Freelife International Holdings LLC
[2009] ATMO 45
•30 June 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Freelife International Holdings LLC to register trade mark application 1154313(5, 32) – GOJI JUICE (Logo).
Delegate: | Iain Thompson |
Representation: | Applicant: Margaret Shearer of Banki Haddock Fiora |
Decision: | 2009 ATMO 45 S41 grounds: words Goji Juice (per se) without any inherent adaption to distinguish – get up within trade mark – s41(5) grounds when considered with restricted specification of goods, use of the trade mark – trade mark to be accepted for possible registration under the provisions of section 41(5) with specification of goods restricted to accord with the description in the trade mark. |
Background
In this matter Freelife International Holdings LLC (‘the applicant’) of Phoenix, Arizona, USA, has applied to register a trade mark, details of which appear below:
Application No: 1154313
Priority Date: 29 December 2006
Goods:Class: 5 Nutritional supplements, dietary supplements, and liquid dietary supplements
Class: 32 Nutritionally fortified fruit-based beverages; sports drinks
Trade Mark:
(‘the applied-for trade mark’)
In terms of section 33 of the Trade Marks Act 1995 (‘the Act’), an examiner has reported grounds for rejection under subsection 41(6) of the Act because, “Your proposed trade mark indicates that the goods consist of goji juice.” The examiner does not state what goji juice is, but I understand from materials submitted by the applicant that goji juice is an extract or ‘squash’ made from berries of the goji tree which is of Himalayan origin and which is spruiked or touted as having beneficial effects on the health of those who ingest it.
The applicant submitted evidence of the use of the trade mark to the examiner and the examiner did not withdraw his objections that grounds exist in terms of subsection 41(6) for the rejection of the trade mark.
The applicant applied to be heard and (as a delegate of the Registrar of Trade Marks) I heard the applicant’s submissions presented by Margaret Shearer of Banki Haddock Fiora.
I will state at the outset that Ms Shearer does not dispute the fact that the words GOJI JUICE designate the extract from the berries of a tree or bush of Himalayan origin or that the extract has supposed beneficial effects on the imbibers’ health. Rather, Ms Shearer submits that the get-up in the trade mark should be considered sufficient to allow acceptance of the trade mark, especially when considered in conjunction with acquired distinctiveness through the use of the trade mark.
The Use of the Trade Mark
Put briefly, the evidence of the use of the trade mark is attested to within a statutory declaration by Christopher Reid, General Counsel of the applicant. This use amounts to well over one million bottles sold during the period 2004 to 2007, leading up to the priority date of the opposed application. The trade mark appears on the label of the bottle which itself is the subject of a trade mark registration in Australia – that registration being 1154627:
(‘the label trade mark’)
Submissions
Ms Shearer reviewed the process that applies under section 41 and then submitted that:
Turning to the evidence now, we must look at whether the GOJI JUICE (stylised) mark has been used as a trade mark and whether that use is sufficient to satisfy the burden of showing:
(a) in the case of 41(6), if it is found to apply, that the GOJI JUICE (stylised) mark distinguished in fact the Applicant's Goods as of the filing date; or
(b) in the case of s 41(5) that, because of the combination of the inherent distinctiveness of the GOJI JUICE (stylised) mark and the evidence of use, that the GOJI JUICE (stylised) mark does, or is capable of distinguishing the Goods as those of the Applicant.
We submit it is. The use is both extensive, use as a trade mark, and, in the case of s41(6), date relevant.
The Reid Declaration sets out the evidence of use and in summary this shows:
(a) the history of the GOJI JUICE (stylised) mark, showing the mark was especially created (invented) by the Applicant and that the specific stylisation of the mark was designed to be eye-catching and to reflect the Himalayan influence in the Goods (para 18);
(b) the GOJI JUICE (stylised) mark has been used in Australia since 2004 (para 21);
(c) the GOJI JUICE (stylised) mark is used on the Goods themselves as a trade mark (para 23-25);
(d) the GOJI JUICE (stylised) mark is also used as a trade mark in relation to the Goods on a wide range of related materials including boxes, documents, the official website, a press guide, articles in newspapers and magazines, order forms, promotional material produced by distributors (called Marketing Executives of "MEs", as explained below), business cards, stickers, signs, individual websites and trade shows (para 26-28, 36-47);
(e) extensive sales figures for Goods bearing the GOJI JUICE (stylised) mark in Australia, the dates of which are clearly identified. These show both an increase in the sales since 2004 and high actual sales of the Goods. In 2007 for example more than US$2 million worth of Goods bearing the GOJI JUICE (stylised) mark were sold each month (para 33). Keep in mind that the product is a bottled beverage that is recommended to be consumed at the rate of 110mls per day and that makes a lot of consumers;
f) that commissions, which indicate both the level of promotion and profit, have quickly increased since 2004 and are high in actual value. In the 2006/7 financial year, more than US$8.2 million was paid to MEs as commissions.
It is our submission that the GOJI JUICE (stylised) mark has been used consistently and intentionally as a trade mark and has been held out to the public as a trade mark. None of the use of the GOJI JUICE (stylised) mark can be seen as other than confident. assertive use as a trade mark.
The use of the mark has also been to the public at large. The examiner in his second report stated that the claimed impact of the GOJI JUICE (stylised) mark has been largely within the company and its branches. We submit that this is not the case and misunderstands the nature of the Applicant's business. The Applicant operates on direct marketing principles (like Tupperware and Amway) and the Goods are distributed in Australia by authorised Marketing Executives (MEs). As well as being a distributor, MEs are responsible for attracting new customers and promoting the Goods to other MEs that they have introduced to the business, their regular customers and general customers. Most customers end up becoming MEs because of the benefits of doing so. Goods are also sold by ME's direct to third parties who do not necessarily become registered "customers".
This model also means that promotion of the Goods is only partly conducted by the Applicant. Most of the marketing and promotion is conducted by the MEs. Therefore, the extent of promotional activities cannot be deduced from the direct promotional expenditure (which is minimal).
The scope of this marketing and promotion (and also of sales) reaches beyond the MEs and their direct customers. Promotion of the Goods on websites, at expos. through PR and through the MEs own websites has expanded the impact of the GOJI JUICE (stylised) mark to general consumers. For example, my local café has signs for the Goods and offers them for sale.
MEs also engage in promotional activities by conducting information evenings for potential customers and their own advertisements. The MEs are given support materials (press kits) to produce these materials and to conduct these promotions but it is ultimately at their own cost. As stated in the Reid declaration, the commission paid to MEs, and the growth of MEs, is a better indication that the promotional activities for G0.11 JUICE (stylised) mark are extensive and are working. You will recall that commissions paid in Australia in the financial year 2006/7 was more than US$8.2 million.
The significant sales reinforce the fact that there is now a wide recognition and infiltration of the GOJI JUICE (stylised) mark into the Australian market.
The examiner also objected that the GOJI JUICE (stylised) mark is often used as part of a distinctive label applied to the Goods, and is less likely to be seen as a trade mark in its own right. We submit this is not the case for two reasons. The mark is used other than on label and the words on the label are clearly an independent mark, separate from the background.
The exhibits show various use of the GOJI JUICE (stylised) mark, not just on label, but on its own. It is only because of the distinctiveness of the GOJI JUICE (stylised) mark that promotion of the Applicant's Goods using the mark on its own works.
Additionally, while the label on the Goods is highly decorated, it is the surround only for the mark. The GOJI JUICE (stylised) mark in fact appears on a large clear area of black on the labels. In fact, the label design and the GOJI JUICE (stylised) mark) are arguably two separate but complimentary marks and, it has been well established that an individual trade mark can still function as a trade mark, even when it is used in conjunction with other trade marks on goods.
We submit that other manufacturers could not and would not (now or in the past) need to use the GOJI JUICE (stylised) mark nor a similar mark for their similar goods. The GOJI JUICE (stylised) mark was uniquely designed by the Applicant. It is a created design (much more than just a fancy font) and reflects the Himalayan influence on the Goods. The font was created especially for the Applicant's Goods and is unique to it. In any event, the GOJI JUICE (stylised) trade mark has been used to such an extent that it could not now be used by another trader actuated only by proper motives.
Therefore, whether the evidence set out in the Reid declaration is considered only up until 29 December 2006 (the filing date) or today, the mark has been shown both to distinguish and be capable of distinguishing the goods of the Application.
We submit that the correct conclusion is that the Application be accepted based on the combination of inherent capacity to distinguish and the evidence of use under s41(5) of the Act.
I have also omitted some of Ms Shearer’s discussion of past acceptances and/or decisions of this office in relation to ‘get up’ applications. Such examples should be approached with some caution. I must consider this application on its merits and (for the general principles which are to be applied) there are very clear precedents from the Courts which I will follow, as discussed below. See also the words of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 ( at paragraph 35:
The second matter mentioned by Ms Baird is that Ocean Spray adduced evidence of other registered marks that contain, or consist wholly of, the word "classic". That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar[1] at 305:
"Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence."
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
[1] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281
Another factor I will mention now, although this does not constitute the formal evidence in these proceedings, is two labels which Ms Shearer showed me at the hearing. These labels, Ms Shearer told me, are copies of the applicant’s label which other traders had made up to pass their goods off as those of the applicant. Apart from strong thematic similarities in the labels such as the pictures of the shrubbery and mountain(s) there is a strong similarity to the applied-for trade mark in the script forming the words GOJI JUICE in both of these ‘copy’ labels.
Other
One of the problems mentioned in the examiner’s reports (and mentioned by the applicant in submissions) is with perceptions that the applied-for trade mark is a subset of an the label trade mark which is normally used as such and not seen to be a trade mark in itself. Thus, the argument goes, presumably, the trade mark is a ‘limping’ trade mark in terms of British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281. However, I consider that in the context of this label trade mark, the background of the bush and the mountain(s) do not immediately suggest a name for themselves. They are not such that the public is likely to seize upon them and remember them, rather than the words within the trade mark and the way that those words are rendered. Further, it is, of course, possible for a label to contain several trade marks none of which suffer from the company which they keep: see Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438.
In other words, I have formed no opinion, at this stage of my considerations, as to whether the applied-for trade mark qualifies for acceptance or not based on the fact that it happens to be used as a part of another trade mark.
Section 41
Section 41 provides a scheme for the assessment of the inherent capacity of a trade mark to distinguish the goods or services of one trader from those of other traders. The applicant does not dispute the fact that the words within the trade mark the subject of this application lack any inherent capacity to distinguish since they designate the goods.
In fact, following my suggestion at the hearing, the applicant has sought to amend the specifications of goods in both classes to, ‘goji juice,’ thus acknowledging the lack of inherent capacity to distinguish within the trade mark. Hence, the words ‘Goji Juice’ within the trade mark are ‘inherently disclaimed’ because of the acknowledgement on the face of the application that the words are in effect generic since the trade mark is reflected in the specification. It thus becomes plain on the face of the application that all the applicant seeks is the protection afforded by trade mark registration of the manner in which the words are rendered.
The exercise then becomes the assessment of the inherent capacity of the ‘get up’ of the trade mark to distinguish the goods of the applicant from those of other traders. The test in Clark Equipment, above, is stated thus:
The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.
Thus I must consider the likelihood that other traders would (in the normal course of trade and without improper motive) desire to express the words GOJI JUICE in the same ‘get up’, or one nearly resembling it, as that in the applied-for trade mark.
There is, as I have mentioned above, some guidance from the Courts as to what constitutes inherently distinctive ‘get-up’ within a trade mark – or what is not. In Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd [2008] ATMO 39, at paragraph 43, I noted the parties’ submissions:
At the hearing Mr Maxwell, for the applicant, drew my attention to the black block within the trade mark which encloses the words ‘smart’ and ‘solutions.’ He also drew my attention to the font or fonts in which the trade mark is rendered and stated that the applicant in effect sought protection for these aspects of get-up in which the words are rendered and that these aspects effectively move (or restrict) the considerations to ones under either subsection 41(3) or subsection 41(5).
Mr Kell drew my attention to Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft [1960] HCA 35; (1965) 120 CLR 285 (‘Bayer’) where the applicant involved, “sought registration of a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter "Y" is common to both, the whole being enclosed within a circle.” Mr Kell also drew my attention to Oregon[2], above, where what was sought to be registered was the word ‘Oregon’ within an elliptical or oval border.
In Bayer, Kitto J observed at paragraph 13:
If, then, the desired registrations are to be granted, it must be on the ground that the cross device, possesses a capacity, either inherent or acquired, to distinguish goods as being in a relevant sense the respondent's. First, then, is the cross device inherently adapted to produce this effect? I do not think that it is. In my opinion it merely provides a fancy method of presenting the name " Bayer ", and it has no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as " Bayer ". It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which (to use a phrase of Lloyd Jacob J. (1955) 72 RPC, at p 195) "would strike the eye and fix in the recollection". The dominant impression which the device gives is not adequately described as that of a cross formed by printing; it is an impression of the name "Bayer", arranged indeed in a particular way so that it appears twice yet with compactness and definition, but predominantly the name "Bayer". The effect produced by an application of the device to particular goods is essentially that of a branding of the goods with that name, albeit in a quaint manner; for, to some extent by the delimiting effect of the circle, and much more by the arrangement of the two words so that they intersect and share the one middle letter, attention is focussed on the identity of the words, and "Bayer" is impressed sharply on the mind. Throughout this case, the device has been referred to, by witnesses and counsel alike, as a "Bayer" Cross. That is exactly what it is: not in the sense that it is a cross device belonging to a person or corporation having "Bayer" as part of its name, but in the sense that it is in essence the word "Bayer", presented in the form of a cross. The case seems to me to be as clear as the Benz Case (1913) 30 RPC 177 and the Ludowici Case [1938] HCA 67; (1938) 61 CLR 149 (at p293)
In Oregon, which was a decision under the Trade Marks Act 1995 as opposed to its legislative predecessors, Branson J referred to Bayer with approval and observed:
By analogy, it seems to me that I must conclude that the particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient to take the applicant's trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.
[2] Blount Inc v Registrar of Trade Marks [1998] FCA 440
There are, on the other hand, renditions of trade marks which are peculiar enough to be considered to be inherently distinctive. In The American Tobacco Company, Re [1996] ATMO 29; (1996) 35 IPR 98, Senior Examiner Jarvis noted:
In British Milk Products Co Ltd's Application (1915) 32 RPC 453, Sargant J found that, if the name comprising the mark was rendered in a more or less ordinary handwriting, it did not constitute a registrable trade mark. For a representation of a trade mark such as the applicant's to be considered capable of distinguishing the designated goods, it would need to have an exceptional appearance "so as to strike the eye as peculiar", in the words of Lawrence L J in Fanfold Ltd's Appn (1928) 45 RPC 325 at p 333. This was not found to be so in that case where the mark consisted of the word "Fanfold" arranged in a curve and the abbreviation "Ltd.", both placed above a commonplace scroll with folded ends. A similar view to that of Lawrence LJ, was expressed by Jacob J in Standard Cameras Ltd's Application 69 RPC 125, where the mark, consisting of the name "Robin Hood" represented in an unusual manner by having the letter "R" in a form of an archer and the letter "D" depicting a target, was found to be original and one which other traders would be unlikely to devise. His Honour said at p 129:
"No one, I think, would seriously contend that to any ordinary eye the representation of the words "Robin Hood" set out on this application would not be accepted by everybody as being out of the common. Having come to the conclusion that it is out of the common, I have to look at it to see whether it is sufficiently out of the common to strike the eye as peculiar, and by "peculiar" I mean not likely to occur to somebody who merely wishes to represent the word.
Mr Reid attests that the applicant commissioned the design of the script in which the trade mark is rendered and that it is unique. While no single point is determinative, I note the following considerations in relation to the ‘get up’ in terms of subsection 41(3) of the Act:
· the trade mark is not rendered in normal script or italics (see British Milk, above);
· the words that comprise the trade mark are of different sizes;
· It is possible that copyright exists in the rendition of the words within the trade mark sufficient to found a ground under section 43 of the Act: Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683;
· It seems more likely than not that another trader would not need to use the particular script in which the trade mark is rendered without improper motive – bearing in mind also the words of Wilcox J in Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502,
I agree with Mr Burley that, having regard to the comparative rarity of the combination name “Harry Potter”, it is statistically unlikely that a person bearing that combination name would wish to use it in connection with the sale of clothing. If Kitto J is to be understood as requiring, by the word “likelihood” in Clark, a probability that some other trader would wish to use the name, it can be said there is no such probability in the present case. However, I do not think his Honour should be so understood. In Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424 ; [1972–73] ALR 1361 at 1365 ; (1973) 1A IPR 504, Gibbs J described the mark in issue in that case as not inherently adapted to distinguish the appellant’s goods because it was “a word which a trader might, without any improper motive want to use to describe his goods.
· It seems more likely than not that another trader would not need to use the particular script in which the trade mark is rendered without improper motive; or, put another way: in the absence of evidence, it seems more probable that not that another trader would only use the trade mark in the form depicted on the application (or one that looks similar to it) by a process of conscious copying;
· At least two other traders have obviously formed the belief that there is enough inherent capacity to distinguish in the applicant’s script form of the words GOJI JUICE to attempt to copy that script form in order to make use of those similarities in their trade in the goods;
· Set against the foregoing considerations is the rather plain appearance of the words; While I accept that the trade mark has been designed, it is not obviously (to borrow words from the Trade Marks Act 1955) rendered in a special or particular manner and thus inherently distinctive: Standard Cameras Ltd's Application, above. While such considerations are not a part of the tests under the current Act, they provide a picture of what is immediately recognisable as being inherently distinctive. There is a relative lack of inherent capacity to distinguish within the trade mark when held up against the examples in the judicial authorities such as Bayer Pharma, Oregon, Fanfold, Standard Cameras, the Ludowici Case, and British Milk.
On the basis of the above, I consider that the applied-for trade mark is to some extent inherently adapted to distinguish the designated goods from the goods or services of other persons but I am unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services on the basis of its ‘get up’ alone.
After forming this opinion, I will, however, stress that this trade mark falls right at the lower end of those trade marks which may be considered under subsection 41(5) – it has the barest scintilla or spark of inherent capacity to distinguish the applicant’s goods from those of other traders. However, that glimmer, be it ever so faint, saves the trade mark from consideration under subsection 41(6).
It follows that the matter stands to be considered under the provisions of subsection 41(5).
The evidence provided by the applicant satisfies me that the trade mark does or will distinguish the designated goods or services; the trade mark should thus be taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons. The trade mark had been used for some four years in Australia at the priority date – the volumes of goods sold under the trade mark, while not remarkable, are respectable. While the direct marketing business model adopted by the applicant is unusual, it is such that the ultimate consumer, the general public, recognizes the trade mark and sees it as indicating a connection in the course of trade between the goods and their origin.
Accordingly, I will accept the trade mark for registration in respect of “Goji juice,” under the provisions of subsection 41(5) of the Act.
Iain Thompson
Hearing Officer
Trade Marks Hearings
30 June 2009
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