Allergan, Inc, Re

This matter concerns an application by Allergan, Inc. for the registration of the trade mark CLEAN-N-SOAK in relation to ophthalmic preparations, specifically contact lens care preparations. The application, lodged in 1991, was initially objected to by a trade marks examiner on the grounds that the mark was the phonetic equivalent of "clean and soak," directly describing the character and quality of the goods. The objection was maintained under both the repealed Trade Marks Act 1955 and the subsequent Trade Marks Act 1995, with the examiner asserting the mark lacked inherent distinctiveness.

The legal issues before the delegate of the Registrar of Trade Marks were whether the trade mark CLEAN-N-SOAK was capable of distinguishing the applicant's goods, and if not inherently adapted to distinguish, whether it had acquired distinctiveness through use. Specifically, the delegate had to consider the application of section 41 of the Trade Marks Act 1995, which requires a trade mark to be capable of distinguishing goods or services. The delegate also had to determine if the evidence of use provided by the applicant was sufficient to overcome the objection that the mark was devoid of inherent distinctiveness, particularly in light of the stringent requirements of subsection 41(6) for marks not inherently adapted to distinguish.

The delegate reasoned that while the trade mark CLEAN-N-SOAK clearly conveyed information about the product's purpose, its hyphenated form and phonetic rendering, combined with the grammatical usage of "cleaning and soaking solution" as the more likely descriptive term, meant it was not a sign "ordinarily used to indicate" the goods. This led to a doubt as to whether the mark was entirely devoid of inherent capacity to distinguish. Applying the principle of resolving doubt in favour of the applicant under the Trade Marks Act 1995, the delegate considered the mark under subsection 41(5). This required assessing the combined effect of the mark's inherent adaptation to distinguish, the extent of its use, and any other circumstances. The delegate found that while the inherent adaptation was minimal, the documented use, market share of approximately 15% in the hard contact lens care product market, and crucially, numerous overseas registrations and the acceptance of the mark in the United Kingdom based on acquired distinctiveness, constituted sufficient "other circumstances" to be satisfied that the trade mark did or would distinguish the applicant's goods.

Consequently, the delegate requested the applicant to amend the statement of goods to delete the broader description "ophthalmic preparations in this class," and upon this amendment being effected, accepted the application for registration.