On 16 July 2018, the Australian Trade Marks Office handed down its decision regarding opposition of the following trade marks belonging to our client, Interested in Business Pty Ltd.
The Opponent ran a similar business awards program in Western Australia under the name Local Business Awards using the following logo:
The decision was handed down in favour of allowing registration of the Interested In Business marks and the Opponent’s grounds under sections 41, 60 and 42(b) of the Trade Marks Act 1995 were dismissed.
The decision provides a useful analysis of how descriptive words or terms in the context of a logo trade mark are treated when comparing competing trade mark interests.
The key statements by Hearing Officer Iain Thompson are summarised below:
Section 41: Are the Trade Marks Inherently Adapted to Distinguish the Services Claimed?
Hearing Officer Thompson confirmed (at paragraph 25) that the assessment of the inherent adaptation of a trade mark to distinguish particular goods or services is not a matter of dissecting a trade mark into its individual parts and assessing those components but of considering the trade mark as a whole. That principle originates from the 1921 Chancery decision in In Re Diamond T Motor Car Company and has remained unchanged for the past 100 years.
Effectively, this confirms that a trade mark which contains words which are entirely descriptive of the goods or services associated with it can still be registrable provided that the combination of the words with other elements is distinctive as a whole.
In this case, the words “Local Business Awards” would not have been registrable on their own to describe the provision of local business awards, but combined with unique graphic elements, the trade mark became registrable.
Section 60: Would the Use of the Trade Marks Would Cause Confusion by Reason of the Opponent’s Reputation in a Similar Mark?
Hearing Officer Thompson found (at paragraph 32) that if the mark in which the Opponent claims a reputation is itself entirely unadapted to distinguish the nature of the Opponent’s trade mark, any discussion of whatever reputation it might have would serve no useful purpose.
In this case, the Opponent was effectively claiming an exclusive monopoly to the use of the term “Local Business Awards” which is a term any trader conducting a local business awards program would need to use.
In other words, evidence of reputation does not matter an Opponent can provide in a mark, if the mark itself is common to the industry and a term which all traders in that industry would need to use to describe their services.
Section 42(b): Would Use of the Trade Marks Constitute Misleading or Deceptive Conduct or Amount to Passing Off?
Hearing Officer Thompson states (at paragraph 39) that any bewilderment which may arise from the concurrent use of the parties’ trade marks must stem from the nature of the Opponent’s trade mark itself. If the Opponent’s trade mark is devoid of inherent adaptation to distinguish and describes similar services of all people who provide the services described by that mark, it could equally be taken as referring to any one of such services.
This confirms that if there any potential for confusion between the marks, this must be due to the Opponent’s reputation in that mark, and not due to the fact that it is a common phrase used by any trader providing similar services.
  2 Ch 583.