Amcor Limited v ACI Operations Pty Ltd

[2000] ATMO 67

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Amcor Limited to registration of trade mark applications numbers 551192, 551525, 553265, 553266, 575398, 575399, 578026 and 589035 in the name of ACI Operations Pty Ltd

Background

As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

On 3 May 2000, I issued an interim decision in relation to opposition on the above-identified trade mark applications.  In that decision, I dismissed the opposition based on s.29, but found that the applicant's marks had not been used in the trade mark sense.  I allowed the parties three weeks from the date of my decision to advise me whether I should also decide the matter in terms of s.26 of the Act.  Full details surrounding this question are set out in the said decision.  I have been informed by the applicant's attorneys, within the time specified, that the applicant will not seek leave to lodge further evidence on the matter.  The applicant has, however, requested that the s.26 issue be decided.  

The relevant details of the applications are reproduced below:
Applications numbers 551192 and 551525 were lodged on 5 March 1991.  The marks are shown below:

  

551192  551525

Acceptance of these two marks was advertised in the Australian Official Journal of Trade Marks (the Official Journal) of 11 November 1993 and 19 August 1993, respectively, in respect of "plastic bottles and plastic containers in this class for holding liquids", being goods in class 20.  Both applications bear an endorsement to which, in this decision, I will refer as the 'disclaimer' endorsement.  It reads:  

Registration of this trade mark shall give no right to the exclusive use of the letter R except as represented in the mark, the device of a RECYCLE TRIANGLE and the number 1. 

Application number 551192 has an additional endorsement, henceforth in this decision to be identified as the endorsement relating to a 'condition of registration':

It is a condition of registration that the mark will only be used in relation to goods containing recycled PET, which is an acronym for POLYETHYLENE TEREPHTHALATE. 

On 5 April 1991, the applicant lodged two further applications, numbers 553265 and 553266, to register the marks:

 

553265  553266
Application 553266 was advertised as accepted in the Official Journal of 2 September 1993, while that of application 553265 - on 20 October 1994, both applications being in respect of "containers in this class including plastic bottles and all other goods in this class", being goods in class 20.  The acceptance of applications 553266 shows the same disclaimer endorsement as was entered against the applications 551192 and 551525.  On application 553265 the disclaimer endorsement differs slightly in that the word "separate" has been inserted between the words "to the" and the word "exclusive".  Both application 553265 and application 553266 also have the endorsement:

It is a condition of registration that the mark will only be used in relation to goods containing PET, which is an acronym for POLYETHYLENE TEREPHTHALATE.

Applications numbers 575398 and 575399 were lodged on 30 March 1992 as divisional applications of application 551525 in terms of s.43 of the Act, claiming a priority date 5 March 1991.  The representations of these marks are:

Series of marks

 

 

575398  575399
The acceptance of these applications was advertised in the Official Journal of 12 May 1994 and 23 September 1993, respectively, for "plastic bottles and containers; goods in this class for holding beverages and other liquids and all other goods in this class", being goods in class 20.  Both applications bear a disclaimer endorsement:

Registration of this trade mark shall give no right to the exclusive use of the letter R except as represented in the mark.

Application 575398 has an additional condition of registration endorsement which is worded the same as the one in respect of applications 553265 and 553266. 

The applicant lodged application 578026 on 8 May 1992.  Application 589035 was lodged on 22 October 1992 with a divisional status claim based on application 551192, lodged on 5 March 1991.  The representations of these marks appear below:

 

578026  589035
The acceptance of application 578026 appeared in the Official Journal of 9 September 1993 in respect of "plastic containers; plastic bottles and jars and all other goods in this class", being goods in class 20.  The Official Journal of 28 October 1993 carried acceptance of application 589035 in respect of "containers in this class including plastic bottles and all other goods in this class" - class 20.  Both applications show an identical disclaimer endorsement to the one entered against applications 575398 and 575399.  Application 578026 has the same endorsement concerning the condition of registration as applications 553265 and 553266. 

The grounds in the notices of opposition in respect of all the applications and a summary of the lodged evidence have been included in my previous decision.

Submissions and discussion in relation to distinctiveness of the marks
Concerning this issue, Mr Fitzpatrick submitted that none of the applicant's marks satisfied the requirements of s.26 of the Act.  The most fundamental requirement of a registrable trade mark is that it be adapted to distinguish the goods/services of one person from others - Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65, he said. The marks of the opposed applications, however, did not distinguish and were incapable of distinguishing the applicant's bottles or containers from those made by other persons, the reasons for this being that the 'R' logo marks were used as a recycling code. The marks had never been used to indicate to consumers that the products were made by the applicant. In support of this contention, Mr Fitzpatrick referred to exhibits annexed to Mr Clark's declaration and the two declarations from Mr Illingworth. Further, it emerged from Mr Clark's exhibits that the mark used by the applicant to denote the origin of its goods was ACI PETALITE, Mr Fitzpatrick submitted, citing Philips Electronics BV v Remington Consumer Products [1998] RPC 283 and Re Dexion Group PLC  - a Trade  Marks Office decision of 13 April 1994. 

Regardless of how the applicant used its marks, the marks themselves have little if any capacity to distinguish, Mr Fitzpatrick continued, proceeding to comment on the 'R' logo marks individually.  Arguing that an addition of a commonly used device, such as a circle, to a single letter in marks did not increase those marks' inherent distinctiveness, as per Ford-Werke A.G.'s Appn  (1955) 72 RPC 191, Mr Fitzpatrick said that the marks of applications 575399 and 589035 lacked inherent distinctiveness, which was reinforced by the fact that a continuous device containing or consisting of arrows was commonly adopted to indicate that a product or material is recyclable. Even if use of the 'R' logo was taken to be use as a trade mark with respect to the applicant's containers, the onus rested on the applicant to establish, by evidence of use, that such a mark had become distinctive of the applicant's goods, i.e. to show that the mark was perceived by the public as a badge of origin - British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 at 286. The applicant's promotional material indicated prominent use of the mark ACI PETALITE, Mr Fitzpatrick said. When the 'R' symbol was used on the labels of the companies which purchased the containers, the symbol invariably appeared in close proximity to the trade marks of the purchasing company. With reference to the applicant's marks that include some additional material, Mr Fitzpatrick submitted that none of the material conferred inherent distinctiveness on the marks.

In responding to Mr Fitzpatrick's submissions, Ms Ryan reminded me that the applications were accepted in Part A of the Register under the 1955 Act, subject to disclaimers and/or conditions of registration.  The marks were intended to distinguish the goods of the applicant and to operate as a symbol of quality so that the goods coming to it for recycling were suitable for recycling.  There was no evidence, she said, that any other persons had used the same or any similar mark, as at the dates of lodgment of the applications for registration, to any of the 'R' logo marks.  Nor it had been shown that the 'R' logo was recognised, at those dates, as indicating  products made from recycled material, or that they were capable of being recycled.  Ms Ryan argued further that the subject applications were not for the letter 'R' itself, but for device marks incorporating a number of features.  In testing distinctiveness, she said, it was necessary to look at the mark as a whole: Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300. She submitted that it was wrong to dissect the mark and to show that each of its component parts is not distinctive and then to argue that the mark as a whole is not distinctive, as enunciated in Diamond T Motor Car Co Appn (1921) 38 RPC 373 at 380-381.

Ms Ryan directed my attention to the applicant's registrations for the word marks RE-PETE, RE-PET and REPETE, respectively, all of which have been registered in Part A of the Register.  Thus, both RE-PETE (533655) and RE-PET (534242) are  registered in respect of "containers in this class including plastic bottles and packages and all other goods in this class" and REPETE (623078) - in class 40 for "material treatment services in this class; recycling of materials including recycling services for plastic materials".

In view of the fact that registration of trade marks in Parts A or B has been abolished under the Trade Marks Act 1995, Ms Ryan submitted that consideration could be given to registrability of the marks under the provisions of s.25 of 1955 Act.  In the applicant's view, the 'R' logo marks were, at the very least, capable of becoming distinctive of the goods.  In support of this contention, the applicant could rely on use of the marks as evidenced by the material to Mr Clark's declaration: advertising and brochures, the amount spent on promoting the marks and sales of the containers under the 'R' logo marks.

All eight of the trade marks now being considered were accepted for registration in Part A of the Register.  For a trade mark to be registered in Part A of the Register under the 1955 Act, it needed to satisfy the following requirements:

24. (1)   A trade mark is registrable in Part A of the Register if it contains or consists of -
      (a)       the name of a person represented in a special or particular manner;

(b)the signature of the applicant for registration or of some predecessor in his business;

(c)an invented word;

(d)a word not having direct reference to the character or quality of the goods or services in respect of which registration is sought and not being, according to its ordinary meaning, a geographical name or a surname; or

(e)any other distinctive mark.

(2)     A name, signature or word (not being a name, signature or word      described in paragraph (a), (b), (c) or (d) of the last preceding sub-section) is not registrable in Part A of the Register unless it is, by evidence, shown to be distinctive. 

1. A trade mark may be registered in Part A of the Register in respect of any goods or services notwithstanding the registration of the trade mark or of a part or parts of the trade mark in Part B of the Register, in the name of the same person, in respect of the same goods or services or other goods or services.

Section 25 states that -

25. (1)        A trade mark is registrable in Part B of the Register if it is distinctive, or is not distinctive but is capable of becoming distinctive, of goods or services in respect of which registration of the trade mark is sought and with which the applicant for registration is or may be connected in the course of trade. 

(2)     A trade mark may be registered in Part B of the Register in respect of any goods or services notwithstanding the registration of the trade mark or of a part or parts of the trade mark in Part A of the Register, in the name of the same person, in respect of the same goods or services or other goods or services.   

A definition of a 'distinctive trade mark' is found in s.26:

26. (1)        For the purpose of this Act, a trade mark is not distinctive of the goods or services of a person unless it is adapted to distinguish goods or services with which that person is or may be connected in the course of trade from goods or services in respect of which no such connexion subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions or limitations. 

(2)     In determining whether a trade mark is distinctive, regard may be had to the extent to which -
      (a)    the trade mark is inherently adapted so to distinguish; and

(b)by reason of the use of the trade mark or of any other   circumstances, the trade mark does so distinguish.

Since distinctiveness of a mark is to be assessed as at the date of application for registration of that mark, it is for me to decide whether the applicant's marks qualified for registration under the provisions of s.24 of the Act as at the dates that each of the respective applications was lodged.     

Essentially, the applicant's 'R' logo marks consist of a letter 'R', a broken circle device and an arrowhead, with or without other material.  The additional matter, where it occurs in the marks, is either purely non-distinctive, or other trade mark matter.  In considering whether the marks were distinctive at the relevant dates and therefore registrable in Part A of the Register, I make the following observations.

The basic features common in all the applicant's 'R' logo marks are most apparent in the marks of applications 575399 and 589035 ("the basic 'R' logo marks").  These comprise the letter 'R' surrounded by a thick line forming an incomplete circle which is connected to the tips of the letter 'R' and ends with an arrowhead at the base of the  curve.  It was long established by authority that single letters did not qualify for registration in either Part A or Part B of the Register under the 1955 Act - W. & G. du Cros Ltd's Appn (1913) 30 RPC 660. If the rendering of the letters was considered to be distinctive or capable of becoming distinctive, then the mark could be registered subject to the letter being disclaimed, i.e. defining that the registration of the mark did not grant the proprietor of the mark exclusive right to use that letter. Registration of such a mark could also be justified by providing evidence concerning use of the mark.

In the Ford-Werke case, supra, it was held that the addition  to letters of matter consisting of non-distinctive character, such as borders or decorative features, did  not render the mark distinctive as a whole, because the letters are still the essential and most important features of the mark.  In that case, there being no evidence of use of the mark, it was refused registration in either Part A or Part B of the Register.

The marks of applications 575399 and 589035 are composite marks comprising more than simply a single letter and a device of a circle, the latter, I concede, being  popular and commonly adopted for use in trade marks by many traders.  I believe that the fact that the letter 'R' is joined to the surrounding device diminishes the impact of the letter in the mark.  Indeed, the incomplete circle device featuring an arrowhead at the point where the device  is broken detracts from the significance of the letter 'R', which in itself is designed in a rather unusual style.  Whilst, in my opinion, a combination of these elements was not suitable for the mark to be registered in Part A, I consider the  overall impression created by the three elements to be sufficiently exceptional to find that the marks of the two applications  were capable of becoming distinctive in terms of s.25 of the Act, having regard to the disclaimer endorsement entered against the two applications. 

To the extent that the only feature that distinguishes the mark of application 578026 from the marks considered above is the addition of the descriptive word PET (an accepted abbreviation for "polyethylene terephthalate") and therefore adds nothing to distinctiveness of the mark,  I agree with the opponent's submissions.  However, taking into account the condition of registration imposed in respect of the acronym PET, I consider that the mark met, at the relevant date, the requirements for it to be registered in Part B for the reasons outlined in relation to the applicant's basic 'R' logo marks.

It has also been submitted by the opponent that none of the material that has been added to the basic 'R' logo marks of applications 551192, 551525, 553265, 553266 and series of marks of 575398 confers distinctiveness to those marks.  I cannot accept those assertions.  The triangular device enclosing number 1 and the words CONTAINS RECYCLED PET are non-trade mark matters but, in each of the marks where these  particulars occur, they are balanced by what I consider to be a word  that either has no direct reference to the character or quality of the applications' goods, or is a registered trade mark covering the relevant goods.  In instances where the word REPETE would  perceived to be phonetically similar to "repeat" or its misspelling, I do not believe the definitions of the word "repeat" as "to do, make, perform, etc. again" or "to do or say something again", extracted from the Macquarie Dictionary and relied upon by the opponent, would be a descriptive and appropriate term for indicating that the plastic bottles and containers are recyclable.  I think there is substance in Ms Ryan's submissions that, with reference to the definitions of the verb "recycle" in the Macquarie Dictionary, a recycling process would normally involve some type of change in the product, whereas repeating an action is conceptually different and does not involve any change in nature.  The opponent's argument that the term "re" in the word RE-PET signifies "about" or "with reference to" does not take into account the presence of the hyphen in the word, which is more likely to attract an interpretation of it being a prefix indicating repetition, withdrawal or backward motion, rather than the preposition "re".  However, even allowing for the opponent's interpretation, I do not think it conveys any clear meaning, when used with the recognised acronym referring to a certain polymer and in the relevant context, i.e. the word RE-PET does not have a direct reference to the character or quality of the plastic bottles or containers.  Moreover, the word has stood on the Register for over ten years in respect of the goods which encompass those of the present applications.   For the reasons discussed and relying on Diamond T case, supra,  I find that the marks in their entirety were distinctive marks and therefore registrable in Part A, at the time of their respective lodgment dates.  My assessment of the marks in this regard is reinforced by the disclaimer endorsements whereby, in respect of all the applications, the applicant claims no right to the exclusive use of the letter 'R' except the manner in which it is  'R' is depicted and its acknowledgment, where relevant, concerning the non-distinctive nature of the device of the recycling triangle and the number 1.  I have also taken into account the applicant's undertaking that, where the term PET is included in the mark, use of the mark is to be limited to goods containing polyethylene terephthalate.                                

Having assessed the nature of the applicant's 'R' logo marks, I find then that the marks of applications 575399, 578026 and 589035 were not distinctive at the relevant dates, but that those marks satisfied the provisions of section 25 as marks capable of becoming distinctive and therefore registrable in Part B of the Register, subject to the existing conditions or limitations. 

I consider that the marks of applications 551192, 551525, 553265, 553266 and series of marks of application 575398 were distinctive, as at the dates when the applicant applied for registration of those marks, given the conditions or limitations in respect of use of the marks, as indicated by the endorsements.   As such the marks qualified for registration in Part A of the Register.

In view of above, the opponent has failed to establish the ground based on any  allegation that the marks were neither distinctive, nor capable of becoming distinctive at the critical dates.  Accordingly, the ground of opposition based on s.26 of the Act fails.   

Conclusions
Notwithstanding my finding that all the applicant's marks qualified for registration in either Part A or Part B and therefore would have been entitled to be registered in terms of s.241 of the Trade Marks Act 1995, from the evidence before me, I was unable to reach a conclusion that the applicant's 'R' logos have been used in relation to the nominated goods for the purpose of indicating a connection, in the course of trade, between the goods and the applicant, or a person authorised by the applicant to use the mark, within the meaning of s.6.  For the reasons of  this finding, I refer to my interim decision of 3 May 2000.

In summary, the opponent in these proceedings has not succeeded in respect of the grounds based on sections 26 and 29 of the Act.  It has, however, established the ground that the applicant has not used the marks of the subject applications as trade marks in respect of the goods specified in the respective applications.   I therefore refuse to register the trade marks of applications 551192, 551525, 553265, 553266, 575398, 575399, 578026 and 589035.   

Costs
Costs should follow the cause.  The opponent being the successful party in these proceedings is entitled to costs.  I therefore order that the applicant pay the opponent's costs. 

Vija Zars
Hearing Officer

6 July 2000