HWL Ebsworth Partner Luke Dale, Special Counsel Niomi Abeywardena and Law Clerk Annabel Nettle, discuss the recent Federal Court decision in Red Energy Pty Limited v Registrar of Trade Marks, which refers to a potential new strategy for having a trademark application accepted for registration.
The recent Federal Court decision Red Energy Pty Limited v Registrar of Trade Marks  FCA 1149 gives hope to applicants in Australia whose trade mark applications have been refused.
Energy retailer Red Energy filed an Australian Trade Mark Application for the word ‘EVENPAY’. It claimed a broad range of goods and services in respect of electrical, financial and energy products and related services.
During examination, the examiner raised objection against the Application on the basis that ‘EVENPAY’ ordinarily describes a bill payment method where equal instalments are spread over time and was therefore something that other traders would likely need to use in relation to their own goods and services. In response to this, the applicant filed both evidence of use of the filed mark, and submissions arguing against the rejection. The applicant’s response was not accepted by the examiner at IP Australia and as a result, the applicant requested a hearing before the Registrar’s delegate.
In upholding the objection raised by the examiner, the delegate of the Registrar of Trade Marks rejected the Application in its entirety and determined that ‘EVENPAY’ was not, to any extent, inherently adapted to distinguish Red Energy’s goods or services from those of other persons, pursuant to s 41(3) of the Trade Marks Act 1995 (Cth) (the Act). The Registrar’s delegate relied upon evidence put forward by four other Australian utility providers, and was not satisfied by the Applicant’s evidence of use which was limited to Victoria.
Red Energy appealed the delegate’s decision upholding the initial rejection of the application to the Federal Court of Australia. Unusually, on appeal the Registrar of Trade Marks advanced no opposing submissions or evidence to counteract Red Energy’s position.
Beach J allowed Red Energy’s appeal, ordering that the initial decision of the Registrar of Trade Marks by her delegate be set aside and that Trade Mark Application No. 1746950 be accepted.
Beach J relied on Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 in finding that no presumption of correctness extended to the Registrar’s initial decision. It followed that the Application must be accepted unless the Court is satisfied that it had not been made in accordance with the Act or that there were grounds for rejecting it. If the matter was left in doubt, then the Application should be accepted.
His Honour went on to consider the presumption of registrability provided for in s 33(1) of the Act, which extends to s 41. After noting that the appeal was by way of a complete re-hearing, and that the Registrar did not seek to assert that the Application had not been made in accordance with the Act or that there was any ground under the Act for rejecting it, Beach J found that the presumption of registrability applied and as a result, allowed the appeal. This was because, on the material before him, he was not able to say that Red Energy’s ‘EVENPAY’ trade mark was not inherently adapted to distinguish each of the relevant designated goods and services.
In adopting Red Energy’s submissions, His Honour added that:
- ‘EVENPAY’ appears to be an invented word;
- ‘EVENPAY’ appears not to have a meaning in the context of these services that a consumer would immediately perceive;
- ‘EVEN’ seems to have multiple meanings, adding to the ambiguity and richness of meaning from a consumer standpoint; and
- The apparent lack of any ordinary signification or meaning is reinforced by the removal of the space between ‘EVEN’ and ‘PAY’.
Even if the ordinary signification of ‘EVENPAY’ was found to directly describe any of the designated goods or services, it was noted that:
- The meaning of ‘EVENPAY’ is not immediately apparent;
- Any descriptiveness of any goods or services is oblique;
- There is no evidence of third-party descriptive use of ‘EVENPAY’, or evidence of the needs of other traders. In any case such evidence would be best considered in an opposition or removal proceeding; and
- Other traders have a universe of alternative marks to choose from.
The Registrar’s decision to not participate on appeal suggests either that the Registrar no longer felt the mark ‘EVENPAY’ was completely devoid of inherent distinctiveness, or that the Registrar did not expect the Court to revise its decision regarding the trade mark.
On appeal, it was open to the Registrar to argue that at a minimum, the Court should raise an objection pursuant to s 41(4) of the Act ie, that the Mark was to some extent inherently adapted to distinguish, at least in relation to certain specific goods and services claimed by the Application. For reasons unknown, the Registrar elected not to put forward any response whatsoever.
The complete lack of involvement in this case may demonstrate an unwillingness by the Registrar to challenge appeals raised in response to Trade Marks Office decisions. Whether it reveals a rare instance of complacency on the Registrar’s part that will not be repeated, or it serves to communicate a deliberate message on the Registrar’s stance on applicant appeals, is unknown. Nonetheless, the decision is encouraging to applicants who initially receive adverse examination reports. The number of appeals is likely to rise as a result.
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Important Disclaimer: The material contained in this publication is of a general nature only and is based on the law as of the date of publication. It is not, nor is intended to be legal advice. If you wish to take any action based on the content of this publication we recommend that you seek professional advice.
Partner Luke Dale practises in the areas of corporate and commercial law, with a particular focus on intellectual property law and brand protection, technology law, media and entertainment law and trade practices issues including franchising, competition and consumer protection. Luke manages trade mark portfolios for large corporate clients and helps to protect their brands in Australia and throughout the world in all key markets. He has specific expertise in negotiating and drafting a wide range of commercial documents, including licensing agreements, distribution agreements and technology transfers. Luke also prepares and advises upon ACCC Notifications and Authorisations, Enforceable Undertakings and trade practice compliance programs. Luke is recognised in Best Lawyers Australia for Commercial Law and Intellectual Property law. Additionally Luke has been recognized as the Intellectual Property Law “Lawyer of the Year” for Adelaide. Asia Pacific Legal 500 notes Luke’s ability to handle complex intellectual property issues. Doyle’s Guide (2017 edition) names Luke as a Pre-eminent Intellectual Property Lawyer and a Leading Technology, Media & Telecommunications Lawyer in South Australia. Contact Luke at [email protected] or connect via LinkedIn.
Special Counsel Niomi Abeywardena specialises in all aspects of commercial intellectual property law as well as IT and technology law, and competition and consumer law. She holds a Class 1 Master of Laws degree from the University of Cambridge, where she specialised in intellectual property and commercial law. Niomi assists a wide range of clients of all sizes and from a broad range of industries. Doyle’s Guide names Niomi as a Recommended Technology, Media & Telecommunications Lawyer in South Australia. Niomi’s recent experience includes: Owner of proprietary vehicular wireless safety technologies: Advising in regards to overseas licensing and commercialisation arrangements involving its technology, many of which involve large European car manufacturers; Banking services provider: Advising in regards to arrangements for new IT systems and platforms; A well known rail services provider: Advising on the preparation of documentation to enable license of brands to third parties dealing with souvenir and memorabilia products; Official government tourism body: Assisting with a variety of arrangements, including release documentation for individuals appearing in audio-visual material being prepared by the body and proposed engagement of a well known sportsperson to act as a local ambassador for the region; and International franchisor: Advising on protection of brands in the European Union. Contact Niomi at [email protected]