Ramsay Health Care Investments Pty Limited ("Ramsay") applied under Australian Trade Mark Application No. 1790252 to register the RAMSAY PHARMACY trade mark in respect of retailing services in Class 35 and pharmacy services in Class 44.
The Examiner raised objections under sections 41 and 44 of the Trade Marks Act 1995 (Cth) to this application. The objection under section 41 was based on the term RAMSAY being a geographic location and a surname. This objection was maintained following four rounds of submissions including evidence of use of the RAMSAY PHARMACY trade mark.
Ramsay applied to be heard on this application.
The main arguments relied on at the hearing by Ramsay and the Delegate's determination on each point were as follows.
Section 41(3) – Geographical Objection
Ramsay contended in response to the geographic objection to its RAMSAY PHARMACY trade mark that the capacity of a geographic trade mark to distinguish will depend on the geographic significance of the location. The more geographically significant, the less likely it is that the geographic trade mark is capable of distinguishing. The same was noted by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 where he referred to trade marks of "prima facie geographic significance" at 514-6. It follows that geographic trade marks of lesser geographic significance are more likely to be capable of distinguishing.
The Delegate withdrew the geographic objection applying this reasoning to the RAMSAY PHARMACY trade mark. RAMSAY refers to a town in Queensland with a population of 310 or an electorate in South Australia comprised of several suburbs but none called RAMSAY. The Delegate determined that the RAMSAY PHARMACY trade mark did not have ordinary geographic significance given the lack of geographic significance of these locations.
Section 41 (4) – Surname Objection
Ramsay argued that the Registrar need conduct a "practical evaluative judgment" (Garrett Electronics Inc [2015] ATMO 48 at [18]) of what the RAMSAY PHARMACY trade mark will signify in response to the surname objection.
The Delegate agreed and took the following factors into consideration to apply section 41(4) to allow for the registration of the RAMSAY PHARMACY trade mark:
- Prior registrations for RAMSAY formative marks in connection with hospital services owned by related entities of Ramsay and the close relationship between hospital services and pharmacy services
- Ramsay's use of the RAMSAY PHARMACY trade mark and reputation in RAMSAY
- The significant barriers to entry for suitably qualified traders of pharmacy services such that RAMSAY is likely to be considered the name of a specific provider (being Ramsay given its reputation) rather than any number of persons with this surname
The RAMSAY PHARMACY Trade Mark has since proceeded to acceptance subject to an endorsement that the provisions of section 41(4) were applied.
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