Cling Adhesive Products Pty Ltd, Re - [1994] ATMO 34

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application number 549828 to register a trade mark in the name of CLING ADHESIVE PRODUCTS PTY LTD

Application No. 549828 was lodged on 1st February, 1991 by CLING ADHESIVE PRODUCTS PTY LTD (the applicant), of 12 Brand Drive, Thomastown, Victoria 3074, Australia. The applicant sought registration of the mark MASK-IT in respect of goods subsequently amended to "a plastic pull down drop sheet with a strip of masking tape along one edge of the sheet" in class 17.

In a report of 21st May, 1992 an examiner raised an objection to registrability of the mark in terms of paragraphs 24(1)(c), (d) and (e) of the Act because the mark MASK-IT refers directly to the character or quality of the goods by describing them as plastic sheeting for masking surfaces. The attorney acting for the applicant submitted that the words comprising the mark were unusual, and as a consequence, it should be accepted in Part A of the Register as a distinctive mark. A photocopy of a label illustrating use of the goods accompanied the attorney's submissions. In response, the examiner maintained the original objection by stressing that the word "mask" is used in describing the use of tape, paper or other means to protect an adjacent surface from paint and to produce a sharp edge. The applicant then lodged a statutory declaration with an exhibit by Mr. Christopher Rodney Bishop, managing director of the applicant company, to demonstrate use of the mark in Australia. This use, however, did not satisfy the examiner who believed the mark to be unsuitable for registration in either Part A or Part B of the Register. Following the attorney's further submissions on the mark's inherent adaptation to distinguish, the matter was considered by an acting Principal Examiner who agreed with the examiner's conclusions. Consequently, the applicant's attorneys, Griffith Hack & Co., patent and trade mark attorneys of Melbourne, waived the applicant's right to a hearing and requested a decision on the written record, reminding the writer of the decision that, unlike legal precedents such as the mark WHOPPER considered in Burger King Corporation v. The Registrar of Trade Marks (1973) 129 CLR 417, the mark in the present instance consists of two ordinary English words, the combination of those words being conjoined by a hyphen which is unusual, and therefore the mark is one which would not be required by other traders for normal use in connection with similar goods.

Decision
For a mark to be registrable in Part A of the Register it must qualify for registration either in terms of sub-section 24(1) of the Act or under the provisions of sub-sections 24(2) and 26(2) with evidence of use. A trade mark fit for registration in Part A must be distinctive, ie. adapted to distinguish the goods of one proprietor from similar goods of other traders.

The question of the mark's adapability to distinguish will be determined by…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Cling Adhesive Products Pty Ltd, Re [1994] ATMO 34
Case: [1994] ATMO 34
Decision Date: 26 April 1994

CaseChat Overview and Summary

This matter concerns an application by Cling Adhesive Products Pty Ltd for the registration of the trade mark MASK-IT in relation to a plastic pull-down drop sheet with a strip of masking tape along one edge. An examiner objected to the mark's registrability under paragraphs 24(1)(c), (d), and (e) of the Act, asserting that the mark directly described the character or quality of the goods by indicating their use for masking surfaces. Despite submissions from the applicant's attorney, including evidence of use, the examiner maintained the objection, concluding the mark was unsuitable for registration in either Part A or Part B of the Register. The applicant waived its right to a hearing, and the decision was made on the written record.

The primary legal issues before the delegate of the Registrar of Trade Marks were whether the mark MASK-IT was inherently adapted to distinguish the applicant's goods from those of other traders, and whether it had acquired distinctiveness in fact through use. For registration in Part A, a mark must be distinctive, meaning it is adapted to distinguish the goods of one proprietor from similar goods of other traders. Registration in Part B depends on whether the mark would, at some future time, satisfy the requirements of sub-section 26(2) based on inherent distinctiveness and distinctiveness in fact.

The delegate reasoned that the word "mask" has a well-established meaning related to concealing or protecting surfaces, particularly in the building and painting industries, and the word "it" refers to the object being covered. Consequently, the combination MASK-IT would be understood by ordinary persons, and especially by those in relevant trades, as descriptive of the goods' function. The delegate rejected the argument that the combination was uncommon or novel, drawing parallels with everyday instructional phrases. Applying the criterion that a mark is generally refused if no other trader would desire to use it without improper motive, the delegate found the mark failed to qualify for registration under paragraph 24(1)(d). While acknowledging substantial sales and advertising expenditure, the delegate held that any evidence of factual distinctiveness was outweighed by the mark's inherent lack of distinctiveness, citing established legal principles that descriptive epithets, even if proven distinctive in fact, will generally be refused registration.

Ultimately, the delegate concluded that the applicant's mark was so lacking in inherent distinctiveness that no amount of evidence could overcome the objection. Therefore, the application failed to qualify for registration under sections 24 and 25 of the Act, and the application was refused.

Orders