Trade mark application number 2034004 (36) – - in the name of QWB Residential Precinct Operations Pty Ltd ATF QWB Residential Precinct Operations Trust

[2021] ATMO 2

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2034004 (36) –   - in the name of QWB Residential Precinct Operations Pty Ltd ATF QWB Residential Precinct Operations Trust

DELEGATE:

Bianca Irgang

REPRESENTATION:

Applicant: Ben Gardiner of counsel instructed by King & Wood

Mallesons

DECISION:

2021 ATMO 2

Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection under section 41(4) – evidence insufficient -

application rejected.

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No: 2034004

Trade Mark:                   (the ‘Trade Mark’)

Filing Date: 30 August 2019

Applicant: QWB Residential Precinct Operations Pty Ltd ATF QWB Residential Precinct Operations Trust

Specification of Services:

Class 36: Leasing of accommodation; rental of accommodation; accommodation letting  agency;  accommodation  bureaux  (apartments);  apartment  rental  services; apartment letting agency; management of buildings; real estate

management; provision of long-term accommodation; apartment house management; real estate management services including property management and administration; acquiring and managing real estate for investors; leasing of real estate; renting of apartments; real estate agency services; body corporate management services; insurance and financial services in relation to real estate and investment; financial management services for apartments, resorts and hotels; financial sponsorship of education, training, entertainment, sporting or cultural activities; development, management, sale and financing of real estate; issuing of vouchers, tokens or other means of value in relation to the supply of benefits for customer loyalty programs; issuing gift vouchers; management of value accounts in customer loyalty program; credit card services; issuing and distributing vouchers or any other means of payment or exchange; management of calculation of offers or other reductions and management of value accounts in customer loyalty program

1. The application was examined as required under section 31 of the Act and grounds for rejection were raised under section 41(4). The examiner’s first report provided:

   Your trade mark is the letter Q. Single letters carry little capacity to distinguish. The letter Q, in particular, is commonly used to indicate the state of Queensland. Other traders should be able to use this letter in connection with goods or services similar to yours. Please note that the particular way your trade mark is represented does not alter its common meaning. The main feature of your trade mark remains Q.

1. The applicant was then given the option of providing evidence of use to overcome the ground for rejection. The applicant’s legal representative responded by submitting arguments that the Trade Mark was prima facie capable of distinguishing the applicant’s services due to its distinctive features.

1. The examiner maintained the ground for rejection under section 41(4). The second report from the examiner stated:

I note the comments regarding the features which the submissions assert render the mark distinctive. The submissions flag the colour of the Q. Registrations for trade marks in Australia are not limited to the colour of the mark in the representation supplied. The submissions describe the font as "unusual" but it is quite a simple font and does not have any unusual features. The submissions describe the "wave" underneath, asserting it is a visual cue that will bring to mind the water and the applicant's services, consumers are likely to see it simply as an underline. The use of underlines is extremely common and not a distinctive visual feature. It is mere embellishment. Considered as a whole, the mark is the letter Q in a simple font with an underline.

1. The examiner remained unconvinced by the applicant’s submissions and pointed out that the applicant may be able to overcome the ground for rejection through the provision of evidence. Duly, the applicant requested to be heard on the matter as allowed by section 33(4) of the Act and filed some evidence for consideration by the Hearing Officer. The hearing took place in Canberra on 4 September 2020. Ben Gardiner of counsel instructed by King & Wood Mallesons made

representations on behalf of the applicant. I conducted the hearing and the following constitutes the reasons for my decision made as a delegate of the Registrar of Trade Marks.

The Law

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.

Note2:    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).

1. The first step, in terms of sections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the services of the applicant from the similar services of other persons.

1. The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks1 where Kitto J said:

   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,

1 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14; [1965] ALR 344 at 345–6, (Kitto J).

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.

1. This reasoning relates to services just as it does to goods. The consideration of inherent adaption to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods” per Justice Kitto in F.

   H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.2

1. Trade marks that are not inherently adapted to distinguish goods and services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographic origin, or some other characteristic, of goods or services, or the time of production of goods or the rendering of the services. In other words, these are trade marks that consist of words or graphical elements that are likely to be required by other traders in the same industry in the ordinary course of conducting their business. If the trade mark is found to lack inherent adaptionto distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods/services through its use in trade.3

1. Justice Branson sets out the way to registration for such applications by means of the combined effect of the ‘extent’ that the trade mark is ‘inherently adapted to distinguish the designated goods or services’ as being those of the applicant; and ‘the use, or intended use, of the trade mark by the applicant’ and ‘any other circumstances’.

1. In this case, the applicant’s primary argument is that the Trade Mark is capable of distinguishing as other traders would not need to use the letter Q stylized with a waving line under it in regards to

2 (1965) 112 CLR 537).

3 Blount Inc v Registrar of Trade Marks supra.

their management and accommodation services in the ordinary and legitimate course of trade. Mr Gardiner, counsel for the applicant, stated that the Trade Mark is inherently capable of distinguishing the services as those being of the applicant because:

(1)The letter Q is not “directly descriptive” of the services and has no ordinary signification at all; and

(2)The Trade Mark consists of more than just the letter Q as it is in a particular font and style and also has the wave device underneath the Q; and

(3)Other traders are unlikely to need to use the Trade Mark, in good faith, in relation to services which are the same as or similar to the services of the applicant.

1. In regards to these points, Mr Gardiner referred me to Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’)4 and explained that consideration of the ordinary signification of the words used in the Trade Mark was crucial. He went on to explain that the letter Q has no ordinary meaning and that while it is sometimes used to indicate the state of Queensland it is also used as an abbreviation for the word ‘question’ or for ‘queen’ and that none of these uses amount to an ordinary signification because it does not fall into any of the categories identified by the High Court in Cantarella.

2. Mr Gardiner further pointed out that the Trade Mark is also not simply the letter Q but a stylized version of that letter, in a particular font and with a complementary wave-like device immediately below it. He posits that this is not a case where the mark applied for consists of letters “represented in a plain tyle without any embellishment”5. Mr Gardiner directed me to the Trade Marks Office Manual of Practice and Procedure which provides in part 22:

   8.1 Single letter trade marks Single letter trade marks without “get up” are generally not prima facie capable of distinguishing. The likelihood of other traders needing to use a simple, unembellished single letter in the form of initials or abbreviations is quite high (e.g. the letter M is commonly understood to indicate “mobile” in relation to phones and the letter E is commonly used to indicate a wide fitting in relation to shoes). One letter trade marks, unless represented in an unusual manner, generally possess limited inherent adaptation to distinguish and usually require evidence of use.

   ...

   8.8 Trade marks containing letters and other material

4 (2014) 254 CLR 337

5 Effem Foods Pty Ltd v Marks & Spencer PLC (1999) 47 IPR 213 at 220; GAP (ITM) Inc v General Pants Co Pty Ltd

(2004) 60 IPR 486 at [16]

A trade mark comprising one letter and other material which serves only to emphasise the letter or does not diminish the impact of the letter, is generally considered to have a low level of inherent adaptation to distinguish. The addition of mere borders or decorative features of a non-significant character to trade marks consisting of one letter may not create a trade mark which is sufficiently adapted to distinguish. However a trade mark must be considered in its entirety and if a trade mark containing one letter also contains other material of a significant nature, the combination could be prima facie capable of distinguishing

1. Mr Gardiner states that the Trade Mark is stylized with the wave device which is significant and sufficiently adapts the Trade Mark to distinguish the services of the applicant. He relies on the fact that a number of other stylized letter “Q” trade marks have obtained registration for various goods and services and that they are no more stylized than the Trade Mark. These registrations are:

1. Given all of the above, Mr Gardiner concluded that given the lack of any ordinary signification, it is unlikely that any other traders will need to use the Trade Mark in reference to their own services. I do not agree with this reasoning.

2. A consideration of the Trade Mark reveals that it is the letter “Q” in what appears to be a very basic and non-stylised font:

Trade Mark	Letter “Q” in the font ‘Times New Roman’
Q

1. While I note that the Trade Mark does contain the ‘wave’ device, I do not agree with Mr Gardiner that this wave device is significant and sufficiently adapts the Trade Mark to distinguish the services of the applicant. Rather, I consider it to be more in line with an addition of a slightly decorative underline which is of non-significant character and is not sufficient to adapt the Trade Mark to distinguish. Indeed, the reason why I am satisfied that a ground for rejection under section 41(4) applies rather than a ground for rejection under section 41(3) is solely because of this underline.

1. As for Mr Gardiner’s argument that the letter “Q” is not “directly descriptive” of the services and has no ordinary signification at all, I am satisfied that the likelihood of other traders needing to use a simple, unembellished single letter in the form of initials or abbreviations is quite high particular since Q can also be an abbreviation for any word beginning with the letter “Q” including “Quality” which would be quite descriptive of any of the applicant’s services or any other trader’s goods and services. I am satisfied that a section 41(4) ground for rejection applies to the Trade Mark.

1. Mr Gardiner provided additional submissions in the event of my finding that a section 41(4) ground for rejection applied and directed my attention to the evidence of use and reputation filed by the applicant.

1. The evidence put forward by the applicant is in the form of:

(1)Declaration by Simon Peter Victor Crooks, the Project Director of Destination Brisbane Consortium, dated 18 August 2020 (‘Crooks declaration’) accompanied by Exhibits SPVC-1 to SPVC-13.

1. Mr Crooks states that the applicant has used the Trade Mark to market and promote the Queen’s Wharf Residences since November 2019. The Queen’s Wharf Residences are physically located in Brisbane, Australia and when finished will comprise of three residential towers and 2,000 residential

apartments. The Queen’s Wharf Residences are part of the multi-billion dollar QWB development which is an project located on the corner of George Street and Alice Street in Brisbane City, Queensland. The project was under construction at the time that Mr Crooks made his declaration and it is anticipated to be completed by 2024.

1. According to the Crooks declaration, the applicant has advertised its services under the Trade Mark in a multitude of ways including:

   (1)various forms of printed material to advertise the Queen’s Wharf Residences including books, brochures and banners of which around 2000 copies of these printed materials have been distributed to 24 real estate agencies6; and

   (2)the applicant’s website at which attracts hundreds of views each day7; and

   (3)through the applicant’s social media pages including its Facebook™ account and Instagram™ account8; and

   (4)on outdoor billboards in high traffic locations around Brisbane and the Gold Coast including Queen Street Mall, Queens Plaza, King George Square and Pacific Fair from December 2019 to June 20209; and

   (5)in video clips that have appeared online as well as used in a Channel 9 TV commercial shown in Australia on free-to-air television in July 202010; and

   (6)third party advertising including on the Domain™ website11, and through real estate agents12 and online news reports13.

1. Mr Crooks avers that the expenditure on the Trade Mark and through promoting the Queen’s Wharf Residences is considerable although I note that the figure provided by Mr Crooks includes the construction of a display suit for the Queen’s Wharf Residences. The applicant has already sold a number of residences which has generated considerable revenue. While the actual sales and advertising figures are considerable, whether that fact amounts to clear evidence that the Trade Mark is acting as a badge of origin for the applicant requires further investigation.

6 Exhibit SPVC-1 and SPVC-3 accompanying the Crooks declaration.

7 Exhibit SPVC-4 accompanying the Crooks declaration. 8 Exhibit SPVC-5 accompanying the Crooks declaration. 9 Exhibit SPVC-6 accompanying the Crooks declaration. 10 Exhibit SPVC-7 accompanying the Crooks declaration.

11 Exhibit SPVC-11 accompanying the Crooks declaration. 12 Exhibit SPVC-12 accompanying the Crooks declaration. 13 Exhibit SPVC-13 accompanying the Crooks declaration.

1. When I consider the applicant’s evidence, I am faced with the difficulty in determining how much of the evidence actually demonstrates that the Trade Mark as applied for is acting as a badge of origin for the applicant. This is because the Trade Mark is often used in conjunction with or under the cover of the following:

(“Queen’s Wharf Residences trade mark”)

1. The evidence of use that the applicant provided contained over 200 representations of the Trade Mark in a variety of situations but the overwhelming majority of these include one or more other distinctive trade marks owned by the applicant such as the Queen’s Wharf Residences trade mark represented in the above paragraph. The majority of examples of the Trade Mark provided in the evidence show that it is closely used with the words “Queens Wharf Residences” in the above format and given this fact, I am unable to know how much of the advertising expenditure of sales revenue generated by the applicant has been in regards to the Trade Mark solus or the applicant’s Queen’s Wharf Residences trade mark.

1. The applicant’s evidence of its use of the Trade Mark solus acting as a distinctive trade mark and badge of origin for the applicant is limited. There is no reason the applicant cannot use one, two or several trade marks together in its advertising or packaging. However, the vast majority of all the advertisements and press releases show what Jacob J described in Phillips Electronics NV v Remington Consumer Products Ltd14 as a ‘limping mark’; that is, the Trade Mark is more often than not accompanied by the Queen’s Wharf Residences trade mark in a more prominent position. An example of this is where the Queens Wharf Residences trade mark is on the front page with the Trade Mark forming the pattern within the wallpaper background.

14 (1997) 40 IPR 279

1. I also turn to the reasoning provided in the Treat decision15 where Jacob J of the UK High Court of Justice considered the evidence provided in the action between the parties. He said:

   I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.

1. Justice Jacob then went on to say the following:

It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.

1. I consider, from what is demonstrated in the evidence before me, that the applicant’s and third party use of the Trade Mark in conjunction with the Queen’s Wharf trade mark and identifiers shows that Trade Mark does not distinguish the applicant on its own. Nor does the evidence provided sufficiently demonstrate that Trade Mark has acquired a meaning related to the applicant which overshadows its more descriptive meaning and common meaning as an initial and letter of the alphabet. The applicant’s evidence does not satisfy me that the Trade Mark is capable of distinguishing the applicant’s services from the similar services of other traders. As the applicant’s evidence is insufficient to overcome the section 41(4) ground for rejection, I have no recourse except to reject the Trade Mark.

Decision

1. 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:

15 British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

(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.

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

Note:       For applicant see section 6.

1. I am satisfied that there is a ground under section 41(4) of the Act for rejecting trade mark application no. 2034004 and I hereby reject it.

Bianca Irgang Hearing Officer

Trade Marks Hearings 8 January 2021