IP SPOTLIGHT MAY 18

GEOGRAPHICAL AND SURNOMINAL TRADE MARKS STILL

In the Australian Trade Mark Office decision of Ramsay Health Care Investments Pty Limited [2020] ATMO 11, the applicant, Ramsay Health Care Investments Pty Limited ( Ramsay ), sought to register the mark RAMSAY PHARMACY ( Mark ) for various pharmacy and related retailing services in classes 35 and 44. During examination, the application received a: – – s.41 objection on the basis that the word “RAMSAY” was a common Australian surname (occurring 2854 times as an Australian surname) as well as being a place-name reference, being the name of a small town in Queensland and an electorate in South Australia; and – – s. 44 objection on the basis of numerous “RAMSAY” formative marks, which were owned by Ramsay Health Care Limited, a related entity to Ramsay. The delegate dismissed the s.41 geographical name objection, forming the view that the word RAMSAY lacked any ordinary geographic significance given the small population of Queensland (consisting of 310 people) and because none of the suburbs within the South Australian Ramsay electorate were called RAMSAY. The delegate did not consider these geographic references as important or direct enough to engender the Mark with an ordinary geographical significance. However, the delegate found that the s.41(4) distinctiveness objection was appropriate due to the surnominal relevance of the word “RAMSAY”, and considered the mark to be to some extent, but not sufficiently adapted to distinguish Ramsay’s claimed services. The delegate then conducted a “practical evaluative judgment” of what the mark RAMSAY PHARMACY would signify, taking into account: – – Ramsay’s reputation in “RAMSAY” and its history of use of the RAMSAY PHARMACY trade mark in around 40 dispensaries within private hospitals owned by, and in 60 retail pharmacies franchised by, Ramsay since 2013/14; – – Ramsay’s prior registrations for RAMSAY formative marks in connection with hospital services owned by entities related to Ramsay. In this regard, the delegate considered that the relationship between Ramsay’s core private hospital services and the provision of the claimed

pharmacy services was a close and intimate one; and – – the significant barriers to entry for suitably qualified traders of pharmacy services, being, the regulatory framework and start-up costs associated with this type of enterprise, such that the name “RAMSAY” is likely to be considered the name of a specific provider (being Ramsay given its reputation), rather than any number of persons with this surname. While a good deal of the evidence provided by Ramsay incorporates a logo or design element in addition to the words (which the examiner noted was a defect which might be fatal to the application), the examiner considered the Mark had sufficient capacity to distinguish Ramsay’s claimed services to qualify the application for registration, taking into account the correct balance of the use, the degree to which the words themselves show some inherent adaptation to distinguish the services, and the weight of the Applicant’s very closely allied core business under “Ramsay”- formative marks. Accordingly, the application was registered subject to a s. 41(4) endorsement. This decision by the trade marks office is a reminder that trade mark owners may still be able to obtain registration for their mark even where their marks have some geographic or surnominal relevance, depending on: – – the extent of the geographic significance of the mark – where the mark is also the name of a geographic location, the population size, industry and significance of the location will be factors which will be taken into consideration in determining the geographic significance of the mark; – – the history and extent of the owner’s use of the mark in Australia. In this regard, the owner of a mark which is not inherently adapted to distinguish its goods/services may be able to achieve registration of its mark by demonstrating that the mark has come to distinguish its goods and services, through its significant use of the mark in connection with its claimed goods and services; and – – the nature of the owner’s trade and industry – where it is unlikely that mark refers to a geographic location or surname because of the nature of the industry or goods/ services sold, the geographic or surnominal relevance of a mark may be low.

AVAILABLE FOR REGISTRATION

GRACE NG Lawyer

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