Sportsbet Pty Ltd
[2023] ATMO 82
•26 June 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2273405 QUADDIE RESCUE (classes 9 & 41) - in the name of Sportsbet Pty Ltd
Delegate: | Tracey Berger |
Representation: | Registrant: James Neil, Clayton Utz |
Decision: | 2023 ATMO 82 Trade Marks Act 1995 (Cth) – Hearing on intention to revoke registration under section 84A and revoke acceptance under section 38 – s 41 considered – not satisfied that trade mark should not have been registered – revocation of trade mark registration refused |
Background
This matter relates to a proposal by the Registrar of Trade Marks to revoke the registration and acceptance of trade mark registration number 2273405 (‘Registration’) for QUADDIE RESCUE (‘Trade Mark’) in classes 9 and 42 in the name of Sportsbet Pty Ltd (‘Registrant’) 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’)
On 30 May 2022, the Registrant filed an application to register the Trade Mark and, following a request for expedited examination, the Application was examined as required by s 31 of the Trade Marks Act 1995 (Cth).[1]
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
On 15 June 2022, an Examiner’s report issued on the application to register the Trade Mark raising queries regarding classification of some of the goods and services. Following amendment of the specification, the Trade Mark was accepted for possible registration and advertised as accepted on 31 October 2022. In the absence of any opposition, the Trade Mark was entered on the Register of Trade Marks on 10 January 2023.
On 20 March 2023, an Acting Assistant General Manager of Trade Marks and Designs issued a written Notice of Intention to Revoke Registration (‘Revocation Notice’) on the basis that a s 41(4) objection should have been raised during examination because:
A QUADDIE (or quadrella) is a type of bet requiring the bettor to pick the winners of 4 nominated races at the same track. The additional word RESCUE within your mark is being used in a promotional context to indicate a bet type 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 quaddie bet types should be able to use the mark or something nearly resembling it when describing their wagering products.
In response to the Revocation Notice, the Registrant asked to be heard under s 84A(5). This matter was 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 Registrant on 31 May 2023.
Legal Framework
Section 84A relevantly provides:
84A Registration may be revoked
Power to revoke
(1) The Registrar may revoke the registration of a trade mark if he or she is satisfied that:
(a) the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the registration, taking account of all the circumstances.
(2) The circumstances to be taken into account under paragraph (1)(a) include the following:
(a) any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;
(b) any relevant obligations of Australia under an international agreement;
(c) any special circumstances making it appropriate:
(i) not to register the trade mark; or
(ii) to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.
(3) The circumstances to be taken into account under paragraph (1)(b) include the following:
(a) any use that has been made of the trade mark;
(b) any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;
(c) other action taken in relation to the trade mark as a registered trade mark;
(d) any special circumstances making it appropriate:
(i) to revoke the registration; or
(ii) not to revoke the registration.
Section 38 provides the Registrar with discretionary power to revoke acceptance of a trade mark application if satisfied that the application in question should not have been accepted and it is reasonable to revoke acceptance, taking into account all the circumstances that existed when the application was accepted.
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.
Registrant’s Submissions
The Registrant submits that the Registrar should not be satisfied that it is reasonable to revoke the Registration and thus s 84A is not enlivened. In the alternative, the Registrant argues that the Registrar cannot nevertheless be satisfied that Trade Mark should not have been registered. I note that, in my view, the Registrant has reversed the considerations of s 84A in that the first question to be asked is whether the trade mark should not have been registered. It is only if the Trade Mark should not have been registered that s84A is enlivened and I must consider whether it is reasonable to revoke the registration. Accordingly, I will first consider whether the Trade Mark should not have been registered.
The Registrant has not filed a declaration of evidence of its use of the Trade Mark but claims in its submissions to have used the Trade Mark in relation to the Goods and Services since May 2020. In support of this contention, the Registrant attached various examples of use of the Trade Mark dated May 2020.
On 13 July 2022, the Registrant’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 Registrant’s prior
applications for the Trade Mark and (number 2273470) which at the time were accepted for possible registration but not yet advertised for opposition.In August 2022, the Registrant wrote to Entain putting them on notice of its earlier application for and use of the Trade Mark. Following that correspondence, the Trade Mark was advertised for opposition and proceeded to registration unopposed by Entain.
The remainder of the Registrant’s submissions are directed to whether or not the Trade Mark should not have been accepted or registered and that it is not reasonable to revoke the registration or acceptance of the Trade Mark in all the circumstances.
Discussion
Section 84A provides that firstly I must be satisfied that considering all of the circumstances, the Trade Mark should not have been registered. The Act provides that a relevant circumstance includes any error or omission that led directly or indirectly to the registration of the trade mark.[2] If I am satisfied that the Trade Mark should not have been registered, I must then consider whether it is reasonable to revoke the registration and acceptance.
[2] Section 84A(2)(a).
The Registrar’s powers to revoke the registration of a trade mark are intended to provide a straightforward avenue of redress by which to keep invalidly registered trade marks off the Register.[3]
[3] Explanatory Memorandum, Intellectual Property Laws Amendment Bill 2006 (Cth), sch 1, [9] - [10].
However, revocationof registration is a ‘serious matter’[4] which has retrospective repercussions on the statutory rights of the registered owner and hence, this power should be exercised with great caution. As the Deputy Registrar observed in Mr Lorne Bobart:[5]
But an owner can quite properly assume that the Registrar will only register trade marks where there are no prior rights and, short of bad faith, can quite properly expect that their registration is valid. Thus, followingrevocation, the rights, which a good faith owner could justly assume were presumptively valid, are undone. This is not a step that the Registrar can take lightly.
[4] Aleem Pty Limited as trustee for The Mini-Tankers IP Trust. [2015] ATMO 33, [27] (Hearing Officer C. Murray).
[5] [2010] ATMO 43 (Deputy Registrar M. Arblaster).
Should the Trade Mark have been registered?
Turning to the first question of whether the Trade Mark should not have been registered, the Revocation Notice identified s 41 as a ground for rejection that should have been raised during examination of the Trade Mark. It is apparent from the Examiner’s worksheet on the file that the Examiner considered the possibility of a s 41 objection but concluded that whilst ‘quaddie’ is commonly used in Australia as an abbreviation of ‘quadrella’ being a type of bet, the Trade Mark seems to only be used by the Registrant and the Trade Mark does not appear to be one which other traders would legitimately need or desire to use in the course of their business.
The Registrant submits that the Trade Mark is inherently distinctive and notes the following summary by Bromwich J in a2 Milk Co Ltd v LD&D Australia Pty Ltd[6] on the current law on the test for inherent distinctiveness:
[6] [2021] FCA 1515.
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.
- 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.
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].
Furthermore, pursuant to s 33, a presumption of registrability applies in relation to s 41 in that the Registrar must accept an application unless satisfied that there are grounds for rejecting it.
To decide whether registration of the Trade Mark should not have occurred, I must consider whether a s 41 objection is a valid ground for rejection of the Trade Mark. This consideration must be an independent and fresh enquiry not a review of the original decision during examination.
Ordinary Signification
It is apparent from the High Court’s decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited[7] that the first step of the test for distinctiveness is to determine the ordinary meaning of the trade mark in Australia to persons who will purchase, consume or trade in the goods and services.[8]
[7] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).
[8] Ibid, [71].
The Registrant submits that this involves a consideration of whether the Trade Mark makes a “direct reference” to the Goods and Services and if the Trade Mark is not directly descriptive, it is prima facie registrable.[9] In such cases, the Registrant argues that it is not necessary to consider the second step of the test because “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 [or services]. The test does not encompass the desire of other traders to use words which in relation to the goods [or services] are allusive or metaphorical”.[10]
[9] Ibid, [50].
[10] Ibid, [72]-[77].
I agree with the Registrant that the initial undertaking is to determine the ordinary signification of the mark and then to consider the degree of descriptiveness of that meaning to the Goods and Services.
The Trade Mark is QUADDIE RESCUE. The word ‘quaddie’ is defined in the Macquarie Dictionary as ‘a quadrella’[11] which in turn is defined as ‘a form of multiple betting on four horse races’.[12] In my view, the term quaddie is a commonly understood and used abbreviation for quadrella. The word ‘rescue’ is a common English word meaning to save.
[11] Macquarie Dictionary (online at 23 June 2023) ‘quaddie’ (def 1).
[12] Macquarie Dictionary (online at 23 June 2023) ‘quadrella’ (def 1).
Having regard to the commonly understood meanings of the two words comprising the Trade Mark, it is possible to ascertain that the ordinary signification of the mark indicates a product or service that will save or rescue a quadrella bet. What this actually means is not clear to me. It would seem to indicate that the customer’s bet is not lost if one of the horses it chose fails to win and hence, the customer is only required to make three successful choices for the bet to win. The Revocation Notice indicates that it means that the customer’s quadrella bet is rescued “in the form of bonus credit or cash back if the bet placed loses in a fashion that meets the criteria of the promotion”. I do not believe that the ordinary signification of the Trade Mark conveys this meaning. In my view, this conclusion could only be reached by reviewing the actual manner in which the Registrant uses the Trade Mark.
The Registrant argues that the Trade Mark conveys only a “convert and skilful allusion” to the Goods and Services[13] and the fact that another trader such as Entain may wish to use these words to “convey an allusive or metaphorical meaning” is not sufficient to sustain a s 41 objection.[14] I agree with the Registrant that the meaning conveyed is not sufficiently tangible or direct and hence the Trade Mark is prima facie registrable.
[13] Cantarella, [50] quoting Solio Case [1898] AC 571, 583 (Lord Macnaghten).
[14] Cantarella, [73].
A mere difference of opinion is not a sufficient reason to revoke registration[15] and there was no error or omission during examination in a s 41 ground for rejection not being raised. Therefore, the s 84A enquiry fails at the first hurdle and I am not required to consider whether or not it would be reasonable to revoke the registration and acceptance of the Trade Mark.
[15] Mr Lorne Bobart [2010] ATMO 43, [55] (Deputy Register Arblaster); Aleem Pty Limited as trustee for The Mini-Tankers IP Trust. [2015] ATMO 33, [26] (Hearing Officer Murray).
Decision
I am not satisfied that the Trade Mark should not have been registered and accordingly, I decline to revoke registration of trade mark registration number 2273405.
Tracey Berger
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
26 June 2023
2
6
4