A discussion as to the secondary signification of words: Surfers Burgers Limited [2019] ATMO 27

A recent decision issued by IP Australia provides an important note to trade mark applicants that the secondary signification of words is taken into consideration in the assessment of the distinctiveness of a trade mark. The registrability of a mark will be affected if its secondary signification lacks inherent adaptation to distinguish the goods and services claimed.

International Registration No. 1323616, for “SURFERS’ BURGERS”, designating Australia, was rejected under section 41(4) of the Trade Marks Act 1995 due to the lack of capability of distinguishing the Applicant’s services. Particulars of the Application are as follows:

Trade Mark: SURFERS’ BURGERS (‘the Trade Mark’)

Application No.: 1815800

International Registration No.: 1323616

Class 43: Bar services; cafeteria services; cafe services; restaurant services; food and drink catering; snack-bar services; canteen services.

The legislation

Sections 41(1) and 41(4) of Trade Marks Act 1995 provide that a trade mark application for registration must be rejected if a trade mark is,

1. to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services of the Applicant from the goods or services of other persons; and
2. the trade mark does not and will not distinguish the designated goods or services as being those of 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:

1. the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
2. the time of production of goods or of the rendering of services.

Analysis of the case

An assessment of a trade mark’s inherent adaptation of distinguishing the Applicant’s goods or services starts with a test of the ordinary signification of the sign in connection with the designated goods or services, then the consideration of the likelihood of other traders wishing to use the sign in relation to similar goods or services.

In this case, the word “BURGER” is a purely descriptive word. It suggests burgers are the goods which the owner’s restaurant, café, or snack-bar sells. Other restaurants selling burgers would wish to use, in good faith, the same word in describing the same kind of goods. As such, “BURGER” is not a sign being capable of distinguishing goods of the holder from those of other traders. The test of the distinctiveness then rests with the word “SURFERS’”.

In the assessment of the word “SURFERS’”, the Hearing Officer recognised that the primary meanings of “surfers” is defined in dictionaries as “someone who surfs at beaches or on the Internet” and that these meanings have no relevance to restaurant services, café services, catering services, or the like. He, nevertheless, put forth that colloquial usage of the word provides further meanings, being a reference to a geographical name – SURFERS PARADISE, a famous surfing destination in the Gold Coast region of Queensland, Australia.

She illustrated references where the word “SURFERS” was referred to “Surfers Paradise” as well as the Examiner’s findings that top ten results of a Google search for “SURFERS BURGER” related to burger restaurants in Surfers Paradise. She noted that the processive apostrophe of “SURFERS’” indicates a meaning of “burgers of surfers,” but she did not consider that it impacted significantly on the perception of the word being a geographical name. Based on the factors above, the Hearing officer shared the view of the Examiner that other traders are likely to want to use the expression “SURFERS’ BURGERS” to describe restaurant services and that the Holder’s trade mark is to some extent, but not sufficiently, adapted to distinguish its goods and services from those of other traders.

Under provisions of section 41, an IRDA may overcome an objection under this section if the Holder can show that the mark “SURFERS’ BURGERS” is and will be able to distinguish the designated goods and having regard to the combined effect of the following1:

1. the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
2. the use, or intended use, of the trade mark by the applicant;
3. any other circumstances.

The Holder sought to overcome the objection by arguing the meaning of the word “surfers” and by providing evidence of intended use. It submitted that the dominant meaning of “SURFERS” is people who surf and that Australians with a strong association with surfing and surfing culture are unlikely to prioritise the geographical significance over the dominant meaning of the word. The holder further asserted that restaurant services are limited to be provided locally. As such, given the presence of the surfing-featured get-up and the structure of the restaurants, consumers are not likely to associate the word “SURFERS” with Surfers Paradise rather than real surfers.

In addition, the Holder submitted a declaration of intention to use the trade mark in Australia, supported with information in relation to a business plan and granted registrations in foreign jurisdictions.

In the face of the finding that top ten search results on Google are related to restaurants in Surfers Paradise, and the geographical significance of the word “Surfers” being referred to Surfers Paradise, the Hearing Officer was not convinced that the trade mark was adapted to distinguish the Holder’s services from those of others. She considered that the likelihood of other traders, especially restaurants in Surfers Paradise, using similar expressions in relation to similar services or closely related goods, exists.

As to the Holder’s alleged intended use of the trade mark, the Hearing Officer noted that details about the intended number of restaurants, locations, advertising campaigns and information regarding operations in Australia were absent, and that foreign registrations, by their own, could not sufficiently support the use of the trade mark in foreign markets and the Holder’s intended use in Australia.

Given that the Holder did not submit evidence of other circumstances, the Hearing Officer maintained the ground of rejection under section 41(4).

Implications

When selecting words as trade marks, it is important for applicants to consider the ordinary meanings as well as the colloquial meanings of the words. If the expression contains an association with the nature, quality, origin, or other features of the Applicant’s goods or services, it may lack the requisite distinctiveness of registering a trade mark.

In rebuttal of objections under section 41, the use of the mark in foreign markets may carry some weight but mere foreign registrations as well as minimal evidence of intended use, are not sufficient to support distinctiveness of the mark in Australia.

Registering a trade mark is a complex procedure that requires sound knowledge of trade marks law and regulations. As such, applicants are recommended to consult professional advice on trade mark applications. At Baxter IP, our trade mark attorneys are delighted to assist you in assessing your proposed trade marks and advising you on the best trade mark filing strategy.

1Trade Marks Act 1995 (Cth) ss 41(4)(b)(i)-(iii).