Multix Pty Ltd
[2004] ATMO 51
•30 September 2004
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 992885(21) - SHAPE OF A CONTAINER- in the name of Multix Pty Ltd.
Delegate: | Rachel Dunn |
Representation: | Applicant Russel Waters, Philips Ormonde & Fitzpatrick |
Decision: | Application refused; s41(6) |
Background
Trade mark application number 992885 is the shape of an oval baking or roasting tray as depicted below:
It was filed on 10 March 2004 by Multix Pty Ltd (the applicant) and sought registration in respect of Aluminium foil roasting and barbeque trays in International Class 21.
The application was duly examined under the Trade Marks Act 1995 (the Act), and two reports were issued. In each report the examiner held that the oval tray was not capable of distinguishing the applicant's goods in terms of s41(6) of the Act. The ground for rejection was based on the contention that the trade mark was devoid of inventiveness, not at all an unusual shape, and that other traders should be able to use an oval shape for the goods claimed. The applicant was advised that in order to achieve acceptance of the trade mark, it would need to file overwhelming evidence of use showing that the ordinary oval shape has been overshadowed in the marketplace by its significance as a trade mark in order to enable the provisions of s41(6) to be applied.
In response to the examiner's reports, the applicant filed written submissions. Additionally, evidence of use was filed before the first report was issued. The arguments advanced by the applicant were not found to be persuasive, the ground for rejection was maintained as s41(6) and the applicant requested a hearing. The hearing was conducted before me, in Canberra, on 8 July 2004. Mr Russel Waters of Philips Ormonde & Fitzpatrick attended on behalf of the applicant.
Evidence and submissions
The evidence of use is lead by a statutory declaration in the name of Paul Maguire, General Manager of the applicant, accompanied by 13 exhibits and detailing the history, promotion and sales of the oval tray. An additional statutory declaration in the name of Russel John Waters and three exhibits dealing with survey evidence was also provided. The evidence of use provided is all dated prior to the filing date of the subject application.
The shape was first used in Australia in 1988 and has been in continuous use since that time. The sales figures provided, for the years 1996-2002 inclusive, show steadily growing sales with understandably large sales over the Christmas period. Promotion of the oval tray is undertaken through in-store promotions, store catalogues, advertisements in magazines, the applicant’s own “Kitchen Companion” publication and in top selling publications such as Woman’s Day, Better Homes and Gardens and Family Circle. These promotions and advertisements always show the oval tray used with the applicant’s other trade marks including the words MULTIX and COMALCO and the colour red. It is also shown that the oval trays themselves bear the embossed word MULTIX on their base. In one advertisement the slogan “Don’t let ‘em put a round bird in a square tray” is featured. This is the only promotion of the specific shape of the oval tray in evidence.
Survey evidence has also been submitted, with the statement that such evidence is not intended to be conclusive of itself, but it is intended to support the above mentioned evidence and lead to the establishment, on the balance of probabilities, that the shape does distinguish through its long and extensive use. I am placing only minimal weight upon the survey evidence. In considering evidence of this type I am guided by decisions including Kellogg Company v PB Foods Ltd [1999] FCA 1610 and Arnotts Ltd v Trade Practices Commission 97 ALR 555. The survey before me was prepared not by an independent firm, but was prepared and conducted by the applicant’s trade mark attorneys. The respondents were selected from a list provided by the applicant, there is a clear connection between the respondents and the applicant as the respondents are supermarket workers who should be knowledgeable in the trade, and the survey allowed the respondents to select their wording in only one instance. Only fifty surveys were prepared and only twenty surveys were completed even though the process was active from 28 May 2003 to 16 October 2003. The number of responses is very small and even if my other concerns regarding the survey were properly addressed, I could not put a great deal of weight on the fact that 95% of twenty respondents associated oval shaped foil roasting and barbeque trays with the applicant or its predecessor in business.
At the hearing Mr Waters submitted the following cases had relevance to this application: Koninklijike Electronics NV v Remington Products Australia Pty Ltd (1999) 44 IPR 551, (Remington Case) Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] 56 IPR 30, (Kenman case), Blount Inc v Registrar of Trade Marks 40 IPR 498 and Philmac Pty Ltd v Registrar of Trade Marks [2002] 56 IPR 452 (Philmac case). In particular the Philmac Case was advanced as being specifically relevant to the subject application, as it involved a colour trade mark, which was used in conjunction with a word, had been determined as falling under the provisions of s41(6), and yet was ultimately accepted under those provisions. Mr Waters also placed some emphasis on the phrase ‘use in the course of trade’, and submitted that there is no requirement in the legislation for the trade mark to be recognized by any specific group of customers, it is enough that the trade mark has been used ‘in the course of trade’.
Discussion
It is now well established that a shape trade mark may constitute the actual goods of interest. Stone J in the Kenman case saw :
“…no reason why a shape that is the whole shape of a good should for that reason alone be incapable of registration as a trade mark.”[1]
The question therefore is simply does this oval tray shape hold any inherent adaptation to distinguish the applicant’s aluminium foil baking and roasting trays from similar trays of other traders? Mansfield J in the Philmac case was guided by the test set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511. In F H Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537, Kitto J summarised his original test as follows:
The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.
Whilst this well-known test originated from a consideration of a word trade mark, MICHIGAN, it is still considered applicable to new kinds of signs such as colour and shape, see for example the discussion of French J in the Kenman case.[2]
[1] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks 56 IPR 30 at 65
[2] ibid at 45
The oval tray is claimed by Mr Waters to be unusual and inventive as no research has been tendered to show any other trader currently producing oval shaped baking and roasting trays. The oval tray consists of a thick aluminium foil oval, with deep sides, a small rounded lip and four raised bars that create a ‘special base [that] keeps food above the cooking juices’. I am not satisfied that any of these features add anything to a basic oval shape that is apt for cooking and is clearly required by other traders in the ordinary course of business.
The oval is an ordinary everyday well-known shape that in and of itself holds no intrinsic distinctiveness for the claimed goods. I am not satisfied that the depth of the oval or the rounded lip add anything distinctive to the shape, and the four raised bars are simple functional features to allow cooking juices and fat to be removed from the food. Functional features and shapes that are necessary to achieve a technical result have been held to be entirely devoid of inherent adaptation in the Remington case and the Kenman case. In this case the evidence shows the result achieved by the four raised bars is that of keeping food above the cooking juices. Such a feature is desirable and not used solely by the applicant and I consider that in this case they it does not aid the inherent nature of the oval tray shape. A properly motivated competing trader is likely to think of an oval tray shape, even with a raised base, and wish to use it in connection with similar baking and roasting trays. There is no evidence to satisfy me that shapes of baking and roasting trays are commonly, or even sometimes, used by traders to distinguish their own goods from those of others in this industry. Consumers would need to be educated to see the basic shape of a baking and roasting tray as something denoting the origin of the goods, especially in this case as the oval shape is a normal, well known shape and would not constitute a striking or memorable outline in the minds of consumers. I conclude that the oval tray is devoid of any inherent adaptation to distinguish and thus can only be considered under the provisions of s41(6).
I turn now to the evidence filed in support of the subject application. The oval tray shape has been in use since 1988, a considerable time, and as pointed out by Mr Waters this is a significantly longer period of time than that presented in the Philmac case. However, Mansfield J was able to find that use of the colour terracotta by Philmac constituted use of the colour so applied to the product as a trade mark.[3] There is insufficient evidence before me to enable me to find that use of the oval tray constitutes use of the shape as a trade mark. No evidence has been tendered regarding why the oval tray was adopted by the applicant. In the absence of such evidence I am not prepared to credit the adoption of the oval shape for any reason other than its aptness as a shape for a baking or roasting tray. I can not conclude that the oval tray was created for a trade mark purpose. Only one exhibit shows any positive marketing or promotional activity expressly drawing attention to the shape as a point of difference between the oval tray and the trays of other traders. Such positive marketing and promotional activities were present in the Philmac case and although there is no requirement for a shape trade mark to be promoted specifically as a shape, such evidence is generally considered persuasive.[4] Accordingly, I am not satisfied that the applicant is using the oval tray as a trade mark or that the shape is, in the relevant sense, a badge of origin.
[3] Philmac Pty Ltd v Registrar of Trade Marks 56 IPR 452 at 467
[4] Philmac Pty Ltd v Registrar of Trade Marks 56 IPR 452 at 467
The advertising and promotional material always shows the oval tray used in conjunction with other trade marks belonging to the applicant. Whilst this does not automatically mean that the shape can not function as a trade mark and acquire distinctiveness through use, the only evidence tendered to show that the shape solus is seen as a trade mark is the survey evidence. There is no requirement for the applicant to present survey evidence or the evidence of an independent marketing expert, however as previously mentioned I do not place great weight upon the survey.[5] I can not agree with Mr Waters that the survey results of 86% of twenty respondents associating the shape with the applicant constitutes ‘overwhelming recognition’ of the shape without any reference to the applicant’s other trade marks. Furthermore, I can not accept that the survey establishes a prima facie case showing that the shape does distinguish the applicant’s goods, even when, as asked by Mr Waters, I “accept on face value” and “on the balance of probabilities” the survey results.
[5] Blount Inc v Registrar of Trade Marks 40 IPR 498 at 509
There is no evidence submitted to show that the end user of the goods, the actual consumer, sees the oval tray as denoting trade origin of the applicant’s baking and roasting trays. Section 17 of the Act defines a trade mark, in part, as “…a sign used…to distinguish goods…provided in the course of trade by a person from goods…provided by any other person. The words in the course of trade were emphasized by Mr Waters and he spent some time explaining that in the course of trade may be trade between a manufacturer and a wholesaler or retailer, rather than the relevant buying public. It was submitted by Mr Waters that supermarkets are the relevant buying public in this case and that as the oval tray has been extensively used in the course of trade for many years, to the extent that the survey respondents at least saw the oval tray as originating from the applicant, it is irrelevant that the actual end users of the goods may not recognize the oval tray shape as a trade mark. I do not find this submission persuasive, and would not do even if I was placing a great deal more weight upon the survey results. Mansfield J in the Philmac case commented not only on evidence provided by dealers, but also evidence which described how customers used the colour to identify and distinguish the relevant goods. I agree with Mr Waters to the extent that there is no legislative requirement that the trade mark be recognized by a particular sector of the public, in this case the end consumer, but conversely, I find that recognition only by a particular sector of people, being staff in a supermarket, does not translate into the oval tray distinguishing the applicant’s goods.
The use of the oval tray shape for over fifteen years is noteworthy, however nothing in the advertising or promotion or other evidence provided persuades me that the oval tray distinguishes the applicant’s goods from trays of other traders. It is established that lengthy use of a trade mark does not on its own equal distinctiveness.[6] The overall impression from the evidence is that of an ordinary shape used for a lengthy period, but used only as a shape of the goods, nothing more. One instance of promotion of the shape as a trade mark in over fifteen years of trading does not impact upon this view. I can not conclude that the oval tray was in fact used and presented as a point of difference between the applicant’s trays and the trays of other traders and as such I am not satisfied that the shape does in fact distinguish the claimed goods.
[6] British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 at 302
Decision
I find that the oval tray shape is not inherently adapted to distinguish the claimed goods and the evidence of use does not satisfy me that the trade mark is capable of distinguishing. In these circumstances s41(2) dictates that the trade mark application must be rejected and I hereby do so. In making this decision I am mindful of the words of French J in the Kenman case:
“…this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s33. To the extent that the critical criteria upon which registration might be rejected are in doubt, the application should be accepted. Closer adversarial scrutiny may occur in opposition.”
In this case there is no doubt as to the critical criteria and the application can not be accepted. Therefore, subject to any successful appeal from my decision, I reject trade mark application number 992885.
Rachel Dunn
Senior Examiner
Trade Marks Hearings
30 September 2004
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