The University of Sydney v the University of Wollongong

[2016] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by The University of Sydney to registration of Australian trade mark application 1487040 (16, 35, 41, 42) – Sydney Business School – in the name of University of Wollongong

Delegate:	Hearing Officer: Debrett Lyons
Representation:	Opponent:  Michael Hall SC, instructed by Wood & King, Mallesons. Applicant:    Julia Baird SC, instructed by Bird & Bird
Decision:	2016 ATMO 17 s 52 opposition: Grounds under ss 41, 42, 43 and 60 pressed – s 41 established – trade mark has no inherent capacity to distinguish – evidence of use insufficient to apply s 41(6) - opposition successful.

Background

1. In this matter University of Wollongong (“the Applicant” or “ the UOW”) has applied under the Trade Marks Act 1995 (“the Act”) to register the trade mark detailed below:

   Application No:         1487040
   Priority Date:             23 April 2012

   Goods / Services:       Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter including newspapers, magazines, periodicals, journals, pamphlets, books; photographs; promotional displays being banners of paper, posters and flags of paper; stationery; instructional and teaching materials; teaching manuals; teaching materials for education; educational materials (other than apparatus) for use in teaching.

   Class 35: Advertising and promotional services, including the advertising of educational and training courses and research services; business administration, consultancy and management services; business research; compilation and information; data analysis.

   Class 41: Academies (education); academy education services; adult education; advisory services relating to education and training; arranging of exhibitions for educational and training purposes; arranging and conducting of workshops (training); conducting of educational conferences, courses; conducting of exhibitions for educational and training purposes; conducting training seminars and workshops; consultancy services relating to education and training; design of educational courses, examinations and qualifications; dissemination of educational material; education and training information; education and training services; educational advisory, assessment, examination, instruction and research services; educational institute services; educational seminars; health education; information services relating to education; international student exchange programmes; library services; management of education services and events; mentoring (education and training); organisation of training courses; practical training (demonstration); providing facilities for educational purposes; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of educational courses; provision of facilities for education; provision of training; provision of training facilities; provision of education services via an online forum; publication of educational texts and materials; setting of educational standards; sports education and training services; training; vocational guidance (education or training advice); vocational education and training services; university education services.

   Class 42: Advisory services relating to research; computer and software programming services; laboratory research; laboratory services (scientific research or analysis); management of scientific research projects; medical research including scientific research for medical purposes; preparation of reports and information relating to scientific and technical research; providing information, including online, about industrial analysis and research services; research and development (for others); research in all fields of science and industry, including biology, biotechnology, design, engineering, medicine, safety and technology; research services; research, engineering and technical consultancy for industry; scientific, technical, engineering, technical data and computer analysis services; social science research services.

   (collectively, “the Specification”).

   Trade Mark:               Sydney Business School

   (“the Trade Mark”)

2. The application was examined as mandated by section 31 of the Act. After correspondence with the Examiner, the application was accepted under the provisions of section 41(6) and on 20 December 2012 it was advertised for possible registration in the Australian Official Journal of Trade Marks.

3. By Notice of Opposition filed on 20 March 2013, The University of Sydney (“the Opponent” or “the UOS”) opposed the registration of the Trade Mark.

4. As a delegate of the Registrar of Trade Marks I heard this matter in Sydney on 18 June 2015.  Michael Hall of Counsel, instructed by King & Wood, Mallesons, represented the Opponent.  Julia Baird SC, instructed by Bird & Bird, represented the Applicant.

   Grounds of Opposition

5. The Notice list a number of grounds corresponding to various provisions of the Act but at the hearing and in its written submissions the Opponent pursued only those grounds based on sections 41, 42, 43 and 60 of the Act. It did not press the other grounds set out in the Notice and I treat those grounds as having been abandoned.

   Evidence

6. The Opponent’s evidence in support of its opposition comprises the following statutory declarations:

   ·Tyrone Carlin made 5 December 2013 and Exhibits TC1 to TC51;

   ·Professor Stephen Garton made 3 December 2013 and Exhibits SG1 to SG58;

   ·Peter Mason AM made 13 December 2013 and Exhibit PM1;

   ·Robert Lawrence made 16 December 2013 and Exhibits RL1 to RL3;

   ·John Michael Grill made 17 December 2013; and

   ·Paul McClintock AO made 20 December 2013.

7. The Applicant relies upon evidence in answer consisting of the following statutory declarations, some of which predate the evidence in support and are copies of the originals relied upon by the Applicant to secure acceptance:

   ·Susan Mathews made 9 October 2012 and Exhibits SGM1 to SGM14;

   ·Brendan Lyon made 2 November 2012;

   ·Concetta Fierravanti-Wells made 19 November 2012;

   ·Geoffrey Soutar made 26 November 2012;

   ·Professor the Hon Stephen Martin made 10 December 2012;

   ·Angela Taylor made 23 June 2014 and Exhibits AT1 to AT12;

   ·John Glynn made 24 June 2014 and Exhibits JJG1 to JJG23; and

   ·Leo Kerema made 24 June 2014 and Exhibits LK1 to LK 2.

8. The Opponent also relies upon evidence in reply consisting of the following statutory declarations:

   ·Professor Gregory Whitwell dated 23 September 2014;

   ·Melissa Anne Miller made 2 October 2014 and Exhibits MAM1 to MAM9;

   ·Jordan Leonard Sharpe made 2 October 2014 and Exhibit JLS1; and

   ·Robert Lawrence made 3 October 2014.

   Outline of the dispute

9. For the purposes of the discussion which follows, the uncontested background facts are:

   oThe UOS is Australia’s oldest university having been established in 1850 by legislative enactment.

   oThe UOW was established in 1975.[1]

   oIn 1997 the UOW began operation of a graduate business school first under the auspices of its Faculty of Commerce and, as discussed in more detail below, from 1999 used the name “Sydney Business School” in connection therewith.

   oIn 2011 the UOS renamed its Faculty of Economics and Business as “The University of Sydney Business School” and on 16 May 2013 applied for registration of that name as a trade mark.  I note that application has been accepted for registration and is currently being opposed by the Applicant.

   oBefore these opposition proceedings commenced concern was expressed by the UOS that the UOW’s use of the name “Sydney Business School” could amount to misleading conduct.  The UOW replied suggesting that the only cause of confusion was the UOS’s later adoption of a similar name.

   oIn large part the evidence and argument in these opposition proceedings is given over to that question of possible confusion.

   [1] Up to 1958 the University of New South Wales was known as the New South Wales University of Technology.  In 1951 New South Wales University of Technology established a campus in Wollongong to teach diploma courses. Between 1962 and 1975 the then University of New South Wales constituted that campus as Wollongong University College. 

   Discussion

10. Notwithstanding the broader context to the dispute, the Applicant is in difficulty with its evidence that the Trade Mark is distinctive of the goods and services of the Specification. For reasons which emerge shortly it has not been necessary for me to consider questions of confusion since I am able to decide the opposition under section 41.

    Section 41

11. Given the 23 April 2012 filing date of the application, the parties agree that it is section 41 of the Act as it stood before the amendments introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012[2] which regulates proceedings. That iteration of section 41 provided:

    [2] which in large part and for the purposes of s41 took effect from 15 April 2013.

    Trade mark not distinguishing applicant’s goods or services

    (1)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:       For applicantand predecessor in titlesee section 6.

    Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

    (2)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

    Note:          For goods of a personand services of a personsee section 6.

    (3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

    (4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

    (5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

    (a)  the Registrar is to consider whether, because of the combined effect of the following:

    (i)  the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

    (ii)  the use, or intended use, of the trade mark by the applicant;

    (iii)  any other circumstances;

    the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

    (b)  if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

    (c)  if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

    Note 1:       For goods of a personand services of a personsee section 6.

    Note 2:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

    (6)  If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

    (a)  if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

    (b)  in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

    Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

    (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

    (b)  the time of production of goods or of the rendering of services.

    Note 2:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

12. The operation of section 41 as it stood in that form was considered by Justice Branson in Blount Inc v Registrar of Trade Marks,[3] who wrote:

    [3] [1998] 40 IPR 498 at 504.

    Subsections (3) - (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the registrar to conclude:

    (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

    (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

    (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

    The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

    If the registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

    If the registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar must reject the application pursuant to s 41(2).

    If the registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s 41(5) are brought into operation. If the registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the registrar must reject the application s 41(2).

13. Accordingly, the first step is that I take account of the extent to which the Trade Mark is inherently adapted to distinguish the goods and services of the Specification from the goods or services of other persons.[4]

    [4] Which I consider useful notwithstanding the opposed application bears an endorsement pursuant to s 41(6) of the Act and although there has been no submission from the Applicant that the Trade Mark is eligible for registration under s 41(3).

14. The notion of inherent adaptability is concerned only with the nature of the Trade Mark itself.  It is not something that can be acquired and is not affected by use.[5]  In Clark Equipment Co. v. Registrar of Trade Marks[6] Kitto J stated that:

    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] See, for example, Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424; Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 at [11].

    [6] [1964] HCA 55; (1964) 111 CLR 511 at [5].

1. A later (Full) High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[7](‘Cantarella’) highlighted the following part of Kitto J’s test:

   …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…

   [7] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Crennan and Kiefel JJ.

2. The Opponent’s submissions in this regard are that:

   The word ‘Sydney’ in the mark applied for cannot serve to distinguish the Applicant’s goods and services.  The Full Court of the Federal Court in MID Sydney Pty Ltd v Aust Tourism Co Ltd [1998] 42 IPR 561 described the names of a town, a suburb or a municipality as “part of the common heritage” and therefore as incapable of distinguishing the goods or services of a particular trader from those of others. In so doing they were summarising a long history of trade mark decisions in relation to geographical descriptors. Among the best known is Clark Equipment Co v Registrar of Trade Marks … in which Kitto J concluded that MICHIGAN was wholly incapable of distinguishing.  His Honour emphasised that the exclusion from registerability of simple geographic names was not merely so that another trader would be able to say that their goods were made in or originated from the particular place.  It was to ensure that all traders were able to make whatever use of the geographic name they wished without restriction imposed by the existence of a trade mark registration.  See also Oxford University v Registrar (1990) 24 FCR 1.

   Equally unregisterable are marks which have a direct reference to the nature of the goods or services provided.  “Business School” is a central example of such a mark.  To paraphrase Wilcox J’s statement in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 588, “all business school operators may be expected to wish to describe their product as ‘business school’; so those words cannot be regarded as inherently adapted to distinguishing the products of one of them.”

   It is of course the case that a distinctive trade mark can be formed by joining together non-distinctive elements.  But to achieve that the mark as a whole must have some character of identifying a particular trade source of goods or services, and go beyond the inherent character of the words as merely describing what is provided or where it is provided from.  The question is whether the whole phrase continues to convey the nature (and location) of the Applicant’s services.

   Hearing Officer D. Nancarrow summarised the correct approach to such a collation of non-distinctive elements in his decision in Re Application by College of Law (2000) 47 IPR 404 at 409:

   “The words ‘The College of Law’ are all well-known and produce a clear meaning, in combination, as denoting services of an educational or training body in providing legal courses.  The present mark has no device elements and it has no ‘get-up’ by way of stylisation of lettering. I am of the opinion that the mark THE COLLEGE OF LAW is entirely descriptive of the applicant’s services and lacks any inherent adaptation to distinguish those services from the similar services of other traders.”

   With the substitution of “Sydney Business School”, for “The College of Law”, and “business courses” for “legal courses”, that passage could apply directly to the current dispute.

3. The Applicant submits that:

   The Mark is the whole phrase ‘SYDNEY BUSINESS SCHOOL’.  Throughout its submissions the Opponent misstates the matter:  the Mark is not the word ‘SYDNEY’, nor either or both of the words ‘BUSINESS’ or ‘SCHOOL’.  Parsing the Mark into individual words is an incorrect approach when determining the registrability of the Application.

4. Further, the Applicant’s submissions[8], redacted so as to focus on the issue of inherent adaptation to distinguish, are that:

   [8] Footnotes having been deleted from those submissions.

   Section 41 generally seeks to strike a balance between two public interests: the public interest in the general body of traders and consumers having available a vocabulary of signs to facilitate communication about a class of goods or services, and the public interest in a particular trader being able to use a sign to communicate a ‘packet of information’ about the source of that trader’s goods or services.

   The majority of the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 109 IPR 134; [2014] HCA 48, at [67] in the context of s 41(3) of the TM Act, in assessing whether a mark is inherently adapted to distinguish, identified the second aspect above as itself involving two steps: as a first step to ask what is the ordinary signification (that is the ordinary meaning) of the word (here the phrase), and as a second step, to test the likelihood that honest traders may wish to use the phrase in connection with their goods or services because of the phrase’s ordinary meaning.

   The first consideration under s 41 lies within s 41(3) and involves an assessment of the extent to which the trade mark is inherently adapted to distinguish the designated services from the goods and services of other traders. …

   …

   … It is also significant that at the time the Applicant (Prof Glynn) adopted the Mark there was no other user of the Mark in relation to the Specification (or otherwise): see Glynn [39], and that the Opponent cannot point to any other user of the Mark since 1999, save for the deliberate use by the Opponent itself in 2014, as set out in Taylor at [11]-[14]. 

   The test to be applied under s 41 is that stated by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514, recently reiterated and explained by the High Court of Australia in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd 109 IPR 154; [2014] HCA 48. As stated by Kitto J, adaptability 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 with similar goods in any manner which would infringe a registered trade mark in respect of it.

   As the majority of the High Court stated in Cantarella at [39] the determination of whether a word [phrase] has ‘direct reference’ to goods [or services] depends critically on the goods/services themselves, because a word containing a direct reference to goods/services in one trade may not convey any such direct reference to goods [services] in another trade. 

   The question of what is the ordinary signification of a mark is directed to persons who will purchase, consume or trade in the designated goods or services (see Canterella at [59]).  This includes whether there is a legitimate desire of other traders to use a word or phrase which is directly descriptive in relation to their same or similar goods or services.  As the majority of the High Court noted at [59], however, it does not encompass the desire of other traders to use words/phrases which in relation to the designated goods or services are allusive or metaphorical.  So too, it cannot encompass the desire of traders, learning of another trader’s use of a mark, to use the mark themselves – such traders do not exhibit the foundational bona fides and proper motives.

   Once the ordinary signification of the trade mark is established, then the enquiry moves to whether other traders might legitimately need to use the phrase in respect of their goods/services (Cantarella at [71]).  Again, the motives of the other traders are relevant.

5. If I test the character of the Trade Mark by reference to its ordinary signification and the likelihood of other traders legitimately wishing to use it to describe their goods or services, it is difficult to avoid the conclusion that the Trade Mark is the apt, if not only, way to describe a school of business studies located in Sydney.  Accepting the Applicant’s submission that the Trade Mark should be considered as a whole phrase, rather than parsed and the component parts analyzed, does not alter my assessment. 

6. It seems to me that the only way in which that conclusion might be avoided would turn on the possible extent to which the Trade Mark might not describe, or otherwise lack inherent adaptation to distinguish, some goods or some services coming within the Specification.[9]

   [9] See, for example, Yates J in Apple Inc. v Registrar of Trade Marks [2014] FCA 1304: “The registrability of a mark, including whether it is capable of distinguishing the applicant’s goods or services from the goods or services of others, must be assessed by reference to the scope of the registration that is sought.”

7. It is convenient to put that matter out of the way now.  It is the Opponent’s position that “[T]he Class 41 specification of services covers education services, and particularly the conduct of a school of business studies.  All of the other goods and services are education related.”  Contrast the Applicant’s submission that “it is an overstatement to assert that each of the goods and services of the Specification is ‘education related’.”

8. In more detail, the Applicant’s argument is that:

   The Applicant accepts that each of the goods and services comprised in the Specification may be or relate to being ‘educational’ as that term is broadly understood, however the range of goods and services for which the Mark has been accepted for registration is not so limited or confined.  The Applicant has obtained acceptance of the Application across the full range of the designated goods and services of the Specification. 

   The Examiner raised an objection to registration of the Mark under s 41 of the TM Act. In so doing, the Examiner did not separately consider the goods and services of the Specification, but asserted that the ‘services are provided by, at or in relation to a business school in Sydney’.

9. The Trade Mark is an apt way to describe the class 41 services.  So, too, it must be for other goods and services of the Specification, for example, “instructional and teaching materials; teaching manuals; teaching materials for education; educational materials (other than apparatus) for use in teaching” as nominated in class 16, and “the advertising of educational and training courses and research services; business administration, consultancy and management services; business research” in class 35.  So, too, for “advisory services relating to research” in class 42.

10. Dissection of the Specification might uncover terms or phrases of some indeterminate scope which might require me to consider if those goods or services are ‘education related’.   If so, there could be a temptation to understand such terms taking account of the fact that the Applicant’s stated “intention in conducting its graduate school of business studies under the name ‘Sydney Business School’ was, and still is, to (a) assist business professionals, managers, leaders and executives in achieving their professional development goals by delivering high quality degrees and courses …[and] (b) foster meaningful research which contributes to advances in business theory and practice …”.[10]

    [10] Professor John Glynn’s declaration.

11. However, I do not need to examine the Specification more closely, nor look to find ways to absolve myself from the illegitimacy of taking such extrinsic evidence into account since this issue has already been considered by Justice Yates in Apple Inc. v Registrar of Trade Marks[11] where his Honour wrote at [232]:

    232    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, [it] is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.

    [11] [2014] FCA 1304

12. His Honour went on to say at paras 233 et seq:

    233    The parties nevertheless made brief submissions in relation to the registrability of the mark in respect of the designated services in Classes 38 and 42, separately from the application for registration in respect of the designated services in Class 35.[12]

    234    Apple submitted that APP STORE “does not inherently refer to the Class 38 and 42 services …”. It pointed to the references in the specification to “telecommunication services” and “providing consulting services and technical trouble shooting support for computer software”. The designated services in Classes 38 and 42 are, of course, more broadly specified than captured by those two examples.

    …

    237    … Within the context of the present application, I am persuaded that the designated services in Classes 38 and 42 do cover services that one might reasonably expect an “app store” to provide, especially where the apps are provided to the customer by downloading them using the Internet, which is undoubtedly the way in which Apple has delivered its App Store service.

    238    I should make it clear that, quite properly, the Court has not been called upon to tease out from Apple’s specification those services in Classes 38 and 42 that might conceivably be registrable from those that are clearly not registrable. However, taking the two examples brought forward by Apple (see [234] above), I am satisfied that each can be seen as covering an aspect of operating an “app store”, such as Apple’s App Store. Thus, APP STORE, when applied to those services, is simply descriptive of the kinds of services that can be supplied through or might be involved in operating an “app store”.

    239    I am satisfied that, considered over the range of Apple’s specification of services in Classes 38 and 42, and bearing in mind the essentially descriptive nature of the words “app store”, the mark APP STORE is not to any extent inherently adapted to distinguish those services.

    [12] The specifications being:

13. Section 55 of the Act would seem to give me the same direction to either register or refuse the Trade Mark having regard to the application as a whole. It provides:

    Unless the proceedings are discontinued or dismissed, the Registrar

    must, at the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or limitations) in

    respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the

    application was opposed has been established.

    Note: For limitations see section 6.

14. I add here in relation to section 55(b) that the excision of a class of goods from the Specification is neither a condition nor a limitation in terms of the Act.

15. It is therefore my intention in what follows to treat the Specification as a whole for the purposes of section 41.

16. Before leaving the matter of the Specification it is noteworthy that although it has been some time since trade mark legislation required an applicant to provide goods “for money or monies worth”, it remains the case that the use of a trade mark is its use in connection with the offer of goods or services to third parties.   There seems to me considerable doubt on the evidence that the Applicant would, for example, provide “advertising services”.  Promoting one’s own goods or services is not the provision of advertising or promotional services in Class 35. 

17. A second preliminary matter is whether the Trade Mark might have some greater degree of inherent distinctiveness because of the word “Sydney” within the Trade Mark. I think not. This is not because many of the courses offered by the Applicant under the Trade Mark are taught in Sydney, nor because what might be considered on the evidence to be the Applicant’s flagship campus offering those courses is located in the Sydney CBD. It is because the place name “Sydney” is for the purposes of section 41 wholly non-distinctive having regard to the Specification and the Trade Mark as a whole. To cite a contrasting example from the old cases, the goods are not “bananas” and the trade mark is not “NORTH POLE”.

18. Therefore, if I take account of the degree to which the Trade Mark comprises words which are, in their ordinary use, descriptive of the goods or services of the Specification, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade, I find that the Trade Mark is not to any extent inherently adapted to distinguish those goods or services.

19. That finding leads me to section 41(6) and to the question whether the Trade Mark does, as a matter of fact, distinguish the goods and services of the Specification as the Applicant’s goods or services. The onus is upon the Applicant in that regard and the only evidence of use taken into account is that before the filing date of the application. If the Applicant does not establish that fact, the application must be rejected.

    Evidence of use of the Trade Mark before 23 April 2012 (“the relevant period”)

20. Susan Mathews has worked for the Applicant’s business school since 2002.  Currently she is the “Business Manager”.  She declares that the school was established in 1997 as an independent faculty offering postgraduate study, although it would appear on the evidence that courses were first offered under the Trade Mark in 1999. 

21. She declares that “[S]ince 1997, UOW has provided and provides Goods and Services by reference to the Trade Mark from the following premises: Wollongong, Sydney CBD and Southern Sydney….”.

22. I note here that I treat that statement with caution since Ms Mathews’ declaration defines “Goods and Services” as being those of the Specification but it is clear to me from the evidence as a whole that prior to 1999 there was no use of the Trade Mark[13] and that in the period 1999 to April 2012 course offerings and apparently related services steadily expanded. [14]

    [13] Since in the period 1997 -99 the studies were offered by the “Graduate School of Business”.

    [14] So, for example, she declares that “[S]ince 2005 through the SBS, UOW has conducted significant research ….”. 

23. It is the exhibits to Ms Mathews’ declaration which are of more concern.  Exhibit SGM-1 includes, by way of example only, a 2001 UOW press release which reads in part: “One of the book’s authors, Sydney Business School Director, Professor John Glynn, said the concise guide provided the latest facts about the Australian business scene …..The book launch is being sponsored by The Sydney Business School.”  Another states that: “UOW’s Sydney Business School is hosting the 2009 Higher Degree Research Student Conference. …. Keynote speakers …include … from Manchester Business School in the UK, along with … from the University of Western Australia Business School.”

24. The words “Sydney Business School” as they appear above and in many other similar exhibits are said by Ms Mathews to be examples of use of the Trade Mark.

25. As a reference point to what follows, set out below is a representation of the Applicant’s crest (“the Crest”):

26. Exhibit SGM-3 shows examples of use of the words “Sydney Business School” from various newspapers.  Two examples, representative of many, are shown below.

27. What emerges from this evidence is consistent use of the words “Sydney Business School” in conjunction with either or both the words “University of Wollongong” and the Crest.  By the words, “in conjunction”, I mean either substantially identically to the form shown above, or use of both in relative proximity to each other, nearly always on the same page but otherwise in the same document.

1. Exhibits to Ms Mathews’ declaration which show a departure from what I have just shown and described are found in the various university prospectuses, student handbooks, and the like, where the words “University of Wollongong” and/or the Crest might appear on the front of that document or handbook and the words “Sydney Business School” are contained somewhere therein.  An example is the cover of the 1999 Postgraduate Calendar[15], shown below:

   [15] At which time the Sydney Business School was part of the Applicant’s Faculty of Commerce.  After the filing date the Sydney Business School became the graduate school of a newer Faculty of Business.

2. Analogous is that exhibit reproducing that part of the UOW website as it once stood concerned with the Applicant’s business school which shows use of the words “Sydney Business School”.  It seems to me that internet users would have navigated to that point from the UOW website’s homepage which bore the words “University of Wollongong”.[16]

   [16] I note that there is now a separate web address for the business school which is linked to the UOW website.

3. Further evidence is provided by Professor John Glynn who was with the Applicant since 1997 and was both the “Founding Director” and “Founding Dean” of the Applicant’s business school.

4. Professor Glynn declares that in 1997 the Applicant launched a business school named the “Graduate School of Business”.  Courses were first offered at the Applicant’s Wollongong campus and later that year at a Sydney location.

5. In August 1999 that Sydney campus was renamed the “Sydney Business School”.  Much later, in 2009, the business school until then named “Wollongong Business School” and located at the Applicant’s Wollongong campus was also renamed as the “Sydney Business School”.

6. Over the years the Sydney campus of the Applicant’s business school has moved twice.  Since March 2011 it has occupied some of the Gateway Building at Circular Quay and Professor Glynn declares that this space is “branded with signage identifying it as “Sydney Business School”.

7. Taken from the exhibits to Professor Glynn’s declaration, the signage to the Circular Quay space is shown below:

8. The exhibits to the declaration of Professor Glynn concerned with printed matter where the words “Sydney Business School” are used can be likewise characterized in the ways I have described already as showing conjunctive use of the Crest and/or the words, “University of Wollongong”.[17]

   [17] Sometimes, other expressions too are used, such as “Sydney Business School at UOW”.

9. The Opponent’s submission is that use of the Trade Mark “is conjoined with the use of a distinctive logo and the registered trade mark “University of Wollongong”, so that at most it is the combined mark which is functioning as a trade mark.”  Further, that “in many of the examples the words “Sydney Business School” have no trade mark function whatever.”

10. In more detail, the Opponent submits that:

    … [the Matthews and Glynn] declarations make no reference to the Applicant’s prominent use of the words “University of Wollongong” and its logo marks (the arms of the University of Wollongong and an earlier ‘three stripes’ device). There are only a tiny handful of uses where the words applied for are not immediately adjacent to one or more of the University of Wollongong’s name, arms or striped logo[18].  Even in those examples the additional trade mark material is not far away.  Thus for example the newsletters in Exhibit 5 to Ms Matthews’ declaration do contain a heading “Sydney Business School Business Briefing Newsletter”.  But on every page the banner appears “Sydney Business School University of Wollongong” and the composite mark of the arms, the name of the University and the “Sydney Business School” description appears on the first page of every bulletin.

    Exhibit 1 to Ms Matthews’ declaration one sees that the article from the Australian Financial Review refers to “the University of Wollongong’s Sydney Business School”.  The Applicant’s own press releases which occupy the next several pages alternate between “UOW’s Sydney Business School” and “University of Wollongong’s Sydney Business School”.  Each prominently features the University of Wollongong trade mark.

    … the article from the Illawarra Mercury on the final page of the exhibit begins with the words “The University of Wollongong’s Sydney Business School…”.  In the whole bundle, there appears to be no single example of a media or other third party reference to the Sydney Business School, which is not immediately contiguous with the words “University of Wollongong”.

    Professor Glynn fares little better.  His handful of isolated examples of the use of “Sydney Business School” separate from the words “University of Wollongong” are mostly after the filing date or (in one case) undated:  see Miller at 11(b).  Those that are not, have the words “University of Wollongong” and/or the University’s logo in close proximity (with the single exception of Exhibit 8, Tab 2).  None constitutes a convincing example of the use of the words “Sydney Business School” as a trade mark in their own right.  Professor Glynn does have one isolated example of a newspaper using ‘Sydney Business School’ in a photo caption, without the qualifiers (Exhibit 9, Tab 4).  But even there, the University of Wollongong’s name is in the article and the article was published after the filing date.  Anyway one or two uses is not evidence of distinctiveness in fact.

    [18] I have been unable to include an example of this early logo but it can be described as three vertically disposed coloured paintbrush slashes.

11. The Applicant’s submissions can be distilled as follows:

    As at the Priority Date, Professor Glynn gives evidence that the Applicant offered over 26 degrees and certificates under the Trade Mark.

    Use of the Trade Mark by the Applicant for and in connection with research projects and researchers, academics, consultancies and partnerships with business organisations and industry, in relation to attendances at conference, memberships of academic and educational networks further establishes its use and acquisition of distinctiveness in fact, and also demonstrates that the Mark originated from, but is not limited, to the geographical location from which the Applicant first offered the designated goods and services. 

    Confidential revenue and advertising expenditure relating to use of the Trade Mark is significant.

    A reference to the Applicant in the same material as a use of the Trade Mark does not result in the Trade Mark not having trade mark significance.

    Use of the possessive – ‘University of Wollongong’s’ in proximity to the Trade Mark – is a trade mark use, delineating the use of the umbrella or house mark (the Applicant’s name) from the use of the Trade Mark in relation to the designated goods and services.

    Use of two trade marks in the one publication does not deny each mark its signifying role as a trade mark. 

    A word or phrase may also function as a trade mark, in the sense of being a badge of origin, even though another mark or indication of origin is used in the same material, for example in the same packaging or advertisement: see inter alia Johnson & Johnson at 30 FCR 349; 21 IPR 25-26 per Gummow J; Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242 at [29]; Annheuser-Busch Inc v Budjejoicky Budvar (2002) 56 IPR 182.

12. Before drawing my own conclusions I turn to the remaining declarations. First is the group of declarants who made statements more or less contemporaneously with Ms Mathews in 2012 and whose statements were considered by the examiner prior to acceptance of the Trade Mark under section 41(6).

13. The first of those is the declaration of Professor the Hon. Stephen Martin, Chief Executive of the Committee for Economic Development of Australia, who declares he has “known of the use of the Trade Mark by UOW for the goods and services since 1998.”

14. Next is Brendan Lyon, Chief Executive of Infrastructure Partnerships Australia, who declares he has “known of the use of the Trade Mark by UOW for the goods and services since January 2008.”

15. Then is Senator Concetta Fierravanti-Wells, a shadow Federal Minister at the time and Liberal Senator, who has “known of the use of the Trade Mark by UOW for the goods and services since the late 1990’s.”

16. Finally, there is that of Geoffrey Soutar, professor and head of the “Business School of the University of Western Australia”, who has “known of the use of the Trade Mark by UOW for the goods and services since 2001.”

17. The difficulty in all of these, largely pro forma, declarations is not just the questionable ability of the declarants to make those statements about use of the Trade Mark across the breath of the Specification from the times indicated, but the fact that on the evidence of Ms Mathews, corroborated later by Professor Glynn, there is grave doubt that the declarants could have known of any use of the Trade Mark other than as already shown and described.  In other words, I find it more likely than not that each of these declarants is aware of the Trade Mark to the extent that its use was the sort of use already seen, namely, in conjunction with other trade marks and signs of origin used by the Applicant.

18. What remains of the evidence worth mentioning for the purposes of section 41 are (i) the surveys and reports made at the Opponent’s request and the responses thereto[19] to the extent that they contain information and opinion regarding, for example, the perceptions created by the Trade Mark, and (ii) the declaration of Tyrone Carlin[20] and the reaction thereto by Professor Glynn concerning the naming traditions of business schools.  In spite of the empirical information there contained it seems to be that the Trade Mark is so readily comprehended from a fundamental understanding of the English language that I need no further assistance from those documents.

    [19] In particular, the declarations of Messrs Lawrence and Kerema.

    [20] Sub-Dean of the “University of Sydney Business School”.

    Conclusions as to section 41(6)

19. I am in agreement with the Opponent’s criticisms of the evidence of use of the Trade Mark.  I find that many examples of use of the words “Sydney Business School” have no role in identification of the origin of the goods or services.  They are not examples of trade mark use.  Instead they are simple descriptive use of the words in the same way terms such as “the Faculty of Science” or “the Geology Department” are ordinarily used, albeit with a geographical descriptor added.

20. The other examples of use are flawed for the reasons I have described.  I have already found the Trade Mark to be not to any extent inherently adapted to distinguish the goods and services of the Specification.  The consequence of that finding is that a member of the public seeing the words “Sydney Business School” and untutored by use of that name would be unable to associate it with one particular trader.  To make a connection with the Applicant that person would need help in the form of additional cues such as the Crest or the words “University of Wollongong”.  It is the Opponent’s submission that “at most it is the combined mark which is functioning as a trade mark.”  I would go further and say that, on the evidence, the words “Sydney Business School” make no contribution to the trade mark function of the putative “combined mark”.

21. In making that finding I have taken account of the Applicant’s submission that a word or phrase may also function as a trade mark, in the sense of being a badge of origin, even though another mark or indication of origin is used almost invariably in close proximity and I have taken account of the cases to which I was referred[21] but I find that learning has no application here.  I do not accept on the evidence that the Trade Mark has any life of its own separate from and independent of the additional signs that distinguish the Applicant’s goods or services from those of others.

    [21] Johnson & Johnson at 30 FCR 349; 21 IPR 25-26 per Gummow J; Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242 at [29]; Annheuser-Busch Inc v Budjejoicky Budvar (2002) 56 IPR 182.

22. I find that the Applicant has failed to establish that through use the Trade Mark does, as a matter of fact, distinguish the goods and services of the Specification as the Applicant’s goods or services as at the Priority Date.

23. Accordingly I cannot accept the Trade Mark under section 41(6) and so I find that the Opponent has established its ground of opposition under section 41.

    Decision and Costs

24. I have found the opposition to be successful. Accordingly, under section 55(1)(a) of the Act I refuse to register the Trade Mark.

25. Both parties requested an award of costs in their favour.  As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings

    4 March 2016

    
    

Class 35: Retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics.
Class 38: Telecommunication services; electronic transmission of computer software via the Internet and other computer and electronic communication networks; provision of connectivity services and access to electronic communications networks for transmission or reception of computer software.
Class 42: Maintenance, repair and updating of computer software and of handheld mobile digital electronic devices and other consumer electronics; providing information concerning computer software and web-based applications via the Internet and other computer and electronic communication networks; providing consulting services and technical troubleshooting support for computer software and for handheld mobile digital electronic devices and other consumer electronics; providing search engines for obtaining data via communications networks; providing temporary use of computer software and online facilities to enable users to access and download computer software; Internet services, namely, creating indexes of information, sites and other resources available on global computer networks for others; searching, browsing and retrieving information, sites, and other resources available on global computer networks and other communication networks for others.