No silver lining for a silver service10 August 2017
"Silver service" almost always alludes to prestige, glamour and luxury. However, the complexities associated with a trade mark for this phrase are far from glamorous.
The recent decision of Silver Top Taxi Service Pty Ltd v Taxi's Combined Services Pty Limited  ATMO 19 brings to light the issues of an overly ambitious trade mark application.
Taxi's Combined Services is one of Cabcharge Australia's many wholly owned subsidiaries. Silver Top Taxi Service is a competitor company that predominantly operates in Victoria and NSW. Taxi's Combined applied to register "Silver Service" as a trade mark under class 39. Underpinning its application was the fact that Cabcharge owns several other registered trade marks that incorporate the term "silver service".
Silver Top subsequently filed an opposition under ss 41, 44 and 58A of the Trade Marks Act 1995 (Cth), asserting their ownership of the "SILVER TOP SILVER SERVICE" class 39 trade mark and that there are "at least 20 [other] taxi service providers (operating) in Australia by reference to the phrase 'silver service'". To successfully oppose the application, Silver Top was only required to establish one of these grounds.
Taking into account the extent to which the trade mark had been adapted to distinguish the services of Taxi's Combined from the services offered by other taxi companies, the Registrar determined the phrase "silver service" has become so ubiquitous in the taxi industry that the granting of the trade mark would result in a monopoly by Taxi's Combined. "Silver service" consists wholly of a term that is ordinarily used to indicate the quality of goods or services and therefore has not been sufficiently adapted to distinguish itself from other services in the industry.
The Registrar also determined that ownership and use of the related trade marks by Taxi's Combined was inadequate in educating the market that "silver service" explicitly indicates a taxi-related service provided by Taxi's Combined.
Opposition under s 41 of the Act was established and the Registrar refused to register the trade mark. Silver Top was awarded costs against Taxi's Combined.
The case highlights that when registering a generic trade mark that is already in common use, the mark needs to have been inherently adapted to sufficiently distinguish itself from other goods or services in its class.
The ownership and use of similar trade marks isn't enough to guarantee that your trade mark will be registered—the Registrar will also take into account whether the use of the mark has become synonymous with the service on offer.
Trade marks that have the potential to result in a monopoly will rarely be registered.