Allergan, Inc, Re

[1996] ATMO 62

TRADE MARKS ACT 1995

REASONS FOR ACCEPTANCE BY A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade mark application number 555460 in the name of ALLERGAN, INC for registration of the trade mark CLEAN-N-SOAK

Background

Application number 555460 was lodged by ALLERGAN, INC (the applicant) on 7 May 1991. The application is in respect of “ophthalmic preparations in this class including contact lens care preparations”, in Class 5, for the trade mark CLEAN-N-SOAK in plain type.

An examiner of trade marks objected to the trade mark’s registration under paragraphs 24(1)(c), (d) and (e) of the Trade Marks Act 1955, on the grounds that the trade mark consisted of the phonetic equivalent of CLEAN AND SOAK, which refers directly to the character and quality of the goods as being “preparations in which contact lenses are cleaned while soaking”.

The application has had four reports issued on it in total, the last two from a Principal Examiner. Evidence of use was tendered, in the form of a statutory declaration by Edward Alfred Cottrell, Director of Allergan Australia Pty Ltd, a wholly owned subsidiary of the applicant. This declaration indicated that the trade mark has been continuously in use since 1973, in respect of “a de-germing and hydration solution for contact lenses”. Also tendered were nine declarations from optometrists, all attesting to their long (between twelve to “greater than twenty” years) knowledge of use of the trade mark on the goods throughout Australia. Unfortunately, although six of the optometrist’s declarations attested to knowledge of use of the trade mark for twenty years or longer, the applicant itself was unable to provide sales figures supporting that use prior to 1987. It also indicated that:

The type of contact lenses for which the Goods are designed is known as a hard (PMMA) contact lens and, during the 1970’s, this type of contact lens comprised the major portion of the Australian and, indeed, the world-wide contact lens market. However, since the early 1980’s and the development of the ‘soft contact lens’, use of the PMMA lens has declined and today represents less than 1% of the total contact lens market. Accordingly, active full scale promotion and advertising of the Goods has not been required. Furthermore, records of earlier advertising expenditure in relation to the Goods are no longer available. Nevertheless, the Goods are still advertised and promoted by way of point-of-sale advertising.

The Principal Examiner maintained the objection in the face of this evidence, firstly on the basis that, as the trade mark had no inherent distinctiveness within the meaning of subsection 26(2) of the Trade Marks Act 1955 (the repealed Act), the question of distinctiveness in fact was not relevant.

The application for registration in question was made under the repealed Act, and was pending immediately before the commencement of the Trade Marks Act 1995 (the new Act), on 1 January 1996. Thereafter, under section 241 of the new Act, the trade mark’s registrability was then required to be reconsidered under Division 2 of Part 4 of that Act.

The last report, dated 22 February 1996, duly reviewed the trade mark in the light of the commencement of the new Act. The ground of rejection was maintained under section 41, on the basis that the purpose of the product is to clean and soak (as indicated by its advertising brochures), and that the combination CLEAN-N-SOAK used in reference to that product does not result in a “combination with any inherent adaptation to distinguish.”

The applicant was informed that the trade mark could only be accepted following evidence of factual distinctiveness in terms of subsection 41(6), in line with that provided in the decision Oxford University Press v. Registrar of Trade Marks (1990) 17 IPR 509 (F.C.), “Oxford”. The evidence of use that had been provided to date was found deficient, for the following reasons:

• No sales figures provided for the period prior to 1987, although use was claimed since 1973

• Sales appeared to be small

• There was no reference to market share, which could enable the significance of the sales figures to be judged

• Declarations by professional people alone were of limited assistance as the product appeared to be directed at the average contact lens user.

The application was then referred to the Hearings Section, where the applicant was given the option of requesting a hearing upon the issue of registrability of the trade mark, in the event that any further submissions it might make did not overcome the ground for rejection. The applicant provided further submissions in the form of a statutory declaration made by Peter Louis Abrahamson, also of Allergan Australia Pty Ltd, for consideration. My conclusions, arrived at after due consideration of this declaration, together with the evidence previously filed, are explained below. The applicant was not required to be heard on the matter.

Discussion
The steps to be taken by the Registrar’s delegate in determining whether a trade mark is capable of distinguishing the applicant’s goods under the new Act begin under section 41.

Sub-sections 41(2) and (3) of the Act read, respectively:

(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.

The grounds of rejection maintained against the mark CLEAN-N-SOAK to date have been based upon the argument that it is devoid of inherent adaptation to distinguish. Such a trade mark by-passes the criteria laid down under subsections 41(3) and 41(5), which take into account the fact that a trade mark is either wholly, or at least to some extent inherently adapted to distinguish a person’s goods. A trade mark found by the Registrar to be devoid of inherent adaptation to distinguish may only be considered for acceptance under the provisions of subsection 41(6) of the Trade Marks Act 1995, which provide that:

If the Registrar finds that the trade mark is not 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.

The Trade Marks Office Draft Manual of Practice and Procedure (the Draft Manual) discusses the requirements of subsection 41(6) at Part 23, Section 3.3. It describes the requirements of subsection 41(6) as “much more stringent” than those of subsection 41(5), in that reliance is placed, not on intended use, but on established use prior to filing. The Draft Manual continues:

It [subsection 41(6)] places a heavy onus on the applicant to demonstrate that the trade mark designates only its goods or services in the mind of the relevant buying public and that the ordinary signification of the word, device etc. is eclipsed by its trade reputation. It will not usually be enough to establish the extent and duration of the applicant's own use. It may also be necessary to establish the nature of the perception enjoyed by the trade mark in the market place.

However, it does not necessarily follow, from the wording of subsection 41(6), that the guidelines for the use required to establish distinctiveness in fact laid down in the “Oxford” case, supra, must as a matter of course, be applied to any trade mark application deemed to be “not inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. The extent of use required before a trade mark denoting world-renowned geographical origin such as OXFORD, name of a famous historical university city, may be said to distinguish in fact “printed publications”, should not be identical to the extent of use necessary to distinguish in fact a trade mark which, although “ordinarily used to indicate” a particular characteristic (for example) of the goods on which it is used, is nevertheless one of a variety of alternatives, in a small, specialised market.

Notwithstanding the above, the guidelines set out in the Draft Manual do give a clear picture of the breadth of evidence required by the Registrar for acceptance under subsection 41(6), and I agree with the Principal Examiner that the evidence provided in the present case does not meet those guidelines.

I also agree with the Principal Examiner that, unarguably, the trade mark CLEAN-N-SOAK is by no means capable, solely on its own inherent merits, of distinguishing the applicant’s goods.
The single point upon which I do not agree with the Principal Examiner’s findings relates to his determination that this trade mark is inherently devoid of any capacity to distinguish the applicant’s goods.

My reasons for coming to this conclusion are based largely on consideration of the explanatory note associated with subsection 41(6), which states:

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.

The uncompromising description “ordinarily used to indicate”, appears to preclude all but the most commonly used phonetic equivalents from falling into this category of trade marks.

There is no doubt that there do exist shortened phonetic equivalents of longer phrases that are popularly used in descriptive advertising. Phonetic equivalents that are “ordinarily used to indicate”, and that would therefore come within the ambit of subsection 41(6). WASH’N’WEAR and B-B-Q are examples that spring to mind. However, in practice, eye catching hyphenated words such as CLEAN-N-SOAK are more widely popular with advertisers as trade mark, rather than descriptive, material. As a result, and in contrast to other equivalent words in common use, these words have something of a “trade mark feel” about them.

The hyphenated trade mark CLEAN-N-SOAK, with the “a” and “d” from “and” omitted, is clearly designed to impart certain information about the contact lens care preparations to which it is applied, but does so by way of a catchy single word. The word by no means conveys the same visual impression to the prospective buyer as would a label proclaiming the product to be CLEAN AND SOAK solution. This is despite the fact that the two alternatives may be practically phonetically equivalent. Another phonetic alternative, CLEAN’N’SOAK, might be suspected of crossing the barrier into subsection 41(6), as the apostrophised ‘n’ is the more usual means of expressing “and”.

However, there is one other relevant factor to consider when looking at the combination CLEAN-N-SOAK, which would have applied equally to CLEAN’N’SOAK, should it have been necessary (which it was not) for me to consider the inherent capacity of that combination to distinguish the applicant’s goods. That additional relevant factor is the actual grammatical usage of the combination. The recognised trade term most likely to be required by other traders in honestly describing such a product is not “clean and soak solution”, but the phrase used even by the applicant on its own labelling, that is: “cleaning and soaking solution”.

By virtue of the combination of the three factors, phonetic rendering, hyphenation and grammatical usage, I believe that, although the meaning behind the combination CLEAN-N-SOAK is perfectly clear, it is not quite “a sign that is ordinarily used to indicate” the goods in question. It follows, therefore, that there is some doubt as to whether the trade mark is totally devoid of adaptation to distinguish.

The Trade Marks Act 1995 differs from the Trade Marks Act 1955 in that it incorporates a presumption of registrability. The Draft Manual, at Part 20, Section 4.1, says:

If it is uncertain that a ground for rejection of an application exists, that is unless a sound argument can be put as to why the application cannot be accepted for registration, then the benefit of the doubt will be given to the applicant and the application must be accepted provided it is otherwise in accord with the Act and regulations.

In the present case, the ground of rejection is not said to exist because the trade mark in question has little inherent distinctiveness, and has not been used, and/or is not subject to any special circumstances. The ground of rejection has been found to exist simply because the trade mark has been deemed to have no inherent distinctiveness. Following from that conclusion, and given that the trade mark has not been used, or at least is not on record as having been used, to the “eclipsing” extent referred to in the Draft Manual, it has been found not to qualify for acceptance under the provisions of subsection 41(6).

I have described in some detail my reasons for doubting whether this trade mark is indeed entirely lacking in inherent capacity to distinguish. I therefore propose to resolve this doubt in favour of the applicant, find that the trade mark CLEAN-N-SOAK contains just a hint of adaptation to distinguish, and accordingly consider it for acceptance under the provisions of subsection 41(5) of the Act.

Sub-section 41(5) of the Act reads:

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 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.

This means that I must assess the combined effect of sub-paras (i), (ii) and (iii) of para (a) in order to determine the trade mark’s registrability. I have already indicated that I believe that the trade mark CLEAN-N-SOAK contains only a hint of inherent adaptation to distinguish the goods. I must therefore place significant weight upon the second and third criteria outlined above.

The second criterion relates to “the use, or intended use of the trade mark by the applicant”. The Draft Manual discusses at Part 22, Section 6, the value of evidence of use, or intended use, for the purpose of showing that, at some future date, a trade mark will distinguish one trader’s goods from those of another.

As Lord Parker stated in the case of Du Cros (W&G) Ltd’s Appn (1913) 30 RPC 660 and as quoted by Kitto J. in Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511 (the Michigan case):

The applicant’s chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend on whether other traders are likely, in the ordinary course of their business, and without any improper motive, to desire to use the same mark or some mark nearly resembling it, upon or in connection to their own goods.

The more a trade mark with some adaptation to distinguish is used, or its intended use is promoted, the less likely it will be that other traders, having no improper motive, will need to use the trade mark in connection with their own goods or services.

I have previously described the extent of the documented use of the applicant’s trade mark. In addition to the evidence provided in the course of examination, the statutory declaration by Peter Louis Abrahamson, to which I referred above, attested to the fact that the CLEAN-N-SOAK product enjoys approximately 15% of the hard contact lens care product market.

I have taken into account the length and extent of use of the trade mark in Australia, as evidenced by the sales figures provided by the applicant, and confirmed by the supporting trade declarations by experienced optometrists. This, together with the trace of inherent capacity to distinguish within the trade mark itself, I believe is sufficient to render it unlikely that other traders within this clearly narrow and specialised market would wish to use the hyphenated single word CLEAN-N-SOAK on their products unless it was with improper motive.

I do not, however, have to make my decision based upon these factors alone, as I may also take into account the third and final criterion provided in subsection 41(5), “any other circumstances”.

The applicant indicated in its original evidence, provided during examination, that it had secured registration of the trade mark in fourteen overseas countries in relation to the same or similar goods to those covered by the present application. Applications were pending at that time in a further five countries, including the United Kingdom and New Zealand.

The Abrahamson declaration had annexed to it a copy of the New Zealand registration certificate, issued in December 1995. Also annexed was a copy of the advertisement of acceptance of the application by the British Patent Office, dated 26 June 1996. This advertisement of acceptance was endorsed “proceeding because of distinctiveness acquired through use”, and the goods covered were “contact lens care preparations”. The advertisement was accompanied by a copy of a letter from an examiner in the British Patent Office, advising that:

I have considered the exhibits you have provided and accept that Clean-n-Soak is not the normal descriptive term relating to these goods. The application is therefore in order to proceed.

The existence of the many overseas registrations indicates both the applicant’s commitment to and use of the trade mark worldwide, and also the recognition that has been given by other countries of the trade mark’s capacity to distinguish the applicant’s goods. It is reasonable to take into account the assessment afforded a trade mark by comparable jurisdictions, when assessing that trade mark’s capability to distinguish the applicant’s goods in this country. The information relating to acceptance of the trade mark in the United Kingdom indicates that it has only been accepted on a full assessment of its capacity to distinguish in the British market.

These various factors relating to the applicant’s overseas applications and registrations for the trade mark CLEAN-N-SOAK, clearly represent material “other circumstances” for the purposes of subsection 41(5).

Conclusion
Having taken into account the combined effect of all three criteria offered by subsection 41(5), I find that, in terms of paragraph 41(5)(b), I am now satisfied that the trade mark does or will distinguish the applicant’s particular goods of interest, that is “contact lens care preparations”. I have therefore requested the applicant to consent to the broader description “ophthalmic preparations in this class” being deleted from the statement of goods of this application. That amendment having been effected, I must, in accordance with subsection 33(1), accept the application.

Claudia Murray
Senior Examiner
5 December 1996