Applicable Principles
28 I have already indicated that s 41(6) of the Act cannot be invoked by DMG Radio, the "sounds different" mark not having been used prior to the date of the application for registration. For this reason the following comments do not address the distinctive requirements of that subsection: cf Blount at 60-61.
29 Whether the mark is capable of distinguishing the services of DMG Radio to which the application relates turns in consequence on whether I clearly cannot be satisfied that it meets the requirements of subs 41(3) or (5): s 41(3), because it is not, of itself, inherently adapted to distinguish DMG Radio's services; and s 41(5) because, though to some extent inherently adapted to distinguish those services, that, combined with its use, intended use and other circumstances does not or will not distinguish those services.
30 The capability which s 41(3) and s 41(5) address in their respective ways has been described as a test of "fitness for a future role": Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 586. Though this criterion is forward looking: cf Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1 at 17-18; the required capability must be possessed by the mark at the priority date. It is insufficient that the mark may have the potential or capacity to acquire that capability in the future: cf Thompson v B Seppelt & Sons Ltd (1925) 37 CLR 305 at 312.
31 This distinction becomes important in cases such as the present where the mark has been used after the priority date and evidence of that use is adduced to support registration in reliance on s 41(5).
32 Evidence of subsequent use is, in my view, admissible in opposition proceedings not only where it is claimed that the use of a mark would be likely to deceive or cause confusion: see 43 of the Act; Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 at 509; but also where the capability of a mark to distinguish is in issue: see Lahore, Patents, Trade Marks and Related Rights [54,210]; Shanahan's Australian Law of Trade Marks and Passing Off [6.95] (3rd ed, 2003). As was said in Pound Puppies Trade Mark [1988] RPC 530 at 533:
"… it is permissible when deciding whether the mark was capable of distinguishing to take into account use after the date of application. If a mark has in fact become distinctive, then it is at least likely to have had a capacity to distinguish."
Though Austereo has submitted that only prior use is admissible for s 41(5) purposes, I am satisfied that the view expressed above reflects the true construction of s 41(5) which, unlike s 41(6), is not limited to prior use. It also expresses "the cold common sense" that commended itself to Burchett J in Conde Nast Publications at 509 of seeing actual events as being "capable of illuminating the probabilities already inherent in [a prior] situation".
33 What requires emphasis, though, is that subsequent use evidence, no less than evidence of intended use, is relevant only to the question of whether the mark possessed the required capability at the priority date. It will not assist an applicant for registration if that use demonstrates no more than (i) the mark has the potential or capacity to acquire that capability in the future; or (ii) that the mark has acquired distinctiveness only because the relevant community has since the priority date been "educated" to see the mark as an indicator of the origin of particular services: British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 306; Re Application by Cadbury Ltd (2002) 55 IPR 561 at 570.
34 Both s 41(3) and (5) require consideration of the extent to which a trade mark is "inherently adapted to distinguish" the designated services from the services of others. As Branson J noted in Blount at 58, the "inherently adapted" formula was of primary significance under the Trade Marks Act 1955 (Cth) and the formula as used in s 41(3) and (5) is "intended to be understood in the light of decisions under the Act".
35 There is no significant disagreement between the parties as to the burden of this formula. Their differences, predictably, are in its application. Of the various elaborations of the formula it is sufficient for present purposes to note the following. First, in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, Gibbs CJ observed (at 424):
"Inherent adaptability is something which depends on the nature of the trade mark itself … and is therefore not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise."
As s 41(5) makes plain, there are degrees of inherent adaptation to distinguish.
36 Secondly, as Lindgren J observed in Kenman Kandy (Australia) Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30 at [84]:
"While inherent adaptation to distinguish requires attention to be focused on the mark itself, and is intended to stand in sharp contrast to a mark's capacity to distinguish arising from use, the notion of 'the mark itself' does not exclude from consideration the nature of the range of goods within the class or classes in respect of which registration is sought, or the various ways in which the mark might, within the terms of the registration, be used in relation to those goods. Indeed, those matters must be taken into account."
37 Thirdly, there is the "negative test": cf Kenman Kandy (Aust) Pty Ltd at [98]; of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 which, while not purporting to identify all of the circumstances in which a mark will or will not be inherently adapted to distinguish: Kenman Kandy at [98]; is of particular present relevance. It is:
"That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others … [t]he question whether a trade mark is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."
38 Fourthly, as Note 1 to s 41(6) of the Act suggests - and it is said to reflect "the trend of relevant judicial authority": Ocean Spray Cranberries Inc, at 589:
"Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services."
Nonetheless words which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish: Re the Application of J P Coats Ltd (1936) 53 RPC 355 at 380. Distinctly, that a descriptive statement is commonly associated with a particular trader's goods or services does not, in and of itself, mean that that statement is inherently adapted to distinguish that trader's goods or services. It may, for example, be naturally applied to goods or services of that type by whomsoever manufactured or supplied: ibidat 380.
39 Fifthly, a descriptive word may to a degree be inherently adapted to distinguish because the description itself involves an unfamiliar, obsolete, unexpectedly evocative or purely emotive usage: cf J P Coats at 380; Mark Foy's Ltd v Davies Coop & Co Ltd (1956) CLR 190 at 194.