FEDERAL COURT OF AUSTRALIA
Primary Health Care Limited v Commonwealth of Australia [2016] FCA 313
ORDERS
DATE OF ORDER: |
THE COURT ORDERS THAT:
2. The applicant pay the respondents’ costs as agreed or taxed.
3. Any party wishing to vary the costs order may notify the other party and the Court within 14 days of the date of these orders.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
JAGOT J:
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[191] |
1 The applicant is a company which describes itself as having provided medical centre business management and administration services and administrative support services to general practitioners, medical specialists, physiotherapists, nurses and allied health care workers since 1985, those services having been provided under the name PRIMARY HEALTH CARE since 1994.
2 On 6 October 2009 the applicant applied to register two trade marks for services, one being a word mark PRIMARY HEALTH CARE and the other being a logo as follows:
3 The applications initially related to services within classes 35, 42 and 44 (which includes medical services), but subsequently were confined to class 35, the services being defined in the specifications as:
Class 35: Medical centre business management; medical centre business administration; service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders.
4 These services are referred to as the Services below.
5 The respondents, the Crown in right of the Commonwealth and the Crowns in right of each of the States and Territories, opposed registration of the marks. On 24 September 2014, a delegate of the Registrar of Trade Marks decided that the respondents had established their grounds of opposition under s 43 of the Trade Marks Act 1995 (Cth) (the Act), which deals with trade marks likely to deceive or cause confusion, and did not decide whether the other grounds of opposition (relating to ss 41 and 42 of the Act) were also established (see Commonwealth v Primary Health Care Ltd [2014] ATMO 92; (2014) 108 IPR 610).
6 The applicant appeals against the delegate’s decision in respect of s 43. The respondents, by notice of contention, continue to oppose registration of the trade marks for the Services based on s 41 (trade mark not distinguishing of applicant’s services) and s 42 (use of trade mark contrary to law).
7 I have decided that the respondents have established their grounds of opposition under ss 41, 42 and 43 of the Act, with the consequence that the appeal should be dismissed.
2. STATUTORY PROVISONS AND PRINCIPLES
8 The priority date for the registration of the trade marks is the date on which the applications were filed (s 12 of the Act), 6 October 2009. Section 41 of the Act has been amended since the priority date by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth). Accordingly, these amendments do not apply to the applications. The provisions of the Act before amendment which apply to the applications include:
41 Trade mark not distinguishing applicant’s goods or services
(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
(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 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.
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
9 It is common ground that the appeal right granted by s 56 of the Act involves a hearing de novo (Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 (Jafferjee) at 119 and Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; (2006) 149 FCR 386 at [20] and [22]). It should also be noted that the evidence before me was more extensive than that placed before the delegate of the Registrar. Leaving aside the obligation in a hearing de novo to approach the matter “afresh and without undue concern as to the ratio decidendi of the Registrar”, the difference in evidence necessarily affects the weight which could be given to the decision of the delegate as a “skilled and experienced person” (Jafferjee at 126, Registrar of Trade Marks v Muller [1980] HCA 35; (1980) 144 CLR 37 at 41, Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 93 FCR 365 (Woolworths) at [32] citing, amongst other cases, Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398; (1988) 10 IPR 539 at 545 and Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511 (Apple) at [24]).
10 Subject to some questions about sub-ss 41(4) - (6), it was also common ground that the respondents bear the onus of establishing a ground of opposition (Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 at [14] – [36]). This follows from the obligation imposed by s 55 of the Act that the Registrar must decide to refuse to register the trade mark or to register the trade mark “having regard to the extent (if any) to which any ground on which the application was opposed has been established”. As a result it has been said that if “the matter is in doubt then the application should be accepted” (Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494 (Kenman Kandy) at [22]). Whilst it has also been said that a ground of opposition must be “clearly established”, for the reasons given by Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2000) 186 FCR 519 at [29] – [39] (citing Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 (Pfizer Products) at 606 [21] – [22]), I prefer the view that the civil onus applies in the usual manner. Kenny J also explained at [40] that, in respect of s 41(4) – (6):
there can be no place for any special standard in respect of sub-ss 41(5) or (6), because these provisions place the onus on the applicant for registration, Sports Warehouse, rather than on the opponent. That is, as noted earlier, these provisions require the applicant for registration to “satisfy” the Registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria are met: compare Chocolaterie Guylian [Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60; [2009] FCA 891] at 68-69 [21]. As Branson J said in Blount [Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50] at 56, referring to Rejfek v McElroy [1965] HCA 40; (1965) 112 CLR 517 at 521:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities . . . That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
Under s 41(5), the Registrar must be persuaded by the applicant on the balance of probabilities that the trade mark does or will distinguish, having regard to the considerations in s 41(5)(a). The standard is the same under s 41(6), where the applicant must establish on the balance of probabilities that the mark does distinguish “because of the extent to which the applicant has used the trade mark before the filing date”.
11 It follows that the respondents bear the onus of proving that the marks are not inherently adapted to distinguish the applicant’s Services from the services of others under s 41(3) (it being otherwise presumed that the marks are registrable by reason of s 33 of the Act) but, if that onus is not discharged, the applicant bears the onus of proving that s 41(5) or (6) applies (Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769; (2012) 205 FCR 241 at [32] – [38]).
12 As explained by Yates J in Apple:
[8] If the mark is inherently adapted to distinguish the designated goods or services, the conclusion might be reached that, by reason of that inherent adaptation alone, the mark is capable of distinguishing those goods or services as the applicant’s goods or services. If that decision is reached, the application must be accepted, if there is no other ground to reject it.
[9] However, the extent to which the mark is inherently adapted to distinguish the designated goods or services as the applicant’s goods or services may be uncertain, with the result that one is unable to decide, on that basis alone, whether the mark is capable of achieving that end. In that state of affairs, one turns to consider whether, under s 41(5) of the Act, the mark does or will distinguish the designated goods or services. In that regard, attention is directed to the degree to which the mark is inherently adapted to distinguish, the use or intended use of the mark by the applicant, and “any other circumstances”. The combined effect of these matters must be considered in order to come to a view as to whether the mark does or will, as a matter of fact, distinguish the designated goods or services as the applicant’s goods or services. If the combined effect of these matters results in the affirmative decision that the trade mark does or will so distinguish the designated goods or services, the mark is taken to be capable of distinguishing those goods or services from the goods or services of other persons, and the application must be accepted if there is no other ground to reject it. If the combined effect of these considerations is otherwise, the mark is taken to be not capable of distinguishing the applicant’s goods or services from the goods or services of other persons, and the application must be rejected.
[10] If the mark is not to any extent inherently adapted to distinguish the designated goods or services, then one considers whether, under s 41(6) of the Act, the mark does, as a matter of fact, distinguish the designated goods or services as the applicant’s goods or services. In that regard, attention is directed to the extent of the applicant’s use of the mark before the filing date of the application. If the applicant establishes that, by that use, the trade mark does, as a matter of fact, distinguish the designated goods or services as the applicant’s goods or services, the mark is to be taken to be capable of distinguishing those goods or services from the goods or services of other persons, and the application must be accepted, if there is no other ground to reject it. If, however, the applicant does not establish that fact, the mark is taken to be not capable of distinguishing the applicant’s goods or services from the goods or services of other persons, and the application must be rejected.
13 There was little, if any, dispute between the parties about the relevant principles.
14 Insofar as a trade mark being inherently adapted to distinguish is concerned (the s 41(3) issue on which the respondents bear the onus):
(1) “The question of distinctiveness is primarily one of fact for the trial judge” (Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 at 7).
(2) “The ultimate question in applying this test is whether the mark, considered apart from the effects of registration, is such that by its use the applicant is likely to attain its object of thereby distinguishing its goods from the goods of others…[which] requires a practical evaluative judgment about the effects of the relevant mark in the real world” (Kenman Kandy at [47]).
(3) It is thus relevant to ask whether others “are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their” goods or services (Kenman Kandy at [47], citing FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537 at 555).
(4) Further, inherent adaptability is:
something which depends on the nature of the trade mark itself...and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.
(Kenman Kandy at [47], citing Burger King Corp v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 424.) It has been said that:
[a] trade mark that is inherently adapted to distinguish goods is one that can “do the job of distinguishing without first educating the public that it is a trade mark.”
(Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 at [59], citing with approval British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 306. See also Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968; (2004) 209 ALR 93 (Austereo) at [48]). That a trade mark inherently adapted to distinguish must be “instantly adapted to distinguish” is necessary:
because otherwise it would be enlisting registration itself, as an aid in making a mark actually distinctive, and so preventing partly by statutory assistance other traders from using the mark if they so desired.
(Thompson v B Seppelt & Sons Ltd [1925] HCA 40; (1925) 37 CLR 305 at 312.)
(5) Thus, it “is insufficient that the mark may have the potential or capacity to acquire [a distinctive character] in the future” (Austereo at [30], cited with approval in Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; (2006) 154 FCR 165 (Unilever Australia)). It also follows that:
The more apt the word or expression is to describe the goods, the less it is inherently apt to distinguish them as the goods of a particular manufacturer (Clark Equipment at 515 [Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511]). The setting or context in which the use occurs is relevant in determining whether the use is descriptive or for the purpose of indicating a connection in the course of trade between the product and the trade mark applicant, as a badge of origin (Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 424–5; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 350–1).
(Unilever Australia at [31]).
(6) The test for a word directly referring to the character or quality of the good or service has been said to involve the:
probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.
(Mark Foy’s Ltd v Davies Co-operative & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 at 195.)
(7) As summarised by Yates J in Apple at [11]:
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.
It goes without saying that it is the distinctiveness of an applicant’s mark in relation to the goods or services for which registration is sought that is relevant (Apple at [14]). In addition:
The descriptive capacity of words and their capability to distinguish the goods or services of one person from those of others will vary, depending on occasion and circumstance.
(Apple at [16])
(8) Accordingly, Kitto J’s reference to “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” in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (Clark Equipment) at 514 was explained as follows in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110; (2013) 215 FCR 16 at [84]:
The expressions “the common right of the public” and “common heritage” employed by Kitto J in Clark Equipment are fluid and their content will vary according to the particular case. It seems to us that they refer to the knowledge base, primarily, of the traders in the particular goods and services, for it is the question of their likely use of the mark which is to be considered, although as we have already observed, it may extend to potential consumers.
As was put in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; (2014) 254 CLR 337 (Cantarella [2014] HCA 48) at [59]:
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).
At [44] the majority (French CJ, Hayne, Crennan and Kiefel JJ) said:
The requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business (Lord Parker), and from the wider point of view of the public (Hamilton LJ), has been applied to words proposed as trade marks for at least a century, irrespective of whether the words are English or foreign. The requirement has been adopted in numerous decisions of this Court dealing with words as trade marks under the 1905 Act and the 1955 Act. Those decisions show that assessing the distinctiveness of a word commonly calls for an inquiry into the word’s ordinary signification and whether or not it has acquired a secondary meaning.
Their Honours concluded at [70] – [71] that:
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.
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.
(9) A related principle is that:
The registrability of a mark, including whether it is capable of distinguishing the applicant’s goods or services from the goods or services of others, must be assessed by reference to the scope of the registration that is sought.
(Apple at [17]). It follows that for a word mark without any accompanying stylistic devices, if registered, the monopoly is over use of the word(s) in respect of the goods or services (Apple at [18]). Further, the applicant’s actual use of the word is not the touchstone as, if registered, the monopoly extends to any use of the word(s) in respect of all of the services the subject of the specification (Apple at [19] – [21]).
15 Insofar as a trade mark being capable of distinguishing goods or services is concerned (the s 41(5) and (6) issue on which the applicant bears the onus):
(1) “…common sense suggests that significant promotion and use of a trade mark amongst people concerned with the relevant market will have a tendency to enhance, rather than diminish, the trade mark’s capacity to distinguish the goods in respect of which it is used from the goods of others. Certainly, the absence of evidence of promotion and use is likely to assume significance where distinctiveness resulting from use is in issue” (Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 (Blount) at 61 – 62).
(2) “A trade mark with a very low level of inherent adaptation to distinguish will require correspondingly high levels of use as a trade mark and other circumstances in order to permit registration (Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51). For common, descriptive or laudatory words, even extensive use is unlikely to be sufficient (Re Ocean Spray Cranberries Inc (1999) 46 IPR 601 at [24])” (Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; (2013) 299 ALR 752 (Cantarella [2013] FCA 8) at [107]).
(3) “The question to be considered under s 41(6) is whether the applicant has established 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 as being those of the applicant” (Blount at 60).
16 Insofar as use of a trade mark would be contrary to law is concerned (the s 42 issue, on which the respondents bear the onus), the respondents rely on s 18 of the Australian Consumer Law as set out in Sch 2 to the Competition and Consumer Act 2010 (Cth) (asserting that the use of the trade marks is likely to be misleading or deceptive). The issue is to be considered as at the priority date, albeit looking “forward to prospective conduct after registration was effected” (Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51 at [47]). Further, the requirement is that the use would, not might, be contrary to law (Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554; (2015) 112 IPR 494 (Accor Australia) at [257]).
17 Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):
(1) The section:
looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion…
(Woolworths at [79]).
(2) “In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582 at [26]).
(3) The purpose of s 43:
is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks…
(Pfizer Products at [53]).
(4) “Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).
(5) “The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).
(6) “In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating…at 595, per Kitto J” (Accor Australia at [269]).
(7) All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).
(8) The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595).
3. THE SCOPE OF THE REGISTRATION
18 There is a fundamental difference between the parties about the nature of the Services and thus the scope of the registration sought.
19 The specifications considered by the delegate are set out above. Although the respondents’ arguments about problems with the scope of the specifications had been made clear from the outset, it was not until the last day of the hearing, when I raised the same issues, that the applicant proposed that the specifications be amended. I gave the applicant leave to file a document showing the proposed amendments after the hearing and the respondents leave to file further submissions in answer. As a result, I propose to deal with the specifications as relied upon throughout the hearing before I consider the proposed amendments.
20 The applicant contends that it provides the Services to medical professionals only. The respondent contends that, irrespective of the business model the applicant has adopted (discussed below), either all of the Services, or some of them, are provided both to medical professionals and to others (such as patients and others who deal with medical professionals in the Australian health care system) or, at the least, those others are “concerned with” the Services in the sense described in Cantarella [2014] HCA 48 at [71]. Putting it another way, also as discussed in Cantarella [2014] HCA 48 at [71], who is the “target audience” of the use of the trade marks in respect of the Services?
21 The use the applicant has made of the trade marks is also relevant to the operation of s 41. The dispute extends to the nature and extent of that use and not just the scope of the registration (or the use which fairly and reasonably could be made of the marks in respect of the Services if the marks are registered). As such, it is convenient to identify the different approaches which are apparent from the competing submissions of the parties.
22 As noted above, the applicant described itself as having provided since 1985:
medical centre business management and administration services, and administrative support services to general practitioners, medical specialists, physiotherapists, nurses and allied health care workers…
23 It said it had done so under the marks, including as part of its corporate name, since 1994. According to the applicant:
the words [primary health care] when used as a name are not apt to describe the nature of the Services Primary Health Care provides to health care professionals; the Services are managerial and administrative in nature. At most, when used in connexion with the provision of Services to health care professionals it is a covert and skilful allusion to the nature of the services offered by those health care professionals…
24 According to the applicant, the delegate erred in refusing registration under s 43 of the Act (marks would be likely to deceive or cause confusion) because he considered use in relation to services in class 44 and did not limit his consideration to use within class 35. As noted above, class 35 services include “advertising; business management; business administration; office functions”. Class 44 services include, relevantly, “medical services”. As a result the delegate is said to have considered the perception of patients of health care professionals attending medical centres, which is outside the scope of the Services.
25 In this regard, the applicant noted that Dr Bateman established a medical centre in 1985. Dr Bateman also provided administrative and management support services to the health professionals (mostly, but not exclusively, general practitioners or “GPs”) who practised in the centre. These health professionals were not employed by Dr Bateman or the centre. They contracted to practice from the centre for a period and, in so doing, also contracted to be provided with, amongst other things cleaning and maintenance, administrative and management support services. In exchange, the contracting entity (not the applicant which had not yet been incorporated) took a percentage from the fees paid to the health professional.
26 The applicant was incorporated in 1994 and became Primary Health Care Limited when it listed on the Australian Stock Exchange in 1998. According to the applicant what it describes as its “medical centre division” operates as follows:
a) Primary Health Care identifies and leases a site and makes the premises suitable to house a medical practice;
b) Primary Health Care identifies suitable health care professionals and enters into service contracts with them. Pursuant to these contracts, health care professionals conduct their practices from the medical centre and Primary Health Care provides them with, inter alia, consultation rooms and Services such as reception, telephone and secretarial services, billing and invoicing their patients, book-keeping, accounting, information technology and property management services;
c) Primary Health Care only provides its Services to health care professionals pursuant to service agreements with those persons;
d) each health care professional then pays Primary Health Care a percentage of the gross income they generate from their practice; and
e) the health care professionals are Primary Health Care’s customers, not its employees.
27 It is convenient for me to note here that, in fact, and as the evidence discloses, the applicant ensures that the medical centre is fully equipped and supplied, provides all staff (including nurses, receptionists, and the like), and performs other functions as well including ensuring that the centre is properly cleaned and maintained and complies with all health and safety requirements (which I infer would apply). In other words, as far as the evidence discloses, the applicant does everything necessary to provide and operate a medical centre, including recruiting GPs to practice from the centre. The only thing the applicant does not do and is not responsible for is the provision of the clinical care which the contracting GPs provide to patients who attend the centre. As the applicant submitted:
the reason why corporate service providers, like Primary Health Care Ltd, use generic branding for the medical centres they service is pragmatic; the service provider does not want to hold themselves out as providing medical care to patients because, as Mr Bateman put it, “we don’t want the liability attached to that … and doctors don’t want us to be involved in their practice to that extent.”
28 These facts are important to the resolution of all aspects of the disputes between the parties. So too is the fact that, as will be apparent, the Services are but one part of the applicant’s overall activities which enable the operation of its medical centres. As such, it is not the case that any GP “purchases” the Services from the applicant. No GP can do so. A GP can enter into a contract with a subsidiary of the applicant in which the GP agrees to practice from one of the applicant’s fully equipped, staffed and supplied medical centres at which a range of services will be available to the GP, including but not limited to the Services, in exchange for a fee which is calculated as a percentage of the fees banked by the GP as a result of the GP’s practice.
29 These facts should be kept in mind when considering the applicant’s case which refers to the applicant providing health professionals with the Services.
30 The applicant contended that the brand “Primary Health Care” is used both as an umbrella brand for the whole of the business and as a brand by the medical centre division. The brand is used to market the Services to health professionals and within the medical centres but, as the applicant conducts itself, is said to be “not generally visible to members of the public attending the centres for consultations with health care professionals”. The applicant describes this as “consistent with the bounds of the Services”, subject to some minor exceptions. The exceptions are that in three medical centres the word combination “primary health care” appears as part of the name of the centre. Otherwise the centres are described by location. There is no reference to the brand on business cards of the health professionals within the centre, nor on any document provided to patients. As the applicant put it, “the brand is not used for what might be described as class 44 services”. Further, the applicant said:
What an applicant may do with a trade mark is not unfettered, rather it is confined by the goods or services in respect of which registration is obtained. The applications in question only cover the Services and do not cover any other goods or services, and in particular do not cover any Class 42 [which includes scientific and technological services] or 44 medical/testing services or related services.
31 The applicant said that at the priority date it was providing the Services to about 1,000 of the nearly 26,000 GPs in Australia, as well as to about 390 other health professionals, and was thus the largest single provider of medical centre management and administration support services (i.e. the Services) in Australia. The Services were provided through the 83 medical centres which the applicant was operating and managing in NSW, Victoria, Queensland, South Australia and the ACT. It also operated 96 laboratories and 773 collection centres in its pathology business and had 159 sites in its diagnostic imaging business, and developed, sold and supported a range of health-related software packages including Medical Director, a leading medical records management program used by clinicians, and PracSoft, a practice management program used by a large proportion of medical practices in Australia, and was ranked in the top 200 companies on the Australian Stock Exchange and had a market capitalisation in excess of $A 1.3 billion.
32 The applicant said that it advertises and promotes itself and its Services to health care professionals under the marks by multiple means and has an extensive marketing budget for this purpose. Further, the marks appear in relation to the applicant’s Services at its medical centres, on materials prescribing how operational functions are to be executed at medical centres, and information technology and training manuals used by staff at medical centres.
33 According to the applicant, the relevant class of persons in connection with the Services are the ordinary run of customers and potential consumers of the Services, being health care professionals. Health care professionals are a specialised market, are well educated and sophisticated, and understand that when the phrase “primary health care” is used in relation to the Services, it means the applicant including its Services. Further, those health care professionals who already receive the Services are aware of the nature of the Services and the fact that they are not the same as the “first level” health care services which those health care professionals provide to the public. Health care professionals who do not already receive the Services must enter into a service agreement before they can do so, and the negotiation process and contractual terms make plain the nature of the Services.
34 The applicant’s main competitors, it noted, are Sonic Health Care, Health Scope Medical Centres, Foundation Health Care, Alpha Health Care, Endeavour Health Care and Immediate Health Care. Both as at the priority date, and today, no other person providing the Services uses the word combination of “primary health care” or the word “primary” in connection with the provision of the Services or similar services.
35 Consistent with this approach, and in answer to the respondents’ case, the applicant observed that all the respondents had done was to “seek to establish that the Trade Marks are not inherently distinctive of medical and health care services (which services are irrelevant)”. The applicant reiterated that:
The claims that the Services of Primary Health Care encompass “services that are an integral part of the provision of primary health care in Australia” are not supported by any of the respondents’ evidence. The Services are business management and administration services, which happen to be delivered to medical practitioners operating in medical centres. It is the medical practitioners who provide medical and health care services by patients. Primary Health Care is not “the first point of contact with the health care system”, the medical practitioners are.
36 Section 41, submitted the applicant, expressly limits consideration of distinctiveness to the “particular goods and services ‘in respect of which the trade mark is sought to be registered’. It does not permit consideration of other goods or services (i.e. the medical services in class 44 which so concern the respondents) in respect of which registration is not sought”. The health care professionals who are the consumers of the Services do not use the phrase “primary health care” to describe the medical centre business management and administrative activities that make up the Services. The Services, it was submitted, are of a “fundamentally different nature and quality” to medical services and involve “fundamentally different customers and purchasers… [and] trade channels”. The distinction, said the applicant, is apparent from the evidence. All medical professionals who gave evidence, and others, recognised that the medical professional alone, not the applicant, provides clinical services to the patient. The administrative and support services which comprise the Services are not part of those clinical services. They are the services which the applicant provides to medical professionals. As a result, the respondent’s submission that the Services are “inextricably bound up with the provision of medical and clinical services” is incorrect. To the contrary:
The “medical centre business management” and “medical centre administration” Services are only able to be provided to health care professionals. The general public cannot purchase “management” and “administration” services in relation to a medical centre.
37 The applicant submitted that other examples supported the fundamental difference between the Services which it offers to health professionals and the clinical services which health professionals offer to patients, being:
(a) some barristers engage bookkeepers to provide services but that does not mean that those bookkeeping services are “inextricably bound up with” the legal services provided by the barrister, nor do they “critically enable” the provision of those legal services;
(b) serviced offices often provide cleaning and receptionist/telephone answering and appointment services, but that does not mean that those back office services form part of the business of the entities that operate from the serviced offices;
(c) tradespeople might employ an accountant to assist with lodging their tax returns with the Tax Office, but that does not mean that the accountancy services form part and parcel of, f [sic] the trade services;
(d) building management companies provide air-conditioning, maintenance, cleaning, security and concierge services to their tenants but this does not mean that they are part and parcel or inextricably bound with the professional services provided by the tenant firms who avail themselves of those premises and building management services;
(e) Mr Bateman provided a further example of the services provided by Westfield to Woolworths. Woolworths supermarkets may retain the premises and building management services of Westfield, but this does not mean that Westfield is providing Woolworths’ supermarket products and services; and
(f) similarly, no one would suggest that Westfield is providing the medical or dental services of the medical and dental centres housed in its premises that also retain Westfield’s building management services.
38 The applicant described the respondents’ case as one unsupported by authority because it depends on the proposition that:
because a mark may be directly descriptive in respect of one class of goods or services in one context, it is necessarily directly descriptive in relation to goods or services that may intersect or co-exist with that class.
39 To the extent a different conclusion was reached, the applicant noted the power under s 65(7) of the Act to amend the designated services so long as the amendments do not have the “effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted” (Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525 at [82], Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373; (2014) 106 IPR 281 at [231]), and submitted that the Court should exercise this power.
40 For their part, the respondents stressed that:
subject to any conditions or limitations that may be imposed on the registration, the rights in a registered mark are not limited to the manner or extent to which the applicant for registration may have used the mark in the past, or asserts that it intends to use the mark, whether that be in a particular geographic area, market or customer sector, or otherwise.
41 As such, the applicant’s past and present business model does not define the scope of the registration. Further, the respondents noted, the word mark is in plain type and accordingly the exclusive rights sought encompass all fonts and forms of the phrase “primary health care”. While the logo mark is a fancy mark in a rectangular label, it is the same ordinary phrase “primary health care” as the word mark together with the corporate identifier “limited” depicted so as to give prominence to the first word “primary”.
42 Against these observations, the respondents submitted that the phrase “primary health care” remains apt to describe medical, health and related services, including the Services. The Services, as the respondents put it, are:
the very means by which medical and allied, associated and community based health care services are able to be provided by primary health care professionals (such as doctors in general practice, practice nurses and other first level health care professionals). In the Australian context, the Services are part and parcel of general practice and the provision of primary health care more generally.
43 The respondents also contended that care was required in the applicant’s description of its activities. In fact, the applicant’s subsidiary Idameneo (No. 123) Pty Ltd (Idameneo) operates the medical centres and provides the Services, it being the contracting party with the health professionals who operate out of the medical centres. As the respondents put it:
The applicant promotes a model of delivery of medical and clinical services including primary health care through the medical centres its subsidiary, Idameneo, operates and the general practitioners and other healthcare professionals Idameneo contracts to provide medical and clinical services at those centres.
44 The applicant does so in the primary health care sector, a fact it acknowledged at the time Dr Bateman, the founder, adopted the name; the explanation for that being that he considered it to be “unique and memorable” and that it “reflected the services that would be available to patients attending the centres”.
45 Thus, in the respondents’ terms:
(1) The “applicant, or, more accurately, Idameneo, participates in the Australian health care system, and more particularly in the primary health care sector, providing medical and clinical care to members of the public. It is disingenuous to say that it (or Idameneo) does not do so because Idameneo does not employ, in the sense of meeting all the indicia relevant to employment law, the contracted medical and any other allied health practitioners…who directly provide medical and clinical care to members of the public without referral through the medical centres operated by Idameneo.”.
(2) “Idameneo’s revenue from its medical centre division is solely dependent upon the provision of medical and clinical care through its medical centres by general practitioners and other medical and any other allied health practitioners who are contracted to it and the receipt of payment for the provision of such care by those practitioners, be it from Medicare or insurers, or directly from patients”.
(3) The “context in which the applicant or Idameneo has provided the Services, or any of them, to medical practitioners is that of primary health care provision in the primary health care sector of the Australian health care system and the provision of the Services is a critical enabler of, and an incident of, the provision of medical care by its contracted medical practitioners”.
46 In support of the third of these propositions the respondents noted that the provision of medical services in Australia invariably requires:
(a) premises at which general practitioners practice and patients attend to consult with them – that is, surgeries, consulting and treatment rooms, medical centres, and that those premises be managed and administered to enable the consultations and resultant treatments;
(b) billing and invoicing of patients – and the receipt of income for the provision of such professional care;
(c) doctors’ receptionists, telephone answering services and administrative support – ensuring that patients present and see doctors in an orderly manner and with their records available and their Medicare and insurance status dealt with appropriately;
(d) the creation, management and maintaining accuracy and currency of patient files – enabling the doctor to be informed and to record the patients’ conditions and treatment, and the patients to have those files (satisfying medico-legal requirements);
(e) prescriptions, referrals, tests (e.g. blood tests), drugs, bandages and salves and the like necessary for patient care and treatment be ordered, received and available;
(f) typing, account-keeping, book-keeping, electronic file management and information management and other practice support.
47 As such, the distinction that the applicant sought to maintain between the provision of clinical services to the public by health professionals and the provision of the Services to health professionals by the applicant (or Idameneo) is misconceived. Whatever the past and current business model of the applicant:
the specification of the Services does not exclude their provision directly or indirectly to members of the public or individuals seeking primary health care, nor to dealings with other participants in the health care system such as government, hospitals, community or allied health professionals, professional organisations and suppliers.
48 Further, to some extent, every member of the public attending a medical centre is a consumer of some aspect of the Services. Moreover, participants in the secondary or tertiary health care sector and other participants in the primary health care sector are “likely to have dealings with medical centre management and administration – including as part of patient treatment”. The Services are thus provided not only to health professionals, but also to their patients and to other participants in the Australian health care system.
49 It follows, the respondents submitted, that if the marks are registered the applicant would be entitled:
to use and authorise the use of the trade marks in a manner visible to at least the following groups with whom it dealt (assuming it dealt in the Services): medical professionals such as general practitioners, specialist and consulting physicians and surgeons, allied health professionals, hospitals (most immediately obviously in dealings with patient files, billing and invoicing), medical products suppliers, government organisations and departments (including Medicare), insurers, professional bodies (such as the AMA), community health organisations and their personnel, and patients.
50 This would include use:
(a) as the name or on the signage of medical centres (as has already occurred in the present case at least at Leichhardt, Bankstown, Castle Hill, Werribee, and Sydney);
(b) on uniforms of staff who interact with patients (as has been the case with the applicant/Idameneo, and is the case with other corporatised medical service providers ); and
(c) on bills and invoices (although not in the case of the applicant / Idameneo),
and use on other indicia identifying practices, premises and personnel, each of which uses present to the above groups, including patients and their families.
51 The respondents also noted that:
similar services can reasonably be contemplated as including (at least) operating general practices, medical and allied health care centres and practices and other health care services, whilst closely related goods will include (at least) patient files and records: see s 14(2) and s 120(2) of the Act.
52 Section 14(2) provides that for the purposes of the Act, services are similar to other services if they are the same as the other services or if they are of the same description as that of the other services. Section 120(2) concerns infringement and provides that a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to services of the same description as that of services in respect of which the trade mark is registered.
53 The applicant’s case is that the Services are all to be provided to health care professionals and are not to include clinical or medical care by those professionals to patients.
54 It may be accepted that health care professionals provide health care services. It may be accepted also that health care professionals carefully guard their clinical independence in the provision of clinical care to patients. As such, they see their clinical care, involving the professional doctor-client relationship in the case of GPs, as one thing and administrative and support services which enable them to provide that clinical care as another. But these matters do not control the scope of the registration.
55 Nor is it possible to control the scope of the registration by defining the services as services to medical professionals, as the applicant has sought to do (an attempt repeated more explicitly in the proposed amendments to the specification, discussed below). This is because the person paying for the services, the medical professional, is not the only person who receives the services or, at the least, is not the only person concerned with the services. The Services include reception and telephone answering services, patient booking services, patient file management services, information management services, billing and invoicing services, computerised file management, and ordering services, all said to be “to medical professionals”.
56 Assume then a member of the public who wishes to see a GP who is contracted to and has a practice located in one of the applicant’s medical centres (leaving aside, for the moment, the issue about Idameneo and how the marks have in fact been used). The patient calls the centre and speaks to a receptionist. On the applicant’s case, in answering the call, the receptionist is providing a service only to the GP the patient might wish to see and not to the patient. This is untenable. The GP who ultimately sees the patient pays for the service but the service cannot be said to be a service to the GP only. It is also a service to the patient, the cost of which is borne by the GP, at least insofar as the GP does not seek to recoup those costs in the consultation fee.
57 Having made the appointment, the receptionist makes a record of it so that the GP can know when the patient is scheduled to arrive. This is a service provided to the GP but, again, it is also a service to the patient. It ensures that a GP is available when the patient arrives. Assume that the receptionist, the day before the appointment, sends the patient a reminder. This is a service to the GP because it avoids late cancellations or patients failing to show up, but it is also a service to the patient reminding them of the time and place of the appointment. When the patient attends the centre, the patient is not greeted by the GP. The patient is greeted by the receptionist. The receptionist may provide a range of services to the GP and to the patient at this point, such as taking the patient’s name and address, Medicare and health cover details or letting the patient know when the GP is likely to be ready. When the patient sees the GP the patient then receives clinical care from the GP. After the patient has seen the GP the patient sees the receptionist again to pay the bill. The receptionist prepares the invoice, a service provided to the GP, but also to the patient who wants to receive the invoice. The receptionist takes the payment. In so doing, the receptionist may arrange for the patient to receive a Medicare or health cover rebate or arrange for the patient to assign the rebate to the GP, leaving the patient to pay the gap, if any, out of pocket. Again, these are services to the GP, but are also services to the patient.
58 The applicant’s receptionist training manual confirms these, and other, matters. For example, the receptionist must have available a list for patients of all specialist services available within the centre (such as radiology, dental, cardiology, physiotherapy etc) and their hours of operation. The function of the applicant and the obligations of the receptionist are described in the manual in this way:
As a service provider to medical professionals and the patients that attend to see those medical professionals, we must present in a professional and welcoming manner.
59 Receptionists are directed to “provide appropriate advice” to any patient who “requires directions”. They are instructed to “complete patient personal details and billing” including asking for the patient’s Medicare and health fund card. Receptionists are instructed about how to deal with emergency calls from a person. They are instructed about the steps that must be taken to deal with a patient who has had an abnormal test result, the objective being to try to ensure that the patient attends the centre to see a doctor. The receptionist must make a detailed file note of the attempt to contact and ensure the patient attends the centre. The receptionist is instructed to remind doctors of the policy that all patients are to be seen in order. They are instructed how to respond to a patient who enquires about the waiting time and how to manage queues of patients. They are instructed about requirements for patients who have claims for workers’ compensation, against Comcare, and against third parties.
60 Reality dictates that the applicant’s attempts to characterise the Services as services provided only to medical professionals cannot be accepted. The attempts reflect a misconception which affects the entirety of the applicant’s case.
61 Another misconception in the applicant’s case is apparent. It is the notion that the applicant is in the business of providing the Services to health professionals. This is inaccurate. The applicant is in the business of operating medical centres to which it recruits GPs and, as part of a much larger set of activities, it also provides the Services to the health professionals who have contracted to work from such a centre. No health professional can simply purchase the Services from the applicant. As part of the applicant’s overall activity, but not otherwise, the applicant provides the Services which of their very nature and in many respects are services to not only the GPs and allied health professionals, but also to members of the public and to others involved in the health system.
62 As noted, the applicant, on the evidence, does not offer any GP or allied health professional the Services in isolation. The applicant, for example, does not offer the Services to every GP or allied health professional. The Services are only available to a GP or allied health professional at the medical centre to which the GP or allied health professional has been recruited. Consistent with this, the applicant does not market the Services per se to GPs and allied health professionals. Rather, it markets to GPs and allied health professionals a form of practice from one of its medical centres. The form of practice is to work from a room in one of the applicant’s medical centres (GPs are recruited to specific centres and must practice from that centre) which will be fully equipped and supplied by the applicant, with all staff and services necessary for the operation of a medical centre being provided by the applicant in exchange for a fee which is calculated as a percentage of the money earned by the GP from providing clinical services to patients.
63 Against this background, I do not accept the attempted characterisation of the applicant as having provided the Services to GPs and health professionals and having done so using the marks to brand the Services. It might be different if, for example, the applicant was in the business of providing the Services to all GPs and health professionals and marketed the Services in that way. But this is not what the applicant does or has ever done.
64 As such, the focus of the applicant’s case is off target and at odds with the evidence. The consequences of this disconnect run through every aspect of the case. First, the Services cannot be considered as if they exist in isolation because that is not how the Services are provided. Second, no matter how often the applicant repeats it, I am unable to accept that the Services are directed only to GPs and health professionals; the public and other participants in the health care sector are provided with some of the Services and are potentially concerned with all of the Services. Third, this in turn affects the question of whether the marks are inherently adapted to distinguish when the Services are provided in and from a medical centre which, as discussed below, involves the quintessential form of primary health care. Fourth, this has led to the proposed amendments which, as discussed below, involve a form of self-negating description of the Services. Fifth, the applicant has tried to establish acquired distinctiveness by use of the marks in respect of the Services when the applicant does not market the Services at all in and of themselves, but markets to GPs and allied health professionals a particular form of practice in which, amongst many other things (including the basic requirements of rooms, equipment, medical supplies, cleaning and maintenance), the applicant also provides the Services.
65 To return to the immediate issue, the reality is that, at least insofar as the Services are concerned, the applicant is providing services to medical professionals within its centres, to patients of those centres, and to all other participants in health care who interact with any medical professional in one of its centres. The fact that the applicant (or Idameneo) receives payment for the provision of the Services directly from the medical professional does not mean that the Services are provided only to the medical professional. Nor does the fact that medical professionals understand that they alone provide clinical or medical services to patients mean that the Services are not provided to patients. The reasoning involved seems to involve a false syllogism: (i) only medical professionals provide clinical services to patients, (ii) the Services are not clinical services, (iii) therefore, the Services are necessarily not services to patients. Propositions (i) and (ii) may be accepted, but they do not lead to proposition (iii).
66 Moreover, the fact that the Services are not clinical services does not mean that they are irrelevant to the provision of clinical services. If the applicant (or Idameneo) did not provide the Services to a medical professional then, in the Australian health care system at least (which is highly regulated), someone else would have to provide those services (including the medical professional personally if they so wished) to enable the clinical services to be provided. Even a medical professional who did not wish to charge for their services would be bound by ethical (and presumably statutory) obligations to ensure that proper records of treatments, prescriptions and referrals are made and maintained. The existence of, and ability to access, those records is very closely related to, indeed part of, the provision of clinical services.
67 While there is a factual dispute between the parties about the extent to which the applicant (or Idameneo) has used the words “Primary Health Care” to brand its medical centres in some way or another (three centres according to the applicant and seven centres according to the respondent), it is not in issue that the applicant’s particular business model involves the marketing to and recruiting of GPs to work from its medical centres. The applicant, in substance, sells to GPs a form of practice. The thrust of the marketing is (and has been) that it may pay GPs for their practice and, for a fee calculated as a percentage from patient billings, will provide them with rooms within a large-scale multi-disciplinary centre from which to work, with all “nurses, receptionists, supervisors, accountants and administrative staff” provided as part of the centre, the patient benefits being identified as accessible health care when needed, no appointments necessary, Medicare services bulk-billed, comprehensive family practice with GP of choice and range of practitioners to choose from, continuity of care with availability of records and service by principal doctors, and “comprehensive one site health care for most services found outside major hospitals”.
68 Contrary to the respondents’ case, I have no doubt that the thrust of the applicant’s marketing has been and is intended to be to GPs and allied health professionals, not to the public. The occasional references to itself in its dealings with the public seem relatively few and far between compared to its continuing activity of recruitment of GPs to its centres. But by focusing on the Services which occur within the medical centres at which patients receive clinical care the applicant has created specifications in which many of the Services are services to more than merely the GP or other health professional, and are indivisible from or integral to the provision of clinical care by the GP or other health professional.
69 Given this, the fact that the applicant does not, as a general rule, brand its medical centres under its corporate name, require its corporate name to be displayed by the staff employed at the centre, or display its corporate name on business cards or other documents produced within the centre does not confine the scope of the registration, if the marks were to be registered. If the marks were registered, the applicant would fairly and reasonably be entitled to the exclusive use of the marks, which include the phrase “primary health care” in any form, in respect of (for example):
patient booking services;
patient records;
unless prohibited by some law about the form an account may take, patient billing services;
interactions with third party suppliers for all supplies required to operate the centre, including medical supplies;
interactions with other participants in the health care sector (e.g. Medicare, specialists, hospitals, and other practitioners) about patient bookings, records and billings; and
all activities carried out by the receptionists, supervisors, accountants and administrative staff which enable the centre to operate.
70 The analogies which the applicant sought to draw do not seem to me to be apt. For example, it is difficult to compare a barrister’s book-keeper with the applicant. A book-keeper does not provide the barrister’s premises and equipment, order the barrister’s supplies or employ the barrister’s receptionist, clerk or the like. The applicant does all these things (or their equivalent) in the context of the health care sector. If the applicant were truly offering mere administrative and office services it would not necessarily provide premises and employ nurses. Yet the provision of premises and employment of staff to assist GPs in providing clinical care at the medical centres are part of the applicant’s business model for recruiting GPs and others to its medical centres. A shopping centre owner such as Westfield leases space to a supermarket such as Woolworths. Westfield does not order produce for Woolworths, bill Woolworths’ customers for their groceries, employ the people at the Woolworths’ checkout, or clean and maintain the Woolworths supermarket or the like. The applicant, however, does all these things in the health care sector context, and more. Accordingly, the analogies make little sense.
71 It follows that, given the terms of the specifications and the nature of the Services, it is not merely the ordinary signification of the words “primary health care” to health professionals in private practice and available for recruitment by the applicant which is relevant. It is the ordinary signification of those words to all health professionals, other participants in the health care system in Australia, and the Australian public who are potential patients at the medical centres which is relevant. To the extent that the applicant’s case depends on the Services being confined to health professionals in private practice who had been or were available to be recruited to one of the applicant’s medical centres, and that therefore such health professionals are the only persons concerned with the Services, the case should not be accepted.
72 On the last day of the hearing, the applicant proposed the following amendments to the specifications (the additions are shown underlined):
Option A
Medical centre business management services to medical professionals; medical centre business administration services to medical professionals; Service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders; none of the aforementioned services being medical care by medical professionals to patients.
73 The addition of the words “to medical professionals” and the exclusion of “medical care by medical professionals to patients” do not change the position as set out above. This is because, as explained, these services are not only to medical professionals; they are services to all those the respondents described, being patients and other participants in the health care system. The fact that the Trade Marks Regulations 1995 (Cth) distinguishes between class 35 and class 44 services does not mean that the Services are services to health professionals alone. Option A thus achieves nothing.
74 After the hearing, and pursuant to leave, the applicant proposed two further amendments as follows:
Option B
Medical centre business management services provided directly to medical professionals but not including medical services or any services that entail dealing with patients or any other members of the general public attending medical centres; medical centre business administration services provided directly to medical professionals but not including medical services or any services that entail dealing with patients or any other members of the general public attending medical centres; Direct service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders, but not including medical services or services that entail dealing with patients or any other members of the general public attending medical centres.
Endorsements:
1. Registration of this trade mark is limited to the provision of the aforementioned services to medical professionals and does not extend to exclusive rights in any use that may be seen by patients or any other members of the general public attending medical centres.
Option C
Medical centre business management services provided directly to medical professionals but not including medical services or any services that entail interaction with patients or any other members of the general public attending medical centres; medical centre business administration services provided directly to medical professionals but not including medical services or any services that entail interaction with patients or any other members of the general public attending medical centres; Direct service provider to medical professionals, namely provider of: administrative support services, billing and invoicing services, reception and telephone answering services, patient booking services, patient file management services including management of access to patient files, typing services, account-keeping and book-keeping services, preparation of business reports, systemisation of information into computer databases, professional business consultancy, computerised file management, business and information management services, ordering services, processing of purchase orders, but not including medical services or services that entail interaction with patients or any other members of the general public attending medical centres.
Disclaimer:
1. Registration of this trade mark shall neither confer nor recognize any exclusive right to use that may be seen by patients or any other members of the general public attending medical centres, including but not limited to signage on or in medical centres, signage on medical centre staff uniforms, and on documentation generated in the course of interacting with patients or any other members of the general public attending medical centres.
75 In an accompanying note the applicant said that in the options a disclaimer (pursuant to s 74, thereby precluding infringement upon the application of s 122(2)) or a limitation (pursuant to ss 33(2) and 55(1)(b), thereby precluding infringement upon the application of s 122(1)(g)) have been inserted to further allay the identified concern.
76 Section 33(2) provides that the Registrar may accept an application subject to conditions or limitations. By s 6(1):
limitations means limitations of the exclusive right to use a trade mark given by the registration of the trade mark, including limitations of that right as to:
(a) mode of use; or
(b) use within a territorial area within Australia; or
(c) use in relation to goods or services to be exported.
77 Section 55(1) provides that the Registrar must decide either to register a trade mark “with or without conditions or limitations” (s 55(1)(b)) or to refuse to register a trade mark (s 55(1)(a)). Section 74 provides that an applicant for registration may, by notice in writing given to the Registrar, disclaim any exclusive right to use, or authorise the use of, a specified part of the trade mark (and thus is not applicable to the proposed amendments as the applicant appears to assume). Section 122, dealing with circumstances in which there is not infringement as provided for in s 120 provides (at s 122(2)) that:
if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark.
78 Section 122(1)(g) provides that there is no infringement by a person using a sign where because of a condition or limitation subject to which the trade mark is registered the exclusive right of the owner of the mark is not infringed.
79 It will be apparent that the intention of the amendments is to prevent the applicant from having any exclusive right to use the marks in a manner which will be seen by any member of the public attending one of the applicant’s medical centres. There are a number of difficulties with the proposed amendments.
80 To take billing services as an example, the applicant (or Idameneo) is providing those services directly to medical professionals. However, irrespective of the applicant’s conception of its activities, it is also providing those billing services directly to patients. The proposed amendments attempt, on the one hand, to give the applicant a right of exclusive use of the marks insofar as the medical professionals are concerned, yet on the other hand to deny the applicant any right of exclusive use insofar as members of the public are concerned. The service, however, is the one service. In providing a service to medical professionals, the applicant is also providing a service to patients. In providing a service to patients, the applicant is also providing a service to medical professionals. Billing services necessarily “entail dealing with patients”, so are those services within or outside the scope of the registration? The applicant, by the amendments, is trying to divide a service into segments which do not exist. For the same reason, the applicant’s invitation to attempt to re-write the specifications must also be declined.
81 The amendments, accordingly, make no material difference to the actual nature of the Services as they in fact exist and are performed. If the amendments do anything, it is to introduce an unacceptable ambiguity into the definition of the Services which cannot be assumed to confine the Services in the way the applicant wishes.
82 For these reasons, all references to the Services below should be understood as the Services as put before the delegate and as proposed to be amended.
83 Further, because of the argument about the identity of the entity providing the Services (the applicant or Idameneo) all references to the applicant should be understood as references to the applicant or Idameneo.
4. INHERENTLY ADAPTED TO DISTINGUISH THE SERVICES?
84 The respondents, who bear the onus, contended that the marks are not inherently adapted to distinguish the Services to any extent because the marks are merely descriptive. The marks describe the kind of services of which the Services form part (primary health care services) or the part or level or sector of the health care in which the Services are performed (the primary health care sector).
85 According to the respondents, as a phrase, “primary health care” derives its meaning from the literal or ordinary meaning of its constituent parts. The ordinary English meaning of the phrase (now and at the priority date) is simply primary (meaning first) health care. In the context of health care, the ordinary English meaning of the phrase would be understood by those not familiar with the applicant (such as members of the public but also, I would note, GPs and health professionals unfamiliar with the applicant either because they are new to practice or are new to practice in Australia) as taking that ordinary meaning of “first level” or “first contact” health care.
86 Further, to health care professionals the phrase has a meaning the core of which is consistent with the ordinary meaning of the phrase (that is, first contact health care), albeit informed by various more detailed descriptions, in particular, Article VI of the declaration made at the World Health Organisation International Conference on Primary Health Care, held at Alma-Ata in the then USSR in September 1978 (the Alma-Ata Declaration), as follows:
Primary health care is essential health care based on practical, scientifically sound and socially acceptable methods and technology made universally accessible to individuals and families in the community through their full participation and at a cost that the community and country can afford to maintain at every stage of their development in the spirit of self-reliance and self-determination. It forms an integral part both of the country’s health system, of which it is the central function and main focus, and of the overall social and economic development of the community. It is the first level of contact of individuals, the family and community with the national health system bringing health care as close as possible to where people live and work, and constitutes the first element of a continuing health care process.
87 The respondents contend that the applicant’s medical centres provide primary health care in Australia and are part of Australia’s primary health care system or, putting it another way, operate within Australia’s primary health care sector. As the Services are part of the functioning of the medical centres, the Services are also part of and integral to the provision of primary health care in Australia. The phrase “primary health care” is thus merely descriptive of the Services and is not inherently adapted to distinguish the Services. It is a phrase others concerned with the provision of primary health care, without improper motive, may well wish to use to describe the Services. In the respondents’ words:
the Services are integral to the provision of health care, particularly primary health care, in Australia. The Services are supplied (at least) in the primary health care sector of the health care system, in which sector other traders supplying similar services and customers and recipients of the Services and similar services participate. The phrase is comprised of common, descriptive and laudatory words when used in the context of the health care system and the trade channels in which the Services will ordinarily be supplied.
88 According to the applicant, there is no ordinary or plain meaning in the English language for the phrase “primary health care”. While “health care” has an ordinary and clearly understood meaning, the adjective “primary” is not commonly or widely used or understood to describe particular medical services, procedures or sections of the health care system. Further, amongst health professionals, the evidence shows that the phrase has a meaning only “in the narrow government public health policy arena”. Even in the public health policy arena, however, the meaning of the phrase is amorphous and no single ordinary descriptive meaning can be discerned either as at the priority date or subsequently.
89 The applicant contended in particular that:
(a) the term “primary health care” is not an expression taken from the common stock of language, does not appear in Standard or Medical Dictionaries and does not have an established meaning within the English language;
(b) the descriptive meaning of the term propounded by the respondents in this proceeding is not the “ordinary meaning” of the term; it was not well-understood or widely-used by many practicing GPs in Australia as at October 2009 – in Australia, that descriptive meaning had barely been used and, even then, it was generally used within the confined public health policy sector and was not used consistently;
(c) in any event, the term is not an expression ordinarily used by GPs or other traders of the Services to describe the designated Services in respect of which registration is sought – there is simply no evidence to support this aspect of the respondents’ case. None of the various definitions of the term or documents relied upon by the respondents refer to the designated Services in any way;
(d) when regard is had to the “ordinary signification” of the term when used in connection with the Services amongst GPs, health care professionals and other traders, the evidence unequivocally established that the term signified that Primary Health Care was the provider of those Services. The descriptive meaning propounded by the respondents does not arise in the context of provision of the Services; and
(e) the respondents have not pointed to a single instance, real or imagined by way of hypothetical possibility, of a circumstance in which a rival trader of Primary Health Care might legitimately have needed to use the term in relation to the supply of its Services (and Primary Health Care’s unchallenged evidence is that, to the contrary, no rival trader has indicated any such need).
4.2 Meaning of “primary health care”
90 I did not understand the applicant to suggest that “primary health care” was a term unknown to those involved in public health policy. If that suggestion was made, it would be inconsistent with the evidence. The applicant’s point was that there was no single and clear meaning given to the phrase in the public health policy context in Australia at the priority date or subsequently.
91 To avoid repetition, where possible, the observations below apply both at the priority date and subsequently, unless it is clear from the context that a specific date is involved.
92 I do not consider that much weight can be given to the applicant’s argument about ambiguity. It is apparent from the evidence that the phrase “primary health care” has a core meaning to those involved in public health policy in Australia, and has done so for many years before the priority date (at least since the Alma-Ata Declaration in 1978) which is not in dispute, being first level or first contact health care. The evidence also disclosed that in public health policy, internationally and in Australia, the scope or reach of the phrase is not settled. Debate about the scope or reach of a phrase does not mean that the phrase lacks (or at the priority date lacked) an ordinary signification to those involved in public health policy in Australia. The core meaning of the term is, and since at least 1978 has been, first level or first contact health care. The contradistinction which the term draws in this context, as understood by those involved in public health policy, is between the first point of contact between a person and a health care provider and other points of contact, often referred to as secondary and tertiary health care, it being generally understood in this context that primary care is provided (for example) by GPs, secondary care involves (for example) a referral to a specialist, and tertiary care is provided by hospitals and similar institutions.
93 While the applicant pointed to many differences of expression in the evidence regarding the description of “primary health care”, it failed to recognise the consistent references to the core meaning of first level or first contact health care. The applicant focused instead on the concepts at the outer edges of the possible meaning of the phrase which were not necessarily agreed to form part of the meaning of the term – such as whether primary health care extends to safe water and food supplies and other social goals. The applicant said, for example, that the concepts included within primary health care:
appear to range from access to, or first contact with, the health system to community based, social health initiatives including prevention and health promotion as well as the holistic organisation of care in the community which goes beyond the first level of care to referrals or links to other parts of the health and welfare systems.
94 However, virtually all (and perhaps all) examples in evidence disclosed that, whatever else the phrase might also mean, it was commonly accepted that in the public health policy context, primary health care means (and meant at the priority date) first contact with the health system and thus first level health care. It may be accepted that many health policy documents went further and extended primary health care to a multiplicity of other socio-economic objectives. None suggested that the phrase did not mean, at the least, first contact with the health system/first level health care. There is (and never has been) any ambiguity or disagreement about this core meaning. Nor has there ever been any question that it is GPs who provide the bulk of primary health care in Australia.
95 Accordingly, and by way of example only:
(1) The 1978 Alma-Ata Declaration states that primary health care “is the first level of contact of individuals, the family and community with the national health system”.
(2) One of the many documents produced by the Primary Health Care Standing Committee to the General Practice Partnership Advisory Council (a successor to the Primary Health Care Task Force), a body involved in advice to the Australian Health Ministers Advisory Council, referred in 2002 to earlier work dating from the late 1990s. The 2002 document noted that primary care and primary medical care are important parts of the primary health care system and that primary care “is commonly taken to mean first contact care”. The document also noted that:
A working definition of primary health care used in most Australian reports is:
Primary health care seeks to extend the first level of the health system from sick care to the development of health…
The document also said that the Alma-Ata Declaration meaning, which involved the concepts of both a first level of care and an approach to health care, had been “reinforced in recent Australian reports”.
(3) In 2008, the Australian Institute of Health and Welfare, operating under the auspices of the Commonwealth Department of Health and Aging, released a report titled Review and Evaluation of Australian Information about Primary Health Care. This report described general practice as the central component of Australia’s primary health care system. The report continued:
What is primary health care?
Primary care is the care that people around Australia receive from general medical and dental practitioners and Indigenous health workers (and the nurses that work with them) as well as from local pharmacists and other allied health professionals working ‘in the community’ (as opposed to those working in hospitals or other institutions). It is called primary health care because it is usually more basic and first-line than the care given by other parts of the health system, such as hospitals and specialist doctors. It is also primary in the sense that the health professionals involved are usually the first point of contact that Australians have with the health system. The DoHA, in its report General practice in Australia: 2004, define primary health care as:
‘… health care provided by the medical professional with whom the patient has initial contact. The category excludes hospital or institutional care and rehabilitation.’ (DoHA 2005).
(4) The Commonwealth Department of Health and Aging released a discussion paper also in 2008 titled Towards a National Primary Health Care Strategy. This paper said:
Primary health care is the frontline of Australia’s health care system. While many Australians may not recognise the term ‘primary health care’, it is a term used to refer to the parts of the health system that most people interact with most of the time. For example, around 18 million Australians see a GP at least once a year.
In addition to GPs, primary health care services involve a range of health care providers including nurses (such as general practice nurses, community nurses and nurse practitioners), midwives, allied health professionals, pharmacists and dentists. In Australia, primary health care is delivered through a combination of publicly and privately provided services (funded through Commonwealth, state and territory, and private arrangements, including through private health insurance funding).
This Discussion Paper is not based on a precise definition or boundary for what should, or should not be, considered as ‘primary health care’. While there are a number of definitions available, including from the World Health Organisation and the Australian Primary Health Care Research Institute, in practice there is no absolute or consistent view about whether particular settings and services are part of primary health care or not. At this stage, and to allow for Submissions to address possible future directions without being unduly constrained by current service and funding arrangements, the scope of primary health care is left broad.
(5) The Department next released, in 2010, Australia’s First National Primary Health Care Strategy titled Building a 21st Century Primary Health Care System which said:
The Strategy takes a broad view of comprehensive primary health care extending beyond the ‘general practice’ focus of traditional Australian Government responsibility. It includes consideration of services which until now have been predominantly the responsibility of the states and territories, and those services entirely delivered through private providers, including those supported by private health insurance.
(6) The ACT Government’s Primary Health Care Strategy 2006-2009, published in 2006, referred to the Alma-Ata Declaration including the reference to first contact with the national health care system. This document also referred to primary health care as “usually the first point of contact had with the health care system”. Similar references appear in the ACT Government’s Primary Health Care Strategy 2011-2014.
(7) The Tasmanian Government had issued a discussion paper in 2006 titled A Primary Health Strategy for Tasmania and a Primary Health Services Plan issues paper in 2007, the latter of which also referred to the text of the Alma-Ata Declaration including the reference to first contact with the national health care system. The Primary Health Services Plan for Tasmania was then released in May 2007 which adopted the Alma-Ata Declaration definition.
96 The respondents summarised the steps involved in the initiatives of the Commonwealth in primary health care from 2008 onwards, which shows the concerted public efforts made to increase the efficiency of the primary health care sector. Importantly, this policy initiative started and involved a call for public submissions before the priority date. It should not be thought, however, that “primary health care” first entered the vocabulary of health professionals only in 2008. The 2008 policy initiative took it as a given that health professionals knew what was meant by primary health care. The timetable is as follows:
• 11 June 2008 Hon Nicola Roxon MP, Minister for Health and Aging, announced that the Rudd Government will develop a National Primary Health Care Strategy;
• 30 October 2008 National Primary Health Care Strategy Discussion Paper: Towards a National Primary Health Care Strategy; and
Media release, Minister Roxon: Key Step Towards Better Primary Health Care (call for public submissions);
• mid 2009 Primary Health Care Reform in Australia – Report to Support Australia’s First National Primary Health Care Strategy; and
Draft National Primary Health Care Strategy – formulated by the External Reference Group appointed by Minister Roxon;
• 2010 Building a 21st Century Primary Health Care System – Australia’s First National Primary Health Care Strategy ;
• Feb 2011 Improving Primary Health Care for all Australians (information brochure);
• 6 June 2011 Media release by Minister Roxon: First Medicare Locals to Continue Primary Health Care Reform.
97 Individuals involved in public health policy also assumed a common understanding of the core meaning of the phrase “primary health care”. In written submissions, the applicant gave examples of meaning given to the term by a number of witnesses, which was said to disclose the inconsistency of use. A fair reading of the same evidence, however, in fact discloses the consistent core meaning of first level or first contact health care. Accordingly (with the core meaning shown in bold below):
(1) Dr Hobbs, Principal Medical Adviser to the Commonwealth Department of Health, said primary health care means:
socially appropriate, universally accessible, scientifically sound first level care provided by a suitably trained workforce supported by integrated referral systems and in a way that gives priority to those most in need, maximises community and individual self-reliance and participation and involves collaboration with other sectors.
He first encountered this meaning as an undergraduate medical student at the University of Sydney between 1976 and 1980 and was aware of the Alma-Ata Declaration when it was published in 1978. Over the last 20 to 30 years, he has encountered the phrase, used in this sense, almost daily when a GP, when working in hospitals, and when working for government. He spent 23 years in general practice.
(2) Dr Connors, General Manager of Top End Health Services for the Northern Territory (NT) Government, said primary health care means “the holistic approach and delivery of effective first line health services to a population or community in a community setting” and involves good health care treatment, “but it also involves broader concepts of prevention and improving access to care.” She first encountered the phrase in the late 1980s while working for the NT Department of Health.
(3) Ms Harpur, Chief Executive Officer of Public Health Services Division of the Tasmanian Department of Health and Human Services, understands the phrase to mean “the first point of contact with the health system” and:
relates to ensuring a level of healthcare for people, not only through diagnosis and treatment programs but also through preventative measures such as the promotion of health in communities and with defined populations…[and] often involves reaching out to people and coordinating continuous care with them in regard to their own health and of their family members.
She first heard of the term while in the UK in about 1996 (she was working for the National Health Service) and has since heard the phrase, used in this sense, almost daily within all levels of government, community based organisations and services, and private practitioners.
(4) Ms Burke, who is an Associate Director within the NSW Ministry of Health, understands the phrase to have the meaning set out in the Alma-Ata Declaration, being a phrase which includes, but is broader than, “primary care” which is the “first level of contact” and typically refers to GPs, but may also include nurses, physiotherapists or some other health care service providers. She has had this understanding since at least 2008 when she began to work within the Ministry and has heard the phrase so used within and outside of the Ministry including at conferences attended by GPs.
(5) Ms Cowan, a Director within the South Australian Department for Health and Ageing Service, understands the phrase to mean:
the first point of contact for most people in the Australian health care system. Primary health care comprises of a range of providers including general practice, non-Government organisations, and community based clinicians such as private allied health and pharmacy who work together to manage and maintain the health of the community through prevention, promotion, treatment and care. Primary health care refers to the broad sector of the health system that manages people who are well, at risk of illness or in the less acute stages of illness.
This is as opposed to the acute sector, which focuses on acute illness mainly treated in the hospital setting. She has frequently encountered the phrase, used in this way, since 2004 when she started working in the health sector.
(6) Dr Geelhoed, the Chief Medical Officer of Western Australia, understands the phrase to mean “the health care services provided outside hospitals and…the links between health professionals in providing such services.” He referred to various documents of the Western Australia Government including the WA Primary Health Care Strategy – consultation document (published in 2011) which states at p 6:
What is primary health care?
The Commonwealth Government, in its Primary Health Care Reform in Australia: Report to Support Australia’s First National Primary Health Care Strategy, (Australian Government Department of Health and Ageing, 2009 #99) describes primary health care as “all health care services provided outside the hospital, with linkages between these health professionals and the services provided by specialists and consultant physicians also being an important consideration …”
The Australian Primary Health Care Research Institute defines primary health care as: “Socially appropriate, universally accessible, scientifically sound first level care provided by a suitably trained workforce supported by integrated referral systems and in a way that gives priority to those most in need, maximises community and individual self-reliance and participation and involves collaboration with other sectors. It includes the following:
• health promotion
• illness prevention
• treatment and care of the sick
• community development
• advocacy and rehabilitation.”
Primary health care is provided by an array of people, including general practitioners, community health nurses, pharmacists, allied health professionals and many other providers across the local, state and Commonwealth government sectors, non-government organisations and the private sector.
WA Health believes that primary health care when effectively integrated with hospital services, creates a more equitable and seamless health care system.
Dr Geelhoed has heard the term used in this way since 1976. He described the use as frequent in clinical, academic, management and government settings.
(7) Dr Young, Chief Health Officer of Queensland, noted that:
11. The term ‘primary health care’ first appears in Department records in the paper titled ‘Primary Health Care’ prepared by the Department of Health in February 1993. The 1993 paper contains definitions of the term ‘primary health care’ and description of principles endorsed by the Department as underpinning a primary health care policy services. The policy states that ‘primary health care’ is best understood as both a level of service provision and an approach to the organisation and provision of health care.
12. The ‘approach’ aspect is represented as a coherent set of values from which the managers of health systems, members of their professions and members of the community can make decisions about resource allocations, planning and service delivery.
13. The policy also refers to ‘primary health care’ being a level of service provision, including services which provide the first level of contact with the health system for people in local communities in order to ensure access to:
a. treatment of basis health problems;
b. support and rehabilitation services to adequately maintain the aged, disabled and chronically ill;
c. health information and health promotion services; and
d. services to facilitate the healthy community environments.
She has encountered the use of the term in this way since 1986 in a variety of forums, clinical, academic, managerial and governmental.
98 In addition to these individuals (to which the applicant referred) may be added the following:
(1) Dr Brook, formerly an Executive Director within the Victorian Department of Health and Adjunct Professor of Medicine at Deakin University, has known of the phrase since 1978 while working in various clinical and health administration positions. He considers the term is one which is prominently used in health care in Victoria and referred to its use in publications from 1997 onwards. Those publications define primary health care as (for example) the part of the health system people contact when seeking assistance with a health problem (1997) and the first point of call for most people who need assistance (1999).
(2) Mr O’Donoghue, an Executive Director within the ACT Government, referred to publications from the ACT referring to the phrase since 2002 which identified primary health care as a crucial part of health services within the ACT. As noted, strategy documents of the ACT from 2006 refer to primary health care as the first contact point between an individual and health care system. Mr O’Donoghue said he had encountered the term frequently since 1990.
(3) Professor Harris, who was called by the respondents as an expert witness, is the Foundation Professor of General Practice (since 1990) and Executive Director of the Centre for Primary Health Care and Equity (since 2003) at the University of New South Wales. Professor Harris said that the three levels of health services (primary, secondary and teaching hospitals as tertiary) was a concept introduced in the UK in the 1920s as a result of the “Dawson report” (the report to the Parliament of Lord Dawson of Penn). The Dawson report itself referred to primary health care as the first level of contact of individuals (etc) with the national health system. This report was referred to in the Alma-Ata Declaration which also refers to primary health care as the first level of contact of the individual with the national health system. According to Professor Harris:
Based on my qualifications, experience and expertise outlined above and in my curriculum vitae…and my review of the literature from the relevant time period referred to above, by 1994, I am of the opinion that “Primary Health Care” was a broad term which was used in the literature to denote a segment or level of health care which most people use and a broad approach towards equity of access, prevention and health promotion and community participation and engagement.
…
As a result of my qualifications, experience and expertise referred to above and my review of the literature during the relevant time period referred to above, I understood the term “primary health care” as at 6 October 2009 to mean a segment or level of health care which most people use and a broad approach towards equity of access, prevention and health promotion and community participation and engagement. This reflects my understanding of the literature and its common use by researchers and practitioners in Australia and internationally. It is my view that the opinions expressed in the literature and my view were also held by general practitioners and others in the health sector as at 6 October 2009. This is based on the publication of the terms in journals and other documents widely read by health professionals in Australia and promoted by governments.
There is no real doubt that when speaking about a level of health care Professor Harris considered that primary health care means, and has meant for many decades, first level health care. Similarly, when an approach to health care is involved, primary health care means, and has meant for many decades, achieving a range of socio-economic goals through the provision of first level health care and a range of other services seen as complementing first level health care.
99 Having regard to these matters, I do not accept that the applicant’s submission, that there is no “singular or clear meaning” of the descriptive phrase “primary health care”, is correct. It is and for many decades has been clear to those involved in public health policy, that “primary health care” means (at least) first level health care or the health care received as a result of the first contact between an individual and a health care system. The fact that the phrase also means more than this is immaterial. The phrase has an ordinary signification to those involved in public health policy in Australia and that signification is that part of the Australian health care system which provides first level health care, being the health care received as a result of the first contact between an individual and a health care system (or, in shorthand, first level or first contact health care). This was (and is) understood to include, but not be limited to, the health care provided to people by GPs. In other words, there has never been any doubt that, to those involved in public health policy in Australia, GPs provide primary health care.
100 Thus far I have confined my observations to the area of public health policy. The applicant’s case appeared to rest on a belief that there exists a clear dividing line between what it characterised as the “narrow” area of public health policy and the broader provision of clinical services. I do not consider that this distinction will bear too much weight. Although I am prepared to accept that some people working within health care have a focus on public health policy issues, in one sense, all GPs in Australia (if not all nurses, physiotherapists and others providing the first level of health care) work within the public health sector and thus are, to some extent at least, concerned with public health policy. To take GPs as the most prominent example (it being the case that the medical centres operated by the applicant or Idameneo are centres from which GPs work), the other health professionals being allied to or supportive of that central service, it is plain that to describe a GP as being in “private practice” is an incomplete description because the Australian health care system means all GPs are trained within, regulated by and routinely interact with the national (that is, public) health care system.
101 I also do not find persuasive the applicant’s attempts to dismiss the documents relied upon by the respondents about the well-known and well understood meaning of primary health care in the health care sector as few in number and inconsistent in substance. They are documents issued from the bodies that are in charge of health care services and are thus fundamental to the functioning of medical professionals in Australia. While some GPs, like Dr Gilroy, might be too busy to take any notice of government policy (as to which, see below), these documents are central to the way in which GPs function within the health sector. Even a GP jaded by constant changes of government position (which the evidence disclosed was not uncommon) does not function in a vacuum. The nature of health care, which is affected by government policy at every level and in every way in Australia, makes this impossible.
102 In any event, a number of the witnesses referred to above have been GPs (such as Dr Hobbs) or frequently interact with GPs as part of their work. Moreover, these witnesses did not consider their understanding of primary health care to be one which applied only within the area of public health policy. Their experience of the use of the phrase extended beyond that into both academic and clinical settings. While I accept that a person cannot generally give evidence about another person’s state of mind, the evidence of these witnesses, the overall effect of which was that they frequently heard the term used in these contexts and in a way which accorded with their understanding of the term, indicates that the applicant’s contention that “primary health care” is a recent invention confined to those involved in public health policy is a fallacy.
103 What is the relevance then of the fact that these witnesses had also heard of the applicant (albeit from different times depending on when they had started working in the health sector) and understood the applicant to operate medical centres? The effect of their evidence was that, depending on the context, they would understand when the words “primary health care” took the meaning as set out above and when it was intended to refer to the applicant as a corporate entity. For present purposes, it is sufficient to observe that this does not affect the fact that the ordinary signification of the phrase was (and is) as described above.
104 Turning now to the evidence of the GPs on which the applicant relied (on the applicant’s case, the sole proposed audience of the use of the marks – a proposition which I do not accept given the nature of the Services):
(1) Dr Stiebel understood the phrase to mean either the applicant as an entity which owns medical centres or first level health care (that is, consistent with the core meaning as set out above). He thought the meaning of first level health care had begun to be used in Australia in the last 5 to 8 years (his affidavit being dated June 2010). In other words, he believed the meaning of first level health care existed since about 2002 to 2005 in Australia.
(2) Dr Selim, who moved to Australia in 1996, has worked at what she described as Primary Health Care’s (meaning the applicant’s) medical centres. She was not aware that the Australian General Practice Network Limited or the Divisions of General Practice used the phrase “primary health care” but understood the words “primary health care” to mean an initial level of medical care and “Primary Health Care” to be a reference to the applicant.
(3) Dr Monk is a GP and recruits other GPs to work in the applicant’s medical centres. While most GPs had not heard of the applicant when he started in 1999, according to Dr Monk, it is his experience that most GPs he now speaks with have heard of the applicant. Dr Monk does not say whether he understood the phrase to have any meaning apart from being a reference to the applicant in its capacity as the operator of medical centres.
(4) Dr Rogers associates the phrase with the applicant and has done so since about 2005 when a colleague joined “Primary Health Care’s medical practice, the Primary Old Port Road Medical & Dental Centre”. He does not say whether he understood the phrase to have any meaning apart from being a reference to the applicant.
(5) Dr Rajendran, who has had discussions with the applicant about joining one of its medical centres, also associates the phrase with the applicant which owns and operates medical centres and has done so since about 1998. Dr Rajendran does not say if the words also have another meaning.
(6) Dr Andrew, who provides accreditation services to the applicant, associates the phrase with the publicly listed company which owns and operates medical centres. He first became aware of the applicant in about 1998. He does not say whether he understood the phrase to have any meaning apart from being a reference to the applicant.
(7) Dr Moore, who owns shares in the applicant, had discussions with the applicant’s recruiters and ultimately entered into a contract with the applicant and practises from one of its medical centres, associates the phrase with the applicant which operates a chain of medical centres in Australia. He has seen the phrase in medical magazines on occasions as referring to provision of general practice services since about 2005 but has not heard a patient refer to themselves as receiving primary health care.
(8) Dr Kosterich, who worked for a competitor of the applicant in a managerial role and examined the competition including the applicant for that purpose, said that to him the phrase has two meanings. One is a system of care – primary health care is offered by GPs and nurses and is different from secondary health care offered by specialists and tertiary health care offered by hospitals. He probably learnt this meaning in university in the 1980s. He knows also that the Commonwealth has used the phrase in the context of community care over the years including the papers released by the Commonwealth from 2008. The other is the applicant as a corporate medicine provider, by which he means the applicant runs medical centres and provides GPs with administrative and managerial assistance a those centres. He gives meaning to the phrase depending on the context. When used to refer to “an organisation or clinic or service” he thinks of the applicant as a corporate entity. When used generally, he thinks of the level of care.
(9) Dr Ling, who had discussed joining one of the applicant’s medical centres with Dr Bateman, also gives the phrase two meanings. One is medical care at a basic level, a meaning he learnt at university in the 1980s. In his experience this meaning is used in the academic context and he has rarely used it outside this context. The other meaning is the applicant as a corporate medical provider, being the entity that owns and operates medical practices in Australia. He first became aware of this second meaning in about 2003 as a result of being a member of the board of the Adelaide Northern Division of General Practice which was concerned about the impact one of the applicant’s medical centres would have on other medical centres in the vicinity.
(10) Dr Gilroy, who runs a number of medical centres, associates the phrase with the applicant’s medical centres. She did not use the phrase to describe general practice and did not consider the term to be in common use for that purpose. She believed that use to describe front-line medical services was only recent as at 2015 and that GPs did not refer to themselves as “primary health care providers”. However, for about 11 years, she was aware of the use of the phrase in public health policy. From her point of view she was busy in day-to-day practice and did not take much notice of medical policy issues.
(11) Dr Mara, who audits the applicant’s medical centres, associates the phrase with the corporate chain of medical centres run by the applicant. From his experience as a GP he is also aware that the phrase refers to integrated medical care. In his view this meaning had evolved over time. It was used in relation to Indigenous health care or health care in underdeveloped or remote communities but now means first line, non-hospital, in-community care. He was aware of some parts of the Commonwealth Government’s strategy documents relating to primary health care in 2008 and thereafter. He thought this meaning of the phrase was entering the consciousness of GPs only relatively recently in association with the Commonwealth Government’s strategies from 2008 onwards.
(12) Dr Gabriel, a medical director with the applicant who obtained her undergraduate degree in Cairo in 1985 but has worked in Australia in medicine since 1991, became aware of the applicant in 2000. In her experience, GPs she speaks to are aware of the applicant as a “leading provider of medical centre management and support services to health care professionals”. She had not heard the phrase otherwise in common use with other GPs. She said she first heard of the other meaning of primary health care (as “the GP frontline or the first encounter with patients”) in about 2010 as a result of a dispute involving the applicant.
105 It is apparent from the evidence of these GPs that only one, Dr Gabriel, appears to have been unaware of the meaning of first level health care before the priority date. Five GPs (Drs Stiebel, Selim, Kosterich, Ling and Mara) were aware of the core meaning of primary health care and parts of its extended meaning before the priority date. Two other GPs, Dr Moore and Dr Gilroy, were also aware of that core meaning before the priority date but considered it confined to the public health policy context. Four GPs (Drs Monk, Rogers, Rajendran and Andrew) did not say whether they knew of a meaning other than a reference to the applicant as an entity operating medical centres. Further, while all of the GPs were aware of the applicant as a corporate entity which operates medical centres to which it recruits GPs, apart from Dr Gabriel who referred to the applicant as a provider of “medical centre management and support services to health care professionals”, the GPs described their understanding of the phrase in that context as a reference to the corporate entity which owns, operates or runs medical centres, not as a reference to the applicant providing the Services to GPs and health professionals.
106 Other evidence supports the conclusion that, before the priority date, “primary health care” meant first level or first contact health care in Australia, of which GPs formed a critical part. In its own prospectus from May 1998, this statement on behalf of the applicant appears (my emphasis):
Primary Health Care believes this fragmentation, together with the size of the primary health care industry and the advantages which it believes that its medical centres offer doctors and patients, will enable the Company to further expand its existing medical centres and specialist clinics
107 The General Practitioner Conference and Exhibition, which the applicant sponsors, is consistently described as Australia’s “primary health care event of the year”.
108 As noted, according to Mr Bateman, his father adopted the corporate name because he considered it to be “unique and memorable, and reflected the services that would be available to patients attending the centres”. In other words, the founder of the company must be taken to have known in 1994 that GPs were providing “primary health care services” to patients.
109 The applicant noted that it is “a consistent theme in…public health literature that the expression ‘primary health care’ does not have any clearly defined scope or meaning”. Understood in context, however, it is apparent that what such statements are conveying is that “primary health care” is a broad term with the consequence that it can be used in different contexts to mean more than the basic or core meaning of first level/first contact health care. There is no suggestion in the evidence that this core meaning is in dispute, unclear or ambiguous or that GPs, irrespective of the fact that they refer to themselves as GPs rather than “primary health care providers” are not in fact providing primary health care. The core meaning is a common thread which underpins all of the documents to which the parties referred.
110 I also do not accept the applicant’s criticisms of the departmental witnesses or of Professor Harris.
111 As to the departmental witnesses, it was obvious that the affidavits and statutory declarations, in many respects, took the same form and used the same language. There was nothing in the evidence, however, which would support the proposition that the evidence was created in order to present a “unified position on what was suggested to be each departmental officer’s ‘personal knowledge’ about the descriptive meaning of ‘primary health care’”. Indeed, the evidence was to the contrary. The fact that, in the case of Mr O’Donoghue, the affidavit was prepared by a third party based on discussions with Mr O’Donoghue does not mean that the matters set out in his affidavit were not accurate. Mr O’Donoghue’s evidence was to the contrary. Moreover, the fact that the Mr O’Donoghue was unaware that other affidavits took the same form and used the same language shows the lack of any purpose as suggested by the applicant. As such there is no foundation to infer that the evidence did other than accurately convey the views of each witness. Moreover, there was no call upon the respondents to explain anything about the affidavits or statutory declarations.
112 As to Professor Harris, his evidence provided a proper foundation for the opinions he expressed. The fact that there is no survey evidence about the meaning attributed to “primary health care” is immaterial. Professor Harris has the requisite training and experience to express an opinion about what the phrase means in the relevant sector. His evidence was not merely argumentative. Nor, in my view, is his evidence inconsistent with the bulk of the evidence of GPs called by the applicant (discussed above).
113 In my view, even if Professor Harris’s evidence about GPs generally is put to one side the weight of the evidence supports the conclusion that as at the priority date the ordinary signification of the phrase “primary health care” to a substantial number of persons involved in the provision of health care in Australia was the first level of health care available in the health system incorporating GPs but also other health professionals who would be the first point of contact between an individual and the health care system or, in shorthand, first level/first contact health care.
114 The fact that the phrase also meant an approach to health care in which that first level of care was integrated with the national health system and, as part of that integration, incorporated other socio-economic objectives (not all of which a substantial number of people involved in health care would necessarily agree about) does not mean that the phrase had or has no ordinary signification. Nor does the fact that, at the priority date, a number of people involved in the health care system also knew that the phrase was the name of a corporation which owned, operated and/or ran medical centres. In respect of this last observation, it will be noted that the applicant’s evidence was weighted in favour of GPs who had either been recruited by the applicant or had been in discussions with the applicant for that purpose or had some specific reason for having known about the applicant. Further, even when the GP did have reason to know of the applicant’s business model, no-one but Dr Gabriel described it as involving the provision of the Services to GPs and health professionals.
115 Insofar as members of the public are concerned, the applicant relied on various statements in government policy documents to the effect of the statement in the 2009 Report to Support Australia’s First Primary Health Care Strategy that:
[P]rimary health care is a term that is not widely used or even understood with most people simply distinguishing between the health care they receive in the community and the health care they receive in hospital.
While there are a number of definitions available, including from the World Health Organisation and the Australian Primary Health Care Research Institute, in practice there is no absolute or consistent view about whether particular settings and services are part of primary health care or not.
116 Again, when read in context it is apparent that there is no suggestion here that “primary health care” does not mean first level or first contact health care. Nor is it suggested that a member of the public, confronted with the phrase, would not understand this core meaning as a result of the ordinary meaning of each of the words. The health care which people receive in the community is primary health care so the distinction which the report says most people draw in fact accurately reflects the health policy meaning of the phrase. The points being made are first that members of the public, in contrast to those involved in health care, do not think in terms of primary, secondary and tertiary health care and, second, that there is room for debate amongst those involved in health care about whether any particular activity involves primary health care or some other level of care. What reading the documents in context also makes plain is that, whatever the bounds of that potential for debate, the provision of medical services by GPs is a setting involving the provision of primary health care. It is an unequivocal example of the provision of what a substantial number of those involved in the health sector would know involved primary health care.
117 I also consider that this core meaning, of first level or first contact health care, would be understood by a substantial number of people seeking to access health care as at the priority date. That is, if a person saw “primary health care” in the context of seeking health care for themselves or a family member or associate, they would understand the reference to be to a form of health care, being first level/first contact health care. They would do so because of the ordinary meaning of each word which makes up the phrase. While such a person may not distinguish between primary, secondary and tertiary levels of health care, or think of primary health care as an approach to health care in the extended sense of the term as used in the health policy context, they would understand the ordinary signification of the phrase to be first level/first contact health care. Such a person, moreover, would be very unlikely to associate the phrase with the applicant because the applicant’s marketing is targeted at GPs, not members of the public. One exception to this would be those with an interest in publicly listed companies operating in the health care sector (about which Mr Symons gave evidence) but people within this class could not be assumed to be a substantial proportion of the general public.
4.3 Descriptive or allusive meaning?
118 As discussed, I accept the respondents’ submission that the Services are integral to the provision by GPs (and other health professionals within the medical centres owned and operated by the applicant) of primary health care services to patients who attend the centres.
119 As the respondents submitted, there is an unreal distinction at the heart of the applicant’s case between the provision of the Services and the provision of clinical or medical care. The distinction is unreal because the Services are part of the overall service a patient receives when attending a medical centre and, to some extent, are also part of the medical or clinical care a patient receives. It is part of medical care that a GP be able to access clinical records for a patient. It is part of medical care to ensure new records are accessible in the future. It is part of medical care for a patient’s referral to be properly recorded, stored and managed. It is part of medical care for the centre to have available necessary medical supplies. Otherwise, from the moment a patient makes a booking or attends a centre, they are receiving aspects of the Services.
120 As the respondents submitted, it is artificial to assert that:
• because the Services (applying a narrow literal meaning to the specification of the Application) are not themselves directly medical or clinical care – i.e., they are not doctoring – that the phrase ‘primary health care’ used in relation to the Services is so decoupled from its ordinary meaning and so decontextualized from its provision as part of health care so as to be distinctive of – capable of distinguishing – the applicant in a trade mark sense.
• the Services are not incidents of the operation of medical centres and medical practices, which are classified as class 44 services.
121 This is because:
in the real world context in Australia (at least) the Services are inextricably bound up with the provision of medical and clinical services by general practitioners and allied healthcare professionals, including through medical centres and medical practices – they are ‘part and parcel’ of the practice of general medicine and allied healthcare in the community, of primary health care.
122 The evidence of the GPs called by the applicant tended to support the artificiality of the distinction which lies at the heart of the applicant’s case. While all of the GPs distinguished between the provision of clinical care and non-clinical services which enabled that care to be provided, they understood the applicant to be in the business of recruiting GPs to and operating its medical centres. They did not understand the applicant to be in the business of providing GPs with the Services. This understanding is accurate. The Services are provided as part of the operation of the medical centres – at and as part of the patient care end of the applicant’s activities. Once this is recognised, it is apparent that the applicant is in the business of providing primary health care, albeit through a business model in which it does not provide and eschews responsibility for the provision of the medical/clinical care involved in the provision of primary health care.
123 That the applicant chooses to provide primary health care through a model in which it contracts, but does not employ, GPs and other health professionals is immaterial. In the words of the respondents:
The applicant promotes a model of delivery of medical and clinical services including primary health care through the medical centres its subsidiary, Idameneo, operates and the general practitioners and other healthcare professionals Idameneo contracts to provide medical and clinical services at those centres.
124 In this context, if the question is posed whether, at the priority date, other persons involved in the Australian health care system, in the ordinary course and without improper motive, might wish to use the phrase “primary health care” in connection with the Services; the answer must be “yes”. Every GP and every medical centre is providing primary health care and, in so doing and in one way or another, is performing or having performed the Services to enable that provision. The phrase was at the priority date, and remains, a direct description of the activity of which the Services form part. The phrase does not have an inherent capacity to distinguish the Services as offered by the applicant from the same services however and by whomever they might be performed. The phrase is not a skilful allusion to the clinical services that GPs provide in asserted distinction from the administrative and managerial character of the Services. Because the distinction is artificial, the phrase is directly descriptive of the Services. The other persons who might legitimately wish to use the phrase “primary health care” in connection with services the same as the Services include all government departments involved in the health care system, all providers of primary health care, all businesses like that of the applicant involved in the provision of primary health care, and all members of the public.
125 Insofar as the logo mark is concerned, as the respondents submitted:
Putting the phrase in a box, emphasising the word component ‘primary’ and including the corporate signifier ‘Limited’ does not confer any inherent adaptability over and above the plain type phrase ‘primary health care’. Indeed, the emphasis in the PHC logo on the word component PRIMARY directly describes a characteristic or quality of the Services.
126 For these reasons I am satisfied that the respondents’ case under s 41(3) should be accepted – the marks are not inherently adapted to distinguish the Services from the services of others of the same kind. I am unable to see any extent to which the marks have the requisite quality of being inherently adapted to distinguish the Services but will consider the operation of s 41(5) of the Act (which is predicated on the contrary assumption that the marks are to some extent inherently adapted to distinguish) before turning to s 41(6).
5. MARKS DO OR WILL DISTINGUISH SERVICES?
127 For the purpose of s 41(5) of the Act it is necessary to assume, contrary to the conclusions above, that the marks are inherently adapted to distinguish the Services to some extent. Section 41(5)(a) requires that extent to be considered in combination with the use or intended use of the trade mark by the applicant and any other circumstances.
128 It is impossible for me to assume that the marks are inherently adapted to distinguish the Services to any great extent. However, for the purposes of s 41(5)(a)(i), I will assume that the marks have some inherent capacity to distinguish the Services.
129 In order to assess the relevant matter under s 41(5)(b), the use or intended use of the trade mark by the applicant, it is necessary to consider the respondents’ arguments about the role of Idameneo and the use of the marks to brand the Services. The applicant submitted that the respondents were attempting to introduce a new ground of opposition in submitting that the applicant’s use of the marks was not use within the meaning of s 17 of the Act (that is, as a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person). I disagree. The issue of the applicant’s use was raised in the particulars of opposition and in the notice of contention. The applicant also dealt with the issue in its notes in reply.
130 The respondents accepted (as do I) that the applicant has a reputation as an ASX listed company whose corporate name is Primary Health Care Limited, and whose shares trade under the ASX code ‘PRY’, and that it is known by the medical profession as an owner and operator of a large corporate chain of medical centres in many of the States and Territories of Australia (excluding Tasmania and Northern Territory). It is apparent from the evidence that the applicant identifies itself in external dealings as Primary Health Care Limited, Primary or Primary Group. For the medical profession to know this about the applicant does not mean that a substantial number of the members of that profession would know of the applicant’s particular business model or the part the provision of the Services plays within that model. Only a health professional who had some particular reason to know of these matters (such as having been recruited by the applicant, having negotiated with the applicant for recruitment or having discussed the model with a colleague) would be aware of the applicant’s particular business model.
131 The respondents identified that a number of the affidavits on which the applicant relied were prepared for use in unrelated proceedings commenced in 2010 and subsequently discontinued in which the applicant asserted contraventions under the then Trade Practices Act 1974 (Cth) and the tort of passing off to prevent the use of trading names including the phrase “primary health care” by a number of Divisions of General Practice (which are primary health care organisations formed of local affiliations of general practices, GPs and other health care professionals with a focus on primary health care – the Divisions provide support to GPs in the form of education, training practice and workforce support for accreditation and independent of government, and have had the benefit of some Commonwealth government funding). The relevance of this is that, as noted above, these affidavits tend to focus on the witness’s knowledge of the applicant under the name “Primary Health Care” as an entity which owns, operates and/or runs medical centres and not as a provider of the Services. I consider this unsurprising because, as I have found, the Services are part and parcel of the operation of a medical centre and the applicant is in the business of recruiting GPs and others to practice from medical centres it operates of which the Services form but one essential component.
132 Mr Bateman, the General Manager of the applicant’s medical centre division, explained that Idameneo is a wholly owned subsidiary of the applicant. The medical centres are owned and operated by Idameneo. GPs who are recruited and wish to practice from a centre thus enter into a contract with Idameneo, not the applicant. It is Idameneo who provides the Services as part of the operation of the medical centre. As Mr Bateman put it, Idameneo does so under the brand, which is also the applicant’s company name, of Primary Health Care.
133 Insofar as advertisements to recruit GPs are concerned, in most advertisements the word “Primary” appears, as does the name of the applicant. Moreover, the advertisements do not focus on the Services. They are an advertisement to GPs to practice medicine in a particular manner from one of the applicant’s medical centres which includes, as but one feature, “no need for administration and paperwork”. The offering, however, is expressly “a form of practice viable to all parties [which] has a continued and growing patient acceptance”, other features being greater income, an up-front capital payment, better equipment, staff and facilities, reduced professional indemnity costs, and better clinical practice and independence.
134 The evidence shows that before 2010 or 2011 in its brochures used as marketing tools to GPs, the applicant generally refers to itself as “Primary” as a brand name but also identifies itself as a corporate entity. In correspondence with GPs before the priority date the applicant identifies itself as “Primary Health Care” and by its corporate name. After 2010 or 2011 (and thus after the priority date) the applicant continued to refer to itself in brochures as “Primary” and, on occasions, as “Primary Health Care” (the word mark). The logo mark is not used at all in these brochures, although a different logo does appear which includes the applicant’s name Primary Health Care Limited. The logo mark and word mark appear on some advertising to GPs and allied health professionals in the form of flyers or whole page advertisements which I understand were published after the priority date. In corporate sponsorship from 2010 onwards, the different logo is also used.
135 Insofar as training of staff is concerned, the evidence discloses that the relevant training documents are branded with the name of the applicant Primary Health Care Limited, not in the form of the word mark or logo mark.
136 According to Mr Bateman, the applicant’s current “Brand Style Guidelines” reflect its past requirements. These guidelines, however, expressly refer to the word mark and the logo mark whereas the evidence does not support an inference that before about 2010 the applicant used the logo mark. Accordingly, I do not accept this aspect of Mr Bateman’s evidence.
137 From the above it will be apparent that, leaving aside the references to the applicant’s corporate name, I do not accept that the word mark or logo mark have been used by the applicant to any material extent in its marketing to GPs and other health professionals for recruitment purposes before the priority date, but accept that the word mark has been used in correspondence with GPs as part of the recruitment process. I accept that use of a corporate name may also be use as a trade mark if the name is being used to distinguish the particular goods and services of one trader from another (Anheuser-Busch v Budvar [2002] FCA 390; (2002) 56 IPR 182 at [183] – [192]). If “Primary Health Care Limited” was being used as a trade mark in the marketing to GPs and others for recruitment purposes, a possibility I am prepared to accept in the applicant’s favour, then I also accept that the suffix “Limited” is largely immaterial.
138 The result is that I am prepared to accept, contrary to the respondents’ case, that the applicant has used the word mark (but not the logo mark which involves the corporate name in a style in a rectangular box) before the priority date to identify the applicant as the source of its business. The document which is annexure C to the applicant’s notes in reply (where the final column represents the applicant’s submissions in answer to the summary of uses of the marks provided by the respondents) supports this conclusion and is inconsistent with the respondents’ case that the corporate name is not being used as a brand to identify the applicant as the source of its business of recruiting GPs to medical centres it operates. This annexure also shows that the logo mark, with the rectangular border around the words, has not been used. The applicant’s submissions to the contrary must assume (incorrectly in my view) that, in some limited uses from about 2007 onwards, the required rectangular border is provided by the structure in which the sign sits (an inference I am not prepared to draw in the applicant’s favour). Other uses simply have no border and thus are not the logo mark.
139 Nor do I think weight should be given to any alleged confusion between the applicant and Idameneo on which the respondents relied. I am satisfied that the applicant uses Idameneo as a service company and that use by the applicant of brands is authorised by Idameneo and the converse also applies.
140 These conclusions in the applicant’s favour do not answer the respondents’ case.
141 As discussed, the applicant does not market the Services. It markets a form of practice for the purpose of recruiting GPs and others to one of its medical centres. I do not think it can be said that the evidence supports the conclusion that the marks have been used by the applicant to distinguish the Services or, in fact, do distinguish the Services. Even GPs, who are keen to maintain clinical independence and see administrative matters as different from clinical practice, understand the applicant to be in the business of operating medical centres to which GPs are recruited and for which they will pay a fee in exchange for the entirety of the facilities and services involved, not merely the Services. So much is apparent from the agreements with Idameneo into which GPs must enter. The standard agreement provides that Idameneo has leased the premises and equipped them to operate as a medical centre and the GP wishes to provide medical services from the premises. Thus, Idameneo provides the GP with the space from which to practise in the centre, with all necessary plant, equipment, apparatus, instruments and furniture necessary to practice, all necessary staff, all cleaning and maintenance, all materials, drugs and medical supplies, and all accounts and banking services (amongst others) also being provided by Idameneo. The GP is obliged to use best endeavours to promote the interests and welfare of “the practice” at the premises, support for the centre as appropriate by referrals and such to the medical and paramedical services available at the premises.
142 The intended use of the marks by the applicant, insofar as it may be gleaned from the evidence, is consistent with the past use.
143 Given these matters, care is required in respect of the evidence for and submissions of the applicant. For example, it was submitted that:
Primary Health Care’s sales approaches and negotiations with potential customers of the Services, as at October 2009 and continuing today, are conducted under and by reference to the Trade Marks, and involve careful explanation of its Services.
144 This suggests that the marketing that the applicant carries out concerns the Services as defined, which is not so. The repeated references by the applicant to its use of the marks in connection with the Services, accordingly, are apt to mislead. I am unaware of any use of the marks which focuses on the Services as opposed to the overall form of practice which the applicant enables GPs and others to adopt.
145 Insofar as “any other circumstances” as referred to in s 41(5)(a)(iii) are concerned, the applicant noted that no one else has traded under the name in connection with the Services. Insofar as it goes, this is true. However, as the respondents noted, it is also apparent from the evidence that the word components “health care” are commonly used by other corporate medical service providers which compete with the applicant. Further, in 2010 the applicant commenced proceedings against a number of respondents (Australian General Practice Network Limited; Hunter Rural Division of General Practice Limited; The South East Primary Health Care Network Limited; General Practice Queensland Limited; Gold Coast Primary Health Care Pty Ltd; Mackay Division of General Practice Limited; Eastern Sydney Division of General Practice Limited; Central Queensland Primary Health Care Pty Ltd; and Barwon Division of General Practice Limited).
146 The Divisions of General Practice were established in or about 1992 to provide, on a geographical basis, support to GPs including continuing education, peer support, fostering communication between GPs, the public and the wider health system, research, information technology, and policy development. The members of each Division were the GPs in the area of the Division, membership being voluntary. The services of the Division were provided through a corporation managed by a Board or committee elected from members. Divisions received public funding (at various times) to enable their objectives to be achieved. They functioned Australia-wide. The Australian General Practice Network Limited was the umbrella entity under which geographic specific entities operated. From 2011, the Divisions evolved into entities known as “Medicare Locals”.
147 Before the priority date the Australian General Practice Network Limited applied to register a trade mark “Australian Primary Health Care Network”. The applicant contended that in so doing (and in registering a business name and by its proposed name and the names of other Divisions which included “Primary Health Care”) in connection with health services there would be committed misleading and deceptive conduct and the tort of passing off. The applicant commenced proceedings to vindicate those contentions, although the proceedings were settled. According to the applicant, the threatened use of “primary health care” by the Divisions:
was neither reasonable nor legitimate in the face of Primary’s (sic) Health Care’s longstanding and overwhelming reputation in the mark PRIMARY HEALTH CARE in relation to the Services as at 2010 when the proceeding commenced.
148 As the applicant put it:
The Divisions in that case had decided to collectively rebrand the network of Divisions of General Practice with a common naming system, in which each division was to trade under a name including the PRIMARY HEALTH CARE mark. To that end, the various Divisions had registered or applied to register a whole series of corporate names, business names, domain names and trade marks (that is, trade indicia) incorporating the mark PRIMARY HEALTH CARE.
In those circumstances, Primary Health Care objected to this threatened use of its common law mark.
149 The applicant also said that the role of the Divisions in the health care system was confusing, as they seemed to be in a state of continuous evolution depending on changes in government and corresponding changes in government health policy. The dispute was not required to be resolved because the Australian General Practice Network Limited agreed not to use the words primary health care as part of its name, logo or brand. Subsequently, the branding was changed to “Medicare Locals”, which made the dispute moot. According to the applicant, it has not at any time objected to the “descriptive use of the term ‘primary health care’, because the services it provides to health care professionals are not medical services”.
150 The relevant point, however, is that the applicant bears the onus of proof under s 41(5). The applicant has not proved any improper motive on the part of the Divisions of General Practice. Hence, the applicant’s submission that speculation about motive is impermissible sounds against the applicant given the onus upon it. In any event, it is apparent from the evidence that the Divisions of General Practice had ample legitimate reason to wish to rebrand themselves as organisations involved in primary health care. Not only is general practice the fundamental component of primary health care in Australia, it is obvious that the actions of the Divisions in 2009 which attracted the ire of the applicant were connected with the Commonwealth Government policy initiatives in 2008 and 2009 about primary health care. It was legitimate for the Divisions of General Practice to seek to align themselves with government policy. As such, the applicant’s contention that no-one else has sought to use the phrase “primary health care” is incorrect. Because the Services are part of the provision of primary health care, the actions of the Divisions are good evidence of other organisations involved in the same activity (providing primary health care), without improper motive, wishing to use the descriptive phrase “primary health care” to describe their activities.
151 The combined effect of the matters set out in s 41(5)(a)(i) – (iii) does not mean that the marks do or will distinguish the applicant’s Services from the same services offered by others. To the contrary, the Services are part of the provision of primary health care in Australia. They are not capable of being separated out from a wider range of activities which the applicant (and others) perform, the applicant through being the operator of medical centres to which it recruits GPs to practice in exchange for a fee (the fee, I note, being calculated by reference to payments from patients, that is from the provision of the clinical services by the GP). Other persons involved in the provision of primary health care, be they corporate service providers, individual GPs or government funded clinics or public/private partnerships, may well wish to use the phrase “primary health care” in connection with their services of the same nature as the Services. They may well wish to do so because they are in the business of providing primary health care. The fact that Dr Bateman believed when he selected the name “primary health care” in 1994 that the name reflected the nature of the service provided from the medical centre is perhaps the best evidence of the descriptive character of the phrase.
152 For these reasons the applicant has not discharged the onus under s 41(5) of the Act.
153 These conclusions also answer the inquiry under s 41(6). As discussed I consider that the marks are not to any extent inherently adapted to distinguish the applicant’s Services from the same services offered by others. Further, I am not satisfied that because of the extent to which the applicant has used the marks before the priority date the marks distinguish the Services as being those of the applicant. This is because, as I have explained, the use of the marks before the priority date (which I accept has occurred for the word mark, but not the logo mark) relates to the recruitment of GPs to work at the applicant’s medical centres and the operation of the medical centres as a whole and not the Services.
154 In Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; (1991) 30 FCR 326 at [51] it was recognised that:
A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning…
but
the word must in order to become distinctive have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive.
155 The only secondary meaning which the phrase “primary health care” has obtained by reason of the applicant’s use, in my view, is the applicant as a corporate entity which recruits GPs and other allied health professionals to the medical centres it operates. This secondary meaning has not been acquired in respect of the activity of providing the Services.
156 The respondents relied on Cantarella [2014] HCA 48 at [57] to support the submission that the secondary meaning of a descriptive word or phrase must “eclipse” the ordinary descriptive meaning so as to enable distinctiveness to be acquired. This reference is to Clark Equipment at 515 in which Kitto J referred to a word having acquired “distinctiveness in fact which eclipses its primary signification”. In Cantarella [2013] FCA 8 at [108], Emmett J described the requirement as one in which there “must be a sufficient degree of distinctiveness to counterbalance the descriptive character of a word”. In Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756; (2015) 114 IPR 81 at [128] Yates J summarised the issue in these terms:
Section 41(6) recognises that a sign may be descriptive but still distinctive. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297, Middleton J observed (at [60]) that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive. His Honour quoted the following observations of Lockhart J in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 335–336:
The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re Appln of H N Brock & Co Ltd, for a trade mark (“Osowoolo”) and trade marks (“Orlwoola”)(1909) 26 RPC 683 at 850 and 854 (the Orlwoola case) and Re Appln of Joseph Crosfield & Sons Ltd to register a trade mark (“Perfection”)(1909) 26 RPC 837 (the Perfection case).
If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.
A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s Appln for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re Appln by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (above) (at 857–858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.
Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the [identity] of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, para 25.8.
157 Having regard to these observations, I consider that the respondents’ submission that “two meanings used in the same or similar sectors cannot result in one having trade mark capability of distinguishing” must be considered with care because it suggests that in order for a word or phrase to have acquired a secondary meaning the descriptive meaning must be displaced altogether. I am not persuaded this is required by the authorities.
158 In any event, in the present case, what the evidence discloses is that those involved in the health care sector who have reason to be aware of the applicant determine the meaning of the phrase “primary health care” by reference to context. If the context is the identity of a corporate entity which operates medical centres to which it recruits GPs and others, people involved in the health care sector who have reason to know of corporate medical service providers understand that the reference is to the applicant. As I have said, I am not persuaded that this means that there is a secondary meaning in connection with the Services. As such, the evidence does not enable me to conclude that the applicant’s use of the marks before the filing date “does distinguish the designated … services as being those of the applicant” in accordance with s 41(6).
159 The difficulty, in my view, comes back to the artificial construct which the applicant has sought to create. In the applicant’s business model, the Services are part of and subsidiary to the operation of the medical centres. They have no existence other than in that context. For these reasons, the attempt to prove acquired distinctiveness of the marks in connection with the Services cannot succeed.
160 Accordingly, and as provided for in s 41(6), the marks are taken not to be capable of distinguishing the Services from the services of other persons, and the applications for registration must be refused.
6. MARKS LIKELY TO DECEIVE OR CAUSE CONFUSION
161 The conclusions reached above also have consequences for the respondents’ case under s 43 of the Act – which requires an application for registration of a mark to be rejected if because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
162 The delegate decided to reject the application on the basis of s 43. In so doing the delegate reasoned as follows:
(1) “While it might be the case that the various health care professionals who lease rooms from the Applicant and utilize its services associate the words ‘primary health care’ with the Applicant’s medical centre business management and administration services, the same cannot be said of the many patients attending the Applicant’s premises to consult the various health care professionals” (at [22]).
(2) “…such potential consumers of health care services would firstly (and primarily) view the words PRIMARY HEALTH CARE as a trade mark that denotes a connection between the Applicant and its medical centres. Accordingly, the denotation is firstly as a trade mark of the applicant, despite any descriptive matter contained within” (at [23]).
(3) “Patients attending the Applicant’s medical centres are likely to believe that the Applicant is responsible for the health and medical services provided by practitioners within the medical centres. Patients are unlikely to appreciate that the Applicant is responsible only for the provision of management and administrative services to the health and medical practitioners, and not for professional governance or the quality of the health care” (at [25]).
(4) “It is also possible for patients who are aware of the literal meaning of ‘primary health care’ or the meaning as stated in the WHO Alma-Ata Declaration to mistakenly believe that the Applicant was in some way associated with government provided, or sponsored, community health initiatives” ([26]).
163 The applicant’s case is that the delegate was in error in assuming that the Services involved services to the public. For the reasons set out above, I consider the delegate’s approach was correct and applies equally to the specifications as proposed to be amended.
164 The phrase “primary health care”, as it appears in the applicant’s marks, has a clear connotation (and did so at the priority date), the connotation being not the applicant as the source of the Services, but first level or first contact health care. The fact that GPs do not (and did not at the priority date) refer to themselves as primary health care providers, which I accept to be the case on the evidence, does not mean that GPs did not know about and understand the meaning of primary health care. As the discussion above about meaning discloses, I am satisfied that the evidence establishes that the phrase was known and understood by GPs to have the meaning of first level or first contact health care. The applicant’s submissions to the contrary do not reflect the full effect of the evidence and, as noted, focus on ambiguities which exist only at the outer reaches of the meaning of the phrase. As such, and for the reasons already given, I do not accept the applicant’s submission that:
a number of independent doctors gave evidence that, as at October 2009, the connotation alleged …was either not known to them, was unsettled or was not in common use in Australia.
165 A real likelihood of deception and confusion arises because while the Services are one part of the provision of primary health care the marks refer to “primary health care” generally. However, the applicant’s particular business model ensures that the applicant is not the provider of, nor responsible for, the clinical care provided by the contracted GPs, clinical care being a key component of primary health care. No one other than a person familiar with the details of the applicant’s business model would be capable of avoiding confusion when confronted with the use of the marks in respect of the Services. Persons familiar with the details of the applicant’s business model are a narrow class.
166 Contrary to the applicant’s submission, the evidence of the GPs called by the applicant which bears upon this issue supports the conclusion that there will be confusion. As discussed, that evidence does not establish that those GPs who did know about the applicant’s particular business model associated “Primary Health Care” with the applicant in respect of the Services. The evidence was instead that the GPs associated “Primary Health Care” with the applicant as an operator of medical centres. This is important because it is the medical centres in which primary health care as a whole (both the clinical services which the applicant in fact does not provide and the Services which the applicant does provide) is provided. Even the GPs who ran their practice from one of the applicant’s medical centres understood the applicant to be operating the medical centre as whole, rather than merely providing the Services. While those GPs knew that operating the medical centre as a whole did not mean the applicant was responsible for the clinical care the GP was providing, that distinction (between operating a medical centre but not providing or being responsible for the clinical care GPs provide at that centre) is a fine one. To expect anyone other than a person who is familiar with the applicant’s business model to understand that when the marks are used in respect of the Services they are intended to identify the applicant as the source of the Services alone and not the clinical care provided from the medical centre is far-fetched.
167 In the context of the applicant’s operation of medical centres from which primary health care is provided, the use of the marks on any document within the scope of the Services will almost certainly cause any person who notices the marks and is unfamiliar with the applicant’s business model to be confused about the nature of the services the applicant in fact provides (the Services or clinical care services?) and the responsibility for clinical care services provided from the applicant’s medical centres at which the Services are provided (the applicant’s responsibility or not?). It is possible that the respondents’ third kind of alleged confusion (government sponsored or funded or government responsibility in some way or not?) might also arise but I prefer not to decide the matter on that basis. In other words, inherent in the evidence from GPs upon which the applicant relies are the seeds of the confusion which I consider likely to occur in respect of the use of the marks.
168 In respect of the evidence that GPs who have worked within the applicant’s medical centres (or continue to do so) had never been asked by a patient about who Primary Health Care is or who is responsible for providing the patient with clinical care, two observations must be made. As noted, generally speaking, Primary Health Care has not badged its medical centres, which is a sufficient explanation for the first part of this evidence. Otherwise, no person, GP or otherwise, can give admissible evidence to the effect that a patient who attends a medical centre knows that the individual GP rather than the centre is responsible for the clinical care provided at the centre. What a patient would be likely to think would depend on a variety of circumstances. What I do infer is that, if I am correct that the proposed amendments do not achieve their object, the applicant will have the exclusive right to use the marks on a range of documents and other things which will be likely to be seen by patients because such uses are within the range of the Services. In those circumstances, use of the marks would be likely to deceive or cause confusion as indicated.
169 Insofar as the public are concerned, it follows that I accept the respondents’ submissions as follows:
the issue is not that the scope of the specifications includes medical care, the problem is that they don’t, although the Services are inextricably bound up with the provision of medical care. Medical care is precisely what a medical centre is supposed to provide; and the management and administration of such centres is to ensure that such care is delivered.
That patients may or may not know what the employment arrangement is between the doctor they see and the medical centre at which they see the doctor, is not to the point. They attend medical centres to receive medical care, other health care related treatments, tests and procedures – including day surgery, which the patients then receive and pay for.
170 Leaving the public aside, there are other problems.
171 I am satisfied that the use of the mark in connection with the Services is likely to deceive and cause confusion to any person who is not privy to the applicant’s particular business model. This is because the Services are part only of primary health care and the applicant is not providing or responsible for the clinical components of primary health care from its centres whereas by use of the marks, given their descriptive meaning, there is conveyed the false impression that the applicant is providing and/or is responsible for the first level or first contact care. The likelihood of persons being misled or confused would be avoided only in those persons who had become aware of the details of the applicant’s business model. It is only GPs and health professionals or others who had seen or had explained to them or otherwise knew about the applicant’s business model who would not be likely to be deceived or confused. This class of persons would know that the use of the marks in respect of the Services did not carry the descriptive meaning and that the Services constituted only one aspect of the provision of primary health care by and for which the applicant was responsible.
172 However, the same could not be said of any other person, including any medical professional or person working in the health sector who, as the respondents put it, had not become acculturated to the applicant’s business model. Those persons, who would be by far the bulk of medical professionals in Australia (given that no more than 5% of GPs in Australia work from one of the applicant’s medical centres, and a far smaller percentage of allied health professionals), and an even larger number of those working in the health sector who might be exposed to the trade marks, would be likely to be misled and confused by their use in respect of the Services. The confusion would arise in the respects identified above as applicable to members of the public.
173 It follows that I am unable to accept the applicant’s contrary arguments. To the extent it is necessary to deal with the detail of those arguments, I make the following comments.
174 I do not accept that there is an “irreconcilable tension” in the respondents’ case. The tension was said to arise because the respondents contend, on the one hand, that the services are part of the provision of primary health care and, on the other hand, that the applicant does not actually provide first level health care. As the applicant put it, the respondents “cannot have it both ways”. The tension, on examination, does not exist. The point the respondents make is that the Services are an indispensable part of the provision of primary health care but are not, in and of themselves, clinical or medical care. As clinical care is itself an indispensable part of the provision of primary health care, any use of the trade marks in respect of the Services will create confusion on the part of any person not acculturated to the applicant’s particular business model. The confusion will arise because the unacculturated person (be it a GP, a person working in the health system or a member of the public) will assume (wrongly) that the applicant is in fact providing or is otherwise responsible for the clinical or medical care component of the primary health care offered at the applicant’s medical centres, and is not providing merely the Services. In my view, for such a person, this confusion is not merely a real or tangible danger, but almost inevitable given: (i) the ordinary meaning of primary health care, (ii) the close, indeed, essential connection between the Services and the clinical care provided at the applicant’s medical centres, (iii) the artificiality of the distinctions the applicant relies upon, and (iv) the fact that, on the evidence, the Services are but one part of what the applicant actually does at its medical centres (for example, according to the evidence, the applicant provides all equipment used in the provision of health care, as well as nurses who, I infer, would themselves be providing clinical care).
175 For the reasons already given, the applicant’s case that the “relevant buying public” is the specialist market of health care professionals cannot be sustained. Even if, contrary to my view, the amended specifications had this effect, lack of confusion amongst health professionals is itself dependent not just on knowledge of the applicant on the part of those professionals but also knowledge of the applicant’s particular business model (which is not disclosed by the advertisements but would be disclosed only in discussions with a representative of the applicant or through reading the standard contract). As discussed, the number of health professionals who would not have knowledge of the applicant’s particular business model must be substantial. On this basis alone, leaving aside members of the public and others working in the health care system, the proposed marks are likely to deceive or cause confusion.
176 The applicant asserted but has not established that the market in which corporate medical service providers operate is a specialised market. More specifically, it is not the case that the Services constitute a highly specialised or technical field. As such, I do not agree that evidence was required before an inference of likely confusion by reason of the use of the marks may be drawn. Given the ordinary meaning of primary health care and the close connection between the Services and the provision of primary health care, in the context of government policy about primary health care as it existed at and from the priority date, I do not see why GPs and health professionals who have had no exposure to the applicant’s particular business model would be any less likely to be confused about the marks than a member of the public. Nor do I accept that the fact that this confusion should be mitigated before such a person enters into a contract with Idameneo means that the use is not likely to deceive or cause confusion. To the contrary, the connotation of the marks is likely to cause confusion to such GPs and other health professionals which will persist until they have had explained to them or read the contract. This is confusing in relation to the use of the mark within the meaning of s 43.
177 The same conclusion applies to others involved in the health sector who are exposed to the marks, with the caveat that such people will not be prospective contractors with Idameneo and thus will not have their confusion about the marks mitigated by having the true nature of the applicant’s activities explained to them either through discussions or through reading the standard contract. As one example, assume that the marks could be placed on documents which might be communicated as between a GP and a patient’s health fund in respect of billing and rebates (which would be within the specifications, as proposed and as amended). Persons exposed to the marks within the health fund who had no knowledge of the applicant’s business model would be in the same state of confusion as any member of the public and for the same reasons. They would see the marks and be caused to wonder whether the applicant, through one of the GPs in the centre, had itself provided the clinical care or was responsible for providing the clinical care by reason of the marks. They would not know that the marks were being used to signify only that the applicant was the source of the extremely limited activities within the range of the Services.
178 Given the evidence of the GPs called by the applicant, which associated “Primary Health Care” not with the Services but with the applicant as an operator of medical centres, it is not correct to say, as the applicant does, that there was no evidence of confusion. The evidence that was given by GPs and others involved in the health care system about the meaning depending on context does not assist the applicant. The evidence was to the effect that such people consider the context to work out whether “primary health care” refers to first level or first contact health care or the applicant company. The evidence did not relate specifically to the applicant as a provider of the Services. For example (with my emphasis added):
(1) Dr Hobbs was aware of the applicant for about 10 to 15 years from when he was a GP. Dr Hobbs said he had a general understanding of the services the applicant provides to GPs which included “back office support services and management support, support of information, communication” and the recruitment of GPs. He did not understand a reference to the applicant to be a reference to only the Services, but to:
a name that is being used by that company and the range of services that it is providing to its medical practices.
(That is, as I understand it, the full range of services involved in the applicant operating medical centres, being a range which remained “a small part of primary health care”.)
(2) Mr O’Donoghue, who had worked in the health care systems since 1990, disclosed considerable confusion about what the applicant did. He said:
As I understand it, they provide general practice services in the community. They’re – they’re – that’s the services that I’m familiar with. So they operate a large corporate general practice enterprise.
…
And by that, do you mean that they operate medical centres?---Yes. I don’t know whether they also employ other allied health professionals, but I know that they provide general practice as part of their repertoire of services.
And by that do you mean that there are general practitioners that work at medical centres---?---Yes.
--- that are operated by Primary Health Care?---Yes.
Thank you. Are you aware that they provide what has been described by a witness of the Commonwealth this morning as back office services to general practitioners at those centres?---I would imagine implicit in operating a general practice is the need to operate the administrative and record-keeping and other systems that would make a general practice work.
For the reasons given, this is necessarily evidence of confusion about the use of the marks. The marks are the corporate name (for the logo mark) and the phrase “Primary Health Care” (for the word mark). Mr O’Donoghue, who has worked in the health sector for 25 years, mistakenly believes that the applicant provides “general practice as part of their repertoire of services”. It is not difficult to understand this confusion, nor how it would extend to any use of the marks in respect of the Services.
(3) Ms Burke knew of the applicant and that it provided business support services that included the Services. He gave this evidence:
However, if you see the words being used in the context of a company like Primary Health Care providing services to healthcare professionals, then you understand that the words are referring to the company?---Yes. It’s a company name. Yes.
179 It must also be recalled that the witnesses who gave this evidence were either GPs who had worked for, or had particular knowledge of, the applicant’s business model or persons working in the health care system who, by reason of this and the earlier proceedings, had some reason to be aware of the applicant and, perhaps, its business model. As noted, given this knowledge, they still associated the phrase “primary health care” either with the applicant as a corporate entity or as a corporate entity operating medical centres and not as a provider of the Services (other than Dr Gabriel who, given her position as the applicant’s medical director and involvement in the 2010 proceedings and earlier proceedings before the Registrar, would be expected to focus on the subject-matter of the proposed registration). Their evidence, particularly that of Mr O’Donoghue, undermines the applicant’s submission that:
because the meaning of the words depends on the context in which they are used, there is no scope for either Trade Mark to imply the additional meaning contended for by the respondents.
180 Moreover, given that the logo mark is the applicant’s corporate name in a box and the corporate name is Primary Health Care Limited, the submission that the logo mark is in a different position from the word mark, in my view, is untenable.
181 I do not accept that the respondents have failed to prove that:
there is a real tangible danger of deception or confusion occurring in the case of a substantial number of people likely to be concerned in purchasing the Services.
182 First, the concept of “purchasing” contended for by the applicant is too narrow. A person need not “purchase” the Services in order to be deceived or confused by the use of the marks. Second, for the reasons given, I am persuaded that only those people who know the applicant’s particular business model are unlikely to be deceived or confused by use of the marks in respect of the Services. Otherwise, for the reasons given, I am satisfied that any other person who is exposed to the marks in respect of the Services will, at the least, be confused about whether the applicant was providing more than the Services (specifically whether the applicant was providing or was responsible for the clinical care provided at its medical centres) and will be likely to be deceived in this regard. Of necessity, a substantial number of people will be confused and be likely to be deceived.
183 The applicant’s submission that “the possibility of deception or confusion is fanciful” fails to confront the reality that the applicant operates medical centres, one small part of which is the provision of the Services, under a corporate name and marks “primary health care”, a phrase which describes the overall services provided from a medical centre, in circumstances where the applicant’s business model is to ensure that it does not in fact provide and is not responsible for a key element of “primary health care”, being the clinical care which GPs who practice from the centre provide to patients. Given this, I consider it fanciful to suggest that there will not be deception or confusion of a substantial number of people who are concerned with the Services.
184 The applicant’s reference to other corporate medical service providers who have the phrase “health care” as part of their name is misconceived. Those other corporations also have another word as part of their name (for example, Sonic Health Care, Foundation Health Care, Alpha Health Care, Endeavour Health Care and Immediate Health Care). Moreover, the evidence in the present case did not broach the question of potential confusion by reason of the use of these names. It is thus not the case that:
there was evidence before the Court that other corporate service providers which incorporate the words “health care” in their name do so without engendering the confusion or deception alleged by the respondents.
185 Mr Bateman’s evidence that he had not heard of such confusion does not prove its absence.
186 I do not accept the submission that:
the sales negotiations for the Services are conducted in a manner that does not leave the candidate doctor in any doubt as the nature of the Services provided or contractual terms proposed…
187 There is no sales negotiation about the Services per se. If a GP wishes to contract with Idameneo there is discussion about a contract which relates to all facilities and services which the applicant provides, not merely the Services. Moreover, while a GP will (or reasonably should) at that point understand that the applicant is not responsible for the GP’s provision of clinical care, I am satisfied that there is a real tangible danger of confusion on the part of a GP who is unfamiliar with the applicant’s business model up to that point. This is sufficient to satisfy s 43. It is not necessary the confusion continue. There is a real risk that GPs will enter into discussions with the applicant on the basis of the confusion. The situation is not analogous to Scotch Whisky Association or Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428; (2009) 177 FCR 300 in which any risk of confusion was negated by the nature of the consumer and the circumstances in which the consumer would purchase the goods in each case. In the present case the confusion arising in respect of the use of the marks in connection with the Services is likely to persist until the GP unfamiliar with the applicant’s business model is instructed about the applicant’s business model.
188 For these reasons, the respondents have also established the ground of opposition under s 43 of the Act.
189 The respondents’ case is that use of the marks in respect of the Services would be contrary to s 18 of the Australian Consumer Law (which proscribes conduct and representations in trade or commerce that are or are likely to be misleading or deceptive) on the basis that such use as at the priority date is in trade and commerce and misrepresents to persons that:
(a) the applicant provides primary health care services;
(b) the applicant is responsible for the health and medical services provided by practitioners within the Applicant’s medical centres; and/or
(c) the applicant is in some way associated with government provided, or sponsored, community health initiatives.
190 I accept propositions (a) and (b) of this submission. I consider that in the circumstances I have described and considered at the priority date the use of the marks in respect of the Services conveys at least the first two representations alleged by the respondents which are incorrect.
191 The respondent has established the grounds of opposition under ss 41, 42 and 43 of the Act. Registration of the trade marks should be refused.
I certify that the preceding one hundred and ninety one (191) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot. |
NSD 1052 of 2014 | |
THE CROWN IN THE RIGHT OF THE NORTHERN TERRITORY | |
Fifth Respondent: | THE CROWN IN THE RIGHT OF THE STATE OF QUEENSLAND |
Sixth Respondent: | THE CROWN IN THE RIGHT OF THE STATE OF SOUTH AUSTRALIA |
Seventh Respondent: | THE CROWN IN THE RIGHT OF THE STATE OF TASMANIA |
Eighth Respondent: | THE CROWN IN THE RIGHT OF THE STATE OF VICTORIA |
Ninth Respondent: | THE CROWN IN THE RIGHT OF THE STATE OF WESTERN AUSTRALIA |
