Federal Court of Australia Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 Appeal from: Re Melbourne Bone and Joint Clinic Pty Ltd [2021] ATMO 121; 169 IPR 304 File number: VID 649 of 2021 Judgment of: MOSHINSKY J Date of judgment: 7 February 2024 Catchwords: TRADE MARKS – appeal from decision of the Registrar of Trade Marks – where a delegate of the Registrar decided to reject an application to register as a trade mark MELBOURNE BONE AND JOINT CLINIC – hearing de novo – whether the mark was to any extent inherently adapted to distinguish – whether the applicant used the trade mark before the filing date of the application to such an extent that it did in fact distinguish Legislation: Evidence Act 1995 (Cth), s 136 Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Trade Marks Act 1995 (Cth), ss 26, 33, 35, 41 Cases cited: Apple Inc v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; 180 FCR 60 Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; 111 CLR 511 Eastman Photographic Materials Co Ltd v Comptroller-General of Patents, Designs and Trade Marks (Solio Case) [1898] AC 571 Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 Mark Foy's Ltd v Davies Co-operative & Co Ltd [1956] HCA 41; 95 CLR 190 Philip Morris Products SA v British American Tobacco (Brands) Limited [2013] ATMO 22 (24 April 2013) (Click & Roll) Procter & Gamble v OHIM, ECJ Case No. C-383/99 (5 April 2001) (BABY-DRY) Registrar of Trade Marks v W&G Du Cros Ltd [1913] AC 624 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; 93 FCR 365 Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519 Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 128 Date of hearing: 13 and 14 November 2023 Counsel for the Appellant: Mr MR Hall SC Solicitor for the Appellant: King & Wood Mallesons Counsel for the Respondent: Ms MJ Marcus Solicitor for the Respondent: Australian Government Solicitor ORDERS VID 649 of 2021 BETWEEN: MELBOURNE BONE AND JOINT CLINIC PTY LTD Appellant AND: REGISTRAR OF TRADE MARKS Respondent order made by: MOSHINSKY J DATE OF ORDER: 7 FEBRUARY 2024 THE COURT ORDERS THAT: 1. The appeal be dismissed. 2. The appellant pay the respondent's costs of the proceeding, as agreed or taxed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT MOSHINSKY J: Introduction 1 On 12 March 2020, the appellant, Melbourne Bone and Joint Clinic Pty Ltd (MBJC), filed an application to register as a trade mark MELBOURNE BONE AND JOINT CLINIC in respect of services in classes 35 and 44. Those classes cover the following services: Class 35: Compilation of medical reports. Class 44: Orthopaedic surgery; Fitting of orthopaedic devices; Health clinic services; Medical advisory services; Medical examination of individuals; Advisory services relating to medical problems; arranging of medical treatment; conducting of medical examinations; charitable medical services. 2 On 14 October 2021, a delegate of the Registrar of Trade Marks (the Registrar) decided to reject the application on the basis that a ground for rejection existed under s 41(3) of the Trade Marks Act 1995 (Cth): Re Melbourne Bone and Joint Clinic Pty Ltd [2021] ATMO 121; 169 IPR 304. The delegate considered that: (a) the trade mark was not to any extent inherently adapted to distinguish the designated services from the services of other persons; and (b) MBJC had not used the trade mark before the filing date of the application to such an extent that the trade mark did in fact distinguish the designated services as being those of MBJC. 3 MBJC appeals from the delegate's decision pursuant to s 35 of the Trade Marks Act. The appeal is in the Court's original jurisdiction and is conducted as a hearing de novo. The nature of the appeal, and the weight to be given to the Registrar's opinion, were discussed by Yates J in Apple Inc v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511 (Apple) at [22]-[26]. 4 In this case, the Registrar has played an active role in the proceeding and is represented by solicitors and counsel. This was appropriate in the circumstances as there was no opponent to the application. 5 Central to the issues in the appeal is s 41 of the Trade Marks Act, which relevantly provides (and provided at all relevant times): 41 Trade mark not distinguishing applicant's goods or services (1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons. Note: For goods of a person and services of a person see section 6. (2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark. (3) This subsection applies to a trade mark if: (a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant. (4) This subsection applies to a trade mark if: (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances. 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. Note 2: For goods of a person and services of a person see section 6. … (Emphasis added). 6 It is convenient to observe that s 41(3) is concerned with a case where the trade mark is not to any extent inherently adapted to distinguish, while s 41(4) is concerned with a case where the trade mark is to some extent (but not sufficiently) inherently adapted to distinguish. This is relevant to the positions adopted by the parties, as outlined below. 7 It is common ground that a presumption of registrability is embodied in s 33 of the Trade Marks Act. This section provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving a ground of objection upon the Registrar). 8 MBJC's contentions can be summarised as follows: (a) First, MBJC contends that the trade mark is sufficiently inherently adapted to distinguish, such that it is entitled to registration without needing to consider evidence of use or other circumstances under s 41(3) or 41(4). (b) In the alternative, MBJC contends that the trade mark is, to some extent, inherently adapted to distinguish, and therefore one is in the territory of s 41(4) rather than s 41(3). MBJC contends that its evidence satisfies the requirements of s 41(4) to qualify for registration. (c) In the further alternative, if the trade mark is not to any extent inherently adapted to distinguish, and one is therefore in the territory of s 41(3), MBJC submits that its evidence satisfies the requirements of s 41(3) to qualify for registration. 9 The Registrar's contentions can be summarised as follows: (a) The Registrar rejects the proposition that the trade mark is sufficiently inherently adapted to distinguish as contended by MBJC. (b) The Registrar contends that the trade mark is not to any extent inherently adapted to distinguish the designated services from the services of other persons, and therefore one is in the territory of s 41(3) rather than s 41(4). The Registrar contends that MBJC has not used the trade mark before the filing date in respect of the application (12 March 2020) to such an extent that the trade mark does in fact distinguish the designated services as being those of MBJC (see s 41(3)(b)). Accordingly, the Registrar contends, the trade mark is not entitled to registration. (c) If the Court were to find that the trade mark is to some extent inherently adapted to distinguish, such that one is in the territory of s 41(4) rather than s 41(3), the Registrar does not contend that the mark should not being registered (T19). 10 For the reasons that follow, I have concluded that: (a) the trade mark is not sufficiently inherently adapted to distinguish, such that it is entitled to registration without needing to consider evidence of use or other circumstances under s 41(3) or 41(4); (b) the trade mark is not to any extent inherently adapted to distinguish the designated services from the services of other persons; one is therefore in the territory of s 41(3) rather than s 41(4); and (c) MBJC has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated services as being those of MBJC (see s 41(3)(b)). 11 Accordingly, I have concluded that the trade mark is not entitled to registration. It follows that the appeal is to be dismissed. The hearing and the evidence 12 The hearing took place over two hearing days. 13 MBJC relied on the following evidence: (a) an affidavit of Dr Arvind Jain dated 1 April 2022; Dr Jain is an orthopaedic surgeon and the founder of the clinic or practice operating under the name "Melbourne Bone and Joint Clinic"; he has approximately 20 years of orthopaedic surgical experience in Australia and India; he is referred to both as Dr and Mr Jain; consistently with the approach taken during the hearing, I will refer to him as Dr Jain in these reasons; (b) two statutory declarations of Dr Jain, dated 7 April 2020 and 18 June 2020, that were in evidence before the delegate of the Registrar; these were admitted into evidence in the proceeding in this Court subject to a 'limited use' ruling pursuant to s 136 of the Evidence Act 1995 (Cth), namely that their use was limited to understanding what material was before the Registrar; (c) an affidavit of Dr Shivani Kansal dated 1 April 2022; Dr Kansal is the Executive Director of MBJC, a position she has held since July 2015; she is also a medical doctor specialising in general paediatrics and paediatric gastroenterology; (d) an affidavit of Tracey Jackson dated 1 April 2022; Ms Jackson is the Practice Manager at MBJC; (e) an affidavit of Shiona Richmond dated 1 April 2022; Ms Richmond is a medical secretary at MBJC; and (f) an affidavit of Emily Griffiths dated 6 November 2023; Ms Griffiths was a secretary at MBJC. 14 Of the deponents set out above, only Dr Jain was required to attend for cross-examination. 15 At the outset of Dr Jain's oral evidence, senior counsel for MBJC, with leave, asked Dr Jain some questions about an aspect of Dr Jain's affidavit that had been ruled inadmissible. Dr Jain was then cross-examined by counsel for the Registrar. Dr Jain gave evidence in a clear and straightforward way, and in a way that was evidently intended to assist the Court. I generally accept his evidence. There were some differences between Dr Jain's affidavit evidence and his oral evidence. Where there is a difference, I prefer Dr Jain's oral evidence. 16 The Registrar relied on an affidavit of Thomas Creedon, a lawyer employed by the Australian Government Solicitor, dated 30 May 2022. Mr Creedon was not required to attend for cross-examination. 17 The affidavits were included in an electronic Court Book (CB). In addition, a small number of documents were tendered during the hearing. Factual findings 18 The following factual findings are based on the affidavit evidence and the oral evidence of Dr Jain. 19 I note that, in paragraph 1 of his affidavit, Dr Jain defines "MBJC" as meaning the company, Melbourne Bone and Joint Clinic Pty Ltd. He uses the expression "MBJC" frequently in his affidavit. However, it seems that in many cases, Dr Jain is actually referring to the clinic or practice operating under the name "Melbourne Bone and Joint Clinic" rather than the company. For example, in paragraph 19, Dr Jain states: "As a specialised orthopaedic surgery clinic, MBJC is a referral-based practice." In these reasons, for the sake of clarity, I will distinguish between, on the one hand, the clinic or practice operating under the name "Melbourne Bone and Joint Clinic" (the MBJ Clinic) and, on the other hand, Melbourne Bone and Joint Clinic Pty Ltd (referred to in these reasons as "MBJC"). 20 Further, it is apparent that in some parts of Dr Jain's affidavit there is a blurring between the company (MBJC) and Dr Jain himself. This became apparent during cross-examination (T54-56). Dr Jain was taken to paragraph 30 of his affidavit, in which he stated that: Currently (as at April 2022), MBJC provides patient consultation services at the following regional locations: … (Emphasis added.) It was put to Dr Jain that this was not correct because the patient consultation services were provided by him rather than by the company. Dr Jain accepted that he was providing the clinical services, but added that he did so "under the banner of Melbourne Bone and Joint Clinic" (T55; see also T56-57, T69). In the statement of the facts set out below, I will reflect the fact that it is Dr Jain himself who is providing the medical services. MBJC and the MBJ Clinic 21 In October 2014, MBJC was incorporated. I infer that, from about that date, MBJC and Dr Jain commenced to operate the MBJ Clinic. 22 In the period from October 2014 to the filing date for the application for the trade mark (12 March 2020), Dr Jain was the only doctor providing medical services at the MBJ Clinic. 23 Recently, Dr Kansal (who is the Executive Director of MBJC and also a paediatrician and paediatric gastroenterologist) has commenced consulting from the same premises as the MBJ Clinic. I infer that Dr Kansal does not provide those services under the name "Melbourne Bone and Joint Clinic" given her area of specialty and because, in his oral evidence, Dr Jain said that she provides medical services "from the same premises" (rather than, for example, at the clinic) (T78; see also T50). 24 Also, recently, another orthopaedic surgeon has commenced providing services from the same premises as the MBJ Clinic. However, as at the time of the hearing, he was not providing those services under the name "Melbourne Bone and Joint Clinic" (T77). 25 Accordingly, as at the time of the hearing, Dr Jain was the only doctor providing medical services at the MBJ Clinic. 26 Dr Jain supervises all staff at MBJC. As at the date of Dr Jain's affidavit (April 2022), this comprised: one Executive Director; one Practice Manager; and two medical secretaries. 27 From 2014 to early August 2019, the MBJ Clinic's main patient consultation premises were located in Suite 201, 100 Victoria Parade, East Melbourne, VIC 3002 (the East Melbourne premises). This consulting space was shared with three other doctors who were each operating their own practices under their own names as doctors. 28 Since late August 2019, the MBJ Clinic's main patient consultation premises have been located at 27 Erin Street, Richmond, VIC 3121 (the Richmond premises). 29 In his affidavit, Dr Jain states (at paragraphs 28 and 30) that MBJC also provides patient consultation services in regional locations based out of other medical clinics. However, Dr Jain accepted during cross-examination that such services are provided by him rather than by the company (T54-55). He said that he is providing such services under the "banner of Melbourne Bone and Joint Clinic". 30 The MBJ Clinic secretarial staff at the Richmond premises schedule all patient appointments made for consultations, including appointments in the regional locations. The MBJ Clinic has a central phone number and email address (see further below), which are managed by the secretarial staff at the Richmond premises. 31 Dr Jain gives evidence in paragraph 37 of his affidavit that: at the time of establishing MBJC in October 2014, he had long-term plans to expand the practice and add an additional eight to ten different subspecialities to the clinic related to orthopaedics, including other orthopaedic surgery subspecialities, sports medicine and physiotherapy; the intention was to develop the clinic's reputation as a comprehensive orthopaedic care clinic. 32 Dr Jain gives evidence in his affidavit that MBJC has been able to commence the expansion of its practice in the following ways (noting that the COVID-19 pandemic has delayed the implementation of some of the plans for further expansion): (a) in May 2018, purchasing the Richmond premises for relocation of the main office of MBJC; (b) in or about April 2019, renovating the Richmond premises to ensure it was appropriately set up for the practice; and (c) in May 2021, MBJC purchased another practice premises in Essendon, Victoria (the Essendon premises). Dr Jain gives evidence in his affidavit that it is intended that this practice will operate as a second MBJC consulting location. Rationale for choosing the name 33 Dr Jain gives evidence in his affidavit that, in or about early 2014, when he was in the process of establishing an orthopaedic surgical clinic, he wanted to choose a unique brand name that would differentiate the brand from other existing orthopaedic clinics. At that time, there were several clinics in Victoria of which he was aware that used the word "orthopaedic" in their brand name, such as the "Melbourne Orthopaedic Clinic", the "Melbourne Orthopaedic Group" and the "Central Melbourne Orthopaedics". There were also several clinics at that time of which he was aware that used the term "sports medicine" in their brand name. 34 Dr Jain gives evidence in his affidavit that: among the wider medical community, including GPs and physiotherapists, orthopaedic surgeons are commonly referred to as orthopods, orthopaedists, ortho or orthopaedic surgeons; among the general public, orthopaedic surgeons are commonly referred to simply as orthopaedic surgeons; the services provided by orthopaedic surgeons are sometimes also referred to by the more general term of "sports medicine", which encompasses orthopaedic services required to address sporting injuries, although it also covers a range of other sports-related medical services. 35 Dr Jain gives evidence in his affidavit that he considered that incorporating the terms "orthopaedic" or "sports medicine" into the name of the clinic would be an overtly medical description of the services provided by the clinic; by contrast, he was not aware of the phrase "bone and joint" being used by consumers, any other specialists (including orthopaedic specialists offering orthopaedic services) or referring GPs, to describe the services provided by orthopaedic surgeons, and so he considered the use of this phrase in a clinic name to be "more interesting and memorable". 36 During cross-examination, Dr Jain was asked questions about his choice of the name "Melbourne Bone and Joint Clinic" (T59-63). His evidence included: … I knew most of the practices and I had not heard anyone using bone and joint word. And all the surgeons were using orthopaedic in different form – Melbourne Orthopaedic Clinic, Orthopaedic Specialist Centre, Melbourne Orthopaedic Specialist Clinic. So I wanted to use a word which is different. And to my surprise, I also noticed when I used the name initially in October 2014, that no one else was using the word bone and joint in Australia to describe any clinic. … None of them [my colleagues] were also using the word bone and joint when I Google searched it. So I found that this name is going to be really interesting and different. (Emphasis added.) I will return, later in these reasons, to the significance of Dr Jain's surprise that (as he understood it) no one else was using the words "bone and joint". 37 The following exchange took place during cross-examination (T60-61): … the words bone and joint describe ultimately what you do because you provide services in relation to bones and joints. You operate on bones and joints?---In reference to some extent but not entirely. Like, orthopaedics is not only about bone and joint. Orthopaedics is a lot about ligament balancing, about the tendons, muscles. So bone and joint in either individually or as a combination does not represent the whole aspect of orthopaedics. But in the industry you work in, which is the orthopaedics industry, bone and joint is – it describes what you operate on and what you consult about, isn't it?---Yes. Like, on the common perception, you would think so and that's the reason I was so surprised that how come no one has used this like, you know. Since establishment of Commonwealth in 1900, there would have been, you know, like – I don't know, more than 5000 orthopaedic surgeons all around the country or there are like 35,000 physiotherapists practising now and chiropractors. And if the name – I thought was distinct – was different enough that if no one is using it, I thought that was the main interest in using the name and that's why I thought this name will have a different – you can say entity or a different name in the market. And the moment I picked it, I was – you know, a lot of my colleagues or patients thought that, yes, this is a very attractive name. (Emphasis added.) 38 Dr Jain said during cross-examination that, when he researched it, he did not see the words "bone and joint" being used in Australia in any medical practices or surgical practices (T61). He was asked what research he had conducted. He responded that he had conducted Google searches and he also knew a lot of the practices in Melbourne. Dr Jain said that there is a journal called the "Journal of Bone and Joint Surgery". He said this is generally referred to as "JBJS". 39 It was put to Dr Jain that, in fact, there were other businesses using the words "bone and joint" in conjunction with "clinic" and they were doing so before 2014. Dr Jain said that he had googled the words and did not find any such businesses. He maintained that his understanding, at the time he chose the name, was that no business in Australia was using the words "bone and joint" (T62). I accept that that was Dr Jain's understanding at the time he chose the name. I discuss whether that understanding was correct later in these reasons. 40 Dr Jain was taken during cross-examination to his statutory declaration dated 7 April 2020 (filed in the proceeding before the Registrar) in which he stated at paragraph 6: Although Orthopaedics is the medical term for the medical specialty services offered, 'Bone and Joint' has been far easier for patients to understand who may or may not be familiar with the medical term 'orthopaedic'. 41 In cross-examination in this proceeding, Dr Jain confirmed that his interpretation was that the words "bone and joint" are easier for patients to understand than "orthopaedics" (T63). Patient consultations, surgeries and other services 42 Since October 2014, between approximately 1,500 and 2,000 patients each year have engaged the services of Dr Jain (operating under the banner "Melbourne Bone and Joint Clinic") for orthopaedic surgical consultations. Dr Jain estimates that, in each financial year (with the exception of FY 2015), between 600 to 700 of those patients have been new referrals, with the remaining being existing patients returning for review consultations. Dr Jain annexes to his affidavit a table prepared from the practice management software used by MBJC that sets out, for each financial year, the total number of patient consultations, engagements for the preparation of medico-legal reports, and patient procedures. Since October 2014, approximately 800 referrers (i.e. general practitioners (GPs) or specialists) each year have referred patients to Dr Jain (operating under the banner "Melbourne Bone and Joint Clinic"), with approximately 500 per year being new referrers. 43 Dr Jain gives evidence in his affidavit that, in general, GPs advise the patients about which specific specialist practice to see, but patients can also request a referral from their GP for a specific specialist practice. It is very uncommon for a patient to be seen by a specialist without a referral from a GP or other specialist. It is a policy of the MBJ Clinic that patients will not be seen without a referral from a GP or other specialist. Dr Jain provides the following estimates of the referral pathways to the MBJ Clinic: (a) 80%-90% of patients are initially referred by a GP; (b) 5-15% are initially referred by a physiotherapist. Patients with a referral to the MBJ Clinic from a physiotherapist also need to obtain a referral from their GP for Medicare purposes. In practice, this means that patients who are initially referred from a physiotherapist will ultimately present to the MBJ Clinic with two referrals; and (c) 5-10% by other orthopaedic surgeons. 44 Since it was established in October 2014, Dr Jain (under the banner "Melbourne Bone and Joint Clinic") has performed between about 700 and 1,000 orthopaedic surgical procedures per year. 45 In addition to surgical services, Dr Jain (under the banner "Melbourne Bone and Joint Clinic") also provides medico-legal services to: clients directly; law firms; work-cover insurance companies; and the Transport Accident Commission. Written use 46 In this section, I discuss the evidence about written use of the words MELBOURNE BONE AND JOINT CLINIC (whether in all capitals or in lower case). Letterhead 47 From October 2014 to December 2018, all letters sent from the MBJ Clinic were sent on letterhead designs that contained the words "Melbourne Bone and Joint Clinic" without a logo. Examples are annexed to Dr Jain's affidavit and include: 48 Since late December 2018, all letters sent from the MBJ Clinic were sent on a letterhead design that contained the words "Melbourne Bone and Joint Clinic" in a stylised form or logo as follows: 49 The above form is registered as Australian Trade Mark No. 2075315. There is no issue in this proceeding concerning that trade mark. I will refer to the logo set out in the top right of the above letterhead as the MBJC Logo. 50 At paragraph 41 of his affidavit, Dr Jain identifies the various types of correspondence that are sent using the letterhead. Email 51 The email addresses used by MBJC staff included the following domain names over the relevant periods: (a) since in or about October 2014, "@melbourneboneandjointclinic.com.au" (this email ID has subsequently been redirected to "boneandjointclinic.com.au"); and (b) since in or about October 2018, "@boneandjointclinic.com.au". I note that, in Dr Jain's affidavit at paragraph 46, it states that the first email set out above was used "since in or about Oct 2018", but I assume that this is a typographical error and that it was intended to refer to 2014 (given that paragraph (b) refers to 2018). Also, in paragraph 46(a) of the affidavit, it states that emails have subsequently been directed to "boneandjoint.com.au". I assume this was intended to refer to "boneandjointclinic.com.au", being the email address in paragraph 46(b). 52 In the period between early 2017 and the filing date for the application (12 March 2020), all emails sent from the MBJ Clinic included an email signature with the words "Melbourne Bone and Joint Clinic". From the email server data records, Dr Jain estimates that the staff of MBJC have sent over 4,000 emails in which those words were used and received approximately 7,000 emails with 50% of them being addressed to "Melbourne Bone and Joint Clinic" in the email address and body of the email. Business cards and trifold 53 From in or about October 2014 to October 2018, the words "Melbourne Bone and Joint Clinic" were contained on the MBJ Clinic's business cards without any logo. Since October 2018, those words have been contained within the MBJC Logo on business cards. 54 Dr Jain gave oral evidence-in-chief that, when a GP sends a new referral, the MBJC staff send a flyer and a business card (T46). Dr Jain also gave oral evidence that, over the last five years (i.e. from about 2018), MBJC staff have included a "trifold" that "includes more about the practice, what the practice offers". I infer that this is the same as the trifold referred to in paragraph 60(k) of Dr Jain's affidavit and annexed as Annexure AJ-49. The two sides of the trifold are as follows: Patient registration forms 55 Since early 2016, all new patients to the MBJ Clinic have been required to complete a patient registration form prior to their first appointment. From 2016 to October 2018, the initial patient registration form contained the words MELBOURNE BONE AND JOINT CLINIC without any logo. From October 2018, the patient registration form contained those words in the MBJC Logo. Prescription slips 56 From at least late 2016, all patient prescriptions written by Dr Jain (operating under the banner "Melbourne Bone and Joint Clinic"), and requests sent to medical imaging and pathology centres, included the words MELBOURNE BONE AND JOINT CLINIC without any logo. The MBJ Clinic also received written reports from medical imaging and pathology centres using those words. Website and Google 57 On 14 September 2014, the domain name <boneandjointclinic.com.au> was purchased for use as the dedicated website for MBJC (MBJC website). The website went live in about 2016. It was substantially revamped in about 2018. 58 On 28 February 2018, the domain name <melbourneboneandjointclinic.com.au> was purchased. Dr Jain gives evidence in his affidavit that traffic from the website at domain name <boneandjointclinic.com.au> is now diverted to <melbourneboneandjointclinic.com.au>. During cross-examination, the following exchange took place in reference to that evidence (T66-67): Does that mean it wasn't diverted immediately? It wasn't diverted in 2018?---So we bought the – initially, we only bought the boneandjointclinic.com.au in September 2014 and, to my surprise, it was available. And, again, it sort of reinforces the point that no one – I didn't think anyone was using boneandjointclinic at the time. When the – the management company came [i.e. a management consultant company that was advising MBJC], they focused on few things – how to brand and how to protect your brand identity – and the first recommendation was that you need to have a domain name with – as Melbourne Bone and Joint, not just a Bone and Joint, to protect the identity of the whole Melbourne Bone and Joint Clinic. Now, Dr Jain, you just said then, "To my surprise, boneandjoint.com.au was available". You were surprised that it was available because you knew that it was a descriptive term?---No, I won't say – like, see, I didn't know anything about descriptiveness at that time. My – my knowledge about descriptiveness or distinctiveness has only come after we have filed this application. I was just surprised that that this word which is so different as – and is not still – is not used by the traders, so when the website – the domain name was available, I was very happy to take it. Well, Dr Jain, I suggest that you were surprised it was available because you knew that those words were very descriptive?---At that time, as I said, I didn't know the – the meaning of the words "descriptive". (Emphasis added.) 59 Dr Jain annexes to his affidavit a number of pages from the revamped website. These include: 60 From April 2018, MBJC has also operated a website at melbourne-bone-joint-clinic.business.site (Business Site). This Business Site includes the words "Melbourne Bone and Joint Clinic" in a large font. 61 There is evidence in Annexure "AJ-21" (which was initially not admitted, but later admitted as Exhibit A9) regarding the number of times the website was accessed during 2018, 2019 and 2020. It appears that the number appearing under "Pages" indicates the number of times the website was visited (T45). Accordingly, from Australia, the website was visited: 3,957 times in 2018; 20,523 times in 2019; and 12,998 times in 2020. 62 Since 2018, MBJC has used "Google my Business" extensively to promote its practice. MBJC has also used Search Engine Optimisation to increase MBJC's presence on Google. Yellow Pages 63 Since at least 2018, MBJC has been listed on the Yellow Pages directory by reference to the words "Melbourne Bone and Joint Clinic". Signage 64 Since October 2014, the words "Melbourne Bone and Joint Clinic" have been used in exterior and/or interior signage at various MBJ Clinic consulting locations. Dr Jain annexes to his affidavit photos of various consulting locations with a plaque or sign with these words. Aural use 65 Since October 2014, the words MELBOURNE BONE AND JOINT CLINIC have been used aurally by Dr Jain and the other staff of MBJC during in-person discussions with patients and referring practitioners. Those words are used routinely by staff when answering all calls to the MBJ Clinic and when making any calls from the MBJ Clinic. When Dr Jain has employed staff, he has specified that the policy of MBJC is that the words MELBOURNE BONE AND JOINT CLINIC must be used when making or receiving phone calls. Dr Jain estimates that the MBJ Clinic receives approximately 30 to 40 incoming telephone calls per day, and that employees of MBJC make approximately 20 to 30 outgoing calls per day. This is confirmed by the affidavits of Ms Jackson, Ms Richmond and Ms Griffiths. Survey 66 In about September 2020, MBJC conducted a customer feedback survey (the Survey). Annexed to Dr Jain's affidavit are the questions and results for the Survey. Dr Jain sent the Survey to people who had been patients of the MBJ Clinic since October 2014. In response to the question "What is the name of the orthopaedic practice you have been to for consultation and/or surgery in the last 6 years", approximately 62% answered either "Melbourne Bone and Joint Clinic" or "Bone and Joint Clinic". The Survey results also showed that approximately 18% of respondents said that they had heard about the practice through a friend or relative. Promotional activities 67 Dr Jain gives evidence in his affidavit that there are strict guidelines that apply to the promotion and advertising of orthopaedic surgical services, which limit the forms of marketing and promotion that orthopaedic surgeons can utilise. He provides details in paragraph 57 of his affidavit. 68 Dr Jain gives evidence in his affidavit that, accordingly, it is common within the orthopaedic surgical industry for the promotion of surgical services to occur via: attending GP and physiotherapy clinics to meet with various practitioners; presenting at educational events and seminars at which GPs and physiotherapists are in attendance; and word of mouth. 69 Dr Jain gives evidence in his affidavit that the only circumstances in which it is permissible to advertise an announcement regarding an orthopaedic surgery practice are upon commencement of the practice or upon a change of practice. Accordingly, from in or about late 2014 to 2016, as the MBJ Clinic expanded its patient consultation services to further regional locations, advertising efforts were made, as detailed in paragraph 60 of Dr Jain's affidavit, with examples annexed to the affidavit. One of the annexures (Annexure AJ-38) is a letter from the Practice Manager of MBJC to a local GP dated 4 March 2016. The letter is on the letterhead (without any logo) set out at [47] above. The letter reads: I am extremely pleased to introduce Mr Arvind Jain, Orthopaedic Surgeon to your practice. Mr Jain practices in East Melbourne on a weekly basis (in the same rooms as Mr Stephen Doig), as well locations shown on the document attached. He has now commenced operating at Warringal Private Hospital and will also be consulting there in the near future. We would be very pleased to organise a luncheon whereby Mr Jain can introduce himself to your clinic and thereby develop an ongoing relationship with your practice. I have enclosed a brief description of Mr Jain's background and he would be thrilled to visit you and introduce himself on a personal level over lunch, which our rooms would be happy to organise, or if you prefer morning or afternoon tea. He will provide you with more details on his experience and qualifications at this time. Please call us on 9650 7828 to arrange a suitable time. We look forward to hearing from you in due course. I note that, although the words "Melbourne Bone and Joint Clinic" are used in the letterhead, the focus of the letter is on Dr Jain rather than the MBJ Clinic. 70 In paragraph 61 of Dr Jani's affidavit he refers to a promotional flyer that was sent to GPs, physiotherapists and other doctors. A copy is annexed to his affidavit as Annexure AJ-50. While the flyer uses the words "Melbourne Bone and Joint Clinic", its text focuses on Dr Jain rather than the MBJ Clinic. In cross-examination, Dr Jain accepted that this flyer was introducing him (T69). 71 In paragraph 62 of his affidavit, Dr Jain states that promotional flyers were sent by Epworth Hospital, Warringal Private Hospital, North West Specialist Centre and Bendigo Orthopaedic & Sports Medicine. Copies are annexed as Annexure AJ-51. (One of the pages within this annexure (CB p 1239) is not reproduced properly in the CB and a replacement page was tendered and became Exhibit A8.) Dr Jain was taken to these flyers during cross-examination. While these flyers include the words "Melbourne Bone and Joint Clinic", they are essentially flyers about Dr Jain rather than the clinic. Dr Jain accepted this during cross-examination (T71-72). 72 Dr Jain gives evidence in his affidavit that a similar process was undertaken in or about August 2019 when MBJC moved its main premises to the Richmond premises, to announce the change of location to GP and physiotherapy clinics and to establish further referral relationships in the surrounding areas of the Richmond premises. Examples of communications that use the words "Melbourne Bone and Joint Clinic" (in some cases within the MBJC Logo) are annexed to Dr Jain's affidavit. 73 To further promote its business, MBJC created the following social media accounts in mid-2020, which include the words "Melbourne Bone and Joint Clinic" in their handle and in their content: (a) https://www.linkedin.com/company/melbourne-bone-and-joint-clinic/; and (b) https://www.facebook.com/MelbourneBoneandJointClinic. 74 In 2018, MBJC invested approximately $45,000 to develop the MELBOURNE BONE AND JOINT CLINIC brand and increase its advertising and promotional efforts. This involved: (a) engaging a graphic designer to design a logo for the brand. This logo was finalised in October 2018 (and is the logo referred to in these reasons as the "MBJC Logo"); (b) designing marketing and promotional materials for MBJC; and (c) redeveloping MBJC's website and optimising the design for use on mobile devices. 75 Since 2018, the ongoing average annual cost to promote, advertise and manage the MELBOURNE BONE AND JOINT CLINIC brand has been approximately $30,000 to 40,000. Educational activities 76 Since October 2014, MBJC has made a concerted effort to be involved in various educational events within the public and private hospital settings. Dr Jain has presented as a guest speaker on behalf of the MBJ Clinic at various educational events, dinners, seminars and forums at which GPs and physiotherapists from both public and private practice have been in attendance. In some instances, MBJC organised the educational events and invited various GPs and physiotherapists to attend. For those events, a secretary of MBJC sent out written invitations to the various attendees. Annexed to Dr Jain's affidavit are examples of such invitations from the period of 2015 to 2016 that contain the words "Melbourne Bone and Joint Clinic". 77 For both the events where MBJC was the organiser and those that were organised by a hospital or other organisation, Dr Jain handed out materials that contained the words "Melbourne Bone and Joint Clinic" (in some cases within the MBJC Logo). Use of the name by others 78 The affidavit of Mr Creedon, filed by the Registrar, provides evidence of the use of the words MELBOURNE BONE AND JOINT CLINIC (or some of those words) by other persons. 79 Mr Creedon conducted searches of business names and company names on the Australian Securities and Investments Commission's "Organisation & Business Names" register. He conducted searches using the search terms "Bone and Joint", "Joint Clinic" and "Bone Clinic". Mr Creedon also reviewed the summaries for some of the search results. He sets out results of his searches in paragraphs 3-7 of his affidavit. The business names and company names he lists in those paragraphs include the following names that include the word "clinic" or otherwise indicate that they relate to medical services (arranged in chronological order of date of registration): (a) the company name THE BONE & JOINT CLINIC PTY LTD, which was registered on 2 January 2002; (b) the business name BEGA VALLEY CENTRE FOR BONE AND JOINT SURGERY, which was registered on 15 March 2012; (c) the company name BONE AND JOINT CLINIC SUNSHINE COAST PTY LTD, which was registered on 22 November 2012; (d) the business name HUNTER BONE AND JOINT SURGERY CENTRE, which was registered on 8 February 2013; (e) the company name THE BONE CLINIC PTY LTD, which was registered on 17 December 2014; (f) the business name SYDNEY SOUTH WEST BONE AND JOINT CLINIC, which was registered on 19 March 2018; (g) the business name SYDNEY BONE AND JOINT CLINIC, which was registered on 2 July 2018; (h) the company name THE GOLD COAST CENTRE FOR BONE & JOINT SURGERY PTY LTD, which was registered on 6 November 2018; (i) the business name MUSCLE & BONE CLINIC, which was registered on 18 January 2019; (j) the business name SYDNEY MUSCLE AND JOINT CLINIC, which was registered on 7 May 2019; and (k) the company name VICTORIAN BONE AND JOINT SPECIALISTS PTY LTD, which was registered on 12 February 2020. 80 The fact that a company has been registered in a particular name, or that a business name has been registered, does not of itself establish that a practice was conducted under that name. Nevertheless, the information set out above does tend to indicate an interest in using the words "bone and joint" in connection with the provision of medical services. 81 In May 2022, Mr Creedon conducted Google searches using the search term "bone and joint clinic" and "bone and joint", and targeted Google searches for orthopaedic surgeries, with the results set out in paragraphs 8-12 of his affidavit and Annexures TPC-9 to TPC-15. It appears from those searches that, as at May 2022: (a) there was an orthopaedic surgery practice conducted under the name "Sydney Bone and Joint Clinic" in New South Wales (Annexure TPC-10, p 78; Annexure TPC-11, p 80). I note that this corresponds to a business name registered in July 2018; (b) there was an orthopaedic surgery practice conducted under the name "St Vincent's Bone & Joint" in New South Wales (Annexure TPC-14, pp 102-106); (c) there was an orthopaedic surgery practice conducted under the name "Victorian Bone + Joint Specialists" in Victoria (Annexure TPC-14, pp 107-114). I note that this corresponds to a business name registered in February 2020; (d) there was an orthopaedic surgery practice conducted under the name "The Gold Coast Centre for Bone & Joint Surgery" in Queensland (Annexure TPC-14, pp 115-116). I note that this corresponds to a company name registered in November 2018; (e) there was an orthopaedic surgery practice conducted under the name "Bone + Joint Clinic" in Queensland (Annexure TPC-14, pp 117-121); (f) there was a medical practice conducted under the name "BJC Health" in New South Wales (Annexure TPC-15, pp 123-127). The website stated that the clinic began in 2002 as a multidisciplinary clinic targeting musculoskeletal disease and was named "The Bone & Joint Clinic". The website stated that the clinic was renamed "BJC Health" in October 2009. I note that the earlier name (The Bone & Joint Clinic) corresponds with a company name registered in January 2002; (g) there was an orthopaedic surgery practice conducted under the name "Central Coast Bone and Joint" in New South Wales (Annexure TPC-15, pp 128-134); and (h) there was an orthopaedic surgery practice conducted under the name "North Shore Bone and Joint" in New South Wales (Annexure TPC-15, pp 135-136). 82 Mr Creedon also conducted searches of the Wayback Machines to obtain copies of web pages at earlier points in time: see paragraph 13 of his affidavit and Annexures TPC-16 to TPC-19. This material is subject to a limited use ruling, namely that its use is limited to proof of the contents of the Wayback Machine website and not the truth of that content. It is not necessary for present purposes to refer to that material. 83 Mr Creedon's affidavit also deals with a search he conducted in May 2022 on the Australian Trade Mark Search for the terms "bone joint". The search yielded 34 results, which are set out in Annexure TPC-20. This annexure shows attempts to register the words "The Bone and Joint Clinic" (Application No. 961555 filed on 14 July 2003) (Annexure TPC-20, p 214) and "Sydney Bone and Joint Clinic" (Application No. 2129431 filed on 18 October 2020) (Annexure TPC-20, p 225). Each of those applications lapsed. Applicable principles 84 The critical provisions for present purposes are ss 33 and 41. Section 33 relevantly provides (and provided at all relevant times): 33 Application accepted or rejected (1) The Registrar must, after the examination, accept the application unless he or she is satisfied that: (a) the application has not been made in accordance with this Act; or (b) there are grounds under this Act for rejecting it. Note: For this Act see section 6. (2) The Registrar may accept the application subject to conditions or limitations. Note: For limitations see section 6. (3) If the Registrar is satisfied that: (a) the application has not been made in accordance with this Act; or (b) there are grounds under this Act for rejecting it; the Registrar must reject the application. Note: For this Act see section 6. 85 The presumption of registrability set out in s 33 was discussed by a Full Court of this Court in Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; 93 FCR 365 at [24], [47] per French J (Tamberlin J agreeing at [104]); see also Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519 (Sports Warehouse) at [26] per Kenny J. 86 Section 41 (as it currently stands and stood at the relevant times) has been set out in the Introduction to these reasons. The section took this form following amendments made by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the Raising the Bar Act). In order to provide context for the discussion that follows, it may be helpful to set out the previous version of s 41. Before the amendments brought about by the Raising the Bar Act (as at, eg, 21 December 2011), s 41 provided in part: 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. Note: For goods of a person and services of a person see section 6. (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. Note 1: For goods of a person and services of a person see section 6. … (6) If the Registrar finds that the trade mark is not to any extent 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. … 87 The reasons for the amendments to s 41 effected by the Raising the Bar Act were explained in the explanatory memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth), pp 145-147. In brief, the amendments were to clarify that the presumption of registrability applies to s 41. The explanatory memorandum also included the following statement (at pp 146-147): The amendments are not meant to alter the key concepts of 'inherently adapted to distinguish', 'capable of distinguishing', and 'does or will distinguish'. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant's good or services from others. In particular, the amendments are intended to preserve the three existing categories of trade mark, based on the degree to which they are inherently adapted to distinguish: • Trade marks that are sufficiently inherently adapted to distinguish on their own would not fall within either the new subsection (3) or (4) and could not be rejected under section 41. Consistent with the existing subsection 41(3), the Registrar would accept such marks without consideration of use, intended use or other circumstances, as these marks are capable of distinguishing due to their intrinsic characteristics. • Trade marks that are to some extent inherently adapted to distinguish, but are not sufficiently inherently adapted to distinguish on their own will be rejected under the new subsection (4) if consideration of the combined criteria in subparagraphs (i) to (iii) shows that the mark does not or will not distinguish. Consistent with the existing subsection 41(5), the combination of their (limited) inherent adaptation considered with the use, intended use or other circumstances may bring a mark outside the new subsection (4): the Registrar would then accept the mark. • Trade marks that are not to any extent inherently adapted to distinguish will be rejected under new subsection (3) if the pre-filing date use of the mark (if any) does not show that the mark was in fact distinctive at the date of filing. Consistent with the existing s 41(6), overwhelming pre-filing date use of the mark may show that it is factually distinctive at filing: the Registrar would then accept the mark. 88 In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 (Goodman Fielder), Burley J stated at [209] that, despite quite different language, the practical operation of the new s 41 is similar to the old. 89 The leading authority on the meaning of the key concepts in s 41 is the judgment of the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 (Cantarella). Although the judgment concerned s 41 as it stood before the amendments brought about by the Raising the Bar Act (see Cantarella at [19], fn 20), both parties to the present case proceeded on the basis that the principles stated by the majority (French CJ, Hayne, Crennan and Kiefel JJ) are equally applicable to the present form of the section. 90 The issue before the High Court in Cantarella was whether two trade marks – ORO and CINQUE STELLE – that had been registered in respect of coffee and related products were liable to cancellation on the ground that they were not inherently adapted to distinguish the designated goods for which they had been registered from the goods of other persons. The primary judge found that an Italian speaker would appreciate that "oro" signifies some connection with gold and that "cinque stelle" signifies five stars: Cantarella at [4]. The High Court, by a majority (French CJ, Hayne, Crennan and Kiefel JJ; Gageler J dissenting), held that the words ORO and CINQUE STELLE were "inherently adapted to distinguish" the designated goods for which they had been registered from the goods of other persons and, therefore, the trade marks were not liable to cancellation: at [7], [73], [78]. 91 The High Court majority discussed the history of the concept of "inherently adapted to distinguish", referring (at [25]) to s 26 of the Trade Marks Act 1955 (Cth) and setting out (at [26]) a passage from the judgment of Kitto J in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; 111 CLR 511 at 514 in respect of that section. In the course of discussing relevant authorities in relation to foreign words, the majority in Cantarella referred (at [47]) to the judgment of Dixon J in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 (Howard). In that case, Dixon J stated what was required for a word to qualify as an invented word. Citing Lord Macnaghten in Eastman Photographic Materials Co Ltd v Comptroller-General of Patents, Designs and Trade Marks (Solio Case) [1898] AC 571, Dixon J stated (at 181) that although a word should be: substantially different from any word in ordinary and common use … [it] need not be wholly meaningless and it is not a disqualification 'that it may be traced to a foreign source or that it may contain a covert and skilful allusion to the character or quality of the goods.' (Emphasis added.) 92 Having set out that passage, the majority in Cantarella discussed words containing a reference to goods at [50]-[52]. Their Honours commenced this section of their reasons by stating at [50]: The practical difference between a word making some "covert and skilful allusion" to the goods (prima facie registrable) and a word having a "direct reference" to goods (prima facie not registrable) is well illustrated in two Australian cases decided under the 1905 Act. Understanding the distinction is the key to resolving this appeal. 93 The majority in Cantarella then discussed Howard and Mark Foy's Ltd v Davies Co-operative & Co Ltd [1956] HCA 41; 95 CLR 190. 94 The majority in Cantarella then discussed the provenance of s 41(3) (as it stood at the relevant times for that case). Their discussion included: 57 In Clark Equipment, Kitto J considered for the purposes of registration in Pt B the word "Michigan", which had acquired distinctiveness through twenty years of use in respect of the applicant's goods despite the fact that it was a geographical name of a State in America. After approving Lord Parker's test in Du Cros and Hamilton LJ's observation in R J Lea, his Honour explained that directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly because use of them as trade marks will rarely eclipse their "primary" (that is, ordinary) signification. Such a word, his Honour said, "is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods". Traders may legitimately want to use such words in connection with their goods because of the reference they are "inherently adapted to make" to those goods. Kitto J's elaboration of the principle, derived from Lord Parker's speech in Du Cros, applies with as much force to directly descriptive words as it does to words which are, according to their ordinary signification, geographical names. 58 In Burger King, Gibbs J applied Kitto J's test to a directly descriptive word when his Honour declined to find "WHOPPER" registrable in Pt B in respect of hamburgers. His Honour explained that "whopper" is not "inherently adapted" to distinguish hamburgers because it is an ordinary English word, apt to describe a characteristic of hamburgers, namely their size, and moreover could be used in a laudatory sense. It is because of the ordinary signification or meaning of the word "whopper" to anyone concerned with hamburgers that a rival trader might, without improper motive, desire to use "whopper" to describe that trader's hamburgers. 59 The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the "ordinary signification" of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a "direct reference" to the relevant goods (prima facie not registrable) or makes a "covert and skilful allusion" to the relevant goods (prima facie registrable). When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, "inherent adaption to distinguish" requires examination of the word itself, in the context of its proposed application to particular goods in Australia. (Footnotes omitted; emphasis added.) 95 After referring to the submissions of the parties in the case, the majority in Cantarella stated: 70 In accordance with the principles established in Mark Foy's and restated in Clark Equipment, Faulding and Burger King, determining whether a trade mark is "inherently adapted to distinguish", as required by s 41(3), requires consideration of the "ordinary signification" of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied. 71 As shown by the authorities in this Court, the consideration of the "ordinary signification" of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has "direct" reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the "ordinary signification" of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish. (Footnotes omitted; emphasis added.) 96 The following passage from the judgment in Yates J in Apple (expressed in the context of the pre-Raising the Bar version of s 41) assists in framing the issue of "inherently adapted to distinguish". His Honour stated at [11]: What does it mean to say that a trade mark is inherently adapted to distinguish the goods or services of one person from the goods or services of another? The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade. 97 In Goodman Fielder, Burley J stated at [220]: The descriptive capacity of words and their capability to distinguish the goods of one person from those of others will vary, depending on the circumstances. The decision whether a mark is inherently adapted to distinguish "requires a practical evaluative judgment about the effect of the relevant mark in the real world": Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494; 56 IPR 30; [2002] FCAFC 273 at [47] (per French J). Consideration 98 The contentions of MBJC have been summarised in the Introduction to these reasons. In summary, as there set out: (a) First, MBJC contends that the trade mark is sufficiently inherently adapted to distinguish, such that it is entitled to registration without needing to consider evidence of use or other circumstances under s 41(3) or 41(4). (b) In the alternative, MBJC contends that the trade mark is, to some extent, inherently adapted to distinguish, and therefore one is in the territory of s 41(4) rather than s 41(3). MBJC contends that its evidence satisfies the requirements of s 41(4) to qualify for registration. (c) In the further alternative, if the trade mark is not to any extent inherently adapted to distinguish, and one is therefore in the territory of s 41(3), MBJC submits that its evidence satisfies the requirements of s 41(3) to qualify for registration. 99 The ultimate question is whether the trade mark is not capable of distinguishing MBJC's services in respect of which the trade mark is sought to be registered: s 41(1). 100 Section 41(2) provides that a trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either s 41(3) or (4) applies to the trade mark. 101 I will consider the ordinary signification of the trade mark, then whether it has a direct reference to the services, then the topic of other traders. I will then return to the issues raised by MBJC's contentions. Ordinary signification 102 Consistently with Cantarella at [59], I start by considering the ordinary signification (or ordinary meaning) of the trade mark (a word mark). 103 The ordinary signification is to be determined from the perspective of persons who are concerned with the services to which the trade mark is to be applied (who may be referred to as the target audience): see Cantarella at [70]. It is apparent from the facts and matters set out above that the persons concerned with the relevant services are not only referrers of patients (GPs, physiotherapists and other orthopaedic surgeons), but also patients and potential patients who need, or may need, orthopaedic services. In his oral evidence, Dr Jain referred to patients considering the trade mark a very attractive name (see [37] above). As set out at [66] above, the results of the Survey showed that approximately 18% of respondents said that they had heard about the practice through a friend or relative. 104 BJC submits that: the ordinary signification which the Court must assess is that of the trade mark as a whole; any phrase, however striking and distinctive, must be made up of words some or all of which may be commonplace and familiar; but the question is not answered by considering them one-by-one, finding each to have an ordinary signification, and applying that conclusion to the whole; the question is whether, as a conjoint phrase, they in combination have an ordinary signification and if so what it is. While I accept that one must consider the trade mark as a whole, it remains necessary to consider the ordinary signification of the words in order to assess the ordinary signification of the phrase. 105 MBJC submits that: the evidence demonstrates that neither the whole phrase nor the "bone and joint" element is the ordinary way to refer to the types of services in question; that would be "orthopaedic surgery"; that is in contrast to a phrase like "ear, nose and throat", where that is the universally used phrase to designate that medical speciality and where in almost every hospital in Australia one would see a signboard directing patients to the Ear, Nose and Throat Department; there is no established practice of using the phrase "bone and joint" in that way; rather, the phrase is MBJC's own invention, not absolutely without precedent but thought of by Dr Jain without any reference to prior uses and after noting that other providers were using combinations of "orthopaedic" and "sports medicine". 106 MBJC submits that the trade mark therefore demonstrates the type of perceptible difference to the phrase commonly used that was identified by the Court of Justice of the European Union in Procter & Gamble v OHIM, ECJ Case No. C-383/99 (5 April 2001) (BABY-DRY). See also Philip Morris Products SA v British American Tobacco (Brands) Limited [2013] ATMO 22 (24 April 2013) (Click & Roll). MBJC submits that MELBOURNE BONE AND JOINT CLINIC is a similar syntactical juxtaposition of words and not a familiar expression in the English language. 107 I do not accept these submissions. 108 The word "Melbourne" is a geographical word and refers to the capital of the State of Victoria, Australia. The ordinary meaning of "clinic" is an establishment associated with the provision of medical services; it would be understood in this way by persons concerned with the relevant services. The words "bone" and "joint" are ordinary English words that refer to, and would be understood by persons concerned with the relevant services to refer to, parts of a patient's body. Assessed from the perspective of persons concerned with the relevant services, the ordinary signification of the phrase MELBOURNE BONE AND JOINT CLINIC is an establishment in Melbourne for the provision of medical services relating to a patient's bones and joints. Direct reference to the services 109 I next consider whether the trade mark, with that ordinary signification, has a direct reference to the services to be provided. In my view, the phrase MELBOURNE BONE AND JOINT CLINIC does have a direct reference to the services to be provided. The phrase is directly descriptive of the services, or directly refers to a quality or characteristic of the services. The MBJ Clinic provides services relating to bones and joints. As such, there is a probability of persons concerned with the relevant services understanding the words MELBOURNE BONE AND JOINT CLINIC as describing or indicating or calling to mind either the nature of the services or some attribute they possess. As such, the trade mark is not a "covert or skilful allusion" to the character or quality of the services being provided. 110 It may be accepted that, as Dr Jain indicated in his oral evidence (see [37] above), the words "bone and joint" do not describe all of the services covered by the term orthopaedics. (The Macquarie Dictionary (online edition, accessed December 2023) defines "orthopaedics" as meaning "the correction or cure of deformities and diseases of the spine, bones, joints, muscles, or other parts of the skeletal system".) Nevertheless, the words "bone and joint" describe some of the services covered by that term. 111 I note that, in his statutory declaration dated 7 April 2020, Dr Jain stated that, although orthopaedics is the medical term for the medical specialty services offered, the words "bone and joint" have been "far easier for patients to understand" (see [40] above). This tends to confirm that the trade mark is directly descriptive of the services to be provided. 112 I note also Dr Jain's evidence that he was "surprised" that (as he understood the position) no one else was using the words "bone and joint" to describe a clinic in Australia in 2014 (see [36], and [37] above). Whether or not he was correct (it appears that he was not), I infer that Dr Jain's surprise was because he considered the words "bone and joint" to be descriptive of the services to be provided (orthopaedic services). He was therefore surprised that no other practitioner had chosen to use those words to describe such services. Other traders 113 I now consider whether other traders have a legitimate desire to use the trade mark, or some mark nearly resembling it, in connection with their own services: Cantarella at [59]; Registrar of Trade Marks v W&G Du Cros Ltd [1913] AC 624 at 634-635. The evidence set out at [79] above indicates that, prior to the filing date, other traders had registered company names and business names including "bone and joint" in conjunction with "clinic" or otherwise apparently referable to medical services. This suggests that other traders would have a legitimate desire to use the trade mark, or some mark nearly resembling it, in connection with their own services (albeit the registration of a company name or a business name does not of itself establish that a business was conducted under that name). Further, the evidence set out at [81] above indicates that, as at May 2022, there were a number of other orthopaedic surgery practices operating under a name that included "bone and joint". While this is after the filing date, it nevertheless provides a basis to infer that, as at the filing date, other traders would have a legitimate desire to use the trade mark, or some mark nearly resembling it, in connection with their own services: see Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; 180 FCR 60 at [54] per Sundberg J; see also Sports Warehouse at [102]. However, consistently with the authorities just cited, I give the evidence after the filing date limited weight. Is the trade mark not capable of distinguishing the applicant's services? 114 As noted above, the ultimate question is whether the trade mark is not capable of distinguishing MBJC's services in respect of which the trade mark is sought to be registered. 115 MBJC's first contention is that the trade mark is sufficiently inherently adapted to distinguish, such that it is entitled to registration without needing to consider evidence of use or other circumstances under s 41(3) or 41(4). In light of the matters discussed above, I reject that contention. The trade mark, in its ordinary signification, is directly descriptive of the services to be provided. 116 The next question is whether the trade mark is to any extent inherently adapted to distinguish the designated services from the services of other persons. This will determine whether one is in the territory of s 41(3) or 41(4). 117 MBJC submits that: both the language of s 41 and the judgment of the High Court in Cantarella confine s 41(3) to a very small group of trade marks absolutely lacking any distinctive character; that view is supported by a number of decisions of the Registrar's delegates in past cases referring to a composite phrase linking together a number of different words in a particular sequence as having "a scintilla of distinctiveness" and so being eligible to be considered under s 41(4). 118 MBJC submits that: the argument based on the language of the section turns upon the phrase "not to any extent" in s 41(3), and the contrast with "to some extent" in s 41(4); it may be accepted for present purposes that there will be a spectrum of degrees of distinctiveness displayed by different trade marks; the section however establishes the absolute requirement that the mark in question must display none at all; 'just a bit' is enough to move the mark to s 41(4); the Registrar has applied s 41(3) as if it read "is not to a sufficient extent inherently adapted to distinguish." 119 MBJC submits that: s 41(3) is limited to cases where the ordinary signification of the mark is used directly to describe the services; except where the mark is the ordinary phrase regularly used to describe them ("orthopaedic surgery", "sports medicine", "ear, nose and throat") that must be a comparatively rare event. MBJC submits that "bone and joint", for the relevant services, particularly when combined with "Melbourne" and "clinic", should be considered to be a mark that is to some extent inherently adapted to distinguish and to fall outside s 41(3). 120 I do not accept these submissions. In my view, the trade mark is not to any extent inherently adapted to distinguish the designated services from the services of other persons. For the reasons set out above, the trade mark, in its ordinary signification, is directly descriptive of the services to be provided. Further, there is some basis to infer that, as at the filing date, other traders would have a legitimate desire to use the trade mark, or some mark nearly resembling it, in connection with their own services. I do not consider the combination of the words "bone" and "joint", or the combination of those words with "Melbourne" and "clinic" to give rise to any inherent adaptation to distinguish. Even when combined, the words are descriptive of the services to be provided. While MBJC has referred to cases where combinations of words have been held to be to some extent inherently adapted to distinguish, each case turns on its own facts and the words used. I therefore consider that the trade mark is not to any extent inherently adapted to distinguish. One is therefore in the territory of s 41(3) rather than s 41(4). 121 The next question is whether s 41(3) applies. Section 41(3) will apply if MBJC has not used the trade mark before the filing date for the application (12 March 2020) to such an extent that the trade mark does in fact distinguish the designated services as being those of MBJC (see s 41(3)(b)). The relevant facts and matters have been set out earlier in these reasons, under the heading "Factual findings". I put to one side for present purposes, facts and matters relating to after the filing date. 122 In my view, there are two features of the use of the words MELBOURNE BONE AND JOINT CLINIC before the filing date that tend to diminish the extent to which use of those words distinguished the designated services as those of MBJC (or the MBJ Clinic). 123 The first is that, in many cases, the words MELBOURNE BONE AND JOINT CLINIC were used in conjunction with Dr Jain's name and/or promotion of Dr Jain. This was in circumstances where, at all relevant times, Dr Jain was the only doctor providing services at the MBJ Clinic. For example, in the letterhead in use from October 2014 to December 2018 (see, eg [47] above), Dr Jain's name was more prominent than the words MELBOURNE BONE AND JOINT CLINIC, which appeared in small font just above the address. Other examples are the letter of introduction set out at [69] above and the promotional flyers described at [70] and [71] above. The (understandable) focus on Dr Jain tended to diminish the extent to which the use of the words MELBOURNE BONE AND JOINT CLINIC distinguished the designated services as those of MBJC (or the MBJ Clinic). 124 The second is that, in some cases, the words MELBOURNE BONE AND JOINT CLINIC were used as part as the MBJ Logo: see, for example, [48] and [54] above. This is likely to have diminished the extent to which the word mark (alone) distinguished the designated services as those of MBJC (or the MBJ Clinic). 125 Having regard to these matters and the facts and matters generally, I consider that MBJC has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated services as being those of MBJC (or the MBJ Clinic). 126 In light of this conclusion, it is unnecessary to consider the complication that the orthopaedic surgery services were in fact provided by Dr Jain rather than by MBJC. 127 It follows that s 41(3) applies, with the consequence that the trade mark is taken not to be capable of distinguishing the designated services from the services of other persons. The ground of rejection in s 41 is therefore made out. Conclusion 128 For these reasons, I conclude that the appeal is to be dismissed. There is no apparent reason why costs should not follow the event. I will therefore also make an order that MBJC pay the Registrar's costs of the proceeding. I certify that the preceding one hundred and twenty-eight (128) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Moshinsky. Associate: Dated: 7 February 2024