It is well-known that names with geographical significance can be difficult to register. However, a recent success for Brightwater Care Group has shown that the ways in which a trade mark has been used over time may make all the difference.
Background And Initial Examinations
Brightwater Care Group’s application to register the name ‘Brightwater’ was rejected in six separate examinations beginning in late 2017, on the basis that ‘Brightwater’ was a word with geographical significance under Section 41(3) of the Trade Marks Act. The geographically significant location in question – ‘Brightwaters’, is a suburb in New South Wales, that is part of the greater Lake Macquarie region.
On each examination, the examiner maintained the objection to Brightwater’s application, finding that “there is ordinary signification to the trade mark, and it is one which other traders are likely to use in the ordinary course of trade in relation to their own services without improper motive”.
In reaching this conclusion, the examiner rejected Brightwater’s wide-ranging evidence on how the trade mark had been used over time, asserting, with reference to Brightwater’s composite trade marks, that it “continuously relies upon the trade marks which have significant and notable additions and alterations”.
After receiving its sixth adverse examination report, Brightwater requested to be heard.
At the outset, the Registrar noted that Section 33 of the Trade Marks Act creates a presumption in favour of registrability, and requires the Registrar to accept an application for registration unless satisfied that there exists a ground for rejecting it.
Section 33 of the Trade Marks Act states that, “a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.
Following fresh consideration of the evidence and legislation, the Registrar agreed with the examiner on the issue of geographical significance, finding that “the Trade Mark may have a geographical signification to persons concerned with the Services such that they may legitimately have an interest in using it, or, as also observed above, a ‘mark nearly resembling it’, (i.e., ‘Brightwaters’), to identify their services.” It was for this reason the Registrar affirmed that she was not satisfied that the trade mark was inherently adapted to distinguish the applicant’s services from services provided by others, as defined in Section 41(3)(a).
In reaching this conclusion, she noted that that “Brightwaters is a suburb of the City of Lake Macquarie, a large coastal city which is known both as a tourist and retirement destination with many accommodation providers”. Citing Gummow J in Masters and Scholars of the University of Oxford v the Registrar of Trade Marks, she stated that “the point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration”.
With regard to this, and to the evidence submitted on some of the existing services already present within the geographical area, the Registrar accepted that “it is ‘reasonable to suppose’ such Services may be provided in Brightwaters in the future.”
However, while the examiner in the initial examinations ceased consideration of the application at this point, the Registrar went on to consider other evidence that might supersede the finding that ‘Brightwater’ as a name with geographical significance, is not inherently distinguishable.
In considering the evidence anew, the Registrar noted that the “inherent adaptation to distinguish” test is the same for geographical names as it is for other trade marks, remarking that Section 41(4) states that trade marks “that consist wholly of a sign that is ordinarily used to indicate… geographical origin” are “mostly” not inherently adapted to distinguish. This, she noted, means that the existence of a city called ‘Brightwaters’, is not enough in itself to conclude that the trade mark “has any geographical signification to persons in Australia concerned with the Services.”
Having established this, she went on to consider the ways in which the trade mark had been used which had the potential to distinguish the relevant services as being those of the Brightwater.
In considering the ways in which the trade mark had been used over time, the Registrar took into account several factors, and in doing so concluded that “extensive evidence of the Applicant’s Trade Mark use provided from around 2002 to 2017, that it has used the trade Mark before the filing date to such an extent that it ‘eclipses its primary signification’ and does in fact distinguish the Services as amended as being those of the Applicant” under Section 41(3)(b) of the Act.
First, she noted that Brightwater Care Group had already successfully registered ‘Brightwater’ in 2004 for similar services. She also found that Brightwater Care Group also frequently referred to itself as simply ‘Brightwater’ in its publications, advertising and promotional material, including in its annual report.
Interestingly, the Registrar noted that in Brightwater’s own promotional materials, the applicant also consistently ‘badged’ its different services with reference to Brightwater”, including “Brightwater at Home”, which describes its home care services, as well as a large range of other services including the “Brightwater Research Centre”, and many others. These references which distinguished between the full range of Brightwater Care Group’s locations and services, were prominent in advertisements, YouTube promotions, and in other forums over a considerable number of years.
While the Registrar acknowledged that it is possible for such additional words to potentially alter the distinctiveness of the trade mark in question, in this case she found that this was not so, stating that, “the additional words function simply as a means of describing the service or its location.” This point was explained in Wellness Pty Limited v Pro Bio Living Waters Pty Limited, where it was affirmed that, “a mark may have a descriptive element but still serve as a badge of trade origin (Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd, per Lockhart and Gummow JJ)”.
In addition, the Registrar observed that the websites and publications of relevant third parties also referred to the applicant in the same way as the applicant referred to itself, leading her to conclude that consumers would be likely to identify the Brightwater Care Group, solely by reference to the Brightwater trade mark. She stated that “Overall, I am satisfied that, in the context in which the plain word ‘Brightwater’ appears, it would generally have been understood by consumers as being used to indicate a connection in the course of trade between the Amended Services and the Applicant.”
In light of all relevant factors, the Registrar stated that, “On weighing the evidence, I am satisfied that the Applicant… has used the Trade Mark before the filing date to such an extent that the mark does in fact distinguish the Amended Services as being those of the Applicant (s 41(3)(b)). There is no other demonstrated basis on which to reject the Trade Mark under s 41. To the extent that any doubt remains as to the capacity of the Trade Mark to distinguish the Applicant’s Amended Services from those of others, I note that a presumption in favour of its registration is applicable.”
This case highlights the fact that achieving registration of a geographically significant name is not in all cases unachievable, and depends on a number of factors. The ways in which, and for how long a trade mark is used, as well as the way it is perceived by consumers are all considerations that can displace a finding of ordinary signification.