ATP Institute Pty Ltd

[2018] ATMO 94

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1789735(5) - MULTI FOOD- in the name of ATP Institute Pty Ltd.

Delegate:

Heath Wilson

Representation:

Applicant: Dr Robert Burrell of GO Trademarks.

Decision:

2018 ATMO 94

Request to be heard under section 33 of the Trade Marks Act 1995 – Section 41 considered - Trade Mark accepted for possible registration.

Background

1. ATP Institute Pty Ltd (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’) on 15 August 2016 (‘the filing date’). The current details of that trade mark application are:

   Trade Mark No. 1789735

   Trade Mark: MULTI FOOD (‘the Trade Mark’)

   Specification of Goods:

   Class 5: Nutritional supplements; Dietary supplements; Herbal dietary supplements; Vitamin supplements; Preparations of minerals; Antioxidants (dietary supplements)

2. The Trade Mark was examined as required under section 31 of the Act. On 31 October 2016, a first examination report was issued in relation to the Trade Mark identifying a ground for rejection under section 41 of the Act. The report relevantly stated:

   Your trade mark is, MULTI FOOD

   The word MULTI means ‘many, multiple, composed of many parts’, and when combined with the descriptive word FOOD, simply refers to a product that is composed of multiple foods. This indicates that your nutritional supplements and preparations are composed of, or contain multiple foods or MULTI FOOD.

   Other traders should be able to use MULTI FOOD in connection with goods or services similar to yours.

3. The first examination report then mentioned the option of providing evidence of use in terms of subsection 41(4) of the Act. For clarity, I would note here that while evidence of use may satisfy the provisions of subsection 41(4), a trade mark may also be acceptable under that provision having regard to the combined effect of a trade mark’s inherent adaptation to distinguish, intended use of the trade mark and any other circumstances that may be relevant.

4. Nevertheless, Dr Robert Burrell of GO Trademarks (Trade Mark attorney for the Applicant) responded to the examination report arguing that the Trade Mark was inherently adapted to distinguish the designated goods of the application and should be accepted for possible registration on that basis. In doing so, Dr Burrell highlighted the words of Dixon J on the High Court of Australia in Howard Auto-Cultivars Ltd v Webb Industries Pty Ltd that a trade mark:

   [N]eed not be wholly meaningless and it is not a disqualification “that it may …contain a covert and skillful allusion to the character or quality of the goods”.[1]

   [1] (1946) 72 CLR 175 (at p.181).

5. On 6 February 2018, a second examination report issued, maintaining the initial objection under section 41 of the Act. The examination report further observed that:

   Research on these words show that many traders are using this exact phrase to refer to the same goods as the applicant. Google research shows ‘mens multi food based 120 tablets’ as well as many references to ‘multi food supplements/complex’ and ‘multi food fortification’.

6. On 19 February 2018, the Applicant requested to be heard under section 33(4) of the Act. The matter was scheduled to be heard in Canberra on 3 May 2018 before me, a delegate of the Registrar of Trade Marks. In that capacity, I gave the Applicant an opportunity to provide any additional evidence or submissions for me to consider.

7. The Applicant provided the declaration of Dr. John Kapeleris (Chief Operating Officer of the Applicant) made 30 April 2018 with exhibits A to E (‘Kapeleris declaration’). I was also provided with more detailed submissions from Dr Burrell including the results of Google searches made by Mr Asaf Twina of GO Trademarks.

8. I heard the matter on the scheduled date and Dr Burrell made oral submissions on behalf of the Applicant.

The Law

1. Section 41 of the Act relevantly provides:

41Trade mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:For goods of a person and services of a person see section 6.

Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

1. Under s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. In other words, “a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.[2]

   [2] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].

2. I would emphasise here that I am making a decision under precisely the same section of the Act as that considered in examination. However, my decision is not a review of the examiner’s approach, nor I am not bound in any way to follow it. I must consider this matter and any evidence of use afresh. In the current scenario, the request for hearing was made after the second examination report so the examiner did not have the benefit of the abovementioned evidence of use supplied by the Applicant nor the further submissions of Dr Burrell.

‘Inherently adapted to distinguish’

1. In relation to the test for the Trade Mark’s inherent adaptation to distinguish its goods, in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’) Kitto J repeated the words of Lord Parker of Waddington in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[3], relevantly stating:

   The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.[4]

   [3] (1913) AC 624, at pp 634, 635.

   [4] (1964) 111 CLR 511 at 513–14; [1965] ALR 344 at 345–6.

2. The majority judgment of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’) affirmed the above test and stated (emphasis added):

   The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from [Registrar of Trade Marks v W & G Du Cros Ltd [1913] UKHL 588; [1913] AC 624 (‘Du Cros’)]... is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[5]

   [5] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 4, [59] (My emphasis in bold).

3. The ordinary signification of the Trade Mark is to be determined by reference to the target audience for the goods, which in this case are purchasers, consumers and traders in Australia of nutritional and dietary supplements.

4. Dr. Burrell argued, with reference to Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 (‘Tub Happy’) that the determination was whether MULTI FOOD is a ‘direct’ reference to the character or quality of the goods, or merely a ‘covert and skilful allusion’. He also pointed out that the expression forming the Trade Mark is not used in common parlance to refer to any goods.

5. The structure of section 41 of the Act indicates there is a continuum of the capacity of trade marks to distinguish, ranging from those which are simply ‘a covert and skilful allusion’ and therefore inherently adapted to distinguish, to those which are a ‘direct reference to the goods’ and therefore not to any extent inherently adapted to distinguish. Amongst those two extremes are trade marks which are to some extent inherently adapted to distinguish (s41(4)).

6. Although conceding that the Trade Mark has descriptive properties, Dr Burrell argued that it only alludes to the nature of the goods and is therefore inherently adapted to distinguish. To address this preliminary issue, it is necessary to consider the context in which the trade mark ‘Tub Happy’ was found to be merely a ‘covert and skilful allusion’ to clothing. In the decision, Williams J stated:

   The words contain at most a "covert and skilful allusion" to the quality of washability which is characteristic of articles of clothing made of some kinds of material including cotton. At most they create an impression that this is what they are intended to convey. They do not trespass upon the rights of other traders to use any ordinary English words or phrases referring to the washable qualities of their goods. They do not attempt to "enclose and appropriate as private property certain little strips of the great open common of the English language". No doubt the words are intended to "contain a meaning - a meaning is wrapped up in them if you can only find it out.”: see the speech of Lord Macnaghten in the Solio Case (1898) AC, at p 583 . And it may not be hard to find out that meaning but the words do not refer in any ordinary sense, laudatory or otherwise, to any character or quality of articles of clothing, still less do they do so directly.[6]

   [6] Tub Happy, at p201.

7. The consideration of a trade mark’s inherent adaptation to distinguish requires substantially more than simply discerning the meaning of the words comprising it. One must also consider the legitimate desire of other traders to use the words for the sake of that meaning in respect of the same or similar goods. Nevertheless, I do not find that the matter before me is one where the relevant persons would need to stop and reflect what the words comprising the Trade Mark actually mean, or that the meaning would fail to spring unaided to the mind of the relevant Australian consumers or traders.

8. In other words, once the mind is turned to the question of what the Trade Mark means to Australian purchasers, traders and consumers of nutritional or dietary supplements I have little doubt that they would understand (without any prior knowledge) that such supplements would contain multiple food ingredients. It is accurate to state, as Dr Burrell did, that this meaning is less direct than, say, ‘Multi Vitamins’ but this is not to say that the ordinary signification of the Trade Mark is not evident.

9. Given the above, it is necessary to consider the second element of the test set out in Cantarella, namely, whether other traders would be likely, without improper motive, to desire to use the Trade Mark upon or in relation to the designated goods for the sake of the aforementioned ordinary signification.

10. I note that the abovementioned reference from the second examination report indicated that “Research on these words show that many traders are using this exact phrase to refer to the same goods as the applicant. Google research shows ‘men’s multi food based 120 tablets’ as well as many references to ‘multi food supplements/complex’ and ‘multi food fortification.’”

11. On 27 April 2018, a representative for the Applicant also conducted searches on Google for the expression ‘Multi Food’ with and without quotation marks. The prevalence of the Applicant’s products appearing in the search results was highlighted. From my own analysis of the search results, there does appear to be not only use by the Applicant but also some use by third parties both as a trade mark and in a descriptive sense. As was made clear in the decision of the Full Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd:

    Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required. Burger King appears to be such a case (see Gibbs J at 425). In other cases, evidence might be called on the issue of the ordinary signification of the word mark as happened in Faulding. Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse v Fry Consulting”) at 543544 [102] per Kenny J), but would be considered in light of all of the evidence in the case. It is important to note the possible dual significance of such evidence. Evidence of other traders using the word yellow or the colour yellow in connection with their print and online directories could be evidence of the ordinary signification of the YELLOW mark and of the fact that other traders might want to use the word to describe their goods or services.[7]

    [7] [2004] FCA 968, [38].

12. Dr Burrell also mentioned that the Applicant is involved in a dispute with a company based in the United States and alleges that that company commenced its use after the Applicant overseas. The submission was that such use by a particular trader was not an indication that other traders (operating without improper motive) would desire to use the Trade Mark upon on in relation to the designated goods in Australia.

13. I accept that such evidence, where it appears solely as use as a badge of origin, does not significantly inform the ‘other traders’ question and may additionally fail the ‘without any improper motive’ aspect of the consideration. To illustrate the point, an example such as ‘Multi-Food 1™ Tablets’ appears to be operating as a badge of origin (and therefore not an indication that other traders would desire to use the Trade Mark for the sake of its ordinary meaning), however a product description such as ‘Herbal Multi-Food Supplement’ uses the words comprising the Trade Mark for the sake of its ordinary signification. In other words, while there is evidence of other use of the words comprising the Trade Mark, it is nevertheless evident to me that other traders would desire to use them for the sake of the signification mentioned earlier. 

14. Dr Burrell also highlighted the existence of an equivalent trade mark application that had been accepted in the United States (US Serial Number: 87494706), submitting that the “distinctiveness bar [was set] at too high a level in this case.” The strength of that submission may depend on whether the respective applications are analogous, any similarities between Australian and US trade mark law, procedural similarities and any particular circumstances that may have led to acceptance of the trade mark in that jurisdiction. I have not however been supplied with any of that information in evidentiary form and must in any event apply the law in this jurisdiction to the facts before me.

15. The extent to which the Trade Mark is inherently adapted to distinguish is certainly higher on the continuum than a trade mark which is devoid of inherent adaptation to distinguish, but it nevertheless remains insufficient to accept the Trade Mark on that basis alone. That said the fact that it sits higher on the continuum will undoubtedly affect the extent of use required to demonstrate the Trade Mark is capable of distinguishing the designated goods.

16. I find it appropriate to assess the Applicant’s evidence under section 41(4) of the Act and take into account the use or intended use, the extent to which the Trade Mark is inherently adapted to distinguish the designated goods, and any other circumstances that may be appropriate to consider.

The Applicant’s Evidence

1. Although the initial question of determining a trade mark’s inherent adaptation does not involve a consideration of the use of the applied for trade mark,[8] the situation is different once section 41(4) of the Act is enlivened. Under this provision, the Registrar may consider evidence of use and other circumstances both before and after the priority date of the application.

   [8] See Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7].

2. Section 41(4)(b)(i) also indicates that the relative position of a trade mark on the spectrum of inherent adaptation to distinguish is a relevant consideration in deciding whether a trade mark does not or will not distinguish the designated goods/services. As I have said, the Trade Mark is not on the lower end of the scale of inherent adaptation to distinguish. The effect of this finding is that the requisite evidence of use or intended use from the Applicant need not be overwhelming. The combined effect of the above factors may be sufficient for a trade mark to be accepted under the Act.

3. The Kapeleris declaration provides that the Applicant’s business was founded in 2010 with the aim of producing superior quality food supplements. Dr Kapeleris states that in early 2016 the decision was made to use the brand ‘MULTI FOOD’ as the name of one of the Applicant’s products. The name was chosen to be suggestive of the idea that the product served as a multivitamin tablet with other nutritional benefits (i.e. plant-based nutrients).

1. Dr Kapeleris also declares that:

   At the time the product name was selected we were not aware of any other company using the phrase MULTI FOOD to describe food supplements or related products.[9]

   [9] Kapeleris declaration, [6].

2. The reason for the careful wording in the above statement became evident as a particular trader in the United States appears to have subsequently commenced use of a similar name to the Trade Mark.

3. The Applicant’s product was launched in March 2017 and I have been provided with just over a year of sales data by the Applicant. According to the Kapeleris declaration, in this relatively short period of time the Applicant has sold a significant amount of the product bearing the Trade Mark to Australian consumers and Dr Kapeleris indicated that it is stocked in 458 retail outlets in Australia. The Applicant also has a range of other nutritional and vitamin supplement products operating under other trade marks.

4. In terms of advertising, the Applicant has mentioned notable expenditure on print advertisements, trade exhibitions in Australia and the United States, printed flyers, social media advertising, and a Science Product Booklet. An example of the product packaging bearing the Trade Mark appears below:

1. Despite the fact that I am satisfied the uses by the Applicant to date are use of the Trade Mark as a badge of origin, it is helpful to note one of the Applicant’s advertisements which states:

   Almost all multi vitamins are synthetically made from poop excreted by bacteria or petrochemicals, or both. If you are what you eat then what does this mean for you and your health?

   Don’t be poop!

   ATP Science’s Multi Food is made from, you guessed it, FOOD! Extracted from organically grown fruits and vegetables, providing you with vitamins, minerals, co-factors and co-nutrients without any harmful synthetics, chemicals of GMOs, and absolutely NO POOP!

2. The above example highlights the ordinary signification of the Trade Mark to the average consumer. Having made that observation, the use of the Trade Mark by the Applicant is nevertheless consistent within the industry. Exhibit C to the declaration of Dr Kapeleris is an advertisement from a women’s fitness magazine Oxygen Australia and exhibit D is a copy of an advertisement from the magazine Australian Women’s Health and Exhibit E is a copy of an advertisement from a bodybuilder’s magazine Flex.

3. All the examples represent the Trade Mark as a badge of origin rather than as a description of the goods. This is reinforced by the manner in which the Applicant’s customers refer to this particular product in testimonials about the supplement.

4. I have carefully considered the evidence of use before me and the submissions made by Dr Burrell. As a result of the previously discussed level of inherent adaptation to distinguish, and the evidence of use, intended use and other circumstances supplied to the Registrar, I find that the Trade Mark does or will distinguish its goods from those of other traders and should be accepted for possible registration with the following endorsement:

   ‘Evidence and/or other circumstances provided under subsection 41(4).’

Decision

33Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

1. As a delegate of the Registrar of Trade Marks, I am not satisfied that there is a ground under the Act for rejecting the Trade Mark. I am satisfied that the application was made in accordance with the Act. I accept trade mark application no. 1789735 for possible registration with the aforementioned endorsement.

Heath Wilson

Supervising Hearing Officer

Oppositions and Hearings

15 June 2018