Sportsbet Pty Ltd

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 s 41 of the Act (‘the First Report’). The Examiner maintained the ground for rejection in the face of responses from the Applicant over two more reports (respectively, ‘the Second Report’ and ‘the Third Report’). In response to the Third Report, the Applicant requested a hearing on the examination on 28 November 2018. In my capacity as a delegate of the Registrar, I heard the matter by way of written submissions on 1 April 2019 (‘the Applicant’s written submissions’).
It is necessary to first state the purpose of such a hearing is not to review the Examiner’s reasoning or decision, nor am I bound in any way to follow their approach. Rather, I must consider afresh the ground for rejection, along with any additional material filed in support. The Applicant did not introduce any new evidence outside of what it provided during examination. As the Applicant’s written submissions include many similar arguments made to the Examiner, though allege several “critical errors” in examining the Claimed Mark, I shall briefly summarise the correspondence prior to the matter coming before me.
The First Report stated:
Your trade mark is SAME GAME MULTI.
A MULTI bet is a bet type whereby the better can combine a series of single bets into one bet with the odds multiplying with each additional bet (see: at 29/5/18).
A same game multi is a bet for multiple bets to occur within a specified game.
Please note that I have included internet links below showing the generic use of this term for your perusal. These examples indicate that other traders acting without improper motive will need to use this term, or some words nearly resembling it, to describe their own goods and services.
See:
at 29/5/18
at 29/5/18
The First Report went on to provide the option of supplying evidence of use in terms of s 41(3) of the Act, indicating the Examiner considered the Claimed Mark was not to any extent inherently adapted to distinguish the claimed goods and services.
In response, the Applicant argued that the Claimed Mark is sufficiently inherently adapted to distinguish. The Applicant relied upon the majority decision of the High Court in Cantarella Bros v Modena Trading (‘Canterella’)[1] and contended the majority clarified that the oft cited test for distinctiveness, as expressed by Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’),[2] is a two-step process (which I discuss in some detail below).
[1] [2014] HCA 48.
[2] (1964) 111 CLR 511.
For the first step, the Applicant claimed the “ordinary signification” of the Claimed Mark could not be taken to be a direct description of the claimed goods and services. When considering the dictionary definitions for each individual word comprising the Claimed Mark, multiple alternative interpretations of the phrase SAME GAME MULTI come to light. As the Claimed Mark was not a direct reference to the goods and services, the Applicant considered it unnecessary to discuss the second step of the test in Clarke Equipment. However, proceeded to discuss the legitimate need for other traders to use the Claimed Mark, as at the filing date, as being a matter of evidence.[3] In this instance, it was alleged that no other trader had used or was using the phrase SAME GAME MULTI as at the priority date. The internet links provided by the examiner purporting to show use of the Claimed Mark by other traders, showed use after this date. Given the Claimed Mark was not directly descriptive, it was alleged that honest rivals were not precluded from having other words available which describe their own similar goods and services and the Trade Made should be accepted for registration.
[3] Citing Kenny J in SportsWarehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [102].
The Examiner maintained the ground for rejection in the Second Report. While acknowledging each word in the Claimed Mark may have a dictionary definition not directly related to the goods and services, the Examiner observed of the phrase as a whole:
When considering the context of the goods/services sought, it is common practice for a punter or consumer to refer to their gambling or betting type as a SAME GAME MULTI, given it indicates a multi bet placed within the same game being bet upon, and readily understood as such…
I note that I have included examples of other traders using in the marketplace, for your perusal, indicating that other traders acting without improper motive will need to use SAME GAME MULTI, or some words nearly resembling them, to describe their own goods and services.
The Applicant, in turn, reiterated the Claimed Mark was inherently adapted to distinguish as it was an invented term, syntactically unusual and “outside of the common stock.”[4] The Applicant additionally supplied a declaration by Mark Migliorini, dated 25 October 2018, in support of the Claimed Mark’s registration. Mr Migliorini is the Chief Marketing Officer of the Applicant, and together with Exhibits MM-1 to MM-6, describes the Applicant’s adoption of the Claimed Mark in 2016 and its subsequent commercial success (‘the Migliorini Declaration’). The Applicant noted the Migliorini Declaration clarified the use put forward by the Examiner in support of the ground for rejection, was in actuality, use by the Applicant or an overseas corporate entity who also owns the Applicant.
[4] Red Energy Pty Ltd v Registrar of Trade Marks [2018] FCA 1449.
The Examiner maintained the ground for rejection under s 41(3) of the Act in the Third Report. This was despite acknowledging that the Applicant had shown significant use as of February 2017, being approximately 12 months before the priority date. The Examiner considered that this was not enough to show the Claimed Mark “had become overwhelmingly identified with the Applicant’s goods and services only.”

The Applicant

Before I discuss the substantive matter, I think it useful to outline the nature of the Applicant’s business, as well as the events leading to the creation of the Claimed Mark. The Applicant offers betting services to Australian consumers online through its website ( its mobile app and over the telephone. It offers its betting services across racing, sports and a selection of general entertainment and political events. For around 15 years, the Applicant has advertised, marketed, promoted and offered a range of wagering products under its SPORTSBET house mark (depicted below), while occasionally developing and promoting additional brands for specific offerings.[5]

(‘the SPORTSBET mark’)

[5] The Migliorini Declaration, paragraph [6]-[7].

The creation of the Claimed Mark

The Applicant contends it coined the phrase SAME GAME MULTI in 2016 when its product team “developed a new innovative product which allows a consumer to place multiple bets on a single event”; referred to internally as project “Light Year”.[6] Mr Migliorini declares that one of the key milestones for early 2016 was to confirm a brand name for the new product.[7] In developing a name for this new product, the Applicant’s initial preference was “IN-MATCH MULTI”. This did not test well, and the Applicant proceeded to engage an external firm to conduct market research on the appeal of the new product to consumers, as well as obtaining insight into preferred brand names for the new product.[8] Around the same time, an email was sent internally containing a list of 14 potential names, including the Claimed Mark. I am not provided this email, though the evidence indicates a consideration for the adoption of a new name was whether there were any third parties using it in the Australian market.[9]
[6] Migliorini Declaration, paragraph [21].
[7] Migliorini Declaration, paragraph [22].
[8] Migliorini Declaration, paragraph [25]
[9] Migliorini Declaration, paragraph [24]
The results of the market research are provided in a document entitled “Sportsbet Hub Project Light Year: Name Selection”, contained in Confidential Exhibit MM-1 (‘the Market Research’). The Migliorini Declaration states the Market Research indicated the product was highly appealing and the name SAME GAME MULTI was the “preferred brand name” as ranked by the research participants; though other names such as “SINGLE GAME MULTI”, “ONE GAME MULTI” and “MATCH MULTI” also tested positively.[10] The Applicant ultimately chose the Claimed Mark as the brand for its new product in early July 2016.[11]
[10] Migliorini Declaration, paragraph [26].
[11] Migliorini Declaration, paragraph [27].

Discussion

The Applicant’s written submissions expand on its arguments made during examination in greater detail. As a general outline, the Applicant submits:
i. Primarily, the ground for rejection be withdrawn as the Claimed Mark is sufficiently inherently adapted to distinguish to such an extent that it is, on its face, capable of distinguishing the claimed goods and services; or

In the alternative, the Claimed Mark does or will (at a minimum) be capable of distinguishing the claimed goods and services, and, in view of the evidence contained in the Migliorini Declaration, should be accepted under s 41(4) of the Act.

A third potential finding would be that the Claimed Mark had acquired the ability to distinguish the claimed goods and services as at the filing date and should be accepted for registration under s 41(3) of the Act. No direct submissions are made in this regard. The Applicant instead submits that s 41(3) is not the appropriate provision for the Claimed Mark when assessed against the claimed goods and services and the evidence.

The legal framework

Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. Section 17 of the Act defines a trade mark as:
What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[12] Regarding the present application, the only ground for rejection identified is under s 41 of the Act.
[12] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].
Section 41 of the Act 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.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(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.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
In effect, s 41(1) provides an application may only be rejected if it is “not capable of distinguishing” the designated goods or services and s 41(2) provides this will only be the case if either ss 41(3) or (4) apply. Whether ss 41(3) or (4) apply will depend in turn upon whether, and if so to what extent, the mark in question is “inherently adapted to distinguish” those goods or services.[13] Different evidentiary burdens arise in the event either ss 41(3) or (4) is found to apply.
[13] Unilever Plc v Beiersdorf AG [2017] ATMO 25, [45].

Inherently adapted to distinguish

The commencing step is to assess whether, and to what extent, the Claimed Mark is inherently adapted to distinguish the claimed goods and services. The Applicant’s written submissions provide several points on what it considers to be distinguishing factors of the Claimed Mark. As stated in submissions:
On the face of it, [the Claimed Mark]:
a)was not as at the Priority Date a common term – the only uses relied on by the examiner (in the form of the Internet Results) that relate to the Australian market before the Priority Date were uses made by the Applicant;
b)was not as at the Priority Date found in the dictionary;
c)has a level of assonance through the rhyming of the first two words SAME GAME;
d)pronounced and considered as a whole has an overall rhythm;
e)is syntactically unusual (it is not normal for a mark to end in MULTI); and
f)is incomplete.
The Claimed Mark must possess the requisite capability to distinguish the claimed goods and services as of the priority date, being 30 April 2018 (‘the Priority Date’).[14] Whether or not it is inherently adapted to distinguish is objectively determined,[15] with the focus being on the inherent nature of the Claimed Mark itself.[16] In Clark Equipment, Kitto J explained that a mark’s inherent adaptation to distinguish is:
… 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, 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.[17]
[14] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968, [30].
[15] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [75].
[16] Burger King Corp v Registrar of Trade Marks [1973] HCA 15, [7]; (1973) 128 CLR 417, 424.
[17] [1964] HCA 55, [5]; (1964) 111 CLR 511, 514.
His Honour reached this conclusion after having approved of, inter alia, the decision of Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd, who said of a distinctive trade mark, that it’s registrability should:
… largely depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark merely resembling it, upon or in connection with their own goods.[18]
[18] [1913] AC 624, 635.

In Canterella, the majority endorsed that the “ordinary signification” of the words, in Australia, is to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the mark makes either a “direct reference” (prima facie not registrable) or a “covert and skillful allusion” (prima facie registrable) to the relevant goods or services.[19] Once the ordinary signification is established, an enquiry may then be made into whether other traders might legitimately need to use the mark in respect of their similar goods or services.[20]
[19] Canterella, [59].
[20] Ibid. [71].
As foreshadowed the Applicant’s written submissions make similar arguments as those put before the examiner regarding the dictionary definitions of the words constituting the Claimed Mark. In this way, the combination of the words “SAME GAME” are said to introduce ambiguity of meaning as it could refer to the same or similar sport or, more broadly, contest for amusement. Regarding the term “MULTI”, the Applicant argues it does not have a dictionary definition related to a bet or betting. The definition relied upon by the examiner in the First Report (‘the Bet Types definition’) shows use of the phrase “multi bets”, thus the additional word “bet” is required to contextualize the definition. As a whole, the Applicant contends the Claimed Mark cannot be a direct reference given an additional word is needed to provide specificity of meaning. As it is not a direct reference, the Applicant submits the Claimed Mark makes at most a “skillful or covert allusion” to the claimed goods and services and is thus inherently distinctive. By way of example, the Applicant’s written submissions suggest it is quite apparent that SAME GAME MULTI does not ordinarily signify, for example, computer programs or computer software or loyalty cards for betting and gambling. It is contended that this is due to no consumer referring to a computer software product directly as SAME GAME MULTI. The same is said of, for example, entertainment services in class 41. I do not draw the same conclusions.

The relevant audience

Stated earlier, the ordinary signification is to persons who will purchase, consume or trade in the goods or services which permits a conclusion to be drawn as to whether the words contain a direct reference to the claimed goods or services. The Full Federal Court in Primary Health Care Limited v Commonwealth of Australia (‘Primary Health Care’) further explained:
Although the majority in Cantarella described that audience as “persons who will purchase, consume or trade in the goods”, that was not an exhaustive description. The majority went on to say that the ordinary signification of the trade mark to “any person in Australia concerned with the goods” is to be considered. However, the majority cannot be taken to suggest that any class of persons with some interest in the goods or services, no matter how remote, is to be considered.[21]
[21] [2017] FCAFC 174, [302].
Presently, no written submissions are provided on who would be, in Australia, the audience concerned with the claimed goods and services. However, Primary Health Care went on to state:
It is logical that in determining the ordinary signification of the trade mark, the greatest attention would usually be given to the understanding of the classes with the closest and most direct concern with the designated goods or services (leaving aside the applicant for registration). This will often be rival traders or direct purchasers… Having said that, the ordinary signification of a trade mark is a question of fact for the Registrar (and the judge hearing an appeal against the Registrar’s decision).[22]
[Emphasis added].
[22] Ibid. [313].
The Migliorini Declaration lists who the Applicant’s major trade competitors are in the “Australian online corporate betting market”[23] and I think it clear the purchasers or consumers are those involved in betting or gambling, colloquially referred to as ‘punters’ (together, the ‘relevant audience’). Accordingly, my conclusion on what the phrase SAME GAME MULTI will ordinarily signify is informed by the perspective of that relevant audience.
[23] Migliorini Declaration, paragraph [57].

A coined phrase

The Applicant announced its new product via a blog post in late July 2016 (‘the Blog Post’). Relevantly, the Blog Post describes:
WHAT IS A SAME GAME MULTI?
Exactly what it sounds like. Same Game Multis let you place a Multi Bet using a combination of legs from the same AFL match on your mobile. [24]
[Emphasis added].
[24] Migliorini Declaration, paragraph [37] and Exhibit MM-2.
I can infer from the materials before me a “leg” represents one of multiple outcomes upon which a punter wagers on the occurrence. The multiple “legs” are then compiled into a single overall bet, hence the shortened “multi bet”. The website containing the Bet Types definition, indicates a traditional “multi bet” is compiled of outcomes across different matches. The wagering innovation introduced by the Applicant was to allow for several bets on multiple outcomes occurring within the same event, match or game.
The Applicant’s written submissions contend the term “multi” does not signify a bet on its face and requires the added word for context. I accept there is an intricate betting format conveyed by the term “multi”. However, as far as the relevant audience is concerned, I do not find this meaning is dependent on the additional word “bet”. Relevantly, the Applicant frequently uses “Multi” in a standalone manner. By way of demonstration, some additional passages from the Blog Post are extracted below:
Love a Multi…?
… Whether you’re a club tragic who wants to put a 20-leg Multi on the Richmond game…
… Same Game Multis are here to let you get your Multi on in more ways than ever before.
Similarly, some of the Applicant’s promotional material show use of the standalone “multi”. For example:[25]

[25] Migliorini Declaration, Exhibit MM-6.

This standalone use is reflected, more broadly, in the Examiner’s research. For instance, the Examiner captured an article published to News.com.au on 1 December 2017, entitled “Punter takes home $7500 from outrageous NBA multi”. The article also states, “the unknown maestro compiled a lengthy 12-leg multi-bet on the Golden State Warriors’ clash with the Los Angeles Lakers...”. Therefore, I find that the relevant audience would be quite familiar with the meaning of “multi” as it relates to gambling on (primarily) sporting events.
Returning to the coinage of the phrase, the Applicant’s written submissions refer me to several decisions where distinctiveness has been considered with respect to coined terms and neologisms. These provide some useful points of principle. In particular, the decision in Campina Melkunie v Benelux-Merkenbureau in which the Court of Justice of the European Union (‘CJEU’) observed of the mark BIOMILD:
Thus, a mark consisting of a neologism composed of elements, each of which is descriptive of the characteristics of the goods or services in respect of which registration is sought, is itself descriptive of those characteristics… unless there is a perceptible difference between the neologism and the mere sum of its parts.[26]
[Emphasis added]
[26] (C-265/00)[2004] ECR 1-01699, [41].
The observations of the CJEU are similar to those of Hill J in Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH (‘Aldi Stores’):
Where the sign or mark is an invented word or invented combination of words, it will usually be easy to conclude that use on packaging or on the goods themselves is a trade mark use, although as the Johnson & Johnson [Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326] case demonstrates some invented words might (while not yet having entered into the English language) themselves suggest a meaning, so that a particular use may not be a trade mark use. Where the word has or a combination of words have a clear meaning in ordinary use, the question will be much more difficult as the word or combination of words may either have taken on a secondary meaning indicating the origin of the goods or may simply convey an ordinary meaning (ie some message other than the trade origin of the goods): see Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 at 286.[27]
[Emphasis added]
[27] [2001] FCA 1874, [23].
It follows that merely being the first to combine and use descriptive words in an, as of yet, unheard manner will not necessarily render that combination a Trade Mark. There needs to be a perceptible difference between the coined phrase as a badge of origin and the ordinary meaning conveyed by the sum of its parts. Such perceptible difference is necessary since it is inherent in the definition of a trade mark is that it must be used, or intended to be used, to distinguish goods and services. Note 1 to sub-ss 41(2), 41(3) and 41(4) is similarly clear in that a trade mark is not inherently adapted to distinguish when it is ordinarily used to indicate the kind of, intended purpose or some other characteristic of the goods and services.
I accept the Applicant coined the sequence of words “SAME” and “GAME” and “MULTI” and the ordinary signification of this, as a whole, must be considered. In so considering, I acknowledge the sequence contains a rhyme and has an overall rhythm when pronounced. However, when used “in relation to”[28] the goods and services, the purpose of which facilitate a bet or wager, I do not find this makes a perceptible difference in what is otherwise an inherently descriptive meaning conveyed by the combination of these words. As I have explained, the term “multi” has a known and relevant meaning in relation to sports gambling. When preceded by the words “SAME GAME”, I find the relevant audience would immediately comprehend the ordinary signification of the Claimed Mark as it relates to the claimed goods and services. That is, as a direct reference to the kind of betting product being offered and indicative of the purpose to which the Applicant provides the claimed goods and services.
[28] As defined in s 7(4) and s 7(5) of the Act to be upon the goods, or in physical or other relation to the goods and services.

Use as a badge of origin in its own right?

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]
In this respect, I am not convinced the evidence illustrates the Applicant’s use of the phrase SAME GAME MULTI as a badge of origin in its own right. The Applicant adopted the mark following the Market Research and, while this is stated to have tested for brand name preferences, the following extract from the “Background and Objectives” is telling:
A few weeks ago the Brand team at Sportsbet was briefed by the product team to help them come up with a name for their new product: Light Year. Light Year allows customers to place in-game multis…
The product team has completed some initial research and the name they were using ‘In-Match Multi’ hasn’t tested well. The name needs to resonate with customers and basically “Does exactly what it says on the tin” and be flexible enough for all events. [38]
[Emphasis added]
[38] The Migliorini Declaration, Confidential Exhibit MM-1. The extracted information consists of, or is easily inferable from, material already forming part of the public record.
The idiom - “does exactly what it says on the tin” - denotes the name of a thing precisely describes its purpose, qualities or function. This indicates the Applicant chose to adopt a name for its new product which closely described it. In such circumstances, uncertainty over its use in the course of trade as a badge of origin, or simply an apt product description, seems a natural and inevitable result.
Of course, it is possible for a trade mark to perform more than one function, but it must still operate as a trade mark.[39] The context in which use occurred is relevant. Looking at the use between July 2016 and the Priority Date, the Blog Post provides an early and defining example of the doubt in which SAME GAME MULTI is used as a badge of origin. The statement in the Blog Post – “does exactly what it sounds like” – reinforces from an early stage that SAME GAME MULTI is an apt description of the Applicant’s new product and thus inherently descriptive. The promotional material sampled earlier additionally shows the descriptive statement – “now place multis in the same game” – immediately following the words SAME GAME MULTI.
[39] Blu-Ray Disc Association [2011] ATMO 51, [27].
Further instances of use provided in the Migliorini Declaration show both a plain text version and a version of SAME GAME MULTI presented with some very minor get-up; examples of which are tabled in ANNEXURE A. The Applicant has offered no comment on this latter version, though I would note the Claimed Mark sought to be registered is rendered in plain text. Use of the plain text is particularly apparent in the Applicant’s mobile application, through which Mr Migliorini states a significant portion of the Applicant’s business is conducted.[40] The tabled examples depict how the plain text is used in-app and, in my view, presents as descriptive of a bet category.
[40] The Migliorini Declaration, paragraph [36].
In the examples provided, the Claimed Mark can also be seen in very close proximity to the more prominent SPORTSBET mark. While two trade marks in close vicinity can still operate in their own right as indications of origin, “the use of descriptive words, may, however, make it more difficult to establish the words do so distinguish the product.”[41] Justice Moshinsky in Sportsbet Pty Ltd v Crownbet Pty Ltd said of the Applicant:
[The Applicant] is the largest non-retail corporate bookmaker in Australia. In the years since 2012, and particularly in the years 2015 to 2017, it has spent very large sums each year on advertising. The evidence demonstrates that it has very high level of brand recognition. [The Applicant] is the registered owner of a number of trade marks for the word SPORTSBET.[42]
[41] Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438, [33].
[42] [2018] FCA 1045, [1].
Looking at the confidential figures contained in the Migliorini Declaration,[43] I agree with his Honours assessment. Additionally, since February 2017, it is clear from the number of bets placed and the profit generated, the SAME GAME MULTI product has been a valuable revenue channel for the Applicant. However, the Applicant’s substantial promotion of and reputation in the SPORTSBET mark, its close proximity to the Claimed Mark, and the descriptiveness of the Claimed Mark all combine to significantly detract from the Applicant’s purported use of the Claimed Mark as a badge of origin in its own right. As Bennett J in Go On relevantly states:
Evidence of use does not assist in the consideration of inherent capacity or adaptability of the expression to distinguish or become distinctive (Samuel Taylor Pty Ltd v Registrar of Trade Marks (1959) 102 CLR 650 at 658). Evidence of use is relevant only to the question of whether the mark possessed the required capability at the priority date (Austereo at [33]). Evidence that a particular expression has assumed a secondary and distinctive meaning after registration may afford some indication that, initially, the expression had a capacity to become distinctive but as the High Court noted in Samuel Taylor at 657, use in combination with another trade mark makes it ‘difficult to see how the critical words could have acquired a distinctiveness of their own’.
[43] The Migliorini Declaration, paragraph [43].
Weighing the extent to which the Claimed Mark is inherently adapted to distinguish and the manner in which the Applicant has used it, I find the Claimed Mark was not capable of distinguishing the claimed goods and services as at the Priority Date.

Decision

Section 33 of the Act 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.
Note: For this Act see section 6.
(2) The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(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.
Note: For this Act see section 6.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note: For applicant see section 6.

I am satisfied that there is a ground for rejecting the Claimed Mark under s 41(3) of the Act. As such, I reject trade mark application 1923240 in accordance with s 33(3) of the Act. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Aaron Walters

Hearing Officer

Oppositions and Hearings

4 June 2019

ANNEXURE A

Still frames of the Applicant’s television commercials and online advertisements

(The Migliorini Declaration, paragraph 32 and 44; Exhibit MM-3 and Exhibit MM-6.)

Screen shot from the “Sportsbet App”

(The Migliorini Declaration, paragraph 34 and Exhibit MM-6)

Still frame from the Applicant’s intructional YouTube® video “on how to use the SAME GAME MULTI product”

(The Migliorini Declaration, paragraph 38 and Exhibit MM-3)

[2019] ATMO 86

3 June 2019