Maxam Food Products Pty Ltd, Re

[1991] ATMO 12

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Applications for Registration Nos 444266 and 444267 in the Name of MAXAM FOOD PRODUCTS PTY LTD.

On 23 April 1986 MAXAM FOODS PRODUCTS PTY LTD, of 409 St Kilda Road, Melbourne, Victoria ("the applicant") lodged two applications for the registration of a trade mark under the Trade Marks Act 1955 (Cth.) ("the Act") which were given the numbers 444266 and 444267.  They sought the registration in Part A of the Register of the mark shown below:

in respect of all goods in International Classes 30 and 29 respectively.  Those Classes embrace the following goods:

Class 29Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats; salad dressings; preserves.

Class 30Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (except salad dressings); spices; ice.

On 9 December 1987 the first examiner's report on the applications was issued in which inter alia an objection

to the registration of the mark was raised under sub-s.24(1) of the Act on the grounds that it was not an invented word, that it had direct reference to the character or quality of goods included in the specification of goods of the applications and that it was not distinctive.  This objection was said to arise because of the prominence in the mark of the word DELIZIOSA, an Italian word meaning "delightful" or "delicious", which therefore directly described the specified goods as possessing those qualities.  The other matter included in the mark, the device of an endless belt, was said to be insufficient to render the mark distinctive when viewed as a whole.  At the same time the applicant was asked to furnish an English translation of the Italian words LA DELIZIOSA appearing in the mark and to consent to the entry of an appropriate translation endorsement in accordance with reg 11 of the Trade Marks Regulations.
         In response to this report the attorneys for the applicant, Griffith Hack & Co of Melbourne, consented to an entry of an endorsement to the effect that the English translation of the Italian words LA DELIZIOSA was "The Delicious".  They also requested that the applications be amended to seek registration in Part B of the Register submitting that the marks were at least capable of becoming distinctive for the purposes of that Part of the Register, especially in view of the extensive sales and advertising of goods under the mark from 1981 to the date of lodgment of the applications and beyond.
         The examiner, however, maintained the objection on the ground that the mark was not capable of becoming distinctive in terms of s.25 of the Act because of the very descriptive nature of the words LA DELIZIOSA.  She suggested that evidence of the use of the mark should be submitted for consideration in declaratory form to enable further consideration of the application.  This the applicant's attorneys did.  Despite the amount of use of the marks disclosed, however, the examiner refused to withdraw the objection because the mark was both laudatory and descriptive in Italian.  She added that the samples of the mark submitted as part of the evidence showed that the mark had been used only in relation to certain food products despite the claimed use on a wide range of goods.
         At this stage responsibility for the prosecution of the applications was taken over by another firm of Melbourne attorneys, Smith Shelston Beadle.  In response to the examiner's previous report they again drew attention to the extensive sales and advertising figures in connection with the mark over a significant number of years.  They also submitted that despite the descriptive and laudatory nature of the Italian words, the use of foreign words as a trade mark carried an element of "unusualness" and therefore appeal to the average purchaser and was therefore more memorable for that reason and thus the mark should not be considered as simply equivalent to the English word of which it was a translation.  They also drew attention to the "get-up" of the mark, in particular the distinctive form of the letter D.  It was claimed that the words LA DELIZIOSA were not commonly used by Italians to describe something delicious, because, while the word DELIZIOSA did mean "delicious" the addition of the word LA transformed the word into a distinctive trade mark of the applicant.  They offered on behalf of the applicant to disclaim exclusive use of the word DELIZIOSA itself and consented to the entry of an endorsement of the translation of the words as "the delicious".
         The examiner, however, remained unmoved maintaining that disclaimers did not render non-distinctive marks registrable and that the words were descriptive and laudatory and would be obvious in meaning even to those who did not know Italian.  She suggested that the attorneys request a hearing in the matter.  The attorneys did so and the matter came on for hearing before me in Melbourne on 20 June 1990.  Mr Trevor Beadle of Smith Shelston Beadle appeared for the applicant.
         Mr Beadle began by drawing my attention to the evidence of use of the mark.  This consisted of a statutory declaration by BRONWYN MARGARET CONSTANCE, a director of the applicant company, which stated that the applicant had used the mark applied for continuously and extensively throughout Australia since 1981 in respect of a wide range of goods classified in Classes 29 and 30 of the Trade Marks Regulations.  Sales of goods under the mark between 1981 and 1988 inclusive amounted to almost $15 million while advertising expenditure in the same period totalled some $6 million.  Various samples of the applicant's advertising were exhibited to the declaration as Exhibit A.  These showed the mark used in relation to a range of pasta products such as ravioli, tortellini, cappelletti, gnocchi, cannelloni, lasagne and spaghetti.  All of these goods are included in International Class 30.  None are included in Class 29.  Mr Beadle submitted that the extensive use of the mark clearly showed that the mark had become distinctive of the applicant's goods.  He conceded that the word DELIZIOSA was descriptive and laudatory and contained a direct reference to the goods but submitted that the SOLIO case on which the examiner had relied in relation to the registrability of foreign words was an old case and related to the registrability of marks in Part A of the Register whereas the applicant here sought registration in Part B only.  He claimed that there was a measure of adaptability to distinguish possessed by foreign words which their English equivalents did not have by virtue of their very foreignness.  He also argued that the expression as a whole, LA DELIZIOSA, was a phrase which would not be used by Italian speakers, that it would in fact be nonsensical in Italian.  He urged me to consider the mark as a whole which was not merely the word DELIZIOSA.  He drew attention to the "get-up" of the mark which had a certain eye appeal to the public.  He offered on behalf of the applicant to consent to a disclaimer of the right to the exclusive use of the word DELIZIOSA itself.  This would, he said, protect the rights of other traders who in any case were free to use the word DELICIOUS without any danger of infringing the applicant's rights.  He also offered to restrict the specification of goods of the applications to conform with the goods on which according to the evidence the mark had been used.
         The word "delizioso" is defined in the Sansoni English - Italian, Italian - English Dictionary, R.C.S. Sansoni Editore S.p.a. Firenze, Terza edizione, 1988 as follows:

delizioso a. 1 delightful, delicious; un fresco - delightful coolness; musica - a delightful music. 

2(bello, grazioso) fetching, charming, lovely;

un visetto - a fetching little face.  3 rif. a cibi, bevande) delicious.

The words in brackets under definition 3 may be translated as "referring to food and drink".  The word "deliziosa" is the feminine form of "delizioso".  The word is therefore the equivalent of the English word "delicious" in its reference to food and drink.  The word "la" is the feminine form of the Italian definite article.  The expression "la deliziosa" is not, as Mr Beadle contended, a nonsensical combination which would not be used by Italian speakers but is in fact the normal way of expressing in Italian the idea of "the delicious one" and would be the answer to the question in Italian "which ...?."  This usage is not now common in English but survives in the coupling of the definite article with an adjective in collective nouns such as "the young", "the old", etc. and is familiar to most people in the advertisement "Which bank?", "The Commonwealth".  The predominant feature of the mark is therefore an Italian expression which is laudatory and has a direct reference to the (supposed) character or quality of the goods.  I also cannot accept Mr Beadle's suggestion that the manner of representation of the mark is sufficient to outweigh the inherent non-distinctiveness of the words themselves or that the disclaimer of the exclusive right to the use of the words would allow the mark to be registered.
         Mr Beadle submitted, however, that the mark, consisting of Italian words, had an adaptability to distinguish which the equivalent English expression would not possess.
         On the question of the registrability of foreign words Shanahan's Australian Trade Mark Law and Practice has the following to say at 86-87:

"Lord Herschell's Committee considered that "where any English word would be rejected, as not entitled to registration, no person ought to be permitted to register its translation into any other language".37  Thus s.24 draws no distinction between English and foreign words, and generally speaking a foreign descriptive word is liable to meet the same objection as its English counterpart.38  On the other hand the mark must be seen as directly descriptive by "ordinary persons",39 that is those ordinarily purchasing or dealing with the goods in question, and due weight should therefore be given to their lack of understanding of the particular language.40  Thus in "Kiku" Trade Mark,41 under a provision similar to para 24(1)(d), the Supreme Court of Ireland held the mark "Kiku" to be inherently registrable in Part A in respect of perfumes and cosmetic preparations, notwithstanding that it was the Japanese for Chrysanthemum.  The Court took the view that if the word had to be translated before it could be understood by ordinary persons it could not be regarded as having a direct reference to the character or the quality of the goods.  This reasoning appears consistent with Australian authority, and in particular the "Rohoe" and "Tub Happy" cases discussed earlier."

37.Herschell report, para. 26.

38.See e.g., "Aji-No-Moto" Trade Mark (1922) 17 AOJP (Japanese for "source of flavour").

39.Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190, at 195-95.

40.See Burgoyne's Trade Mark 6 RPC 227 (aboriginal word "Oomoo" meaning choice); Betty Block's Appn. (1950) 20 AOJP 1223 ("Bon Santé", French salutation meaning good health, refused for fruit drink).

41.[1978] FSR 246.

In the case of the words LA DELIZIOSA the examiner has argued, and I agree, that the meaning, especially in relation to typically Italian foodstuffs, would be transparent to the general public.  Moreover, Australians are accustomed to phrases of this particular formation in connection with things Italian - opera singers, for example, "la stupenda", "la divina", operas, "la traviata", "la gioconda" etc., and would, I think, recognise this expression as of the same type.  Italian is not a language, like Japanese, known only to a very few native English speakers, or an Aboriginal language, as in the case of "Oomoo", known to even less.  Quite apart from the large numbers of native Italian speakers resident in Australia, Italian is a European language known, like French and German, to a large number of native English speakers even despite the decline in the learning of languages in this country.  Since therefore the words form a laudatory expression in relation to the goods which would be recognised as such by large numbers of ordinary Australians it follows that the mark cannot be regarded as being adapted to distinguish the applicant's goods from those of others.
         The present applications are now for registration in Part B of the Register and the mark may therefore be accepted even if it is not distinctive, as I have found, but is capable of becoming distinctive.  The meaning of this requirement was explained by Gibbs J., as he then was, in Burger King Corporation v The Registrar of Trade Marks(the WHOPPER case) 128 CLR 417, at 424:

"The Act does not provide an express statement, similar to that contained in s.10(2) of the United Kingdom Act, of the factors to be considered in deciding whether a trade mark is capable of becoming distinctive.  It does however state, in s.26(2), 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.  When the question is whether the trade mark is capable of becoming distinctive, no difficulty arises about the nature of the inquiry so far as concerns the second

of these matters; the inquiry becomes whether the trade mark is capable in fact of distintguishing the goods, by reason of future use or other circumstances.  However, as to the first matter the inquiry remains the same as that which is to be made when the issue is whether the trade mark is distinctive, that is, whether the trade mark is inherently adapted to distinguish the goods.  Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co v Registrar of Trade Marks* - and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise."

*(1964) 111 CLR 511

Section 26(2) provides that:

In determining whether a trade mark is distinctive, regard may be had to the extent to which -

(a)the trade mark is inherently adapted so to distinguish; and

(b)  by reason of the use of the trade mark or of                   any other circumstances the trade mark does so                  distinguish.

The meaning of "adapted to distinguish" was considered by Kitto J. in Clark Equipment Company v Registrar of Trade Marks (the MICHIGAN case) 111 CLR 511, which was also a case dealing with an application for registration in Part B. He said, at 514, that 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

Gibbs J, in the WHOPPER case (supra), went on to consider the effect of sub-section 26(2), at 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 if there is evidence of such user as has in fact rendered the word distinctive of the applicant's goods: Yorkshire Copper Works Ltd's Application+; Samuel Taylor Pty Ltd v Registrar of Trade Marks*.  In accordance with this approach, registration under Pt B was refused in respect of a word which was not inherently adapted to distinguish the goods, notwithstanding that it had been extensively used: Clark Equipment Co v Registrar of Trade Marks~.  The words there had a geographical significtion but Kitto J. pointed out^ that a descriptive word would be in like case."

+(1953) 71 RPC 150

*(1959) 102 CLR 650, 657

~(1964) 111 CLR 511

^at 515.

In that case there had been no use of the mark in Australia.  In the present case there has been extensive use of the mark in relation to pasta products, so much so that it may be conceded that the mark does distinguish those products and thus satisfies the second limb of sub-section 26(2).  But the effect of the Whopper decision and others is that distinctiveness in fact must be weighed in the balance against the inherent adaptability of the mark to distinguish.  For the reasons already set out above in my opinion the effect of that weighing in the balance is that the mark must be found wanting.  It lacks the inherent adaptability which Gibbs J. found necessary for registration in Part B.  It consists of words which a person selling Italian pasta products which he claimed to be delicious might use in the ordinary course of business and without any improper motive.
         For the above reasons I find that the applicant's mark is not registrable in Part B of the Register and the applications must therefore be refused.

(M.A. HOMANN)
Hearing Officer
31 January 1991