Discussion of contention 1
56 The Fry trade mark is not a geographical word or a descriptive word (or words) in isolation, which is not to any extent inherently adapted to distinguish. Its adaptability to distinguish is to be determined according to the principles in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, where Kitto J set out the following authoritative analysis (at 513-14):
Th[e] 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. In Registrar of Trade Marks v W & G Du Cros Ltd, Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question ... and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem ... His Lordship said: "The applicant's chance of success in this respect [i.e. in distinguishing his goods by means of the mark, apart from the effects of registration] must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods..." The interests of strangers and of the public are thus bound up with the whole question ... but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish 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.
57 Clearly, if a mark consists solely of words which are highly, even if not fully or merely, descriptive of particular goods or services, there is a considerable likelihood that other traders in such or related goods would think of and legitimately wish to use the very words constituting the mark or similar words.
58 In Sports Warehouse v Fry at [93] to [95], Kenny J found that TENNIS WAREHOUSE had a sensible meaning and was highly descriptive of the Sports Warehouse services, although not fully descriptive, as the services were "online retail services". She also found that the description was somewhat indirect, but not as indirect or allusive as in the Tub Happy case (Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190).
59 In the present case, the words "TENNIS WAREHOUSE AUSTRALIA" may be said to be highly descriptive on the same basis. The description is, however, as Kenny J found, somewhat indirect, as a warehouse is not necessarily a source of retail sales, and although usage in that sense may be increasingly common, the primary and traditional meaning is a storage repository. Further, the words do not refer to any particular mode of retail services, whether online or otherwise, while the mark is sought to be registered in relation to any means of retailing. In my opinion, the words are not fully or specifically descriptive of the services in relation to which registration is sought or those in fact provided by Fry Consulting. In contrast to the TENNIS WAREHOUSE mark, they do not omit a limitation which in fact applied (as the retailing was exclusively online) but, on the other hand, the description is not only indirect but does not convey the online means of retailing for which, inter alia, registration is sought and Fry Consulting in fact provides.
60 More significantly, in contrast to the TENNIS WAREHOUSE mark considered by Kenny J, the Fry trade mark at issue in this case is a combination mark which includes the stylised depiction of a tennis ball.
61 It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive. When assessing whether a combination trade mark such as the Fry trade mark is adapted to distinguish, it is necessary to consider the combination as a total composition, rather than the individual constituent elements in isolation. In Diamond T, P.O Lawrence J held that a combination trade mark consisting of the capital letter "T", across which the word "Diamond" was impressed in block print, all enclosed within a double diamond shaped border, was, as a whole, adapted to distinguish the applicant's motor vehicles from those of other manufacturers.
62 The Registrar of Trade Marks had refused the application to register the mark, apparently accepting the opponent's argument that the diamond-shaped border was common to the trade, the word "diamond" carried it no further, "T" was an initial and not registrable, and a combination consisting of a double oval containing a word had been held to be not distinctive.
63 P.O. Lawrence J stated (at 588):
Now it has often been said that it is wrong, in judging whether a combination mark is distinctive or not, to dissect the mark and it to show that each of its component parts is not distinctive in itself and then, as the result of this process, to conclude that the mark as a whole is not distinctive.
64 His Lordship observed that whether the trade mark as a whole was not distinctive largely depended on whether other traders were likely, in the ordinary course of business, and without any improper motive, to desire to use the mark, or one resembling it, upon or in connection with their goods (at 589).
65 His Lordship did not consider that the combination trade mark would convey that it was being used in a descriptive or laudatory sense, or to apply to motor cars generally. Nor did he accept that the trade mark was not in fact adapted to distinguish simply because six marks registered in the relevant class contained a diamond shaped border, which was common to the trade. He observed that the trade mark combined, for the first time, a number of common features, and there was no other diamond "T" mark at present in the trade (at 591).
66 Sports Warehouse relied on Guylian in support of its contention that registration of the Fry trade mark would confer an unjustifiable monopoly impeding other traders from bona fide use of marks which contained descriptive or commonplace elements. In Guylian, Sundberg J held that the applicant's seahorse shaped mark, (although potentially registrable as a shape mark under s 17 of the Act) was not capable of distinguishing the applicant's chocolate confectionary goods within the meaning of s 41(5) of the Act.
67 The Registrar had found that the seahorse shape was clearly recognisable as a modification of the shape of a real seahorse, and other traders were already using a seahorse shape, or shapes very similar to it.
68 Sundberg J did not consider that the seahorse shape was sufficiently inherently adapted to distinguish the applicant's goods pursuant to s 41(3) of the Act. His Honour stated, in that context, that a trade mark that is inherently adapted to distinguish goods is one that can "do the job of distinguishing without first educating the public that it is a trade mark" (citing British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 at 306).
69 His Honour also relied on Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 ("Kenman Kandy"), where the majority (Stone and French JJ) held that the applicant's bug shaped confectionary was registrable as a three dimensional shape mark.
70 In Kenman Kandy, Stone J stated at [163]:
Although the bug shape is suggestive of insect life it is not the shape of any specific insect or bug. Indeed, were it not for the description given by the appellants, it might as easily be seen as some extra-terrestrial object or space equipment such as a modified lunar landing module. Registration of the bug shape as a trade mark would not give the appellant a monopoly over all bug or insect shapes - only this particular shape and any substantially identical or deceptively similar shape.
71 French J, who agreed with Stone J, stated at [50]:
Theoretically it may be the case that the number of possible symmetrical arrangements of projections and recesses is not infinite. Assuming that to be so, it is speculative, absent evidence, to draw conclusions about that number and whether the particular arrangement has any significant impact upon the access of other traders to the use of insect like shapes as trade marks. In that connection it is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s 33. To the extent that critical criteria upon which registration might be rejected are in doubt, the application should be accepted.
72 In Guylian, the Registrar argued that the seahorse shape was not concocted or invented, but was a clear representation of a seahorse with a relatively minor level of stylisation or abstraction, which possessed an ordinary signification that another trader in chocolate might want to use. He relied, in that context, on Stone J's observation in Kenman Kandy that the absence of ordinary associations and significations made a sign inherently adapted to distinguish one trader's goods from another's. Further, the Registrar submitted that chocolate confectionary was manufactured in a wide variety of novelty shapes, including animals, and other manufacturers had sold chocolate in the shape of sea shells and other marine life and currently sold chocolate in the same seahorse shape as the applicant's chocolates, or very similar to it.
73 Sundberg J accepted that although there were other ways to depict a seahorse than that chosen by the applicant, Guylian, "it [was] quite possible that as at the priority date other traders might want to depict a seahorse [and other marine shapes] in a way that is similar enough to cause potential confusion in the minds of consumers" (at [77]).
74 His Honour did not think it unlikely that others might wish to depict a seahorse in future merely because no other seahorse shapes were being sold in Australia at the time.
75 Recognising that an evaluative judgment was necessary in every case, Sundberg J considered that in Guylian "[t]he degree of likelihood… turns very much on the extent to which this particular seahorse shape is distinctive or unique" (at [78]). He found at [78] that:
while the shape has some distinctive features… it is not so unique or imaginative that other traders, using a seahorse shape for its ordinary signification, will be able to avoid potentially infringing the mark if it were registered.
76 His Honour concluded that the mark, although to some degree inherently adapted to distinguish, was not sufficiently so to decide the matter because, inter alia:
(a) the mark gave the immediate impression of an ordinary sea horse;
(b) evidence of other seahorse shapes on the market tended to confirm rather than deny the likelihood that other traders wishing to depict a seahorse may have some difficulty in avoiding infringement proceedings. The seahorse shapes sold by other traders did not differ so significantly as to obviate confusion, and, given the exclusivity of rights granted upon registration, it would be difficult for other traders to ascertain where to draw the line (at [79]);
(c) the shape in suit was not "entirely concocted" and thus not lacking an "association that would lead to confusion", if other traders wished to draw upon it (at [80]); and
(d) more recent evidence of similar sea shell and seahorse chocolate products further supported the conclusion that, as at the priority date, other traders might have wished in the future to adopt the same shape or one closely resembling it, as (while as at 2008 such use was likely to be largely attributable to the applicant's long promotion of those shapes) the tendency for competition in the manufacturing of sea shell/marine chocolate creatures was already evident (at [81]).
77 Having found that the mark was not sufficiently inherently adapted to distinguish for the purposes of s 41(5), Sundberg J considered whether the mark had, as at the priority date, acquired a capacity to distinguish the relevant goods, by use of the mark as a trade mark.
78 His Honour found that although the applicant's survey evidence showed that a proportion of consumers associated the seahorse shape with the applicant, it was not because the applicant had educated the public to recognise the shape as a badge of origin (at [95]). Rather, his Honour's impression was that the shape was only one of several features on the packaging and did not function as a trade mark, but rather, illustrated individual chocolates and the contents of the box generally. Further, in other marketing materials, the shape was used in combination with other shapes (at [96]). A Guylian trade mark printed on the packaging also diluted the trade mark significance that might otherwise have been attributed to the seahorse shape.
79 The survey and expert evidence ultimately indicated that, while many consumers identified the applicant with the seahorse shape, the association was probably referable to the sale of the confectionary shapes over a long period with various trade marks, and not because the shape itself had been a trade mark. Consumers did not "actually understand the shape as an indicator of the origin of the goods" (at [100]). Further, about 50% of consumers did not identify the shape with any particular manufacturer, and 25% of those who did identified it with a manufacturer other than the applicant (at [100]).
80 In my opinion, in the present case, the impression created by the Fry trade mark as a whole is distinctive, although it contained some very descriptive elements.
81 As Diamond T establishes, a combination mark should not be dissected into its individual elements in the context of assessing the distinctiveness of the totality, so even a collection of entirely commonplace elements could achieve distinction to the requisite degree. While Sports Warehouse submitted that, in Diamond T, the idea of combining the commonplace elements was novel, the reasoning did not depend on the novelty of combining the elements selected, but on the distinctive impression created. If that result be accomplished, it is irrelevant that the elements themselves are not distinctive and that it is not novel to combine elements of that kind.
82 In this case, the tennis ball device, which is represented with a relatively high level of abstraction and stylisation, is, as Fry Consulting submitted, eye catching. It is not a clear or obvious depiction of a tennis ball, and although it quite cleverly employs the characteristic thin line wrapping, it is far from a literal image. In my view, if unaccompanied by the words, it would not give the immediate impression of a tennis ball and may not be identified as such.
83 The tennis ball logo thus does not appear to possess the ordinary association and significance to the degree which would deprive it of inherent capacity to distinguish. While it is not necessary for any particular element of a combination mark to possess distinctiveness in itself, and the tennis ball logo is not, in contrast to Guylian, advanced as a sign mark, its qualities, combined with other elements, create, as a totality, a distinctive impression, notwithstanding the descriptive nature of some constituents.
84 Sports Warehouse contended, however, that as the Fry trade mark was very descriptive and it was obvious to combine elements of the relevant kind, the monopoly conferred by registration was unjustified. It relied, in that context, on searches conducted by JÜrgen Bebber, of the solicitors for the respondent, to establish that many traders legitimately wishing to use a similar mark would be prevented from doing so if the Fry trade mark were registered. Mr Bebber deposed to a search he conducted of the IP Australia database for all pending and registered trade marks in class 35 indexed with the words "tennis" and "ball", and exhibited the results of that search. Mr Bebber also exhibited print-outs and screen shots of various websites he located using a Google search for "tennis retailers and tennis shop online".
85 Mr Feder, by his affidavit affirmed on 3 June 2011, deposed to his own search of the same subject matter on the Australian Trade Marks Online Search System on 26 May 2011, updating Mr Bebber's results. A trade mark application with a picture of a cricketer was withdrawn on 28 February 2011, and a trade mark for "EGGAZ SPORTS" with a picture of an egg figure with a cricket bat, tennis racquet and soccer ball was filed on 27 April 2011.
86 The searches exhibited by Messrs Bebber and Feder related to trade marks and screen shots; approximately half of the marks pre-date the priority date, while half post-date it. While evidence of use by other traders prior to the lodgement date is of primary importance in assessing the likelihood that, as at the priority date, they may legitimately wish to use the mark or a mark similar to it in relation to it, as Kenny J in Sports Warehouse v Fry (at [101]) held, in reliance on Sundberg J in Guylian (at [54]), evidence of use of a constituent word of the mark by businesses after the date of lodgement was not irrelevant to whether the mark was inherently adapted to distinguish the designated services from those other traders, although such evidence could be accorded only limited weight and could "be in no sense decisive of the principal issue" (at [102]).
87 Sports Warehouse contended that the marks and screen shots exhibited by Mr Bebber in this case revealed not only an inclination by traders to use a tennis ball as part of their mark, but also a number of the uses so nearly resembling the Fry trade mark that, if it were registered, they (albeit properly motivated) might infringe. Sports Warehouse also submitted that the marks and screen shots demonstrated the very low inherent adaptability to distinguish the Fry trade mark.
88 That submission was not, in my view, persuasive. Many of the exhibited marks and screen shots contained an image or depiction of a tennis ball to the left-hand side of the trader's name, whether by itself or accompanied by another shape or tennis racquet. They included a Tennis Australia mark and the screen shots of the websites for Reynolds Racquets, POP Tennis, The Tennis Shop, Tennis Pro Shop, Strung Out, Tennis & Gear Online Store, and Racquet Works.
89 A number of other marks and screen shots used a depiction of a tennis ball and/or racquet as part of the trader's name. The mark for tennismart.com.au used a tennis ball in place of the "i" in "tennis"; a mark for the word "Cleanskin" used a subtle depiction of a tennis ball to form the letter "C"; and the Curnow Tennis website used the head of a tennis racquet with a ball in front of it to form the letter "C", with the remaining letters "urnow" written so as to comprise part of the neck and handle of the tennis racquet.
90 Several marks and screen shots used an image of a person throwing a tennis ball in the air with a racquet outstretched as if about to serve. They included the ATP Tour Inc mark, the Australian Open Tennis mark, and the "Lets go tennis" mark.
91 Other miscellaneous uses of tennis balls or racquets included, inter alia, the Tennis Ranch website (on which a map of Australia was superimposed over the head of a tennis racquet), the Tennis Australia Travel mark (which depicted a tennis ball in the appearance of a globe), and the Tennis Coaches Australia Limited mark (which depicted three tennis balls of different colours).
92 Each of the above marks appeared to me both distinctive in itself and significantly different from the Fry trade mark.
93 The evidence demonstrated that there are many ways in which to depict a tennis or sports ball which differ materially from the logo in the Fry trade mark, many variations of words and their arrangement in phrases capable of performing an analogous function, and many potential ways of arranging such words and logos in combination. In my view, the multiplicity of combinations of words and a ball or other device embodying some reference to "tennis" and/or "Australia" indicated a considerable scope for variation and individuality, both within the constituent elements themselves and the different modes of their combination.
94 The exhibited trade marks and other examples of screen shots were not, in my view, persuasive evidence of the likelihood that other traders would, as at the priority date, legitimately desire to use the Fry trade mark or one so closely resembling it as to infringe.
95 The evidence of registration of trade marks containing depictions of sports balls without endorsement under s 41(5) fortified, but was unnecessary to, the conclusion that the Fry trade mark is sufficiently inherently adapted to distinguish the services to satisfy the requirements of s 41(3).
96 It follows that I am satisfied, on the balance of probabilities, that the Fry trade mark is inherently capable of distinguishing Fry Consulting's services pursuant to s 41(3) of the Act.