Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd
[2012] ATMO 114
•19 November 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Telstra Corporation Limited to registration of trade mark application 1326381 (9, 16, 35) - YOU'RE LOCAL. WE'RE LOCAL. - filed in the name of Phone Directories Company Australia Pty Ltd
Delegate: | Michael Kirov |
Representation: | Opponent: Melissa Marcus of Counsel, instructed by Elizabeth Godfrey of Davies Collison Cave, Patent & Trade Mark Attorneys. Applicant: Did not appear. |
Decision: | 2012 ATMO 114 Section 52 opposition: s 41 considered – trade mark not capable of distinguishing the Applicant’s goods and services –opposition established. Costs awarded against the Applicant. |
Background
This is an opposition brought by Telstra Corporation Limited (“the Opponent”) 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 Phone Directories Company Australia Pty Ltd (“the Applicant”):
Application Number: 1326381
Priority Date: 16 October 2009 (“the Priority Date”)
Goods & Services: Class 9: Computer programs for use as reporting directories; computer programs for use as searching directories; directories (electric or electronic); electronic directories; telephone directories in electronic form; data processing apparatus producing data in printed form; publications in electronic form, including on-line publications; computer software and associated manuals
Class 16: Covers for telephone directories; directories (printed matter) including annual private, professional and commercial, telephone, locality and street directories; telephone books; thumb-index directories; advertisements (printed matter); advertising material being printed matter; annuals (printed publications); bulletins (printed matter); inserts for printed publications; lists (printed matter); periodically distributed printed materials; printed advertisements; printed advertising material; printed data sheets; printed data sheets for use in listing information; printed documents; printed lists; printed material; printed materials for advertising purposes; printed matter; printed matter for advertising purposes; printed periodical publications; printed periodicals; printed publications; telephone directories
Class 35: Advertising; advertising services relating to the provision and promotion of telephone directories and telephone directory business supplements of all kinds (including directories and business supplements provided to users in tangible or intangible form and those held in magnetic, electronic, electro-optic or other media) including agency services in respect of such directories and business supplements; advertising services in any media promoting the services and goods of advertisers in such directories and business supplements; advertising survey services, including telephonic and electronic surveys relating to telephone directories and telephone directory business supplements; co-operative advertising with those who advertise in telephone directories and telephone directory business supplements; advertising services and business services relating to the effective use of advertising services provided via the Internet including the compilation of advertisements for use on the Internet; compilation and provision of on-line directories; compilation of business directories; compilation of directories for publishing on the Internet; advertising services provided over the Internet; dissemination of advertising material; dissemination of advertising matter; graphic advertising services; on-line advertising on a computer network; promotion (advertising) of business; provision of advertising space
Trade Mark: YOU'RE LOCAL. WE'RE LOCAL.
(“the Trade Mark”)
The Applicant (including its predecessors in business) is the owner of a number of trade marks, use of which is licensed to related companies. Details of the Applicant’s predecessors in business and of the various licensing arrangements between the companies concerned are not relevant to the determination of this opposition and hereafter I will for convenience refer to such use as use by the Applicant. That said, the evidence before me is that:
From 1993 until June 2008, [the Applicant has] been in the business of publishing and distributing residential and business telephone directories in regional markets in Queensland and the Northern Territory, and since 2005, New South Wales, including making these directories available online at [a related company’s] website at since 2006.
The Opponent (including its predecessors in business) is also the owner of a number of trade marks, use of many of which is licensed to related companies. Again, details of the Opponent’s corporate history and of the various licensing arrangements involving its trade marks are not relevant to the determination of the opposition and hereafter I will for convenience refer to such use as use by the Opponent. The Opponent, too, compiles, produces and distributes telephone directories and in this regard, as it puts it in its evidence, has “been providing advertising and information services in Australia since at least 1975” via its well known Yellow Pages® branded directories which are distributed nationally. As with the Applicant’s directories, the Opponent’s directories have also been accessible online for several years.
I understand that delivery of both parties’ printed directories to businesses and households is unsolicited, that there is no charge to the recipient and that the directories are not therefore purchased or ordered by individual recipients by reference to any name or trade mark. There is likewise no charge to a user accessing information via the parties’ online directories. Businesses wishing to advertise or promote their goods or services in the parties’ directories must however pay for that privilege and that is how revenue is generated.
The present opposition is the third between the parties to have been heard in the last three years involving trade marks containing the word “local” and covering essentially similar or related goods and/or services. In 2010 the Opponent was opposing the trade mark Local directories your local phonebook in Classes 16 and 35 owned by the Applicant (“the 2010 Opposition”). In 2011 the Applicant was opposing the trade mark ASK A LOCAL in Classes 38 and 42 owned by the Opponent (“the 2011 Opposition”)[1]. These earlier oppositions successfully relied on s 41(6) and s 41(5) of the Act respectively, notwithstanding being principally motivated, it seems, by the parties’ rival claims to rights in various collocations or logos featuring the word “local” and the parties’ apparent concern that registration of the opposed marks might hinder their ongoing use of terminology or claimed trade marks containing that word.
[1] In this case the opposed application was divided out from an application for the same mark covering Classes 9, 38, 41 and 42 which was itself opposed by the Applicant and subsequently withdrawn.
The present opposition is very similar to the earlier oppositions in this regard. In fact in her written submissions the Opponent’s Counsel argues, somewhat extravagantly I would have thought, that in seeking to register the Trade Mark the Applicant:
…is indeed trying to claim a monopoly over the word “local”; it comprises 50% of the mark and it is combined with other equally non-distinctive words, “You’re” and “We’re”. To allow the mark to be registered would preclude other traders from using the word “local”.[2]
[2] Opponent’s “Outline of Submissions” dated 14 September 2012 at paragraph 4.43.
Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 18 February 2010 and the Opponent filed its Notice of Opposition (“the Notice”) on 18 May 2010.
I heard the matter as delegate of the Registrar of Trade Marks on 17 September 2012 in Melbourne. The Applicant did not appear and was not represented at the hearing, nor did it file or serve any written submissions. In this regard the Applicant’s attorneys, Middletons, advised IP Australia and the Opponent’s representatives by fax on 15 August 2012 that, despite having paid the required hearing fee, the Applicant had “now decided that it did not wish to appear at the hearing” and would instead “seek to rely on the evidence which it [had] filed in support of [the] application”. Melissa Marcus of Counsel, instructed by Elizabeth Godfrey of Davies Collison Cave, Patent and Trade Mark Attorneys, appeared for the Opponent. Ms Marcus’ oral submissions were supplemented by written submissions emailed to both Middletons and me on 14 September 2012.
Grounds of Opposition, Onus and Standard of Proof
The Notice lists seventeen grounds corresponding to various provisions of the Act but Ms Marcus confirmed via her emailed submissions of 14 September 2012 that the Opponent would only be pressing those grounds based on sections 41 and 43 of the Act. To succeed in its opposition the Opponent bears the onus of establishing at least one of these two grounds.[3] As will become apparent, I have only found it necessary to address the Opponent’s s 41 ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
[3] Although in the case of s 41, as mentioned in paragraph 18 below, the onus in fact shifts to the applicant once an opponent establishes that ss 41(5) or (6) of the Act are applicable.
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595, the relevant date at which the Applicant’s rights are to be determined is the Priority Date, being 16 October 2009.
I confirm I am proceeding on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[4]
[4] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].
The Evidence
The parties served and filed evidence as follows:
Evidence in Support
▪ Statutory Declaration by Christopher James Doody made 30 May 2008, with Exhibits CJD-1 to CJD-11 (“Doody”)
▪ Statutory Declaration by Stephen Thomas Harvy made 6 June 2008, with Annexures A to I (“Harvy 1”)
▪ Statutory Declaration by Stephen Thomas Harvy made 23 December 2008, with Annexures A to E (“Harvy 2”)
▪ Statutory Declaration by Stephen Thomas Harvy made 26 August 2009, with Annexures A to D (“Harvy 3”)
▪ Statutory Declaration by Elizabeth Kate Godfrey made 18 April 2011, with Attachments EKG-1 to EKG-3 (“Godfrey 1”)
Evidence in Answer
▪ Statutory Declaration by Catherine Rose McGarry made 12 September 2011, with Exhibits CRM-1 to CRM-21 (“McGarry”)
Evidence in Reply
▪ Statutory Declaration by Elizabeth Kate Godfrey made 26 February 2012, with Exhibits EKG-1 to EKG-55 (“Godfrey 2”)
▪ Statutory Declaration by Larisa Vella-Xuereb made 29 February 2012, with Exhibits LVX-1 to TRLP-19 (“Vella-Xuereb”)
▪ Statutory Declaration by Nadine Maree Courmadias made 5 March 2012, with Exhibits NMC-1 and NMC-2 (“Courmadias”)
I will refer to the contents of the parties’ evidence as necessary in the course of the discussion below, but mention at this point that Harvy 2 and Harvy 3 are copies of declarations which the Opponent originally served and filed in the 2010 Opposition, while Doody and Harvy 1 are copies of declarations it originally served and filed in the 2011 Opposition. I mention too that Exhibit CJD-11 to Doody is a full copy of a Statutory Declaration made by Catherine Rose McGarry (who is General Manager and a Director of the Applicant) on 8 June 2007 (with Exhibits CRM-01 to CRM-45). This McGarry declaration was originally prepared in support of the Applicant’s opposition to the (subsequently withdrawn) “parent” application referred to in footnote 1 above from which the application subject of the 2011 Opposition was divided.
It is convenient here to note that some of the information in the parties’ various declarations is claimed to be confidential and that, while I have taken this information into account, I have refrained from explicitly disclosing it in the discussion that follows.
Discussion
Section 41
The ground based on section 41 is indicated in the Notices as follows:
The [Trade Mark] is not capable of distinguishing the [A]pplicant’s goods and/or services in respect of which registration of the [T]rade [M]ark is sought by the [A]pplicant from those of other persons and registration should be rejected under Section 41 of the Act.
Section 41 of the Act is reproduced below:
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 operation of Section 41
As Ms Marcus mentioned, the operation of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (“Blount”) as follows (at 504):
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.
In accordance with Branson J’s above analysis the first issue which arises for consideration is therefore that under s 41(3), namely “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”. Here the Opponent bears the initial onus of establishing on the balance of probabilities that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s goods and services of interest, or is not sufficiently so adapted as to qualify for registration on that basis alone. If the Opponent is successful in this regard the onus then shifts to the Applicant to establish the matters specified in ss 41(6) or 41(5), as the case may be.[5]
[5] 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 referred to.
The Opponent’s principal submission was that the Trade Mark is not to any extent inherently adapted to distinguish the designated goods or services and thus that s 41(6) is here applicable. In this case, submitted Ms Marcus, the Applicant’s evidence of use is inadequate to satisfy s 41(6)(a) of the Act and the application must accordingly be rejected pursuant to s 41(6)(b) and s 41(2).
In the alternative, the Opponent submitted that the Trade Mark is not sufficiently inherently adapted to distinguish the designated goods or services as to qualify for acceptance on that basis alone and thus that s 41(5) is applicable. In this case Ms Marcus submitted that the evidence of use[6] relied on by the Applicant was likewise inadequate to satisfy me that the mark does or will distinguish the relevant goods and services and the application must therefore be rejected in accordance with s 41(5)(c) and s 41(2).
[6] The nature and extent of the actual use the Trade Mark has enjoyed is critical here since there is no evidence from the Applicant of intended use or “other circumstances” before me.
Consideration of the Trade Mark under s 41(3)
As regards inherent adaptation to distinguish, Ms Marcus referred to the well known words of Kitto J[7] in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 (“Clark”) at 514:
[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.
[7] In effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 that Kitto J had earlier (at 514) quoted with approval.
On this issue Ms Marcus reasoned as follows:
It is submitted that the [Trade Mark] comprises four words, two of which are the word LOCAL. The addition of the words “YOU’RE” and “WE’RE” add no inherent adaptation to the mark. The words “YOU’RE LOCAL” clearly mean “you are local” or “located locally” and the words “WE’RE LOCAL” clearly mean “we are local” or “located locally”.
I have no hesitation in accepting that the word “local” alone is on the face of it apt, (indeed arguably essential), for normal description of a characteristic of the designated goods and services. In this regard I agree with Hearing Officer Thompson in a passage from his decision in the 2010 Opposition quoted by Ms Marcus[8] that:
It is, I consider, with reference to traders producing telephone directories which target specific areas or localities, nearly impossible to avoid use of the words, “local directories”, “local telephone directories”, “local phone books”, “local phone directories”, “local listings”, “local businesses” and similar phrases employing the use of the word “local”.
[8] Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2010] ATMO 37 at [43]. See also similar observations by Hearing Officer Murray in her decision in the 2011 Opposition, Phone Directories Company Australia Pty Ltd v Telstra Corporation Ltd (2011) 94 IPR 300, at [31].
Moreover I agree with Ms Marcus’ submission that:
The words “You’re Local. We’re Local.” (sic) have a high (though not absolute) degree of descriptiveness that argues against the mark being inherently adapted to distinguish.
Where I disagree with Ms Marcus is her apparent reliance on the judgment of Kenny J in Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 (“Sports Warehouse”) to support a submission that s 41(6), rather than s 41(5), is applicable to trade marks which have (at worst) a relatively high degree of descriptiveness. In Sports Warehouse her Honour was considering the trade mark TENNIS WAREHOUSE, proposed for registration for online retail services of tennis equipment, under s 41. As Ms Marcus acknowledged, her above quoted submission echoes the actual words used by Kenny J, who said at [83] that, “There is a high (though not absolute) degree of descriptiveness in the words ‘Tennis Warehouse’ that argues against the mark being inherently adapted to distinguish”. Indeed, her Honour considered (at [107]) that the words in question were “in large measure descriptive of [the] services” claimed, that this was “not a case where the trade mark is imaginative in any real sense” and, in terms of the test posited by Kitto J in Clark, that “the evidence of the post-lodgement use by other traders of marks that resemble the applicant’s mark tends to confirm the likelihood that other traders might want to use the applicant’s mark, or a mark very like it, in respect of like services and might have some difficulty in avoiding infringement proceedings if they were to do so”. These findings notwithstanding, her Honour still reached the conclusion (at [108] and [109]) that the TENNIS WAREHOUSE mark was “to some extent inherently adapted to distinguish” the claimed services and thus that s 41(5), not s 41(6), was applicable.
I have reached a similar conclusion in the present matter. Certainly, as Ms Marcus argued, the Trade Mark can be said at one level to be descriptive of the designated goods and services in that it “describe[s] both the nature of the recipient of the goods or services and the character of the provider of the goods or services” as being “local”. I would not however characterize the mark as a whole as apt for normal description of the goods or services claimed. The Trade Mark may not be, to borrow Kenny J’s words, “imaginative in any real sense”, but it nevertheless contains repetition, is pithy and has a certain symmetry which does to my mind indicate the mark as a whole is sufficiently inherently adapted to distinguish as to qualify in principle for consideration for registration under s 41(5) rather than s 41(6). In this regard it has long been acknowledged that, as Wilcox J accepted in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at [34]:
…a mark need not be “absolutely unsuggestive of qualities” of the goods for which registration is sought, provided it does not amount to a normal description. …a question of degree is involved.
Moreover, as Ms Marcus observed, (citing Stone J’s judgment in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494; 56 IPR 30 at [145] to [147]):
In practice, a mark is treated as capable of distinguishing if it is not shown to be directly descriptive of the goods or services or otherwise to consist of a sign ordinarily used to indicate one of the matters listed in Note 1 to s 41(6).[9]
[9] That is, consisting “wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services or the time of production of goods or of the rendering of services”.
As indicated, I would not characterize the Trade Mark as directly descriptive of the designated goods or services because, as a whole, it does not strike me as apt for normal description of them. Nor, in terms of Note 1 to s 41(6), do I consider that the Trade Mark consists wholly of a sign that is ordinarily used to indicate the kind, or is ordinarily used to indicate some other characteristic, of the designated goods and services. I note too in this context that the well known case Diamond T Motor Car Co’s Application (1921) 38 RPC 373 is longstanding authority that a mark might be made up of discrete elements, none of which might individually be capable of distinguishing relevant goods or services, but which mark as a whole might yet be distinctive in relation to those goods or services.
Consideration of the Trade Mark under s 41(5)
Nevertheless, the Opponent has provided many examples in its evidence of its own (or its related companies’) use of phrases or taglines or claimed trade marks which include the word “local” and of similar use by other parties. Mr Harvy, for example, is the Group Product Manager for the Yellow Pages® printed directories produced by the Opponent’s subsidiary Sensis Pty Ltd and he mentions some 28 such collocations his company has used since 1997 in advertising or promoting its directories business. These range from expressions that appear to me to be entirely descriptive (such as LOCAL DIRECTORY or THERE IS A BETTER WAY TO FIND YOUR LOCAL CUSTOMERS) to those which on the face of it are at least to some extent inherently adapted to distinguish directories and related goods or services (such as THE LOCAL KNOW-IT-ALL, THE LOCAL IS CLOSING or LAST CALL AT YOUR LOCAL).
Ms Marcus also highlighted in her submissions some of the examples of use by unrelated parties documented in the Opponent’s evidence in relation to directory related products and services of phrases or taglines or claimed trade marks which include the word “local”.
As mentioned, I consider it quite apparent that no one party could successfully assert the right to exclusive use of the obviously descriptive word “local” alone for goods or services similar to, or closely related to, those covered by application 1326381. Ms Marcus’ submission to the contrary notwithstanding, it is likewise apparent in my view that registration of the Trade Mark would not give the Applicant such right. Indeed, given the plethora of examples in evidence of use by several parties of phrases, taglines and claimed trade marks containing the word “local”, it seems those parties claiming trade mark rights in the collocations concerned for relevant goods or services effectively accept that even relatively slight variations might suffice to distinguish their usage from that of others.
Against the background of this apparently widespread usage by others, however, I do accept that the Trade Mark as a whole has a relatively low level of inherent adaptation to distinguish the designated goods and services. Moreover I accept Ms Marcus’ submission, quoting from Kenny J’s words in relation to the TENNIS WAREHOUSE mark[10], that consequently:
… it will require a correspondingly higher level of use and other circumstances to satisfy the court that it does or will distinguish the designated [goods and] services: see Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 ; 258 ALR 545 ; 82 IPR 13 ; [2009] FCA 891 at [83] (“Chocolaterie Guylian”); Unilever Australia Ltd v Société Des Produits Nestlé SA (2006) 154 FCR 165 ; 69 IPR 255; [2006] FCA 782 at [57] per Bennett J; Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd (2003) 134 FCR 51 ; 59 IPR 343 ; [2003] FCA 1502 at [42] per Wilcox J; also M Davison, T Berger and A Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off, 4th ed, Lawbook Co, New South Wales, 2008, at [25.650] (Shanahan’s). The less the mark is inherently adapted to distinguish, the more the actual use of the mark (or other circumstances) will be required to satisfy the court that the trade mark does or will distinguish the designated services.
[10] Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 at [110].
In the present matter the Applicant commenced use of the Trade Mark approximately seven months before the Priority Date and accordingly most of the use documented in the evidence before me took place after that date. As Ms Marcus noted, Kenny J discussed the significance in terms of s 41(5) of an applicant’s use before and after the priority date in Sports Warehouse at [111] to [114] as follows (with my emphasis added in bold):
[111] Section 41(5) permits the registration of a trade mark that is not inherently sufficiently adapted to distinguish, but that has as at the lodgement date in fact acquired a capability to distinguish the relevant services: see Chocolaterie Guylianat [84] and Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257 (“Austereo”) at [51]. In other words, s 41(5) recognises that marks which are insufficiently inherently adapted to distinguish may nevertheless by their use or other circumstances have become distinctive in the minds of consumers so that they will be able to “do the job of distinguishing” the applicant’s goods: Chocolaterie Guylianat [84]. Thus, under s 41(5), an applicant relying on use prior to the lodgement date will need to show that the mark has in fact been used as a trade mark prior to the lodgement date so as to have acquired the requisite capability to distinguish the applicant’s goods: Chocolaterie Guylianat [84].
[112] Evidence of use after the lodgement date may be relevant under s 41(5): see Austereoat [32]–[33] and Re Pound Puppies Trade Mark [1988] RPC 530 at 533. As was said in the latter case:
… it is permissible when deciding whether the mark was capable of distinguishing to take into account use after the date of application. If a mark has in fact become distinctive, then it is at least likely to have had a capacity to distinguish. [Emphasis added.]
[113] As the above passage shows, the relevance of post-lodgement use depends on whether it supports an inference that the trade mark was capable of distinguishing the applicant’s services at the lodgement date. In Austereo at [33] Finn J said:
[33] What requires emphasis, though, is that subsequent use evidence, no less than evidence of intended use, is relevant only to the question of whether the mark possessed the required capability at the priority date. It will not assist an applicant for registration if that use demonstrates no more than (i) the mark has the potential or capacity to acquire that capability in the future; or (ii) that the mark has acquired distinctiveness only because the relevant community has since the priority date been “educated” to see the mark as an indicator of the origin of particular services: British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 306; Re Application by Cadbury Ltd(2002) 55 IPR 561 at 570.
[114] See also Austereoat [51]. In Austereo, Finn J held that the post-priority date evidence of use was that the trade mark sounds different acquired distinctiveness after the priority date from its use with other marks. His Honour found (at [52]):
[52] … That use educated other traders and the public as to the association between the sounds different mark and the [relevant] businesses. In other words, it was through the subsequent usage that the mark acquired a capability to distinguish. The evidence does not support an inference that the required capability existed at the priority date.
In consequence, Finn J held that the sounds different mark should not be registered.
In the present matter the Applicant’s evidence of use is contained in the McGarry declaration of 12 September 2011 and is discussed below. I mention that the Applicant, whose printed directory business only currently operates in the Northern Territory and certain regional areas of Queensland and New South Wales[11], has not provided any evidence of its future intended use of the Trade Mark, nor of any “other circumstances” beyond its actual claimed use indicating that the mark does or will distinguish the designated goods or services. Indeed in this case, somewhat unusually, it is the Opponent which has argued that there exist “other circumstances” in terms of s 41(5)(a)(iii) of the Act:
…that preclude [the Trade Mark] from distinguishing the designated goods and services as being those of [the Applicant], namely use of the word LOCAL by [the Opponent] and by…many other third parties…
[11] Excluding major population centres such as Brisbane, Sydney, Wollongong or Newcastle.
I mention in passing that in support of this submission on the relevance of third party use to a consideration of “other circumstances” under s 41(5)(a)(iii) of the Act Ms Marcus cited certain observations of the Full Federal Court in Colorado Group Limited v Strandbags Group Pty Ltd (2007) 74 IPR 246 (“Colorado”), per Kenny J at [30], Gyles J at [41] and Allsop J at [136] and [180]. I remain unconvinced that the passages cited are in fact authority for this proposition, although the question is redundant on the face of it since, as effectively indicated by Kitto J in Clark, use by other parties is in any event relevant to s 41(5) in terms of assessment of the extent of inherent adaptation to distinguish pursuant to s 41(5)(a)(i). Moreover, here the Applicant is not seeking to register the descriptive word “local” alone. Colorado is thus distinguishable in any case since there the trade mark whose registration was being contemplated (and which precise mark the evidence showed had been used by another party) was the word mark COLORADO alone rather than a phrase or tagline which happened to contain that non-distinctive word.
As regards actual use of the Trade Mark by the Applicant (and bearing in mind the 16 October 2009 filing date of the opposed application), Ms McGarry says:
That “the Trade Mark was first used in March 2009 on the covers of the Applicant’s directories” and that “since that first use, the Trade Mark has been prominently featured in every copy of the Applicant’s hardcopy directories which are distributed throughout New South Wales, Queensland and the Northern Territory…[on] the front cover of the directories, as well as several pages throughout the directories”;
That “each of the Applicant’s directories produced from 2009 through to the current editions feature (sic) use of the Trade Mark as represented in Exhibit CRM-2” to her declaration, (being copies of the Applicant’s Alice Springs 2011/2012 phone directory and of pages from its 2009/2010 Taree & Forster-Tuncurry and 2011/2012 Maitland & Cessnock phone directories);
That pages from the Applicant’s website(s) also “prominently display the Trade Mark”, with Exhibit CRM-4 being “a representative sample of selected pages” from the website prior to July 2011[12] and Exhibit CRM-5 being copies of selected pages from its post-July 2011 (updated) website said to show how “the Trade Mark is consistently used in each of the Applicant’s 23 online directories”; and
That “since March 2009, the Trade Mark has been consistently used in the Applicant’s promotional, advertising and corporate materials and as part of its various promotional activities”, with examples of this use shown in Exhibits CRM-9 to CRM-21 inclusive in or on, inter alia, downloadable brochures and advertising guides on its website(s), pens, stickers, stubby holders and drink bottles, apparel worn by the Applicant’s staff, magnetic stickers used on 35 cars driven by staff, notepads, “internal stationary forms”, business cards, a Christmas calendar, (print) advertisements and TV, radio and internet commercials.
[12] I mention that it appears from the Vella-Xuereb declaration (which forms part of the Opponent’s Evidence in Reply) that the Trade Mark was not used on this website prior to October 2009.
Ms McGarry notes, too, that most of the Opponent’s Evidence in Support is aimed at demonstrating that the Opponent, its related entities and numerous third parties in similar fields are already using the word “local” as part of descriptive phrases or claimed trade marks in relation to their own goods or services, but that there is no evidence the Opponent or others have used the Trade Mark per se.[13] In this regard Ms McGarry, (using words which were significant according to Ms Marcus’ submission discussed below and which I have rendered in bold for ease of reference), states:
In seeking registration of the Trade Mark, the Applicant is not trying to obtain a monopoly in the word “local” when it does not appear in association with the Applicant’s other distinctive branding indicia as detailed in this declaration. The Applicant is claiming a monopoly in the Trade Mark as it appears in full and in the word “local” only insofar as it appears in combination with the other distinctive elements featured in the Trade Mark. Other traders will not be unfairly restricted in their use of the word “local” by registration of the Trade Mark, as no other trader will need, without improper motive, to use the Trade Mark in relation to their similar goods or services.
[13] I note in passing that the Opponent did subsequently include one example of third party use in Australia of the (exact) Trade Mark in the Vella-Xuereb declaration, being use on a website page dated 13 February 2012 by a supermarket in Lorn, Victoria and examples of use on some eight U.S. websites, albeit in relation to goods or services unrelated to those covered by application 1326381.
As previously indicated, I agree with Ms McGarry that were the Trade Mark to achieve registration this would not give the registered owner right to exclusive use of the obviously descriptive word “local” per se. Nevertheless, nor in principle would rights necessarily be restricted to the precise mark as registered since, as s 120 of the Act indicates, use “as a trade mark [of] a sign that is substantially identical with, or deceptively similar to”, a registered mark for relevant goods or services is also deemed to be infringing use.
That issue aside, the most significant problem the Applicant faces in terms of s 41(5)(a)(ii) of the Act is, as Ms Marcus submitted, that the McGarry declaration either “does not show use of [the Trade Mark] as applied for” or does not show use of the relevant words in other than an apparently descriptive capacity. In particular, I agree with Ms Marcus that there appears only to be a single example, in the entirety of the Applicant’s evidence, of use of the Trade Mark per se as a trade mark. This sole example is shown in Exhibit CRM-11, which Ms McGarry describes as “a web brochure which was available on [the Applicant’s website no earlier than October 2009], hardcopies of which are distributed by the Applicant’s sales staff to customers and potential customers”. Even in the case of this one brochure, noted Ms Marcus, the mark “appears at the bottom of [a single] page and the [] logo and words LocalDirectories appear at the top of the page, giving the [Trade Mark] at the bottom of the page some meaning.”
All other claimed use of the Trade Mark on this brochure and, I would estimate, more than 95% of all the claimed use of the Trade Mark documented by Ms McGarry, is as part of the composite mark shown below, which is subject in its own right of the Applicant’s registration 1326386 for the identical goods and services in Classes 9, 16 and 35 covered by the opposed application:
The remainder, (that is around 5%), of the claimed use of the Trade Mark documented by Ms McGarry appears to have been as part of one or other of the composite trade marks or essentially descriptive collocations shown below:
Turn to LocalDirectories™ because You’re local. We’re local™.
Turn to LocalDirectories™ because You’re local. We’re local.
LocalDirectories™ You’re local. We’re local.™
100% recyclable, it’s our way of looking after the environment, because You’re local. We’re local.
® A phone directory made specifically for the locals, because You’re local. We’re local™.
To summarise, I agree with Ms Marcus’ submission that “the evidence shows [the Applicant] is not using [the Trade Mark] as a trade mark, or that the Trade Mark is invariably used with other trade indicia, namely the words Local Directories (appearing as LocalDirectories, being the name of the directory), and often also with the [] logo”.
It is in the context of this use that Ms Marcus highlighted Ms McGarry’s above quoted statement that, “In seeking registration of the Trade Mark, the Applicant is not trying to obtain a monopoly in the word “local” when it does not appear in association with the Applicant’s other distinctive branding indicia as detailed in this declaration” (my emphasis). Ms Marcus also emphasised that Ms McGarry herself confirms that the use detailed in her declaration (and summarized in paragraph 35 above) is “representative” of the manner in which “the Trade Mark has been consistently used”.
Ms Marcus referred me to the often cited English case British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”), where Jacob J was considering whether the prima facie descriptive word “treat” was entitled to registration for “dessert sauces and syrups” in Class 30 on the basis of acquired distinctiveness. The word had been used for some five years for dessert syrups prior to its registration, but only as part of the collocation SILVER SPOON TREAT. In deciding that the mark should not have been registered Jacob J observed (at 302) that, “There is an unspoken and illogical assumption that ‘use equals distinctiveness’” and went on to say (at 302-303):
It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.
I do not consider that the evidence filed to support the registration was anywhere near enough to support the conclusion that when the mark was registered, it was distinctive. Yes it had been used for about 5 years in conjunction with Silver Spoon, but it was not proved that the public regarded it as a trade mark - a reliable badge of trade origin - on its own.
Ms Marcus noted that in the 2010 Opposition Hearing Officer Thompson had considered Jacob J’s above quoted words apt in relation to the trade mark he was then considering (namely Local directories your local phonebook) because, as is the case in the present matter, the evidence of use before him did not show use as a trade mark in its own right and without more inherently distinctive trade mark indicia in close proximity. She also drew my attention to the fact that Mr Thompson had regarded the Local directories your local phonebook mark as “the kind of trade mark referred to by Jacob J in Philips Electronics BV v Remington Consumer Products [1998] RPC 283, at 312” (“Philips”), where his Honour had said:
…what we have here is a kind of "limping mark", always used with what is obviously a proper trade mark. The same was true of Treat which was always used with "Silver Spoon". Neither sign was ever used by the proprietor on its own. And that was evidence of a lack of a capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that a part of a sign - a "sub-sign" - cannot also be a trade mark: both Ford and Fiesta are obviously valid marks. But there are these other cases, where the sign proffered as a valid mark cannot really stand up on its own.
Finally, with respect to the position in Australia in particular, Ms Marcus referred to Section 4.8 of Part 23 of IP Australia’s Australian Trade Marks Manual of Practice and Procedure, which relevantly states with respect to evidence of use that:
If the context of the use demonstrates the trade mark is always used descriptively, even a very large amount of evidence of use is unlikely to support the applicant's case. The evidence must be carefully considered to decide whether it does support each mark as a trade mark in its own right.
In the Cranberry Classic case, Ocean Spray Cranberries Inc v Registrar of Trade Marks, (2000) 47 IPR 579, Wilcox J discussed this type of circumstance, pointing to the lack of support for the application trade mark in the evidence supplied:
“... I am unable to find that the words CRANBERRY CLASSIC have hitherto been used as a trade mark. In para 19 above I quoted the definition of ‘trade mark’ set out in s 17 of the Act: relevantly ‘a sign used ... to distinguish goods ... provided in the course of trade by a person from goods ... provided by any other person’. .... [The] common thread is that the mark must be intended to proclaim a connection with a particular trader.
“In the present case, the evidence does not establish that the words CRANBERRY CLASSIC had ... acquired a discernible connection with Ocean Spray. No witness gave evidence that the words CRANBERRY CLASSIC signified to him or her an association between the product and Ocean Spray. ... Ocean Spray had spent a considerable amount of money on the promotion of its range of drinks, including cranberry classic, but the range had been promoted under the name ‘Ocean Spray’. Given that fact, and the invariable presence on the label of the ‘Ocean Spray’ trade mark, it seems to me likely that any association, in the public mind, between this product and the applicant company would have been derived from the use of the words ‘Ocean Spray’ in advertising and on the labels of the products, not from the use of the words CRANBERRY CLASSIC. This impression is strengthened by the circumstance that the words CRANBERRY CLASSIC are displayed on the labels of that product in a manner similar to the words, admittedly purely descriptive, that identify the other drinks in the range.”
I agree with Ms Marcus that the use of the Trade Mark shown in the evidence before me in the present matter is of a similar character to that before the decision makers in British Sugar, Philips, Cranberry Classic and the 2010 Opposition. Moreover, not only is there no evidence here that the public regard the unadorned words “You’re Local. We’re Local.”[14] as a trade mark which distinguishes the goods and services covered by application 1326381, there is even an indication in the evidence before me that the words in question may have gone unnoticed at all by persons familiar with the Applicant’s printed directories.[15]
[14] This being the manner in which the Trade Mark is invariably punctuated and capitalised when used.
[15] Vella-Xuereb declaration, paragraph 31.
To conclude, given the low inherent adaptation to distinguish the designated goods and services possessed by the Trade Mark and the nature and extent of the use shown, I am not satisfied that the mark does or will distinguish the designated goods or services as being those of the Applicant. The Opponent has accordingly established its ground under s 41 of the Act.
Decision
Section 55(1) of the Act provides:
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.
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 1326381.
Costs
In the event that it prevailed, Ms Marcus requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedules 8 and 9 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
19 November 2012
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