Freelife International Holdings LLC

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

1. 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’)

1. 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.

2. 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.

3. 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.

4. 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

1. 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…