Corvina Quality Foods Pty Ltd, Re

[1991] ATMO 30

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application No. 487184 to Register a Trade Mark in the Name of CORVINA QUALITY FOODS PTY LTD.

In this matter CORVINA QUALITY FOODS PTY LTD, "the applicant", of 24 Kylie Place, Cheltenham, Victoria, applied for registration in Part A of the Register for the mark the representation of which appears hereunder:

in respect of "confectionery and all goods in class No 30", subsequently amended to: "confectionery and all other goods in class 30".
          In reporting on the application on 15 September 1989, the examiner raised, inter alia, a disclaimer requirement in respect of the words AUSSIE DELIGHTS in the applicant's mark.  The applicant, through its attorney, consented to a disclaimer of the word AUSSIE, as a condition of registration, but submitted that disclaimer of the word DELIGHTS was unwarranted.  The examiner did not agree with the attorney's claim arguing that the word DELIGHT was well known and that the combination of the words AUSSIE DELIGHTS formed a totally non-distinctive composition.  It represented an expression, she

further stated, which other Australian traders should be entitled to use without improper motive.  Referring to the evidence lodged in respect of use of the subject mark and the series of marks AUSSIE/AUSSI DELIGHTS of application No 484576, she believed neither the sales value nor the advertising expenditure was very impressive so as to render the words AUSSIE DELIGHTS distinctive of the goods of the present application or capable of becoming distinctive.
          The examiner's assertion failed to convince the attorney who cited Diamond T Motor Co's Appn (1921) 38 RPC 373 as authority on the principle that the mark must be viewed as a whole. Furthermore, he stated, the examiner had ignored well known terms in the confectionery industry such as 'Turkish delight', 'coconut ice', 'barley sugar' and 'sweet meats'. As to use of the mark, he argued that in the context of fundraising activity, the sales of the goods in a short period had been considerable. He lodged a further Statutory Declaration by Anthony Brooke Watson, a solicitor, with an affixed exhibit of a copy of an order issued by the Federal Court, Victoria. This order provides that a party, which had used the mark AUSSIE DELIGHTS and proposed to oppose the present application, stop using the mark and recognise the applicant's rights by withdrawing the notice of opposition and the party's trade mark application No 537517. In light of these factors, the attorney submitted, the mark of this application should proceed to registration in Part B of the Register without the necessity of disclaiming both words AUSSIE DELIGHTS. Should the acceptance officer disagree with this contention, the applicant requested a decision on the written record.

Since the applicant, through its attorneys, Oberins, a firm of patent and trade mark attorneys of Melbourne, has waived its right to a hearing, I am to decide whether the subject mark can be accepted in either Part A or Part B of the Register without bearing a disclaimer as to the exclusive use of the words AUSSIE DELIGHTS in the mark.
          In maintaining the disclaimer requirement the examiner stated that no particular trader should be granted a monopoly in the words AUSSIE DELIGHTS.  I agree with the examiner's assertion.  Given the well known meaning of the word DELIGHT as "something that gives great pleasure" (Macquarie Dictionary), this word conjoined with the word AUSSIE and used in connection with food products describes the origin of the goods and their pleasurable quality.  The word DELIGHT directly appeals to one's sense of smell or taste, when applied to food.
          In Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190, when considering "direct reference" in para 24(1)(d), Dixon CJ said at page 195:

"The 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."

And in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 178 Dixon J (as he then was) stated at p.184:

"But again I think that the question depends upon the use to which it is intended to put the word mark ... But the meaning of all the words is governed by their context and how words are understood depends upon the universe of discourse.  Here the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements.  In that setting "rohoe" will carry to the mind of a horticulturist what would never occur to the hearer if, for instance, he were a seaman heaving on a line."

Since the word DELIGHT has a readily understood meaning, I consider that the relevant section of the community dealing with the goods of this application would view the words AUSSIE DELIGHTS in the subject mark as conveying a definite idea, that is, satisfaction associated with Australian food, as indicated earlier.
     Contrary to the finding concerning the mark TUB HAPPY in Mark Foy's case, supra, I believe the words AUSSIE DELIGHTS more than allude to the character or quality of the food items as enunciated by Bowen CJ, Woodward and Lockhart JJ, upon considering the mark HAIRFUSION in Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 at p.6:

"It is a question of degree in every case whether a mark trespasses across the line between an indirect and a direct reference to character or quality, as the division of opinion in the Tub Happy case illustrates.  That case involved the term "happy" which the majority felt to be such a vague and emotive word, containing merely a "cloudy suggestion" of meaning rather than a "definite or actual" meaning, as to deprive "tub happy" of any direct reference.  The same could not be said in this case of "hairfusion".  While "fusion" is far from precise, it is not so vague as to lack a definite meaning.  In the result we agree with the trial judge that "hairfusion" has a direct reference to the character or quality of the services."

Seen in that context not only does each word AUSSIE and DELIGHTS convey an unambiguous, concise and easily understood meaning, but the overall concept inherent in the words also expresses a definite connotation.  The words AUSSIE DELIGHTS therefore have a direct reference to the character or quality of the goods specified.  Furthermore, since the word DELIGHTS in the mark also positively appeals to one's senses be it smell or palate, this word is considered to possess a laudatory connotation.  To my mind, the words AUSSIE DELIGHTS in the subject mark constitute an apt term for normal description of the goods sought to be registered, or for recommending such goods to the members of the purchasing public.  Being of such nature the words AUSSIE DELIGHTS would be required by other traders for legitimate use in describing, or advertising the same or similar goods.  I therefore have no doubt that these words should be left open to traders for normal use in connection with such goods.  For support I refer to the statement by Fletcher Moulton LJ in In the Matter of an Application by Joseph Crosfield & Sons Ltd (1909) 26 RPC 837 at p.859:

"The use of inordinate laudation of his goods by a trader is too deeply rooted, and too ineradicable not to be well known to all the public, and I do not believe that any person buying soap would suppose that it was perfection merely because the maker calls it so.  But to my mind this tells against the applicants.  It shows that the word is one that probably, and I might almost say naturally, would  be used by others in the description of their soap,"

as well as finding in "Heavenly" Trade Mark [1967] RPC 306.
          From my previous observations it will be clear that the words AUSSIE DELIGHTS do not belong to that category of marks which could be termed as newly coined or invented words as defined by Parker J in Philippart v William Whitely Ltd (1908) 25 RPC 565 at p.569:

"To be an invented word within the meaning of the Act a word must not only be newly coined in the sense of not being already current in the English language, but must be such as not to convey any meaning, or, at any rate any obvious meaning, to ordinary Englishmen.  It must be a word having no meaning or no obvious meaning until one has been assigned to it."

Having decided that the words AUSSIE DELIGHTS have a direct reference to the character of the goods in question, even extol such goods, and that other traders would legitimately desire to use these words, I conclude that the mark fails the test of inherent distinctiveness.

Concerning the order issued by the Federal Court, mentioned earlier, his Honour Ryan J does not appear to have considered registrability of the applicant's mark under the provisions of sections 24 and 25 of the Act, hence this documents does not assist the applicant in overcoming the requirement relating to the disclaimer of the words AUSSIE DELIGHTS.
          Turning to distinctiveness in fact, I note from Mr Gabor Tokolyi's Statutory Declaration that during the period from 1988 to 1990 the value of sales for confectionery amounted to approx. $1.25 million, while $12,000 has been expended on promoting the products in the same period.  I believe, use of the mark has been reasonable since the filing of the application given the nature of the relatively inexpensive items in question.  However, any evidence of momentary distinctiveness must be weighed against the inherent non-distinctiveness of the words AUSSIE DELIGHTS in the subject mark.  In this regard in Burger King Corporation v The Registrar of Trade Marks (1973) 128 CLR 417 Gibbs J commented at p.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."

If words in a mark are held to be inherently unadapted to distinguish, then even the evidence establishing distinctiveness of those words will not suffice for registration of the mark in either Part A or Part B without disclaiming the exclusive use of those words.  Since for the reasons stated in this decision I have found the words AUSSIE DELIGHTS to lack inherent adaptability to distinguish the goods, it will be necessary to enter a disclaimer of the exclusive use of those words before the subject mark can proceed to acceptance in Part A or Part B of the Register.  I allow the applicant one month from the date of this decision to consent to such a disclaimer, otherwise I will be obliged to refuse this application.

(V. ZARS)
Senior Examiner
3 May 1991