Conga Foods Pty Ltd

[2018] ATMO 56

TRADE MARKS ACT 1995

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

ReTrade mark application number 1808100 (29, 30) – ASSORTI – in the name of Conga Foods Pty Ltd

Delegate:  Robert Wilson

Representation:                  Applicant: Written submissions by Phillips Ormond Fitzpatrick

Decision:  2018 ATMO 56

Trade Marks Act 1995 (Cth) – ex parte decision on written record – whether ground for rejection of application under s 41 – trade mark not inherently adapted to distinguish – no evidence of use– application rejected

Background

1. On 9 November 2016 Conga Foods Pty Ltd (‘the Applicant’) filed an application to register the trade mark  detailed below:

Application Number:	1808100
Goods:	Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; cheese; edible oils and fats Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; grissini; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (‘the Applicant’s Goods’)
Trade Mark:	ASSORTI	(‘the Trade Mark’)
Endorsement:	The applicant advises that ASSORTI is a French word that may be translated into English as "matched".

1. The application was examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’) and on 15 February 2017 the examiner issued an adverse report. The examiner indicated in the report that a ground for rejection existed under s 41 of the Act for the following reasons:

   Your trade mark is ASSORTI. This is the FRENCH language equivalent of the word assorted or matching.

   This indicates that the goods claimed are assorted or matched in some way. For instance, that the applicant offers assorted cheese.

   A significant number of people in Australia understand this language. Other traders should be able to use the word/s in connection with goods or services similar to yours.

The examiner included in the report URLs for a number of webpages ‘showing generic use of the term ASSORTED … showing other traders acting without improper motive using the term to describe their own goods and services’.

1. The Applicant responded to the adverse report by submissions dated 23 May 2017. The Applicant’s submissions did not change the examiner’s view on the ground for rejection and a second adverse report was issued. The Applicant responded a second time following which a third adverse report was issued on 6 March 2018. The Applicant then requested to be heard on the written record. I have been allocated to decide the matter as a delegate of the Registrar of Trade Marks.

2. Written submissions were provided by Phillips Ormond Fitzpatrick who are the legal representatives of the Applicant. The following declarations have also been provided:

• Declaration made on 22 March 2018 by Marine Anne Guillou, a trade marks attorney employed by Phillips Ormond Fitzpatrick, with Exhibits MAG-1 to MAG‑5. Ms Guillou declared that she is a native speaker of the French language having been born in France and having lived there for 27 years. Ms Guilliou has also lived in Norway and Scotland. She moved to Australia in 2008 and has lived here since that time. Ms Guillou’s schooling commenced in France, and she eventually received a Master of Laws from the University of Rennes in 2003. She also studied whilst in Scotland, and received a Master of Laws specialising in Intellectual Property from the University of Edinburgh in 2002. Ms Guillou is fluent in the French and English languages, and is a member of the French Trade Marks Practitioner Association; and

• Declaration made on 5 April 2018 by Sandrine Duval, the Marketing Assistant at the Applicant, with Exhibit SD-1. Ms Duval declared that she is a native speaker of the French language who was born in Mauritius and who lived there for 21 years. Ms Duval moved to Australia in 2007 and has lived here since that time. Ms Duval’s schooling commenced in Mauritius, and she ‘eventually graduated as Cambridge GCE in French’. Ms Duval is fluent in French and English.

The Law in Respect of s 41

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 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).

1. 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.

2. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks 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] (‘Clark Equipment’).

3. The Applicant has referred me to more recent authority to be found in Cantarella Bros v Modena Trading.[3] In that case the High Court indicated that the test for distinctiveness is a two step process. The first step being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods, then having determined the answer to that question to consider the likelihood of the sign being needed by other traders. I turn firstly to consider the ordinary signification of the Trade Mark.

   [3] [2014] HCA 48.

4. The Applicant submitted that Ms Guillou and Ms Duval are declarants who are:

   native French speakers with over 20 years familiarity with the language from living in French-speaking countries (France and Mauritius). Both declarants attest to being fluent in French and English and, it is submitted, may be expected to be more familiar with the French language than the ordinary consumer in Australia, even an informed consumer who may know some French food terms.

5. Ms Duval declared:

   [The Trade Mark] was originally coined as an abbreviation of the Italian word ASSORTITO, which means ‘assorted’. The Italian origin of the mark is due to the Italian heritage of the owners of Conga Foods Pty Ltd … I am aware that ASSORTI also has a meaning in French.

   In French, ASSORTI is either an adjective or a conjugated verb under the French tenses Passé compose, Plus-que-parfait, Passé antérieur or Futur antérieur. Examples of use of the term are: ‘FROMAGES ASSORTIS’ which may be translated as ‘ASSORTED CHEESES’; ‘J’AI ASSORTI …’ which may be translated as ‘I MATCHED …’

   I consider that, for most French-speaking people, ASSORTI by itself means MATCHED or MATCHING. As in English, whether used as an adjective or as a verb, the term does not have much meaning without some additional words to give it context, that is, to explain what the action of matching relates to, or what the object being matched is being matched with.

   When used as an adjective in French, the word ASSORTI always appears after the noun which it describes. Where the noun is plural, the adjective will take the plural form ASSORTIS (as noted above in the example ‘FROMAGES ASSORTIS’). When used as a trade mark, the term ASSORTI will appear before the description of the goods, e.g. ‘ASSORTI biscuits’, ‘ASSORTI cheese’, and thus would not be seen by a French speaker as a reference to the French adjective meaning ‘matching’ or ‘assorted’ …

6. Ms Guillou declared in a similar vein:

   I am aware of [ASSORTI] having several different meanings in French. First, ASSORTI is the past participle of the verb ASSORTIR, meaning ‘to match’. Secondly, the word ASSORTI is an adjective that, depending on context, could mean ‘matched’, but may also mean ‘assorted’ or ‘stocked’. …

   I note that, when used as a French adjective, the word ASSORTI follows the noun that it describes, unlike English where adjectives normally preceded the noun. I also note that when ASSORTI describes a plural noun, its written form is modified to ASSORTIS. …

   Where ASSORTI is used in relation to a singular noun, it is more likely to be understood as ‘matched’ than ‘assorted’. as one would not normally speak of a single objects [sic] being assorted, (e.g. in English one would not say ‘an assorted vegetable’ or ‘an assorted chocolate’, but would use the term in relation to a plurality of items – ‘assorted vegetables’, ‘assorted chocolates’). As mentioned above, when used to describe a plurality of items, the ASSORTIS is used in French.

7. I am satisfied that the opinions of Ms Guillou and Ms Duval as to the interpretation of ASSORTI may be relied upon. I am also satisfied that because of its singular nature, and when used as a word on its own, the ordinary signification of ASSORTI is ‘matched’ or ‘matching’ to an informed speaker of the French language in Australia. I move then to consider the likelihood of ASSORTI being needed by other traders.

8. The Applicant has submitted:

   With regard to the translation of ASSORTI as ‘matched’ or ‘matching’, we again submit that these terms are not terms that ‘consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of the goods’ (s 41(4) Note 1). It is submitted that without additional context, indicating what the goods in question are matched to, no trader is likely to wish to describe goods simply as ‘matched’. …

   In considering whether other traders are likely to wish to use the word ASSORTI … [t]he test to be applied is whether there is a likelihood that other traders 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. Registration of ASSORTI will not prevent another trader from using this word in a manner that would not infringe the registration, and use of the word as a French adjective will not infringe, as it will not be use as a trade mark.

9. The Applicant has submitted above ‘without additional context, indicating what the goods in question are matched to, no trader is likely to wish to describe goods simply as “matched”’. Trade marks by their very nature are used in connection with goods or services and do not exist in isolation. Words, too, generally do not appear in isolation, they are used within a context created by the surrounding words, if any, and/or the situation in which they are used. Such use may provide a context within which other traders are quite likely to wish to describe goods as ‘matched’ or ‘matching’. For example, consider clothing. A trader may wish to sell a variety of shirts and ties which they feel are matched in some way—colours or designs that complement each other perhaps. They may wish to have a display above which appears a large sign ‘MATCHED’ or ‘MATCHING’. The display may have shirts and ties in some arrangement which groups the matched items together. The shirts and ties could be presented in a single retail package which bears the word ‘MATCHED’: a very useful approach I would think for many purchasers. The shop may also have displays above which appear a number of signs. For example BRAND A, BRAND B, BRAND C, MATCHED. The sign MATCHED above such a display and on retail packaging described is likely to be seen as descriptive and not as an indicator of trade source.

10. Turning now to the Applicant’s Goods; it is reasonable to describe these as various foodstuffs. It is fairly common knowledge that certain foodstuffs go well together and others not so well. A trader may wish to offer, for example, a selection of cheese and wine which are matched to enhance the enjoyment of both. It is easy to envisage a store again with a number of displays, above which appear the following signs RED WINE, WHITE WINE, BLUE CHEESES, SOFT CHEESES, MATCHED. If MATCHED were to appear on the retail packaging containing the matched cheese and wine it would be immediately apparent from the context that MATCHED is descriptive of the goods being sold rather than being seen as an indicator of trade source.

11. The same hypothetical trader discussed above may wish to open a store in Australia which focusses on French produce, or to have a French section in their store. They may wish to have signs above their displays which read VIN ROUGE, VIN BLANC, FROMAGE BLEU, FROMAGE FRAIS, ASSORTI. The retail packaging in the ASSORTI section could bear the claimed ASSORTI trade mark. Given the ordinary signification of ASSORTI to French speakers, as meaning ‘matched’ or ‘matching’, the context means that the word is going to be seen as descriptive of the goods in connection with which it is used. Doubtless, if one were to turn their mind to it many examples could be imagined which include the matching of other foodstuffs: pasta sauce and a matching type of pasta, perhaps.

12. The examples above are hypothetical; I am not aware of any traders taking the approaches described. It may be that appropriate research does not reveal any examples of this practice currently being undertaken by any traders. I am of the view that this does not matter. The examples are not outrageous or far-fetched and whether or not other traders are using, or have used, the Trade Mark in the manner hypothesised does not affect my assessment of its inherent adaptation to distinguish.

13. I am satisfied that due to its descriptive nature when used in the appropriate context, ASSORTI is a sign that other traders are likely, without improper motive, to think of and wish to use in connection with goods similar to the Applicant’s Goods. This gives rise to a ground for rejecting the Application under s 41 of the Act as it is not inherently adapted to distinguish the Applicant’s Goods from the goods or services of other persons. The Applicant has not provided any evidence of its use of the Trade Mark; consequently, I am not satisfied that the Trade Mark does in fact so distinguish.

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

19 April 2018