Daniel a. Pharo, Re

This matter concerns trade mark application 478049, lodged by Daniel A. Pharo, for the mark PUFF PAC in respect of "plastic materials for packaging and wrapping; envelopes and plastic containers". The application was initially objected to under paragraphs (c), (d), and (e) of sub-section 24(1) of the Trade Marks Act, on the basis that PUFF PAC is phonetically equivalent to PACK and directly describes the goods as expandable material for packaging. An objection based on a cited mark was withdrawn, but the objection under sub-section 24(1) was maintained. The applicant subsequently amended the application to seek registration in Part B of the Register, leading to a new objection under section 25 of the Act, asserting the mark is not prima facie distinctive or capable of becoming distinctive.

The legal issues before the delegate of the Registrar of Trade Marks were whether the trade mark PUFF PAC is distinctive, or capable of becoming distinctive, of the specified goods, as required for registration in Part B of the Register under section 25(1) of the Act. This involved considering the inherent adaptedness of the mark to distinguish the goods and any evidence of acquired distinctiveness, as guided by sub-section 26(2) of the Act. The delegate also had to determine if the mark had a "direct reference" to the character or quality of the goods, which would render it unregistrable, and whether the availability of alternative descriptive terms for other traders was a relevant consideration.

The delegate reasoned that while the applicant argued that PUFF PAC is a grammatically incoherent and attractive mark, and that other terms like "inflatable packaging" could be used by competitors, the dictionary definition of "puff" and its common usage in combination with nouns indicated that PUFF PAC could be a term apt for describing inflated or expandable packaging. Applying the test of direct reference, the delegate found that the words PUFF PAC would carry a sufficiently tangible reference to the nature of the specified goods. In the absence of evidence of acquired distinctiveness, and considering the lack of inherent adaptedness to distinguish, the delegate concluded that the applicant had failed to discharge the onus of establishing that the mark was capable of becoming distinctive.

Accordingly, the delegate refused trade mark application 478049 for registration in Part B of the Register.