Exotic Products Pty Ltd, Re

[1991] ATMO 27

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application No. 488919 to Register a Trade Mark in the Name of EXOTIC PRODUCTS PTY LTD

In this matter EXOTIC PRODUCTS PTY LTD, of 39 Genoa Street, Moorabbin, Victoria 3189, applied for registration in Part A of the Register for the mark the representation of which appears hereunder:

in respect of "heaters including aquarium heaters; pet food including fish food; choker chains, pet supplies and accessories for pets and all other goods in this class" being goods included in class 11.
          In reporting on the application on 9 October 1989, the examiner raised, inter alia, a disclaimer requirement of the word EXOTIC and classification objections concerning some of the items included in the specification of goods.  Subsequent to the examiner's report the specification of goods has been amended to: "heaters including aquarium heaters; and all other goods in this class".  Concerning the proposed disclaimer of the word EXOTIC, the attorney for the applicant has argued that the disclaimer is not warranted as the word has no direct reference to the character or quality of the goods sought to be registered.  In response the examiner reiterated the disclaimer requirement stating that in view

of the descriptive significance of the word EXOTIC, other traders
are equally entitled to use it to indicate a characteristic of the
same or similar goods.  Consequently, the applicant, through its attorneys, Griffith Hack & Co of Melbourne, waived its right to a hearing and requested a decision on the written record.
          In order to establish exactly what type of elements necessitate disclaimers, the rights of the proprietor of the mark as well as the public must be considered.  The rationale behind the disclaimer requirements is to define the rights afforded by the registration so as to eliminate, if possible, situations where the owner of a trade mark could claim more than he is entitled to claim.  The absence of disclaimers, as a condition of registration of the mark, could leave other proprietors feeling uncertain as to whether they possessed any rights in some material which should be available for use by others in the course of trade.  Furthermore, a registration of a trade mark without a disclaimer, where one is justified, could cause infringement proceedings.  As the Delegate for the British Registrar of Trade Marks, Mr Myall, stated in Philip Morris Inc's Trade Mark Application [1980] RPC 527 at page 533:

"Now infringement is not a matter that comes within the Registrar's compass, but it is his duty, as section 14 and rule 36 clearly show, to prevent embarrassment of the public, who are not necessarily expert at estimating the precise bounds of the degrees of resemblance that might be held to be infringement.  It is true that the public have no notice of disclaimers, except in so far as they are entered on a register open to public inspection, and a disclaimer is not to be regarded as a means of getting a mark registered that is clearly not registrable per se without a disclaimer, (which is the effect, as I see it, of the Ford-Werke decision).  In deciding whether or not to require a disclaimer, the Registrar's object is not to fetter the court but to reassure the public and, in the exercise of his discretion in this matter, he will bear the public interest prominently in mind.  It is a question of balancing on the one hand the need to require a disclaimer where an assertion of exclusive rights, even if unjustified, would be likely to embarrass other traders or the public generally and, on the other hand, the likelihood that such rights could not be asserted or would easily be disbelieved, even by the uninstructed, if they were.  In the public interest the Registrar will err on the side of requiring an occasional disclaimer where one might be said to be unnecessary having regard to the possibility that a proprietor may occasionally try and assert rights which registration does not in fact give (although a disclaimer alone cannot prevent such conduct - the Banquet case, Greers Ltd. v. Pearman & Corder Ltd. (1920) 39 RPC 406."

In deciding the disclaimer question concerning the word EXOTIC in the applicant's mark, I note that the Webster's Third New International Dictionary defines the word EXOTIC, inter alia, as:
"1: from another country; not native to the place where found ... 3a: strikingly out of the ordinary ... 3c: strikingly unusual in colour or design: rich, showy, elaborate".  Similar listings of the word also appear in the Macquarie Dictionary, for example: "1. of foreign origin or character ... 2. strikingly unusual or colourful in appearance or effect".
          According to these dictionary meanings the word EXOTIC in the mark could be adopted by the traders for the purpose of lauding or describing certain attributes of any of the goods claimed by the present application be it to indicate the source of the goods, their impressive appearance, or their uncommon colour or design, or decorative, even spectacular features in their display.
          In view of the fact that the word EXOTIC constitutes an essential feature in the subject mark and represents a word which aptly describes, extolls or identifies the goods of interest to the applicant, the word falls in the category of disclaimable material expressed in para 32(1)(b) of the Act as "matter which is common to the trade or otherwise not distinctive"; if not disclaimed, it would interfere with the basic right of other traders in using this particular.  In support of my conclusion I refer to the principle expressed by the Court in Eclipse Sleep Products Inc v The Registrar of TradeMarks 99 CLR 300, at p.318:

"It would seem therefore that the tribunal should carefully consider whether a disclaimer should not be required whenever the proposed trade mark contains parts or matter to the exclusive use of which the tribunal holds the applicant not to be entitled and those parts or matter appear to be likely to become in use regarded as essential features of the mark as a whole ..."

Consequently, I have found the word EXOTIC not to be a distinctive particular.  It will be necessary therefore to enter a disclaimer of the exclusive use of that word before the subject mark can proceed to acceptance.  I allow the applicant one month from the date of this decision to consent to such a disclaimer, otherwise this application will be refused.

(V. ZARS)
Senior Examiner
29 April 1991