How’s that? Worth an appeal

Red Energy Pty Limited v Registrar of Trade Marks [2018] FCA 1449

A recent decision of Justice Beach in the Federal Court may have breathed new life into appeals from Trade Marks Office decisions during prosecution.

Background

Energy retailer Red Energy filed Australian Trade Mark Application No. 1746950 for the mark EVENPAY for various goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41 and 42, including relevantly financial services in class 36. The application was rejected by the Registrar of Trade Marks on the basis that the mark was not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, and had not acquired distinctiveness through use under section 41(3) of the Trade Marks Act 1995 (Cth) (the Act). Red Energy appealed the decision to the Federal Court pursuant to section 35 of the Act.

On the nature of the proceedings, Justice Beach confirmed that, as the appeal is a hearing de novo, there was no presumption in favour of the correctness of the Registrar’s decision, save that weight will be given to the Registrar’s opinion as that of a skilled and experienced person. Pursuant to section 33 of the Act, the Court on appeal must accept the application unless satisfied that there are grounds under the Act for rejecting it.  That is, there is a presumption of registrability which, since incorporation of the Raising the Bar amendments, clearly extends to the ground of lack of distinctiveness under section 41.

Interestingly, after considering the submissions from Red Energy, the Registrar informed the Court that she would not be advancing any submissions or evidence in opposition to Red Energy’s appeal.

Decision

Given that the appeal was a hearing de novo and the Registrar did not assert the ground of objection under section 41, Justice Beach held that the Court must uphold the appeal and the application should proceed to acceptance.

Although Justice Beach upheld the appeal in such circumstances, his Honour indicated that, on the basis of the material before him, he was not able to conclude that the trade mark was not inherently adapted to distinguish each of the relevant designated goods and services. His Honour, adopting the submissions made by Red Energy, noted amongst other things that:

  • EVENPAY presents as an invented word.
  • EVENPAY does not have a meaning in the context of these services that a consumer would immediately perceive.
  • EVEN has multiple meanings, adding to the ambiguity and richness of meaning from a consumer standpoint.
  • The lack of any ordinary signification or meaning is reinforced by the removal of the space between EVEN and PAY.
  • The combination of two words is syntactically unusual which takes it outside of ‘the common stock’.

There was no evidence before the Court that Red Energy has used the mark EVENPAY at all.

Analysis

While an objection on the basis that the mark was not to any extent inherently adapted to distinguish appears extreme, it would have been open to the Registrar to raise an objection in relation to some or all of the goods and services under section 41(4). This would have been on the basis that 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. In walking away from the decision entirely, the Registrar has accepted that the trade mark EVENPAY is capable of distinguishing the applicant’s goods or services.

The decision suggests that the Registrar of Trade Marks may be reluctant to actively contest appeals from Trade Marks Office decisions and should provide encouragement for trade mark applicants hitting roadblocks during prosecution.

 

BSc(Hons) LLB(Hons) LLM FIPTA

David began his career with Phillips Ormonde Fitzpatrick Lawyers in 2003 as an articled clerk, and was admitted to practice as a barrister and solicitor of the Supreme Court of Victoria and the Federal and High Courts of Australia in 2004. He was subsequently registered as a trade marks attorney in 2006 and a patent attorney in 2007.