Trade Mark application number 1818323 (16, 41, 42) – ISU INTERNATIONAL SPACE UNIVERSITY – in the name of "International Space University" - (ISU) (Association de droit local)

[2018] ATMO 198

TRADEMARKSACT 1995

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

ReTrade Mark application number 1818323 (16, 41, 42) – ISU INTERNATIONAL SPACE UNIVERSITY – in the name of "International Space University" - (ISU) (Association de droit local)

DELEGATE:  Nicholas Smith

REPRESENTATION:                 Applicant:  Written  submissions  by  Cotters  Patent  &  Trade  Mark Attorneys

DECISION:  2018 ATMO 198

Request to be heard under section 33(4) of the Trade Marks Act 1995 in relation to a ground for rejection under section 41 of the Act – Trade Mark is insufficiently inherently adapted to distinguish by itself and evidence of use and other factors insufficient to satisfy Registrar that mark does or will distinguish the designated goods or services –– Application rejected

Background

1. On 5 December 2016, "International Space University" - (ISU) (Association de droit local) (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (‘Act’).

   Application Number:         1818323

Filing Date:  5 December 2016

Goods and Services:          Class    16:     Printed    matter,    documents      and

publications in connection with the field of space; instructional or teaching material (except apparatus)

Class 41: Education, teaching, training, instruction, education information, career counseling (advice relating to education or training); organization of competitions (education),  educational         examinations; organization and conducting of training workshops, colloquiums,  conferences, conventions, seminars, symposiums;  publication of activity reports, books, CD-ROMs, publication

of texts (other than advertising texts), electronic publishing of books and periodicals on line; organization and holding of cultural or educational exhibitions

Class 42: Scientific  and  technological evaluations, appraisals and research in the field of space provided by engineers; research, analysis of scientific data and design of new materials in the field of space; software design and development in the field of space; appraisals (engineering work) and technical project study, engineering in the field of space

Trade Mark:

ISU INTERNATIONAL SPACE UNIVERSITY

(‘Trade Mark’)

1. The Trade Mark was duly examined under s 31 of the Act and grounds for rejection were identified by the examiner under ss 41 and 44 of the Act. The examiner stated (paraphrased) that the Trade Mark has as its main feature the acronym ISU expanded into INTERNATIONAL SPACE UNIVERSITY which indicates that the publications, education services and research and software design relate to the study of space and are carried out in an international university. Other traders should be able to use the words ISU INTERNATIONAL SPACE UNIVERSITY or something very similar in connection with similar goods or services. The examiner additionally noted that the prior trade mark set out in Annex 1 to the examination report (the ‘Earlier Mark’) closely resembled the Trade Mark and was registered for services similar to the class 41 services the Trade Mar is sought to be registered for.

1. The Applicant subsequently provided submissions in response (‘Applicant’s First Submissions’). The Examiner was not convinced by the Applicant’s First Submissions and issued a second examination report setting out detailed reasons for maintaining the grounds for rejection under ss 41 and 44. The Applicant then requested that the Registrar review the matter and issue a decision based on the material on the file. Following the request for hearing, further submissions were provided on 5 December 2018 (‘Applicant’s Second Submissions’) along with various documents that were described as Annexures 1-25 to the submissions.

1. The matter was allocated to me, a delegate of the Registrar of Trade Marks, for determination. I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the grounds for rejection.

Legislative framework

1. Section 41 of the Act provides:

41 – Trade Mark not distinguishing applicant’s goods or services

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

Note:     For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

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

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

(iii)any other circumstances.

Note1: 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.

Note3: 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

1. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks1 (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will

1 (1998) 40 IPR 498, 505.

distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(1) that the [Trade Mark] is inherently adapted to distinguish the [Goods and Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Goods and Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(2) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Goods and Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(3) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Goods and 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 [Goods and Services]. [that is, s 41(4) applies]2

1. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

   (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2)  In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3)  The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4)Directly descriptive words, like geographical names, are not prima facie

2 [2017] ATMO 25, [38]-[40].

suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be  inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5)  The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6)  In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7)  In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8)  Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9)  Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11)  Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71]. 3

1. The Applicant’s submissions in respect of s41, summarised below, cover the following broad areas:

·The Trade Mark is a combination of features that can be distinctive even if individually those elements are descriptive or common to the trade. When considered in its entirety, the Trade Mark is unique and distinctive.

·Having regard to the relevant authority, other traders in the marketplace do not require use of the Trade Mark since it only relates to the service of operating an international university which teaches and researches in the highly specialised field of space, and there is a very low likelihood of any other trader setting up such a university. Furthermore there is no evidence of any third party descriptive use of the term ‘international space university’.

·As a result of the use of the Trade Mark by the Applicant since 1987 the Trade Mark is capable of distinguishing the Goods and Services. Furthermore the Trade Mark has been registered in various other jurisdictions, a factor that falls within the ‘other circumstances’ that the Registrar shall consider when considering the application of s41(4)(b)(iii) of the Act.

1. I do not accept the Applicant’s submissions on this point and consider that, even having regard to the use, intended use and other circumstances, the Trade Mark is not sufficiently inherently adapted to distinguish in respect of the Goods and Services, and as such s 41(4) of the Act applies.

3 [2017] FCAFC 56 at [236].

1. When considering the Trade Mark as a whole, I consider that the mark will be read by reference to the words ‘international space university’. The presence of the acronym ‘ISU’ simply operates to reinforce the words ‘international space university’ since a person viewing the Trade Mark would simply view it as an acronym followed by the words that are abbreviated by the acronym. To use examples from Australian universities, placing the acronyms ANU or UNSW in front of the words ‘Australian National University’ or ‘University of New South Wales’ does not change the ordinary signification of those words in any way.

1. The ordinary signification of the words ‘international space university’ refer to a university, operating internationally, providing specialised education in space-related areas. This would include the publication of reading material, the provision of education (and related) services and the provision of research services, each of which are commonly provided by institutions of higher learning such as universities. These are precisely the goods and services for which the Trade Mark is sought to be registered.

1. While the Goods and Services for which the Trade Mark is sought to be registered are specialised (and the Trade Mark does not appear to be used by any other educational institutions), the fact of the matter is that the Trade Mark makes direct reference to the Goods and Services and as such other traders in the Goods and Services, may think of and desire to use a mark nearly resembling the Trade Mark, being the words ‘international space university’, in respect of their goods and services. As such I find that the Trade Mark is not sufficiently inherently adapted to distinguish the Goods and Services from the goods or services of other persons under s 41(4) of the Act. Were it not for the presence of the acronym ISU, I would consider the Trade Mark to fall

   within s 41(3) of the Act, not to any extent being inherently adapted to distinguish the Goods and Services4.

4 I note that in the Applicant’s Second Submissions, the Applicant offers to amend the Goods and Services to more closely limit the Goods and Services to the field of space. Such amendment makes no difference to my consideration; the ordinary signification of the Trade Mark relates to space, that is the physical universe beyond the earth’s atmosphere. .

1. However, that is not the end of the story with respect to s 41. I must now consider whether or not the Trade Mark is insufficiently adapted to distinguish having regard to the combined effect of the following:

·the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

·the use, or intended use, of the trade mark by the applicant;

·any other circumstances.

Thus it will be necessary to consider the Applicant’s evidence of use (and intended use) of the Trade Mark as well as the other circumstances set out in the Applicant’s Second Submissions. I have concluded above that the Trade Mark has a very low inherent adaption to distinguish the Goods and Services and as such will require correspondingly higher levels of use and other circumstances to allow registration.5

1. The Applicant’s evidence of use is that it has been operating a university under the name of International Space University since 1987, initially in Massachusetts, and later in Strasbourg, France. Since it was founded 4,400 students from over 100 countries have graduated from the International Space University.

1. The Applicant also refers to the existence of a Southern Hemisphere Space Program offered by the International Space University in partnership with the University of South Australia. It appears from a report conducted by the Department of Industry, Innovation and Science that approximately 30-40 students complete the 5-week course each year of which 55% are domestic students. Although it is not clear, I infer from the documentary material that this course has been offered at least 5 times since 2012.

1. Given the above, I consider the evidence of the Applicant’s use of or reputation in the Trade Mark in Australia to be very limited.  The Trade Mark is used in respect of a

5 Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited, [2003] FCA 1502, [42].

university in France that graduates an average of 146 students a year (with no information provided about how many, if any of those students are from Australia or connected to Australia in any way). The Applicant has operated  a  co-branded summer school in Adelaide with 30-40 students for 5 years. There is little or no other evidence of any consumer recognition of the Trade Mark in Australia, such that, despite the mark having a low inherent adaption to distinguish, the Trade Mark is capable of distinguishing the Goods and Services from the goods and services of third parties.

1. The Applicant notes that the Trade Mark has been registered or sought to be registered in a number of other geographical regions including China, the European Union, the USA, Switzerland, Japan, Russia and the Ukraine. I note that both the Japanese Patent Office and the USPTO issued provisional refusals for the Trade Mark, though the provisional refusal of the Japanese Patent Office was for grounds not corresponding with s 41 of the Act. While the existence of registrations in jurisdictions other than Australia is relevant and has been taken into account, it should not, in isolation, be the determining factor enabling the Registrar to ignore the other

   considerations in s41(4)(b).6 Taking into account the low inherent adaption to

   distinguish and the very limited use of the Trade Mark in Australia, even given the existence of the overseas registrations, I am not satisfied that the Trade Mark does or will distinguish the Goods and Services from those goods of third parties. Section 41(4) of the Act applies and the application to register the Trade Mark must be rejected.

Decision

1. Section 33 of the Act relevantly provides:

33 Application accepted or rejected

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

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

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

6 See KAMYR Inc, Re [1996] ATMO 14.

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

(3)If the Registrar is satisfied that:

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

(b)    there are grounds under this Act for rejecting it; the Registrar must reject the application.

1. As the Trade Mark is not sufficiently inherently adapted to distinguish the Applicant’s Goods I am satisfied that there exists a ground for rejecting the application under s 41 of the Act. It is not necessary to consider the ground raised by the examiner under s 44 of the Act. I reject the application to register the Trade Mark.

Nicholas Smith Hearing Officer

Oppositions and Hearings 18 December 2018

Annex 1

Number	Trade Mark	Priority Date	Services
896372	31  Oct 2001	Class 6: Organising and holding skating and speed skating championships and competitions, organisation of skating workshops, teaching skating, organising  and holding exhibitions and conferences on skating and speed skating, organising and providing sports premises for skating and speed skating championships  and competitions