Daniel a. Pharo, Re

[1991] ATMO 14

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade Mark Application 478049 to Register a Trade Mark in the Name of DANIEL A. PHARO

Trade mark application 478049 in the name of DANIEL A. PHARO of 2160 Century Park East #401, Los Angeles, California, USA, was lodged on 9 December 1987.  The application is for registration of the trade mark PUFF PAC in respect of "plastic materials for packaging and wrapping; envelopes and plastic containers".
In the first report on the application, the examiner of trade marks stated that objections to registration existed under paragraphs (c), (d) and (e) of sub-section 24(1) of the Trade Marks Act. It was explained that the objections arose since the mark consists of the words PUFF PAC, the latter being the phonetic equivalent of the word PACK, which directly describe goods included in the specification as expandable material suitable for packaging. A further objection based on a cited registered mark was also raised.
          The objection based on the cited trade mark was withdrawn after consideration of the attorney's response.  In that response it was further submitted that PUFF PAC is a grammatically incoherent combination of words which can not have direct reference to packaging materials.  It was claimed that while some of the goods may be described as "inflatable" or "expandable", PUFF is not a word which is apt for normal

description of the goods and thus registration of the mark would not trespass on other traders' rights to use ordinary, apt descriptions of their goods.
          In this regard the examiner was referred to the discussion of the term "direct reference" in American Screw Company's Application [1959] RPC 344 (the Torq-set case) and to a sample of the applicant's promotional material which, the attorney stated, did not show use of the word PUFF in a descriptive manner.  The material lodged indicated the goods to be sold under the mark to be inflatable containers, the item for packing being placed inside the plastic film container which is then sealed and inflated with air.  The objection under sub-s.24(1) was maintained, the examiner noting that use of the word PUFF immediately before a noun to indicate something which inflates or expands is not unusual, "puff pastry" and "puff adder" being given as examples of such usage.  Submission of evidence of use of the mark was invited.
          No evidence of use was lodged but amendment of the application to one for Part B of the Register was requested by the applicant.  The amendment was effected but the examiner raised an objection under s.25 of the Act stating the mark is not, prima facie, distinctive or capable of becoming distinctive of the goods specified.
          The applicant requested a hearing in the matter.  At the hearing, conducted before me in Canberra on 5 December 1990, the applicant was represented by Mr K. Niblett of Spruson & Ferguson, patent and trade mark attorneys of Sydney.
          At the hearing, Mr Niblett stated that he understood that there had been no use of the applicant's trade mark in Australia but that marketing of the goods in this country is imminent.  Mr Niblett submitted that PUFF PAC is not a mark without adaptedness to distinguish the goods specified but is a snappy and attractive trade mark to be used on the applicant's novel product.  He stated that this mark is far from being in the style of the Eutectic trade mark (32 ALR 211) since there are other terms which are more likely to be used to describe the nature of the goods. It was submitted by Mr Niblett that the question which should be addressed was whether registration of the mark would inconvenience other traders and in this regard I was referred to the National case (National Cash Register Co's Appn (1917) 34 RPC 354) where Warrington L.J. said (at 364):

"It has been said that, if the mark were registered, it may cause inconvenience to honest traders hereafter who desire to use the word.  That desire may arise from two reasons; it may possibly arise from the existence of circumstances which, with reference to the goods a man desires to sell, may have given to the word a meaning having direct reference to the character of the goods, or it may on the other hand simply arise from the fact that it is an attractive name.  If the desire arises from the first of the two reasons which I have mentioned, the man wishing to use the word would be amply protected by Section 44.  If the desire arises from the other reason, then I cannot see that effect should be given to it."

In the present instance, Mr Niblett suggested, honest traders would have no need to use the words PUFF PAC to describe similar goods since they could avail themselves of terms such as "inflatable packaging" or "expandable wrapping".  The fact that a mark may have a perceptible meaning does not disqualify it from registration and Mr Niblett submitted that, in all the circumstances, the subject mark should be found to qualify for registration in Part B.
          Section 25(1) of the Act provides for registration in Part B of a trade mark if it is distinctive, or is capable of becoming distinctive, of goods in respect of which registration is sought.  As stated by Gibbs J. in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424, sub-section 26(2) of the Act states the two matters for consideration in deciding whether a trade mark is distinctive and, in deciding whether a mark is capable of becoming distinctive, it is necessary to consider whether the trade mark is capable of meeting in the future the tests stated in that sub-section.
          Sub-section 26(2) reads:

In determining whether a trade mark is distinctive, regard may be had to the extent to which -

(a)the trade mark is inherently adapted to distinguish; and

(b)by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish.

The effect of this sub-section is that the two factors must be weighed (Burger King, supra, at 426) however, in the absence of any evidence of acquired distinctiveness, the matter for consideration remains that of the inherent adaptedness of the mark to distinguish the goods of the applicant.
          Whether a trade mark is adapted to distinguish the specified goods is a question which is to:

"... 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 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 connexion

with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

(Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514).

Considering normal usage of the words PUFF PAC(K), I note the following definition of PUFF in the Oxford English Dictionary (2nd ed., 1989):

`         PUFF v. 4a.  To cause (something) to swell by
   puffing or blowing air into it; to
   blow out or up; to inflate; to distend
   by inflation, or in any way, as by
   stuffing or padding ...

b.  intr To swell up or become distended or
   swollen.

Additionally the dictionary reflects the many uses of PUFF in combining form.
          In the Torq-set case (supra), Lloyd-Jacob J. observed (at 346) that in considering whether reference is "direct":

"... the Registrar or the Court is not in any way bound by strict grammatical usage, for the test is intended to relate to the conditions obtaining in industry and commerce.  Direct reference corresponds in effect to aptness for normal description."

The above dictionary definitions and the manner in which PUFF is frequently used in combination with a noun would indicate that the combination PUFF PAC(K) could be a term quite apt for describing a pack or packaging which is inflated in use - goods encompassed by the present specification and depicted in the applicant's promotional material.
          Mr Niblett submitted that the mark is not so apt for normal description as to render it incapable of becoming distinctive.  Clearly I must agree with Mr Niblett's statement that the mark is not in the class of the Eutectic trade mark (supra).  However, I can not concur with Mr Niblett's view that the subject mark is more on a par with the Tub Happy mark (Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190). In that case, Dixon C.J. found those words did not convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods, stating (at 195) that the test of direct reference:

"... 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."

Applying such a test to the subject mark, I believe the words PUFF PAC would, when applied to the specified goods, carry a reference to their nature sufficiently tangible as to be termed "direct".
          I have considered Mr Niblett's submissions regarding the availability of other expressions for use by other traders in respect of their similar goods.  However, in this regard I must note the comments of Lloyd-Jacob J. in Philips Phonographische Industries's Appn (the Minigroove case) (1955) 72 RPC 183 at 189:

"It has always to be borne in mind that the existence of one description does not necessarily exclude the possibility of alternative descriptions being made available to the public, it being a characteristic of our language that synonyms are not only frequently used but are on occasions deliberately chosen for the purpose of introducing some colour into the language."

A similar view was taken by King J. in The Seven Up Co v Bubble Up Co Inc (1987) AIPC 90-433 (at 37,811):

"The fact that there are other words customarily used to identify the class of goods concerned would not render it less likely that traders would wish to use a term which, although it would not appeal to an official as an apt description, would nevertheless

be thought to appeal to the general public.  If by reason of the registration sought, if granted, the applicant were placed in a position where he could successfully contend that the use of such a term would infringe the registered mark, the mark is inherently unregistrable."

In the present case, no evidence has been put before me to indicate that the subject mark is not a term other traders would wish to use nor that there is another term customarily used in the trade to describe the applicant's goods.
          That the onus is on the applicant to establish that a mark is capable of actually becoming distinctive has been addressed in Personal Products Corporation's Appn (1960) 30 AOJP 1817.  In that case, as in the present instance, there was no evidence of distinctiveness in fact, and the delegate of the Registrar said (at 1819):

"I cannot accept the agent's proposition that descriptive marks, which are obviously not in the "perfection", "best", or "dairy milk" class, are all capable of becoming distinctive ... If the mark is not inherently distinctive, how can a tribunal be so prescient as to say that it is capable of becoming distinctive, when, as in this case, there has been no use of the mark and no other circumstances are known which would establish that the mark is so capable?"

Applying the tests for distinctiveness outlined in sub-s.24(2), I find that the subject mark, to a very considerable extent, lacks inherent adaptedness to distinguish the applicant's goods and there is no counter-balancing evidence of factual distinctiveness.  I find that the applicant has failed to discharge the onus upon him to establish that the mark is capable of becoming distinctive.  Accordingly I refuse application 478049 for registration in Part B of the Register.

(BARBARA BENNETT)
Senior Examiner
4 February 1991