World Expeditions Travel Group Pty Ltd v Australian Wilderness Adventures Pty Ltd

[2017] ATMO 141

TRADE MARKS ACT 1995

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

Re:Opposition by World Expeditions Travel Group Pty Ltd to registration of trade mark application 1734937(39) – TREKTASMANIA (DEVICE) - filed in the name of Australian Wilderness Adventures Pty Ltd.

Delegate:	Adrian Richards
Representation:	Opponent: Gadens Lawyers Applicant: Self represented
Decision:	2017 ATMO 141 Trade Marks Act 1995 (Cth) – opposition to registration of a trade mark under section 52 – grounds of opposition under section 41 and 43 pursued – section 41 established – section 43 not established – trade mark rejected.

Background

1. This decision on the written record is pursuant to an opposition to registration of a trade mark under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’).

2. Australian Wilderness Adventures Pty Ltd (‘the Applicant’) filed an application for registration of a trade mark (‘the Application’), the relevant details of which are set out below:

   Application number:          1734937

   Trade mark:  

   (‘the Trade Mark’)

   Specification of services:     Class 39: Arrangement of sightseeing tours; Arranging of sightseeing tours; Arranging of travel tours; Bicycle tours; Booking agency services for sightseeing tours; Conducting of sightseeing tours; Conducting sightseeing tours; Operating of tours; Organisation of sightseeing tours; Organisation of tours; Organising tours; Personal tour guide services; Provision of information relating to tourism; Provision of sightseeing tours (transport); Provision of tours; Services for the arranging of tours; Sightseeing (tourism); Tour operating; Tour operator services; Tour organising; Tour reservation services; Tourist agency services (travel); Tourist guide services; Travel tours and cruises

   (‘the Relevant Services’)

   Priority date:  16 November 2015 (‘the Relevant Date’)

3. The Application was advertised as having been accepted for possible registration on 7 April 2016. On 3 June 2016, World Expeditions Travel Group Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose, and a Statement of Grounds and Particulars (‘the SGP’) on 1 July 2016. This office sent the Applicant a copy of the SGP, and the Applicant responded with a Notice of Intention to Defend this opposition, which it filed on 1 August 2016.

4. The Opponent filed evidence in support on 4 November 2016. This office notified the Applicant of its opportunity to file evidence in answer, but none was filed by the statutory deadline. This office then invited both parties to request to be heard or file written submissions to be considered when this opposition was to be decided. In response to this invitation, the Opponent filed submissions on 4 May 2017. The opposition has now been given to me, a delegate of the Registrar of Trade Marks, to decide.

Evidence

1. The evidence in support filed by the Opponent consists of a declaration of Nicholas Andrew Kostos, the Director of the Opponent, made on 4 November 2016 and accompanied by exhibits NK-1 to NK-3.

2. The declaration begins by providing some background information on the Opponent, its wholly owned subsidiary and the business activities of that subsidiary. It then offers several examples, including by the Opponent, of descriptive use of the phrases ‘trek Tasmania’ and ‘trekking Tasmania’ from before and after the Relevant Date.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 41 and 43 of the Act. The onus is on the Opponent to satisfy me on the balance of probabilities that it has established a ground of opposition.[1] The rights of the parties are to be determined as at the Relevant Date.[2] To succeed, the Opponent need only establish one ground of opposition.

Reasons

[1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Section 41

1. I have set out below the parts of s 41 of the Act that are relevant to the present matter:

   41 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.

   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).

2. Following the above provisions through their logical stages, the first practical step is to consider whether the Trade Mark is inherently adapted to distinguish the Relevant Services from the services of other persons. In making this enquiry it is first necessary to consider the ordinary signification of the word and device that appear in the Trade Mark.[3] Once the ordinary signification is established, the next question is:

   …whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it…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.[4]

   [3] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337, 361-2 (French CJ, Hayne, Crennan and Kiefel JJ).

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

3. The word ‘trektasmania’ in the Trade Mark separates into two words (‘trek’ and ‘tasmania’) quite naturally when read aloud, and this verbal separation is reinforced by the different colouring of the letters. The Opponent has provided the Macquarie Dictionary definitions of ‘trek’. All of those definitions invoke a notion of challenging journeys. Relevant to the services in question, two definitions also refer to the purpose of the challenging journey as being for sport or recreation. The Opponent points out, correctly in my view, that ‘tasmania’ in this context is a reference to the Australian State of Tasmania. The Opponent describes the device as ‘the outline of a mountainous region’, which is a reasonably apt description for present purposes.

4. The Relevant Services relate to tourism. The State of Tasmania is well known in Australia for nature tourism, and the Opponent’s evidence supports this. Traders in this field who offer, for example, walking tour packages in the Tasmanian wilderness, would naturally and honestly desire to use the phrase ‘trek Tasmania’ in relation to those packages. The Opponent’s evidence quite understandably demonstrates several examples of use of this phrase by a number of traders. If the Trade Mark consisted only of this phrase, it would not to any extent be inherently adapted to distinguish the Applicant’s services from other traders. However, the issue is whether the Trade Mark is inherently capable of distinguishing as a whole.[5] The Opponent would read down the device element significantly, submitting that:

   The outline is not particularly distinctive, it is a simple bold line that depicts several mountain peaks…the addition of a depiction of the services claimed (i.e. a mountainous region whereupon trekking tours take place), does not render the Trade Mark (as a whole) capable of distinguishing.

   [5] Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428, [73].

5. The Opponent’s reference to ‘a simple bold line’ appears to assert that the device element is a common decoration, such as a basic oval[6] or a simple banner.[7] Devices of this kind will of course have no effect on the inherent adaption to distinguish a trade mark. But the device element in the Trade Mark is plainly more than ‘a simple bold line’.

   [6] Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50.

   [7] Re Application by Johnson v Johnson [1999] ATMO 2.

6. A device that is in common use in the trade, such as a lightning bolt for electrical goods, may not be capable of distinguishing.[8] The Opponent’s submission is that the device element ‘depicts several mountain peaks.’ But it has provided no evidence that might indicate that depictions of mountains are in fact commonly used for tourism related services.

   [8] Standard Telephones & Cables Pty Ltd’s Application (1969) 39 AOJP 496.

7. The Opponent submits that the device element simply depicts the Relevant Services. Such depictions are said to ‘suffer from the same disadvantages as regards registration as a word that has descriptive connotations in relation to the goods concerned.’[9] The device element in the Trade Mark consists of several angled overlapping lines that provide a rather abstract appearance. To place the Opponent’s case at its highest, this collection of lines might be read as being reminiscent of the ridgeline of a mountain range.

   [9] Pantino Inc’s Application [1966] RPC 527, 530.

8. The Opponent has not suggested that the depiction is of any particular mountain range, in Tasmania or elsewhere. Tourism can take place near, in or on any number of geographical features, including mountains. Given this, I consider that on balance it is likely that other traders without any improper motive would desire to use some mark nearly resembling this arrangement of words with a mountain device. The stylised, nondescript nature of the device element furnishes the Trade Mark with a slight degree of inherent adaptation to distinguish the services of the Applicant from other traders, but not enough to permit me to conclude that the Trade Mark as a whole is capable of distinguishing in its own right.

9. The Applicant has not provided any evidence of past use, nor intended future use of the Trade Mark, as is permitted by s 41(4) of the Act. In the absence of any mitigating information from the Applicant, I find that the Opponent has established a ground of opposition under s 41 of the Act.

Section 43

1. For completeness I will briefly deal with the other ground of opposition in issue. Section 43 of the Act is set out below:

   43  Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. The Opponent’s evidence and submissions do not deal with this ground of opposition, but it remains on the SGP, which particularises the ground in the following way:

a)If the Opponent succeeds in registering Trade Mark Application No 1734937 it will amount to a representation to consumers that it is the only service provider offering treks in Tasmania. The nature of Trade Mark Application No 1734937 is such that no alternative connotation is available.

b)This representation is false, in that there are a number of other operators offering sightseeing tours, bicycle tours, transport, tourism and travel in Tasmania.

1. I have already discussed the meanings of the words and device in relation to the s 41 ground of opposition. If the Trade Mark were used in trade by the Applicant, the connotation of the descriptive term ‘trektasmania’ does not rise above an idea that services (and possibly goods) related to trekking in Tasmania are on offer. The Trade Mark does not as much as hint at a monopoly or other form of exclusivity in relation to treks in Tasmania. The Opponent has failed to establish a ground of opposition under s 43 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55 Decision

   (1)   Unless subsection (3) applies to the proceedings, 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.

   Note:           For limitations see section 6.

2. The Opponent has established a ground of opposition, and I refuse to register the Trade Mark.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
22 November 2017