AIMMAD PTY. LTD.
[2015] ATMO 123
•22 December 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade Mark Application no. 1612666 – AUSTRALIAN PETTREATS series – in the name of Aimmad Pty Ltd
| Delegate: | Deirdre O'Brien |
| Representation: | Mark Metzeling, IP Gateway Patent & Trade Mark Attorneys |
| Decision: | 2015 ATMO 123 Section 33: application accepted or rejected – ground for rejection under s 41 – trade mark not inherently adapted to distinguish – evidence of use does not establish trade mark did distinguish the applicant’s goods at the date of application – s 41(3) applies – application not made in accordance with s 51 – application rejected. |
Background
Aimmad Pty Ltd (‘the applicant’) is seeking registration under the Trade Marks Act 1995 (‘the Act’) of what it claims to be a series of trade marks based on the expression AUSTRALIAN PETTREATS. The goods specified in its application are in class 31 and comprise:
Animal feed; animal foodstuffs; bedding for animals; bedding materials for animals; beverages for animals; chews for animals; food and food products or substances for animals; litter for animals; live animals and pet animals; vegetable protein foodstuffs for consumption by animals; pet food, including snack bar for animals, reward bar for animals, pig ears, pig chews, veggie ears, vegetable ears, veggie, pigs snouts, pigs trotters, pig trotter pieces, pigs ear strips, pork bone, pork, bones, beef, beef chews, beef ears, beef trainups, beef tendon, beef jerky, beef bully, beef hoofs, beef liver nibbles, beef liver, beef and cheese twiggy, beef and cheese, semi moist beef, braided tendons, turkey nibbles, turkey, tuna fillets, tuna, shark cartilage, shark, green lipped mussels, foods for animals with no additives, foods for animals with no preservatives, Australian fish, fish, whole fish, fish pieces, fish chips, kangaroo, kangaroo tails, kangaroo ribs, kangaroo rib rack, kangaroo tail small bites, kangaroo sticks, kangaroo tendons, kangaroo bone, kangaroo straps, kangaroo lami, kangaroo chips, kangaroo liver, kangaroo puff, kangaroo brisket, kangaroo chews, kangaroo trainups, chicken, chicken necks, chicken sticks, chicken nibbles, chicken and veal tender bites, semi moist chicken, chicken and veal tenders, chicken trainups, chicken straps, chicken and veal bites, chicken lami, chicken chips, chicken breast, chicken and lamb trainups, lamb puffs, lamb, lamb cubes, semi moist lamb, lamb neck, lamb nibbles, lamb sticks, lamb ears, lamb shanks, lamb trainups, lamb tail, lamb liver chips, lamb liver, lamb chips, carob, carob drops, yoghurt, yoghurt drops, strawberry, strawberry drops, liver, treats, dental sticks, dog treats, cat treats, chicken baked bone biscuits, beef and marrowbone baked bone biscuits, liver brownie baked bone biscuits, kangaroo baked bone biscuits, charcoal baked bone biscuits, multi flavour baked bone biscuits, biscuits, dog bar and chews
The application was examined by a delegate of the Registrar as required by s 31 of the Act. The examiner reported to the applicant that the requirements of s 51 for a valid series had not been met and that the applicant needed to limit the application to one trade mark. He noted that there was ground for rejecting most of the trade marks under s 41.[1]
[1] The examiner considered that the trade marks AUSTRALIAN PETTREATS CHICKEN TRAINUPS, AUSTRALIAN PETTREATS CHICKEN & LAMB TRAINUPS, AUSTRALIAN PETTREATS BEEF TRAINUPS, AUSTRALIAN PETTREATS BEEF & CHEESE TWIGGY, AUSTRALIAN PETTREATS ZERO, AUSTRALIAN PETTREATS LAMB TRAINUPS, AUSTRALIAN PETTREATS KANGAROO TRAINUPS, AUSTRALIAN PETTREATS NAKED and AUSTRALIAN PETTREATS LIVER BROWNIE BAKED BONE BISCUITS are capable of distinguishing.
The applicant’s legal representative provided submissions in answer to the examiner’s report as well as evidence of the applicant’s use of AUSTRALIAN PETTREATS as a trade mark but the examiner was not persuaded. The applicant then exercised its right to be heard pursuant to s 33(4). Section 33 relevantly provides:
Application accepted or rejected
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.(2) The Registrar may accept the application subject to conditions or limitations.
(3) If the Registrar is satisfied that:(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;the Registrar must reject the application.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.The matter was heard by me, a delegate of the Registrar of Trade Marks, on 26 November 2015. Mark Metzeling of IP Gateway appeared for the applicant. I now have to decide whether to accept or to reject application no. 1612666.
Discussion
Ground for rejecting application
In this matter the ground for rejecting the application is that pursuant to s 41 which provides:
Trade mark not distinguishing applicant's goods or services
(1) 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 (the designated goods or services ) from the goods or services of other persons.Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:(a) 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; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).(5) 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.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
The applicant seeks to register the following expressions as a trade mark series:
A trade mark is prima facie capable of distinguishing if it is adapted to distinguish. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd[2] (‘Cantarella’) the majority of the High Court held in accordance with the principles established in Clark Equipment Co v Registrar of Trade Marks[3], Burger King Corp v Registrar of Trade Marks[4] and other cases, that a determination of whether a trade mark is adapted to distinguish first 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.[5] Once the ‘ordinary signification’ is established an inquiry can then be made into whether other traders might legitimately need to use the words in relation to their goods.[6]
[2] (2014) 109 IPR 154.
[3] (1964) 111 CLR 511, 514.
[4] (1973) 1A IPR 504, 509.
[5] (2014) 109 IPR 154, 170 [70].
[6] Ibid [71].
When used in relation to pet foods, AUSTRALIAN PETTREATS describes the goods and their origin. It indicates that the goods are pet treats from an Australian supplier. It is the kind of description that any Australian supplier of pet treats is likely to use in the ordinary course of business. It would not be perceived by persons concerned with pet foods as being a badge of origin. Rather it is the type of trade mark considered by Jacobs J in British Sugar Plc v James Robertson & Sons Ltd (‘British Sugar’):
Take a very descriptive or laudatory word. Suppose the proprietor can educate 10% of the public into recognising the word as his trade mark. Can that really be enough to say it has a distinctive character and so enough to let the proprietor lay claim to the word as a trade mark altogether? The character at this stage is part distinctive but mainly not. I do not think it would be fair to regard the character of the word as distinctive in that state of affairs. But if the matter were the other way round, so that to 90% of people it was taken as a trade mark, then I think it would be fair so to regard it. This all suggests that the question of factual distinctive character is one of degree. The proviso really means “has the mark acquired a sufficiently distinctive character that the mark has really become a trade mark.” In the case of common or apt descriptive or laudatory words compelling evidence is needed to establish this. And in particular mere evidence of extensive use is unlikely to be enough on its own. Of course the power of advertising may be able to turn almost anything (save a pure description) into a trade mark, but it must be shown in a case of this sort that the mark has really become accepted by a substantial majority of persons as a trade mark – is or is almost a household word.[7]
[7] [1996] RPC 281.
I find that AUSTRALIAN PETTREATS is not to any extent adapted to distinguish the applicant’s goods. Pursuant to s 41(3) the onus is on the applicant to establish that because of its use of the trade mark before this application was filed on 20 March 2014, AUSTRALIAN PETTREATS had come to distinguish the applicant’s goods.
The applicant has filed evidence of its use of the expression AUSTRALIAN PETTREATS, and of the substantially identical expression AUSTRALIAN PET TREATS, as a trade mark. That evidence consists of declarations by Greg Minnikin, the applicant’s director, and Craig Hindle, the applicant’s accountant. Prior to the hearing the applicant also filed a declaration by its legal representative, Mark Metzeling of IP Gateway Patent and Trade Mark Attorneys.
Suffice it to say I am satisfied from the information contained in Mr Minnikin’s declaration that the applicant has used the expressions AUSTRALIAN PETTREATS and AUSTRALIAN PET TREATS as trade marks in relation to pet foods since 2010. From small beginnings, the applicant’s business has expanded steadily each year but it could not be said from the sales figures provided in Mr Hindle’s declaration that it has a significant share of the pet food market. That market is a very large one with potential consumers in every Australian household with a pet cat or dog. Although Mr Minnikin states that that the applicant’s goods are currently stocked in national retail outlets he does not say how long this has been the case.
Furthermore, as noted in British Sugar, even if the applicant had provided evidence of extensive use that may not have been sufficient to establish that a descriptive term has become a badge of origin in the relevant marketplace, capable of distinguishing the applicant’s goods from those of other Australian pet food suppliers. In other words, notwithstanding its use by the applicant as a trade mark, I am not satisfied that for the majority of persons concerned with pet foods, AUSTRALIAN PETTREATS is anything other than an ordinary description.
I find that s 41(3) applies with respect to the trade mark AUSTRALIAN PETTREATS.
As noted at paragraph 2 of these reasons, the examiner considered that some of the trade marks in the alleged series are prima facie capable of distinguishing. I do not agree. The trade marks AUSTRALIAN PETTREATS ZERO and AUSTRALIAN PETTREATS NAKED are to some extent adapted to distinguish but I am not satisfied that they are capable of distinguishing on that basis alone. Nor is there evidence of any, or of any sufficient, use before me which would permit a more favourable assessment.
Section 51
Section 51 provides:
Application – series of trade marks
(1) A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of goods and/or services if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:
(a) statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;
(b) statements or representations as to number, price, quality or names of places;
(c) the colour of any part of the trade mark.(2) If:
(a) the application meets all the requirements of this Act; and
(b) the Registrar is required (under section 68) to register the trade marks;
he or she must register them as a series in one registration.What are ‘material particulars’ was considered by the delegate in Effem Foods Pty Ltd:[8]
[B]y its construction, the words ‘if the trade marks resemble each other in material particulars’ within section 51(1) applies a threshold test that, if satisfied, allows the application of subparagraphs (a) to (d).[9] At one level, the expression 'material particulars' denotes that portion of the trade mark in which other traders, the public and the courts will regard the trade mark rights as residing. In other words, that part of the sign which has trade mark significance. On another level, the words 'material particulars' denotes all of the component parts that contribute to the identity of the trade mark.
[8] [1999] ATMO 80.
[9] I note that section 51 was amended in 2006 and that there is now no equivalent provision to subparagraph (d). However the requirement under section 51 that the trade marks resemble each other in material particulars was not affected by the amendment.
The applicant submits that the material particulars of each of the trade marks in the alleged series are the words AUSTRALIAN PETTREATS. It argues that consumers will regard those words as a trade mark and the other words as mere descriptions of the goods to which the trade marks are applied.
However in Darrell Lea Chocolate Shops Pty Ltd v Cadbury Ltd the delegate observed:
If it were said that to consider the words ‘material particulars’ is to view them as describing where the ‘gestalt’ of the trade mark lies, then those words indicate the essence of that from where the trade mark draws its identity as such. It would seem to be true of a trade mark which is established on a sign which lacks any inherent capacity to distinguish, that any change to that sign or indicia from which the trade mark is said to derive its gestalt must necessarily involve a major change to itself and hence its material particulars. Or, to state this another way, where a trade mark lacks any inherent capacity to distinguish, even minor variations must make a substantial difference to the ‘material particulars’ of the trade mark.[10]
[10] (2006) 69 IPR 386 at [46].
I find that none of the applicant’s trade marks draws its identity as a trade mark from the words AUSTRALIAN PETTREATS alone.[11] As noted earlier in these reasons AUSTRALIAN PETTREATS is an ordinary description. When it is combined with other words which are ordinary descriptions, the expression as a whole draws its identity from all the descriptive words. Thus the material particulars of AUSTRALIAN PETTREATS CAT TREATS are different from those of AUSTRALIAN PETTREATS PIG SNOUTS.
[11] Other than the expression AUSTRALIAN PETTREATS solus.
The evidence shows the applicant has used AUSTRALIAN PETTREATS as a trade mark and the applicant submits that because of that use at the date of application AUSTRALIAN PETTREATS did distinguish its goods so that consumers would regard its presence in each of the trade marks as an indication of trade origin. In that case, so the applicant submits, the remaining material in each trade mark falls into the category of ‘statements or representations as to the goods’ as specified by s 51(1)(a) of the Act.
I consider that submission has merit. When assessing whether an application has been made in accordance with s 51 the Registrar should not disregard information that goes to a relevant fact, namely whether or not consumers perceive AUSTRALIAN PETTREATS as a description or as an indicator of trade source. However the issue is moot as the applicant otherwise failed to establish that AUSTRALIAN PETTREATS has acquired a secondary meaning as a trade mark. Accordingly I find that the application has not been made in accordance with s 51 of the Act.
Decision
Pursuant to s 33(3) I reject application no. 1612666.
Deirdre O’Brien
Delegate of the Registrar of Trade Marks
22 December 2015
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