Trade mark application number 2050200 (class 9, 38, 42) – CYBERSECURE - in the name of Cybersecure Pty Ltd
[2020] ATMO 186
•4 December 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2050200 (class 9, 38, 42) – CYBERSECURE - in the name of Cybersecure Pty Ltd
Delegate:
Jock McDonagh
Representation:
Applicant: Chris Round of K & L Gates Lawyers
Decision:
2020 ATMO 186
Trade Marks Act 1995 (Cth) – Request to be heard under s 33 – section 41 considered trade mark not to any extent inherently adapted to distinguish – evidence not sufficient – trade mark rejected.
Background
On 12 November 2019 Cybersecure Pty Ltd (‘the Applicant’) filed an application to register the trade mark detailed below:
Application Number:
2050200
Goods:
Class 9: Data processing equipment and computers; firewalls; computer security software; backup software; application software; hosted software; database management software; data backup software; software for archiving and retrieving data; computer software for encryption and decryption; computer software for data transmission, storage, processing and reproduction; computer software for accessing, querying and analysing information stored in databases and data warehouses; computer software to automate data warehousing; computer hardware and software automation systems comprised of a network of servers and connected apparatus that support customer information technology systems
Class 38: Technological services, namely, providing access to databases; technological services, namely, transmission of database information via telecommunications networks; technological services, namely electronic data transmission; technological services, namely, providing access to remotely hosted computer applications through the internet
Class 42: Design and development of computer software, installation and maintenance of computer software and hardware, computer consultancy, computer data recovery; computerised data storage services; data storage (other than physical storage); development of systems for the processing and storage of data; electronic data storage; hosting of databases; off-site data backup (online); recovery of computer data; hosting of software as a service (SaaS); back up services for software as a service (SaaS); advisory services relating to computer software; computer security services (design and development of secure computer hardware, software and systems); computer security services (programming and software installation repair and maintenance services); computer software advisory services; computer software consultancy; technological services, namely, computer security services in the nature of maintaining security and integrity of databases and digital information; design and development of computer software; providing temporary use of on-line non-downloadable cloud computing software for use in electronic storage of data; platform as a service (PaaS) featuring computer software platforms for data warehousing and management; software as a service (SaaS) featuring computer software for data warehousing and management; technical support and consultation services for data warehousing systems; development, updating and maintenance of software and database systems; monitoring of computer systems by remote access; monitoring of computer systems for detecting unauthorised access or data breach; monitoring of computer systems to detect breakdowns; remote monitoring of computer systems (‘the Goods and Services’)
Trade Mark:
CYBERSECURE
(‘the Trade Mark’)
2. The application was examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’) and on 7 April 2020 the examiner issued a first adverse report. The examiner indicated that there was a ground for rejecting the application under s 41 of the Act on the basis that the Trade Mark was not to any extent inherently adapted to distinguish the Goods and Services from the goods or services of other traders. It was the examiner’s view that the Trade Mark indicated that the ‘claimed goods and services relate to security within digital environments. Therefore [the] trade mark acts as a descriptor of the nature of [its] goods and services, rather than distinguishing them from those of other traders. Other traders should be able to use CYBERSECURE, or something nearly resembling this in connection with goods or services similar to yours’.
3. The Applicant responded on 5 June 2020 with submissions which were prepared by its legal representatives, K & L Gates, along with a declaration by Rene Badalassi dated 1 Jun 2020 providing evidence of use of the Trade Mark. The submissions centred on the Applicant’s view that the Trade Mark is at least to some extent inherently adapted to distinguish and should be decided under s 41(4) of the Act. The examiner was not persuaded by the submissions and on 17 June 2020 she issued a second adverse report maintaining the ground for rejection of the application. The second report included the examiner’s views that:
The trade mark as applied for is the term CYBERSECURE. As per the first report, this term has an ordinary signification with regards to the goods and services claimed. In particular, it refers to the goods and services as helping its target to possess or achieve security in relation to digital, or cyber, platforms. CYBERSECURE is well-known in the English vernacular in relation to this application of the term. For this reason I am maintaining the ground for rejection applies under sub-section 41(3) of the Act, as opposed to section 41(4) as you have submitted, as the trade mark has no inherent adaptation to distinguish. Please note that this consideration has been done in consultation with a principal examiner.
…
While I acknowledge that the contents of some of the pages of information contain the term CYBERSECURE by itself, this is generally in reference to the company name, rather than use as a trade mark, or badge of origin. Indeed, one of the service documents provided in evidence defines the use of the term CYBERSECURE as being CYBERSECURE Pty Ltd, the company (and its agents). Use as a trade mark is indicated by the prominent use of the logo at the beginning of a document, or its being ‘stamped’ at the bottom of each page.
…
Having considered your statutory declaration and all the evidence provided, I am not satisfied that the term CYBERSECURE has been used so extensively by itself that customers identify that as referring to your services as distinct from similar goods and services provided by other traders.
4. As is its right under s 33(4) of the Act, on 6 July 2020 the Applicant requested to be heard by video conference. As a delegate of the Registrar of Trade Marks, I heard oral submissions from the Applicant on 21 August 2020 by video conference. The Applicant was represented by Chris Round of K & L Gates. Mr Round’s oral submissions were supplemented by written submissions provided to me prior to the hearing. No further evidence of use of the Trade Mark by the Applicant was provided, the Applicant relied on the declaration by Rene Badalassi of 1 June 2020.
The Law in Respect of s 41
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. Mr Round raised the issue of the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:
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 Marks[1] (‘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:
[1] (1998) 40 IPR 498, 505.
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 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:
(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or
(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or
(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] 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 [Applicant’s Services]. [that is, s 41(4) applies][2]
[2] [2017] ATMO 25, [38]-[40].
7. 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 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]
Is the Trade Mark to any extent inherently adapted to distinguish the Applicant’s Goods and Services from the goods or services of other persons?
[3] [2017] FCAFC 56 at [236].
8. The Applicant does not concede in its submissions that the Trade Mark lacks inherent distinctiveness but submits that the Trade Mark is at least to some extent inherently adapted to distinguish the Applicant’s Goods and Services (that is, s 41(4) applies). Its submissions in respect of this point are summarised below.
9. Mr Round submitted that the Trade Mark is not one that other traders would need to use, because it is not descriptive of the goods and services. Further, CYBERSECURE is not a word. He submitted that while ‘cyber security’ was well known in the English language CYBERSECURE is not. Furthermore, CYBERSECURE is not the only way to describe the goods and services in the specialised industry of cyber security and information technology. The Applicant provided a list of is some 32 possible alternatives.
10. Mr Round contends that CYBERSECURE is not a word. I do not agree. The Trade Mark is an obvious compound word beginning with the combining form ‘cyber-’ with the word ‘secure’.
11. The Oxford Dictionary (3rd ed.) defines ‘cyber-’ as ‘a combining form relating to electronic communication networks and virtual reality’, and secure as ‘2. certain to remain safe and unthreatened … protected against attack or other criminal activity’ (as an adverb) and ‘protect against threats; make safe’ (as a verb).
12. Therefore, CYBERSECURE relates to electronic communication networks and virtual reality being protected against criminal or unauthorized use of electronic data, or protected against such cyber threats. It is not an invented word.
13. The Full Court of the Federal Court considered what qualifies as an invented word in Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks[4]:
“However, the mere fact that a word is newly coined, ie that the particular array of letters has not previously been used to constitute a word, is not sufficient to establish its character as an invented word. In Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (the Rohoe case) there was unanimity on the appropriate principle to be applied, though division on its applicability to the word “Rohoe” there under consideration. In addition to its being newly coined Dixon J said at 181:
The materials from which such a word has been fashioned cannot be neglected and if it is compounded of elements of which the source is manifest and the intended meaning is transparent, it becomes a question whether there is anything more than a colourable attempt at reproducing some of the sounds and all the sense of an expression belonging to common speech.
…. In order to qualify as an invented word under s 24(1)(c) of the Act, a word must be both newly coined and convey no obvious meaning to ordinary Australians. The word “hairfusion” fails the second limb of this test, being obviously composed of the elements “hair” and “fusion” and conveying the meaning of the fusion, mixing, integration or joining of hair.” (citations omitted)
[4] Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 at p3, refusing registration of HAIRFUSION in Part A under s 24 of the 1955 Act.
14. In Apple Inc v Registrar of Trade Marks, Yates J adopted a similar approach, finding that even if Apple Inc was the first to use the combination APP STORE, “… the words in that combination bore no more than their ordinary signification when applied to the designated services in class 35”[5].
[5] Apple Inc v Registrar of Trade Marks (2014) 109 IPR 187 at [212].
15. Here, the compounding of the words “cyber” and “-secure” results in an obvious intended meaning which references the security provided by the Goods and Services.
16. The fact that a word is unusual or ungrammatical does not make it inherently distinctive. In Mark Foy’s Ltd v Davies Co Op & Co Ltd[6], Williams J observed:
“I think one has to look at the word which is registered, not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and to form an opinion.”
[6] (1956) 1A IPR 470 at 475 quoting Lord Hanworth in Re Keystone Knitting Mills Application (1928) 45 RPC 421 at 426.
17. The IP Australia Trade Marks Examiners’ Manual recognises the constantly changing nature of language and counsels:
“Examiners should take this into account when assessing the registrability of trade marks and you try to be aware of emerging trends in the use of language … Many areas including modern technology, the Internet and fashion develop new language and new uses of existing languages which quickly become generic.”[7] (emphasis added)
[7] Part 21 Paragraph 14.
18. CYBERSECURE is word with an ‘ordinary signification’ when thinking of the goods and services claimed. In particular, the word refers to the Goods and Services as helping the Applicant’s clients to possess or achieve security in relation to electronic communication networks and platforms.
19. The likelihood of other providers of similar goods and services wishing to use CYBERSECURE in relation to their goods or services is well within the measure in Clark Equipment Co v Registrar of Trade Marks[8], namely that adaptation to distinguish is to be tested by reference to the likelihood that other persons, being actuated only by proper motives, would want to use the trade mark in connection with similar goods or services.
[8] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 5148
20. In Cantarella, [9] the High Court emphasised the “requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business.”[10]
[9] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 (Cantarella) at [70] – [71].
[10] Cantarella at [44].
21. In Kenman Kandy, the Full Court observed that the ultimate question under s 41 requires “a practical evaluative judgement about the effects of the relevant mark in the real world”.[11] The effect of registration of the Trade Mark in the market for cyber security and information technology would be precluded from using an aptly descriptive term in connection with them.
[11] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 944 at [47] per French J.
22. In my opinion, the Trade Mark is not to any extent inherently adapted to distinguish the Goods and Services. Therefore, I am required to reject the application only if the Applicant has not used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Goods and Services as being those of the Applicant.
23. The evidence of use provided to the examiner and relied upon here (albeit with tacit concession by Mr Round that it would not satisfy s41(3), but should satisfy s41(4)) does not, in fact, distinguish the Goods and Services from the goods and services of other traders, as the evidence only shows use of the word as part of a business name, while the apparent badge of origin is a logo device. I am not satisfied that the term CYBERSECURE has been used so extensively by itself that customers would identify it as referring to the Goods and Services as distinct from similar goods and services provided by other traders.I am not satisfied that the evidence demonstrates that the Trade Mark by itself functions as a badge of origin for the Applicant’s Goods and Services in Australia.
Decision
24. 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.
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.
25. I am satisfied that there is a ground for rejecting the Trade Mark under s 41(3) of the Act. As such, I reject trade mark application 2050200 in accordance with s 33(3) of the Act. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.
Jock McDonagh
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
4 December 2020
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