Class 41: Entertainment services; amusement and recreation services; sporting and racing services; betting and wagering services; gambling services; gaming services; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of recreation, amusement, and entertainment information including information on sports and games, betting, racing events, contingencies and odds; sporting events; education services relating to responsible betting and gambling; sports wagering services and approved betting competitions; producing entertainment, sports, racing, betting, and tipping content including videos, podcasts, images, full length shows, cut down videos of shows for use on other platforms, and other information for publication on various forms of media including apps, websites, social media accounts, streaming services, linear and broadcast video on demand, subscription video on demand, print and online publications, electronic direct mail, CRM platforms, television and radio; entertainment services, namely, providing information, news and commentary in the field of entertainment, sports, horse racing, harness racing, greyhound racing, betting, and tipping; production of multimedia entertainment content; providing a website featuring content on sports, horse racing, harness racing and greyhound racing; entertainment services in the nature of development, production and distribution of audio visual and electronic publishing services; production of pre-recorded audio and video media devices; providing online non-downloadable multimedia entertainment content; provision of information relating to all of the foregoing services via printed materials and reports, publications, and directories; information, advisory, and consultancy services relating to all the foregoing services

1. In consequence of the aforegoing the Applicant asked to be heard by way of written submissions and the matter was allocated to me for determination in my capacity as a delegate of the Registrar of Trade Marks.

Section 41

1. Section 41 of the Act relevantly provides:

41 Trade mark not distinguishing applicant's goods or services

(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii) the use, or intended use, of the trade mark by the applicant;

Note 1: 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; or

(b) the time of production of goods or of the rendering of services.

(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

1. My purpose is not to assess the examiner's decision but rather to consider the ground for rejection afresh. Nevertheless, the examiner's reasoning provides context to this task and is encapsulated by the examiner's conclusions that the:

"... trade mark is, or has as its main feature, the term MORE PLACES.

This indicates that your goods and services relate to or are available from more places, and that the services such as gambling services offer prizes for more places than usual, eg. a prize for 4th place.

Other traders should be able to use MORE PLACES in connection with goods or services similar to yours.

Please note that the particular way your trade mark is represented does not alter its common meaning. The main feature if your trade mark remains MORE PLACES."

I have considered your submissions that consumers seeing the trade mark would not instantly know what the goods and services are. However, as the ordinary signification is made in light of the applied for goods and services, the consumers will already know that the goods are software and the services are entertainment, education, gambling, gaming and related services. Consumers will be aware of this, as these are the goods and services that are covered by the application.

You may be able to overcome this matter by providing evidence of use in terms of s41(4).

1. A presumption of registrability is embodied in s 33 such that the Registrar must accept the application unless satisfied that there are grounds for rejecting it (thereby placing the onus for proof on the Registrar). The Applicant has not provided evidence of use but submits that the Trade Mark is inherently adapted to distinguish the Goods and Services from the goods and services of other persons.
2. For the purposes of what follows in relation to s 41, I characterise the Trade Mark as the words MORE PLACES with the addition of commonplace graphic/geometric elements of no distinctive value. I find that the question of the registrability of the Trade Mark is the same as the registrability of the words MORE PLACES.
3. It is well established that inherent adaptation to distinguish is tested:

by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated by only 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.[2]

1. That test was adopted by the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[3] ('Cantarella') where their Honours describe a two-step process. First, the ordinary signification of the words is determined, permitting a conclusion to be drawn as to whether the words have a 'direct reference' or are a 'covert and skilful allusion', assessed in the context of the designated Goods and Services.[4] If the mark is prima facie registrable under this first step, it is not necessary to consider the second step, but, if required, the second step is to consider the legitimate desire of other traders to use the words and in that regard, the High Court stated that:

the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods [or services]. The test does not encompass the desire of other traders to use words which in relation to the goods [or services] are allusive or metaphorical.[5]

1. Albeit that in some cases the ordinary signification of the individual words of a phrase is important,[6] here the meanings of those words is plain, and it is only the phrase MORE PLACES that merits consideration. There is no reason for me to depart far from the examiner's statement that MORE PLACES suggests that the Goods and Services might be available from more (physical) places, or that betting and gaming services offer more winning places than usual. That said, and allowing for the ways in which all goods and services might be offered in more places, there remain nominated items ("subscription video on demand" to name one) where the ordinary signification of the words MORE PLACES is altogether opaque. In short, I find that there are certain Goods and Services where the words might carry a reference of some kind, but others where the words have no sensible signification at all.
2. The Applicant referred me to earlier decisions of the Registrar in which it was involved. each applying reasoning which, in its submission, are directly and equally applicable here. In Sportsbet Pty Ltd [2023] ATMO 82, the Hearing Officer declined to revoke registration of Australian trade mark registration no. 2273405 for QUADDIE RESCUE for similar goods and services in the same classes. The Hearing Officer stated:

[24] The Trade Mark is QUADDIE RESCUE. The word 'quaddie' is defined in the Macquarie Dictionary as 'a quadrella' which in turn is defined as 'a form of multiple betting on four horse races'. In my view, the term quaddie is a commonly understood and used abbreviation for quadrella. The word 'rescue' is a common English word meaning to save.

[25] Having regard to the commonly understood meanings of the two words comprising the Trade Mark, it is possible to ascertain that the ordinary signification of the mark indicates a product or service that will save or rescue a quadrella bet. What this actually means is not clear to me. It would seem to indicate that the customer's bet is not lost if one of the horses it chose fails to win and hence, the customer is only required to make three successful choices for the bet to win. The Revocation Notice indicates that it means that the customer's quadrella bet is rescued "in the form of bonus credit or cash back if the bet placed loses in a fashion that meets the criteria of the promotion". I do not believe that the ordinary signification of the Trade Mark conveys this meaning. In my view, this conclusion could only be reached by reviewing the actual manner in which the Registrant uses the Trade Mark.

1. In Sportsbet Pty Ltd [2023] ATMO 89, the Hearing Officer was again not satisfied that acceptance should have been revoked on the basis of a s 41 objection for the following trade mark applications in classes 9 and 41 for

[20] The Pending Marks are EXOTIC RESCUE, FIRST4 RESCUE, QUINELLA RESCUE and TOTE RESCUE where EXOTIC/FIRST4/QUINELLA/TOTE are each a type of bet which would be commonly understood by a significant proportion of Australian consumers with an interest in betting. The word 'rescue' is a common English word meaning to save.

[21] From the commonly understood meanings of the two words comprising each of the Pending Marks, it is possible to ascertain that the ordinary signification of each of the marks is to indicate a product or service that will save or rescue an exotic/first4/quinella/tote bet. However, it is not apparent what this means. Taking for example a first4 bet which requires a customer to pick the first four finishers in a single race in the correct order, it seems that the ordinary signification of the mark FIRST4 RESCUE would indicate that the customer's bet is not lost if one or more of the horses failed to place as predicted. The Revocation Notices state that the Pending Marks indicate that the customer's bet will be 'rescued' by offering a bonus credit or cash back if the bet placed loses in a fashion that meets the criteria of the promotion. In my view, this meaning cannot be ascertained from any of the Pending Marks and at most, the marks convey only a 'covert and skilful allusion' to the Goods and Services.

1. The Applicant's submission is that just in the way it may have been possible in those earlier applications to ascertain that the ordinary signification of the marks is to indicate a product or service that will save or rescue a particular kind of bet, so too, possible significations can be given to MORE PLACES derived by reference to the Goods and Services. However, in the same way that it was not apparent to the Hearing Officer in those cases what the marks really meant, here too it is not obvious what MORE PLACES actually means.
2. On balance, I find that use of the word RESCUE in those trade marks made discovery of their ordinary signification gnomic in a sense not present in the phrase MORE PLACES. For that reason I find it proper to go on to apply the second step of the process outlined in Cantarella.
3. There is no evidence that other traders wish to use the words MORE PLACES to describe the Goods and Services. Note 1 to s 41 describes trade marks which are not adapted to distinguish goods or services as those that are ordinarily used to indicate "the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services." The phrase MORE PLACES does not describe the Goods and Services or their characteristics in anything more than a broad way altogether lacking specificity. As the High Court underscored, the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods or services. Furthermore, the test expounded by the High Court relies on Clark Equipment Co v Registrar of Trade Marks[7] where it should be remembered that what is protected is the common right of the public to use language without fear of infringement. My assessment is that there is ample scope for honest, fair use of the descriptive words MORE PLACES without danger of impinging on the rights given to the Applicant by registration.

1. I consider that the Trade Mark is registrable for the Goods and Services and that there is no proper ground for rejection under s 41.

[1] In this decision, all references to sections are references to sections of the Trade Marks Act 1995 (Cth).

[2] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

[3] [2014] HCA 48 (French CJ, Hayne, Crennan, Keifel and Gageler JJ).

[4] See for example, Howard Auto-Cultivars Limited v Webb Industries Proprietary Limited [1946] HCA 15 (Dixon J)[1946] HCA 15; , (1946) 72 CLR 175, 184: '[T]he meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here, the scope of the use of the word is settled by the application for registration...'

[6] See for example Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 (Moshinsky J) or Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 (Yates J), wherein the ordinary signification of the respective phrases MELBOURNE BONE AND JOINT CLINIC and APP STORE were considered, taking into account the meaning of the individual words comprising the phrases.

[7] [1964] HCA 55, [5] (Kitto J).