Effem Foods Pty Ltd v Unilever PLC

[2000] ATMO 131

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Effem Foods Pty Ltd. to registration of trade mark applications

762352 (29 30) - sizzle & stir; 764887 (30) - continental sizzle & stir; and 764947 (30) - chicken tonight sizzle & stir - filed in the name of Unilever PLC

Trade mark applications numbers 762352 764887 and 764947 are filed in the name of Unilever PLC of Port Sunlight, Wirral, Merseyside, England (hereafter Unilever).  762352 was filed on 14 May 1998.   764887 and 764947 were filed on 16 June 1998.  The marks, respectively, are sizzle & stir;  continental sizzle & stir; and chicken tonight sizzle & stir and were duly accepted for registration for the following goods:

sizzle & stirClass: 29 Vegetable extracts; soups, bouillons, preserved dried and cooked fruits and vegetables; prepared meals and dishes in this class

Class: 30Condiments, seasonings and sauces in this class; salad dressings; essences and flavourings in this class; pasta and noodles; prepared meals and dishes in this class; curry and spices in this class; casserole flavour bases

continental sizzle & stir        Class: 30      Sauces (except in salad dressings); essences; flavourings included in class 30

chicken tonight sizzle & stir        Class: 30      Sauces (except in salad dressings); essences; flavourings included in class 30

Effem Foods Pty Ltd of Wyong, New South Wales (hereafter Effem) opposes these trade marks on a broad variety of grounds but, in the event, confined itself to the single ground that, pursuant to section 57 of the Trade Marks Act 1995, the Unilever trade marks are not capable of distinguishing Unilever goods from the goods of other persons, and therefore contravene the provisions of section 41 of the Act.

As evidence in support of its opposition Effem filed three statutory declarations - these by Michel Vermeersch, a marketing manager with Master Foods of Australia which is a division of Effem; by Catherine Chant, Effem’s solicitor; and by Lauren Ann Smith, a librarian who works for Cutler Hughes & Harris.  As evidence in answer, Unilever filed a single declaration by Ayela Ruth Thilo.  Ms Thilo is corporate counsel for Unilever. The agent for Effem then gave notice that it did not intend to rely on any evidence in reply and followed with a request that the opposition be set down for a hearing. This hearing took place before me in Sydney on 16 November 2000. The opponent, Effem, was represented by Ms Catherine Chant of Cutler Hughes & Harris, Lawyers, of Sydney.  The applicant, Unilever, was represented by Mr Brian Elkington of Blake Dawson Waldron, Lawyers, also of Sydney. 

Ms Chant first refers me to the legislation and the case law. 

Section 41 of the Trade Marks Act 1995, so far as it is relevant to this opposition, reads:

Trade mark not distinguishing applicant's goods or services

41. (1)...

(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.

Note 1: For goods of a person and services of a person see section 6.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(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.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services.

The case law cited by Ms Chant is Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 and the famous directive of Kitto J that the question of whether a trade mark is inherently adapted to distinguish 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

The burden of Ms Chant’s submissions focuses on sizzle & stir which, she says, are simple English words that constitute a straightforward description of how the Unilever products are prepared and made ready for eating.  To support this she draws my attention to examples contained in Effem’s evidence and particularly to instances where the words sizzle and stir are used together.  It will be useful, I think, if I record some details from the evidence.

The Opponent’s evidence

The Vermeersch declaration annexes 6 exhibits. 

Exhibit “A” - is the result of an Internet search (May 1999) carried out by Mr Vermeersch for the words sizzle, sizzling, stir, stir-fry which results in 17 pages of recipes, menus and other items dealing with food.

Exhibit “B” is the result of an Internet search (May 1999) in which Mr Vermeersch required the words sizzle and stir to be in close proximity to each other.  This resulted in another 18 pages of recipes, menus and food items.

Exhibit “C” is the result of a further refinement (May 1999).  Here Mr Vermeersch directed a search where sizzle was found in close proximity to stir or stir fry.  A further 15 pages represent the result of this search.

Exhibit “D” is the result of a similar search carried out by Mr Vermeersch in September 1999.  The resultant 15 pages include a number of book titles.

Exhibit “E” is a book of recipes - Sizzling Stir-fries, by Kay Fairfax published by Rizzoli International Publications Inc, New York, 1997.

Exhibit “F”is a product which Mr Vermeersch believes is a sample of a Unilever product.  It is a combination pack of two jars, one containing sauce and the other containing a spice paste.  The pack is labelled Sizzle & Stir, and there are instructions on the back label.

Ms Chant appends two exhibits to her declaration

Exhibit “A”is two empty food packets, the food items being purchased on Ms Chant’s behalf from a supermarket in North Sydney.

Exhibit “B”is the receipt for these items.

The Smith declaration comprises more results from Internet searches.

Exhibit “A”is four pages resulting from a search (April 1999) for the words sizzle & stir ¾ this search was limited to Australian web sites.

Exhibit “B”is ten pages from a similar search (April 1999) which was not confined to Australian web sites.

Exhibit “C”is 17 pages of a limited Australian search (April 1999) conducted through a different search engine.

As Ms Chant submits, scattered liberally through these exhibits are examples of the words sizzle and stir used in relation to food products.

The Vermeersch exhibits, include in Exhibit “A”, a print from an Internet site headed The Tripod Recipe Publisher and, in respect of a pasta and rice dish is the instruction The.. garlic should sizzle as you stir it.  Under a page headed Tayson’s Meats Ltd is a list of assorted products including one entitled Saigon Sizzle Stir Fry Sauce.  On a page entitled Tamara’s Recipes is the statement Whether it’s a new recipe for my cookbook, a pasta dish for a lazy lunch .. or a sizzling stir-fry for my family, everything I cook has a secret ingredient.  Then follow further pages with instructions such as

As soon as it sizzles, stir in the tomatoes ... 
When sizzling, stir in the lamb, ...

and a number of other references to sizzling stir-fry. 

Exhibit “B” shows more instances of sizzle and stir (although on a number of these pages neither word occurs).  However, where the words are neighbours they are in statements such as: -

When it comes to a hard sizzle, stir in green onions...
Heat ... until hot enough for a drop of water to sizzle. Stir-fry turkey and garlic ...
When butter begins to sizzle, stir in chopped vegetables. 

Exhibit “C” shows similar constructions: -

Raise the heat and bring to a brisk sizzle.  Stir fry for 5-8 minutes... 
heat .. until garlic starts to sizzle.  Stir in tomatoes...
add pepper and sizzle. Stir in potato water. 

There are more examples of this kind under Exhibit “C”.  Under Exhibit “D” are examples of use of the words sizzling stir-fry and a couple more instances of the sizzle, stir kind.   Under Exhibit “E” is the food product with instructions set down under two headings, first, Sizzle, and second, Stir.   They read:

Sizzle

Spoon our aromatic oil paste from the top jar into a non-stick wok or frying pan.  There is no need to add oil.  Cook over a high heat until the paste starts to sizzle.  Add 450g of thinly sliced chicken breast to the pan.  Quickly stir fry the chicken for 5-10 min., so that it infuses with all the colour and flavour of the spices.

Stir

Once the chicken pieces are thoroughly cooked, add the rich sauce from the larger jar.  Simmer for 5 min. or until the sauce is the thickness you want.  Serve immediately.

The Chant exhibits which, as I mentioned, are package bags which have held vegetables, bear the words Sizzle a Stir Fry Tonight.   The receipt records these items as STIR FRY 400G and STIR FRY VEG 400G.

The Smith declaration presents more examples of the kind exhibited by the Vermeersch declaration.

The Opponent’s submissions

Ms Chant submits that Effem’s evidence is evidence that the words sizzle & stir are words that are ordinarily used to indicate the kind, intended purpose or function of the goods and that in accordance with Note 1(a) to subsection 41(6), the term has no inherent adaptation to distinguish.  She says these words are used as cooking instructions in recipes; that they are ordinarily used to nominate goods, as per the supermarket stir fry vegetable pack exhibited to her declaration; and that similar word combinations are used as nouns to nominate food products as per the Sizzling Stir-fries title of the Fairfax book (Vermeersch Exhibit “E”).   She says that in light of this evidence, and on application of the michigan test, it has to be held that sizzle & stir are words that other traders, in the normal course of trade and without improper motive, would want to use in respect of their own food products. She says that in contrast to trade marks such as clean-n-soak[1], sizzle & stir has no inherent adaptation whatsoever.  It is nothing more than ordinary English words rendered as an ordinary English phrase and the provisions of subsection 41(6) should be applied.  In that case, says Ms Chant, the three applications must fail, because there is no evidence that, at the time of filing, these trade marks were in fact distinctive of Unilever’s goods. 

[1] Re Application by Allergan Inc (1996) 37 IPR 638

As a fall-back position, Ms Chant submits that in the event that I do not agree, and I find that the trade mark sizzle & stir is to some minor extent inherently adapted to distinguish, there is still no evidence that would justify acceptance in terms of subsection 41(5).

The Applicant’s response

In response, Mr Elkington first points to the fact that two of the opposed trade marks are not simply the words sizzle & stir and that the additional elements in the mark continental sizzle & stir and chicken tonight sizzle & stir, viz continental and chicken tonight, are already registered trade marks. Unilever has continental registered in classes 29 and 30 under trade mark registration number 712978, and chicken tonight is registered in class 30, under trade mark number 559362. In light of these registrations, Mr Elkington claims that the section 41 opposition to continental sizzle & stir and chicken tonight sizzle & stir is misconceived.

In respect of the trade mark sizzle & stir, Unilever, says Mr Elkington, does not contend that it is wholly without reference to some of the goods in the specification.  However, he points to a discussion in Australian Law on Trade Marks and Passing Off [2] where, at p98 Mr Shanahan says that a trade mark:

[2] Shanahan, D.R., Australian Law on Trade Marks and Passing Off, The Law Book Company Limited, Sydney, 2^nd edit. 1990.

... need not be absolutely unsuggestive ... It has been said that “direct reference corresponds in effect to aptness for normal description”[3]and it would seem that a direct reference is one that seriously affects the word’s capacity for distinguishing goods from a particular source, as compared with the sort of reference that can be found only as an academic exercise[4].

[3] American Screw Co.’s Appn [1959] RPC 344 at 346 (torq-set)

[4] Tastee Freez International Ltd’s Appn [1960] 77 RPC 255 at 258

Mr Elkington then takes issue with the Effem evidence.  In the main, he says, this evidence is nothing more than a collection of cooking references which show that the words sizzle and stir do occur and are sometimes found in close proximity to each other.  There is no instance, however, of the words appearing together in the phrase sizzle & stir or sizzle and stir.  Second, he says, none of the instances located are such as could be threatened by Unilever’s registration of sizzle & stir.  Third, he describes the juxtaposition of the two words in much of the evidence, as a piecing together of words from different sentences, or different phrases,  in an attempt to construe cohesive adjacency, and, he submits, this must surely qualify as the type of academic exercise rejected in the case law.   In sum, Mr Elkington argues that while the trade mark sizzle & stir has a reference to cooking, it is not a term that other traders, in the normal course of trade, and without improper motive, are likely to think of or want to use as a description of their class 29 and 30 goods.  This, he says is borne out by Effem’s own evidence which shows that despite repeated searching and many hundreds of hits, not one instance of the term sizzle & stir being used, in its own right, as a descriptive or instructive term, was located across the whole Internet.

The findings

I think that Mr Elkington is quite right.  The Effem contentions fly in the face of its own evidence.  sizzle & stir does not appear as a normal cooking term.  Nor does it appear as a term that is naturally used to describe the characteristics of any of the goods nominated in the subject trade marks.  It clearly comprises normal English words and the allusions and references that it gives rise to will be readily comprehended by ordinary English users.  But Effem’s evidence does not show that the term sizzle & stir is in ordinary use, or, indeed that it is likely to become a term in ordinary use. 

In respect of the Effem evidence and the examples of the words sizzle and stir that the Vermeersch, Chant and Smith declarations disclose, I think Mr Elkington is probably right, that none appear to be uses that could realistically support an infringement action.   However, infringement being outside the Registrar’s charter, it is not appropriate for me to attach any weight to that submission.

I fully concur, however, with Mr Elkington’s criticism of Effem’s piecing together of words found on the Internet and its attempt to then “construct cohesive adjacency”. Effem here, I think, has endeavoured to elevate references to direct descriptions in just the manner criticised by Lloyd-Jacob J in Tastee Freez (supra) as academic exercises carried out at the expense of common sense[5].  Effem’s approach is also in conflict with the long established principle enunciated in 1964 by his Honour Chief Justice Dixon in Mark Foy’s Ltd v Davies Coop & Co Ltd[6]:

[5] [1960] 77 RPC 255 at 258

[6] (1956) 95 CLR 190 at 194

It is ... a mistake first to assume that words like “Tub Happy” do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods.

Effem has not assumed a meaning for a word, but it has assumed a meaning for a phrase, and has then instituted a search employing a resourceful set of search criteria, and with disparate results has attempted to corroborate its assumption.  It has however, failed.  It has located sizzle and stir  co-located but it has not produced evidence that ordinary persons use and understand the term sizzle & stir as a description of goods, or as a cooking instruction.  And the corollary of that is that sizzle & stir is not a term that other traders are likely to wish to use as a description of ¾  or cooking instruction for ¾  their own food products.

I find that, on application of the michigan test[7], the trade mark sizzle & stir is not apt for normal description, is not likely to be required by other traders in the normal course of trade, and that it is a trade mark that is capable of distinguishing the goods nominated in the subject applications.  I dismiss the opposition against sizzle & stir, and in view of the composition of the trade marks continental sizzle & stir and chicken tonight sizzle & stir I find that I have even more reason to dismiss the opposition against the applications to register those two marks.

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

Unless, within one month, this matter is taken on appeal, I direct that trade mark application numbers 762352 764887 and 764947 may proceed to registration.

Costs

Both parties applied for costs.  There is no reason, however, why costs should not follow the event and, in accordance with the provisions of section 221 and regulation 21.13, I direct that the opponent, Effem, is to pay the costs of the trade mark applicant, Unilever.

Helen R. Hardie

Deputy Registrar

12  December 2000