Cooper Tools Pty Ltd, Re

[1991] ATMO 50

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application No 522843 to Register a Trade Mark in the Name of COOPER TOLS PTY LIMITED

Application No 522843 was lodged on 8 November 1989 in the name of COOPER TOOLS PTY LTD, a company incorporated under the laws of New South Wales, of 519 Nurigong Street, Albury 2640, New South Wales.  It sought registration in Part A of the mark SUPER TRU-TIP in respect of a statement of goods subsequently amended to "screwdrivers" in class 8.
          An examiner's report of 20 February 1991 objected to the mark's registration under paras 24(1)(c), (d) and (e) of the Act on the grounds that the mark had direct reference to the character or quality of the goods by directly describing them as possessing a tru(e) or accurate tip of super or superior quality or design.  A further objection was raised in terms of section 33 based on the mark of application 511892.  The applicant, through its attorney, lodged a declaration with exhibits attesting to the mark's use in respect of screwdrivers arguing that the evidence had established acquired distinctiveness of the mark.  With regard to the citation objection, the applicant requested deferral of the present application under the provisions of section 33(3).  The examiner considered the evidence of use to be inadequate for acceptance of the mark in either Part A or Part B of the Register and argued that the words comprising the mark were apt and descriptive of a screwdriver's most desirable feature, and that other traders would wish to use the same words for praising their goods.  In responding to this assertion, the attorney submitted that the subject mark had

been in use for at least ten years before the date of this application, had become well known to the persons dealing with the relevant goods and would be adopted by another person for the same use only for the purpose of attracting business from the present applicant.  He regarded the trade mark as one which was capable of becoming distinctive and therefore requested the application to be transferred to Part B of the Register.
          In the event that the subject mark was found to be unsuitable for registration in Part B, the applicant's attorneys, Griffith Hack & Co, trade mark and patent attorneys of Melbourne, upon waiving the applicant's right to a hearing requested a decision on the written record.
          Firstly, although no submissions have been presented by the attorney on the citation objection in respect of the mark of pending application 511892, I find the objection to be a valid one.  The applicant of the prior application is seeking registration of a series of marks TRUTIP and TRU-TIP for the same goods as the present applicant.  Having regard to the fact that the marks under consideration share the words TRU and TIP, and the only distinguishing feature resides in the laudatory, non-distinctive word SUPER in the subject mark, I infer that the marks are deceptively similar, if not substantially identical.  Thus the objection expressed in terms of section 33 in relation to application 511892 stands.
          It is well established that in assessing registrability of trade marks in terms of section 25, the two criteria stipulated under sub-section 26(2) must be taken into account, namely: inherent distinctiveness and distinctiveness acquired through use or any other circumstances.  Of these criteria the question of inherent distinctiveness is of primary importance.  What kind of a mark is adapted to distinguish?  In Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 Kitto J observed at p.514 that a mark:

"... 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 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."

The applicant's mark consists of three ordinary readily understood words SUPER, TRU-, which is phonetically equivalent to the word 'true', and TIP.  In the Macquarie Dictionary the word 'true' is defined, inter alia, as; "7. exact, correct, or accurate.  13. exactly or accurately shaped, formed, fitted, or placed, as a surface, instrument, or part of a mechanism", while under the word 'tip', inter alia, appear the following definitions: "1. a slender or pointed extremity, esp. of anything long or tapered.  3. a small piece or part, as of metal or leather, forming the extremity of something".  Similar meanings of these words are listed in the Webster's Third New International Dictionary, The Random House Dictionary and other standard dictionaries.  Combined with the common and well recognized laudatory term expressing superiority, the words TRU-TIP have a direct reference to the goods claimed by describing them as better than ordinary screwdrivers which have accurately shaped and fitted extreme points.
          In Mark Foy's Ltd v Davies Coop & Co Ltd (1956) CLR 190 Dixon D.J. has stated at page 195 that to determine whether a mark has direct reference to the goods the appropriate test:

"... must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess."

Having regard to the clear meaning of the three words, when viewed in the context of the relevant goods, the mark as a whole would convey a precise and unambiguous idea - a meaning that would spring unaided to the mind of person interested in the particular goods.  Moreover, such purchasers would expect the goods to be of excellent value and to possess desirable characteristics in a screwdriver - a precise and reliable tip.  The words in the mark, therefore, also appropriately serve to express a laudatory connotation.  In my opinion, there does not appear to be any reason why the exact composition of words should not be adopted by any other trader, in order to describe his goods in the same or similar manner.
          The attorney has contended, however, that by virtue of its long use no other person could monopolize the same mark for use in respect of similar goods without a likelihood of causing deception or confusion.  That may be so, but for a mark to qualify for registration in Part B, it must survive the test enunciated by Kitto J. in Clark Equipment case, supra, at page 513:

"if the mark is to any extent inherently unadapted for the purpose that fact shall be weighed in the scales against the degree of acquired distinctiveness in determining the ultimate question whether the mark is registrable as being "adapted to distinguish" the applicant's goods."

Turning to the evidence concerning the mark's use which has been prepared by Peter M. Reynoldson, managing director of the applicant company, I note that the subject mark has been continuously used in all states of Australia since 1975 in respect of "screwdrivers", the sales value amounting to a total of approx. $150,000.00.  The advertising expenditure incurred on these goods has not been stated separately, but is included in an amount which also represents other applicant's products.  Under exhibits "PMR1" and "PMR2" annexed to Mr Reynoldson's declaration appear a brochure and copies of pages from a catalogue where the blades of the screwdrivers featuring the subject mark are described as having been specially treated and finished to ensure a closer fit for longer wear life and the reduction of damage to screw head recesses.  Such descriptions of the screwdrivers illustrate and emphasize the highly descriptive and laudatory nature of the applicant's mark as indicated earlier, and the fact that the mark conveys the exact meaning intended by the applicant.
          Although, according to Mr Reynoldson, first use of the mark occurred sixteen years ago and has been in use since, in the absence of any indication as to unit costs of the screwdrivers and figures spent on promoting the products, as well as information on their exposure throughout Australia, I think the evidence of use demonstrated by the applicant is insufficient to conclude that the mark which, in addition to its laudatory nature also tangibly expresses the actual characteristics embodied in the goods, is capable of becoming distinctive.  Thus, the evidence of use has failed to establish that the inherent inability of the mark to distinguish the goods has been outweighed to the extent that the mark could be found to be suitable for registration in Part B.
          I consider then that the mark in respect of which the applicant is seeking registration belongs to the category of marks described by Gibbs J in Burger King, supra, at page 426:

"... the primary inquiry is whether the word is inherently adapted to distinguish the goods in respect of which registration is sought, and that 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."

In light of my observations, I conclude that the mark does not qualify for registration in terms of section 25 of the Act.  In addition, it also fails under the provisions of section 33 of the Act as a deceptively similar mark.  Consequently, I refuse this application.

(V. ZARS)
Senior Examiner
17 July 1991