Surveyors Board of Queensland (& 10 Others) v the Royal Institution of Chartered Surveyors - [2017] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by Surveyors Board of Queensland and 10 others to registration of trade mark application 1488791 (35, 36, 37, 41 & 42) CHARTERED SURVEYOR in the name of The Royal Institution of Chartered Surveyors

Delegate:	Michael Kirov
Representation:	Opponents: Blake Knowles of Cullens, Patent & Trade Mark Attorneys Applicant: Luke Merrick of Counsel, instructed by Stuart Green and Amanda Wong of DibbsBarker
Decision:	2017 ATMO 50 Opposition under section 52 of the Trade Marks Act 1995: s 41 considered – trade mark not capable of distinguishing the Applicant’s services notwithstanding evidence of use filed - registration refused

Background

This is an opposition brought jointly by Surveyors Board of Queensland (“the First Opponent”) and 10 others (collectively “the Opponents”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of The Royal Institution of Chartered Surveyors (“the Applicant” or “RICS”):

Application Number: 1488791

Trade Mark: CHARTERED SURVEYOR (“the Opposed Mark”)

Filing Date: 2 May 2012

Services:Class 35: Business management and administration services; business management and administration of estates and landed property; agency services for the buying or selling, on commission, of personal property; information, support, assistance, consultancy and advisory services in relation to the foregoing
Class 36: Real estate services; consultancy and advisory services relating to real estate, estate agency services; determining the value of all descriptions of landed and house property and advising on direct and indirect investment therein; managing and developing estates and landed property; agency services for the buying or selling, on commission, of real property; rental and letting of real property; financial appraisal of construction work; financial management and financial measurement of construction work; information, support, assistance, consultancy and advisory services in relation to the foregoing
Class 37: Construction; maintenance and repair services for buildings, construction and civil engineering works; management of construction work; renovation of property; development of property; information, support, assistance, consultancy and advisory services in relation to the foregoing
Class 41: Education and training services; education and training services relating to surveying, property and construction professional services; publishing; electronic publishing; arranging and conducting training; arranging and conducting professional development programs; teaching services; information services (including online information services) relating to education, entertainment, recreation or cultural activities; educational examination; correspondence courses; education services; advisory services in this class; organisation of competitions for education and/or entertainment; publication of information on the internet; conduct of educational seminars and workshops; information, support, assistance, consultancy and advisory services in relation to the foregoing
Class 42: Professional services rendered by surveyors; research and development services relating to surveying techniques, practice and apparatus, and to construction of buildings, civil engineering works and other constructions; consultancy and advisory services relating to land use and natural resources; surveying the fabric of buildings and their services which includes advising on their condition, maintenance, alteration, improvement and on their design; measuring and delineating the physical features of the earth; managing, developing and surveying mineral property; technical, scientific and industrial analysis to determine the economic use of resources of the construction industry, and the economic feasibility appraisal, project management and measurement of construction work; letting of personal property; rental of research facilities; buildings content clearance; building and structural inspection services (engineering, quality assessment, and surveying services); building inspection services (surveying); engineering surveying; engineering surveys and inspections; inspection of buildings (surveying); land surveying; quantity surveying; real estate surveys; technical survey services; research and technical consultancy for industry; information, support, assistance, consultancy and advisory services in relation to the foregoing
(“the Designated Services”)

Endorsement: Provisions of subsection 41(6) applied. Provisions of subsection 41(5) applied.

In addition to the First Opponent, the further 10 opponents are:

The Surveyor General of the ACT (“Second Opponent”)

The Board of Surveying and Spatial Information of NSW (“Third Opponent”)

The Surveyors Registration Board of Victoria (“Fourth Opponent”)

The Land Surveyors Licensing Board of Western Australia (“Fifth Opponent”)

The Surveyors Board of the Northern Territory (“Sixth Opponent”)

The Surveyors Board of South Australia (“Seventh Opponent”)

The Surveyor General of Tasmania (“Eighth Opponent”)

Surveying & Spatial Science Institute (“Ninth Opponent”)

Spatial Industries Business Association (“Tenth Opponent”)

The Australian Institute of Mine Surveyors Limited (“Eleventh Opponent”)

Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 15 May 2014. The Opponents filed a formal Notice of Intention to Oppose on 14 July 2014,[1] followed by a Statement of Grounds and Particulars (“SGP”) on 12 August 2014. The Applicant filed a Notice of Intention to Defend on 1 September 2014.
[1] The original Notice of Intention to Oppose nominated 10 opponents only, but an amended Notice was subsequently filed adding an eleventh opponent pursuant to s 53 of the Act.
For their evidence, the parties rely on the following declarations made pursuant to the Act and reg. 21.6 of the Trade Mark Regulations 1995 (“the Regulations”).

Evidence in Support

▪ Murray Fox (CEO of the First Opponent) made 8 December 2014, with Exhibits 1 to 32 (“Fox 1”)

▪ Steve Davey made 8 December 2014, with Exhibits 1 and 2 (“Davey”)

Exhibits 1 and 2 to Davey are copies (without exhibits) of declarations originally filed by the Applicant as evidence in support of its oppositions to (now withdrawn) applications 1456850 and 1456851 in the name of the Australian Institute of Building, being declarations by:

▪ Kaye Herald made 6 February 2014, without exhibits (“Herald 1”)
▪ Sean Tompkins made 5 February 2014, without exhibits (“Tompkins 1”)

Evidence in Answer

▪ Helen Grimes made 21 April 2015, with Annexure HG-1 (“Grimes”)
▪ Stuart Green made 21 April 2015, with Annexures SG-1 to SG-3 (“Green”)

Exhibited with Green are copies of declarations originally filed by the Applicant in support of the opposed application at the examination stage, being declarations by:

▪ Kaye Herald made 19 March 2014, with Exhibits RICS-1 to (Confidential) RICS 26 (“Herald 2”)

▪ Sean Tompkins made 18 March 2014, with Exhibits ST-1 to (Confidential) ST-14 (“Tompkins 2”)

Evidence in Reply

▪ Murray Fox made 26 June 2015, with Exhibits 1 to 4 (“Fox 2”)

▪ Craig Leslie Sandy (Chairman of the Sixth Opponent) made 25 June 2015 (“Sandy”)

▪ Des Mooney (President of the Third Opponent) made 26 June 2015 (“Mooney”)
▪ David R Boyle (Member of the Fourth Opponent) made 30 June 2015 (“Boyle”)

▪ Michael Dean Nietschke (Chairman of the Seventh Opponent) made 30 June 2015 (“Nietschke”)

▪ Michael Stephen Giudici (the Eighth Opponent) made 30 June 2015 (“Giudici”)
▪ Colin Neil Shipp (Chairman of the Fifth Opponent) made 6 July 2015 (“Shipp”)
▪ Peter Sippel (Chair of the First Opponent) made 7 July 2015 (“Sippel”)

I mention that although Herald 1 and Tompkins 1 were originally filed with IP Australia as evidence in support of oppositions by RICS to unrelated applications by the Australian Institute of Building around one month before Herald 2 and Tompkins 2 were filed, the corresponding declarations are essentially identical. Since Herald 2 and Tompkins 2 are before me with their original exhibits, I will reference these two declarants’ evidence in the discussion below as set out in these later declarations, generally providing the relevant paragraph number and/or exhibit number. Because all of the Applicant’s evidence in answer was filed as a single PDF document totaling 3,160 pages, I will where necessary for the sake of precision also refer to individual pages of Green, Grimes, Herald 2 and Tompkins 2 by reference to the “EIA PDF” page number. In the case of the Opponents’ evidence in support, the Exhibits to Fox 1 were filed as a single PDF document of 866 pages and again, where precision is required, I will refer to these by reference to the “EIS PDF” page number.
I heard the matter as a delegate of the Registrar of Trade Marks on 22 April 2016 in Canberra. The Applicant was represented by Luke Merrick of Counsel, instructed by Stuart Green and Amanda Wong of DibbsBarker. Peter Nolan, a representative of the Applicant, was also present as an observer. The Opponents were represented by Blake Knowles of Cullens, Patent & Trade Mark Attorneys, with Jeffrey Brown and Ron Jarman, Surveyor General and Deputy Surveyor General respectively of the ACT, present as observers. The parties’ representatives also filed written submissions in accordance with my directions.

Grounds of Opposition, Onus and Standard of Proof

The SGP lists grounds corresponding to ss 41, 42(b), 43, 58, 59 and 62(b) of the Act. However in his written submissions filed shortly before the hearing Mr Knowles confirmed the Opponents were only pressing the grounds corresponding to ss 41, 42(b) and 43. Although I believe there is merit in the Opponents’ s 42(b) and s 43 grounds based on the evidence and submissions before me, I have only found it necessary to discuss the s 41 ground in this decision, (which as explained below is based on the section as it stood prior to its amendment in April 2013). Of course should the decision be appealed, it would remain open to the Opponents to plead any grounds under the Act they considered relevant in proceedings before the Court.
To succeed, the Opponents bear the onus of establishing their s 41 ground, with the required standard of proof being the ordinary civil standard based on the balance of probabilities.[2] Mr Knowles acknowledged this was the case, while adding that the Opponents’ onus was limited to making out a prima facie case and that:
5. In relation to s 41, once s 41(5) or s 41(6) come into consideration, the Act requires that the Registrar be “satisfied” that [the] trade mark is or will be capable of distinguishing (s 41(5)), or that the Applicant “establishes” that the trade mark distinguishes in fact (s 41(6)).
6. Therefore, while the Opponents in these proceedings in [sic] bear an initial burden, that burden soon shifts to the Applicant. The fact that the Applicant has previously succeeded in persuading an examiner that the trade mark should be accepted does not remove its burden of proof during opposition proceedings.
[2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].
Mr Merrick took issue with this, stating in his submissions that:
4. The Applicant does not accept the Opponents’ [above-quoted] submission … that once the Opponents make out a prima facie ground of opposition, the onus shifts to the Applicant to establish that the ground of opposition does not apply.
The issue is obviously very significant and, fortunately with s 41 as it stood prior to April 2013, it is, I believe, well settled. I agree with Mr Knowles’ submission. In assessing the Opposed Mark for the purposes of s 41(3), I should presume it is sufficiently adapted to distinguish the Designated Services, with the Opponents’ onus effectively limited to satisfying me on the balance of probabilities that it is not sufficiently so adapted as to qualify for registration on that basis alone. If I am so satisfied and it accordingly becomes necessary to consider the mark under ss 41(5) or (6), the onus does indeed then shift to the Applicant to satisfy me on the balance of probabilities that the criteria referred to in one or both of those sub-sections, as the case may be, are made out.[3]
[3] For a full discussion on this point see Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [26] to [29] and at [40] and the cases there relied upon.
The relevant date for assessing the registrability of the Opposed Mark is the date the opposed application was filed, being 2 May 2012 (“the Relevant Date”).[4]
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.

Overview of the Opposition and Evidence

I begin with some background information regarding the parties and their respective positions as summarized by the parties’ representatives. Then, referencing the parties’ evidence more closely, I will examine in some detail the meanings of the words “chartered” and “surveyor” and their combination, since their significance and usage were the focus of the parties’ submissions and form the basis of my decision.

The Applicant

As far as the Applicant is concerned, the following summary drawn from the evidence was put forward by Mr Merrick:
24. …The Applicant, then known as the Institution of Surveyors, was founded on 15 June 1868 (Herald 2, [13]).
25. By 1880, the Institution of Surveyors had about 500 members and decided to submit an application for incorporation by Royal Charter (Tompkins 2, [16]). In order to proceed with the Royal Charter application and attracting substantial membership, the Institution of Surveyors introduced examinations as a way of establishing professional standards and the first examinations conducted by the Institution of Surveyors were held in 1881 (Tompkins 2, [17]).
26. The Institution of Surveyors was incorporated by Royal Charter granted by Her Majesty Queen Victoria on 26 August 1881 (Herald 2, [14], Tompkins 2, [18]). The Institution of Surveyors’ Royal Charter contained a summarised version of the Institution’s objectives as defined in its first Ordinary General Meeting. The Royal Charter also contained the first ever definition of the surveying profession – namely:
The art of determining the value of all descriptions of landed, mineral, and house property, and of the various interests therein, the practice of managing and developing estates, and the science of admeasuring and delineating the physical features of the earth, and of measuring and estimating artificers’ work. (Tompkins 2, [19]).
27. A Royal Charter is a way of incorporating a body or collection of individuals into a single legal entity, and was once the only way of incorporating a body (Tompkins 2, [40]). The Privy Council’s website states that the grant of a Royal Charter is now rare, and reserved for “eminent professional bodies” which have a “solid record of achievement” and are “financially sound” (Tompkins 2, [40]).
…
30. In 1921, the Applicant, which was then known as the Surveyors’ Institution, was granted a Supplemental Charter by His Majesty King George V, who also accepted the office as the Patron of the Surveyors’ Institution (Tompkins 2, [28]).
31. In 1930, the Applicant was renamed from the Surveyors’ Institution to the Chartered Surveyors’ Institution by permission of the Privy Council. The new name had been suggested as early as 1901, and was later adopted because, similarly to “chartered accountants”, the “chartered” designation communicated to the public that members of the Institution possessed a qualification not held by every surveyor. Qualified members of the Chartered Surveyors’ Institution would now be referred to as “Chartered Surveyors” (Tompkins 2, [30]).
32. In 1946, His Majesty King George V (the then Patron of the Chartered Surveyors’ Institution) granted the Chartered Surveyors’ Institution the title “Royal” because of its international influence and its contribution to the allied war effort. On 3 July 1947, the Chartered Surveyors’ Institution became the Royal Institution of Chartered Surveyors by the personal grant and command of the King and has since then been known by that name and also the acronym, “RICS” (Tompkins 2, [34]).
33. In 1973, a Supplemental Charter was granted by Her Majesty Queen Elizabeth II which consolidated the many amendments and additions made to the original Royal Charter over the previous 92 years (Tompkins 2, [35], Exhibit ST-3).
34. In 2000, the Applicant established its Australian head office at Level 25 Chifley Tower, Sydney, New South Wales (Herald 2, [34]). While the Applicant employed only one staff member in Australia in 2000, its presence in Australia increased over the years and by 2013, the Applicant employed thirteen[5] staff members in Australia (Herald 2, [34]). As at October 2013, the Applicant had approximately 5,432 members including associates, students and trainees in Australia (Herald 2, [35]).
35. Today, the Applicant is an international, independent, non-profit, professional organisation with its headquarters in London, United Kingdom. … (Herald 2, [14])
36. The Applicant is the world’s leading professional body for establishing standards in the surveying industry and has accredited over 600 courses at leading universities around the world (including in Australia), promotes international best practice in professionalism in the surveying, land, building, property and construction industries and supports a large number of specialisations across the built and natural environments, with 17 professional groups setting standards, developing guidance and providing information to the land, property and construction industries on best surveying practice (Herald 2, [15]).
[5] In fact in Herald 2 at [34] Ms Herald says there were 16 staff employed in Australia in 2013.

The Opponents

As for the Opponents and their reasons for opposing the present application, Mr Knowles explains in a “Summary of Argument” in his written submissions that:
2. The Opponents include (i) eight State and Territory authorities that regulate the practice of land surveying, and (ii) three highly respected private organisations in the field of surveying.
3. The profession of surveying has a long history in Australia, and land surveying in particular is subject to strict government regulation. There are sanctions for persons who perform the work of a land surveyor or represent that they are a surveyor contrary to the legislation.
4. The use of “Chartered Surveyor” is of deep concern to the Opponents, because of the potential for the public to be deceived or confused that persons called “Chartered Surveyors” may be licensed or registered under relevant State/Territory legislation. There is a risk that “Chartered Surveyor” may be seen as synonymous with “registered surveyor” or “licensed surveyor”.
5. The fact that “Chartered Surveyor” may be used overseas and not considered problematic is of little relevance. The Registrar must consider the likelihood of confusion in the context of the Australian regulatory regime governing use of the term “surveyor”.
6. The potential for deception and confusion increases based on the closeness of activities to land surveying. Further, although it is likely that some persons may not be confused (those with deeper knowledge of the surveying industry), the Opponents’ primary concern is potential for confusion amongst the general public, whom the Opponents deal with on a day to day basis.
7. The Opponents generally do not object to the name Royal Institute [sic] of Chartered Surveyors, nor to RICS providing membership, education and/or accreditation services where appropriate. The Opponents’ concern is the misuse of the term “surveyor” in relation to unlicensed or unregistered individuals, and in relation to professions with no association with surveying.
8. The Opponents particularly object to use of “Chartered Surveyor” in ways that may undermine the public’s confidence in land surveyors, and may breach State or Territory legislation. The Opponents have a united interest in maintaining the integrity of the surveying profession.
9. The Opponents also do not believe that “Chartered Surveyor”, is recognized as a brand of RICS due to its highly descriptive nature and lack of evidence of acquired distinctiveness. It is not used as a trade mark in its own right, but is merely a membership category of RICS.
10. The Opponents submit that the trade mark should be refused in its entirety, or in the alternative should be accepted only subject to limitations that mitigate the likelihood of confusion.

As will be apparent from the above summaries, fundamental to the parties’ positions is their understanding of the meanings and usage of the words “chartered” and “surveyor” and their significance, both individually and in combination, in the context of land surveying services in particular and of the Designated Services more generally. Being at the heart of the opposition, it is accordingly crucial to clarify the meanings of these words at the outset.

The meaning of the word “chartered”

As foreshadowed in his above-quoted summary, Mr Merrick based his submissions on behalf of the Applicant on the specific meaning of the word “chartered” understood by Kaye Herald, who has been working for the Applicant since 2005 from its (sole) Australian office in Sydney and has been its “Managing Director, Asia Pacific” since August, 2011. In Herald 2 she says:
18. It is my understanding the term “Chartered” is an abbreviation of, and means “appointed by Royal Charter.” The use of the term “Chartered” indicates that an institution has received royal assent and is recognised as a formal legal entity.
19. I understand that the import of “Chartered” status is recognised and acknowledged by Australian governmental organisations including the Australian Securities & Investments Commission (ASIC). For instance I note that ASIC requires that an applicant for registration of a business name or company name incorporating the word “CHARTERED” seek authorisation from the relevant Minister so as to demonstrate an applicant’s entitlement to use of the designation within the “applied for” name.
Based in London, Sean Tompkins is the Applicant’s “Global Chief Executive”, a position he has held since September 2010. His evidence also turns on the word “chartered” having the specific meaning of referring to a Royal Charter historically issued from time to time to professional bodies by the British monarch and in more recent times by the Privy Council. In Tompkins 2 he adds:
39. Exhibited to this declaration and marked Exhibit ST-4 is the Privy Council’s guidance on Royal Charters and the application process for incorporation by Royal Charter as published on its website (accessible at: >
I note from the excerpts from the Privy Council’s website forming Exhibit ST-4 that, “There are in excess of 900 Chartered Bodies.” The website provides a “List of all Charters granted since the 13^th Century”, mentioning that:
Many are now defunct, and many more now fall outside the Privy Council’s jurisdiction. About 400 are still actively within the purview of the Privy Council.
It is apparent from Mr Tompkins’ evidence that the Applicant is not the sole body incorporated under Royal Charter that has historically conducted at least some of the large range of activities embraced by the Designated Services. Indeed, RICS has itself over the years merged with other such bodies incorporated under Royal Charter. In this regard Mr Tompkins says in Tompkins 2 that (with my emphasis added):
37. Over the years, RICS’ predecessors merged and absorbed other societies and chartered bodies representing related interests in land, property, construction and the environment. In chronological order, the [Applicant] has merged with the following institutions:
(a) 1905: members of the Irish Land Agents’ Association were admitted to become the Irish branch of the [Applicant];
(b) 1922: The Quantity Surveyors’ Association;
(c) 1937: the Scottish Estate Factors’ Society and the Faculty of Surveyors of Scotland;
(d) 1970: Chartered Auctioneers’ and Estate Agents’ Institute;
(e) 1970: Incorporated Society of Valuers and Auctioneers;
(f) 1970: Chartered Land Agents’ Society;
(g) 2000: Incorporated Society of Valuers and Auctioneers.
I note paragraph (a) above mentions “the Irish branch of the [Applicant].” As discussed later in this decision, the Applicant’s claimed entitlement to registration of the Opposed Mark for the Designated Services appears principally based upon its claim that, as it is put in Herald 2 (at [22]), “only RICS Professional Members and Fellows are known as and entitled to refer to themselves as a CHARTERED SURVEYOR and are entitled to use the CHARTERED SURVEYOR designation”. It is accordingly convenient here to mention that there is also another Irish[6] “chartered” organization of surveyors, the “Society of Chartered Surveyors Ireland” (“SCSI”), one of whose brochures is included with the 390 page Exhibit ST-9 to Tompkins 2. The brochure states, inter alia, that:
Dating back to 1895, the Society of Chartered Surveyors Ireland is the independent professional body for Chartered Surveyors working and practicing in Ireland.[7]
[6] Based in Dublin, in the Republic of Ireland.
[7] At EIA PDF 2801.
SCSI’s website (at < further states that “[SCSI] was formed as a result of a merger between the Society of Chartered Surveyors (SCS) and the Irish Auctioneers and Valuers Institute (IAVI) in April 2011.”
I understand that as at the Relevant Date SCSI enjoyed an affiliation with the Applicant, but I do think the above extracts from SCSI’s published material indicate that the Applicant’s claim to its members’ unique entitlement to use the word “chartered” in combination with the word “surveyor” throughout the world and including Australia is on the face of it open to question.
Closer to home, indeed, a further example of a professional organization, one granted a Royal Charter and whose activities apparently embrace several of the activities encompassed by the Designated Services, is the Australian Institute of Building (“AIB”). Summarizing information from the AIB’s website (at < the AIB’s Wikipedia^® entry explains:[8]
The [AIB] is a professional society founded in 1951, incorporated in 1955 and granted a Royal Charter in 1969. The Institute is an association of building professionals, associate professionals and technicians engaged in building practice, teaching, or research throughout Australia and overseas. It has chapter offices in Hong Kong and Singapore…
…
The mission of AIB is to be a leading body of focus for the building industry, valued for its services to its members, reflecting its ideals for education, standards and ethics and the source of authoritative and visionary comment on behalf of professionals in the industry. Its objectives are: to promote excellence in the construction of buildings and just and honourable practices in the conduct of business; to advance the study of Building and all kindred matters, arts and sciences; to encourage the friendly exchange between members of knowledge in practical, technical and ethical subjects; and to uphold the dignity of the profession of Building and the status of the Institute.
[8] At >
As mentioned, Herald 1 and Tompkins 1, (being essentially identical to Herald 2 and Tompkins 2 and exhibited with Davey in the Opponents’ evidence in support), were originally filed with IP Australia in connection with the Applicant’s then oppositions to AIB’s applications 1456850 and 1456851.[9] The two applications covered a similar range of services in Classes 35, 37, 41 and 42 to the Designated Services and were for the trade marks shown below:

[9] AIB withdrew the two opposed applications in October 2015 before the matter reached a hearing.

Steve Davey, who is a solicitor with the Opponents’ attorneys, declares that he was contacted in 2013 by AIB’s then attorney because AIB was also then independently opposing application 1488791 (the currently opposed application)[10] and that it was this attorney who supplied Mr Davey with the copies of Herald 1 and Tompkins 1 exhibited with Davey. Again, the existence of the AIB, itself incorporated by Royal Charter, runs counter to the Applicant’s claim that it alone is entitled to use the “chartered” designation in combination with the word “surveyor” in Australia in relation to the Designated Services.
[10] AIB withdrew its opposition to application 1488791 in March 2016, the month before I heard the present matter.
Nor, as I will explain, am I satisfied that the word “chartered” could not in principle be used in Australia other than under the authority of a Royal Charter. As discussed below, the Applicant has provided a comprehensive list of dictionary definitions and website usage of the word “surveyor” in its evidence in answer. It has not however provided any evidence of this kind in relation to the word “chartered” other than that of Ms Herald’s and Mr Tompkins’ understanding of its specific meaning relating to a Royal Charter. For their part the Opponents have done so, from which it is apparent that the meaning of the word is significantly broader than this, certainly outside the United Kingdom. Murray Fox has been the CEO of the First Opponent since 2010 and is also the Secretary of the Council of Reciprocating Surveyors Boards of Australia and New Zealand (“CRSBANZ”).[11] Prior to that he was CEO of the Queensland Law Society. In Fox 1 he provides a definition of the word “charter” taken from the Australian Oxford Dictionary (2^nd edition) indicating the word’s wider significance in Australia as, inter alia, “a written document delivered by the sovereign or legislature…(a) granting privileges to, or recognizing rights of, the people, or of certain classes or individuals…[or]…(c) creating or incorporating a borough, university, company, or other corporation.”
[11] The boards of the First, Second, Third, Fourth, Fifth, Sixth and Seventh Opponents are members of CRSBANZ, as is the Surveyors’ Board of Tasmania, represented by the Eighth Opponent.
Mr Fox is well acquainted with the Applicant and acknowledges that it is a venerable institution established in the UK by Royal Charter. Indeed, Exhibit 1 to Fox 2 is a copy of a joint statement by CRSBANZ and RICS published in 2010 for the guidance of Australian or New Zealand based cadastral[12] surveyors wishing to practice in the other country, which states, inter alia:
It is important for surveyors to recognize the fundamentally different roles which [CRSBANZ] and RICS fulfil. [CRSBANZ has] been established under government legislation to protect the integrity of the cadastre in their jurisdiction whereas RICS is a professional body which recognizes both Professional and Technical Surveyors. This notice for guidance is directed to surveyors who are registered/licensed/authorized to undertake cadastral surveys for [CRSBANZ] (termed licensed cadastral surveyors here) or are Professional Surveyors in the Geomatics Group of RICS. The academic, training and assessment standards for these two groups of surveyors are similar (but not identical).
[12] A cadastre is an official register containing details of land ownership, boundaries and related information. In Fox 1 at [8], Mr Fox says that cadastral surveyors are “responsible for accurately defining property boundaries and understanding the laws of land ownership.”
Notwithstanding this cooperation between CRSBANZ and RICS, Mr Fox exhibits with Fox 1 a copy of RICS’ charter obtained from RICS’ website (< and goes on to say:
26. I understand that this charter does not carry the weight of law in Australia, and that any rights or obligations that it purports to impose, would be subject to the laws of any country in which RICS or its members do business.
27. It is my belief that the term “Chartered Surveyor” does not carry with it the reputation and meaning in Australia that it may carry in the United Kingdom. Further, given the prevalence of terms such as “registered surveyor” and “licensed surveyor”, it is my belief that a person holding themselves out to be a “Chartered Surveyor” may lead others to infer that they are a registered or licensed surveyor as defined in various State and Territory legislation.
[13] Identical copies of RICS’ Royal Charter are also included in the Applicant’s evidence in Exhibit RICS-4 to Herald 2 (EIA PDF 55-72) and Exhibit ST-3 to Tompkins 2 (EIA PDF 1880-1897).
As Mr Fox indicates (and the Opponents’ evidence generally confirms), the Opponents’ main objection to the Opposed Mark is founded on the Opponents’ specific understanding of the word “surveyor” as referring to the particular surveying activities the majority of the Opponents themselves regulate, being principally land, cadastral, mining and engineering surveying as defined in the relevant Australian legislation with which they deal (“the Surveying Acts”).[14] This particular meaning of the word “surveyor” thus informs their objection to the word “chartered” as having a sufficiently broad or unclear meaning in the Australian context as to risk being perceived by a significant number of relevant consumers as essentially a synonym for “licensed” or “registered” or “certified” or “authorized”.[15] In this regard Mr Fox exhibits the Surveying Acts with Fox 1, explaining that the Opponents administer the legislation for the purpose of registering, licensing and regulating “the surveying profession.” All of the Surveying Acts are broadly similar and contain similar provisions, with s 35(1) of the Surveying Act 2004 (VIC), for example, providing:
A person who is not registered under this Act as a licensed surveyor must not—
(a) take or use the title of licensed surveyor or the letters “L.S.” or any other title calculated to induce a belief that the person is registered under this Act; or
(b) claim to be registered under this Act or hold himself or herself out as being registered under this Act; or
(c) carry out any act which is required to be carried out by a licensed surveyor by or under an Act; or
(d) claim to be qualified to practise as a licensed surveyor.
Penalty: 60 penalty units.
[14] Surveyors Act 2003 (QLD), Surveying and Spatial Information Act 2002 (NSW), Surveying Act 2004 (VIC), Survey Act 1992 (SA), Surveyors Act 2002 (TAS), Licensed Surveyors Act 1909 (WA), Surveyors Act 2007 (ACT) and Licensed Surveyors Act 2011 (NT) in the case of land or cadastral surveying. Mining surveyors are regulated under various Mining Acts and Regulations in WA, NSW and QLD, overseen by the Eleventh Opponent - Fox 1 at [2(k)] & [22], EIS PDF 12 & 427.
[15] I note all four of these terms are used in the Surveying Acts.
In his submissions on this point Mr Knowles referred to definitions in the Australian Oxford Dictionary of the key operative words mostly used in the Surveying Acts, “license” (“a permit or authority…to do something…or carry on a trade”) and “register” (“an official list…of professionally qualified persons”). He argued:
29. A fundamental commonality of the terms “registered”, “licensed” and “chartered” is the implication of a grant of rights or of formal recognition. In the context of a regulated profession, use of any of the above terms is likely to indicate Government approval.
Mr Knowles submitted that the class of consumers who may need a “surveyor”:[16]
37. …includes any person who owns property, may wish to buy property, or is involved in a dispute regarding property. It is reasonable to assume that most of the persons within this class would also not have any knowledge of RICS, or of the distinction between the terms “Registered Surveyor”, “Licensed Surveyor” and “Chartered Surveyor”. Some may undertake enquiries to determine what is a “Chartered Surveyor”, but it can reasonably be assumed that most will not.
[16] Mr Knowles is here specifically referring to a land or cadastral surveyor.
Moreover, he said, the following excerpt from the Applicant’s website included as Exhibit 22 to Fox 1 (EIS PDF 452) highlights this apparent uncertainty regarding the meaning of the word “chartered” and its potential to confuse consumers by implying a level of relevant Australian Government approval (with my emphasis added):
Our members are known as chartered surveyors and are recognised by the designation after their name: MRICS (Member), FRICS (Fellow) and AssocRics (Associate).[17]
We regulate and promote the profession; maintain the highest educational and professional standards; protect clients and consumers via a strict code of ethics; and provide impartial advice, analysis and guidance.
[17] I note in passing that this statement appears at odds with Articles 5(1)&(2) and 7(2) of RICS’ Royal Charter and Bye-Laws, which indicate that only “Fellows” (“FRICS”) and “Professional Members” (“MRICS”) of RICS (as defined in Bye-Law B3.1.1, which is set out in paragraph 57 below) “shall be entitled to use the designation ‘Chartered Surveyor’”. Indeed, Exhibit ST-7 to Tompkins 2 (at EIA PDF 2244), a document titled “How to recognise an RICS member or member firm”, states “The letters AssocRICS represent a non-chartered grade of RICS membership for technical and support staff working in the land, property and construction sectors.”
Mr Knowles also referred to a further example of the words “chartered” and “registered” apparently being used interchangeably on RICS’ website, which states:[18]
We’re proud of our reputation and we guard it fiercely, so that clients who work with our registered professional can have confidence in the quality and ethics of the services they receive.
[18] At >
Mr Knowles noted two further examples, found on Australian websites, of the word “chartered” apparently being equated to “registered” or “licensed” as used in the Surveying Acts. An extract from the website of an Australian building company called Mimosa Homes states:[19]
During the design process, we’ll hire a chartered land surveyor to create a feature survey of your new house. We may order a reestablishment survey, as well; that’s a specialised survey that precisely sets the site boundaries. We’ll use the feature survey as a basis for the site design and submit it for plan review to make sure that it is in compliance with local planning policy.[20]
[19] At Fox 1 at [43]-[45] and Exhibit 31, EIS PDF 859.
Given that it is an offense for a person not licensed under one of the Surveying Acts to carry out the work described above, Mr Knowles argued one can assume Mimosa Homes is here using the word “chartered” as the equivalent of “licensed”. In similar vein he referred to the below extract from Toowoomba Regional Council’s website:[21]
[21] At certifies building certifiers?
All Building Certifiers who issue approvals in Queensland, both Council and Private are required by law to be licensed with the Queensland Building Services Authority. They are also required to be registered with the appropriate accrediting body such as Australian Institute of Building Surveyors (AIBS) or the Royal Institute [sic] of Chartered Surveyors Fox 1 at [46]-[48] and Exhibit 32, EIS PDF 864.

Mr Fox acknowledges that RICS is indeed an accrediting body for building certifiers under the Building Act 1975 (QLD). However he points out that the word “registered” is inappropriate in this context and says it shows “that many people do not appreciate fine distinctions in terminology” (such as between, in this instance, the words “registered”, “licensed” and “accredited”).[23] Mr Knowles submitted:

While this may seem like a relatively minor distinction, it indicates that confusion between synonymous terms does occur in the context of professions dealing with land, building and construction.

[23] Fox 1 at [46].

The Opponents’ principal concern, then, is the uncertain meaning of the word “chartered” amongst the relevant Australian public when used together with the word “surveyor” in relation to the Designated Services, particularly for the particular surveying activities the Opponents are charged with regulating. The Applicant, on the other hand, submits such concern is unfounded because “chartered” has a specific meaning relating to a grant of rights under a Royal Charter issued by a British monarch or the Privy Council and, it says, RICS alone enjoys the benefit of such a charter covering all of the Designated Services to the apparent exclusion of others. As mentioned however, even assuming this specific meaning I am not satisfied that the Applicant is necessarily the sole entity with a Royal Charter that might provide at least some of the Designated Services in Australia. Nor, as discussed below, am I satisfied that the word “chartered” could not in principle be apt for use for some or all of the Designated Services by others not having a Royal Charter at all.

In this regard the Trade Marks Register reveals that over the years there have been a significant number of trade marks registered which contain the word “chartered”, many of which are owned by entities which do not appear to have a Royal Charter.[24] Now removed registration 570091 owned by The American University of Washington DC in the United States[25] and current registration 1350570 owned by an individual named Kajanga Kulatunga for the marks shown below are two such examples:

[24] There are also a large number of unsuccessful applications for such marks disclosed on the Register which on the face of it are likely to have failed for want of distinctiveness rather than because their applicants did not have a Royal Charter.

[25] Registered from 1992 until its removal in 2000 when it was not renewed.

Trade mark 570091 shown at left above bears the words “CHARTERED BY ACT OF CONGRESS 1893.” I observe that an apparently well researched and documented definition of “congressional charter” in Wikipedia^® states:[26]
A congressional charter is a law passed by the United States Congress that states the mission, authority, and activities of a group. Congress issued federal charters from 1791 until 1992 under Title 36 of the United States Code.
The relationship between Congress and the organization is largely a symbolic honorific giving the organization the aura of being “officially” sanctioned by the U.S. government. However, Congress does not oversee or supervise organizations with the charter (other than receiving a yearly financial statement).
[26] At >
I note too in the American context that in highlighting the standing of the Applicant in that country Mr Tompkins says in Tompkins 2 at [32]:
In fact, when the Society of Residential Appraisers was founded in the United States of America, they took the Chartered Surveyors Institution [that is, RICS’ predecessor] as a model, stating that it was thanks to the Chartered Surveyors Institution that, appraising or surveying in Britain is viewed with the same esteem, respect and level of professionalism as expected with the practice of medicine and law.
Indeed, the word “chartered” appears several times on the website of the (American) Appraisal Institute, (the current name of the Society of Residential Appraisers), such as, for example, in the following excerpt from the Institute’s “Our History” page:[27]
In November, the Metro New Jersey Chapter becomes the first chartered chapter of the Appraisal Institute.
[27] At >
The meaning of the word “chartered” is thus not limited to that understood by the Applicant’s declarants Ms Herald and Mr Tompkins. Moreover, whereas (as the Applicant’s evidence shows to my satisfaction) the Corporations Act 2001 requires the consent of the relevant Minister before a company name which includes the word “chartered” may be acceptable for registration,[28] the granting of such consent is not contingent upon the putative company specifically having a Royal Charter. In this regard ASIC’s online database lists some 66 currently or formerly registered company names containing the word “chartered”, several of which companies on the face of it would not.[29]
[28] Corporations Act 2001, ss 147(1)(c) and 601DC(1)(c) and corresponding regulations.
[29] The registered company “Chartered Wealth Management Pty Ltd” ACN 107 074 779 (formerly “Robenne Pty Ltd”) is one such example.
Enquiries utilizing several dictionaries and various online resources lead me to conclude that the following excerpts from an 11 page entry for the term “Chartered (professional)” in Wikipedia^®[30] (also apparently well researched and documented) provide a useful working summary of the wider inherent meaning of the word “chartered” in the context of the collocation “chartered surveyor” beyond its specific meaning indicating a connection with a Royal Charter. As mentioned, the entry is well documented and I have found it useful to quote at length, but I have here omitted its original footnotes to avoid unduly burdening the reader:
[30] At Chartered professional is a person who has gained a certain level of skill or competence in a particular ﬁeld of work, which has been recognised by the award of a formal credential by a relevant professional organization. Chartered status is considered a mark of professional competency, and is awarded mainly by chartered professional bodies and learned societies. Common in Britain, it is also used in Ireland, the United States and the Commonwealth, and has been adopted by organizations around the world.
Chartered status originates from Royal Charters issued to professional bodies in the UK by the British Monarch, although such is the prestige and credibility of a chartered designation that some non-UK organisations have taken to issuing chartered designations without Royal or Parliamentary approval. In the UK, chartered titles may still only be awarded by institutions that have been incorporated under Royal Charter, with the permission of the Privy Council. The standards for chartered titles in the UK are set between the professional bodies and relevant government departments, and cannot be changed without government permission. Many chartered statuses in the UK and Ireland are also regulated professional titles under European professional qualiﬁcation directives.
Chartered status is generally considered a terminal qualiﬁcation in a particular profession, in some ﬁelds professional bodies also offer lower level qualiﬁcations, such as Incorporated Engineer (IEng) or Registered Scientist (RSci). It should not be confused on this point with the senior membership grade of Fellow in many professional institutes and learned societies, which is usually a measure of achievement and/or standing in a profession rather than a professional qualiﬁcation based on assessment of competencies.
Chartered status is a form of accreditation, with there being a grant of a protected title but no requirement to be chartered in order to practice a profession (making it distinct from licensing). …
…
The full title used differs from profession to profession and is normally of the form “Chartered <profession name>”, where <profession name> is replaced by the name of the profession (e.g. Engineer or Accountant), sometimes with qualiﬁers to differentiate it from a similar title issued by another body (e.g. Marine Engineer or Management Accountant).
In the UK, chartered professional titles may only be trade-marked if issued by a body holding a royal charter and which has permission under its charter to grant that title. Chartered professional titles are normally only permitted to be registered as collective trade marks. Guidance provided by the United Kingdom Intellectual Property Office is that the use of the word “chartered” in a trademark by a non-chartered organisation “would mislead the public into believing that the association and its members have chartered status.”
In the US, “chartered” is considered a descriptive term, thus trademarks using “chartered” along with a descriptive title for the profession may only be registered on the principal register if they can be demonstrated to have acquired distinctiveness through exclusive usage in trade for at least ﬁve years. Alternatively, they may be registered on the supplemental register.
…Chartered Engineer (or a derivative) is also used in the official translation of titles from Austria, Croatia, the Czech Republic, Iceland and Slovakia, while Chartered Accountant (or a derivative) is used in the ofﬁcial translation of titles from Austria, France, Hungary, Iceland, and Romania.
In the US Chartered qualiﬁcations are offered by private education providers such as The American College of Financial Services and the Global Academy of Finance & Management (formerly the American Academy of Financial Management). Unlike chartered qualiﬁcations in most countries, these are not issued under a royal/government charter or legislation. The UK Intellectual Property Office refused a trademark application for the US Chartered Financial Analyst qualiﬁcation on the grounds that it was not granted by a body with a royal charter and therefore had the potential to be deceptive.
…
In the Commonwealth, the title Chartered Accountant was adopted by Acts of Parliament in Canada in 1902 and in South Africa in 1927. It spread to Australia in 1928 with the granting of a royal charter to the Institute of Chartered Accountants in Australia (now part of Chartered Accountants Australia and New Zealand). The Institute of Chartered Accountants of India was established by Act of Parliament in 1949 and the Institute of Chartered Accountants of Pakistan by Act of Parliament in 1961.
Development in the US began in 1927 with the establishment of the American College of Life Underwriters (now The American College of Financial Services) offering the Chartered Life Underwriter designation. This marked not only the ﬁrst use of a chartered title in the US but also the ﬁrst use without government permission by either Charter or Act of Parliament. This was a sharp contrast to the situation in the Commonwealth, where accountants in South Africa and Australia had been engaged in a decades-long struggle to gain the right to use a chartered title that came to fruition at about the same time. The CLU was followed, after many years of preparatory work, by the incorporation of the Institute of Chartered Financial Analysts (now the CFA Institute) in 1962 and the creation of the Chartered Financial Analyst designation in 1963.
…
When the European Communities (Recognition of Professional Qualifications) Regulations were introduced in the UK in 1991, they featured 40 chartered statuses, including 5 forms of Chartered Surveyor from the Royal Institute [sic] of Chartered Surveyors, Chartered Accountants from three different bodies, and two titles from the Chartered Insurance Institute. The most recent version of the regulations, from 2015, lists 72 chartered statuses, now including 21 varieties of Chartered Surveyor.
In summary, I am satisfied that the word “chartered” may in principle be used by a range of professional or educational organizations, some of which would not claim authority for so doing under a Royal Charter granted by the British monarch or the Privy Council. These might include not only various United States, Irish or Commonwealth institutions, but might also possibly extend to the official English translations of qualifications or designations originating in non-English speaking countries having no connection at all with the British Crown. I accordingly think that this conclusion must guide me in my assessment of whether the Opposed Mark as a whole is capable of distinguishing the Designated Services.

The meaning of the word “surveyor”

As to the word “surveyor”, the Opponents acknowledge it may have a range of meanings depending on the context but, as indicated, view its meaning principally through the prism of its use in the Surveying Acts, with Mr Fox stating:[31]
Surveyors are experts at measurement and use mathematics and specialised equipment to measure, analyse and present information about the land, and structures on it. Surveyors are capable of measuring just about anything whether it is on land, in the sky or the ocean.
Surveyors may work in or specialize in the following areas: Cadastral Surveyors, …Mining Surveyors…[and] Engineering Surveyors.
[31] Fox 1 at [7]-[8].
As discussed below, each of the declarations in the Applicant’s evidence in answer, Green, Grimes, Herald 2 and Tompkins 2, provides significantly wider definitions and examples of usage of the word “surveyor” than does Mr Fox above, these effectively covering all of the Designated Services. Referring to these, Mr Fox says in Fox 2:
6. However, it is my expert opinion that the Australian public identify the term “surveyor” with the profession of surveying, and recognise that a surveyor in Australia holds a tertiary degree in surveying or spatial science. An Australian surveyor will usually work as a cadastral surveyor (i.e. someone who establishes the boundaries of real property), a mine surveyor or an engineering surveyor.
7. When I conducted a Google search … for the term “surveyor” on 23 June 2015 all references in the search results were to surveying, including a definition of land surveying or career information about land surveying. The only exception was a reference for firms of Quantity Surveyors, which in Australia is a recognised separate profession with its own degree and entry requirements. [Mr Fox exhibits the search results in question.]
8. I also note that [Herald 2] and [Tompkins 2] indicate that RICS use the term “surveyor” in connection with a range of professions, including art valuers, antique valuers, real estate agents, forestry experts, environmental scientists, facilities managers, machinery valuers, business management experts, project managers and property valuers. It is my expert opinion that use of the term “surveyor'” in connection with these professions is likely to mislead and confuse the Australian public especially when all of these terms have specific and readily understood meanings in Australia that are not aligned with surveying.
The Sippel, Mooney, Boyle, Shipp, Sandy, Nietschke and Giudici declarations provide essentially identical assessments to that of Mr Fox above on behalf of the First, Third, Fourth, Fifth, Sixth, Seventh and Eighth Opponents respectively.
Mr Knowles, referring to an Oxford Dictionaries online definition of the word “solicitor” provided by Mr Fox in Fox 2 at [11],[32] summarized the Opponents’ position in this way:
While the term “surveyor” can have legitimate meanings extending beyond a surveyor of land, a significant section of the general public would likely associate the term with a land surveyor. By analogy, the term “solicitor” can be defined broadly as a “person who tries to obtain business orders; a canvasser”. However, members of the Australian public are most likely to associate the term “solicitor” with an admitted member of the legal profession. If a person was to call themselves a “chartered solicitor”, this would obviously strongly imply that a person is a highly qualified and admitted legal practitioner.
[32] >
At the hearing Mr Merrick submitted that the Opponents’ case was contingent on my accepting the “narrow” description of surveying described by Mr Fox. This might arguably be so (at least as far as some of the Designated Services are concerned) in the case of the Opponents’ s 42(b) ground, which claims that use of the words “Chartered Surveyor” as a trade mark would be contrary to, inter alia, the Surveying Acts because it could imply official licensing or registration as a land, cadastral, mining or engineering surveyor in Australia had been granted when it had not. It might also be so for some of the services in the case of the s 43 ground which, for similar reasons, claims use of the Opposed Mark would be likely to deceive, or cause confusion amongst, a significant number of people wishing to use the services of a licensed land, cadastral, mining or engineering surveyor. As regards the s 41 ground with which I am concerned in this decision, however, I need to consider the degree to which the word “surveyor” in the mark as a whole might be apt for normal description[33] of any of the wide range of activities embraced by the Designated Services or indeed indicate a “characteristic” of those services.[34] In this regard I agree with Mr Merrick that the meaning and usage of the word “surveyor” beyond the particular surveying activities of interest to the Opponents is relevant. As he put it (albeit in the context of his submissions on the s 43 ground of opposition):
45. The Applicant submits that given the many instances of use of the word SURVEYOR in various contexts outside the sphere of a land surveyor, the [Opposed] Mark could not and does not give rise to a connotation of a land surveyor registered or licenced under State or Territory legislation. The word SURVEYOR is used across a range of disciplines unrelated to land surveying, for instance quantity surveying or marine surveying (Green, [3], Annexure SG-3).
46. The Applicant also submits that regard must be given to the dictionary definitions of the word SURVEYOR which clearly demonstrates the word SURVEYOR can be understood by different people to mean different things (Grimes, [5], Annexure HG-1).
[33] See American Screw Co.’s Appn [1959] RPC 344 (UK) at 346 (Torq-set); Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (CRANBERRY CLASSIC) per Wilcox J at [34].
[34] As indicated in Note 1(a) to s 41(6) of the Act, which is set out in paragraph 79 below.
Mr Green is a solicitor with the Applicant’s Australian attorneys and, noting that Herald 2 and Tompkins 2 “state that the term ‘surveyor’ is used across a range of disciplines”, annexes to his declaration the results of a Google^® search conducted on the word “surveyor” supporting this. The results highlighted in Green are grouped into four categories, (a) Quantity Surveyors,[35] (b) Hydrographic Surveyors,[36] (c) Marine Surveyors[37] and (d) Language Surveyors.[38]
[35] Who “estimate and monitor construction costs” of “projects ranging from office blocks, schools, hospitals, factories to bridges, railways, oil and mining development, shipbuilding and large process engineering works such as oil refineries.”
[36] Who “deal with the measurement and description of the physical features of oceans, seas, coastal areas, lakes and rivers” (and whose practitioners, I note, are certified and regulated by the Ninth Opponent).
[37] Who “inspect (survey) vessels ranging from small ferries to enormous crude oil carriers and cruise liners.”
[38] Who “help assure that situational information and preliminary sociolinguistic analysis are available regarding languages and peoples in a particular geographical area.”
Helen Grimes is a librarian with the same attorneys. In her declaration she identifies more than 20 dictionary definitions for the word “surveyor” ranging from “a person who carries out surveys” to “a name for certain caterpillars”, but also including the following definitions which appear relevant in the context of the Designated Services:
(a) an overseer or supervisor (The Macquarie English Dictionary 4^th edition, 2005 and 6^th edition, 2013);
(b) overseer, supervisor (The Oxford English Dictionary 2^nd edition, 1989);
(g) as a title of officials in various departments, offices, or works (The Oxford English Dictionary 2^nd edition, 1989);
(h) Brit. An official inspector, esp. for measurement and valuation (The Oxford Encyclopaedic Dictionary, 1991;
(n) one whose business is to inspect and examine land, houses, or other property and to calculate and report upon its actual or prospective value or productiveness for certain purposes (The Oxford English Dictionary, 2^nd edition 1989);
(m) someone who inspects something officially for the purpose of ascertaining condition, value, etc. (The Macquarie English Dictionary 4^th edition, 2005 and 6^th edition, 2013);
(s) orig. a person who designed buildings and oversaw their construction. Now (in full quantity surveyor), a person who estimates the quantities of labour and materials required for building and engineering work (Shorter Oxford English Dictionary on Historical Principles, ©2007); and
(w) someone whose business it is to survey land, etc. (The Macquarie English Dictionary, 4^th edition, 2005 and 6^th edition, 2013.
Ms Grimes also lists “a sample of [Australian] legislation that defines ‘surveyor’.” In addition to the Surveying Acts, the list includes various Mining, Marine and Navigation Acts.
As discussed in paragraphs 58 and 59 below, Ms Herald and Mr Tompkins also attest to the Applicant’s use of what are styled “alternative designations” (which all incorporate the word “surveyor”) and they provide a vast number of examples of this usage. This evidence demonstrates to my satisfaction that the Applicant does on the face of it use the word “surveyor” for its ordinary descriptive significance, relying variously on one or more of its wide range of meanings, across the broad scope of its services of interest. My conclusion, accordingly, is that the word “surveyor” is apt to describe all of the Designated Services.

The combined words “chartered” and “surveyor”

As to the significance of the combination of the words “chartered” and “surveyor” constituting the Opposed Mark as a whole, the Opponents’ position as put by Mr Knowles, (albeit apparently focused primarily on the claimed services in Classes 41 and 42 covering land, mining and engineering surveying), is that:
62. The Opposed Mark entirely lacks inherent adaptation to distinguish. It consists of two descriptive terms, the combination of which does not create a distinctive whole.
63. The meanings of the terms “Chartered” and “Surveyor” are discussed in detail above. In summary, “surveyor” refers to a member of a profession, and “chartered” indicates some form of royal or governmental approval or authorization. As previously mentioned, the surveying profession is heavily regulated in Australia. As such, the concept of a surveyor with some form of government approval is completely lacking any distinctive character.
Ms Herald and Mr Tompkins, for their part, generally refer to the combined words in their declarations as a “qualification” or a “designation”. As it is put in Tompkins 2:
47. In my view, the Chartered Surveyor qualification is, and was before the date of application of the subject application, one of the most prestigious and highly sought after and internationally recognised qualifications in the land, property and construction industries not only in Australia but across the world. Although the “Chartered Surveyor” qualification originates from the United Kingdom, such is the reputation that RICS and the “Chartered Surveyor” qualification has attained globally and had attained before 2012, that the qualification of “Chartered Surveyor” is now, and was before 2012, recognised across the globe as a truly international qualification that indicates that the surveyor is a member of RICS and has met the highest possible professional and educational requirements as a surveyor. It is for good reason that the “Chartered Surveyor” qualification is known as a “global passport” to be involved in excellent work given that RICS members are found across the globe including in Australia and are recognised as leaders of the surveying profession.
48. In order to be able to use the “Chartered Surveyor” designation, one must:
(a) be awarded a recognised university degree in the field of land, property and construction;
(b) have completed sufficient work experience; and
(c) have passed professional competence examinations through RICS.
As Ms Herald further explains in Herald 2:
27. “Chartered Surveyors” are professionals who have qualified as a member of RICS and have met the stringent requirements set and enforced by RICS and are thus entitled to use the CHARTERED SURVEYOR designation. Professionals can qualify for membership in any of the 17 distinct “professional groups”. These professional groups are: Valuation, Antiques and Fine Arts, Construction, Geomatics, Rural, Commercial Property, Environment, Dispute Resolution, Facilities Management, Project Management, Building Surveying, Building Control, Management Consultancy, Machinery and Business Assets, Minerals and Waste Management, Planning and Development, and Residential Property. Qualification requires a RICS accredited university degree (or recognised equivalent) and a minimum 2 year period of Assessment of Professional Competence (APC).
I note Ms Herald’s and Mr Tompkins’ use of the word “designation” is apparently prompted by its use in RICS’ Bye-Laws, with Bye-Law B3.1.1 specifying:
BYE-LAW 3: DESIGNATIONS
B3.1 Use of Designations
B3.1.1 Chartered Members shall be entitled to use Designatory Initials or Designations as follows:
(a) Fellow: the Designatory Initials “FRICS” and the Designation “Chartered Surveyor;
(b) Professional Member: the Designatory Initials “MRICS” and the Designation “Chartered Surveyor”.

The Applicant’s “Alternative Designations”

In paragraph 27 of Herald 2 quoted above Ms Herald identifies “17 distinct ‘professional groups’” who are “entitled to use the CHARTERED SURVEYOR designation.” In this regard it is significant to note that the Applicant’s Bye-Laws also prescribe the use of “alternative designations”, being titles or qualifications which insert a specific descriptive word or words between the words “chartered” and “surveyor” (“Alternative Designations”). As discussed below much of the claimed evidence of use of the Opposed Mark before me is in fact of these alternatives rather than of the applied for mark per se. It is accordingly important to spell out what this terminology refers to. The relevant Bye-Law B3.2 is set out below:
B3.2 Alternative Designations
B3.2.1 Governing Council may create and amend in Regulations such alternative Designations which may be used by a sole practitioner, Partnership or company as it considers appropriate, provided that:
(a) each alternative Designation shall start with the word “Chartered” and end with the word “Surveyor”; and
(b) there is adequate consultation with the membership of RICS in advance of any amendment.
Herald 2 at [29] and Tompkins 2 at [50] use the identical wording and table reproduced below[39] to further explain the use of these alternative designations:
Pursuant to RICS’ Bye Laws related to Alternative Designations, RICS members can undertake specialist qualifications to become chartered in their specific field. These qualifications are also known as alternative chartered designations. Of note is the fact that the alternative chartered designations all commence with the word “Chartered” and conclude with the word “Surveyor” and are understood as being associated with and act as a badge of origin for RICS.
[39] Herald 2 and Tompkins 2 are 1814 and 1244 pages long respectively, including their exhibits. It is an unfortunate aspect of them that, despite the declarants residing in Australia and the U.K. respectively, their evidence is in part word for word identical. Moreover, not only are some of the many voluminous (and essentially irrelevant) exhibits to the declarations also identical, a very significant proportion of the exhibited material is also apparently inadvertently duplicated within the one declaration.

Professional group

Specialist qualification/alternative designation

Arts & Antiques

·     Chartered Arts and Antiques Surveyor

Valuation, buying and selling, auctioning and managing antiques, fine arts

Building Control

·     Chartered Building Control Surveyor

Building regulations, fire engineering, environmental conservation, structural engineering, construction technology and public health

Building Surveying

·     Chartered Building Surveyor

Management and maintenance, design, insurance assessments, condition surveys, statutory approvals and defect diagnosis

Commercial Property

·     Chartered Commercial Property Surveyor

Real estate management, landlord and tenant representation, investment and financial appraisal, dispute resolution

Quantity Surveying & construction

·     Chartered Construction Surveyor

·     Chartered Quantity Surveyor

·     Chartered Engineering Surveyor

Development and construction commercial management, estimating, project cost and schedule controls, risk and contract management

Dispute Resolution

Supports members involved in all areas of dispute resolution including conflict avoidance, arbitration, adjudication, mediation and expert witness services

Environment

·     Chartered Environmental Surveyor

·     Chartered Forestry Surveyor

Managing and assessing the impact of real estate and land use on the environment; sustainability, contamination, regeneration and land management

Facilities Management

·     Chartered Facilities Management Surveyor

Infrastructure management and operations, performance- oriented procurement, life cycle costing and service management

Geomatics

·     Chartered Land Surveyor

·     Chartered Hydrographic Surveyor

·     Chartered Engineering Surveyor

Collection, analysis, interpretation of spatial information, land and hydrographical surveying, mapping and positioning, boundaries and data management

Machinery & Business Assets

·     Chartered Machinery and Valuation Surveyor

Management, calculation and sale of business assets, plant and machinery, depreciation advice, insurance, rating and tax

Management Consultancy

·     Chartered Management Consultancy Surveyor

Business property solutions, management and practice, strategic advice, corporate and personal insolvency, and turnaround management

Minerals & Waste Management

·     Chartered Minerals Surveyor

Minerals extraction planning, valuation, rating and planning, waste management, landfill and landfill tax, valuation and licensing

Planning & Development

·     Chartered Planning & Development Surveyor

Real estate valuation, easements, transport and infrastructure, marine and inland water resource management

Project Management

·     Chartered Project Management Surveyor

Planning and implementing development projects, team creation and management, implementing procedures and efficient handover of the finished project

Residential Property

·     Chartered Valuation Surveyor

Investment and development of public and private residential properties; brokerage, valuation, negotiations and asset management

Rural

·     Chartered Forestry Surveyor

Managing and valuing rural land, agriculture, forestry and woodland, farm management, appraisal, access and easement negotiations and environmental assessment

Valuation

·     Chartered Valuation Surveyor

Appraisal of land, real estate and businesses for sale, letting of investment, measurement, performance assessment, funding strategies and expert witness services

Bearing the foregoing in mind then, I turn now to a consideration of the s 41 ground.

Discussion

The section 41 ground

As from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. However, as both parties acknowledged, the now repealed section continues to apply to trade mark applications filed before that date.[40] Accordingly the repealed section remains relevant here and all references to s 41 hereafter in this decision are to the section as it stood prior to its amendment, as set out below:
[40] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.

Trade mark not distinguishing applicant's goods or services

41.(1) 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).
(2) 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 (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.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that 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, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

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: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

The ground based on s 41 of the Act is particularised in the SGP as follows:
The [Opposed Mark] is not capable of distinguishing the [Designated Services] from the services of one or more of the Australian state and territory Surveyor Boards who provide the same or similar services under the description “registered surveyor”, “licensed surveyor” or “surveyor”.
The [Opposed] Mark is descriptive of the [Designated] Services.

The operation of Section 41

The operation of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks[41] as follows:
Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons'”. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that 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; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
[41] (1998) 83 FCR 50 at 56–7; 40 IPR 498 at 504–5.
As discussed in paragraphs 8 to 10 above, the Opponents bear the initial onus of establishing the s 41 ground of opposition. However, as Mr Knowles highlighted, their onus is effectively limited to satisfying me that the Opposed Mark is not sufficiently inherently adapted to distinguish the Designated Services as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3).

Consideration of the Opposed Mark under section 41(3)

It was not in dispute that, in the well known words of Kitto J[42] from Clark Equipment Company v Registrar of Trade Marks (“Clark”): [43]
[T]he question whether a mark is adapted to distinguish [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, 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.
[42] In effect paraphrasing the words of Lord Parker in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 that Kitto J had earlier (at 514) quoted with approval.
[43] (1964) 111 CLR 511 at 514.
More recently the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[44] (“Cantarella”) considered s 41(3) in some detail and in a joint judgment the majority of the Court (French CJ, Hayne, Crennan and Kiefel JJ) explicitly approved Kitto J’s above-quoted words.[45] As Mr Merrick observed, the majority went on to say at [70]-[71] (with original footnotes omitted):
Interpretation of s 41(3)
[70] In accordance with the principles established in [Mark Foy’s Ltd v Davies Coop & Co Ltd[46]] and restated in [Clark], [FH Faulding & Co Ltd v Imperial Chemical Industries Ltd[47]] and [Burger King Corporation v Registrar of Trade Marks[48]], determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.
[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.
[44] (2014) 109 IPR 154.
[45].Gageler J, in a separate judgment, ultimately reached a dissenting conclusion in the matter at hand, but did not disagree on the applicability of Kitto J’s above-quoted words.
[46] (1956) 95 CLR 190.
[47] (1965) 112 CLR 537.
[48] (1973) 128 CLR 417.

As mentioned, Mr Knowles argued that the Opposed Mark contains no inherent adaptation to distinguish the Designated Services because the word “surveyor” is apt for normal description of persons who provide such services and “chartered” does no more than indicate the surveyor concerned has some form of governmental approval or authorization, whether that be from the British Monarch or otherwise.
Disputing this, Mr Merrick submitted:
55. …Contrary to the Opponents’ submission, the Applicant submits that in their ordinary signification, the words CHARTERED SURVEYOR do not mean a surveyor with some form of government approval to persons who will purchase, consume or trade in the designated services.
56. The Applicant further submits that the fact that the [Opposed] Mark consists of two words which may have descriptive implications does not mean that other traders would want or need to use the [Opposed] Mark, in relation to their own goods and services. Indeed, the exclusive nature of the Applicant’s Royal Charter is such that other traders would have no legitimate reason to use the [Opposed] Mark in connection with their own services without the authorisation or approval of the Applicant. This position is further supported by the fact that the Opponents have failed to provide any evidence of use of the words CHARTERED SURVEYOR by a party other than the Applicant.
57. The Applicant submits that the Opponents have not provided evidence to establish the ordinary signification of CHARTERED SURVEYOR in Australia as a phrase that other traders might legitimately need to use in respect of their own services and have accordingly failed to discharge [their] onus to establish that the [Opposed] Mark should be rejected under section 41(3) of the Act.
I cannot agree with Mr Merrick’s above submissions. As to his first point (at [55]), I understand the Applicant accepts the word “surveyor” is apt for normal description of all of the Designated Services. Indeed, establishing this was the apparent objective of its evidence in Green and Grimes. It is accordingly difficult to understand why many persons in Australia concerned with the Designated Services would not understand a “chartered” surveyor to be one who had at least some kind of approval to provide the relevant surveying service, whether that be at a governmental level or perhaps at a professional association level. Such persons are unlikely on the face of it to know anything about the Applicant’s specific charter, or indeed about Royal charters more generally, but to the extent that they otherwise assumed a meaning for the adjective “chartered” as applied to a surveyor offering one or more of the Designated Services I do not see what other kind of meaning the Applicant is suggesting they would arrive at. If not approval or authorization to provide the relevant surveying service, concerned persons would presumably at least assume “chartered” in this context indicated some level of qualification or status. However, either way I am satisfied that the word “chartered”, and the collocation “chartered surveyor” as a whole, lack inherent adaptation to distinguish the relevant services of one particular person or entity from those of others.
Mr Merrick’s second point (at [56]) apparently assumes that no party other than the Applicant would want or need to use the descriptive words “chartered” and “surveyor” together because there would be no “legitimate reason” to do so “without the authorization or approval of the Applicant.” As Mr Knowles emphasized, however, this has no relevance as far as s 41(3) and a claimed mark’s inherent adaptation to distinguish are concerned. In this regard Mr Knowles referred to Bennett J’s summary of “relevant principles” on the issue set out in Unilever Australia Ltd v Société des Produits Nestlé S.A.,[49] where her Honour said, inter alia:
[28] The expression “inherently adapted to distinguish” has been the subject of much judicial analysis. In Kenman Kandy[50] Lindgren J, although in dissent in the application of the principle, elucidated the concept and the principles at [81] to [84]. His Honour commented that sub-sections 41(5) and (6) make it clear that the expression excludes from consideration any secondary significance a mark acquires from use and that there are degrees of inherent adaptation to distinguish. It depends on the nature of the mark itself and is therefore not something that can be acquired. The nature of the range of goods to which the mark is to be applied is also to be taken into consideration as are the various ways in which it might be used or is proposed to be used in relation to those goods (at [84]). His Honour proposed that inherent adaptation to distinguish can be tested by assessing how it would be perceived and understood by members of the public seeing it used for the first time, because that test excludes the possibility of a trade mark significance arising from use.
…
[30] As Gibbs J remarked in Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 424 … inherent adaptability is “something which depends on the nature of the trade mark itself...and therefore is not something that can be acquired”. There is a distinction between “inherently adapted to distinguish” and “inherently capable of distinguishing”.
[49] (2006) 69 IPR 255 at [28]-[36].
[50] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30.
Moreover, as I discussed in paragraphs 23 to 25 above, the Opponents have provided evidence of a party other than the Applicant wanting to use the words “chartered surveyor” for relevant services, namely the AIB, an Australian professional organization with its own Royal Charter. Additionally, as mentioned in paragraphs 20 to 22 above, the Applicant’s own evidence shows use of the words “chartered surveyor” by the Society of Chartered Surveyors Ireland. As discussed in paragraphs 38 to 44 above I am satisfied that other entities too, whether or not having a Royal Charter, might in principle want or need to use the words “chartered surveyor” in relation to their own similar services notwithstanding the Applicant’s claim to exclusivity. Whether or not other parties might feel obliged to seek the Applicant’s authorization or approval to do so is beside the point. In this regard, as Kitto J observed in Clark at 513:
It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose, because its natural signification is against a notion that goods to which it is applied are the goods of the applicant and of no one else, may yet come by actual use or by virtue of special circumstances to be so closely associated with the applicant’s goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks.
Nor can I accept Mr Merrick’s third point (at [57]). An opponent is not necessarily required to provide evidence of the ordinary signification of words claimed as trade marks establishing “that other traders might legitimately need to use [them] in respect of their own services.” The Registrar of Trade Marks and the Courts routinely make their own assessments in this regard, often relying on their own general knowledge, or enquiries using dictionaries or other sources, in addition to matters disclosed in evidence before them. In the present case, as mentioned, I am satisfied based on the evidence and information available to me that other traders may, at least in principle, wish to use the combined words “chartered surveyor” for legitimate descriptive reasons in relation to one or more of the wide range of services covered by the opposed application.
I would just add that the need or desire of other traders to use the words “chartered surveyor” in relation to relevant services is but one reason why I believe the Opposed Mark is not inherently adapted, or sufficiently inherently adapted, as to be prima facie registrable for the Designated Services. As Lindgren J observed in Kenman Kandy:[51]
…while [Clark] establishes that in … particular circumstances … a mark will not be inherently adapted to distinguish, the case does not purport to identify all the circumstances in which a mark will be (or, for that matter, will not be) inherently adapted to distinguish. [Clark] establishes one negative test, the failing of which means that a mark is not inherently adapted to distinguish.[52]
[51] (2002) 56 IPR 30 at [98].
[52] See also Hearing Officer Thompson’s remarks in the same vein in Kraft Foods Australia Pty Ltd v Mars Australia Pty Ltd (2012) 97 IPR 52 at [21].
Given the wide meaning and historical usage of the word “chartered” discussed earlier, additional circumstances identified by the majority in the above-quoted passage from Cantarella at [71] are as I see it also relevant in assessing the Opposed Mark’s inherent adaptation to distinguish. These include its apparently laudatory nature and the fact that the combined words “chartered surveyor” most likely never had, as the majority put it, “the requisite distinctiveness to start with.”
To conclude, the Opposed Mark does not in my view qualify for registration based solely on its inherent adaptation to distinguish the Designated Services.

Consideration of the Opposed Mark under ss 41(5) and (6)

In such circumstances s 41(4) of the Act indicates ss 41(5) or (6) applies with, as discussed, the Applicant bearing the relevant onus of proof. Mr Knowles’ primary submission was that s 41(6) was applicable in this case and that the evidence of use relied upon by the Applicant did not establish that the Opposed Mark had become distinctive of the Designated Services in Australia by the Relevant Date. In the alternative he submitted the mark did not qualify for registration under s 41(5) because the evidence of use or intended use and “other circumstances” relied upon by the Applicant were in any event insufficient for me to be satisfied it would distinguish the Designated Services at some future time.
Mr Merrick did not argue the relative applicability of s 41(5) or s 41(6) across the broad range of the Designated Services, but concentrated instead on the adequacy of the Applicant’s evidence as establishing the Opposed Mark qualified for registration regardless. In particular he submitted:
58. If after considering section 41(3), the Registrar, is unable to decide the question, then in the alternative, the Applicant submits that the Opposed Application should be allowed for registration under sections 41(5) or 41(6) of the Act. The Applicant submits that contrary to the Opponents’ assertions, the Herald 2 and Tompkins 2 declarations evidence the Applicant’s extensive and continuous use of the [Opposed] Mark in relation to the [Designated Services] as at the Relevant Date. The Applicant and members of the Applicant have been based in and working in Australia since the early 1880s (Herald 2, [32], Exhibit RICS-7). Further, the Applicant has had agreements with a number of professional bodies in Australia since at least as early as 1991. Agreements between the Applicant and Australian professional bodies include the Australian Institute of Valuers and Land Economists (now called the Australian Property Institute) from 1991, the Australian Institute of Quantity Surveyors from 1991, the Institution of Surveyors from 1992 and the Australian Institute of Building Surveyors from 2010 (Herald 2, [30], Confidential Exhibit RICS-5).
Mr Merrick went on to highlight further aspects of the Applicant’s evidence, which I will address in more detail in due course.
As regards whether s 41(5) or s 41(6) is applicable in this case, I think the Opposed Mark falls rather under s 41(6). It seems to me that Note 1(a) to s 41(6), set out below, provides relevant guidance in this regard:
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
The ordinary meanings of the words “chartered” and “surveyor” and their combination in the context of the Applicant’s services of interest as discussed earlier do indicate one or more of these characteristics in my view, with the Applicant’s evidence itself emphasizing the esteem and prestige (the “quality”) of achieving chartered status as a surveyor and with the Designated Services provided by a surveyor on the face of it referred to directly by the words “chartered surveyor” (the “kind” and “intended purpose”). I accordingly conclude the Opposed Mark as a whole contains no inherent adaptation to distinguish any of the Designated Services.
If I be wrong in this view, I would only add that whether the Opposed Mark is considered not to any extent inherently adapted to distinguish the Designated Services, or arguably to contain some degree of inherent adaptation, is not critical to my decision. This is because the “combined effect” of the use (whether before or after the Relevant Date), intended use (of which there is no specific evidence) and other circumstances relied upon by the Applicant is in any event insufficient to satisfy me the mark does or will distinguish the Designated Services as required by s 41(5), let alone to establish that it did distinguish them as at the Relevant Date as required by s 41(6).[53] Why this is the case is the issue to which I now turn.
[53] I note Murphy J reached a similar conclusion in relation to the trade mark YELLOW in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2011) 93 IPR 513 at [16]-[20].

The Applicant’s evidence of use or other circumstances

The Applicant’s evidence of use and related matters is provided by Ms Herald and Mr Tompkins. While the evidence in question is certainly voluminous, it is nevertheless insufficient in my view to meet the Applicant’s onus of demonstrating the Opposed Mark had become distinctive of the Designated Services in Australia by the Relevant Date or that it is capable of so doing at some future time. Before delving into detail, as a general comment I feel compelled to record that large chunks of the evidence are manifestly irrelevant and that this deficiency is compounded by the fact that hundreds of pages buried within the exhibits to Herald 2 in particular (although not exclusively) are reproduced twice,[54] and even on occasion three times. Exhibit RICS-10, for example, contains a 24 page brochure titled “Best practice guidance notes for the Technical Due Diligence of Commercial & Industrial Property Australia” (at EIA PDF 875-898). The identical 24 page brochure is included again in Exhibit RICS-10 (at EIA PDF 1168-1191) and a third time in Exhibit RICS-16 (at EIA PDF 1537-1560). What is more, apart from their occurrence in one mention of the Applicant’s full name on its last page, the words “chartered surveyor” only appear once in the brochure in question in any event, in the sentence “All RICS Chartered Surveyors are required by RICS Rules to carry professional indemnity insurance.” Neither use of the words constitutes their use as a trade mark for the Designated Services (or at all) on the face of it. Now, what is the point of this irrelevant material? A cynic might think it is to discourage critical analysis of the evidence by dint of its sheer bulk. I rather suspect, nevertheless, that it simply reflects a lack of due care in the preparation and review of the evidence. Regardless, it has proved to be a significant and unnecessary drain on the time of those obliged to read it in any detail.[55]
[54] For example Exhibits RICS-14 and RICS-15 are identical. So too is the material in RICS-10 at pages EIA PDF 590-599, 602-654, 656-703, 730-737, 738-741, 742-768, 778-793, 847-874, 899-912, 913-936, 937-952, 1079-1118, 1119-1136 and 1137-1167 identical to the material in RICS-16 at pages EIA PDF 1395-1404, 1305-1358, 1407-1455, 1481-1488, 1489-1492, 1493-1520, 1521-1536, 1359-1386, 1561-1574, 1575-1598, 1599-1614, 1615-1654, 1655-1672 and 1673-1703 respectively.
[55] While concerning an application for interlocutory relief and involving rather different circumstances, the sentiments expressed by Tamberlin J in Virgin Enterprises Limited v Virgin Star Pty Ltd [2005] FCA 1846 at [30]-[34] are not dissimilar to my own here.
Other than as part of the Applicant’s full name, in fact, the collocation “chartered surveyor” per se does not appear at all in the majority of documents exhibited with Herald 2 or Tompkins 2, although in referring to the exhibits in question the declarants appear to be unaware of this. Referring to Exhibit RICS-10, for example, Ms Herald says:
42(c). … Now produced, shown to me and marked Exhibit RICS-10 are examples of the aforementioned guidance notes, practice statements, information papers and research and policy papers that demonstrate the manner in which RICS promotes the CHARTERED SURVEYOR designation as a badge of origin for RICS and the services provided thereunder in Australia.
Exhibit RICS-10 is some 682 pages long and contains tens of documents. By way of illustration only, I mention that the first of these is a 42 page document titled “Appointing a Quantity Surveyor – A Guide for Clients and Surveyors”. Other than once as part of the Applicant’s full name, the collocation “chartered surveyor” per se (or for that matter the word “chartered” solus) only appears on page 9 of the document, not used as a trade mark on the face of it, in the sentence “Detailed guidance on the selection and appointment of chartered surveyors is given in the RICS publication A Guide to Securing the Services of a Chartered Surveyor.” I am unable to locate any, or any more significant, use of the words “chartered surveyor” in the remaining 640 pages of Exhibit RICS-10.
Moreover, in the main the exhibited documents obviously relate to the UK and are unlikely to have been circulated in Australia. One would have hoped that phrases within the documents such as “(for use in England and Wales)” (at EIA PDF 585) and “(for use in Scotland)” (at EIA PDF 587) or a title such as “Commercial lease reform in the UK: can we learn anything from Australia about the awareness of small business tenants?” (at EIA PDF 590) would make this clear to the engaged reader.
Given the irrelevancy of this material it is all the more regrettable that, as detailed in footnote 54 above, so much of it is inexplicably included a second time in Exhibit RICS-16, albeit there Ms Herald introduces the material in the following terms:
42(i) … As an organisation which sets standards in the surveying, land, building, property and construction industries and is regarded across the globe as establishing the high watermark in professional practice in the surveying, land, building, property and construction industries, RICS prides itself in providing and facilitating thought leadership in the aforementioned industries. In addition to producing an extensive range of publications as demonstrated at Exhibit RICS-16…
I have concentrated on Exhibit RICS-10 up to now by way of example only, but note that these and other deficiencies pervade Herald 2 and Tompkins 2 generally. A further reason why I do not find the Applicant’s evidence of use persuasive is that both declarants evidently believe that any time one of the Alternative Designations is mentioned in RICS’ published material, this is evidence of use of the Opposed Mark as a trade mark for relevant services. Mr Tompkins for example says:
71. Due to the evolving diversity of the profession, since before 2011 RICS has and continues to use Chartered Surveyor sometimes in conjunction with a descriptive term to identify the specialist expertise of the relevant surveyor. Chartered Building Surveyors and Chartered Quantity Surveyors are prominent examples of this policy.

In similar vein Ms Herald says for example in Herald 2:
42. … RICS promotes the services it provides under the CHARTERED SURVEYOR trade mark and designation through a wide range of corporate publications including newsletters, bi-monthly hard copy discipline specific journals, Australian E-News and RICS Annual Reports. Now produced, shown to me and marked Exhibit RICS-9 are examples of the aforementioned corporate publications that demonstrate the manner in which RICS uses the CHARTERED SURVEYOR designation as a badges [sic] of origin. …
Most of the many publications included in the 379 pages forming Exhibit RICS-9[56] relate not to the designation “Chartered Surveyor”, but rather to one of the Alternative Designations, with titles such as “THE CHARTERED BUILDING SURVEYOR’S PORTFOLIO”, “WHY USE A CHARTERED QUANTITY SURVEYOR?”, “WHY BECOME A CHARTERED BUILDING CONTROL SURVEYOR?” and essentially similar titles incorporating the designations “chartered planning and development surveyor”, “chartered project management surveyor”, “chartered environmental surveyor” and the like.
[56] I note again in passing that several publications are included twice in this exhibit.
This conflation of claimed use of the words of the Opposed Mark with those of the Alternative Designations also has a significant consequence for any cogency that the (confidential) monetary figures provided by Ms Herald at [44], Exhibit RICS-25 and [45], Exhibit RICS-26 of Herald 2 might otherwise have had. Annual figures are given for “Advertising” and “Revenue” respectively for the three years ending on 31 July 2013 (being some 15 months after the Relevant Date). However these figures are simply said to be for expenditure and revenue relating to “the services provided under the CHARTERED SURVEYOR designation”, presumably reflecting Ms Herald’s interpretation of that term as illustrated in Exhibit RICS-9 and/or, as Mr Knowles submitted, merely reflecting use of the Applicant’s full name, “Royal Institution of Chartered Surveyors,” generally.
I mention in passing that in a further example of unnecessary redundancy Mr Tompkins provides the identical annual figures in Confidential Exhibit ST-14 to Tompkins 2, albeit being only for the two years ending on 31 July 2012, with the figures described in the same fashion as did Ms Herald.
As Mr Knowles highlighted in his submissions, the advertising and revenue figures provided are essentially meaningless in any event because they reflect the Applicant’s worldwide expenditure “including Australia” and no Australia-specific figures are given. Moreover, as Mr Knowles also noted, there is otherwise no breakdown of the figures provided, so it is not possible to know how they might relate to any particular one of the many diverse services claimed in the opposed application.
The Applicant’s evidence is also problematic for other reasons. Several of the exhibited documents were produced after the Relevant Date. How, to whom and in what quantities the material may have been disseminated in Australia, if at all, is almost invariably unstated. To the extent the Applicant relies on Australians consulting its website, relevant web traffic is not detailed. That said, most of the exhibited documents would not have been widely read in Australia on the face of it, obviously having no relevance to this country. To take Exhibit RICS-9 to Herald 2 again as an example, several of the documents included have clearly been produced and disseminated with a view to attracting UK-based individuals to attend seminars, training or courses provided in the UK under the Applicant’s auspices.[57] Another is titled “RICS India Professional Education”, and is likewise clearly aimed at potential students or attendees in the Indian market.[58]
[57] At for example EIA PDF 148-179 and 189-268.
[58] At EIA PDF 308.
In like fashion, in Exhibit ST-7 of Tompkins 2 Mr Tompkins includes brochures with titles such as “Real Estate and Construction Professionals in India by 2020” (EIA PDF 1940-1948), “England Planning Workshops” (EIA PDF 1953-1969), “Property investment valuation in the UK” (EIA PDF 1970-1987), “Home Buyer Report…England, Wales, Northern Ireland, Channel Islands and Isle of Man” (EIA PDF 1993-1998) and “RICS Practice Standards, UK” (EIA PDF 2017-2020). The Exhibit includes a 57 page “Small Business Property Guide” jointly published with the Federation of Small Businesses (“The UK’s leading business organization”) which is entirely UK-focused. Apart from single occurrences of the name “Royal Institution of Chartered Surveyors” none of these documents otherwise include the words “chartered surveyor” in any event. Of those documents in Exhibit ST-7 that do, albeit not as a trade mark in my view, most have the title “Chartered surveyors regional directory 2011 – Your essential guide to finding a surveyor in Northern Ireland”, or the same title including a different year or a different location such as “Yorkshire and Humber”, West Midlands, Wales, Scotland, London or the like (EIA PDF 2195-2264). Several other exhibited documents, such as those included in Exhibit ST-9, are clearly aimed at Ireland (EIA PDF 2803-2815) or continental Europe (EIA PDF 2823-2874), with several documents being in the German, French, Italian, Dutch or Russian languages.
Mr Knowles had further criticisms of the Applicant’s evidence. I do not think it necessary here to comment specifically on all of his submissions but do mention the following for the record, with which I generally agree. Referring to the Opposed Mark’s lack of inherent distinctiveness he pointed to the well known judgment of Jacobs J in British Sugar Plc v James Robertson & Sons Ltd,[59] where his Honour said (at 302):
I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark.
[59] [1996] RPC 281.
Mr Knowles went on to submit in relation to the Applicant’s evidence of use:
66. … the Applicant has not provided sufficient details of the specifics of this use, only making the broad statement that such use was in relation to a “wide range of services” including those covered by the opposed application.
67. Given that the application covers a wide range of services across six different classes, broad brush statements must be given little weight. The onus is on the Applicant to provide detailed evidence of use in relation to the distinct services covered by the application. The Applicant has not even provided membership figures in Australia on a year by year basis, as far the Applicant’s records would allow.
…
75. The evidence also demonstrates that most promotion of the trade mark is to current or potential members of RICS. The evidence does not show heavy marketing of the Opposed Mark to the public as a whole. RICS by inference relies on the fact that its members would promote the fact that they are “Chartered Surveyors”. However, there is very little evidence of such use or promotion.
76. As such, while RICS might claim that it has a reputation among professionals in the fields from which it seeks its members (which may support registration of a trade mark in respect of the services of a membership organization, or education services), this evidence does not demonstrate acquired distinctiveness among the relevant consumers for the bulk of services covered by the opposed application, which are provided to the general public.
77. To demonstrate distinctiveness of “Chartered Surveyor” in relation to those services, it is be necessary to provide evidence as to how the members (i.e. the authorised users) use and promote the term “Chartered Surveyor” in their business. This would include evidence of relevant revenue and promotional expenditure from such businesses.
…
79. The term “Chartered Surveyor” is a designation that is used by members of RICS rather than a trade mark in its own right. This indicates a person is a member of RICS, and is not something that is used by RICS to distinguish the services of RICS from those of other traders.
I believe there is force in Mr Knowles observation that based on the evidence the Opposed Mark is not functioning as a standard trade mark for particular services, but rather might be recognized as signifying membership of RICS, with all the esteem and competence that such membership might imply.[60]
[60] In this regard Part 16 of the Act allows for the registration of “certification trade marks,” which the Applicant might in future consider. See in particular ss 169 and 172 of the Act.
In his submissions on the Applicant’s use of the Opposed Mark said to be relevant to ss 41(5) and (6), Mr Merrick did draw my attention to several specific documents exhibited with Herald 2 and Tompkins 2 which he said “clearly demonstrate use of the [Opposed] Mark in relation to the services covered by the Opposed Application.” I have already effectively addressed the deficiencies in most of the material he mentioned. Even assuming the use he highlighted was as a trade mark, I am far from satisfied that there was significant use in Australia amongst the relevant public generally or that what use there has been relates to the mark as applied for or to the Designated Services per se. In short, the material in question does not satisfy me that the Opposed Mark qualifies for registration.
In summary, my finding is that the Opposed Mark contains little or no inherent adaptation to distinguish the Designated Services and that the application accordingly falls for consideration under ss 41(5) or 41(6) of the Act. In my estimation s 41(6) should apply. However, in either case the onus is then on the Applicant to demonstrate significant use of the Opposed Mark in Australia as a trade mark and for relevant services, as indicated under both of those provisions. This it has not done to my satisfaction. I therefore find that the Opponents have established their s 41 ground of opposition.

Decision

100. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

…the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in
respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.

101. I have found the opposition to be successful on the ground raised pursuant to s 41 of the Act. I accordingly refuse to register trade mark application number 1488791.

Costs

102. In the event of success, Mr Knowles sought costs on the Opponents’ behalf. As the successful party, the Opponents are so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Trade Marks Hearings
30 May 2017

Professional group	Specialist qualification/alternative designation
Arts & Antiques	· Chartered Arts and Antiques Surveyor Valuation, buying and selling, auctioning and managing antiques, fine arts
Building Control	· Chartered Building Control Surveyor Building regulations, fire engineering, environmental conservation, structural engineering, construction technology and public health
Building Surveying	· Chartered Building Surveyor Management and maintenance, design, insurance assessments, condition surveys, statutory approvals and defect diagnosis
Commercial Property	· Chartered Commercial Property Surveyor Real estate management, landlord and tenant representation, investment and financial appraisal, dispute resolution
Quantity Surveying & construction	· Chartered Construction Surveyor · Chartered Quantity Surveyor · Chartered Engineering Surveyor Development and construction commercial management, estimating, project cost and schedule controls, risk and contract management
Dispute Resolution	Supports members involved in all areas of dispute resolution including conflict avoidance, arbitration, adjudication, mediation and expert witness services
Environment	· Chartered Environmental Surveyor · Chartered Forestry Surveyor Managing and assessing the impact of real estate and land use on the environment; sustainability, contamination, regeneration and land management
Facilities Management	· Chartered Facilities Management Surveyor Infrastructure management and operations, performance- oriented procurement, life cycle costing and service management
Geomatics	· Chartered Land Surveyor · Chartered Hydrographic Surveyor · Chartered Engineering Surveyor Collection, analysis, interpretation of spatial information, land and hydrographical surveying, mapping and positioning, boundaries and data management
Machinery & Business Assets	· Chartered Machinery and Valuation Surveyor Management, calculation and sale of business assets, plant and machinery, depreciation advice, insurance, rating and tax
Management Consultancy	· Chartered Management Consultancy Surveyor Business property solutions, management and practice, strategic advice, corporate and personal insolvency, and turnaround management
Minerals & Waste Management	· Chartered Minerals Surveyor Minerals extraction planning, valuation, rating and planning, waste management, landfill and landfill tax, valuation and licensing
Planning & Development	· Chartered Planning & Development Surveyor Real estate valuation, easements, transport and infrastructure, marine and inland water resource management
Project Management	· Chartered Project Management Surveyor Planning and implementing development projects, team creation and management, implementing procedures and efficient handover of the finished project
Residential Property	· Chartered Valuation Surveyor Investment and development of public and private residential properties; brokerage, valuation, negotiations and asset management
Rural	· Chartered Forestry Surveyor Managing and valuing rural land, agriculture, forestry and woodland, farm management, appraisal, access and easement negotiations and environmental assessment
Valuation	· Chartered Valuation Surveyor Appraisal of land, real estate and businesses for sale, letting of investment, measurement, performance assessment, funding strategies and expert witness services