Himalaya Global Holdings Ltd

[2012] ATMO 11

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1362590(5) - HIMALAYA PURE HERBS - in the name of Himalaya Global Holdings Ltd.

Delegate:	Iain Thompson
Representation:	Applicant  Cathryn Warburton of Acacia Law
Decision:	2012 ATMO 11 s33 proceedings - s41 - trade mark HIMALAYA PURE HERBS lacks inherent adaptation to distinguish. Application rejected

Background

1. This is a proceeding under section 33 of the Trade Marks Act 1995 (‘the Act’) concerning the trade mark application details of which appear below:

   Application No:           1362590
   Owner:  Himalaya Global Holdings Ltd
   Priority Date:               20 May 2010

   Goods:Pharmaceutical substances: dietetic substances for medical use.

   Trade Mark:                HIMALAYA PURE HERBS

   I will refer to the above as ‘the application’, to the owner as ‘the applicant’ and to the trade mark HIMALAYA PURE HERBS as ‘the trade mark’ in the course of this decision.

2. An examiner of trade marks has recited grounds for rejection in terms of section 41 of the Act stating that the trade mark “indicates that your products consist of or contain pure herbs from the Himalaya region. Herbs from the Himalaya region are in common use in pharmaceutical, complementary medicine and dietetic substances.” The examiner of trade marks supported this ground with references that she supplied to the applicant and which I will further discuss below. The examiner has also recited grounds for rejection in terms of subsection 44(1) of the Act.

3. The examiner of trade marks issued two further reports in response to the applicant’s submissions in which she has not resiled from the grounds for rejection. Those reports state that the section 41 ground for rejection lies under subsection 41(5).

4. As a consequence, the applicant requested to be heard and as a delegate of the Registrar of Trade Marks I heard the submissions of the applicant at a hearing in Canberra on 14 December 2011.  Ms Cathryn Warburton of Acacia Law made submissions by teleconference on behalf of the applicant.

5. It is convenient, for reasons which will become obvious, to decide this matter only in terms of the ground for rejection under section 41 of the Act.

   The Submissions

6. Ms Warburton submitted a written outline of her submissions and (in so far as they address the section 41 ground) I reproduce these below:

   According to Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 at 310, 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

   Is the mark non-distinctive/likely to be needed by other traders in a way contrary to section 41 of the Trade Marks Act?

   The Applicant submits that its HIMALAYA PURE HERBS mark is distinctive and is not likely to be needed by other traders.

   It is highly doubtful that, in the ordinary course of business, a trader may desire to use this phrase in connection with their own goods.

   The way that the phrase is constructed is somewhat unusual and is not in common use. Registration of this phrase would not prevent others from using the individual words “Himalaya” or “Pure” or “Herbs” after the adjective – for example, we would say “Clear Australian Water” instead of “Australian Clear Water”, which sounds strange to our ears.

   The same is true with HIMALAYA PURE HERBS. Usually, if we were aiming to describe pure herbs from the Himalayas, we would call them “Pure Himalaya Herbs”, with the location word after the adjective and before the noun. Like with “Australian Clear Water”, “Himalaya Pure Herbs” sounds strange.

   The HIMALAYA PURE HERBS mark is therefore syntactically unusual.

   This makes it unlikely for other traders to need it, for two reasons. Firstly, because we do not usually construct a phrase in this way, it would simply not occur to other traders to use this phrase to describe their herbs. Secondly, even if it did occur to them to use this phrase, they would be unlikely to want to because it is grammatically incorrect and the unusual construction makes it sound somewhat foreign.

   The Law

7. 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).

   8. The scheme and operation of section 41 were discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (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. In Blount Branson J 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.

   The Examiner’s Research

10. The references concerning the word HIMALAYA provided to the applicant by the examiner of trade marks include:

    Macquarie Dictionary: plural noun the, a lofty mountain system extending about 2400 km along the border between India and the Xizang AR (Tibet). Highest peak (in the world), Mt Everest, 8848~m.

    Columbia Gazetteer: Himalaya, [Sanskrit = abode of snow], great Asian mountain system, extending c.1,500 mi/2,414 km E from Nanga Parbat on Indus River in Pakistan through N India, Tibet (China), Nepal, E India, and Bhutan to Namjagbarwa (25,446 ft/7,756 m) on the Brahmaputra River in SE Tibet. For most of its length, the Himalayas comprise two nearly parallel ranges separated by a wide valley in which the Indus River flows W and the Brahmaputra in India flows E. The N range is called the Trans−Himalayas. The S range has three parallel zones: the Great Himalaya, the perpetually snow−covered main range in which the highest peaks (average elevation 20,000 ft/6,100 m) are found; the Lesser Himalaya with 7,000 ft/2,100 m–15,000 ft/4,600 m elevations; and the southernmost Outer Himalaya, 2,000 ft/610 m–5,000 ft/1,500 m high.

    […]

    Little of the high Himalayan region is inhabitable or of great current economic value. Numerous protected areas are of benefit for recreation and tourism. The S piedmont plains of Terai and Duars were formerly malarial jungle and swamps but have now been converted to agriculture, with many wild animals in nature reserves. Grazing is possible on high−elevation pastures and extensive farming is carried on in the valleys and adjacent slopes. Lumbering is in the extensive forests found below 12,000 ft/3,660 m. Military roads and trucks have completely transformed the frontier areas of Pakistan, China, and India since the 1960s. [Stress added].

11. The research performed by the examiner of trade marks also found numerous examples of the word HIMALAYA being used by traders other than the applicant in relation to goods which occur within the specification of goods of the application.  A few examples will suffice:

    Himalaya Health Care

    Himalaya Herbals

    Himalaya Direct

    Himalaya Herbal Stores

    Herbal-Provider.com - Your one-stop shop for Himalaya pure herbs, vitamins, and herbal supplements[1] [stress added]

    [1] I note that this references the goods of a trader other than the applicant.

12. I further note that the examiner’s research refers to the kinds of herbs grown in the Himalayan region.  The research finds a company called Organo which says of itself:

    Organo is an Indian company located on a small farm near the Himalayan town of Darjeeling in West Bengal. We cultivate and market medicinal and aromatic plants found in the Himalayan region of India. We have entered into contract farming agreement with groups of farmers in Darjeeling, Nepal and Sikkim and provide 100% buy back agreement.

    The products we deal with are Swertia chirata, Asparagus racemosus (Yellow satavari), Valerium (Sugandhiwala), Rubia cordifolia (Manjistha), Acorus calamus (Bojo), Taxus baccata, Piper longum (pipla), Gloriosa superba (Sarpagandha), Aconitum heterophyllum and A pherox, Kutki, Panax pseudoginseng, Ginger and large cardamom.

13. The trade mark examiner’s research also located the website which states that it is run by “a group of companies that manufacture, wholesaler and retailer quality products at wholesale prices. We manufacture and export different kinds of Nepali products like: Statue, Thanka paintings, Pashmina products, Herbal Products, Carpet (Nepali and Tibetan), Jewellery, Nepali Paper Products, Wooden Crafts, Nepali Tea, Metal Crafts, Stone Craft, Garment products and Buddhist items including prayer flag, stupas and incense.”  This website lists 48 different herbs as being grown in the Himalayan country Nepal and available for order from it:

    Aconitum Heterothyllum, Aconitum Spicatum, Acorus Calamus, Aquilaria Agollocha, Amomum Sabulatum, Artemisia Subia, Berberis Dictyophylla franch, Cinamomum Glaucescens, Cinnamomum Tamala, Cordyceps Sinensis, Delphinium Himalayai, Dioscorea Deltoidea, Embilica Officinalis, Ephedra Saxatilis royale, Gall of Pistacea, Gymnadenia Crassinervis Finet, Heracleum Lallii, Hippophae Tibetana, Juniperus indica, Myristica Fragrans, Nardostachys Grandiflora, Picrohiza Scrophulariiflora, Piper Longum, Polygonum sp, Rauwolfia Serpentina, Rhodiola sp., Rododendron Anthopogon, Rubia Cordifolia L., Sassurea Lappa, Asparagus Racemosus, Silajeet, Sweritia Chirayita, Terminalia Bellerica, Terminalia Chehula, Tinospora Cordifolia miers, Tinospora Sienesis, Usnea Longissima Ach, Valariana Jatamansi, Wild Pomegranate, Zanthoxylum Armatum, Zingiber Officinale, Zingiber Officinale, Cassia Cinnamomum, Commiphore Mukul, Curcuma Longa, Eclipta Prostrata, Pseudo-Ginseng, Glycyrrhiza Glabra.

    Discussion

1. It is apparent from the above that the word HIMALAYA, solus, does not fall into the genus of fanciful trade marks such as those referred to in Clark at paragraph 6 where Kitto J said:

   The fact that this is the test is the basic reason for the frequent refusal, exemplified in this Court by the case of Thomson v. B. Seppelt & Sons Ltd. [1925] HCA 40; (1925) 37 CLR 305, to register as a trade mark a word of prima facie geographical signification. It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Case (1953) 71 RPC 150, at p 154. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as " North Pole " in connexion with bananas: A. Bailey & Co. Ltd. v. Clark, Son & Morland Ltd. (the Glastonbury Case (1938) AC 557, at p 562; (1938) 55 RPC 253, at p 257) (see also the Livron Case (1937) 54 RPC 327, at p 339).

2. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘the Persian Fetta case’) Middleton J further referred to this principle at paragraph 64:

   I accept the contention of Yarra Valley that a number of English cases (including Joseph Crosfield & Sons Ltd to Register a Trade Mark (“Perfection”) (1909) 26 RPC 837; the Liverpool Electric Cable Co Ltd’s Application (1928) 46 RPC 99; A Bailey & Co Ltd v Clark, Son & Morland; Re Glastonbury’s Trade Mark (1928) 55 RPC 253 and Yorkshire Copper Works Ltd’s Application for a Trade Mark (1954) 71 RPC 150) indicate that the question of whether a mark referring to a geographical location is inherently adapted to distinguish is to be looked at on a sliding scale, with examples given of, at one end, “British”, and at the other end, “Monte Rosa Cigarettes”, “Teneriffe Boiler Plates” and “North Pole Bananas”. The cases in which it was held that the marks referring to geographical locations were not registrable (Yorkshire, Liverpool and Glastonbury) were cases in which the geographical location was associated or could be associated with the goods in respect of which registration was sought.

3. I consider the word HIMALAYA, solus, to be at the end of the scale which is occupied by trade marks with the least inherent adaptation to distinguish – it is a word which is quite clearly needed to be used (and, indeed, is actually used) by traders other than the applicant to indicate the origin of their goods.

4. Accordingly, to paraphrase the words of Middleton J in Persian Fetta at paragraph 217, other providers of herbal preparations in Australia, or elsewhere, trading or wishing to trade in Australia, may want to use the word “Himalaya” or “Himalayan”, on or in connection with herbal preparations, either to signify the style of the product or to indicate that their product comes from the Himalayan region.  These traders would have a legitimate interest in using the geographical name to identify their goods.

5. Ms Warburton argues, however, that the addition of the words PURE HERBS to the word HIMALAYA to form the trade mark HIMALAYA PURE HERBS results in a construction which is:

   […] somewhat unusual and is not in common use. Registration of this phrase would not prevent others from using the individual words “Himalaya” or “Pure” or “Herbs” after the adjective – for example, we would say “Clear Australian Water” instead of “Australian Clear Water”, which sounds strange to our ears.

   The same is true with HIMALAYA PURE HERBS. Usually, if we were aiming to describe pure herbs from the Himalayas, we would call them “Pure Himalaya Herbs”, with the location word after the adjective and before the noun. Like with “Australian Clear Water”, “Himalaya Pure Herbs” sounds strange.

6. I consider this argument to be not well founded.  The placement of the adjective ‘pure’ within the trade mark depends on where the object of the description ‘pure’ is intended to lie.  If, as Ms Warburton suggests, the expression is rendered ‘Pure Himalaya Herbs’, the word ‘pure’ might only serve to describe the Himalayas themselves as being pure.  However, within the expression ‘Himalaya Pure Herbs’ there is no doubt that it is the products (herbs) referred to in the trade mark which are described as being pure.  Nor do I consider the fact that other traders might use the adjective ‘Himalayan’ rather than the noun ‘Himalaya’ to alter the nature of the trade mark – in Persian Fetta at 217 Middleton J regarded the words ‘Persian’ and ‘Persia’ to have equal lack of inherent adaptation alongside the word ‘fetta’. And, in any event, the examiner’s research shows that other traders of herbal products in fact use the word ‘Himalaya’ in conjunction with a description of the goods.

7. Further, I am not to consider such niceties (even if well-founded) when assessing the inherent adaptation of the trade mark to distinguish the goods of the applicant from those of other traders.  There is but one test, as Ms Warburton has submitted, and that is 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” [Stress added].  In particular, the trade mark examiner’s research which has been provided to the applicant reveals that if the expression ‘Himalayan Pure Herbs’ was, in fact, a grammatical error or oddity (which it is obviously not), it is an error which is similarly made by other traders with the sole purpose of stating, without improper motive, that their herbal preparations are from the Himalayas.

8. In my consideration, there is an inescapable conclusion that the trade mark is not to any extent inherently adapted to distinguish the applicant’s goods, and subsection 41(6) of the Act applies in the present case, not subsection 41(5).

9. The applicant has not adduced any evidence of acquired distinctiveness.

   Decision

10. Section 33 of the Act 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.

11. I reject application 1362590.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    7 February 2012