The Custom Chef Pty Ltd

[2022] ATMO 182

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 2117941 and 2118009 (class 35) – ShopMyHouse; ShopMyHouse.com in the name of The Custom Chef Pty Ltd

Delegate:

M. Cooper

Representation:

Applicant: Peter Creighton-Selvay of counsel instructed by DLA Piper

Decision:

2022 ATMO 182

Trade Marks Act 1995 (Cth) – section 33 proceedings – grounds for rejection under s 41 – trade marks not sufficiently adapted to distinguish all services – no evidence of use or other circumstances –applications rejected.

Background

1. On 7 September 2020 The Custom Chef Pty Ltd (‘Applicant’) filed applications to register the trade marks detailed below under the Trade Marks Act 1995 (Cth) (‘the Act’).

Trade Mark Nos:	2117941	2118009
Trade Mark:	ShopMyHouse	ShopMyHouse.com (‘Trade Marks’)
Specification:	Class 35:  Retail store services featuring bakeware, cookware, flatware, glassware, housewares, kitchenware, tableware, baking and cooking gadgets, barbecues and barbecue accessories, baskets, bath linens, bathroom holders in the nature of toilet plunger holders, toilet paper holders and razor holders, beach chairs, bed linens, bins, bowls, brooms and mops, cards, cups, desk accessories, domestic cooking appliances, electric and household appliances, frying pans, gardening tools and accessories, gift items, home accessories, home decorative items, indoor and outdoor furniture, ironing boards, kitchen utensils, knives, forks and spoons, napkins, pet accessories, placemats, picnic accessories, plates, potholders, pots, rugs, saucers, serving trays, storage containers, tablecloths, towels, umbrellas, vases, wrapping papers, wine racks and general consumer merchandise; the bringing together, for the benefit of others, a variety of goods enabling customers to conveniently view and purchase those goods in the fields of housewares, kitchenware, tableware, cookware, gifts and general consumer merchandise; online retail store services featuring a wide variety of consumer goods of others; mail order and mail order catalog services featuring housewares, kitchenware, tableware, cookware, gifts and general consumer merchandise; wholesale outlet store services in the fields of housewares, kitchenware, tableware, cookware, gifts and general consumer merchandise; wholesale distributorships featuring housewares, kitchenware, tableware, cookware, gifts and general consumer merchandise; franchising, namely, consultation and assistance in business management, organization and promotion; advertising, marketing and promotion services and import-export agency services in the fields of housewares, kitchenware, tableware, cookware, gifts and general consumer merchandise (‘Services’).

1. The applications were examined and, in respect of trade mark 2117941, the examiner raised ss 41 and 44 grounds for rejection in adverse reports dated 10 December 2020, 8 September 2021 and 1 December 2021. In relation to trade mark 2118009, the examiner raised ss 41, 43 and 44 grounds for rejection in adverse reports dated 10 December 2020, 8 September 2021 and 2 December 2021. Except for the s 43 ground, the objections were the same for both trade marks, as were the Applicant’s responses.

2. In relation to the s 44 ground, the Applicant provided responses to the first adverse reports including a consent letter from the owner of the cited marks and this objection was withdrawn. The s 43 objection was also withdrawn in respect of trade mark 2118009 on the basis that the Applicant is the registered owner of the domain name ‘Shopmyhouse.com.’

3. In maintaining the s 41 objection for both marks, the examiner, in summary, referred to the research which ‘demonstrates that the ordinary signification of the phrase SHOP MY HOUSE as a whole is that it directly describes a service which is intrinsically interlinked with retail and advertising services (as claimed in the subject specification)’ and ‘demonstrates that the phrase as a whole is an established and commonplace term which is used in the marketplace’. The lack of spacing [in the Trade Marks] is ‘insufficient by itself to lend significant distinctive character to the sign as a whole’. The various websites/blogs were noted to ‘depict a number of unrelated traders using the words SHOP MY HOUSE (or similar) to describe a service they provide...where consumers are connected from published photos of products ...through to their direct purchase (retail). Other traders are therefore likely to legitimately need or desire to use the phrase SHOP MY HOUSE in connection with services similar to the applied for advertising and retail services’.

4. Following receipt of the third adverse examination report the Applicant requested to be heard.

5. I heard the matter as a delegate of the Registrar on 5 July 2022. Peter Creighton-Selvay of counsel appeared for the Applicant.

6. In making my decision I have had regard to counsel’s written and oral submissions and, as discussed at the hearing, the written record including the applications, the examiner’s research and reports.

Legislation

1. Section 33 of the Act requires that the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. That is, ‘a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists’.[1] The relevant date of assessment is the filing date (‘relevant date’).[2]

   [1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [146] (Sundberg J). As also confirmed by the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 146.

   [2] Apple Inc v Registrar of Trade Marks [2014] FCA 1304 [59]; (2014) 227 FCR 511 (Yates J).

2. I note that my task is not to review the examiner’s decisions but to consider the applications afresh.

3. In considering both applications, I note they designate identical Services. The only difference the Trade Marks is the suffix .com in mark 2118009. In this context I note the findings in Sports Warehouse Inc v Fry Consulting Pty Ltd in which Kenny J considered such an addition did not substantially affect the identity of the mark, being ‘merely indicia of a domain name’.[3] On this basis I do not consider that the suffix .com as attached to ‘ShopMyHouse’ in mark 2118009 is an addition which substantially affects the identity of that mark[4]. Consequently, in this context, my considerations below apply to both Trade Marks.

   [3] [2010] FCA 664; (2010) 186 FCR 519, [155]. See also Perram J in Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (201).

   [4] s7(1) of the Act

4. Section 41 of the Act relevantly provides as follows:

   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

1. According to the oft-cited statement of Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’), inherent adaptation 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.[5]

   [5] [1964] HCA 55; (1964) 111 CLR 511, 514.

2. The above passage was approved by the majority in the High Court decision of Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’)[6] describing the assessment as follows:

   In accordance with the principles established in Mark Foy’s and restated in Clark Equipment, Faulding and Burger King, determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.

   As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word ... is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[7]

   [6] [2014] HCA 48; (2014) 254 CLR 337 (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

   [7] Ibid [70]-[71].

Ordinary signification

1. In submissions, the Applicant contends the Trade Marks have no ordinary signification in relation to the Services. It is claimed that ‘ShopMyHouse” is invented, having no dictionary definition and, while made up of three common words, they are joined together and, as used, they are ungrammatical and do not convey clear meaning. Rather, it was submitted, the Trade Marks are allusive and metaphorical in respect of the Services, ‘a mere suggestion in fanciful language’ and ‘cannot be said to prevent others from describing their retailing services as relating to homeware or kitchenware’. If there is an ordinary meaning, the Applicant maintains it would be of retail services linked to the purchase of a house, i.e., unconnected to the Services, which are ‘retail services linked to the sale of kitchenware products’. Referring to the examiner’s internet research identifying overseas use of ‘Shop My House’, the Applicant submitted that these sites ‘do not represent traders using the mark in the ordinary course of trade of similar goods or services such as to found a s 41 objection’ and that ‘not one of the Websites is itself offering any goods or services’.

2. I accept the Applicant’s submissions insofar as they relate to ‘franchising, namely, consultation and assistance in business management, organization and promotion’. I am not satisfied that the Trade Marks bear any ordinary signification in relation to this element of the Services.  That is, ‘ShopMyHouse’ does not describe, indicate or call to mind such a service or some characteristic of such a service. Consequently, in my discussion below, any reference to ‘the Services’ is to be read as excluding it.

3. While the Trade Marks as a whole have no dictionary definition, they are made up of three ordinary English language words which, I consider, are readily comprehensible to any Australian trader or consumer concerned with the Services of advertising, marketing, sale or purchase of household goods. The lack of spacing does not detract from the overall impression of the marks[8] and verbally and aurally they are the same as if presented as three separate words. The manner of registration, with a capital letter at the start of each word, tends to emphasise this. While the marks can be represented in any form of lettering,[9] however represented, they would be readily comprehended as an invitation to consumers to shop for those goods/products one would expect to find in a house. The word ‘shop’ is commonly adopted in this manner by traders and advertisers. For example, the phrases ‘shop new arrivals’, ‘shop online’, ‘shop appliances’ are regularly used, and seen and understood by consumers, as an invitation or exhortation to use the services of the vendor to purchase particular goods. Even though the Trade Marks may be ungrammatical, as contended by the Applicant, the use of ‘shop’ in this way is consistent with the Macquarie Dictionary definition of it as a verb ‘to visit shops for purchasing or examining goods’. The Applicant’s characterisation of the ordinary signification as ‘shopping for houses’ would only seem open if the Trade Mark was ‘shophouses’. In any event ‘the existence of more than [one] possible meaning does not mean that a term is not capable of ordinary signification’.[10] Furthermore, having carefully considered the authorities relied on by the Applicant in this regard, they are of limited assistance because, in my view, the trade marks concerned[11] are far less direct in their reference to the associated goods/services than ‘shopmyhouse’ is for the Services.

   [8] See Gummow J’s determination in Carnival Cruise Lines Inc v Sitmar Cruises Ltd, [1994] FCA 936 [63], that there was no material distinction to be drawn between "FUN SHIP " and "FUNSHIP".

   [9] See Jenkins LJ in Re Morny Ltd’s Trade Mark (1951) 68 RPC 131.

   [10]Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, [107] (Middleton and Burley JJ) (‘Bendigo’).

   [11] For example, ‘Corner Hotel’ for live music services: SwancomPty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328; ‘La Famiglia’ for food products: Goodman Fielder Pte Ltd v Conga Foods Pty Ltd (2020) 158 IPR 9.

4. While the Applicant also relies on Mark Foy's Ltd v Davies Coop & Co Ltd (‘Tub Happy’) in maintaining that the Trade Marks are allusive, as Dixon CJ said in that case:

   The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.[12]

   [12] [1956] HCA 41; (1956) 95 CLR 190, 195 (‘Tub Happy’).

5. On ‘a practical evaluative judgment about the effects of the relevant mark in the real world^’[13] I am satisfied that there is a high probability that ordinary persons concerned with the Services[14] would understand ‘ShopMyHouse’ when applied to the Services as ‘describing, indicating or calling to mind’ the character of the Services as the advertising/wholesaling and/or retailing of household goods. While Williams J found in Tub Happy that ‘any reference that the words ‘Tub Happy’ have to the character or quality of articles of clothing is very remote’,[15] the Trade Marks are not an indirect or a ‘covert or skillful allusion’ to the Services but ‘carry a natural English meaning that is apt to refer to attributes of the Services’.[16]

   [13] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 [47] (French J).

   [14] Cantarella (n 5) [28].

   [15] Tub Happy (n 11) 201.

   [16] Bendigo (n 9) [118]

6. For the above reasons, I am satisfied that the Trade Mark has an ordinary signification to ‘anyone ordinarily purchasing, consuming or trading’[17] in the Services as describing or indicating the nature of the Services to be provided under the Trade Marks.

   [17] Cantarella (n 5) [28], [30], [70], [71].

Other traders

1. Consequently, I must also consider whether there is a likelihood that other traders may legitimately want to use the same or a similar trade mark in a manner that may infringe the Trade Marks. Evidence as to the actual activities of other traders prior to the relevant date may be taken into account in assessing what hypothetical other traders are likely to do.[18]

   [18] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 [102] (Kenny J).

2. The Applicant notes the examiner’s references to various websites which use the phrase ‘Shop My House’ for the advertising and sale of household goods and products and submits that they are irrelevant to my assessment, noting that ‘none of the websites relate to any trader offering any goods or services in Australia’ and the ordinary signification of the Trade Mark in another country is irrelevant. It is further contended that it is ‘highly unlikely’ any Australian has ever been exposed to or accessed the overseas sites as they are ‘low profile blogs operated by unknown individuals’. In addition, there is no evidence that any of them existed at the relevant date. It was further submitted that the use by these websites of hyperlinks does not involve retail services as they do not offer goods for sale but simply link to other traders’ websites. The websites/blogs were said to originate in the United States (‘US’), where the Trade Marks were registered without objection, and therefore also unrelated to my assessment.

3. There is insufficient evidence before me to make any findings regarding the significance or otherwise of the US registrations to my decision. On close examination of the research, I note that it shows several uses of the phrase ‘Shop My House’ sometimes with, and sometimes without, the spaces. I am satisfied that the several websites/blogs demonstrate that the phrase as a whole is an established and commonplace term which is used in the marketplace to refer to a popular and widely used form of advertising and marketing of retail/wholesale services for a variety of household products. Such services allow consumers to view household products and décor in a house and to purchase them either directly or by a link to the supplier. Contrary to the Applicant’s contentions, one of the retrievals is clearly from Australia, i.e. ‘ ‘shop my house in 2020|Bedroom décor, Home bedroom.’[19]and not all are from ‘low profile’ bloggers. There are, for example, several website entries for ‘Shopmyhouse’, a retail store in Ontario, Canada which states that ‘Shop My House is filled with unique treasures, beautiful house décor and a variety of accessory pieces that are sure to look good in your own place…’[20] The Facebook page for this Canadian shop, ‘Shopmyhouse – Home|Facebook’ displays the date 11 May 2018.[21] There also appear to be several #shopmyhouse hashtags on Instagram comprising photos and videos.[22]  While many entries do appear to be from the US, the geographic location of many is unclear. And while some might be regarded as ‘low profile blogs’, some are clearly commercial operations. For example, at https:\\thestripedhouse.com, the provider has an ‘advertising’ page which states ‘you have a product and want to boost your sales and I can help you reach your goal. I have 15,000 loyal vested followers who are waiting with bated breath to hear from you’.[23]

   [19] Examiner’s research generated 8 September 2021, page 31 of 44.

   [20] Ibid, page 30 of 44.

   [21] Ibid.

   [22] Ibid, page 4 of 44.

   [23] Ibid, page 37 of 44.

1. While the Applicant maintains these overseas sites are irrelevant to my assessment, I note Murphy J’s comment in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited in relation to the application to register the trade mark ‘Yellow’:

   At a minimum the evidence of use by overseas traders of the colour and word yellow in respect of directories is relevant because it goes to what hypothetical other traders in Australia are likely to do. In my view the contention that such evidence is irrelevant is quite unrealistic …[24]

   [24] [2014] FCA 373 [193], approved by Full Federal Court [2015] FCAFC 156 [145].

2. As the examiner’s research demonstrates, other consumers and traders, both locally and overseas, were (prior to the relevant date), and are already, using ‘ShopMyHouse’, to refer to the Services and indicates that the phrase has clearly entered the language in relation to services associated with the sale of homewares or, as the examiner noted, it shows ‘that the phrase as a whole is an established and commonplace term which is used in the marketplace’ for the Services. As such, I am satisfied that other Australian traders may legitimately want to use the phrase, or some phrase resembling it, for the ordinary signification it possesses in respect of the same Services.

3. Consequently, I am satisfied that Trade Marks are to some extent, but not sufficiently, inherently adapted to distinguish the Services from those of other persons (s 41(4)(a)) except for ‘franchising, namely, consultation and assistance in business management, organization and promotion’.

4. It follows that I must consider the ‘combined effect’ of the matters specified in s 41(4)(b) of the Act. The Applicant has made no specific submissions in this regard. Given the Trade Marks’ limited capacity to distinguish, combined with a lack of evidence of use or intended or any other circumstances indicating that they will distinguish the Services, I am satisfied on the balance of probabilities that the Trade Marks do not and will not be capable of distinguishing the Services from those of others (s 41(4)) except for ‘franchising, namely, consultation and assistance in business management, organization and promotion’.

Decision

1. Section 33 of the Act provides:

   Application 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.

   Note:        For this Act see section 6.

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

   Note:        For limitations see section 6.

   (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.

   Note:        For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:        For applicant see section 6.

2. On 28 September 2022 I informed the Applicant’s representative that it was my intention to reject the Trade Marks unless the Services were amended to the following:

   Class 35: Franchising, namely, consultation and assistance in business management, organization and promotion. (‘Amended Services’)

3. On 11 October 2022 the Applicant’s representative informed IP Australia that the Applicant refused the amendment. Given this, for the above reasons, I am satisfied there are grounds for rejecting the Trade Marks under s 41 of the Act.[25]

   [25] See Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 [232] (Yates J).

4. Accordingly, under s 33(3) of the Act, I reject trade mark applications 2117941 and 2118009.

Mary-Ann Cooper

Hearing Officer

Delegate of the Registrar of Trade Marks

13 October 2022.