Trade mark application number 1872858 (classes 36, 43, 44) – BRIGHTWATER - in the name of Brightwater Care Group Ltd
[2021] ATMO 51
•11 June 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1872858 (classes 36, 43, 44) – BRIGHTWATER - in the name of Brightwater Care Group Ltd
Delegate: Mary-Ann Cooper Representation: Applicant: Andrew McRobert of counsel instructed by Wrays Decision: [2021] ATMO 51
Trade Marks Act 1995 (Cth) – section 33 proceedings – ground for rejection under s 41 – geographical name - evidence of use sufficient for certain services – services amended - application accepted.Background
On 13 September 2017, Brightwater Care Group Ltd (‘Applicant’) filed an application to register the trade mark detailed below under the Trade Marks Act 1995 (Cth) (‘the Act’).
Trade Mark No: 1872858 Trade Mark: BRIGHTWATER (‘Trade Mark’) Specification: Class 36: Provision of housing accommodation; Management of property; Real estate management; Rental of accommodation
Class 43: Aged care services (accommodation); Respite care; Arranging for the provision of meals; Retirement homes; Retirement home services (provision of accommodation and food); Temporary accommodationClass 44: Aged care services (medical and nursing services); Arranging of medical treatment; Consultancy and advisory services in relation to medical services and disability management; Medical assistance, care services and assistance for individuals with disabilities; Information services relating to healthcare; Nursing care; Respite care (medical and nursing services); Personal care services. (‘Services).[1]
[1] See paragraph 20 below.
The application was examined and a ground for rejection was raised under s 41(3) of the Act on the basis that the word was one with geographical significance. The Applicant responded providing a declaration and evidence of use however the examiner maintained the objection in a further five reports, each time determining that ‘there is an ordinary signification to the trade mark, and it is one which other traders are likely to use in the ordinary course of trade in relation to their own services without improper motive’. The examiner did not accept the Applicant’s extensive evidence of use, stating that it ‘continuously relies upon the trade marks which have significant and notable additions and alterations’, referring to the Applicant’s composite marks[2]. In this context the examiner also objected to the inclusion of the class 36 services as he claimed no use in relation to these services was demonstrated. The Applicant was offered registration if it restricted the Trade Mark use to Western Australia and removed the class 36 services. Following receipt of the sixth adverse examination report the Applicant requested to be heard.
[2] Australian registered trade marks 989919, 1133095 and 1775285.
The matter was allocated to me as delegate of the Registrar of Trade Marks and I heard it on 8 April 2021. Andrew McRobert of counsel appeared for the Applicant.
In making my decision I have had regard to counsel’s oral submissions and, as discussed at the hearing, the written record including the application, the examiner’s reports and the Applicant’s responses with the associated declarations of Elizabeth Joy Lawton, the Applicant’s secretary and general counsel, dated 16 May 2019 (‘Lawton 1’) and 1 July 2019.
Evidence and submissions
The Applicant’s evidence demonstrates that it is a not-for-profit public company which, with its predecessors, has provided ‘accommodation, assisted living assistance and care for people of all ages and abilities’, including retirement and disability care and accommodation, for several decades. It employs approximately 1800 staff, services 700 clients and operates 12 residential properties. Evidence of significant revenue and promotional expenditure was provided.
At the hearing, Applicant’s counsel noted that the initial objection to the registration of the Trade Mark was based on a land development project in Queensland called ‘Brightwater.’ Following submissions from the Applicant, the examiner withdrew this objection however a further geographical objection was raised based on the existence of the town of Brightwaters in New South Wales. The examiner maintained that the Trade Mark is likely to be taken as indicating services originating from this geographical area.
The Applicant submitted that the examiner misapplied the authorities by incorrectly undertaking the required analysis as identified by High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Limited (‘Cantarella’).[3] In relation to words which are assessed to have geographical signification, counsel noted various decisions of the Registrar[4] and observed that the analysis required is more complex than simply identifying a town with the same/similar name. He referred to Kitto J’s comments in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) that:
there is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns or districts if they are a seat of manufacture of the goods for which registration is sought.[5]
[3] [2014] HCA 48; (2014) 254 CLR 337.
[4] Ramsay Health Care Investments Pty Limited. [2020] ATMO 11 [27]-[28]; Scotch Whisky Association v Cristian Andrei [2019] ATMO 172 [14]-[16].
[5] (1964) 111 CLR 511 [516].
Counsel distinguished the Trade Mark from the type referred to above, noting the Applicant’s circumstances are different to those that applied in the consideration of the applications for the ‘Michigan’ and ‘Colorado’ trade marks.[6] The Applicant’s research demonstrated that Brightwaters, New South Wales is a small town of approximately 900 people with no reputation or connection with the Services. Counsel further noted that, although the Trade Mark is the combination of two ordinary English words, it is an invented word. It makes no direct or indirect reference to the Services and it has no ordinary signification in the English language. Consequently, it is unlikely that other traders would think of it or legitimately wish to use it in relation to their goods/services. He noted several trade marks on the Register which are also a geographical reference, such as ‘Sunshine’ and ‘St Ives’ but which have been accepted (without endorsement) as having a capacity to distinguish an applicant’s goods/services.
[6] Ibid; Colorado Group Limited v Strandbags Group Pty Limited (2007) FCAFC 184.
In the alternative, counsel contended the Applicant’s evidence of its extensive use of the Trade Mark justified its registration.
Legislation
Section 33 of the Act requires that the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. That is, ‘a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists’.[7] The relevant date of assessment is the filing date.[8]
[7] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [146]. As also confirmed by the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 146.
[8] Apple Inc v Registrar of Trade Marks [2014] FCA 1304 [59]; (2014) 227 FCR 511.
I note that my task is not to review the examiner’s decisions but to consider the application afresh.
Section 41 of the Act relevantly provides as follows:
Trade mark not distinguishing applicant's goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant
The issue before me is whether the Trade Mark is inherently adapted to distinguish the Applicant’s Services from the services of other persons.
According to the oft-cited statement of Kitto J in Clark Equipment, inherent adaptation to distinguish is to:
be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[9]
[9] Clark Equipment (1964) 111 CLR 511 [514].
15. The above passage was approved by the majority in the High Court decision of Cantarella and the relevant principles were summarised by the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, including, pertinently:
…
(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]...[10][10] [2017] FCAFC 56 [236].
16. This confirms that the ‘inherent adaptation to distinguish’ test is the same for a geographical name as it is for any other trade mark. The Trade Mark, BRIGHTWATER, is a coined or invented word and, although it comprises two ordinary English words, as a whole it has no ordinary meaning, particularly in relation to the Services. The note to s 41(4) states however that trade marks ‘that consist wholly of a sign that is ordinarily used to indicate… geographical origin’ are ‘mostly’ not inherently adapted to distinguish. As Kitto J further explained in Clark Equipment:
It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant’s goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur...for example, where the word as applied to the relevant goods is in effect a fancy name, such as “North Pole” in connexion with bananas or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification.[11]
17. It follows that the mere existence of a city called ‘Brightwaters’ in New South Wales does not necessarily compel a conclusion that the Trade Mark has any geographical signification to persons in Australia concerned with the Services.[12] Nevertheless, as observed in the materials, Brightwaters is a suburb of the City of Lake Macquarie, a large coastal city which is known both as a tourist and retirement destination with many accommodation providers. As Gummow J stated in this regard in Chancellor, Masters and Scholars of the University of Oxford v the Registrar of Trade Marks:
The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[13]
18. Given the evidence of the provision of some of the Services in the general area, I accept that it is ‘reasonable to suppose’ such Services may be provided in Brightwaters in the future.[14] In this context, although retaining reservations, I am not satisfied that ‘Brightwater’, a trade mark ‘nearly resembling’[15] ‘Brightwaters’, constitutes a ‘fancy name’ as observed above such that it is ‘saved… from carrying its prima facie geographical signification.’ Consequently, I accept that the Trade Mark may have a geographical signification to persons concerned with the Services such that they may legitimately have an interest in using it, or, as also observed above, a ‘mark nearly resembling it’, (i.e., ‘Brightwaters’), to identify their services. For this reason, and having carefully considered the Applicant’s submissions, I am not satisfied that the Trade Mark is inherently adapted to distinguish the Services from those of other persons (s 41(3)(a)).
[11] Clark Equipment (1964) 111 CLR 511 [515] (citations omitted).
[12] Ramsay Health Care Investments Pty Limited [2020] ATMO 11 [27]-[28].
[13] [1990] FCA 175 [41].
[14] Ibid; See also R&RC Bond (Wholesale) Ltd [2021] ATMO 36 [17].
[15] Registrar of Trade Marks v W & G Du Cros Ltd (1913) AC 624, 634-5.
I am however satisfied, based on the extensive evidence of the Applicant’s Trade Mark use provided from around 2002 to 2017, that it has used the Trade Mark before the filing date to such an extent that it ‘eclipses its primary signification’ and does in fact distinguish the Services as amended[16] as being those of the Applicant (s 41(3)(b)). I note in this regard that the Applicant has already successfully registered the plain word ‘Brightwater’ in 2004 (Australian trade mark registration 989951) for a subset of similar services in classes 37, 43 and 44.
[16] See below paragraph 20.
Following discussion at the hearing and prior to making my decision, the Applicant agreed, should I find for it under s 41(3)(b), to amend the Services to reflect the following:
Class 36: Management of properties providing assistive living accommodation for disabled persons and persons requiring medical or personal care services; Real estate management of properties which provide assistive living accommodation to disabled persons and persons requiring medical or personal care services; Rental of assistive living accommodation for disabled persons and persons requiring medical or personal care services.
Class 43: Aged care services (accommodation); Respite care; Arranging for the provision of meals; Retirement homes; Retirement home services (provision of accommodation and food); Temporary assistive living accommodation for disabled persons and persons requiring medical or personal care services.
Class 44: Aged care services (medical and nursing services); Arranging of medical treatment; Consultancy and advisory services in relation to medical services and disability management; Medical assistance, care services and assistance for individuals with disabilities; Information services relating to healthcare; Nursing care; Respite care (medical and nursing services); Personal care services; Provision of housing accommodation for disabled persons and persons requiring medical or personal care services.
(‘Amended Services’)21. Based on the evidence as discussed further below, I accept these amendments as appropriate[17] and they are hereafter referred to as the ‘Amended Services.’
[17] Under ss 65(4) and/or (5) of the Act.
22. The Annexures to Lawton 1 demonstrate that the Applicant frequently refers solely to ‘Brightwater’ in its publications and other advertising and promotional material (its Annual report for example). While it is debatable that such use constitutes trade mark use, I note several instances of use in promotional materials in print and online in which it badges its different services, such as ‘Brightwater at Home’ for its home care services (Annexures 3,11 and 13 (YouTube video)) and a Yellow Pages advertisement (Annexure 19); the ‘Brightwater Research Centre’ (Annexure 7); Wayback machine extracts from 2002-2006 in which the Applicant’s property management and accommodation services are promoted under the banner ‘Welcome to Brightwater’, and the various properties are advertised such as ‘Brightwater the Cove’ (Annexure 10); various YouTube promotions/advertisements of various residential, retirement village and brain injury rehabilitation services on YouTube such as ‘Brightwater Oats Street’ (see also Annexure 39); ‘Brightwater The Village’, ‘Brightwater The Oaks’, ‘Brightwater South Lake’ , ‘Brightwater Redcliffe’; ‘Brightwater Onslow Gardens’ (Annexures 13 and 40).
23. While I acknowledge that some of this use is accompanied by additional words, I do not consider these words alter the distinctive element ‘Brightwater’, which remains the essential feature in such references. The additional words function simply as a means of describing the service or its location. In such context, I am satisfied that the above examples demonstrate the Applicant’s use of the Trade Mark, in Australia, for at least 10 years prior to the relevant date, with additions that do not substantially affect its identity (s 7(1) of the Act).
24. I am also satisfied that the evidence establishes that consumers are likely to identify the Applicant solely by reference to the Trade Mark. Third-party publications and websites such as Aged Care Online, and various directories, also frequently provide information or advertise the Applicant’s Amended Services by reference solely to ‘Brightwater’, or ‘Brightwater’ accompanied by the location, such as ‘Brightwater Oxford Gardens’, ‘Brightwater Birralee’ and ‘Brightwater the Cove’ (Annexure 18). Third-party articles and promotional pieces for various fundraisers run by the Applicant over 2015-2017 are headlined as follows: ‘Long lunch shines light on Brightwater’, ‘Dining at Perth’s Longest Lunch for Brightwater’ ‘Perth’s Longest Lunch for Brightwater’ (Annexures 21-33); other articles comment on various aspects of the Applicant’s Amended Services as follows, for example, ‘Brightwater is the first Australian facility to use Zora’ (2015) (Annexure 36).
25. Overall, I am satisfied that, in the context in which the plain word ‘Brightwater’ appears, it would generally have been understood by consumers as being used to indicate a connection in the course of trade between the Amended Services and the Applicant.
26. While some of the material outlined above also includes use of the Applicant’s device trade marks 989919, 1133095 and 1775285, their presence does not preclude appreciation of the single word ‘Brightwater’, or Brightwater with additional material that does not substantially affect its identity, from acting in its own right as a badge of origin.[18] As observed in Wellness Pty Limited v Pro Bio Living Waters Pty Limited:
[18] Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390 [186].
A mark may have a descriptive element but still serve as a badge of trade origin (Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 . . . per Lockhart J at 335 and per Gummow J at 347) and there may still be trade mark use although another trade mark or indication of origin is used in the same packaging or advertisement (Johnson & Johnson per Gummow J at 349; Pepsico per Sackville J at 210, 213 and 216).[19]
[19] [2004] FCA 438 [33].
27. On weighing the evidence, I am satisfied that the Applicant (and/or its predecessor in title) has used the Trade Mark before the filing date to such an extent that the mark does in fact distinguish the Amended Services as being those of the Applicant (s 41(3)(b)).
28. There is no other demonstrated basis on which to reject the Trade Mark under s 41. To the extent that any doubt remains as to the capacity of the Trade Mark to distinguish the Applicant’s Amended Services from those of others, I note that a presumption in favour of its registration is applicable.
Decision
29. 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.
Note: For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note: For this Act see section 6.
30. For the above reasons, I am satisfied that the application for the Trade Mark may be accepted for the Amended Services with an endorsement that the provisions of s 41(3)(b) were applied.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
11 June 2021
14
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