The Hub Marketing Communications Pty Ltd v Hub Australia Pty Ltd
[2017] ATMO 37
•28 April 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Hub Marketing Communications Pty Ltd to registration of trade mark application 1620369 (35, 36, 41) - HUB - filed in the name of Hub Australia Pty Ltd.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Peter Viney of Vibe Legal by teleconference Applicant: Brian Goldberg of Premier IP Ventures by teleconference |
| Decision: | 2017 ATMO 37 Trade Marks Act 1995 Section 52 opposition to registration: sections 41, 44, and 60; section 41 – Trade Mark not adapted to distinguish the services of the Applicant. Registration refused |
Background
In this matter Hub Australia Pty Ltd (‘the Applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) for the registration of the trade mark which appears below:
Application No: 1620369
Priority Date: 1 May 2014
Services:Class 35: Arranging exhibitions for advertising purposes; Arranging exhibitions for business purposes; Arranging exhibitions for commercial purposes; Arranging exhibitions for trade purposes; Conducting exhibitions for advertising purposes; Conducting exhibitions for business purposes; Conducting exhibitions for commercial purposes; Conducting exhibitions for trade purposes; Association services being the promotion of the interests of members of the association; Association services being the provision of business support or advice; Bartering services (facilitating the trade exchange of goods and services); Business promotion services; Business referrals services; Charitable services, namely organising and conducting volunteer programmes and community service projects; Charitable services, namely the recruitment, organisation and deployment of volunteers; Collecting business information; Collecting information for business; Compilation of information into computer databases; Conducting of business research; Conducting of internal business communication surveys; Conducting of market research; Conducting of marketing studies; Consultancy relating to personnel management; Consultancy relating to personnel recruitment; Job placement services; Electronic advertising services; Office administration services (for others); Office functions; Organisation and management of customer loyalty programmes; Organisation and management of discount card loyalty schemes; Organisation of fashion shows for promotional purposes; Placing advertisements (for others); Placing of advertisements; Providing business information via a web site; Providing information, including online, about advertising, business management and administration and office functions; Recruitment advertising; Recruitment of personnel; Registered office services; Registry services (administration services being recording and maintaining lists and information for others); Collection of commercial information; Personnel management; Selection of personnel; Consultancy relating to the establishment and running of businesses; Business management for freelance service providers; Business administration consultancy; Business consultancy; Business consultancy relating to the administration of information technology; Business consultancy services relating to management of fund raising campaigns; Business consultancy services relating to marketing; Business consultancy services relating to the marketing of fund raising campaigns; Business consultancy services relating to the promotion of fund raising campaigns; Business consultancy services relating to the supply of quality management systems; Business consultancy to individuals; Business management and organization consultancy; Business management consultancy; Business management organisation consultancy; Business organization consultancy; Business planning consultancy; Business recruitment consultancy; Commercial management consultancy; Consultancy relating to advertising; Consultancy relating to business document management; Consultancy relating to business efficiency; Consultancy relating to business management; Consultancy relating to business organisation; Consultancy relating to business planning; Consultancy relating to business promotion; Consultancy relating to marketing; Consultancy relating to sales promotions; Consultancy relating to the management of personnel; Consultancy relating to the preparation of business statistics; Consultancy relating to the selection of personnel; Corporate management consultancy
Class 36: Leasing of buildings; Leasing of office space; Leasing of real estate; Property leasing (real estate property only); Property portfolio management; Rental of offices (real estate); Renting real estate; Letting of office accommodation; Letting of showrooms; Management of real estate
Class 41: Business educational services; Business training consultancy services; Business training services; Personal development courses; Personal development training; Computer based training; Computer training; Computer training advisory services; Computerised training; Mentoring (training); Education information; Education services; Management of education services; Management of educational events; Charitable services, namely academic mentoring; Mentoring (education and training); Charitable services, namely education and training; Event management services (organisation of educational, entertainment, sporting or cultural events); Providing information, including online, about education, training, entertainment, sporting and cultural activities; Providing online electronic publications (not downloadable); Providing online videos, not downloadable; Provision of education courses; Provision of education services via an online forum; Provision of educational courses; Provision of educational information; Provision of facilities for education; Provision of training courses; Provision of training facilities; Arranging of courses of instruction; Training; Vocational guidance (education or training advice); Vocational re-training; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging and conducting of conferences; Arranging of conventions; Conducting of conventions; Arranging of festivals; Organisation of festivals; Arranging of music performances; Arranging of music shows; Arranging of musical entertainment; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging technical instruction courses; Arranging the provision of recreation facilities; Arranging and conducting of workshops (training); Association services being the provision of training and education to members of the association; Arranging and conducting of lectures; Arranging group recreational activities; Organisation of recreational activities; Commercial training services; Consultancy services relating to education; Consultancy services relating to training; Educational consultancy services; Lifestyle counselling and consultancy (training); Sports consultancy; Training consultancy
(‘the Specified Services’)
Trade Mark: HUB
(‘the Trade Mark’)
Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied. Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.
The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 11 December 2014.
On 6 February 2015, The Hub Marketing Communications Pty Ltd filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 6 March 2015, by its Statement of Grounds and Particulars.
On 30 March 2015, the Applicant filed a Notice of Intention to Defend.
The filing of declarations in evidence followed the timetable set out below:
Evidence in Support
Nicolle Peta Jenkins, Managing Director of the Opponent, made on 13 July 2015 with attachments;
Evidence in Answer
Bradley Krauskopf, Director of Hub Australia Pty Ltd, made on 26 October 2015, with attachments; and
Evidence in Reply
Nicolle Peta Jenkins, made on 8 December 2015.
Both parties requested to be heard: at the hearing on 19 September 2016 the Opponent was represented by Peter Viney of Vibe Legal; the Applicant was represented by Brian Goldberg of Premier IP Ventures. The hearing was before a delegate of the Registrar of Trade Marks via videoconference. That delegate is unable to make a decision in the matter and it has been passed to me, a delegate of the Registrar of Trade Marks, for my decision. In reaching my decision I have, inter alia, considered the Statement of Grounds and Particulars, the evidence filed by the parties, and both the written and oral submissions made at the hearing.
Onus & Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[2].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Evidence
The evidence establishes that the Opponent has used a number of trade marks which consist of or contain the word ‘Hub’ since 2006 in relation to marketing, advertising and promotional services, brand consulting, corporate communications messages and strategies and the ilk. These trade marks include THE HUB, THE HUB MARKETING COMMUNICATIONS and that which appears below:
Although based in Western Australia, the evidence shows that the Opponent has provided its services under its trade marks to customers throughout Australia.
The Opponent has registered several of its trade marks but, the ground under which I will decided this matter does not involve any of the Opponent’s registrations.
The Applicant, to use the words of Mr Krauskopf, provides a:
… core service offered by the Applicant is the provision of co-working services, which includes providing office space, office administration services and other business support and education services to members.
And Mr Krauskopf further states:
The [Trade Mark] was chosen as it was not being used in Australia by any other co-working businesses to market similar services.
Section 41
This ground is put in the following way in the Statement of Grounds and Particulars:
An online dictionary definition shows
hub
noun: hub; plural noun: hubs
1. the central part of a wheel, rotating on or with the axle, and from which the spokes radiate.
2. the effective centre of an activity, region, or network.
HUB does not distinguish the applicant’s goods or services the word is too vague and not particular to the applicants’ services. While the applicant may be the centre of their own activity the same could be said for any business conducting those, or indeed, any activities. The word HUB does not describe any good or service in particular.
Section 41 of the Act provides:
41Trade 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).
In view of the tenor of the ground as put in the Statement of Grounds and Particulars, the evidence, and the submissions of the parties, a short explanation of the nature of section 41 may be appropriate. Section 41 looks to the inherent qualities of a trade mark and asks whether it is suitable for registration because it is not (actually or potentially[3]) a word which may be required in the ordinary course of trade by other traders in that particular trade to honestly and fairly describe their similar goods or services. Thus, in a hypothetical case, one might find that the word ‘wheelbarrow’ is not registrable under section 41 of the Act for the goods ‘wheelbarrows’ as it is required by other traders to use in respect of the wheelbarrows they make and/or sell. In addition, in relation to the goods ‘wheelbarrows’, one might reasonably expect that other traders would honestly need to use such descriptive words and expressions as ‘one-wheeled’, ‘two-wheeled’, ‘high-sided’, ‘green’, or ‘motorised’ to use in respect of their wheelbarrows which meet these descriptions. Further, other traders might honestly require to use laudatory epithets in relation to their wheelbarrows such as ‘superior’, ‘the best’, ‘improved’, and so on. The foregoing is not an exhaustive discussion but illustrates the principle involved which also extends to common surnames, geographical words, and some words and expressions which are for other reasons not inherently adapted to distinguish[4].
[3] See for example Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417; [1972-73] ALR 1361; (1973) 1A IPR 504; 47 ALJR 237 where the High Court found the trade mark WHOPPER to lack any inherent adaptation to distinguish based solely on its dictionary definition.
[4] See for example Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; (2006) 69 IPR 255 – the trade mark ‘Go On …’
In terms of subsections 41(3) and 41(4) the initial step is to consider the extent to which the Trade Mark is inherently adapted to distinguish the Specified Services from the similar services of other traders.
When considering a trade mark’s inherent adaptation to distinguish, the test to be applied is the familiar one oft quoted from Clark Equipment Co v Registrar of Trade Marks[5] where Kitto J stated:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend 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 connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[5] [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5]
It follows that an enquiry into the denotation of the word ‘hub’ in relation to the Specified Services, and in particular co-working services is appropriate. According to the Oxford English Dictionary the word ‘hub’ relevantly means:
3. transf. and fig. That which occupies a position analogous to the hub of a wheel; a central point of revolution, activity, life, interest, etc.
The Macquarie Dictionary gives the following
hub Pronunciation of hub /hʌb/ (say hub)
[…]
5. a central connection point in a computer or telecommunications network.
6. a centre within a region for a specified activity: a trading hub; a transport hub.
[compare hob1]
The Cambridge Dictionary provides:
hub noun [ C ] (CENTRAL PART)
the central or main part of something where there is most activity:
The City of London is the hub of the UK's financial world.
The computer department is at the hub of the company's operations.
And the MacMillan Dictionary offers:
the most important place where a particular activity takes place
a telecommunications hub and business centre
Bombay is the financial hub of India.
These definitions appear to have direct application to the Specified Services in that those services include (for example) the leasing or rental of office space which could readily form a ‘hub’; that is, a business centre where customers can rent or lease facilities such as a desk, computer, wireless connection, meeting rooms and kitchen facilities and so forth.
I am aware also that the word ‘hub’ appears to have passed into language in the sense described in the foregoing paragraph as it relates to co-working spaces. This usage is illustrated by the following articles which, for context, I will quote at length, firstly from The Guardian[6]:
When friends Susie Beere and Sophie Kelly decided to create a business selling women’s snowboarding fashion, neither of them had any business experience – or indeed fashion experience. And as new graduates, they lacked the capital to pour into a new business.
Luckily, their university, Loughborough, offered them space to rent in a new creative hub, The Studio, for £10 a year. The Studio, which was set up to help Loughborough graduates bring their creative business ideas to fruition, offers office space, computers, internet access and 3D printers. It also provides initial funding, which businesses can pay back through a proportion of royalties once they start making sales.
The Studio, which is inundated with applications, is careful to choose only those that show real promise. Megan Powell Vreeswijk, senior commercialisation fellow at the hub, says: “It is an incubation from idea through to launch so at the same time as helping them incubate you’re helping them prepare for their future. We want to create sustainable businesses, not one-hit wonders.”
Business hubs have mushroomed in the past five years, in part as a result of government measures to support small enterprises, such as Startup Britain, says Joanna Cox, head of business partnerships, research and innovation at Cranfield University.
By providing office space and facilities at a low rent, combined with networking opportunities and advice, business hubs offer a way of supporting new ventures through the tricky early stages. Some are privately run for a profit, some are managed by universities, and others are run by local authorities or charities. Financial investment in innovation hubs has come from a wide variety of public and private sources, including central government, multinational companies and property developers, says Cox.
There has been a recent rise in specialist hubs, aimed at startups in finance or IT or, as with The Studio, those with a focus on creativity.
But how useful are creative hubs? Cox says they can offer an excellent base for getting a startup off the ground, particularly if they offer an ecosystem of businesses. “The good ones tend to be a mixture of businesses developing new products and those providing services that might support them,” she says. “That allows some of those small businesses to act like a virtual larger company by being able to outsource a lot of their services like their HR, payroll, copywriting and web development to other businesses within that hub.”
[Stress added]
[6] >
I note that the above article was published after the relevant date; however, it discusses ‘hubs’ as being an established fact over the preceding five years. Further, it is illustrative of the descriptive aptness of the dictionary definitions, discussed above, in relation to the Specified Services as far as they encompass those services offered by the owners of co-working spaces.
The next article is by Beyond Bank[7]:
[7] Business Hubs
Beyond Bank on October 21, 2015 at 8:00 am
Collaboration with the community sector is a core principle at Beyond Bank Australia and we have been delighted with the reception we have received from a pilot program of “Business Hubs” across our national network.
The Business Hub idea is a simple one. We have boardroom space, meeting facilities, video and phone conferencing in most of our branches.
Many of our community partners don’t have these sorts of corporate workplaces, so why not share them?
This co-working space at branch and state office level has created a mindset of collaboration and shared value.
Not for profit groups can book our facilities at no cost for client meetings, national phone hook-ups, morning tea, AGMs, you name it.
Trials in our Port Lincoln branch on South Australia’s West coast have exceeded all expectations – read this fantastic note we received earlier this week from Haidee Jones, Business Development Manager at Strata Data SA…
[Stress added]
Business Insider in an article about co-working spaces provides[8]:
A collaborative workspace in Ultimo, Sydney, VibeWire's innovation lab is a place for young people to develop ideas.
Founded in 2007, it was one of the first co-working spaces in the country and hosts an eclectic a mix of creatives, entrepreneurs and tech types.
With up to 15 businesses based in the space at any given time it is one of the smaller hubs but is very focussed on social and community minded ideas.
[Stress added]
[8] >
Accordingly, in my consideration, the word ‘hub’ is one which would be honestly required by traders other than the Applicant to describe their similar co-working spaces and the services offered there. In my observations, these services frequently go well beyond what may be considered to be the ‘core’ services of the lease or rental of office space, kitchens, computers, Internet connections and so forth. The Business Insider article mentions co-working spaces offering ‘regular networking events and education sessions’, ‘a Nintendo 64 for Mario Cart racing and weekly show and tell sessions with beer and cider supplied’, ‘a ping pong table and a pretty impressive ball pit’, ‘regular tech and lean startup events as well as weekly Friday night drinks’, ‘a retro video game arcade table’, and ‘regular networking events and mentoring opportunities’.
Accordingly, in my consideration, the Trade Mark lack any inherent adaptation to distinguish in relation to those services falling within the Specified Services which are normally offered by co-working spaces. If the scope of the services that are offered by the owners of co-working spaces is to be gauged by the extent of the Specified Services (and the ‘intent to use the Trade Mark’ inherent in the Applicant’s filing of the application) it appears to logically follow that the Trade Mark lacks any inherent adaptation in relation to all of the Specified Services.
This analysis is, incidentally, confirmed by Mr Krauskopf in his declaration where he states:
I chose the name "Hub" to market and advertise the goods [sic] and services of the Applicant as I wanted the business to become known and identified as a hub for the business community.
[…]
Since this time the Applicant has developed a reputation for creating physical and online hubs for businesses to come together and co-work.
[Stress added]
In terms of subsection 41(3) I am now to consider whether (or not) the Applicant 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 Specified Services as being those of the Applicant.
In my view, the plain answer to this question is ‘no’. The Applicant’s Evidence in Answer shows that its predominant use of the Trade Mark was in the forms shown below (and others similar to those below):
(‘the Formative Trade Marks’)
Subsection 7(1) of the Act provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
Subsection 7(1) was discussed by Yates J in Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[9] where he said of the expression ‘additions or alterations’:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414.
[9] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].
The test is thus akin to that for substantial identity which was addressed by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[10]:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
[10] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
Having regard to the material that appears in conjunction with the word ‘hub’ in the Formative Trade Marks, they are not, in my view, material which does not affect the identity of the Trade Mark for the following reasons. The oblong blocks within which the word ‘hub’ appears are not simple frames as the word ‘hub’ is off-centre; further, the colour of the blocks is, relatively uniformly, the same colour – a blue green turquoise or an ultra-marine; finally, a place name appears in close proximately to the turquoise block which encloses the word ‘hub’. In other words, viewed as wholes, the Formative Trade Marks are such that (were their registrability in terms of section 41 to be considered) the principle in Diamond T Motor Car Co’s Appn[11] might be applied. In that case it was observed by Lawrence J of the Diamond T (Logo) trade mark below the quote that:
In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves.
[11] (1921) 38 RPC 373.
As the Formative Trade Marks appear to be more capable of registration as trade marks than does the Trade Mark, the additions or alterations present within them must be such that they affect the identity of the Trade Mark.
Accordingly, in my consideration, the use of the Formative Trade Marks is not a use of the Trade Mark and could not contribute to its acquisition of distinctiveness.
However, I have doubts that any amount of use would render the Trade Mark distinctive in relation to the Specified Services. In Mount Everest Mineral Water Ltd[12] I 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’)[13], 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.
[12] [2012] ATMO 65 at [16].
[13] See also Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; [2006] 154 FCR 165; (2006) 69 IPR 255 (‘Go On ...’); Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘Persian Fetta’); Sports Break Travel Pty Ltd v P & O Holidays Ltd [2000] FCA 924; (2000) 50 IPR 51 (‘Schoolies’); Larry John Powell v Glow Zone Products Pty Ltd [1996] FCA 1021 (‘Caps the Game’).
As I have observed, above, the intention to use a trade mark is implicit within an application for registration: Aston v Harlee Manufacturing Co[14]. The Applicant has thus signaled its intention to use the Trade Mark in relation to the entirety of the Specified Services and has via the declaration of Mr Krauskopf stated:
The core service offered by the Applicant is the provision of co-working services, which includes providing office space, office administration services and other business support and education services to members.
[14] [1960] HCA 47; (1963) 103 CLR 391 at 401.
It must logically follow that all of the Specified Services are regarded by the Applicant as being ancillary to its co-working services. Similar grounds for rejection must therefore exist to the entirety of the Specified Services.
Accordingly, the Trade Mark is taken to be not capable of distinguishing the Specified Services and the application for the registration of the Trade Mark must be rejected.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, 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 refuse to register application 1620369.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
28 April 2017
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