greenwood j:
1 I have had the benefit of reading the draft reasons for judgment of Rangiah J and the draft reasons of Katzmann J.
2 I agree with the reasons of Rangiah J in relation to the matters going to ss 41 and 42 of the Trade Marks Act 1995 (Cth) (the "TM Act"). I also agree with the observations of Katzmann J concerning the s 41 issues.
3 I simply wish to add some observations on three topics. The first concerns, as a matter of essential principle, s 43 of the TM Act having regard to the focus of the analysis in the course of argument by the parties on the notion of identifying, for the purposes of s 43, "some connotation" the trade mark (or a sign contained in the trade mark) has and the corresponding need to isolate the so-called "denotation" of the trade mark as a perceived necessary element in identifying a relevant connotation so as to test whether use of the trade mark, having such a connotation, in relation to the "particular services" in respect of which registration of the mark is sought, "would be likely to deceive or cause confusion".
4 The second matter concerns the dominant and fundamental challenge to the entire analysis of the Primary Judge ("PJ") concerning the question of: to whom are the applicant's "Services" provided?: I will refer to the applicant for leave to appeal as the "appellant".
5 The third concerns the "proposed condition" to limit the scope of the use of the trade marks.
6 Section 43 of the TM Act is in these terms:
43 An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
[emphasis added]
7 Section 43 falls within Div 2 of the TM Act (which addresses the topic of "Grounds for Rejecting an Application"), of Pt 4 (which concerns "Application[s] for Registration"). In order to be a "trade mark" for the purposes of the TM Act, each trade mark in these proceedings, like all candidate trade marks for registration, must be a sign used, or intended to be used, to distinguish, relevantly here, the identified Services "dealt with or provided in the course of trade" by the applicant from the services so dealt with or provided by any other person: s 17.
8 The very essence of a trade mark proposed for registration under the TM Act is that it is capable of operating as a "badge of origin" by being capable of distinguishing the goods or services of the applicant dealt with or provided in the course of trade by the applicant from the goods or services of others. The all too familiar rights conferred upon the owner by registration of the trade mark are set out at ss 20, 21, 22 and Pt 12 of the TM Act.
9 The statutory essence of a candidate trade mark is that it means and says (that is, distinguishes or is capable of distinguishing), no more and no less than that the applicant owner is the source of the identified goods or services the subject of the application, rather than someone else.
10 This, for want of a better non-statutory descriptive term, is the "denotation" of the trade mark because it is what the trade mark must be for the purposes of the TM Act. If the trade mark proposed for registration is simply not capable of distinguishing the applicant's designated goods or services from those of others, the application for registration must be rejected because it fails at the threshold and s 41(1), symmetrically, brings about that result having regard to the imperative of s 17.
11 Section 41(2) goes on to identify the only circumstances (that is, those circumstances falling within s 41(3) or s 41(4) depending upon their application) in which a trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
12 Although a trade mark sought to be registered might be capable of operating as a badge of origin in the sense contemplated by the statutory text of s 17 (and survive a s 41 analysis), such a trade mark must nevertheless be rejected, according to s 43, if, because of some connotation it has, use of the trade mark in relation to the designated goods or services would be likely to deceive or cause confusion.
13 The trade mark might not, of course, in any event, be capable of distinguishing the applicant's goods or services from those of others having regard to the operation of s 41 but assuming a trade mark is otherwise entitled to registration, it must be rejected if it has an identified connotation and because of it, use in relation to particular goods or services the subject of the application would be likely to deceive or cause confusion.
14 So, the first s 43 question always is whether the trade mark, sought to be registered, has "some connotation". If not, s 43 is simply not engaged. The second s 43 question, if s 43 is engaged, is whether "because of [that connotation]", use of the trade mark, in relation to the relevant goods or services, in a forward-looking way, "would be likely to deceive or cause confusion".
15 The Primary Judge found at [164] that each trade mark sought to be registered has (and had at the priority date) a "clear connotation".
16 The clear connotation so found is that the word mark "Primary Health Care" and the logo device prominently adopting "PRIMARY" in conjunction with "Health Care Limited" connote "first level or first contact health care": PJ at [164]. That connotation is a shorthand phrase for signifying the provision of services which form part of "that part of the Australian health care system which provides first level health care, being the health care received as a result of the first contact between an individual and a health care system" [original emphasis]: PJ at [99]. Thus, each trade mark is said to contain within it or "include" or "imply" a meaning "besides what it primarily denotes". Each trade mark primarily denotes a contended distinguishing connection between the applicant and the suite of identified Services to be provided by reference to each mark (the subject of the application). The Oxford English Dictionary, 2nd Ed, Vol 3, attributes the following meanings to the noun "connotation" and the verb "to connote":
Connotation the signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication
Connote to mark along with, to mark (a thing) with or in addition to (another); to signify secondarily or in addition; to include or imply along with the primary or essential meaning
17 In Pfizer Products v Karam (2006) 219 FCR 585, Gyles J said that the term "connotation" in s 43 is a reference to "a secondary meaning implied by the mark" and thus an analysis of whether s 43 is engaged has sometimes tended to centre upon examining the "primary meaning" of the trade mark with a view to then identifying whether the trade mark has an implied "secondary meaning". This has resulted in a search for a "first order" meaning to be attributed to the words (or words and a device), comprising the trade mark (the so-called "denotation") and a search for a "second order" meaning (the "secondary connotation"). The Primary Judge, correctly in my view, said that the phrase "primary health care" adopted in the trade marks has a "clear connotation", being, "not the applicant as the source of the Services, but first level or first contact health care" [emphasis added]: PJ at [164].
18 In that short rolled-up sentence, the Primary Judge is, correctly, saying that the role of the trade mark (that is, that which it "primarily denotes" although the term "denotation" does not appear in s 43) is to distinguish the applicant as the source of the relevant "Services" from the (like) services of others. This is the true denotation. The Primary Judge is also saying that, upon analysis, the phrase "primary health care" does not distinguish the applicant as the source of the Services but has a "clear connotation" that the character of the "Services" (or the kind of "Services") provided by the applicant is the provision of "first level or first contact health care".
19 The Primary Judge found that use of either mark, having such a connotation, would be likely to deceive or cause confusion because the applicant is not, in fact, the provider of, nor responsible for, the clinical care provided by the General Practitioner practising at any one of the applicant's 71 medical centres (medical services) nor the clinical care provided by any other health professional actually providing his or her services (professional clinical health services) at any one of the applicant's medical centres.
20 In the principal proceedings, the Primary Judge found that each trade mark failed as a trade mark for the purposes of the TM Act at the threshold because neither trade mark adopting the phrase "primary health care" was capable of distinguishing the identified "Services" of the applicant from the services of others (s 41(1)) and thus, the essential role of the trade mark as a badge of origin denoting the applicant as the source of the identified "Services" failed. The Primary Judge then proceeded, in any event, to consider the questions raised by the possible application of s 41(2), (3) and (4). The Primary Judge described each trade mark as having the "core meaning" described at [117].
21 Assuming that the appellant has applied for registration of something which is a "trade mark" for the purposes of the TM Act (and thus an application for the purposes of s 43), the application must be rejected on the s 43 ground because the connotation (so found) would be likely to deceive or cause confusion (as found). If, however, the appellant's trade marks fail at the threshold because neither trade mark is capable of distinguishing the appellant's identified Services the subject of the application (the "designated services") from the services of others, the trade mark simply has no denotation.
22 Each ground of objection has, however, an independent operation. In deciding whether a ground of opposition is made out under s 43, the process of analysis necessarily assumes, for that purpose, that the trade mark is comprised of a sign used or intended to be used to distinguish the identified goods or services dealt with or provided by the applicant in the course of trade from the goods or services of others and asks whether such a sign has some connotation signifying something "besides what it primarily denotes" (to use the Oxford English Dictionary meaning) and, if so, whether use of such a sign, having such a connotation, would be likely to deceive or cause confusion.
23 The question is, does the trade mark have "some connotation" going beyond its only role as a badge of origin of the applicant as the source or origin of the identified goods or services described in the application, from the services of others?
24 These things should be noted. At [99], the Primary Judge said this:
99 Having regard to these matters, I do not accept that the applicant's submission, that there is no "singular or clear meaning" of the descriptive phrase "primary health care", is correct. It is and for many decades has been clear to those involved in public health policy, that "primary health care" means (at least) first level health care or the health care received as a result of the first contact between an individual and a health care system. The fact that the phrase also means more than this is immaterial. The phrase has an ordinary signification to those involved in public health policy in Australia and that signification is that part of the Australian health care system which provides first level health care, being the health care received as a result of the first contact between an individual and a health care system (or, in shorthand, first level or first contact health care). This was (and is) understood to include, but not be limited to, the health care provided to people by GPs. In other words, there has never been any doubt that, to those involved in public health policy in Australia, GPs provide primary health care.
[emphasis added]
25 At [102], the Primary Judge said this:
102 In any event, a number of the witnesses referred to above have been GPs (such as Dr Hobbs) or frequently interact with GPs as part of their work. Moreover, these witnesses did not consider their understanding of primary health care to be one which applied only within the area of public health policy. Their experience of the use of the phrase extended beyond that into both academic and clinical settings. While I accept that a person cannot generally give evidence about another person's state of mind, the evidence of these witnesses, the overall effect of which was that they frequently heard the term used in these contexts and in a way which accorded with their understanding of the term, indicates that the applicant's contention that "primary health care" is a recent invention confined to those involved in public health policy is a fallacy.
[emphasis added]
26 At [115] and [116], the Primary Judge said this:
115 Insofar as members of the public are concerned, the applicant relied on various statements in government policy documents to the effect of the statement in the 2009 Report to Support Australia's First Primary Health Care Strategy that:
[P]rimary health care is a term that is not widely used or even understood with most people simply distinguishing between the health care they receive in the community and the health care they receive in hospital.
While there are a number of definitions available, including from the World Health Organisation and the Australian Primary Health Care Research Institute, in practice there is no absolute or consistent view about whether particular settings and services are part of primary health care or not.
116 Again, when read in context it is apparent that there is no suggestion here that "primary health care" does not mean first level or first contact health care. Nor is it suggested that a member of the public, confronted with the phrase, would not understand this core meaning as a result of the ordinary meaning of each of the words. The health care which people receive in the community is primary health care so the distinction which the report says most people draw in fact accurately reflects the health policy meaning of the phrase. The points being made are first that members of the public, in contrast to those involved in health care, do not think in terms of primary, secondary and tertiary health care and, second, that there is room for debate amongst those involved in health care about whether any particular activity involves primary health care or some other level of care. What reading the documents in context also makes plain is that, whatever the bounds of that potential for debate, the provision of medical services by GPs is a setting involving the provision of primary health care. It is an unequivocal example of the provision of what a substantial number of those involved in the health sector would know involved primary health care.
[emphasis added]
27 At [117], the Primary Judge said some things about the "core meaning" of "first level or first contact health care". The Primary Judge said this:
117 I also consider that this core meaning, of first level or first contact health care, would be understood by a substantial number of people seeking to access health care as at the priority date. That is, if a person saw "primary health care" in the context of seeking health care for themselves or a family member or associate, they would understand the reference to be to a form of health care, being first level/first contact health care. They would do so because of the ordinary meaning of each word which makes up the phrase. While such a person may not distinguish between primary, secondary and tertiary levels of health care, or think of primary health care as an approach to health care in the extended sense of the term as used in the health policy context, they would understand the ordinary signification of the phrase to be first level/first contact health care. Such a person, moreover, would be very unlikely to associate the phrase with the applicant because the applicant's marketing is targeted at GPs, not members of the public. One exception to this would be those with an interest in publicly listed companies operating in the health care sector (about which Mr Symons gave evidence) but people within this class could not be assumed to be a substantial proportion of the general public.
[emphasis added]
28 The Primary Judge found that the "Services" are integral to the provision by GPs (and other health professionals within the medical centres owned and operated by the appellant) of primary health care services to patients who attend the centres: [118].
29 The Primary Judge found that the "core meaning" of each trade mark is the connotation conveyed by each mark as found. In other words, the Primary Judge found (having regard to the rolled up sentence at [164] of the Primary Judge's reasons, as mentioned earlier, taken together with the other findings), that each trade mark failed as a trade mark as neither trade mark was capable of distinguishing the appellant's "Services" (in respect of which each trade mark was sought to be registered), from the services of others. However, even assuming, for the sake of the s 43 question, that each trade mark was capable of discharging its statutory function as a trade mark, the trade marks comprising the signs "Primary Health Care" contain within them a meaning going beyond the contended primary (and only) role of each mark as a badge of origin by implying, in addition, a meaning of, not the appellant as the source of the identified "Services", but rather, the appellant as a provider of first level or first contact health care. It was uncontroversial that the appellant does not supply any clinical care or other professional health care services (which, of course, form no part of the identified Services in any event).
30 Section 43, in order to be engaged, did not require the Primary Judge to find another or secondary meaning going beyond "first level or first contact health care" provider and ask whether such other meaning, through use of each trade mark, gave rise to the statutory consequences contemplated by s 43. The two questions under s 43 were: whether each trade mark contains "some connotation" (going beyond the appellant as the source of the "Services"), implying that the appellant is a provider of "first level or first contact health care"; and, whether use of each trade mark, having such a connotation, would be likely to deceive or cause confusion.
31 The Primary Judge did not fall into error in the way in which her Honour approached the questions to be answered under s 43 of the TM Act. I will return later in these reasons to the question of whether use of each trade mark having such a connotation would be likely to deceive or cause confusion. Before doing so, it is necessary to turn to the second issue which concerns the question of whether the Primary Judge fell into error in the way in which her Honour analysed the appellant's services and found that they were provided more broadly than that contended for by the appellant. This contention goes to Ground 3 of the notice of appeal. However, the appellant says that the approach of the Primary Judge affected everything because her Honour's approach caused the analysis of the legal questions in issue to miscarry.
32 By Ground 3 of the grounds of appeal, the appellant contends that the Primary Judge erred in finding at [60]-[68], [80], [118]-[199], [124], [143] and [153], that the "Services" provided by the appellant "are not separate from other activities engaged in by the appellant in the operation of its medical centres and [in finding that the Services], are indivisible or indistinguishable from, or integral to, the provision of clinical care to patients who attend the appellant's medical centres".
33 Put simply, the appellant contends that the Services are "back office services" provided to the addressees of those services, namely, medical and allied health practitioners. In that sense, it is said that medical and allied health practitioners are provided with a suite of support services which enable them to provide clinical services. In effect, all necessary services to enable them to provide clinical services are outsourced to the appellant as a service provider. The appellant says that the proper way to view these structural and institutional arrangements with medical and other health professionals is in an entirely bilateral or binary way. The appellant, it is said, has configured a suite of services (the "Services") which are addressed to, and provided to, the medical practitioner or the related health professional to enable that person to provide clinical services. The appellant says it has no relationship with the patients or persons who deal with the medical practitioner or related health professional.
34 The "Services" identified in the application for registration of each trade mark (Class 35 services) are described in this way:
Medical centre business management; medical centre business administration; service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders.
35 The Primary Judge conducted an examination of the evidence concerning the way in which the appellant has gone about operating its 71 medical centres. The Primary Judge made the following observations in the paragraphs of the primary judgment now under challenge. I will start with [60] to [68]:
60 Reality dictates that the applicant's attempts to characterise the Services as services provided only to medical professionals cannot be accepted. The attempts reflect a misconception which affects the entirety of the applicant's case.
61 Another misconception in the applicant's case is apparent. It is the notion that the applicant is in the business of providing the Services to health professionals. This is inaccurate. The applicant is in the business of operating medical centres to which it recruits GPs and, as part of a much larger set of activities, it also provides the Services to the health professionals who have contracted to work from such a centre. No health professional can simply purchase the Services from the applicant. As part of the applicant's overall activity, but not otherwise, the applicant provides the Services which of their very nature and in many respects are services to not only the GPs and allied health professionals, but also to members of the public and to others involved in the health system.
62 As noted, the applicant, on the evidence, does not offer any GP or allied health professional the Services in isolation. The applicant, for example, does not offer the Services to every GP or allied health professional. The Services are only available to a GP or allied health professional at the medical centre to which the GP or allied health professional has been recruited. Consistent with this, the applicant does not market the Services per se to GPs and allied health professionals. Rather, it markets to GPs and allied health professionals a form of practice from one of its medical centres. The form of practice is to work from a room in one of the applicant's medical centres (GPs are recruited to specific centres and must practice from that centre) which will be fully equipped and supplied by the applicant, with all staff and services necessary for the operation of a medical centre being provided by the applicant in exchange for a fee which is calculated as a percentage of the money earned by the GP from providing clinical services to patients.
63 Against this background, I do not accept the attempted characterisation of the applicant as having provided the Services to GPs and health professionals and having done so using the marks to brand the Services. It might be different if, for example, the applicant was in the business of providing the Services to all GPs and health professionals and marketed the Services in that way. But this is not what the applicant does or has ever done.
64 As such, the focus of the applicant's case is off target and at odds with the evidence. The consequences of this disconnect run through every aspect of the case. First, the Services cannot be considered as if they exist in isolation because that is not how the Services are provided. Second, no matter how often the applicant repeats it, I am unable to accept that the Services are directed only to GPs and health professionals; the public and other participants in the health care sector are provided with some of the Services and are potentially concerned with all of the Services. Third, this in turn affects the question of whether the marks are inherently adapted to distinguish when the Services are provided in and from a medical centre which, as discussed below, involves the quintessential form of primary health care. Fourth, this has led to the proposed amendments which, as discussed below, involve a form of self-negating description of the Services. Fifth, the applicant has tried to establish acquired distinctiveness by use of the marks in respect of the Services when the applicant does not market the Services at all in and of themselves, but markets to GPs and allied health professionals a particular form of practice in which, amongst many other things (including the basic requirements of rooms, equipment, medical supplies, cleaning and maintenance), the applicant also provides the Services.
65 To return to the immediate issue, the reality is that, at least insofar as the Services are concerned, the applicant is providing services to medical professionals within its centres, to patients of those centres, and to all other participants in health care who interact with any medical professional in one of its centres. The fact that the applicant (or Idameneo) receives payment for the provision of the Services directly from the medical professional does not mean that the Services are provided only to the medical professional. Nor does the fact that medical professionals understand that they alone provide clinical or medical services to patients mean that the Services are not provided to patients. The reasoning involved seems to involve a false syllogism: (i) only medical professionals provide clinical services to patients, (ii) the Services are not clinical services, (iii) therefore, the Services are necessarily not services to patients. Propositions (i) and (ii) may be accepted, but they do not lead to proposition (iii).
66 Moreover, the fact that the Services are not clinical services does not mean that they are irrelevant to the provision of clinical services. If the applicant (or Idameneo) did not provide the Services to a medical professional then, in the Australian health care system at least (which is highly regulated), someone else would have to provide those services (including the medical professional personally if they so wished) to enable the clinical services to be provided. Even a medical professional who did not wish to charge for their services would be bound by ethical (and presumably statutory) obligations to ensure that proper records of treatments, prescriptions and referrals are made and maintained. The existence of, and ability to access, those records is very closely related to, indeed part of, the provision of clinical services.
67 While there is a factual dispute between the parties about the extent to which the applicant (or Idameneo) has used the words "Primary Health Care" to brand its medical centres in some way or another (three centres according to the applicant and seven centres according to the respondent), it is not in issue that the applicant's particular business model involves the marketing to and recruiting of GPs to work from its medical centres. The applicant, in substance, sells to GPs a form of practice. The thrust of the marketing is (and has been) that it may pay GPs for their practice and, for a fee calculated as a percentage from patient billings, will provide them with rooms within a large-scale multi-disciplinary centre from which to work, with all "nurses, receptionists, supervisors, accountants and administrative staff" provided as part of the centre, the patient benefits being identified as accessible health care when needed, no appointments necessary, Medicare services bulk-billed, comprehensive family practice with GP of choice and range of practitioners to choose from, continuity of care with availability of records and service by principal doctors, and "comprehensive one site health care for most services found outside major hospitals".
68 Contrary to the respondents' case, I have no doubt that the thrust of the applicant's marketing has been and is intended to be to GPs and allied health professionals, not to the public. The occasional references to itself in its dealings with the public seem relatively few and far between compared to its continuing activity of recruitment of GPs to its centres. But by focusing on the Services which occur within the medical centres at which patients receive clinical care the applicant has created specifications in which many of the Services are services to more than merely the GP or other health professional, and are indivisible from or integral to the provision of clinical care by the GP or other health professional.
[emphasis added]
36 The appellant also challenges the findings in the following paragraphs:
80 To take billing services as an example, the applicant (or Idameneo) is providing those services directly to medical professionals. However, irrespective of the applicant's conception of its activities, it is also providing those billing services directly to patients. The proposed amendments attempt, on the one hand, to give the applicant a right of exclusive use of the marks insofar as the medical professionals are concerned, yet on the other hand to deny the applicant any right of exclusive use insofar as members of the public are concerned. The service, however, is the one service. In providing a service to medical professionals, the applicant is also providing a service to patients. In providing a service to patients, the applicant is also providing a service to medical professionals. Billing services necessarily "entail dealing with patients", so are those services within or outside the scope of the registration? The applicant, by the amendments, is trying to divide a service into segments which do not exist. For the same reason, the applicant's invitation to attempt to re-write the specifications must also be declined.
…
118 As discussed, I accept the respondents' submission that the Services are integral to the provision by GPs (and other health professionals within the medical centres owned and operated by the applicant) of primary health care services to patients who attend the centres.
119 As the respondents submitted, there is an unreal distinction at the heart of the applicant's case between the provision of the Services and the provision of clinical or medical care. The distinction is unreal because the Services are part of the overall service a patient receives when attending a medical centre and, to some extent, are also part of the medical or clinical care a patient receives. It is part of medical care that a GP be able to access clinical records for a patient. It is part of medical care to ensure new records are accessible in the future. It is part of medical care for a patient's referral to be properly recorded, stored and managed. It is part of medical care for the centre to have available necessary medical supplies. Otherwise, from the moment a patient makes a booking or attends a centre, they are receiving aspects of the Services.
…
124 In this context, if the question is posed whether, at the priority date, other persons involved in the Australian health care system, in the ordinary course and without improper motive, might wish to use the phrase "primary health care" in connection with the Services; the answer must be "yes". Every GP and every medical centre is providing primary health care and, in so doing and in one way or another, is performing or having performed the Services to enable that provision. The phrase was at the priority date, and remains, a direct description of the activity of which the Services form part. The phrase does not have an inherent capacity to distinguish the Services as offered by the applicant from the same services however and by whomever they might be performed. The phrase is not a skilful allusion to the clinical services that GPs provide in asserted distinction from the administrative and managerial character of the Services. Because the distinction is artificial, the phrase is directly descriptive of the Services. The other persons who might legitimately wish to use the phrase "primary health care" in connection with services the same as the Services include all government departments involved in the health care system, all providers of primary health care, all businesses like that of the applicant involved in the provision of primary health care, and all members of the public.
…
143 Given these matters, care is required in respect of the evidence for and submissions of the applicant. For example, it was submitted that:
Primary Health Care's sales approaches and negotiations with potential customers of the Services, as at October 2009 and continuing today, are conducted under and by reference to the Trade Marks, and involve careful explanation of its Services.
…
153 These conclusions also answer the inquiry under s 41(6). As discussed I consider that the marks are not to any extent inherently adapted to distinguish the applicant's Services from the same services offered by others. Further, I am not satisfied that because of the extent to which the applicant has used the marks before the priority date the marks distinguish the Services as being those of the applicant. This is because, as I have explained, the use of the marks before the priority date (which I accept has occurred for the word mark, but not the logo mark) relates to the recruitment of GPs to work at the applicant's medical centres and the operation of the medical centres as a whole and not the Services.
[emphasis added]
37 The appellant challenges all of these findings of fact. Before interfering with any of the Primary Judge's findings of fact, a court of appeal conducting an appeal by way of rehearing, must be satisfied that the challenged findings are "glaringly improbable" or "contrary to compelling inferences" or shown to be wrong by "incontrovertible facts" or "uncontested testimony". The possibility that another Judge or more particularly any one of the Judges constituting the appeal court, might or might well have, formed a different view of the contested evidence or might, or might well have, reached different findings open on the evidence to those findings of the Primary Judge also open on the evidence, does not provide a principled basis for interfering with the findings of fact of the Primary Judge. So much is made clear from the observations of the Court (French CJ, Bell, Keane, Nettle and Gordon JJ) in Robinson Helicopter Company Inc v McDermott (2016) 90 ALJR 679; 331 ALR 550 at [43].
38 In this context, two further observations from the authorities should be noted. First, in Whittaker v Child Support Registrar [2010] FCAFC 112 at [2], Keane CJ (as his Honour then was), Moore and Perram JJ said:
On the appeal to this Court, the appellants' submissions on issues of fact proceed, in large part, on the assumption that the issues between the parties remain at large as if they had not been determined by the findings of the learned trial judge. It is not open to this Court to determine issues of fact, as if the findings of the learned trial judge had not been made. While this appeal is an appeal by way of rehearing, the Court's function is to correct errors in the decision below.
[emphasis added]
39 Second, in Warren v Coombes (1979) 142 CLR 531, Gibbs ACJ, Jacobs and Murphy JJ; Stephen and Aickin JJ dissenting, set out the relevant principles, which were those discussed by Barwick CJ and Windeyer J in Da Costa v Cockburn Salvage & Trading Pty Ltd (1970) 124 CLR 192 (and subsequently in Edwards v Noble (1971) 125 CLR 296). The relevant passages are as follows:
The question is not whether the appellate court can substitute its view of the facts which, of course, it is empowered to do: but whether it should do so. In any appeal against a finding of fact, whether or not by way of rehearing, however much the appellate court may be in an equal position with the trial judge as to the drawing of the inferences, in my opinion, the appellate court ought not to reverse the finding of fact unless it is convinced that it is wrong. If that finding is a view reasonably open on the evidence, it is not enough in my opinion to warrant its reversal that the appellate court would not have been prepared on that evidence to make the same finding".
…
But, in any case, the appellate court in my opinion is not bound to reverse the primary judge's finding of fact merely because it held a different opinion to that of the primary judge.
[emphasis added]
40 The point of almost complete departure between the appellant's own view of the target audience to whom it promotes the "Services" (and those within that target audience to whom it ultimately supplies the Services) and its view of the evidence on that topic, on the one hand, and the assessment by the Primary Judge of the evidence on that topic, on the other hand, can be seen in the Primary Judge's observation at [64] (quoted at [35] of these reasons) that "… no matter how often the applicant repeats it, I am unable to accept that the Services are directed only to GPs and health professionals".
41 I have attributed emphasis to many aspects of the observations of the Primary Judge on this topic quoted at [35] and [36] of these reasons and thus it is not necessary to repeat the detail of the findings of fact in the text of these reasons. It should be noted that the Primary Judge has made a very careful assessment of the evidence said to support the appellant's characterisation of the Services and the other evidence going to that question. I agree with the analysis of the findings undertaken by Rangiah J and his Honour's analysis of the appellant's grounds of appeal in relation to those findings. However, the essence of the appellant's contention is that it says (remembering that this is not the trial) that the Primary Judge fell into error by rejecting the appellant's characterisation of its Services as services provided only to medical professionals and other related health professionals. The appellant says that the Primary Judge was simply wrong to treat the appellant's characterisation of its Services as a misconception affecting the entirety of the appellant's case at trial.
42 At [61], the Primary Judge found that one aspect of the appellant's misconception of its case is the notion that the appellant is in the business of "providing the Services to health professionals". The Primary Judge found that the evidence supported a conclusion that the appellant, in fact, is in the business "of operating medical centres" to which it recruits General Practitioners and, as part of a set of activities forming part of that business, it provides the Services to health professionals (General Practitioners and other health professionals) who have contracted to work from one of the appellant's medical centres. The Primary Judge accepted that it was not in issue at the trial that the appellant's particular business model involves marketing to, and recruiting of, General Practitioners to work in any one of its 71 medical centres and that, in substance, the appellant "sells a form of practice", according to the appellant's business model, to General Practitioners. Also, the Primary Judge accepted that the thrust of the appellant's marketing is that it pays General Practitioners for their practice and then provides those practitioners with a suite of services in consideration of being paid a fee calculated as a percentage of the patient billings. Moreover, the Primary Judge observed that she had no doubt that the thrust of the applicant's "marketing" had been, and was intended to be, directed to General Practitioners and allied health professionals rather than the public. The Primary Judge accepted that the references by the appellant, to itself, in its dealings with "the public" seemed to be "relatively few and far between" compared to the thrust of its continuing activity to recruit General Practitioners to its medical centres. Nevertheless, the Primary Judge concluded that by focusing on the Services occurring within each of the medical centres at which patients receive clinical care, the appellant has "created specifications" in which many of the Services are services provided to, not merely the General Practitioner, or relevant health care professional, but are "indivisible from or integral to" the provision of clinical care by the GP or other health professional: PJ at [67], [68] and [118].
43 The way in which, put simply, the appellant structurally views what it does, so far as patients/members of the public are concerned, is illustrated in the diagram below:
44 The Primary Judge, put simply, found that the provision of the Services was along the following lines:
45 Under the model at [43] of these reasons, there is a bilateral relationship between the appellant and Dr Smith in which the appellant provides the suite of Services to Dr Smith so as to enable Dr Smith to provide (his or her) clinical services to patients. The trade marks are said to be used in the course of that bilateral relationship as a badge of origin to distinguish the identified Services dealt with or provided in the course of trade in the Services by the appellant from, put simply, back office enabling services provided by any other provider of such services. In other words, the appellant contends that the evidence demonstrates that there is discrete separation between the Services provided by the appellant to the medical practitioner under and by reference to the trade marks, on the one hand, and the provision of clinical services by Dr Smith to patients of Dr Smith, on the other hand.
46 Under the model at [44], the Primary Judge found, on the facts, that the appellant operates 71 medical centres. Those Primary Health Care medical centres are places at which patients can and do access a range of Primary Health Care services provided by each of the medical centres, that is, provided by the appellant. Some at least of the medical centres (maybe three, maybe seven) are badged "Primary Health Care". At these medical centres, the patients can and do obtain clinical services from a General Practitioner. Other health care professionals can and do provide their services to patients attending some or all of the appellant's medical centres. Under the model at [44], the patients engage with the medical centre operated by the appellant. They engage with the appellant because the appellant is in the business of operating each medical centre. In order to operate a medical centre with clinical officers and other staff, it is essential to have a General Practitioner onsite to provide diagnostic and other clinical medical services. Otherwise, there is no point to being in the business of operating medical centres and trying to engage with citizens in the operation of a Primary Health Care facility or centre or clinic. Some or all of the centres have a related health care professional onsite.
47 The appellant, however, does not provide the professional services to patients of each medical centre. The patients engage with and are treated by the General Practitioner and so too patients engage with and are treated by the related health care professional. In other words, the business model and manner of operation of each medical centre contemplates a direct relationship between the General Practitioner or other health care professional and the patient, in the provision of clinical services.
48 In order to both operate each medical centre and support the clinicians working at each centre, the appellant deploys the Services at each medical centre. Some of the Services are essential to the operation of a medical centre. Others are more enabling of the work of the clinicians operating out of each medical centre. In the model at [44], as found, all of the Services are deployed by the appellant in and in connection with the operation of each medical centre. Each medical centre provides services to patients attending each of the appellant's medical centres. Some of the services provided to a patient attending one of the appellant's medical centres, or seeking to attend one of its medical centres (having conducted a search online of "Primary Health Care" to identify a location for one of the 71 medical centres or otherwise having contacted one of the Primary Health Care medical centres), includes these services:
Reception and telephone answering services;
Patient booking services;
Patient file management services including management of access to a patient's files;
Billing and invoicing services;
Typing services.
49 However, as well, in order to operate a medical centre, the appellant deploys administrative support services; all of the services described at [48]; account-keeping and book-keeping services; preparation of business reports; systemisation of information into computer databases; computerised file management; business and information management services; ordering services; and processing purchase orders. It necessarily undertakes medical centre business management and medical centre business administration. Some of these services are provided to the General Practitioner and any other health care professional providing clinical services at one of the centres. Most of the services are integral to the business of operating 71 medical centres. Other parts of the services are more directly provided to the patients of each medical centre as well as the General Practitioner and the related health care professional. Each patient, however, is also the beneficiary of what would, no doubt, be said to be the efficient operation of the business of conducting 71 medical centres.
50 It can be seen from this description of the services and aspects of the segmentation of those services that all of them fall within the scope of the Services the subject of the application for registration of each trade mark in issue.
51 There can be no doubt that the findings of the Primary Judge were open on the evidence.
52 The appellant, in effect, seeks to set aside the findings of the Primary Judge and have them replaced with fresh findings undertaken by the Court in the exercise of the appellate jurisdiction. The findings of the Primary Judge are neither glaringly improbable nor contrary to compelling inferences nor shown to be wrong by incontrovertible facts or uncontested testimony.
53 A particular difficulty is that the appellant has failed to maintain any analytical integrity in the discrete role to be played by each trade mark in respect of each of the Services. The appellant wants to say that it only provides bilateral Services, as described, to General Practitioners and other health care professionals by reference to the badge of origin of those Services in the form of each trade mark. However, the appellant, in fact, operates 71 Primary Health Care medical centres and in doing so the appellant associates, in part at least, the trade marks with its business of operating the medical centres.
54 Thus, the trade marks do not, in fact, distinguish the appellant as the provider of the Services to a General Practitioner or other health care provider, from the services of others. By the manner in which the appellant conducts its 71 medical centres, each trade mark has lost its essential bilateral role. In addition, use of each trade mark conveys the impression, due to the connotation earlier described, that the appellant is the provider of first level or first contact health care when, in fact, the one service that Primary Health Care Limited does not provide to patients of its 71 Primary Health Care medical centres is clinical services.
55 Ground 3 of the appeal is not made out.
56 Returning to s 43, use of the trade marks, having the connotation earlier described, in relation to the Services, would be likely to deceive or cause confusion for the reasons indicated at [54] of these reasons.
57 Apart from the observations I have expressed in relation to s 43; my concurrence with the views expressed by Rangiah J concerning ss 41 and 42; the observations I have expressed concerning Ground 3 of the appeal, I otherwise agree with the observations of Rangiah J on all other issues including his Honour's more detailed observations concerning Ground 3.
58 On the final day of the hearing of the appeal, the applicant/appellant handed up a "drafting option" setting out how the Court might go about limiting, if the Court was minded to do so, the appellant's mode of use of the trade marks. On the final day of the hearing the appellant was directed to put on submissions identifying the basis upon which the Court ought to take into account the proposed limitation. In those submissions, the appellant said that it had, on reflection, framed a "more appropriate form of limitation on user" so as to "make plain" the restriction on the mode of user of the trade marks at the appellant's 71 medical centres.
59 The proposed condition is in these terms:
The applicant will not use the mark[s] at the applicant's medical centres in respect of the services in the specification in any way that may be seen or heard by patients, members of the general public, or other persons in the health sector who are not medical professionals.
60 The appellant says that the proposed condition would limit not only the monopoly sought by it but also its permitted use of the marks. The appellant says that the proposed condition restricting its use of each trade mark is capable of removing any reasonable possibility that the applicant's use of either mark would be likely to deceive or cause confusion or be misleading or deceptive. The appellant says that the grounds of opposition under s 42(b) and s 43 of the TM Act would then no longer present an obstacle to registration. The applicant submits the proposed condition for the Court's consideration and says that it would be within the Court's power to impose a differently worded condition.
61 A similar set of circumstances emerged at the hearing before the Primary Judge.
62 At [72], the Primary Judge observes that on the last day of the hearing the applicant proposed an amendment to the specification of the Services so as to provide that the medical centre business management services and the medical centre business administration services would each have the words "to medical professionals" added to those phrases. In addition, the applicant before the Primary Judge suggested that the following words would also be adopted in the specification of the Services: "none of the aforementioned services being medical care by medical professionals to patients".
63 After the hearing before the Primary Judge, pursuant to leave, the applicant proposed two further amendments to the specification of the Services and in each of the new options (Option B and Option C), the applicant recited further words of qualification and, as to Option B, an endorsement containing a limitation on the provision of the services and, as to Option C, a disclaimer reflecting a particular form of limitation.
64 All of this seems to have come at the last minute (and after the last minute) before the Primary Judge.
65 At [79], the Primary Judge said this:
79 It will be apparent that the intention of the amendments is to prevent the applicant from having any exclusive right to use the marks in a manner which will be seen by any member of the public attending one of the applicant's medical centres. There are a number of difficulties with the proposed amendments.
66 At [80], the Primary Judge explained some aspects of the difficulties contemplated at [79].
67 At [81], the Primary Judge said this:
81 The amendments, accordingly, make no material difference to the actual nature of the Services as they in fact exist and are performed. If the amendments do anything, it is to introduce an unacceptable ambiguity into the definition of the Services which cannot be assumed to confine the Services in the way the applicant wishes.
[emphasis added]
68 The appellant says that once the Primary Judge found that the grounds of opposition under ss 42(b) and 43 were established, her Honour erred in failing to consider whether the marks could nevertheless proceed to registration with conditions or limitations as proposed to the Primary Judge. This contention is Ground 4 of the grounds of appeal.
69 Now, the appellant has formulated and submitted on the last day of the appeal a proposed condition of limitation. The Court has also now received as part of the supplementary submissions another version of a proposed condition as set out at [59] of these reasons. The appellant says that the Full Court has power under s 197(e) of the TM Act and under s 28(1)(b) of the Federal Court of Australia Act 1976 (Cth), to "make such order, as, in all the circumstances, it thinks fit, or refuse to make an order".
70 The difficulty is that Ground 4 of the grounds of appeal is concerned with whether the Primary Judge erred in concluding that none of the proposed three options made any material difference to the "actual nature" of the Services as they were found to "exist" and found to be "performed", particularly having regard to the findings at [61] to [68], and the "unreal distinction at the heart of the applicant's case" as described at [119] of the Primary Judge's reasons: see also the remarks at [166]. None of options A, B or C put to the Primary Judge would alter the fact, as found, that the appellant was not and is not in the business of providing discrete bilateral Services, as specified, to General Practitioners and related health care professionals under and by reference to the trade marks, but rather, the appellant is in the business of operating medical centres at which the Services are deployed in the way earlier described which directly engages patients and members of the public who may or may not become patients of one of the appellant's 71 medical centres. In other words, none of options A, B or C would make any material difference once the business model was that reflected at [44] of these reasons.
71 Moreover, because each trade mark failed to satisfy the elements of s 17 and s 41, none of options A, B or C could have saved the trade marks from the statutory imperative of rejection. There is no error in the treatment by the Primary Judge of the options put to her.
72 Now, the Full Court is invited to consider the curative possibilities in the newly proposed limitation.
73 The new limitation provides for non-use of each trade mark at the appellant's medical centres, in respect of the Services, in any way that may be seen or heard by patients or members of the public or other persons in the health sector who are not medical professionals. The proposed limitation does not address the fundamental difficulty, as found, that the services are integral to the appellant's operation of the 71 Primary Health Care medical centres and that, as found, the distinction sought to be made by the appellant that it uses the trade marks as a badge of origin of the appellant's Services in the bilateral provision of those Services to General Practitioners and other health care professionals, was misconceived and unreal. Rather, as found, the appellant provides the Services in a multilateral way as a bundle of services provided to General Practitioners, other health care professionals, patients, members of the public (potential patients) and other medical practitioners in the overall conduct and operation of 71 Primary Health Care medical centres.
74 In any event, the limitation does not postulate any non-use in relation to websites, electronic communications or other mechanisms by which the appellant as operator of 71 medical centres would seek to engage with General Practitioners, other health care professionals, patients, members of the public (potential patients) and other medical practitioners from time to time.
75 It is not at all clear to me that adopting the proposed restrictions on non-use would bring about the result that the connotation the marks have would no longer be likely to deceive or cause confusion amongst reasonable members of the cohort engaging with the appellant in the multilateral way described. Thus, I am not satisfied that the difficulties arising under s 43 are addressed by the proposed restriction. Nor am I satisfied that the proposed restriction would answer the difficulties arising under s 42.
76 Therefore, for my part, I would not be willing to exercise any power to impose the proposed condition.
77 Accordingly, the application for leave to appeal ought to be granted, as proposed by Rangiah J and the appeal ought to be dismissed with an order that the appellant pay the respondents' costs of the application for leave to appeal and the appeal.
I certify that the preceding seventy-seven (77) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.