FreshFood Holdings Pte Ltd

[2005] ATMO 8

TRADE MARKS ACT 1995

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

Re:      Trade mark application number 935138(30) - JAR (SHAPE MARK) - in the name of FRESHFOOD HOLDINGS PTE LTD.

DELEGATE:	Ian Thompson
REPRESENTATION:	Applicant: Stephen Burley of Counsel, instructed by Freehills Patent & Trade Mark Attorneys
DECISION:	1. Ex parte proceedings – shape of coffee jar – inherently adapted to distinguish, application allowed.

Background

1. In this matter FreshFood Holdings Pte Ltd, (‘the applicant’), seeks to register a trade mark, details of which appear below:

   Appn Number  935138
   Priority date:  27 July 2000, Divisional of 844125[1]

   [1] 50  Filing date

   Goods/Services:  Class: 30: Coffee and coffee products and substitutes; coffee essence.

   Trade Mark:  

   Endorsements:  The trade mark consists of the shape of a bottle as shown in the representation of the trade mark attached to the application form.

2. Examiners have maintained for several reports that there are grounds for rejecting the application under subsection 41(5) of the Trade Marks Act 1995.

3. The applicant has exercised its right to be heard under subsection 33(4).  The hearing was before me, as a delegate of the Registrar of Trade Marks, on Tuesday 4 January 2005 – Stephen Burley of counsel represented the applicant, instructed by Freehills Patent & Trade Mark Attorneys.

   Evidence

4. The evidence comprises two statutory declarations by Peter Donnan, Group Development Manager of the applicant and four supporting declarations from those in the trade.

5. Briefly put, Mr Donnan attests to the design of the bottle by a Japanese glass design company for the applicant for the premium coffee in it’s range of coffees sold under the ROBERT TIMMS trade mark.  The Japanese company then realised that it could not manufacture the bottle because of the ‘unique’ nature of the shape. (ie, the ‘unique’ shape led to technical difficulties in the manufacture of the bottle which could not be resolved by the designer).

6. Rather than amend the shape, which the applicant believed could have value as a trade mark, the applicant found an alternative manufacturer who could make the bottle.  The bottle shape has been in use in Australia by the applicant since 2000 in two different sizes and sales under the trade mark have been moderate.

7. The supporting declarations are from those in retail distribution who attest that they identify the bottle shape with the applicant’s goods and that this bottle shape is unique in the coffee trade.  I accept that these declarants are well qualified and that their declarations should be given commensurate weight.

8. Further details of the evidence emerge from Mr Burley’s submissions which I replicate in full, below.

   Submissions

9. Mr Burley’s submissions may be summarised under the following headings.

   The Applicant submits that there is in this application a firm basis for a conclusion to be reached that the Application is inherently adapted to distinguish within section 41(3) of the Act. In summary because:

   a)   the shape is original;

   b)   the shape is striking to the eye;

   c)   the unusual aspects of the shape are not dictated by any functional requirements but rather are purely ornamental;

   d)   the shape is unique to the goods in respect of which registration is sought;

   e)   there is no reasonable basis upon which it can be said that other traders would desire to use the shape.

10.  Mr Burley also observed:

The examiner’s reports accept that the Application is in respect of an unusual shape (for example, 3rd Report, 10 September 2004) but proceed to apply section 41(5) of the Act. The reason for this appears to be that stated in the 4th report given in the 844125 application (the parent application) as follows:

“The bottle is not a common shape, so it is the provisions of s41(5) not(6) that apply to these considerations. I particularly note that the evidence shows the shape was designed specifically for the applicant, and that there were particular costs and difficulties associated with its manufacture. This might indeed suggest, as you have submitted, that it is therefore not a shape which others in the same line of business would be likely to use in the ordinary course of business and without an improper motive. However, it is also the question of whether others would be likely to use a shape nearly resembling it. This is where the difficulty arises: it is not so different a shape from other square or rectangular jars that it would stand out on the shelf in the supermarket, and there are many jar shapes which nearly resemble it.”   (emphasis added)

With respect, the test for capacity to distinguish does not require the mark “to stand out on the shelf of the supermarket”. Kenman Kandy made clear the test for inherent capacity to distinguish in relation to shapes. See further below.
Further, the Examiner’s comment that “there are many jar shapes which nearly resemble it” represents a statement of fact that is unsupported by evidence. No examples of such allegedly similar shapes have been supplied. The Applicant has been given no opportunity to make submissions in relation to the asserted similarities. It cannot be said that a generically square or rectangular bottle is deceptively similar to the shape of the Application. The examiner has in effect made an assumption on a central question of vital relevance to the application, namely that one trade mark is deceptively similar to another. The tests (conveniently collected in Woolworths v Registrar of Trade Marks) make clear that the question of deceptive similarity is to be determined having regard to specific marks in the circumstances in which consumers are likely to perceive them. 
The Applicant has supplied further evidence since the 4th examiner’s report in the patent application. That evidence, as noted, indicates that witnesses experienced in the trade did not consider that there were of other containers of a similar shape. It also indicates that those witnesses considered the Applicant’s jar to be distinctive of the Applicant.
In Kenman Kandy, French J said (at [50]):

The shape of the millennium bug involves a symmetrical disposition of projections (legs) and recesses (eyes). Theoretically it may be the case that the number of possible symmetrical arrangements of projections and recesses is not infinite. Assuming that to be so, it is speculative, absent evidence, to draw conclusions about that number and whether the particular arrangement has any significant impact upon the access of other traders to the use of insect like shapes as trade marks. In that connection it is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s33.

In the case of the current application the Applicant submits that it is not only speculative, but contrary to the evidence, to reach a conclusion that registration of the Application will have any impact on the activities of other traders.

11.  I will leave Mr Burley’s submissions concerning sales of goods bearing the trade mark and acquired distinctiveness to one side.

Reasons

12.  I agree with Mr Burley’s submissions and I make the following additional observations.

13.  Section 41 of the Act provides a scheme for the assessment of the inherent capacity of trade marks to distinguish goods or services and the acceptance of trade marks which are capable of distinguishing goods or services, or acceptance of those which because of their use are capable of distinguishing or have become distinctive in fact (or rejection of those which have not).  The operation of section 41 was described by Branson J in Blount Inc v Registrar of Trade Marks (1998) 80 FCR 50.

14.  The start point for these considerations is in terms of subsection 41(3) and is an assessment of the extent to which the trade mark is inherently adapted to distinguish the designated goods.  It is in terms of Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511, at 513:

That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. 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. and G. Du Cros Ltd. (1913) AC 624 at 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 (ie. 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 connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

15.  As Mr Burley observed, the context of the assessment is in relation to the particular goods for which registration is sought: here those goods are “Coffee and coffee products and substitutes; coffee essence”.  In my experience and observations of the world, this sector of the market is not a particularly crowded one.  This commercial background background leads to two observations:

·     The applicant’s goods claim is quite narrow

·     There are relatively few traders within the market who would wish to use or register shape marks for these goods.

16.  As the Australian Trade Marks Office Manual of Practice and Procedure states (albeit in relation to surnames):

However, the nature of the goods and/or services must be taken into account, that is whether they are specialised, commonplace or somewhere between these extremes. For example, if the SFAS value is well over 750, but the goods are cyclotrons or railway coaches, the likelihood that other persons will need to use the name on those goods is low enough for prima facie acceptance. On the other hand, if the trade mark is to be applied to easily produced and commonplace goods such as clothing or cakes, there is a much greater likelihood that another person would wish to use the same surname on their similar goods.

17.  The goods here, ‘coffee’, are obviously not of the same degree of specialty as ‘cyclotrons’ – however, neither are they as commonplace as ‘cakes’ or (to consider goods which are marketed in bottles) ‘wines’ or even ‘soft drinks’.

18.  I now turn to the trade mark itself.  It is not alleged that the particular shape has any function other than that common to all such containers.  Neither can I discern any.  There are thus no considerations of the type in Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 where the shape has a function or is conformed to achieve a technical outcome.

19.  The shape here is one that is quite complex: the glass portion of the bottle is an irregular hexagon or prism in which two vertical facets are curved relative to the horizontal – the remaining four facets are flat vertical panes.  Two of the panes are narrow, relative to the others so that the effect, viewed in inverted plan form, is of a rectangle with two corners missing to form an irregular polygon with two slightly curved facets.  The top and bottom of the bottle are sharply tapered with the narrowest panels extending almost to the base of the bottle.  The strongly angular and curvilinear features of the glass portion of the bottle contrast markedly with a circular lid (or cap) which has a pronounced circular boss.  One other notable feature is that there is no obvious vertical plane of symmetry through the bottle – I suspect that this could be where the difficulty in manufacture of the bottle might lie.

20.  I consider that the prospects of any other trader who markets coffee wanting or needing to use the applicant’s shape mark, without improper motive, are exceptionally low.  It may be that other traders in the marketplace might wish to use a plain hexagonal shape to market their goods in[2] – however, to my mind, registration of the applied for trade mark would not prevent such use. 

[2] Although if this is so, it has not been established by evidence.

21.  The assessment of the registrability of shape trade marks should be treated in the same way as that of words or graphical devices and other trade marks.  I consider that an analogy may be drawn between the applied-for trade mark (which is a concocted shape) and invented or portmanteau words which draw on two or more word elements.  The origins of such words might be obvious, but these do not prevent either registration of such words or other traders drawing on similar elements for use and/or registration.  For instance, the registration of the trade mark RAINMASTER should not prevent the use or registration of the trade mark RAIN-KING.[3]  And, just as obviousness of derivation should not be equated with obviousness of meaning with invented words,[4] the fact that the ultimate source of inspiration for the applicant’s shape trade mark might be perceived to be a plain hexagon does not mean that the trade mark is a plain hexagon or confer any rights in a plain hexagon, per se.

[3] Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536

[4] Hallgarten’s Application (1948) 66 RPC 105, at 108 (WHISQUEUER).

22.  This, of course, is the lesser of the fallacies of the argument that some other trader might need to use a shape resembling the applied for trade mark.  I think that this particular line of argument collapses when parallels with other types of trade mark are considered.  Registration of the trade mark RAINMASTER should not prevent use and registration of the trade mark RAIN-KING, or the registration of the trade mark FRUMATO should not prevent other traders from accurately describing their goods as being fruit and tomato juices.  By analogy, registration of this shape trade mark which is conceded by the examiner to be “not a common shape” and “not a shape which others in the same line of business would be likely to use in the ordinary course of business and without an improper motive” should not prevent other traders using more generic, or otherwise differentiated, hexagonal shapes, providing that they are sufficiently dissimilar to the applied-for trade mark that they do not deceive or confuse.

23.  Similarly, it has been the Registrar’s practice to register different images which are representations of goods.  For instance, representations of teddy bears for the goods ‘soft toys’, providing that they are distinguishable from each other.  For example, 583836 and 617131 which are for the trade marks:

 

24.  It is difficult to understand why graphical representations of goods, such as teddy bears, should be afforded a different standard of registrability than a shape trade mark.  Obviously, people who trade in teddy bears need to use representations of teddy bears – but registration of such images as trade marks is allowed on the premise that the particular image of a teddy bear is sufficiently different both from the ‘norm’ or generic (whatever that is) and the prior registered or pending representations of other traders’ teddy bears.  It should not be any different with shape trade marks.

25.  However, there is another more compelling reservation which might be expressed with the particular line of argument that other traders might need to use a similar shape:

a) The approach automatically places even inherently adapted shape trade marks within consideration under subsection 41(5) since the ground for rejection seemingly starts from the position that (although the trade mark is otherwise capable of distinguishing the goods) other traders might legitimately need to use similar shapes to that applied for, in terms of the test in Clark Equipment.

b)   However, the words ‘nearly resembles it’, used by Kitto J in Clark Equipment, refer to slight variations from signs which lack inherent capacity to distinguish – not to slight variations from signs which prima facie possess inherent capacity to distinguish or are capable of distinguishing.

c)   The approach thus does not treat shape trade marks in the same manner as other trade marks and, if applied evenly in the assessment of all types of trade mark, should logically render all trade marks prima facie unregistrable.

26.  A label would not obscure the features of this shape trade mark.  The Effem Foods case can be readily distinguished because evidence showed that the series of grooves present on the Effem bottle or jar shapes were obscured by the label when the trade mark was in use.  Here, the potential application of a label to the applied-for shape trade mark would not detract from or obscure the shape – and, as far as the prima facie registrability of the trade mark is concerned, it is inappropriate to consult evidence to show that it would.[5]  Moreover, in situations when the shape trade mark is prima facie inherently adapted to distinguish, concerns by the examiner as to whether a label will obscure the trade mark function of the shape are somewhat akin to concerns that a trader might use a word trade mark which is otherwise capable of distinguishing in a manner where it might not be visible in trade.[6]  In practice, such an objection to a word trade mark which is prima facie adapted to distinguish would not be contemplated.  The potential abuse of shape trade marks which are otherwise prima facie capable of distinguishing by their owners in this way is thus not a concern for examiners since similar or analogous abuse could happen to any kind of trade mark.  Ultimately, therefore, the potential abuse of trade marks which are prima facie inherently adapted, or are capable of distinguishing, by their owners does not go to questions of registrability, it goes to issues which include opposition grounds such as section 59, or post registration concerns such as section 92 and enforcement.  These are factors that come into play after acceptance has been achieved.

[5] Ocean Spray Cranberries Inc v Registrar of Trade Marks 47 IPR 579.

[6] In situations where the shape trade mark has no, or very limited, adaptation to distinguish, the situation might be different since the obscuration of the trade mark function of the shape might limit the potential for the trade mark to gain distinctiveness through use.

27.  Accordingly, I agree with Mr Burley that there is no reason that this particular ‘concocted’ shape trade mark should be any less registrable than the shape trade mark which was the subject of the Kenman Kandy application, referred to in his submissions and below.  I consider that this decision accords with the direction in the Australian Trade Marks Office Manual of Practice and Procedure that:

The Kenman Kandy decision (Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, [2002] FCAFC 273) confirms that a shape may be capable of functioning as a trade mark and it is not appropriate to object prima facie that a shape is not a trade mark because the public will need to be educated to see it as a badge of origin. The shape must be considered in the context of the market in which it is placed, and a decision on its adaptation to distinguish then made using the usual tests.

28.  I further consider that when an examiner arrives at the point where a conclusion has been made that the trade mark is, “not a common shape” and “not a shape which others in the same line of business would be likely to use in the ordinary course of business and without an improper motive”, the general rights of other traders, which section 41 is designed to protect, are in fact safeguarded.  It appears to me that (under these circumstances) concerns that another trader might be using, or need to use, a similar shape to that applied for go more to the existing specific rights of another particular trader (rather than the general rights of all traders) and that these specific rights might be better considered (as they are with other kinds of trade mark) within opposition proceedings or by the Courts.

29.  I therefore accept the trade mark for possible registration.

Ian Thompson
Hearing Officer
Trade Marks Hearings
28 February 2005

A divisional application is taken to have been filed on the day on which the initial application concerned was filed.
Note:    For file see section 6.