Trade mark application number 2091303 (class 30) – YORK ST. - in the name of Zuru (Singapore) Pte Ltd

[2021] ATMO 93

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2091303 (class 30) – YORK ST. - in the name of Zuru (Singapore) Pte Ltd

Delegate:

M. Cooper

Representation:

Applicant: Nico de Jong of THELOFT.LEGAL

Decision:

[2021] ATMO 93

Trade Marks Act 1995 (Cth) - section 33 proceedings – ground for rejection under s 41 – geographical name - trade mark to some extent inherently adapted to distinguish – no evidence of use - application rejected.

Background

1.     On 27 May 2020, Zuru (Singapore) Pte Ltd (‘Applicant’) filed an application to register the trade mark detailed below under the Trade Marks Act 1995 (Cth) (‘the Act’).

Trade Mark No:

2091303

Trade Mark:

YORK ST. (‘Trade Mark’)

Specification:

Class 30:  Tea; tea-based beverages; beverages made of tea; non-medicated tea extracts; non-medicated tea products; flowers or leaves for use as tea substitutes; packaged tea (other than for medicinal use); preparations for making tea based beverages

(‘Goods’).

2. The application was examined, and the examiner raised a s 41 ground for rejection based on the Trade Mark’s geographical signification. The Applicant responded to the first adverse report, contending that people will not associate the Trade Mark with the street name and that traders are unlikely to think of it and desire to use it in relation to similar goods. The examiner maintained the objection in a further report, stating in part, as follows:

Please note, the legislative test applied was based on the ordinary signification of the trade mark which consists of a geographic reference, and whether other traders are likely to think of the name and desire to use it in connection with their own goods and/or services…

Although you have argued that consumers would not associate the trade mark YORK ST. with the actual street, this cannot be assumed because the mark is rendered in plain word and without stylisation. Therefore, it is more likely that consumers would view YORK ST. as a descriptive reference to a geographical location in relation to the goods claimed.

I am not convinced by your argument around the production of tea being limited to the countryside. This is because there are examples of tea businesses which are run in central or metropolitan areas. This includes the supply and sale of tea. It is more likely that other traders would need to use YORK ST. to describe the location of similar goods or services. Furthermore, it is not necessary to establish that a place has a reputation for producing the designated goods or services to raise grounds for rejection under Section 41 of the Act. Instead, it is sufficient that the goods or services have a potential connection with the geographical name.

3.     Following receipt of this report, the Applicant requested a hearing, and I heard the matter as a delegate of the Registrar of Trade Marks on 4 August 2021. Nico de Jong of THELOFT.LEGAL Pty Ltd appeared for the Applicant, having provided submissions prior to the hearing.

4.     In making my decision I have had regard to those written submissions, oral submissions made at the hearing and, as I advised the Applicant, the written record including the application, the examiner’s materials and the Applicant’s responses.

Evidence and submissions

5.     The annexures to the submissions provide some general information about the Applicant. It is described as a ‘toy business that started in a shed on a Waikato farm in 2004 is now one of the biggest in the world … some of its most rapid growth is now coming from other parts of the retail environment, including nappes, haircare, vitamins, skincare and pet food’. It also claims it is a manufacturer and provider of a branded tea product although the annexures provided no evidence of this.

6.     In summary, the Applicant notes that there are over 1000 trade marks on the Australian Register incorporating ‘street’ including 110 in class 30, and a further 1641 for ‘road’. Reliance is placed on Part 15 of the Trade Marks Manual of Practice and Procedure which provides in part that, absent any ‘reasonable prospect of the goods/services originating from the geographical location, now or in the future, then the geographical name may have some inherent adaptation to distinguish. This will generally apply to locations where it would be unviable in terms of cost and practicality to trade from the location in question,’ The Applicant further submits that the s 41 objection should be withdrawn because:

‘a. Relevant people are unlikely to see the made-up mark ‘YORK ST.’ as a reference to an actual street name let alone a specific street in Sydney because, in particular:

i.Relevant People are used to seeing “street” trade marks that do not refer to actual street names where the goods/services originate … or that otherwise allude to other characteristics of the goods …, for example marks like “King Street” …, “CUBA ST” …  and “Shanghai Street”;

ii.there is a legitimate connection to “YORK” as a place in England, being famous for tea… which Relevant People are likely to draw on;

iii.“York Street” is just one street in Sydney, that most Relevant People are unlikely to be aware of …’

b. In any event, the likelihood of other persons desiring to use “YORK ST.” for the sake of their (sic) ‘ordinary signification’ for the Applicant’s Goods in class 30 is low because, in particular:

i. “York Street” in Sydney is not a street renowned for trading of goods as such…;

ii. In theory, the Applicant’s Goods are goods that may be sold as a service by a business located on “York Street”. However, there is a further step to selling branded products like the Applicant’s Goods, which the Applicant submits is a step too far; and

iii. “York Street” is not a street that has any obvious potential connection with the Applicant’s Goods in class 30 …;

c. Further, other persons would not want to use “York Street” as a point of difference or prominent description in a manner that would infringe a trade mark registration for “YORK ST.” …’

7.     The Applicant acknowledges that ‘businesses in central or metropolitan areas may trade in tea in that they serve it to customers or, although less likely, sell tea as a takeaway product. But those kinds of services are covered by class 43 and perhaps class 35 and not the Applicant’s Goods themselves, which are in class 30’.

8. In the alternative, the Applicant submits that the Trade Mark is to some extent inherently adapted to distinguish the Goods. Taking into account: ‘a. the extent to which the trade mark is inherently adapted to distinguish the Applicant’s Goods (as outlined above); b. the notoriety of the Applicant as a global business; and c. the presumption of registrability of a trade mark, “YORK ST.” … does, or will, distinguish the Applicant’s Goods in class 30 and so the ground of objection under section 41 of the TMA should be withdrawn.’

Legislation

9. Section 33 of the Act requires that the Registrar must accept an application for registration unless satisfied, on the balance of probabilities, that there is a ground for rejecting it.[1] The relevant date of assessment is the filing date.[2]

[1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [146] (Sundberg J). As also confirmed by the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 146.

[2] Apple Inc v Registrar of Trade Marks [2014] FCA 1304 [59]; (2014) 227 FCR 511 (Yates J).

10.   I note that my task is not to review the examiner’s decisions but to consider the application afresh.

11. Section 41 of the Act relevantly provides as follows:

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.

12.   According to the oft-cited statement of Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’), inherent adaptation to distinguish is to be tested:

by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, 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.[3]

[3] [1964] HCA 55; (1964) 111 CLR 511 [514] (Kitto J).

13.   The above passage was approved by the majority in the High Court decision of Cantarella Bros v Modena Trading,[4] describing the assessment as follows:

As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word ... is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[5]

[4] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).

[5] Ibid [71].

14.   This confirms that the ‘inherent adaptation to distinguish’ test is the same for a trade mark which is a geographical name as it is for any other trade mark. As I observed at the hearing, the Trade Mark is the name of a street that appears in many Australian cities, not just Sydney.[6] Consequently, while it has no ordinary meaning in relation to the Goods, I am satisfied that it has an ordinary signification to Australian consumers as a street name.

[6] As demonstrated by examiner’s Google® search results (‘the research’).

15.   Given the ordinary signification, it is necessary to consider whether other traders would legitimately want to use YORK ST. for its geographical significance in respect of similar goods. This consideration was explained by Gummow J Oxford University Press v Registrar of Trade Marks (‘Oxford University Press’):

The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify the goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[7]

[7] [1990] FCA 175; 17 IPR 509 [530] (Gummow J).

16.   As observed by the Applicant, there is no evidence that the Goods or anything similar to them, are, or are likely to be, produced in York St. Sydney (or in any other ‘York St.’ in Australia). It is not necessary however that the relevant goods be actually produced in the geographical location the subject of the objection to find other traders may wish to use the Trade Mark. It is sufficient that ‘the geographical location was associated or could be associated with the goods in respect of which registration was sought…’[8]

[8] Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367 [64]; (2010) 191 FCR 297 (Middleton J).

1. The Trade Marks Office Manual of Practice and Procedure, as referred to by the Applicant, lists relevant considerations in this regard:

   15.7 Names of streets, roads, districts and suburbs

   These are to be treated like any other geographical name. The test is whether because of the ordinary signification of the trade mark containing or consisting of the geographic reference, other traders are likely to think of the name and desire to use it in connection with their own goods and/or services. Relevant considerations include:

   • whether there are other businesses or a commercial area existing in the street, road, district or suburb;
   • whether the goods or services are of the kind likely to be provided by other traders in that street, road, district or suburb (for example ordinary consumer goods may be provided by other traders in most areas, whereas highly specialised goods or those requiring significant infrastructure may be less so);
   • whether the name is one found in many cities and at least one occurrence is likely to include a business or commercial area (for example “The Esplanade”, “Southbank” or “Victoria Street” are found in many cities and often contain entertainment, retail or business centres); and
   • whether the street, road, suburb or district has a potential connection with certain goods or services (for example LYGON STREET has a reputation as a restaurant district and so does not have sufficient inherent capacity to distinguish in respect of restaurant services).

   Research will generally give a sufficient indication of the nature of the street, road, district or suburb. Where the name in question is that of a district or suburb consideration must be given to the fact that such areas often incorporate both commercial and residential areas.

   18.   In relation to these considerations, the research indicates that York St., Sydney is a major CBD street containing several different types of commercial and retail businesses. Tea is an ordinary consumer good, and the research shows it is sold and served in a variety of coffee and food shops in York St., Sydney. The research also reveals the existence of specialist retail shops called ‘One Tea Lounge’ and ‘Tea Shop Express’ in York St. Sydney as well as tea shops in York St. Albany, WA and ‘Fun Tea’ in York St. Adelaide. As the Applicant also acknowledges, there is an association between the city of ‘York’ and tea. Seen in the above contexts, I do not consider the Trade Mark is a ‘fancy name’ such that ‘to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur.’[9]

   [9] Clark Equipment [514]-[516].

   19.   Therefore, while there is no evidence that other traders are currently using the Trade Mark, or something nearly resembling it, for its ordinary signification in relation to the Goods, in assessing whether ‘it is reasonable to suppose that such goods in the future will be’ provided (if not produced) in York St., the above-noted evidence establishes that other traders are already selling and serving the Goods in that location. Combined with the fact that York St. Sydney is a large commercial precinct in which several varying businesses operate, I consider it reasonable to suppose other traders may ‘have a legitimate interest in using the geographical name to identify their goods’.[10]

   [10] Oxford University Press, above n 7.

   20.   Consequently, I am satisfied that Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Goods from those of other persons (s 41(4)(a)). It follows that I must consider the ‘combined effect’ of the matters specified in s 41(4)(b). The Applicant’s submissions in this regard are noted above (paragraph 8). I have also had regard to the Applicant’s observation of the large number of trade marks on the Australian Register incorporating the word ‘street’ and ‘road’ however evidence based on the ‘state of the register’ has previously been rejected as irrelevant in registration cases.[11]

   [11] In particular, in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 [35]-[36], Wilcox J adopted Jacobs J’s comments in British Sugar, that the state of the register is not evidence about ‘what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration...’

   21.   Given the Trade Mark’s limited capacity to distinguish, combined with a lack of evidence of use or intended use of the Trade Mark or any other circumstances indicating that the Trade Mark will distinguish the Goods, I am satisfied on the balance of probabilities that the Trade Mark does not and will not be capable of distinguishing the Goods from those of others (s 41(4)).

   Decision

   22. 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.

   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.

   23. For the above reasons, I am satisfied there are grounds for rejecting Trade Mark under s 41 of the Act. Accordingly, under s 33(3) of the Act, I reject trade mark application 2091303.

   Mary-Ann Cooper

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   31 August 2021