The College of Law Pty Limited

[1999] ATMO 53

TRADE MARKS ACT 1995

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

RE:Trade Mark Application Number 729532 to register the trade mark THE COLLEGE OF LAW in the name of THE COLLEGE OF LAW PTY LIMITED.

Background

On 10 March 1997, The College of Law Pty Limited (the applicant) filed an application to register a series of word trade marks, THE COLLEGE OF LAW and THE AUSTRALIAN COLLEGE OF LAW in class 41 in respect of "educational and training services".

In his first report on the application, the examiner of trade marks raised a ground for rejecting the application under s.41 of the Trade Marks Act 1995 (the Act). He said that the trade mark was not capable of distinguishing the applicant's services from the services of others, because other traders are likely to need the words to indicate their similar services. He also raised a ground of rejection under s.51, that the two marks did not constitute a series. The applicant chose to delete the second mark, to overcome the series difficulty, and to submit evidence of use in an attempt to overcome the ground for rejection under s.41. The examiner and a Principal examiner found the evidence insufficient to overcome this objection. The applicant was informed of this position in the examiner's second report. In response, the applicant raised further issues that it wished the examiner to consider in connection with the ground for rejection under s.41. When the examiner, after considering this material, maintained this ground for rejection in his third report, the applicant requested to be heard in the matter.

The hearing was set down in Sydney for 11 March 1999. Prior to that date, however, the attorney for the applicant, Ms Odette Gourley, of Minter Ellison contacted me to indicate that she would not attend the hearing, but intended to rely on further written submissions. This material was received and my decision has taken into account these submissions and the material provided during the course of examination.

The Evidence

The evidence of use submitted consisted of a statutory declaration, and exhibits "CO1" to "CO5" inclusive, dated 3 September 1998 from Brian Kenneth Thomas, the Company Secretary of the applicant. He said that use of the mark began in 1975, detailed the courses offered by the applicant and included student numbers.

The exhibits attached to the declaration provide the following material:

• "CO1" consists of various information and enrolment brochures for the applicant's courses.

• "CO2" is a cover for these documents.

• "CO3" is a course handbook.

• "CO4" is a sample of the certificate obtained by a graduate of the college.

• "CO5" is a promotional brochure.

Submissions

In her final written submissions, Ms Gourley addressed the issues involving s.41 at length, providing a consideration of both the general treatment of s.41 provisions and the specific relevance of this treatment to the present mark. Ms Gourley addressed the various points under many sub-headings. In summary, however, the attorney argued that the mark has some inherent adaptation to distinguish the applicant's goods from those of other traders. She said that this detail, together with the evidence of use provided, should enable acceptance under the provisions of s.41(5). Ms Gourley also claimed that, alternatively, even if I found that the mark did lack any inherent adaptation to distinguish, the evidence submitted was sufficient to show that the mark was distinctive in fact (as at the date of application) and so should be accepted under the provisions of s.41(6). Extensive reference to precedent case law was made either by quotation or citation, in the attorney's submissions. I do not intend to describe that material in detail here, but I will make reference to parts relevant to my decision in the Discussion section below.

Discussion

As the examiner had maintained that the trade mark was “not capable of distinguishing” the applicant’s goods from those of other traders, I must consider it under Section 41 of the Act.

Sub-section 41(3) of the Act reads:

(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.

The expression "inherently adapted to distinguish", as found in s.41(3) above, has been discussed in Blount Inc v. Registrar of Trade Marks 40 IPR 498 (the Oregon case) by Branson J. Her Honour confirms that the expression is to be understood under s.41(3) of the Act in the same way as under s.26(2) of the Trade Marks Act 1955 with the words at 506:

The notion of a trade mark being inherently adapted to distinguish the designated goods was of primary significance under the 1955 Act. There is no reason to think that the phrase "inherently adapted to distinguish the designated goods from the goods of other persons" appearing in s.41(3) of the Act is not intended to be understood in the light of decisions under the 1955 Act, and comparable United Kingdom legislation which includes references to inherent adaptability.

Earlier in the decision, Justice Branson cites Clark Equipment Co v. Registrar of Trade Marks (1964) 111 CLR 511 (the Michigan case) as outlining the relevant test, by which the inherent adaptability of a trade mark to distinguish the goods as belonging to a particular trader, should be made. Justice Kitto sets out this test at 514 as follows:

… the 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

Although this test was framed in the context of a trade mark for goods involving a single word, the principle involved applies to the inherent adaptability of any trade mark to distinguish the goods or services of one trader from the goods or services of another trader. So the question to be resolved in the present case is, "what is the likelihood that other persons, offering educational and training services, particularly in matters of law, and being actuated by proper motives, will think of the phrase THE COLLEGE OF LAW and want to use it in connection with their services".

I note that the specification for this application claims "educational and training services". The applicant's services are offered at a college and entail subjects encompassing Law. I do not believe that the mark is inherently adapted to distinguish the services of the applicant from the services of other traders offering similar educational programs. I find, then, that the mark is not acceptable under s.41(3) of the Act.

In her written submissions, Ms Gourley had not argued for acceptance under s.41(3) but had submitted that the mark could be accepted under either s.41(5) or s.41(6).

In her summary concerning the application of s.41 in Blount (supra) at 504, Branson J outlines the three possible outcomes that can occur from a consideration of the inherent adaptation of the trade mark to distinguish the applicant's goods or services with the words:

… 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.

As described in the discussion involving s.41(3) above, I do not believe that option (a) from the summary of Branson J has application in the present case. For the other options, the following written submissions from the attorney are relevant.

Ms Gourley submitted that a number of factors should be considered to allow the application acceptance under s.41(5) of the Act. These factors included a list of more than ten choices available to traders who wish to describe their own educational and training services, such as INSTITUTE OF LEGAL TRAINING, ACADEMY OF LEGAL TRAINING and LAW SCHOOL. The attorney added that it was only necessary that the mark have a "scintilla of inherent adaptation to distinguish" in order to qualify for consideration under s.41(5). In addition, Ms Gourley cited two previous trade mark decisions, for THE SOUND, and for ORIGINAL JAZZ CLASSICS and ORIGINAL BLUES CLASSICS. In these decisions, the delegate of the Registrar had determined that the marks possessed sufficient 'inherent adaptability to distinguish', and thus allowed the provisions of s.41(5) to be applied to the applications. Ms Gourley argued that the present application should be allowed the same consideration.

(a) Section 41(5)

(1) Other Descriptions Available

Although the material put to me indicated that there were many different descriptive terms available for other traders to use to describe their similar services, this factor does not change the test to be passed for this trade mark, if the provisions of s.41(5) are to be applied. It is still required that the mark must be, to some extent, inherently adapted to distinguish the applicant's services from the services of other traders.

The words of King J in The Seven Up Co. v Bubble Up Co., Inc (1987) AIPC ¶90-433 at 37,810 are pertinent on this point, where he said:

The fact that there are other words customarily used to identify the class of goods concerned would not render it less likely that other traders would wish to use a term which, although it would not appeal to an official as an apt description, would nevertheless be thought to appeal to the general public. … I think that the mark applied for is so likely to interfere with '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' that it should be regarded as unregistrable in Pt B of the Register.

Despite the list of alternatives provided by Ms Gourley in her submissions, I believe that the words THE COLLEGE OF LAW provide nothing more than a description of the applicant's business. It is a phrase that readily conveys the nature of the applicant's educational and training services. As such, I cannot accept that this argument is helpful in showing that the mark has any inherent capability to distinguish the applicant's services, or, therefore, is helpful in providing reason to consider the application under s.41(5).

(2) The Earlier Acceptances

Ms Gourley referred me to two earlier decisions. These cases were Re Application by ElthamWoodwind (Importing Pty Limited) 34 IPR 668 for the trade mark THE SOUND and Re Application by Fantasy Inc (1997) 39 IPR 381 for the marks ORIGINAL JAZZ CLASSICS and ORIGINAL BLUES CLASSICS. The three trade marks involved in these decisions were found to be "to some extent inherently adapted to distinguish the designated goods or services" for their respective goods. They were all given consideration under s.41(5) of the Act. I have reproduced these marks below for convenient comparison.

In the Fantasy Inc decision (supra), at 384, the delegate commented on his reasons for considering the applications under s.41(5) with the following words:

I am of the opinion that the words contained in the subject marks, viz 'original jazz classics' and 'original blues classics', respectively, are not, by themselves, capable of distinguishing the applicant's goods from those of others in the marketplace. All of the words are well known, and their respective combinations have clear meanings, which add nothing to the trade marks' capacity to distinguish.
However, I believe that the get-up of the respective combinations does give to the trade marks a low level of inherent adaptation to distinguish.

These comments lead to the logical conclusion that, had the applications been simply ORIGINAL JAZZ CLASSICS and ORIGINAL BLUES CLASSICS in block capitals, then the delegate would have decided that they had no 'inherent adaptation to distinguish'.

Similarly, in the Eltham Woodwind decision (supra), at 670 and 671, concerning THE SOUND trade mark, the delegate made the following comments:

… the present combination of words is not in the same class as laudatory words, … The combination of words, the subject of this trade mark, does have a degree of descriptiveness but does, in my opinion have a low level of inherent adaptation to distinguish.

…

The trade mark does have some degree of 'get-up', evidence from the 'segno' device forming the 'S' in the word 'Sound', the quaver device forming the letter 'd' in that word and the curlicues in the type face in which the trade mark is presented.

Here, although the delegate found that the words did have 'a low level of inherent adaptation to distinguish' because the words 'THE SOUND' were not in the same category as 'the best sound' or 'the ultimate sound', the trade mark also contained a degree of 'get up' in the device elements. These elements also provided assistance to decide that the mark had 'a low level of inherent adaptation to distinguish'.

In relation to the present application, the words THE COLLEGE OF LAW are all well known and produce a clear meaning, in combination, as denoting services of an educational or training body in providing legal courses. The present mark has no device elements and it has no 'get up' by way of stylisation of lettering. It clearly lacks the factors that existed in the above trade marks that allowed them to be considered for registration in terms of s.41(5).

I am of the opinion that the mark THE COLLEGE OF LAW is entirely descriptive of the applicant's services and lacks any inherent adaptation to distinguish these services from the similar services of other traders. This conclusion leads me to option (b) of the choices outlined above, as detailed by Branson J in Blount (supra). The result of such a conclusion is that the mark can only be considered for registration under the provisions of s.41(6).

(b) Section 41(6)

The relevant legislation reads:

(6) If the Registrar finds that the trade mark is not 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.

The evidence of use submitted by the applicant consisted of a Statutory Declaration from Brian Keith Thomas, Company Secretary of the applicant, dated 3 September 1998. The declaration claimed use of the mark in relation to legal education and training services from February 1975. Mr Thomas further declares that the applicant is the largest provider of professional legal training programs in the Southern Hemisphere and offers approximately 90 continuing legal courses annually with approximately 10,000 students registered to attend such courses. In addition, he also states that approximately 15,000 students have graduated from the Graduate Diploma in Legal Practice course since 1975. The exhibits provide examples of the applicant's advertising material, various information booklets, course handbooks and a sample graduation certificate. The applicant has also promoted its services by means of distribution of material to universities, contact with members of the legal profession and displays at career fairs and exhibitions.

In applying the provisions of s.41(6) in Blount (supra), Branson J commented, at 508, that:

The question to be considered under s 41(6) is whether the applicant has established that, because of the extent to which the applicant has used the trade mark before the filing date … it does distinguish the designated goods as being those of the applicant.
The above question is, in my view, entirely one of fact. It does not involve consideration of the question whether the word 'Oregon' is one 'which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods'.

…

Section 41 is concerned with capacity to distinguish. As s 41(6)(a) makes plain, a trade mark which is not to any extent inherently adapted to distinguish may nonetheless be treated under the Act as capable of distinguishing if, by reason of past use, it does in fact distinguish.

These words direct me to ignore the concept that other traders may require use of the words in the mark. I must simply consider whether the use made of the mark by the applicant (prior to the date of filing) is sufficient to enable me to believe that the trade mark does, in fact, distinguish the applicant's educational and training services from the similar services of other traders.

I note that in the evidence submitted, the applicant's mark is always used with a device. The form of this mark is as shown below.

The device is sometimes used alone, but the mark THE COLLEGE OF LAW does not appear, in the evidence, apart from the device. In addition, the words are used in a descriptive sense, as being the college where the education and training is conducted, within the written information contained in the brochures in the evidence. These factors tend to reduce the effectiveness of the evidence of use in providing a reputation for the words alone as operating as trade mark, and thus providing proof that the mark THE COLLEGE OF LAW does distinguish the services as being those of the applicant.

Although Ms Gourley had submitted that the applicant's mark did distinguish its services in the relevant market, no clear indication was made to isolate the elements that constituted that 'relevant market'. I do not believe that this relevant market, in this instance, could be considered only those who have enrolled or could enrol in the legal courses provided. A significantly high proportion of the entire general public has had, at some stage of their lives, a need to obtain legal advice or has the need to use professional representation in a legal matter. The applicant seeks registration of this trade mark through this Office on a national register. I conclude, therefore, that the relevant market for determining whether or not the mark does, in fact, distinguish the applicant's services must be the Australian public at large.

Given the highly descriptive nature of this mark, I believe that the amount of use shown is not sufficient to produce the level of recognition, at the date of filing, in the minds of the general Australian population that the mark does, in fact, distinguish the applicant's services in the manner that is required by the Act.

Figures provided in the evidence that was submitted show that, in the last 24 years, apart from 15,000 graduates for the applicant's Graduate Diploma in Legal Practice, a further 10,000 students per year have registered to attend continuing legal education courses. For a consideration under s.41(6), of course, only that part of the evidence prior to filing can be considered. The claim of 10,000 students per year sets the total student number at approximately 220,000 for the 22 years from 1975 to 1997.

From the evidence, I note comments such as, 'The College of Law is an undertaking of the Law Society of New South Wales', 'In order to qualify to practice law in New South Wales, an applicant must complete: … a program of vocational training approved by the Legal Practitioners Admission Board', 'The College of Law offers a Graduate Diploma in Legal Practice which satisfies requirements for admission to professional practice in New South Wales' and 'The College of Law established the Legal Technology Centre in June 1997 in response to the varied information technology training needs of the legal profession of New South Wales'.

This material indicates to me that the applicant's courses clearly have a major application to those who intend to practise in the State of New South Wales. Given that the population of the state was approximately 5.4 million in 1986 and 5.7 million in 1993, the figure of 220,000 is quite considerable in respect of that state only. If approximately one person in each 25 in the State of New South Wales has registered for courses at the College of Law, between 1975 and 1997, then the exposure of the mark to a much larger percentage of the population, such as families and friends of these enrolled students, cannot be ignored.

Although for the entire population of Australia I am not convinced that the mark had achieved the desired level of recognition, the situation in respect of the State of New South Wales provides a different scenario.

I do believe that the evidence submitted provides sufficient notoriety in the State of New South Wales alone to enable me to accept this application for a registration limited to that jurisdiction.

Conclusion

From the foregoing, I have found that the trade mark THE COLLEGE OF LAW is not to any extent inherently adapted to distinguish the applicant's services from similar services of other traders. I have also found that the evidence submitted is not sufficient to enable me to accept this application for registration, in terms of s.41(6) of the Act, in respect of the applicant's present claim for the use throughout Australia. However, as I believe that the evidence is sufficient to show that the mark does, in fact, distinguish the applicant's services from those of other traders throughout the State of New South Wales.

Under the present circumstances, subject to an appeal from this decision I intend to refuse this trade mark application. However, if the applicant advises me, in writing, within one month of the date at the foot of this decision that it is prepared to limit its claim for registration to the State of New South Wales, I am prepared to accept the application with the standard endorsements involving evidence and the geographical restriction.

Don Nancarrow

Acting Hearing Officer
25 May 1999.