Amcor Limited v ACI Operations Pty Ltd

[2000] ATMO 38

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.

This matter concerns eight applications for registration of trade marks lodged by ACI Operations Pty Ltd (the applicant).  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. 

Notices of opposition to registration of the applicant's marks were lodged by Amcor Limited (the opponent) on the following dates:

551192 on 2 December 1993; 551525 - 19 November 1993; 553265 - 19 January 1995; 553266 - 2 December 1993; 575398 - 12 August 1994; 575399 - 23 December 1993; 578026 - 8 December 1993 and 589035 - 28 January 1994.

The grounds of opposition in respect of all the eight applications are set out hereunder.

1. That the applicant does not use or propose to use the alleged trade mark sought to be registered as a trade mark in respect of all of the goods specified in the said application.

1. That the applicant is not the proprietor of the alleged trade mark sought to be registered and is not entitled to claim to be the proprietor thereof and the applicant is therefore not a person entitled under section 40 of the Trade Marks Act to apply for registration.

1. That by reason of the alleged trade mark sought to be registered being one the use of which by the applicant would be likely to deceive or cause confusion the registration thereof upon this application is prohibited by the provisions of section 28(a) of the Trade Marks Act.

1. That by reason of the alleged trade mark sought to be registered being one the use of which by the applicant would be contrary to law the registration thereof on this application is prohibited by the provisions of section 28(b) of the Trade Marks Act.

1. That by reason of the alleged trade mark sought to be registered being one which in the hand of the applicant would be not entitled to protection in a Court of Justice the registration thereof on this application is prohibited by the provisions of section 28(d) of the Trade Marks Act.

1. That the registration of the alleged trade mark sought to be registered as applied for in the application would be prejudicial to the legitimate interests of the opponent and the opponent would be aggrieved thereby.

1. That the onus is upon the applicant to show that it is entitled to registration upon the application and the applicant has not discharged that onus nor can it discharge that onus.

1. That registration of the alleged trade mark sought to be registered on the application ought to be refused in the exercise of the Registrar's discretion, by reason of the conduct of the applicant and/or the nature of the alleged mark and/or of its use.

The hearing on the applications was held in Melbourne.  Mr Ben Fitzpatrick of Counsel, instructed by Ms Janelle Borham of Griffith Hack, patent and trade mark attorneys of Melbourne, appeared for the opponent.  Ms Margaret Ryan of Phillips Ormonde & Fitzpatrick, also patent and trade mark attorneys of Melbourne,  represented the applicant. 

The evidence
The evidence in support consists of a statutory declaration by John Richard Hoopman, manager of the Containers Packaging division of the opponent company.  He recites the history of the PET (polyethylene terephthalate) recycling scheme, which is funded by a levy paid by the beverage companies into a fund.  The monies from the fund are used to purchase empty PET soft drink bottles from collectors who collect the bottles from householders and recycling stations and deliver the bottles to recycling plants operated by the applicant and Smorgons Plastics.  Since the release in 1993 of COCA COLA PET bottles containing virgin and recycled PET, the soft drink market in Australia includes bottles manufactured from virgin plastics and from virgin/recycled plastics.  The scheme includes the participation of all of the major beverage companies, all of the PET soft drink bottle manufacturers, as well as collectors and municipal councils.  As far as Mr Hoopman is aware, the scheme does not include use of any of the applicant's subject marks as trade marks.  In 1991, Mr Hoopman says, the applicant decided to use the marks of the present applications on its custom moulded PET containers as a means of enabling the collectors to distinguish those containers from the non-PET custom moulded containers made by it and other companies and PET custom moulded containers manufactured by other companies.  He believes the only marks used by the applicant in relation custom moulded PET containers are those of applications 551525, 589035 and 575399.  He expresses the opinion, that the letter 'R' is recognised by domestic consumers as indicating that the packages or products marked with that letter are made from recycled material, or are capable of being recycled.  With reference to an exhibit to his declaration, he observes that, in some instances, the applicant indicates that the container can be recycled and that, in other situations, it uses the marks to indicate also that the containers are at least partly made from recycled PET. 

Roger William Clark, who is the general manger - technical of ACI Petalite (Petalite), a unit of the applicant company, has made a statutory declaration with exhibits, which form evidence in answer.  Mr Clark sets out the history of what he describes as the 'R' logo trade mark family.  In 1991, Petalite decided to adopt a distinctive mark which would be used in relation to containers having certain recyclability specifications prescribed by it and which were manufactured either by Petalite, or other container manufacturers who were authorised to use the mark under licence.  Containers made by other manufacturers bearing the mark were to comply with the quality standards prescribed by Petalite.   One of the purposes of the 'R' logo trade mark was to indicate that the containers were of a suitable standard for the applicant's recycling plant.  Another purpose of the mark was to indicate to consumers that the packaging was recyclable in particular at the applicant's recycling facility.  In 1991, Petalite embarked upon a large advertising campaign in relation to the marks, which is supported by copies of promotional and advertising material.  Mr Clark gives an approximate figure spent on promotion of the marks by Petalite and SCI Operations Pty Ltd (trading as Smorgon Plastics) - Smorgon - the licensee of Petalite, in relation to containers for four years prior to June 1996.  The applicant authorises the purchasers of its PET containers and containers of Smorgon, which comply with the prescribed standards, to incorporate the marks on their own labelling.  A selection of such labels on various products of different manufacturers are shown as exhibits.  Mr Clark states confidential figures representing sales of the containers under the marks from the time of their introduction.  A further confidential exhibit comprises a licence agreement between the applicant and Smorgon, the latter having been authorised to use the marks in relation to the PET containers in Australia.  Reference is made to an exhibited letter from the Plastics Industry Association to the Registrar of Trade Marks in 1993, acknowledging that the 'R' logo is the trade mark of the applicant. 

Meetings had been held with a view to the opponent becoming a licensee of the applicant, but, as negotiations progressed, the opponent was not prepared to pay the licence fee required by the applicant.  When the negotiations between the parties broke down, the opponent devised its own marks for use by its customers, which is the subject of applications for registration.  Mr Clark is aware of many instances of PET packaging carrying the opponent's mark ending up at the applicant's recycling plant, where the recycling organisations and processors have incorrectly assumed that the containers have been approved by the applicant for recycling at its plant.  As the applicant has no control over the quality of PET used in the opponent's containers, Mr Clark says there is no certainty that the opponent's recycled containers are not contaminating containers that have met the applicant's standards. 

Evidence in reply comprises a statutory declaration and exhibits by David Newall Illingworth, the recycling and special projects manager of a division of the opponent company.  I will refer to this declaration as Mr Illingworth's first declaration.  He questions Mr Clark's statement relating to the expenditure spent on promotion of the applicant's marks as trade marks in relation to the goods.  Referring to a sample of a label showing the applicant's mark in use, Mr Illingworth expresses the view that the letter 'R' is considered by domestic consumers to be a sorting identifier, or a code used to classify materials in a recycling process, producing as evidence an exhibit of a photographed City Council container.  The declarant comments further that the customers of the applicant's licensees have used the applicant's 'R' logo without any wording to indicate that the logo is the applicant's trade mark.  The references in Mr Clark's declaration suggesting that the applicant is the only party involved in the recycling scheme and has control over it are misleading, according to Mr Illingworth because, in the main, many other contributors in plastics recycling were involved in the recycling process before the 'R' logo was developed.  Mr Illingworth claimed that the collection of recyclable material is conducted by local councils and professional collecting organisations and other operators have recently commenced operations in the reprocessing and refining PET. 

In terms of regulation 47 of the Act, the applicant successfully applied for leave to adduce further evidence.  This evidence consists of a statutory declaration by Michael Peter Squires, a principal of the firm of attorneys acting for the applicant in the opposition proceedings.  To his declaration Mr Squires has annexed a copy of a statutory declaration and exhibits by David Newall Illingworth, which has been served on ACI Operations Pty Ltd's opposition to applications numbers 620098, 651022 and 651023, all in the name of the present opponent.  Mr Illingworth's declaration will be identified as the second Mr Illingworth's declaration. 

Preliminary matter relating to grounds not included in the notice of opposition
The opponent's primary submissions were based on the grounds relating to sections 26 and 29 of the Act. After completion of Mr Fitzpatrick's submissions on behalf of the opponent, Ms Ryan for the applicant objected to the opponent pursuing grounds that had not been explicitly stated in the notice of opposition, nor had the evidence suggested that the issues would concern such grounds. Although she had suspected that the distinctiveness issue could be raised and had actually prepared submissions on it, the applicant's evidence had not been tailored to answering the claim as to the lack of distinctiveness of the marks, there having been no specific ground relating to it. Had the applicant been aware of the distinctiveness challenge, it would have gathered and prepared appropriate evidence which addresses the issues surrounding it, she said. For that reason, the applicant wished to seek leave to lodge further evidence on the basis of natural justice, in the event of the distinctiveness issue being pressed. As to the s.29 ground, Ms Ryan said she had done no preparation whatsoever. Mr Fitzpatrick responded saying that the opponent would agree to providing the applicant with an opportunity to make submissions in respect of s.29. As to the matter of the applicant's further evidence in relation to s.26, however, he expressed strenuous objections, pointing to ground eight in the notice of opposition and submitting that it mentions use of the mark, the mark itself, and also use of the mark by the applicant as the basis of the Registrar refusing the application. He said it was an unfortunate fact that the Trade Marks Act 1955 had no provisions for the statement of grounds of particulars, therefore one had to be prepared for various grounds to be raised in the notice of opposition.  Referring to an unpublished Trade Marks Office decision Pinpoint Pty Limited v Kelly Properties, Inc., issued on 6 January 2000, Mr Fitzpatrick said that, in that decision, the hearing officer had accepted and reached a decision in relation to a ground not raised in the notice of opposition in view of the overall discretion available to the Registrar.  In relation to the applicant's claim that natural justice must be afforded to both parties in the proceedings, Mr Fitzpatrick submitted that that there was no legal authority to the effect that natural justice included the right to file further evidence, and that future delays in determining the present opposition would not be in either of the party's interests. 

It was finally agreed by both parties, and I accepted the proposal, that I would consider whether the present applications satisfied other grounds under the Act with the exception of the s.26 issue. The applicant was to be allowed two weeks until 22 February 2000 to make written submissions on the s.29 question, and one week to 29 February 2000 would be available to the opponent for responding to those submissions. If I were to find any extraneous grounds for consideration, which had not been raised in the notice of opposition and aired at the hearing, the parties were to be provided with an opportunity to put in their submissions. Subject to my decision as to those grounds, after the issue of the interim decision the applicant could be given some period of time to address the issue of distinctiveness in terms of s.26, adhering to a strict and realistic time table in the process and, if necessary, allowing the opponent a limited time to respond to any further evidence lodged by the applicant.

Both parties made written submissions on s.29 by the specified dates. Of the grounds worded in express terms in the notice of opposition, at the hearing the opponent relied on the first ground. As the other grounds stated in the notice of opposition, including those based on s.28 and s.40, were not introduced at the hearing, nor did the opponent's evidence support those grounds, I dismiss opposition in relation to all those grounds. Consequently, as a result of the negotiations between the parties in these proceedings, this decision will concern the s.29 question, and whether the applicant's marks were proposed to be used or are presently used as trade marks (ground one). I have found no other provisions under the Act that require my attention. At the end of this decision I will make further reference to matter concerning s.26.

As a preliminary matter, however, I will comment on the opponent's insistence that, by relying on a general ground seeking the exercise of the Registrar's discretion, the opponent may introduce a ground not specifically mentioned in the notice of opposition.

It is common practice for the opponents to raise a whole range of grounds in a notice of opposition and then, at the hearing of the opposition, to concentrate only on some of those grounds.  While a person should have no cause to complain if a notice of opposition had specified certain grounds, but she or he had chosen not to prepare submissions in relation to those grounds, it is a different matter if that person is taken by surprise by being expected to respond to something without any prior notice, or without even a hint that it might be raised as an issue at the hearing.  An opponent has three months at its disposal to consider and appropriately formulate the grounds upon which to base its opposition.  I do not think that an applicant should be placed in the difficult situation where it is expected to speculate on the kind of grounds that might occur to the opponent after it had lodged its notice of opposition, or on grounds that occurred to the opponent even after it completed service of its evidence on the applicant.  It is only fair and reasonable that in opposition proceedings the precise nature of the challenge be made known to the applicant in advance, so as to enable it to adequately defend a mark it seeks to register. 

The Registrar disapproves of the practice that has been adopted in the present case, where the opponent has chosen to make submissions on two major grounds not nominated in the notice of opposition.  In the Pinpoint v Kelly case, supra, upon which the opponent relied to justify its approach, the hearing officer said that his decision was not affected by the inclusion of a ground not mentioned in the notice of opposition.  He chose to discuss the matter for completeness and may not have done so had the ground produced a different result for the total opposition.  Such a situation differs considerably from the present case where the whole opposition rests primarily on ss.26 and 29, both having no specific mention in the notice of opposition.  It should be noted that in another recent as yet unpublished Trade Marks Office decision McDonald's Corporation v Macri Fruit Distributors Pty Limited, issued on 1 May 2000, the same hearing officer refused to consider submissions in relation to a ground omitted from the notice of opposition, because he considered that the notice of opposition did not comprehend that ground.    

I now turn to the submissions and discussion of the substantive issues. 

Submissions and discussion
Whether the subject applications contravene s.29 of the Act  
Referring to s.6 in the Act, which defines the term "word" as an abbreviation for that word and, in turn, to the definition of the term "abbreviation" being "an abridgement", which embraces "a word or symbol", the opponent has submitted that the symbol â is an internationally recognised abridgement of the term "registered". Thus, the opponent maintains, s.29 clearly covers this symbol. Relying on s.15AA and s.15AC of the Acts Interpretation Act 1901, the opponent submits further that the purposes and objects of s.29 of the Act were to prohibit traders from obtaining perpetual statutory monopolies in relation to the word "registered" and "the symbol â". The fact that regulation 4.15 of the Trade Marks Act 1995 includes the specific reference to the symbol â, the opponent says, supports the proposition that s.29 also covers this symbol. Further, because reg. 4.15 expressly refers to the symbol â indicates that it was one of the objects and purposes of s.29 of the 1955 Act to prohibit the granting of monopolies of that symbol.

With respect to the subject applications that contain the wording such as REPETE OR CONTAINS RECYCLED PET, the opponent submits that s.29 extends to applications which include signs nearly resembling those prohibited under the section.

The opponent considers the logos of applications 575399 and 589035 to be so nearly resembling the symbol â as to be likely to be taken for that symbol. Two of the applicant's exhibits in RWC-6, the opponent maintains, are a testimony to the similarity between the applicant's logo 'R' and the â symbol. It is suggested by the opponent that, had it occurred to the examiner to consider the s.29 issue during examination of the applications, it is possible that the applications would have been refused acceptance.

Even if it was to be found that the symbol â is not covered by s.29, the opponent submits, the applications should be refused, citing Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513. Moreover, according to the opponent, the applicant had not justified registration of the marks, and there was sufficient doubt concerning the possibility of confusion between the 'R' logo marks and the symbol â, hence registration of the applications should be refused in light of the principles expounded in Dunn's Trade Mark (1908) 7 RPC 311, at 315-316.

In its written submissions, the applicant says that none of the subject applications consists of or contain the word "Registered".  The symbol â is not an abbreviation but a symbol, it submits, noting that The Macquarie Dictionary does not contain a definition of this symbol.  It is not merely a shortened form of "Registered".

As to the opponent's interpretations of ss.15AA and 15AC of the Acts Interpretation Act 1901, the applicant says that, in terms of the former section, it is not legitimate to argue that s.29 can mean the same as reg.4.15 under the 1995, because it would be contrary to the clear words of what the Interpretation Act states, while the latter section does not have the effect of retrospectively altering the interpretation of earlier legislation so that it means the same as a later piece of legislation. The applicant observes that reg.4.15 uses the word "symbol", and that it was thought necessary to expressly include a reference to the symbols ã and â in the regulation, even though the definition of the "word" is identical in both Trade Marks Acts. The draftsman of the 1995 Act and Regulations, the applicant comments, seems to have recognised the difference between a word and a symbol and therefore did not consider a symbol to be the same thing as an abbreviation. It is further submitted that reg.4.15 does not merely reproduce the ideas of s.29 of the Act, but extends the list of signs, and it includes symbols which were not included in s.29. Even if the symbol â is covered in s.29, the applicant says that none of the subject trade marks so nearly resembles the symbol as to be likely to be taken for that symbol. For that reason the examiner had not raised an objection based on s.29, nor did the opponent include a s.29 ground in its notice of opposition.

With specific reference to the two exhibited labels which the opponent has selected as evidence of purported similarities between the applicant's 'R' logo and the â symbol, the applicant points out that the consumers would hardly be likely to believe that the 'R' logo marks were the â symbol, because the marks are accompanied by the word "Trademark".  Further, the 'R' logo on the first label appears in close proximity to the 'recycle' logo so that consumers are more likely to assume that the 'R' logo is saying something about the container of the product.  On the second label, the presence of both the 'R' logo and the â symbol highlights the difference between the two in the second label, according to the applicant.  

Section 29 as it relates to the matter in suit reads:

29.(1)  The registrar may refuse to accept an application for the registration of a trade mark which contains or consists of any of the following marks or a mark so nearly resembling any of those marks as to be likely to be taken for that mark:
      (a)  the word or words "Patent", "Patented", "By Royal Letters Patent",
            "Registered", "Registered Design", "Copyright", "To counterfeit this
             is a forgery", or a word or words to the like effect; … .

Para (a) of s.29 clearly does not include a specific reference to any symbol. Pursuant to s.6 of the Act, a "word" includes an abbreviation of the word. While the definition of the term "abbreviation" may be an abridgement which could refer to a word or a symbol, as argued by the opponent, in the present context the meaning of an abbreviation of a word must be interpreted as it would be understood in the normal sense of the word, i.e. as referring to a shortened form of a word or words identified in the above-quoted paragraph (a).

It is acknowledged that the symbol â has become an internationally known symbol indicating that a trade mark is registered. It would be understood as such by a large proportion of the community in Australia. However, it has no meaning as far as it concerns s.29 of the Trade Marks Act 1955. This is confirmed in a CCH publication, the Guidebook to Australian Trade Marks and Practice, second edition, 1985, by Adam Liberman , at p.144:

In order to place potential infringers on notice that a particular trade mark is registered it should be identified accordingly.  There are numerous ways in which this can be done including:

…

(c) using the symbol â adjacent to the relevant trade mark.  Whilst this symbol is not recognised under the Act as having any effect in Australia, its common usage has resulted in its being generally accepted as an indication of registration. 

I cannot accept the opponent's argument that the 'R' logo marks of the present applications, particularly of applications 575399 and 589035, are so similar that consumers would be likely to see them as the â symbol.  The â symbol consists of the upper case letter 'R' enclosed in a full circle.  The logo marks of the two identified applications comprise a stylized letter 'R' in an incomplete circle which is broken by an arrow head at the bottom of the letter 'R'.  Unlike the letter 'R' in the â symbol, in the applicant's logo the letter is connected to the circle.  These differences are sufficient to distinguish the 'R' logo marks from the â symbol, particularly having regard to the latter being a widely recognised and accepted symbol standing for the word "registered".

In both examples of the labels, where the 'R' logo and the â symbol appear in close proximity, the differences between them are further distinguished by the presence of the word "Trademark" under the 'R' logo, as stated by the applicant.  The other applicant's marks contain additional elements, either a word or words with or without the triangular device, all of which would remove any vaguely perceived similarities between the â symbol and the applicant's logo marks.  As the applicant has observed, the â symbol always appears on its own, so that the inclusion of other matter in the applicant's marks clearly establishes that the marks are very unlikely to be regarded as representing that symbol.  The opponent has not produced any evidence to substantiate its claim of the likelihood of the applicant's marks being taken for the symbol â even though, according to Mr Clark's declaration, one or more of the 'R' logo marks have been in use since 1991.

In view of the foregoing, I find the marks of the present applications not be in contravention of the provisions of s.29(1) of the Act.

Whether the applicant uses or proposes to use the marks of the present applications as trade marks

Mr Fitzpatrick's submissions in relation to this ground of opposition were essentially based on the assertion that the applicant's 'R' logo marks serve as a recycling code, i.e. that the marks are used by the applicant to indicate that the bottles or the containers involved are capable of being recycled.  The 'R' logo, Mr Fitzpatrick stressed, has never been used to indicate to the consumers that the containers were made by the applicant, but that it was simply applied to the labels of the containers to indicate recyclability.  In support of this contention, Mr Fitzpatrick pointed to the manner in which the logo was first introduced to the customers in the applicant's promotional literature, annexed to Mr Clark's declaration, and the instructions on recycling appearing on a Municipal Council container, exhibited by Mr Illingworth to his first declaration.  For further evidence, he referred to a copy of confidential notes of a meeting, annexed to Mr Illingworth's second declaration, which, he said, was a clear admission by the applicant that it did not intend to use the logos as trade marks.  He said that, rather than the 'R' symbol, the mark that actually conveys the message to the consumers that the particular product has been made by the applicant is ACI PETALITE, citing Philips Electronics BV v Remington Consumer Products [1998] RPC 283 and Re Dexion Group PLC [1994] - a Trade Marks Office decision of 13 April 1994.  Both of these decisions, Mr Fitzpatrick submitted, showed that there was a sign, a symbol, or a word that was used to indicate trade origin and therefore the other sign did not perform that function. 

In replying to Mr Fitzpatrick's submissions, Ms Ryan said the applicant accepted that the intended use of a trade mark must be "as a trade mark" - as a badge of origin - a trade mark within the meaning of s.6.  In this connection she referred, in particular, to the words of Gummow J in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 at 25:

… the primary function of a trade mark registered in Pt A or B of the register is that of distinguishing the commercial origin of goods or services sold under the mark.  The registered mark serves to indicate, if not the actual origin of the goods or services, nor their quality as such, the origin of that quality in a particular business, whether known or unknown by name. 

The intention to use the marks, she continued her submissions, was to be presumed from the applications themselves and from the statements of user filed in support of the applications.  The onus was on the opponent to prove a lack of intention, on the applicant's part, to use the 'R' logo marks as trade marks - Aston v Harlee Manufacturing Company (1960) 103 CLR 391 at 401 and Armor All Products Corp v CRC Chemicals Australia Pty Ltd (1992) 25 IPR 315 at 321. Ms Ryan submitted that the Registrar should not look behind the statements of use or intention to use the marks filed by the applicant unless there was clear evidence of a lack of intention to use the marks. The fact that the applicant was using closely related logos on the bottles and containers supported the case that, at the date of the applications, the applicant intended to use all of its logos.

Developing her argument that the applicant's logo marks were used to indicate trade origin of the goods, Ms Ryan pointed to the applicant's role as a manufacturer of containers and bottles since 1979, and the fact that the applicant had licensed use of its marks to another container manufacturer- Smorgon.  In its additional role of a recycling plant operator, the applicant had to ensure that the containers had certain specifications for recyclability prescribed by it, and which were manufactured by the applicant or other manufacturers under licence.  With reference to the statement of Gummow J quoted earlier, Ms Ryan submitted that the 'R' logo marks adopted by the applicant indicated the trade origin of containers as being that of the applicant, or at least the origin of that quality of the goods (recyclability at the applicant's plant) in the applicant.  The applicant was very closely controlling use of the logo marks, because if the marks were applied to goods that were not of an appropriate standard, contamination would occur, which meant that persons were excluded from using the marks.  It followed, Ms Ryan said, that, if the statement as reported in the notes of the meeting between the various people involved in recycling implied that anybody could use the applicant's mark, that assertion could not be correct. 

The fact that the applicant does not directly apply the logo marks to the containers did not prevent the marks from being used by the applicant itself, Ms Ryan said, citing Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Limited (1967) 116 CLR 254 at 271, where the High Court had held that, when the goods were sold in Australia by retailers which bore the mark of the manufacturer, that was use of the mark by the manufacturer. The only difference here, as Ms Ryan submitted, was that the applicant's customers were applying the mark with the authorisation of and on behalf of the applicant.

Ms Ryan submitted that the applicant's intention to use the 'R' logo marks as trade marks and their actual use were made abundantly clear from the fact that the word "Trademark" appears repeatedly in conjunction with the 'R' logo marks.  The example of a label selected by Mr Illingworth, she said, to show that, in applying the 'R' logo to their labels, the customers of the applicant's licensee did not indicate any connection with the applicant was irrelevant in terms of s.6 of the Act.  Furthermore, she claimed that irrelevancy also followed in view of the statement made by Gummow J in Johnson v Sterling, supra, which she had quoted earlier.  As evidence that the applicant had been careful to protect and preserve its rights in the 'R' logo marks as trade marks, Ms Ryan referred to the licence agreement with SCI Operations Pty Ltd, trading as Smorgon Plastics, and two letters of demand to suppliers of liquid, who had used the 'R' logo marks without being authorised to do so. 

Responding to Mr Fitzpatrick's reference to the words ACI PETALITE as being the applicant's trade mark, Ms Ryan submitted that it was perfectly possible to have more than one trade mark used in respect of goods, as had been considered in Johnson v Sterling, supra, where the word CAPLETS indicating dosage, and used in association with the marks PANADOL and PANADEINE was held to be a trade mark.  Mr Clark had explained the number of purposes for adopting the 'R' logo trade mark, i.e. to indicate that the containers bearing the mark were of a suitable standard for recycling in the applicant's plant, which would assist the householders and collectors of bottles, and to indicate to the consumers that the packaging was recyclable, in particular at the applicant's recycling facility.

Ms Ryan said the applicant conceded that there was nothing particularly descriptive about the applicant's 'R' logo marks: they did not, without education, indicate of themselves that the goods to which they are applied are recyclable, or recyclable at a particular facility, or are of a particular standard.  For that reason a number of the customers have felt it necessary to explain on their labels that the packaging is recyclable.  The applicant had also released brochures in order to educate the public and local government councils and collectors of the various purposes of the 'R' logo mark.  The brochures did not, however, derogate from use of the 'R' logo as a trade mark, because there it was clearly stated that the logo was a trade mark, Ms Ryan submitted.  She noted that Mr Hoopman recognised that the applicant is using the 'R' logo mark in a trade mark sense, i.e as a means of enabling collectors to distinguish the applicant's containers from PET custom-moulded containers of the same or different shape manufactured by other companies.  Ms Ryan pointed out that, contrary to the statements of Messrs Hoopman and Illingworth in their respective declarations, there was no evidence of use of the letter 'R' alone in relation to recycling, but that the only recycling code in the evidence was the 'three arrows' symbol.

Ms Ryan submitted that the 'R' logo trade mark served several purposes, one of which was to function as a trade mark.  The fact that different persons might recognise different features of the trade mark, did not prevent the 'R' logo mark being used as a trade mark, if some of those persons who came into contact with the 'R' logo mark recognised it as a trade mark.  She said the various functions of a mark were described in Johnson v Sterling, supra, - that a mark may be descriptive or indicate a function, and may have an advertising or marketing function.  It was stated in that case that there may be an infringement of a registered trade mark if a defendant appropriates a trade mark to serve the secondary purposes, provided that there is also use to serve the primary function of distinguishing the commercial origin, Ms Ryan said.  Sackville J, in Pepsico Australia Pty Ltd v Kettle Chip Company Pty Ltd (1996) 33 IPR 161 at 185, accepted that "words or phrases which describe or evoke the qualities or characteristics of products can also identify their commercial origin", although the Full Court found that there had been no use of the word KETTLE as a trade mark, Ms Ryan submitted. In that case, his Honour had also adopted the approach of dividing the members of the public according to their various understandings of the word to determine whether, in relation to any section of the public, the word was used as a trade mark. Relying on this precept, Ms Ryan said that, even if there were sections of the public to whom the 'R' logo mark had no trade mark significance, there would be other sections of the public to whom the marks would have such significance. Accordingly, the applicant's logo marks had been used as trade marks by the applicant. Contrary to the opponent's submissions, the 'R' logo marks had not become a generic indicator of recyclability of bottles and containers, Ms Ryan said. The applicant had ensured that the marks did not become a universally used code for recyclability, but that it was limited to use on containers and bottles as authorised by the applicant. The instance referred to by the opponent, where the mark was used as a "code" by a local council, Ms Ryan submitted, was not use by any licensee, or customer of the applicant. There was no evidence that other persons involved in the recycling process used the applicant's 'R' logo trade marks. One of the most telling indications that the 'R' logo mark had been used as a trade mark by, or on behalf of the applicant, was the fact that, after having attempted unsuccessfully to negotiate a licence from the applicant of the 'R' logo marks, the opponent had established its own rival marks in respect of class 20 goods and class 40 services. In adopting its logos it appeared to have been the opponent's intention to distinguish its containers and the scheme from those of the applicant, Ms Ryan submitted, in that regard referring to the reasons for adopting the marks as stated in Mr Illingworth's second declaration: "to ensure that the logos were sufficiently distinct from the 'R' logo of ACI so that there would be no risk of confusion between the two marks".

A trade mark is defined in s.6.(1) of the Act as:

"trade mark" means -

(a)except in relation to Part XI, a mark used or proposed to be used in relation to goods, or services for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods or services and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person.

Section 6.(2) states:

(2)  In this Act -

(a)references to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark; and

(b)references to the use of a mark in relation to goods shall be construed as references to the use of the mark upon, or in physical or other relation to, goods.

Firstly, I confirm that, at the time of lodging the applications, the applicant had met the requirement under reg.8 in respect of each of the applications by making statements that it was using the mark or intended to use it. 

It has been established in case law that, if the intention to use the mark is sufficiently definite, then the mark need not be used immediately.  In Aston v Harlee, supra, Fullager J, at 401, stated that "intention did not carry the meaning of using the mark immediately or even within any limited time". However, although I accept the hearing officer's observation in Deeko Australia Pty Ltd v Décor Corporation Pty Ltd (1988) 11 IPR 531 at 538, that she would be reluctant to find that a six year delay between the stated intention to use and actual demonstration of such use was sufficient to conclude that the intention was "too far off and remote", in the present case, in view of the time that has elapsed since lodgment of the marks in 1991 and 1992, it would be reasonable to expect that the applicant had made a decision as to which of the marks it desired to use - Aston v Harlee.

It is obvious from the definition of a "trade mark" in s.6, that a trade mark must be used or proposed to be used so as to indicate a connection in the course of trade between the goods or services and a person who has the right to use the mark.  A trade mark serves to distinguish the goods of one trader from the goods dealt in or produced by other traders.  It is a "badge of origin" informing members of the public the source or origin of the goods, or of their authorisation, thereby ensuring that the consumers obtain the quality or standard in the product that they may be expecting. 

In the High Court case Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 concerning an infringement action, where the plaintiff was a proprietor of trade marks for a caricature of a man having a large head resembling an oil drop and the defendant had advertised an animated "oil drop" cartoon character during television programmes, Kitto J encapsulated use of a trade mark, at 424-425:

The crucial question in the present case seems to me to arise at this point.  Was the appellant's use, that is to say its television presentation, of those particular pictures of the oil drop figure which were substantially identical with or deceptively similar to the respondent's trade marks a use of them "as a trade mark"?  With the aid of the definition of "trade mark" in s.6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant.  Did they appear to be thrown on the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade ?    

The Shell v Esso case illustrates the significance of the mark being used so as to show the origin of the goods rather than simply to convey a message about the quality of the those goods.

As submitted by Ms Ryan, in Johnson v Sterling, supra, Gummow J ascribed various functions to a registered trade mark, emphasizing its primary function as serving to distinguish the commercial origin of the goods sold under the mark.  His Honour explained, at 25:

… a registered trade mark may serve secondary or derivative functions.  But the fact that it does so does not detract from the importance of the mark's primary function.  In his article "The Trademark Right: Consumer Protection or Monopoly" (1982) 72 Trademark Reporter 233 at 240-1, Mr Shanahan deals as follows with these further functions of trade marks:
      "One is the descriptive or indicating function.  When a customer orders 7 UP he does not expect to get sarsaparilla.  He knows that he is going to get a particular sort of drink - so in that sense the mark has a kind of descriptive function.  However, the mark is not simply a description.  It indicates to all and sundry that the soda bearing the mark owes its formulation and quality to a particular organisation.  It is therefore a trade mark. …
     "The other secondary function is the so-called advertising or marketing function.  Through advertising, through the allegiance of satisfied customers and, to some extent, through word of mouth, a business acquires a good will.  It is the trade mark that symbolises that good will, and the trade mark thus becomes, by association, a potent marketing tool.
…
So it is … that there may none the less be infringement where the defendant appropriates the trade mark to serve these secondary functions, provided one must add, there is use as a trade mark, that is to say, use to serve the primary function I have described. 

In the present case, evidence would have been of assistance on how the applicant's 'R' logo marks are perceived by purchasers of the bottles or containers displaying the marks and by the persons involved in recycling of the bottles or containers.  Relying on the material made available by the applicant and the opponent relating to use of the marks, I make observations as follows.

Even though Mr Clark states that the opponent has used "one or more of the 'R' logo trade marks" since November 1991, the applicant's evidence as to use relates primarily to the mark as it appears on applications 575399 and 589035.  One particular pamphlet under the opponent's scrutiny in exhibit RWC-4 to Mr Clark's declaration, directed to the ultimate consumers of the PET bottles such as householders, shows a large size logo the subject of the said applications, accompanied by the instructions:

Look for products with the new 'R' recycling symbol.  It means the bottle is made from 100% recyclable PET and is part of the kerbside collection system. … The 'R' recycling symbol is easy to find on the label or on the bottle itself, with Berri orange juice being the latest to join the growing PET pack! 

On the left hand side at the bottom of the pamphlet are printed the words ACI PETALITE.  It also shows a bottle with a 'Berri' orange juice label and the 'R' logo with some writing in small letters, informing the user of the bottle that it is recyclable and advising to return it to the recycling facilities, so as to reduce waste.  

In a brochure intended for use by local councils and professional collection contractors, also exhibited by Mr Clark, under the direction reading 'Recognise the Symbols', reference is made to the logo as an 'R' symbol.  Underneath the logo, to the left of the arrow head in the mark is inserted an asterisk followed by the words TRADEMARK OF ACI.

The word TRADEMARK in small letters also forms part of the 'R' logo in the labels for 'Schweppes' lemonade and 'Bushells' instant coffee, both words, 'Schweppes' and 'Bushells', being identified as registered trade marks.  On the 'Bushells' label, where the word 'Bushells' is the dominant element, next to the 'R' logo mark appearing on the side of the label, a description reads:

"This jar is made from P.E.T..  It makes an ideal storage container and may be recycled". 

Similarly, in the same exhibit of Mr Clark, the 'R' logo is associated with the recyclability aspect on the 'Palmolive' bottle label, 'Palmolive' being the registered trade mark, where on the back of the label is entered the text:

PACKAGING: By utilising the most established plastics recycling program in Australia, your Palmolive Original bottle is made from 100% recycled PET plastic.  This bottle is also recyclable.  Please make use of available recycling schemes. 

To the extent that one would wonder whether the 'R' logo represents a trade mark or a recycling symbol, the omission of any reference to a "Trademark" in relation to the logo in four labels annexed to Mr Hoopman's declaration would dispel any doubts.  There the 'Becel' label carries a plain message: "This bottle is 100% recyclable".  A similar message is expressed on the 'Farmland' label.  The purpose is further illustrated by the unambiguous directions on the 'Glen Park' apple juice label "This bottle is recyclable so where facilities exist return it and help reduce waste in the community".  In addition, I note that the word "Trademark" is also absent from the 'R' logo in the 'Berrivale' label exhibited by Mr Clark. 

In addition, an exhibit to Mr Illingworth's first declaration shows the 'R' logo being used as a plastics sorting code on the Stonnington City Council's recycling crates.

What conclusions could one draw from all of this evidence on the purpose of the 'R' logo marks?  From the manner in which the marks are presented to the public, some of the messages might be that, apart from serving as a container of various substances, it also possesses a certain quality, i.e. it is made of PET, that there are recycling facilities available for the containers and one is encouraged to use those facilities for recycling the containers, and, as shown in some instances, that the 'R' logo is also a trade mark.  However, I do not think I would err in concluding that the common and overwhelming impact of the 'R' logo marks from these labels is that of it functioning as a recycling symbol, its purpose being described in the promotional pamphlet to which I have referred above.  To the extent that one would wonder as to the source of the containers, there is nothing on the labels that would lead one to believe otherwise than to merely assume that the origin of the containers is the same as the origin of the contents of the bottles.  There is no link between the applicant as a manufacturer of the containers, or a body that controls the quality of the containers.  If the applicant's 'R' logos are to serve a secondary purpose, as advocated by Gummow J in Johnson v Sterling, supra, then, from the manner in which the marks are used in the trade, it cannot be inferred that the marks distinguish a commercial origin.  It is not sufficient for the applicant to rely on the fact that some of the logos are identified as a trade mark.  Given that the word "Trademark", where it appears in the 'R' logo marks (and, as evidence shows, its inclusion in the logos is not consistent) is barely visible because of its minute size, its significance is considerably diminished.  In relation to use of the words 'Trade mark', or their abbreviation ", I also refer to Philips Electronics NV v Remington Consumer Products [1998] RPC 283 at 296, where Jacob J issues words of caution:

Incidentally the use of "TM" is quite common these days.  It arouses the suspicion that the trader concerned is laying a property claim to that which would not naturally be taken to be a trade mark.  I suppose it may serve to warn off competitors, but I am not aware of any instance where the use of "TM" has actually made any claimed trade mark any more distinctive than it would have been but for such use. 

In this situation, any parallels with the basis upon which Burchett J found CAPLETS to be a trade mark in Johnson v Sterling, supra, is therefore elusive.  In that case, "Panadol" and "Panadeine" connoted a well established paracetamol product of Sterling Pharmaceuticals Pty Ltd, the respondent in the infringement proceedings.  Relying on the importance of the context in which the word appears, the principle stressed by Kitto J in Shell v Esso, supra, his Honour said, at 21:

The respondent's packets of Panadol and Panadeine each bore the word "Caplets", quite prominently displayed immediately after the word "Panadol" and the word "Panadeine".  In each case, an asterisk directed attention to a notification of the fact that "Caplets", as well as the other brand name, is a registered trade mark.  These packets also bore writings describing the form of the contents by the word "tablet", and stating the quantity as a specified number of "capsule-shaped tablets".  In that context, I think the use of the word "Caplets", in association with the words "Panadol" and "Panadeine", and with a statement that each is a registered trade mark, must be regarded as a trade mark use. 

The present situation is more analogous with use of the "oil drop" man in the film advertisements exhibited during the televisions programmes in Shell v Esso, supra, Kitto J stating, at 425:

At every point of the exhibition, whether the resemblance to the respondent's trade marks be at the moment close or remote, the purpose and the only purpose that can be seen in the appearance of the little man on the screen is that which unites the quickly moving series of pictures as a whole, namely the purpose of conveying by a combination of pictures and words a particular message about the qualities of Shell petrol.  This fact makes it, I think, quite certain that no viewer would ever pick out any of the individual scenes in which the man resembles the respondent's trade marks, whether those scenes be few or many, and say to himself: "There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs."  And one may fairly affirm with even greater confidence that the viewer would never infer from the films that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen to serve the specific purpose of branding petrol in reference to its origin.  No doubt if, later, the viewer were to come across the respondent's trade mark used in relation to petrol his recollection of the films might lead him to think that the appellant, taking advantage of a reputation created for the oil drop figure by means of the films, had adopted the figure, in one of its forms, as a mark for its petrol.  But that would be quite a different matter from inferring, while sitting in front of his television set, that the figure in one or more, some or all, of its exhibited forms was being placed before him there as a trade mark for Shell petrol.  

If the applicant intended to use the 'R' logos as trade marks, then that intention is not borne out by the way in which the applicant itself has introduced the logos to the public at the time of their inception, and how they have been utilised by the persons who are authorised by the applicant to apply the logos on the labels of bottles and containers.  The applicant's original intention is further clouded by what appears to be a suggestion made by a responsible officer of the applicant company that the recycling system was not developed to exclude any manufacturer, as recorded at the meeting in May 1995. 

The letter from the Plastics Industry Association acknowledging that the "R symbol is a trade mark of ACI" and the two letters written by the applicant's attorneys to parties in relation to an unauthorized use of applicant's 'R' logo marks do not assist in establishing the applicant's expressed original intention in its statements of use, if the actual use of the logos fails to show the origin of the goods, or the origin of the quality or those goods.  In Johnson v Sterling, supra, in relation to non-use of a mark under s.23(1)(b), Lockhart J said, at 12:

A mark is either used as a trade mark or it is not.  To say that a mark is used as trade mark because that was the purpose of the registered proprietor would be inconsistent with the well established doctrine that use of a trade mark is a badge of origin of goods, indicating a connection in the course of trade between the goods and the persons who applies it to the goods …..The court, in considering the question of use as a trade mark under s 23(1)(b), must adopt an objective standard and ask itself, is the mark being used in fact as a trade mark?

Although his Honour was directing his attention to matters concerning s.23 of the Act, this principle advocated by him equally applies to the issue being considered here. 

In view of the foregoing, I consider that serious doubt exists as to whether, at the time of lodgment of the applications, the applicant had intended to use the marks of these applications as trade marks.  From the evidence before me as described earlier, I have reached a conclusion that use of the logo marks does not constitute use in the trade mark sense.

Conclusion
Having found the applicant's 'R' logo marks do not to offend against s.29 of the Act, I dismiss the opposition as it relates to that section. However, the opponent has been successful on the question of whether the logos have been used as trade marks.

Given my findings, in the normal circumstances I would indicate refusal of registration of the marks at this stage. However, with reference to the preamble in this decision, where I undertook to issue an interim decision covering only the issues of s.29 and use or intention to use the 'R' logo marks as trade marks, I now allow the parties three weeks from the date of this decision to advise me whether the matter in terms of s.26 of the Act will be pursued. Both parties sought costs. I intend to deal with the matter of costs in my final decision.

Vija Zars
Hearing Officer
3 May 2000