The Commonwealth of Australia as Represented by the Department of Defence (Defence Force Recruiting Branch)

[2023] ATMO 36

TRADE MARKS ACT 1995

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

Re:Trade mark application 2142548 (35) – DEFENCE JOBS – in the name of the Commonwealth of Australia as represented by the Department of Defence (Defence Force Recruiting Branch)

Delegate:

Nicholas Smith

Representation:

Applicant: Sonia Stewart of Counsel instructed by Brett Doyle of Clayton Utz

Decision:

2023 ATMO 36

Trade Marks Act 1995 (Cth) – Request to be heard under section 33(4) of the Trade Marks Act 1995 - s 41 considered – trade mark is not to any extent inherently adapted to distinguish the designated services – evidence of use insufficient – trade mark application rejected

Background

1. On 10 December 2020, The Commonwealth of Australia as represented by the Department of Defence (Defence Force Recruiting Branch) (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995. 

Application Number:	2142548
Filing Date[1]:	10 December 2020
Services:	Class 35: personnel selection incorporating physical testing; compilation of information and maintaining computer databases of applicants and potential applicants for employment; recruitment of candidates for education and training courses (‘Applicant’s Services’)
Trade Mark:	DEFENCE JOBS	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. The application was examined as required under s 31. On 3 March 2021, IP Australia issued a first adverse examination report, identifying a ground for rejection pursuant to s 41 (‘First Report’).  The examiner stated (paraphrased) that the Trade Mark indicates that the applicant provides services related to jobs or employment in the defence force or industry. This has a clear ordinary signification in relation to the personnel, database and recruitment services claimed.  Other traders should be able to use DEFENCE JOBS or something nearly resembling this in connection with goods and services similar to the Applicant’s Services.

4. Following review of evidence submitted by the Applicant on 20 April 2021, IP Australia issued a second adverse examination report, maintaining the ground for rejection pursuant to s 41 (‘Second Report’).  The examiner noted concerns with the evidence filed including whether it showed use of the Trade Mark as a trade mark. 

5. On 21 December 2021, the Applicant filed a Response to the Second Report, including a Statutory Declaration of Aaron Tyndall, Director, Business & Contract Management, Defence Force Recruiting with Exhibit AT-1, made on 17 December 2021 (‘Tyndall declaration’). On 10 February 2022 IP Australia issued a third adverse examination report, maintaining the ground for rejection pursuant to s 41 of the Act (‘Third Report’).  The examiner noted that while the evidence of use was impressive, it did not establish that the Applicant had consistently used the mark in such a way that an ordinary consumer would perceive the Trade Mark as a badge of origin.

6. On 26 April 2022, the Applicant filed a Response to the Third Report, including written submissions, with further written submissions being filed on 16 August 2022. Following further discussions with the Deputy Registrar of Trade Marks, on 11 November 2022, the Applicant requested to be heard by the Registrar of Trade Marks under s 33.

7.  As a delegate of the Registrar of Trade Marks I heard this matter on 31 January 2023.  Sonia Stewart of Counsel, representing the Applicant, made oral submissions after having earlier provided me with an outline of written submissions in accordance with the pre-hearing directions I had given. 

8.     Much of the written and oral submissions concerned the identification of errors made by the examiners in the First to Third Reports above and by a Deputy Registrar of Trade Marks.  As noted in MHFC Holdings Pty Ltd (‘MHFC’)[2]  as well as other decisions of the Registrar (Teraglow Pty Ltd[3] and TOM Organic Pty Ltd[4]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. As noted in MHFC, any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. It is not necessary for a party to identify an error in the examiner’s approach nor is it particularly relevant for my consideration. Rather what an applicant must do is address me on the ground for rejection under s 41 of the Act identified by the examiner, which I discuss further below.

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

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

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

9. Finally, notwithstanding that the Applicant had provided written submissions prior to the oral hearing as directed by me, and provided extensive oral submissions on 31 January 2023, the Applicant chose to file additional unsolicited written submissions on 5 February 2023. These written submissions were supplemented with over 550 pages of additional material including (for completeness) a list of every mark accepted under the provision of s 41(3) as currently drafted and under s 41(6) prior to the Raising the Bar amendments. While I have accepted and had regard to this additional material in considering the application, I note that the obligation provided on this office to provide a party with an opportunity to be heard does not extend to allowing a party to file unsolicited and extensive further submissions beyond the oral hearing date. This is not a case where extensive additional issues were raised at the oral hearing, necessitating the preparation of additional submissions (let alone 550 pages of additional material). A party seeking a hearing should be capable of confining its argument to a single set of written submissions and oral submissions.

Legislative framework

10. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. Section 17 of the Act defines a trade mark as:

What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

11.     The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[5] Regarding the present application, the only ground for rejection identified is under s 41 of the Act.

[5] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

12. Section 41 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).

13.     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]. [6]

[6] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

14. The Applicant concedes in its submissions that the Trade Mark lacks inherent distinctiveness but submits that there is a possibility that the Trade Mark is to some extent inherently adapted to distinguish the Applicant’s Services (that is, s 41(4) applies). It submits that the Trade Mark consists of two words with an element of an unusual syntax, not being ‘jobs in defence’ or ‘jobs for (the Department of) Defence’ and that this inversion of words provides the scintilla of distinctiveness necessary for s 41(4) to apply. It provides examples of similar marks registered by IP Australia containing a descriptive word and ‘jobs’ and submits that the Trade Mark should be categorised as to some extent inherently adapted to distinguish given the desire for consistency in public administration.

15. I do not accept the Applicant’s submissions on this point and consider that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services (that is, s 41(3) applies). The ordinary signification of ‘defence jobs’ are jobs in the defence industry and the Applicant seeks to register the Trade Mark for employment related services. It is entirely foreseeable that other traders wishing to offer the Applicant’s Services in connection with the defence industry might legitimately need to use the Trade Mark for its ordinary meaning.

16.     Furthermore, while I note that the Applicant has identified examples where this office has registered marks that consist of ‘descriptive term + jobs’, such examples can be distinguished, and I am not aware of all of the circumstances surrounding their acceptance or registration.

17.     The Applicant also submits, by reference to Estee Lauder Cosmetics Limited[7] and dicta from Ciba-Geigy Australia Ltd v Eli Lilly & Co[8], that registration as a trade mark would not impede any other entity from using the Trade Mark descriptively.  This is a misreading of the test set out in Clark Equipment Co v Registrar of Trade Marks.[9]In that case Kitto J at 513 sets out the criteria for deciding whether a trade mark is inherently adapted to distinguish:

… it is to insist that the question whether a mark is adapted to distinguish 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.

It is important to note that in that same decision Kitto J said the following at 517:

…it is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as ‘made in Michigan’ or in some other ways indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business. (emphasis added)

[7] [2000] ATMO 46 (Deputy Registrar Hardie).

[8] (1983) 2 IPR 353, 362 (Senior Assistant Registrar Hanlon)

[9] (1964) 111 CLR 511.

18.     This language makes clear that what must be contemplated in assessing the inherent adaptation of a sign is any use a trader is likely to fairly desire to make of it, be it as a trade mark or to describe their goods and services.  Indeed, were the test to be limited to use as a trade mark then the test of inherent adaption to distinguish would have no meaning; one could register CAR for cars and argue, as the Applicant apparently seeks to do, that such registration as a trade mark should be permitted as no other trader would desire to make use of it as a trade mark, but only to describe their goods and services, such use not being an infringement of their trade mark.

19.     As the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services, the Trade Mark must be rejected unless the evidence before me establishes that the Applicant has used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Applicant’s Services as being those of the Applicant.  To establish that a sign which is not to any extent inherently adapted to distinguish does in fact distinguish typically requires evidence of extensive widespread use and exposure to the Australian public of that Trade Mark over a long period of time and this use must have occurred before the filing date. 

20.     Use as a trade mark is:

[U]se of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[10]

[10] Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19].

21. The Applicant gives evidence in the Tyndall declaration and one additional page annexed to the written submissions that I have had regard to pursuant to reg 21.19 of the Regulations, that it has used the Trade Mark for 20 years. In particular the Trade Mark had been used on the Applicant’s website at on social media, external marketing and various recruiting events. Notably the Applicant gives evidence that between 20,000 and 40,000 candidates are processed annually for the Australian Navy, Army and Air Force and the Applicant’s website attracts 400,000 visitors per month.

22.     However as the Delegate in Mount Everest Mineral Water Ltd observed:

It is convenient first to dispose of a myth: that is, given sufficient use, any sign might qualify as a trade mark and be registrable under the provisions of subsection 41(6).  This is not true as is stated in Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 (‘Go On ..’); implied in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘PERSIAN FETTA’); and discussed in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (“TREAT’), where Jacob J said:

There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords.

A moment’s reflection reveals that a trader’s repeated use of an inherently unadapted sign for the sake only of its ordinary meaning serves solely to reinforce its ordinary meaning in the eyes of the public.  The word ‘soap’, used on ‘soaps’, is only descriptive and when used solely to describe the nature of the goods can never change its meaning.  Such a sign is incapable of taking on an additional meaning as indicating only the goods of one trader.  But that is not to state that a sign which lacks any inherent adaption to distinguish cannot take on another meaning as a trade mark and denote the goods or services of a trader.  The acquisition of this other meaning depends entirely on a number of factors including:

·     whether the sign is, effectively, the only ‘normal’ way to describe or identify the goods or services in question such that other traders are likely to require in good faith to want or need to use it, and,

·     whether the sign is the only, or the most appropriate, sign to use to denote the nature or origin of the goods.

·     The way the sign has been used by the owner;

·     whether the sign is used by other traders for the sake of its ordinary meaning;

·     how the particular market has been educated concerning that use; and,

·     how the market perceives that sign in denoting the goods in respect of which it is used: see Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241; (‘OREGON’) Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525; (2002) 56 IPR 452; [2003] AIPC 91-841 (‘Terracotta Colour’).[11]

[11] 2012 ATMO 65, [16]-[17].

23.     In Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks, Yates J summarized the issue in these terms (in respect of s 41(6) of s 41 as it stood prior to the Raising the Bar legislation, which is equivalent to the current s 41(3)):

Section 41(6) recognises that a sign may be descriptive but still distinctive. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297, Middleton J observed (at [60]) that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive. His Honour quoted the following observations of Lockhart J in Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 335-336:

The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re application of H N Brock & Co Ltd, for a trade mark (“Osowoolo”)and trade marks (“Orlwoola”) (1909) 26 RPC 683, 850, 854 (the Orlwoola case) and Re application of Joseph Crosfield & Sons Ltdto register a trade mark (“Perfection”) (1909) 26 RPC 837 (the Perfection case).

If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.

A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (supra) (at 857-858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.

Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the [identity] of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, par 25.8.[12]

[12] [2015] FCA 756; (2015) 114 IPR 81, [128].

24.     Most recently, in Primary Health Care Limited v Commonwealth of Australia the Full Federal Court made the following comments:

An essential characteristic of a trade mark is that it is used to distinguish the goods or services of a trader from the goods or services of other traders: s 17 of the TMA; E & J Gallo Winery v Lion Nathan Pty Ltd (2010) 241 CLR 144 at [42]. A trade mark may in fact distinguish goods and services, or it may not. If a trade mark is not capable of distinguishing designated goods or services, then it may be used but cannot be registered. If it is not registered, the owner does not acquire the monopoly on the use of the trade mark conferred under s 20 of the TMA.[13] 

…

As Yates J observed in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 at [34], mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. Whether the appellant used the word mark to distinguish the Services, and the extent to which it achieved distinctiveness, involved an evaluative judgment. The primary judge found that the appellant had used the word mark to distinguish its operation of its medical centres, but had not used the mark to distinguish the Services.[14] 

[13] [2017] FCAFC 174, [219].

[14] Ibid [373].

25. In summary when evaluating the evidence of the Applicant for the purposes of s 41(3)(b), I must consider whether it establishes that the Trade Mark has a new and secondary meaning different from its primary descriptive one and thus, at the filing date, had ceased to be purely descriptive and acquired secondary meaning. Another way to look at it is whether consumers regard the Trade Mark alone as a badge of trade origin in the sense that they would rely upon that Trade Mark alone as an indication of trade origin for the Applicant’s Services. In particular, I must look at:

• the way the Trade Mark has been used by the Applicant;
• how the particular market has been educated concerning that use; and
• how the market perceives the Trade Mark in denoting the services in respect of which it is used.

26.     The Applicant’s written and oral submissions failed to address points 2 and 3 above and instead focus in great detail on the supposed errors in the examiner’s First to Third Reports and in an email from a Deputy Registrar of Trade Marks, including in relation to the assessment of the evidence of use of the Trade Mark by the Applicant.  While I accept the Applicant’s submissions that reference to inherent distinctiveness and the Cantarella test is not appropriate when considering the factual question of whether a mark has acquired distinctiveness sufficient to permit registration under s 41(3), as noted in paragraph 8 above, this is a fresh consideration of whether the s 41 ground for rejection should apply and a finding of error is not necessary. Furthermore, the submissions set out a list of other marks that I agree are of a similar level of descriptiveness as the Trade Mark but are not actually the Trade Mark and thus do not assist in my consideration of whether the use of the Trade Mark is sufficient for it to have acquired distinctiveness.

27. The market for the Applicant’s Services is a very broad one and would encompass the adult population of Australia, or at least the adult population eligible for employment. The Applicant provides considerable evidence of its use of the Trade Mark and the fact that the Applicant’s website at attracts 400,000 visitors per month. The evidence of the number of visits to the Applicant’s social media pages and YouTube site is also impressive. Much of the Applicant’s evidence consists of documents bearing the Trade Mark alongside graphic devices or with additional elements. Whether or not this use was use of the Trade Mark by the Applicant was the subject of some discussion between the Applicant and a Deputy Registrar of Trade Marks, as was the question of whether the Trade Mark had been used descriptively or as a Trade Mark but the matter can be disposed of simply. Rather than analysing each item of the Applicant’s evidence I have, for the purposes of this decision, accepted the Applicant’s submissions that each item of evidence amounts to use of a trade mark. Even then, for the reasons set out below, find that the evidence is insufficient for the purposes of s 41(3).

28. The Applicant provides no direct evidence of how the market for the Applicant’s Services has been educated concerning the use of the Trade Mark or that the market for the Applicant’s Services would see the Trade Mark and identify it as connoting the services offered by the Applicant instead of employment services relating to jobs in the defence industry. To put it another way; there is only evidence of use by the Applicant; there is no evidence of reference to the Trade Mark by third parties in a manner that would indicate to me that the market has been educated and recognises the term DEFENCE JOBS as connoting the Applicant’s Services rather than for its descriptive meaning. While such evidence is not formally required for me to find distinctiveness under s41(3), its absence places the Applicant in considerable difficulty.

29.     As noted in the discussion in British Sugar Plc v James Robertson & Sons Ltd (‘British Sugar’)[15]  referred to in paragraph 22 above, there are marks for which no amount of use could possibly result in the term becoming distinctive.[16]  The example provided in that case was SOAP (for soap).  In the present case a trade mark such as DEFENCE JOBS for what are employment services while perhaps not unregistrable regardless of the amount of use, comes close to that standard and would require a very considerable amount of evidence that the Trade Mark has, in the market, established a new and secondary meaning different from its descriptive meaning.     

[15] [1996] RPC 281.

[16] The Applicant’s submits, in reliance on the dicta in paragraph 60, Oregon, that a trade mark that is 100% distinctive in fact should be able to achieve registration.  To the extent that this contracts the principle stated in British Sugar, this is incorrect as the statement in British Sugar regarding the registrability of SOAP, remains an accepted principle under Australian law, see Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235, [176] (Burley J) and Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328, [140] (O’Brien J).

30. The Applicant has provided the Applicant’s Services in relation to the Trade Mark for 20 years and has a significant exposure to the Australian population, processing a large number of applicants for jobs in the defence industry (in this case with the Australian Defence Force). However, given the highly descriptive nature of the Trade Mark, the size of the market and the lack of evidence of consumer appreciation of the Trade Mark in that market, I am not satisfied that at the filing date, the consumers in the market for the Applicant’s Services regarded the Trade Mark alone as a badge of origin separate from its descriptive nature; i.e. that the mark uniquely identifies the employment services provided by the Applicant over all others. In my evaluative judgement, the evidence before me is insufficient to persuade me that the descriptive trade mark DEFENCE JOBS had achieved distinctiveness as a matter of fact at the relevant date and as such the application to register the Trade Mark must be rejected under s 41 of the Act.

Decision

31. Section 33 of the Act relevantly provides:

33Application accepted or rejected

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

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

(2)The Registrar may accept the application subject to conditions or limitations.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

32. As I am satisfied that there is a ground for rejection under s 41(3) of the Act in relation to the Trade Mark, I reject the application to register the Trade Mark.

Nicholas Smith

Hearing Officer

Delegate of the Registrar of Trade Marks

15 March 2023