Mount Everest Mineral Water Limited - [2012] ATMO 65

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1374645(32) - HIMALAYAN Label - in the name of Mount Everest Mineral Water Limited.

Delegate:

Iain Thompson

Representation:

Applicant: Fiona Brittain and Michael Wolnizer of Davies Collison Cave.

Decision:

2012 ATMO 65

s33 proceedings - s44 - comparison of trade marks. Application accepted for possible registration

Background

These are proceedings under section 33 of the Trade Marks Act 1995 (‘the Act’) concerning the trade mark application, current details of which appear below:

Application No: 1374645

Priority Date: 28 July 2010

Owner: Mount Everest Mineral Water Limited (‘the applicant’)

Goods:Class 32: Aerated mineral waters; aerated spring waters; aerated water; bottled water (not for medical purposes); carbonated water; drinking water; mineral water (beverages); natural mineral water (not for medical purposes); natural spring waters (not for medical purposes); natural water (not for medical purposes); non-medicated mineral spring waters; spring water (beverages), other than for medical purposes; still water (not for medical purposes); table waters; water (beverage) other than for medical use; water for drinking (other than for medical purposes); waters (beverages)

Trade Mark:

An examiner of trade marks reported on the application in compliance with section 31 of the Act and cited a ground for rejection in terms of subsection 44(1) based, amongst others, on the following three trade mark registrations (‘the cited registrations’) owned by Himalayan Spring Mineral Water Pty Ltd:

Registration No: 1220980

Priority Date: 23 January 2008

Goods: Class 32: Bottled mineral water

Trade Mark:

Registration No: 1261105

Priority Date: 8 September 2008

Goods: Class 32: Mineral water

Trade Mark: HIMALAYAN SPRING MINERAL WATER –

‘WATER CLOSEST TO HEAVEN.’

Registration No: 1261293

Priority Date: 5 September 2008

Goods: Class 32: Mineral water

Trade Mark: HIMALAYAN SPRING MINERAL WATER - BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS
Endorsement: It is a condition of registration that the trade mark will only be used on mineral water bottled in the Himalayas and which is bottled accompanied by the sound of chanting Tibetan monks.

The applicant’s attorneys made three rounds of submissions couched in terms of having the ground for rejection reconsidered; however, the trade mark examiner maintained the ground for rejection of the applied for trade mark (‘the Trade Mark’) in relation to the cited registrations whilst the other citations were favourably reconsidered. The applicant then requested a hearing.
I heard the matter as a delegate of the Registrar of Trade Marks in Melbourne on 6 March 2012. Fiona Brittain and Michael Wolnizer of Davies Collison Cave represented the applicant and both made representations. Ms Brittain filed a statutory declaration that she made on 5 March 2012.
Much of the declaration and most of the submissions centred on a claimed lack of inherent adaption to distinguish in the words HIMALAYAN … MINERAL WATER or HIMALAYAN SPRING MINERAL WATER and the consequent, prima facie, lack of inherent ability of those words to indicate a trade source of the goods as opposed to a geographical source of particular goods. I will discuss this aspect of the trade marks in question below.
In doing so I note at the outset that the appropriate approach to take in examination in the comparison of composite trade marks which share an allegedly descriptive element remains an issue of considerable uncertainty.
While considering this matter, my assessment is on a prima facie basis, prior to any acceptance of the application for possible registration and potential adversarial scrutiny of the application. I am thus essentially in the same position as the original examiner of the applicant’s Trade Mark, although with the benefit of verbal and written submissions, Ms Brittain’s declaration, and more time in which to consider the matter and explain my reasons.

Section 44

Section 44 of the Act relevantly provides:
Identical etc. trade marks
44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
The applicant here concedes that the cited registrations have earlier priority dates than that of the application and that the goods in question are similar. It is not stated as a ground for rejection that the trade marks in question are substantially identical. Therefore it falls for me to decide whether the Trade Mark is deceptively similar to the cited trade marks.
The expression ‘deceptively similar’ is defined by section 10 of the Act which provides:
10Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The expression has been considerably amplified by the Courts. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; 1B IPR 523 at paragraph 13 Windeyer J: said:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: ‘The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole’: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: ‘In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same’ (1937) 58 CLR, at p 658.
The expression is also to be considered in the context of the particular marketplace for the goods. In In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777 Parker J said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
Additionally, the nature of the trade marks in question must be considered: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 (RAINMASTER v RAIN KING); ‘Frigiking’ Trade Mark [1973] RPC 739 (THERMO-KING v FRIGIKING);[1] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864; (1998) 41 IPR 505 (VOGUE v EUROVOGUE & Device); Miss World (Jersey) Limited & Anor v Mrs of the World Pageants, Inc. [1988] FCA 12; (1988) AIPC 90-460 (MISS WORLD v MRS WORLD); Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 (INNER HEALTH PLUS v HealthPlus); Coca-Cola Co (Canada) Ltd v Pepsi- Cola Co (Canada) Ltd (1942) 59 RPC 127 (COCA COLA v PEPSI COLA); Sports Cafe Ltd v Registrar of Trade Marks [1998] FCA 1614; (1998) 42 IPR 552.
[1] Per Whitford J: ‘necessarily [the Court’s deliberations] involve some enquiry as to the inherent distinctiveness of a part which is common to both marks under consideration’.
The approach in matters such as those in the foregoing paragraph has been to regard matter which is in common between trade marks and which has low inherent adaptation to distinguish the goods or services of one trader from those of another to be unlikely to connote a common source in trade and thus to be discounted to some degree in the comparison.
How should composite trade marks which contain shared elements of varying inherent adaptation to distinguish (which lie at or between the postulated adaptive extremes of, for example, NORTH POLE for ‘bananas’ or GOBI DESSERT for ‘ice-creams’ at one end and FRENCH WINE for ‘wines’ at the other) be compared with other trade marks which share those elements? It is generally true to observe that where one of the trade marks consists solely of the shared element (whatever its inherent adaptation to distinguish might be), the matter may be relatively straightforward: that is where the rights sought or granted must lie and the trade marks should on the face of it be considered to be deceptively similar in terms of section 44 of the Act. But what of situations such as that before me where both sets of trade marks under consideration share elements which are of obviously low adaptive strength along with other matter that may or may not be of great assistance in distinguishing the trade marks from one another?
It is convenient first to dispose of a myth: that is, given sufficient use, any sign might qualify as a trade mark and be registrable under the provisions of subsection 41(6). This is not true as is stated in Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 (‘Go On ..’); implied in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘PERSIAN FETTA’); and discussed in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (TREAT’), where Jacob J said:
There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords.
A moment’s reflection reveals that a trader’s repeated use of an inherently unadapted sign for the sake only of its ordinary meaning serves solely to reinforce its ordinary meaning in the eyes of the public. The word ‘soap’, used on ‘soaps’, is only descriptive and when used solely to describe the nature of the goods can never change its meaning. Such a sign is incapable of taking on an additional meaning as indicating only the goods of one trader. But that is not to state that a sign which lacks any inherent adaption to distinguish cannot take on another meaning as a trade mark and denote the goods or services of a trader. The acquisition of this other meaning depends entirely on a number of factors including:

whether the sign is, effectively, the only ‘normal’ way to describe or identify the goods or services in question such that other traders are likely to require in good faith to want or need to use it, and,
whether the sign is the only, or the most appropriate, sign to use to denote the nature or origin of the goods.
The way the sign has been used by the owner;
whether the sign is used by other traders for the sake of its ordinary meaning;
how the particular market has been educated concerning that use; and,
how the market perceives that sign in denoting the goods in respect of which it is used: see Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241; (‘OREGON’) Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525; (2002) 56 IPR 452; [2003] AIPC 91-841 (‘Terracotta Colour’).

The foregoing is a necessary preamble to the observation that, where composite trade marks such as those before me are being compared, the exact nature of any elements which the trade marks share must be objectively considered.
Further, although this preliminary consideration is pre-acceptance, the standard which ought to be applied when assessing the inherent adaptation of shared elements is no different from that applied by the Courts in cases such as Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; [2006] 154 FCR 165; (2006) 69 IPR 255 (‘Go On ...’); Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘Persian Fetta’); Sports Break Travel Pty Ltd v P & O Holidays Ltd [2000] FCA 924; (2000) 50 IPR 51 (‘Schoolies’); Larry John Powell v Glow Zone Products Pty Ltd [1996] FCA 1021 (‘Caps the Game’).
There are several recent decisions involving composite trade marks which provide some guidance, including Re Empire Brands Pty Ltd [2010] ATMO 129; (2010) 90 IPR 616 (‘QUICK DRY’ in relation to clothing); Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299; (2009) 83 IPR 210 (‘BSS’ in relation to balanced salt solution); Television Food Network, GP v Food Channel Network Pty Ltd (No 2) [2009] FCA 271; (2009) 80 IPR 314; [2009] AIPC 92-339 (Commonality of words FOOD CHANNEL v FOOD NETWORK); News Digital Media Pty Ltd v Dawson Media Pty Ltd [2009] ATMO 37; (2009) 82 IPR 334 (TRUE LOCAL v TRULY LOCAL). It is difficult to extract any general rule from these cases as each was decided on the evidence present in the respective proceedings; however, I note that in common with the matter before me that one or more of the trade marks under comparison with each other, above, also included graphical (device) elements.
In the pre-acceptance assessment such as in the matter before me, however, it is to be remembered that in terms of sections 33 and 44 of the Act there is a presumption of registrability: see Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [47] where French J said:
Section 33 imposes upon the Registrar and the Court, on appeal from the Registrar, an obligation to accept the application unless satisfied either that the application has not been made in accordance with the Act or that there are grounds for rejecting it. The decision to reject an application regularly made must now be based upon positive satisfaction that a ground for rejecting it is made out. This may have implications for the Registrar's administrative practice. There will no doubt be cases in which the requisite state of satisfaction can be reached by consideration of the visual and aural features of the marks in question against the description of the goods and/or services to which they relate. But there will also be cases in which such materials will be of themselves inadequate to support a proper judgment. In some circumstances market or survey evidence might be necessary to form a concluded view. Unless the Registrar is to undertake inquiries of that kind going beyond the content of the application and the existing Register and prior applications, then the application will have to be accepted and determination of such questions as deceptive similarity left to opposition or expungement proceedings. Given the preliminary character of the acceptance decision and the availability of the later adversarial processes, it may be consistent with the policy of the 1995 Act that only in clear cases of deceptive similarity will the Registrar reject upon that ground.
This view of the pre-acceptance assessment of, relevantly, composite trade marks sees the preliminary assessment of deceptive similarity as being, in effect, a preliminary screening process through which it is inevitable some conflicting trade marks might appropriately pass.
I turn now to the situation before me and apply concepts from within the framework I have outlined above in keeping with the knowledge that this is a pre-acceptance consideration; it is the ‘preliminary screening process’ which I have discussed.
I do not consider that there is any significant difference between the nouns ‘Himalaya’ or ‘The Himalayas’ and the adjective ‘Himalayan’ for the purposes of this discussion.[2]
[2] And see Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 per Bennett J at [60]: ‘Potential infringement by a mark substantially identical or deceptively similar to the trade mark is relevant to a consideration of inherent adaptation to distinguish (Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494 at [95] per Lindgren J and at 161 per Stone J).’
Ms Brittain, for the applicant, submits that the word HIMALAYAN is a geographical word and the words MINERAL WATER or SPRING MINERAL WATER merely state the exact nature of the goods. If this is so, Ms Brittain submits, the combination of those words in common between the trade marks cannot act to indicate the trade origin of the goods without more in the way of similarity in ‘get-up’ or of other shared features.
In assessing the nature of the trade marks in question, and absent any shared ‘get-up’, the similarity between the trade marks must be perceived to stem from what otherwise lies in common between the trade marks, this being the words HIMALAYAN … MINERAL WATER.
I note that while the cited trade marks contain the prominent words HIMALAYAN … MINERAL WATER, the trade marks were accepted for registration without the application of the provisions of either subsection 41(5) or (6) of the Act. It follows that the rights within the cited trade marks were perceived at the time of their acceptance to reside within the trade marks considered as wholes.
In my consideration, confusion between the Trade Mark and those cited against it might only arise if it is likely, on the balance of probabilities, that consumers of the goods will view the words HIMALAYAN … MINERAL WATER or HIMALAYAN SPRING MINERAL WATER as acting as a badge of trade origin as opposed to geographical origin of the spring water.

Whilst the trade marks are to be compared as wholes,[3] the significance of the constituents of the trade marks must be duly weighed in the comparison. It would, after all, be nonsense to deem two trade marks used, or proposed to be used, on electronics goods to be deceptively similar because of the commonality of the prominent words CHINESE or MADE IN CHINA within them.
[3] In re William Bailey (Birmingham) Ltd’s Trade Mark Application (1935) 52 RPC 136, 151-52; Re Broadhead’s Application for Registration of a Trade Mark (1950) 67 RPC 209, 219; and cf Pepsico Australia Pty Ltd v The Kettle Chip Company Pty Ltd (1996) 33 IPR 161, 163.
One gauge of whether the words HIMALAYAN … MINERAL WATER are likely to be taken to indicate only the origin and nature of the goods is to view them through the prism of section 41 of the Act. The less inherent adaptation to distinguish the mineral water of any particular trader contained within the words HIMALAYAN … MINERAL WATER, the less credible is the proposition that consumers are likely to take the words to indicate the origin in trade of the goods and the more likely it becomes that the consumer will understand the words only as indicating the geographic source and nature of the goods.[4][5]
[4] The more apt the word or expression is to describe the goods, the less it is inherently apt to distinguish them as the goods of a particular manufacturer (Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 515)
In Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 Kitto J said of inherent adaptation at paragraph 5:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not ‘adapted to distinguish’ the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: ‘The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.’
Significantly, Kitto J also said:
The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, ie in its own nature, adapted to distinguish the applicant’s’ goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make.
[…]
But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place.
Concerning the word ‘Himalayan’, Wikipedia says:
The Himalaya Range or Himalaya Mountains Sanskrit: Devanagari: literally ‘abode of snow’), usually called the Himalayas or Himalaya for short, is a mountain range immediately at the north of the Indian subcontinent. By extension, it is also the name of a massive mountain system that includes the Karakoram, the Hindu Kush, and other, lesser, ranges that extend out from the Pamir Knot.
Together, the Himalayan mountain system is the world’s highest, and home to the world’s highest peaks, the Eight-thousanders, which include Mount Everest and K2. To comprehend the enormous scale of this mountain range, consider that Aconcagua, in the Andes, at 6,962 metres (22,841 ft) is the highest peak outside Asia, whereas the Himalayan system includes over 100 mountains exceeding 7,200 m (23,600 ft). However the Alleghenian mountains, formed during the formation of Pangaea, likely rivalled or exceeded the Himalayas in height.
The main Himalayan range runs west to east, from the Indus river valley to the Brahmaputra river valley, forming an arc 2,400 km (1,500 mi) long, which varies in width from 400 km (250 mi) in the western Kashmir-Xinjiang region to 150 km (93 mi) in the eastern Tibet-Arunachal Pradesh region. The range consists of three coextensive sub-ranges, with the northernmost, and highest, known as the Great or Inner Himalayas.
Some of the world’s major river systems arise in the Himalayas, and their combined drainage basin is home to some 3 billion people (almost half of Earth’s population) in 18 countries. The Himalayas have profoundly shaped the cultures of South Asia; many Himalayan peaks are sacred in Hinduism, Buddhism and Sikhism.
Geologically, the origin of the Himalayas is the impact of the Indian tectonic plate traveling northward at 15 cm per year to impact the Eurasian continent, with first contact about 70 million years ago, and with movement continuing today. The formation of the Himalayan arc peaks eventually resulted from this, since the lighter rock of the seabeds of that time were easily uplifted into mountains. An often-cited fact used to illustrate this process is that the summit of Mount Everest is made of marine limestone.
Wikipedia also states, under the entry ‘Mineral Water’, that world-wide there are three thousand different ‘brand names’[6] of mineral water and provides a link to This Internet site reveals at least four traders that (to judge by the ‘brand names’ alone) either source their mineral water in the Himalayas or identify their mineral water as coming from the Himalayas.[7] In addition, Nepal, a country completely within the Himalayas, is listed as a country of domicile for nine bottlers of mineral water including Aqua World, Atmos, Dela Premium Natural Spring Water, Himalayan Dew, Himalayan Natural Spring Water, Saphapani, Tamor Mineral Water, Thirst-Pi, and Today’s Natural Mineral Water.
[6] I use the term ‘brand name’ without any comment as to whether the trade marks are registrable.
[7] The ‘brand names’ are, Himalaia, Himalayan, Himalayan Dew, Himalayan Natural Spring Water.
It is reasonable, therefore, to conclude that the words ‘Himalayan … Mineral Water’, or ‘Himalayan Spring Mineral Water’, function within the trade marks in question only to designate the geographical source and nature of the goods. This view is corroborated by material within the two of the three cited trade marks in question which state that the water is ‘Bottled in Himalayas, Nepal’ or ‘Bottled in the Sacred Himalayas of Nepal …’ The claim is thus not a fanciful (and inherently adapted) one such as is ‘North Pole’ for bananas, or ‘Gobi Dessert’ for ice-cream where rights might reasonably be seen to lie in those expressions.
The conclusion that the words HIMALAYAN … MINERAL WATER lack inherent adaptation to distinguish in respect of mineral water is inevitable and the words are, in my consideration, on all fours with the trade mark PERSIAN FETTA which the Court found to be without inherent adaptation to distinguish in respect of cheese: Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117.[8]
[8] See also Yarra Valley at [76] per Middleton J speaking of the decision in Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506: ‘Their Honours in the Full Court effectively came to a view that the word ‘Colorado’ alone was not to any extent inherently adapted to distinguish.’ And Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498 per Branson J, ‘I find that the applicant’s trade mark [OREGON] is not inherently adapted to distinguish the designated goods from the goods of another person. [..] I therefore turn to consider s 41(6) of the Act.’
In my consideration, the words HIMALAYAN … MINERAL WATER (or HIMALAYAN SPRING MINERAL WATER) function only to describe the geographical origin and nature of the goods and cannot, prima facie, act so as to indicate the trade origin of the goods.
Trade mark registrations 1261105 and 1261293 have apparently been registered because of the unlikelihood that other traders would require to use either the expressions ‘WATER CLOSEST TO HEAVEN.’ or ‘BOTTLED IN THE SACRED HIMALAYAS OF NEPAL TO THE VIBRATIONAL CHANTING OF TIBETAN MONKS.’ Effectively, the principle enunciated in Diamond T Motor Car Co’s Application (1921) 38 RPC 373 has been applied in relation to those trade marks. Registration of composite trade marks gives rights in the trade mark as a whole, rather than in its individual elements. Similarly, registration 1220980 has been viewed as having sufficient get-up, in the combination of the graphic of the mountains and the descriptive words, that the trade mark as a whole was considered capable of distinguishing the registrant’s ‘mineral water’.
The situation before me would naturally be considerably different if the cited trade marks had been accepted under the provisions of either subsection 41(5) or subsection 41(6): such an acceptance would be viewed as having implied a prior right in the shared element.
When considered in the light of all of the above, the Trade Mark and those cited against it are not deceptively similar.

Decision

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.
I will accept application 1374645 for possible registration.

Iain Thompson

Hearing Officer

Trade Marks Hearings

26 July 2012

[5] cf the oft quoted example of the trade mark ‘North Pole’ for bananas. In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 306, Jacob J said of trade marks lacking inherent adaptation: ‘The phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark? A meaningless word or a word inappropriate for the goods concerned (`North Pole’ for bananas) can clearly do.’