Trade mark application number 1996978 (12) – CHURCHILL – in the name of R & R C Bond (Wholesale) Limited

[2021] ATMO 36

TRADE MARKS ACT 1995

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

ReTrade mark application number 1996978 (12) – CHURCHILL – in the name of R & R C Bond (Wholesale) Limited

Delegate:                 Robert Wilson

Representation:       Applicant: Pizzeys Patent and Trade Mark Attorneys

Decision:                   2021 ATMO 36

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 41 – mark is the name of a geographical location – application accepted

Background

1. On 20 March 2019, R & R C Bond (Wholesale) Limited (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:	1996978
Goods:	Class 12: Vehicle parts being wheels and tyres, alloy wheels, brakes for vehicles, brake pads and discs, vehicle engine parts, accessories for vehicles (‘the Applicant’s Goods’)
Trade Mark:	CHURCHILL	(‘the Trade Mark’)

2. The application was examined as required by s 31[1] and on 29 October 2019 the examiner issued an adverse report. The examiner indicated their view that there was a ground for rejecting the application under s 41 on the basis that ‘CHURCHILL is the name of a town in Victoria’ and that ‘other traders should be able to use CHURCHILL in connection with [goods similar to the Applicant’s Goods]’.

[1] References to sections or regulations in this decision, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

3. The Applicant responded to the adverse report but the examiner was not persuaded to withdraw the ground for rejection. The examiner maintained the ground for rejection for a further two adverse reports, following which the Applicant requested a hearing by way of written submissions. Written submissions were prepared and filed by the Applicant’s representative, Pizzeys Patent and Trade Mark Attorneys.

4. It has fallen to me as a delegate of the Registrar of Trade Marks to consider the matter. In accordance with s 33, unless I am satisfied that there are grounds for rejecting the application I must accept it. In making my decision I have taken into account the Applicant’s submissions, referred to above, and other material on file which is related to the application, such as the research conducted by the examiner. I note that this decision is not a review of the examination carried out by the examiner, but the application is considered de novo. As such, it is open to me to conduct any research I might consider appropriate to inform my decision. Were my research to produce material adverse to the Applicant, and of which the Applicant was apparently unaware, it would be incumbent upon me to give the Applicant an opportunity to address that material. My research has not produced any such material in this instance. I have taken my research into account and referred to it as necessary.

The Law in Respect of s 41

5. 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.

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

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

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

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

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

Note 1: For applicant and predecessor in title see section 6.

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

6. The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington 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 Act a monopoly in what others may legitimately desire.[2]

[2] (1913) AC 624, 634-5.

7. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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.[3]

[3] [1964] HCA 55, [5] (‘Clark Equipment’).

8. There are several cases which have dealt with the distinctiveness of signs which have a geographical signification. Clark Equipment is often cited in this regard. The words of Kitto J quoted above were made in the context of the word ‘Michigan’—a state of the United States of America—which the applicant in that case sought, unsuccessfully, to register in connection with earth‑moving equipment and the like. Kitto J continued after the passage above to state:

The fact that this is the test is the basic reason for the frequent refusal … to register as a trade mark a word of prima facie geographical signification. 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. This is the case, 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. …

The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make.[4]

[4] Ibid [6]-[7] (citations omitted).

9. After referring to a number of earlier English authorities, Kitto J continued:

[T]here 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 and districts if they are a seat of manufacture of the goods for which registration is sought.[5]

[5] Ibid [7].

1. In another case frequently referred to in respect of signs with geographical significations, Gummow J stated:

   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.[6]

   [6] Chancellor, Masters and Scholars of the University of Oxford v the Registrar of Trade Marks [1990] FCA 175, [41] (‘Oxford’).

2. In Cantarella Bros v Modena Trading (‘Cantarella’)[7] the High Court indicated that the test for distinctiveness is a two-step process. The first step being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods. The second step, having determined the ordinary signification, being to ask the question of whether other traders might legitimately need to use the word in respect of their goods. In the joint judgement at [31]–[34] some historical matters were considered including the Trade Marks Act 1905 (UK). Section 16(1)(d) of that Act relevantly provided that a registrable trade mark must consist of, amongst other things, ‘A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname’ (emphasis added). The majority in Cantarella explicitly stated, at [71], that the consideration of ordinary signification of a sign is crucial including in situations where it is alleged not to be registrable because the sign is a geographical name.

   [7] [2014] HCA 48.

The Ordinary Signification of CHURCHILL

1. In assessing the inherent adaptation of CHURCHILL to distinguish the Applicant’s Goods from the similar goods of other traders, it is necessary to determine firstly, what the ordinary signification of CHURCHILL, in Australia, is to persons who will purchase, consume or trade in the Applicant’s Goods (‘relevant persons’). If the ordinary signification is not the name of a small town in Victoria there can be no ground for rejection which rests upon that geographical significance.

2. The court in Cantarella provided little guidance on how the ordinary signification of a sign is to be determined. However, during examination it is routine, for example, that an examiner will consult the Macquarie Dictionary to assist in determining the ordinary signification (if any) of a sign. It is also routine that an examiner searches a database called Gazetteer of Australia which contains a list of geographical locations and their nature. Another routine search conducted during examination is of a database which contains a list of surnames and the number of times a particular surname appears on the electoral roll of Australia.

3. At the time the application was examined, 1411 people with the surname CHURCHILL were on the electoral roll. For the sake of completeness, I note that in the first adverse report the examiner also raised a s 41 ground for rejection on this basis but withdrew it following submissions from the Applicant. I see no reason no revisit the ground for rejection on that basis and will not consider it further here. The Macquarie Dictionary indicated that CHURCHILL is ‘a town in south-eastern Victoria’.

4. The Gazetteer of Australia listed eight locations in Australia with the name CHURCHILL including: the town the subject of the ground for rejection, a suburb in Queensland, a triangulation station in New South Wales, and a ‘Built Structure’ in Queensland. The examiner raised the ground for rejection only in respect of the Victorian town and I see no reason to extend my consideration of the ground for rejection to any location other than that town.

5. There is evidence before me which shows that the town of Churchill in Victoria is located in central Gippsland and has a population of about 4,500 people. It was built to house the workers who were involved in construction of the Hazelwood Power Station. The brown coal power station was built between 1964 and 1971 and was decommissioned in 2017. The town is a residential town rather than a manufacturing town. The mere existence of the town does not compel a conclusion that the ordinary signification of CHURCHILL to all relevant persons, or even a significant proportion of relevant persons, is that town. Nevertheless, there is no evidence before me regarding to what percentage of relevant persons the ordinary signification of CHURCHILL is the Victorian town. On this basis, I will proceed on the assumption that to a significant number of relevant persons, CHURCHILL, has as its ordinary signification the Victorian town.

The need for other traders to use CHURCHILL

1. The second part of the two part test requires a determination of whether other traders legitimately need to use CHURCHILL for its geographical significance in respect of goods which are similar to the Applicant’s Goods. There is no evidence before me that goods similar to the Applicant’s Goods are currently produced in the town of Churchill. In this situation the question to be asked is whether ‘it is reasonable to suppose that such goods in the future will be produced there’.[8] If the answer to this question is ‘no’ it is reasonable to assume that there is no legitimate need for other traders to use CHURCHILL in respect of those goods. ‘In the future’ is a long time and it seems reasonable to assume that almost anything could occur in that rather open ended timeframe. To have any sensible application there must be limitations placed on the factors to be considered. A reasonable approach is that the likelihood is assessed in the light of the current surrounding circumstances but looking forward to the foreseeable future. It is to be stressed, that the question is not whether it is possible that car parts could in the future be produced at Churchill but whether it is reasonable to suppose that they will be.

   [8] Chancellor, Masters and Scholars of the University of Oxford v the Registrar of Trade Marks [1990] FCA 175, [41].

2. In Clarke Equipment Kitto J, in contemplating place names which ‘can hardly ever be adapted to distinguish’, referred to districts, counties, states and countries ‘if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there’.[9] His Honour also referred to ‘large and important industrial towns or districts, and also of smaller towns and districts if they are a seat of manufacture of goods for which registration is sought’.[10] In this latter statement, Kitto J was citing, with approval, Lloyd-Jacob J from Re ‘Dan River’ Trade Mark.[11] It was found in that case that ‘the name Dan River … indicates a substantial area of the United States and which was a seat of textile manufacture’.[12] The Applicant’s goods are essentially a sub-set of vehicle parts. Churchill is a smaller town but it is not currently ‘a seat of manufacture’ of vehicle parts. The question to be asked then is, ‘How likely is it that a person choosing to start up a business manufacturing vehicle parts would choose to do so in Churchill?’.

   [9] [1964] HCA 55, [7].

   [10] Ibid (emphasis added).

   [11] (1962) RPC 157, 160.

   [12] Ibid.

3. There are probably many hundreds of locations in Australia where it is possible that vehicle parts could be produced in the future: Churchill being just one of the many. However, the manufacture of car parts is a specialised undertaking. This type of manufacturing is typically carried out in established industrial areas within large cities and, for its obvious logistical advantages, typically close to centres of vehicle manufacture. There appears to be no vehicle manufacturing in the vicinity of Churchill. Australian manufacturing generally is widely seen as ‘in terminal decline’.[13] Of particular relevance here, is that the number of vehicles manufactured in Australia is also in decline. Mitsubishi, Ford, Leyland, Nissan and Holden, as examples, no longer manufacture vehicles in Australia.[14] There is nothing before me that indicates that Churchill is a place which is well-suited to manufacturing vehicle parts.

   [13] See for example: The decline of Australian manufacturing … and the impact of COVID-19 (Web page, 14 May 2020) < See for example: Australian Government – Department of Industry, Innovation and Science, Australian Automotive Industry: Transition following the end of Australian motor vehicle production, January 2020.

4. Because of the factors stated above, it seems that the likelihood any person would, in the foreseeable future, embark on an enterprise manufacturing vehicle parts anywhere in Australia is low. That a person should choose to embark on such an enterprise and choose Churchill as the location for this endeavour seems to be vanishingly small. Thus, the answer to the second part of the two part test is that other traders are highly unlikely to legitimately need to use CHURCHILL for its geographical significance in respect of vehicle parts. For these reasons I am satisfied that CHURCHILL is inherently adapted to distinguish the Applicant’s Goods from those of other traders, and in the absence of any other ground for rejection the application must be accepted.

Decision

1. I am not satisfied that there exists a ground for rejecting the Application. Accordingly, I accept the Application.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
10 May 2021