Trade mark application number 2111103 (Classes 38 and 41) – CLOUDBET- in the name of Game Theory Soapbox Limited.

[2022] ATMO 38

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2111103 (Classes 38 and 41) – CLOUDBET- in the name of Game Theory Soapbox Limited.

Delegate:	Blake Knowles
Representation:	Applicant: Barry Newman of Armour IP Pty Ltd.
Decision:	2022 ATMO 38 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 41 of the Act – s 41 considered – trade mark application accepted for registration.

Background

1. This is a decision on examination of trade mark application number 2111103 (‘Application’) filed by Game Theory Soapbox Limited (‘Applicant’). The Application was filed on 12 August 2020 and has a priority date[1] of 17 February 2020 (‘Relevant Date’). The Application is for the trade mark CLOUDBET (‘Trade Mark’), and presently covers the following services:

   Class 38: Providing access to gambling, betting and gaming websites on the internet; streaming of sports and entertainment; streaming of audio, visual and audio-visual material via a global computer network; streaming audio and video material on the internet; streaming of video material on the internet; streaming of audio material on the internet; video, audio and television streaming services; streaming of television over the internet; streaming of data; data streaming; data streaming services; broadcasting services; television broadcasting; video broadcasting; audio broadcasting; internet broadcasting services; data broadcasting services; communication by online blogs; online communications services; provision of user access to online software via a global computer network; online messaging services; providing access to multimedia content online; providing access to online computer databases; providing an online interactive bulletin board; providing online chat rooms and electronic bulletin boards; providing online chatrooms for the transmission of messages, comments and multimedia content among users; providing online facilities for realtime interaction with other computer users; providing online forums; providing online forums for communication in the field of gaming, betting and gambling; providing user access to a global computer network and online sites containing information on a wide range of topics including gaming, betting and gambling; provision of telecommunication access to video and audio content provided via an online video-on-demand service; transfer of information and data via online services and the internet; providing access to gambling and gaming websites on the internet; consultancy, information and advisory services relating to the aforesaid

   Class 41: Gambling, online gambling services, providing gambling, gaming and betting facilities, betting, gaming and gambling services, betting exchange services, sports betting services, online betting services, providing entertainment via a website, consultancy, information and advisory services relating to the aforesaid

   (‘Services’)

   [1] Priority claimed from EU trade mark application no. 018196875.

2. As required by the Trade Marks Act 1995 (Cth)[2] the Trade Mark was examined. The examiner raised: (i) a ground for rejection under s 41 on the basis that the Trade Mark was not capable of distinguishing having regard to the matters set out under s 41(3), and (ii) a formalities objection that certain services falling in Class 38 required further clarification. The Applicant subsequently requested an amendment resolving the formalities objection and filed numerous rounds of submissions and evidence in response to the ground for rejection under s 41. The examiner maintained the ground for rejection under s 41 but was persuaded that the Trade Mark was more appropriately considered under the provisions of s 41(4) rather than the more onerous provisions of s 41(3).

   [2] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

3. The Applicant requested a hearing. The matter has subsequently been allocated to me, as a delegate of the Registrar, for decision. I have formed my decision based on the material on file, including the submissions of the Applicant made by its Trade Mark Attorney, Mr Barry Newman of Armour IP, and other sources of information that I consider to be relevant.  

   Evidence

4. During examination, the Applicant filed several declarations made by Mr Newman. Mr Newman’s first declaration (made on 4 November 2021) refers to the results of Google searches he conducted for the term ‘CLOUDBET’. Mr Newman states that the first five pages of results referred to the Applicant’s online gaming website. Mr Newman also annexes an extract of the Applicant’s website ( and an ABC news article dated 7 March 2018 which refers to the Trade Mark being used for gambling services. Mr Newman’s second declaration (made on 24 November 2021) refers to a Google search for the term ‘CLOUDBET AUSTRALIA’ and annexes the first seven pages of results. Mr Newman’s third declaration (made on 17 December 2021) annexes Google data indicating that the Applicant’s website has been accessed around 700,000 times by Australian users between 2014-2021.

   Discussion

5. Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Services of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Services, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Services, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that that it did not in fact distinguish the Services based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Services (s 41(4)).

6. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:

   His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish 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) 111 CLR 511, 514 (Kitto J).

7. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[4]

   [4] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

8. The examiner in raising the ground for rejection under s 41 stated:

   “CLOUD is a common term for cloud computing, the on-demand availability of computer system resources. BET is defined as to lay a wager; to make a practice of betting (Macquarie dictionary). The terms are commonly used in combination to indicate betting or gambling services which are facilitated by cloud based computing. As a whole, your trade mark therefore indicates you provide cloud-based betting services.

   Your trade mark is therefore not capable of distinguishing your services from those of other traders, as it describes the services being provided.”

9. The Applicant subsequently responded to the examiner’s first report and submitted that:

   “the portmanteau word CLOUDBET has no obvious meaning. The examiner seems to be suggesting that it corresponds to the phrase ‘BETTING USING THE CLOUD’. Given the unusual syntax of the present mark, we submit that this connection is far from obvious, and that the present mark is in fact adapted to distinguish the [Applicant’s] goods and services.”

   The Applicant went on to say:

   “The term ‘the cloud’, in a computing sense, relates entirely to the storage of information on servers (usually multiple servers) which are remote from a user which are accessed via the Internet. Betting, be it on-line or otherwise, is not about the storage of information. Betting is a transaction between two parties. It simply makes no sense to do this ‘using the cloud’, except in so far as either party may store information regarding the bet ‘in the cloud’.”

10. The Examiner, in subsequently maintaining the objection, said:

    “You have submitted that although gambling companies use “the cloud” for data storage and website hosting, this is a “back end” mechanism which would not be of relevant concern to the gambler. You have also submitted that gambling services being facilitated by cloud computing are far removed from the consumer’s experience. It is not relevant whether cloud computing used by gambling companies are of concern to the gambler or consumer’s experience. One of the tests under section 41 is whether other traders are likely to need or desire the trade mark for its ordinary meaning. Other traders would understand CLOUDBET to have an ordinary meaning in relation to gambling services, and would possibly need to use CLOUDBET, or something so nearly resembling it. Although you have discussed that the average consumer would be able to identify CLOUDBET as a badge of origin, this holds little relevance when other traders may need or desire to use the trade mark.

    As per the previous adverse report, I have provided several articles on the positive impact of cloud computing in the online gambling and betting industries. While there is no use of CLOUDBET as a whole, the provided articles show the terms CLOUD and BET are desirable in connection with betting services, as cloud computing provides benefits for gambling websites such as increased flexibility, capacity and accessibility. You have stated that CLOUDBET does not directly describe the kind, quality, quantity, purpose or any other characteristic of the claimed services. While the mark may not have a direct ordinary signification, it remains to make some reference to the services. It is more likely than not that other traders will legitimately desire to use the mark for its ordinary signification.”

11. It is not necessary to reiterate in detail the entire lengthy exchange between the Applicant and examiner. In short, the examiner’s position is that the Trade Mark has an ordinary signification that other providers of the Services are likely to wish to use, citing online articles which refer to the increasing use of cloud services by betting providers, and the impact of the cloud on the gambling industry. The Applicant’s position is that the use of the cloud by an online wagering business is a back-end function, and as such, is an irrelevant consideration for consumers of online wagering services. The Applicant contends that even if the Trade Mark has an ordinary signification consistent with that proposed by the examiner, the Trade Mark is not something that other traders may legitimately desire to use. The Applicant also refers to various ‘CLOUD’ formative trade marks that have been accepted for registration, and the examiner in response states that numerous ‘cloud’ marks have been subject to s 41 objections (some of which were overcome by provision of evidence of use).

12. The Applicant further supports its position by advising that the Trade Mark has been accepted in the UK (application number 00003467430) and EU (application number 018196875) without a distinctiveness objection being raised. My own searches, in addition to confirming acceptance in the UK and EU, also indicate that a corresponding US application (number 90111855) did not face an examination objection that the Trade Mark lacked distinctiveness (although the application ultimately was abandoned for other reasons). The legal tests for whether a trade mark is sufficiently distinctive to be considered registrable differ from country to country. However, the trade mark systems of the UK, EU, and USA all have an underlying rationale similar to Australia in assessing distinctiveness, which is to prevent the unfair monopolisation by one trader of descriptive or otherwise non-distinctive terms or indicia. Further, like Australia, decision makers in the UK, EU, and USA will consider the effect of an English language trade mark on English speaking consumers. I also understand that both cloud computing and online gambling services are provided in the UK, EU, and USA and as such, the Trade Mark would have been considered in market contexts similar to Australia in each of those jurisdictions. While a decision to refuse or allow registration in one country obviously cannot bind a decision maker in another country, I note that in Re Unilever plc's application, Hearing Officer Williams said that if “the matter approaches the borderline, it would be difficult to justify placing additional obstacles in the way of a trade mark that is already accepted in comparable jurisdictions under analogous circumstances.”[5]

    [5] [2001] ATMO 39.

13. I consider that the Trade Mark is an obvious portmanteau of two words, CLOUD and BET, and as such, should be assessed giving due weight to the meaning of those individual words. The word CLOUD has numerous meanings. I consider the most commonly understood meanings of the word CLOUD as a noun to be either a suspended mass of liquid or other particles (e.g. a cloud in the sky), or a reference to cloud computing as contended by the examiner (i.e. the ‘online cloud’). As a verb, the word CLOUD means to darken or obscure. The word BET has a narrower meaning, being a wager on the outcome of an event, or the act of placing such a wager.  Considered as a whole, I regard one of the ordinary significations of the Trade Mark, in the context of gambling, wagering, and ancillary services, is betting or wagering services that are facilitated by the online cloud. While this is not the only signification, I agree with the examiner it is one that will likely be perceived by consumers.

14. As I have determined that the Trade Mark has a relevant ordinary signification, I must next determine the likelihood of the Trade Mark being desired for use by other traders. The desirability of a trade mark for use by traders generally must be considered in the context of the market for those services. Even if a trade mark consists of a portmanteau of two words with descriptive significance, the trade mark must still have some utility that renders it desirable for use by other traders acting without improper motive. For example, terms such as CLOUD SUPPORT (for IT support services) and CLOUD CONSULTING (for IT consultancy) clearly indicate that the trader is providing support or consultancy services relating to the cloud. In these contexts, the term ‘cloud’ refers to an integral part of the service offered, and the mark as a whole has obvious utility and is something other traders may legitimately desire to use. Conversely, when considering the Trade Mark, it is not clear what utility or desirability lies in the combination of the words CLOUD and BET. I agree with the Applicant that consumers of betting and wagering services are not concerned whether such services are facilitated by the cloud. The use of the cloud by a provider of wagering and ancillary services does not provide any obvious enhancement to the customer experience. Consumers of online wagering services are concerned with issues that directly affect their exposure to risk and the size of potential returns on their wager. While the articles cited by the examiner indicate that migration to the cloud is becoming increasingly popular with online gambling providers, this appears to be due to ‘back end’ factors such as decreased capital expenditure, reduced internal staffing, and flexible scalability. In this context, I do not consider that there is any obvious utility in conveying to consumers that the Applicant’s online betting and wagering services are facilitated by the cloud. I am therefore not satisfied that other traders would legitimately desire to use the Trade Mark based on the ordinary signification identified by the examiner.   

15. I also give weight to the decisions to accept the Trade Mark in the UK, EU, and USA. While overseas precedent is not determinative, the acceptances in the UK, EU, and USA are consistent with my view that registering the Trade Mark will not likely result in the monopolisation of a descriptive term that other traders may legitimately wish to use in relation to the Services.   

16. For the reasons given above, having regard to its level of inherent adaptation to distinguish, I am not satisfied that the Trade Mark is not capable of distinguishing. As such, I withdraw the ground for rejection raised under s 41.

    Decision

17. Under s 33(1), unless I am satisfied that there are grounds for rejecting the Application or I am otherwise satisfied that the Application has not been made in accordance with the Act, I must accept the Application. Therefore, I accept the Application.

    Blake Knowles
    Hearing Officer
    17 March 2022