Kiwi Munchies Pty Ltd v Ingham's Enterprises Pty Ltd

[2004] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Kiwi Munchies Pty Ltd to registration of trade mark application 856195(29) - CHICKEN MUNCHIES - filed in the name of Ingham's Enterprises Pty Ltd.

Delegate:

Terry Williams

Representation:

Opponent: Sophia Paras, Solicitor, KM Legal

Applicant: Chris Sgourakis, trade mark attorney, Griffith Hack

Decision:

S 52 opposition: ground under s 41 established, registration refused

Background

1. Ingham's Enterprises Pty Ltd (Ingham) has applied to register the trade mark CHICKEN MUNCHIES, set out in plain upper case letters, in class 29.  The goods specified are: chicken; chicken meat products; chicken pieces; prepared or processed foods comprising chicken; chicken nuggets; chicken burgers.

2. The application has been examined and advertised for possible registration. However, Kiwi Munchies Pty Ltd (Kiwi) has opposed registration, as provided for in part 5 of the Trade Marks Act 1995 (the Act). 

3. The opposition has followed the process set out in part 5 of the Trade Mark Regulations and I was assigned to hear the matter and to decide the opposition under delegation from the Registrar of Trade Marks.

4. Each party has served and filed evidence to support its position and this is as follows:

Kiwi's evidence in support

Declaration by	Dated	Annexures
Anastasia Ualesi	14 Oct 2002

Ingham's evidence in answer

Declaration by	Dated	Annexures
John Hexton	3 May 2002	1-4, annexure 1 being an earlier declaration by Mr Hexton, relied on to gain acceptance

Kiwi's evidence in reply

Declaration by	Dated	Annexures
Anastasia Ualesi	1 April 2003	A to K

Ingham's further evidence

Declaration by	Dated	Annexures
Chris Sgourakis	17 June 2003	A to I

Kiwi's further evidence

Declaration by	Dated	Annexures
Sophia Paras[1]	22 Dec 2003

[1] The Paras declaration was not served within the time allowed and was not relied on at hearing.

1. At the hearing, Ms Sophia Paras, a solicitor of KM Legal, appeared for Kiwi, making submissions by telephone, while Chris Sgourakis, trade mark attorney, appeared by video link on behalf of Ingham.

Evidence:

1. At the heart of the decision I am to make are the following facts.

2. Kiwi, the opponent, operates two stores that trade under the title KIWI MUNCHIES, selling a range of foodstuffs and other goods imported from New Zealand and the Pacific region.  There is undisputed evidence that the trade mark KIWI MUNCHIES is used in relation to the retailing, but not upon any of the goods so sold.

3. Ingham, for its part, sells poultry meat in many forms.  Ingham's customers include takeaway food shops and catering outlets as well as supermarket chains.  Its sales under what Mr Hexton calls "the CHICKEN MUNCHIES mark" are quite substantial, of the order of more than 3 million dollars in less than 12 months up to and including March 2002. 

4. It adopted the CHICKEN MUNCHIES mark in late 2000.  However, the first public use was in July 2001.  Ingham sells crumbed chicken pieces, pre-cooked and snap frozen, otherwise called chicken nuggets, under that trade mark, which is always used with the name INGHAM quite prominent on the packaging.  The evidence shows that other products in the INGHAM range include INGHAM CHICKEN SCHNITZELS, INGHAM CHICKEN BREAST FILLETS etc.

5. The second Sgourakis declaration is aimed in part at supporting the proposition that Ingham's and Kiwi's marks can coexist.  It supports the observation that the word "munchies" appears to be common in the food trade.  There are a number of registrations for trade marks that incorporate the word "munchies" that co-exist with those of the disputing parties.  Mr Sgourakis reinforces this by including and summarising in his declaration the results of a Yellow Pages search.  It appears that a search in all states for businesses using the word "munchies" in their name revealed 59 instances.  This included 36 takeaway food listings, 5 cafes, 4 food or general stores and isolated instances in fields including catering, vending equipment and pet food.

6. This is consistent with the initial examination of the matter by the Trade Marks Office.  The examiner, whose report is in evidence, relied on the Macquarie Dictionary to show that "munchies" meant "something to eat, especially snacks between meals".  The examiner concluded that the mark none the less had some degree of inherent adaptation to distinguish, and expressed the opinion that the application might be accepted under the provisions of s 41(5) on provision of evidence of use.

7. That is precisely what happened.  The examiner considered the sales and advertising details set out in what is now annexure 1 of the Hexton declaration.  Mr Hexton notes that the trade mark was coined because, among other things "CHICKEN MUNCHIES was seen as giving an impression that the goods were something you could snack on.

Issues and Decision:

1. Ms Paras, at the hearing, argued a number of grounds.  These were put in the language of the Act, but in essence she posed for Ingham the dilemma of having to sail between Skylla and Charybdis.  She argued that Ingham's trade mark, as sought to be registered, was either too close to her client's trade mark (as used and/or as registered) or else, if it avoided that failing, was not capable of distinguishing Ingham's goods in the first place.  Her strongest argument, and one that, if I accept it, would preclude some of the other grounds, is this: that the acceptance under s 41 is based on failure to properly consider a number of factors, and that the application ought to have been rejected.

2. Ms Paras believed that she was entitled to rely on examples of use of the words CHICKEN MUNCHIES by other traders to show that those words were "ordinarily used to indicate the kind or intended use of the goods in question"[2].  Those examples were before the examiner but not disclosed to Ingham during examination.  I infer that the examiner rightly concluded that the Macquarie Dictionary was a more authoritative source.

   [2] Here, I paraphrase the Note to s 41(6).   See Ocean Spray Cranberries Inc v Registrar of Trade Marks 47 IPR 579 589: while the Note did not have 'legislative force'...'it fairly reflect[ed] the trend of relevant judicial authority.'

3. Had Ms Paras served the evidence she would be entitled to rely on it in this forum.  She may have been able to show that the words were entirely bereft of inherent adaptation to distinguish, as she argued, and therefore only acceptable under the more rigorous provisions of s 41(6).  However, in the first place the material, which I have seen and which was traversed briefly at the hearing, is not in itself overly compelling.  Moreover, the material was not served and I do not think that it will be necessary for me to revisit this issue, already considered in examination.  For reasons that follow, the end result is the same, since, perhaps with the benefit of hindsight, I am of the view that the trade mark applied for must fail even when subjected only to the lesser test under the provisions of s 41(5).  It is quite arguable that the higher bar of s 41(6) should apply but it is sufficient for present purposes to let matters proceed on the basis on which they were examined when this does not affect the outcome.

4. S 41(5), in brief, allows me to accept, or in this case register, a trade mark if I am "satisfied" that, having some degree of inherent adaptation for that purpose, it does (or will) distinguish Ingham's goods from the similar products of others.  Having heard the parties and considered the evidence on which they rely, I have concluded that the trade mark presently sought to be registered is not so capable and should to be refused registration.

5. In doing so, I acknowledge the arguments put to me by Mr Sgourakis both at the hearing and in his supporting written submissions.  I accept that the applicant's goods are well known.  The product sold as INGHAM CHICKEN MUNCHIES is sold in impressive quantities.  However, it must be recalled that this product is a companion to clearly generic lines such as Chicken Kiev etc.  The word INGHAM is always prominent, of course, but beyond that there is a notable feature, a cartoon-character device that appears always to be used in advertising or packaging the goods.  The following is the composite artwork which Mr Sgourakis, as part of his work as a patent attorney, was asked to approve.

 

1. It appears that the only television commercial in evidence promoted the goods with a voice-over as follows:  "INGHAM MUNCHIES, they're full of chicken".  This is, in the context of the advertisement, a reference to the apparent chicken-munching ability of the cartoon character shown above.  The applicant itself has recognised the unique nature of the character.  Exhibit F of the Hexton declaration concerns issues of the Club Ingham newsletter.  It has an article headed "Munchies Giveaway".  This is not, as might otherwise be expected, an offer of free food.  The text reveals "we are giving away free Munchies key rings", and there then follows a picture of a key ring with an ornament much like the cartoon device shown above. 

2. I agree with Mr Sgourakis that the typeface used to render the words CHICKEN MUNCHIES is neither here nor there.  The trade marks applied to the goods none the less work as a whole.  In conjunction with the word INGHAM, the effect of the cartoon device is to lift these particular snack foods out of the ordinary and to distinguish them from the chicken munchies or precooked chicken nuggets that may reasonably be made and sold by others. 

3. It follows from this that I do not agree that there is anything unusual in the use of the word "munchies" per se in relation to foodstuffs.  Mr Sgourakis argued strongly that "munchies" is a colloquial term used to indicate what the Oxford Dictionary calls "hunger introduced (sic) by marijuana - eg 'I have the munchies'" or "snacks to be consumed after smoking marijuana".  However, the Oxford also gives the general meaning attributed to the word by Macquarie, which, in contrast, indicates a connection with marijuana only (though not necessarily) in respect of the expression "have the munchies".  I cannot agree with Mr Sgourakis that the sense of something to snack on is any less well known than the alternative set out in Oxford.  There is simply no evidence either way.  To me, there is nothing about the Ingham product that suggests a context of marijuana consumption, and I think the word "munchies" would in that context be given its ordinary descriptive sense, the one set out in Macquarie.  Mr Hexton, moreover, confirms this.  Accordingly, I must disagree with Mr Sgourakis's argument that the trade mark applied for is "just on the fence" for needing evidence.  As an apparently reasonable term, it needs convincing evidence.

4. The most that can be said is that, as Mr Sgourakis put it in his written submissions (his emphasis) "the alternate meaning ensures that the mark does not convey only the "snack" meaning, and that the mark is to some extent inherently adapted to distinguish".  There is a potential problem with this approach, since the existence of an alternate meaning does not necessarily endow a term with any inherent adaptation at all.  "Jam", in the sense of a spread made from fruit, has two common alternative meanings, relating to music performance and to obstructed movement, but the word remains without inherent adaptation in respect of jams.  However, I have agreed to test the application on the basis that it does have some inherent adaptation and the issue highlighted by Mr Sgourakis supports such a course. 

5. Even so, with the benefit of the additional evidence that the opposition process has brought forth and the arguments put to me by the advocates, the words CHICKEN MUNCHIES remain a term reasonably likely to be legitimately wanted by other traders to describe chicken snack foods.  It is clear to me that it is the totality of the word INGHAM and the cartoon character together with the words CHICKEN MUNCHIES that distinguishes the goods.  There is no reason to see this changing in the foreseeable future.  The present evidence does not satisfy me that the apparently reasonable descriptive term CHICKEN MUNCHIES is, solus, capable of distinguishing Ingham's goods.

6. Parenthetically, I note that Ingham initially instructed its attorney firm to "file an application to register the CHICKEN MUNCHIES mark".  This form of wording is used by Mr Hexton, who refers to both the actual and evidenced use of "the CHICKEN MUNCHIES mark" and also to "an application for the mark CHICKEN MUNCHIES".  It appears that Ingham understands the distinction between the manner in which it sells its products and the mark that it has applied to register. 

Conclusion and costs:

1. I am satisfied that a ground of opposition has been established under s 41.  In view of this, I refuse to register the trade mark.

2. Costs should follow the event.  I direct that Ingham pay Kiwi's costs on the scale set out in the regulations.

Terry Williams

Hearing Officer

Trade Marks Hearings

3 June 2004