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 considering the mark in light of the long recognized criterion of deciding whether the mark is such that no other trader would desire to use the mark, without improper motive, upon or in connection with their own goods.  If the conclusion is in the affirmative, then registration will generally be refused (see Clark Equipment Company v. Registrar of Trade Marks (1964) 111 CLR 511). Registrability of a mark in Part B of the Register will depend on the test of whether the mark would, at some time in future, satisfy the requirements of sub-section 26(2) based on inherent distinctiveness and distinctiveness in fact.

The word "mask" has a well recognized meaning of describing, inter alia, "anything that disguises or conceals" or, as a verb, "to disguise or to conceal" - The Macquarie Dictionary.  "Masking" is a term used in the building industry to describe "the use of tape, paper or other means to protect an adjacent surface from paint and to produce a sharp edge", as defined in the Macmillan Dictionary of Building by Randall McMullan and "protecting a surface from adjacent painting by sticking or fixing tape or paper on to the surface" as referenced in the Illustrated Dictionary of Building by Paul Marsh.  The word "it" merely refers to the object which is to be covered with the plastic drop sheet and the masking tape.   In view of these definitions, the meaning of the words "mask" and "it", although separated by a hyphen in the applicant's mark, would be interpreted by ordinary persons as describing the goods of the present application as plastic sheets adapted for covering or concealing an object, and to persons following a special pursuit or vocation (see Howard Auto-Cultivators Ltd. v. Webb Industries Pty. Ltd. (1946) 72 CLR 175), such as painters, for example, the words would convey a more specific meaning by describing the goods as a plastic drop sheet for protecting a surface from adjacent painting by securely affixing the sheet on to the surface to form a sharp edge. It has been suggested in the submissions that the combination of the words "mask" and "it" is uncommon and novel in the English language, a proposition with which I cannot agree, having regard to every-day expressions describing the purpose of an item or conveying directions or instructions on what one is expected to do with the item, for example: "read it", "post it", "cover it", "cut it" "save it" "bind it". Having regard to what constitutes marks which have direct reference to the character or quality of the goods, as expounded by Dixon CJ in Mark Foys Ltd. v. Davies Coop & Co. Ltd. (1956) 95 CLR 190 at pp. 194-195, I conclude that the applicant's mark fails to qualify for registration in terms of paragraph 24(1)(d) of the Act.

Considering distinctiveness in fact, I refer to the evidence lodged by Mr. Christopher Rodney Bishop in form of a statutory declaration, together with exhibit CRB-1, which states that the applicant commenced using the mark during the year 1990, having sold $575,000 worth of the goods up to 1993, and that the amount of $139,000 was expended on advertising the product.  Even though  the mark was used only for a limited period before the date of lodgment and therefore  it has not achieved distinctiveness in fact at 1st February, 1991, I concede that the volume of sales, particulary during the period 1992 to 1993 has been quite substantial.  However, any evidence of momentary factual distinctiveness must be weighed against the mark's inherent non-distinctiveness.  In Burger King v. Registrar, supra, at p. 426 Gibbs J. commented:

"... the authorities show that the primary inquiry is
                 whether the word is inherently adapted to distinguish
                 the goods in respect of which registration is sought,
                 and if it is simply a laudatory or descriptive
                 epithet, registration will generally be refused even
                 if there is evidence of such user as has in fact
                 rendered the word distinctive of the applicant's
                 goods."

This principle is applicable not only to a mark comprising a single word but also to combinations of words if those words are considered to be descriptive of the goods in question.

In view of my previous comments, the applicant's mark is so lacking in inherent distinctiveness to distinguish that it falls in the category of marks for which no amount of evidence will serve to overcome the objection (see Oxford University Press v. Registrar of Trade Marks 17 IPR 509).

I find therefore that the mark fails to qualify for registration in terms of sections 24 and 25 of the Act.  Consequently, I refuse this application. 

Vija Zars
Senior Examiner

26 April 1994