Effem Foods Pty Ltd

[2000] ATMO 36

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application numbers 724130(30) 724206(30) 724272(30) - GROOVED JARS, being shape marks - in the name of Effem Foods Pty Ltd

Background

Trade mark applications numbers 724130 and 724206 were filed on 16 December 1996 in the name of Effem Foods Pty Ltd of 4 Corella Close, Wyong, New South Wales (Effem). Application number 724272 was filed by the same company on 20 December 1996. All three applications claim the following wide range of food products in class 30:

Rice, pasta, noodles; cereals and preparations made from cereals; fillings; sweet spreads, honey, maple flavoured syrup, savoury spreads, mustards, relishes; snack foods; prepared meals and constituents for meals; sauces, ketchup; pizzas, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressings; mayonnaise; dips; herbs and spices; seasonings, flavourings, marinades, condiments, couscous; all included in class 30.

The three applications are filed in respect of a trade mark in the shape of a jar with a lid.  The jar is grooved with vertical flutes described by the applicant as segments.  On one side of the jar, in the middle of and running across several grooves, is a flat label space.  On the opposite side of the jar, two measurement scales are imprinted on the glass.  The graduations on one scale are marked ‘oz’, on the other ‘ml’. The jars in each of the three applications vary in their relative heights: 724130 being the shortest and 724272 the tallest.  724272 also has a waist.

Each application bears an endorsement which at present is proposed to read:

The trade mark consists of a substantially cylindrical jar of glass with an accompanying lid; the jar having a vertically segmented configuration or pattern located around its periphery, a flat rectangular area at the front of the jar and numbers indicating measurements on the back vertical segments, the lid of the jar having a coloured rim being either green, orange or yellow, as depicted in the representations attached to the application.

The representations as filed did not satisfy the examiner of trade marks and each one has been amended.  The representations as they now stand are as shown below. 

724130  724206  724272
On further consideration of the of these representations, I am not satisfied that the present version of the endorsement is appropriate.  Segment, according to the Oxford English Dictionary
is a piece cut or broken off; or a plane figure contained by a right line and a portion of the circumference of a circle. Neither of these definitions describe the indentations on the trade mark jars.  The description segmented is not accurate. A groove on the other hand is defined as a channel or hollow and is altogether a better description of these jars.  If these marks were to succeed I would therefore require the endorsement to be further amended to read:

The trade mark consists of a substantially cylindrical jar of glass with an accompanying lid; the jar having a configuration of vertically aligned grooves located around its periphery, a flat rectangular area at the front of the jar and numbers indicating measurements on two of the back vertical grooves, the lid of the jar having a coloured rim being either green, orange or yellow, as depicted in the representations attached to the application.

I will refer to the jars defined by these shapes as the ‘grooved jars’.

At examination, objection was taken in terms of section 41(6) of the Trade Marks Act 1995.   A number of adverse reports issued stating that in respect of the goods nominated, these shapes had no inherent adaptation to distinguish. In the course of submission in reply, the applicant filed evidence.  This failed to satisfy the examiner that the applications could proceed and the applicant then sought to be heard.

The hearing took place before me in Sydney on 13 March 2000. The applicant, Effem, was represented by Mr Brett Doyle, a solicitor of the Sydney office of Baker & McKenzie, Solicitors and Attorneys.

The evidence of use - the Steele declaration

The evidence of use comprises a statutory declaration by Rhonda Anne Steele.  Ms Steele is Marketing Property Manager of Asia Pacific for Mars, Incorporated. Effem is a member of the Mars, Incorporated group of companies.   Her evidence is that the grooved jars were designed and manufactured for Effem and have been continuously used, in relation to sauces for pasta, rice, pizza bases, bolognaise, lasagne, Asian dishes, spreads and other condiments since July 1993.  This establishes use for some three and a half years prior to filing. These products, however, had already been on the market for some time under two of Effem’s other trade marks, dolmio and kan tong.  In 1993 new packaging was introduced — namely, the grooved jars. As Ms Steele’s exhibits demonstrate, the new jars were introduced into the market with some fanfare. An article in the 15 June 1993 edition of Foodweek reads:

MasterFoods[1] has repackaged its market leading Dolmio pasta sauce range in bigger, reusable, homestyle glass jars with 15% extra product.

[1] MasterFoods  is a trading name that belongs to Mars, Incorporated

The jars have wider openings to spoon out contents, fluted sides for easier handling and mls and ounce measurements on the side.

They also have a special decorative area to place a label for future use.

Neville Fielke, marketing manager, said ... we decided to deliberately market a jar that was attractive and multipurpose, that looked good when filled with any of our Dolmio sauces but looked just as good when used as a storage jar ... we also wanted a jar that had an authentic Italian homestyle look in keeping with the brand values (Annex RAS - 4)

An article from the Sydney Telegraph dated 11 July 1993 reads:

When is a jar of pasta sauce not only for pasta but for chutney, sugar, tea, coconut or sweets?  No, not a new and strange recipe but the new Dolmio wide-mouth jar that is actually designed for re-use.  Ounce and millilitre measures are now marked down the sides - frantic searches of the kitchen for measuring jugs will be a thing of the past.

The jars are fluted for easier handling with a decorative design area to take stick-on labels — ideal for storing anything from rice and pasta to chutney and preserves.  Sets of labels to fit the space are available from store demonstrators or send a stamped self-addressed envelope …

(Annex RAS - 4)

A number of press releases were issued.  They include the following comments:

Now when shoppers buy any Dolmio Pasta Sauce in the new homestyle shape jar, they are not only buying the same delicious sauce as before but getting the added benefit of an attractive accessory for their kitchen bench or pantry…

We know from research that all Australians are concerned about environmental issues and that the recycling of packaging is becoming a priority.  We decided to deliberately make a jar that was attractive and multipurpose, that looked good when filled with any of our Dolmio sauces but looked just as good when used as a storage jar….

For those kitchens with limited storage space, this unique family of different sized jars all have the same indented lids allowing stable safe stacking in even the smallest of kitchen cupboards.  An added benefit is that they have been specially shaped to sit in the racks on the refrigerator door. (Annex RAS - 4)

By 1993, turnover of Effem’s dolmio and kan tong sauces was very significant.  By that date, dollar sales were in the multimillion range. Outlay on advertising was also high. With the advent of the new grooved jars, sales and advertising expenses continued to increase. However, although from 1993 these sauces were packaged in the grooved jars, it is clear that the products were consistently labelled with either Effem’s dolmio or kan tong trade marks.  Furthermore, I find no evidence that the grooved jars were either being referred to, or being promoted, as trade marks.  Nor is there any evidence that the applicant has asserted trade mark use by attaching the Ô symbol.  A further and rather surprising fact that comes to light from an examination of the evidence, is that in use, the principle parts of the signs for which registration is here sought, are concealed behind paper labels that depict and describe the contents, and bear the trade marks dolmio or kan tong.  The grooves, the flat rectangle and the measures are not visible.

The law

Section 17 of the Trade Marks Act 1995 reads:

17. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

The definition of a sign, as per section 6, reads:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

­For the purposes of this decision, the relevant subsections of section 41 are as follows:

41...

(2) 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 (designated goods or services) from the goods or services of other persons.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

The operation of this section is analysed by Branson J in Blount Inc v Registrar of Trade Marks[2] and her analysis is adopted by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks  - the cranberry classic case[3].   As Branson J directs:

[2] (1998) 40 IPR 498 at 504

[3] (2000) AIPC 91-539

Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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"). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:

(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b) that 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; or

(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

The concept of inherent adaptability is reviewed by Wilcox J in the cranberry classic case.  His Honour refers first to Kitto J’s directives in the michigan case[4] and says (paragraph 23)[5]

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

[5] (2000) AIPC 91-539 at 37,144

This test was cited with approval by Gibbs J in Burger King Corporation v Registrar of Trade Marks[6] … In F H Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited[7]… the Full High Court was concerned with an application for registration of the word "Barrier" in relation to skin protection creams. Kitto J (with whom Barwick CJ and Windeyer J agreed) said at 555:

[6] (1973) 128 CLR 417 at 425

[7] (1965) 112 CLR 537

"... the question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods."

Overview of Mr Doyle’s submissions

On the basis of Ms Steele’s evidence, Mr Doyle submitted that the trade marks should be allowed to proceed.  The burden of his submissions was as follows.

First, he says that it is no longer the case that a trade mark has to be something separate and apart from the goods. I agree.  This point is addressed in a recent decision by the Registrar’s delegate - Mr Terry Williams[8]  - in respect of an application to register the shape of a traffic barrier.  Mr Williams refers to a paper dealing with shape marks.  He says:

[8] Trade mark application number 728978(19) - TRAFFIC BARRIER- in the name of ROBIN NOEL ADCOCK.

... the specifics of s 41 in relation to shape marks have been the subject of a paper produced by the Trade Marks Office and presented in August last year at the 13th annual conference of IPSANZ, the Intellectual Property Society of Australia and New Zealand, Inc.  …

I now quote from the paper, starting at page 4:

Justice Lehane of the Federal Court issued his final decision in Philips v Remington - [1999] FCA 816 - on 18 June 1999 following on from an interlocutory decision handed down on 14 October 1997.  The case concerned possible infringement of a registered design and two registered trade marks but also included the first judicial consideration of the provisions for registration of shape trade marks. Justice Lehane's decision deals, amongst other things, with the meaning of the word ‘shape’ in the definition of a sign and touches on the application of section 41 in respect of a functional shape trade mark.   …

…In contrast to the UK Trade Marks Act 1994, there is no reference to ‘shape of the goods’ in the definition of a sign, or elsewhere, in the Trade Marks Act 1995. In their cross-claim in this action, Remington Products Australia Pty Ltd, argued that the inclusion of the word ‘shape’ in the definition of a sign did not overturn the well established principle that a trade mark is always something distinct from the goods in relation to which it is used and was not therefore intended to include the shape of the goods themselves.

Justice Lehane concluded otherwise, that is he concluded the word ‘shape’ in the definition of a sign includes the shape of the goods, or part of them, in relation to which a sign of that kind is used.

There is no objection that the grooved jars are to be debarred from registration because they form a part of the goods and therefore cannot serve as trade marks.  There is reason to ask, however, whether, as an aspect of packaging, these signs are capable of distinguishing, a matter which I will deal with below.    

Second, Mr Doyle argues that the fact that a sign comprises a useful or appealing aspect of the goods, or of their packaging, does not preclude that sign from having a separate function as an indicator of trade origin.  Again, I agree.  However, a feature that is a part of the goods or their containers, and provides a useful function, is a feature that other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire[9] to build into their own goods or containers.  Accordingly, a sign which is a part of the product and has a useful function or an appealing aspect is, prima facie, not inherently adapted to distinguish.  The features incorporated in the grooved jars are, according to the evidence, just such useful and appealing features — described, in fact, as an added benefit.  The promotional material in Ms Steele’s declaration enumerates these benefits in terms such as:

The jars have wider openings to spoon out contents, fluted sides for easier handling and mls and ounce measurements on the side.

They also have a special decorative area to place a label for future use.

... we decided to deliberately market a jar that was attractive and multipurpose, that looked good…. when used as a storage jar …

and:The attractive appearance of the jars includes fluted sides to make handling easy, and inbuilt capacity measures in both imperial and metric marked down the sides.  There is a panel designed to hold a decorative label.  Dolmio is currently offering free sets of labels for frequently used kitchen ingredients … .

andthe new homestyle jar  … [is]  … an attractive accessory for … kitchen bench or pantry

Under the Trade Marks Act 1995 laudatory or descriptive words which other traders may properly wish to use ¾ such as whopper, oxford, hair fusion, and eutectic ¾ may now, through the operation of subsection 41(6), achieve registration. So too may shapes which constitute useful and attractive features of the goods or of the packaging of goods and thereby are features which other traders will wish to emulate.  However, such a sign must meet the test of section 41, and where that sign is devoid of inherent capacity to distinguish, the applicant must show that at the date of application the sign was distinctive in fact. 

Third, Mr Doyle argues that I should accept Ms Steele’s evidence as demonstrating that Effem has used the sign of the grooved jars as a trade mark.  In support he directs my attention to findings in the Federal Court judgment in Coca-Cola Co v All-Fect Distributors Ltd[10]. This case does not deal with the provisions of section 41.  It deals with a section 120 infringement action. In respect of use as it relates to infringement, the full Federal Court[11] states:

[9] F.H.Faulding & Co v Imperial Chemical Industries of Australia and New Zealand (1965)112 CLR 537 at 555

[10] (2000) AIPC 91-534

[11] per Black CJ, Sundberg and Finkelstein JJ at 37,091

19     Under the 1955 Act a registered mark was infringed by someone who "uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade". In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 it was said to be implied in both s 58(1) and s 62(1) of the 1955 Act that the "use" there referred to is limited to use "as a trade mark". Section 120 of the current Act expressly incorporates that requirement. Counsel for the respondent submitted that whether the respondent was using the sign as a trade mark depended on the answer to the question - "Do I, just by looking at the confectionary, conclude that the shape is put there to tell us that the Coca-Cola Co is the manufacturer of those goods?" This formulation, it was said, was an adaptation of what Kitto J had said in Shell. In our view counsel's formulation is not a correct adaptation and does not ask the right question. Use "as a trade mark" is use of the mark as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods. See Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 341, 351. That is the concept embodied in the definition of "trade mark" in s 17 - a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

Later in that case,[12] as Mr Doyle points out, their Honours make the following statement:

[12] at 37,094

26    … A mark may have a descriptive element but still serve as a badge of trade origin: Johnson & Johnson[13] … The question is whether consumers are being invited to purchase the confectionary which is to be distinguished from that of other traders partly because they have the features of the sign or mark. See Mark Foy's[14] at 205 and Johnson & Johnson at 37,851 ….

[13] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd 21 (1991) IPR 1

[14] Mark Foy’s Limited v Davies Coop and Co Limited 95 CLR 191 per Williams J at 205

These directives are all concerned with the question of whether or not an alleged infringer has used a word or a sign as a trade mark.  In dealing with this issue, the Courts have had to address the claims that the use complained of is descriptive use and not trade mark use.  It has indeed been determined, as Mr Doyle, submits, that a trade mark may do both. It may serve as the planting of a flag “to identify the fact that you are in a particular trader’s territory”[15]. At the same time, trade mark use may embody elements of descriptive force. Gummow J gives the example of the trade mark 7up and of a customer who orders 7up and does not expect to receive sarsaparilla[16]. An enquiry into the existence and extent of trade mark and descriptive content is critical to the question of infringement. It is similarly critical in determining the question of s41(6). There is, however, a fundamental difference in principle. Infringement depends on establishing that any of the use complained of, and defended as descriptive, can be categorised as trade mark use. Subsection 41(6), on the other hand, is based on the premise that a registrable trade mark may be entirely descriptive. To succeed under the terms of subsection 41(6) however, that descriptive function must be outweighed by established trade mark function and that, in turn, depends on evidence that the sign in contention is applied, and perceived, as a badge of origin.

[15] Johnson & Johnson.21 (1991) IPR 1, per Burchett J at 19

[16] Johnson & Johnson.21 (1991) IPR 1 at 25

For present purposes, the end point of the infringement cases cited by Mr Doyle is confirmation that the primary function of a trade mark … is that of distinguishing the commercial origin of goods or services[17]. This is what the evidence, for the purposes of subsection 41(6), is required to show.  If the evidence confirms that the features of a trade mark (here, the features of the grooved jars) are features which in themselves were designed to improve the appeal of the goods and the usefulness of their containers in which those goods are packaged, then the weight of evidence will need to be of some greater order to counter that non-trade mark use.

[17] Johnson & Johnson.21 (1991) IPR 1 at 25, PER Gummow J

Consideration

The first question for the purposes of section 41 is clearly the question of whether the signs, the subject of trade mark applications 724130 724206 and 724272 are to any extent, inherently adapted to distinguish.  To adopt the wording of Justice Kitto (supra)[18], and applying it in terms of the signs claimed, the relevant question is ... whether the grooved jars are jars which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use in connexion with any of the extensive list of foods comprehended in the designated goods[19].

[18] (1965)112 CLR 537 at 555

[19] Rice, pasta, noodles; cereals and preparations made from cereals; fillings; sweet spreads, honey, maple flavoured syrup, savoury spreads, mustards, relishes; snack foods; prepared meals and constituents for meals; sauces, ketchup; pizzas, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressings; mayonnaise; dips; herbs and spices; seasonings, flavourings, marinades, condiments, couscous

It is perfectly clear that many of the designated goods - fillings, sweet spreads, honey, maple flavoured syrup, savoury spreads, mustards, relishes; snack foods; sauces, ketchup, sauces and toppings for pizzas; sauces for pasta and rice; salad dressings; mayonnaise; dips; herbs and spices; seasonings, flavourings, marinades and condiments - are generally packed and displayed in glass jars.  It is also common general knowledge, confirmed by a glance at the shelves of any supermarket, that these jars come in a wide array of styles and shapes.  Amongst those jars, the shape of Effem’s grooved jars is nothing out of the ordinary.  They are simple cylindrical bottles with grooved or channelled sides, a smooth area suitable for a label and some measurement markers. In circumstances where many competitors similarly produce products which they package in jars, I think that it is likely that other traders, in the ordinary course of their businesses and without any improper motive, will desire to use calibrated jars with grooved sides (for easier handling) and a designated label space (for later use), in connexion with their similar class 30 goods.  I find, therefore, that the shape marks filed under 724130 724206 and 724272 — the three grooved jars depicted in the representations attached to the applications — are not inherently adapted to distinguish.

The next question is whether Effem’s grooved jars are to some extent inherently adapted to distinguish and therefore fall to be decided under the terms of subsection 41(5), or whether they are devoid of any inherent adaptation to distinguish, and therefore come to be determined as per the tests specified in subsection 41(6) of the Act. The criterion for establishing whether a sign is to any extent inherently adapted to distinguish is addressed by a test established by Justice Jacob in the treats case[20].  His Honour says:

[20] British Sugar PLC v James Robertson & Sons Ltd, [1996] RPC 281 at 306

The phrase [“devoid of any distinctive character”] requires consideration of the mark on its own assuming no use.  Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark?  A meaningless word or a word inappropriate for the goods concerned (“North Pole” for bananas) can clearly do.  But a common laudatory word such as “Treat” is, absent use and recognition as a trade mark, in itself ... devoid of any distinctive inherently character.

Adopting this test to the subject signs, the question becomes  — are the grooved jars the sort of signs that can distinguish Effem’s class 30 goods without first educating the public to the fact that these features, in sum, constitute a trade mark? 

Mr Doyle argues that these grooved jars are not, as he phrased it, just a stock standard bottle.  These signs, he says, are not the equivalent of a common laudatory word.  He draws my attention to the features of the jars, namely, the blank space that is designed so owners may put their own label on the jars; the wide necks, which make it easy to spoon out the contents; the vertical grooving, for easier handling.  I agree that these are all features of these jars, and I have no doubt that they are features that make up a design which is easily recognised but as Jacob J observed at lines 41-42 in the treats case,

‘recognition’ is not the same thing as perception as a trade mark.

Food manufacturers produce their goods in all manner of jars, many have wide necks, many have grooved or ridged sides, and many are designed to be useful containers with a prospective life in the home once the original contents are used.  Amongst products of this kind, Effem’s grooved jars will appear to be nothing more than one of the many styles currently on the shelves. Without a lead to do otherwise, buyers may see these jars as offering some handy features but, in the environs of grocery and supermarket establishments, and without direction to do otherwise, it is unlikely that any purchasers will assume or anticipate that the features of Effem’s jars add up to a trade mark.  Consequently, I find that these grooved jars have no inherent adaptation to distinguish. I agree with the trade mark examiner, that the signs claimed under trade mark applications 724130, 724206 and 724272 can succeed only if they meet the provisions of subsection 41(6).

The Evidence

I now turn to the evidence which, in terms of subsection 41(6) is required to show that, because of the extent to which Effem has used the grooved jars before 16^th or 20^th December 1996, these signs do distinguish the class 30 food items nominated by Effem in the three subject applications.

First, is the question of quantum. Briefly, this amounts to the three and a half years leading up to December 1996, and entails many millions of dollars worth of goods (essentially sauces) packaged in the grooved jars. Mr Doyle argues that this successful sales record is evidence that the grooved jars operated as the invitation to purchase and therefore function as trade marks. Their success as trade marks (he says) is then attested to by the repeat business which, manifestly, has been generated.  However, as pointed out by Jacob J in the treats case[21] (supra), and approved by Wilcox J in the cranberry classic case[22], it requires more than sales to show that a trade mark has become distinctive. Justice Jacob says:  

[21] [1996] RPC 281 at 302 l52

[22] (2000) 40 AIPC 91-539

There is an unspoken and illogical assumption that ‘use equals distinctiveness’.

The Effem evidence is, I think, a case in point.  First there are the facts that Effem’s dolmio trade mark is described as a market leader, and that the subject signs in the main are shown used in association with the this market leader. Second, the evidence is that the sauces are popular — the dolmio pasta bake is said to be in the top 20 of the best selling pasta sauce items at national level.  The repeat business no doubt owes something to the popularity of the product and the fact that, as packed in the grooved jars, the customer now, apparently, gets 15% more sauce. Third, the grooved jars are lauded for their attractive design. Mr Doyle says they were made to be functional, useful and appealing kitchen accessories. If the design of the jars has succeeded, then logically, a factor in the repeat business will be due to the successful market appeal of the functional, useful and appealing jars which one now acquires, without extra cost, along with the sauce.  These are themselves three good reasons which go to explaining the repeat business. There is no evidence, however, that promotion of the grooved jars as trade marks, or use of the grooved jars as trade marks, has been any part in that success.

In the cranberry classic case, his Honour Justice Wilcox observes that the function of a trade mark is that it must be intended to proclaim a connection with a particular trader.[23]  He then comments:

[23] (2000) 40 AIPC 91-539 at 37,148

41 In the present case, the evidence does not establish that the words CRANBERRY CLASSIC had, by January 1998, acquired a discernible connection with Ocean Spray. No witness gave evidence that the words CRANBERRY CLASSIC signified to him or her association between the product and Ocean Spray. In January 1998 the product had been on the Australian market for only two and a half years. Ocean Spray had spent a considerable amount of money on the promotion of its range of drinks, including cranberry classic, but the range had been promoted under the name "Ocean Spray". Given that fact, and the invariable presence on the label of the "Ocean Spray" trade mark, it seems to me likely that any association, in the public mind, between this product and the applicant company would have been derived from the use of the words "Ocean Spray" in advertising and on the labels of the products, not from the use of the words CRANBERRY CLASSIC. This impression is strengthened by the circumstance that the words CRANBERRY CLASSIC are displayed on the labels of that product in a manner similar to the words, admittedly purely descriptive, that identify the other drinks in the range.

The Effem evidence demonstrates a significant number of parallels with the cranberry classic evidence.  

§  I am unable to find, in the exhibits provided by Ms Steele, that the grooved jars have hitherto been used as a trade mark.  The goods themselves are depicted in a number of very clear coloured representations.  In all of these, however, the features of the jars - the grooved sides, the label space, the measuring scale - are all substantially covered by the paper labels proclaiming the trade marks dolmio or kan tong.  dolmio as noted, is a market leader.  The only feature of the subject trade marks which is clearly visible to the buyer, is the coloured lid.  Nowhere in the literature is the grooved jar described as a trade mark, nowhere on the product is it identified as a trade mark, and on the supermarket shelf almost all the grooved jar is covered by the paper label and hidden from sight.

§  As with the cranberry classic evidence, no witness gave evidence that the sign signified to him or her an association between the product and Effem.

§  The grooved jar trade marks have been used for some three years and Effem has spent a considerable amount of money on the promotion of its sauces, but it has promoted them under the trade marks dolmio or kan tong.  With the invariable presence of those trade marks on the label, any association in the public mind between this product and the applicant company would seem to have derived from use of the trade marks dolmio or kan tong.  

In sum, this evidence fails to show that Effem have promoted the grooved jars as a trade mark, and likewise fails to establish that, because of the extent to which it used the grooved jars these signs, at the dates of filing, distinguished the nominated class 30 food items as being Effem’s products.

Decision

I have found that the signs, the subject of trade mark applications numbers 724130 724206 and 724272, have no inherent capacity to distinguish. Further, I am satisfied that the evidence filed to support these signs does not show that, at the date of filing, December 1996, these grooved jars served to distinguish any of the designated goods.  

The provisions of subsection 41(6)(b) therefore direct that these trade marks are taken not to be capable of distinguishing the designated goods and subsection 41(2) obliges me to reject the application.

In exercise of the authority of section 33(3) I therefore reject trade mark applications 724130, 724206 and 724272.

Helen R Hardie
Deputy Registrar

28 April 2000