The recent decision of the Federal Court of Australia in Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks[i], highlights the importance of choosing trade marks that are ‘distinctive’ and not ‘descriptive’. The case serves as a timely reminder to businesses to ensure that your trade mark is distinctive – not merely descriptive – if you wish to secure valuable common law and exclusive rights afforded by its use and registration as a trade mark. Time and continuing vigilance (to prevent unauthorised use of your mark by other businesses) can be of the essence if you wish to protect the accumulated goodwill in your trade mark and secure trade mark registration. Use of a trade mark in the marketplace, prior to lodgement of the trade mark application, is not necessarily sufficient to get your trade mark ‘over the line’ for registration if the trade mark is ‘directly descriptive’ of the goods or services to which it is applied.
The decision on appeal
This case concerned an appeal to the Federal Court by Melbourne Bone and Joint Clinic Pty Ltd (the ‘MBJC’) from the decision of the Trade Marks Registrar (the ‘Registrar’)[ii] to reject MBJC’s application to register as a trade mark MELBOURNE BONE AND JOINT CLINIC (the “MBJC trade mark”) in respect of services in classes 35[iii] and 44[iv] for the following reasons:
“(a) the trade mark was not to any extent inherently adapted to distinguish the designated services from the services of other persons[v]; and
(b) MBJC had not used the trade mark before the filing date of the application to such an extent that the trade mark did in fact distinguish the designated services as being those of MBJC.[vi]
Background
The company, MBJC, was incorporated by Dr Jain in 2014, after which MBJC and Dr Jain commenced operation of the clinic ‘Melbourne Bone and Joint Clinic’ (the ‘MBJ Clinic’) with Dr Jain providing his patient consultation services[vii]. On 12 March 2020, MBJC filed an application for the registration of the MBJC trade mark.
Dr Jain submitted that at the time of commencing operation of the MBJ Clinic it was his intention “to choose a unique brand name that would differentiate the brand from other existing orthopaedic clinics”[viii] and that he had included the words “bone and joint” in his trade mark after conducting Google searches which he believed indicated that, at that time, these words were not used in business or trade names by any orthopaedic surgeries and practices. Further, and in addition to use (since 2014) of the MBJC trade mark, MBJC’s other evidence submitted in support of registration of the trade mark included MBJC’s registration of the related domain names, registration of a logo including the words ‘Melbourne Bone and Joint Clinic’, and the MBJ Clinic website as well as evidence of significant sums spent, since 2014, in marketing and stationery[ix] for and related to the MBJ Clinic.
In support of the Registrar’s decision that the trade mark was not inherently distinctive, the Registrar relied upon evidence of the use of the words MELBOURNE BONE AND JOINT CLINIC (or some of those words) by multiple other persons and businesses – from and including 2002 up to the date of MBJC’s filing of its trade mark application (in 2020) and as recently as May 2022[x], which, in Justice Moshinsky’s opinion, “[indicated] an interest in using the words “bone and joint” in connection with the provision of medical services”.[xi]
Appeal Dismissed
The Federal Court considered Section 41 (and its sub-sections) of the Trade Marks Act 1995 (Cth) – in particular Section 41(1) of the Trade Marks Act which provides that: “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.”
The Federal Court dismissed the appeal finding that:
- pursuant to section 41 of the Trade Marks Act, “the ultimate question is whether the trade mark is not capable of distinguishing MBJC’s services in respect of which the trade mark is sought to be registered”[xii];
- the MBJC trade mark, was “not to any extent”inherently adapted to distinguish the designated services from the services of other persons [xiii] – and that “as at the filing date, other traders would have had a legitimate desire to use the trade mark, or some mark nearly resembling it, in connection with their own services”[xiv];
- The ordinary signification of the trade mark is to be determined from the perspective of “persons who are concerned with the services”to which the trade mark is to be applied[xv] – which were here shown to be referrers of patients (GPs, physiotherapists and other orthopaedic surgeons) as well as patients and potential patients who need, or may need, orthopaedic services.[xvi]
- In this case, “the trade mark, in its ordinary signification, is directly descriptive of the services to be provided.”[xvii]
Justice Moshinsky also made an order that MBJC pay the Registrar’s costs of the proceeding.
[To read Stephens Lawyers & Consultants’ article “Registering Trade Marks in Australia – What are the Commercial Benefits and Process” – see HERE.]
Disclaimer: This article is not intended to be a substitute for obtaining legal advice.
© Stephens Lawyers & Consultants, 21 February 2024. Authored by Rochina Iannella, Lawyer, Stephens Lawyers & Consultants
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[i] Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 (Judgment of Moshinsky J, 7 February, 2024)
[ii] Re Melbourne Bone and Joint Clinic Pty Ltd [2021] ATMO 121; 169 IPR 304.
[iii] Services in Class 35 described as: Compilation of medical reports.
[iv] Services in Class 44 described as: Orthopaedic surgery; Fitting of orthopaedic devices; Health clinic services; Medical advisory services; Medical examination of individuals; Advisory services relating to medical problems; arranging of medical treatment; conducting of medical examinations; charitable medical services
[v] Trade Marks Act 1995 (Cth) Sec. 41
[vi] Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] at Par.[2]
[vii] Ibid., Pars. [20] – [21]
[viii] Ibid., Par. [33]
[ix] Ibid. , See Par [123] to [127]
[x] Ibid., at Par [78] to [83]
[xi] Ibid., at Par [80] per Moshinsky J
[xii] Ibid., Par [114} per Moshinsky J
[xiii] Trade Mark Act 1995 (Cth) Sec 41(3)(a)
[xiv] Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 at Par [120]
[xv] Ibid., Par [103] per Moshinsky J
[xvi] Ibid.
[xvii] Ibid., Par [115] per Moshinsky J