Trade mark application number 2085415 (classes 16, 41, 44) – Clear Aligner Excellence – in the name of Clear Aligner Excellence Pty Ltd

[2022] ATMO 22

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2085415 (classes 16, 41, 44) – Clear Aligner Excellence – in the name of Clear Aligner Excellence Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Applicant: K&L Gates
Decision:	2022 ATMO 22 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 41 considered – trade mark not capable of distinguishing – no evidence of use filed – trade mark application rejected.

Background

1. On 1 May 2020, Clear Aligner Excellence Pty Ltd (‘Applicant’) filed an application to register the following trade mark:

   Trade Mark:               Clear Aligner Excellence (‘Trade Mark’)

   Application no.:         2085415

   Priority Date:             1 May 2020 (‘Relevant Date’)

   Specification:             Class 16: printed matter; brochures; flyers; printed teaching materials; books

   Class 41: education and training services in the field of orthodontics and dentistry

   Class 44: orthodontic and dental services

   (‘Claimed GS’)

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

   Your trade mark consists of the words CLEAR ALIGNER EXCELLENCE.

   EXCELLENCE is defined in the Macquarie dictionary as an excellent quality of feature. CLEAR ALIGNER's are orthodontic devices that are a transparent, plastic form of dental braces used to adjust teeth. Your trade mark therefore, indicates that your orthodontic and dental services provide an excellent quality of service in relation to clear aligners. Additionally, your trade mark indicates that your education and training services in the field of orthodontics and dentistry and printed teaching materials act as resources to help others provide excellent service related to clear aligners, thus CLEAR ALIGNER EXCELLENCE.

   Other traders should be able to use CLEAR ALIGNER EXCELLENCE, or something so nearly resembling this, in connection with goods or services similar to yours.

3. In response, the Applicant filed submissions which adopted the position that the examiner had erred and the ground for rejection should be withdrawn. The submissions claimed that the Trade Mark had no ordinary signification in respect of the Claimed GS because it does not describe or directly refer to any of the itemised goods or services. Emphasis was placed on the fact that the Trade Mark is comprised of three words which ‘are not commonly used in the common descriptive vernacular’ and in fact act ‘as a phrase with multiple subjects or objects’. The submissions further asserted that registration of the Trade Mark ‘would not stop other traders from using or describing clear aligners as "EXCELLENT"’. Finally, reference was made to the existence of twenty six trade marks (‘Referenced Marks’) that incorporate the word ‘excellence’ on the Register of Trade Marks (‘Register’) as well as an internet search for ‘Clear Aligner Excellence’ which yielded 22 results.

4. A second examination report was issued to the Applicant reiterating that the Trade Mark’s ordinary signification is that the Claimed GS ‘involve [or] feature CLEAR ALIGNERS which are of an excellent quality or are provided with EXCELLENCE’. As such, the examiner was satisfied that the Trade Mark is an expression that other traders are likely to want to use in relation to their own similar goods or services. The Referenced Marks were not considered to be comparable to the Trade Mark nor were the internet search results deemed to be persuasive. The ground for rejection was maintained and the Applicant was invited to supply evidence of use. The Applicant declined this opportunity and instead exercised its right to be heard.

5. A hearing was scheduled and the Applicant was invited to file further submissions and/or evidence. Written submissions were filed and, as a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 18 November 2021. Chris Round and Talia Le Couteur Scott, both of K&L Gates, attended the hearing on the Applicant’s behalf.

6. As a preliminary observation, I note that the ground for rejection must be considered afresh and s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration, unless 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

7. 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.

8. Determining the merits of the s 41 ground for rejection requires consideration be given to the extent, if any, of the Trade Mark’s inherent adaptation to distinguish the Claimed GS. This is assessed:

   by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[1]

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

9. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[2] indicated that the test for distinctiveness under s 41 of the Act involves 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.[3] Second, once the ordinary signification is established, consideration must turn to whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods. Although devised in respect of goods, this test is equally applicable to services.

   Ordinary signification

   [2] [2014] HCA 48 (‘Cantarella’).

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

10. The Applicant contends that the Trade Mark has no ordinary signification in relation to the Claimed GS. Specifically, it alleges that ‘Clear Aligner Excellence’, as a combination, is not commonly used and it highlighted that ‘Excellence’ is ‘expressed as a noun at the end of the phrase’.[4] In the Applicant’s view, this positioning of ‘Excellence’ makes it ‘a freestanding object in its own right’ which does not add meaning to ‘Clear Aligner’.[5] I disagree. These arguments share certain parallels with those pursued in Agapitos v Habibi (‘Agapitos’)[6] which considered, among other things, whether the term ‘Dental Excellence’ was capable of distinguishing dentistry services. In finding that the term was not to any extent inherently adapted to distinguish the services, Le Miere J concluded that:

    The words 'dental' is only capable of describing the services provided. The word 'excellence' is only capable of referring to the quality of the services in connection with which it is used. The words 'dental excellence' in their ordinary usage convey to a consumer the quality and nature of the services to which they are attached.[7]

    [4] Response dated 16 August 2021 to first examination report, [5.2].

    [5] Ibid.

    [6] [2014] WASC 47 (‘Agapitos’). At [35], Le Miere J observed that counsel for the plaintiff ‘submitted that the words “Dental Excellence” would not be used in normal language’ and contended that the term was ‘a concoction’ that ‘is not part of our common heritage in terms of language’.  

    [7] Ibid [38].

11. In my view, similar reasoning may be applied to the present matter. The Trade Mark is comprised of three ordinary English words. A ‘Clear Aligner’ is a transparent tray which aligns teeth and it is a type of orthodontic treatment used to correct malocclusions.[8] Clear aligner treatment is an alternative to traditional braces treatment due to its perceived hygienic and aesthetic benefits. Meanwhile, ‘Excellence’ may be defined as ‘the fact or state of excelling; superiority; eminence’.[9]

    [8] ‘Orthodontics Australia’, ‘Clear aligner treatment for teens’ (Web Page, 2 October 2017) < Macquarie Dictionary (online at 2 February 2022) ‘excellence’ (def 1).

12. Taken together, the ordinary signification of ‘Clear Aligner Excellence’ in the context of dental and orthodontic services is that the services involve the provision of clear aligner treatment of a superior quality. In the context of the claimed education and training services, the Trade Mark describes their intended purpose and subject matter. That is, the services train and educate individuals to achieve excellence in the field of clear aligner treatment. Equally, the various printed matter claimed in class 16 specifically includes teaching materials and books. These goods can be used to educate individuals to achieve excellence in the field of clear aligner treatment.

13. The Applicant submits that, in contrast to the claimed services, the goods are not particularised as being in the field of orthodontics and dentistry.[10] On one level this may be true, but the broad and unqualified manner in which the goods have been drafted means that educational, training and teaching materials in the field of orthodontics and dentistry clearly fall within the scope of the Claimed GS. In the event that the Trade Mark achieves registration, the Applicant would acquire enforceable rights in respect of the aforementioned goods. As such, this submission has no foundation when consideration is given to the actual scope of the Claimed GS.

    Other traders

    [10] Response dated 16 August 2021 to first examination report, [5.1].

14. Pursuant to Cantarella, consideration must now be given to whether other traders would legitimately desire to use the Trade Mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of their own similar goods and/or services.

15. The Applicant emphasises that ‘section 41 requires that other traders must need to use the trade mark as filed’[11] and points out that its internet search results reveal that the Trade Mark is not used by other traders. In the Applicant’s opinion, ‘other traders acting with only proper motives would not think to use all the elements of the Trade Mark’[12] and registration of the Trade Mark would not prevent ‘other traders from using or describing clear aligners as “EXCELLENT”, or the numerous synonyms of excellent’.[13] Further, the Applicant relies on the Referenced Marks which contain the word ‘excellence’. It submits that the existence of these registrations on the Register reinforce the fact that the Trade Mark is prima facie capable of distinguishing the Claimed GS and illustrate that the ‘error in examination is that the Trade Mark was treated differently to these other applications’.[14]  

    [11] Ibid [5.2] (emphasis in original).

    [12] Ibid.

    [13] Ibid [5.3].

    [14] Applicant’s written submissions dated 11 November 2021, [19].

16. With respect to the alleged lack of actual use of the Trade Mark, a finding under s 41 of the Act is not contingent on the provision of such evidence. There is no requirement to establish that the Trade Mark has in fact been used by other traders. Instead, the focus is ‘on the likelihood of other traders having a legitimate desire to use the [Trade Mark]’.[15] Similarly, the proposition that registration of the Trade Mark would not prevent other traders from using words such as ‘excellent’ or synonyms thereof is not relevant. Section 41 of the Act is concerned with the nature of the trade mark itself.[16] The fact that there may be other words to use in relation to the Claimed GS does not neutralise or diminish the non-distinctive nature of the Trade Mark. To this end, Kitto J’s comments in Clark Equipment Co v Registrar of Trade Marks are relevant:

    It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as "made in Michigan" or in some other ways indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business.[17]

    [15] Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, [121] (Middleton and Burley JJ). Although expressed as being in relation to s 41(3), this observation equally applies to s 41(4) of the Act.

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

    [17] [1964] HCA 55, [8].

17. As regards to the state of the Register, it is rarely if ever a decisive factor in determining whether a trade mark is inherently adapted to distinguish the goods and services claimed.[18] Notably, there is a tendency for evidence illustrating the state of the Register to omit applications for similar trade marks that never achieve registration[19] or to distort it by including trade marks that are for entirely dissimilar goods or services. As such, it is often the case that the purportedly similar trade marks do not accurately reflect the true state of the Register. Be that as it may, a large portion of the Applicant’s submissions focus on the state of the Register. In deference to these submissions. I provide the following observations regarding the Referenced Marks:

    ·Two of the trade marks[20] carry the endorsement ‘provisions of subsection 41(5) applied’. This indicates that they were not considered prima facie capable of distinguishing the relevant goods or services and instead were accepted on the basis of evidence or other circumstances. It follows that these trade marks contradict, rather than support, the Applicant’s position;

    ·Four of the trade marks[21] depict a separate device element as part of their representation. Evidently, these trade marks are not analogous to the Trade Mark which is comprised of three unembellished words with no device element;

    ·Three of the trade marks[22] contain an acronym which clearly distinguishes them from the Trade Mark which does not contain an acronym;

    ·Twelve of the trade marks[23] are registered in respect of plainly dissimilar goods and/or services to the Claimed GS. Any deductions that may be drawn from these trade marks thus have limited probative value;

    ·Three of the trade marks[24] do not position the word ‘excellence’ at the end of the trade mark. These trade marks are distinguishable from the Trade Mark given ‘excellence’ forms part of a larger phrase; and

    ·The two remaining trade marks do not constitute an overwhelming body of precedent. In particular one trade mark[25] consists of the conjoining of a prefix, as opposed to a full word, with the word ‘excellence’. Meanwhile, the circumstances that led to the registration of the other trade mark are unclear.[26] However, a previous application for the same trade mark by a person from the same address received an adverse report.[27]  

    [18] See, eg, Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, [35] (Wilcox J). In that judgment, state of the Register evidence was disregarded and Wilcox J observed that ‘Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not’.

    [19] A proportion of these trade marks are likely to have faced an insurmountable ground for rejection and thus never achieve registration.

    [20] See Australian trade mark numbers 1408734 (NATIONAL CENTRE OF INDIGENOUS EXCELLENCE) and 1426502 (CUP OF EXCELLENCE).

    [21] See Australian trade mark numbers 904383 (LEADERSHIP EXCELLENCE), 904382 (STRATEGIC EXCELLENCE), 904384 (BUSINESS EXCELLENCE) and 1858010 (DENTAL EXCELLENCE).

    [22] See Australian trade mark numbers 1125345 (ACE Automotive Centre of Excellence), 1731598 (MFA of Football Excellence) and 2065241 (FACE Cosmedical Facial Aesthetic Centre of Excellence).

    [23] See Australian trade mark numbers 898062 (GROWING EXCELLENCE), 991639 (Addictive Excellence), 1203431 (Cinema Excellence), 1237384 (SOFTWARE OF EXCELLENCE), 1623579 (DESTINATION EXCELLENCE), 1742754 (Powering Excellence), 1812866 (CONNECT EXCELLENT), 1819104 (SPECIAL DOG EXCELLENCE), 1829229 (LECHAT EXCELLENCE), 1934814 (ORCHID EXCELLENCE), 2090742 (PARTNERSHIP EXCELLENCE) and 2110152 (ENTERPRISE EXCELLENCE PODCAST).

    [24] See Australian trade mark numbers 983877 (VISION EXCELLENCE FOR ALL PEOPLE), 1179218 (MASTER DENTAL "Committed to Excellence in Dental Care") and 1292390 (EXCELLENCE THROUGH STEWARDSHIP).

    [25] See Australian trade mark number 1517645 (NEUROEXCELLENCE).

    [26] See Australian trade mark number 1943238 (BREAST EXCELLENCE).

    [27] See Australian trade mark number 1502218 (BREAST EXCELLENCE).

18. It is clear from the above that the state of the Register does not assist the Applicant’s position. On the contrary, the Referenced Marks demonstrate that using the word ‘excellence’ in combination with another word (or words) preceding it does not amount to a ‘peculiar combination’ as posited by the Applicant.[28] Simply put, the order of the words in the Trade Mark is not unconventional. Its composition has an intuitive structure which identifies the service and describes the quality of that service. This is further supported by the fact that it replicates the word structure adopted by the plaintiff in Agapitos, wherein the trade mark was comprised of the word ‘Dental’ followed by the word ‘Excellence’.[29]

    [28] Cf Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515, [73] (Charlesworth J).

    [29] See Agapitos (n 6) [42] wherein Le Miere J observed that there was also evidence ‘that a number of other businesses in Australia used the name “Dental Excellence” or a name incorporating those words at the time of filing’.

1. In my assessment, other traders who offer clear aligner treatment are likely to think of the Trade Mark and legitimately desire to use it for its ordinary signification - namely, that they too provide clear aligner treatment of a superior quality. For the claimed education and training services and related printed materials, I am satisfied that other traders would legitimately desire to use the Trade Mark, or some mark nearly resembling it, for its ordinary signification in connection with their own similar services and/or goods. The Trade Mark simply describes the intended purpose and subject matter of the relevant goods and services. Its structure is entirely consistent with other descriptive expressions, such as ‘Academic Excellence’, ‘Design Excellence’ or ‘Medical Excellence’, which are commonly adopted by traders in relation to these fields of endeavour.

2. Accordingly, I am satisfied that a ground for rejecting the application exists under the Act. The Applicant has not filed any evidence. Therefore, it is not necessary to contemplate the combined effect of the extent to which the Trade Mark is inherently adapted to distinguish the Claimed GS and the use, or intended use, of the Trade Mark.

   Decision

3. 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.

4. 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.

5. Accordingly, I reject trade mark application number 2085415 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.

   Nicholas Barbey
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   15 February 2022