Trade mark application number 2051829 (classes 9, 35, 36) – AUSTRALIAN BUSINESS GROWTH FUND – in the name of Australian Business Growth Fund Pty Ltd

[2021] ATMO 141

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2051829 (classes 9, 35, 36) – AUSTRALIAN BUSINESS GROWTH FUND – in the name of Australian Business Growth Fund Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Applicant: David Larish of counsel instructed by King & Wood Mallesons
Decision:	2021 ATMO 141 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 41 considered – trade mark not capable of distinguishing – evidence insufficient – limitation to specification not sufficient – amendment to specification – trade mark application accepted.

Background

1. National Australia Bank Limited filed an application to register a trade mark on 19 November 2019. The current details of the application are reproduced below:

   Trade Mark:               AUSTRALIAN BUSINESS GROWTH FUND (‘Trade Mark’)

   Owner:  Australian Business Growth Fund Pty Ltd[1] (‘Applicant’)

   Application no.:         2051829

   Filing Date:                19 November 2019

   Specification:             An indicative specification is provided below. The full specification (‘Claimed GS’) appears in an annexure to this decision.

   Class 9: (including) apparatus for recording, transmission or reproduction of sound or images; downloadable electronic publications; downloadable audio, video and audiovisual content provided via computer and communications networks; computer hardware; computer software; parts and accessories for the aforementioned goods

   Class 35: (including) advertising, marketing and promotional services; business management; business information; retail services; business planning, analysis and organisation assistance, advice and consultancy; business surveys, appraisals, inquiries and research; economic forecasting and analysis for business and/or financial purposes; market analysis, research and monitoring services for business and/or financial purposes

   Class 36: (including) insurance; financial affairs; superannuation services; financial planning; research services relating to banking, finance, investment, management funds and real estate; financial and investment services; share brokerage; stock brokerage services; real estate services including acquisition and management for investments and leasing

   [1] A request to assign the application from National Australia Bank Limited to Australian Business Growth Fund Pty Ltd was filed on 24 February 2021 and this assignment was subsequently published on 26 February 2021.

2. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and a first examination report raising a ground for rejection under s 41 of the Act was issued to the Applicant. The following rationale was provided:

   Your trade mark is AUSTRALIAN BUSINESS GROWTH FUND.

   A BUSINESS GROWTH FUND is a FUND intended to support BUSINESS GROWTH. It is a term in use around the world to refer, in particular, to FUNDS, often government supported, to which small business can apply for an investment in support of their GROWTH.

   Your trade mark suggests your Class 36 services are or relate to the provision of a BUSINESS GROWTH FUND that is AUSTRALIAN and various of your claims in Classes 9 and 35 relate to an AUSTRALIAN BUSINESS GROWTH FUND.

   Other traders should be able to use AUSTRALIAN BUSINESS GROWTH FUND in connection with goods or services similar to yours.

3. The Applicant filed submissions disputing the ground for rejection. In short, it asserted that the Trade Mark was inherently distinctive of the Claimed GS and, at worst, the Trade Mark was capable of being accepted under the provisions of s 41(4) of the Act. As to the latter, particular emphasis was placed on the phrase ‘AUSTRALIAN BUSINESS GROWTH FUND’ being created under the Australian Business Growth Fund Bill 2019 (Cth). The examiner disagreed and maintained the ground for rejection, noting that the other circumstances relied upon did not justify acceptance of the application.

4. The Applicant responded by reiterating its initial submissions and filing evidence of use which consisted of a declaration made on 5 March 2021 by Anthony Healy, Chief Executive Officer and Managing Director of the Applicant, with Exhibits AH-01 to AH-13 (‘Healy Declaration’).

5. According to the Healy Declaration, the Applicant was incorporated on 24 September 2020 and is funded by a consortium of entities.[2] Mr Healy explains that the ‘AUSTRALIAN BUSINESS GROWTH FUND’ is ‘a collaboration between the Australian government and private sector to create a fund to provide longer term equity and funding to [small and medium sized enterprises] with the aim of supporting innovation and growth in such businesses’.[3] Initial discussions regarding the fund’s creation commenced in 2018 and its establishment was announced by the Treasurer of Australia on 27 November 2019. Mr Healy states that the purpose of the fund is to ‘offer growing, established companies and entrepreneurs long-term patient capital and strategic support (including mentoring) to assist them to reach their growth potential’.[4] The fund itself is modelled on similar business growth funds that have been established in the United Kingdom and Canada.

   [2] The consortium is comprised of the Commonwealth of Australia as represented by the Department of the Treasury, National Australia Bank Limited, Commonwealth Bank of Australia, Westpac Banking Corporation, Australia and New Zealand Banking Group Limited, HSBC Bank Australia Limited and Macquarie Bank Limited.

   [3] Healy Declaration, [19].

   [4] Ibid [22].

6. According to the Healy Declaration, the Trade Mark has been used since 2018. The Trade Mark has appeared in various media releases as well as on the websites of entities belonging to the consortium who established the Applicant. It has also been promoted across social media and national publications. Mr Healy cited the Australian Business Growth Fund (Coronavirus Economic Response Package) Act 2020 (Cth) and claimed that this legislation ‘clearly anticipates there being one, and only one, AUSTRALIAN BUSINESS GROWTH FUND’.[5]

   [5] Ibid [45].

7. Unconvinced, the examiner maintained the s 41 ground for rejection. At this point, the Applicant exercised its right to be heard. A hearing was scheduled and the Applicant was invited to file further submissions and/or evidence. Written submissions (‘Submissions’) were filed and, as a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 6 August 2021. David Larish of counsel presented submissions on the Applicant’s behalf.

8. As a preliminary observation, I note that the ground for rejection must be considered afresh. Furthermore, s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration, unless it is satisfied that there are grounds under the Act for rejecting it or the application has not been made in accordance with the Act.

   Section 41

9. Section 41 of the Act relevantly provides:

   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.

   …

   (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.

10. To determine the merits of the s 41 ground for rejection, the extent of the Trade Mark’s inherent adaptation to distinguish the Claimed GS must be considered. This is assessed:

    [B]y 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.[6]

    [6] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).

11. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[7] indicated that the test for distinctiveness under s 41 of the Act is a two-step process. First, the ordinary signification of the trade mark, in Australia, to persons who will purchase, consume or trade in the goods must be discerned.[8] Once the ordinary signification is established, consideration must then be given to whether other traders might legitimately desire to use the trade mark for the sake of its ordinary signification in respect of the same or similar goods. Although devised in the context of goods, this process is equally applicable to services.

    [7] [2014] HCA 48 (‘Cantarella’).

    [8] Ibid [71] (French CJ, Hayne, Crennan and Kiefel JJ).

12. The Submissions contend that the Trade Mark is inherently adapted to distinguish the Claimed GS. Emphasis was placed on the fact that the Trade Mark comprises a combination of words which must be considered as a whole. The Applicant claimed that the Trade Mark was allusive and a consumer ‘would not immediately understand what the Mark conveyed’.[9] To illustrate this alleged ambiguity, the Submissions outlined that the Trade Mark was open to suggesting:

    i.      a vehicle for investors (e.g. a mutual or hedge fund) to invest in high growth Australian businesses in the hope of securing a high investment return (i.e. high risk, potential high return);

    ii.an Australian vehicle for investors to invest in high growth businesses in the hope of securing a high investment return;

    iii.an investment vehicle or opportunity for Australian businesses seeking to achieve growth;

    iv.money pooled by Australian businesses to establish an alliance or industry body targeted at business growth (e.g. by lobbying government);

    v.money pooled for use in facilitating the growth of Australian businesses.[10]

    [9] Submissions, [22].

    [10] Ibid [23].

13. In the Applicant’s view, the Trade Mark has no direct meaning or description in connection with the Claimed GS given none of the above listed meanings are sufficiently definite. The Applicant further pointed to the absence of any evidence of other traders having used the Trade Mark in respect of the Claimed GS. The Applicant posited that this ‘ineluctably leads to the conclusion that the Mark is inherently adapted to distinguish’.[11]

    Ordinary signification

    [11] Ibid [29].

14. The Trade Mark is comprised of four common and well understood English words. The word ‘Australian’[12] means belonging or relating to Australia and ‘business’[13] refers to an organisation that provides goods or services for profit. Meanwhile, ‘growth’[14] denotes the process of growing and ‘fund’[15] refers to a pool of money set aside for a particular purpose or the organisation that manages the same. When this combination of words, as sequenced, is considered in its entirety, ‘AUSTRALIAN BUSINESS GROWTH FUND’ has an ordinary signification which describes the nature of the provider and the purpose of the goods and services. That is, when considered as a whole phrase, the Trade Mark’s ordinary signification is that of a fund which manages money for the purpose of Australian business growth.

    [12] Macquarie Dictionary (online at 1 November 2021) ‘Australian’ (def 1) may be defined as ‘of or relating to Australia’.

    [13] Macquarie Dictionary (online at 1 November 2021) ‘business’ (defs 2 and 3) may be defined as ‘the sale of goods and services for the purpose of making a profit’ and ‘a person, partnership, or corporation engaged in business; an established or going enterprise or concern: a clothing business’.

    [14] Macquarie Dictionary (online at 1 November 2021) ‘growth’ (def 1) may be defined as ‘the act, process, or manner of growing; development; gradual increase’.

    [15] Macquarie Dictionary (online at 1 November 2021) ‘fund’ (defs 1 and 3) may be defined as ‘a stock of money or pecuniary resources’ and ‘an organisation which manages money invested for a particular purpose, such as superannuation’.

15. In relation to the alleged ambiguities of the Trade Mark which, in the Applicant’s opinion, renders it incapable of ordinary signification, I note a similar line of argument was advanced in Bendigo and Adelaide Bank Limited v Community First Credit Union Limited (‘Bendigo’).[16] In rejecting this argument, it was observed that ‘the existence of more than [one] possible meaning does not mean that a term is not capable of ordinary signification’.[17] In the current matter, for the reasons detailed above, I consider that the Trade Mark has a clear ordinary signification of describing a fund that manages money for the purpose of Australian business growth.

    [16] [2021] FCAFC 31, [74] (Middleton and Burley JJ) (‘Bendigo’).

    [17] Ibid [107].

16. The evidence exhibited to the Healy Declaration reinforces this ordinary signification insofar as it demonstrates that a business growth fund was a known concept prior to 19 November 2019.[18] Relevantly, the impetus for establishing the Applicant arose from the ‘Affordable Capital for SME Growth’ report released in June 2018 by the Australian Small Business and Family Enterprise Ombudsman. This report considered, amongst other things, business growth fund models in Britain and Canada and recommended establishing a business growth fund ‘focussed on long-term funding solutions for SMEs’ in Australia.[19] Supplementing this is an article published in November 2018 which discusses the potential formation of a ‘domestic business growth fund’ to provide the business sector with greater access to capital.[20] This ordinary signification was further reflected in the joint media release issued by the Treasurer of Australia and the Minister for Small and Family Business, Skills and Vocational Education in November 2018 which encouraged ‘the establishment of an Australian Business Growth Fund to provide longer term equity funding’.[21]

    [18] See Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [59] wherein Justice Yates stated that registrability under s 41 of the Act must be assessed at the filing date of the application.

    [19] See Exhibit AH-02 to the Healy Declaration.

    [20] See Joyce Moullakis, ‘UK-style growth fund gets support’ (11 November 2018) The Australian in Exhibit AH-04 to the Healy Declaration.

    [21] See Department of Education, Skills and Employment (Cth), ‘$2 billion fund to transform small business access to funding’ (Joint Media Release, 14 November 2018) in Exhibit AH-07 to the Healy Declaration.

17. Accordingly, the ordinary signification of the Trade Mark in connection with the Claimed GS is immediately apparent. In relation to the class 36 services, the Trade Mark directly describes the various financial, investment and real estate services as being, or for the purposes of, an Australian business growth fund. With respect to the class 35 services, the Trade Mark describes the various business, analysis and advisory services as being provided in relation to an Australian business growth fund. Equally, it describes the subject matter of the various advertising, marketing and retail services claimed. For example, the Trade Mark describes the retail services as being the retailing of memberships to an Australian business growth fund. With regard to the class 9 goods, the Trade Mark describes the subject matter of the downloadable publications and audio-visual content as pertaining to an Australian business growth fund. Likewise, the Trade Mark describes the various software and computer programs as relating to an Australian business growth fund. For the remainder of this decision, all of the aforementioned goods and services will be referred to as the Identified GS.

18. For completeness, I consider the Trade Mark is inherently adapted to distinguish the various computer apparatus, hardware and devices in class 9 of the Claimed GS. This is because the phrase ‘AUSTRALIAN BUSINESS GROWTH FUND’ does not describe the subject matter, quality or some other characteristic of such goods.

    Other traders

19. Pursuant to Cantarella, the next step involves determining whether other traders would legitimately desire to use the Trade Mark for the sake of its ordinary signification in respect of their own goods and/or services.

20. The Submissions highlighted that there is no evidence of other traders having used the Trade Mark as at 19 November 2019. The Applicant characterised this as being a ‘critical matter’ and a compelling indicator that the Trade Mark is inherently adapted to distinguish the Identified GS.[22] I disagree. It is well established that whether a trade mark is inherently adapted to distinguish the relevant goods or services is fundamentally based on the nature of the trade mark itself.[23] To this end, it was recently observed in Bendigo that:

    evidence of actual use by other traders is not strictly required for the purpose of s 41(3) of the TM Act. The focus is instead on the likelihood of other traders having a legitimate desire to use the trade marks[24]

    [22] Submissions, [26]–[29].

    [23] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7] (Gibbs J).

    [24] Bendigo (n 16) [121]. Although expressed as being in relation to 41(3), this observation equally applies to s 41(4) of the Act.

21. The Trade Mark is comprised of the plain words ‘AUSTRALIAN BUSINESS GROWTH FUND’. This combination of words has been arranged in a logical and grammatically correct sequence. Simply put, there is nothing skilful or covert about its construction. Further, the Trade Mark is completely devoid of any embellishments or device elements which could potentially diminish the likelihood of other traders legitimately desiring to use the Trade Mark.  

22. The phrase ‘AUSTRALIAN BUSINESS GROWTH FUND’ is a direct description of a fund that provides various financial, investment and real estate services in support of Australian business growth. Likewise, the Trade Mark is descriptive of a characteristic of the Identified GS. On this basis, I am satisfied that the Trade Mark is a phrase that other traders would legitimately desire to use in order to describe similar goods and/or services.

1. In my assessment, the Trade Mark is not to any extent inherently adapted to distinguish the following claims: all services in class 36; the advertising and marketing services in class 35; and the downloadable publications and audio-visual content in class 9. With respect to the remaining goods and services of the Identified GS, I consider that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish these goods and services because it does not directly describe same. Normally, whether a Trade Mark falls for consideration under s 41(3) or s 41(4) of the Act is significant because this affects the type of evidence which may be considered. However, in the present circumstances, nothing turns on this distinction due to the nature of the evidence filed.

   Evidence of use

2. Sensibly, the Applicant did not contend that the evidence supported a finding that the Trade Mark was distinctive of any of the Identified GS as at 19 November 2019. The evidence filed demonstrates minimal use of the Trade Mark in relation to the Identified GS prior to this date. Evidently, any such use was insufficient to warrant acceptance under the provisions of s 41(3) of the Act. Instead, the Submissions were premised on the Trade Mark being to some extent, but not sufficiently, inherently adapted to distinguish the Identified GS. In this setting, attention was drawn to:

   i.the intended advertising of the Identified GS under and by reference to the Trade Mark;

   ii.the anticipated investment that will occur in various small to medium sized entities; and

   iii.the phrase ‘AUSTRALIAN BUSINESS GROWTH FUND’ being established under legislation.

3. For reasons that follow, even if I were to accept that the Trade Mark should be considered under s 41(4) of the Act for all of the Identified GS, I am nonetheless satisfied that the Trade Mark does not and will not distinguish the Identified GS based on the evidence before me.

4. First, the evidence discloses that use of the Trade Mark before 19 November 2019 was slight. Reliance is primarily placed on press releases and publications relating to the anticipated launch of the ‘AUSTRALIAN BUSINESS GROWTH FUND’. The cumulative total of material dated prior to 19 November 2019 is nine documents. Broadly speaking, they illustrate an awareness of and discuss the potential development of an Australian business growth fund. At its highest, this evidence potentially demonstrates an intention to supply services under the Trade Mark coupled with preparatory steps to use it in relation to a discrete number of services in class 36 of the Identified GS.

5. Second, use of the Trade Mark after 19 November 2019 is underwhelming given it fails to demonstrate use in relation to all of the Identified GS. The Healy Declaration states that the promotion of the Trade Mark has been ‘in respect of some or all of the [Claimed GS]’.[25] However, this seemingly contradictory statement is clarified by Mr Healy who declares that use of the Trade Mark has only occurred in relation to classes 35 and 36.

   [25] Healy Declaration, [39].

6. Third, the most significant hurdle faced by the Applicant is the fact that the majority of the evidence, be it before or after 19 November 2019, fails to demonstrate use of the Trade Mark as a badge of origin.[26] This is evident in the following excerpts from documents dated before 19 November 2019 which state:

   ·‘Treasurer Josh Frydenberg said he was supportive of new funding ideas when asked about the feasibility of an Australian business growth fund.’[27]

   ·‘The Government is also in consultation with APRA and a number of financial institutions in regard to the establishment of an Australian Business Growth Fund …’[28]

   ·‘Treasurer Josh Frydenberg has sat down with the leaders of Australian finance to begin developing his new Australian business growth fund.’[29]

   ·‘This is why NAB supports the concept of an Australian Business Growth Fund. … We believe there is more that can be done and we take confidence from the UK and Canadian Business Growth Funds that have operated successfully for a number of years’[30]

   ·‘The Morrison Government will establish a $100 million Australian Business Growth Fund to help small and family businesses to grow…’[31]

   ·‘… has today released for consultation exposure draft legislation that will give effect to the Government to invest in an Australian Business Growth Fund (BGF) to ensure...’[32]

   [26] See Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ) wherein it was observed that ‘[u]se “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods’.

   [27] See Joyce Moullakis, ‘UK-style growth fund gets support’ (11 November 2018) The Australian in Exhibit AH-04 to the Healy Declaration (emphasis added).

   [28] See Department of Education, Skills and Employment (Cth), ‘$2 billion fund to transform small business access to funding’ (Joint Media Release, 14 November 2018) in Exhibit AH-07 to the Healy Declaration (emphasis added).

   [29] See ‘Treasurer gets ball rolling on new fund’ (6 December 2018) SBS in Exhibit AH-07 to the Healy Declaration (emphasis added).

   [30] See National Australia Bank, ‘Statement from NAB on the Business Growth Fund’ (Media Release, 6 December 2018) in Exhibit AH-08 to the Healy Declaration (emphasis added).

   [31] See Liberal Party of Australia, ‘Backing Small and Family Businesses to Grow and Create Jobs’ (Media Release, 23 April 2019) in Exhibit AH-07 to the Healy Declaration (emphasis added).

   [32] See Treasurer of the Commonwealth of Australia, ‘Consultation on legislation for Australian Business Growth Fund’ (Joint Media Release, 4 November 2019) in Exhibit AH-08 to the Healy Declaration (emphasis added).

7. Likewise, the evidence of use after 19 November 2019 suffers similar deficiencies. This is illustrated by the following excerpts from documents in evidence dated after 19 November 2019 which state:

   ·‘The Australian Business Growth Fund will represent a step change in the banking industry's relationship with the commercial sector.’[33]

   ·‘Treasurer Josh Frydenberg has announced the government and major banks will be backing local business owners, with the establishment of an Australian Business Growth Fund.’[34]

   ·‘Australian businesses will be able to access the Australian Business Growth Fund in mid 2020.’[35]

   ·‘… the Australian Government’s announcement to establish an Australian Business Growth Fund that will help boost the growth of small and medium businesses.’[36]

   ·‘…an in-principle agreement between the Government and leading banks to establish an Australian Business Growth Fund that will help boost the growth of small and medium businesses’[37]

   ·‘We're set to be a founding shareholder of an Australian Business Growth Fund that will help smaller companies thrive.’[38]

   ·‘Treasurer Josh Frydenberg has secured the big four banks' backing for the $520 million Australian Business Growth Fund that will provide equity...’[39]

   [33] See Noel McNamara, ‘Growth fund to broaden financing’ (27 November 2019) The Australian in Exhibit AH-04 to the Healy Declaration.

   [34] See Cec Busby, ‘Business Growth Fund to back high growth small businesses’ (28 November 2019) Kochie’s Business Builders in Exhibit AH-04 to the Healy Declaration (emphasis added).

   [35] See Exhibit AH-03 to the Healy Declaration.

   [36] See ‘BGF welcomes establishment of the Australian Business Growth Fund’ (27 November 2019) Private Equity Wire in Exhibit AH-04 to the Healy Declaration.

   [37] See National Australia Bank, ‘NAB Welcomes the establishment of the business growth fund’ (Media Release, 28 November 2019) in Exhibit AH-08 to the Healy Declaration (emphasis added).

   [38] See @HSBC_AUS, (Twitter, 28 November 2019) in Exhibit AH-10 to the Healy Declaration (emphasis altered).

   [39] See Matthew Cranston, ‘Big four agree to small business growth fund’ (27 November 2019) Financial Review in Exhibit AH-12 to the Healy Declaration.

8. Plainly, the above instances of purported use of the Trade Mark demonstrate use in a descriptive manner notwithstanding the capitalisation of the words in some of the examples. Given the Trade Mark is not being used as a badge of origin in the overwhelming majority of examples provided, the evidence does not provide a cogent basis to infer that the Trade Mark will become capable of distinguishing the Identified GS.

9. Fourth, the evidence of intended use is not sufficiently particularised. The ‘estimated pre-launch branding costs’ associated with the Trade Mark and another trade mark[40] have been provided as well as the expected future advertising expenditure. The figures disclosed are significant, but they fail to differentiate between the expenditure associated with the Trade Mark and that of the other trade mark. Similarly, it is anticipated that a substantial amount will be invested to support the growth of Australian businesses under or by reference to the Trade Mark and another trade mark.[41] Again, the information disclosed fails to delineate between the expected investment associated with the Trade Mark and that of the other trade mark. When coupled with the fact that the Trade Mark is largely being used descriptively, I am not satisfied that the substantial use envisaged in the Healy Declaration will eclipse the Trade Mark’s ordinary signification. To this end, the observation of Jacob J in British Sugar plc v James Robertson & Sons Ltd is apposite:

   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.[42]

   [40] See Australian trade mark registration number 2110661 for the letters ‘ABGF’. I note the Applicant is also the owner of Australian trade mark registration number 2151578 for the words ‘AUSTRALIAN BUSINESS GROWTH FUND’ combined with a device element.

   [41] Healy Declaration, [63].

   [42] [1996] RPC 281, 302.

10. Fifth, I acknowledge that the phrase ‘AUSTRALIAN BUSINESS GROWTH FUND’ has been adopted from the wording used in the establishing legislation. At best, this provides limited support to the contention that, over a prolonged duration of time, the Trade Mark may come to distinguish the Identified GS. However, the legislative origin does not, in isolation, provide a compelling basis to infer that the Trade Mark is or will become capable of distinguishing the Identified GS. Put another way, the Applicant is not entitled to a monopoly over the Trade Mark simply because this legislation exists. This is particularly so given a change in government policy or amendments to the legislation may result in the fund being significantly modified or even abandoned.

11. Given the highly descriptive nature of the Trade Mark and significant limitations of the evidence, I am not satisfied that the actual or intended use of the Trade Mark by the Applicant is such that by reason of this use (or other circumstances), the Trade Mark does (or will) distinguish the Identified GS as being those of the Applicant. Therefore, a ground for rejection under s 41 of the Act applies.

    Proposed limitation

12. To overcome the s 41 ground for rejection, the Submissions proposed the addition of the following limitation to the Identified GS:

    the foregoing in relation to the activities undertaken by the company referred to in section 10(4) of the Australian Business Growth Fund (Coronavirus Economic Response Packaging) Act 2020 (Cth) or any amending, restating or replacing legislation enacted from time to time

13. In the Applicant’s view, the effect of incorporating this limitation is that ‘there could not be any need for other traders actuated by proper motives to use the Mark in respect of the Relevant Goods/Services, as such use could not be legitimate use’.[43]

    [43] Submissions, [43] (emphasis in original).

14. In my opinion, this limitation would not overcome the ground for rejection. It is artificial to restrict the Identified GS provided as exclusively originating from the Applicant. It is equivalent to an individual offering to limit the use of the word ‘SOAP’, in relation to soap products, as being soap from a specific property address and postulating that no other trader would legitimately desire to use ‘SOAP’ in relation to such goods from that particular address. In both scenarios, the proposed limitation would have no material bearing on the distinctiveness of the Trade Mark or descriptive word in question. The evidence filed by the Applicant demonstrates that business growth funds have been established overseas. They do not necessarily require an enacting piece of legislation, government contributions nor government partnership. On this basis, it is clear that other Australian traders would legitimately desire to use the Trade Mark, or some mark nearly resembling it, in relation their own goods and/or services. Accordingly, the proposed limitation does not assist the Applicant.

    Decision

15. Section 33 of the Act provides:

    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.

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

    Note: For applicant see section 6.

16. I am satisfied on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under s 41 of the Act.

17. On 8 November 2021, I notified the Applicant’s representative that it was my intention to reject trade mark application number 2051829 unless the Claimed GS were amended to the following:

    Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; calculators; calculating machines, data processing equipment and computers; portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks and electronic and mechanical parts and fittings therefore; computers, audio and video players, electronic personal organizers, personal digital assistants, computer peripheral devices; USB hardware; computer and memory storage devices, namely, blank flash drives, USB drives, digital USB storage cards and card readers; computer hardware; magnetically encoded cards including credit cards and debit cards; chip cards and smart cards; electronic funds transfer machines; point of sale terminals; mobile point of sale terminals; automated teller machines (ATMs); electronic card readers for chip cards, smart cards and magnetically encoded cards including credit cards and debit cards; computer equipment used in the provision of banking, financial, business advisory and/or business consultancy services; parts and accessories for the aforementioned goods

    Class 35: [deleted in its entirety]

    Class 36: [deleted in its entirety]

18. On 22 November 2021, the Applicant’s representative informed IP Australia of the Applicant’s agreement to the amendments set out in [39] of this decision. The Claimed GS have been amended.

19. Accordingly, I accept for possible registration trade mark application number 2051829 for the amended specification as set out in [39] of this decision.

    Nicholas Barbey
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    23 November 2021

    
    

    Annexure

    Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; calculators; calculating machines, data processing equipment and computers; portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks and electronic and mechanical parts and fittings therefore; computers, audio and video players, electronic personal organizers, personal digital assistants, computer peripheral devices; USB hardware; computer and memory storage devices, namely, blank flash drives, USB drives, digital USB storage cards and card readers; downloadable electronic publications; downloadable audio, video and audiovisual content provided via computer and communications networks; computer hardware; computer software; computer applications; application software; magnetically encoded cards including credit cards and debit cards; chip cards and smart cards; electronic funds transfer machines; point of sale terminals; mobile point of sale terminals; automated teller machines (ATMs); electronic card readers for chip cards, smart cards and magnetically encoded cards including credit cards and debit cards; computer software including downloadable computer programs and recorded computer software; computer programs used in the provision of banking, financial, business advisory and/or business consultancy services; computer equipment used in the provision of banking, financial, business advisory and/or business consultancy services; computer software for processing electronic payments including via a mobile computer, mobile phone, smart phone or tablet; authentication software for controlling access to and communications with computers and computer networks; parts and accessories for the aforementioned goods

    Class 35: Advertising, marketing and promotional services; business management; business administration; business information; office functions; retail services; business retail and wholesale marketing advisory services relating to financial products; Internet marketing services including online advertising and directory services; public relations; business development services; business planning, analysis and organisation assistance, advice and consultancy; business surveys, appraisals, inquiries and research; collection, preparation, compilation, processing, retrieval and provision of business information, data, statistics and indices; online advertising; promotional advertising services; radio advertising; television advertising; advertising and promotion services provided via video broadcasts and other experiential media; promotion of goods and services; research of business information; conduct of business studies and preparation of business reports; economic forecasting and analysis for business and/or financial purposes; market analysis, research and monitoring services for business and/or financial purposes; promoting the goods and services of others over a global computer network; marketing, merchandising and distribution services (excluding transport); provision of assistance (business) in the operation of franchises; computer assisted business information; business strategy services

    Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; monetary and financial affairs; finance services; investment services; investment services including investment services in the field of trusts, deposits, shares, equities, securities, bonds, debt instruments, pensions, asset management, funds management and portfolio investments; real estate affairs; finance and insurance services via electronic means; superannuation services; financial planning; research services relating to banking, finance, investment, management funds and real estate; financial and investment services including financial and investment services in relation to trusts, deposits, shares, equities, securities, bonds, debt instruments, pensions, asset management, real estate, superannuation, funds management, annuities and portfolio investments; financial planning and investment advisory services in relation to all types of financial products and services; electronic money transfer services; wealth management and protection services; superannuation; financial portfolio management and investment portfolio management services; monitoring of financial portfolios; share trading; share brokerage; stock brokerage services; deposit services; bank, investment and savings account services; brokerage including securities, stock and bond brokerage; trading of shares; administration of shares; brokerage of shares; commodity trading; options trading; real estate acquisition and management services including leasing of real estate; pension, retirement and superannuation services including plans and funds; currency exchange services; mortgage and superannuation trusteeship; financial sponsorship; bank account information services; financial evaluation services; provision of online financial calculators; provision of financial information via online calculators; financial and investment analysis and consulting services; real estate services including acquisition and management for investments and leasing; financial information; financial assessments; financial evaluation services; bank card services (including credit, debit and travel cards); international banking services; safe deposit services; electronic commerce services; information, consultancy, advisory and management services relating to banking, finance, financial planning, investments, money, superannuation and insurance