Effem Foods Pty Ltd v Unilever PLC

Effem Foods Pty Ltd opposed three trade mark applications filed by Unilever PLC: 762352 for "sizzle & stir", 764887 for "continental sizzle & stir", and 764947 for "chicken tonight sizzle & stir". The applications were accepted for registration for various food-related goods in Classes 29 and 30. Effem's opposition was based on the ground that the trade marks were not capable of distinguishing Unilever's goods from those of other persons, contrary to section 41 of the *Trade Marks Act 1995*. The matter was heard by the Registrar of Trade Marks.

The primary legal issue before the Registrar was whether the trade marks "sizzle & stir", "continental sizzle & stir", and "chicken tonight sizzle & stir" were capable of distinguishing Unilever's goods. This required an assessment of whether the marks were inherently adapted to distinguish the goods, and if not, whether use of the marks had acquired distinctiveness. The Registrar was guided by section 41 of the *Trade Marks Act 1995*, which outlines the criteria for determining a trade mark's capacity to distinguish, including the consideration of inherent adaptation and evidence of use. The Registrar also referred to established case law, such as the directive from Kitto J in *Clark Equipment Co v Registrar of Trade Marks*, which established that the test for inherent distinctiveness involves assessing the likelihood of other traders wanting to use the mark honestly in relation to similar goods.

The Registrar considered the evidence presented by Effem, which included internet searches and product examples, suggesting that "sizzle" and "stir" are commonly used descriptive words in relation to food preparation and cooking. Effem argued that these words, when combined, were descriptive of the kind or intended purpose of the goods and therefore lacked inherent distinctiveness, meaning the applications should fail unless distinctiveness had been acquired through use. Unilever, in response, argued that the additional words "continental" and "chicken tonight" in two of the applications were already registered trade marks, rendering the opposition to those marks misconceived. Regarding "sizzle & stir", Unilever contended that while the words related to cooking, they were not terms that other traders would likely want to use descriptively, and that Effem's evidence failed to show instances of the exact phrase "sizzle & stir" being used descriptively.

The Registrar found that the words "sizzle" and "stir" are ordinary English words commonly used in cooking instructions and descriptions of food preparation. Applying the principles of section 41 and relevant case law, the Registrar determined that the trade mark "sizzle & stir" was not inherently adapted to distinguish Unilever's goods. Furthermore, the evidence did not establish that the mark had acquired distinctiveness through use at the time of filing. Consequently, the Registrar concluded that the trade mark applications for "sizzle & stir", "continental sizzle & stir", and "chicken tonight sizzle & stir" contravened section 41 of the *Trade Marks Act 1995* and were therefore rejected.