Trade mark application number 2342654 (classes 28 & 41) – 21+3 – and – trade mark application number 2343270 (classes 28 & 41) – 21+3 (figurative) - in the name of Galaxy Gaming Inc

[2025] ATMO 47

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2342654 (classes 28 & 41) – 21+3 – and – trade mark application number 2343270 (classes 28 & 41) – 21+3 (figurative) - in the name of Galaxy Gaming Inc

Delegate:

Timothy Brown

Representation:

Applicant: Source IP

Decision:

2025 ATMO 47

Trade Marks Act 1995 (Cth) – section 33 proceedings – section 41 – trade mark not capable of distinguishing – evidence of use insufficient - trade mark applications rejected

Background

1. This decision concerns two applications (‘Applications’) made by Galaxy Gaming, Inc (‘Applicant’) for the registration of the following trade marks:

   Trade Mark Number:                2342654

   Trade Mark:  21+3                   (‘Word Mark’)

   Filing Date:  17 March 2023

   Trade Mark Number:                2343270

   Trade Mark:      (‘Compsite Mark’)

   Filing Date:  21 March 2023

   Endorsement:  It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

2. Both Applications were made in respect of the following goods and services:

   Class 28: Games; Apparatus for games; Table-top games; Playthings; Chips for gambling; Gaming apparatus for gambling; Gaming machines for gambling; Card games; Apparatus for games adapted for use with an external display screen or monitor; Games adapted for use with an external display screen or monitor

   Class 41: Entertainment services; Gambling services; Casino services; Game services provided in online virtual environments; Game services provided online from a computer network (‘Applicant’s Goods and Services’)

3. The Applications were examined as required by s 33 of the Trade Marks Act 1995 (Cth)[1] and subsequently accepted for possible registration.

   [1]Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.

4. On 19 July 2023, a delegate of the Registrar of Trade Mark (‘delegate’) proposed to revoke acceptance of the Composite Mark under s 38. The notice of intention to revoke provided the following basis for the revocation:

   The mark is stylised digits 21+3. 21+3 is a common side bet of the card game blackjack, and the mark as a whole indicates the kind of game being offered in connection with the all goods and services claimed in both Classes 28 and 41.

   The stylisation of the mark is insufficient to provide sufficient inherent capacity to distinguish. Other traders are likely to desire to use a same or similar mark to describe their same/similar goods and services.

5. On 30 August 2023, the delegate also proposed to revoke acceptance of the Word Mark under s 38 on the same basis.

6. Acceptance of the Trade Marks was revoked on 22 August 2023 and 6 October 2023, respectively. Subsequent reports were issued by examiners and grounds for rejection raised under s 41(4) on the basis that ‘21+3’ is a common side bet in the game of blackjack.

7. The Applicant responded to the examiner on the 30 April 2024, submitting that ‘21+3’ is not a term consumers would use to describe the Applicant’s Goods and Services, and that the only use of the Trade Marks in Australia is by the Applicant.

8. On 13 May 2024, the examiner maintained the ground for rejection, following which the Applicant requested to be heard by way of written submissions in regard to both Applications. The Applicant filed written submissions prepared by Source IP on 26 November 2024. I make my decision on the aforementioned material and the Applicant’s written submissions.

9. As a preliminary matter, I note that the grounds for rejection will be considered afresh and that the Applications are subject to the presumption of registrability under s 33, 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 (which is not applicable in these cases).

   Applicant

10. The Applicant did not file any evidence but included in both its written submissions and response to the examiner, the following information about its background and the Trade Marks.

11. The Applicant asserts that it is one of the world’s largest developers of casino table top and electronic casino games, wagering platforms, and bonusing systems. The Applicant states that it was the owner of the following trade mark registrations (collectively, ‘earlier registrations’)

Trade Mark Number	Trade Mark	Priority date
1201750	27 March 2007
1201751	21+3	27 March 2007

1. The earlier registrations were removed from the register in 2017 due to non-renewal. The Applicant emphasises that no ground for rejection was raised in regard to the earlier registrations. The Applicant is also the owner of trade mark registrations in a number of jurisdictions around the world, including the United States of America, United Kingdom, Canada, European Union and Japan.

2. In its written submissions the Applicant refers to the website (‘casino website’), which purportedly includes the statement ‘in the original game – now owned by Galaxy Gaming and found on land-based blackjack tables worldwide’. The written submissions also refer to a Google search (‘examiner’s research’) conducted during examination for ‘what is s 21+3 blackjack’ (in examination reports dated 13 May 2024). The Applicant submits that any references to ‘21+3’ shown in the results refer to a game created and operated by the Applicant. Neither the Applicant’s submissions nor the examiner’s report include screenshots of the website or search results. While I have viewed the links provided in both documents, I caution that website content and search engine results are subject to change over time, and there can be a lack of certainty and risk in relying on hyperlinks. What I viewed may not be consistent with what was viewed by the Applicant or examiner.

   Discussion

3. Section 41 relevantly provides:

   (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).

4. Whether a trade mark is capable of distinguishing goods or services requires consideration of the extent to which the trade mark is inherently adapted to distinguish those goods or services from those of other traders. This assessment was outlined in Clark Equipment Co v Registrar of Trade Marks[2]:

   [t]he 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]

   [2] (1964) 111 CLR 511 (Kitto J) (‘Clark Equipment’).

   [3] Ibid 514.

5. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[4] indicated that the test for distinctiveness is a two-step process. First, it necessary to establish the ordinary signification, or ordinary meaning, of the trade mark in Australia to those concerned with the relevant goods or services.[5] Then once the ordinary signification is established, consideration turns to whether other traders may legitimately desire to use the term in respect of their goods or services.[6]

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

   [5] Ibid [71].

   [6] Ibid.

6. The Applicant contends that ‘21+3’ is inherently adapted to distinguish, and that any evidence of use of ‘21+3’ is a result of the Applicant’s own marketing and promotional material. That is, ‘21+3’ only references a game owned and operated by the Applicant. Further, the Applicant also submits that ‘21+3’ does not have any inherent ordinary signification in relation to games or entertainment services. The Applicant submits that the numeric values are an allusion to the way in which games of blackjack and poker are played and scored.

7. Much of the Applicant’s submissions concern the assertion that ‘21+3’ is the name of a game operated by the Applicant. Whether the Applicant originally created the term is immaterial for the purposes of assessing whether it is inherently adapted to distinguish. A term or expression will generally not be inherently adapted to distinguish if it is comprised of ordinary constituents that retain their ordinary meaning in relation to the goods or services for which registration is sought.[7]

   [7] Apple Inc v Registrar of Trade Mark [2014] FCA 1304, [210] (Yates J).

8. In this matter, ‘21’ in the context of gaming and gambling refers to the game of blackjack, and other games in which a player competes with a dealer with the objective of creating a combination of cards higher than the dealer’s hand without exceeding 21. ‘3’ has a variety of potential meanings in the context of gaming and gambling, such as the value of a card or the number of cards in a hand. The ‘+’ symbol typically refers to an addition. Despite their separate meanings, it is well established that a combination of features comprising a trade mark may be capable of distinguishing even if the individual features are lacking.[8] It is the total combination of elements of the trade mark that is considered and assessed, not its constituent parts.[9]

   [8] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380 (Lawrence J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61] (Dodds-Streeton J).

   [9] Ibid.

9. It is apparent from the examiner’s research that ‘21+3’ is utilised by traders in the context of gambling to refer to a wager made in blackjack in which the player’s two cards and the dealer’s card must combine into a winning hand of 3 card poker, such as 3 of a kind, a straight or a flush. The use of the constituents of the Trade Marks, in this context, is not allusive or figurative. ‘21’ is an overt reference to blackjack while ‘+3’ refers to the addition of the three card poker wager to the game. More importantly, it is the consistent combination of these elements that is utilised by traders to describe the wager.

10. Regarding, the Composite Mark, and the addition of the three vertical rectangle shaped devices to the mark, I note that these devices are overtly card shaped. In the context of gambling services, and the signification of the numerals outlined above, I am not persuaded that the device elements do anything other than reinforce that the Composite Mark describes a game involving 3 cards. Accordingly, I am satisfied that the Trade Marks have an ordinary signification which describes the Applicant’s Goods and Services, that being goods and services that involve blackjack and a wager of 3 card poker.

11. Turning to the question of whether other traders are likely to use the Trade Marks for the sake of its ordinary signification in connection with the Applicant’s Goods and Services, the Applicant submits that ‘21+3’ is not an apt way to describe the Applicant’s Goods and Services, and that granting registration to the Trade Marks would not prevent any person from using ‘21+3’ in the usual course of business.

12. First, I note that the assessment of whether a trade mark is inherently adapted to distinguish is an assessment made separate from the potential effects of registration.[10] Second, I acknowledge that there may be more apt ways to describe the wager. However, the numerals ‘21’ and ‘3’, and the addition symbol, are common symbols with relevant meaning in the context of gambling. The use of these symbols in the manner represented in the trade marks to describe a 3 of a kind poker wager in a game of blackjack is not so unusual that other traders would not want to use something so nearly resembling the trade marks without improper motive in connection with gambling goods and services. Similarly, in regard to the Composite Mark, the use of an outline of cards in connection with goods and services involving card games introduces a degree of stylisation to the Composite Mark, but in my view, other traders would still wish to use the Composite Mark, or something so nearly resembling it, for the sake of its ordinary signification.

    [10] Clark Equipment (above n 2) 513.

13. Regarding the Applicant’s assertion that it is owner of the game/wager, the Applicant refers me to the statements from the casino website. I acknowledge the statement; however, the author and reliability of the statement is unclear to me. Further, I would expect such a contention to at the very least be supported with a declaration from the Applicant. In the absence of any evidence on the issue, I do not accept the Applicant’s submission that references to ‘21+3’ are only reference to games owned or licensed by the Applicant, nor do I consider the Applicant’s Earlier Registrations and International Registrations sufficient to demonstrate this contention.

14. Bearing these considerations in mind, I consider the Trade Marks are to some extent, but not sufficiently inherently adapted to distinguish the Applicant’s Goods and Services.

    Evidence of use, intended use or other circumstances

15. For a ground for rejection under section 41(4) of the Act to apply, I must also be satisfied that the Trade Marks do not and will not distinguish the designated goods and services having regard to the factors outlined in section 41(4)(b) of the Act. These factors include the extent to which the trade mark is inherently adapted to distinguish, the use or intended use of the trade mark by the Applicant, and any other circumstances.

16. The Applicant has not filed any evidence of use or intended use, or explicitly made submissions in reference to s 41(4)(b). However, the Applicant has referred me to its earlier registrations and to registrations in the United Kingdom, United States of America, Canada, the European Union, Taiwan, Japan, Indonesia, Cambodia, Chile, Uruguay, Peru, Argentina, Colombia and Brazil. Registrations in other jurisdictions has been considered a relevant ‘other circumstance’.[11] Further, some of these jurisdictions have similar underlying rationales and requirements for assessing distinctiveness. However, the circumstances of the registrations in these jurisdictions are unknown to me and, at face value, not consistent with my views on inherent adaption of the Trade Marks.

    [11] See: Re Uniliver PLC [2001] ATMO 39 (Hearing Officer Williams).

17. For these reasons, I am satisfied on the balance of probabilities that the Trade Marks are not capable of distinguishing the Applicant’s Goods or Services and that there is a ground for rejection under s 41.

    Decision

18. Section 33 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.       

    (1)    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.

19. I am satisfied on the balance of probabilities that a ground for rejecting the applications to register the Trade Marks exists under s 41.

20. Accordingly, under s 33(3), I reject trade mark applications 2342654 and 2343270. If the Registrar is served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the application be in accordance with the court’s order or direction.

    Timothy Brown

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    3 March 2025