Trade mark application number 2097895 (class 41) – SNOWFEST – in the name of Greater Dandenong City Council

[2022] ATMO 7

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2097895 (class 41) – SNOWFEST – in the name of Greater Dandenong City Council

Delegate:	Nicholas Barbey
Representation:	Applicant: Macpherson Kelley
Decision:	2022 ATMO 7 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 41 considered – trade mark not capable of distinguishing – evidence of use insufficient – trade mark application rejected.

Background

1. On 23 June 2020, Greater Dandenong City Council (‘Applicant’) filed an application to register the following trade mark:

   Trade Mark:               SNOWFEST (‘Trade Mark’)

   Owner:  Greater Dandenong City Council

   Application no.:         2097895

   Priority Date:             23 June 2020 (‘Relevant Date’)

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

   Class 41: entertainment services including festivals; education and training services; educational, entertainment, and cultural activities; event management services (organization of educational, entertainment, sporting or cultural events); community festival featuring real and artificial snow and ice sculpting; amusement services; provision of recreational activities

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(4) of the Act was issued to the Applicant. The ground for rejection stated:

   Your trade mark is SNOWFEST.

   This indicates that your services are in relation to a festival featuring snow. Accordingly, your trade mark is descriptive of the services you provide and thus are unable to distinguish your services from those of other traders trading in the same or similar fields of trade.

   Other traders should be able to use SNOWFEST in connection with goods or services similar to yours.

3. To overcome the ground for rejection, the Applicant filed evidence of use which consisted of a declaration made on 3 August 2021 by Leonie King, Team Leader of Festival and Events at the Applicant, with Exhibits LK-1 to LK-7 (‘King 1’). According to King 1, the Applicant has used the Trade Mark as the name of an event which is ‘very well known within the south east Melbourne suburbs and broader Victoria’.[1] The ‘SNOWFEST’ event has been held annually since July 2013 and hosts ‘activities including snow brought in from Mt Buller, ice skating, food trucks, live music, rides and fireworks’.[2]

   [1] King 1, [8].

   [2] Ibid [19].

4. King 1 states that the Trade Mark has been promoted through a variety of print and online mediums including via the Applicant’s website accessible at (‘Website’). The Trade Mark is claimed to have a very strong reputation in relation to the Services. To support this, King 1 discloses historical attendance and advertising expenditure figures associated with the ‘SNOWFEST’ event. Reference is also made to ‘SNOWFEST’ being ‘awarded Victoria's major event of 2018 in the Parks and Leisure Awards of Excellence’.[3] King 1 further claims that other traders are not using the Trade Mark in relation to the Services.

   [3] Ibid [41].

5. In response, the examiner issued a second examination report explaining that the evidence did not demonstrate use of the Trade Mark as applied for. Instead, the evidence primarily demonstrated use of the Trade Mark in close proximity to the word ‘SPRINGVALE’, being a Melbourne suburb. As such, the s 41(4) ground for rejection was maintained and the Applicant was invited to submit further evidence.

6. The Applicant replied by filing submissions highlighting that ‘SPRINGVALE’ merely describes ‘where the event bearing the [Trade] Mark is to be held’ and does not substantially affect the Trade Mark’s identity. The Applicant also filed a second declaration made on 9 September 2021 by Leonie King with Exhibits LK-1 and LK-2 (‘King 2’). King 2 reiterates several claims made in King 1 and provides two supplementary examples of the Trade Mark being used in August 2021.

7. Unpersuaded, the examiner issued a third examination report asserting that the submissions and additional evidence were insufficient to overcome the ground for rejection. The Applicant subsequently applied for a decision on the written record but did not file any further submissions and/or evidence. The matter has now been allocated to me for determination as a delegate of the Registrar of Trade Marks. In doing so I take account of the above detailed material. This material comprises the written record.

8. 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

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.

   …

   (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.

10. To assess the merits of the s 41 ground for rejection, consideration must be given to the extent of the Trade Mark’s inherent adaptation to distinguish the Services. This is determined:

    [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 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’)[5] 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.[6] Once the ordinary signification is established, consideration must then be given 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 formulated in respect of goods, this process is equally applicable to services.

    Ordinary signification

    [5] [2014] HCA 48 (‘Cantarella’).

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

12. The Trade Mark is an obvious conjoining of the words ‘SNOW’ and ‘FEST’ and would readily be pronounced as such given the natural break between the two words. ‘SNOW’ would be understood by the majority of the Australian population as describing frozen precipitation which falls from the sky and ‘FEST’ would be recognised as an abbreviation of the word ‘FESTIVAL’. Considered in its entirety, the Trade Mark’s ordinary signification is that of a snow themed festival. As such, the Trade Mark has a straightforward meaning when used in relation to the Services.  

    Other traders

13. In accordance with Cantarella, the next step involves determining 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.

14. Both King 1 and King 2 assert that the Trade Mark is not a term that other traders are using in relation to the Services.[7] I note that this asserted absence of use of the Trade Mark is by no means determinative of its inherent adaptation to distinguish the Services. This is because whether a trade mark is inherently adapted to distinguish the relevant goods or services fundamentally depends on the nature of the trade mark itself.[8]

    [7] King 1, [84]; King 2, [19].

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

15. In my assessment, the Trade Mark constitutes an apt way to describe a snow themed festival or a festival held in an alpine location. The Trade Mark’s composition is structured in a conventional manner whereby the word ‘FEST’ is preceded by the theme of the festival, which in this case is ‘SNOW’. As noted above, ‘FEST’ is an abbreviation of ‘FESTIVAL’ and traders often use abbreviations to refer to services and/or goods. I am satisfied other traders who provide snow themed festivals or activities would legitimately desire to use the Trade Mark for its ordinary signification in connection with their own similar services and/or goods.

16. With that said, the Trade Mark possesses a limited degree of inherent adaptation to distinguish the Services despite being depicted in plain font. In my view, the conjoining of ‘SNOW’ and ‘FEST’ together with the incorporation of the abbreviation ‘FEST’, instead of the long form ‘FESTIVAL’, endows the Trade Mark with an ever so slight degree of inherent adaptation to distinguish the Services. It follows that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Services and the Applicant’s evidence of use thus falls for consideration under s 41(4) of the Act.

    Evidence of use

17. The evidence filed reveals that the earliest purported use of the Trade Mark was in June 2013[9] and use has been continuous thereafter. The evidence primarily consists of screenshots retrieved from a Wayback Machine internet archive search of the Website together with various posts made across the Applicant’s social media accounts. Copies of advertisements in third party publications together with photographs of promotional material displaying the Trade Mark have also been provided.

    [9] See Exhibit LK-3 to King 1, 58.

18. The annual attendance figures at the ‘SNOWFEST’ event between 2013 to 2019 have been detailed in King 1. The figures provided indicate that the number of attendees steadily increased from 2013 to 2016 but plateaued thereafter. Meanwhile, the advertising expenditure figures disclosed indicate that the Applicant’s expenditure was modest and focused on local advertising, such as ‘bin inserts’ for half the bins in Springvale, as well as signage in local roads and parks.

19. I note that a substantial portion of the evidence filed demonstrates use of the plain words ‘SPRINGVALE SNOW FEST’ or ‘SPRINGVALE SNOWFEST’ and not the Trade Mark as applied for. This issue was raised during the examination of the application and the Applicant responded with submissions that claimed use of either phrase constitutes use of the Trade Mark with additions or alterations that do not substantially affect its identity.[10] In short, the Applicant’s position was that the addition of ‘SPRINGVALE’ at the beginning of the Trade Mark ‘should be deemed use of the [Trade] Mark’.

    [10] See Act s 7(1) which provides that ‘a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark’.

20. The test for determining whether additions or alterations do not substantially affect the identity of a trade mark is the same as the test for substantial identity.[11] Reference was made to Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’)[12] wherein the Full Court of the Federal Court found that ‘HARBOUR LIGHTS’ was substantially identical with ‘CAIRNS HARBOUR LIGHTS’ given ‘CAIRNS’ is a geographical reference.[13] By analogy, the Applicant reasoned that ‘SPRINGVALE’ is a geographical reference and thus a total impression of similarity must emerge when ‘SPRINGVALE SNOWFEST’ and ‘SNOWFEST’ are compared side by side. I do not accept this proposition and consider that Accor can be distinguished.

    [11] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [256] (Yates J).

    [12] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ) (‘Accor’).

    [13] Ibid [233].

21. In Accor the term ‘HARBOUR LIGHTS’ was determined to be inherently adapted to distinguish the relevant services. As such, the addition of the non-distinctive word of ‘CAIRNS’ to ‘HARBOUR LIGHTS’ did not substantially affect its identity.[14] In contrast, ‘SNOWFEST’ is not inherently adapted to distinguish the Services nor is the word ‘SPRINGVALE’. When combined, the identity of ‘SPRINGVALE SNOWFEST’ therefore resides in the mark as a whole because neither constituent can be reasonably characterised as the essential element. As both words are fundamental to the identity of ‘SPRINGVALE SNOWFEST’ mark, the absence of ‘SPRINGVALE’ in the Trade Mark necessarily results in a total impression of dissimilarity emerging from a side by side comparison of the respective marks when regard is given to their essential elements. Accordingly, I do not consider use of ‘SPRINGVALE SNOWFEST’ or ‘SPRINGVALE SNOW FEST’ to constitute use of the Trade Mark.

    [14] Ibid.

22. Similar issues arise with respect to the composite marks incorporating the term ‘SNOWFEST’ (or variations thereof) that appear in the evidence, which include additional distinctive elements. Examples include:

Exhibit LK-3 to King 1
Exhibit LK-3 to King 1	Exhibit LK-7 to King 1	Exhibit LK-1 to King 2

1. In my assessment, even if I were to accept that the above examples demonstrated use of ‘SNOWFEST’ as a separate trade mark, the fact that it invariably appears in close proximity to additional distinctive graphic elements dilutes the potential trade mark significance attributable to the Trade Mark. As such, these examples do not meaningfully assist the Applicant in establishing that the term ‘SNOWFEST’ solus does or will distinguish the Services.

2. The remainder of the evidence filed is not particularly compelling. For example, despite operating for approximately seven years prior to the Relevant Date, the Applicant has not disclosed any turnover figures associated with the provision of the Services under the Trade Mark. Likewise, the Applicant contends that the Trade Mark has been prominently promoted on its Facebook and Instagram accounts with particular reference being made to the number of followers of each account. However, it must be borne in mind that these followers are following the City of Greater Dandenong’s social media accounts and not, for example, a dedicated account bearing the Trade Mark. In any event, the number of followers of each account is by no means significant. Similarly, the Applicant’s YouTube account which, amongst other things, contains promotional videos displaying the Trade Mark have received only a relatively small number of views.[15] Moreover, the evidence filed does not demonstrate use of the Trade Mark in connection with the broad range of services itemised in the Services. Rather, the evidence mainly demonstrates use in relation to an entertainment festival featuring food stalls, musical performances and snow-based activities.

   [15] For example, Exhibit LK-3 to King 1 reveals that the ‘Springvale Snow Fest 2018’ and ‘Springvale Snow Fest 2019’ videos published on the Applicant’s YouTube account have only been viewed 283 and 229 times, respectively.

3. Furthermore, the Applicant has not addressed its intended future use of the Trade Mark in respect of the Services. Instead, King 2 exhibits two examples of how the Applicant has used the Trade Mark after the Relevant Date. Tellingly, neither example advances the Applicant’s case because the evidence demonstrates use of the mark ‘SPIRIT OF SNOWFEST’ and not the Trade Mark as applied for.

4. Having regard to the evidence before me together with the extent that the Trade Mark is inherently adapted to distinguish the Services, the combined effect is not sufficient to satisfy me that the Trade Mark does or will distinguish the Services as being those of the Applicant. Therefore, a ground for rejection applies under s 41 of the Act.

   Decision

5. 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.

6. 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(4) of the Act.

7. Accordingly, I reject trade mark application number 2097895 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
   13 January 2022

   
   

   Annexure

   Class 41: Entertainment; entertainment services including festivals; childrens entertainment; childrens entertainment services; family entertainment; arranging of festivals; arranging of exhibitions for entertainment purposes; event management services (organization of educational, entertainment, sporting or cultural events); organisation of exhibitions for cultural or educational purposes; arranging, conducting and organising festivals for entertainment purposes; organisation of community festivals; screening of film, video and media; organisation of festivals; education and training services; education and training services relating to festivals; festivals featuring market stalls and live entertainment; screening of audio visual productions; cultural activities; arranging of exhibitions for educational, cultural or entertainment purposes; community festival featuring real and artificial snow and ice sculpting; ice sculpting, being entertainment; educational, entertainment, and cultural activities; cultural information; interactive festivals, including interactive art festivals; arts and crafts workshops and training; interactive educational programs; theatre shows; circus services; circus shows; organization of educational, entertainment and cultural events; organisation of competitions (education or entertainment); organisation of contests (education or entertainment); organisation of entertainment events; organising events for entertainment purposes; organising of entertainment; organising of entertainment and social events; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of entertainment services via an online forum; provision of live entertainment; provision of live music; organisation of music performances and events; showing of films; movie theatre presentations; production, provision and management of education, entertainment and cultural events; providing information, including online information, about education, entertainment, and cultural activities and events; arranging and conducting of workshops (training); conducting workshops (training); the provision of symposiums, lectures, workshops and screenings to promote the appreciation and understanding of art, music and films; arranging of exhibitions and workshops for educational purposes; charitable services, namely education and training; charitable services, namely film screenings for charitable purposes; theatre productions; presentation of live performances; conducting of educational conferences; conducting of educational courses; conducting of exhibitions for educational purposes; education information; educational seminars; sporting activities; information relating to education; information services relating to education; management of educational events; arranging of competitions; organisation of public education, training, entertainment, sporting and cultural events and festivals; organisation of contests (education or entertainment); organisation of exhibitions for cultural or educational purposes; providing information, including online, about education, training, entertainment, sporting and cultural activities; ice-skating instruction; organising ice-skating shows; provision of ice-skating rinks; provision of education services via an online forum; arranging group recreational activities; organisation of recreational activities; organisation of sporting activities; organisation of teaching activities; providing information relating to recreational activities; provision of recreational activities; provision of educational information; provision of information relating to education; publication of educational materials; publication of educational texts; arranging of entertainment; arranging of exhibitions for entertainment purposes; arranging of musical entertainment; booking of entertainment; reservation of theatre tickets; booking agency services for entertainment, cultural or sporting events; arranging group recreational activities; conducting of exhibitions for entertainment purposes; dissemination of entertainment material; entertainment; entertainment information; event management services (organization of educational, entertainment, sporting or cultural events); information services relating to entertainment; management of entertainment events; management of entertainment services; face painting; production of live performances; production of stage performances; organisation and conducting of dance, music, film and other entertainment festivals; art exhibition services; art gallery services; commissioning of artist works; display of works of art (exhibitions, shows, museums, galleries); arranging of exhibitions for cultural purposes; arranging of exhibitions for educational purposes; arranging of exhibitions for training purposes; art exhibition services; conducting of exhibitions for educational purposes; conducting of exhibitions for entertainment purposes; conducting of exhibitions for recreation purposes; display of works of art (exhibitions, shows, museums, galleries); organisation of exhibitions for entertainment purposes; ticket agency services for entertainment, cultural or sporting events; subtitling; music festival services; community festival services; organisation and conducting of dance, music, art and other entertainment festivals; organisation of promotions (entertainment events); organisation of promotions (sporting events); entertainment services, including arranging and conducting festivals featuring multiple musical groups and bands, stalls, games, rides and amusements; amusement machine entertainment services; amusement park services; amusement parks; amusement rides (entertainment); photography; amusement services; amusement rides (entertainment); amusements; conducting of exhibitions for amusement purposes; providing amusement arcade services; amusement arcade gaming machine rental services; provision of interactive games; arranging of games; electronic games services provided by means of the Internet; game services provided online from a computer network; games equipment rental; hire of equipment for games; organisation of games; providing facilities for pinball and other coin-operated games; provision of games by means of a computer based system; provision of non-downloadable games on the Internet; rental of apparatus for the playing of games; video game arcade services; video game entertainment services; magic show services; conducting guided tours; provision of amusement facilities; rental of amusement machines; musical entertainment; education services; organisation, promotion and presentation of entertainment, shows, staged events, theatrical performances, concerts, concert tours, live performances and audience participation events; adventure playground services; production of stage plays; fireworks displays; rental of apparatus for the playing of games; provision of information, consultancy and advisory services, including online, in relation to all the foregoing