Babawine Pty Ltd

[2019] ATMO 109

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1895782 (class 20) – GO FOAM FREE! - in the name of Babawine Pty Ltd

Delegate:

Aaron Walters

Representation:

Applicant: Blake Knowles of Spruson and Ferguson

Decision:

2019 ATMO 109

Trade Marks Act 1995 (Cth) – Request to be heard under s 33 – Section 41 considered – mark is to some extent, but not sufficiently adapted to distinguish – no evidence of use and no other circumstances – trade mark rejected.

Background

1. Babawines Pty Ltd (‘the Applicant’) lodged an application to register a trade mark under the provisions of the Trade Marks Act 1995 (Cth) (‘the Act’) on 30 April 2018. The current details of the trade mark application are:

Trade Mark No. 1895782

Trade Mark: GO FOAM FREE! (‘the Claimed Mark’)

Specification of Goods:

Class 20: Plastic trays (containers) used in food packaging; Transparent food containers for commercial packaging use

(‘the claimed goods’)

1. The Trade Mark application was examined as required under s 31 of the Act. A first examination report was issued on 24 April 2018 identifying a ground for rejecting the application under s 41 of the Act (‘the First Report’).

2. The basis for the ground for rejection, contained in the First Report, states:

   Your trade mark is GO FOAM FREE!

   The Macquarie Dictionary defines FOAM as "a light material, in either spongy or rigid form, produced by foaming" and the Oxford English Dictionary defines FREE as "Clear of something which is regarded as objectionable or problematic".

   This indicates that the goods you provide do not include the light material, in either spongy or rigid form known as foam. Therefore your trade mark is not capable of distinguishing your goods in class 20 from those of other traders.

   Please note that I have considered the addition of the word GO to your trade mark. Unfortunately, this does not contribute to its capacity to distinguish your goods in the market place because

   ·    a person of average intelligence is likely to understand the trade mark as a suggestion to ‘do something’, and

   ·    your trade mark as a whole is a statement that can describe an outcome for the consumer.

   Other traders should be able to use GO FOAM FREE in connection with goods or services similar to yours.

3. The First Report went on to provide the option of supplying evidence of use in terms of s 41(4) of the Act, indicating the Examiner considered the Claimed Mark was to some extent, but not sufficiently inherently adapted to distinguish the claimed goods.

4. The Applicant responded with submissions indicating it was of the view that the Examiner had erred. In particular, the Applicant highlighted:

   The examiner’s objection is based on the premise that the words ‘FOAM FREE’ are descriptive, and that inclusion of the word GO indicates a suggestion or outcome for the consumer. However, there is no authority to suggest that a mark that encourages a consumer to adopt a certain course, or that leads to a certain outcome, is not inherently adapted to distinguish.

5. The Examiner was not persuaded and maintained the ground for rejection (‘the Second Report’). The Examiner explained in the Second Report:

   I maintain that the mark GO FOAM FREE! is a phrase that other traders would wish to use. The test under section 41 is whether the trade mark is a term other traders will legitimately need to use or whether it is very similar to such a term. The ordinary and readily understood meaning of the mark is that the Plastic trays (containers) used in food packaging and Transparent food containers for commercial packaging use do not contain, or are free from, foam. Research indicates that the words are used with this ordinary meaning in the marketplace by consumers and groups wanting an alternative to foam:

   The words clearly indicate to consumers that they are able to GO FOAM FREE by using the goods, and this is a desirable attribute of such goods given that many consumers consider foam products to have a negative impact on the environment.

6. The Applicant requested a hearing on the examination on 28 November 2018 and in my capacity as a delegate of the Registrar, I heard the matter on 8 May 2019.

Discussion

1. It is necessary to first state the purpose of such a hearing is not to review the Examiner’s reasoning or decision, nor am I bound in any way to follow their approach. Rather, I must consider afresh the ground for rejection, along with any additional material filed in support. The Applicant has not filed any evidence, instead relying only on its written and oral submissions made during the hearing (‘together, the Applicant’s submissions’).

A ground for rejection raised under s 41 of the Act

1. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. Section 17 of the Act defines a trade mark as:

   What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

2. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[1] Regarding the present application, the only ground for rejection identified is under s 41 of the Act.

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

3. Section 41 of the Act relevantly provides:

   41 Trade 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 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).

   (5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

4. In effect, s 41(1) provides an application may only be rejected if it is “not capable of distinguishing” the designated goods or services and s 41(2) provides this will only be the case if either ss 41(3) or (4) apply. Whether ss 41(3) or (4) apply will depend in turn upon whether, and if so to what extent, the mark in question is “inherently adapted to distinguish” those goods or services.[2]

   [2] Unilever Plc v Beiersdorf AG [2017] ATMO 25, [45].

5. Should either ss 41(3) or (4) be found to apply, the Applicant faces a different evidentiary burden in overcoming the ground for rejection and proceeding the Claimed Mark to acceptance. However, since the Applicant does not provide any evidence (or submit any other circumstances), the sole question to be determined is whether the Claimed Mark is inherently adapted to distinguish the claimed goods. If it is not, the Registrar would be obliged to reject the application.

6. Whether or not it is inherently adapted to distinguish is objectively determined,[3] with the focus being on the inherent nature of the Claimed Mark itself.[4] The seminal test is found in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’), where Kitto J explained that a mark’s inherent adaptation to distinguish is:

   … tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]

   [3] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [75].

   [4] Burger King Corp v Registrar of Trade Marks [1973] HCA 15, [7]; (1973) 128 CLR 417, 424.

   [5] [1964] HCA 55, [5]; (1964) 111 CLR 511, 514.

7. His Honour reached this conclusion after having approved, inter alia, the decision of Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd, who said of a distinctive trade mark, that it’s registrability should:

   … largely depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark merely resembling it, upon or in connection with their own goods.[6]

   [6] [1913] AC 624, 635.

8. In Cantarella Bros v Modena Trading (‘Canterella’), the majority endorsed the view that it is the “ordinary signification” of the words, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the mark makes either a “direct reference” (prima facie not registrable) or a “covert and skillful allusion” (prima facie registrable) to the relevant goods or services.[7] Once the ordinary signification is established, an enquiry may then be made into whether other traders might legitimately need to use the mark in respect of their similar goods or services.[8]

   [7] [2014] HCA 48, [59].

   [8] Ibid. [71].

Is the Claimed Mark inherently adapted to distinguish?

1. The Applicant’s submissions expand on its arguments made during examination in greater detail. It argues that the Examiner has erred by constructing a meaning for the Claimed Mark in a manner that is prohibited by the authorities. The Applicant asserts the Claimed Mark is a call to action and does not describe a characteristic or quality of the claimed goods. As a whole, it is an expressive exhortation to a consumer to adopt a particular course rather than a genuinely descriptive expression such as “foam free packaging” or “foam free containers”. Consequently, the signification of the Claimed Mark as proposed by the Examiner, being that food containers or packaging are free from foam, is not an “ordinary signification” which is immediately perceivable as it requires several mental steps to reach that meaning. Without evidence demonstrating the phrase is in common use for the claimed goods, there is no basis to maintain the ground for rejection.

2. Noted earlier, the ordinary signification is to persons who will purchase, consume or trade in the goods or services which permits a conclusion to be drawn as to whether the words contain a direct reference to the claimed goods. The Full Federal Court in Primary Health Care Limited v Commonwealth of Australia (‘Primary Health Care’) further explained:

   Although the majority in Cantarella described that audience as “persons who will purchase, consume or trade in the goods”, that was not an exhaustive description. The majority went on to say that the ordinary signification of the trade mark to “any person in Australia concerned with the goods” is to be considered. However, the majority cannot be taken to suggest that any class of persons with some interest in the goods or services, no matter how remote, is to be considered.[9]  

   [9] [2017] FCAFC 174, [302].

3. Presently, no written submissions are provided on who would be, in Australia, the audience concerned with the claimed goods. However, I think it clear in this case that these would be purchasers, consumers and traders in Australia of containers for packaging food (‘the relevant audience’). Further, I do not find the matter before me is one where the relevant audience would need to stop and reflect on what the words comprising the Trade Mark actually mean, or that this meaning would “fail to spring unaided to the mind of the relevant Australian consumers or traders.”[10]

   [10] ATP Institute Pty Ltd [2018] ATMO 94, [18].

4. In my view, the Claimed Mark is not so inherently adapted to distinguish as to justify prima facie registration. In reaching that conclusion, I would address the statement made in the First Report of the word GO not contributing to the Claimed Mark’s capacity to distinguish. This statement is misplaced and at odds with the ground for rejection being raised under s 41(4) of the Act. The Delegate in ATP Institute Pty Ltd recently said:

   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)).[11]

   [11] Ibid, [16].

5. To determine where on the continuum the Claimed Mark might sit, guidance can be drawn from the words of Bennett J in Unilever Australia Ltd v Societe Des Produits Nestlé S.A (‘Go On’) where her Honour explained that “[a]n expression may not in any way be descriptive of any of the characteristics of a product but it does not necessarily follow that it is in some way distinctive of the product so as to distinguish it from the products of other traders.”[12] Her Honour continued to say that “[c]are is to be taken of “the precise expression of the subject of the trade mark,” particularly when “[u]nusual punctuation or grammar may set the expression apart as unidiomatic.”[13]

   [12] Unilever Australia Ltd v Societe Des Produits Nestlé S.A. [2006] FCA 782, [33].

   [13] Ibid, [34].

6. In this matter, the Claimed Mark is comprised of the expression GO FOAM FREE followed by an exclamation mark. Several observations can be made here. First, the exclamation point adds little to alter the consideration under s 41.[14] Second, it is common knowledge for food packaging to be regularly made of polystyrene foam. As such, without the inclusion of GO, it is obvious that the words FOAM FREE are a pure description of the characteristics of the claimed goods. On the other hand, when taken as a whole, the expression GO FOAM FREE is not akin to a typical description of the claimed goods such as “foam free packaging”. Third, the expression is emotive and signifies a move towards being ‘foam-free’, though it leaves open whom should follow this course and why. While this small appeal to the imagination does give some inherent capacity to distinguish, there is nothing in the punctuation or grammar which would render the Claimed Mark as particularly unusual or “unidiomatic”.

   [14] See Kennards Hire Pty Limited [2012] ATMO 39, [30].

7. Returning to the signification of the Claimed Mark, whether it is couched as a suggestion, call to action or expressive exhortation to adopt a particular course, the effect is largely the same. That is, when viewed from the perspective of the relevant audience, the Claimed Mark will evoke an emotive response or mental attitude. The words of Bennett J in Go On are again apposite [at 27]:

   I accept that the trade mark is not descriptive of the goods to which it is applied and does not indicate a characteristic of them. GO ON... can be viewed as an exhortation, not describing the goods at all but an emotive direction to do something or take action and, as used by Nestlé, to taste ice cream. As Dixon CJ explained in Mark Foy’s Limited v Davies Coop and Company Limited [1956] HCA 41; (1956) 95 CLR 190 at 194 (‘the Tub Happy Case’):

   ‘Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.’

   However, the fact that the trade mark is not descriptive of the goods does not mean that it has an inherent capacity to distinguish. [Emphasis added]

8. Here, like in Go On, the expression GO FOAM FREE can be viewed as an emotive direction to do something, that is to use foam-free food packaging. Although actual use is not necessary in finding another trader’s honest desire to use the Claimed Mark, the Examiner’s research contains a persuasive example. The following text can be seen in an extracted marketing brochure: (captured 24 April 2018, from sustainable, Go foam-free.

   With limited infrastructure for recycling polystyrene foam in Australia, thousands of polystyrene foam trays end up in landfill each year. Until now, there have been few viable and sustainable alternatives for packaging fresh meats in supermarkets. To address this problem, Castaway® has developed a sustainable, cost-effective and attractive solution that will allow your supermarket to go ‘foam-free’.

9. The above example confirms, and provides an indicative reason why, GO FOAM FREE is an expression which others who produce and market foam-free products might, without any exercise of improper motive, desire to use the Claimed Mark in the course of trade.

Decision

1. Section 33 of the Act provides:

   33 Application 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. I am satisfied that there is a ground for rejecting the Claimed Mark under s 41(4) of the Act. As such, I reject trade mark application 18595782 in accordance with s 33(3) of the Act. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.

Aaron Walters

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

19 July 2019