Surfers Burgers Limited

[2019] ATMO 27

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1815800 (class 43) – International Registration 1323616 - SURFERS' BURGERS - in the name of Surfers' Burgers Limited.

Delegate:	Nicole Worth
Representation:	Holder: Miriam Stiel and Kimberly Evans of Allens Patent & Trade Mark Attorneys.
Decision:	2019 ATMO 27 Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) – ex parte proceedings under reg 17A.24 – ground for rejection raised under s 41 – geographical significance of word that has more than one meaning – trade mark not capable of distinguishing – extension of protection refused.

Background

1. This matter is pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (‘the Regulations’) which stipulates that the Registrar must, after examination of an International Registration Designating Australia (‘IRDA’), either accept the IRDA with or without conditions or limitations or reject it. On 27 October 2016 Surfers’ Burgers Limited (‘the Holder’) filed an IRDA seeking protection in Australia of the trade mark detailed below.

   Trade Mark:           SURFERS’ BURGERS (‘the Trade Mark’)

   Application No.:      1815800

   International Registration No.:     1323616

   Services:Bar services; cafeteria services; cafe services; restaurant services; food and drink catering; snack-bar services; canteen services.

2. The IRDA was examined and per reg 17A.28 (which stipulates that the grounds for rejecting an IRDA are those set out in ss 39 to 44 of the Trade Marks Act 1995 (‘the Act’)), a ground for rejection under s 41(4) of the Act was raised. Section 41(4) applies to trade marks that are to some extent, but not sufficiently, inherently adapted to distinguish the owner’s goods or services from those of other persons. The basis for the ground for rejection, as stated in the first examination report, was:

   [The Trade Mark] is, or has as its main feature, the word SURFERS’. This is the name often given to SURFERS PARADISE, which is a suburb within the city of the Gold Coast in Queensland, Australia. SURFERS’ is well known as a tourist area and is popular for its eateries.

[The Trade Mark], as a whole, therefore indicates your services involve the provision of BURGERS in the suburb of SURFERS.

1. The Holder’s contention was, in summary, that the primary signification of the word SURFERS’ was not a geographical reference. It argued that according to the Macquarie Dictionary the meaning of the words SURFERS’ (noting also the possessive apostrophe) is someone who surfs, either at the beach or on the internet. It was contended not to be a reference to Surfers Paradise, and that ‘a word does not become a geographical name simply because some place on the earth’s surface has been called by it’.[1]

   [1] Shanahan’s Australian Law of Trade Marks and Passing Off (6^th Ed, Online) at [20.680] citing Re Magnolia Metal Co’s Trade Mark (1897) 14 RPC 621 at 627-628 (CA UK).

2. After three examination reports the examiner remained of the view that s 41(4) of the Act was applicable, and so the Holder requested to be heard.

3. I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 6 December 2018. Miriam Stiel and Kimberly Evans of Allens Patent and Trade Mark Attorneys made written and verbal submissions on behalf of the Holder.

4. As a preliminary matter I mention that the focus of the decision here is not to review the examiner’s decision and arguments, but rather to consider afresh the ground for rejection that has been raised.

Section 41

1. 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.

   …

   (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.

2. The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the Holder’s services from the similar services or closely related goods of other traders. This is to be tested:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]

   [2] Clark Equipment Company v Registrar of Trade Marks (Clark Equipment) [1964] HCA 55; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48.

3. Accordingly, the inquiry is one of ordinary signification (should it exist) of the expression SURFERS’ BURGERS. Should the expression have an ordinary signification to the Australian public, then what is the likelihood that other traders of similar services would wish to use it in good faith?

4. The ordinary signification of the word BURGERS is of a type of food. It describes the food to which the claimed services relate and is commonly used in respect of them.[3] Although it cannot be discounted altogether, the weight it contributes to differentiating the services of the Holder from those of others is slight. The potential distinctiveness of the Trade Mark rests primarily with the word SURFERS’.

   [3] I note that BURGER is also a surname, however it is relatively uncommon in Australia and in the context of the services is unlikely to be perceived as such.

5. The Macquarie Dictionary[4] defines ‘surfer’ as:

   noun  1. someone who engages in surfing.

   2. someone who is a keen surfboard rider.
     3. internet surfer

Accordingly, SURFERS’ may refer to those who engage in surfing either in the water or upon the internet. At the same time it is also necessary to recognise that:

One can place too much weight on dictionary definitions. Whilst they provide a guide to the meaning of a word, they may not set out its meaning exhaustively. Colloquial usage may provide further meanings to those set down in dictionaries.[5]

[4] Online edition, Macmillan Publishers Australia 2019.

[5] Sports Warehouse, Inc. v Fry Consulting [2010] FCA 664, [86].

1. I am aware, from my own knowledge, of the geographical location Surfers Paradise and that it is commonly referred to as ‘Surfers’. I take note also of the examiner’s research into the name,[6] wherein the following information is provided:

   ·     The Columbia Gazetteer of the World states in the entry for Surfers Paradise: ‘Holiday destination; patrolled beaches, esplanade, beachfront market; surfing, resort facilities. Many high-rise buildings. Commonly known as “Surfers.” Formerly called Elston.’ [Emphasis added]

   ·     Wikipedia states in the entry for Surfers Paradise: ‘Surfers Paradise is a suburb within the local government area of City of Gold Coast in Queensland, Australia…Colloquially known as ‘Surfers’, the suburb has many high-rise apartment buildings and a wide surf beach…Surfers Paradise is the Gold Coast’s entertainment and tourism centre…’. [Emphasis added]

   ·     The website ‘ wherein the history of Surfers Paradise is discussed at length, commonly refers to the location as ‘Surfers’:

   o   ‘community leaders, colourful personalities and business identities have…found new and exciting ways to combine Surfers’ vibrant energy with bold visions of what the area can become’;

   o   ‘a diverse range of nationalities and demographics are drawn to Surfers’ white sands and rolling Pacific Ocean waves’; and

   o   ‘Surfers has been an entertainment playground famous for its world-class nightlife venues’.

I mention also that all of the first ten results of the examiner’s Google search for the words ‘Surfers Burgers’ relate to various burger restaurants in the location Surfers Paradise.

[6] Which was forwarded to the Holder along with the second examination report.

1. Accordingly, it must be recognised that there is a degree of geographical significance to the word SURFERS’ in Australia.

2. A further matter is the presence of the possessive apostrophe in the Trade Mark, however I consider that this can be dealt with summarily. The possessive apostrophe indicates that the BURGERS are those of SURFERS. Of itself, it does not give weight either way to what the meaning of the word SURFERS’ might be, only that the BURGERS are ‘of’ either the group of people referred to as ‘surfers’ or the place referred to as ‘Surfers’. Additionally, I do not consider that the lack of possessive apostrophe in the geographical name Surfers Paradise significantly impacts whether SURFERS’ might be perceived as the geographical reference. ‘Surfers Paradise’ is grammatically incorrect – it is in fact an Australian convention that possessive apostrophes are not to be used in place names.[7] Be that as it may, the lack of apostrophe is not something the ordinary public is likely to have taken significant note of. As such, in my estimation the possessive apostrophe in the Trade Mark has little impact upon how the word SURFERS’ would be perceived (and therefore likelihood of other traders wishing to use it in a similar manner).

   [7] Per the ‘Permanent Committee on Place Names’ within the ‘Intergovernmental Committee on Surveying and Mapping’, which gives the reason that ‘This is to facilitate the consistent use of a single form in each case and to assist the rapid retrieval of place names from emergency service databases, in light of variable community usage and uncertainty as to whether the name concerned is singular or plural.’ See >

   The heart of the matter is what the ordinary signification of the word SURFERS’ is likely to be in the context within which it is to be used.

3. The Holder contends that the Trade Mark contains only part of the name Surfers Paradise and on that basis it will not be perceived as a reference to the geographical location in the face of the allegedly more dominant meaning of people who surf. It provides information supporting the contention that Australia has a strong association with surfing and surfing culture, including a Wikipedia entry stating that there are approximately 2.5 million recreational surfers and over 1 in 10 Australians surf as a recreational activity. By contrast, the Applicant argues, the population of Surfers Paradise (as at 2016) was 23,689 and it is therefore unreasonable to suggest that the average Australian consumer would prioritise an abbreviation of Surfers Paradise over the immediately relevant meaning referring to people who surf. Additionally, the application is in respect of services that are limited to being provided locally and are not the sort that can be provided online from a distant location without human interaction. Moreover, the Holder submits, it cannot be assumed that the average Australian consumer would default to the geographical meaning of the word SURFERS’ when there is another more obvious meaning that is presented by the get up and structure of the Holder’s restaurants (wherein images and paraphernalia related to surfing are to be displayed, as presented in a declaration provided by the Holder).

4. The Holder further cites decisions in respect of the trade marks FOX,[8] FREE[9] and PHOENIX[10] in support of the notion that the ordinary English meaning of words may be the dominant meaning in the face of alternative geographical or surnominal significations, as well as Clark Equipment wherein Kitto J commented:

   It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and for that reason it may be held to be adapted to distinguish the applicant’s goods.[11] [Applicant’s emphasis added]

   [8] Vectura GmbH [2016] ATMO 77.

   [9] Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd [1998] FCA 689.

   [10] Unilever PLC [2001] ATMO 39.

   [11] Clark Equipment, supra, at [6].

5. Lastly, the Holder alleges that the state of the Register supports the conclusion that the ground for rejection is not warranted. It refers to the following trade marks which do not bear endorsements related to acquired distinctiveness:

   Surfers Point in class 33;

   SURFERS CENTURY in classes 36 and 43;

   websurfers.us in class 9;

   STORM SURFERS in classes 25, 28 and 38;

   THE SURFERS MANHATTAN in classes 36 and 37;

   SURFER’S POINT in class 3;

   SURFERS in class 29;

   SURFERS BEACH in class 3;

   SURF OVER SURFERS in classes 25 and 41;

   SURFERS GARDEN in class 25; and

   SUBWAY SURFERS in classes 9, 16, 25, 28, 41 and 42.

6. It is useful to observe the comments made by Kitto J in Clark Equipment which immediately follow those cited by the Holder above (references omitted and emphasis added):

   Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur…This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as “North Pole” in connexion with bananas…or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification…But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place. A descriptive word is in like case: the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer…

   The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods…[12]

   [12] Clark Equipment, supra, [6]-[7].

7. I bear in mind that the application is in respect of services, not goods. The principles articulated by Kitto J above apply in relation to geographical names used in respect of services,[13] however it must be recognised that there are classes of services which are not of the kind that can sensibly be provided over great distances, such as dry cleaning, house cleaning or restaurant services. Nonetheless, particularly in the case of restaurant services, globalisation of trade and franchising business models mean that Australian consumers are familiar with chains of restaurants, known to have originated in distant locations (often overseas), providing their services in the local vicinity. Such examples include Din Tai Fung, Outback Steakhouse, and the former Jamie’s Italian restaurants. Therefore, although less likely than is the case for goods which may be easily shipped or transported, it is not implausible that a word in respect of services may be taken to be a geographical reference even though the actual location is distant.

   [13] See for example the Full Court’s comments in Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616.

8. The geographic significance of SURFERS’ is pronounced in Australia because of the notoriety of Surfers Paradise as a holiday destination and its common colloquial name ‘Surfers’. Surfers Paradise is not merely ‘some place on the earth’s surface’ but is, as reflected in the examiner’s research, famous in Australia. Therefore, in the context of the Australian market, the word SURFERS’ has a geographical meaning that is not necessarily present in other jurisdictions.

9. The name Surfers Paradise (and its colloquial short form Surfers) itself derives from the alleged strong association in Australia with surfing and surfing culture. I am not persuaded that this alleged association would necessarily influence consumers to perceive SURFERS’ as a reference to people who surf over a reference to the geographic location. This is particularly so for consumers in the vicinity of Surfers Paradise, where the reverse is likely to be true. Nor is the get-up and structure of the Holder’s restaurants a relevant factor in determining how the word will be perceived: such get-up and structure does not fall within the bounds of fair notional use of the Trade Mark.

10. In respect of the FOX, FREE and PHOENIX decisions cited by the Holder, I consider that there are significant factors which distinguish those cases from that before me. The most analogous decision is that in relation to the trade mark PHOENIX, wherein the ordinary meaning of the word was considered to outweigh a reference to the city Phoenix in the USA. However, the goods in respect of which the application was made (being described as ‘toiletries’) were of the type where the ordinary meaning of PHOENIX is somewhat suggestive, such as renewal or revitalization of the skin. Additionally, the delegate took into account registrations in similar jurisdictions and the fact that the trade mark was registered in the United States, the very jurisdiction in which the city of Phoenix is located.

11. The FOX decision, wherein the surname FOX was weighed against the ordinary meaning of the word, importantly took into account the specialised nature of the goods (being various medical and pharmaceutical preparations and medical devices) as well as the fact that the goods for which registration was sought were highly regulated. It also recognised that it was not common practice to use surnames as trade marks for those specialised goods.

12. Lastly, the FREE decision also weighed surnominal significance against the ordinary meaning of the word FREE. However the trade mark in question incorporated a device of a crest with various horizontal and diagonal lines. Wilcox J commented that although the device may be considered ‘no more than a blur’, there would not be reason to doubt that ‘potential purchasers would learn to recognise a mélange consisting of the word FREE, displayed always with particular lines and symbols, even if they could not easily recall, or exactly describe, the detail of the lines and symbols’. Subsequent to that conclusion his Honour stated also that the arbitrary ‘SFAS number’[14] was not a legal basis to refuse registration, so that to the extent that the Registrar’s delegate paid attention to that factor he had erred in law.

    [14] Being the number of times a surname appeared on the Australian electoral roll, and the Registrar’s policy at the time to object to surnames which appeared more than 400 times.

1. Unlike the decisions discussed above, SURFERS’ is not suggestive of the services (I am not familiar with any style of food, restaurant or cafe particularly associated with people who surf, nor has any evidence been provided that one exists); the other jurisdictions within which the Trade Mark has achieved registration are not relevant because ‘Surfers’ likely does not have a geographical significance akin to the one found in Australia; the services are not specialised or highly regulated; and the Trade Mark does not incorporate other features except for the name of the food to be supplied in the Holder’s restaurants. To that end, I do not find the cited decisions of particular assistance in determining the likely ordinary signification of the word SURFERS’ in the context of the designated services and the Australian market.

2. As to the state of the Register none of the trade marks cited by the Holder, with the exception of SURFERS in class 29, are analogous because they do not present as a geographical name in combination with the name of a good or service or as a potential reference to Surfers Paradise. The exception is the registration of SURFERS in class 29 which could be taken as a geographical reference. It is possible that this trade mark was registered in error and it is well established that the Registrar should not persist with an error.[15] In any event, this registration does not outweigh the application of the established tests for distinctiveness nor represent a pattern of acceptance.

   [15] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177

3. Weighing the above factors I consider that there would be a significant number of consumers in Australia who would perceive the word SURFERS’ as a geographic reference, notwithstanding that there would also be consumers who would perceive it as a reference to those who surf. It is possible, as is the case here, for a word to have more than one ordinary signification and their significance will depend upon the context in which the word is used. Examples include BYRON, HUNTER and MANCHESTER which may have surnominal, geographical or descriptive signification. Where a significant number of consumers may perceive a word in a certain way (which informs whether other traders are likely to wish to use that word), then the potential for a ground for rejection arises. I bear in mind also that particularly in the vicinity of Surfers Paradise, it is likely that the geographic reference would be the primary signification.

4. As to the likelihood of other traders wishing to use that name or something similar, it is likely that honest traders within the vicinity of Surfers Paradise may well wish to use the colloquial name ‘Surfers’ in relation to the provision of burgers. The nature of restaurant and café services, particularly in relation to a relatively common style of food such as burgers, is one that may be provided in almost any geographic location regardless of size. Moreover, burger restaurants are commonly franchised so there is the potential for such a franchise to originate in Surfers Paradise and expand to other locations.

5. Whether or not the full name Surfers Paradise remains available to other traders, should the Holder achieve registration, is not relevant. As shown in the examiner’s research and in my own knowledge, ‘Surfers’ is commonly used to refer to Surfers Paradise. As such it has, in my estimation, become part of the ‘common heritage’ which should remain available for others to use (unless it can be shown by evidence that its meaning has been eclipsed by virtue of use). The further comments of Kitto J in Clark Equipment are relevant here:

   It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as “made in Michigan” or in some other ways indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business.[16]

   [16] Clark Equipment, supra, [7].

6. I am accordingly satisfied that trade mark is to some extent, but not sufficiently, inherently adapted to distinguish the designated services from the goods or services of other persons. I turn then to the evidence of intended use filed by the Holder, which it contends should allow registration under s 41(4) when combined with the alleged more obvious meaning of SURFERS as a reference to people who surf.

7. The Holder has filed a declaration by Huseyin Ozel, the founder and director of the Holder, made 28 November 2018 with Confidential Exhibit HO-1 and Exhibit HO-2.

8. In early 2016 Mr Ozel identified a gap in the London restaurant and café scene and so began to develop the concept for the SURFERS BURGERS restaurants, intended to fall within the casual dining/artisan restaurant category. The name was chosen because according to Mr Ozel surfers and surfing are associated with a healthy, sporting lifestyle which is close to nature. The International Registration has been granted protection in Switzerland, China, Japan, Mexico, Norway, Russia, Singapore, New Zealand and Turkey. The Holder has also registered the Trade Mark in the EU and Canada. Confidential exhibit HO-1 explains the concept behind the restaurants, which I will not discuss in any detail, save to mention that the Holder aims to open restaurants is popular tourist spots, the first restaurant is intended to open in the Netherlands, and only very brief financial projections are provided which show when ‘Operational Break-Even’ and ‘Investment Pay-Back’ is expected to be reached. Mr Ozel has also registered the domain name ‘surfersburgers.com’, although there was no substantive content on the website as at the time of declaration.

9. Given this information, I am not satisfied that the Trade Mark will acquire the requisite distinctiveness to distinguish the Holder’s services. Facts about intended numbers of restaurants, locations, advertising campaigns and the like are absent and there is almost no information regarding operations in Australia save mentioning that the business intends to expand here. Additionally, the fact that the Holder’s ideal locations for its restaurants are popular tourist spots suggests a reasonable possibility of Surfers Paradise being one of those locations.

10. The Holder has not made any submissions that ‘any other circumstances’ apply, per s 41(4)(b)(iii), and no such circumstances are apparent to me.

11. I am accordingly satisfied that a ground for rejection exists under the terms of s 41(4).

Decision

1. Regulation 17A.24 of the Regulations relevantly provides:

   17A.24

   (3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   …
     (b) there are grounds for rejecting it, in whole or in part.

2. Given I am satisfied there is a ground for rejection and the Holder has been unable to overcome it, I must reject the IRDA in accordance with reg 17A.24, which I now do. If, however, the Registrar has been served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Nicole Worth
Hearing Officer
Hearings & Oppositions
26 February 2019