World Expeditions Travel Group Pty Ltd v Franklin River Rafting Pty Ltd

[2017] ATMO 158

TRADE MARKS ACT 1995

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

ReOpposition by World Expeditions Travel Group Pty Ltd to registration of trade mark application 1623570 (39) – FRANKLIN RIVER RAFTING - in the name of Franklin River Rafting Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Peter Creighton-Selvay of Counsel, instructed by Gadens Lawyers

Applicant: Patent Attorney Services (written submissions only)

Decision:                   2017 ATMO 158

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 41 considered – trade mark not to any extent inherently adapted to distinguish – s 41(3) evidence of use does not establish that the trade mark in fact distinguished at priority date – opposition successful – registration refused

Background

1.     This decision concerns an opposition brought by World Expeditions Travel Group Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below in the name of Franklin River Rafting Pty Ltd (‘the Applicant’):

Application Number:

1623570

Filing Date:

19 May 2014

Services:

Class 39: Organisation and provision of sightseeing tours and excursions, nature tourism, adventure tourism and water transport

 (‘the Applicant’s Services’)

Trade Mark:

(‘the Opposed Trade Mark’)

Endorsement:

Evidence and/or other circumstances provided under subsection 41(4).

2. The application was examined as required by s 31 of the Act. The examiner issued an adverse examination report in which she cited earlier trade mark 1560658—Franklin River Rafting, rendered in plain lettering—as a ground for rejection of the application under s 44 of the Act. The examiner also indicated there was a ground for rejecting the application under s 41 of the Act. The examiner considered that the Opposed Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Services from the goods and services of other persons, and indicated that the Applicant might overcome the ground for rejection if it provided evidence of use in terms of s 41(4) of the Act.

3.     The Applicant provided evidence of use of its trade mark in response to the adverse examination report. The examiner[1] was satisfied the evidence demonstrated use of the Opposed Trade Mark prior to the priority date of the earlier cited trade mark, thereby overcoming the ground for rejection under s 44. The examiner, however, was not satisfied that the evidence was sufficient to show that as a result of its use the Opposed Trade Mark did or would distinguish the Applicant’s Services from the goods or services of other persons. The examiner issued a second adverse report in which he indicated that the Applicant would need to provide further evidence in order to overcome that ground for rejection.

[1] By this time the application had passed to a different examiner.

4.     The Applicant provided further evidence in response to the second adverse examination report. The examiner was satisfied by the evidence of the Applicant’s intended use of the Opposed Trade Mark that the trade mark would, at some point in the future, in fact distinguish the Applicant’s Services as being those of the Applicant. The examiner accepted the application.

5.     On 27 August 2015 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 23 October 2015 and a Statement of Grounds and Particulars (‘the SGP’) on 20 November 2015. The SGP nominated grounds of opposition under ss 41, 42(b), 43, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 16 December 2015.

Evidence

6.     Following the expiration of a cooling-off period the parties filed evidence in accordance with the Trade Marks Regulations 1995 (Cth). The Opponent filed Evidence in Support of its opposition (‘EIS’) on 20 October 2016. This evidence consists of:

·Declaration made on 19 October 2016 by Nicholas Andrew Kostos, the Director of the Opponent, with Exhibits NK-1 to NK-11 (‘Kostos 1’).

7.     The Applicant filed Evidence in Answer (‘EIA’) on 26 January 2017. This evidence consists of:

·Statutory Declaration made on 20 January 2017 by Michael John Grant, attorney at Patent Attorney Services, the attorneys of the Applicant, with Exhibits MJG-1 to MJG-4 (‘the Grant declaration’).

oExhibit MJG-1 is a redacted copy of a declaration made on 23 July 2014 by Elias Justus Eichler, Director, Operations Manager, Marketing Manager and Raft Guide of the Applicant, with Exhibits EJE-1 to EJE-4 (‘Eichler 1’).

oExhibit MJG-2 is a redacted copy of a declaration made on 5 August 2015 by Elias Justus Eichler with Exhibits EJE-5 to EJE-7 (‘Eichler 2’) Eichler 2 is a ‘Supplementary Declaration’ which refers, in part, to Eichler 1. As discussed later in this decision, the redactions to Eichler 1 and Eichler 2 were made by IP Australia following a request for the declarations under the Freedom of Information legislation.

oExhibit MJG-3 is a copy of Eichler 1 which has not been redacted.

oExhibit MJG-4 is a copy of Eichler 2 which has not been redacted.

Unless otherwise indicated, when referring to Eichler 1 and Eichler 2 in the remainder of this decision I will be referring to the original, unredacted versions. Eichler 1 was originally filed in response to the first adverse examination report. Eichler 2 was originally filed in response to the second adverse examination report.

·Statutory Declaration made on 22 January 2017 by Elias Justus Eichler with Exhibits EJE-9 to EJE-10 (‘Eichler 3’).

8.     The Opponent filed Evidence in Reply (‘EIR’) on 31 March 2017. This evidence consists of:

·Declaration made on 28 March 2017 by Nicholas Andrew Kostos with Exhibits NK-1 to NK-2 (‘Kostos 2’).

9.     Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Opponent requested to be heard. The Applicant chose to rely solely on written submissions.

10.     I heard the matter in Canberra on 25 October 2017 as a delegate of the Registrar of Trade Marks. Peter Creighton-Selvay of Counsel, instructed by Gadens Lawyers, appeared for the Opponent. In accordance with my earlier directions, Mr Creighton-Selvay provided a written outline of his submissions which was filed on 5 October 2017. The Applicant filed written submissions on 13 October 2017. During oral submissions Mr Creighton-Selvay referred to an authority which was not referred to in his written outline. As the Applicant did not appear at the hearing, in the interests of procedural fairness I provided the Applicant with an opportunity to provide submissions in respect of the same authority. The Applicant filed supplementary written submissions on 27 October 2017.

The Opponent

11.     According to Kostos 1, the Opponent is a travel company which specialises in adventure trekking holidays in seven continents. The Opponent offered the first commercial rafting trips on the Franklin River in 1978. Mr Kostos also declared:

The Opponent first used the trade mark ‘Franklin River Rafting’ in 1978 and has continuously used the trade mark ‘Franklin River Rafting’ since 1982.

The Opponent has been offering the services of organising and providing sightseeing tours and excursions, nature tourism, adventure tourism and water transport on the Franklin River since 1978 by reference to the trade mark ‘Franklin River Rafting’ or similar. …

The Opponent is well-known in the marketplace for its Franklin River rafting services due to its use of consumer-facing materials, social media use and through media recognition …

The Applicant

12.     According to Eichler 1 the Applicant is a tour company that offers white water rafting expeditions on the Franklin River in Tasmania. It was established in 2012. Mr Eichler also declared:

The name ‘Franklin River Rafting’ was first used as a business name in the first part of 2012 … This was incorporated shortly afterwards in July 2012 as [the Applicant] which uses the trading name ‘Franklin River Rafting’. Our logo[2] was … first used on our website … on 2 August 2012. …

Our logo has been used continuously since the website launched on 2 August 2012.

[2] Presumably this is a reference to the Opposed Trade Mark.

Grounds of Opposition, Onus and Standard of Proof

13. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 41, 42(b), 43, 58, 60 and 62A of the Act. At the hearing Counsel for the Opponent indicated that it would be pressing only the ground provided by s 41. The onus of proof in an opposition rests upon the Opponent.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the registrability of the Opposed Trade Mark must be considered is the date the opposed application was filed, being 19 May 2014, (‘the Relevant Date’).

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[4] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

Discussion

14. Section 41 of the Act provides:

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).

(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).

15.     Mr Creighton-Selvay summarised the Opponent’s case as follows:

(a)The Opposed TM is not to any extent inherently adapted to distinguish the designated services within the meaning of s 41(3)(a) of [the Act]. The dominant cognitive element of the Opposed TM constitutes the words ‘Franklin River Rafting’. The Applicant has, itself, admitted in this opposition that those words are ‘descriptive’ and that ‘no operator or provider of the relevant services is entitled to claim or assert any exclusive rights in that simple phrase’.[5] The addition of a black coloured circle, and the use of white text, does not confer any degree of distinctiveness on the Opposed TM. Further, the Applicant had not, at the filing date, used the Opposed TM ‘to such an extent that the trade mark does in fact distinguish’ within the meaning of section 41(3)(b) of [the Act].

(b)Alternatively, if the Registrar considers that this opposition should be determined pursuant to section 41(4) of [the Act], on the basis that the Opposed TM is ‘to some extent, but not sufficiently, inherently adapted to distinguish’, the Opposed TM did not at the filing date and will not distinguish the designated services, when regard is had to the matters stipulated in section 41(4)(b) of [the Act]. In particular, the highly descriptive nature of the Opposed TM, the substantial and longstanding third party use of that phrase, and the limited and inconsistent use made by the Applicant of the Opposed TM, all compel a conclusion that registration must be refused under section 41(4) of [the Act].

[5] These statements were made in para 13 of Eichler 3.

Is the Opposed Trade Mark to any extent inherently adapted to distinguish?

16.     The case law setting out the necessary considerations for determining whether a trade mark is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon 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, upon or in connexion with their own goods.[6]

[6] (1913) AC 624, 634-5.

17.     In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[7]

[7] (1964) 111 CLR 511, 514.

18.     That the term ‘Franklin River rafting’ is entirely devoid of inherent adaptation to distinguish the Applicant’s Services was conceded both in Eichler 3 and in the Applicant’s submissions in chief. I agree that this is so. The Applicant submitted, however, that the Opposed Trade Mark does not consist solely of that term but consists of a combination of:

·the phrase ‘Franklin River Rafting’,

·the words ‘Franklin River’ in a moderately stylised font,

·the word ‘Rafting’ on a line beneath ‘Franklin River’,

·the word ‘Rafting’ in a more flowing stylized cursive italic font,

·the word ‘Rafting’ in much larger lettering size,

·the word ‘Rafting’ having its initial letter capitalised, and

·the words being placed on a solid coloured disc.

19.     It was stated in Fry Consulting v Sports Warehouse (No 2) (‘Fry Consulting’):

It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive. When assessing whether a combination trade mark such as the Fry trade mark is adapted to distinguish, it is necessary to consider the combination as a total composition, rather than the individual constituent elements in isolation.[8]

[8] (2012) 94 IPR 551, 565 [61].

20.     The Applicant submitted, following reference to Fry Consulting, that in order to establish that the Opposed Trade Mark is not to any extent inherently adapted to distinguish the Opponent would need to have shown in its evidence why other traders would honestly desire or need to use the particular combination of elements it listed as constituting the trade mark. The Applicant asserts that the Opponent has not discharged the onus on it to do this.

21.     The Opponent has submitted:

It is well established that the use of minor stylisation, or commonplace graphical elements, will not be sufficient to render a descriptive trade mark distinctive, or even to some extent inherently adapted to distinguish.

For example, in Blount Inc v Registrar of Trade Marks (‘Blount’),[9] Branson J held that the following mark was not to any extent inherently adapted to distinguish:

Relevantly, Branson J held that the use of an oval shape and a black and white contrast was not sufficient to confer any degree of distinctiveness upon the OREGON device mark.[10]

[9] (1998) 40 IPR 498.

[10] Ibid 507.

22.     The Opponent referred also to Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft (‘Bayer’).[11] In that case the court considered the sign shown below.

Kitto J found that the sign

merely provides a fancy method of presenting the name ‘Bayer’, and it has no greater aptitude than has the name itself for distinguishing the proprietor’s goods from those of other people who happen to be known as ‘Bayer’. It seems to me beyond doubt that the name is the feature which makes the device what it is—the feature which stands out as the operative thing in it, and to which everything else is merely assistant—the feature which … ‘would strike the eye and fix in the recollection’.[12]

[11] (1965) 120 CLR 285.

[12] Ibid 293 [13].

23.     It is apparent from the decisions in both Blount and Bayer that it is not necessary that other traders might wish or need to use the exact combination of elements and/or arrangement of elements in a trade mark for a trade mark to lack inherent adaptation to distinguish. It is necessary only that the additional elements and/or the arrangement of the elements add nothing to the (lack of) inherent ability to distinguish of the essential feature—which in this case is the entirely descriptive term ‘Franklin River rafting’. In my view the arrangement of the words, the minimal stylisation of the fonts used, and the addition of the disc upon which the words appear add nothing of significance. To paraphrase Kitto J, the Opposed Trade Mark merely provides a fancy method of presenting the words ‘Franklin River rafting’. I am satisfied that the Opposed Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services from the goods or services of other persons. I move then to consider the evidence of use provided by the Applicant in terms of s 41(3) of the Act.

Did the Opposed Trade Mark in fact distinguish?

24.     As the Opposed Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s Services, the application must be rejected unless the EIA establishes that the Applicant has used its trade mark before the Relevant Date to such an extent that the trade mark does in fact distinguish the Applicant’s Services as being those of the Applicant. To establish that a sign which is not to any extent inherently adapted to distinguish does in fact distinguish typically requires evidence of extensive use and exposure to the public of that trade mark over a long period of time and this use must have occurred before the filing date.

25.     Much of the evidence provided by the Applicant in this matter is claimed to be confidential. It is stated in the Grant declaration that the edits to the redacted versions of Eichler 1 and Eichler 2—which make up Exhibits MJG-1 and MGJ-2 of the Grant declaration—were made by IP Australia following a request under the Freedom of Information (‘FOI’) legislation for copies of those declarations. It is not explicit in the Grant declaration who made the FOI request. Nevertheless, Mr Grant declared the following:

In about October 2016, an application was made to IP Australia under the Freedom of Information legislation for, inter alia, copies of the two Declarations by Mr Eichler. Because those two Declarations contained commercially confidential information, I believe that certain information or documents were not provided or were redacted before supply of documents to the FOI applicant. In particular, on or about 11 November 2015, [sic] IP Australia made determinations that several parts of the two Declarations by Mr Eichler contained commercially confidential information that might significantly prejudice the applicant by disclosure. Those two Declarations by Mr Eichler are therefore provided as exhibits to this Declaration with the confidential information determined by IP Australia redacted.

26.     As indicated above, unredacted versions of Eichler 1 and Eichler 2 were provided in Exhibits MJG-3 and MJG-4 of the Grant declaration; both exhibits are nominated as ‘Confidential Exhibits’. Additionally, Exhibits EJE-9 and EJE-13 of Eichler 3 are nominated as ‘Confidential Exhibits’. The importance that the information claimed as confidential remain confidential was stressed in correspondence received from the Applicant’s attorneys prior to the hearing. The result of these claims for confidentiality is that in discussing the EIA I am unable to provide specific sales or advertising figures. That the entire unredacted versions of Eichler 1 and Eichler 2 are claimed to be confidential essentially leaves only the parts of Eichler 3 which are not claimed to be confidential available to be freely discussed in detail.

27.     Eichler 3, at least in part, provides information which updates that which appears in the earlier Eichler declarations. Amongst the confidential exhibits to Eichler 3 are what is declared to be: ‘considerable confidential business information of a financial nature, business development strategies and plans, promotional strategies and plans, and personal information’.

28.     Prevented from discussing much of the EIA in detail I make the following observations. In addition to the use of the Opposed Trade Mark as applied for, a significant amount of the evidence shows use of signs containing the words ‘Franklin River Rafting’ in forms which are not identical to the Opposed Trade Mark. In some cases the use is simply of the words with no device. The relevant financial figures are not of the level necessary to satisfy me that there has been extensive exposure of the Opposed Trade Mark prior to the Relevant Date. The EIA does not satisfy me that the Applicant used the Opposed Trade Mark before the Relevant Date in respect of the Applicant’s Services to such an extent that the trade mark did in fact then distinguish those services as being those of the Applicant. Consequently, the Opponent has established its ground of opposition.

Decision

29. I have found the Opponent has established the ground of opposition it raised pursuant to s 41 of the Act. I accordingly refuse to register the Opposed Trade Mark.

Costs

30. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995.

Robert Wilson
Hearing Officer
Hearings and Oppositions
15 December 2017