FEDERAL COURT OF AUSTRALIA Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968 TRADE MARKS – "sounds different" mark in respect of radio broadcasting services - whether inherently adapted to distinguish - whether adapted to some extent - descriptive words TRADE MARKS - no use before priority date - use to which evidence of subsequent use can properly be put Trade Marks Act 1995 (Cth) s 33, s 43, s 56, s 197 Evidence Act 1995 (Cth) s 72, s 78, s 138 Blount v Registrar of Trade Marks (1998) 83 FCR 50 cited British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 cited Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 cited Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 applied Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 cited Holloway v McFeeters (1956) 94 CLR 470 cited Kenman Kandy (Australia) Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30 cited Malibu Boats West Inc v Catanese (2000) 51 IPR 134 cited Mark Foy's Ltd v Davies Coop & Co Ltd (1956) CLR 190 cited Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 cited Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1 cited Philmac Pty Ltd v Registrar of Trade Marks (2002) 126 FCR 525 cited Pound Puppies Trade Mark [1988] RPC 530 cited Re Application by Cadbury Ltd (2002) 55 IPR 561 cited Re the Application of J P Coats Ltd (1936) 53 RPC 355 cited South Australian Brewing Company Pty Ltd v Carlton & United Breweries Ltd (2001) 53 IPR 90 cited Thompson v B Seppelt & Sons Ltd (1925) 37 CLR 305 cited Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318 applied Yakult Honsha KK's Trade Mark Application [2001] RPC 756 cited Lahore, Patents, Trade Marks and Related Rights Shanahan's Australian Law of Trade Marks and Passing Off (3rd ed, 2003) AUSTEREO PTY LTD v DMG RADIO (AUSTRALIA) PTY LTD No S 3 of 2004 FINN J ADELAIDE 28 JULY 2004 IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY S 3 OF 2004 BETWEEN: AUSTEREO PTY LTD APPLICANT AND: DMG RADIO (AUSTRALIA) PTY LTD RESPONDENT JUDGE: FINN J DATE OF ORDER: 28 JULY 2004 WHERE MADE: ADELAIDE THE COURT ORDERS THAT: (1) The appeal be allowed. (2) The decision of the delegate be set aside. (3) The opposition to the application be allowed. (4) Registration of the application be refused. (5) The respondent pay the applicant's costs of this appeal and of the opposition proceedings concerning the application before the Registrar of Trade Marks. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY S 3 OF 2004 BETWEEN: AUSTEREO PTY LTD APPLICANT AND: DMG RADIO (AUSTRALIA) PTY LTD RESPONDENT JUDGE: FINN J DATE: 28 JULY 2004 PLACE: ADELAIDE REASONS FOR JUDGMENT 1 The parties in this appeal under s 56 of the Trade Marks Act 1995 (Cth) ("the Act") are commercial radio broadcasters. Their dispute is over the trade mark "sounds different" which the present respondent, DMG Radio (Australia) Pty Ltd ("DMG Radio"), applied to have registered under the Act on 20 March 2001. The present applicant, Austereo Pty Ltd, took unsuccessful opposition proceedings under Part 5 of the Act and now appeals to this Court from the decision of the Registrar that the "sounds different" mark be registered in respect of the services specified in DMG Radio's application. Those services, insofar as now relevant (DMG Radio having disclaimed some that were applied for), were "Class 38: Radio broadcasting services" and "Class 41: Radio entertainment; production of radio programmes". 2 The two grounds of opposition to the registration which now remain live are: (i) the "sounds different" mark is not capable of distinguishing those services of DMG Radio in respect of which the mark is sought to be registered: the Act, s 41(2); and (ii) DMG Radio does not intend to use or to authorise the use of the mark, or to assign it to a body corporate for use by it in Australia of one of the services specified above, i.e. "Class 41 … production of radio programmes". THE NATURE OF THE "APPEAL" 3 It is clear from the provisions of s 197 of the Act (which enumerates the powers of the Court on hearing an "appeal") that the Court is to conduct a re-hearing of the matter in its original jurisdiction: see Blount v Registrar of Trade Marks (1998) 83 FCR 50 at 59; Philmac Pty Ltd v Registrar of Trade Marks (2002) 126 FCR 525 at 455; and, in lieu of the Registrar, is itself to apply the provisions of the Act in determining whether the application for registration should be granted. It is not necessary to decide whether the Registrar's decision was correct in law and fact although weight should be given to the Registrar's opinion, it being the decision of a skilled and experienced person: Malibu Boats West Inc v Catanese (2000) 51 IPR 134 at [6], [30]. 4 The standard to be applied by a single judge in considering an appeal under s 56 of the Act should, in my view, be taken for the present as settled. I ought, as a matter of comity, apply the standard adopted by Bennett J in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318 at [15]-[20]: the onus of establishing a ground of opposition is clearly borne by the opponent (here Austereo); and "the opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered": at [22]. 5 I would note, though, that Austereo reserves its position in relation to the second of these two propositions. THE STATUTORY SETTING 6 Under s 33(1) of the Act the Registrar must, after the examination of an application for registration, accept the application unless he or she is satisfied that: "(b) there are grounds for rejecting it." Section 41(2) provides one such ground, i.e. the mark is not capable of distinguishing the applicant's services. And s 41(3) to (6) "govern entirely": see Blount at 58; the process by which the s 41(2) ground is to be made out or negatived. 7 Insofar as presently relevant s 41 provides: "41 Trade mark not distinguishing applicant's goods or services … (2) 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 (designated goods or services) from the goods or services of other persons. (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or 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 goods or services from the goods or services of other persons. (4) Then, if the Registrar is still unable to decide the question, the following provisions apply. (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: (a) the Registrar is to consider whether, because of the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances; the trade mark does or will distinguish the designated goods or services as being those of the applicant; and (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services – the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services – the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons. (6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply: (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant – the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons; (b) in any other case – the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons. 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." 8 For present purposes the matter of contention is whether the "sounds different" mark is capable or not capable of distinguishing the DMG Radio services now applied for under either s 41(3) or s 41(5). It is common ground that s 41(6) can have no present application as DMG Radio made no use of the mark before the priority date. THE FACTUAL SETTING 9 The parties are business competitors and this proceeding can properly be seen in that context. 10 DMG Radio (either through subsidiaries or joint ventures) owns and operates 66 commercial radio stations throughout metropolitan and regional Australia. Its metropolitan radio network consists of one station in each of Adelaide, Sydney and Melbourne, a recently acquired FM licence for Adelaide which was soon to commence broadcasting, and 50 per cent interests in stations in Perth and Brisbane. The stations in Sydney, Melbourne, Perth and the new FM station in Adelaide are, or are to be, operated under what is described as the "NOVA" brand name. 11 The company has registered various trade marks in connection with its Nova businesses. These are, (i) the word "NOVA" (the "Nova word mark"); (ii) the word "NOVA" followed by the respective radio frequency of each of the Nova businesses, e.g. "Nova 969" in Sydney and "Nova 100" in Melbourne ("the Nova business marks"); and (iii) a cartoon like character wearing headphones known as the "Nova boy" ("the Nova device mark"). These various marks are of some significance in this proceeding. As will later be seen, the "sounds different" mark has since its inception been used in conjunction with or in reasonable visual or temporal proximity to one or more of these marks. 12 The "sounds different" mark was intended to be, and has been, used as one element in the branding of the Nova businesses. As the affidavits and exhibits put on by DMG Radio illustrate (and these include video and CD copies of television and radio usages), the "sounds different" mark has been used extensively since about April 2001: (a) in major television advertising campaigns in each of Sydney, Melbourne and Perth; (b) in on-air branding of the Nova businesses in each of Sydney, Melbourne and Perth; (c) on websites connected with the Nova businesses; (d) in print and outdoor advertising campaigns in each of Sydney, Melbourne and Perth; (e) in promotional competitions conducted by the Nova businesses, outdoor performances and other events in each of Sydney, Melbourne and Perth; and (f) on merchandise and other products produced in connection with the Nova businesses. 13 The manner in which the mark is used in conjunction with the various "Nova" marks has varied with the medium of communication being employed, e.g. radio, television, static object or website usages. In some instances, while the "sounds different" mark and one or more of the Nova marks are used in conjunction, they are separated spatially or temporally. In others, they are used in a composite fashion whether by way of grouping or of superimposition of one upon the other. Simply by way of illustration I include the following, the one from a website home page, the other, a car bumper sticker. 14 Two particular usages to which I should refer are the use of the "sounds different" mark as part of a "radio sweeper" and the "sounds different" mismatch television commercials. A radio sweeper is a pre-recorded segment comprised of music, words, singing or a combination of these which is played as part of the on-air branding of a radio station. Each of Nova businesses has used the "sounds different" mark as part of a radio sweeper on a regular and frequent basis. I have listened to a CD containing a number of such sweepers. It is my appreciation that when "sounds different" is used, it is used either before or after a Nova mark. It commonly is separated temporally by some bars of music etc from the Nova mark. The sweepers vary as to which of the two marks is the more accentuated. 15 The "mismatch" television commercials designedly contained a mismatch between the visual activity presented and the sound that was associated with it. One commercial, for example, showed a person chopping an onion which caused the onion to make squealing noises. The commercials finished, first, with the Nova business mark and then with the Nova device mark and the "sounds different" mark used conjointly. The evidence is that the purposes of these commercials were, to paraphrase, (a) to create a level of intrigue in viewers so as to encourage them to sample listening to the Nova stations; (b) to promote the Nova stations; and (c) to create a strong association in the minds of listeners and advertisers between the Nova businesses and the "sounds different" mark. 16 To anticipate matters, it is Austereo's contention that DMG Radio did not use the words "sounds different" as a trademark. It merely used them in association with the Nova marks which were themselves distinctive. 17 DMG Radio also tendered survey evidence to indicate, as of April 2004, the extent of the association between the "sounds different" mark and the radio stations operated by it. This survey was not conducted in accordance with requirements of Practice Note 11 of the Federal Court. It was not for that reason inadmissible: South Australian Brewing Company Pty Ltd v Carlton & United Breweries Ltd (2001) 53 IPR 90 at 108. It is admissible under ss 72 and 78 of the Evidence Act 1995 (Cth) though it may be excluded under the discretion given by s 135 of that Act. 18 Austereo, I should note, has tendered expert evidence challenging the objectivity and methodology of the survey. I have been invited either to exclude the survey under s 135 or to give it little weight. For reasons I later give, it is unnecessary for me to consider in detail the criticisms made of the survey. 19 The survey was directed at radio listeners in the 15 to 34 age group living in Melbourne, Sydney and Perth and had only one substantive question. It was: "Which radio station first comes to mind when you hear the phrase 'Sounds Different'?" It was administered to a total of 1200 people (400 in each city). Though the responses differed from city to city, the overall results expressed as a percentage were as follows: (a) Nova Network 28% (b) Triple J Network 8% (c) Today Network 6% (d) Triple M Network 4% (e) ABC AM Network 1% (f) ABC FM Network Less than 1% (g) News Radio Network Less than 1% (h) Other stations 22% (comprising over 30 different radio stations) (i) Don't know 24% (j) No station 7% 20 Much in the evidence put on by Austereo was directed at the "common practice" of radio stations using "positioning statements" to signify music content, program format and/or target market of a station. These statements, according to Mr Allis, the Group Program Director of Austereo, advertise a station's name followed immediately by a short statement or "tag line" to describe the audio product. Mr Allis was not aware of any instance where a radio broadcaster had used a positioning statement without also using the name or station number of the station concerned. 21 By way of illustration, Mr Allis indicated the positioning statements used on a regular basis by various Austereo stations between 1990 and 1993. These were: (1) 2Day FM (Sydney) – "the 2Day Difference" (2) FOX FM (Melbourne) – "the FOX Difference" (3) SAFM (Adelaide) – "the SAFM Difference" 22 He also gave examples of the positioning statements used by other stations. These were: Joy 94.9 (Melbourne) – We're Different Groove 101.7 FM (Perth) – The New Sound Rhema FM Wide Bay 105.1 (Maryborough) – Experience the Difference 92.9FM (Toowoomba) – Making a Difference 23 The evidence of both parties illustrates that the industry is one in which stations positively seek to differentiate themselves from each other by the use of positioning statements; that these have commonly, but not invariably, involved the use of a description of the content or audio product of a station: "Classic Hits", "Sydney's Best Mix", "Good time Oldies", "Only 90s and New Stuff", etc; and are customarily used when a station undergoes a change to its format. 24 It is the evidence of Mr Buchanan, DMG Radio's Group Program Director, that while in the past stations adopted positioning statements that described the "content or audio product produced by [a] station", increased competition in the industry has caused some stations to adopt more distinctive branding strategies to set themselves apart from their competitors. This can involve use of positioning statements that are unrelated to the audio content of the station. He gave the following Australian examples: · the Austereo owned Triple M in Melbourne and Triple M in Sydney now use the phrase "Turn it up"; · K-Rock, a commercial radio station broadcasting in the Geelong area in Victoria uses the phrase "World Famous K-Rock"; · Triple J, the ABC's national youth FM radio network, uses the phrase "Get Into It"; · 104.5 STAR FM, a commercial radio station recently established by DMGRA in the Gosford area in New South Wales, uses the phrase "Your New Local". 25 The only evidence of the use of the words "sounds different" by a radio station other than DMG Radio is that on 20 August 2001 (after DMG Radio had begun broadcasting this mark) a broadcaster at Austereo's Melbourne station made the statement on air: "from the radio station that sounds different, the new Triple M" etc. This elicited a threat of action from DMG Radio if Austereo persisted in using the words. 26 I am prepared to infer that this was calculated conduct on Austereo's part. Austereo had previously, and designedly, used other DMG Radio marks which had elicited a like hostile response. And, from the time that DMG Radio acquired FM radio licences for Sydney and Melbourne in 2000, Austereo determined to counter the adverse effects of DMG Radio's new stations on its own business. 27 While the above is drawn primarily from the affidavit of Ms Catherine O'Connor, a former Austereo employee who now works with DMG Radio, I do not rely upon her assertion that Austereo's use of the "sounds different" words was calculated conduct. I was asked to exclude her evidence under s 138 of the Evidence Act on the basis that it was obtained in breach of an express duty of confidence she owed Austereo. I have not taken that course, although the use I have made of it is quite limited. Because her affidavit otherwise contains confidential information on which I have not relied and because no useful purpose would be served by its publication I continue the order I made under s 50 of the Federal Court of Australia Act 1976 (Cth) that its contents not be disclosed without an order of a judge of this Court. Applicable Principles 28 I have already indicated that s 41(6) of the Act cannot be invoked by DMG Radio, the "sounds different" mark not having been used prior to the date of the application for registration. For this reason the following comments do not address the distinctive requirements of that subsection: cf Blount at 60-61. 29 Whether the mark is capable of distinguishing the services of DMG Radio to which the application relates turns in consequence on whether I clearly cannot be satisfied that it meets the requirements of subs 41(3) or (5): s 41(3), because it is not, of itself, inherently adapted to distinguish DMG Radio's services; and s 41(5) because, though to some extent inherently adapted to distinguish those services, that, combined with its use, intended use and other circumstances does not or will not distinguish those services. 30 The capability which s 41(3) and s 41(5) address in their respective ways has been described as a test of "fitness for a future role": Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 586. Though this criterion is forward looking: cf Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1 at 17-18; the required capability must be possessed by the mark at the priority date. It is insufficient that the mark may have the potential or capacity to acquire that capability in the future: cf Thompson v B Seppelt & Sons Ltd (1925) 37 CLR 305 at 312. 31 This distinction becomes important in cases such as the present where the mark has been used after the priority date and evidence of that use is adduced to support registration in reliance on s 41(5). 32 Evidence of subsequent use is, in my view, admissible in opposition proceedings not only where it is claimed that the use of a mark would be likely to deceive or cause confusion: see 43 of the Act; Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 at 509; but also where the capability of a mark to distinguish is in issue: see Lahore, Patents, Trade Marks and Related Rights [54,210]; Shanahan's Australian Law of Trade Marks and Passing Off [6.95] (3rd ed, 2003). As was said in Pound Puppies Trade Mark [1988] RPC 530 at 533: "… it is permissible when deciding whether the mark was capable of distinguishing to take into account use after the date of application. If a mark has in fact become distinctive, then it is at least likely to have had a capacity to distinguish." Though Austereo has submitted that only prior use is admissible for s 41(5) purposes, I am satisfied that the view expressed above reflects the true construction of s 41(5) which, unlike s 41(6), is not limited to prior use. It also expresses "the cold common sense" that commended itself to Burchett J in Conde Nast Publications at 509 of seeing actual events as being "capable of illuminating the probabilities already inherent in [a prior] situation". 33 What requires emphasis, though, is that subsequent use evidence, no less than evidence of intended use, is relevant only to the question of whether the mark possessed the required capability at the priority date. It will not assist an applicant for registration if that use demonstrates no more than (i) the mark has the potential or capacity to acquire that capability in the future; or (ii) that the mark has acquired distinctiveness only because the relevant community has since the priority date been "educated" to see the mark as an indicator of the origin of particular services: British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 306; Re Application by Cadbury Ltd (2002) 55 IPR 561 at 570. 34 Both s 41(3) and (5) require consideration of the extent to which a trade mark is "inherently adapted to distinguish" the designated services from the services of others. As Branson J noted in Blount at 58, the "inherently adapted" formula was of primary significance under the Trade Marks Act 1955 (Cth) and the formula as used in s 41(3) and (5) is "intended to be understood in the light of decisions under the Act". 35 There is no significant disagreement between the parties as to the burden of this formula. Their differences, predictably, are in its application. Of the various elaborations of the formula it is sufficient for present purposes to note the following. First, in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, Gibbs CJ observed (at 424): "Inherent adaptability is something which depends on the nature of the trade mark itself … and is therefore not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise." As s 41(5) makes plain, there are degrees of inherent adaptation to distinguish. 36 Secondly, as Lindgren J observed in Kenman Kandy (Australia) Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30 at [84]: "While inherent adaptation to distinguish requires attention to be focused on the mark itself, and is intended to stand in sharp contrast to a mark's capacity to distinguish arising from use, the notion of 'the mark itself' does not exclude from consideration the nature of the range of goods within the class or classes in respect of which registration is sought, or the various ways in which the mark might, within the terms of the registration, be used in relation to those goods. Indeed, those matters must be taken into account." 37 Thirdly, there is the "negative test": cf Kenman Kandy (Aust) Pty Ltd at [98]; of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 which, while not purporting to identify all of the circumstances in which a mark will or will not be inherently adapted to distinguish: Kenman Kandy at [98]; is of particular present relevance. It is: "That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others … [t]he question whether a trade mark is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by 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." 38 Fourthly, as Note 1 to s 41(6) of the Act suggests – and it is said to reflect "the trend of relevant judicial authority": Ocean Spray Cranberries Inc, at 589: "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." Nonetheless words which, though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose can properly be said to have some degree of inherent adaptation to distinguish: Re the Application of J P Coats Ltd (1936) 53 RPC 355 at 380. Distinctly, that a descriptive statement is commonly associated with a particular trader's goods or services does not, in and of itself, mean that that statement is inherently adapted to distinguish that trader's goods or services. It may, for example, be naturally applied to goods or services of that type by whomsoever manufactured or supplied: ibidat 380. 39 Fifthly, a descriptive word may to a degree be inherently adapted to distinguish because the description itself involves an unfamiliar, obsolete, unexpectedly evocative or purely emotive usage: cf J P Coats at 380; Mark Foy's Ltd v Davies Coop & Co Ltd (1956) CLR 190 at 194. THE REGISTRAR'S DECISION 40 The Registrar disagreed with the examiner's finding that the mark was of itself capable of distinguishing without the need to resort to use etc under s 41(5). The Registrar held, nonetheless, that while the word "sound" in the mark was to some extent descriptive of the applied for services, that descriptiveness was lessened when combined with "different" and there was some adaptation to distinguish the services to those of others. Accordingly it was necessary to consider whether s 41(5) applied. In light of the evidence, the Registrar concluded: "I am satisfied that each of the applicant's registered and applied for marks are capable of standing alone to indicate the source of the services, either on a network basis or on an individual radio station basis. Thus either the 'Nova Boy' or SOUNDS DIFFERENT, or both of them, indicate the Nova network generally, or each of the marks or all of them, can indicate a local Nova radio station." 41 This ground of opposition was dismissed. Contentions and Conclusions 42 Put shortly Austereo submits (i) that the post-filing date acquired distinctiveness is not a relevant matter (I have dealt with this above); (ii) the "sounds different" mark has always been in combination with one or more of the Nova marks, and though it may have achieved a level of recognition, it would not in and of itself convey trade mark significance to the average consumer; (iii) the words in any event are ones that others in radio broadcasting might wish to use in the ordinary course of business simply to convey that broadcast content of one station sounds different from that of another and should be rejected under the Clark Equipment Co test; (iv) "sounds" and "different" are origin neutral terms incapable of satisfying either s 41(3) or (5); and (v) even if s 41(5) was applicable, the words were not used on their own to distinguish DMG Radio's services. 43 The respondent's contentions are (i) that the words "sounds different" have been used consistently as an identifier to distinguish DMG Radio's services from those of others; (ii) they are not used merely to describe the character or quality of DMG Radio's services; (iii) the words do not necessarily call to mind any of the designated services so that they are not likely to be used by other traders to describe such services; (iv) they are an indirect, evocative reference to an aspect of DMG Radio's radio broadcasts; (v) there was no evidence of other traders using the mark prior to DMG Radio's adoption of it and Austereo's later usage was simply provocative; (vi) the mark was inherently adapted to distinguish. 44 My own view is that the "sounds different" formula is not of itself so inherently adapted to distinguish the designated services of DMG Radio as to justify registration on a s 41(3) basis alone. Nonetheless it has such a degree of inherent adaptation as to attract the provisions of s 41(5) although, as I will indicate, I am still not satisfied that it is in the circumstances capable of distinguishing DMG Radio's designated services. 45 It is trite to observe that sound transmission and aural reception are of the essence of radio broadcasting. It equally is trite that radio broadcasters attempt to make their separate appeals to the listening audience and in so doing to differentiate their respective services from those of other broadcasters. This is reflected commonly enough, but by no means exclusively, in programme content - be it sport, language, style of music, etc. As I have indicated, the evidence illustrates this process of differentiation being put into effect by the use of other devices and "branding strategies", for example, positioning statements. 46 The "sounds different" formula focuses on two characteristics of the nature and conduct of radio broadcasting – sound and difference. Neither of the individual words of the formula considered alone are adapted to distinguish DMG Radio's services. They severally are descriptive words that, even on the skeletal evidence before me of the industry, are commonplace in industry usage. 47 The composite formula, though, is a somewhat different matter. It retains a highly, but in my view not exclusively, descriptive content. Considering the formula apart from its use, it possesses several characteristics which are sufficient to give it some degree of inherent adaptation. First, the formula itself embodies a linguistic ambiguity: Does it incorporate a verb and an adverb or a stylized noun-adjective form? Secondly, it asserts difference without indicating what it is that "sounds different" and what is the criterion of difference. Aggregated these two qualities have some capacity to arrest and to make a sufficient appeal to the imagination as to give them some inherent capacity to distinguish the designated services of DMG Radio. Or, to use the older formula, they are not entirely devoid of inherent adaptation to distinguish. 48 This said, the formula is by no means sufficiently adapted to distinguish as to justify its being characterized as, of itself, being inherently adapted to distinguish. Though it does not appear to have been used to date by other broadcasters in positioning statements or in other "branding strategies" – save for the calculated use made by Austereo – it is apt to express naturally and in ordinary language what is the burden of many of the statements that are in evidence which deal with the broadcasting content or "audio product" of particular stations. It does not stray that far from linguistic usage that could naturally and reasonably be expected of broadcasters – usages that are not lightly to be lost to the trade mark system: Clark Equipment Co at 514. It cannot "do the job" of distinguishing entirely on its own: cf British Sugar plc, at 306; see also Yakult Honsha KK's Trade Mark Application [2001] RPC 756 at 759. 49 When one turns to s 41(5), one is confronted with the somewhat unusual situation of use of the mark post-dating, but not predating, the application for registration. It is the manner of its use that is the cause of difficulty in this matter. 50 The mark has been used extensively in television and radio broadcasting and in advertising campaigns more generally since the priority date. It has in the intervening three years acquired at least some association with the Nova businesses. The survey evidence, whatever its alleged inadequacies (I express no view on them), establishes at least this. That evidence of association, though, does little to support DMG Radio's application for s 41(5) purposes and this because of the actual manner in which the mark was used. 51 As I earlier indicated, evidence of post-priority date resulting in acquired distinctiveness may be relied upon in opposition proceedings to the extent that it supports an inference that a mark was capable of distinguishing an applicant's services at the priority date: see Pound Puppies Trade Mark (1988) RPC 530 at 533. However it will not assist in an application for registration if it demonstrates no more than (i) the mark has the potential or capacity to acquire that capability in the future or (ii) that the mark has acquired distinctiveness only because the relevant community has, since the priority date been "educated" to see the mark as an indicator of the origins of particular services: British Sugar plc, at 306. 52 In this matter I am satisfied that the "sounds different" mark was invariably used in a close temporal or spatial relationship with one or more of the Nova marks, if it was not actually being used in combination with those marks. The Nova marks were of their very nature capable of distinguishing DMG Radio's services on their own. When one has regard to the manner in which the "sounds different" mark was used and to the evidence, which I accept, that positioning statements are commonly used in the industry in association with a station's name or station number, I am satisfied that the most reasonable and probable deduction from the post-priority date evidence: cf Holloway v McFeeters (1956) 94 CLR 470 at 477; is that the mark acquired such distinctiveness as it now has from its use with the Nova marks. That use educated other traders and the public as to the association between the "sounds different" mark and the Nova businesses. In other words, it was through the subsequent usage that the mark acquired a capability to distinguish. The evidence does not support an inference that the required capability existed at the priority date. In consequence, I am satisfied that DMG Radio's application should clearly not be registered. 53 This conclusion is sufficient to entitle Austereo to the orders sought in the Amended Notice of Appeal. However there is one additional matter to which I should make reference for the sake of completeness. 54 Austereo had contended in any event that registration could not be granted in respect of one of the services designated in the application, i.e. "production of radio programmes". The ground of opposition advanced is that DMG Radio does not intend to use the mark in relation to that service: s 59 of the Act. It points to the lack of any evidence of such an intention on DMG Radio's part. 55 DMG Radio's response is that it is inherent in the nature of its business that it produces programmes, and causes them to be produced, for airing under the mark. In consequence it satisfies the test of s 7(5) of the Act that it uses the mark "in physical or other relation to the services". 56 Put shortly, my own view is that I cannot be satisfied that DMG Radio intends to use the mark in the provision in the course trade of the distinct service of production of radio programmes. From Mr Buchanan's evidence I infer that DMG Radio's production of radio programmes is subsumed within its activity of radio broadcasting. It is in relation to that service that the mark is used. Accordingly, I would have refused registration in respect of the distinct service of "production of radio programmes". 57 I will order that: (1) The appeal be allowed. (2) The decision of the delegate be set aside. (3) The opposition to the application be allowed. (4) An order that registration of the application be refused. (5) The respondent pay the applicant's costs of this appeal and of the opposition proceedings concerning the application before the Registrar of Trade Marks. I certify that the preceding fifty-seven (57) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finn. Associate: Dated: 28 July 2004 Counsel for the Applicant: Mr D Yates SC and Ms J Catt Solicitor for the Applicant: Norman Waterhouse Counsel for the Respondent: Mr B Caine SC and Mr B Fitzpatrick Solicitor for the Respondent: Mallesons Stephen Jaques Date of Hearing: 30 April 2004 Date of Judgment: 28 July 2004