FEDERAL COURT OF AUSTRALIA T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 TRADE MARKS – validity – renewal – where no renewal of trade mark within required period – where trade mark not registered within ten years of filing of application – whether at time renewal period expired Registrar under duty to remove a trade mark not yet registered TRADE MARKS – validity – presumptive validity – whether s 234(2) of the Trade Marks Act 1995 (Cth) authorises rectification of the Register – whether application for rectification may only be made under s 88 of the Trade Marks Act 1995 (Cth) TRADE MARKS – validity – whether trade mark inherently adapted to distinguish the services of the registered owner– whether other persons acting with proper motives would want to use a proposed mark in connection with similar services – whether relevant issue is distinctiveness in fact having regard to uses by others TRADE MARKS – validity – whether at time application for registration filed use of the trade mark was likely to deceive or confuse TRADE MARKS – infringement –– whether name used as a trade mark – whether name used in relation to restaurant services – defences to infringement – whether infringing party would be entitled to obtain registration of the mark had it applied for it in relation to "hotel services" Trade Practices Act 1974 (Cth)ss 52, 53 Trade Marks Act 1995 (Cth) ss 17, 41, 43, 44, 57, 72, 75, 77, 78, 79, 85, 88, 122, 124, 234, 237, 241 Trade Marks Act 1955 (Cth) (repealed) s 28 Trade Marks Regulations 1995 (Cth) reg 7.3 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 applied Campomar Societad, Limitada v Nike International Ltd (2000) 169 ALR 677 referred to Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 applied BIG COUNTRY DEVELOPMENTS PTY LIMITED v TGI FRIDAY'S INC & ANOR NG 728 OF 1997 T.G.I. FRIDAY'S AUSTRALIA PTY LTD & ANOR v TGI FRIDAY'S INC & ANOR N 82 OF 2000 T.G.I. FRIDAY'S AUSTRALIA PTY LTD & ANOR v TGI FRIDAY'S OF MINNESOTA INC N 83 OF 2000 WILCOX, KIEFEL & EMMETT JJ 31 MAY 2000 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 728 OF 1997 BETWEEN: BIG COUNTRY DEVELOPMENTS PTY LIMITED Applicant AND: TGI FRIDAY'S INC First Respondent TGI FRIDAY'S OF MINNESOTA INC Second Respondent JUDGES: WILCOX, KIEFEL & EMMETT JJ DATE OF ORDER: 31 MAY 2000 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The application for leave to appeal be refused. 2. The applicant pay the respondents' costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 82 OF 2000 ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: T.G.I. FRIDAY'S AUSTRALIA PTY LIMITED First Appellant BIG COUNTRY DEVELOPMENTS PTY LIMITED Second Appellant AND: TGI FRIDAY'S INC First Respondent TGI FRIDAY'S OF MINNESOTA INC Second Respondent JUDGES: WILCOX, KIEFEL & EMMETT JJ DATE OF ORDER: 31 MAY 2000 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The appeal be dismissed with costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 83 OF 2000 ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: T.G.I. FRIDAY'S AUSTRALIA PTY LIMITED First Appellant BIG COUNTRY DEVELOPMENTS PTY LIMITED Second Appellant AND: T.G.I. FRIDAY'S OF MINNESOTA INC Respondent JUDGES: WILCOX, KIEFEL & EMMETT JJ DATE OF ORDER: 31 MAY 2000 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The appeal be dismissed with costs. 2. The cross-appeal be allowed. 3. Order 1 made on 16 December 1999 by Whitlam J be set aside and in lieu thereof it be ordered that "1. Big Country Developments Pty Limited be restrained from infringing registered trade mark no. 438635 by using, without the licence of TGI Friday's of Minnesota Inc, the name 'TGI Friday's' or any name identical to, or deceptively similar to, that name in connection with the provision of restaurant services at or from premises known as the Grey Gums Hotel, Penrith, NSW or premises situated at 115 Reserve Rd, Artarmon, NSW. For the purposes of this order 'restaurant services' means the supply of meals to persons for consumption at tables provided for that purpose by the supplier, but does not include the operation of a snack bar from which sandwiches, pies, pizza, chips or other light meals are supplied." Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 728 OF 1997 BETWEEN: BIG COUNTRY DEVELOPMENTS PTY LIMITED APPLICANT AND: T.G.I. FRIDAY'S INC FIRST RESPONDENT T.G.I. FRIDAY'S OF MINNESOTA INC SECOND RESPONDENT ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA N 82 OF 2000 BETWEEN: T.G.I. FRIDAY'S AUSTRALIA PTY LIMITED FIRST APPELLANT BIG COUNTRY DEVELOPMENTS PTY LIMITED SECOND APPELLANT AND: T.G.I. FRIDAY'S INC FIRST RESPONDENT T.G.I. FRIDAY'S OF MINNESOTA INC SECOND RESPONDENT N 83 OF 2000 BETWEEN: T.G.I. FRIDAY'S AUSTRALIA PTY LIMITED FIRST APPELLANT BIG COUNTRY DEVELOPMENTS PTY LIMITED SECOND APPELLANT AND: T.G.I. FRIDAY'S OF MINNESOTA INC RESPONDENT JUDGES: Wilcox, KIEFEL & Emmett JJ DATE: 31 MAY 2000 PLACE: SYDNEY REASONS FOR JUDGMENT THE COURT: 1 This Full Court has three separate matters before it. Those matters in turn arise out of three matters in the original jurisdiction of the Court. While there is a multiplicity of parties involved in the proceedings, there are, in effect, only two sides. On one side are T.G.I. Friday's Inc. ("Friday's Inc.") and T.G.I. Friday's Minnesota Inc. ("TGIFM"), a subsidiary of Friday's Inc. On the other side are T.G.I. Friday's Australia Pty Limited ("Friday's Australia") and Big Country Developments Pty Limited ("Big Country"). 2 The dispute before the Full Court relates to Australian trade mark number 438365 ("the Trade Mark"). The Trade Mark, as shown in the register of trade marks ("the Register"), is as follows: "T.G.I. FRIDAY'S" 3 The Trade Mark is subject to an endorsement that registration gives no right to the exclusive use of the letters TGI. The expression "T.G.I.F." is an acronym for "Thank God It's Friday". A dictionary of popular phrases published in England describes it as a catch phrase that was current in the 1940's. 4 TGIFM claims that the Trade Mark has been and is being infringed by Friday's Australia and Big Country. On the other hand, Friday's Australia and Big Country seek the rectification of the Register by the cancellation of the registration of the Trade Mark. BACKGROUND 5 On 19 December 1985, Friday's Inc. applied for registration of the Trade Mark in respect of "restaurant services and alcoholic beverage bar services". Acceptance of that application was advertised on 20 October 1988. Big Country opposed the registration. That opposition was dismissed on 12 November 1991. However, no order was made for the registration of the Trade Mark at that stage because of the currency of another opposition that had not yet been resolved at that stage. The opponent was Weller Hotels & Taverns Pty. Ltd ("Weller Hotels"). 6 On 4 November 1994, after a further hearing, in relation to the opposition by Weller Hotels, a Deputy Registrar decided to register the Trade Mark in respect of "restaurant services". Each of Friday's Inc. and Weller Hotels appealed to the Court from that decision. The registration of the Trade Mark was delayed pending the disposition of the appeals. The appeals were eventually settled and on 10 April 1997 the appeal by Friday's Inc. was dismissed by consent. The appeal by Weller Hotels was discontinued. 7 In the meantime, on 21 August 1996, Friday's Inc. commenced proceedings N678 of 1996 against Big Country and Friday's Australia alleging passing off and contravention of sections 52 and 53(c) of the Trade Practices Act 1974 (Cth) ("the Trade Practices Act"). TGIFM was subsequently joined as an applicant in that proceeding. The impugned conduct related to the use, or threatened use, of "TGI Friday's" in connection with premises situated at 3 locations in the Sydney metropolitan area, namely, Raby Tavern at Campbelltown, Grey Gums Hotel at Penrith and vacant land at Artarmon. Friday's Australia and Big Country also cross-claimed against Friday's Inc. and TGIFM alleging contravention of section 52 of the Trade Practices Act. 8 On 21 July 1997, Friday's Inc. was registered as the owner of the Trade Mark. The Registrar also recorded the renewal of the Trade Mark for 10 years from 19 December 1995 and the assignment of the Trade Mark from Friday's Inc. to TGIFM. Also on that day, TGIFM commenced proceeding N572 of 1997 against Friday's Australia and Big Country alleging infringement of the Trade Mark. Friday's Australia and Big Country filed a cross-claim in that proceeding seeking orders for the rectification of the Register by cancelling the Trade Mark and a declaration that the registration of the Trade Mark ceased to have effect on 19 December 1996. 9 On 10 September 1997, Big Country commenced proceeding N728 of 1997 by way of appeal from the decision of the Deputy Registrar of 4 November 1994. On 24 September 1997, Big Country filed a notice of motion in that proceeding seeking extension of the time for filing the appeal, which was by that stage well out of time. 10 Proceedings N678 of 1996 and N572 of 1997 and the motion in N728 of 1997 were all heard together by a judge of the Court. On 18 September 1998, for reasons delivered on 9 September 1998, the primary judge, in proceeding N678 of 1996, granted injunctions, restraining Friday's Australia and Big Country from engaging in passing off and contravention of Part V of the Trade Practices Act. His Honour considered that, in view of those orders, resolution of proceeding N572 of 1997 may not be necessary, save as to the question of costs and any claim for damages. In proceeding N728 of 1997 his Honour refused leave to extend the time for appealing from the decision of the Deputy Registrar. 11 On appeal from the orders made by the primary judge on 18 September 1998 in proceeding N678 of 1996, a Full Court constituted in the same way as this Full Court ordered, for reasons published on 26 March 1999, that the appeal be allowed, that those orders be set aside and that in lieu thereof it be ordered that: · proceeding N678 of 1996 be dismissed; and · the costs of the trial of that proceeding be reserved for the primary judge. Accordingly, it became necessary for the primary judge to resolve proceeding N572 of 1997. 12 On 16 December 1999, for reasons published on 12 November 1999, his Honour ordered that Big Country: "be restrained from infringing registered trade mark No. 438365 by using, without the licence of [TGIFM], in relation to any restaurant services provided at the Grey Gums Hotel Penrith, the mark TGI Friday's or any trade mark substantially identical with or deceptively similar thereto". However, his Honour refused the application on behalf of TGIFM and Friday's Inc. for injunctive relief in relation to any other location. His Honour also dismissed the cross-claim for rectification of the Register and determined that in each of proceedings N572 of 1997 and N678 of 1996 there be no order as to costs. 13 Friday's Australia and Big Country now appeal from the orders of 16 December 1999. Appeal N82 of 2000 relates to the primary judge's decision not to make an order for costs in N678 of 1996. Appeal N83 of 2000 relates to the injunction ordered by the primary judge and the dismissal of the cross-claim for rectification of the Register. In addition, Big Country filed a motion for leave to appeal from the order of the primary judge refusing to extend the time for appeal from the decision of the Deputy Registrar. Pursuant to an order made by Wilcox, J, the hearing of that motion was fixed for hearing at the same time as appeals N82 of 2000 and N83 of 2000. 14 There are, in substance, two broad issues raised by the appeals. The first concerns the validity of the Trade Mark. The second concerns infringement of the Trade Mark, assuming its validity. There are several sub-issues within each of those two broad issues. VALIDITY OF THE TRADE MARK 15 Three principal issues arise in relation to the validity of the Trade Mark. The first concerns the renewal of the Trade Mark by the Registrar. The second concerns the distinctiveness of the Trade Mark. The third is concerned with whether the use of the Trade Mark would be likely to deceive or confuse. The second and third issues raise the operation of section 234 of the Trade Marks Act 1995 (Cth) ("the 1995 Act"). Friday's Australia and Big Country also raise a question concerning priority. Each of the issues will be dealt with separately. Renewal 16 Section 241 of the 1995 Act applies if an application for the registration of a trade mark in the register kept under the Trade Marks Act 1955 (Cth) ("1955 Act") was pending immediately before 1 January 1996. Section 241 applies, therefore, in relation to the application for the Trade Mark, which was still outstanding as that date. Under section 241(2), if the application was accepted under the 1955 Act and the acceptance was in force immediately before 1 January 1996 then: · the 1955 Act continues to apply in relation to the application; and · if the Registrar is required under section 53 of the 1955 Act to register the trade mark in the old Register, the Registrar must register the trade mark in the new Register, that is the Register kept under Part 7 of the 1995 Act. 17 Under section 241(5), the filing date of an application to which section 241 applies is the day the application was lodged under the 1955 Act. The consequence is that for the purposes of Division 1 of Part 7 of the 1995 Act, the filing date in respect of the application for the Trade Mark is 19 December 1985. 18 Under section 72(1) the registration of a trade mark in respect of the services in respect of which the trade mark is registered is taken to have effect from the date upon which the application for registration was filed. In the present case, that was 19 December 1985. Under section 72(3), the registration of a trade mark expires ten years after the date of filing of the application. Thus, the registration of the Trade Mark would have expired on 19 December 1995. However, at that time, the Trade Mark had not been registered, as appears from the sequence of events outlined above. 19 Section 75(1) provides that any person may, within the prescribed period before the registration of a trade mark expires, ask the Registrar to renew the registration. Under regulation 7.3 of the Trade Marks Regulations 1995 (Cth) the prescribed period is twelve months. Under section 77(1), if a request for the renewal of the registration of a trade mark is made, the Registrar must renew the registration for a period of ten years from the day on which the registration of the trade mark would expire if it were not renewed. 20 Section 78 provides that if the registration of a trade mark is not renewed then, subject to section 79, the registration ceases to have effect when it expires. Unless the registration is renewed under section 79, the Registrar must remove the trade mark from the Register twelve months after the day on which the registration expired. Section 79 provides, however, that if within twelve months after the registration of a trade mark has expired a person asks the Registrar to renew the registration, the Registrar must renew the registration for ten years from the day on which the registration expired. 21 Also of importance in this context is section 237, which applies if the registration of a trade mark under the 1955 Act had expired within twelve months before 1 January 1996. Where section 237 applies, the Registrar must make an entry in the Register to the effect that all particulars of the trade mark removed from the register kept under the 1955 Act are restored to the Register and must enter those particulars in the Register. Under section 237(3), if an application for the renewal of the registration of a trade mark is made under the Act within 12 months from the day on which the registration expired, the Registrar must renew the registration of the trade mark for the period beginning on 1 January 1996 that, together with the period during which the trade mark remained unregistered under the 1955 Act, equals ten years. Under 237(4), if the registration of a trade mark is not renewed under section 237(3), the Registrar must remove the trade mark from the Register twelve months after the day on which the registration expired. 22 Thus the scheme of the 1995 Act and regulations thereunder is for renewal of registration upon request 12 months before or 12 months after registration expires. If there is no such request, the Registrar is under a duty to remove the trade mark from the Register. The scheme, does not deal with the case of an application that was left pending for more than ten years after it was filed. 23 In the present case, even the twelve months period of grace under section 79 of the 1995 Act had expired on 19 December 1996, before registration of the Trade Mark. Notwithstanding this, on 16 July 1997, Friday's Inc. lodged an application for renewal of the registration of the Trade Mark. At that time, the Trade Mark still had not been registered, but registration was known to be imminent. Clearly, this application for renewal was not lodged either in the period referred to in section 75 or the period referred to in section 79. It was simply not possible for Friday's Inc or TGIFM to comply with either section 75 or section 79. Nevertheless, as well as registering the Trade Mark on 21 July 1997, the Registrar also renewed the registration for the period of ten years from 19 December 1995, the tenth anniversary of the date of filing the application for registration. 24 As one answer to the infringement claim of Friday's Inc and TGIFM, Friday's Australia and Big Country contend, that the Trade Mark should not have been renewed but should have been removed from the Register immediately upon registration pursuant to section 78 of the 1995 Act. They say they are entitled to raise this issue by virtue of section 85 of the 1995 Act which provides that the Court may order that the Register be rectified by: · entering in the Register particulars that were wrongly omitted from it; and · correcting any error in an entry in the Register. 25 In our opinion, neither of those provisions applies to the case argued by Friday's Australia and Big Country. It is not apt to describe the complete removal of a trade mark from the Register as "correcting any error in an entry in the Register". 26 On the other hand, a complete removal can properly be characterised as "removing…an entry wrongly…remaining on the Register" within the meaning of section 88(1)(b). However, the latter removal may only be ordered by a Court on the grounds set out in section 88(2) and on no other ground. 27 The failure by the Registrar to perform any duty imposed on him under section 78, if indeed such a duty arose in the present case, is not a ground referred to in section 88(2). It follows that whether or not the Registrar came under a duty to remove from the Register a trade mark that had never been registered, the present application on behalf of Friday's Australia and Big Country cannot succeed under either section 85 or section 88. It follows that insofar the cross-claim in proceeding N572 of 1997 relies on the failure of the Registrar to remove the trade mark because of non-renewal, it cannot succeed. 28 It may have been possible for Friday's Inc. or TGIFM to lodge some form of inchoate application for renewal prior to 19 December 1996. After all, it did so in July 1997. However, it did not do so before the date on which, ex post facto, the Trade Mark was deemed to have expired prior to its actual registration 29 The Gilbertian scenario of legislation apparently requiring renewal of the registration of a not yet registered trade mark results from apparent Parliamentary oversight of the possibility that an application might remain pending for more than ten years after its filing date. The code constituted by sections 72 and 75 to 79 fails to address the circumstance where the registration of a trade mark occurs more than ten years after the date of filing of the application. 30 In the present case, throughout the whole of the prescribed period before the deemed registration of the Trade Mark expired, there was in fact no registration. Similarly, from the period of twelve months after the deemed registration of the Trade Mark expired there was no registration. 31 The time limits contained in sections 75 and 79 cannot be complied with in such circumstances. Accordingly, it could not be said that the Registrar is in breach of any duty under section 78 to remove the registration from the Register. That was, in essence, the conclusion of the primary judge. His Honour was correct. The Section 234 Gateway 32 Section 234 of the 1995 Act applies in relation to a registered trade mark whose application for registration in the register kept under the 1955 Act had been accepted under that Act and was still pending immediately before 1 January 1996 ("a 1955 Mark"). 1 January 1996 was the date of commencement of the 1995 Act. 33 It was common ground that section 234 applied to the Trade Mark and, accordingly, section 234(2) is applicable. Section 234(2) relevantly provides as follows: "(2) In any legal proceedings: (a) … (b) the original registration under this Act of [a 1955 trade mark]; is taken to be valid in all respects after a period of 7 years from the date of registration of the trade mark unless it is shown that: (c)… (d) the registration of the trade mark would be contrary to section 28 of the [1955 Act]; or (e) the trade mark did not, at the commencement of the proceedings, distinguish the services of the registered owner in relation to which the trade mark is used from the services of other persons." 34 Section 28 of the 1955 Act prohibited the registration of, inter alia, a trade mark the use of which would be likely to deceive or confuse. TGIFM relies on the conclusive presumption of validity after 7 years contained in section 234(2). Friday's Australia and Big Country, however, contend that the exception in section 234(2) applies; they say each of the above conditions is satisfied. 35 Section 234(2) does not of itself authorise rectification of the Register by cancellation of a trade mark or otherwise. Rather, the subsection acts as an impediment to any proceeding alleging invalidity. Any application by Friday's Australia and Big Country for rectification of the Register must be made under section 88 of the 1995 Act. 36 Even if, as Friday's Australia and Big Country contend, section 234(2)(d) or (e) applies in this case, the consequence is only that the conclusive presumption of validity does not arise. Satisfaction of one of the conditions in section 234(2) does not, of itself, constitute a ground under section 88(2) of the 1995 Act for rectification of the Register. Therefore, in addition to agitating the question of renewal, Friday's Australia and Big Country seek to establish grounds within section 88(2) that satisfy section 234. 37 Section 88(1) of the 1995 Act provides that the Court may order that the Register be rectified by: · cancelling the registration of a trade mark; or · removing or amending an entry wrongly made or remaining on the Register; or · entering any condition or limitation affecting the registration of a trade mark that ought to be entered. 38 Section 88(2) relevantly provides as follows: "(2) An application may be made on any of the following grounds, and on no other grounds: (a) any of the grounds on which the registration of the trade mark could have been opposed under Division 2 of Part 5; (b) ……………………… (c) because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion for a reason other than one for which: (i) the application for the registration for the trade mark could have been rejected under section 43 or 44; or (ii) the registration of the trade mark could have been opposed under section 60;" 39 Section 57, in Division 2 of Part 5of the 1995 Act, provides that the registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4. That Division encompasses sections 39 to 44 of the Act. The grounds for rejection of an application therefore include the ground in section 41 dealing with a trade mark that is not capable of distinguishing an applicant's services from the services of other persons. Accordingly, lack of distinctiveness is a ground for cancellation under section 88. 40 Sections 43 and 44 are also contained in Division 2 of Part 4. However, they are specifically referred to in paragraph (c)(i) of s 88(2). The effect of that reference is that the entitlement conferred by paragraph (c) to make an application for rectification on the ground of deception and confusion does not extend to a "reason … for which" an application could have been rejected under either of those sections. 41 Section 43 provides for rejection of an application for the registration of a trade mark in respect of particular goods or services if, because of some connotation, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion. 42 Section 44 requires rejection of an application in respect of goods or services that is substantially identical with, or deceptively similar to, a trade mark registered by, or whose registration is sought by, another person in respect of similar or closely related goods or services; but only where the applicant's application has a later priority date than the application for registration of the other trade mark. 43 It is important to note that the right to apply for rectification of the register which is conferred by paragraph (c) is excluded only in relation to deception or confusion that arises for a particular reason specified in section 43 or 44. The paragraph does not exclude a claim for rectification that arises for some other reason. The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43. And section 44 does not apply because no application has been made for registration of the mark with which the registered mark is said to be substantially identical or to which it is said to be deceptively similar. Accordingly, it is necessary for us to deal with the case on deception and confusion put by Big Country and Friday's Australia. 44 Thus, the next two questions are as follows: · whether the Trade Mark is capable of distinguishing services of TGIFM from the services of other persons; · whether the use of the Trade Mark would be likely to deceive or cause confusion. Capacity of the Trade Mark to Distinguish TGIFM's Services 45 The relevant date for the purposes of this question is the date of filing the cross-claim in proceeding N572 of 1997. That is the effect of sections 234(2)(e), 88(2)(a) and 41(2). Section 41(2) of the 1995 Act 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 services in respect of which the trade mark is sought to be registered ("designated services") from the services of other persons. Under section 41(3), in deciding the question whether or not a trade mark is capable of distinguishing the designated services from the services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated services from the services of other persons. 46 The question to be considered is not whether a mark will be adapted to distinguish the registered owner's services if it be registered and other persons consequently find themselves precluded from using it. Rather, the question is whether the mark, considered quite apart from the effects of registration, is such that, by its use, the registered owner is likely to attain the object of distinguishing his services from the services of others. There is a natural disinclination to allow any person to obtain, by registration under trade mark legislation, a monopoly in what others may legitimately desire to use. The question whether a mark is adapted to distinguish must be tested by reference to the likelihood that other persons trading in services of the relevant kind, and being actuated only by proper motives, will think of the mark and want to use it in connection with similar services. That is to say, would other persons, in the exercise of the common right of the public to make honest use of words forming part of the common heritage, want to use a proposed mark for the sake of the signification that the words used in the mark ordinarily possess (see Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513-514). 47 Capability to distinguish the services of one trader from those of others is central to the concept of a trade mark, as appears from the definition of trade mark in section 17 of the 1995 Act, which is in the following terms: "A trade mark is a sign used, or intended to be used, to distinguish…services dealt with or provided in the course of trade by a person from…services so dealt with or provided by any other person". The question is not whether a mark has acquired a distinctive character but only whether it is capable of distinguishing the services of, relevantly, Friday's Inc. as at the date of filing of its application. The question is whether the mark for which registration is sought is capable of distinguishing an applicant's services in respect of which the mark is sought to be registered. 48 TGIFM does not claim that the name "T.G.I. Friday's" was invented by it or by Friday's Inc or that the use of the name was peculiar to them. In the reasons of 26 March 1999, the Full Court held (paragraph [27]) that the evidence before the primary judge established that the name "Thank God It's Friday", or some recognisable corruption of it, is used by a wide range of Australian businesses offering relaxation and refreshment. The contention of Friday's Australia and Big Country is that the Trade Mark is not inherently adapted to distinguish the services of TGIFM in relation to which the Trade Mark is used from the services of other persons. 49 Friday's Australia and Big Country contend that the language of section 234(2) emphasises that the relevant issue is distinctiveness in fact, having regard to uses by others. The relevant words of section 234(2)(e) are: "the trade mark did not… distinguish the… services of the registered owner in relation to which the trade mark is used from the services of other persons" (Emphasis added). 50 Friday's Australia and Big Country contend that issues of whether or not a trade mark is capable of distinguishing, inherited adaptability to distinguish and distinctiveness in fact, which are relevant considerations at the time of determining registerability of a trade mark, are subsumed into the factual enquiry of the use made as at the commencement of the relevant proceedings. They contend that "TGI Friday's" is not distinctive because: · it is an ordinary English expression; · there is a natural association of the words with relaxing with a drink; · over the years a number of independent uses in relation to bars or restaurants have existed; and · the expression is constantly used in the community. 51 Friday's Australia and Big Country point to usage up to July 1997 of various expressions similar to "TGI Friday's" as rendering the Trade Mark incapable of distinguishing restaurant services of TGIFM from the services of other persons. The expressions to which attention was drawn by Friday's Australia and Big Country are "Friday's", "TGI Friday's", "TGIF", and "Thank God its Friday". 52 For two years from mid 1973, Friday's Restaurant Pty Limited traded under the name "Friday's Restaurant" at 506 George Street Sydney. The name of the restaurant was displayed at the door and on the menu. That Company also registered a trade mark "Friday's" for food or goods in classes 29 and 30. Both trade marks lapsed in 1979 when the restaurant closed. 53 In the early to mid 1980's, Aust Corp No 49 Pty. Limited operated a restaurant on the Manly Esplanade, near Sydney, for about 18 months under the name "Manly Friday's". The name of the restaurant was clearly signposted and visible from the street and the name appeared in the menu. The phrase "every day's a Friday" was also used in the body of the menu. Aust Corp No 49 Pty Limited also lodged applications for registration of the marks "Friday's", "TGI Friday's" and "EDA Friday's". The applications were apparently abandoned. The restaurant in Manly was not particularly successful and the intention to set up a chain never eventuated. 54 On 12 February 1987 one Robert Rudkin registered the business name "Thank God it's Friday" in Queensland. The principal place of business was said to be 1 Bellara Street, Nerang, Queensland. There is no evidence that any business was actually carried on pursuant to that registration. 55 In September 1990, McCoy Brown Investments Pty Limited, which owned a bar in Canberra known as "The Private Bin" registered in the Australian Capital Territory two business names, namely, "Thank God it's Friday" and "Fridays". The expression "Thank God it's Friday" was used in connection with the promotion of the bar. However, the company allowed the name "Fridays" to lapse. 56 In 1997, the proprietor of the Wentworth Hotel in Parramatta Road, Flemington near Sydney was accustomed to place a sign outside the premises bearing the expression "Thank God it's Friday" coupled with liquor specials. In February 1997 the same expression was used to promote the facilities of Campbelltown R.S.L. Club situated in Lithgow Street, Campbelltown not far from Sydney. 57 There is some evidence that prior to August 1997 a bistro at Thredbo, New South Wales traded under the name "Friday's". There is no evidence as to the extent or nature of the use of that name or the extent of its promotion. 58 On 11 January 1982, one John Harold Pond registered the business name "TGI Friday" in New South Wales in respect of premises at 1 Mitchell Street, Centennial Park, a suburb of Sydney. There is no evidence that any business was ever carried on by Mr Pond under that name at that address or any other address. 59 In 1997 there was a telephone service recorded for a business known as "Friday's Cellars" at Clayfield, Queensland, near Brisbane. There is no evidence of the nature or extent of the use and promotion of the name. 60 Since November 1986, Weller Hotels has used the name "Friday's" as the name of the complex in Brisbane where bar and restaurant services have been provided. A similar complex has operated at Mooloolaba, Queensland since 1988. There has been extensive use by Weller Hotels of the name "Friday's" and considerable publicity has been given to that usage. There was considerable evidence before the primary judge of advertisements, articles and promotional brochures referring to "Friday's". There is no suggestion that any of the uses by Weller Hotels were prompted by any knowledge of or reference to Friday's Inc. or TGIFM. 61 Friday's Australia and Big Country also produced evidence of other uses of the expression "thank God it's Friday" or variants of that expression. The evidence included use in newspapers and magazine articles, on radio and television and in connection with businesses of various kinds. Such usage is relied on as evidence of the likelihood of traders wishing to use such expressions, without any improper motive, in relation to activities concerned with relaxation and refreshment. 62 It may be that the expressions "T.G.I. Friday" or "thank God it's Friday" are expressions that are and have been regularly used in relation to relaxation and refreshment. The expressions may suggest notions of relaxation and refreshment. However, the expression "TGI Friday's" of itself means nothing. Even if it be accepted that the letters "TGI" are an acronym for "Thank God It's", the use of the possessive in the expression "TGI Friday's" sets the expression apart as unidiomatic English. "TGI Friday's" is not descriptive of the character of restaurant services, or any other services for that matter. It does not inherently refer to restaurant services. It does not of itself describe services of any character. 63 Accordingly, the Trade Mark has always been capable of distinguishing restaurant services provided by one proprietor from the services of another proprietor who does not use the Trade Mark. The Trade Mark has at all times, therefore, been capable of distinguishing TGIFM's restaurant services from the restaurant services of other persons. That position prevailed at the time of filing the application for registration of the Trade Mark in 1985 and at the time of commencement of proceeding N572 of 1997. It follows that the relevant ground in section 234 and section 88 has not been established. Deception and Confusion 64 The relevant date for the purposes of this question is 19 December 1985, the date of filing the application for registration of the Trade Mark. That is the effect of section 234(2)(d). In other words, it is only deception or confusion within section 28(a) of the 1955 Act that would be a ground for rectification in respect of a trade mark to which section 234 applies (see Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12; (2000) 169 ALR 677). 65 In or about October 1984, Weller Hotels opened a newly renovated bar in the Embassy Hotel at the corner of Elizabeth and Edward Streets, Brisbane. The new bar was named "Friday's". It provided, in addition to normal bar services, food and music from a tape deck. Friday's Australia and Big Country assert that use of the Trade Mark that was theoretically available to TGIFM as at 19 December 1985 included use next door to and with the same decor as the business that Weller Hotels operated under the name "Friday's" in Brisbane. They say, therefore, that the use of the Trade Mark was likely to deceive or cause confusion. 66 However, there is no evidence concerning the extent of any trade advertising or promotion carried on by Weller Hotels in relation to the name prior to 1986. The evidence does not provide any foundation for a finding that the use of the Trade Mark as at 19 December 1985 was likely to deceive or cause confusion in relation to the business of Weller Hotels. Prior Registrations 67 Section 44(2) of the 1995 Act provides as follows: "…an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if: (a) it is substantially identical, with or deceptively similar to: (i) a trade mark registered by another person in respect of similar services…; or (ii) a trade mark whose registration in respect of similar services…is being sought by another person; and (b) the priority date for the registration of the applicant's trade mark…is not earlier than the priority date for the registration of the other trade mark…" 68 Friday's Australia and Big Country rely on section 44 by reason of two prior applications as follows: · Aust Corp No 49 Pty Limited for the marks "Friday's", "TGI Friday's" and "Eda Friday's" for services including restaurant services; · Weller Hotels for the mark "Friday's" for services of a discotheque. 69 The first application was abandoned and never proceeded to registration. Section 44(2) has no operation in relation to such an application. Section 44 (2) refers to another application "being sought by another person". Once the application was abandoned, registration was no longer being sought. 70 The application by Weller Hotels proceeded to registration. The question arises, therefore, as to whether services of a "discotheque" are closely related to "restaurant services". The Court was not taken in any detail to the evidence as to the nature of discotheque services. The evidence before the primary judge indicates that a discotheque is a place where entertainment is provided for the general public or to selected patrons, such as club members, where the entertainment usually includes live recorded music for dancing and where food and beverages, including alcoholic beverages, are available to patrons. Discotheque services include the following facilities and amenities: · Bar and table service of alcoholic beverages; · Over-the-counter and table service of a full range of meals from light snacks to table served meals with formal crockery and cutlery; · Music provided in both live and recorded format; · Nightclub style dance floors for dancing. 71 The Deputy Registrar was apparently not satisfied that discotheque services and restaurant were sufficiently closely related to warrant refusal of the application for registration by Friday's Inc. No adequate reason has been advanced for coming to a different conclusion from that of the Deputy Registrar. INFRINGEMENT 72 Several sub-issues arise in relation to the question of infringement. First, Big Country says that it does not use the name "TGI Friday's" as a trade mark. Secondly, it says that, even if it does use the name as a trade mark, it does not use the name in relation to restaurant services. Finally, Big Country relies on sections 122 and 124 of the 1995 Act by way of defence to the allegations of infringement. Whether Name Used as a Trade Mark by Big Country 73 Big Country operates licensed premises known as the Grey Gums Hotel situated at Penrith on Sydney's western fringe. The Grey Gums Hotel consists of a number of sections all on the one level. Apart from the beer garden, the hotel is laid out in a straight line end to end. From east to west, the sections are: a games room containing pool tables, video games and pinball machines; an area described as a lounge bar ("the Lounge Area"); a public bar, which also contains 10 approved amusement devices similar to poker machines; a TAB agency, which has access from the public bar as well as externally; and the "Liquor Barn" bottle shop. The beer garden is located directly behind the games room and joins the Lounge Area. 74 In April 1996, Big Country commenced using the names "TGI Friday's" and "TGI Friday" at the Grey Gums Hotel. The name "TGI Friday's" is painted on the gable roof over the porch leading to the Lounge Area. The name "TGI Friday" is also represented in a neon sign displayed in a window adjacent to the doors leading to the Lounge Area. The Lounge Area is available for the consumption of meals during certain hours of the day. Lunch is served at the food bar in the Lounge Area between the hours of 12 noon and 3.00pm and dinner between the hours of 5.30pm and 9.00pm. 75 Diners may purchase wine, beer and spirits from the alcoholic beverages bar located in the hotel. The alcoholic beverages bar runs from the public bar through to the Lounge Area. The Lounge Area is open during all normal trading hours of the Grey Gums Hotel, which are from 10am to 3am Monday to Saturday and 10.00am to 9.00pm on Sundays. It is available for the consumption of drinks, including alcoholic drinks, purchased at the alcoholic beverages bar throughout those trading hours, including the hours during which meals are available. Television sets suspended overhead dominate the visual and aural surroundings of the Lounge Area without distinguishing between places where food is usually consumed and places where it is not; if there is any such distinction. The décor is the same throughout the whole Lounge Area. It seems that the tables and chairs in the Lounge Area are available to be used by patrons who wish only to drink and watch television or chat, as well as by patrons who want to eat meals described in the menu. On Friday nights live entertainment is provided in the Lounge Area from 9.00pm by solo or duo singers or bands. 76 A menu is provided in the lounge bar describing the meals that are available. The cover of that menu bears the name "T.G.I. Friday's". The menu bears no sign or badge referring to Grey Gums Hotel. The menu offers a selection of nine entrees and a choice of main meals comprising at least four different cuts of steak done in various ways, six chicken dishes and five veal dishes. All main meals are served with fresh salad and chips or fresh vegetables. The wine list on the menu includes three sparkling wines, two Rieslings, two Verdelhos, five Chardonnays, two Cabernet Sauvignons, a Shiraz and a Cabernet Merlot as well as two dry white wines and two dry red wines plus house wine. 77 Tables are arranged in groups with four or six chairs at each. The photographs tendered in evidence show pepper and salt shakers on some tables and ashtrays on others. 78 There is no suggestion of a need to book a table to eat a meal in the Lounge Area. There is no table service. Ordering and receipt of food takes place at the food bar near the portion of the alcoholic beverages bar located in the Lounge Area. Drinks are ordered and received at the alcoholic beverages bar in the same way as meals. The food and drinks may be taken to any of the tables located in the Lounge Area. There is no evidence that the wine listed on the menu is available only to patrons who eat meals or that such wine was stocked by the hotel only because there were some patrons who might wish to eat meals described in the menu. 79 Big Country contends that such use of the name "T.G.I. Friday's" as occurs at the Grey Gums Hotel is not use of that name as a trade mark. It contends that the name does not function to distinguish services provided within the Grey Gums Hotel as those of a particular proprietor. Rather, the name does no more than describe the physical location, being part of the Grey Gums Hotel, where various services are provided. Accordingly, it is said, the use of the name is not use of a trade mark in relation to services. 80 Under section 7(5) of the 1995 Act use of a trade mark in relation to services means use of the trade mark "in physical or other relation to the services". It is clear that the name is used by Big Country in physical relation to the services that it provides in the lounge area. Since the name is identical to the Trade Mark, it is a use of the Trade Mark in relation to the services provided by Big Country in the Lounge Area. 81 It was also contended that, so far as "TGI Friday's" was used as a trade mark at the Grey Gums Hotel, it was only used as part of a larger trade mark, being "TGI Friday's Grey Gums Hotel". Such a contention has no substance. There are two entrances to the Grey Gums Hotel, each under a gable roof. On one gable "TGI Friday's" appears. On the other "Grey Gums Hotel". The overall appearance is to suggest two separate establishments. The evidence does not support the contention that the two names comprised a single trade mark. Whether Big Country Provides Restaurant Services 82 Big Country contends that the services provided by it in the Lounge Area are not properly to be characterised as "restaurant services". The proper approach is to ask whether the services provided fall within the ordinary meaning of "restaurant services" or whether the services would ordinarily be described as "restaurant services". The Court must look at the overall nature of the business conducted by Big Country (see Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 at 566-567). 83 The overall nature of Big Country's business at the Grey Gums Hotel is that of a hotel. The providing of meals in the Lounge Area is incidental to the conduct of the hotel business. There is a distinction between "hotel services", including the provision of counter meals, on the one hand, and "restaurant services" on the other hand. The listing of meals on a menu, the availability of alcohol including bottled wine with or without meals, the disposition of chairs and tables do not, so it is contended, in the context of the conduct of an outer suburb and hotel, constitute the provision of restaurant services. 84 The term "restaurant" means: · an establishment where meals, especially main meals, are served to customers: Macquarie Dictionary, 3rd Edition; · an establishment where refreshments or meals may be obtained: Shorter Oxford English Dictionary. 85 The question is not whether the Lounge Area can properly be characterised as a restaurant. The question is whether it can be said that Big Country is providing restaurant services, namely, the services that would be provided at an establishment where meals are served to customers or meals may be obtained. It is not a pre-requisite for restaurant services that there be table service. The services that are ordinarily provided in such an establishment are the supply of meals for consumption at tables provided for that purpose by the supplier. 86 During the hours when food is served, Big Country is providing restaurant services to customers in the Lounge Area. It may be that it also uses the Lounge Area for the provision of other services, both at that time and at other times. However, it uses the name "T.G.I. Friday's" in physical relation to the provision of services that can fairly be characterised as restaurant services. Accordingly, subject to any available defence, there is infringement of the Trade Mark by Big Country. Other Defences to Infringement Allegations 87 Friday's Australia and Big Country also contend that section 122(1)(f) of the 1995 Act would afford a defence to the claim of infringement. Section 122(1)(f) relevantly provides that a person does not infringe a registered trade mark when the Court is of the opinion that the person would obtain registration of the trade mark if the person were to apply for it. The contention is that Big Country would obtain registration of the mark "TGI Friday's" if it applied for it in relation to "hotel services". While this defence was pleaded, and was the subject of written submissions, it was not the subject of any oral argument. No ground of appeal raises section 122(1)(f). 88 The question of whether Big Country would be entitled to obtain registration of the Trade Mark would need to be determined by reference to section 44(3) of the 1995 Act, which is concerned with the power of the Registrar to accept applications for registrations of identical marks subject to conditions and limitations on use. Issues arising under section 44(3) may give rise to questions of Big Country's good faith. Both the primary judge and the Full Court, in the previous appeal, were critical of the conduct of Mr Hesky, the principal of Big Country. There is no basis for concluding that Big Country would obtain registration of the Trade Mark if it were to apply for it in relation to restaurant services. 89 Big Country also relies on section 124 of the 1995 Act. Section 124 provides that a person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with or deceptively similar to the registered trade mark if the person has continuously used the unregistered trade mark in the course of trade from a time before the date of registration. Reliance is placed on use of the name "TGI Friday" at Raby Tavern, Campbelltown on the outskirts of Sydney from May 1985. However, the use of that name at Raby Tavern before 19 December 1985 was found by the primary judge not to be use of the name as a trade mark. The evidence did not establish that restaurant services were provided at the Raby Tavern at any time prior to 19 December 1985. This defence is not made out. RELIEF 90 There was no appeal in relation to the form of the orders made by the primary judge on 16 December 1999. Those orders apparently accorded with short minutes brought in by the parties following the publication of his Honour's reasons of 12 November 1999. 91 However, there is a difficulty about the form of the injunction ordered by the primary judge. The order was to restrain infringement by using the Trade Mark "in relation to any restaurant services" 92 An order in those terms leaves open to dispute one of the major questions in issue in the appeal. The particular conduct engaged in by Big Country that is held to constitute an infringement in relation to the provision of restaurant services should be described in the order. That would reduce the likelihood of future dispute as to whether or not particular conduct constitutes a contravention of the injunction. 93 There was also a cross-appeal by TGIFM in relation to the primary judge's refusal of an injunction in respect of any premises other than the Grey Gums Hotel. Prior to 1996, Big Country acquired a parcel of land at Artarmon for the purpose of constructing a hotel. By May 1996 a sign had been erected at that site saying "T.G.I. Friday's is coming soon". Further, a business name was registered by Big Country that disclosed the Artarmon site as the principal place of a business to be carried on under the name "T.G.I. Friday's restaurant". If the use of the name at the Grey Gums Hotel constitutes an infringement of the Trade Mark, the threatened use of the name at Artarmon is a threatened infringement of the Trade Mark. In the circumstances, it would be appropriate to order injunctions with respect to the Artarmon site. 94 In the light of the above, the appropriate relief would be an order restraining Big Country from infringing the Trade Mark by using the name "TGI Friday's", or any name identical to or deceptively similar to that name, in connection with the provision of restaurant services at or from premises known as the Grey Gums Hotel, Penrith or premises situated at 115 Reserve Road, Artarmon. The order should define the term "restaurant services" to mean the supply of meals to persons for consumption at tables provided for that purpose by the supplier, but not to include the operation of a snack bar from which sandwiches, pies, pizza, chips or other light meals are supplied. LEAVE TO APPEAL 95 In his reasons of 9 September 1998, the primary judge found that Big Country was at all times advised of its rights of appeal in relation to the decision of the Deputy Registrar. His Honour found that Big Country exercised an informed choice not to appeal from that decision. 96 His Honour's decision in that regard is a decision on a matter of practice and procedure. Big Country did not identify any special circumstances that could justify extending the time for instituting an appeal. No error of approach or principle is demonstrated in his Honour's reasons for that decision. Leave to appeal from his Honour's decision should be refused COSTS OF THE TRIAL 97 The primary judge ordered that in each of proceedings N678 of 1996 and N572 of 1997 there be no order as to costs. His reason was that the two proceedings were heard together, the evidence in one was evidence in the other, and each side had been successful in one proceeding and unsuccessful in the other. As a result of the decision of the Full Court on 26 March 1999, Friday's Inc and TGIFM were unsuccessful in their claims in proceedings N678 of 1996. On the other hand, his Honour held they were entitled to succeed in proceeding N572 of 1997. Our decision affirms that position. 98 No error of principle, on the part of his Honour, is demonstrated in relation to the exercise of his discretion concerning costs. The order made by his Honour fairly reflects the outcome of the two proceedings. FORMAL ORDERS 99 Appeal N82 of 2000 which relates to costs of the trial should be dismissed. Appeal N83 of 2000 by Friday's Australia and Big Country should also be dismissed. The cross-appeal by TGIFM in N83 of 2000 should be upheld and an injunction in the terms indicated above should be ordered in lieu of the injunction ordered by the primary judge. Big Country's application for leave to appeal from the order dismissing its application for leave to appeal from the decision of the Deputy Registrar should also be dismissed. Big Country and Friday's Australia should pay the costs of the proceedings before this Full Court. I certify that the preceding ninety nine (99) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Full Court. Associate: Dated: 31 May 2000 Counsel for the Applicant and the Appellants: Mr A J L Bannon SC & Ms J R Baird Solicitor for the Applicant and the Appellants: Henry Davis York Counsel for the Respondents: Mr D K Catterns QC & Mr J V Nicholas Solicitor for the Respondents: Sprusons Solicitors Date of Hearing: 8 May 2000 Date of Judgment: 31 May 2000