Trade mark application numbers 2191884 (class 35) – FLECKVIEH SIMMENTAL SOCIETY – 2191895 (class 35) – FLECKVIEH SIMMENTAL AUSTRALIA – and 2191898 (class 35) – FLECKVIEH SIMMENTAL – all in the name of Fleckvieh...

[2022] ATMO 50

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 2191884 (class 35) – FLECKVIEH SIMMENTAL SOCIETY – 2191895 (class 35) – FLECKVIEH SIMMENTAL AUSTRALIA –

and 2191898 (class 35) – FLECKVIEH SIMMENTAL – all in the name of Fleckvieh Society of Australia Incorporated

DELEGATE:  Nicholas Barbey REPRESENTATION: Applicant: Fraser Old & Sohn DECISION:            2022 ATMO 50

Trade Marks Act 1995 (Cth) – section 33 proceeding in respect of three trade mark applications – section 41 considered – trade marks not capable of distinguishing

– no evidence of use filed – trade mark applications rejected  

Background

1. On 5 July 2021, Fleckvieh Society of Australia Incorporated (‘Applicant’) filed three applications to register the following trade marks:

   Trade Mark:              FLECKVIEH SIMMENTAL (‘FS Mark’)

   Application no.:      2191898

   Filing Date:               5 July 2021

   Specification:           Class 35: registry services including the recording and maintaining of lists and information for others; breed association services including providing information and administrative services to members; advertising and promotion of bovine products; retailing of bovine products (by any means)

Trade Mark:              FLECKVIEH SIMMENTAL AUSTRALIA (‘FSA Mark’)

Application no.:      2191895

Filing Date:               5 July 2021

Specification:           Class 35: registry services including the recording and maintaining of lists and information for others; breed association services including providing information and administrative services to members; advertising and promotion of bovine products; retailing of bovine products (by any means)

Trade Mark:              FLECKVIEH SIMMENTAL SOCIETY (‘FSS Mark’)

Application no.:      2191884

Filing Date:               5 July 2021

Specification:           Class 35: registry services including the recording and maintaining of lists and information for others; breed association services including providing information and administrative services to members; advertising and promotion of bovine products; retailing of bovine products (by any means)

1. The services claimed by each application are identical. For the sake of brevity, they will be collectively referred to as the ‘Claimed Services’. Each application also contained the following endorsement: ‘The applicant has advised that the English translation of the German word/phrase FLECKVIEH appearing in the trade mark is SPOTTED CATTLE’.

2. The applications were examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and an examination report for each application was issued to the Applicant. Each report raised a ground for rejection under s 41 of the Act. In relation to the FS Mark, the following rationale was provided:

   Your trade mark is the plain words FLECKVIEH SIMMENTAL. The Macquarie Dictionary contains the following definitions:

   SIMMENTAL noun one of a breed of cattle of Swiss origin, pale yellow to dark red in colour, excellent for milk or meat production.

   FLECKVIEH noun one of a breed of cattle developed in Germany from the Simmental to be a dual-purpose breed, both for milk and beef production.

   Your trade mark therefore has no capacity to distinguish your services in Class 35 because it indicates that they are services including registry, administrative, promotional, advertising and retail services performed in relation to FLECKVIEH or SIMMENTAL breeds of cattle

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

1. The FSA Mark report outlined a similarly expressed ground for rejection asserting that the FSA Mark indicates that the Claimed Services are ‘performed in AUSTRALIA in relation to SIMMENTAL or FLECKVIEH breeds of cattle’. Likewise, the FSS Mark report raised a ground for rejection contending that the FSS Mark indicates that the Claimed Services were ‘performed by a SOCIETY whose field of interest is FLECKVIEH or SIMMENTAL breeds of cattle’.

1. Each report invited the Applicant to supply evidence of use to overcome the ground for rejection identified. The Applicant declined this opportunity and instead exercised its right to be heard.

1. A hearing was scheduled and the Registrar of Trade Marks (‘Registrar’) arranged for the three matters to be heard in a single hearing. The Applicant was invited to file submissions and/or evidence. Given the similarity of the FSS, FSA and FS Marks, the Applicant filed one set of submissions for all three trade mark applications (‘Submissions’). As a delegate of the Registrar, I heard this matter by video conference on 24 January 2022. Fraser Old of Fraser Old & Sohn presented submissions on the Applicant’s behalf.

1. From the outset, I note that each ground for rejection must be considered afresh. Section 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

1. 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.

   (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.

1. To determine the merits of each s 41 ground for rejection, the extent of the FS, FSA and FSS Marks’ inherent adaptation to distinguish the Claimed Services must be considered. This is assessed:

   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.¹

2. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)² 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.³ Once the ordinary signification is established, consideration must turn 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 test is equally applicable to services.

Ordinary signification

1. According to the Submissions, Bos Indicus and Bos Tauras are the two major types of cattle breeds in Australia. The Simmental breed of cattle is a type of Bos Taurus which has been imported from Europe to Australia since the 1970s and they are generally characterised by ‘a brown body with white flecks and a white face’.⁴ The Submissions explain that in recent times ‘the original Simmental cattle from continental Europe have been inter-bred with Angus from the UK’⁵ in Australia, Canada and the United States of America. The resultant hybrid cattle

¹ Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).

² [2014] HCA 48 (‘Cantarella’).

³ Ibid [71] (French CJ, Hayne, Crennan and Kiefel JJ).

⁴ Submissions, 1.

⁵ Ibid 2.

exhibit a black hide apparently due to ‘the dominant black coat gene of the Angus cattle’.⁶ The Applicant adopted the term ‘FLECKVIEH SIMMENTAL’ to ‘distinguish themselves from the general trend of Simmental breeding’ and it aims to ‘maintain the ancient genetics of Simmental cattle with the brown body and white flecks and white face’.⁷

1. The Submissions accept that ‘SIMMENTAL’ is a type of cattle breed but contend that ‘FLECKVIEH’ is a German word which may be translated into English as ‘spotted cattle’. When combined with ‘SIMMENTAL’, the Applicant claims that the FS Mark, as a whole, is inherently distinctive. I do not agree with this characterisation. While the etymology of ‘FLECKVIEH’ may be Germanic, it remains that the question to be considered is what the ordinary signification of ‘FLECKVIEH’ would be to any person in Australia concerned with the Claimed Services. At the hearing, Mr Old referred to a Wikipedia article⁸ about ‘FLECKVIEH’ cattle and conceded that in Austria, Germany and Argentina, it would signify a type of cattle breed. However, Mr Old claimed this signification was irrelevant given it was overseas use and not in Australia.

2. This position is problematic for two primary reasons. First, even if I were to accept that the use of ‘FLECKVIEH’ to signify a cattle breed is confined to the European and South American markets,⁹ it is artificial to summarily dismiss the signification purely on this basis. In Australia, the internet is used as a borderless marketplace which facilitates global trade and rapid dissemination of information. In this setting, it is reasonable to infer that breed association, registry and bovine product related service providers would apprise themselves of both domestic and foreign cattle breeds. This is particularly so given, as the Submissions state, the ‘existence of cattle studs and different breeds has led to pedigrees being regarded as important commercially’.¹⁰ Second, the Submissions do not address the existence of ‘FLECKVIEH’ in the Macquarie Dictionary and its definition as being a cattle breed. In my view, this dictionary

⁶ Ibid.

⁷ Ibid.
⁸ See ‘Fleckvieh’ (Web page) < The Wikipedia article referred to by Mr Old lists the distribution of the Fleckvieh cattle breed as being ‘worldwide’ and its ‘worldwide population’ as totalling ‘41 million animals’. Further, the research on file indicates that ‘Fleckvieh’ was a known cattle breed in Australia prior to 5 July 2021. See, eg, Kylie Nicholls ‘Adaptable Fleckvieh genetics proving their worth in the north’, Queensland Country Life (online, 23 April 2021)

< Submissions, 1.

reference demonstrates that ‘FLECKVIEH’ is understood as signifying a breed of cattle well beyond the geographical confines postulated by the Applicant.

1. In my assessment, the FS Mark is constituted by two dictionary defined words and would be perceived as such by persons in Australia concerned with the Claimed Services. ‘FLECKVIEH’ may be defined as ‘one of a breed of cattle developed in Germany from the Simmental to be a dual-purpose breed, both for milk and beef production’.¹¹ Meanwhile, ‘SIMMENTAL’ may be defined as ‘one of a breed of cattle of Swiss origin, pale yellow to dark red in colour, excellent for milk or meat production’.¹² Taken together, the ordinary signification of ‘FLECKVIEH SIMMENTAL’ is a description of two cattle breeds.¹³

2. Accordingly, the ordinary signification of the FS Mark in the context of the Claimed Services is readily apparent. The FS Mark describes the registry and breed association services as being provided in respect of ‘FLECKVIEH’ and ‘SIMMENTAL’ cattle breeds. In relation to the claim for retailing of bovine products, the FS Mark indicates that the services involve the retailing of bovine products that are sourced from either ‘FLECKVIEH’ or ‘SIMMENTAL’ cattle breeds. As regards to the advertising and promotion of bovine products, the FS Mark describes the subject matter of these services.

3. Turning to the Applicant’s other applications, the addition of ‘AUSTRALIA’ to ‘FLECKVIEH SIMMENTAL’ does not endow the FSA Mark with a prima facie capacity to distinguish the Claimed Services. This is because ‘AUSTRALIA’ merely references a geographical location¹⁴ and describes, for example, the origin of the Claimed Services. Likewise, the addition of ‘SOCIETY’ to ‘FLECKVIEH SIMMENTAL’ does not render the FSS Mark inherently distinctive of the Claimed Services. The word ‘SOCIETY’ simply describes a characteristic of the service provider¹⁵ – namely, the services are provided by an organisation of persons associated together due to their collective interest in the ‘FLECKVIEH’ and ‘SIMMENTAL’ cattle breeds.

¹¹ Macquarie Dictionary (online at 15 March 2022) ‘fleckvieh’ (def 1).

¹² Macquarie Dictionary (online at 15 March 2022) ‘simmental’ (def 1).

¹³ I note that the literature is not definitive on this point and the research on file indicates that the terms are potentially interchangeable.

¹⁴ Macquarie Dictionary (online at 15 March 2021) ‘Australia’ (def 1) may be defined as ‘the continent south- east of Asia, lying between the Indian and Pacific Oceans; the smallest continent in the world. 7 614 500 km²’. ¹⁵ Macquarie Dictionary (online at 15 March 2021) ‘society’ (def 4) may be defined as ‘an organisation of persons associated together for religious, benevolent, literary, scientific, political, patriotic, or other purposes’.

Other traders

1. Pursuant to Cantarella, consideration must now be given to whether other traders would legitimately desire to use the FS, FSA or FSS Marks (or some mark nearly resembling one of these) for the sake of their ordinary signification in respect of their own similar goods and/or services.

1. The FS Mark is comprised of two dictionary defined words which describe cattle breeds. The words are arranged in a straightforward manner and are devoid of any embellishment or graphic component. In short, there is nothing allusive about the FS Mark when considered in its entirety. In my view, it is likely that other traders, not actuated by improper motive, who provide the Claimed Services in respect of ‘FLECKVIEH’ and ‘SIMMENTAL’ cattle breeds would think of and desire to use the FS Mark or some mark nearly resembling it. Similar reasoning applies equally to the FSA and FSS Marks.

1. The Submissions assert that other traders do not need to use ‘FLECKVIEH SIMMENTAL’ because it is ‘as redundant as the term WHITEFACE HEREFORD is today (because all Herefords have whitefaces)’.¹⁶ At the hearing, Mr Old emphasised that the distinctiveness of the FS Mark lies in the combination of ‘FLECKVIEH’ and ‘SIMMENTAL’. That is, the FS Mark is a tautology given ‘FLECKVIEH’ and ‘SIMMENTAL’ are effectively interchangeable.¹⁷

2. This line of argument does not assist the Applicant. The alleged tautologous aspect of the FS Mark does not diminish the likelihood of other traders legitimately desiring to use the FS Mark. As mentioned at [12] of this decision, ‘FLECKVIEH’ would be understood as signifying a cattle breed in Austria, Germany and Argentina. In this setting, the FS Mark can be interpreted as possessing a broader appeal given it covers a wider market of consumers by detailing both the foreign name of the breed as well as the Australian name of the breed. Alternatively, if the words are interchangeable, the FS Mark could be construed as merely emphasising the subject matter of the services and is akin to ‘AUBERGINE EGGLPANT’ or ‘ARUGLA ROCKET’ for the retail of fresh fruits and vegetables. On either interpretation, the

¹⁶ Submissions, 2.

¹⁷ I note this proposition is a departure from the purported ordinary signification of ‘FLECKVIEH’ being a foreign word as advanced by the Applicant in respect of the first step of the two-step process discussed in Cantarella.

FS Mark remains a mark that other traders would legitimately desire to use given the information it conveys.

1. For the above reasons, I am satisfied that a ground for rejecting each application exists under the Act. No evidence of use has been filed by the Applicant in respect of any application despite invitations to do so at the examination stage and prior to the hearing. Consequently, it is not necessary to consider the combined effect of the extent to which any of the FS, FSA and FSS Marks are inherently adapted to distinguish the Claimed Services and the use, or intended use, of any of the FS, FSA and FSS Marks.

Decision

1. Section 33 of the Act relevantly 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.

2. I am satisfied on the balance of probabilities that there is a ground for rejecting each trade mark application under s 41 of the Act.

1. Accordingly, I reject trade mark application numbers 2191884, 2191895 and 2191898 in accordance with s 33(3) of the Act. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the applications be in accordance with the court’s direction or order.

Nicholas Barbey Hearing Officer

Delegate of the Registrar of Trade Marks 31 March 2022