Virgin Mobile (Aust) Pty Ltd v Camille Hardman

[2008] ATMO 49

TRADE MARKS ACT 1995

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

Re:Opposition by VIRGIN MOBILE (AUSTRALIA) PTY LTD to registration of trade mark application 812032 (16;35;41) — RED PAGES — in the name of CAMILLE HARDMAN.

Delegate:	Rachel Dunn
Representation:	Opponent: Mr Scott Buchanan of Buchanan Law Applicant: Ms Julia Baird of Counsel instructed by Peter Maxwell and Associates
Decision:	2008 ATMO 49 s.52 Opposition

Background

1. Ms Camille Hardman (the applicant) applied to register trade mark 812032. The relevant details are as follows:

Application No:	812032
Trade Mark:	RED PAGES
Applicant:	Camille Hardman
Priority Date:	28 October 1999
Class 16:  (goods)	Printed publications including books, booklets, magazines, newspapers, newsletters, information sheets, handbooks, brochures, periodicals and pamphlets, photographs and posters; educational and teaching materials; printed matter pertaining to business or professional directories including paper and paper articles, stationery, cards, tickets, stickers, writing paper, envelopes, calendars, budget planners and tickets
Class 35: (services)	Providing information directory services concerning businesses related to the sexual health and lifestyle industry, including the provision, promotion, marketing, advertising, management and sale of directories and business directories in the sexual health and lifestyle industry; advertising and/or marketing of directory and/or business information via any means; online advertising on a data communication network; retail services, including online sales services; business advisory and consultancy services; management services in this class; advertising services in this class including but not limited to advertising via global communication networks; information services related to business and marketing including online marketing; information services related to sales services accessible to consumers by computer link or hyperlink; advertising services and the provision of advertising space; provision of a listing and/or directory service of goods, services and electronic mail services; wholesaling, retailing and promotion of sexual health and lifestyle goods; promotion of online entertainment services; promotion of online publications; promotion and marketing of goods available in businesses through the Internet computer system, telephone and catalogue; advertising directory listing services; advertising retail services over a global data communication network
Class 41: (Services)	Publishing directories and business directories in the sexual health and lifestyle industry; publishing printed matter pertaining to business or professional directories including paper and paper articles, stationery, cards, tickets, stickers, writing paper, envelopes, calendars, budget planners and tickets; entertainment services

1. Following an adverse first examination report the application was allowed to lapse in late 2001. However, the applicant applied for a late extension of time under section 224 of the Trade Marks Act 1995 (Cth) (the Trade Marks Act) and successfully revived the application. Revival occurred in the face of trade mark application 851047 for the trade mark RED PAGES in the name of Virgin Mobile (Australia) Pty Ltd (“the opponent”).

2. Following further correspondence between the applicant and the office, the application was accepted for possible registration, and advertised as accepted in the Australian Official Journal of Trade Marks on 3 October 2002.  The opponent filed a late Notice of Opposition and extension of time application on 11 February 2003. The late extension of time was granted and the notice, citing all grounds of opposition available under the Trade Marks Act, was successfully filed.

3. The opposition progressed slowly through the evidence stages due to numerous extensions of time for the service of evidence in support based upon negotiations between the parties. These negotiations ended, and the opponent’s evidence in support eventually fell to be served on 11 February 2006. Both the opponent and the applicant filed evidence in relation to the opposition. The evidence consists of:

   Evidence-in-Support

   ØStatutory Declaration of Fiona McAllister (the McAllister declaration) made 8 February 2006; and

   ØStatutory Declaration of Scott Charles William Buchanan with Exhibits SB–1 to SB–6 (the Buchanan declaration) made 9 February 2006.

   Evidence-in-Answer

   ØStatutory Declaration of Leonard Anthony Mancini with Exhibits LM–1 to LM–7 (the Mancini declaration) made 11 September 2006; and

   ØStatutory Declaration of Camille Hardman with Exhibits CH–1 to CH–4 (the Hardman declaration) made 11 September 2006.

4. Each party filed written submissions prior to the hearing. The matter came to be heard before me as a delegate of the Registrar of Trade Marks in Canberra on 12 February 2008. The applicant was represented by Ms Julia Baird of Counsel, instructed by Peter Maxwell and Associates. The opponent was represented by Mr Scott Buchanan of Buchanan Law.

5. In his submissions, Mr Buchanan relied upon grounds of opposition under sections 41, 58 and 59 of the Trade Marks Act. I regard the other grounds of opposition cited in the notice as having been abandoned by the opponent. Further, neither the opponent’s evidence, nor its submissions, address the section 58 ground of opposition. This ground has not been established and requires no further consideration. I will confine my reasons to the grounds of opposition under sections 41 and 59 of the Trade Marks Act.

   Submissions and Reasoning

   Section 59

6. Section 59 of the Trade Marks Act relevantly provides:

   59       Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)…;

   in relation to the goods and/or services specified in the application.

7. Mr Buchanan acknowledged that filing a trade mark application was prima facie evidence of an intention to use.[1] He pointed to several irregularities in the prosecution of the applicant’s trade mark through the application process, questioning whether, in light of these irregularities, this prima facie intention could be maintained. Specifically, Mr Buchanan noted that the applicant had allowed the application to lapse; that there had been a lengthy delay in the opposition process; and that there was no evidence that the applicant had pursued its business objectives in the 8 years since lodging the application.

   [1] Aston v Harlee Manufacturing Company (1960) 103 CLR 391, 401 (Fullagar J); McDonald's Corp v McBratney Services Pty Ltd (2006) 70 IPR 380, 397 (Hearing Officer Windsor).

8. The onus of establishing that the applicant does not intend to use the trade mark falls upon the opponent.[2] However, the presumption created by filing a trade mark application can be rebutted by ‘slight evidence’, and where this presumption has been rebutted, the onus of establishing intention will shift to the applicant.[3] In this case I do not believe the opponent has provided sufficient evidence to rebut the initial presumption.

   [2] Aston v Harlee Manufacturing Company (1960) 103 CLR 391, 401 (Fullagar J).

   [3] Americana International Limited v Suyen Corporation [2008] ATMO 4, [51] (Hearing Officer Lyons).

9. None of the circumstances highlighted by Mr Buchanan seriously questions the prima facie intention of the applicant to use the trade mark. The case file indicates that the lengthy delay in the evidence stage of this opposition was due to negotiations between the parties. It is simply inappropriate to infer anything from this delay other than a observation that the parties engaged in lengthy discussions concerning the opposition, and that these ultimately came to naught. This observation simply does not call into question the applicant’s intention to use the trade mark.

10. Similarly it is understandable that the applicant has not furthered its business plans in the considerable period following lodgment of its trade mark application. The applicant declares that she has ‘put the activities of the business on hold pending the outcome of the Opposition’ (Hardman declaration, paragraph 12). Ms Baird submitted that this reasonably accounted for the lack of activity on the part of the applicant. I agree with this submission. This is a vigorously pursued opposition, and given the nature of each party Ms Hardman’s reluctance to commence her business activities until the matter is resolved is understandable. Again Mr Buchanan’s observation does not bring into question the applicant’s intention to use the trade mark.

11. There remains Mr Buchanan’s observation that the applicant allowed the application to lapse in late 2001. In different circumstances, this may be capable of shifting the burden to the applicant to establish its intention to use the trade mark. However, in this case any adverse inference which could be drawn from allowing an application to lapse has been negated by the applicant’s subsequent actions. The applicant has acted to revive its application at considerable expense. Further, Ms Hardman has detailed in her evidence the circumstances that led to the application’s lapse (Hardman declaration, paragraphs 5–9). This evidence is credible and unchallenged by the opponent. It suggests that though the application was allowed to lapse, the applicant at all times intended to use the trade mark.

12. No evidence provided by the opponent has displaced the applicant’s presumed intention to use created by the act of filing a trade mark application. This ground of opposition has not been established.

    Section 41

13. Section 41 of the Trade Marks Act is concerned with the capacity of a trade mark to distinguish the goods and services of one trader from the goods and services of another. The operation of section 41 was comprehensively discussed by Branson J in Blount Inc v Registrar of Trade Marks (1988) 40 IPR 498, her Honour noted:

    [s]ubsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered … If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

    (a)    that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

    (b)   that 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; or

    (c)    that the trade mark is to some extent inherently adapted to distinguish the designated goods or services 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 designated goods or services.[4]

    In line with this statement and subsection 41(3), I will first consider the extent to which the applicant’s RED PAGES trade mark is inherently adapted to distinguish the designated goods and services.

    Inherent adaptation to distinguish:

    [4] Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50, 56–57 (Branson J).

14. The question of whether a trade mark is inherently adapted to distinguish the designated goods was discussed by Lord Parker in Registrar of Trade Marks v W&G Du Cross Ltd [1913] AC 624 (at 635) and his analysis was adopted by Kitto, J in Clark Equipment Company v Registrar of Trade marks (1964) 111 CLR 511 (at 514). It is to be:

    tested by reference to the likelihood that other persons, trading in goods [or services] 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.[5]

    Applying this test, I find that significant consideration is needed with respect to those goods and services designated by the applicant which could broadly be termed as directories or directory services.  The opponent argued that ‘the word PAGES has come to be understood by the general population as meaning a directory publication. All traders should be free to use this word to describe their directory publications and related services without fear of infringing a registered owner’s trade rights’ (Buchanan declaration, paragraph 5).

    [5] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 514 (Kitto J).

15. I agree with this submission. The word ‘pages’, when used in relation to a directory, is wholly descriptive of the goods or related services (such as publishing or advertising services). The opponent has submitted evidence on this point (Buchanan declaration, Exhibit SB–1) which is consistent with what I would regard as a point of general knowledge. It follows that the ‘PAGES’ element of the applicant’s trade mark describes those goods and services connected with directories and directory services.

16. However, the assessment of inherent adaptation to distinguish is applied to the trade mark as a whole, not to its constituent elements.[6] Thus even though ‘pages’ is descriptive when used in relation to directories, the degree of inherent adaptation to distinguish possessed by a ‘pages’ trade mark will depend upon other elements of the trade mark used to qualify ‘pages’.

    [6] H & R Johnson Tiles Ltd v Johnson Industrial Holdings AG (2004) 62 IPR 117, 124 (Hearing Officer Thompson).

17. The opponent submitted that ‘red’ possessed various secondary meanings, and was capable of communicating sexual overtones (Buchanan declaration, paragraphs 12–13). The argument preceded that due to this meaning, the trade mark RED PAGES was comprised of normal English words that give rise to direct references to the goods and services designated by the applicant. 

18. In response to this Ms Baird submitted that the evidence did not establish that ‘red’ had any direct reference or connotation which identified the designated goods and services. And, noting that the designated goods and services extended beyond those related specifically to directories in the sexual health and lifestyle industry, argued that the words combined in the trade mark do not converge into a meaning which was directly descriptive of the relevant goods or services.

19. Ms Baird’s point concerning the scope of the goods and services is accurate and well made.  A significant portion of the designated goods and services do not relate in any way to a ‘directory’. Of those goods and services which do only two specify that the relevant directory services are related to the ‘sexual health and lifestyle industry’.

20. The inherent adaptation of RED PAGES to distinguish goods and services which relate to a ‘listing or directory’ — where the word ‘pages’ has acquired a descriptive meaning — is obviously different to that trade mark’s adaptation to distinguish the applicant’s ‘business advisory and consultancy services’ — where ‘pages’ does not have a descriptive meaning.  It may be the case that ‘red’ has a particular meaning in relation to the ‘sexual health and lifestyle industry’.  However, the breadth of most of the applicant’s goods and services suggest I should first consider whether RED PAGES is capable of distinguishing directories and directory related items generally before delving into the specifics of any one industry.

21. The word ‘red’ is a common English word describing one of the primary colours. It has acquired numerous secondary meanings — it is, for example, closely associated with Communism, warnings, and feelings of anger[7].  Mr Buchanan also sought to establish a secondary meaning in relation to the sexual health and lifestyle industry, but I do not believe this is presently significant.

    [7] Macquarie Dictionary RED; and from the “definitions” and “symbolism” issues for the colour RED in Wikipedia; >

    The word ‘red’ contributes little to a description of a directory. It follows that the ‘red’ element adds some degree of distinctiveness to the descriptive word ‘pages’. However, ‘red’ is a common colour and a common word and is not itself particularly distinctive. The evidence also shows it is relatively common for traders to adopt trade marks which preface the word ‘pages’ with a colour when such a trade mark is used upon goods and services related to directories (Buchanan declaration, Exhibits SB–1, SB–4, SB–5, SB–6; Mancini declaration, Exhibits LM–4 and LM–6). Examples include YELLOW PAGES, WHITE PAGES, GREEN PAGES, PINK PAGES, BLACK PAGES, PLATINUM PAGES and ORANGE PAGES.  The state of the Register is a telling factor in this case as many of these applications were considered to be prima facie inherently adapted to distinguish.  That noted, the evidence also suggests a plethora of different prefixes are used in conjunction with ‘pages’ when used in relation to a directory (Buchanan declaration, Exhibits SB–1, SB–2; Mancini declaration, Exhibit LM–7).

22. The opponent submits that RED PAGES, when used in relation to goods and services associated with a directory of organisations in the ‘sexual health and lifestyle industry’ describes the relevant goods and services due to the symbolism or connotation of the word ‘red’.. I do not agree with this submission. Ms Baird emphasised the relevance of Mark Foy's Limited v Davies Coop and Company Limited on this point, citing the following extract from that case:

    It is, I think, a mistake first to assume that words like “Tub Happy” do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute such a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods.[8]

    [8] Mark Foy's Limited v Davies Coop and Company Limited (1956) 95 CLR 190, 194 (Dixon CJ).

23. To mind the meaning of RED PAGES advanced by the opponent falls upon very similar footing to TUB HAPPY in that case.  The use of RED may allude to the sexual health and lifestyle industry.  However, to paraphrase Dixon CJ, I do not believe a person hearing the combination of words for the first time in connection with a directory of businesses operating in that industry would understand the descriptive meaning advanced without stopping to reflect and ask themselves what meaning the words really possessed.[9]  I also note that a trade mark need not be ‘absolutely unsuggestive of qualities’ of the relevant goods and services to possess a degree of inherent adaptation to distinguish.[10]  Were the trade mark SEX PAGES there would be more merit to this argument.  I find that even as it specifically relates to the ‘sexual health and lifestyle industry’, RED PAGES still contains sufficient inherent adaptation to distinguish to fall within subsection 41(3).

    [9] Mark Foy's Limited v Davies Coop and Company Limited (1956) 95 CLR 190, 194 (Dixon CJ).

    [10] Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579, 589 (Wilcox J).

1. As I have determined that the trade mark has the capacity to distinguish the applicant’s goods and services from those of other traders, there is no need for an analysis of any evidence of use or of intended use or any other circumstances.  I will say however, that the evidence of intended use provided by the applicant was strong.  At the core of the evidence is a reasonably detailed business plan, supported by a continued intention to use the trade mark, registration of RED PAGES as a business name and registration of the domain name

2. I am satisfied that RED PAGES has the capacity to distinguish the designated goods and services of the applicant from those of other traders. The section 41 ground of opposition has not been established.

   Decision

3. Section 55 of the Trade Marks Act provides:

   55       Decision

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

4. The opponent has not established any of its grounds of opposition in this matter.  The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal has been discontinued or, otherwise, the court orders that registration proceed.

   Costs

5. The applicant has been successful.  As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

   Rachel Dunn
   Hearing Officer
   Trade Marks Hearings
   20 June 2008