Fischer Pharmaceuticals Ltd, Re

[1994] ATMO 98

TRADE MARKS ACT 1955

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

Re:      Trade mark application number 588764(3)  in the name of  FISCHER PHARMACEUTICALS LTD

Trade mark application number 588764 was filed on 20 October 1992. It is an application to register the trade mark ULTRACARE for non-medicated skin care creams and lotions.

The examiner of trade marks objected that ULTRACARE is a simple combination of the words ultra and care, and is not an invented word.  The words ULTRA CARE he said, have direct descriptive reference to the character and quality of the goods. He objected therefore that the mark fails to qualify in terms of paragraphs 24 (1)(c), (d) and (e) of the Trade Marks Act.

The agents for the applicant, Mr David Griffith and Mr Brian Munday of the Sydney firm of Spruson and Ferguson, have argued that

1.   the word ULTRACARE  is no more than allusory,  is virtually meaningless, and is a word which is not fit for normal descriptive use

2.   the examiner is wrong to have assumed a meaning and instigated a search to prove it

3.   the mark should be admitted to Part B

4.   the many ULTRA marks on the Register support acceptance of ULTRACARE.

The examiner, however, maintained the view that ULTRACARE is not qualified for acceptance, and the agents sought a decision on the basis of the material on record and subsequently waived the right to a hearing.

Decision

Ultra has a strong presence in the dictionaries. The Macquarie Dictionary entry for ultra says (inter alia) that it functions as a prefix to mean excessive.  The Oxford English Dictionary has a substantial entry. Under the various senses for ultra in use as a prefix,  Oxford says, it signifies an excessive or extreme degree of the quality or condition expressed by the adjective forming the second element of the compound as ultra-affected, ultra-Anglican, ultra-Arctic, ultra-beloved, ultra-bourgeois...  I note also that at commencement of the entry for the prefix meanings, Oxford comments that this usage of  'ultra'  has become very prolific in English use, as well as in the Romanic languages and in German, Swedish and Danish.

It hardly seems necessary for me to give a dictionary definition for a word as common as care, however in view of the submissions, and for completeness I refer to The Macquarie Dictionary which states that care means, inter alia, to look after.  It is a word frequently used in relation to creams and lotions and, indeed, the applicant, Fischer Pharmaceuticals Ltd, uses the word in framing the goods (skin care  creams) of this application.

In view of definitions of this kind, the agents' submissions that the term is meaningless simply flies in the face of the facts.  Ultra is widely used and recorded as a prefix meaning to the greatest degree.  Care is a common description of the effect that skin creams and lotions are expected to impart.  When care is qualified by the prefix ultra the description is converted from 'care of an ordinary kind' to 'care of an extraordinary and extreme kind'.  This expression ULTRACARE is an example of the compound expressions which Oxford (above) says have become prolific.  The use then is common,  the meaning is clear and  the term ULTRACARE would widely be understood as laudatory. ULTRACARE therefore constitutes a normal description and one which any trader may wish to proclaim for his or her creams and lotions.  Terms which function in this way  are very different from a covert and skillful allusion to the character of the goods  which, in the ROHOE case, were found  to be admissible as invented words - (HowardAuto-Cultivators Limited v Webb Industries Proprietary Limited,   72 CLR 175, Dixon J., p185)

In sum, I agree with the examiner that ULTRACARE  is not invented:  it is simply a conjoining of two ordinary English words. It conveys, moreover, nothing more than the ordinary English meaning of those words.  ULTRACARE fails to qualify under the terms of paragraph 24(1)(c) of the Act.

Further, I find that ULTRACARE has both a direct and a laudatory reference to the subject goods and fails to qualify for registration in terms of paragraph 24(1)(d) of the Act.

The submissions that the objection depends on an examiner's unfounded assumption is, I find, groundless. The examiner needed to assume nothing. Both elements of the mark are simple words and their meanings are plain. The mark is a natural descriptive term, and the examiner's understanding of the meaning is fully upheld by the dictionary references.

Considering the extent to which ULTRACARE is suitable as a description for skin care products, I find that it is a term that other traders should be at liberty to use and therefore, that it has no inherent distinctiveness. Consequently, it is not a word which is capable of becoming distinctive, and  it fails to satisfy the criteria for Part B acceptance.

Finally, I turn to the submissions that the many ULTRA marks on the Register support acceptance of the word ULTRACARE  for skin care products.  I turn here to comments in a recent decision (November 1994) addressing the registrability of the word ULTRABRA (application 594243(25) in the name of  Courtaulds Textiles (Holdings) Limited): 

... there are a large number of ULTRA  marks on the  Register.  At the outset, I must refer here to Lazarus Rosenfeld Pty  Ltd's Application, (1941) 11 AOJP 1047 and 1889, where it was  held that the Registrar is not bound by Trade Mark Office decisions in earlier cases. But having made that point,  I think that in this particular case, [the attorney] is justified in seeking an  explanation, and although I am not prepared to go into matters in detail,  I will make the following comments.    On a  superficial count, it is clear that there are over 200 current  registrations of marks which one way or another contain the word element  ULTRA.

Looking now in some detail at those registered in class 3, the class of the current application, I have discovered some 36.  In 24 of these marks the word ULTRA is disclaimed.  Where this word occurs as part of an  descriptive expression (as per ULTRAPURE and indeed ULTRA CARE), the whole expression  is disclaimed.  Where ULTRA occurs in connection with the name or denotation of the goods, the marks on the whole have succeeded only to part B (ULTRA-LASH, for example, for eyelash mascara).  Where ultra has been incorporated into a coined word, and there is no evident direct reference to the goods, the marks have been allowed in Part A.  As  observed in the ULTRABRA case (supra) -

this pattern in the main applies across the Register.  There are, however, some  inconsistencies and these stem from two sources.  First, is the change in usage that ULTRA  has undergone over the years.  The earliest ULTRA  marks  that we have on the record date from the early 1940s.  Since that time it  [ULTRA ] has been taken up in more widespread use  (as per the Oxford note quoted  with the prefix definitions, above) and has, in addition, undergone a  reformation.  Kenneth Hudson's 1983 definition in A Dictionary of Teenage  Revolution and its Aftermath  [Macmillan Press, London, 1983] illustrates more contemporary trends.  Clearly, where the meaning of the word experiences a popularisation of  this kind, there will be a reactive effect in the assessment of its  registrability as a trade mark.  The trend has therefore been to tighten  up on accepting marks consisting of or containing the word ultra.  The  second point I wish to make relates in part to this change in usage.  It  is the Registrar's responsibility to assess registrability on the basis of  both published material and his own knowledge and experience in using and  listening to English.  Some of the recent inconsistencies in the treatment of ULTRA are linked to the fact that published references  have not all kept abreast of current usage (as per Mr Hudson's Dictionary  of teenage words) and the differences in examiners' exposure to the idiom. 

In consideration of the court directives per Lazarus Rosenfeld (supra), it is clear that the fact of earlier registrations does not, in itself, establish grounds for accepting an application.  In any case, however, I reject submissions that there is a significant conflict between the ULTRA marks currently on the Register, and the present finding that ULTRACARE is descriptive and is not qualified for acceptance.  A small number of marks in an extensive field do show a degree of aberrant treatment. This, I consider, is a minor departure from the clear majority which align with the present findings.  In short, ULTRA is a descriptive and non distinctive word which, so far as I can see,  is not fit to function as a trade mark. As a separate part of a mark it will therefore need to be disclaimed.  In compound expressions which directly qualify the goods or services (such as ULTRACARE) ultra constitutes part of a directly descriptive term and that term will fail to qualify for registration. 

The present application is refused.

Helen R. Hardie

Deputy Registrar

7 December 1994