J. McGloin Pty Limited, Re

[1991] ATMO 37

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade Mark Application No. B479577 to Register a Trade Mark in the Name of J. McGLOIN PTY LIMITED.

Application number 479577 was lodged on 14 January 1988 in the name of J. McGLOIN PTY LIMITED (the applicant), a New South Wales Company of 160 Pitt St., Sydney, New South Wales.  It sought registration of the mark ORAL-FRESH for the statement of goods, "All goods in this class inclusive of mouth washes and mouth fresheners", in Class 3.
An examiner's report of 17 March 1989 objected to the mark's registration under paragraphs 24(1)(c), (d) and (e) of the Trade Marks Act that the words ORAL FRESH, when used in relation to the goods included in the specification, directly described them as an oral breath freshener. The applicant's attorney, Arthur S. Cave & Co of Sydney, replied, arguing that the word FRESH had a number of dictionary meanings including "not preserved by assaulting (sic), untainted, invigorating, unsullied, presumptuous, amorously impudent as well as new or novel". When these meanings were combined with the word ORAL, "which may anatomically refer to the mouth area", the many definitions of FRESH meant that no particular meaning could be placed on the combination. Therefore, any inference was at most indirect. The examiner maintained her objection in the second report, saying that the test of the meaning of the trade mark was when it was applied to the goods and, in that context, the combination was apt for description. The attorney's reply again disputed the objection, enclosed a Statutory Declaration pertaining

to use of the mark and maintained that any inferences in the mark were at best, indirect.  The objection was maintained in the third
report, the examiner stating that the evidence lodged did not prove the mark had become distinctive through use and quoting Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR on the question of whether a mark is adapted to distinguish.  It was suggested that consideration could perhaps be given to representation at a Hearing.  In reply, the attorney requested the mark be transferred to Part B of the Register.  It was argued that the evidence lodged was sufficient to show that the mark was at least capable of becoming distinctive.  It was suggested that any inference of a meaning from the mark required mental agility by the "ordinary person" and the public at large would recognise it merely as the Trade Mark of the proprietor.  The attorney further said that, if the examiner did not withdraw the objection, then the applicant waived its right to a hearing and sought a decision on the written recorcd.
         Registrability of a mark in Part B depends upon determining whether a mark will at some time in the future satisfy the requirements of sub-section 26(2) concerning inherent distinctiveness and distinctiveness in fact.  In Burger King Corp. v Registrar of Trade Marks (1973) 128 CLR 417 Gibbs J explained at page 424:

"... the two matters that fall for consideration in deciding whether a trade mark is distinctive, and in deciding whether a trade mark is capable of becoming distinctive it becomes necessary to consider whether the trade mark is capable of meeting in the future the tests stated in s.26(2).  That sub-section requires two matters to be considered, inherent adaptability to distinguish and distinctiveness in fact acquired by use or otherwise."

In relation to the question of whether a mark is adapted to distinguish in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at p.514 Kitto J has pronounced the following criterion.

"[the question 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 the 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

The mark in question is a combination of the words ORAL and FRESH joined by a hyphen.  The word ORAL is defined in the Macquarie Dictionary as, inter alia, "of or pertaining to the mouth".  The word FRESH does indeed have other meanings as submitted by the attorney but it also is cited in Macquarie as meaning "pure, cool or refreshing".  Both words could therefore be said to have reference to the goods of the application and would, in my opinion, be required for use by other traders in like goods.  Also, as the mark would be viewed by users in relation to those goods, it is difficult to believe that, in those circumstances, an ordinary person would infer any other meaning from their combination than "mouth washes and mouth fresheners".  I do not find any great invention in this combination and cannot agree with the attorney that "the average consumer would not consider the mark to be descriptive in that they would not request a product that would 'make their mouth fresh'".  With respect, this would appear to be playing with words.  Both of the words in the mark are commonly used in relation to the goods of the application.  With respect to the degree of invention in their combination, I turn to the words of Lord Shand in the Eastman Photographic Materials Co Ltd's application (SOLIO) (1989) 15 RPC 476, where he said:

"There must be invention, and not the appearance of invention only.  It is not possible to define the extent of invention required, but the words I think should be clearly and substantially different from any word in ordinary and common use.  The employment of a word in such use, with a diminutive or a short and meaningless syllable added to it, or a mere combination of two known words, would not be an "invented" word; and a word would not be "invented" which, with some trifling addition or very trifling variation, still leaves the word one which is well-known or in ordinary use, and which would be quite understood as intended to convey the meaning of such a word."

I agree that the combination ORAL FRESH is perhaps not grammatically correct if used descriptively.  However, as was said by Lord Hanworth of the trade mark CHARM in the Keystone Knitting Mills application at 45 RPC 421:

"... one comes back to see whether, not grammatically, not as a portion of a sentence, the word can be used to signify or to call up in the minds of those who read it a quality or character of the goods.  To my mind it seems only necessary to put the question in that form to answer it in the affirmative.  I cannot think of any other purpose for which the word could be used or any other significance which could be attached to it.  If that be so, then it appears to be a word which does have a direct reference to the character or quality of the goods."

Having decided that the mark ORAL FRESH has a direct reference to the goods in question and comprises words which other traders would legitimately desire to use, I conclude that the marks fail the test of inherent distinctiveness.
         Turning to the issue of distinctiveness in fact, I note from the Statutory Declaration made by IAN DAVID SMITH on 13 August 1991, submitted as evidence of use of the mark, that the mark was first applied to mouth washes and mouth fresheners since July 1989, six months prior to the date of the trade mark application.  Mr Smith states that the mark has been used "continuously and extensively throughout Australia" since first use.  He says that the goods are sold only through pharmacies in Australia of which there are approximately 5,000 outlets.  The number of "singular sprays" sold, which I determine to be some of the goods in question, number 4704, which would not appear, in any way, a large number given the type of goods, the potential market and the number of outlets.  Thus, it is difficult for me to conclude on the evidence that the mark might have a capacity through use of becoming distinctive.  However, despite any evidence of use, the mark in view of its inherent non-distinctiveness, is not capable of becoming distinctive within the meaning of section 25 of the Act since, as was stated by Gibbs J in respect of the WHOPPER mark in Burger King case, supra, at p.426:

"The effect of s.26(2) is that the two factors mentioned must both be weighed but the authorities show that the primary inquiry is whether the word is inherently adapted to distinguish the goods in respect of which registration is sought, and that if it is simply a laudatory or descriptive epithet, registration will generally be refused even is there is evidence of such user as has in fact rendered the word distinctive of the applicant's goods."

I find therefore that the mark fails to qualify for registration in terms of section 25 of the Act.  Consequently, the mark is not registrable in Part B of the Register and I refuse the application.

(I.M. FORNO)
Hearing Officer
7 June 1991