Y3AH Pty Ltd

[2024] ATMO 157

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2119747 (classes 9,45) – YET ANOTHER DATING APP - in the name of Y3AH Pty Ltd

Delegate:

Jonathon Galloway

Representation:   

Applicant: Chris Round and Peter Knowles, K&L Gates

Decision:

2024 ATMO 157

Trade Marks Act 1995 (Cth) – section 33 proceedings – ground for rejection under section 41 – trade mark to some extent inherently adapted to distinguish claimed goods and services – evidence of use insufficient – application rejected.

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (Cth) (‘Act’):

Trade mark number: 2119747

Trade mark: YET ANOTHER DATING APP (‘Trade Mark’)

Filing date: 13 September 2020

Applicant: Y3AH Pty Ltd (‘Applicant’)

Specification:

Class 9: Computer Software; Mobile phones; Computer Networks; Games Software

Class 45: Computer dating services; Dating services; Online social networking services; Dating and social introduction services provided via online personal advertisements; Dating agency services.

2. The application was examined as required under s 31 of the Act and a ground for rejection was raised under sub-s 41(4). The examiner’s first report provided:

Your Trade Mark is YET ANOTHER DATING APP.

This indicates that your claimed goods and services are, or are related to an additional DATING application, that is, YET ANOTHER DATING APP.

Other traders should be able to use YET ANOTHER DATING APP, or something so nearly resembling[sic], in connection with goods or services similar to yours.

3.     The Applicant was given the option of providing evidence of use of the Trade Mark to overcome the ground for rejection. The Applicant’s legal representative responded by providing written submissions.

4.     The examiner issued a total of 5 adverse reports from 9 December 2020 to 17 August 2022. During that period the Applicant made submissions in response and filed evidence on 14 June 2022, being the declaration of Paul Cunanan, director of the Applicant, dated 10 June 2022 (‘First Cunanan Declaration’).

5. On 30 April 2024, the Applicant requested to be heard on the matter as allowed by section 33(4) of the Act. On 24 May 2024, the Applicant filed submissions (‘Submissions’) prepared by Chris Round and Peter Knowles of K&L Gates along with evidence being:

·     First Cunanan Declaration;

·     Declaration of Paul Cunanan, dated 21 September 2023 (with Annexures PC-1 to PC-6) (‘Second Cunanan Declaration’);

·     Declaration of Christopher John Round, Partner at K&L Gates, dated 22 September 2023. (‘Round Declaration’).

6. The Applicant requested to be heard on the basis of written submissions in order to argue against the section 41 ground for rejection raised against its application for the Trade Mark. I am a delegate of the Registrar of Trade Marks and the matter has been allocated to me to decide, which I have done, on the basis of the material listed above.

The Law

7. 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).

8.     The first step in terms of sub-ss 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the goods and services of the Applicant from the similar and/or closely related goods and/or services of other persons.

9.     The test for inherent adaptation to distinguish is set out in Clark Equipment Co Registrar of Trade Marks where Kitto J said:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered, and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship 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. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the 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 connexon with similar goods in any manner which would infringe a registered trade mark granted in respect of it. [1]

[1] [1964] HCA 55 [5]

10.    The consideration of inherent adaptability to distinguish is a general question of whether the trade mark is one which “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods” per Kitto J in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[2]

[2] [1965] HCA 72 [6].

11.    More recent authority is to be found in Cantarella Bros v Modena Trading[3] (Cantarella). In that case the High Court of Australia indicated that the test for distinctiveness is a two-step process. The first step being to determine the ordinary signification of the sign comprising a trade mark, in Australia, to persons who will purchase, consume, or trade in the goods, then having determined the answer to that question to consider the likelihood of the sign being needed by other traders.

[3] [2014] HCA 48 (‘Cantarella’)

12.    The adverse reports issued during examination indicated that the Applicant might overcome the ground for rejection by providing evidence of use ‘in terms of subsection 41(4)’. I am not bound by the examiner’s view as to inherent distinctiveness or factual distinctiveness. It is incumbent upon me to consider these matters afresh.

13. The wording of s 41 imports a presumption of registrability. I must be satisfied that either sub-ss 41(3) or 41(4) applies to the Trade Mark before it is open to me to reject the application. For the sake of emphasis, it is not the case that I must be satisfied that the Trade Mark is inherently adapted to distinguish, or does in fact distinguish, before accepting the application. If doubt remains as to whether the relevant provisions apply, that doubt must be resolved in the Applicant’s favour and the application cannot be rejected under s 41.

The Applicant’s Submissions

14.     The Applicant submits: 

·The Trade Mark has some descriptive quality but that the reference is not sufficiently direct to attract a s 41 objection.

·The Trade Mark is not something other traders would have a legitimate desire to use because it has a self-deprecating connotation.

·The Examiner’s decision is inconsistent with other trade mark decisions.[4]

·The evidence of use and evidence of intended use and other circumstances is sufficient to demonstrate that the Trade Mark does or will distinguish the Applicant’s goods and services from the goods and services of other traders.

[4] Discussed at [31] of this decision.

Discussion

15.    The first limb of the two-step process set out in Cantarella is to consider whether the Trade Mark has an ordinary signification to any person in Australia concerned with the specified goods and services.

16.    It is commonly understood and clear from the Applicant’s submissions that DATING APP is a shorthand reference to online and mobile dating applications. The Macquarie Dictionary provides:

·YET can be defined as in addition, or again: yet once more.[5]

·ANOTHER can be defined as one more; an additional one: try another.[6]

[5] Macquarie Dictionary (online at 26 August 2024) ‘yet’ (def 5).

[6] Macquarie Dictionary (online at 26 August 2024) ‘another’ (def 3)

17.    YET ANOTHER is therefore emphasising the existence of a large number of things that can be categorised as the same i.e. DATING APPS of which consumers now have access to many and to provide one more would be to provide YET ANOTHER. When viewed as a whole the ordinary signification of the mark in relation to the goods and services is an additional dating app among many, with an emphasis on the quantity of options available to consumers.

18.    The Submissions concede that the Trade Mark is to some extent descriptive but maintain that the Trade Mark as a whole is in the nature of a covert and skillful allusion. Reference was made to an unpublished decision of the Registrar which considered the trade mark for the term THINKTENNIS made in respect of the services in Class 35.[7]

[7] Decision of a Delegate of the Registrar of Trade Marks with Reasons Re: Opposition by Tennis Australia Limited to registration of trade mark application number 1976700 (Class 35) – THINKTENNIS - in the name of Thinkvid Pty Ltd. (20 October 2021).

19.    I do not consider the facts in that decision to be analogous to the current consideration. In that decision the officer stated that the ordinary signification of the THINKTENNIS says nothing about the services being provided. In the current matter the Trade Mark as a whole, gives a clear indication that the goods and services are in relation to another dating app.

20.    The Applicant has made extensive submissions in relation to the second limb of the test in Cantarella. The Submissions claim that the overall impression of the Trade Mark is self-deprecating and derisive, for example:

·The Trade Mark makes a clear reference to the fraught process of finding love in the 21^st Century

·Dating applications are often thought to dehumanise and treat people as disposable and dispensable objects to be discarded with a simple swipe of one’s phone.

·The Trade Mark makes a self-deprecating acknowledgement of this fact – a skilful allusion to the vexed state of modern, digital love and the Applicant’s Goods & Services.

21.    The submissions claim that because the Trade Mark bears a negative connotation, this ought to put the matter beyond doubt, because other traders cannot be said to have a legitimate desire to use a trade mark that would be seen as pejorative.  

22.    I do not agree that the ordinary signification of the Trade Mark is pejorative or self-deprecating in and of itself. I think the only way the Trade Mark can be said to have a negative connotation is for a reader to enforce it through a particular intonation, or with a particular perception in relation to goods and services of this nature.

23.    I think the pejorative nature of the Trade Mark that the Applicant is alluding to stems from the connotation of dating apps themselves rather than from a normal reading of the Trade Mark. YET ANOTHER when used in conjunction with other goods and services would not necessarily be interpreted as self-deprecating without the subject matter having some stigma or negative connotation itself. When read without importing a disparaging attitude towards dating apps, the Trade Mark will most likely be seen as indicating, an additional dating app among many apps of this kind.

Legitimate Desire to Use

24.    The Submissions claim that the examiner failed to properly apply the legitimate desire test.[8]   

[8] Submissions [30].

25.    I agree that the ‘legitimate desire’ test involves more than an improper want as discussed in Ciba-Geigy Australia Ltd v Eli Lilly & Co;[9] Black Dog Institute v Black Dog Ride Pty Ltd;[10] and Australian Postal Corporation v Sendle Pty Ltd.[11] Other traders may be annoyed that they did not think to register the types of trade marks referred to in these cases but this does not amount to a legitimate desire to use the word or phrase in relation to particular goods and services in the ordinary course of trade.

[9] (1983) 2 IPR 353.

[10] [2016] ATMO 66.

[11] [2017] ATMO 42.

26.    The Submissions also refer to KJ Ince Pty Ltd.[12] In this decision the hearing officer found that the expression FLOWERS FOR ALL would be an unlikely expression in modern day Australia without additional words, and considered ‘for all’ as a reference to all people or a group of people as possibly ‘archaic’ and therefore ‘likely to strike the listener as odd’.[13]  The Submissions assert that the use of a trade mark with an allegedly pejorative connotation is likewise likely to strike the reader or consumers as odd.

[12] [2023] ATMO 139.

[13] Ibid [22]

27. Annexure A of the submissions show examples referred to by the examiner in support of the original ground for rejection under s 41(4) of the Act. The Submissions claim that the screenshots show ‘innocent non-trade mark use’.

28. Whether or not the examiner can find use of the Trade Mark in the ordinary course of trade is not a decisive factor in overcoming grounds for rejection under s 41. As is made clear in Cantarella[14] when considering the inherent distinctiveness of a trade mark, consideration should first be given to the ordinary meaning of the words comprising the trade mark to anyone in Australia purchasing, consuming or trading in the relevant goods or services. An alleged lack of use or ‘innocent non-trade mark use’ does not outweigh the inherent meaning of the words.

[14] Cantarella

29.    The Submissions claim that because the Trade Mark is self-deprecating, carries a negative connotation, and derides the very goods and services to which they apply, it cannot be something other traders would have a legitimate desire to use.

30.    As I have discussed above, I am not convinced that the Trade Mark carries a negative connotation. It is certainly not a self-deprecating phrase in that it claims to be the worst among similar goods and services. Other traders are likely to have a legitimate desire to use the Trade Mark or something so nearly resembling it because of the ordinary signification found in the dictionary definition of the words that comprise the Trade Mark.

31. The Submissions offer two examples in support of the claim that the current s 41 ground for rejection is inconsistent with other trade mark decisions on the Australian Trade Mark Register:

Trade Mark Number	Trade Mark	Specification
1411762	NOT JUST ANOTHER BEER	Classes 16: Beer mats; mats for beer glasses; mats of card for beer glasses; mats of paper for beer glasses. Class 21: Beer mugs Class 32: Beer. Class 33: Alcoholic beverages (except beer).
1864519	JUST ANOTHER CHAIR	Class 20: Furniture; office furniture; chairs including office chairs and height adjustable chairs.

32. I do not think comparing the decisions above is a useful exercise or even that the circumstances are analogous. The Submissions claim that trade mark number 1411762 was rejected because it is laudatory while trade mark number 1864519 was accepted without an endorsement reflecting that the provisions of s 41 were applied. The details surrounding the decisions in these matters are not analogous or persuasive because a laudatory phrase such as NOT JUST ANOTHER BEER is not the same as one which is a relatively simple description of the goods and services claimed. The rationale for the acceptance of 1864519 is not before me, although there is some similarity in the construction of the trade marks they are nonetheless comprised of different words and applied to different goods and services. It is up to the Applicant to demonstrate that the Trade Mark is capable of distinguishing in relation to the claimed goods and services.

33. In addition, I refer to the comments of Wilcox J in Ocean Spray Cranberries Inc v Registrar    of Trade Marks:

I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.[15]   

[15] [2000] FCA 177, [35].

34.    Having considered the presumption of registrability, the ordinary signification of the Trade Mark, and the legitimate desire of other traders to use the Trade Mark or something so nearly resembling it in connection with their own goods and services, I am satisfied the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s goods and services.

35. In view of this, I must now consider whether the Trade Mark should be rejected having regard to the matters set out in s 41(4)(b) of the Act, namely the combined effect of the extent of the inherent adaptation to distinguish, the use or intended use of the Trade Mark any other circumstances.

Evidence of Use, Intended Use and Other Circumstances

36.    The evidence of use, intended use and other circumstances is set out in three declarations referred to at [5] of this decision. These declarations submit that the Trade Mark does or will distinguish the Applicant’s goods & services having regard to the Applicant’s use and intended use of the Trade Mark and other circumstances.

37.    The evidence includes screenshots of the Applicant’s promotional and advertising material. The screenshots show that the Trade Mark is often used in conjunction with other trade mark material such as:

38.    Evidence of use should be in relation to the Trade Mark as applied for. The additional trade mark material set out above substantially alters the overall impression of the Trade Mark. Under s 7 use of a trade mark is use with additions or alterations that do not substantially affect the identity of the trade mark. Therefor I do not consider the above examples to be evidence of use of the Trade Mark as the additions and alterations substantially affect the identity of the Trade Mark.

39. The other way in which the Trade Mark frequently appears throughout the evidence is as part of a longer phrase “I downloaded Yet Another Dating App, and yada yada yada… I met someone special…”. The provisions of s 41(4)(b)(ii) involve considering whether, from the use and intended use shown, an average consumer from Australia would recognise the words as a badge of origin in relation to the claimed goods and services. I do not think that the average consumer would see the phrase as it appears in this form and determine that from the whole sentence, the words YET ANOTHER DATING APP are acting as an indication of trade source.

40.    I note some of the evidence in Second Cunanan Declaration does arguably show use of the Trade Mark.[16] Annexure PC-1 contains screenshots taken from the website ‘ wherein one of them displays the Trade Mark (albeit in fancy lettering) as the title of what appears to be a video. Annexure PC-3 is a screenshot of a promotional video produced by the Applicant, possibly the same as that capture in PC-1. These annexures are not sufficient to overcome the ground for rejection. PC-1 does not give any indication of the number of consumers that have visited the web page. PC-3 is provided with a bare statement that the video has been viewed ‘hundreds of times’. Without evidence supporting this statement, the Annexure carries limited weight.

[16] Annexures PC1, PC3.

41.    The evidence states that the Applicant intends to partner with social media pages that focus on dating. The evidence of this intended use does not establish how the Trade Mark will be presented on those pages, or how often. This cannot be considered well-formed evidence of intention to use as the Applicant has demonstrated only a willingness of these entities to publish social media posts on behalf of the Applicant.

42.    Further evidence of intended use includes the Applicant’s plan to collaborate with café owners. Consumers who use the app may choose to meet each other at a designated café for free coffee. In return the cafes would benefit from the promotion and exposure of their business. I note that the Applicant also intends to develop partnerships with cafes to offer them equity in the business in exchange for providing free coffee to users of the app. No evidence has been submitted to show how may café owners have opted in or agreed to participate in the scheme.

43.    The Round Declaration includes copies of the Applicant’s overseas registration. I note the Submissions include a statement that the Trade Mark is the basic application for the Applicants international registrations. The Submissions state that the Trade Mark is protected in the UK, New Zealand, USA, EU, Colombia, Egypt, Kenya, Mexico, the Phillipines, South Korea, Türkiye, Ukraine and North Korea. The submissions also note that the Trade Mark did not achieve protection in 14 other jurisdictions including China, Canada, Russia, India and Israel.

44.    Although evidence of trade mark registration in foreign jurisdictions is not entirely irrelevant, Australian trade mark applications are assessed in accordance with Australian legislation, which may differ substantially in substance and application from foreign jurisdictions. As such, the existence of overseas registrations for the Trade Mark has limited relevance in this matter.

45.     When I weigh the submissions and evidence filed together with the extent that the Trade Mark is inherently adapted to distinguish, the combined effect is not sufficient to satisfy me the Trade Mark does or will distinguish the Applicant’s goods and services.

46. Accordingly, I am satisfied that a ground for rejection exists under s 41 of the Act in respect of the Trade Mark.

Decision

47. Section 33 of the Act provides:

Application accepted or rejected

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

(a)  the application has not been made in accordance with this Act; or

(b)  there are grounds under this Act for rejecting it.

Note:  For this Actsee section   6.

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

Note:  For limitationssee section   6.

(3)  If the Registrar is satisfied that:

(a)  the application has not been made in accordance with this Act; or

(b)  there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:  For this Actsee section   6.

(4)  The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:  For applicantsee section   6.

48. I am satisfied that on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under s41(4) of the Act. In accordance with s33(3) of the Act, I reject trade mark application number 2119747. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Jonathon Galloway

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

29 August 2024