The United States Golf Association (USGA) has been left to green and bear a decision from the Australian Trade Marks Office.
The Office ruled that its Australian trade mark application for HANDICAP INDEX was not up to par, with the term found not to be capable of distinguishing USGA’s claimed services, “handicapping for sporting events, namely golf.”
The USGA had not struck any trouble registering the same mark in the UK, the US and Canada. But just like golf courses, each trade marks office has its own hazards and requires a different strategy to avoid the rough.
It’s fair to say though that the USGA found itself stuck in a sand trap that it could not chip its way out of; an experience most golfers can relate to.
Initially, the trade marks examiner found the mark lacked sufficient distinctiveness and rejected registration of the mark under s 41(4) of the Trade Marks Act, stating in the first report that:
“HANDICAP in relation to sport, including golf, refers to disadvantages or advantages, while INDEX refers to a detailed list. As a whole, this indicates that your services related to an index of player handicaps.”
For the non-golfers among us, a handicap is a numerical measure of the golfer’s ability that is used to enable payers of varying abilities to compete against each other. The lower your handicap the better the golfer you are.
The USGA’s attorney responded to the examiner by arguing that the ordinary signification of the trade mark was not directly descriptive of the services. Then, in a blow to the USGA, the examiner raised a ground of rejection under s 41(3), on the basis that the mark was in common generic use by other traders to indicate goods or services relating to calculating handicaps for golfers.
This meant any evidence the USGA put before the examiner to establish that the mark had acquired distinctiveness had to be dated prior to 10 May 2019, the application filing date.
Historically, rules for calculating handicaps have varied from country to country. However, the USGA introduced a global system, the World Handicap System. The trade mark HANDICAP INDEX is used by USGA to denote a standardized calculation of a golfer’s demonstrated ability against a golf course of standard difficulty. It licenses the use of the trade mark to various golfing associations globally. The system was not introduced into Australia until January 2020 after the application filing date.
Despite USGA filing two rounds of evidence to try to demonstrate that the mark had acquired distinctiveness, including that Australian golfers would understand the mark as referring to its handicap system, the examiner would not budge so it sought a hearing before the Registrar.
Under Australian law, there is a two step test for distinctiveness:
- establish the ordinary signification of the trade mark in Australia to those concerned with the relevant goods or services;
- consider whether other traders may legitimately desire to use the word in respect of their goods or services.
The Registrar’s view was that members of the public engaging in handicapping services or golf services would understand the term as a measure or rating of a golfer’s handicap, or alternatively as an index or list of golf players’ handicaps. Further, it found that other traders would want to use the term in connection with such a system or list.
Turning to the evidence of acquired distinctiveness, the Registrar found it was lacking for various reasons including that there was no evidence of the advertising or promotional activities undertaken either before or after the filing date in Australia, and that despite USGA’s assertion of its extensive use overseas, there was minimal supporting evidence. The evidence was also said not to show sufficient use of the term as a badge of origin.
The upshot was the mark was rejected for registration. Perhaps, the USGA will take another swing at registering it once it has used it more extensively in Australia.
Bad puns aside, for those competing globally where trade mark protection across various jurisdictions is required, this decision is a reminder that the assessment of the distinctiveness of a mark may differ between offices. When devising a filing strategy, the nature of the mark to apply for, the applicable test for distinctiveness and any requirements to show acquired distinctiveness should be borne in mind.
Sometimes it may be appropriate to seek registration for a mark in a distinctive form, at least to provide an interim level of protection. This might include for example, applying for the non-distinctive mark with a house mark, or as part of a logo, particularly, if there is not sufficient evidence of use that can be demonstrated. Otherwise, the path to registration may be, well, rough.
