Trade mark application number 2211606 (16, 36) – Cygnet West – in the name of Colliers International (WA) Pty Ltd

[2022] ATMO 37

TRADE MARKS ACT 1995

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

ReTrade mark application number 2211606 (16, 36) – Cygnet West – in the name of Colliers International (WA) Pty Ltd

Delegate:	Nicholas Smith
Representation:	Applicant: Ed Heerey of Counsel instructed by Andrew Sutton of Lavan
Decision:	2022 ATMO 37 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 in Australia

Background

1. On 16 September 2021, Colliers International (WA) Pty Ltd (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (Cth) (‘Act’).

Application Number:	2211606
Priority Date:	16 September 2021
Goods and Services:	Class 16: Stationery, writing paper and envelopes, printed matter including books, leaflets, brochures, posters, printed instruction and training manuals, publications, newsletters, magazines, printed materials relating to real estate services including real estate administration, management of real estate including sale, purchase, rental of real estate, real estate appraisal and valuation, real estate management, real estate leasing, brokerage, real estate information and consultancy, real estate financial services Class 36: Insurance services, residential, commercial and industrial property advisory and consultancy services being in respect of sale and purchase, management and rental; financial services in respect of sale and purchase, management and rental of properties including real estate investment services, provision of real estate investment information, real estate investment consultancy services; sale and purchase, management and rental of properties; housing agency services, rent collection; real estate agency, real estate appraisal and valuation, real estate management, real estate leasing, brokerage and real estate rental services; information and consultancy services related to monetary affairs and the other aforesaid services (‘Applicant’s Goods and Services’)
Trade Mark:	Cygnet West	(‘Trade Mark’)

1. The Trade Mark was duly examined under s 31 of the Act and grounds for rejection were identified by the examiner under ss 41 and 44, in addition to an objection in respect of the classification of goods and services. The ground in respect of s 44 and the classification objection have now been resolved and only the s 41 ground remains. In respect of the s 41 ground the examiner stated (paraphrased), that as Cygnet is the name of a town in Tasmania other traders should be able to use the Trade Mark or something nearly resembling this in connection with goods similar to the Applicant’s Goods and Services.

2. On 9 November 2021, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act and on 21 December 2021 filed written submissions. As a delegate of the Registrar of Trade Marks I heard this matter on 2 February 2022. Ed Heerey of counsel instructed by Andrew Sutton of Lavan, representing the Applicant, made oral submissions.

3. On 12 January 2022 I wrote to the Applicant seeking that any additional evidence or written submissions to be relied on at the hearing be filed by 25 January 2022.  The Applicant’s representatives chose to disregard this direction, instead, on the evening before the hearing (without an explanation for the delay) sending a series of unverified screenshots of what purports to be a website the Applicant operates at and submitting that I should conduct my own investigation of the Applicant’s website.  As the material before me, including the material on the website, is not verified through being included as part of a declaration, I do not have regard to this material.

4. Approximately 2 and a half hours prior to the hearing of the matter the Applicant emailed a declaration, being a declaration of Andrew John Sutton made on 2 February 2022, annexing the screenshots attached to the email sent the previous evening. As such material was filed after my deadline, and only submitted to be relevant to showing intended use of the Trade Mark for s 41(4)(b)(ii) of the Act, and I have not needed to consider this provision, I do not need to consider the declaration of Mr Sutton.

5. As noted in MHFC Holdings Pty Ltd (‘MHFC’)[1]  as well as other decisions of the Registrar (Teraglow Pty Ltd[2] and TOM Organic Pty Ltd[3]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 41 of the Act. As noted in MHFC, any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it.  I have relied on the material identified above (including material filed by the Applicant in response to the examiner’s reports) as well as the written submissions filed on 21 December 2021 and oral submissions made on 2 February 2022.

   [1] [2016] ATMO 96, [9] (Hearing Officer Wilson).

   [2] [2016] ATMO 32 (Hearing Officer Worth).

   [3] [2018] ATMO 46 (Hearing Officer Worth).

   Legislative framework

6. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[4] Regarding the present application, the only remaining ground for rejection identified is under s 41 of the Act. I accept the Applicant’s submission that the capacity of the Trade Mark to distinguish the Applicant’s Goods and Services must be assessed at the filing date, being 16 September 2021 (‘relevant date’) however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the relevant date.[5]  

   [4] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

   [5] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

7. Section 41 of the Act 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).

8. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33 of the Act:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[6] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [6] (1998) 40 IPR 498, 505 (Branson J).

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][7]

   [7] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).

9. In the present case the Applicant has provided no evidence of use of the Trade Mark.  

10. As such the ground for rejection under s 41 will apply if the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods and Services from the goods and services of other persons, being the test in s 41(4). It is not necessary to conclude that the Trade Mark is not to any extent inherently adapted to distinguish, being the test in s 41(3).

11. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

    (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).
    
    (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
    
    (3) The question of whether a trade mark is adapted to distinguish the services of the applicant 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
    
    (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
    
    (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
    
    (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
    
    (7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
    
    (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
    
    (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
    
    (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
    
    (11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
    
    (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71]. [8]

    [8] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

12. As noted in paragraph 6 above, the process I am required to undertake is not a review of the examiner’s reasoning.  However, it is useful to understand how the examiner considered the question of inherent adaption to distinguish in respect of the Trade Mark.  I note that IP Australia’s practice in respect of geographical names is that a Trade Mark that is the name of a place with the potential to have a connection with the goods or services is not prima facie registrable.

13. In the First Examination Report, the examiner stated:

    Printed materials and stationary goods and business, real estate and business services as you have claimed, are widely available in cities and towns, and other traders are likely to want to use CYGNET WEST to indicate where their goods are manufactured, produced or originate from or where their services are located, provided out of or relate to (in the case of real estate services).

    I have considered the addition of the word WEST, however, this is not currently sufficient to be considered capable to distinguish the goods and other services applied for. This is because the word WEST indicates a geographical area, ie the west of cygnet.

14. In the Second and Third Examination Reports, the examiner stated:

We considered the alternative meaning of the word CYGNET, being a young swan. However, we also considered the addition of the word WEST in the mark which provides a geographical connotation and meaning and further reinforces the meaning of the word CYGNET as a geographical indicator. Additionally, we also considered the nature of the goods and services claimed by the applicant of which majority relate to real estate and housing. We consider that the nature of the services of which involve and refer to specific geographical areas, further reinforces the geographical nature of the trade mark.

…

CYGNET WEST, when used in the context of the applicant’s goods and services, is an expression which other traders are likely to want to use in relation to similar goods and services because of the ordinary significance of the words. This is because the goods and services claimed relate to real estate which are location centric and utilise geographical indicators. I consider that the meaning of CYGNET being a young swan loses its strength due to the nature of the services and also the addition of the word WEST.

1. The Applicant’s submissions in respect of s 41 are summarised below:

   ·In assessing the inherent adaptation of CYGNET WEST to distinguish the Applicant’s Goods and Services from the similar goods and services of other traders, it is necessary to determine firstly, what the ordinary signification of CYGNET WEST, in Australia, is to persons who will purchase, consume or trade in the Applicant’s Goods and Services (‘relevant persons’). If the ordinary signification is not the name of a small town in Tasmania there can be no ground for rejection which rests upon that geographical significance.  A word may have an “ordinary signification” other than a geographical name, even though it is also the name of a place somewhere.[9] 

   ·The town of Cygnet has approximately 1500 people.  There is no evidence that this town has any sort of tourism industry or any significant public exposure.

   ·Unlike cases where the only meaning of a mark is a geographical locality, in the present case the word ‘cygnet’ has a specific and commonly used meaning, being that of a baby swan, and ‘cygnet west’ an allusive meaning to West Australia, as the regional symbol of West Australia is the black swan.  In Re Unilever PLC[10] a delegate of the Registrar accepted the registration of the word PHOENIX in respect of class 3 goods notwithstanding the evidence, in respect of that application, established that the city of Phoenix had, in 1990, a population of 983,000.  The Delegate held that ‘the size of the city or place in question, and the likelihood of the goods originating there’ were relevant ‘determinants’, but it would ‘oversimplify the issue’ to limit the analysis to such matters.[11] In particular, the Delegate recognised that ‘I must also allow for the word in question having a very much more familiar meaning’[12] as a reference to a bird, and that ‘relative to the geographical significance, I believe that the probability that the trade mark will distinguish, because of its very strong other meaning, is comparatively much higher’.[13]

   ·The Trade Mark is not ‘Cygnet’.  It is CYGNET WEST.  There is no postcode for CYGNET WEST and there is no evidence that Cygnet West exists as a geographical location.  For that reason, it could not be suggested that other traders would wish to make honest use of those words for the sake of the signification which they ordinarily possess.  

   [9] Re Magnolia Metal Co’s Trade Mark (1897) 14 RPC 621, 627–8 (CA UK), cited in Cantarella (2014) 254 CLR 337, 350.

   [10] Re Unilever (2001) 53 IPR 563 (Hearing Officer Williams)

   [11] Ibid, 564.

   [12] Ibid.

   [13] Ibid, 566.

2. While I note that the Macquarie Dictionary does refer to Cygnet as a town in Tasmania, I accept the Applicant’s submissions that, given the small size of the town and the lack of any specific reputation, it is highly likely that the relevant persons would see any mark containing the word ‘cygnet’ as a reference to a baby swan, rather than as a reference to a town.  While I accept the examiner’s reasoning that the presence of the additional element ‘west’ may, in certain cases, lead to the relevant persons to consider the geographical meaning, such a consideration only becomes relevant if a) such a geographical meaning exists and b) people are aware of it.  In the absence of any evidence that ‘Cygnet West’ has any geographical meaning, I cannot conclude that the relevant persons (the vast majority of which would have no knowledge of the town and some knowledge of the use of the word to refer to a baby swan) would view the Trade Mark as anything other than a reference to a swan, or as the Applicant submits, as an allusive reference to West Australia.  

3. Even in respect of the minority of the relevant persons aware of the geographic significance of Cygnet, the fact that there is no locality known as Cygnet West makes highly unlikely that other traders would legitimately need to use CYGNET WEST for its geographical significance in respect of goods and services which are similar to the Applicant’s Goods and Services.  For these reasons I am satisfied that the Trade Mark is inherently adapted to distinguish the Applicant’s Goods and Services from those of other traders, and in the absence of any other ground for rejection the application must be accepted.

   Decision

4. Section 33 of the Act relevantly provides:

   33Application 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.

   (2)The Registrar may accept the application subject to conditions or limitations.

   (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.

5. As I am not satisfied that there is a ground for rejection under s 41 of the Act in relation to the Trade Mark, I accept the application to register the Trade Mark.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   15 March 2022