Co v Registrar of Trade Marks; (1964) 111 CLR 511; [1965] ALR 344 (Clark Equipment) per Kitto J at CLR 514.

(3)The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at CLR 514.

(4)Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337; 315 ALR 4; 109 IPR 154; [2014] HCA48 (Cantarella) at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5)        The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6)        In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7)        In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8)        Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9)        Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10)      In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11)      Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12)      The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].

17.   To determine whether the Pending Marks should not have been accepted, I must determine whether a  s 41 objection is a valid ground for rejection.  This is a new, independent enquiry and not a review of the original decision reached during examination.

18.   The first step in deciding whether the Pending Marks are sufficiently distinctive to qualify for possible acceptance under s 41 is to determine the ordinary signification of the Pending Marks in Australia to persons who will purchase, consume or trade in the Goods and Services.[4]  

[4] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

19.   The Applicant argues that this involves a consideration of whether each of the Pending Marks makes a “direct reference” to the Goods and Services and, if each is not directly descriptive, it is prima facie registrable.[5]  In the present matter, the Applicant contends that any meaning the Pending Marks have is not directly descriptive but rather involves a search for meaning which does not preclude the marks from qualifying for acceptance.[6]  

[5] Ibid, [50].

[6] Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190, 194 (Dixon CJ).

20.   The Pending Marks are EXOTIC RESCUE, FIRST4 RESCUE, QUINELLA RESCUE and TOTE RESCUE where EXOTIC/FIRST4/QUINELLA/TOTE are each a type of bet which would be commonly understood by a significant proportion of Australian consumers with an interest in betting.  The word ‘rescue’ is a common English word meaning to save.

21.   From the commonly understood meanings of the two words comprising each of the Pending Marks, it is possible to ascertain that the ordinary signification of each of the marks is to indicate a product or service that will save or rescue an exotic/first4/quinella/tote bet.  However, it is not apparent what this means.  Taking for example a first4 bet which requires a customer to pick the first four finishers in a single race in the correct order, it seems that the ordinary signification of the mark FIRST4 RESCUE would indicate that the customer’s bet is not lost if one or more of the horses failed to place as predicted.  The Revocation Notices state that the Pending Marks indicate that the customer’s bet will be ‘rescued’ by offering a bonus credit or cash back if the bet placed loses in a fashion that meets the criteria of the promotion.  In my view, this meaning cannot be ascertained from any of the Pending Marks and at most, the marks convey only a ‘covert and skilful allusion’ to the Goods and Services.[7] 

[7] Cantarella, [50] quoting Solio Case [1898] AC 571, 583 (Lord Macnaghten).

22.   Further, I agree with the Applicant that the fact that the Pending Marks have been opposed by Entain does not, without more, indicate that a s 41 objection is justified nor does it constitute persuasive evidence that other traders wish to use the same or similar marks to the Pending Marks for their Goods and Services, without improper motive.

23.   I am not satisfied that there was an error during examination nor that the Pending Marks should not have been accepted. Accordingly, I am not required to consider whether or not it would be reasonable to revoke acceptance.

Decision

24.   I am not satisfied that any of the Pending Marks should not have been accepted. Accordingly, I decline to revoke acceptance of trade mark application numbers 2306316, 2306319, 2306320 and 2306321. 

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

6 July 2023