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IP Australia Service Request

Trade Mark Number Request Date & Time

1623570 31-Jul-201412:20:36

Submitting Party

Party Identifier MSW1338958326

Name Tasmanian Patent Services

Customer's Reference TM106

Email jul [email protected]

Respond to an Examiner's Report

Fees

FANG Batch Identifier 7948353

Fee# 1 Fee Code TXR

Fee Type OTHER

Fee Description Respond to an Examiner's Report

Number of Goods 1 and Services Classes

Fee Unit Count 1

Fee Amount $0.00

Calculation Date & 31 -.Jul-2014 12:15:20

Time

Fee Total Amount $0.00

Service Request Details

Channel WEB

Batch Identifier SMBM-0000369266

Batch Reference TM106

Service Request Identifier STER-00007581 13

Service Request Code TER

Request Date & Time 31-Jul-2014 12:20:36


Application numbers Customer's IP Right Reference

1623570 TM106

Contact Details

Address PO Box 294

Huonvi lle

TAS, 7109

AU

Phone +61036264 3362

Customer Supplied Documents

Document

Sequence

Document Type Document File Name Physical

Media

1 Other TM106Resp1stOA.pdf No

2 Other TM0106DecSigned.pdf No

3 Other TM106ExSheetEJE-1.pdf No




Registrar of Trade Marks IP Australia PO Box 200 Woden ACT 2606

By electronic lodgment

31 July 2014

Dear Registrar

Tasmanian Patent

• ·-' ....--... '11l"1~,~~..-111 -----0

Services

Your Key to Intellectual Property Protection

Attention: Janette Yeung

Re: Australian trade mark application No 1623570 for Franklin River Rafting Logo in the name of Franklin River Rafting Pty Ltd in Class 39 Our ref: TM106

We refer to the Examiner's report dated 28 May 2014.

We wish to request a deferral of the final date for acceptance of the application in view of the citation raised (Water by Nature application No. 1560658).

With regard to the objection under Section 41 the Trade Marks Act 1995, it is submitted that the trademark (referred to as the applicant's logo) is at least to some extent inherently adapted to distinguish the services of the applicant over those of other traders. The applicant's logo consists of an attractive black disk with the words "Franklin River" and the word "Rafting" in fancy white script.

While the applicant's logo may have geographic and descriptive elements it is rendered in a distinctive manner which because of the applicant's prominence in the Tasmanian white water rafting arena is distinctive of the applicant.

We submit a declaration by Elias Justus Eichler dated 23 July 2014 and Exhibits in EJE-1 to EJE-4 which outlines the adoption of the applicant's logo and its use. Mr. Eichler is Managing Director of the applicant.

As explained in the declaration the applicant has continuously used its logo in relation to white water rafting expeditions since 2 August 2012. The applicant has achieved a substantial amount of sales since that time from customers around Australia and from overseas. The applicant's logo is used on website, social media pages, staff uniforms, T-shirts and hats supplied to customers; vehicles and brochures. Further the applicant has an active social media presence as well as paid advertising via conventional means. The examiner is referred to in paragraphs 5 to 7 the declaration which provides

Tasmanian Patent Services ABN 34 034 374 860

PO Box 294 Huonville TAS 7109 Australia; Phone 03 62643362; Fax 03 62643360 Mobile 0418314965;

jyl [email protected]; www.taspatent.com.au

1

Tasmanian Patent Services

confidential information on sales, advertising and other details associated with use of the logo.

Further, it is submitted that the examiner should consider the other circumstances which relate to use of the mark and its capability of distinguishing the services from those of other traders. The limited number of tour operators offering rafting on the Franklin River is a relevant consideration. There is possibly a handful or fewer tour operators offering rafting on the Franklin River. This is not a case where the customer has thousands of potential tour operators to choose from. In addition, because of selective nature of the potential customers (outdoor adventurous types), the relatively expensive outlay for a tour, safety issues including familiarity of guides with the remote area and the planning involved in undertaking a rafting trip , consumers will tend to make themselves well aware of the business from which they are buying services.

With regard to the objection under Section 44 the Trade Marks Act 1995, it is submitted that there has been honest concurrent use by the applicant of its logo in relation to the citation (which has a filing date of 3 June 2013), that the applicant's first use of its logo predates that of the citation and that use has been continuous. The examiner is referred to in paragraphs 3 and 4 of the declaration.

The applicant is significant operator on the Tasmanian white water rafting scene who honestly developed its logo and has built up a business around the logo without any improper motive. It is submitted that the application meets the requirements for registration.

Withdrawal of the examiners objections is respectfully requested.

Yours sincerely

I e M Harkins Registered Patent and Trade Marks Attorney Principal , Tasmanian Patent Services.



[email protected]; www.taspatent.com,au

2

AUSTRALIA

Trade Marks Act 1995

Re: Trade Mark Application No. 1623570 in the name of: Franklin River Rafting Pty Ltd Trade Mark:

Franklin River

Raft;n_g

DECLARATION

I, Elias Justus Eichler of 70 Dillons Hill Road Glaziers Bay Tasmania 7109 Australia, do solemnly and sincerely declare as follows:

1. I am Director, Operations Manager, Marketing Manager and Raft Guide of Franklin River Rafting Pty Ltd (hereinafter referred to as "our company"). I have held these positions since our company was established in 2012. The statements in this declaration are made based on my personal knowledge or upon the records of our company.

2. I am aware of trade mark application No. 1623570 (hereinafter referred to as "our application") for the Franklin River Rafting logo shown above (hereinafter referred to as "our logo").

3. Franklin River Rafting is a tour company offering white water rafting expeditions on the Franklin River in Tasmania. It was established in 2012 by me and my business partner Franziska Ruetz. Our company specialises in unique, uninterrupted eight day and 10 day white water rafting tours that challenge and reward our guests as we explore the river and its pristine ecosystem. We provide an unparalleled experience based on our intimate knowledge and love of the Franklin River.

4. The name "Franklin River Rafting" was first used as a business name in the first part of 2012 under the partnership. This was incorporated shortly afterwards in July 2012 as Franklin River Rafting Pty Ltd which uses the trad~ "Franklin River Rafting". Our logo was created by web designer~d the logo was first used on our website www.Franklinriverrafting.com which was launched on 2 August 2012. Our logo has also been used on the following websites which all link to www.franklinriverrafting.com and which websites were purchased the dates indicated below: www.franklinriverrafting.com.au - on 11/05/2012 www.franklinrivertasmania.com.au - on 12/09/2012 www.franklinrafting.com - on 24/10/2012 www.franklinriverrafting.net.au - on 16/05/2014 We also have an extensive presence on social media such as Facebook, Tumblr, Twitter, Instagram, Pinterest, Goo le+ and You Tube. Our website www.franklinriverrafting.com

Annexed hereto and marked Exhibit EJE-1 is a screenshot of our website showing the date of first use, screenshots of the social media sites and a print out from Google Analytics of our website audience overview.

5. Our logo has been used continuously since the website was launched on 2 August 2012. The logo and company name are part of our branding strategy and we use the logo and company name throughout our services and roducts. Members of our staff also wear a uniform dis la · n our lo o

6. The following confidential information is provided:

I I , t I I I 3 p res. In addition the followin confidential informatio~

7. Services associated with our company are promoted through the social media avenues discussed above and our company has advertised in magazine such as True Blue (a police publication) and the ma azine 'Wild". The followin confidential information is provided:

2

Confidential Exhibit EJE-4 annexed hereto provides an ex.ample of our advertisement in "vVild" and evidence of these figures.

I make this declaration conscient iously believing tbe statements contained in this

decla ration to be true and correct .

.. c. -~-... ~ ................................ .

Elias Justus Eichler

Declared al: S::icA ~J\ Fl• ~c., J t--\C.9R.E H-~ 1 DfH - ; N o'R..1--.) Al .

Dated: ; s t ') C' I+

AUSTRALIA

TRADE MARKS ACT 1995

Re: Trade Mark Application No. 1623570in the name of: Franklin River Rafting Pty Ltd

EXHIBIT EJE-1

Attached hereto is the material called "Exhibit EJE -1" and referred to inParagraph 4 of the Declaration declared by Elias J Eichler

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EXHIBIT EJE-2


Car and company trailer

3

4

Rafts

AUSTRALIA



CONFIDENTIAL EXHIBIT EJE-3


Exhibit EJE-3 Exempt 4 pages

AUSTRALIA


Re: Trade Mark Application No. 1623570 in the name of: Franklin River Rafting Pty Ltd

CONFIDENTIAL EXHIBIT EJE .:4

Attached hereto is the material called "Exhibit EJE -4" and referred to in Paragraph 7 of the Declaration declared by Elias J Eichler

1

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Water By Nature

2

IP Australia Service Request

Trade Mark Number Request Date & Time

1623570 05-Aug-2015 14:20:01

Submitting Party

Party Identifier MSW1338958326

Name


Email [email protected]

Respond to an Examiner's Report

Fees

FANG Batch Identifier 8137157

Fee# 1 Fee Code TXR

Fee Type OTHER

Fee Description Respond to an Examiner's Report

Number of Goods 1 and Services Classes

Fee Unit Count 1

Fee Amount $0.00

Calculation Date & 05-Aug-2015 14:19:58

Time

Fee Total Amount $0.00

Service Request Details

Channel WEB

Batch Identifier STBl-0000680497

Batch Reference TM106

Service Request Identifier STER-0001307999

Service Request Code TER

Request Date & Time 05-Aug-2015 14:20:01


Application numbers Customer's IP Right Reference

1623570 TM106

Contact Details

Phone +61036264 3362

Customer Supplied Documents

Document

Sequence

Document Type Document File Name Physical

Media

1 Other TM106Resp2ndOA.pdf No

2 Other TM0106SignedSuppDec.pdf No




Registrar of Trade Marks IP Australia PO Box200 Woden ACT 2606

By electronic lodgment

5 August 2015

Dear Registrar

Tasmanian Patent

0 .. -·-Services

'1tf" Your Key to Intellectual Property Protection

Attention: Spencer Hooley

Re: Australian trade mark application No 1623570 for Franklin River Rafting Logo in the name of Franklin River Rafting Pty Ltd in Class 39 Our ref: TM106

We refer to the Examiner's report dated 29 August 2014.

We note the examiner's comments that the trademark is not totally devoid of inherent adaption to distinguish the applicant services from those of other traders and he will reconsider his objection under Section 41 if the applicant provides supplemental evidence which demonstrates the increasing capacity of this trade mark to distinguish its services as a result of future intended use of the trademark in Austral ia.

In connection with the above we attach a supplementary declaration by Elias Justus Eich ler dated 5 August 2015 and Exhibits in EJE-5, EJE-6 and confidential exhibit EJE-7.

The supplementary declaration outlines the applicant's plans to expand the business and includes a detailed business plan. While the appl icant may be a relatively small organisation, it is submitted that it is a signif icant player in the Tasmanian outdoor adventure tourism field.

The applicant has committed considerable resources in founding and growing its business of which the trade mark has been an integral part. The directors of the applicant have made significant personal, professional and financial commitments to their business. The business is a serious commercial enterprise, not a fly by night operation.

In addition to the applicant's reputation the limited number of tour operators offering rafting on the Franklin River (a handful or fewer) and the relatively high cost involved make the buying public well aware of the business from which they are buying services.



[email protected] .au; www .taspatent.com .au

1

Tasmanian Patent Services

2Tasmanian Patent Services

ABN 34 034 374 860PO Box 294 Huonville TAS 7109 Australia;

Phone 03 62643362; Fax 03 62643360 Mobile 0418314965;[email protected]; www.taspatent.com.au

It is submitted that the supplementary declaration together with the earlier declarationdated 23 July 2014 and exhibits demonstrate that use and intended use of the trademark and the other circumstances surrounding its use mean that the trademark does orwill distinguish the services as being those of the applicant in accordance with Section41 (5).

Withdrawal of the examiner's objection is respectfully requested.

Yours sincerely

Julie M HarkinsRegistered Patent and Trade Marks AttorneyPrincipal, Tasmanian Patent Services.

AUSTRALIA


Re: Trade Mark Application No. 1623570in the name of: Franklin River Rafting Pty LtdTrade Mark:

SUPPLE ENTARY DECLARATION

I, Elias Justus Eichler of 70 Dillons ill Road Glaziers Bay Tasmania 7109 Australia, dosolemnly and sincerely declare as follows:

1. I am Director, Operations Manager, Marketing Manager and Raft Guide ofFranklin River Rafting Pty Ltd (hereinafter referred to as "our co pany") Thestatements in this declaration are made based on my personal knowledge or uponthe records of our company.

2. I refer to my declaration dated 23 July 2014 and exhibits EJE-1, EJE-2 andconfidential exhibits EJE-3 and EJE-4.

3. I understand that the trademarks examiner has issued a second examinationreport dated 29 August 2014 were he asks for supplemental evidence whichdemonstrates the increasing capacity of the Franklin River Rafting l go, thesubject of the above application (hereinafter refe red to as "our logo") todistinguish our services from those of other traders.

4. Looking to the future, our company's primary focus will be to continue runningthe best trips available on the Franklin River. Since 2012 our customer base hasbeen increasing annually and we are starting to see repeat business. In additionwe are planning to extend to other services.

1

AUSTRALIA


Re: T ade Mark Appl c ion No. 1623570i he name of: Franklin River Rafting Pty LtdT ade Mark:

SUPPLEMENTARY DECLARATION

I, Elias Justus Ei hler o 70 Dillons Hill Road Glaziers Bay Tasmania 7109 Austral a, dosolem ly and sincerely d clare as follows:

1. I am Di ector, Operations Manager, Marketing Manager and Raft Guide ofFranklin Ri r Rafting Pty Ltd (hereinafter referred to as "our company"). Thestatements in this declaration are made based on my personal knowledge or uponthe records of our company.

2. I efer to my declaration dated 23 July 2014 and exhibits EJE-1, EJE-2 andconfidential e hibits EJE-3 and EJE-4.

3. I und rst d t at he trademarks examiner has issued a second examinationreport dated 29 August 2014 were he asks for supplemental evidence whi hdemonstrates the in reasing capacity of the Franklin River Rafting logo, thesubjec of the above application (hereinafter referred to as "our logo") todis inguish our services from those of other traders.

4. Looking to the f tu e, our company's primary focus will be to continue runningthe bes trips avai able on the Franklin River. Since 2012 our customer base hasbeen increasing annually and we are starting to see repeat business. In addit onwe ar plan ing t extend to other services.

1

AUSTRALIA


Re: Trade Mark Application No. 1623570in the name of: Franklin River Rafting Pty LtdTrade Mark:

SUPPLEMENTARY DECLARATION

I, Elias Justus Eichler of 70 Dillons Hill Road Glaziers Bay Tasmania 7109 Australia, dosolemnly and sincerely declare as follows:

1. I am Director, Operations Manager, Marketing Manager and Raft Guide ofFranklin River Rafting Pty Ltd (hereinafter referred to as "our company"). Thestatements in this declaration are made based on my personal knowledge or uponthe records of our company.

2. I refer to my declaration dated 23 July 2014 and exhibits EJE-1, EJE-2 andconfidential exhibits EJE-3 and EJE-4.

3. I understand that the trademarks examiner has issued a second examinationreport dated 29 August 2014 were he asks for supplemental evidence whichdemonstrates the increasing capacity of the Franklin River Rafting logo, thesubject of the above application (hereinafter referred to as "our logo") todistinguish our services from those of other traders.

4. Looking to the future, our company's primary focus will be to continue runningthe best trips available on the Franklin River. Since 2012 our customer base hasbeen increasing annually and we are starting to see repeat business. In additionwe are planning to extend to other services.

2


6. We have invested in high quality equipment such as rafts and vehicles. We haveexpanded our fleet of rafts, which are , from two in 2012 tothe current fleet of 5. We expect to increase the by the end ofthis financial year. This will allow us to andenable us to cope with expected increase in demand for our trips.

7. We have also expanded our fleet vehicles from 1 to 3. The major addition is a 15seat Toyota Coaster registered as a public passenger vehicle with my companyaccredited as the commercial operator. The Toyota Coaster is used primarily totransport clients to the river and back again. By offering this service in-houseinstead of hiring a chartered bus service the company has saved on expenses andincreased income. Exhibit EJE-5 annexed hereto shows photograph of ourvehicle fleet bearing our logo.


9. We have also expanded our staff. The following confidential information isprovided:

10. Our advertising strategy covers Internet, social media, tourism awards, businesscards, hardcopy brochures and vehicle branding. The following confidentialinformation is provided:

Exhibit EJE-6 annexedhereto shows representations of the and brochures.

I \

u. The main thrust of our adYertising and marketing strategics has been on the Internet and social media. Our website has had two major re\'amps since its original launch in 2012. Our social media program includes Facebook, Instagram, Twitter, Google+, You Tube, Tumblr, Trip .\d,·isor, Pintcrest, Linkedln and other social media. The follo\\;n confidential information is offered:

12

\ i3. We have a detailed business plan which co,·ers the next fo·c years. Confidential

exhibit EJE-7 annexed hereto is a Yersion of our business plan which details some of the plans mentioned abo,·e.

I make this declaration conscientiously belie,·ing the statements contained in this

declaration to be true and correct.

£---Elias J ustus Eichler

Declaredat: ~"- ;>11...LCt--;5

Dated: S-- ?J -2-0 \.)"

AUSTRALIA



EXHIBIT EJE-5

Attached hereto is the material called "Exhibit EJE -5" and referred to in Paragraph 7 of the supplementary Declaration declared by Elias J Eichler

1

1

AUSTRALIA



CONFIDENTIAL EXHIBIT EJE-7

Attached hereto is the confidential material called "Exhibit EJE -7"and referred to in Paragraph 13 of the Supplementary Declarationdeclared by Elias J Eichler

Exhibit EJE-7 Exempt 15 pages

AUSTRALIA



EXHIBIT EJE-6

Attached hereto is the material called "Exhibit EJE -6" and referred to in Paragraph 10 of the Supplementary Declaration declared by Elias J Eichler

1

Elias Eichler l'e-lie'asl

raft guide I cook I bus driver I office logistics

fly fisherm an I whiskey connoisseur

0422 642190 www.franklinriverrafting.com

Franzi Ruetz l'fren-zze l

raft guide I cook I bus driver I social media

horse enthusiast I wine connoisseur


Adrian Kiernan l'aid-re'annel

raft guide I cook I professional kayaker

plastic welder I fi lm producer


2

Leon Bedford lla '6nl

raft guide I cook I canyoneer I bushman

fashion designer I whiskey connoisseur


Alayne Hamilton l'a-lanel

raft guide I cook I osteopath in-t rain ing

high water omen I whiskey connoisseur


Riley Best l'rye-leel

raft guide I cook I kayaking pilgrim

plastic welder I whiskey connoisseur


Shaun Everson l'SH6rnl

raft guide I cook I bus driver I logist ics

seeker of t ruth I man of integrity

0422 642 190 www.franklinriverrafting.com

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