Bega Cheese Limited

[2016] ATMO 13

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1558915 (29) – SUPER SLICES - in the name of Bega Cheese Limited.

Delegate:	Bianca Irgang
Representation:	Applicant: Dawn Logan Keeffe instructed by Marion Heathcote of Davies Collison Cave
Decision:	2016 ATMO 13 Request to be heard under section 33 of the Trade Marks Act 1995- ground for rejection considered under section 41(4) – evidence insufficient to overcome objection – Trade Mark rejected.

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

   Trade Mark No: 1558915

   Trade Mark: SUPER SLICES (‘the Trade Mark’)

   Filing Date: 23 May 2013

   Applicant: Bega Cheese Limited

   Specification of Goods and Services:

   Class 29: Cheese and cheese products in this class, including processed cheese, milk, cream, butter, yoghurt and other dairy products

1. The Trade Mark was examined under section 31 of the Act and a ground of rejection was raised under section 41(4). The examiner’s first report provided:

   Your trade mark is, or has as its main feature, SUPER SLICES.

   The word SUPER is a qualitative term, used to express that goods are of a superior quality, grade, size, etc. As such the trade mark SUPER SLICES, as a whole, when applied to the goods claimed will assert that those goods are superior quality, of superior grade or sized slices.

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

2. The applicant was then given the option of providing evidence of use, intended use or any other circumstances under section 41(4). The applicant’s legal representative provided evidence of use and argued that the Trade Mark was inherently adapted to distinguish the designated goods.

3. The second report from the examiner focused on the use of the Trade Mark in close conjunction with the word BEGA, the nature of goods which are sliced and that the Trade Mark was not inherently adapted to distinguish. In the end, the report read:

   ...I do not agree that SUPER SLICES is prima facie capable of distinguishing, a consumer would view it as a qualitative/descriptive aspect of the product. It would simply be descriptive of an aspect of the goods - namely, that they come in SUPER size, SLICES. There is of course scope here to limit the goods to products which would not generally come in slices in order to overcome this.

For these reasons I do not agree that the applied for trade mark when being used in conjunction with the BEGA trade mark is appropriate evidence in order to overcome this issue. Consumers would be placing a lot more emphasis on the BEGA trade mark and would see SUPER SLICES as a description of an aspect of the product. The examples provided where the words SUPER SLICES have been moved slightly further apart from BEGA do not change this.

1. After the second examination report, the applicant requested to be heard on the matter under section 33(4) of the Act. The subsequent hearing took place in Canberra on 2 December 2015. Dawn Logan Keeffe of Davies Collison Cave, instructed by Marion Heathcote made oral representations on behalf of the applicant.

The Law

1. Section 41 of the Act 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 personand services of a personsee 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).

(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).

1. Ms Logan Keeffe argued that the Trade Mark was inherently adapted to distinguish the designated goods and should be accepted prima facie. However, in the event I was not convinced by that argument, she submitted that the Trade Mark should be accepted taking into account the considerations under section 41 and on the strength of the evidence provided.

2. The ground for rejection was based on the view that ‘SUPER SLICES’ would describe the superior quality, or superior grade or superior sized slices of cheese and solid cheese or dairy products. I say now that I am satisfied that the s 41 objection raised by the examiner was only in relation to those goods in class 29 which are solid and capable of actually being sliced, namely, cheese and solid cheese and dairy products. Those other goods in the class such as milk, cream and yoghurt are not the subject of the section 41 objection. I note that if the applicant had chosen to delete the goods cheese and solid cheese and dairy products from the application that the application would have proceeded to acceptance for possible registration. However, a consideration of the applicant’s evidence demonstrates that the goods it actually uses SUPER SLICES on are solid cheese products which I note are commonly sold to Australian consumers in slices. 

3. Ms Logan Keeffe argued that the Trade Mark may allude to the designated ‘solid and capable of being sliced’ goods in class 9 but it is not descriptive of them and is not an expression that other traders, acting without improper motive, would desire to use upon or in connection to the designated goods.

4. Concerning the initial question of whether a trade mark is inherently adapted to distinguish goods from those of other traders, Kitto J in Clark Equipment Co v Registrar of Trade Marks said:[1]

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “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. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be 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.

   [1] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at 345–6, (Kitto J)

5. The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[2]

   [2] (1965) 112 CLR 537).

6. The applicant is clearly of the opinion that SUPER SLICES is capable of distinguishing the designated goods as other traders in the same goods would not need to use the expression SUPER SLICES in regards to solid cheese and dairy products in the ordinary and legitimate course of trade.

7. It is worth noting that while the words SUPER SLICES within the Trade Mark each have their own meaning the expression does not have a dictionary definition when combined together in that fashion. In Sports Warehouse, Inc v Fry Consulting Pty Ltd[3] it was observed that:

   One can place too much weight on dictionary definitions. Whilst they provide a guide to the meaning of a word, they may not set out its meaning exhaustively. Colloquial usage may provide further meanings to those set down in the dictionaries.

   [3] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (at 86) per Kenny J.

8. It does not necessarily follow that words without a dictionary definition are therefore a ‘covert’ or ‘skillful allusion’ to the designated goods.[4] In the current matter, it is more accurate to say that the Trade Mark consists of words that can indicate and describe particular characteristics of the goods. In particular, the ordinary signification of the Trade Mark is that the applicant’s solid cheese and dairy goods are superior quality and/or are provided in superior sized slices. I note that processed cheese is often sold in packs of ‘slices’ to the Australian consumers.

   [4] See Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 (at p201).

9. In terms of the ‘other traders’ test in Registrar of Trade Marks v. W. & G. Du Cros Ltd.[5] the likelihood of other traders desiring to use the Trade Mark in relation to the designated goods and services may be tested by appropriate examples from the marketplace. On that point I note that there are some limited examples in the evidence of other traders using similar expressions but this is mostly in regards to baked goods or ‘slices[6]’ which are either of superior quality/taste or incorporate ‘super’ foods[7]. However, even this use in the marketplace indicates that traders do use ‘SUPER SLICES’ as a laudatory expression which may be applied to ‘great, good, exceptional and superior’ goods which have been cut into smaller portions for the convenience of consumers.

   [5] (1913) AC 624, at pp 634.

   [6] These can be baked or unbaked, sweet or savoury goods often cut from a large piece into smaller portions.

   [7] A nutrient-rich food considered to be especially beneficial for health and well-being.

10. Having taken into account the presumption of registrability I am nevertheless satisfied that the first element of the ground for rejection exists under s 41(4)(a) of the Act with regards to cheese and solid cheese and dairy products. I acknowledge the the Trade Mark has an element of distinctiveness to it and this provides the Trade Mark with some inherent adaptation to distinguish the designated goods from those of other traders.

11. However, for the ground for rejection under s 41(4) to apply, I must also be satisfied that the Trade Mark does not and will not distinguish the designated goods as being those of the applicant having regard to the factors set out in ss 41(4)(b). Accordingly, I will now consider the applicant’s evidence of use, intended use and any other circumstances that may be relevant in the consideration.

Evidence

1. The applicant provided the following declaration in support of its application:

• Michael Edward Hampson, Business Manager – Contract Manufacturing of Bega Cheese Limited made 22 May 2015 accompanied by exhibits 1 to 26. (‘the Hampson declaration’)

1. The applicant also provided an outline of submissions for the hearing along with Annexures A through to E for consideration.

2. The Hampson declaration states that the applicant was originally established as The Bega Cooperative Creamery Company in 1899. Since that time, the applicant went through many changes, continued to sell cheese and expanded into the international market with its products. Mr Hampson declares that the applicant has used its SUPER SLICES trade mark continuously in Australia since at least 1984. He declares that the applicant;

• Is supplied with 630 million litres of milk by approximately 450 farmers throughout Australia and employs over 1,650 people;

• has six processing sites around Australia;

• held a 12.9% share of the total domestic dairy cheese market by unit weight and a 14.2% share of the domestic dairy cheese market by generated revenue  in Australia as of December 2014;

• sells over 1 million packs of cheese per day in Australia through an extensive number of retailers (Exhibit 15);

• exports its cheese and dairy products including those goods which feature the SUPER SLICES trade mark to over 50 nations and territories throughout the world;

• estimates that the total brand revenue generated by its BEGA trade mark and its secondary brands including the SUPER SLICES trade mark has been very considerable from 2003 until 2014;

• spent a reasonable amount on advertising its BEGA trade mark and secondary trade marks including SUPER SLICES through the years 2010 until 2013 (apparently supported by confidential exhibit 18).  

1. In paragraphs 18 through to 21 of the Hampson declaration I was directed to the trade mark registrations/applications made and/or held by the applicant in Australia and New Zealand. I note that the most relevant registration is Australian trade mark registration no. 419471 owned by the applicant. The details of this registration are as follows:

   Trade Mark No: 419471

   Trade Mark:

   Filing Date: 11 December 1984

   Applicant: Bega Cheese Limited

   Specification of Goods and Services:

   Class 29: Cheese slices

   Endorsements: Registration of this trade mark shall give no right to the exclusive use of the geographical name BEGA and the word SUPER. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

2. Whether the above information amounts to clear evidence that the words SUPER SLICES have developed a secondary meaning as a trade mark of the applicant requires further investigation.

Discussion

1. In the Treat decision[8] Jacob J of the UK High Court of Justice considered the evidence provided in the action between the parties.  He said:

   I have already described the evidence used to support the original registration.  It was really no more than evidence of use.  Now it is all too easy to be beguiled by such evidence.  There is an unspoken and illogical assumption that ‘use equals distinctiveness’.  The illogicality can be seen from an example:  no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods.  He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. 

   [8] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

2. Justice Jacob then went on to say the following:

   It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader.  This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.

3. The applicant has provided a number of examples of how it uses its assorted BEGA trade marks including the SUPER SLICES Trade Mark on its packaging of cheese goods(exhibits 20, 21), in television and print advertisements (Exhibits 20 through to 22) and marketing and promotional activities (exhibits 24, 25 and 26). Going through the evidence it is clear that the applicant uses its Trade Mark on sliced cheese products and does significantly advertise its BEGA cheese trade marks. However, there are limited examples of the applicant advertising its goods under the Trade Mark. Below, I have taken examples of the applicant’s use from its evidence:

Exhibit 20 Exhibit 21 Exhibit 24

1. The above examples of use of the Trade Mark are rare in the evidence. Much of the applicant’s evidence relates to use of its other BEGA trade marks. I do note exhibit 22 which contains print outs from the applicant’s website. In those copies of pages from the website there are two instances of the Trade Mark being used solus. However, the majority of references to the cheese products provided under the Trade Mark are in plain text and referred to as BEGA SUPER SLICES. Exhibit 17 appears to be internal record keeping documents which refer to the Trade Mark in plain text under the column labelled ‘description’ along with other descriptors of the product such as weight. However, I do not see the use in Exhibit 17 as demonstrating use of the Trade Mark as a trade mark.

1. Ms Logan Keeffe has argued that the evidence demonstrates that the applicant has used two trade marks, namely the BEGA house mark and the SUPER SLICES Trade Mark in conjunction with each other on its packaging and in its advertising and promotional materials. I agree that there is no reason why the applicant cannot use one, two or several trade marks together in its advertising or on its packaging. However, the essential consideration is that the plain text expression SUPER SLICES operates, in its own right, as a trade mark. It must serve the purpose of distinguishing the applicant’s goods within the particular trade.

2. The prominent positioning of the word BEGA on the packaging and in the examples before me in in the vast majority of the evidence does not satisfy me that the expression SUPER SLICES has come to distinguish the applicant’s goods from those of other traders. The evidence before me points towards what Jacob J described in Phillips Electronics NV v Remington Consumer Products Ltd[9] as a ‘limping mark’; that is, the Trade Mark is more often than not accompanied by the well-known BEGA house mark in prominent position.

   [9] (1997) 40 IPR 279

3. I consider, from what is demonstrated in the evidence before me, that the applicant’s use of the term SUPER SLICES in conjunction with the applicant’s BEGA trade mark and various identifiers common to the packaging of its sliced cheese shows that the Trade Mark does not distinguish the applicant’s goods on its own. Nor does the evidence provided sufficiently demonstrate that SUPER SLICES has acquired a meaning related to the applicant’s goods which overshadows its descriptive meaning. The applicant’s evidence does not satisfy me that the trade mark is capable of distinguishing the applicant’s goods from the similar goods of other traders in the same field.

Decision

1. Section 33 of the Act relevantly provides:

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. A valid ground for rejection of the application exists under subsection 41(4).

2. I reject trade mark application no. 1558915 in its entirety.

Bianca Irgang
Hearing Officer
Trade Marks Hearings & Opposition
15 February 2016