World Expeditions Travel Group Pty Ltd v Franklin River Rafting Pty Ltd [2017] ATMO 158 (15 December 2017)

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The Australian Trade Marks Office recently issued a decision regarding the registrability of the logo trade mark for “Organisation and provision of sightseeing tours and excursions, nature tourism, adventure tourism and water transport” in Class 39:

On 19 May 2014 the Applicant, Franklin River Rafting, filed an application to register the above trade mark for sightseeing and tourism services in Class 39.

During examination, an objection was raised under Section 41(4) on the basis that the trade mark was to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s services from those of other traders.

The Applicant filed two rounds of evidence, and was successful in overcoming the distinctiveness objection on the basis there was sufficient evidence of use and intended use to show the applied for mark would, at some point in the future, in fact distinguish the Applicant’s services.

The application was opposed by World Expeditions Travel Group Pty Ltd.  At the hearing, the opponent argued that the Applicant’s mark was not to any extent inherently adapted to distinguish the Applicant’s Class 39 services within the meaning of Section 41(3)(a).  It was argued that the addition of a black coloured circle and the use of white text did not confer any degree of distinctiveness on the otherwise descriptive words FRANKLIN RIVER RAFTING.

The Hearing Officer found that it is not necessary that other traders might wish or need to use the exact combination or arrangement of elements in the trade mark for the mark to lack inherent adaptation to distinguish.  Rather, it is necessary only that the additional elements and/or the arrangement of elements add nothing to the inherent ability to distinguish of the essential feature of the mark – in this case the descriptive term FRANKLIN RIVER RAFTING.  It was further held that the arrangement of the words, the minimal stylisation of the fonts used, and the addition of the disc upon which the words appear added nothing of significance to the otherwise descriptive word elements, and that the trade mark should therefore be considered under the provisions of section 41(3) as having no inherent distinctiveness, not section 41(4).

The Hearing Officer then considered whether the Applicant’s evidence of use met the requirements of section 41(3).  To do so, the evidence needed to show that the Applicant had used its trade mark before the Relevant Date to such an extent that the trade mark did in fact distinguish the Applicant’s services as being those of the Applicant.  It was held that the Applicant’s evidence (much of which was claimed as confidential and was therefore not able to be discussed in the decision) was not sufficient to show that the Applicant’s mark had been used before the Relevant Date to such an extent that the trade mark did in fact distinguish the Applicant’s services.

As the opposition was upheld, the application was refused registration.

The decision indicates that adding common designs or minimal stylisation to a mark lacking any inherent distinctiveness will not be sufficient to elevate consideration of a mark from s41(3) to s41(4) where a mark has some inherent distinctiveness and an applicant will have a heavy evidentiary onus to establish that such a mark is in fact distinctive of their goods/services.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.

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