Himalaya Global Holdings Ltd

[2012] ATMO 14

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1362596(5) – SLEEPTEA - in the name of Himalaya Global Holdings Ltd.

Delegate:	Iain Thompson
Representation:	Applicant: Cathryn Warburton of Acacia Law
Decision:	2012 ATMO 14 s33 proceedings – s41 trade mark SLEEP TEA not capable of distinguishing goods – application rejected.

Background

1. These are proceedings under section 33 of the Trade Marks Act 1995 (‘the Act’) concerning the trade mark application detailed below:

   Application No:           1362596
   Owner:  Himalaya Global Holdings Ltd
   Priority Date:               20 May 2010

   Goods:Class 30: Non-medicated tea beverages; beverages made of tea; tea-based beverages

   Trade Mark:                SLEEPTEA

2. In the course of this decision I will refer to the owner of the trade mark as ‘the applicant’, the goods which are specified as ‘the specified goods’ and the word SLEEPTEA as being ‘the trade mark’.

3. An examiner of trade marks has recited grounds for rejection of the application in terms of section 41 of the Act and has forwarded two sets of references to the applicant in support of this contention.

4. In response to the applicant’s submissions the examiner of trade marks forwarded two further reports in which she did not resile from the stated grounds for rejection and the applicant subsequently requested to be heard.

5. As a delegate of the Registrar of Trade Marks I heard the submissions of the applicant made by Ms Cathryn Warburton of Acacia Law by teleconference in Canberra on 14 December 2011.  Ms Warburton’s written summary of her submissions appears below:

   According to Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 at 310, [‘Eclipse’] a mark will fall foul of section 41 if:

   “other traders are likely in the ordinary course of their business 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”.

   The idea of section 41 is to protect the common right of the public to make honest use of words which form part of the “common heritage”: see Clark Equipment Co v Registrar of Trade Marks (1964 111 CLR 511 at 514.

   A mark will be treated as non-distinctive if the words which make it up are so common, and their meaning so plain, that it is inconceivable that they could or should be associated with one trader: Crosfield & Sons Ltd’s Application (1909) 26 RPC 837; also Eclipse Sleep Products (supra).

   In Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 at 195, the court held that a mark will still be registrable if its words “...have an emotive tendency, but do not appear to ... convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods.”

   SUBSTANTIVE SUBMISSIONS

   One reason why traders would not want to use SLEEPTEA is the unusual syntax. It is true that the mark consists of the two existing words “sleep” and “tea” and therefore it does not qualify as an invented word.

   However, the arrangement of the words is quite unusual. We do not place the verb before the noun which it relates to. For example do not describe pens as “writepens”. Nor can we refer to a tea as a “sleeptea”. The placement of the relevant verb before the noun makes the term seem extremely bizarre.

   As a result, it is highly doubtful that other traders will need to use this word on their own goods. It would seem very strange if another tea-maker described their product as (for example) “a very refreshing sleeptea”. We simply do not arrange the words “sleep” and “tea” in this way.

   In terms of Mark Foy’s Ltd v Davies Coop & Co Ltd it was held that words with an “emotive tendency” are registrable so long as they do not amount to a “direct reference” to the character or quality of the goods. The Applicant submits that this is the case with SLEEPTEA. If the term “sleep tea” made a direct reference to the character of the goods, then it would refer to “tea that sleeps” (which is clearly a nonsense). In addition, no type of tea actually makes a person sleep! The purchasing public will clearly understand that this is a playful term and that only prescription medications can perform the job of sedatives.

   SLEEPTEA is clearly a fanciful name for a tea which is intended to induce relaxation. Just as in the Mark Foys case the clothes were not “happy” to get into the “tub” (allowing “tub happy” to be registered for washing powder),[1] here, the goods are not a “tea that sleeps”.

   The Applicant therefore submits that its trademark is registrable in terms of Mark Foy’s v Davies.

   In their [sic] report dated 1 July 2011, the Examiner contended that “the ordinary Australian, seeing the trade mark applied to the designated goods, would readily see the transparent descriptive meaning” - i.e., a “tea which helps the consumer to have a relaxed sleep”. The mark does not prevent others from describing their tea as suggested by the examiner as “tea which helps the consumer to have a relaxed sleep”. While the mark might be a “skillful allusion” to relaxing properties of tea, tea is clearly not a sedative.

   The Mark Foys case makes it clear that skillful allusions are permitted to be registered as trade marks. No tea purchaser would truly believe that drinking a cup of SLEEPTEA would cause them to immediately fall asleep.

   The second examination report attaches two apparent examples of others in trade wishing to use the term. Firstly, it is telling that neither of these examples relates to use of the term in Australia. Secondly, one of these examples is use in a trade mark sense (an order form for Sleep Tea at a particular price) which indicates that the name can (and does) indeed function as a trade mark. There is no reference to the manufacturer details of this tea, but this might well be the applicant’s tea. Thirdly, the second example of use, is use by a journalist in an article. Journalists are expected to make creative use of language. Not every term written by a journalist can be banned from use as a trade mark. The journalist may well have received inspiration for the term from the applicant’s tea. In any event, such use does not in any way show an inclination by anyone in the tea industry to use the term SLEEPTEA as a common descriptor for teas.

   Teas which are consumed for relaxation purposes can be referred to as anti-stress or relaxation teas. Registration of the unusual and unique combination of words SLEEPTEA will not bar such use or cause any difficulty for tea manufacturers.

   [1] I note that in Mark Foys the trade mark was a registered trade mark.

   The Law

6. Section 41 of the Act provides:

   41Trade mark not distinguishing applicant’s goods or services

   (1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:For applicant and predecessor in title see section 6.

   Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   (2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   Note:For goods of a person and services of a person see section 6.

   (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:For goods of a person and services of a person see section 6.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)  the time of production of goods or of the rendering of services.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

7. Branson J discussed the scheme and operation of section 41 in Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241 (‘Blount’) where she said:

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (“the designated goods or services”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

8. I cannot find any reference within the cases to which Ms Warburton has referred me which support her proposition that a trade mark “will be treated as non-distinctive if the words which make it up are so common, and their meaning so plain, that it is inconceivable that they could or should be associated with one trader.”[Stress added] Indeed, the cases she refers to support no proposition of the kind and the putative principle would treat subsection 41(5) of the Act as having no work to do whatsoever.

9. Rather, the assessment lies within that approved by Branson J in Blount where she referred to the assessment of a trade mark’s inherent adaptation to distinguish under subsection 41(3) as being governed by the principles formulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, (‘Clark’) at p 514, where his Honour described the test as follows:

   …the question whether a mark is adapted to distinguish [is to] 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.

   Sleep Tea

10. The material showing the use the words  SLEEP TEA by other traders and which was provided to the applicant by the trade mark examiner includes:

    1.   How to Make Herbal Sleep Tea

    Having trouble winding down? Sigh and relax with a hot cup of herbal sleep tea.
    ( description: Sleep tea is for those individuals who suffer from severe insomnia or hyper activity and cannot manage a good night rest. This special tea is specially blended to achieve results using all natural herbs without the addition of chemicals or additives. It's recommended that you consult with your doctor before deciding to use sleep tea as a sleep aid as the herbs in the tea may cause some side effects to some people. [Stress added]

    (>

    While Ms Warburton argues that the trade mark examiner’s reference 2, above, shows use of a trade mark, it appears that the words ‘sleep tea’ are used generically within the body of the text.

11. A search of the Internet using the Google search engine for the term “sleep tea” (with the quotation marks included) results in a more focused search result.  In addition to the examples listed above it gives:

    3.   Most sleep aid tea recipes are safe for daily use, but as with any new health regimen it is important to consult with your doctor to identify any allergies or complications that may arise. Contact VÄXA for more information about sleep tea for relaxation and other natural sleep aids. [Stress added]

    ( Kitchen - Episode 12 - Sweet Sleep Tea

    “Hello my name is Shoshanna and I am going to show you how to make a sweet sleep tea.”

    ( Tea

    Jiaogulan Tea - The Perfect Tea For A Better Sleep
    The Perfect Sleep Tea
    […]
    So here it is – the perfect tea for bad sleepers. No caffeine, high energy, combats aging caused by poor quality sleep, combats fat storage caused by poor quality sleep, and builds immunity against colds and viruses we pick up when we have a run of bad sleep. This is the ultimate sleep tea…have a Green in the morning if you must, but go Jiaogulan all day long! [Stress added]

    ( sleep tea

    I reach for the lobelia and skullcap when I am a bit achey in the evening, and want to prevent tossing and turning. These herbs relax tense muscles and put your mind in a comfort zone.

    ( type="1">

    It is also instructive that searches of the Internet reveal that herbal teas include:

    7.   Cough tea, diarrhea tea, flu tea, female tea, kidney tea, lymph tea, nerve tea, stomach tea, tension tea and tired blood tea.

    ( Heart Tea, Organic Prostate Tea, Pregnancy Tea

    (>

    I note that each of the examples listed at subparagraph 7, above, is subject to the same linguistic criticisms as is the expression ‘sleep tea’.  In view of the examples, I do not accord these criticisms much weight and note the test for inherent adaptation lies not in a linguistic analysis of the trade mark but, as Ms Warburton submits, whether other traders “are likely in the ordinary course of their business 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.”  This involves a consideration of the trade mark set in its commercial context rather than some abstract and technical semantic analysis.

    I also note that Ms Warburton submits that no type of tea actually makes a person sleep.  I do not consider that a person purchasing a herbal tea would actually believe that it would ‘make’ them sleep – only that the tea contained mild soporifics such as would make sleep easier to achieve.  Traders who wish to indicate that their herbal preparation are teas and have this effect, are, by the examples given at subparagraphs 1 to 6, above, likely to use the expression ‘sleep tea’.  Further, the examples given at subparagraphs 7 and 8, above, show that (while there may be linguistic criticisms of the expression ‘sleep tea’) when this usage is considered in a commercial context it is a normally constructed short-form of a kind that other traders commonly use.

    Ms Warburton has not made any submissions concerning the conjoining of the words ‘sleep’ and ‘tea’ to form the trade mark; however, for the sake of completeness, I note that I do not consider that the conjoining of these particular words[2] contributes in any material way to their inherent adaptation to distinguish.  Such a conjoining is explicitly captured by the expression in Clark, “in any manner which would infringe a registered trade mark granted in respect of it,” and in Eclipse by the words, “or some mark nearly resembling it.” I note also that a consideration of whether the use of the trade mark SLEEPTEA would be a use of the trade mark SLEEP TEA in terms of subsection 7(1) of the Act would be in the affirmative.

    [2] The conjoining of some two word expressions containing the word TEA could radically change the meanings of the words – consider the words PRO TEA and PROTEA.

    In consideration of the above, I consider that a ground for rejection of the trade mark exists at the very least in terms of subsection 41(5) of the Act. In so finding I have taken account of the fact that the references currently show that while the expression ‘sleep tea’ is apt for use by other traders to describe the nature of their goods, it is not commonly used by them as such. Accordingly, the trade mark could be regarded in terms of subsection 41(5) as being to some extent inherently adapted to distinguish the designated goods from the goods 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.

    The applicant has adduced no evidence of the use of the trade mark.

    Decision

    Section 33 provides:

    Application accepted or rejected

    33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

    (a) the application has not been made in accordance with this Act; or
    (b) there are grounds for rejecting it.

    Note:  For the grounds on which an application may be rejected see Division 2.

    (2) The Registrar may accept the application subject to conditions or limitations.

    Note:  For limitations see section 6.

    (3) If the Registrar is satisfied that:

    (a) the application has not been made in accordance with this Act; or
    (b) there are grounds for rejecting it;

    the Registrar must reject the application.

    (4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

    Note:  For applicant see section 6.

    I reject application 1362596.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    10 February 2012