TECHNIP ENERGIES FRANCE

[2024] ATMO 23

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReInternational Registration 1600199 - Australian Trade Mark Application number 2191255 (7, 9, 11, 12, 37, 39, 40, 42) – Offshore C-Hub – in the name of TECHNIP ENERGIES FRANCE.

Delegate:	Debrett Lyons
Representation:	Holder: Gadens Lawyers
Decision:	2024 ATMO 23 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA to be accepted for possible extension of protection to Australia

Background

1. On 24 December 2020, TECHNIP ENERGIES FRANCE[1] (‘Holder’) applied to extend protection to Australia of International Registration 1600199 under the provisions of the Trade Marks Act 1995 (‘Act’) and Trade Marks Regulations 1995 (‘Regulations’).  Such an application is referred to as an International Registration Designating Australia (‘IRDA’).  The current details of the IRDA appear below:

   [1] Then, TECHNIP FRANCE.

Application No.:	2191255
International Reg.	1600199
Filing Date:	24 December 2020
Priority Date	23 October 2020
Goods and Services:	Class 7: Handling apparatus (loading and unloading) for carbon dioxide, in liquid or gaseous form; arms for loading and unloading. Class 9: Technical monitoring device, namely, electronic monitors that measure carbon dioxide in geological reservoirs. Class 11: Apparatus for liquefying carbon dioxide, namely, a refrigeration system containing humidifiers, heat exchangers, and heat pumps. Class 12: Ships for transporting liquid carbon dioxide. Class 37: Construction, installation, maintenance and repair services relating to the underground storage of carbon dioxide. Class 39: Storing carbon dioxide, in liquid or gaseous form; underground storage of carbon dioxide; storing carbon dioxide in water tables, depleted wells, depleted beds or geological reservoirs; storing carbon dioxide offshore; transporting carbon dioxide, in liquid or gaseous form; transporting carbon dioxide by boat; transporting liquid carbon dioxide by sea; organizing transportation of carbon dioxide; loading liquid carbon dioxide; unloading liquid carbon dioxide; tandem unloading of liquid carbon dioxide; transferring liquid carbon dioxide; storing liquid carbon dioxide in ships; collecting carbon dioxide. Class 40: Liquefying carbon dioxide; treating carbon dioxide; heating carbon dioxide; advisory services relating to processing and handling carbon dioxide. Class 42: Engineering of equipment and systems for collecting, liquefying, storing, processing, transporting and packaging carbon dioxide; research and development on equipment and systems for collecting, liquefying, storing, processing, transporting and packaging carbon dioxide. (‘Holder’s Goods and Services’)
Trade Mark:	Offshore C-Hub	(‘Trade Mark’)

1. The IRDA was examined as required under reg 17A.12 of the Regulations. On 3 August 2021, IP Australia wrote to the International Bureau with a Notice of Provisional Refusal of the IRDA, identifying classification issues and raising a ground for rejection pursuant to s 41 of the Act in respect of (all) the Holder’s Goods and Services. With respect to the s 41 ground, the examiner stated that the Trade Mark is not capable of distinguishing the specified goods and services because

   OFFSHORE is defined by the Macquarie Dictionary as being or operating at a distance from the shore; based in an overseas location; additionally, 'C' is the chemical smybol for Carbon a widely distributed element which forms organic compounds in combination with hydrogen, oxygen, etc, and which occurs in a pure state as charcoal, graphite and diamond. Lastly, HUB is defined as a centre within a region for a specified activity.
   As a whole, the term OFFSHORE C-HUB therefore indicates that all of the goods and services you have claimed are for the operation and provision of an offshore carbon hub, that is, a centre for specified activities relating to Carbon and is located or operated at a distance from shore or is located overseas. The term as a whole has a descriptive meaning and connotation in reference to the goods and services you have claimed and extols a virtue of these goods and services.
   Furthermore, the term CARBON HUB is a common term used to indicate goods and services provided in the fields of renewable energy and 'clean' environmental practice and policy, specifically in the areas of carbon capture and sequestration provided from a central place.
   Other traders should be able to use OFFSHORE C-HUB or something so nearly resembling in connection with goods or services similar to yours.
   The refusal applies to the following goods/services:
   All of the goods and services claimed in this application.

2. Thereafter, and over the course of correspondence between the Holder and IP Australia resulting in two further adverse examination reports, the s 41 ground for rejection of the application was maintained without any significant development on the reasons for rejection. The Holder then requested to be heard by the Registrar of Trade Marks.

3. This matter has come before me, acting in my capacity as a delegate of the Regsitrar, for a hearing and decision by way of written submissions.  Those submissions were received and, together with the examination reports and official records to which I have access, form the basis for my decision. 

4. The hearing request is made under reg 17A.17 of the Regulations (similar in nature to a request for hearing under s 33(4) of the Act) and, as noted in MHFC Holdings Pty Ltd[2]  and other decisions of the Registrar (Teraglow Pty Ltd[3] and TOM Organic Pty Ltd[4]), the purpose of the hearing is not to review the examiner’s decision but rather to consider afresh the ground for rejection. I am therefore not bound to follow the examiner’s decision with respect to s 41 but it is often instructive to reconsider the reasoning which led to it.

   [2] [2016] ATMO 96, [9] (Hearing Officer Wilson).

   [3] [2016] ATMO 32 (Hearing Officer Worth).

   [4] [2018] ATMO 46 (Hearing Officer Worth).

   Legislative framework

5. Reg 17A.24 of the Regulations provides that:

   (1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

   (a)it is not in accordance with this Division; or

   (b)there are grounds for rejecting it.

   …

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

   (a)it is not in accordance with this Division; or

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

6. Section 41 of the Act provides:

   41 – Trade Mark not distinguishing applicant’s goods or services

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:        For goods of a person and services of a person see section 6.

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)the time of production of goods or of the rendering of services.

   Note 2: For goods of a person and services of a person see section 6.

   Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

7. The capacity of the Trade Mark to distinguish the Holder’s Goods and Services must be assessed at the filing date, 4 December 2020 (‘relevant date’), however evidence of use after that day may become relevant depending on the circumstances and I observe here that the examiner took the view that s 41(4) was applicable. That is to say that the examiner took the view that the Trade Mark is ‘to some extent, but not sufficiently, inherently adapted to distinguish’ the Holder’s Goods and Services from the goods and services of other traders, and that the Trade Mark ‘does not and will not distinguish’ having regard to the factors listed in s 41(4)(b).

   Reasoning

   Presumption of registrability

8. The cornerstone of s 41 is a presumption of registrability. In other words, I must be satisfied that either s 41(3) or s 41(4) applies to the Trade Mark before it is open to me to reject the IRDA. In Unilever plc v Beiersdorf AG, Hearing Officer Kirov wrote of s 33 of the Act, which as stated, corresponds to Reg 17A.24:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[5] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [5] (1998) 40 IPR 498, 505 (Branson J).

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Applicant’s 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 [Applicant’s Services]. [that is, s 41(4) applies][6]

   [6] [2017] ATMO 25, [38]-[40].

9. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

   (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

   (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
   
   (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
   
   (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

   
   (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
   
   (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
   
   (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
   
   (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
   
   (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
   
   (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
   
   (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
   
   (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[7]

   [7] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

   The ordinary signification of the Trade Mark

   11. In summary, the process I must follow is to first consider whether the Trade Mark has an ordinary signification and, if so, what that ordinary signification is. If the Trade Mark is found to have an ordinary signification it is necessary to then consider the likelihood of the Trade Mark being needed by other traders. If, on the other hand, I find that the Trade Mark has no ordinary signification then that is the end of the matter - the Trade Mark can be taken to be inherently adapted to distinguish, and s 41 cannot form a ground for rejection of the IRDA. I underscore that in this eventuality it is not necessary to go further to consider the likelihood of the Trade Mark being needed by other traders. Finally, if there is some doubt that that the Trade Mark has an ordinary signification, that doubt is to be resolved in the Holder’s favour, and the IRDA cannot be rejected.

1. The search for an ordinary signification advocated by Cantarella has in my observation tended to revive the process of deconstruction of a trade mark which, for a great many decades, Anglo-Australian law actively resisted.  Presented with the Trade Mark, I have no clear sense of a single meaning to attribute to it.  I am prone to read “offshore” as meaning “out to sea” because, as the Holder submits, “in context, and particularly aurally, the letter C … suggests the ocean or sea”.  This is before I acknowledge the possible ambiguity of “offshore” meaning “based in an overseas location” (Macquarie Dictionary).  Were I told that the Trade Mark had been applied for in class 36 for “cash management and financial services” I would likely have a gestalt shift in my vision of the Trade Mark.  In Mark Foy's Limited v Davies Coop and Company Limited (‘Tub Happy’), Dixon CJ stated that:

   “… to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. … I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words [tub happy] used in combination and in connection with cotton garments [the goods in that case], would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.

2. During examination, the examiner made her own research.  Unsurprisingly, there was no dictionary definition found for the Trade Mark as a whole.  As expected, definitions were found for “offshore” (set out already), “hub” as a centre within a region for a specified activity, and “C” being, amongst many other things, the chemical symbol for carbon.  There were no dictionary entries for C-Hub (or, C*Hub or C Hub).  The few internet references to C-Hub were almost exclusively references to the Holder’s business.  There were some findings for the term CARBON HUB in connection with renewable energy and the practices of carbon capture and sequestration.

3. Based on this research I am unable to reach the same conclusion as the examiner that the Trade Mark “indicates that all of the goods and services you have claimed are for the operation and provision of an offshore carbon hub, that is, a centre for specified activities relating to Carbon and is located or operated at a distance from shore or is located overseas. The term as a whole has a descriptive meaning and connotation in reference to the goods and services you have claimed and extols a virtue of these goods and services.”

4. Nevertheless, a question arises as to whether the Trade Mark may have an ordinary signification because the element C-Hub would be understood by the public in a relevant way.  The case of Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd[8] was an appeal from the Registrar of Trade Marks to the Full High Court. Section 16(1)(c) of the Trade Marks Act 1905 (Cth) provided for the registration of invented words and the question was whether ROHOE was invented for goods being cultivating implements. The Court was split, with two dissenting decisions. Dixon J gave the leading judgement for the majority decision that ROHOE was not an invented word. Whilst the presumption of registrability was altogether different under the 1905 Act and albeit that the question before me is that of ordinary significantion, not invention, His Honour nevertheless made several observations which are still of relevance now, set out below:

   The materials from which such a word has been fashioned cannot be neglected and if it is compounded of elements of which the source is manifest and the intended meaning is transparent, it becomes a question whether there is anything more than a colourable attempt at reproducing some of the sounds and all the sense of an expression belonging to common speech.

   …

   Doubtless a word is no less invented because, when it comes to be affixed to an article, its meaning is determined and perhaps explained … [but] … the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements.  

   The word " rohoe " is in fact a compound of the word "hoe and the first syllable of " rotary." "Ro" is not a recognized contracted prefix from rotary as, I think, "roto " has come to be, but it is the first syllable. "Hoe" is, of course, the common English name of a common tool and it is now the familiar name. 

   [8] [1946] HCA 15; 72 CLR 175.

5. In contrast to the case of of Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd, I do not consider that C-Hub is nearly so transparent as ROHOE.  In order to reach the conclusion that the Trade Mark has the signification suggested by the examiner, I would have to give special meaning to C-Hub, not to my mind supported by the limited evidence, and synthesize this together with another word, itself having multiple meanings – exactly the type of error cautioned against in the Tub Happy case.

6. I do not accept that the Trade Mark has the signification identified by the examiner.  I cannot, either through the use of ordinary dictionary definitions or the material identified by the examiner, identify any particular ordinary signification of the Trade Mark, and certainly not one that would amount to a direct reference to the character and quality of the Holder’s Goods and Services.  As such, I do not need to consider the second of the two steps established by Cantarella, and I find that the ground for rejection has not been established.

   Decision

7. As I am not satisfied that there is a ground for rejecting the IRDA under section 41 of the Act I must accept the IRDA for possible extension of protection in Australia. As a delegate of the Registrar, I now do so and the International Bureau will be notified accordingly.

   Debrett Lyons
   Hearing Officer
   Oppositions and Hearings
   9 February 2024