What constitutes a non-descriptive trade mark is a constant minefield for many Australian trade mark practitioners when advising clients on what the courts have described as “allusory trade marks” that make a “covert and skilful allusion” to the relevant goods or services rather than a direct reference to the goods or services. Unfortunately, many examiners adopt an approach during examination that any word or combination of words that may have a meaning that vaguely or tangentially relates to the goods or services is not capable of distinguishing the Applicant’s goods or services to those of other traders. But this is an erroneous approach in law.
We can all agree that SOAP for soap is a direct reference to the specified goods and should not be registered as a trade mark as other traders should be able to use the term soap when selling such goods. But how about “CLEAN BAR” for soap? In the writer’s view, this mark falls under the category of an allusory trade mark and is prima facie registrable without the need for evidence of use or argumentation. Under current ATMO practice, such a mark would likely draw an objection that the mark is not capable of distinguishing the goods but has some, but not is not sufficiently inherently adapted to distinguish the claimed goods, and again according to office practice, argument alone would not be sufficient to achieve registration.
An Australian Trade Marks Office decision in Game Theory Soapbox Limited 2022 ATMO 38 by Delegate Blake Knowles shows how moving the descriptiveness consideration from the potentially myopic position of a primary trade mark examiner to a Hearings Officer can radically alter the outcome in favour of the Applicant.
In the present decision, the subject mark is CLOUDBET in relation to class 38 services relating to inter alia, providing access to gambling, betting and gambling websites on the internet and class 41 services for gambling, online gambling services and providing facilities therefor.
The primary examiner initially raised the objection that CLOUDBET is a direct reference to the claimed services and has no inherent adaptation to distinguish. Such an objection is onerous in that any evidence of acquired distinctiveness through use must be before the filing (or priority) date of the application. This objection was reclassified to a s41(4) objection in light of submissions made by the Applicant so that the subject mark was considered to have some inherent adaption to distinguish.
The Applicant requested a hearing, which is the subject of the present decision. It appears from the decision that the Applicant did not provide evidence of use of the trade mark in commerce but rather provided general evidence relating to internet searches for CLOUDBET, the applicant’s website, internet traffic data for the Applicant’s website, and an Australian news article which refers to the Trade Mark being used for gambling services.
The statutory scheme under s41 for assessment of registrability of a trade mark that is allegedly is not capable of distinguishing the Applicant’s goods or services is somewhat clunky. A trade mark is to be first assessed having regard to its level of ‘inherent adaptation’ to distinguish. If the trade mark has sufficient inherent adaptation to distinguish the claimed goods or services, there will be no grounds for rejecting it under s41. If the trade mark does not have sufficient inherent adaptation to distinguish the goods or services, then a determination must be made whether it has any inherent adaptation to distinguish.
To the assessment of inherent adaptation to distinguish, the High Court of Australia in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd set down that this assessment is a two-part process:
- determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services; and
- then having determined the ordinary signification, the likelihood of the sign being desired for use by others without improper motive.
The primary examiner dissected the meaning of the constituent parts of CLOUDBET to conclude that the mark indicates that the Applicant provides cloud-based betting services and is therefore not capable of distinguishing the Applicant’s claimed services from those of other traders as the mark describes the services being provided. The examiner also cited online article that refer to use of cloud services in the gambling to support the assertion that CLOUDBET has an ordinary signification that other providers of the claimed services would want to use.
In response, the Applicant made submissions along the lines of CLOUDBET is a portmanteau with no obvious meaning and that it is erroneous for the examiner to suggest the subject mark corresponds to the phrase ‘BETTING USING THE CLOUD’. The Applicant contended that “the use of the cloud by an online wagering business is a back-end function, and as such, is an irrelevant consideration for consumers of online wagering services.”
Applying part (i) of the two-part test from Cantarella, Delegate Knowles agreed that an ordinary signification of CLOUDBET is betting or wagering services that are facilitated by the online cloud in the context of gambling, wagering, and ancillary services.
The next step was to determine the likelihood of CLOUDBET being desired for use by other traders pursuant to part (ii) of the test in accordance with the test set out in Clark Equipment Co v Registrar of Trade Marks.
The following is a salient point by Delegate Knowles that is often forgotten by primary examiners: Even if a trade mark consists of a portmanteau of two words with descriptive significance, the trade mark must still have some utility that renders it desirable for use by other traders acting without improper motive. Delegate Knowles considered that when considering CLOUDBET as a whole, it is not clear what utility or desirability lies in the combination of the words CLOUD and BET. Indeed, consumers of betting and wagering services are not really concerned whether these services are provided by cloud computing services and the use of the cloud does not enhance the consumer experience from the perspective of the consumer. According to Delegate Knowles, migration to the cloud for gambling and betting services is a back-end factor that has a positive effect on capital expenditure and staffing levels, and flexible scalability. Consumers are concerned with risk and size of potential returns to the wager, not where the computing power that run the gambling services are based. Accordingly, Delegate Knowles considered that there is no utility in conveying to consumers that the Applicant’s online betting and wagering services are facilitated by the cloud. Therefore, in the delegate’s view, other traders would not legitimately desire to use the subject mark based on its ordinary signification.
Consequently, the ground for rejection raised under s 41 was withdrawn and the mark proceeded to registration.