Trade mark application number 2075313 (classes 35 and 44) – Melbourne Bone and Joint Clinic - in the name of Melbourne Bone and Joint Clinic Pty Ltd. - [2021] ATMO 121

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade mark application number 2075313 (classes 35 and 44) – Melbourne Bone and Joint Clinic - in the name of Melbourne Bone and Joint Clinic Pty Ltd.

Delegate:Nicole Worth
Representation: Craig Smith, counsel, instructed by King & Wood Mallesons

Decision: 2021 ATMO 121
Trade Marks Act 1995 (Cth) – s 33 proceedings – ground for rejection under s 41(3) considered – trade mark has no inherent adaptation to distinguish– use of trade mark does not establish acquired distinctiveness – application rejected.

Background

Melbourne Bone and Joint Clinic Pty Ltd (‘Applicant’) filed an application to register the trade mark detailed below.
Trade Mark:              Melbourne Bone and Joint Clinic (‘Trade mark’)
Application No.:         2075313
Filing Date:                12 March 2020
Goods/Services:         Class 35: Compilation of medical reports.
Class 44: Orthopaedic surgery; Fitting of orthopaedic devices; Health clinic services; Medical advisory services; Medical examination of individuals; Advisory services relating to medical problems; arranging of medical treatment; conducting of medical examinations; charitable medical services.
The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth).[1] The examiner raised a ground for rejection under s 41(3) on the following basis:
Your trade mark is, or has as its main feature, MELBOURNE BONE AND JOINT CLINIC.
Melbourne is the name of the capital city of Victoria. BONE AND JOINT CLINIC refers to the provision of medical care and treatment from a clinic intended for one’s bones and joints. Your trade mark therefore indicates that the services you have claimed in class 44 relate to BONE AND JOINT care and treatment and are offered from or otherwise relate to the city of MELBOURNE.
Other traders should be able to use MELBOURNE BONE AND JOINT CLINIC in connection with goods or services similar to yours.
[1] Any reference to parts, sections or regulations in this decision are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise indicated.
Over several stages of correspondence the Applicant filed submissions that the Trade Mark was inherently distinctive or, in the alternative, that it should rightly be considered under s 41(4). The Applicant also filed evidence of use of the Trade Mark.
The examiner was not persuaded and maintained the ground for rejection, the result being that the Applicant then requested a hearing. The matter came before me, a delegate of the Registrar of Trade Marks, to decide per s 33. The hearing was held via video conference on 15 July 2021. Mr Craig Smith of counsel, instructed by King & Wood Mallesons, appeared for the Applicant and prepared written submissions on its behalf.
I mention that the purpose of the decision here is not to review the examiner’s decision, but to consider the ground for rejection afresh.
Evidence
The evidence filed in this matter comprises three declarations by the Mr Arvind Jain, Principal Surgeon of the Applicant, as follows.
·     Declaration dated 7 April 2020 with exhibits 1 to 27 (‘Jain 1’)
·     Declaration dated 18 June 2020 with exhibits 1 to 108 (‘Jain 2’)
·     Declaration dated 26 November 2020 with exhibits AJ-1 to AJ-12 (‘Jain 3’)
In summary the evidence shows that Mr Jain is an orthopaedic surgeon who in October 2014 established a medical practice which he called the Melbourne Bone and Joint Clinic. Of the Applicant’s services Mr Jain states:
Since October 2014, Melbourne Bone and Joint Clinic has provided services to the community through medical consultations and surgical procedures involving the bones and joints of the body. It also has provided medico-legal services to clients, work-cover insurance companies, Transport Accident Commission (TAC) and lawyers.[2]
[2] Jain 1, [5].
Mr Jain provides evidence of use of the Trade Mark, as well as letters of support from individuals within the industry and the results of a survey of previous patients. These will be discussed in more detail later in this decision.
The Applicant’s position regarding the distinctiveness of the Trade Mark is summarised by Mr Jain’s statement:
There are multiple clinics in Melbourne who use ‘orthopaedic’ in their brand name such as Melbourne Orthopaedic Clinic, Melbourne Orthopaedic Group, Melbourne Orthopaedics, Melbourne Hip and Knee, Central Orthopaedics and many more, however Melbourne Bone and Joint Clinic is a very unique name and has not been used by any other business. Our Practice was the first to use this name. Orthopaedic surgeons can be known as orthopods, orthopaedists, orthopaedic or ortho surgeons but usually are not called bone and joint surgeon. Outside Melbourne, there are very few practices in Australia or worldwide who use ‘bone and joint’ as a practice name or as a surgeon name. Although Orthopaedics is the medical term for the medical specialty services offered, ‘Bone and Joint’ has been far easier for patients to understand who may or may not be familiar with the medical term ‘orthopaedic’.[3]
The Law
[3] Jain 1, [6].
Section 41
Section 41 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).
A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, if I consider the Trade Mark has some inherent adaptation to distinguish the designated services I am not entitled to reject it unless satisfied that the combined effect of its inherent adaptation to distinguish, any past or intended use of it, and any other circumstances, has not or will not render the Trade Mark distinctive or capable of distinguishing. If I consider the Trade Mark has no inherent adaptation to distinguish, I am not entitled to reject it unless I am satisfied that it does not in fact distinguish the designated services, having regard to the extent to which the Trade Mark was used before the filing date of the application.
Inherent Adaptation
The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the Applicant’s designated services from those of other traders.
Inherent adaptation to distinguish goods or services is to be tested:
[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.[4]
[4] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
The majority of the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’) described the consideration as a two step process: the first being the determination of the ‘ordinary signification’ of the sign in Australia to those who would purchase, consume or trade in the goods; and then having determined the ordinary signification, considering the likelihood of the sign being desired for use by other traders.[5]
[5] [2014] HCA 48, [71] (French CJ, Hayne, Crennan, and Kiefel JJ).
The Applicant accepts, and I concur, that for the purposes of this analysis neither MELBOURNE nor CLINIC provide any distinctiveness to the overall Trade Mark. The focus rather is upon the words BONE AND JOINT. The Applicant contends that the ordinary signification of the Trade Mark does not directly describe any of the services. It says that a consumer of the relevant services would not naturally think to look up or search for them by reference to BONE AND JOINT, even if they may understand that orthopaedic services involve bones or joints. The Applicant alleges that instead the designated services are overwhelmingly described as ‘orthopaedics’ or the more general term ‘sports medicine’.
As a preliminary matter I mention it is not the case that in the absence of a direct reference a trade mark makes a covert or skilful allusion. This is reflected in the Act itself, which contemplates a spectrum of distinctiveness in ss 41(3) and 41(4). The judgments of the trade marks ROHOE[6] and TUB HAPPY[7] were discussed by the majority in Cantarella to illustrate the difference between the antitheses ‘direct reference’ and ‘covert and skillful allusion’. This does not imply that they are the only outcomes of an assessment under s 41.
[6] Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175.
[7] Mark Foy’s Ltd v Davies Co-Operative & Co Ltd (1956) 95 CLR 190.
BONE AND JOINT are common words that are well understood by the Australian public to refer to parts of the skeleton (or the tissue from which it is composed) and the places in the body where they join. This is reflected in the definitions from the Macquarie Dictionary contained in the examiner’s research. BONE AND JOINT retain their ordinary meaning in the Trade Mark and it is not altered in the context of the services. They ‘carry a natural English meaning that is apt to refer to attributes of the Services’.[8] This appears to be precisely the reason Mr Jain chose the name: ‘Although Orthopaedics is the medical term for the medical specialty services offered, ‘Bone and Joint’ has been far easier for patients to understand who may or may not be familiar with the medical term ‘orthopaedic’’.[9]
[8] Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, [118] (Middleton and Burley JJ) (‘Bendigo’).
[9] Jain 1, [6].
I accept that the most common term which applies to many of the services provided by the Applicant is ‘orthopaedic’. I am not persuaded that the Applicant was necessarily the first person to use the words BONE AND JOINT in reference to orthopaedic services, but this factor would not in any event make a material difference. Justice Yates in Apple Inc v Registrar of Trade Marks, in determining the distinctiveness of the expression APP STORE, stated:
Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade.[10]
[10] [2014] FCA 1304, [11].
In respect of expressions said to be newly coined Yates J continued:
Generally speaking, newly-coined expressions will not be taken to be inherently adapted to distinguish if they comprise ordinary English words (even, in some cases, foreign words) that retain the signification which they bear as a matter of ordinary language in relation to the goods or services for which registration is sought. As Dixon J observed in Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited (1946) 72 CLR 175 at 184:
… I think that the question depends upon the use to which it is intended to put the word-mark. Doubtless a word is no less invented because, when it comes to be affixed to an article, its meaning is determined and perhaps explained. But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration …
In Eastman Photographic Materials Company, Limited v The Comptroller-General of Patents, Designs, and Trade Marks [1898] AC 571, Lord Herschell explained:
… An invented word is allowed to be registered as a trade-mark, not as a reward of merit, but because its registration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases.
It may, no doubt, sometimes be difficult to determine whether a word is an invented word or not. I do not think the combination of two English words is an invented word, even although the combination may not have been in use before; nor do I think that a mere variation of the orthography or termination of a word would be sufficient to constitute an invented word, if to the eye or ear the same idea would be conveyed as by the word in its ordinary form. …
In the present case, even if Apple was in fact the first to use the combination “app store”, I am satisfied that, at the filing date, the words in that combination bore no more than their ordinary signification when applied to the designated services in Class 35.[11]
[11] Ibid, [210]-[212].
Here too I consider that the words BONE AND JOINT bear no more than their ordinary signification. Their meaning is not altered when they are combined,[12] or by their incorporation into MELBOURNE BONE AND JOINT CLINIC, or in the context of the designated services. The alleged lack of use by others does not alter this factor.
[12] A point raised in Bendigo (COMMUNITY BANK) and Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186 (URBAN ALE).
Turning then to the question of whether other traders are likely to desire to use the Trade Mark, or some mark nearly resembling it, I mention firstly that a finding under s 41(3) or (4) does not necessarily require evidence that other traders are indeed using it. Their Honours in Bendigo and Adelaide Bank Limited v Community First Credit Union Limited stated as much in their judgement regarding COMMUNITY BANK:
[E]vidence 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: see Clark Equipment at 514-515.[13]
[13] Bendigo (n 8) [121].
In any event at least some use by others appears to be evident. The examiner’s research contains links to a number of web pages.[14] Two are for the websites of ‘The Gold Coast Centre for Bone & Joint Surgery’ and ‘St Vincent’s Bone & Joint’, both of which provide largely the same services as the Applicant. Another is the website of ‘Orthopaedics SA’ which uses ‘Bone & Joint Specialists’ as a by-line. One is an entry in the ‘healthdirect’ directory to ‘The Sydney Bone & Joint Clinic’, although the website that resolves from the link in that directory is unrelated. Three other links resolve to web pages of entities that, whilst not necessarily providing direct care services for bones and joints, provide services relevant to the industry such as:
· medical journals: ‘Bone & Joint Publishing’ of The British Editorial Society of Bone & Joint Surgery, and ‘The Journal of Bone & Joint Surgery’ of the American Orthopaedic Association;
· a conference: ‘Bone and Joint Infection Conference’ which was ‘designed to bring together orthopaedic surgeons, infectious diseases physicians, clinical microbiologists and trainees in these fields’.
[14] I mention that the provision of links, as opposed to the actual material that appears at that link, is somewhat problematic. Material upon web pages changes over time and there is no certainty that what was viewed by the examiner is what will be viewed by an Applicant at the time they receive the examination report and activate the link. Further still there is no certainty that what is viewed in the course of hearing proceedings is the same as was viewed at examination. For that reason it is preferable that the actual material that appears upon a web page is provided as opposed to a link. Here, I have no option but to utilise the links, and what I have viewed appears to accord with the Applicant’s submissions regarding them.
Despite the Applicant’s criticisms of the websites, which I need not recount, they nonetheless show that the words BONE AND JOINT are used a) by those involved in the provision of orthopaedic services, and b) in the provision of information to those that provide orthopaedic services (indicating further that they might themselves legitimately desire to use BONE AND JOINT).
I note further that a number of trade marks containing the words BONE AND JOINT in respect of similar services have been the subject of applications for registration before the filing date of the subject application, including:
·ORTHOPAEDICS SA BONE & JOINT SPECIALISTS with a device;
·THE BONE & JOINT CLINIC;
·OSA BONE & JOINT SPECIALISTS with a device (which is owned by the same entity as the first example).
A further two applications have been made after the filing date of the subject application to register the trade marks SYDNEY BONE AND JOINT CLINIC and VICTORIAN BONE + JOINT SPECIALISTS (in stylised form).[15]
[15] I note also the Applicant refers to the registered trade marks PENINSULA ORTHOPAEDICS, WESTERN SPORTS ORTHO and COASTORTHOPAEDICS to support a conclusion of registrability, contending that they consist of the directly descriptive words ‘orthopaedics’ or ‘ortho’ in combination with a geographical indicator, and yet have been registered. Without knowing the factors that led to the registration of those marks, I note at the outset that none of ‘peninsula’, ‘western’ and ‘coast’ provide any tangible reference to a location.

There is therefore a sound basis upon which to conclude that the words BONE AND JOINT are likely to be, and indeed are, used by other traders. A corollary to this is likewise that MELBOURNE BONE AND JOINT CLINIC, or some mark nearly resembling it, is likely to be desired for use by other traders for the sake of the ordinary signification of the words. Although not the focus of the above analysis, I mention for completeness that MELBOURNE signifies only location and CLINIC describes the medical practice.
In my estimation the Trade Mark has no inherent adaptation to distinguish, and consideration under s41(3) applies. In any event it would not, to my mind, make any material difference as to whether the Trade Mark fell for consideration under s 41(3) or 41(4), because the evidence relating to the period after the filing date would not affect the outcome. Nor have any other circumstances supporting acceptance been asserted.
Use of the Trade Mark
As stated previously the Applicant has used the Trade Mark since October 2014, being approximately five and a half years before the filing date.
It is relevant to note Mr Jain’s statement that:
[T]here are very strict and stringent criteria for advertising in [the] medical industry. The guidelines set by Australian Health Practitioner Regulation Agency (AHPRA), Australian Medical Association (AMA), Royal Australasian College of Surgeons (RACS), Australian Orthopaedic Association (AOA) prohibit any kind of advertising in newspapers, editorials or journals. AOA specifically prohibits even testimonials, video presentations, positive outcomes reports on an individual or practice website…
Consistent with these regulations and keeping professional conduct in mind, the only ethical way to promote your practice or business is by word of mouth or by educating and meeting General Practitioners.[16]
[16] Jain 2, [38]-[41].
I therefore bear in mind that the promotional activities of the Applicant are somewhat constrained by the nature of the industry’s regulation.
Significant parts of the evidence of use filed by the Applicant show use in combination with a composite mark (shown below, now registered) or in combination with the name Mr Arvind Jain (often as the primary identifier of the source of the services, as shown in the examples of the Applicant’s letterheads below).[17] Such use is upon the Applicant’s website; in entries in various directories such as Yellow Pages or Australian Health Directory;[18] and upon correspondence, certificates and certain reports prepared by the Applicant.
[17] The letterhead examples are taken from Jain 1, exhibits 1, 2 and 17, although I note similar examples in Jain 2 (for example exhibits 67, 78, 81, 82 and 83).
[18] Jain 2, exhibits 54-58. I note that not all of the actual entries are in evidence. Rather, at times email communications regarding the establishment of those entries is provided instead.
This type of use is not necessarily fatal, but it does obscure the degree to which the Trade Mark can be considered to have acquired distinctiveness in circumstances where it is not used in independently to identify the source of the services.
Other examples of alleged use are not in the course of trade but are in the context of internal business activities, such as the establishment and design of the Applicant’s website; the design of pamphlets and stationery; the purchase and renovation of the Applicant’s premises; and the Applicant’s bank accounts.
The Trade Mark is shown to be used in plain text as part of the email addresses in email correspondence; as the RSVP contact in invitations to tutorial events that the Applicant holds; in various correspondence and reports; and as part of desk and corridor signage in physical premises. I bear in mind also that Mr Jain declares the telephone greeting of those who work at the clinic includes the Trade Mark in spoken form. Similarly, the tutorial events the Applicant has arranged were for the purpose of introducing and promoting its services to general practitioners, physiotherapists, and others involved in the provision of bone and joint care. I accept there was likely verbal use of the Trade Mark at these events, although the degree of that use cannot be precisely ascertained.
Nonetheless, this usage has taken place over a relatively short period of time and is not so extensive that the ordinary signification of MELBOURNE BONE AND JOINT CLINIC has been displaced.
The Applicant also provides figures for turnover, advertising expenditure, new patients and new referrers, all of which are commercially significant.
I note further that the Applicant has adduced five letters of support from orthopaedic surgeons, a general practitioner and a physiotherapist. They each attest to their recognition of the Trade Mark as a badge of origin for the Applicant’s services.
The results of a survey of past patients of the Applicant have also been adduced. The survey was conducted after the filing date, however it was sent to patients of the Applicant who have been customers since 2014 (and there is therefore some argument that it relates to trade mark use before the filing date, albeit a problematic argument). The survey did not contain reference to MELBOURNE BONE AND JOINT CLINIC (although it did contain an email address at ‘mbjc’), and its first question was ‘What is the name of the orthopaedic practice you have been to for consultation and/or surgery in the last 6 years?’, with an open-ended response field. 693 responses were made to that question, of which 62.19% identified ‘Melbourne bone and joint clinic’ or ‘bone and joint clinic’.
The survey gives some indication of recognition amongst past patients, although I bear in mind that all respondents had engaged the Applicant’s services but only 62% of them recalled its name. There are also some cautions to bear in mind. The first is that all of the respondents are past patients of the Applicant, not independent responses from the whole of the relevant market. Unlike the circumstances in Blount Inc v Registrar of Trade Marks[19] (cited by the Applicant) there is no indication from the respondents of whether or how consumers generally in the market view the Trade Mark. Moreover, whilst the public at large may not have provided useful results (given the specialised market), it does appear that a survey of general practitioners, physiotherapists and other referrers would provide a relevant indication of recognition amongst a broader relevant audience.
[19] [1998] FCA 440, [62].
In all, although perhaps some recognition of the Trade Mark is shown, I am not satisfied that it has been used to such an extent that the ordinary signification of the words MELBOURNE BONE AND JOINT CLINIC has been displaced and those words have acquired a secondary meaning which signifies the Applicant. The Trade Mark is utterly descriptive of the services and thus requires compelling and significant evidence to be considered for acceptance. Here the duration of use is relatively short and is not compensated for by the extent of use of the Trade Mark in its own right to identify the source of the services. As already mentioned, I consider the outcome would be the same were the Trade Mark to be considered under s41(3) or 41(4), although I confirm I have considered it under the former.
Decision and costs
Section 33 of the Act relevantly provides:
(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.
In weighing the evidence of use of the Trade Mark against the extent to which it is inherently adapted to distinguish the designated services, I am satisfied that a ground for rejection exists under s41(3). Accordingly, I reject the application for registration.
Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks
14 October 2021

Trade mark application number 2075313 (classes 35 and 44) – Melbourne Bone and Joint Clinic - in the name of Melbourne Bone and Joint Clinic Pty Ltd.

[2021] ATMO 121

14 October 2021