Trade mark application number 1963540 (classes 36 and 39) – PRE ARRIVAL ASSESSMENT- in the name of Platinum Freight Management Pty Ltd.

[2020] ATMO 155

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1963540 (classes 36 and 39) – PRE ARRIVAL ASSESSMENT- in the name of Platinum Freight Management Pty Ltd.

Delegate:

Louise Tuohy

Representation:

Applicant: Peter McRae, Director of Platinum Freight Management Pty Ltd.

Decision:

2020 ATMO 155

Ex-parte matter pursuant to s 33(4) Trade Marks Act 1995 (Cth) – s 41 trade marks inherently adapted to distinguish – trade mark application rejected.

Background

1.     This decision follows from an ex parte hearing held on 1 September 2020 at the request of Platinum Freight Management Pty Ltd (‘the Applicant’) pursuant to s 33(4) of the Trade Marks Act 1995 (‘the Act’) in relation to Australian Trade Mark application number 1963540, current details of which appear below:

Application No: 1963540

Trade Mark:  PRE ARRIVAL ASSESSMENT (‘the Trade Mark’)

Filing  Date:  22 October 2018

Specification:  Class 36:  Transport insurance; customs brokerage; customs agents; customs services; customs services relating to quarantine issues, laws and inspections services

Class 39:  Transportation and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting; shipping, brokerage and forwarding of cargo; customs clearance services being logistics, transport and storage services; warehousing; advisory services relating to transport and logistics; transportation logistics; transportation services relating to quarantine issues, laws and inspection services

(‘the Applicant’s Services’)

Examination Report

2. The Trade Mark was examined as required by s 31 of the Act. The First Examination Report was issued on 7 May 2019 and raised a ground for rejection under s 41(3) of the Act as follows:

Issues raised under Section 41 of the Trade Marks Act 1995.

Your trade mark is PRE ARRIVAL ASSESSMENT. The Macquarie Dictionary defines ASSESSMENT as "an opinion or judgement formed by assessing". In relation to the services you have claimed, this indicates that your services are assessments made before the arrival of people or goods into a country. PRE ARRIVAL ASSESSMENT is conducted by customs officials and related entities for a number of reasons, including for the safety of the country. Other traders should be able to use PRE ARRIVAL ASSESSMENT in connection with goods or services similar to yours.

What you can do now.

Please consider the following option: SUPPLYING EVIDENCE OF USE: You might be able to overcome this problem if you supply evidence of use in terms of subsection 41(3) of the Trade Marks Act 1995. Any evidence would need to be very extensive and very persuasive.

3.     On 21 July 2020 the Applicant submitted a response to the First Adverse Report including evidence.

4. In response the Examiner issued a Second Adverse Report dated 3 July 2020 maintaining the ground for rejection under s 41(3) of the Act.

5.     On 10 July 2020 the Applicant submitted a response to the Second Adverse Report including supplementary evidence.

6. In response the Examiner issued a Third Adverse Report dated 23 July 2020 maintaining the ground for rejection under s 41(3) of the Act.

7. On 30 July 2020 the Applicant requested a hearing on the matter as provided by s 33(4) of the Act.

Evidence

·Declaration by Peter McRae, Director of Platinum Freight Management Pty Ltd, made on 21 June 2020 with Exhibits PFM 1 to 8 (’McRae 1’).

·Declaration by Peter McRae, Director of Platinum Freight Management Pty Ltd, made on 21 June 2020 with Exhibits PFM 9 to 10 (‘McRae 2’).

·Declaration by Peter McRae, Director of Platinum Freight Management Pty Ltd, made on 10 July 2020 with Exhibits PFM 8 and PFM 11 to 19 (‘McRae 3’).

Additional Material

·Written submission by Peter McRae, Director of Platinum Freight Management Pty Ltd, dated 27 August 2020 (‘the Applicant’s submission’).

Legislative Background

8. Section 41 of the Act relatively 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.

(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.

(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.

9. Under s 33 of the Act, the Registrar must accept a trade mark for registration unless satisfied, on the balance of probabilities, that there is a ground for rejecting it.[1]

[1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].

10.   My decision is not a review of the Examiner’s reasoning. I must consider the matter afresh.

Discussion

11.   The well-established test for determining whether a trade mark is inherently adapted to distinguish is set out in Clark Equipment Co v Registrar of Trade Marks by Kitto J:

[T]he 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]

[2] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, [515].

12.   Importantly, it is not whether other traders are currently using term PRE ARRIVAL ASSESSMENT in the course of trade that I must consider, but rather, in the words of Kitto J: ‘the common right of the public to make honest use of words forming part of the common heritage, - for the sake of the signification they ordinarily possess’.

13.   The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’) endorsed this test but it used new descriptive terminology. The Majority view stated that:

The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word 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. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (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. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[3]

[3] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, 254 CLR 337, [59].

14.   It is appropriate to first consider the ‘ordinary signification’ of the Trade Mark and this is to be considered from the perspective of any person in Australia concerned with the services to which the Trade Mark is to be applied.[4]

[4] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; 254 CLR 337, [70].

15.   The Applicant is a customs broker and describes the service provided under the Trade Mark as a service package designed for and used by prospective customers wishing to export and/or import goods to Australia. Specifically, the service is a pre arrival assessment conducted by the Applicant for all of the rules, regulations, costs, concerns, and issues that a customer needs to consider before sending goods to Australia.[5]  

[5] Applicant’s submission 7.

16.   In this case the target audience for the Applicant’s Services are customers seeking to send  goods to Australia[6] and I do not find there would be any person within the target audience who would not read the meaning of the term PRE ARRIVAL ASSESSMENT simply as an assessment conducted prior to arrival, of the components (for example the government regulations and costs) involved in sending goods to Australia.

[6] Applicant’s submission 7.

17.   Moreover, no matter who the target audience is, I am of the opinion that the ordinary meaning of the words is very clear. The Macquarie Dictionary defines: the prefix PRE to mean ‘prior to’; the word ARRIVAL to mean ‘the act of arriving’; and the word ASSESSMENT to mean ‘an amount assessed as payable’. Together the meaning of the term PRE ARRIVAL ASSESSMENT is simply an assessment prior to arrival.[7]

[7] Macquarie Dictionary (online at 14 September 2020).

18.   This finding, however, is not fatal to the application, for it is necessary that I also consider the second element of the test set out in Cantarella, namely, whether other traders would be likely, without improper motive, to desire to use the Trade Mark upon or in relation to the Applicant’s services for the sake of the ordinary signification of the term PRE ARRIVAL ASSESSMENT.

19.   Here, the Applicant argues that there are no other customs brokers in Australia who provide the Applicant’s service and there is no other customs brokers in Australia who advertises or promotes such a service using the term PRE ARRIVAL ASSESSMENT.[8]

[8] Applicant’s submission 8.

20.   In response, I observe that while the Applicant claims it is the only customs broker that provides this service package, I note that customs brokers are licenced specialists who provide professional assistance and advice about customs, quarantine and import and export matters, which are the same services offered by the Applicant under the Trade Mark.

21.   Furthermore, if other traders were advertising or promoting the same service using the words PRE ARRIVAL ASSESSMENT for the sake of its ordinary signification in the normal course of trade, that may be powerful corroboration of a lack of inherent adaptation. However, cases such as Burger King Corporation v Registrar of Trade Marks and Eutectic Corporation v Registrar of Trade Marks were decided on the ordinary meanings of the words and not by reference to whether other traders were in fact, using the words for their ordinary significance.[9]

[9] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417; Eutectic Corporation v Registrar of Trade Marks (1980) 1A IPR 550.

22.   In summary, on the plain meaning of the expression PRE ARRIVAL ASSESSMENT, traders who provide the same and similar services claimed by the Applicant would desire or need without improper motive to use the term or one very similar, for the sake of its ordinary meaning.

23. I find that the Trade Mark is an apt way to describe the nature of the Applicant’s Services and that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services from those similar services of other traders and appropriately falls for consideration under s 41(3) of the Act.

Evidence of Use

24. In evaluating the evidence of the Applicant s 41(3)(b) of the Act requires me to consider whether the evidence establishes that, because of the extent to which the Applicant has used the Trade Mark before the filing date, it does distinguish the Applicant’s Services as being those of the Applicant. If so, the Trade Mark is taken to be capable of distinguishing the Applicant’s Services from services of another trader.

25.   In Primary Health Care Limited v Commonwealth of Australia the court made the following comments:

An essential characteristic of a trade mark is that it is used to distinguish the goods or services of a trader from the goods or services of other traders: s 17 of the TMA; E & J Gallo Winery v Lion Nathan Pty Ltd (2010) 241 CLR 144 at [42]. A trade mark may in fact distinguish goods and services, or it may not. If a trade mark is not capable of distinguishing designated goods or services, then it may be used but cannot be registered. If it is not registered, the owner does not acquire the monopoly on the use of the trade mark conferred under s 20 of the TMA.[10]

As Yates J observed in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 at [34], mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. Whether the appellant used the word mark to distinguish the Services, and the extent to which it achieved distinctiveness, involved an evaluative judgment. The primary judge found that the appellant had used the word mark to distinguish its operation of its medical centres, but had not used the mark to distinguish the Services.[11]

[10] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [219].

[11] Ibid [373].

26.   The Applicant, Platinum Freight Management Pty Ltd, has been in operation since 28 November 2000.[12] In McRae 1 the Applicant claims use of the Trade Mark since July 2016[13] and I will take this date as the date of first use and the evidence of use discussed below will be taken to 22 October 2018 being the filing date of the Trade Mark.

[12] Applicant’s submission 1.

[13] McRae 1, 6 [Exhibit PFM 2].

27.   The McRae 2 declaration provides advertising expenditure[14] and sales revenue[15] under the Trade Mark for the years 2016 to 2018, which in my assessment are low.

[14] McRae 1, 16 [Exhibit PFM 8].

[15] McRae 3, 8 [Exhibit PFM 11].

28.   The Applicant provides evidence of advertising and promotion of the Trade Mark which includes the placing of the Trade Mark in the Applicant’s quotes that are emailed to prospective customers on a daily basis. The Applicant estimates that between 70 to 100 quotes are emailed to prospective customers every week. Below is a part copy of a quote dated 22 August 2016 promoting the Trade Mark:[16]

[16] McRae 1, 6-14 [Exhibit PFM 2].

29.   Below is the Trade Mark as it appears in the Applicant’s email signature block as at April 2018:[17]

[17] McRae 1, 9 [Exhibit PFM 4].

30.   In regard to advertising and promotion on the Applicant’s Australian website < the Trade Mark is listed as a trade mark of the Applicant at the bottom of the home page as shown below:[18]

[18] McRae 1, 15 [Exhibit PFM 7].

31.   The Applicant also relies on its promotion of the Trade Mark through its companies located in Canada which started operations in January 2016 and its United Kingdom company established in May 2018. The Applicant promotes its services under the Trade Mark on its overseas domain registrations at < and < which target customers wishing to export goods to Australia and any enquiry or sale under the Trade Mark is diverted and invoiced through the Applicant in Australia. Below is an example of the adverting appearing on the Applicant’s Canadian website:[19]

[19] McRae 3, 10-12 [Exhibits PFM 13-18].

32.   Lastly, the Applicant has provided a Google analytics report for the period 1 March 2017 to 9 June 2020 which shows the different channels customers enter the Applicant’s Australian website < and while I can only account for the data over the period to 1 March 2017 to 22 October 2018 which shows total traffic to the website, in the low tens of thousands, it is of note that these figures do not show how many people searched for the term PRE ARRIVAL ASSESSMENT.[20]

[20] McRae 3, 9 [Exhibit PFM 12].

33.   As noted by Jacob J in British Sugar Plc v James Robertson & Sons Ltd[21] there are marks for which no amount of use could possibly result in the term becoming distinctive. The example provided in that case was SOAP for soap. In the present case a trade mark such as PRE ARRIVAL ASSESSMENT for the Applicant’s Services while perhaps not unregistrable regardless of the amount of use, comes very close to that and would require a very considerable amount of evidence that the Trade Mark has, in the market, established a new and secondary meaning different from its descriptive meaning.

[21] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, [302].

34.   In this case, the Applicant has provided the Applicant’s Services under the Trade Mark for approximately two years and three months, pre-filing. The sales and advertising figures are unimpressive and much of the Applicant’s evidence consists of emails and webpages headed in the Applicant’s name. While the Applicant has shown registrations for the domain names <prearrivalassessment.com> and <prearrivalassessment.com.au> obtained in January 2017,[22] these sites are not in use and registration of these domain names does not confer the Applicant with proprietory or exclusive rights in the connection with term PRE ARRIVAL ASSESSMENT.

[22] McRae2, 3 [Exhibit PFM 10].

35.   Furthermore, there is no direct evidence of how the particular market for the Applicant’s services would see the Trade Mark standing alone and identify it as connoting the services offered by the Applicant instead of services offered by other customs brokers.

36. In my evaluative judgement, the evidence before me is insufficient to persude me that the wholly descriptive trade mark PRE ARRIVAL ASSESSMENT has achieved distinctiveness and as such the application to regsiter the Trade Mark must be rejected under s 41 of the Act.

Decision

37. Section 33 of the Act 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.

(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.

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

1. Under s 33 of the Act, I must accept a trade mark application unless there are grounds under the Act for rejecting it. In this matter I am satisfied there are grounds under the Act for rejecting the application.

2. I therefore reject Trade Mark application number 1963540.

   Louise Tuohy

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   22 September 2020