Telecommunications Industry Ombudsman

This decision concerns trade mark application number 750158 filed by Telecommunications Industry Ombudsman Limited for the words "telecommunications industry ombudsman" in class 42, relating to the reception, investigation, and resolution of complaints and disputes regarding telecommunication services. The application was initially rejected by the Principal Examiner on two grounds: firstly, under section 41 of the Act, for directly describing the services and thus lacking inherent distinctiveness, and secondly, under section 17 of the Act, for not being a sign used in the course of trade. The applicant sought a hearing to argue against these grounds for rejection.

The legal issues before the delegate were whether the proposed trade mark "telecommunications industry ombudsman" qualified as a trade mark under section 17 of the Act, and whether it was capable of distinguishing the applicant's services from those of other traders under section 41 of the Act. Specifically, the delegate had to determine if the applicant's services, provided free to the public but funded by industry members, constituted use "in the course of trade" for the purposes of section 17. Furthermore, the delegate had to assess whether the applicant's statutory monopoly, granted by the Telecommunications Act 1999, rendered the descriptive mark inherently adapted to distinguish the applicant's services, despite its descriptive nature.

The delegate reasoned that while the services were free to the public, the applicant's scheme was funded by its members (telecommunications carriers and service providers) based on complaint volumes. This funding mechanism, coupled with the applicant's obligation to its members, meant the services were dealt with or provided "in the course of trade" as defined by section 17, which allows for a broader interpretation than mere selling for value. Regarding section 41, the delegate considered the applicant's submission that its statutory monopoly under the Telecommunications Act precluded others from legitimately using the mark, thereby making it inherently adapted to distinguish. However, the delegate applied established case law, including *Michigan* and *Australian Airlines*, which hold that inherent adaptation depends on the intrinsic features of the mark itself and cannot be acquired or changed by use or other circumstances, such as statutory protection. The delegate concluded that the words "telecommunications industry ombudsman" directly describe the services and, absent the statutory protection, are not inherently adapted to distinguish them.

Consequently, the delegate found that the trade mark fell within the definition of a trade mark under section 17. However, the delegate determined that the mark was not inherently adapted to distinguish the application services, and therefore, the provisions of subsection 41(6) applied. As the applicant failed to meet the requirements of subsection 41(6), the application was rejected pursuant to subsection 41(2) of the Act.