In Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, the Full Federal Court found the applicant’s trade marks were incapable of distinguishing the services of the subject of the application, in part because the target audience for those services included patients and the public health sector generally – not merely medical practitioners who dealt directly with the applicant.
The Full Court’s finding upheld a decision by a single judge of the Federal Court, rejecting an application by Primary Health Care Limited (PHC) for registration of the word mark PRIMARY HEALTH CARE and the logo shown below, on grounds including s 41 of the Trade Marks Act:
Registration was sought in respect of what PHC termed ‘back office services’ for medical and allied health practitioners under Class 35 (the Services). PHC is a major health care operator. It provides medical and allied health practitioners with medical centre management services, support services and business management services. It does not, however, provide direct medical or clinical care to patients.
S 41(3): The ordinary signification of “primary health care”
In determining whether a mark is inherently adapted to distinguish, the “ordinary signification” of the mark must be considered.[1]
PHC submitted that the primary judge erred in finding that the ordinary signification of “primary health care”, with respect to the Services, was “first level / first contact health care”. This argument was rejected. The Services were found to form part of the overall service a patient receives when attending a medical centre. Indeed, and despite PHC’s submission that it does not provide medical/clinical care to patients, the Services were (to some extent) found to form part of the medical/clinical care a patient receives.
The phrase “primary health care” was, therefore, merely descriptive of the Services and not inherently adapted to distinguish them.
S 41(3): Identifying the correct target audience
In considering the ordinary signification of a trade mark, it is important to identify the correct “target audience”. PHC submitted that the primary judge erred in finding that the target audience for the trade marks includes patients and persons in the public health sector – rather than just health practitioners. This argument was rejected.
The decision highlights the importance of looking past the persons paying for the Services (here, the health practitioners), to other persons “concerned with” the Services (including patients), when determining the target audience. Rangiah J, citing Canteralla, emphasised that the target audience for the trade marks is not limited to “persons who will purchase, consume or trade in the goods”. Rather, the ordinary signification of the trade mark to “any person in Australia concerned with the goods” is to be considered.
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[1] Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190; [1956] HCA 41; Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511; Cantarella Bros Pty Limited v Modena Trading Pty Limited (2014) 254 CLR 337 “Cantarella”.
