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

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’)
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.
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.
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.
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.
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.
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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 88
Decision Date: 3 June 2022

CaseChat Overview and Summary

This matter concerned an application for the registration of the trade mark "HANDICAP INDEX" (International Registration number 1474655) designating Australia, filed by the United States Golf Association (the Holder). The application was opposed by the Registrar of Trade Marks. The hearing officer, Timothy Brown, was required to determine whether to accept the application for registration.

The central legal issue before the hearing officer was whether the trade mark "HANDICAP INDEX" was a descriptive term that had become generic, thereby disentitling it to registration. Specifically, the Registrar contended that the term was a generic description of a golfer's handicap and was not capable of distinguishing the Holder's services. The Holder, conversely, argued that the term was used to denote its specific handicapping system and services.

The hearing officer considered evidence from various individuals within the golfing industry, including the Holder's managing director, a representative from Golf Australia, and a general manager of a golf club. The evidence indicated that the Holder had used "HANDICAP INDEX" since 1987 to denote a standardised calculation of a golfer's ability, which differed from other handicapping systems. Witnesses stated that Australian golfers would understand the term as referring to the Holder's specific system and that it was used exclusively for the Holder's services. Despite this evidence, the hearing officer found that there was a ground for rejecting the application under section 41 of the Act.

Consequently, the hearing officer refused to extend protection to the International Registration Designating Australia number 2020821, applying regulation 17A.24 of the Regulations.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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 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’). 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. 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. 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. 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.

Decision

Reasons for decision

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. 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. Accordingly, under regulation 17A.24 of the Regulations, I refuse to extend protection.Timothy BrownHearing OfficerOppositions and HearingsTrade Marks and Designs3 June 2022

Ratio Decidendi

Legal Principle Established

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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.