Sportsbet Pty Ltd - [2019] ATMO 86

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1923240 (9, 41) - SAME GAME MULTI- in the name of Sportsbet Pty Ltd.

Delegate:

Aaron Walters

Representation:

Applicant: Written submissions by King & Wood Mallesons

Decision:

2019 ATMO 86

Request to be heard under s 33 of the Trade Marks Act 1995 – Section 41 considered – trade mark not capable of distinguishing at the priority date – evidence did not demonstrate trade mark use as a badge of origin – trade mark rejected.

Background

Sportsbet Pty Ltd (‘the Applicant’) lodged an application to register a trade mark under the provisions of the Trade Marks Act 1995 (Cth) (‘the Act’) on 30 April 2018. The current details of the trade mark application are:

Trade Mark No. 1923240

Trade Mark: SAME GAME MULTI (‘the Claimed Mark’)

Specification of Goods and Services:

Class 9: Computer programs; computer software for betting and gambling services; electronic publications; computer software and computer programs for distribution to, and for use by, users of a betting services; computer games programmes downloaded via the Internet (software); software for use in gambling and betting apparatus, devices and machines; Internet gambling software; software for operation of online games; compact discs and DVD's; computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data; loyalty cards for betting and gambling; magnetic cards for betting and gambling; magnetically encoded cards for betting and gambling; computer cards (smart) for betting and gambling; smart cards with microprocessors for betting and gambling; smart cards (machine readable cards) for betting and gambling; downloadable news, information and publications supplied over a global communication network in respect of betting and gambling; interactive sports, racing, event wagering and other gambling solutions being software in this class; data recording apparatus for use with betting and gambling apparatus devices and machines; parts and accessories for all the aforesaid goods, including digitally stored user manuals and instructional books sold as a unit therewith
Class 41: Entertainment services; sporting activities; interactive on-line gambling services; provision of recreation and entertainment information in respect of betting, contingencies and odds; sports wagering services and approved betting competitions; betting and gambling services; betting, lottery or book making services; betting, gambling, lottery or book making services using credit cards; organising and conducting lotteries; electronic betting, gambling and lottery services provided by means of the Internet, or via a global computer network, or on-line from a computer network database, or via telephony including mobile telephones, or via a television channel; gambling information provided on-line from a computer database or via the Internet; information and advisory services relating to the aforesaid services; factual information services relating to sport

(‘the claimed goods and services’)

Examination of the Claimed Mark began as required under s 31 of the Act. A first examination report was issued on 29 May 2018 identifying a ground for rejecting the trade mark application under…

Grounds of appeal

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

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

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

Consideration

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

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

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Details

Case: [2019] ATMO 86
Decision Date: 3 June 2019

CaseChat Overview and Summary

This matter concerns an application by Sportsbet Pty Ltd for the registration of the trade mark "SAME GAME MULTI". The dispute arose from the Examiner's decision to refuse registration, which was based on the finding that the mark was not inherently adapted to distinguish Sportsbet's goods and services, and that other traders might legitimately need to use the mark descriptively. The decision was heard by Justice Aaron Walters of the Federal Court of Australia.

The primary legal issue before the Court was whether the trade mark "SAME GAME MULTI" was inherently adapted to distinguish the goods and services offered by Sportsbet, or if it was a descriptive term that other traders might legitimately need to use. This involved considering whether the term was common parlance for a type of betting product and whether its use by competitors would be for a descriptive purpose rather than as a badge of origin.

Justice Walters considered the principle that the common right of the public to make honest use of words forming part of the common heritage is paramount. He noted that words so adapted for descriptive purposes cannot be justified for registration, even with acquired distinctiveness. The Court acknowledged that while a descriptive statement may be associated with a particular trader, this does not automatically mean it is inherently adapted to distinguish that trader's goods. The context of use is crucial in determining whether a term functions descriptively or as a badge of origin. The Court disagreed with the proposition that any third-party use after the Priority Date must be seen as actuated by improper motives, emphasizing the importance of the public's right to use descriptive language.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

In considering whether other traders would be likely, without improper motive, to desire to use the Claimed Mark upon or in relation to the claimed goods and services, the joint judgment of the Full Federal Court in Telstra Corporation Ltd and Another v Phone Directories Company Australia Pty Ltd and Others is useful: Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods… Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at 543-544 [102] per Kenny J), but would be considered in light of all of the evidence in the case.[29][Emphasis added][29] [2015] FCAFC 156; (2015) 237 FCR 388, [126]. Recalling now the Second Report, the Examiner considered it “common practice” for punters to refer to their gambling or betting as a SAME GAME MULTI and provided examples of use by other traders within the marketplace. The Applicant’s written submissions contend however there was no relevant evidence of third-party descriptive use as of the Priority Date and without such, the assessment of the needs of other traders would be merely speculative.[30] Additionally, at the time of launch, Mr Migliorini alleged no other competitors were offering a similar product to the Applicant’s SAME GAME MULTI.[31] Following the launch (and up to the Priority Date), he further claimed the Applicant’s competitors would be monitoring and aware of its use of the SAME GAME MULTI product.[32] In his view, given the circumstances, any use of the Trade Made by competitors would be in bad faith.[33] The Applicant’s written submissions similarly propose, based on the Applicant’s substantial use of the Claimed Mark, any third-party use as at or after the Priority Date must be seen as actuated by improper motives. [30] Citing Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, [50].[31] The Migliorini Declaration, paragraph [59].[32] The Migliorini Declaration, paragraph [60].[33] The Migliorini Declaration, paragraph [61]. I disagree with this proposition. As Kitto J made clear, it is “the common right of the public to make honest use of words forming part of the common heritage”,[34] with some words “so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration.”[35] Equally, while a descriptive statement may be commonly associated with a particular trader’s goods and services, this will not in and of itself, mean that statement is inherently adapted to distinguish that trader’s goods and services.[36][34] Clarke Equipment, 514.[35] Ibid. 516.[36] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968, [38]. Justice Bennett further observed in Unilever Australia Ltd v Societe Des Produits Nestlé S.A (‘Go On’):The more apt the word or expression is to describe the goods, the less it is inherently apt to distinguish them as the goods of a particular manufacturer (Clark Equipment at 515). The setting or context in which the use occurs is relevant in determining whether the use is descriptive or for the purpose of indicating a connection in the course of trade between the product and the trade mark applicant, as a badge of origin (Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 424–5; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 350–1).[37]

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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