Effem Foods Pty Ltd

[1999] ATMO 80

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Applications by Effem Foods Pty Ltd. For registration of applications 764121 and 720256.

Background

The above mentioned trade mark applications were filed on 5 June 1998 by Effem Foods Pty Ltd (the applicant) for registration of the proposed series of trade marks SWARMIES and SWARMEES in Classes 30 and 28, respectively, for the goods:

Rice, pasta; cereal and cereal preparations; tea, coffee, cocoa; coffee essences, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; pastries, cakes, biscuits, ices, ice cream, ice cream products; frozen confections; chilled desserts, mousses, sorbets (ices); bread; pastry; sweet spreads, savoury spreads, snack foods, prepared meals, chocolate, chocolates, chocolate products, sauces; pizzas, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressings; mayonnaise; dips; all included in class 30

Games, toys and playthings all being goods in class 28

The examiner objected that the trade marks SWARMIES and SWARMEES do not constitute a series in terms of section 51 of the Trade Marks Act 1995. Thereafter, the legal representatives of the applicant made submissions that the trade marks do constitute a series.  After several exchanges of correspondence, and following a review of the applications, the Trade Marks Office wrote to the applicants in the following terms:

In view of the impasse that has been reached in the examination of this trade mark, the Deputy Registrar, as per the provisions of Regulation 21.15(3), will be setting these two trade mark applications down for hearing in Sydney at the July session.

Your attention is respectfully directed to item 20 of the fees schedule.  This specifies that attendance at a hearing requires a fee of $300.

The hearing was on 13 July 1999 - the applicant was represented by Mr Brett Doyle of solicitors Baker & McKenzie.

The submissions
As Mr Doyle's submissions centred on the correct interpretation of section 51, it is convenient to copy that section into my reasons here:

Application—series of trade marks

51.(1) A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of similar goods or similar services within a single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:

(a)     statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;

(b)     statements or representations as to number, price, quality or names of places;

(c)     the colour of any part of the trade mark;

(d)     any matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks.

(2) If:

(a)     the application meets all the requirements of this Act; and

(b)     the Registrar is required (under section 68) to register the trade marks;

he or she must register them as a series in one registration.

Mr Doyle's submissions focussed on the correct interpretation of the words 'material particulars' in subsection 51(1) and the linguistic approach to the assessment of the trade marks as series by the examiner. 

Mr Doyle proposed that there are two tests under section 51: the first test is whether the two trade marks resemble each other in material particulars and secondly, whether the two trade marks differ under any matter apprehended by subparagraphs (a) to (d) - here, Mr Doyle submitted, the relevant subparagraph is (d).  Mr Doyle submitted that frequently the considerations as to what constitutes a "material particular" and assessment of "any matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks" under subparagraph (d) have wrongly become conflated.  Thus, he argued, the tests of the latter have become wrongly applied to the former, or a conclusion as to the latter becomes exported to the former.

Mr Doyle observed that he is not aware of any case-law that has considered the correct interpretation of the expression "material particular".  Mr Doyle suggested that it would be illogical for the two expressions to mean the same thing and that therefore it is illogical to state that because the two trade marks have differing identities, they can't resemble each other in their material particulars.

Mr Doyle submitted that, in his opinion, what constitutes a material particular is those separately identifiable parts of a trade mark which contribute to its overall look and distinctiveness.  This is most true, he says, when the trade mark is composed of a number of different components such as a word and device and other part, all contributing to the trade mark's look.  In this instance, Mr Doyle said, there is only one "material particular" - that is the word SWARMIES, however it might be spelt.

As I understand Mr Doyle's submission, he believes the expression "material particular" to embrace all of the essential elements of the trade mark as are likely to be recalled by members of the public and other traders.  Accordingly, the way in which trade marks are indexed by the Trade Marks Office for the purposes of the Constituent Particulars Index (CPI) might offer some guidance.

Applying these submissions to his client's case, Mr Doyle argued that his client's trade marks consist of the one material particular - the word SWARMIES - however it is spelled.  Mr Doyle referred me to the Lynson case - Re Lynson Australia Pty Ltd (1987) 9 IPR 350 where the delegate moved straight to her reasons under subparagraph 39(1)(c) of the Trade Marks Act 1955, the equivalent of subparagraph 51(1)(d) of the Trade Marks Act 1995.  This approach, Mr Doyle suggested, is not the correct one since the delegate assumed that the two material particulars were the same.

Mr Doyle stressed that the use of the word "resemble" in section 51(1) leads to a conclusion that there does not need to be a shared identity between the trade marks being considered as a series. Accordingly, the Act allows for some difference between the trade marks.

Mr Doyle went on to give an example of a series application that had been allowed as such, but he thought did not properly qualify as a series.  In deference to his client, I use the example UNICORN and UNICORN MUSICAL for which the services are specified as being entertainment in Class 41.  Mr Doyle said that he regards the two trade marks as not being a proper series since the word MUSICAL was a material particular that contributed to the identity of the trade mark.

Mr Doyle finalised his submissions by arguing that if I were to apply subparagraph 51(1)(d), his client's trade marks, according to the usual tests, still qualified as a series.

Reasons
I initially observe that the trade marks on the two applications do not constitute a series as the goods of each application fail the basal test under section 51(1) of being 'similar goods'. For example, the expression 'games, toys and playthings' in the Class 28 application comprehend both 'hand-held electronic games' and 'ride-on toys for children' -these are not similar goods. Similarly, the Class 30 specification includes both confectionary chocolates and savoury spreads, which are not similar goods. While it has been the Registrar's practice to allow some latitude at examination as regards the strict application of this provision, I feel that a delegate of the Registrar at a hearing of a matter is in a position where that delegate is expected to observe the provisions of the Act very closely.

Material Particulars
I think, by its construction, the words "if the trade marks resemble each other in material particulars" within section 51(1) applies a threshold test that, if satisfied, allows the application of subparagraphs (a) to (d). At one level, the expression 'material particulars' denotes that portion of the trade mark in which other traders, the public and the courts will regard the trade mark rights as residing. In other words, that part of the sign which has trade mark significance. On another level, the words 'material particulars' denotes all of the component parts that contribute to the identity of the trade mark. In the example given above, UNICORN MUSICAL, the rights of a registered proprietor are obviously strongest in the word UNICORN - this is the word on which most of the focus will lie in a comparison of the trade mark with pre-existing registrations, the purchase of the services in the market-place, consideration of an (allegedly) potentially infringing trade mark, an examination for registrability, or the results of a search of the Register. This interpretation of section 51 allows a resemblance between the material particular, UNICORN, and for the trade marks to differ only in respect of descriptive matter falling within that referred to by subparagraph 51(1)(a) - that descriptive matter being here the word MUSICAL. However, again following the above example, an application for the registration of the series UNICORN and UNICORN STARQUEST in Class 41 should meet an objection that the marks are different in their material particulars as the word STARQUEST has trade mark potential. As the word has trade mark potential, it has become a material particular for the purposes of the Act and the application therefore fails the threshold test imposed within section 51. In that instance, it therefore falls that, although the application may otherwise qualify as a series under subparagraph 51(1)(a), because of the descriptive flavour of the word STARQUEST, it has failed the threshold test under subsection 51(1) in that the word STARQUEST has trade mark potential and is therefore a material particular.

In the words of the Chief Assistant Registrar in in Re Lynson Australia Pty Ltd (1987) 9 IPR 350 (regarding section 39 of the Trade Marks Act 1955 - the equivalent of section 51 of the Trade Marks Act 1955):

(T)he statements or representations referred to by s 39 (1) (a) and (b) must be such that they do not contribute to the function that the mark has in distinguishing the proprietor’s goods from those of other traders. They must be clearly and unambiguously separate from those features of the mark by which it, and the goods or services which it identifies, will be known.

It is unstated in her decision, but effect of a contribution to the function that the trade mark has in distinguishing the owners goods or services from those of other traders, is that the trade marks no longer resemble each other in their material particulars.

This threshold test, while it is straightforward to apply in the above example, is somewhat more complex in relation to postulated series that are composed of single word trade marks.  To explain the problems involved with these trade marks, it is necessary to approach the problem in a somewhat oblique manner.

Section 41 of the Trade Marks Act 1995 allows a different standard of registrability to that imposed by section 24 or 25 of the Trade Marks Act 1955.  As explained by Justice Branson in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498, the assessment of combined effects of inherent adaptation and the extent of use of a trade mark has changed - this allows the registration of trade marks which may have previously been viewed as being unregistrable. Accordingly, what might be viewed as being registrable as a trade mark has been broadened. It follows that what might be regarded as being a material particular for the purposes of section 51(1) of the Act has also broadened.

To give some examples.  Although generic words might encounter the same difficulties as being regarded as trade marks under both the Trade Marks Act 1995 and the Trade Marks Act 1955, the phonetic equivalents of those words do not.  The words TRACTOR and TRACTA are phonetic equivalents of each other; both the former and the latter would encounter very similar difficulties being registered under the Old Act for agricultural machinery.  However, under the New Act, grounds for rejection of the word TRACTOR would lie in subsection 41(6) and to the word TRACTA in subsection 41(5).  As the difference between the words is such that rejection would occur under different subsections of the Act, it must follow that the words TRACTOR and TRACTA do not resemble each other in material particulars.

Over and above the principles expressed by Lloyd-Jacob J in Re Morny Ltd’s Trade Marks [1951] 68 RPC 55 (where the rendering of a word is sufficient to alter the identity of the trade mark), it is possible that the particular get-up of a trade mark may also result in an objection existing under subsection 41(5) rather than under subsection 41(6) and that therefore the trade marks involved are different in their material particulars. This observation accords with the views of the Chief Assistant Registrar in Re Lynson Australia Pty Ltd (1987) 9 IPR 350 where she remarked:

The typescript may be varied, but only between known, conventional scripts, not fanciful get-up.

Similar caution should be sounded concerning 'the names of places' as these are more readily viewed as being registrable under the New Act and hence qualifying as a material particular. If the name of a place has potential trade mark significance (such as OXFORD, MICHIGAN or OREGON), its presence as the variable in a series application should result in the application meeting an objection that the trade marks are different in their material particulars. If such an objection is not reached during the course of examination, it is because the geographical indicia has been viewed as having no potential trade mark significance and that the trade marks otherwise resemble each other in their material particulars - hence passing the threshold test and subsequently qualifying under section 51(1)(b).

Again, if any part of a trade mark assumes such dominance in one of a proposed series of trade marks that it achieves the status of being a material particular, it should fail the threshold test, irrespective of whether the element qualifies under subsections 51(1)(a) to (d).  Here, I would refer practitioners to the CAIRNS examples given in the Trade Marks Office Draft Manual of Practice and Procedure.

Practitioners in the field should therefore be alert when they apply for series applications, that the 'variable' portion of the trade marks in respect of which registration is sought is only the generic matter enlisted under subparagraphs 51(1)(a) to (d).  If the variable portion be anything other than generica, applicants in effect label it as generica by its inclusion in a proposed series of trade mark.

Resemble each other
The word 'resemble' is defined in the Oxford Dictionary as denoting:

To be like, to have likeness or similarity to, to have some feature or        property in common with (another person or thing).

Although Mr Doyle argued that I should read the words "resemble each other" broadly, I think that they must be read in the light of the words that follow: "differ in respect of - " and thus the latter of the above definitions is to be preferred.  In other words, the differences between the trade marks proposed as a series are external to the material particulars and are defined by the Act to be within the generica apprehended by subsections 51(1)(a) to (d) and not within the material particulars themselves.  Thus, the wording means the section provides for the registration of trade marks which are same in their material particulars, but provides exceptions for those material particulars listed as variables under subparagraphs 51(1)(a) to (d).

Some breadth to this interpretation is be allowed by other sections of the Trade Marks Act 1995 which deal with substantial identity, or under which substantial identity has been considered. In particular, where substantial identity has been considered under, subparagraphs 44(1)(a), 44(2)(a), section 58, subparagraph 60(a), subsection 65(2), subparagraphs 83(1)(a), 100(2)(a) and (b), 100(3)(a) and (b), 102(1)(a), subsections 120(1) and (2), subparagraph 120(3)(b), subsections 124(1), 133(2), 146(2), and subparagraph 230(2)(b), or the analogues of these sections where they existed under the Trade Marks Act 1955, or preceding British and Australian Acts.

Under the above referred to sections of the relevant Acts, cases where substantial identity has been found include: Kendall Co v Mulsyn Paint & Chemicals  (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd (1947) 75 CLR 203 ('7UP in a circle' and '8UP in a square'); Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); Pelikan International Handelsgesellschaft Mbh & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 (PELICAN and PELIKAN); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); and Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL). In these decisions, the trade marks involved have been found to be 'substantially the same mark' to quote D.R. Shanahan in Australian Law of Trade Marks and Passing Off, or, as Justice Gummow referred to it, 'substantially identical' in Carnival Cruise Lines, supra.

To contrast the above decisions, the following trade marks have been found to be neither 'substantially the same mark' or 'substantially identical': “Otrivin” Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson And Another (1998) 42 IPR 473 ('PHOTO-DISK' - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the delegate observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.

Phonetics of material particulars where there are no other variables
In trade marks where there are single words which are proposed as a series, they most obviously will be a series if these are recognised in English dictionaries as being alternative spellings of English words having the same meaning.  Examples of such words are DISC and DISK, SULFUR and SULPHUR, CIPHER and CYPHER, PHANTASM and FANTASM, PROGRAM and PROGRAMME.

Most American spellings, which are recognised in American dictionaries, of English words, such as COLOR, CENTER, or SYMPATHISE would also qualify as being a series.  However, more informal Americanisms such as THRO (for THROUGH) or SOX (for SOCKS) should not.  This is because the immediate connection of the informal phonetic to the word from which it is derived may not be apparent, thus, a mental step is needed to conclude that the words could be equivalents, and so the identity is not shared.

Some other phonetic equivalents may be allowed as series where the material particular is a single word, but the variation (both visual and aural) should be so trifling as not to affect the identity of the material particular.  Thus, the shared identity must be both immediately apparent and follow normal rules of English construction.  In regard to the aural identity of the trade marks, I note that the Trade Marks Act 1995 incorporates a definition which provides:

7(2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

I believe that while the provision obviously has implications concerning the aural use of phonetically similar or identical trade marks, its impact on my considerations is limited by the fact that the Registrar, or his delegates, considers the graphical representations of trade marks.

Subparagraph 51(1)(d)
This subparagraph deals with one of the categories of variables allowed under section 51 and provides for the variable:

(d)       any matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks.

While Mr Doyle argued that the tests under this subparagraph had been conflated to that of what might constitute a material particular, and that as the two provisions could not mean the same thing, 'material particular' should be read broadly, I consider this not to be so.  I think that the subparagraphs must all be read as allowing for a variable, or variables, within a series of trade marks in matter other than the material particular itself.  In the Lynson decision, supra, the variable fell under this heading as it was the underscoring of the word LYNSON by a line.  Thus, if the material particular is a single word and there is no other variable word or feature in the trade mark, one does not go on and apply the provisions of subparagraph 51(1)(d) - however, as it turns out, the tests that are applied are identical to those within that subparagraph.  In effect, then, subparagraph 51(1)(d) operates as a catch-all to encompass matter extraneous to the material particular that is not caught by subparagraphs 51(1)(a) to (c).

Swarmees and Swarmies
I think that these words are very much at the Otrivine, supra, end of the scale as far substantial identity is concerned.  I acknowledge Mr Doyle's concerns as far as a linguistic or academic approach to the assessment of these trade marks, however perceptions of these trade marks are to be governed by an application and understanding of the English language and how it functions.

I can put it now more simply than the fact that the word SWARMIES appears to be a pluralisation of the word SWARMY and the word SWARMEES does not.  SWARMEES immediately suggests to me 'someone who, or something that, has been swarmed' (even though this is nonsensical).   While I acknowledge that the use of the word SWARMY is rare, even if both it and the instant trade marks were to be regarded as invented words, it is appropriate to assess them in the light of the usual construction and normal rules of the English language since this is what governs our perceptions and discourse.

Another view is that if the words SWARMIES and SWARMEES are regarded as being invented words, both (although having a close similarity) have been invented differently and are of different construction.  They do not therefore share a substantial identity and therefore are different in their material particulars.

In the event that I am wrong in my application of section 51 and in my assessment that these marks as being different in their material particulars, they fail for the same reasons under subparagraph 51(1)(d).

Decision
I thus find that the trade marks SWARMIES and SWARMEES are not a series of trade marks as they are not substantially identical.  They also fail in their claim since the specifications are not for similar goods.  I therefore allow the applicant one month from the date of this decision to delete a mark from both applications in order to put them in order for acceptance.  If no such request is forthcoming, I will refuse the applications.

Ian Thompson
A/Hearing Officer

26 July 1999