Campbell Soup Company

[2018] ATMO 28

TRADE MARKS ACT 1995

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

ReTrade mark application number 1814710 (32) – FRUITS AND ROOTS - in the name of Campbell Soup Company

Delegate:                   Robert Wilson

Representation:        Applicant: Maggie Chan of King & Wood Mallesons

Decision:                   2017 ATMO 28

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 41 – trade mark not inherently adaptation to distinguish – no evidence of use provided – application rejected

Background

1. On 8 December 2016 Campbell Soup Company (‘the Applicant’) filed an application to register the trade mark  detailed below:

Application Number:	1814710
Goods:	Class 32: non-alcoholic beverages; fruit juices; vegetable juices; fruit and vegetable juices; non-alcoholic beverages containing fruit juices, non-alcoholic beverages containing vegetable juices; non-alcoholic beverages containing vegetable juice or juices and/or fruit juice or juices  (‘the Goods’)
Trade Mark:	FRUITS AND ROOTS	(‘the Trade Mark’)

1. The application was examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’) and on 4 March 2017 the examiner issued a first adverse report. The examiner indicated that there was a ground for rejecting the application under s 41 of the Act on the basis that the trade mark was to some extent, but not sufficiently, inherently adapted to distinguish the Goods from the goods or services of other traders. It was the examiner’s view that the Trade Mark indicated that the Goods ‘are beverages made from roots and fruits of plants, trees, vegetables and the like’. The examiner supported his view with the definitions of ‘fruit’ and ‘root’ found in the Macquarie Dictionary. Those definitions being respectively, ‘any product of vegetable growth useful to humans or animals’ and ‘a part of the body of a plant which, typically, develops from the radicle, and grows downwards into the soil, fixing the plant and absorbing nutriment and moisture’. The examiner also conducted some searches of the internet, including a search using the terms ‘”fruits and roots” beverages’. His search results indicated some use overseas of the term in a descriptive manner. The examiner indicated that the Applicant might overcome the ground for rejection if it filed evidence of use of the Trade Mark in terms of s 41(4) of the Act.

2. The Applicant did not provide any evidence of its use of the Trade Mark but instead responded on 2 May 2017 with submissions which were prepared by its legal representatives, King & Wood Mallesons. The submissions centred on the Applicant’s view that the Trade Mark is inherently adapted to distinguish. The examiner was not persuaded by the submissions and on 29 May 2017 he issued a second adverse report maintaining the ground for rejection of the application. The second report included the examiner’s view that:

   The words comprising the trade mark are descriptive of a nature or character of the goods, indicating that they are derived from fruits and roots of plants. Nothing in their combination or juxtaposition alters those common meanings. The term, as a whole, does have a descriptive meaning in the ordinary signification of the words from which it is comprised.

3. As is its right under s 33(4) of the Act, on 16 November 2017 the Applicant requested to be heard. As a delegate of the Registrar of Trade Marks, I heard oral submissions from the Applicant on 9 February 2018. The Applicant was represented by Maggie Chan of King & Wood Mallesons. Ms Chan’s oral submissions were supplemented by written submissions provided to me prior to the hearing. No evidence of use of the Trade Mark by the Applicant was provided.

The Law in Respect of s 41

5. 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 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).

(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).

6. The case law setting out the necessary considerations for determining whether a sign is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington 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 Act a monopoly in what others may legitimately desire.[1]

[1] (1913) AC 624, 634-5.

7. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment') stated:

[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]

[2] [1964] HCA 55, [5].

8. Ms Chan submitted that the ground for rejection of the application should be withdrawn the basis that the Trade Mark is sufficiently inherently adapted to distinguish the Goods from the goods or services of other persons. Ms Chan asserted that there are ‘two critical and decisive errors disclosed by the examiner’s reasoning’. Firstly, the examiner’s finding that ‘roots’ is descriptive of a nature or character of the Goods. Secondly, that the examiner erred in dissecting the Trade Mark into its constituent parts rather than considering the Trade Mark in its entirety.

9. I note that decisions which arise from ex parte hearings are generally not approached by delegates as an assessment of the correctness or otherwise of the approach and/or views of the examiner. Rather, the approach taken is one of fresh eyes making an assessment of the submissions made at the hearing (and any evidence provided) as they relate to the ground for rejection being considered. That is the approach taken in this decision.

1. Ms Chan has submitted that ‘roots’ is not directly descriptive of the character of the Goods:

   The Applicant accepts that the term FRUITS, if considered in isolation, could be considered descriptive of a character of the relevant goods. However, the same cannot be said for ROOTS. In the context of the Goods, the word ROOTS does not describe beverages derived from the roots of plants. Instead, the word ROOTS is at most a clever and playful allusion (particularly when considered in combination with the rhyming FRUITS) to beverages derived from vegetables. …

   It cannot be said that the Trade Mark is directly descriptive of the Goods as the term ROOTS is even further removed from the Goods in that it refers to a part of a vegetable, and not the vegetable itself.

2. I am not persuaded by Ms Chan’s submissions on this point. Not least because, contrary to Ms Chan’s submissions, many roots are the vegetable themselves: carrots, beetroot and ginger come immediately to mind. All three of those are, in my experience, reasonably common ingredients in juice beverages. Further, it is as reasonable to describe beverages made from the juice extracted from roots as ‘root juice’ as it is to describe a beverage made from squeezed oranges as ‘fruit juice’. If someone were to describe a beverage as ‘root juice’ the nature of the beverage would be immediately apparent. I agree with the Applicant that ‘fruits’ used in isolation in connection with beverages indicates a character of those beverages. Similarly, ‘roots’ used in the same way also indicates a character of beverages.

3. In considering separately the descriptive nature of ‘fruits’ and ‘roots’ we have, in our minds at least, dissected a plant. However, Ms Chan submits that in the case of a trade mark dissection is not appropriate; she asserted the following:

   The totality of the Applicant’s Trade Mark must be considered. The Applicant refers in this regard to Diamond T (1921) 38 RPC 373 (Ch) and Kerly’s Law of Trade Marks and Trade Names (14^th edition, para 8-056), which states ‘[it] is only the assessment of the whole which matters, anything else is secondary’, and Burrell & Handler state that the issue ‘is to be determined by looking at the mark as a whole, rather than determining the registrability of each of its components’ (at p110).

   Even if the three words which comprise the Trade Mark did have a descriptive meaning when considered independently against the Goods … it is immediately apparent when the Trade Mark is considered in its entirety that the Trade Mark as a whole is not directly descriptive in its ordinary signification, and that it is capable of functioning (and would be recognised) from the outset as a trade mark.

   Properly considered, the Trade Mark is a coined term which at most contains a ‘covert and skilful allusion’ to the nature or character of goods and is therefore prima facie distinctive. The Trade Mark does not in its ordinary signification directly describe non-alcoholic beverages, fruit juices or vegetable juices.

   Even if the beverage was comprised of a ‘fruit’ and a ‘root vegetable’, no consumer would refer to a fruit and vegetable juice directly as FRUITS AND ROOTS. At most, a consumer would refer to the individual ingredients of the juice (such as ‘apple and spinach juice’). (emphases in original)

4. I am, again, not persuaded by Ms Chan’s submissions. There is some merit to the argument that, taken as a whole, FRUITS AND ROOTS is not directly descriptive of the Goods. The trade mark is not, for example, THIS BEVERAGE IS MADE FROM THE JUICE OF THE FRUITS AND ROOTS OF VARIOUS PLANTS. However, a sign need not be as entirely descriptive as that example to lack inherent adaptation to distinguish. The sign FRUITS is, arguably, not directly descriptive of beverages yet, as conceded by the Applicant, is lacking inherent adaptation to distinguish juices. To adopt the terminology used by the High Court in Cantarella,[3] the ordinary signification of ‘fruits’, in Australia, to persons who will purchase, consume or trade in beverages is that of the an edible part of a plant and the use of that term in connection with beverages is a direct reference to an ingredient of the beverage.

   [3] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48.

5. A quick search of the internet using the search term ‘“fruits and roots” beverages’ reveals instances of use of ‘fruits and roots’ in a descriptive manner in connection with beverages. Two examples are:

• In an article entitled ‘Sengalese-inspired drinks’ the following sentence appears: ‘Magbe Savane … uses flowers, fruits, and roots to make Makomas, her line of three West African-inspired natural beverages.’[4]

• In an advertisement for ‘Viaviente Anti-Oxidant Beverages’ the following appears: ‘It contains twelve different antioxidant-rich fruits and roots.’[5]

  [4] Ann Treiger Kurland, Sengalese-inspired drinks (30 June 2015) Boston Global  < Viaveinte Anti-Oxidant Beverages Viaviente < type="1">

• I am of the view that the ordinary signification of FRUITS AND ROOTS, in Australia, to persons who will purchase, consume or trade in beverages is a direct reference to the nature of the Goods. The immediate conclusion on seeing the Trade Mark on, for example, a bottle of juice is that the beverage contains the juice of various fruits and roots, for example orange, apple, carrot, and ginger. Putting this in the context of the test in Du Cros, there is a high likelihood that other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the Trade Mark, or some mark nearly resembling it, upon or in connexion with their own goods.

• For the reasons stated, I am of the view that the Trade Mark is not inherently adapted to distinguish. As the Applicant has not provided any evidence of use—which might establish that the Trade Mark does, in fact, distinguish the Goods from the goods of other traders—I am not satisfied that the Trade Mark is capable of distinguishing the Goods from the goods or services of other persons.

• Ms Chan provided me with a copy of the Applicant’s New Zealand registration of the Trade Mark, and submitted that it was accepted on the basis that it was considered to be inherently adapted to distinguish. Ms Chan further submitted that, while not binding, the New Zealand registration should be a persuasive factor as it indicates the Trade Mark has been perceived as ‘performing an origin-specific function before a major registry, in an English-speaking jurisdiction, that examines for distinctiveness’. In deciding this matter, the Registrar is not bound by the state of the Australian Register of Trade Marks. As stated by Wilcox J:

  [C]onsistency in public administration is desirable, a public officer is not justified in persisting with error. Mark may, in the past have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.[6]

As it exists in a foreign jurisdiction, the state of the New Zealand register is correspondingly less influential. I have afforded appropriate weight to the New Zealand registration and am not swayed from my view.

[6] Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579, 590 [35].

Decision

1. I am satisfied that there exists a ground for rejecting the application under s 41 of the Act. Accordingly, I reject the application.

Robert Wilson
Hearing Officer
Hearings and Oppositions
26 February 2018