United States Golf Association

[2022] ATMO 88

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia number 2020821 (International Registration number 1474655) (class 41) - HANDICAP INDEX - in the name of United States Golf Association.

Delegate:	Timothy Brown
Representation:	Applicant: David Larish of Counsel instructed by King & Wood Mallesons.
Decision:	2022 ATMO 88 Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) – regulation 17A.24 – section 41 considered – IRDA not capable of distinguishing – evidence of use and other circumstances insufficient – extension of protection refused.

Background

1. On 10 May 2019, the United States Golf Association (‘Holder’) applied for an extension of protection to Australia for the following International Registration Designating Australia (‘IRDA’):

   Trade Mark Number:         2020821

   IR Number:   1474655

   Trade Mark:    HANDICAP INDEX

   Filing Date:   10 May 2019   (‘Relevant Date’)

   Class 41:Handicapping for sporting events, namely golf (‘Holder’s Services’)

2. The IRDA was examined as required by regulation 17A.12 of the Trade Mark Regulations 1995 (Cth) (‘Regulations’) and a ground for rejection was initially raised under section 41(4) of the Trade Marks Act 1995 (Cth) (‘Act’) on the basis that the Trade Mark lacked sufficient distinctiveness. The Examiner concluded that:

   ‘HANDICAP in relation to sport, including golf, refers to disadvantages or advantages, while INDEX refers to a detailed list. As a whole, this indicates that your services related to an index of player handicaps.

3. The Holder responded, contending that the ordinary signification of HANDICAP INDEX was not directly descriptive of the Holder’s Services. The Holder also noted that the IRDA had been found inherently distinctive in other jurisdictions, including the United States, Canada and the United Kingdom.

4. Following the Holder’s response, a ground for rejection was raised under section 41(3) of the Act on the basis that HANDICAP INDEX is in common generic use by other traders to indicate goods or services relating to calculating handicaps for golfers.

5. To overcome the section 41(3) ground for rejection the Holder submitted evidence. The Examiner maintained the ground for rejection, explaining that the evidence did not appear to show use of the IRDA in Australia, nor demonstrate that the IRDA was capable of distinguishing the Holder’s Services in Australia. The Examiner acknowledged that the Holder coined the expression HANDICAP INDEX but concluded that HANDICAP INDEX does not indicate a trade source.

6. The Holder responded to the Examiner’s third adverse report, reiterating its position that HANDICAP INDEX is inherently adapted to distinguish the Holder’s Services. In the alternative, the Holder also submitted that the IRDA had had acquired distinctiveness through use of the IRDA before the Relevant Date.

7. The Examiner maintained the ground for rejection, concluding that the evidence was insufficient to demonstrate that the IRDA was distinctive as of the Relevant Date. The Examiner explained that the evidence did not indicate when use of the IRDA began in Australia, provide quantifiable sales or advertising figures, or show any examples of trade mark use in Australia. The Holder was invited to provide further evidence.

8. In its next response, the Holder sought to address the issues identified by the Examiner, explaining that the evidence provided demonstrated that the IRDA has been in continuous use by the Holder since 1987. The Holder also provided details of the Holder’s commercial activities.

9. The Examiner maintained the ground for rejection explaining that the financial information provided did not show use of the IRDA in the course of trade, nor otherwise demonstrate revenue relevant to use of the IRDA.

10. The Holder then requested to be heard by the Registrar of Trade Marks under section 33(4). The matter was heard before me on 4 March 2022. Appearing for the Holder was David Larish of Counsel with instruction from Bill Ladas and Sarah Goddard of King and Wood Mallesons.

11. As a preliminary observation, I note that the ground for rejection must be considered afresh. Furthermore, section 33(1) of the Act provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it or the application has not been made in accordance with the Act.

    Evidence

12. The Holder’s evidence consists of the following:

    ·Witness Statement of Steven Edmonson dated 15 December 2019 (‘Edmonson Statement’).

    ·Declaration of Simon Magdulski dated 13 July 2021 (‘Magdulski Declaration’).

    ·Declaration of Scott Wagstaff dated 29 July 2021 (‘Wagstaff Declaration’).

    ·Declaration of Suzannah Wood dated 25 October 2021 (‘Wood Declaration’).

13. The Edmondson Statement was filed with the European Union Intellectual Property Office in support of the Holder’s trade mark application for HANDICAP INDEX. Mr Edmondson was the managing director of Handicapping and Course Rating at the Holder. The Edmondson Statement explains that the IRDA is used by the Holder to denote a standardised calculation of a golfer’s demonstrated ability against a golf course of standard difficulty. The Holder has used the IRDA in this fashion since 1987. The Holder’s method of calculating handicaps differs from those used by other golf organisations, such as the EU’s EGA Handicap System or the UK’s CONGU Unified Handicapping System. For this reason, Mr Edmondson stated that the IRDA has only ever been a phrase specific to the Holder’s handicap system. The Holder licenses the use of the IRDA to various golfing associations across the world. At the time the Edmondson Statement was made, this included 38 countries.

14. Mr Magdulski is Senior Manager of Play Management and Regulations at Golf Australia who once held the position of Director of Rules and Handicapping also at Golf Australia. Mr Magdulski states that, in his opinion, the term HANDICAP INDEX was not, as of the Relevant Date, used as a general phrase to denote a type of handicap, but is instead used to denote the Holder’s Services. Mr Magdulski explains that when the Holder first developed the Slope Rating System, the term ‘Handicap Index’ was defined as a portable number carried to any golf course with a slop rating to calculate a course handicap. Until January 2020, HANDICAP INDEX was used by the Holder to refer to a golfer’s handicap based on the best 10 score differentials from their last 20 rounds.

15. Mr Magdulski’s opines that Australian golfers would understand HANDICAP INDEX as a reference to the Holder’s handicap system. Furthermore, Mr Magdulski explains that prior to May 2019, golf visitation to Australia was commonplace. Visitors from countries that use the Holder’s handicap system would also utilise HANDICAP INDEX specifically in reference to the Holder’s Services. Similarly, Australian golfers traveling to countries that utilise the Holder’s handicap system would be exposed to the phrase HANDICAP INDEX.

16. Mr Wagstaff is the General Manager at Carbrook Golf Club and a certified member of the Professional Golfers Associations (‘PGA’) with nearly 24 years of experience in the golfing industry. Mr Wagstaff declares that as of the Relevant Date, HANDICAP INDEX was in widespread use by golfers and those concerned with the sport to refer exclusively to the Holder’s Services. In Mr Wagstaff’s experience, the IRDA has been used to refer to an individual’s handicap as calculated using the Holder’s handicap system and its use is commonly accepted for eligibility for local golf competitions.

17. Both the Magdulski and Wagstaff Declarations explain that the ‘World Handicap System’ (‘WHS’) was introduced in Australia on 30 January 2020. The WHS utilises the term HANDICAP INDEX in reference to the Holder’s system for calculating a player’s handicap. This use has been authorised by the Holder.

18. The Wood Declaration includes copies of the Holder’s financial statements from the 2019 and 2020 calendar years. The financial statements include revenue generated from the Holder’s handicap services.

    Section 41

19. Section 41 of the Act 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).

20. I note that the relevant date of assessment is the filing date of the IRDA,[1] being 10 May 2019.

    [1] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [59] (Yates J).

21. Whether the IRDA is capable of distinguishing the Holder’s Services requires consideration of the extent to which the IRDA is inherently adapted to distinguish those services from the goods or services of other traders. The test for assessing this 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).

    [3] Ibid 514.

22. 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 word in respect of their goods or services.[6]

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

    [5] Ibid [71].

    [6] Ibid.

    Ordinary Signification

23. The cornerstone of the Holder’s submission is that ‘HANDICAP INDEX’ is an unusual combination of words that is not directly descriptive of the Holder’s Services. The Holder further submits that there is no evidence of other traders using the IRDA to denote a type of handicap before the Relevant Date, nor has any other handicap system offered by other traders ever used the words HANDICAP INDEX.

24. Generally, an expression will not be taken to be inherently adapted to distinguish if it is comprised of ordinary English words that retain their ordinary meaning in relation to the goods or services for which registration is sought.[7] This is the case whether the expression is newly coined or not.[8] Justice Yates in Apple Inc v Registrar of Trade Marks[9] stated:

    Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade.[10]

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

    [8] Ibid.

    [9] [2014] FCA 1304.

    [10] Ibid [11].

25. The Holder does not dispute the meaning of ‘handicap’ or ‘index’ separately. ‘Index’ is a term with many meanings, perhaps most well understood as a detailed list or key of topics in a publication with reference to the topics’ page numbers. In the context of golf, a ‘handicap’ is a measure of a golfer’s ability. The Holder contends that even if the individual elements may be lacking distinctiveness, the combination of these terms is unusual and a golfer hearing or seeing the IRDA would not immediately understand what the IRDA conveys. This was also the view of the United Kingdom Intellectual Property Office (‘UKIPO’), which accepted the IRDA for the following reasons:

    The use of the word “index” used in conjunction with the word “handicap” does have a degree of unusualness. It is not, I accept, the most apt way of describing a handicap system and on balance I accept that the average UK golfer would see the designation as slightly odd. Consequently, the designation, in the eyes of such a restricted average consumer, would not be seen as directly descriptive.

26. 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.[11] It is the total combination of elements of the trade mark that is considered and assessed, not its constituent parts.[12] However, in my view it is not unusual for ‘index’ to be used in conjunction with another word to indicate a measure, value or rating of something. The Macquarie Dictionary defines ‘index’, amongst other things, as ‘a number or symbol expressing a specific property or value ascribed to something, as in glycaemic index, refractive index’[13]. Some other examples of ‘index’ utilised in this manner include ‘body mass index’, ‘stock index’, or ‘disposition index’. As stated earlier, ‘index’ also describes a list or reference of names, subjects, or other subject matter. Even if the Holder was the first to coin the expression HANDICAP INDEX, the words represented in that manner retain their ordinary signification. Contrary to the Holder’s submissions, I do not consider the syntax of HANDICAP INDEX unusual. I am satisfied on the balance of probabilities that, at the Relevant Date, members of the public engaging in handicapping services, or golf services more generally, would have understood ‘HANDICAP INDEX’ as a measure or rating of a golfer’s handicap, or alternatively, as an index or list of golf players’ handicaps.

    [11] 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).

    [12] Ibid.

    [13] Macquarie Dictionary (online at April 8) ‘index’ (def 8).

    Other Traders

27. Turning to the question of whether other traders are likely to desire to use HANDICAP INDEX in connection with the Holder’s Services, the Holder submits that other traders would not need to use the IRDA in connection with services similar to the Holder’s Services because the IRDA was not in use at the Relevant Date to describe any handicap systems or a type of handicap, and the Holder’s services are very specialised in nature. The Holder further submits that much of the use relied on by the Examiner as evidence other traders wish to use the same or a similar trade mark was in reference to the WHS, which use is authorised by the Holder.

28. As indicated above in Kitto’s statement from Clark Equipment, the question is not one of ‘need’, but of legitimate desire to use the words for the ordinary signification they possess. This includes the desire to use words nearly resembling the trade mark.

29. I accept that the WHS utilises the Holder’s handicap system and that many of the instances of use relied on by the Examiner were use in reference to the WHS. However, a finding under section 41(3) or 41(4) does not necessarily require evidence of actual use by other traders.[14] The focus is on the likelihood of other traders having a desire to use the trade marks without improper motive.[15]

    [14]Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC [121] (Middleton, Burley and Thawley JJ).

    [15] Ibid.

30. The Holder’s evidence goes into great detail on how the Holder’s services are used to calculate a golfer’s ‘handicap index’. I accept that these services are specialised, and the method utilised by the Holder is unique from other potential methods of calculating a golfer’s handicap. However, these factors do not speak to the inherent adaption of HANDICAP INDEX to distinguish the Holder’s Services from those of other traders. As I have noted, the words HANDICAP INDEX indicate that the Holder’s Services relate to either a measure or rating of a golfer’s handicap, or an index of golfer’s handicaps. Despite the Holder’s unique method of calculation, the former meaning describes the services the Holder provides.

31. The Holder also submits that there are alternative trade marks for other traders to choose from. While this may be the case, the issue concerns whether the words used in the IRDA are taken from the common heritage of language and whether other persons, without improper motive, may wish to use those words in connection with their own goods or services. That other words or phrases might be available to describe the Holder’s Services does not significantly mitigate whether other traders may legitimately desire to use the words HANDICAP INDEX to describe their own handicapping services.

32. For these reasons, I am satisfied that other traders would desire to use the words HANDICAP INDEX, or something so nearly resembling them, without improper motive, in connection with handicapping services to describe a system or means for determining a handicap rating, or a list of golf players’ handicaps. I accept that there may be other more apt ways to refer to the Holder’s Services. Nevertheless, I am satisfied that the IRDA is to some extent, but not sufficiently inherently adapted to distinguish the Holder’s Services.

    Evidence of Use, Intended Use and Other Circumstances

1. For a ground for rejection under section 41(4) of the Act to apply, I must also be satisfied that the IRDA does not and will not distinguish the designated goods 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 Holder, and any other circumstances.

2. The Holder’s case is supported by the views of several industry witnesses. Statements made by third party members of the relevant trade can have substantial probative value.[16] It is apparent from both the Magdulski Declaration and Wagstaff Declaration that the Holder is an influential organisation in the golfing industry both internationally and in Australia. Both declarations also state that golfers in Australia would associate the words HANDICAP INDEX with the Holder.  However, the question is whether that association is due to the Holder using HANDICAP INDEX as a trade mark. I am not satisfied that this is the case. Evidence of use does not equal distinctiveness.[17] There is no evidence of any advertising or promotional activities undertaken by the Holder during the period before or following Relevant Date that might serve to demonstrate that the Holder has educated the public to recognise HANDICAP INDEX as a badge of origin. Furthermore, the evidence does not substantiate use of HANDICAP INDEX as a trade mark in Australia. The latter is not a requirement under section 41(4), but it does present a challenge in terms of demonstrating that the public could regard the IRDA as a badge of origin in the Australian marketplace.

   [16] See: Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239, 275 [238] (Beach J).

   [17] British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, (Jacobs J); Yarra Valley Dairy Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367, [226] (Middleton J).

3. The Edmondson Statement explains that the Holder was the first to provide handicapping services bearing the name HANDICAP INDEX. This use occurred in the United States of America in 1987. The Holder now provides services under the IRDA in 38 countries. Overseas use of a trade mark can be relevant in some circumstances when it comes to determining whether a sign could be capable of becoming distinctive in Australia.[18] However, as with the use of the IRDA in Australia, there is little in the way of evidence of how the IRDA is being promoted and used as a trade mark overseas. The Edmondson Statement exhibits several licensing agreements between the Holder and other golf associations to utilise the Holder’s Services and issue a HANDICAP INDEX. These agreements refer to the obligations of the local associations to promote the IRDA, but it is otherwise unclear how, and to what extent, the IRDA has been promoted and used as a trade mark overseas.

   [18] Yarra Valley Dairy Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367, [198]-[200] (Middleton J).

4. The Holder submits that the majority of descriptive use relied on by the Examiner was use of the IRDA referable to the Holder’s Services.  While this may be the case, it was not clear from many of the references provided by the Examiner that HANDICAP INDEX was being used as a badge of origin by other traders or in reference to the Holder’s Services. For example, use such as, ‘golfer with a handicap index of…’, or ‘calculated by using a nationally-standardised handicap index’, does not, in my view, demonstrate HANDICAP INDEX being used as a badge of origin to distinguish the Holder’s Services.

5. The other circumstances relied on by the Holder are the overseas trade mark registrations in English speaking markets, in particular, the United States of America, Canada and the United Kingdom. I am not persuaded by these overseas registrations. The circumstances of the registrations in the USA and Canada are unknown to me. Although the reasons for the registration in the United Kingdom were referenced earlier in this decision, they are not consistent with my views on inherent adaption of the IRDA.

6. I note that the Edmondson Statement, Wagstaff Declaration and Magdulski Declaration all refer to use of HANDICAP INDEX by the WHS. The Wagstaff Declaration explains that Golf Australia adopted the WHS in 2020 and that the handicap calculated using the WHS ‘has been referred to as the HANDICAP INDEX around the world’. Despite the potential growing prominence of the WHS since the Relevant Date, there is no exhibited evidence of how WHS utilises the IRDA as a badge of origin.

7. Given the reasons outlined above I am satisfied on the balance of probabilities that the IRDA is not capable of distinguishing the Holder’s Services, and that there is a ground for rejection under section 41 of the Act.

   Decision

8. Regulation 17A.24 of the Regulations provides:

   Final decision on examination

   (1)    The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

   (a)  it is not in accordance with this Division; or
   (b)  there are grounds for rejecting it.

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

   (3)    The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   (a)  it is not in accordance with this Division; or
   (b)  there are grounds for rejecting it, in whole or in part.

9. I am satisfied that on the balance of probabilities that there is a ground for rejecting International Registration Designating Australia number 2020821 (International Registration number 1474655) under section 41 of the Act.

10. Accordingly, under regulation 17A.24 of the Regulations, I refuse to extend protection.

    Timothy Brown
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    3 June 2022